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Monday, June 17, 2024 | Back issues
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No Patent Prosecution Bar in Star-Studded Case

(CN) - A federal judge refused to dismiss a large circuit manufacturer's patent claims against more than 30 chains including Starbucks, Capital One, JP Morgan Chase and Wal-Mart.

Maxim Integrated Products is a semiconductor company on the NASDAQ 100 based in San Jose, Calif.

In January 2012, Maxim sued 26 companies - including Starbucks, Expedia, Capital One, Chipotle, Groupon, Hotels.com, Hotwire, PNC Bank, QVC and Southwest Airlines - for patent infringement related to smartphone application for money transfers.

The Western District of Pennsylvania held an initial status conference in July, and Maxim filed a joint report regarding a protective order in August.

About a week after an Oct. 2 case-management conference, the court transferred seven related cases - involving Bank of America, Citigroup, JP Morgan Chase, Target, Wal-Mart, Wells Fargo, et al. - to the Western District of Pennsylvania.

The opposing parties asked for a two-year patent prosecution ban against Maxim's attorney, Michael North, a partner at North, Weber & Baugh in Palo Alto, Calif.

Maxim indicated that North has been "deeply involved in the infringement analysis" and sent cease and desist letters regarding the patents in suit to at least two of the opposing parties.

U.S. District Judge Nora Barry Fischer denied the opposing parties' request on Nov. 2.

"Whether a patent attorney's involvement with a party is limited to filing patent paperwork and providing broad oversight of patent prosecution, or to obtaining disclosure materials for new inventions or making strategic decisions on patent prosecutions and portfolios, are facts that determine an attorney's decision-making role," Fischer wrote.

The judge relied on In re Deutsche Bank Trust Co. Americas to reach her decision.

"In Deutsche Bank, the district court had refused to adopt a patent prosecution bar, but the Federal Circuit found that the district court made this decision without a full evidentiary record of the attorney's role," the seven-page opinion states. "To that end, the Federal Circuit remanded the determination back to the district court for a new balancing analysis based on a full evidentiary record and application of the standards set forth by the Federal Circuit. Given that analysis of the disclosure risk, balancing of risks, and the assessment of the propriety of any exemption must be based on 'all relevant facts' by a 'counsel-by-counsel basis,' the court finds that the present record lacks sufficient evidence to impose a prosecution ban on any counsel at this time."

Fischer concluded that "no party has provided enough evidence for this court to order such a ban on Mr. North (or any other counsel involved in the case or exceptions to such a ban.)" (Parentheses in original.)

All parties can file a properly supported motion seeking a prosecution bar by Nov. 15.

Responses to that motion must be filed no later than Nov. 29.

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