So, very recently, I was involved in a very heated and contentious Intellectual Property (“IP”) dispute with both sides taking entrenched positions. Some abstract concepts were involved and there were some nuanced issues relating to our clients’ ability to estalish valid IP rights. I received the case from a prior business attorney, and my team and I were able to re-plead the Answer, and raise some new affirmative defenses; but purposely, raised no counterclaims (were not required to raise them).
Next, we set out to complete written and oral fact discovery for all the major issues, or key depositions, within the next three (3) months. Hell of a three months, let me tell you. However, despite having attorneys examine and question them for the full seven (7) hours allowed under the FRCP; the clients, remained entrenched in the same positions. Ok, so, like any good defense attorneys, we draft, research and prepare a motion for summary judgment (“SJ”) to try and get our clients IP rights recognized and enforced, as a matter of law.
Next, we wait for about six to nine (6-9) months for a Ruling on the Summary Judgment Motion. All the while our clients are able to continue their business operations and revenue generation activities (no injunctions were issued). The time for trial is soon, upon us, and we have not received a Ruling on our summary judgment motion. We prepare a motion to continue trial, and gently, remind the court clerk of the pending and fully briefed motion for summary judgment.
You know what happens next, right? Our motion requesting a Ruling is granted and the trial dates are rescheduled. However, within less than, thirty (30) days our motion for summary judgment is denied in a five (5) page opinion that makes a blanket statement that “genuine issues of fact exist for trial.” There are no citations to the records, exhibits or the legal authority in the parties’ briefs, and for that matter legal authority supporting the opinion’s Rulings or SJ standards.
We prepare a motion to reconsider, and assert an error of law, in application of the SJ standard, and that we had met our burden of proof and production on the issues relating to our clients’ valid IP rights and affirmative defenses. We identify, the lack of admissible evidence at trial in the responding party’s briefs, and the failure to raise a genuine issue of material fact requiring a trial. We limit our focus to issues that are dispositive establish the validity of our IP rights and the affirmative defenses permitted on an SJ motion. We remind the court clerk of the responding party’s obligation to produce admissible evidence that creates a genuine issue of trial (thank god for Celotex and its progeny).
Within, twenty one (21) days, we get a Ruling (1-2 page opinion) that denies our motion for reconsideration, and essentially, says see our prior opinion. We (our clients and us) believe, that we can prevail at trial, but want to avoid the burden and expense of a trial or the risk of potential adverse factual findings. The the thing about IP claims, whether, they involve copyright, patent or trademark infringment; there are often, interested third parties (not required just generally interested). You never know, how the factual findings in one case may, impact your clients rights vis-a-vis these interested third parties.
So, how do we get an interlocutory appeal or writ for mandamus relief, in this situation? Is that even worth it? Can the clients afford the appeal and/or writ, and the trial if, our SJ is denied on remand? Then, it hits me changing the decision maker, does not require an appeal or a writ of mandamus and that is what we really want to do. So, how do I change the decision maker for our case? Ah ha–some claims between the parties that are tangentially related, but not barred could be brought in a different venue.
In fact, we could file in the other venue, and seek a stay in the venue, where we got adverse Rulings on our motions for summary judgment and reconsideration. We start preparing the clients for this possibility, and we discuss how to get the stay granted, and it looks good. Plus, this decision maker or court clerk does not appear to want to dig through our briefs or motions–so, we believe there is an incentive to grant our motion to stay and avoid having us go to trial.
We were in the process of executing on this strategy, but it turns out that we may be able to resolve the dispute, without even having to file the tangentially related claims in the new venue. Never forget, the value of changing the decision maker or court clerk that gives you adverse Rulings. Not all of these situations require an appeal or mandamus relief, sometimes a simple re-pleading of some tangential, but new claims in a different venue, may save you, and your clients, the burdens and costs of an appeal and/or writ, or a trial.
That will definitely have go into the file bank for future use. Want to know more, or hear more similar stories, then check out: www.bipeblawg.com or www.vrplawgroup.com