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« Motio, Inc. v. BSP Software LLC (E.D. Tex. 2016) | Main | Court Report »

January 12, 2016


Timely Bowie tribute noted. Kewl. Maybe it isn't true that "nothing has changed" in the culture of law over the (golden?) years.

As for the reported decision itself, it seems to draw too fine a distinction between obviousness and interfering subject matter. IMHO, if a practitioner is obligated to argue against the scope of the disclosure or claims contained in a patent his or her firm prosecuted for a first client, during prosecution of a later application filed by a second client, there's a conflict.

I don't know whether that was the issue here. The decision doesn't get into the specific reasons why Finnegan saw a conflict regarding the requested opinion; if it was based solely on economic competition, representation would have been permissible (admittedly, not required). I'm a little surprised, though, the court didn't remand to allow for a more definite statement of plaintiff's claims.

Curtis isn't relevant. While the FCC applicants were all broadcasters, I didn't see anything in the opinion suggesting they were competitors in the same market, where relevant markets are limited in geographic scope by the physics of electromagnetic waves. A broadcasting license issued to one client would necessarily have no impact on the scope of a license issued to another. This simply isn't true when considering obviousness.

I have heard from several sources – and thought it made sense — that it's advisable to get non-infringement opinion letters prepared by an independent attorney or firm. The rationale was that the prosecuting firm already has a vested interest that could, perhaps unconsciously, skew their interpretation of the results, and the litigating firm shouldn't be put in the position of being counsel and witness in the same proceeding.

Because of this, I've heard of specialty firms that ONLY do opinion letters ( rather like garages that only do smog testing, not the associated repairs, so they've got nothing to gain by making sure people fail). At trial they get to be heroes just for one day (couldn't resist). I let out a whistle when I heard some of the prices, but I bet it would still have cost Mr. Maler less than taking this case all the way to the state Supreme Court.

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