Adversity in Patent Litigation

I just finished (for now) the updated chapter in the second edition of our book on ethical issues in patent prosecution that covers conflicts of interest in patent prosecution.  There's very little authority out there, but lots of lawsuits and ethics "experts" with different opinions about what is, and is not, adverse in patent prosecution, so this topic is always interesting.

In updating it, I enjoyed reading the ITC decision denying Google's motion to disqualify Pepper Hamilton. In the Matter of Certain Portable Communication Devices, Inv. No. 337-TA-827 (Order No. 7 Feb. 13, 2012).  (Disclosure: I was an expert retained by Pepper Hamilton to provide an opinion.)  The case is interesting and provides some light on what might be "adverse" in patent litigation and, in my view, also in patent prosecution.  The tone of the ALJ's decision also offers, I think, important lessons on how to approach a motion to disqualify: if you're accusing the side of being unethical, act with very clean hands.

In that case, Pepper Hamilton was prosecuting a few patent applications for Google. It undertook to represent a patentee, Digitude, in an exclusion proceeding before the ITC, seeking an order preventing importation of certain cell phones and other devices. 

Google was not a defendant, and its products and services were not accused of infringing the patent involved in the ITC proceeding. Nonetheless, the accused products used Google’s Android software, and that software allegedly satisfied one element of a claim-in-suit.  Google intervened in the proceeding, contending that Pepper Hamilton was adverse to it, because Google was a member of a consortium (the “Open Handset Alliance”) that provided, free of charge, the Android software as an open source product to the device makers.  Further, the Open Handset Alliance specifically disclaimed any warranty of non-infringement when doing so.

The staff recommended denying the motion to disqualify, and the ALJ did so. The ALJ rejected several arguments presented by Google to establish adversity despite the usual indicia under the burden of proof required in the ITC:

Based on the foregoing, I find that Google has not clearly demonstrated that Pepper Hamilton's representation of Digitude is "directly adverse" to Google. Any finding of a violation of Section 337 in this investigation will not impact Google's legal interests because of the wording of the Apache 2.0 license under which Android is licensed [which disclaimed the warranty of non-infringement]. Moreover, I find that Google did not provide the full factual background when it asserted that Android is a "Google product," as the evidence establishes that Android is an open source project run through the Open Handset Alliance, whereby the software is provided at no cost and everyone is invited to contribute. Google asserts that Pepper Hamilton's representation of Digitude is adverse to Google's business interests as well. Google offers no evidence regarding how Google's business interests will be harmed through this litigation. Instead, Google offers a declaration from its in-house Litigation Counsel that makes conclusory assertions such as "Google has a strong interest in preserving the Respondents' continued importation of devices that incorporate Google's Android technology," and, to the extent that Digitude's infringement claims are directed to Android, "Google's legal and business interests are harmed." Such unsupported assertions do not demonstrate that Google' s business interests will be harmed if Digitude obtains relief against the respondents' Android-based products. Google argues that respondents in this investigation who make products that do not run the Android operating system may assert Google's patents or technology as prior art that invalidates Digitude's patents, thereby requiring Pepper Hamilton to attack Google's prior art patents or technology. Google offers no evidence that any Google patent or technology is being asserted as prior art in this investigation, making Google's argument pure speculation. The mere possibility that Google prior art will be relied upon in this investigation does not give rise to a Rule 1. 7 violation.

Google raises a concern regarding Google's possible involvement in this investigation as a third party. Pepper Hamilton has assured Google that it will not seek any third party discovery from Google in the current investigation.  Pepper Hamilton has also assured Google that if another party seeks third party discovery from Google and a deposition takes place, no Pepper Hamilton attorney will examine a Google witness. (ld) I fmd that these assurances are sufficient, and that Pepper Hamilton will be held to these promises, and the other promises included in Mr. Zemaitis' January 20, 2012letter. (ld) Pepper Hamilton shall have no involvement in any Google third party discovery in this investigation. This prevents any potential direct adversity from arising.

Google also raises a concern regarding the confidentiality of its information. Google has not offered any evidence that its confidential information has been viewed or used by Pepper Hamilton attorneys representing Digitude. Pepper Hamilton has already established an ethical screen. With this ethical screen in place, Pepper Hamilton attorneys working on this investigation on behalf of Digitude cannot access Google's confidential information, and Pepper Hamilton attorneys working on behalf of Google cannot access confidential information in the current investigation. Digitude offered declarations from the Pepper Hamilton attorneys who have made an appearance in this investigation, with each declaration stating that the attorney has not, inter alia, performed legal work for Google or accessed any Google confidential information while at Pepper Hamilton. Moreover, there is a physical separation of any hard copy documents, as Pepper Hamilton's work for Google takes place in its Pennsylvania and Delaware offices, while Pepper Hamilton's work for Digitude takes place in its Massachusetts and Washington, DC offices.  I find that the actions taken by Pepper Hamilton serve as a reasonable precaution to keep the confidential information of Google and Digitude separate. Pepper Hamilton shall ensure that these safeguards are kept in place.

 In sum, I find that Google has not met its heavy burden in demonstrating that Pepper Hamilton should be disqualified from representing Digitude in this investigation.


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.

5 thoughts on “Adversity in Patent Litigation

  1. 3

    It would have been a closer question, seems to me if the software itself was infringing. That’d be very interesting, imho, since would it be adverse if there was no economic harm (software is free, and there was no warranty of non-infringement). Another day…

  2. 2

    Ned, you miss the point of this case. It is really summed up in the first sentence of the quoted material. There is no conflict of interest here and that would still be true if the software were closed source. On the other hand, software can be both open source and proprietary. See Jacobsen v. Katzer 535 F.3d 1373 (Fed. Cir. 2008) for the proposition that the author of open source software still has a valid, enforceable copyright and that the conditions of an open source license are enforceable.

  3. 1

    Something about have your cake and eating it too.

    Open source means, I think, non proprietary.

    How can Android both be open source and be a Google product, that is the question.

    Can’t be, it seems.

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