Tsircou Tactics And Tips: Conducting IP Litigation In The Middle Of Covid

By Konrad L. Trope, Esq., Litigation Chair
Tsircou Law Firm

With the onset of Covid, prosecuting or defending infringement actions has become more challenging, more time consuming, and inevitably more stressful.  However, the legal issues that clients face regarding patents, trademarks, copyrights and trade secrets has not changed.  Lawsuits are still being filed and defended; depositions are still being taken and defended, mediations and trials are still going forward.  Thus, the IP practitioner just needs to be mindful of the changing landscape so as to adjust his or her expectations and deadlines along with making sure that the client also appreciates the adjustments imposed by Covid when prosecuting or defending litigation matters.

Here are some of the more notable issues or situations that litigators are facing in managing IP cases during this pandemic:

1. Depositions:  

1. Most if not all federal courts allow for depositions to be conducted in a video/virtual environment whereby the deponent is one location, the attorney taking the deposition is in a different location, with the court reporter in a separate location.  Technically, under the Federal Rules of Civil Procedure, the person administering the oath, in other words the court reporter, is supposed to be in physical presence of the deponent.  See FRCP Rules 28(a)(1)(A) and 30(b).  However, most federal courts have issued temporary modifications to this requirement because of the Covid crisis, thereby allowing the deposition to go forward without the court reporter being in the same physical location as the deponent.
2. Because depositions are being done virtually, there are a number of different services and platforms by which the video/virtual deposition can be conducted.  The software to be used is critical since the identification and presentation of exhibits to the deponent is obviously different in a virtual setting than in a face-to-face setting.
3. Essentially, an attorney should look for software that allows the presentation of exhibits to the deponent and deponent’s counsel so that the deponent can easily review the document in order to answer questions.  Many services insist that exhibits be uploaded two days before.  However, many of us may be adjusting or modifying our universe of potential exhibits right up to the night before the deposition takes place.  Thus, whatever service you choose, the attorney should make sure that the ability to introduce exhibits, not previously uploaded, during the deposition, can take place and still allow the deponent and his/her counsel to easily and fully review the document.
4. The attorney taking the deposition may want to arrange with the deponent’s counsel to separately email exhibits with the introduction of each exhibit through the video platform, as that will enable deponent’s counsel to print out the exhibit as opposed to merely reading it on the screen.  Bear in mind that many virtual deposition services only provide a means for the exhibits to be displayed on a computer screen but do not necessarily enable the person viewing the document to print it out at the deponent’s location, thus necessitating the document being sent separately via email to the deponent or deponent’s counsel.
5. From the above, one can easily conclude that this is a time-consuming process and will easily chew up more than the seven hours allotted if it is a hotly contested deposition.   Thus, as part of any court scheduling order, counsel for all parties should stipulate to depositions being extended from seven hours under Rule 30 to ten hours to allow for the inevitable delay in introducing exhibits through virtual platforms such as Zoom and Webex.  I have found many judges are quite open and accommodating to allowing this modification to FRCP Rule 30.

2. Sending Correspondence and Serving Discovery and Pleading:

1. FRCP Rules 5 and 6 govern the rules of service of pleadings and discovery.  Most Federal District Courts that provide for electronic filing and subsequent electronic service of pleadings.  However, FRCP Rule 5(b)(2)(E), (F) does not authorize service of discovery by electronic means (email) unless both sender and receiver have consented in writing.  Given the various challenges and controversies surrounding the U.S. Postal Service, we have found that electronic service, coupled with delivery by an overnight courier service such as FedEx or UPS as a backup, is a safer and more reliable alternative.  At the outset of any case, we strongly suggest that counsel for the parties consent to such a stipulation, in writing, with electronic service being deemed completed upon sending while the back up delivery via overnight courier is simply to ensure that no party is prejudiced in the event of a disruption of electronic service.
2. While there may be some additional costs involved, these costs are small when compared to the legal fees and costs that would be involved in bringing a motion to resolve a dispute over timeliness of service where mail service was never completed or was completed beyond the three additional days provided for under Rule 6.  Our office is finding that simple letters weighing less than four ounces are taking as long as seven days to go from northern California to southern California via USPS.

3. Other Internet Issues

1. Regardless of when various restrictions are lifted for access to office buildings, working remotely on some level is likely to remain the new norm for the legal profession.  Thus, attorneys need to be mindful of not only upgrading their equipment such as laptops, webcams, routers and modems, but also increasing the bandwidth of home Internet service as well as upgrading services, programs and hardware for protecting the security and integrity of electronic transmissions.  Indeed, numerous reports have identified law firms as a prime target for cyber attacks and now cybersecurity insurance is a regular offering from most malpractice carriers.
2. While the costs of implementing these various upgrades may seem expensive at first, such costs are necessary and ensure uninterrupted delivery of services to clients while still moving cases forward with minimal disruption.