Sunday, February 26, 2017

IP Conflicts, Intellectual Problems (Subjects Matter)

  • "A recent patent malpractice action filed in federal court in New York against an IP firm raises once again the issue of subject matter conflicts between concurrent clients in prosecuting patent applications in a similar field of technology.  The issue of subject matter conflicts in concurrent patent representation continues to be an area of significant interest–and concern–for IP practitioners who represent multiple clients in the same area of technology."
  • "On October 18, 2016, Portus Singapore PTE Ltd. (“Portus”) filed an amended complaint for legal malpractice against the recently-shuttered IP boutique, Kenyon & Kenyon (Kenyon), and two of its former attorneys.  In its amended complaint, Portus alleged that it was represented by Kenyon with regard to Portus’ patent portfolio for more than a decade. The amended complaint alleges that Kenyon was negligent in two respects (1) losing three and one-half years of patent term; and (2) failing to disclose a concurrent conflict of interest with another client in the same technical field as Portus."
  • "According to the Amended Complaint, throughout its representation of Bosh, 'Defendants were simultaneously representing Portus in its prosecution of its patent portfolio.' Portus asserts that, 'Bosch was a potential infringement and licensee target in the patent prosecution, yet Defendants never notified Portus about its representation of Bosch.'"
  • "In 2015, Portus provided Kenyon with an infringement analysis with 'claim charts for a utility deployment of IP video surveillance based on Bosch Video Management System and IP cameras.'  Portus allegedly sought Kenyon’s advice as to whether such a deployment would infringe Portus’ patent claims.  Evidently, no opinion was provided, although the Amended Complaint fails to allege what was Kenyon’s response to that request or whether it provided the requested opinion.  However, Portus asserts that 'to this date, Defendants have never disclosed a potential conflict of interest to Portus.'"
  • "The [Kenyon] motion to dismiss further argues that Portus’ conflict of interest malpractice claim fails to state a cognizable claim because it fails to plausibly allege that but for the alleged conflict regarding Kenyon’s concurrent representation of Portus and Bosch, it suffered any cognizable harm.  The only alleged “harm” suffered was the loss of patent term, but the Amended Complaint fails to allege how or why that loss of patent term caused Portus to suffer harm vis-à-vis Bosch."
  • "Securus Technologies Inc. urged a Texas federal court on Tuesday to disqualify Sterne Kessler Goldstein & Fox PLLC from representing rival Global Tel Link Corp. in patent litigation over prison phone systems, arguing that two attorneys who just joined the firm have been privy to Securus’ trade secrets."
  • "The two attorneys had access to the information while they worked on cases with Kellogg Huber Hansen Todd Evans & Figel PLLC, but that presents a conflict now that they now work for Sterne Kessler, which represents GTL in matters before the Patent Trial and Appeal Board, according to Securus. GTL and Securus had signed off on protective orders that allowed attorneys to review the information, but forbid them from sharing it with lawyers working on PTAB matters, according to Securus' motion to disqualify."
  • "Since attorneys John C. Rozendaal and Michael E. Joffre are now working with Sterne Kessler, the firm may be obligated to disclose some of the information gleaned in the cases to other firm attorneys working on related inter partes reviews and patent prosecution matters before the PTAB, even though the protective orders bar it from doing so, Securus argued."

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