Class Notes Flashcards
What is the pleading standard after Twombly?
Plausibility
What is the plausibility standard?
A pleading must contain enough factual allegations to show that the claimed violation is plausible, not just possible.
Does the plausibility standard apply to all federal civil cases?
Yes,
- Twombly - Antitrust
- Iqbal - All civil cases
- Robern - Patent Litigation
What is Fed Civil Procedure Rule 8(a)?
Pleadings require a short and plain statement of the claim entitling he pleader to relief, plus Twombly/Iqbal/Robern plausibility standard.
What is “general” jurisdiction?
If D has continuous and systematic or substantial connections with the forum then any claim can be ajudicated with the forum.
- So many contacts to be at “home” in the forum
What are the first two steps to assess Patent Infringement?
- Claim Construction
- Markman (what does the claim mean)
- Does the Claim read in accused device/process
- Literally
- Doctrine of Equivalents
What are the two defenses to infringement?
- Invalidity
- Unenforceability
What types of remedies are available in an infringement action?
- Injunctive
- Temp or Permanent
- Damages
- Reasonable Royalties
- Lost Profits
What law controls for an appeal from the USPTO or district court in a patent infringement case?
Federal Circuit
What law applies to an appeal of a district court on a Trademark or Copyright infringement action?
Regional Circuit
What law applies to an appeal from the district court for an anti-trust case?
Regional Circuit, unless the issue clearly involves the Federal Circuit’s exclusive jurisdiction.
What is an assignment?
The transfer of all rights in a patent
What is a license?
A promise by the patent holder not to sue for infringement in return for royalties or other concessions.
What types of licenses are there?
- Exclusive
- Non-Exclusive
What is an exclusive license?
One where the licensor transfers “substantially all” of the rights.
What rights does a patent holder have?
Essentially the patent is treated like property, the patent holder can:
- Sell
- Lease
- in whole or part
- Bequeth
- Exclude
Does an assignment or exclusive license have to be in writing?
Yes, and recorded at USPTO
Who has standing to bring a suit of infringement?
- Patent Holder
- Assignee
- Holder of “all substantial rights”
- Exclusive licensee
- with proper joinder of patent holder
What is required to seek a declaratory judgement?
A controversy
What is the test for DJ jurisdiction?
Whether the facts alleged, under all the circumstances, show that there is a substantial controversy beween parties having adverse legal interests, of suffcient immediacy and reality to warrant the issuance of a DJ.
What can trigger a plaintiff to file a DJ action?
- reasonable apprehension of being sued for infringement
- patentee exerts rights under a patent against another party
- a party contends it has the right to engage in accused activity without a license.
What are the “private” factors to be considered when deciding a venue transfer question?
- Relative access to sources of proof
- Availability of subpoena of witnesses
- Cost of attendance of willing witnesses
- Trial be easy, expeditious, and inexpensive
Piper
What are the “public” factors to be considered when deciding a venue transfer question?
- Court congestion
- Localized interests decided at home
- Familiarity with forum law governing the case
- Avoidance of conflicts of law or in the application of foreign law
What 12(b) defenses must be raised in a motion prior to answering the complaint or be waived?
(2) - Lack of personal jurisdiction
(3) - Improper venue
(4) - Improper notice
(5) - Improper service
What 12(b) defenses must be raised in a motion prior to the end of the trial or be waived?
(6) - Failure to state a claim upon which relief can be granted
(7) - Join necessary parties
What 12(b) defenses cannot be waived?
(1) - Subject Matter Jurisdiction
What is “specific” jurisdiction?
When D’s contacts with the state relate to the action
Evidence Rulings on Appeal - Standard of Review?
Abuse of Discretion
Rule 401 - Test for Relevance
Evidence is relevant if:
(a) it has a tendency to make a fact more or less probable than it would be without the evidence (logical relevance); and
(b) the fact is of consequence in determining the action (material)
What is the Thayer Theory of Relevance?
The theory that Rule 401 is based on, evidence must be logically relevant and material
Who is an “Attorney” for Attorney-Client Privilege?
- Attorney discussing legal details of case
- Ministerial Support Staff of the Attorney (Paralegals, Admin Assistants)
- Specialist Support Staff working on the case (Accountants, Translators, etc.)
What is Confidential in the Attorney-Client Privilege?
Must be an effort made to keep confidential information confidential
- Document control
- Notification of confidential disclosures to client
- Verbal
- Written
- Involve only those who need to know
What is a failure to assert the privilege waiver?
- If the Client or Attorney fail to assert the privilege
- In a court proceeding - raising an objection
- Not asserting privilege during other communications
What is the scope of the Attorney - Client privilege?
- Attorney
- Communication made in confidence for the purpose of obtaining info from a lawyer, for the purpose of providing legal advice to the client
- Client
- Internal Corporate Clients for in-House counsel
- Work Product in anticipation of litigation
- Former Employees (while employed)
- Government Employees (agency staff and attorney’s in civil cases)
- Anyone seeking legal advice from an attorney
What is waiver by inadvertent disclosure?
To determine if an inadvertent disclosure destroys the privilege, the Hydraflow test is used:
- The reasonableness of the precautions taken to avoid disclosure
- The number of disclosures
- The extent of the disclosures
- The promptness of the actions taken to rectify the disclosure
- Whether in the interest of justice the inadvertent disclosure error should be rectified.
What is a communication within the Attorney - Client privilege?
- Assertions if meant to be an assertion
- Verbal
- Written (think of blind client- braille)
- Non-Verbal Actions (think of deaf client - sign language)
What are the four requirements of “Prior Inconsistent Statements” 801(d)(1)(a)?
- The declarant must testify, subject to cross examination, at the current trial
- The prior statement must be inconsistent with the witness’s trial testimony
- The prior statement must have been given under penalty of perjury
- The prior statement must have been given at a trial, hearing, or other proceeding, or at a deposition.
What is the “Control Group” test in Privilege?
The attorney-client privilege only extends to communications between the corporation’s attorney and the control group.
- Those people with control of the decision making of the corporation being advised by the attorney
- Employees at the request of the control group can provide information under the privilege
- Within their corporate duties
- They are aware that the information is for legal purposes
- Kept confidential
- Employees at the request of the control group can provide information under the privilege
What information do “Privilege Logs” contain?
- All authors and recipients of claimed documents
- Date of the documents
- Why they are being withheld
What are the Daubert reliability factors?
Scientific data must be based on;
- Testing
- Peer Review and Publication
- Error Rate
- General Acceptance of data/methods/analysis
What are the ways to waive the Attorney-Client Privilege?
- Express Waiver
- Failure to Assert Privilege
- Voluntary Disclosure
- Putting Protected Information at Issue
- Inadvertent Disclosure
What is an express waiver of the Attorney-Client privilege?
The client (individual or officers of a corporation) makes a disclaimer to the privilege
What is Voluntary Disclosure waiver of the Attorney-Client privilege?
A client voluntarily discloses the content of the confidential communications between themselves and the attorney.
What is the difference between Attorney-Client and Confidentiality?
- Attorney Client is evidentiary
- Confidentiality is an ethics rule
What is Expert witness testimony?
One who is an expert based on knowledge, skill, experience, training, or education may testify as an opinion or otherwise if;
- The expertise will help the trier of fact to understand the evidence or determine an issue of fact
- testimony based on facts or data
- based on reliable principles and methods
- expert has applied the methods and principles to the facts of the case - relevancy.
What can Expert Witness’s base their opinions on?
- Firsthand knowledge
- Tests/Examinations they personally made
- Data presented in Court
- Any data/facts presented during trial, both sides
- Data presented Out of Court
- Reports/evaluations made out of court
What is the scope of Expert Witness testimony ?
- Ultimate Issue
- Can comment on essential issues of the case
- Criminal Trial
- Cannot comment on guilt or innocence of D
- Cannot comment on mens rea of D
What is a motion in limine?
A pretrial motion to exclude evidence or rule on evidentiary issues
What is bifurcation, trifurcation?
Splitting a trial into separate actions each dealing with a specific portion of the trial.
- Liability vs Damages
- Liability vs Damages vs Willfulness
What are the types of experts in a patent litigation?
- Inventor
- Technical Expert
- Patent Expert
- Damages Expert
What is a non-testifying expert?
Any expert used without the intention of testifying (report or oral)
What is a testifying expert?
An expert retained to provide testimonial evidence about the case.
- written report (26(a)(2)(B))
- orally testimony
Is information provided by non-testifying experts discoverable?
No, falls under work product exemption
Are all communications between a testifying expert and the attorney discoverable?
No
What communications between attorney’s and testifying experts are discoverable?
- Expert’s compensation
- Facts provided by attorney that the expert relied on
- Assumptions provided by attorney that expert relied on
Are draft reports discoverable?
Used to be, now not discoverable.
What is rule 56(a)?
Summary Judgment
What is summary judgment?
Either party may file a motion which shows
- no genuine dispute of any material fact exists
- movant is entitled to judgment as a matter of law.
Is summary judgment “all or nothing”?
NO, summary judgement can be granted on the whole or subparts of the claim or defense
Is summary judgment final?
It is considered a ruling on the merits and final
What is rule 56(b)?
Time to file a summary judgment motion
What is the time window for filing a summary judgment motion?
At any time during discovery and up to 30 days after discovery has closed.
What is rule 56(c)(1)?
Procedures for summary judgment motion
what is a summary judgment motion based on?
- Factual Positions
- Facts not admissable as evidence
- Non-cited materials
- Affadavits or Declarations
What do factual positions in a summary judgment require?
- Citing to the record for factual basis
- Showing that record does/does not establish a dispute
- Adverse party cannot produce factual evidence to support the fact.
What can a party do if a fact in the sumary judgment is not supported on admissable evidence?
File an objection
Can the court only consider the cited materials in a summary judgment?
No, it can consider any information in the record.
What is an affadavit?
A sworn statement of fact by an individual.
What is a declaration?
An unsworn written statement signed off on by the declarant, acknowledgment of perjury.
What is U.S.C. § 1746
Unsworn Declarations under penalty of perjury
What can the court do if a nonmovant files a declaration or affadavit of “facts not available”?
- defer or deny summary judgment motion
- allow time to obtain “facts”
- issues any other appropriate order
What can the court do if a party fails to properly support or address a fact?
- Give an opportunity to address
- consider facts undisputed (ouch)
- grant summary judgment (no disputed facts)
- issue any other appropriate order
What is rule 42(b)?
Separating a trial (bifurcation)
On what grounds can a party obtain a bi or trifurcation?
- Convenience
- Avoid prejudice
- Expedite
- Judicial Economy
Can a person infringe a patent prior to its issuance?
Nope, infringement begins when the patent is granted.
What is Fed. Evid. Rule 702?
Testimony by experts
What is required for expert testimony as per Rule 702?
- Scientific, Technical, or other Specialized Knowledge
- Assist the trier in fact to understand
- Qualified as an expert
- Testimony is reliable
How is an expert qualiified?
By
- knowledge
- skill
- education
- experience
- training
What makes the experts tesimony reliable?
- Based on sufficient facts or data
- product of reliable principles and methods
- Expert applied the principles reliably to the facts of the case
What can the expert base their opinions on (Rule 703)?
- Firsthand observation
- Evidence presented during trial
- Evidence presented out of court to expert
What is Rule 704(a)
Opinion on an ultimate issue
Does the expert have to provide the underlying reasons for the opinion?
Not as a rule, but may provide if asked under cross examination (judge decides)
What is a “court appointed” expert (706(a))?
On a motion by a party or on its own the court can appoint an expert to help the court.
What is a “court appointed” expert required to do (706(b))?
- advise the parties to any findings they make
- be deposed by any party
- offer testimony if called by the court or parties
- be cross examined by all parties
Can a testifying expert witness by deposed?
Yes (26(b)(4)(A))
- Once identified as testifying expert witness
- Only after report has issued
Does a party have to disclose the use of a testifying expert witness?
Yes, no suprises (26(a)(2)(B))
What does an expert witness have to include in the report (26(a)(2)(b))?
- all opinions to be expressed and the basis/reasoning
- facts or data used to create them
- witness’s qualifications
- publications over last 10 years
- list of other cases testified in
- last four years
- compensation for testimony
Do all expert witnesses have to provide a report?
Almost all, but if not then a disclousure which provides
- subject matter to which the witness will testify
- a summary of the facts and opinions the witness will state
What are common areas for opposing a discovery request?
- attorney client privilege or work product
- confidential information or trade secrets
- overbreadth of request
- vagueness of request
- undue burden
what does a response to a discovery request include?
Typically
- general objections
- specific objections to specific requests
- promise to provide unobjectionable information
What is Rule 26(c)(1)(A)?
Protective Orders
What is a protective order?
A court order protecting a party or a parties information from annoyance, embarrassment, oppression or undue burden or expense.
What types of things are in a protective order?
- bar on discovery or disclosure of info
- details on specific time, place for disclosure of info
- prescribing the discovery method
- limiting scope to certain matters
- designating specific persons to be present during discovery
- sealed depositions
- trade secret or confidential info not to be revealed
- sealed written information
What happens if a request for a protective order is fully or partially denied 26(c)(2)-(3)?
- order discovery of non-protected information
- award expenses
Is a protective order the first thing to do?
NO, the rules require the parties to attempt to resolve the issue in good faith first.
What is Rule 37(a)?
Motion to compel discovery/disclosure
What jurisdiction does the order to compel fall into?
- Parties
- Court where case is pending
- Non-Parties
- court where discovery is or will be taken
- subpeona power
What specific motions can be made under Rule 37(a)?
3(A) - Compel disclosure
3(B) - Compel discovery response
3(C) - Deposition Rule
4 - Evasive or incomplete disclosure, answer or response
What acts can trigger a Rule 37(a)(3)(B) motion to compel?
- Failure to answer a question in a deposition
- Corporation/entity fails to make a designation
- Party fails to answer an interogatory
- Party fails to respond or permit to an inspection
Does the deposition have to stop is the despondant fails to answer questions?
NO, Rule 37(a)(3)(C) provides that the party conducting the deposition may suspend or continue before asking the court for help, lol.
How do the rules view an incomplete or evasive disclosure, answer or response
The rule treats it as a failure to disclose, answer or respond.
Does failure to determine (legal advice) if you are possibly infringing per se prove willfullness?
NO
Does obtaining a legal opinion regarding possible infringement automatically make one a willful infringer?
NO
How does the court analyze if a protective order is reasonable?
- Is the info a trade secret, confidential, etc.
- Would disclosure result in congnizable harm?
- Has the person requesting the protective order shown good cause with a clearly defined and serious injury?
What is a stipulated protective order?
Parties agree to the scope of discovery and the limits on confidential, trade secret, etc. info.
What is a “Patent Prosecution Bar”?
Like a non-compete, the lawyers in the case cannot prosecute patent applications related to the inventions under discovery for some future period.
What does a Patent Prosecution Bar requestor need to show?
request must reasonably reflect the risk
- information that triggers the bar
- scope of activities prohibited by bar
- duration of bar
- subject matter covered by the bar
What does a party seeking exemption from the patent prosecution bar need to show, (bar by bar lol)
- counsel is not involved in the patent proseuction at the decision-making stage, and
- balance of injuries, injuries to barring counsel outweighs injury to other party
