1. JOINT DEFENSE AGREEMENTS IN PATENT
INFRINGEMENT CASES
Jerry R. Selinger
November 11, 2011
California  Texas  New Jersey  North Carolina

2. Terminology
 “Joint Defense” and “Common Interest” are the
most commonly used terms and usually are
used interchangeably
 Can describe various assemblies of attorneys
and clients
 Multiple clients with the same attorney
 Multiple clients with different attorneys
 Some combination of the two
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3. Background
 Joint defenses in patent litigation have become
common
 Increase of multiple-defendant lawsuits filed by non-
practicing entities (NPEs)
 Mandated need to cooperate with co-defendants
 Economics of many NPE cases (settlement value vs.
cost through trial)
 Pressure on in-house counsel to lower costs
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4. Background
 New Joinder Rules (America Invents Act)
 Will reduce number of multiple defendant lawsuits
 Need/desirability of joint defense arrangements may
remain when a plaintiff files multiple lawsuits
asserting same patent(s) against multiple defendants
 Claim construction
 Invalidity
 Some multiple-defendant cases always will be proper,
e.g., defendants in privity such as manufacturers,
distributors, & retailers
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5. Joint Defense Privilege
 An exception to the rule that disclosure of
privileged information to third parties waives
privilege
 Establishing the privilege
 Generally, lawsuit must have been threatened or filed
 Group members claiming privilege are parties or
potential parties with expectation of confidentiality
 Sharing of privileged information furthers the common
legal interest
 No previous waiver of privilege
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6. Joint Defense Agreements
 Joint Defense agreements may be implied or
exist without a writing
 but written agreements are best
 Oral agreements can be enforced, but are more
susceptible to competing interpretations
 And inevitably leave open nuance issues
 Written agreements leave less room for later
disputes about terms, scope, and effect
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7. Joint Defense Agreements
 Primary goal of joint defense groups
 Share information and strategy without waiving
privileges
 Share costs/reduce expenses of defense
 Primary goal of joint defense agreements (JDAs)
 Define the relationship
 Preserve privileges
 Avoid future conflicts issues
 Avoid antitrust issues
 Preserve ability to act independently when necessary
 Anticipate and avoid logistical problems
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8. Define the Relationship
 Describe the common interest(s)
 Disclaim attorney-client relationship between
attorneys and other defendants
 Define cost-sharing arrangements
 e.g., do five related defendants represented by the
same attorney count as one or five for cost-sharing?
 Define permitted/prohibited uses of shared
information
 Methods for adding and removal/withdrawal of
group members
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9. Preserve Privileges
 Agree that group members will maintain
confidentiality
 But that sharing confidential information cannot create
future conflict
 Agree that sharing of information among group
does not waive attorney-client, work product, or
other privileges/immunities
 Agree that group members facing outside legal
obligation/order to disclose will provide others
with notice and opportunity to protect information
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10. Preserve Privileges
 Agree there can be no unilateral waiver of group
privileges
 Agree joint defense material will not be
disclosed to opinion counsel and “reliance”
witnesses, without express agreement
 Make sure parties added to the group later are
bound by the same terms and obligations
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11. Avoid Conflicts/Disqualification Issues
 Provision stating attorneys have performed all
necessary conflicts checks
 Disclaimer of attorney-client relationships
 Use express prospective waivers
 Each group member waives right to use participation
in joint defense group as basis for disqualification in
future cases
 Return or destroy confidential materials shared
by other parties at end of litigation and no use
outside the specific litigation
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12. Avoid Conflicts/Disqualification Issues
 In re Shared Memory Graphics LLC, Fed. Cir.,
Misc. No. 978, 9/22/11 (2-1)
 Reversed district court and held waiver provision
in JDA overrode conflict-of-interest concerns
 “Nothing in this agreement . . . shall be used as a
basis to seek to disqualify the respective counsel . . .
In future litigation”
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13. Avoid Conflicts/Disqualification Issues
 National Medical Enterprises, Inc. v. Godbey,
924 S.W.2d 123 (Tex. 1996)(orig. proceeding)
 Shared confidences under written JDA with NME
 Obligation to preserve confidences
 Lawyer moved to another firm, withdrew from case
 17 months later, others in lawfirm sued NME
 Firm disqualified – lawyer could not honor his
obligation of confidentiality under JDA and prosecute
pending claims, so firm was disqualified
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14. Avoid Antitrust Problems
 State group members have right to act
independently in negotiating and settling
 There should be no agreement regarding terms
under which license would be acceptable to
group members
 Agreement should allow voluntary withdrawal
from group
 Limit use/access of competitvely sensitive
information
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15. Preserve Independence
 Agreement should state that group participation
does not limit members’ autonomy in defending
the action
 Maintain right to initiate PTO review
independently (often limited to independently
discovered prior art)
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16. Preserve Independence
 But make sure experts are retained by group or
all group members (if key group member
withdraws, the expert is still available)
 Include terms governing obligations of
withdrawing parties that have taken the lead in
particular joint defense projects
 Make sure remaining group members are entitled to
retain or take possession of all necessary materials
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17. Other Logistical Issues
 Cost-sharing rules
 Case management – Some large groups use
steering committees (I will never agree)
 Accommodations for non-U.S. parties
 Potential effects of foreign law if non-U.S.
parties/counsel are involved
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18. Beyond the Agreement
 Be a team player, but not at the expense of your
client
 Be prepared to negotiate within the group
 Avoid unnecessary disagreements that destroy
the “common interest”
 Consider who your co-defendants are in
negotiating protective orders and information-
sharing requirements
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19. Thank You.
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