1. Multiple Defendant Patent Infringement Cases: Complexities, Complications and Advantages
Brian M. Buroker, Esq.
Hunton & Williams LLP
1900 K Street, N.W.,
Washington, DC 20006
(202)
Maya M. Eckstein, Esq.
951 East Byrd Street
Richmond, Virginia 23219
(804)  
9/18/2018

2. INTRODUCTION Multi-defendant patent infringement suits are the norm.
Plaintiffs file them because:
reduce costs
let plaintiffs pursue multiple licensees simultaneously
increase settlement pressures
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3. Introduction (con’t) Make cases more complex
Especially if defendants are competitors
Increase in defendants exponentially increases logistical issues
Increase complexities
Can complicate defense
Can also bestow advantages.
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4. COMPLEXITIES Protective Orders
Difficult to negotiate when defendants are competitors.
Standard POs don’t address multi-defendant issues.
Competing defendants less concerned about the plaintiff than about the other defendants.
Especially so if the plaintiff is a non-competing patent holding company.
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5. COMPLEXITIES -- POs
Should co-defendants’ access confidential information?
Concerns require multi-layered POs
Each confidentiality level defines what type of information can be reviewed by what types of people.
Example: In-house counsel/personnel can access Confidential documents, but not AEO documents.
Example: Only in-house counsel, not business executives, can access confidential documents.
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6. COMPLEXITIES – POs Should PO include patent prosecution bar?
In-house lawyers who draft patent applications and have access to competing defendant’s confidential information could unknowingly use that information in preparing patent applications.
Competing defendant could acquire patents to later assert against co-defendant.
Merits of this view are debatable, but courts recognize it as a concern.
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7. COMPLEXITIES -- POs Patent Prosecution Bars
Patent prosecution bars preclude participation in patent prosecution for those with access to confidential information.
Questions arise regarding scope and length.
Example: in-house patent attorney working for large software company.
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8. COMPLEXITIES -- POs Should source code escrow be used? Crown jewels
Serious financial damage if gets in wrong hands.
Risk increases with number of people who may have access:
Lawyers
Paralegals
Professional Assistants
Copy Vendors
Trial Strategy Vendors
Experts and Assistants
Court
Risk especially increases when competing defendants have access.
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9. COMPLEXITIES -- POs Source Code Escrow
PO defines access rules for escrow agent.
Defendants deposit source code with escrow agent.
Approved individuals can view source code at escrow facility
Under escrow agent’s watchful eye.
Copying prohibited/restricted.
Information may not leave facility.
Agent maintains log of visitors.
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10. COMPLEXITIES – JDAs Joint Defense Agreements Extremely common.
More complex in multi-defendant cases.
Joint defense privilege precludes disclosure of shared information among parties with common interest.
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11. COMPLEXITIES – JDAs Joint Defense Agreements
Issues on which to assert common defense
Invalidity
Unenforceability
Lack of ownership
Must define common issues
Enforceable only as to communications related to common issues
Cost Sharing: prior art searches, preparing/taking depositions of inventor(s) and plaintiff’s witnesses, briefing various issues
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12. COMPLEXITIES – JDAs Joint Defense Agreements Issues to address:
What if disagreements arise in areas of common interests?
What if one defendant settles?
What if shared activity greatly benefits one defendant over others?
Who can obligate defendants to payment?
Advance agreements prevent disputes.
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13. COMPLEXITIES – JDAs Prior Art
Prior art search often lengthy and costly.
Multi-defendants increase resources/reduce costs.
But defendant who locates prior art can use it strategically, i.e. to negotiate better settlement.
JDA should specify prior art obligations amongst defendants.
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14. COMPLEXITIES – Time
How many lawyers does it take to screw in a light bulb?
Meetings
Hearings
Depositions
Briefing
Joint Experts
Added “noise”.
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15. COMPLICATIONS -- Differences
Not all issues are common
Various non-infringement issues
Various defenses
Various damages issues
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16. COMPLICATIONS -- Differences
Markman Issues
Differences in defendants’ products.
Results in need to emphasize different claim terms.
Single Markman brief required.
Hearings similarly limited.
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17. COMPLICATIONS -- Differences
Discovery Issues
Courts limit:
Interrogatories
Total deposition time
Total length of inventor depositions
Total length of expert depositions
Restricts each defendant’s ability to pursue discovery.
Defendants must prioritize issues and convince JD group to address them.
Some issues may take back seat.
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18. COMPLICATION – Settlement
Effect on remaining defendants
Expertise on particular subjects could be lost.
Each defendant must have knowledge of all issues.
Increases settlement pressure.
“Last man standing” syndrome.
Individual costs/responsibilities increase.
Agreement on infringement/invalidity/royalty affects others.
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19. COMPLICATION – Trial Trial Issues Can’t control other’s witnesses.
Witnesses can be substantively harmful or just not likeable.
Can affect other defendants.
Cross-examination of each defendant’s non-infringement expert.
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20. ADVANTAGES Cost Sharing More Heads Are Better Than One
Prior art search
Experts
Briefing
Depositions
Written discover
More Heads Are Better Than One
Collective thinking.
Especially helpful to inexperienced defendants.
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21. ADVANTAGES Overwhelmed Plaintiff
Less capable to timely address discovery deficiencies.
Defendants have more time:
to develop case
to schedule defendants’ depositions
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22. CONCLUSION Often saves costs But can add costs
Advantages from cost sharing probably offset (are overtaken) by complexities and complications.
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