Paper 5
`
`
`Entered: March 29, 2016
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`JOHN CRANE, INC.,
`JOHN CRANE PRODUCTION SOLUTIONS, INC., and
`JOHN CRANE GROUP CORP.,
`Petitioner,
`
`v.
`
`FINALROD IP, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00521
`Patent 8,851,162 B2
`____________
`
`Before SALLY C. MEDLEY, LYNNE E. PETTIGREW, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`Entered: March 29, 2016
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`JOHN CRANE, INC.,
`JOHN CRANE PRODUCTION SOLUTIONS, INC., and
`JOHN CRANE GROUP CORP.,
`Petitioner,
`
`v.
`
`FINALROD IP, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00521
`Patent 8,851,162 B2
`____________
`
`Before SALLY C. MEDLEY, LYNNE E. PETTIGREW, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`Case IPR2016-00521
`Patent 8,851,162 B2
`
`
`On March 24, 2016, a telephone conference call was held between
`respective counsel for the parties and Judges Pettigrew and Wieker.
`Petitioner was represented by Nicholas Restauri and Jason White; Patent
`Owner was represented by John Holman and Josh Shamburger. Petitioner
`initiated the conference call to seek authorization to file a motion to
`disqualify the law firm of Matthews, Lawson, McCutcheon & Joseph, PLLC
`(the “Matthews Firm” or the “Firm”) from representing Patent Owner in this
`proceeding.
`During the conference call, Petitioner’s counsel, Mr. Restauri,
`explained that the Matthews Firm drafted and prosecuted the application that
`issued as U.S. Patent No. 6,193,431 (“the ’431 Patent”). Mr. Restauri
`explained that the Matthews Firm’s work on the ’431 Patent was performed
`on behalf of Fiberod, a company later acquired by Petitioner. Mr. Restauri
`contended that the attorney-client privilege associated with the ’431 Patent’s
`prosecution transferred to Petitioner upon Petitioner’s acquisition of Fiberod.
`Mr. Restauri also explained that the Petition in this proceeding relies
`upon the ’431 Patent as prior art to the challenged patent, U.S. Patent No.
`8,851,162 (“the ’162 Patent”).1 Mr. Restauri argued that the Matthews
`Firm’s representation of Patent Owner in this proceeding will require the
`Firm to take positions adverse to Petitioner, its former client. For example,
`Mr. Restauri argued that the Matthews Firm will make statements about the
`scope of the ’431 Patent specification, on Patent Owner’s behalf, where the
`Firm drafted that same specification on behalf of Petitioner. Mr. Restauri
`argued that this presents a conflict of interest under Rule 109(a) of the
`
`1 Mr. Restauri represented that the ’162 Patent and ’431 Patent are not
`related in any manner, for example, as continuations-in-part or through a
`common priority chain.
`
`2
`
`
`
`
`
`Case IPR2016-00521
`Patent 8,851,162 B2
`
`USPTO Rules of Professional Conduct. See 37 C.F.R. § 11.109(a) (detailing
`rules with respect to former clients). Therefore, Petitioner seeks to file a
`motion to disqualify the Matthews Firm from representing Patent Owner in
`this matter based on this alleged conflict of interest.
`In response, Patent Owner’s counsel, Mr. Holman, argued that the
`PTAB has never authorized a motion to disqualify counsel and authorization
`is not warranted here. Mr. Holman explained that this same disqualification
`issue was litigated in the related district court proceeding, Finalrod IP, LLC
`v. John Crane, Inc., et al., No. 7-15-cv-00097 (W.D. Tex.), and the
`Matthews Firm was not disqualified.2
`Substantively, Mr. Holman argued that the attorney-client privilege
`related to the ’431 Patent’s prosecution did not transfer to Petitioner upon
`Petitioner’s acquisition of Fiberod. Mr. Holman also argued that the ’431
`Patent says what it says on its face, and it is unclear to Patent Owner how the
`Matthews Firm would be required to take positions adverse to Petitioner
`when interpreting that document. Mr. Holman likened the Firm’s
`representation of Patent Owner to that of a firm prosecuting an application
`before the USPTO in which the applicant’s own prior patents are cited as
`prior art.
`Disqualification of a party’s counsel is resolved on a case-by-case
`basis, where the moving party bears a heavy burden to show that
`disqualification is necessary. Anderson v. Eppstein, 59 U.S.P.Q.2d 1280,
`1286 (BPAI 2001) (informative); see also 77 Fed. Reg. 48,612, 48,630
`(Aug. 14, 2012) (“Motions to disqualify opposing counsel are disfavored
`
`
`2 Mr. Restauri represented that the Matthews Firm was disqualified from
`representing Patent Owner in a district court trademark matter.
`3
`
`
`
`
`
`Case IPR2016-00521
`Patent 8,851,162 B2
`
`because they cause delay and are sometimes abused.”). In this case,
`Petitioner’s request is predicated on Rule 109(a) of the USPTO Rules of
`Professional Conduct. See 37 C.F.R. § 11.109(a).3 This rule precludes
`counsel from representing a person in “the same or substantially related
`matter in which that person’s interests are materially adverse to the interests
`of [a] former client.” Id. Whether representations are “substantially related”
`has been interpreted as requiring a showing that the subject matter of the two
`representations is “identical or essentially the same.” See Anderson, 59
`U.S.P.Q.2d at 1286.
`Based on the record before us, Petitioner has failed to show
`sufficiently why we should authorize a motion to disqualify the Matthews
`Firm. Specifically, Petitioner has not shown that there is a genuine question
`as to whether the subject matter of the ’431 Patent is “identical or essentially
`the same” as the subject matter of the ’162 Patent. Petitioner has not shown
`that the Matthews Firm’s representations of Petitioner and Patent Owner
`regarding these two matters are “substantially related.” Petitioner does not
`contend that the ’431 and ’162 Patents are related in any manner, and we see
`no reason that their separate patentability determinations are “substantially
`related” for purposes of disqualification.
`Furthermore, Petitioner’s position that the Matthews Firm will
`necessarily take positions adverse to their former client in this proceeding is
`speculative. Neither party presented a sufficient reason that any statements
`that the Matthews Firm may make regarding the scope of the ’431 Patent
`
`
`3 Mr. Restauri represented that Petitioner does not contend that the Firm
`obtained Petitioner’s confidential information. See 37 C.F.R. § 11.109(b).
`4
`
`
`
`
`
`Case IPR2016-00521
`Patent 8,851,162 B2
`
`would be adverse to Petitioner’s interest in obtaining that patent during its
`original prosecution.4
`For these reasons, Petitioner’s request for authorization to file a
`motion to disqualify Patent Owner’s counsel is denied.
`
`It is:
`ORDERED that Petitioner’s request for authorization to file a motion
`to disqualify the Matthews Firm from representing Patent Owner in this
`proceeding is denied.
`
`PETITIONER:
`Dion Bregman
`Jason White
`Ryan McBeth
`Nicholas Restauri
`Matthew Lee
`Nicholaus Floyd
`Morgan, Lewis & Bockius LLP
`dbregman@morganlewis.com
`jwhite@morganlewis.com
`rmcbeth@morganlewis.com
`nicholas.restauri@morganlewis.com
`matthew.lee@morganlewis.com
`nfloyd@morganlewis.com
`
`PATENT OWNER:
`John Holman
`Josh Shamburger
`Matthews, Lawson, McCutcheon & Joseph, PLLC
`jholman@matthewsfirm.com
`jshamburger@matthewsfirm.com
`
`4 During the conference call, Mr. Holman represented that the Matthews
`Firm does not contend that the ’431 Patent is not prior art.
`5
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