An article by Zuzha Elinson in The Recorder points out the risks attendant to joint defense groups in patent litigation. The prime risk is being unprepared to go it alone when everyone else settles out around you. Two cases are mentioned, one defense verdict and one for the plaintiff, from which it is implied that winning or losing “singlehandedly” was the result of being unprepared, or not, to “scramble” from a “back-seat” posture to taking the wheel.
While preparedness is perhaps the most important aspect of patent litigation – that you can control – it’d be uninformed to discount away all of the uncontrollable factors. You win for a lot of reasons, and you can lose for every more reasons.
The article gives less insight into what needs to be secured in a joint defense agreement (JDA), as well as the other estimable risks. It is suggested that a lesser participant in the joint defense effort was left with no trial expert. A well-crafted JDA always should cede the jointly-retained expert to the use of any party that doesn’t settle. Of course, if a “back-seat” participant doesn’t get that expert prepared for trial with a report that covers the issues of importance to that party, then unpreparedness will cut off their options.
The greater risks can result from a ‘compromise’ defense strategy. Rarely are each of the defendant’s interests, and product mix, exactly aligned with all defendants. The effect then is to seek jointly a one-size-fits-all claims construction; to not pursue certain counterclaiming strategies; to limit discovery to topics acceptable to all defendants; and, to let the defendants with the largest exposure have the final say in all strategy decisions. It’s cheaper for the lesser defendants to ride in the back-seat, but in those jurisdictions that stringently enforce pre-trial disclosure rules, if the big-guns go silent, then it’ll be hard to negotiate a good settlement with a plaintiff that sees that the issues unique to that defendant were not addressed in the final claims construction statement, or in the joint expert’s report.
The article notes a trend toward common counsel, rather than a joint defense group with a liaison counsel. As good an approach is to have common counsel for the defense, but separate counsel for each counterclaimant. That way, several theories of invalidity or even inequitable conduct can be pursued, while common counsel can keeps the main defense moving straight ahead.
For the full article, see the Aug. 7th edition of The Recorder.