The following PTAB cases address issues related to the parties’ counsel, including motions for sanctions or motions relating to disqualify counsel. 37 C.F.R. § 42.11(d) authorize the Board to consider motions for sanctions. Motions for sanctions must be authorized and made separately from any other motion and must describe the specific conduct that allegedly violates 37 C.F.R. § 42.11(c).
VMWare, Inc. v. Clouding Corp., IPR2014-01292, Paper 23 (PTAB Apr. 7, 2015). The Board noted that, in accordance with the duty of candor under 37 C.F.R. § 42.11, counsel for patent owner has a duty to disclose not just the closest primary reference, but also any closest secondary reference(s) the teachings of which sufficiently complement that of the closest primary reference to be material.
Square, Inc. v. Think Comput. Corp., CBM2014-00159, Paper 48 (PTAB Nov. 27, 2015). A motion for sanctions should address three factors: (i) whether a party has performed conduct that warrants sanctions; (ii) whether the moving party has suffered harm from that conduct; and (iii) whether the sanctions requested are proportionate to the harm suffered by the moving party.
John Crane, Inc. v. Finalrod IP, LLC, IPR2016-00521, Paper 5 (PTAB Mar. 29, 2016). The Board denied petitioner’s request to file a motion to disqualify patent owner’s counsel on the basis that patent owner’s counsel prosecuted the reference patent asserted against the challenged patent. The reference patent was assigned to a company acquired by petitioner, and therefore, Petitioner argued that the attorney-client privilege associated with the reference patent transferred to petitioner. Petitioner argued that patent owner’s counsel may have to take positions adverse to petitioner’s patent in defending the challenged patent, which creates a conflict of interest under Rule 109(a) of the PTO’s Rules of Professional Conduct. Disqualification of counsel is resolved on a case-by-case basis. The Board denied petitioner’s request, determining that petitioner did not show that the reference patent is “identical or essentially the same” as the challenged patent, nor that the reference patent and the challenged patent are “substantially related” for purposes of disqualification. Further, petitioner’s argument that patent owner’s counsel will take positions adverse to their former client is speculative.
RPX Corporation v. Applications in Internet Time, LLC, IPR2015-01750, Paper 58 (PTAB May 6, 2016). The Board partly granted petitioner’s motion for sanctions relating to violations of the protective order. The Board rejected patent owner’s argument that patent owner’s conduct should be excused because the protective order had not yet been entered, particularly because the parties were operating with the understanding that a protective order was in place. The Board determined that petitioner had suffered harm, at least in the disclosure of its confidential information to patent owner’s named counsel in the related district court litigation and a second named advisor to the patent owner regarding the IPRs, who are neither employees of patent owner, nor involved in the IPR proceeding. The Board also determined that petitioner had suffered harm to the extent that it had to expend time and money enforcing clear terms of the protective order that patent owner should have been following without petitioner’s efforts. The Board authorized petitioner to file a motion for attorney fees.