For companies daunted by the high cost of intellectual
property litigation, some relief may be at hand in the form of
proposed limits on the discovery process.
A council that advises the U.S. Court of Appeals for the Federal
Circuit last year decried the use of discovery as a "tactical
weapon." It pinpointed the increasing size of requests
for electronic documents, noting "disproportionate, overbroad
email production requests" that "have a debilitating
effect on litigation." Less than 1 in 10,000 electronic
documents produced in discovery ends up on the exhibit list, the
The council issued a new Model Order, which specifies that each
party may request email retained by only five
people—known as custodians—and five search
terms per custodian. If one side wants more emails, it must
pay for the cost of production.
The U.S. Court of Appeals for the Federal Circuit is the appeals
court for patent cases. Judges for the U.S. District
Court—where patent cases are heard first—are
not required to adopt the new order. But it was adopted
recently by a magistrate in a case in the Northern District of
California, and Morrison & Foerster partner Brian
Kramer says he expects more judges to do the same.
"This is going to save litigants a lot of money by forcing
people to think about what discovery they really want earlier,
rather than just asking for everything," Kramer says.
He adds that this fee-shifting provision is one of the most
intriguing aspects of the model order. "Any time you
have an opportunity to send your opponent a bill, it makes things
Because of the generality of this update, the information
provided herein may not be applicable in all situations and should
not be acted upon without specific legal advice based on particular
As is well known, patent trolls often threaten dozens of alleged infringers in the hope of scoring quick license fees from those who understandably prefer to provide a modest payoff, thereby avoiding expensive and protracted litigation.
In order to best protect the IP rights of a U.S. company seeking to produce goods through a Chinese manufacturer by providing a protected design, the U.S. company needs to take actions even before the contracting stages.
On November 12, 2012, the State Intellectual Property Office of the People’s Republic of issued the Draft Rules on Inventor-Employee Inventions for public comment, and this article seeks to reconcile the different provisions between the Implementing Rules and the Draft Rules.
The U.S. Court of Appeals for the Ninth Circuit affirmed a summary judgment ruling in favor of seven film studios finding that the defendant induced third parties to download infringing copies of the plaintiffs’ copyrighted works.