Daniel Henderson, Intellect Wireless CEO ()
SAN FRANCISCO — An inventor who’s at the center of an attorney fee brawl between Sheppard, Mullin, Richter & Hampton and Niro, Haller & Niro wants to disqualify Sheppard Mullin from the case, saying he just realized he was once a client of the firm.
Intellect Wireless CEO Daniel Henderson filed a motion to disqualify last week, submitting records showing Sheppard Mullin represented a patent assertion entity owned by Henderson as recently as 2008. By 2010, Sheppard Mullin and HTC were accusing him in federal court of inequitable conduct at the U.S. Patent and Trademark Office.
“The very same sorts of allegations they were defending me against they were asserting against me,” Henderson said in a phone interview last week.
Sheppard Mullin partner Stephen Korniczky dismissed the claim in a brief email statement. “We believe the motion to be totally without merit and expect it will be denied,” he said.
The timing of Henderson’s motion is likely to be an issue, given that Sheppard Mullin has been adverse to him for nearly four years. Henderson, whose name appears on 28 patents and in a variety of cases involving their enforcement, said it’s hard to keep track of all the law firms involved.
Sheppard Mullin’s recent discovery demands in the HTC case, he said, led him to a document that jogged his memory. “Certainly, if I’d remembered at the time, I would have raised this issue,” he said. “But it never should have occurred anyway.”
The U.S. Court of Appeals for the Federal Circuit ruled last fall that Henderson submitted a declaration to the PTO containing false statements, and neither he nor patent prosecutor Robert Tendler had cleared up the inaccuracies. That ruling knocked out a patent that had helped generate tens of millions in licensing revenue and led to Tendler’s suspension. Emails surfacing in January showed that Henderson had warned Tendler the declaration was factually inaccurate and urged him to consult litigation counsel at Niro Haller.
Now Sheppard Mullin and HTC are moving for attorney fees against Henderson and Niro Haller in Chicago federal court, saying Niro Haller lawyers must have known about Henderson’s concerns. Niro Haller lawyers have said they had no idea until Henderson’s emails were produced in January.
Henderson’s new counsel at Kulwin, Masciopinto & Kulwin moved to disqualify Sheppard Mullin on April 28. Documents attached to the motion indicate Sheppard Mullin acted as local counsel in Coxcom v. Hybrid Patents before U.S. District Judge Maxine Chesney of San Francisco in 2006 and 2007. Henderson was president of Hybrid Patents, which was accused of asserting four broadband patents in bad faith, including withholding prior art from the PTO.
A Sheppard Mullin team led by San Francisco special counsel David DeGroot persuaded Chesney to transfer the case to Texas. DeGroot filed a declaration from Henderson swearing he was the president of Hybrid Patents. The case settled in 2008.
Korniczky joined Sheppard Mullin in 2010, bringing the HTC case with him. When that happened, he and Sheppard Mullin were “now accusing Henderson of the exact same conduct [Sheppard Mullin] had defended him against in the Hybrid/Coxcom litigation less than two years earlier,” Kulwin writes.
In the interview last week, Henderson declined to answer the question that’s become the focal point of the fee litigation: Did he alert attorneys at Niro Haller to problems with his declaration? Niro Haller’s attorney has said that “if called to testify, Henderson will confirm” that he never did.
“I don’t recall even now if I signed an affidavit on that,” Henderson said in the interview. “At the right time, I’ll be asked about that and I’ll give the answers.”
In the meantime, Sheppard Mullin has demanded records of all communications between Henderson and Niro Haller prior to the filing of the HTC litigation. Responding led Henderson to a Sheppard Mullin document from the Hybrid Patents case, Henderson said. “I found this very familiar looking letterhead that I’d seen many times,” he said, “but it had my company’s name on it.”
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