The Changes to Rule 34 and the New Ways Document Requests and Objections Will Be Handled
The December 2015 changes to Rule 34 are dramatic in the way document requests and objections will be handled in federal practice.
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- Timothy M. O’Shea
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Honors & Education
Professional Activities
Overview
Tim is a skilled litigator who represents clients in all aspects of complex business litigation and intellectual property litigation in state and federal courts across the country.
Tim represents clients in litigation involving trade secret and non-compete disputes, patent infringement and licensing disputes, contract disputes, business torts and technology-related claims. Tim provides practical legal advice that is aimed at helping clients accomplish their business goals. Tim has helped clients resolve many matters through negotiation, but he has also successfully taken cases through trial.
Tim is also the Chair of the firm’s E-Discovery Strategy & Advocacy Group and has deep substantive knowledge in the constantly changing field of e-discovery. Tim is an experienced advisor regarding the preservation of evidence and helps clients formulate defensible and effective discovery plans that are proportional to the needs of the case. Tim has also advised clients on cross-border discovery issues and data privacy issues in litigation, including compliance with the Global Data Protection Regulation (“GDPR”) and other foreign data protection laws.
Tim has lectured and written extensively on e-discovery issues. Tim was an author of an e-discovery article published in the 2014 William Mitchell Law Review, Volume 40, Issue 2 (Article 5), entitled “Using Legal Holds for Electronic Discovery” and he also co-authored a chapter entitled “Privilege and Clawbacks: Considerations Regarding the Protection of Privileged ESI” for the 2017 Minnesota E-Discovery Deskbook. Tim is also a member of leading industry groups, including the Sedona Conference, the Electronic Discovery Institute and the Association of Certified E-Discovery Specialists.
Prior to joining Fredrikson & Byron, Tim was a law clerk for Judge Richard H. Kyle and Chief Magistrate Judge Arthur J. Boylan of the United States District Court for the District of Minnesota. Tim has also served as an adjunct instructor at the University of Minnesota Law School, teaching Law in Practice to first year law students.
Experience
REPRESENTATIVE EXPERIENCE
Commercial Litigation
- Represented H.B. Fuller in winning a $12.8 million arbitration award against Accenture in a dispute regarding a global ERP implementation. View Star Tribune article.
- Obtained a $59.4 million settlement for the City of New Brighton in a dispute with the Army. New Brighton vs. United States of America: 84-CV-1110 (D. Minn. January 2015). View Star Tribune article.
- Represented court-appointed receiver in recovery of $12 million for victims of Ponzi scheme operated by Minnesota Print Services, Inc.
- Obtained a favorable settlement for the purchaser of heavy construction equipment that was defective.
Intellectual Property Litigation
- Represented a public company in defeating a $62.3 million theft of trade secret and breach of contract claim. After two years of litigation, Tim helped the client defeat each of the plaintiff’s claims on summary judgment. The Eighth Circuit Court of Appeals affirmed the victory in 2018. In addition, Tim helped the client recover nearly a million dollars in attorneys’ fees and costs for successfully defeating the plaintiff’s lawsuit.
- Represented a leading medical device company in a lawsuit against a competitor who began pilfering the client’s technical and sales personnel to gain its confidential information and introduce a competing device. Tim and the litigation team helped the client initiate an action for trade secret misappropriation and breach of certain employees’ employment agreements, among other claims. After a year of litigation, we obtained a temporary restraining order, a preliminary injunction, and ultimately achieved a very favorable settlement for the client.
- Advised and represented clients in patent infringement cases and licensing disputes that have resulted in positive outcomes for the clients.
- Represented a public company in an inventorship dispute that resulted in a favorable settlement for the client.
- Obtained a substantial settlement for a family-owned business in trade-secret litigation against a publicly-held company.
E-Discovery Strategy & Advocacy
- Counseled clients on cross-border data transfers, data collection and processing
- Helped clients address data privacy issues in litigation and develop strategy to avoid the inadvertent production of personally identifiable information
- Assisted clients in the development of tailored preservation, collection and review strategies that reduced the burden and cost of e-discovery.
- Advised and helped clients on addressing complex questions regarding the preservation of potentially relevant information.
- Assisted clients in negotiating an effective ESI protocol that helped reduce the expense of e-discovery and minimized or eliminated the expensive motion practice on “discovery about discovery.”
- Represented clients at court appearances and have taken/defended depositions that address e-discovery matters.
Articles & Presentations
Preservation Obligations for Text Messages and Instant Messages
January 27, 2017
Courts are starting to recognize that “texting has become the preferred means of communication.” In re Pradaxa Prods. Liab. Litig., 2013 WL 6486921, at *18 (S.D. Ill Dec. 9, 2013). Indeed, one survey found that 80 percent of people use texting for business and 15 percent of people surveyed indicated that over half of their text messages were related to business. Moreover, “80 to 90 percent of all companies have some instant messaging in use by employees,’ and 80 percent of that IM activity takes place over external programs.’” Seth A. Northrup & Li Zhu, Let’s Chat About the Legal Risks of Instant Messaging, Corporate Counsel, March 14, 2014 (citation omitted).
Proposed Amendments to Federal Rule of Evidence 902 Will Impact Collection of Electronically Stored Information
January 27, 2017
To establish that an item of evidence is authentic, a proponent must produce sufficient evidence “to support a finding that the item is what the proponent claims it is.” Fed. R. Evid. 901(a). Rule 901(b) of the Federal Rules of Evidence sets forth examples for establishing that the evidence is authentic, such as the testimony of a witness with knowledge.
Do Not Waive Privilege After Declining to Assert the Advice of Counsel Defense
January 25, 2017
By Timothy M. O’Shea and Ted C. Koshiol
Parties facing allegations of willful patent infringement can rebut the claim by proving that they relied in good faith upon the advice of counsel when undertaking the allegedly infringing activity. However, asserting the advice of counsel defense carries a heavy cost – waiver of privilege as to at least the attorney work product and attorney-client communications relied upon in formulating the opinion. Some courts have even extended the scope of this waiver more broadly to cover any information even considered by the advising counsel. This tradeoff leads many to forego raising the advice of counsel defense.
How Courts Have Dealt With the New Federal Rules on E-Discovery
December 19, 2016
The new amendments to the Federal Rules of Civil Procedure have been in place for one year. So how have the courts addressed the new rules regarding e-discovery?
Court Denies Motion to Compel ESI Generated by Foreign Subsidiaries
October 17, 2016
A recent products-liability case from a federal district court addressed the issue of the discoverability of communications between the defendants’ foreign subsidiaries with foreign regulators regarding the IVC filters at issue in the case. In re Bard IVC Filters Prod. Liab. Litig., 317 F.R.D. 562 (D. Ariz. 2016). All plaintiffs received their Bard filters and allegedly were injured in the United States. Most of the defendants’ communications with foreign regulators originated in the United States. However, there was evidence that some of the communications originated abroad, and may not have been captured in the ESI searches. The plaintiffs sought communications with foreign regulators to determine if any of those communications had been inconsistent with defendants’ communications with American regulators.
Magistrate Judge Hildy Bowbeer Offers Further Guidance on When a Court Should Order a Patentee to Reduce the Number of Asserted Claims
March 1, 2016
A Patent holder bringing an infringement suit sometimes brings suit to enforce hundreds of patent claims and may have little motivation to drop asserted claims until late in the litigation, leaving a defendant and the Court with numerous claims in the pre-trial phase. A recent case before Magistrate Judge Bowbeer offered further guidance on how and when courts should reduce the number of asserted claims.
New Federal Rules Will Impact E-Discovery
December 18, 2015
The recent amendments to the Federal Rules of Civil Procedure, which became effective December 1, 2015, are aimed at accelerating discovery and focusing on relevancy and proportionality. Here is an overview of the key changes that will impact the timing and scope of discovery.
Magistrate Judge Rau Offers Primer on “Prevailing Party” Status Under the Patent Act’s Attorney Fees Provision
September 28, 2015
Patent law permits the award of legal fees to a “prevailing party” only in “exceptional cases.” A recent decision from Magistrate Judge Rau applying the Patent Act’s attorney fees provision reminds litigants that demonstrating a case is “exceptional” in only one part of the equation.
Court Denies Discovery of Instant Messages, Text Messages and Voicemails
August 31, 2015
With the increased use of mobile devices for business purposes, parties to litigation are more prone to seek text messages, instant messages and voicemails during discovery. A recent federal court decision addressed the discoverability of this information.
New Standard for Awarding Attorneys’ Fees in a Patent Case Could Deter Frivolous Lawsuits
May 21, 2014
By Timothy M. O’Shea and Ted C. Koshiol
The United States Supreme Court recently changed the standard for awarding attorneys’ fees in infringement cases, giving district courts greater latitude to award fees, and making it less likely that those awards will be overturned on appeal.
PUBLICATIONS & PRESENTATIONS
Publications
- Co-author, “Privilege and Clawbacks: Considerations Regarding the Protection of Privileged ESI,” Minnesota E-Discovery Deskbook, December 2017
- Co-author, “Using Legal Holds For Electronic Discovery,” William Mitchell Law Review, Volume 40, Issue 2 (Article 5), 2014
Presentations
- Presenter, Your Trade Secret Toolkit: Tools to Help Manager Trade Secrets, March 5, 2015
- Presenter, “Practical Perspectives: Trade Secret Theft from Prevention to Enforcement,” February 27, 2014
- Presenter, “You Love it, You Hate it. Now you Have to Live With it,” William Mitchell College of Law e-Discovery Conference, October 4, 2013
- Presenter, “Data Protection: How Employers Can Ensure a New Hire Isn’t Bringing Data from a Previous Employer,” Association of Corporate Counsel – Minnesota Chapter, October 1, 2013
- Moderator, “Patently Relevant: Recent Developments in Patent Litigation,” Minnesota Chapter of the Federal Bar Association, May 14, 2013
Honors & Education
EDUCATION
- University of Illinois Chicago School of Law, J.D., cum laude
- Loyola University Chicago, B.B.A.
BAR ADMISSIONS
- Minnesota
- Washington
- Illinois (inactive)
- U.S. District Court for the District of Minnesota
- U.S. District Court for the District of Colorado
- U.S. District Court for the Western District of Washington
- U.S. Court of Appeals for the Eighth Circuit
- U.S. Court of Appeals for the Federal Circuit
HONORS
- Minnesota Lawyer, Attorney of the Year, 2015
- Minnesota Super Lawyers, Rising Star – Intellectual Property Litigation, 2015-2017
- Minnesota State Bar Association, North Star Lawyer, 2013-2015
- Certified E-Discovery Specialist, Association of Certified E-Discovery Specialists (this specialty is not accredited or recognized by the bars of Minnesota, Illinois and Washington)
- National Institute for Trial Advocacy, Intensive Trial Skills Program, Graduate, 2012
- Turnaround Management Association – Upper Midwest Chapter, Contributing Attorney on Team Awarded Transaction of the Year, 2011
- The John Marshall Law Review
Professional Activities
PROFESSIONAL ACTIVITIES
- Chair of IP Practice Group, Federal Bar Association (Minnesota Chapter) 2012-2013
- Communications Committee, Federal Bar Association (Minnesota Chapter)
- Minnesota Bar Association
- Adjunct Instructor, University of Minnesota Law School – Law in Practice
- Judicial Law Clerk for Judge Richard H. Kyle, United States District Court for the District of Minnesota, 2007-2008
- Judicial Law Clerk for Chief Magistrate Judge Arthur J. Boylan, United States District Court for the District of Minnesota, 2006-2007
- Judicial Extern for Judge Ronald A. Guzman, United States District Court for the Northern District of Illinois, 2005