An interesting order from the ND CA

The allegation is that in-house counsel for a defendant in an infringement action threatened to take unspecified action against opposing counsel.  Soon thereafter the defendant filed a re-exam request against another client of opposing counsel, on a patent in which the first client had no apparent interest. Order here: Download Cand-3-11-cv-06637-172

The Court seems to accept the allegation as supported by the current record (and indeed, as largely undisputed) but finds the re-exam filing is protected on speech grounds. That conclusion seems plausible, though I think the abuse of process tort (which most closely matches these facts) is distinct from the sort of cases the Supreme Court had in mind in its PREI opinion.

Even accepting that conclusion, however, the court was right to recognize that the alleged threat could and should be analyzed separately from the filing. Its conclusion that in this case it could not disentangle the two seems reasonable though not compelled.  

In such cases it is difficult to allocate responsibility between the client and outside counsel. Still, conduct that the court describes as "at best silly posturing or at worst unprofessional" is worth noting.

Thoughts?  How often do folks see this sort of thing? 

 DM

Comments

[John Steele]

I've seen vindictive behavior but that's a new wrinkle. I think the court was correct not to discipline in the absence of proof of baseless positions.

How does the conversation between Susman and its other client go? Is there a duty of communication? (yes) Could that conversation conceivably create tension if not a conflict? (not impossible)

[Judith_IP]

That is fascinating, and kind of frightening. I agree with the court, including with their reluctance.

The counsel had to inform the client whose patent is being reexamined that it is possible that the reason for the reexamination is their representation of someone else. Does that inherently create a conflict? It certainly creates a strong incentive for the client whose patent is being reexamined to fire the counsel, and hope that this induces the requester to drop the reexam.

Oddly, my first thought was that this actually rewards the counsel whose clients are being harmed, because it brings in billable hours.