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You’ve Been Served. Now What?

By Jessica Davis, September 19, 2019

intellectual property rights infringementWhen you least expect it, your company may face a subpoena relating to a lawsuit involving intellectual property rights to which your company is not a party (for example, litigation involving a customer or supplier accused of infringing a patent, trademark or copyright). When this happens, you may be caught off guard and unsure about next steps, especially if your company does not routinely handle litigation matters. Your options are either: (1) handle it yourself (which can be tricky for many reasons, including subjecting your company to potential liability), or (2) engage outside litigation counsel with specific IP experience (which is likely to be expensive).

Patent GC offers a third option: on-demand IP counsel services. Unlike traditional firm lawyers, our attorneys have served as in-house intellectual property counsel, enabling them to approach subpoenas from a more practical perspective in which business goals and strategy are at the forefront of decision making. They also understand the desire to be as cost-effective and efficient as possible, and therefore, charge a fraction of traditional law firms rates and never over-lawyer a matter.

How to Handle a Subpoena:

Based on our collective in-house experience, we believe that preparation is key and advise our own clients to designate an internal lead – someone who will be responsible for coordinating the company’s response to a subpoena or other litigation matter – as a matter of process. Whether it is an in-house lawyer, CFO or other stakeholder, this person will work closely with experienced counsel to ensure that the company makes an informed decision on how to respond to a subpoena, which is especially important if there is a risk that your company may face related liability down the road.

If and when you are served a subpoena, we recommend the below checklist to guide the company’s response:

  1. Determine the return date
    Subpoenas generally include a return date (deadline) by when the recipient must respond. If the subpoena seeks documents, you must either object or send the documents before the return date (in some case, objections are actually due before the return date). Counsel can help you extend the return date to allow more time to object or comply. If the subpoena seeks deposition testimony, counsel also can assist you in negotiating ​a deposition date convenient to the witness.
  2. Decide whether to object or comply
    When faced with a subpoena, you must decide how to respond. Your options include: (a) complying with the subpoena; (b) informally contacting the party serving the subpoena to try to narrow its scope; (c) serving a formal objection (often, a subpoena is vague or subjects you to an undue burden/expense to comply); or (d) filing a motion to quash or modify the subpoena, or for a protective order against certain information being sought in the subpoena. Determining the right course of action depends on your specific circumstances, including the nature of your business and the scope and type of information requested.
  3. Locate and produce responsive, non-privileged documents
    ​Sharing any privileged documents may destroy your ability to later claim that those documents are privileged; therefore, it is critical that you work with counsel to determine which documents, if any, to produce before you begin sending copies to the requesting party. This review can be accomplished during what is known as a “pre-production document review” to decide whether to hold back any documents in order to preserve a privilege or immunity. Likewise, if any responsive documents include your confidential information (or that of a customer, supplier or other partner), you must ensure that the court where the litigation is pending has signed a protective order or confidentiality agreement, including a provision controlling the treatment of documents produced in response to a subpoena. Endorsing each page including confidential information with a confidentiality legend is often a good idea. Counsel also can assist you in determining whether to add production numbers to each page or to ask the requesting party to do so.
  4. Identify a corporate designee and schedule a date for the designee to testify
    If the subpoena seeks testimony from a corporate representative under Federal Rule of Civil Procedure 30(b)(6), you must identify one or more witnesses knowledgeable about the topics in the subpoena and prepare each witness on the questions that the requesting party may ask, especially any that may implicate your company in the dispute being litigated. When selecting witnesses, we recommend that you consider each candidate’s experience at testifying and ability to speak concisely and to the point.
  5. Issue a litigation hold, if warranted
    Even if you object to the subpoena, or do not have any responsive information, once you receive the subpoena, you are under a duty to preserve any information responsive to the subpoena, even if you would not do so in your ordinary course of business.​​ This is referred to as a litigation hold. Counsel can assist you regarding how best to communicate this duty within your organization, including instructing individuals what to retain, how to retain it, and how long to keep the hold in place.

Preparing your company for the unexpected is always a smart decision. When facing a subpoena, a coordinated and informed response will always serve your company best. Patent GC routinely works with companies of all sizes on an array of IP-related matters, including assisting with subpoenas as well as pre-litigation dispute resolution. In the event you are served with a subpoena, Patent GC can help you collect and review documents for responsiveness and privilege and/or assist you in preparing a witness for a deposition or other testimony. If you have questions about how we can assist your company, please contact Jessica Davis directly at jdavis@patentgc.com or request more information by visiting our Contact Us page.