By David Hricik, Mercer Law School

In part shameless self-promotion (wait, I didn’t get paid to do it…!?), but I’m also betting a lot of you need CLE and need it virtually.  I speak about 15 times a year at CLEs on ethical issues in patent practice and general practice, and did so at this Practicing Law Institute CLE recently. It has a lot of good and varied coverage and the on-line format lets you have a lot of flexibility in topics between the East and West coast versions. The link is here.

Here’s their description:

What You Will Learn

• New! Review of ITC patent practices by industry specialists
• New! IP-specific AI tools for corporations and law firms
• New! Perspectives on patents from three different judicial vantage points
• Recent court decisions shaping patent law
• Latest USPTO rules and guidelines
• Patent subject matter eligibility of computer-implemented inventions
• Latest developments in patenting medical therapies
• Corporate counsel discuss the effects and concerns of recent court decisions/ USPTO activity
• Building a strong patent portfolio

By David Hricik

Mercer Law School

Hi, all,

Slightly off-topic question and not limited to patent-IP related courses.   If you have any thoughts on what you’d do to improve legal ethics courses in law school, fire away.  I am teaching it this summer (I’ve taught it at half dozen schools) and I’m doing a much more problem-based even than usual but I always feel like the course could have more “real life” to it but… anyhow maybe that’s not even the right thought.  Any thoughts or comments appreciated: I practiced full-time for 14 years, and part-time for another 16, and so I bring more “practical” content to the course than many professors but I never feel good about the course.

Thanks!

By David Hricik

Mercer Law School

A very long time ago, probably 1989 or so, I was involved in a case where a lawyer failed to identify a “related case” on a civil coversheet.  Long story short, the plaintiff had filed suit in one jurisdiction (let’s say Iowa state court), and then filed a second suit in another jurisdiction (let’s say Ohio federal court). It waited to serve, and ended up serving the Ohio federal court suit, I guess because Ohio federal court was better than Iowa state court.  However, at that time, the federal civil cover sheet asked if there were any pending cases — anywhere — and the lawyer had not listed any.

Probably nothing would have happened except the defendant, I surmise, learned of the Iowa state court before an important hearing in Ohio federal suit, and at that hearing the defendant’s counsel skillfully (it seemed to me) got the judge to ask questions about previously filed suits, and the attorney for the plaintiff said there had been none.

That resulted in sanctions, and even dissolution of a TRO that the plaintiff had obtained, if I recall it right.

Fast forward quite a number of years and a plaintiff’s lawyer filed a number of patent suits in the United States District Court for the District of Delaware.  112 or so, it seems.  The plaintiff’s lawyer filed five more suits in Delaware on the same three patents and, among other things, failed to identify any cases as related on the civil cover sheet.  Judge Noreika dismissed the suits without prejudice and issued other directives to plaintiff’s counsel in Rondevoo Technologies, LLC v. Behold.AI Technologies, LLC, on May 5, 2020.

Of course, dismissals without prejudice don’t prevent re-filing, but I assume it costs another filing fee per case and, of course, it gives the defendant(s) time to file declaratory judgment actions in some other forum.

Hadn’t thought of that case from 30 years ago in a long time. I teach my students how to file a case, including a civil coversheet. I’ll have to keep this case around for a learning lesson as to why these forms matter.

By David Hricik

Mercer Law School

The decision in Jaguar Land Rover Ltd.v. Bentley Motors Ltd (E.D. Va. Apr. 30, 2020) (here) merely denied an amendment to add a counterclaim for inequitable conduct. There are a lot of those. But it is interesting because it brings into play the new approach PTAB uses of determining unpatentability with the Therasense approach to determining materiality based upon the broadest reasonable interpretation.

The accused infringer filed for institution of an IPR of the ‘828 Patent based upon what the parties called the Porsche 959 prior art. The accused infringer also defended the suit for infringement of the ‘828 patent by, among other things, asserting the Porsche 959 prior art anticipated.

While the IPR petition based upon the Porsche 959 art was pending before the PTAB, the accused infringer sought to amend its answer to allege a counterclaim based upon the failure to disclose the Porsche 959 art to the Office during prosecution, asserting inequitable conduct.

On February 20, 2020, the PTAB denied institution, but it did so based upon the November 2018 rule change to use Phillips interpretation for unpatentability.  ( here) So, we know that, at least based on the PTAB’s construction and the record made there, under Phillips the Porsche 959 art didn’t anticipate.

But, in denying the motion to amend the answer to add inequitable conduct, the trial court relied upon the PTAB decision to hold that it would be futile to permit the amendment. It reasoned that it was implausible that the Porsche 959 art could have been but-for material because of the PTAB’s decision.

But Therasense requires materiality be based upon the broadest reasonable interpretation standard, not Phillips. Thus, the PTAB decision doesn’t decide materiality: if anything, it decided there was no anticipation based on the PTAB’s claim construction under Philips.

Even weirder, the trial court held in denying amendment that it could still find invalidity based upon the Porsche 959 prior art. If anything, that would be precluded  by the PTAB’s decision (I’m not even sure that’s right, however). Finally, and I may be misremembering (I’m grading finals!), but I thought there was also Federal Circuit precedent finding materiality even on submitted art? (I know you can find invalidity that way.)

by David Hricik, Mercer Law School

In my earlier post, I noted some of the clear errors in the panel decision in GS CleanTech Corp. and Cantor Colburn LLP v. Adkins Energy LLC (Fed. Cir. 2020) .  The patentee has filed for rehearing en banc, and the petition is here.  I wish I had time to write an amicus brief in support, but after giving a CLE today about the case (here is link but you have to buy it, I think) and reading that brief, I believe the problems with the case run far deeper than I originally thought and even deeper than that brief points out.

Here’s why.

When inequitable conduct is asserted, often it is bifurcated from validity/infringement. Where either a jury finds invalidity, or as in CleanTech the judge did on summary judgment, and that finding is based upon allegedly withheld art, the patent owner will need to appeal (to avoid CleanTech). But, there is, under those circumstances, no final judgment.

Nor will any judgment fall within any exception — at least not very often. The patentee likely won’t be able to seek appeal under Fed. R. Civ. P. 54(b), because it only applies if there are multiple claims or multiple parties, so in a single-patent-single-defendant case, it wouldn’t likely be available.  While possibly a trial court could certify a case for appeal under 1292(b), that requires there be a controlling question of law and substantial ground for disagreement, that won’t often be the case and the Federal Circuit has to also agree to certification.  The collateral order exception won’t apply because the order won’t be separate from the merits. Any judgment will not (unless a preliminary injunction was granted and then dissolved because of an invalidity finding) grant or deny, an injunction (it will decide no liability and that’s not the same as denial of an injunction).  Mandamus won’t be available.

So, the appeal will be from the judgment entered after the inequitable conduct trial.  The CleanTech case held that “abuse of discretion” applies to review of inequitable conduct — to the findings of materiality (even though in CleanTech it was a question of law based on underlying facts), to the fact findings of knowledge of materiality, and to the finding of intent to deceive.  Standard of appellate review on materiality will be much looser than if validity had been appealed, in other words. The standards of review for knowledge of materiality and of intent will be looser than TheraSense, too.

But it gets worse if summary judgment was the basis for invalidity (and, so, materiality).

On appeal of summary judgment, facts are viewed in the light most favorable to the non-moving party and all reasonable inferences are taken in the non-movant’s favor.  So, in CleanTech the panel should have, without deference to the trial court, asked whether there was no genuine issue of disputed fact and no reasonable jury could find other than, by clear and convincing evidence, there had been an offer to sale (and not an experimental one) that invalidated a claim.  Under the panel decision, instead, the question is whether the district court abused its discretion in making that determination.

None of that makes sense.

But what does make sense is that any litigator representing a patentee who loses on invalidity must do whatever is reasonably possible to appeal because otherwise the CleanTech approach will apply. And, of course, it will permit creative defense lawyers to argue to trial courts that (somehow) determining the propriety of summary judgment is not conducted as the Supreme Court has repeated admonished (most recently in Tolan v. Cotton).

I hope the full court realizes the panel decision — whether the result is right or not — is from a procedural view irreconcilable with Therasense and settled standards of review, and, further, will result in efforts to try piecemeal appeals that will waste judicial resources and, if uncorrected, lead to improper findings of inequitable conduct.

By David Hricik, Mercer Law School

Of course, patent prosecution and litigation involves a lot of confidential information. As a result, protective orders, prosecution bars, and clawback arrangements are part and parcel of most patent suits. Perhaps because confidential and privileged information is more frequently involved than in some other forms of litigation, waiver issues are also common.

Over the years, I’ve bumped into this issue a couple of times:  an email from a client (or client’s representative) is claimed to be privileged even though the sender shared the email account with their spouse.  This happened recently in RTC Indus., Inc. v. Fasteners for Retail, Inc. (N.D. Ill. Feb. 26, 2020) (here).  The judge there held privilege was not waived, in part because married couples naturally share email accounts and there was no evidence the spouse had actually viewed the email.

That is not a universal approach, however. In addition, where an email account, or computer, is shared by people who are not married (such as roommates), a greater risk of privilege waiver exists. Finally, many employers monitor employee email, and, so, for example, if an employee e-mails a lawyer from a work computer, it may be that privilege is waived.  To be clear, this can happen even where the dispute is between the employee and some third party, not between employee and employer.

By David Hricik, Mercer Law School

A “verein” is a legal entity recognized under Swiss law somewhat similar to an association. Several law firms are organized this way, including Dentons.  Dentons agreed to represent a patentee, Revolaze LLC,  in an ITC proceeding when another “arm” of Dentons represented one defendant, The Gap.

The Gap moved to disqualify, arguing that Dentons was a single law firm and so it could not be adverse to its own client. The ITC agreed, and disqualified Dentons.

The patentee then sued for damages caused by the disqualification.  On February 20, and Ohio jury awarded what is reported to be the largest malpractice verdict in Ohio history, over $32 million.  Presumably, the damages were in part caused by the rapid pace of an ITC proceeding, but the details I know of are sketchy.

There are articles about the case, one behind a paywall (here) and the other not, but it seems mostly based on a conversation with the plaintiff’s lawyers, here.

By David Hricik, Mercer Law School

The USPTO is a couple of years into its Access to Prior Art Initiative, which in its first phase was designed to create for the examining corps a single list of references combining those cited in an application (by applicant and examiner) and references from the immediate U.S. parent applications (cited by applicant and examiner, but not third parties).  In the first phase, if an application met criteria for inclusion (among other things, only certain Art Units were included), the Office would notify the practitioner that the prior art was automatically imported, reducing the burden o cite that art.  The project was intended to then expand to include foreign counterpart and PCT applications.

In looking for exactly how broadly this has been implemented, I was unable to find much information after January 2019.  As Carl Oppedahl recently pointed out, it’s a great idea and means to avoid unnecessary work and issues about disclosure.  If you’ve had any involvement and can share, that’d be great.  I’m curious, for example, if the process is working: for example, is the importation complete and accurate?   I’ll also reach out to the Office and see if I can learn anything and will amend this post if so.

While I can understand why the list might not automatically include third party submissions, the omission does create a potential “trap” where a practitioner in the child fails to cite third-party art from the parent which was material to the parent, or is (or becomes) material to the child.

By David Hricik, Mercer Law School

Over on the main page, Dennis summarized the grant of a motion to disqualify in the non-precedential decision in Trimble Inc. v. PerDiem Co. (Fed. Cir. Jan. 28, 2020) (Taranto, J.).  The firm representing PerDiem on appeal (another firm had represented it in the trial court) was at the same time providing prosecution advice to a subsidiary of Trimble.  Applying an amorphous multi-factor test that is common, the panel held that because the firm was representing the subsidiary, it could not be adverse to the parent on appeal. Hence, the firm was disqualified.

Oddly enough, probably at the moment this opinion was released, I was speaking at the Association of Corporate Patent Counsel meeting, with Mercedes Meyer, and discussing this recurring one:  the corporate client moves to disqualify a lawyer who is adverse, not to the corporate client, but to a subsidiary, parent, or affiliate.  Where, as here it seems was the case, the lawyer and client do not clearly define whether representation of one entity means the lawyer represents others, they leave it for a court to decide which entities are “the client” by examining the corporate structure, how the entities’ legal services are provided, and other often unpredictable factors.

It may be a difficult issue to broach at the onset of a representation, but it also may be better for both client and lawyer to understand what scope of loyalty the client expects and the lawyer can understand what potential future business she must forego, and that benefits the firm, its future clients, and the corporate entity.

By David Hricik, Mercer Law School

An issue I’ve frequently been asked to discuss is the ethical constraints on firms to impose restrictions or requirements on departing lawyers — such as precluding a lawyer from doing logistical work on setting up a new, separate firm upon departure — as well as the departing lawyer’s obligations to her clients and soon-to-be-former firm.  In addition, migrating lawyers create issues for the new employer, such as imputed disqualification of former client conflicts.

In December 2019, the ABA issued a formal ethics opinion that clarified the ability of firms to restrict departing lawyers.  In American Bar Association Formal Ethics Op. 489 (available here).  The synopsis provides a good summary:

By David Hricik

The Board of Appeals at the EPO held on January 17, 2020 that the EPO patent on CRISPR gene editing technology was revoked for lack of novelty because it could not claim priority to a US provisional application.  The EPO decision is here.

Carl Oppedahl has written a post laying out what went wrong, in late 2013, that caused the problem. That post is here.

On an unrelated note, I’ve been fighting some health issues and hope to be blogging regularly again.

By David Hricik, Mercer Law School

In Opinion 2019-3 (May 16, 2019), the Association of the Bar of the City of New York, gave guidance on an issue on which most state ethics rules leave lawyers hanging. Under Model Rule 4.4(b), and similar state rules including the USPTO rules, a lawyer who receives a document related to the representation of a client, and knows or should know it was inadvertently sent, must notify the sender and then… the rule stops.

Obviously, the other side will (if the document has any significance) ask for the lawyer to return or delete it and, just as obviously, if the document has any significance the lawyer’s client will want the lawyer to not return it and, if it had been privileged, to argue it no longer is because it was inadvertently sent without due care.

This opinion provides a nice discussion of the background to various issues that arise with inadvertent receipt and some good historical background. As for specific guidance, my takeaways were as follows.

First, look to see if there is controlling law on what the lawyer can or must do.  A protective order, a standing order, a local rule, agreement of counsel, or prior decision of the court may control, for example.

Second, the opinion points out that if a lawyer knows, before reading the document, that it may have been inadvertently sent, it is unclear if the lawyer must examine it or can, instead, stop and notify the sender and thereby avoid knowing whether the document had any significance to the client’s objectives.  If the document has no significant bearing on the client’s objectives, the opinion states the lawyer may not have to let the client know of its receipt.  Of course, that course presents risks to the lawyer.

Third, if the document is significant and there is no clear obligation as to what to do, the lawyer should inform the client of receipt.  Then discussion is required because, as the opinion points out, use may entail risk. The client may not understand that disqualification, sanctions, or just an angry judge may result.

Fourth, if after consultation, the client “demands” the lawyer use the information, then the lawyer must assess the risk of doing so. For example, if the document contains opinion work product, using the information may be very risky since it is very difficult to waive protection over opinion work product.  But if there is risk, the lawyer must assess it and can withdraw if use subjects the lawyer to discipline or sanctions.  Without those risks, the client’s wishes should prevail, according to this opinion.

Finally, the opinion advised that a lawyer cannot choose not to use the information solely as a professional courtesy to the opposing party, or to personally benefit.

The question of what to do after a lawyer notifies the transmitting party of the mistake is one that the rules leave unanswered. This opinion provides a framework to analyze that issue, a fact-dependent problem at that!

By David Hricik, Mercer Law School

A lawyer registered a mark for Annie Sloan Interiors Ltd. (ASI) to register a mark for it, but later represented Jolie Design & Decor LCC (JDD) and Jolie Home, LLC (Jolie Home) to challenge the mark (“CHALK PAINT”) asserting genericness (apparently at the USPTO and in litigation).  ASI, a former client by then, sued for breach of fiduciary duty and legal malpractice.

Defendant moved to dismiss. The court held the complaint adequately pled breach of a fiduciary duty. Specifically, the court reasoned ASI alleged the lawyer had “breached a duty of loyalty by using knowledge gained during his representation of ASI to assist a different client in a challenge to its mark, and that its damages consist of the money expended in defending the mark and any resulting diminution in the value of the mark.”

The court found that an agreement “waiving” (i.e., consenting) to this was insufficient because, among other things, in it ASI acknowledged the firm would be representing JDD, and made no mention of Jolie Home.

As for legal malpractice, the defendant argued the claim was time-barred, and here is a key lesson for practitioners. The lawyer had, it seemed, “terminated” the representation in 2015, at a time when the malpractice claim would have become barred. However, the complaint alleged that the lawyer “remained ASI’s designated attorney in the CHALK PAINT® stylized design trademark proceedings—and held the power to act on ASI’s behalf—throughout the time period from June 2012 through mid-2018, until his power of attorney was revoked and he was replaced as attorney of record on June 1, 2018.” The court reasoned that because it was “ASI’s position that Kappel’s representation did not actually terminate until he was removed as its attorney before the United States Patent and Trademark Office (“USPTO”), on June 1, 2018, and that up until that date, he remained enrolled before the USPTO as ASI’s attorney of record, holding the full power of attorney for CHALK PAINT® design mark before the USPTO. ASI also argues that in failing to withdraw as attorney of record at the USPTO, Kappel failed to perfect or complete his termination based on the 2015 termination letter.”  The court denied the motion to dismiss based on the defense of limitations given those allegations.

It’s rare to see a lawyer allegedly challenging a patent, or mark, it obtained for a former client, and this is one more example of why it seems risky to do so.

By David Hricik

Mercer Law School

The listservs I’m on have exploded lately with concern, and some anger, about proposed fees on practitioners, and the potential for CLE requirements. Today, I happened to be reading an article, in a peer reviewed journal, by Frank Fagan, that purportedly shows that every one-hour of CLE decreases charges brought to state bars by 10%.  The article is here.

I don’t know about the quality of the analysis, and so would be curious what you all think on the merits and generally.

By David Hricik, Mercer Law School

Being disciplined by the USPTO, a state bar, or being sanctioned by a court is, of course, not a good thing for a lawyer and in some instances it can end a career or sharply limit one.  Over the past 30 or so years, I’ve seen a lot of somewhat unpredictable consequences flow from discipline or a finding of misconduct by a court.

For example, the USPTO requires practitioners to update their addresses and, from time to time, it has sent letters to the current address and if the recipient doesn’t respond within (I think it is) a month, the practitioner is “administratively suspended.”  If that happens, not a huge deal to correct, but some state bars require reporting administrative suspensions, and if a practitioner fails to do that, then the practitioner has two problems. And, if practitioner later “covers up” either thing, well, then three problems.  (I wrote an article a while back called “how things snowball” and it came to mind just now).

This post is inspired by a recent filing, a typically mundane request to be admitted pro hac vice.  In it, the lawyer stated he hadn’t been subject to discipline but in fact, he had. Four times, over about 40 years.  According to a corrected request, the original request had been made by his office mistakenly over his signature, and that is why the four had been left off.  The order from the court asking opposing counsel if, now, they wished to oppose the motion to admit is here.  Different courts have different approaches to signing by permission and non-lawyers can’t do certain things, so will the explanation as to the original mistake now snowball into something else?  Will the judge find the “four priors” matters? The omission? I have no idea and it sounds as if a mistake was made and promptly corrected, but, things can snowball.

And, as the final example, if you haven’t read the California Supreme Court case vacating a $3m fee awarded to a firm because it had an undisclosed conflict of interest (and, as a consequence of not disclosing the conflict, (a) its arbitration agreement with the client was unenforceable and (b) it also might have had to disgorge more than the $3m award), it’s blogged below.

There are lots of ways that a violation — even at times a technical one — can snowball into something much worse — privilege waiver for unauthorized practice of law, in-house counsel failing to follow “in-house registration” statutes leading to discipline or loss of privilege, and more.

I think it is from Hill Street Blues:  “Be careful out there.”

By David Hricik

The American Bar Association’s committee on professional ethics issues ethics opinions interpreting the ABA Model Rules, which are similar to (almost) all state rules, as well as the PTO’s disciplinary rules.  Its opinions are not binding, but they hold sway.

The ABA released Formal Opinion 487 (June 18, 2019), addressing how successor counsel should divide fees with predecessor counsel (from a different firm) who have contingent fee agreement with successor counsel’s client in the case.  The opinion provides some helpful guidance on what can be — given the literal language of the fee splitting rules — some thorny issues. The summary of the opinion states: