Matthew Rizzolo, Matthew Shapiro & Hyun-Joong (Daniel) Kim: US Discovery Law Aids Response to Patent Court Evidence Demands

Extract from Matthew Rizzolo, Matthew Shapiro & Hyun-Joong (Daniel) Kim’s article “US Discovery Law Aids Response to Patent Court Evidence Demands”

Ropes & Gray attorneys analyze how a US discovery tool is aiding response to Unified Patent Court evidentiary demands.

The launch of the Unified Patent Court has potential to reshape global patent litigation. The UPC requires a statement of claim to initiate a case that must include “the evidence relied on” to support infringement allegations—a requirement that places a heavy burden on a UPC claimant. A US discovery tool—28 U.S.C. § 1782—may assist in overcoming such burden.

Pre-Suit Discovery

The UPC’s “evidence relied on” requirement could be a gatekeeping hurdle for claimants because they may request orders only to preserve evidence, or for inspection of premises. These orders only have effect in member states and, so far, have been issued in limited circumstances, such as where the accused products were publicly displayed or there was a demonstrated risk of destroying evidence.

At least for defendants and third parties residing in the US, Section 1782—which authorizes a federal district court to allow US discovery for use in a foreign proceeding upon satisfying certain factors—may provide a much-needed tool for UPC claimants to collect evidence and prepare a statement of claim. With the advent of the UPC, Section 1782 promises to be utilized even more.

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