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Patent Ethics: Litigation

by: Hricik, David

Patent Ethics: Litigation

by: Hricik, David

ISBN 13:
9780195367096
ISBN 10:
019536709X
Format: Paperback
Copyright: 04/07/2010
Publisher: Lexis Nexis Matthew Bender

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Summary

Patent Ethics: Litigation serves as a guide to the ethical issues arising in the course of the patent litigation process. By providing relevant rules and case law, it allows practitioners to identify ethical problems before they arise and to address them most effectively when they do. Patent Ethics: Litigation is the second of two volumes on patent ethics. This treatise is the first of its kind to combine the PTO rules with commentary by the author, which distills the author's own experience and expertise in patent litigation into effective practice strategies.

About The Author	p. xi
Introduction	p. 1
Choice of Law in Federal Court Litigation	p. 3
Introduction	p. 4
Federal Circuit Choice of Law on Legal Ethical Issues	p. 6
Federal Courts Take Different Approaches to Choice of Law on Ethical Issues	p. 7
The "National Standards" Approach to Choice of Law on Legal Ethics	p. 7
Other Approaches to Choice of Law on Legal Ethics	p. 9
Conclusion on Choice of Law	p. 10
Subject Matter Jurisdiction Over Malpractice Claims Based Upon Conduct Occurring During Patent Litigation	p. 11
Conflicts of Interest	p. 13
Introduction	p. 15
Conflicts Created by Communications with Prospective Clients	p. 15
Assuming an Attorney-Client Relationship Formed, Who Is, or Was, the Client?	p. 18
Inventors	p. 22
The Law	p. 22
Business Entities	p. 26
The Law	p. 26
Employees and Officers of the Entity Generally Are Not Clients	p. 27
Affiliated Entities Are Generally Not Clients	p. 28
Successor Corporations to Former Clients	p. 33
Assignees of a Patent the Firm Obtained for a Current or Former Client	p. 35
Current Client Conflicts	p. 36
Helping Out Behind the Scenes	p. 37
Parallel Patent Litigation	p. 38
Increasing a Client's Risk of Liability Even Without Parallel Litigation	p. 40
Adverse Discovery of a Current Client	p. 42
Positional Conflicts of Interest	p. 43
Implications and Recommendations	p. 44
Former Client Conflicts	p. 45
Is the Representation Over?	p. 45
The Protections Afforded to Former Clients	p. 48
The Substantial Relationship Test	p. 48
Possession of Client Confidences	p. 53
Challenging or Interpreting the Firm's Prior Work	p. 54
The Appearance of Impropriety	p. 55
Special Issues Concerning Transferring Lawyers	p. 55
Private Practice Migration	p. 55
Impact on a Firm of Hiring Lawyers	p. 56
Impact on a Firm of Departure of Lawyers	p. 60
Former Government Officials	p. 61
Impact of Disqualification	p. 61
Consent to Conflicts	p. 62
Contemporaneous Consent to Conflicts	p. 64
Prospective Consent	p. 66
Post-Wrong Waivers of Malpractice Claims	p. 69
Other Justifications for Denial of Disqualification	p. 70
Prejudice or Taint and Balance of Hardships	p. 70
Waiver by Delay in Seeking Disqualification	p. 70
The Hot Potato Doctrine and the "Thrust Upon" Exception	p. 71
Improper Uses of Disqualification Motions and Other Factors	p. 75
Competency, Diligence, and Communication	p. 77
Competency	p. 78
Diligence	p. 81
Communication	p. 82
Pre-Pleading Investigations	p. 85
Introduction to the Potential Sources of Liability and Sanctions	p. 86
Federal Rule of Civil Procedure 11	p. 86
Exceptional Case Attorney Fee Shifting Under 35 U.S.C. § 285	p. 87
Liability Under the Federal Antitrust Laws	p. 88
Liability Under State Law and Other Federal Statutes	p. 90
Concluding Introductory Thoughts	p. 91
Patentee's Pre-Suit Letters Charging Infringement	p. 91
Patentee's Pre-Suit Investigation into Charges of Infringement	p. 94
Is the Plaintiff a "Patentee?"	p. 95
Is the Patent in Force?	p. 96
Is the Defendant the Proper Defendant?	p. 96
Is There an Objective Basis, Based Upon Reasonable Investigation, to Allege Infringement?	p. 97
Interpretation of Claims	p. 97
Application of Claims to Accused Product or Process	p. 99
Invalidity of the Patent	p. 101
Note on ANDA Certifications	p. 102
Unenforceability	p. 103
General Issues of Law and Other Papers Beyond Pleadings	p. 103
Issues of Privilege and Work Product Concerning Pre-Suit Materials	p. 104
Ethical and Other Constraints on Pre-Suit Investigations and Pre-Suit Enforcement Efforts	p. 107
Ethical Constraints on Pre-Suit Investigations	p. 108
Counsel Representing a Party in a "Matter" May Not Communicate with a Person "Represented by Counsel" in that Matter About that Matter	p. 108
Rule 4.2 Prohibits Certain Ex Parte Contacts	p. 108
Is There a "Matter?"	p. 109
Does Counsel "Know" the Person "Represented by Counsel" in Terms of Rule 4.2?	p. 111
Note on the Impact of Federal Choice of Law Rules	p. 111
Current Employees of an Opposing Party	p. 113
Contacts with Current Employees Through Web Sites of the Opposing Party	p. 115
Former Employees of an Opposing Party	p. 116
In-House Counsel's Inability to Alter Rule 4.2	p. 120
Does Model Rule 4.2 Apply to Undercover Investigations?	p. 121
Model Rule 4.3	p. 124
Is the Use of an Undercover Investigator "Dishonest" Under Rule 8.4 or Rule 4.1?	p. 127
Authority Holding White Lies Are Acceptable	p. 131
Authorities Finding White Lies to Be Deceitful	p. 133
Pleading Ethically	p. 137
Law Governing Federal Pleadings	p. 138
Federal Rule of Civil Procedure 8	p. 138
Rule 11 Basis	p. 139
Pleading Infringement	p. 139
Defendants' Pleadings	p. 142
Expert Witnesses	p. 145
What Is "Expert" Opinion in Patent Litigation?	p. 147
Selection	p. 149
Preparation of the Report	p. 151
Contents of the Report	p. 152
Conflicts of Interest of Experts	p. 154
What Law Applies to Disqualification of Experts, Including Lawyer-Experts?	p. 154
Conflicts of Interests of Experts	p. 157
Introduction	p. 157
Side-Switching Cases: The Duty of Loyalty for Experts Is Minimal	p. 158
The First Party Must Have Objectively Believed a Confidential Relationship Existed Between It and the Expert	p. 160
The First Party Must Prove It Disclosed Confidential Information to the Expert	p. 162
Experts Whose Firms Represent Both Sides to a Dispute	p. 162
Experts Retained by an Opponent Who Represents the Movant in Unrelated Matters	p. 164
Consulting Experts	p. 165
Expert Is Lawyer's Former Client	p. 165
Former Employees as Opposing Experts	p. 165
Confidentiality and Experts	p. 166
Basic Distinctions: Consulting and Testifying Experts	p. 166
Disclosure of Testifying Experts' Files in Related Cases	p. 168
Waiving Privilege and Work Product by Disclosure to Experts	p. 169
Access to Facts Known to and Opinions Held by Consulting Experts	p. 170
Testifying Experts' Review of Consulting Experts' Materials	p. 171
Inadvertent Waiver of Expert's Facts and Opinions	p. 171
Special Note on Consulting Experts	p. 172
Testifying Experts	p. 173
Means to Reduce the Problems	p. 174
Ensure that Employee Confidentiality Agreements Are Broad and Enforceable	p. 174
To Help Identify Conflicts, Ask the Expert About Prior Work for the Opposing Party or Opposing Counsel	p. 174
Require the Expert to Sign a Confidentiality Agreement	p. 174
Formalize Retention of the Expert	p. 175
Disclose Information and Get the Expert Working Early	p. 175
Identify Confidential Disclosures as Such	p. 175
Advise the Expert Not to Talk About or Listen to Confidential Information	p. 176
If a Conflict Does Arise, Raise It Promptly with Opposing Counsel	p. 176
If the Conflict Cannot Be Resolved, Raise It Promptly with the Court	p. 176
Move In Limine to Exclude the Reference to the Conflicting Representation	p. 176
Ethical Issues in the Information Exchange Process	p. 179
Litigation Holds and Spoliation	p. 180
Local Rule Requirements	p. 180
initial Disclosures	p. 181
Protection of Pre-Pleading Investigatory Materials	p. 181
Complete Disclosures and Proper Supplementation	p. 182
Discovery	p. 182
General Discovery Abuse	p. 182
Improper Ex Parte Contacts During Pendency of a Matter	p. 183
Employees and Former Employees	p. 183
Ethical and Procedural Limitations on Ex Parte Contacts with Expert Witnesses	p. 183
Litigation Mistakes and Misconduct	p. 189
Trial Conduct	p. 191
In-Courtroom Conduct	p. 191
Advocate-as-Witness Disqualification	p. 192
Improper Argument	p. 192
Ex Parte Communications with Jurors	p. 192
Combining Prosecution with Other Forms of Representation	p. 193
Identifying the Applicable Standards	p. 194
Combining Prosecution and Litigation	p. 195
The Possibility of Misuse of Discovery Materials while Prosecuting Applications	p. 195
Is Prosecution of Patents by Itself Sufficient to Bar Access to Highly Confidential Information?	p. 196
In re Sibia	p. 198
The Majority View	p. 202
A Suggested Analysis	p. 206
A Proposed Prosecution Bar Raises Potential Conflicts and Liability	p. 208
Issues to Consider in Crafting Protective Orders	p. 212
Liability and Disqualification of Prosecuting Litigators	p. 216
Inequitable Conduct as a Conflict	p. 216
Depositions of Prosecuting Litigators	p. 218
Advocate-as-Witness Disqualification	p. 219
Combining Opinion and Trial Representations	p. 223
Advocate-as-Witness Disqualification	p. 224
The Courts Split on Advocate-as-Witness Disqualification	p. 224
What to Do	p. 227
Enhanced Risk of Waiver of Work Product	p. 227
What to Do	p. 235
Conclusion	p. 235
Table of Cases	p. 237
Index	p. 263
Table of Contents provided by Ingram. All Rights Reserved.

Amazon no longer offers textbook rentals. We do!

Patent Ethics: Litigation

Patent Ethics: Litigation

9780195367096

019536709X

Summary

Author Biography

Table of Contents

Supplemental Materials

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