Law Office of Alicia Porter

While at the AIPLA mid winter institute, there were a lot of issues and strategies involving litigation discussed. These issues can shape the litigation strategy that affects a small business owner.

Some of the considerations to consider are the cost of discovery (the cost of providing to the other sides copies of documentation proving that your company worked on the project and the dates, development strategies to prove that the idea was yours, and the modifications your company made to the concept in question to get the idea to work). Discovery can be quite expensive, as it can include emails of correspondence between people working on the project, retrieval of electronic discovery and other methods of data retrieval, and can cost as much as the actual litigation itself.

Another consideration is the strategy of hiring a special master to hear the case in lieu of a judge. The cost is born by the parties, so it is an additional cost, but it can be more cost effective overall as litigation proceeds.

Another consideration is preservation of data. Immediately, a business owner needs to stop any and all deletion programs on their email for correspondence between employees and others. All data on all computer drives should be backed up and stored at a separate location. Failure to immediately institute a “stop deletion” program by a company can have disastrous consequences, as a the data may not be recoverable and the court may look poorly at you for deliberately hiding correspondence. Settlement awards may also reflect the lack of saving data. The Third Circuit took the approach in one case that since a party failed to stop deleting email, the other party was entitled to review all emails, and see the attorney’s notes. This was a serious penalty, but by the same token the court viewed the company’s failure to preserve data when in litigation to be an egregious error.

Similarly, a company will want to preserve instant messages and voice mails, and have those storage sites backed up, as they may be subject to spoilage. In larger cases, a person may have to be retained to institute a key employee person by person search.

When litigation commences, it is always important to have a settlement strategy in mind. At one point or another in the proceedings, the court will invariably ask if it can be settled outside of the court’s hearing, (or the court may order the parties into a settlement conference). It is always important to know what that settlement strategy is before ever entering the courtroom.

While at the AIPLA conference, one of the themes throughout the conference was litigation involving patents.   The following are some of the highlights that were  made by several of the presenters.  Credit must be given to the presenters, such as John Kozak, Jerry Selinger,  Mar, Whitaker,  Judge Flowers Conti, Judge Laporte,  for their insightful suggestions and recommendations.
1.If your company is going to sue (or in the process of being sued for patent infringement), you MUST know whether or not your rights are enforceable.  Has the term of the patent expired? Does the patent you have cover all the embodiments you wish to sue over? Do you have clear title to your patents?  Are there other people that should be listed as inventors on the patent? Are there any in house rights? Are there any assigned rights? What countries are the rights enforceable?

2.  It is important to know your budget, know your strategic objectives, and to know what your expectations for the outcome of the litigation is.  Expect your budget to include issues such as  the out of pocket costs, expert costs, jury consultant costs,  technical support, discovery data management,  and demonstrative examples.

3. Never overlook the possibility of settling the case through all phases of the proceedings.  While settlement may not seem like a good idea at the beginning of the case, it is something to keep in the back of your mind as a strategy at all times, as settlement can be far less expensive than litigation.

4.  It is advisable that business owners develop a plan that allocates responsibility for both inside and outside counsel to assist in litigation matters. It is important also that roles of inside counsel versus outside counsel should be clearly defined.

5.  Know who you are suing ( or who is suing you). This includes knowing how exclusive your product’s market is,  what is the value of your product to the infringer, what is the size of the infringer, what is the competitors reputation and willingness to litigate, what is their business strategy.

6. Understand the risks and uncertainties about entering into (or defending from) patent litigation.

7. How quickly do you want to move on this? Is it time sensitive, and important that you contemplate a “rocket docket” (a court that moves extraordinarily fast, such as the Eastern District of Texas, the Eastern District of Virginia, or the Western District of Wisconsin), or do you want to file somewhere else? Does local filing make a difference? If you want a rocket docket, do you have venue ( to you have the appropriate level of contacts with that area so that a court will determine that it is appropriate to sue or be sued in that particular jurisdiction)?

8.  What is your data saving strategy? ( A lot of companies have computer programs set up to automatically delete emails or other correspondence at a regularly scheduled time – it is  IMPORTANT to preserve any and all communications the minute the lawsuit comes across the company’s desk).  If you don’t save your data and your auto-delete  program keeps going, it is pretty much guaranteed that a judge will get torqued if you have not appropriately  preserved your data for discovery purposes. KEEP IN MIND – EMAIL MAY BE FAIR GAME FOR THE PURPOSES OF DISCOVERY.

9.  For the trial discovery purposes, are there any other forms of communication that should be looked at? For example, at one lecture I attended, a former mediator discussed how all the engineers for a particular company did not like how the email program worked, and had created a secondary tech email program. Those also had to be produced and provided.  What about the meta data, which is the information encrypted on the emails? Is that going to be discovered?

10. Is it appropriate to request any immediate protective orders to determine who can amass the information that the company must provide as part of discovery or wants to receive as part of the discovery process.