Increasingly, patent and trade secret disputes may be global in scope, involving multinational corporations and international activities. As a result, evidence supporting claims and defenses in resulting litigation frequently exists outside U.S. boundaries. This development in patent and trade secret litigation in U.S. courts often necessitates cross-border discovery that raises complex issues of international comity. This Commentary on Cross-Border Discovery in U.S. Patent and Trade Secret Cases offers best practices to counsel, parties, and the courts on case management where cross-border discovery is necessary. In particular, the best practices address mechanisms the courts and counsel can use to plan for and streamline issues that arise from extended timelines involved with cross-border discovery, for example, letters of request under the Hague Convention on Taking Evidence Abroad. Another focus of the Commentary is on access to proof issues where cross-border discovery is critical in patent and trade secret cases. The best practices address many of the comity factors that the U.S. Supreme Court identified in its seminal decision in Société Nationale Industrielle Aerospatiale v. U.S. District Court for the Southern District of Iowa to guide district courts when resolving disputes relating to cross-border discovery. Please note that this version of the Commentary is open for public comment through September 30, 2021, and suggestions for improvements are welcome. |
