Obtaining Section 1782 Discovery in Patent Litigation Outside the U.S.: Key Considerations and Circuit Split

Dr. Müller-Stoy is widely recognized as a leading German patent litigator. With over 20 years of experience in IP, Dr. Müller-Stoy has handled several hundreds of patent disputes (including entitlement proceedings) in courts and patent offices, with a focus on high-profile, multinational matters. He frequently takes on a coordinating role, acting as the European lead counsel, so clients benefit from his solid understanding of the laws and procedures of all relevant jurisdictions. His expertise spans numerous technologies and sectors, for instance telecommunications, IT, consumer electronics, automotive, medical devices, and life sciences. Trained as a commercial mediator, Dr. Müller-Stoy also assists his clients in IP-related ADR proceedings, including national and international mediation and arbitration. He is particularly sought after in SEP/FRAND matters, having in-depth knowledge of numerous standards and related industry practice including the underlying economics.

Mr. Lavenue’s practice focuses on patent trial litigation, including 19 bench or jury trials, and on creating and managing large patent portfolios. With experience in over 200 patent cases, he has managed or served as first chair in numerous district court litigations, including more than 60 cases in the E.D. Texas, almost a dozen patent infringement cases and/or matters under Section 1498(a) in the U.S. Court of Federal Claims, more than a dozen disputes under Section 337 before the U.S. International Trade Commission, and multiple arbitrations. Mr. Lavenue has particular insight into patent disputes involving international discovery under Section 1782. He has been involved in more than a dozen granted 1782 proceedings throughout the U.S., all with 100% grant rate. His broad client base spans an array of industries from aerospace to automotive to financial services to medical devices.

Mr. Cassady focuses his practice on patent litigation at U.S. district courts and before the International Trade Commission. He also assists with client counseling, due diligence, and pre-litigation matters, including drafting noninfringement and invalidity opinions. He works on a wide variety of cases involving technologies such as smart phones, vehicle tracking systems, microprocessors, touch panels and touch screens, and user interface design. In connection with U.S. District Court practice and worldwide counseling approach, Mr. Cassady has developed strategies for using and defending against international evidence seeking mechanisms, such as 28 U.S.C. § 1782, to provide holistic patent litigation advice to global clients. To that end, Mr. Cassady has written significantly on the logistics of filing § 1782 applications, as well as the interpretation and evolution of § 1782 in different district courts across the U.S.