Court Strikes Answer of Accused Infringer Which, Among Other Things, Said it had not been a Real Party in Interest to an IPR Proceeding (to avoid estoppel) But Was Seemingly One

On a follow up to the post below about this issue, a district judge struck the answer of a defendant after concluding that the defendant had misrepresented its involvement in an IPR proceeding that had turned out favorably to the patentee, in order to avoid the estoppel effect.  The decision in Bortex Indus. Co. Ltd. v. Fiber Optic Designs Inc. is here.

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

11 thoughts on “Court Strikes Answer of Accused Infringer Which, Among Other Things, Said it had not been a Real Party in Interest to an IPR Proceeding (to avoid estoppel) But Was Seemingly One

  1. 10

    Wolf Greenfield was counsel in the reexamination, but not in the district court litigation. Counsel of record in the district court is a firm named STAMOULIS & WEINBLATT LLC.

    I agree with David’s comment below – I think it’s hard to conclude much about Wolf Greenfield’s conduct – even if they did report progress to Bortex, it’s not clear that they knew the level of Bortex’s involvement. All of the bills were sent to Bortex’s customer.

    As to Bortex’s counsel in the district court, it seems apparent that there was a lot of dancing going on, but the judge’s conclusion that there wasn’t enough to hold them responsible for the bad faith conduct doesn’t sound unreasonable, given the judge’s recounting of the known facts.

  2. 7

    How could counsel be allowed to turn a blind eye to what his client was doing? Does not 3.3(a)(3) come into play?

  3. 6

    I think Wolf has a duty to update its statement to the PTO about real party in interest to include Bortex. I would think they should include a copy of the court’s order herein.

    At that point, I think the proverbial S will hit the fan in the PTO.

    This will be fun.

  4. 5

    Thanks Bemused,

    I recognize that the court:
    “[has] not found [Wolf Greenfield] to have engaged in willful misconduct”

    I just think that THAT finding is utter B$. Lots of people like to complain about needless lawsuits, and here we have ample amounts of egregious lawyering going on – sure the client is most definitely culpable, but you have absolutely got to be kidding me to try to tell me that counsel has no culpability in these shenagins. Outrageous.

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