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CROSS-BORDER PATENT LITIGATION:U.S. LITIGATOR’S PERSPECTIVE

Victoria F. Maroulis

Quinn Emanuel

Practical Considerations

Coordination between multiple actions in different jurisdictions

Differing rules and practices

Use of foreign litigation developments in U.S. Courts

Availability of U.S.-style discovery in foreign litigations

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Section 1782: U.S.-Style Discovery in Foreign Litigations

Minimum Statutory Requirements Request by interested party

A foreign tribunal or person with an interest in the foreign proceeding

Request for document, thing, or testimony To be used in a foreign proceeding From someone that resides in the district

Further Discretionary Factors Is the discovery sought available in the foreign

proceeding? Is the foreign proceeding taking place in a real

tribunal? Is the request just an end-run around the applicable

rules? Are the requests unduly intrusive or burdensome?

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Unique Issues in 1782 Actions

Confidentiality issues Documents governed by protective orders Sealing procedure in the foreign tribunal

Discovery of documents located overseas Foreign subsidiary might have the documents Courts have been split Question appears to be discretionary and based on

“control” Discoverability in the foreign tribunal

Courts have been split Not considered a requirement now

Admissibility in the foreign proceeding Courts have been split on this too Admissibility not considered a requirement now

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