Interesting, Problematic Prosecution Bar Case

I can’t find this case, Velocity Patent LLC v. Audi of Am., Inc (N.D. Ill. Jan. 21, 2015) online (other than Pacer), but this is the essential analysis:

Audi argues that there is a significant risk of disclosure because Thomas C. Mavrakakis is Velocity’s sole member and the named partner at the law firm representing Velocity in the investigation, Mavrakakis Law Group LLP. Audi further argues that Velocity’s attorneys are involved in Velocity’s patent licensing and business decisionmaking.

Audi has not met its burden to show good cause for its proposed modification of the Protective Order. Mavrakakis is the sole manager of Velocity, but he is not one of the prosecuting attorneys in the case. James Shimota, one of the actual prosecuting attorneys, was involved in a related entity in the past but is not alleged to be a current member or manager of Velocity. Audi has not shown that Mavrakakis is involved in patent prosecution or that Shimota is involved in competitive decisionmaking.

Audi points to a prior decision of this court that found litigation attorneys to be competitive decisionmakers when they were “deeply involved in a [patentee’s] business decisionmaking in the area of intellectual property” and “involved in representing the client in multiple, related infringement cases.” Interactive Coupon Mktg. Grp., Inc. v. H.O.T.! Coupons, LLC., Case No. 98–CV–7408, 1999 WL 618969, at *3–4 (N.D.111.Aug. 9, 1999). However, in that case, the law firm was likely to represent the patent holder “in the prosecution of numerous related patents … in the context of a fluid, developing technology.” Id. at *3. Here there is only one patent at issue; and this area is not a fluid, developing technology. And as previously stated, Audi has not shown that the litigation attorneys are involved in business decisionmaking.

Why do I think it’s troubling? First, it puts the burden on the party seeking the bar to show what the other lawyers are doing.  How’s that practicable?  Second, in these one-owner entities, unless the sole “business” of the entity is suing his particular defendant, how can there not be involvement in competitive decision-making?

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.