A party’s right to choose their own counsel is sacrosanct. Short of the existence of an irreconcilable conflict, a litigant’s choice of counsel will usually not be disturbed.
Clients will frequently take into account an attorney’s background, experience, and the extent to which they are a good “fit” in deciding who to select. These factors naturally apply to selecting an intellectual property litigator as well. However, a plaintiff patent owner should additionally consider the benefits of selecting an “independent” litigator for an infringement case. By “independent” litigator, I mean an attorney whose firm had no prior involvement in the prosecution of the underlying patent that is the subject of the infringement case.
The following are five compelling reasons for a patent owner to consider retaining an “independent” litigator:
1.) A Fresh, Objective Perspective – “Independent” litigation counsel can provide a fresh perspective and perhaps a more objective assessment of the merits of a patent infringement case, before the enforcement action is pursued. This may be possible due to the absence of any prior representations by the “independent” litigator to the client about the available scope of relevant patent claims allowed by the Patent Office.
2.) Deposition of Prosecution Counsel – The attorney who prosecuted the underlying patent will likely be deposed during the litigation by the defendant’s attorney. The patent owner’s litigation attorney will often be asked to “defend” the deposition of the patent prosecution attorney. If the patent owner’s prosecution and litigation counsel are in the same firm, or even in the same office, there may be “political” or other factors that play a role in decision-making above and beyond the interests of the client. “Independent” litigation counsel may be better able to focus on the case and their client’s best interests during this contentious process.
3.) Credibility – If a patent dispute goes to trial, the patent prosecution attorney will often be called to testify as a witness. This attorney will be questioned on the witness stand by the patent owner’s litigation counsel, either on direct or cross-examination. Inevitably, the defense attorney will go to great pains to emblazon in the minds of judge and/or jury that both the prosecution and litigation attorneys are from the same firm. Their goal is simple, to attack the credibility of this testimony and to focus the jury on the “relationship” between prosecution and litigation counsel. This superficial “appearance” of bias can be avoided by retaining “independent” litigation counsel.
4.) Duplicative Fees Avoidance – To address the issue in 3.), if it appears that a matter will go to trial, litigation counsel may recommend to their patent owner client to retain an additional firm to help try the case. Although probably a wise decision under the circumstances, the plaintiff will likely end up paying for duplication of work by the first litigation firm and the second litigation firm, depending on when the second firm is brought on to get “up to speed”. This could result in the patent owner paying more in legal fees which could have been avoided by retaining “independent” litigation counsel from the outset of a case.
5.) Mitigating “Protective Order” Disputes – A “Protective Order” controls the manner in which the parties’ confidential and propriety information shall be handled and exchanged during litigation. It is common for litigation counsel to spend significant time discussing and negotiating the terms of a Protective Order. Where the patent owner’s prosecution and litigation counsel are from the same firm, defense counsel will often insist that the Protective Order include a provision that precludes the firm from any future prosecution of the asserted patents or even the field of the patented technology. Defense counsel’s demands are based on concerns that plaintiff’s litigation counsel will disclose the defendant’s confidential information to prosecution counsel, who in turn will use the information for competitive decision making during later prosecution of the asserted patent. This can be very significant when the plaintiff’s prosecution and litigation counsel are from the same firm or work in the same office. Short of the plaintiff’s firm acceding to these demands, the time, cost, and distraction of dealing with these issues can be avoided altogether if the patent owner retains “independent” litigation counsel.
This article is written by Vegh IP Legal. It provides general coverage of its subject area and is presented to the reader for informational purposes only. The information contained in this article does not constitute the rendering of legal advice by Vegh IP Legal, nor is it a substitute for legal advice and may not be suitable in a particular situation. Should you have any questions on the subject matter of this article, please contact Stephen Vegh, at Vegh IP Legal, email to svegh@veghlaw.com, or call (310) 980-7440.