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CLE - Best Practices and Ethical Issues in Intellectual Property Litigation

Thursday, November 15, 2012 4:30 PM to 6:30 PM
Boston Bar Association - 16 Beacon Street, Boston, MA

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*Additional fees may apply for online viewing of programs via West LegalEd. BBA Members may be eligible for a discount.


Over time, the world of patent litigation has lost much of the civility. Attorneys conduct, and that of their clients, can reach a level of hostility unmatched in other areas of litigation.  No longer do some attorneys treat their work as a profession with expectations, guidelines and rules, but rather a business wherein the goal of winning is all that matters.

This CLE will discuss best practices that retain civility while maintaining the zealous advocacy necessary to represent their clients. The panelists will lead a detailed discussion on the paradigm shift from civility, and how it affects each aspect of the discovery practice.  Topics will include document production tactics, claim construction issues, use of inequitable/unethical conduct allegations, reliance on opinions of counsel, and damages.


A. Introduction 
  - Paradigm shift
  - Pushing the limit?

B. Discovery
  - Collecting client's documents
  - When to produce damaging documents
  - Document demands on opposing side.

C. Allegations of unethical conduct by opposing counsel – when/whether, and how, to make them
  - Allegations used as litigation strategy
  - Tit-for-tat allegations

D. Claim construction and defenses
  - Should you argue for far-reaching but potentially supportable claim constructions?
  - Using Inequitable conduct or Unethical conduct before the PTO – should these defenses be used as stock affirmative defenses in every litigation
  - Reexamination proceedings as a stock defense?

E. Issues of Intent and Reliance on opinions of counsel
  - Indirect infringement
  - Willfulness
  - Reliance on opinion of counsel

F. Damages
  - Pushing for quick settlements
Proper Valuations versus overreaching claims and ridiculous damages theories
  - Contingency settlements – effect of contingency kickers
  - Using litigation cost to influence settlement, including filing of weak claims and seeking small settlements


CLE Credits: 3 ethics credits

Materials: The BBA offers CLE course materials in both electronic and print format.  Please remember to select your option during registration.  If you opt for the electronic version, a PDF link will be email to you prior to the seminar. We encourage laptops and portable devices at the seminar, Free WiFi is available in all conference rooms!

Sponsoring Section/Committee(s):




Jacqueline Querubin


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