Six Tips for Commercial Litigators on Addressing Emergency Unfair Competition that Includes IP Infringement

For emergency litigators like us and other members of the business torts committee, oftentimes a client will present an emergency situation involving competitors or former high-level employees engaging in textbook unfair competition, including interfering with contractual relationships, theft of trade secrets, but also including a component of a “hard IP” violation, like patent infringement. Many skilled, highly experienced litigators will reflexively shut down and boot the case away once they see even the hint of a patent issue, even though they are the ones who are best positioned to address the comprehensive unfair competition and run to the courthouse to get a TRO. I’m here to tell you, this is often a mistake. Keeping in mind the following six tips, experienced commercial litigators can, and should, feel confident handling those matters.

1. Retain a Patent Prosecution lawyer as a Consulting Expert. The patent prosecution consultant will be able to assist a skilled litigator with issues like patentability, validity, and claim construction. This assistance will aid the litigator twofold: first, in crafting arguments on the patent claims that are part of the complaint, and second, in defending against the other side’s (likely misstated) patent arguments. The consulting lawyer and litigator will bring very different skills and competencies to the table, and both are needed to effectively handle emergency litigation of this nature.
2. Prepare a Verified Complaint. By filing your complaint with a verified complaint included, you will already have the sworn testimony that you will need to establish the predicate evidence for your motion for a temporary restraining order (TRO), which you will file right after the complaint.
3. Prepare a Claim Chart. Work with your patent prosecution counsel to prepare a claim chart in support of the infringement claim. This should be prepared before filing the case and attached to your original verified complaint. The claim chart should compare the elements of the claims at issue with the accused device. When possible, pictures and demonstratives should be used, especially if you are not filing in the U.S. Court of Federal Claims.
4. Pre-Draft Your Discovery. As the plaintiff, you set the pace of this emergency litigation. Before you file your verified complaint, pre-draft a motion for expedited discovery, your discovery requests, and any third-party discovery you might need. This will allow you to file your motion for expedited discovery contemporaneous with your motion for TRO and to promptly serve your discovery on the defendant(s) while they are still scrambling to catch up.
5. Keep Your Client Up-to-Date. An unfair competition TRO with patent infringement claims moves fast and can be very technical. You will need to work closely with your client to understand (1) your client’s intellectual property and (2) the accused device/technology. This will involve a lot of calls and war room sessions with the client. If your clients are busy executives of a prospering company, they will certainly have other obligations at the same time when you need their attention on the litigation. As much as possible, give your client advance notice of the time commitment that will be expected and have key witnesses pre-block time during the TRO period for hearing and deposition preparation.
6. Have an E-Discovery Vendor on Standby. Once your motion for expedited discovery is granted, the discovery process will move quickly in between the standard 14 days allotted for a TRO. You will need to make document productions, and you will need to review document productions quickly to gather deposition exhibits and exhibits for your preliminary injunction hearing. If you have already engaged an e-discovery vendor prior to receiving documents, you will be better positioned to tackle this expedited timeline. When you are getting ready to engage an e-discovery vendor, also consider if a protective order or an electronically stored information protocol is necessary for the case.