As I feverishly continue my review and summary of OED ethics decision in advance of my presentation on ethics at the 7th Annual Patent Law Institute, I recently found an interesting case about discipline of an attorney practicing trademark law. The case is In the Matter of Michelle A. Massicotte (May 16, 2012). This case has significance for patent attorneys because the action taken by the Office of Enrollment and Discipline (OED) was as the result of false statements made in a petition to revive three trademark applications after failure to respond to an Office Action.
The tale starts like this: Michelle A. Gallagher, formerly known as Michelle A. Massicotte, is an attorney licensed to practice law by the Commonwealth of Massachusetts. Massicotte is not a registered patent practitioner and is not authorized to practice patent law before the USPTO. She was not engaging in any patent law practice before the Office, yet what she was charged with doing is the type of response that patent attorneys do file with some frequency, so her discipline is quite instructive.
Welcome to the final panel of the day! The Patent Law Institute live blog concludes with the ethics portion of the seminar. The panel is titled, “Ethics: from the USPTO to Trial”. The panel is led by Kenneth W. Brothers, a partner in the Intellectual Property Practice of Dickstein Shapiro. The ethics panel discusses the quandary of single advocacy at the PTO, facing requirements for information, cross citing case-to-case in the PTO, and other advocacy ethics issues. Here are the highlights: (more…)
Written by Lisa A. Dolak , Angela S. Cooney Professor of Law, Syracuse University College of Law and Practice Center Contributor.
Of course, lawyers are required to observe the applicable rules of ethics in the context of negotiations, as in other settings. However, just how those rules should be interpreted in particular situations is sometimes the subject of significant debate. This is certainly true when the issue is whether the negotiating lawyer is free to affirmatively represent the client’s “bottom line.”
ABA Model Rule 4.1(a) provides the relevant guidance. It provides that “[i]n the course of representing a client a lawyer shall not knowingly . . . make a false statement of material fact or law to a third person.” However, the commentary to Rule 4.1 defines what is a “fact” for purposes of negotiation. Specifically, according to Comment 2:
This Rule refers to statements of fact. Whether a particular statement should be regarded as one of fact can depend on the circumstances. Under generally accepted conventions in negotiation, certain types of statements ordinarily are not taken as statements of material fact. Estimates of price or value placed on the subject of a transaction and a party’s intentions as to an acceptable settlement of a claim are ordinarily in this category . . .. (more…)
En Banc Oral Argument In Two Important Patent Cases: Therasense Inequitable Conduct Standard and TiVo Contempt for Attempted Design Around
The following alert was written by our friends at Foley & Lardner.
On November 9, 2010, the U.S. Court of Appeals for the Federal Circuit, sitting en banc, heard oral argument in two important patent cases. The first, Therasense, Inc. v. Becton, Dickinson & Co., No. 08-1511 et al., concerns whether the current materiality-intent balancing framework for determining inequitable conduct should be modified and, if so, how. The second case, TiVo, Inc. v. EchoStar Corp., No. 09-1374, concerns the circumstances under which a district court, following a finding of infringement at trial, might then use a contempt proceeding, instead of a new trial, to determine whether a newly accused device infringes.
Therasense, Inc. v. Becton, Dickinson & Co., No. 08-1511 et al. — Inequitable Conduct
Under the current standard, patent unenforceability based on inequitable conduct — whether a patent applicant somehow breached his duty of candor and good faith to the USPTO during prosecution — is frequently asserted by accused patent infringers as a defense to infringement. The Federal Circuit has previously expressed concerns that inequitable conduct is invoked too often. In Therasense, the court could make it more difficult to assert the defense in future cases. (more…)
Baker & Daniels’ Trevor Carter, a Practice Center Contributor, recently passed along this article that he co-authored with colleague Andrew McCoy on the August 6th Federal Circuit decision, Ring Plus, Inc. v. Cingular Wireless Corp., 09-1537.
In Ring Plus, Inc. v. Cingular Wireless Corp., No. 2009-1537 (Fed. Cir. Aug. 6, 2010), the Federal Circuit reversed a final judgment of inequitable conduct and found that the prosecuting attorney of U.S. Patent No. 7,006,608 (“the ‘608 Patent”) did not intend to deceive the PTO.
While we do not believe this article is biased, we note that we are counsel in a pending Federal Circuit appeal involving inequitable conduct. See, Joovy LLC v. Target Corp., No. 2010-1323 (Fed. Cir.) We represent Target and were successful in obtaining a final judgment of unenforceability due to inequitable conduct at the district court. (more…)