Legal Judo – Using Their Own Information Against Them

Submitted by patentadmin on Thu, 12/31/2009 - 20:28

A patent owner, suing for infringement of his patent, may find that the defendant has substantial arguments as to non-infringement. However, if there is a pending continuation of the patent-in-suit, the patent owner may be able to overcome such non-infringement defenses by adding new claims to the continuation, which are specifically tailored to the defendant’s products or services.

If the plaintiff’s litigation counsel, who has access to all of the product or service data produced by the defendant in discovery, is also prosecuting the continuation application, so much the better – for the plaintiff. Not surprisingly, defendants take a dim view of such doings and seek to prevent litigation counsel from prosecuting continuation applications in those circumstances. The issue is now before the C.A.F.C. (In Re Deutsche Bank Trust).

The district court sided with the patentee, holding that a party’s right to choose its own counsel outweighed the potential risk of disclosure of the defendant’s confidential information during prosecution of the continuation application. The defendant appealed to the C.A.F.C., citing half a dozen decisions of other trial courts which barred such practice. The C.A.F.C. has now issued an order barring the trial counsel from any further involvement in the prosecution of the continuation application pending their decision on the merits of the matter.

THE LESSON TO BE LEARNED: (If the C.A.F.C. follows the several previous trial court decisions on this issue) you can’t work both sides of the street at the same time.

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