By David Hricik, Mercer Law School

Noted below, Akin Gump had sued a former vendor, Xcential, arguing that its lawyers had invented what Xcential had sought to patent. In response to the firm’s suit, Xcential filed five counterclaims, essentially asserting Akin Gump had misused information that Xcential had disclosed to Akin Gump.

As noted below, Akin Gump moved to dismiss those counterclaims and, further sought a preliminary injunction.

The district court denied the motion to dismiss four of the five, essentially holding Xcential had plead plausible facts that Akin Gump had misappropriated Xcential’s confidential information for the firm’s own benefit.  The order is here. (Call me Nostradamus, but I’d bet Akin Gump’s motion for preliminary injunction will be denied, too.)

On the main page, Dennis posted about a case raising somewhat similar ethical concerns, United Cannabis Corporation v. Pure Hemp Collective Inc., Docket No. 22-01363 (Fed. Cir. 2023), which involved a firm’s admitted use of text from one patent application in an application for another client in closely related cases.  It’s not clear, in either instance, whether any of the firms engaged in improper conduct, but it is not a good look where a firm is prosecuting cases for different clients in technologies so closely related that one client’s application provides a head start on another’s, or allegedly taking a vendor’s confidential information and using it for the law firm’s own benefit.

by David Hricik, Mercer Law School.

There are a number of ethics opinions and a couple of cases discussing whether it is adverse to opine — infringement, design around, and invalidity — for a client about another’s patent.  This case addresses the issue in the context of consent.

In Kimberly-Clark Corp. v. Extrusion Grp., LLC, 1:18-CV-04754-SDG, 2021 WL 2291078 (N.D. Ga. June 3, 2021), two law firms were merging. Kimberly-Clark was a longstanding client of one of the firms, Foley & Lardner. A client of the other merging firm, Gardere, had asked a Gardere lawyer to provide an FTO. As part of the merger, Foley obtained the informed consent of Kimberly-Clark to provide an opinion for that unidentified client, Extrusion, and specified the technology, and promised that Foley would not provide any additional opinions or handle litigation adverse to Kimberly-Clark related to the opinions. Then the lawyer, Mr. Ward, gave Extrusion the opinion, which was 500 pages long.

Then the firms merged and Kimberly-Clark sued Extrusion. Among other patents, Kimberly-Clark asserted the ’104 Patent and asked Mr. Ward for a written non-infringement opinion specific to it, which the now-merge red firm provided.

Later, Extrusion sought to exclude from evidence both the 500 page FTO and the written noninfringement opinion specific to the ’104 Patent. The court wrote in part:

The first opinion Kimberly-Clark seeks to exclude, the FTO, falls within the waiver. The FTO was drafted before Kimberly-Clark initiated litigation, is a general survey of patent references that is nearly 500 pages long, and contains a single, brief reference to the ’104 patent as it relates to a meltblown design that is not even at issue in this litigation. It cannot fairly be said that patent litigation specifically related to the FTO was anticipated or that Ward was providing assistance in a dispute adverse to Kimberly- Clark at the time he drafted the FTO. The Court, therefore, DENIES Kimberly-Clark’s motion to disqualify and exclude the FTO opinion.

Any testimony offered by Ward in support of the FTO, or any cross-examination of Ward in this regard, is a separate matter. Such testimony may very well create a conflict, and one that does not fall within the scope of the waiver. Whether Ward will be allowed to testify at trial concerning the FTO opinion, and if so, whether any potential subject matter of his direct or cross-examination should be excluded or narrowed, is overly speculative and involves too many variables for the Court to adequately address at 51 this stage of the litigation.

The Court therefore DENIES WITHOUT PREJUDICE Kimberly-Clark’s motion to exclude Ward’s testimony related to the FTO. The parties may raise this issue again with the Court through a motion in limine in advance of trial. With regard to the ’104 Patent non-infringement opinion letter authored by Ward on November 12, 2019, the resolution is much clearer – neither the letter nor any testimony concerning it may stand. Although the letter classifies itself as an “update” to Ward’s earlier non-infringement analysis, it takes the additional step of directly applying Kimberly-Clark’s ’104 Patent to Extrusion’s meltblown die. The letter was drafted after Kimberly-Clark initiated the instant litigation and after Kimberly-Clark advised Extrusion it intended to assert infringement of the ’104 Patent. This letter was undoubtedly written with the aim of assisting Extrusion in its ongoing litigation against Kimberly-Clark and therefore falls outside the scope of the waiver. Accordingly, the Court finds that an un-waived conflict of interest exists as to Ward’s ’104 Patent noninfringement opinion.

Because Foley has not filed an appearance in this case there is no one to disqualify. Still, the Court finds the disqualification analysis helpful. In determining whether disqualification is appropriate, the court may consider: (1) whether the conflict might affect the pending litigation; (2) at what stage of litigation the disqualification issue was raised; (3) whether other counsel can handle the matter; (4) the appearance of impropriety; (5) and the costs of disqualification. Here, the negative effect of the conflict on the pending litigation and the appearance of impropriety outweigh the cost of exclusion. The Court finds it significant that Ward stated a legal opinion explicitly adverse to his own firm’s client, Kimberly-Clark, and did so to assist a party adverse to that client in an active lawsuit. Thus, the Court finds that exclusion of the letter and related testimony is the proper remedy. Kimberly-Clark’s motion to disqualify and exclude the ‘104 Opinion and testimony related thereto is GRANTED

Kimberly-Clark Corp. v. Extrusion Grp., LLC, 1:18-CV-04754-SDG, 2021 WL 2291078, at *5– 6 (N.D. Ga. June 3, 2021) (cleaned up).

By David Hricik, Mercer Law School

First, some background to the technology for this interesting set of disputes. In some legislatures, a bill that changes an existing statute doesn’t do it by redline: the bill does not show new language by underlining and deletions to existing text by strike throughs. Instead, in some legislatures, a bill must say something like “in 28 USC 1332, strike ‘$75,000’ and replace it with “$100,000”.  That can get complicated, especially if there are statutes that cross-reference each other, different enactment dates, and so on.  There are systems that are used to write bills, but even the people who design them hadn’t solved how to do the “replace X with Y” type of bill drafting and the need to do so had apparently been known in the field for a while.

Xcential Legislative Technologies is a company that provides bill drafting (and other) technology to legislatures.  Akin Gump is a law firm that does a lot of lobbying.  In 2019, an Akin Gump lawyer apparently reached out to Xcential to request a demo of its bill-drafting technology. NDAs in place, Xcential met with an Akin Gump lawyer and, among other things, he described that known problem that, again, a problem that apparently people in this field had known about but which no one had solved, or at least solved in a good way: how to design a system that would generate bills that conformed with the “strike through X and replace with Y” mode required by some legislative bodies.

If I understand the facts correctly, Xcential then set out to solve the problem in order to sell services to Akin Gump.  According to Akin Gump’s suit (discussed below), when Xcential returned to demonstrate its solution to the Akin Gump lawyer, the Akin Gump lawyer upon seeing it repeatedly said “holy shit”… but balked at Xcential’s price tag.

They went their separate ways.

Xcential then filed a patent application naming its long-time coding and legislative drafting expert as the sole inventor. The patent application is here.

In 2022, Akin Gump filed a petition to institute derivation, asserting that its lawyer had in fact conceived of the claimed invention. Those petitions are pretty rare and this one is here.

In addition, Akin Gump sued Xcential and the named inventor individually (here). Depending on who you believe, the lawyer — who allegedly doesn’t have any coding experience — had conceived of the claimed invention before it was shown to him by Xcential and he said “holy shit.” You can read more about this suit here. A press release from the company is here. (I don’t see anything on Akin Gump’s site talking about the suit, or I would include it.)

Xcential has filed counterclaims against Akin Gump (here).  Among other things, it asserts Akin Gump misappropriated Xcential’s confidential information, committed slander of title, and includes other claims.

In the suit, Akin Gump moved for preliminary injunction. I may be missing something, but its theory is that its lawyer’s “idea” to draft a bill to meet the “replace X with Y” required format was a “trade secret” and the Xcential patent application (with all of the support necessary to solve the problem) is the theft of that “secret.”  Akin Gump’s preliminary injunction motion is here.  Xcential’s rather, um, direct response to it, here.

Call me skeptical — or maybe it’s because I’ve written a book on statutory interpretation, worked in the US House, and worked in the Arizona State Senate — but the “idea” to draft legislation drafted in the “replace x with y” way was kinda widely known and not “revolutionary” (as Akin Gump’s preliminary injunction motion says). Further, at least under the trade secret laws I’ve looked at, knowing a problem exists isn’t a trade secret. It’s the solution that might be.

Finally, and perhaps it is just coincidence, but the firm that had been representing Akin Gump withdrew and Akin Gump is now representing itself.

Stay tuned…

By David Hricik, Mercer Law School

I’m speaking at a conference in Palo Alto, and one long topic of conversation was about the disagreement between how Judge Albright views Fifth Circuit precedent on mandamus to review discretionary transfers under Section 1404 and the Federal Circuit views that same precedent.

One thing that struck me is that ordinarily, the only reason mandamus review is available for transfer motions is because it is transferring the case out of the circuit, and so the circuit won’t ever get to review it. So, conversely, an order transferring a case within a circuit is not reviewable until final judgment:

The Southern District of Iowa order transferring the case to another district within this circuit was a non-appealable interlocutory order, not subject to mandamus review, because it did not “in any way impair or defeat the jurisdiction of this Court to review any appealable order or judgment which eventually may be entered in the case.” Carr v. Donohoe, 201 F.2d 426, 428–29 (8th Cir.1953); accord Bankers Life & Cas. Co. v. Holland, 346 U.S. 379, 383–84, 74 S.Ct. 145, 98 L.Ed. 106 (1953).

By David Hricik, Mercer Law School

In  Avus Designs Inc. v.  Grezxx LLC (D. Wyo. 22-CV-00173-SWS Dec. 2, 2022) (here), the district court analyzed whether it could properly enter default judgment against a Wyoming limited liability corporation, or “LLC.” As part of doing so, the court was required to analyze whether it had, among other things, personal jurisdiction over the defendant LLC.

After concluding the allegations of the complaint were likely insufficient to support specific jurisdiction, it turned to whether an LLC should be treated the same as a corporation for purposes of general personal jurisdiction. Corporations generally are subject to general personal jurisdiction in the state of incorporation and the state of its principal place of business (generally believed to be where the corporation’s “nerve center” is located), and, potentially, in an exceptional case in a third state. LLCs are organized and registered, not incorporated in the same sense.

The decision thoughtfully discusses splits in the case law and the distinctions between a corporation and LLC, including the fact that members of an LLC may be anonymous, and so it may be impossible to determine the citizenship of each of its members.

I cannot find it on-line but it raises some fascinating issues for pre-suit due diligence for patent suits as well as in general commercial litigation, since it may allow for diversity subject matter jurisdiction in more instances (that is, if an LLC has only the citizenship of its state of organization and nerve center, rather than the citizenship of each of its members, then more state law claims may be brought in federal court).

By David Hricik, Mercer Law School

Ordinarily, under Model Rule 4.2 you cannot communicate with a person represented by counsel in a matter without opposing counsel’s consent — even if opposing counsel is present (the rule is not limited to “ex parte” communications). Yet, as happens frequently, what if in negotiating a settlement, license, or other matter, opposing counsel CC’s her client: does opposing counsel’s “cc” imply consent to reply-to-all?

In Formal Ethics Opinion 503 (Nov. 2, 2022) (here), the ABA indicated that implied consent likely occurs under these circumstances.  There is, however, case law to the contrary not acknowledged by the ABA. For example, North Carolina Legal Eth. Op. 2012-7 (Oct. 25, 2013) stated:

The fact that Lawyer B copies her own client… standing alone, does not permit Lawyer A to ‘reply all.’ While Rule 4.2(a) does not specifically provide that the consent of the other lawyer must be ‘expressly’ given, the prudent practice is to obtain express consent. Whether consent may be ‘implied’ by the circumstances requires an evaluation of all of the facts and circumstances surrounding the representation, the legal issues involved, and the prior communications between the lawyers and their clients.

In contrast, the ABA stated that by copying a client, a lawyer is “inviting” a reply-to-all.

Further, even the ABA opinion stated that in replying, the lawyer should be very careful to limit the reply to that which is truly responsive to the e-mail, in part stating: “Unless otherwise explicitly agreed, the consent covers only the specific topics in the initial email; the receiving counsel cannot reasonably infer that such email opens the door to copy the sending lawyer’s client on unrelated topics.”

The Opinion has other limitations and guidance, but seems to insulate a common practice and one that likely fits the norms of practice but, given the lack of authority in most states and the split, be careful!

by David Hricik, Mercer Law School

Giving a talk in Austin and thought I’d share a couple of interesting results I’ll be speaking about later today.  Rule 4.2 in most states prohibits, without consent of opposing counsel, communications about a matter with a person represented by counsel in that matter. (This applies even if opposing counsel is present, as discussed below.).

In Panora v. Deenora Corp, 2021 WL 5712119 (E.D.N.Y. Dec. 2, 2021), the defense counsel doubted plaintiff’s counsel was forwarding settlement offers to the plaintiff, and so he advised his client to send the offer directly to the plaintiff, which he did. That, said the court, was unethical:

“Although a client can decide on its own whether to directly contact his adversary, a lawyer cannot advise a client to contact his adversary, or do anything that the attorney could not do directly. See ABA Formal Opinion 11-461. It is of course improper for a lawyer to contact a represented adversary, and thus since he can’t do it himself, he can’t put up his client to do it for him either.”

In North Carolina Legal Eth. Op. 2012-7 (Oct. 25, 2013), the bar association was asked whether counsel consents to direct contact by cc-ing his client on an email to opposing counsel.  The conclusion? Maybe:

“The fact that Lawyer B copies her own client…, standing alone, does not permit Lawyer A to ‘reply all.’ While Rule 4.2(a) does not specifically provide that the consent of the other lawyer must be ‘expressly’ given, the prudent practice is to obtain express consent. Whether consent may be ‘implied’ by the circumstances requires an evaluation of all of the facts and circumstances surrounding the representation, the legal issues involved, and the prior communications between the lawyers and their clients.”

by David Hricik, Mercer Law School

The October 4, 2022 presidential decision awarding sanctions against OpenSky LLC and its counsel is here.  There are several amici briefs that went into this order which is a doozy.

Boiled way down, after VLSI obtained a verdict for $675 million against Intel, OpenSky was formed and, according to the Director, was formed solely to file an IPR petition that it copied from one that Intel had previously filed, but which had not been instituted based on the Finitiv factors.  The petition included copy of Intel’s expert’s declaration from it. Later, Intel joined the petition.

Then, OpenSky sought money from both Intel (or it would abandon/not zealously pursue the IPR, and so not save Intel from potential damages) and VLSI (or it would do so, and so jeopardize the judgment VLSI had obtained).  As the order found (because OpenSky refused to provide discovery as ordered by the Director):

In other words, in the absence of contrary evidence due to its discovery misconduct, OpenSky’s behavior and complaints about budgeting establish that it did not intend to pursue the patentability merits but instead intended to leverage the IPR’s existence only to extract a payout from one side or the other.

By David Hricik, Mercer Law School

After Prince, the musician, died an engineer who had unreleased recordings hired a Massachusetts firm who advised the engineer that he was a joint author of the recordings and jointly owned copyright in them, and so could distribute the recordings subject to paying Prince’s estate a share of royalties.  He arranged to do so, and in part arranged it so the law firm would receive a percentage of sales.

Prince’s estate filed suit to enjoin further distribution.  The Massachusetts firm initially represented the defendant, but then was named as a defendant. The firm later was dismissed for lack of personal jurisdiction.  The case against the engineer settled, and as part of the settlement agreement the engineer assigned any claim against the lawyer to Prince’s estate.

Prince’s estate filed a legal malpractice suit — asserting the advice to the engineer had been flawed — against the Massachusetts law firm in Massachusetts.  The law firm moved to dismiss because legal malpractice claims are not assignable under Minnesota law.  The trial court granted the motion, but this court reversed, holding that under conflicts of law principles, Massachusetts law controlled and it permitted assignment (with exceptions).  The court noted the law firm emphasized the agreement’s overall connection to Minnesota, and stated:

They emphasize the contacts with Minnesota, including the fact that the plaintiffs are domiciled in Minnesota and that the agreement to settle the Minnesota litigation was negotiated and executed in Minnesota. Our case law, however, directs our focus to the State with the most significant relationship to the transaction and the parties “with respect to [the] issue” that presents the conflict of laws. Oxford Global Resources, LLC, 480 Mass. at 467, quoting Bushkin Assocs., Inc., 393 Mass. at 632. Here, it is the assignability of legal malpractice claims that presents the conflict of laws. We therefore focus our inquiry on which State has the most significant relationship to the assignability of the legal malpractice claim asserted against Attorney Brown.

Two considerations are particularly important in the context of a conflict regarding assignability: protecting the justified expectations of the parties and effectuating the
policy of the State “with the dominant interest” with respect to the issue of assignability. Restatement (Second) of Conflict of
Laws § 208 comment b. Applying Massachusetts law would protect the justified expectations of Attorney Brown, his law firm, and his clients. Massachusetts law has long permitted the assignment of legal malpractice claims, see New Hampshire Ins. Co. v. McCann, 429 Mass. 202, 208-209 (1999), and Attorney Brown, as a Massachusetts lawyer practicing in a Massachusetts firm, would reasonably expect that his clients might assign their legal malpractice claims against him….

With respect to the second factor, the states’ interests, the court reasoned in part:

Attorney Brown is a Massachusetts-licensed attorney, and his law firm is a Massachusetts limited liability company. He is authorized to practice law by the Supreme Judicial Court of
Massachusetts, see S.J.C. Rule 3:01, as appearing in 478 Mass. 1301 (2018), and his professional duties arise under
Massachusetts law.

The case is Comerica Bank & Trust v. Brown & Rosen LLC (Mass. App. Aug. 30, 2022) (here).

Besides the connection to Prince and the interesting legal analysis — focusing on the issue, not the contract — the case may be another reason why a law firm’s engagement letter should specify choice of law.  While here that would not have changed the outcome, perhaps it might where a Minnesota law firm is sued in Massachusetts, but with a choice of law provision invoking Minnesota law.

by David Hricik, Mercer Law School

As a follow up to an earlier post, today the Ohio Supreme Court in Revolaze LLC v. Dentons denied review of the decision affirming a jury verdict. It doesn’t say much, but it is here.

By David Hricik, Mercer Law School

Judge Payne in Mobile Equity Corp. v. Walmart (Case No. 2:21-cv-00126-JRG-RSP) (not available on line for free from what I can see) addressed an accused infringer’s argument that the assignment of the patent-in-suit from the sole inventor (Afana) to the plaintiff, Mobile Equity, was ineffective, and so the patentee lacked standing. The basis for the argument was that the application that led to the patent-in-suit had been filed while Afana had been married (to Kassam) and, by operation of Texas’ community property law, Kassam had an ownership interest in the issued patent that had not been assigned to Mobile Equity and had not been joined as a co-plaintiff.

The facts did not support that result here, it seems, and the motion to dismiss for lack of standing was denied.  The basis was that, ownership of the application had been held only in Afana’s name, as sole inventor), and as a result it had been properly conveyed to Mobile Equity.  Here is the key part (with citations and some quotations omitted):

Section 3.104, 4 entitled “Protection of Third Persons,” provides “where community property is held in one spouse’s name only, there is a presumption that the property is sole- management community property. Absent a showing of fraud or notice on the part of persons dealing with the named spouse, this sole-management presumption protects third parties who rely on the spouse’s authority to deal with the property.” If the requirements of § 3.104 are met, the other spouse has no claim of ownership over the disposed property and the third party takes ownership of the property.

Here, Mobile Equity argues that it is allowed to rely on Afana’s authority to transfer the property and thus take ownership of the Asserted Patents clear of any interest Kassem may have. To earn the right to rely on the presumption, a third party must show three things: (1) the property conveyed was presumed to be subject to the named spouse’s sole management; (2) the grantee was not party to a fraud on the unnamed spouse; and (3) the grantee had no notice of any lack of authority of the named spouse to convey the property. If the third party offers evidence supporting these three facts, the burden shifts to the unnamed spouse to rebut the third party’s presumption of entitlement.

For the first element, all of the patent applications, provisional and non-provisional, filed during the marriage are properly presumed to be sole management community property. Afana was the only listed inventor, thus the community property was held only in Afana’s name. Walmart offers no evidence to rebut this presumption; therefore, Mobile Equity satisfies the first element.

For the next two elements, Mobile Equity offers testimony from Kassem that she was aware that Afana was an inventor of several U.S. Patents. Additionally, Mobile Equity offers two agreements that when read together show Kassem consented to the transfer of any patent rights Afana may have had to the Asserted Patents to Mobile Equity.  The Court finds that this evidence is sufficient to satisfy the remaining two elements of § 3.104, and therefore, the burden shifts to Walmart to rebut Mobile Equity’s presumption of entitlement….

Walmart’s only argument in response is that there is no evidence of Kassem’s consent to transfer the Asserted Patents because the documents cited by Mobile Equity do not specifically identify the Asserted Patents. This argument fails for two reasons: first, Mobile Equity would not have needed to specifically list the ’989 Application, or the ’236 Patent which had issued by November 2014, by name because Afana had already assigned his entire interest in the ’989 Application. Thus, there would have been no reason to list something Mobile Equity already owned. Second, assuming that Mobile Equity did not own the Asserted Patents, the language in the Invention Assignment Agreement is broad enough to have effected the assignment of the Asserted Patents upon execution of the Invention Assignment Agreement. Thus, by incorporating the Invention Assignment Agreement into the “Founder’s Restricted Stock Purchase Agreement”, which Kassem provided written consent to, the Court finds unpersuasive Walmart’s attempt to rebut Mobile Equity’s presumption of entitlement. Therefore, the Court finds that Kassem has no ownership interest in the Asserted Patents and Mobile Equity is the sole owner of the Asserted Patents.

I have no clue if the result is correct under Texas law under these facts, but the “first element” — that because Afana ws the sole inventor he was the sole owner — may not be correct under every state’s law. For example, applying Florida law, the court in Taylor v. Taylor Made Plastics, Inc., 2013 WL 1798964 (M.D. Fl. Apr. 29, 2013), the court dismissed a patent infringement suit because the plaintiff-inventor had not joined his former spouse. The court recognized that, apparently unlike Texas law, under Florida law any property acquired during marriage is a marital asset subject subject to equitable distribution and, in that case, the divorce decree had not awarded legal title to the inventor. The Federal Circuit affirmed dismissal for lack of standing. Taylor v. Taylor Made Plastics, Inc., 565 Fed. Appx. 888 (Fed. Cir. 2014). See also OptoLum, Inc. v. Cree, Inc., 490 F. Supp.3d 916 (M.D. N.C. 2020) (applying Arizona law and holding that, although the patents had been community property, as in Mobile Equity under Texas law, the inventor-spouse had properly assigned it in compliance with Arizona law).

In another Federal Circuit case, the spouses had divorced and in that process the non-inventor spouse had not listed the patent applications as an asset on a “short form” divorce filing. The defendant got a license from the non-inventor, now-ex, spouse and argued as a result it could not infringe.  The Federal Circuit held, however, that because the non-inventor spouse had not listed the patent applications as marital property, she was estopped to claim an interest in the patents and, as a result, the license she had given to the accused infringer was of no effect.  Enovsys LLC v. Nextel Commun., Inc., 614 F.3d 1333, 1341 (Fed. Cir. 2010).

This issue has popped up a few times over the years and the lesson, of course, is that not only is standing always a fundamental requirement, making that determination may require extra due diligence in community property states.

By David Hricik, Mercer Law School

Dennis on the main page had written a couple months back about the opinion of Novartis Pharm. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013 (Fed. Cir. 2022), and the “strange” way the result flipped from a 2-1 panel decision affirming a factual finding by a district court (which had been consistent with prior findings by the PTAB and others) that there had been written description, to a new panel issuing a 2-1 decision on re-hearing reversing the district court.  A group of us filed an amicus brief, not about the merits and “negative limitations” and written description doctrine, but about, to use Dennis’ word, that strange procedure. It is here.  (And of course, after I posted this, I saw Dennis had covered both the “merits” brief and amicus brief, and the “procedural” issue!). So, to quote SNL, “never mind.”

By David Hricik, Mercer Law School

This is not a patent case, but I have seen similar problems in prosecution, patent litigation, and related contexts over the years: an important email goes to a spam filter, or some other place, and gets left unread.

In a recent Fifth Circuit case, Rollins v. Home Depot (Here), plaintiff’s counsel was trying to settle a case when defense counsel filed and so e-served a motion for summary judgment — with a 14 day response deadline. For whatever reason, it did not get seen by the plaintiff’s lawyer.  The time for response came and went, and the district court granted the defense motion.  When plaintiff’s lawyer a short time later reached out to defense counsel again about settlement, defense counsel informed plaintiff’s counsel final judgment had already been entered.

Plaintiff’s counsel moved for relief from judgment under Rule 59, which was denied. On appeal, the Fifth Circuit found no abuse of discretion. Two points it made are wroth emphasizing: (1) it emphasized that plaintiff’s “counsel was plainly in the best position to ensure that his own email was working” and (2) plaintiff’s  “counsel could have checked the docket after the agreed deadline for dispositive motions had already passed.”

Ouch.

With all of us working at home more, clearly we need to be more vigilant about email traffic and deadlines. Firms need to consider ways, not only to assist with remote workers’ efforts in that regard, but to help capture emails that indicate decisions by clients (as to filing, or not, for example), and other important information.

By David Hricik, Mercer Law School

I’m happy to announce, and hope to attend in-person, the CLE described below in Salt Lake City.  While virtual CLEs have their benefits, I miss seeing and interacting with folks, and hope we can get close to normal soon. But, it’s also available virtually and looks to be a good mix of practical and conceptual work! Here’s their announcement:

The Elevate Your Prosecution 2021 conference on patent prosecution will be held in the Murano room of the Grand America in Salt Lake City on Friday, September 24 – Saturday, September 25.

We are expecting and pending for 14 hours of Utah CLE. The roster of speakers includes Dennis Crouch, John Duffy, David Hricik, and John White. The full agenda follows below, and more details are at www.elevateyourprosecution.com.

We invite you to register at your earliest convenience for the in person event (about 40 spaces remaining), the speakers dinner Friday night (about 8 spaces remaining), or the webcast.

You can register at www.elevateyourprosecution.com/registration/

The agenda:

Friday, September 24, 2021:

1.1    Michael Spector and Julie Burke (Petition.ai LLC): Deep Dive into Strategies for Successful Petitions at the USPTO

1.2.   Dan Tucker (Finnegan, Henderson, Farabow, Garrett & Dunner, LLP): Realities of Succeeding in PTAB Trials 1

1.3.   Mike Bohn (VLP Law Group LLP): Surviving, Pivoting, and Thriving in the Changing Global IP Marketplace

1.4.   Dan Tanner (Tanner IP PLLC): The Ethics of Educating Clients about Patent Vulnerabilities – a Litigator’s Perspective

1.5.   James Long (Li & Cai IP Group, PTAB.US): A Memory Palace Approach to PTAB Case Citations and Holding Statistics

1.6.   Andrew Godsey (Global Technology Transfer Group) and Clarke Nelson (InFact Experts LLC): Comprehensive Overview of Modern Patent Valuation

1.7.   Margaret Polson (Polson Intellectual Property Law PC): Overview of Design Patents for Software-Related Inventions

1.8.   Travis Banta (former USPTO) and Kip Werking (FisherBroyles, LLP): Using Persuasion and the USPTO Count System for Successful Examiner Interviews – an Examiner’s Perspective

Saturday, September 25, 2021:

2.1.    Scott McKeown (Ropes & Gray LLP): Realities of Succeeding in PTAB Trials 2: Prosecuting for the PTAB

2.2.    David Hricik (Mercer Law School): Academic Perspective on Patent Valuation 1: Recent Legal and Technological Changes Reducing Patent Value

2.3.    John Duffy (University of Virginia School of Law): Academic Perspective on Patent Valuation 2: Historical Overview of File Wrappers for Famous Patents

2.4.    Adam Mossoff (George Mason University Antonin Scalia Law School): Academic Perspective on Patent Valuation 3: Implications of the New Paradigm of Patents as Public Rights in the Administrative State

2.5     Ron Katznelson (President at Bi-Level Technologies): Pecuniary Interests of PTAB Judges – Empirical Analysis Relating Bonus Awards to Decisions in AIA Trials

2.6.    Robert Greenspoon (Flachsbart & Greenspoon, LLC): Past and Future Constitutional Challenges in Patent Law

2.7.    John White (CEO & Managing Director at PCT Learning Center): Overview of the Benefits Today of Relying More Heavily on the PCT

2.8.    Dennis Crouch (University of Missouri School of Law): To Be Determined

By David Hricik, Mercer Law School

Over the decades (sigh) I’ve been involved in various capacities in cases where practitioners have missed deadlines.  Sometimes, the client’s partly to blame. For example, imagine a client at the last minute dumping a lot of information they expect to be included in an application or any claim is barred (say by a prior publication).  At other times, the lawyer misses the date. For example, imagine key docketing personnel leave and that leaves a knowledge gap, or an unanswered email box, allowing a deadline to pass by.

Obviously, having dual docketing systems is important. Ensuring dates are entered correctly is important. Ensuring that there is a person responsible for the deadline, likewise important. And, of course, much of this is now automated.

I would be curious to rad what you believe to be “best practices” or mandatory minimum standards in this area. For example, I’ve seen some firms send notices to clients that in essence say “we’re not going to foreign file unless you tell us” while others insist on an affirmative “I don’t want foreign filings” written message from the client, and hound the client until they get it.

If you have “war stories” or thoughts or concerns, please share them in the comments. Obviously, everyone understands you’ll be telling us about someone else’s mistake, not yours!  :-).

FYI I am writing a short article on this topic and would love to share with other practitioners what you have learned. I’m thinking “where the landmines are” might be a good title for this one.

By David Hricik, Mercer Law School

A long time ago, I posted here about the potential for conflict when fee shifting is in play and the opposing party is seeking an award of fees and asserts that the opposing party may be liable instead of, or in addition to, opposing counsel.  In other contexts, courts have found this can create a conflict between the targeted lawyer and client.

For example, in In re Marriage of Wixom & Wixom, 182 Wash. App. 881, 332 P.3d 1063 (2014), after a bitter and long custody dispute in which both the husband and his lawyer took ridiculous positions, the trial court imposed $55,000 in sanctions  jointly against husband and his lawyer. On appeal, the lawyer argued that the sanctions should only be imposed against the husband.  The appellate court, on its own motion disqualified the lawyer from representing the client and limited the lawyer’s ability to represent only himself. Later, the appellate court held sanctions could be imposed jointly. See, e.g., U.S. v. Emigration Improvement Dist., 14–CV–701, 2016 WL 4148251, at *6 (D. Utah Aug. 4, 2016) (reasoning that attorneys were conflicted when they tried to shift liability for fee awards from themselves to their client); Exp. Dev. Canada v. ESE Elecs. Inc., CV1602967BRORAOX, 2017 WL 3122157, at *5 (C.D. Cal. July 10, 2017) (“The circumstances indicate a conflict of interest between Counsel and their clients with respect to fault for evidentiary complications related to Bright Light’s payments and the Euler insurance claim.”).

I haven’t looked at whether this issue has cropped up in the precise context of Section 285, but lawyers should be thoughtful when Section 285 is raised and the issue of fault, or liability, as between lawyer and client is implicated. (If you know of cases, let me know!). It may be the conflict is waivable. In addition, it may be that courts should use the principle, recognized under Rule 11, that only the lawyer should be liable for legal errors, to reduce conflicts of interest and to also allocate fault where it makes the most sense to place it.

By David Hricik, Mercer Law School

The American Bar Association committee on professional ethics issues opinions on issues which, while not binding on any jurisdiction, often have sway over courts and bar associations in malpractice or disciplinary matters.  If you follow their guidance, you, in a sense, start off in safe harbor.  Most state rules are similar to the Model Rules, and the USPTO’s disciplinary rules are similar, but not identical, and the USPTO did not adopt the comments to the model rules. Thus, the OED is not bound by ABA ethics opinions but they hold sway.

In ABA Formal Ethics Opinion 498 (March 10, 2021) (here), the ABA provided guidance on the ethical issues that we all have done a lot of the last year, and which I am guessing we will continue to do for a while: practice law outside the confines of a typical brick-and-mortar, or steel-and-glass, law office.  The abstract of the opinion states: