Judge Denies Bid for ‘Patent Prosecution Bar’

     (CN) – A magistrate judge in Manhattan refused to impose a “patent prosecution bar” on the lead intellectual property attorney for a firm he was defending in a patent dispute.




     U.S. Magistrate Judge Andrew J. Peck ruled that barring Carlos Macedo of Amber, Rothstein & Ebstein from trying other patent cases would “highly prejudice plaintiffs (and Mr. Macedo himself, to the extent it would reduce his ability to earn a living).”
     Macedo is the regular intellectual property attorney for Double Rock Corp. and its subsidiaries, according to his firm’s Web site.
     Double Rock and a company called Island Intellectual Property filed suit against Promontory Interfinancial Network in March, accusing it of infringing on their patented computerized account management techniques.
     Promontory sought to ban Macedo, a Columbia Law School grad and author of “The Corporate Insider’s Guide to U.S. Patent Practice,” while the case with Island Intellectual is pending, plus two years. It appeared concerned about possible disclosures to competitors.
     Judge Peck said a court decides whether to order a patent prosecution bar based on the “competitive decision-making standard,” which considers the attorney’s advice and participation in the client’s decisions, “made in light of similar or corresponding information about a competitor.”
     Peck cited cases that supported the defendants’ position and said that patent prosecution “is, by nature, a form of competitive-decision making because patent attorneys can control the nature and scope of a patented invention,” especially “if [patent counseling] relates broadly to the scope of the patented invention.”
     The judge concluded that Promontory didn’t provide enough evidence to warrant the restriction.
     Granting the motion “would inexorably lead to the conclusion that no attorney, whether in-house or retained, could prosecute patents for a client while still working as litigation counsel for that client,” he wrote. “Such a result would run contrary to Federal Circuit Law.”

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