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The opponents in a patent fight have taken the unusual step of pulling each other’s law firms into the litigation ring. First, Rockwell Automation Inc. sued Chicago-based Niro, Scavone, Haller & Niro for allegedly filing “baseless, sham” patent infringement suits. Solaia Technology, one of Niro Scaveone’s clients, fired back in October with a suit claiming that Rockwell and two of its outside law firms — Howrey Simon Arnold & White and Fish & Richardson � had induced other companies not to license Solaia’s patent in violation of antitrust laws. “This might be viewed as tit for tat but that’s not the case,” insists Raymond Niro Sr., a name partner at Niro Scavone. The countersuit was filed after a Wisconsin federal judge denied Niro Scavone’s motion to dismiss Rockwell Automation Inc. v. Schneider Automation Inc., 02-1195. Niro says there is a distinction between companies teaming up to defend against patent infringement claims and the practice of “actively soliciting parties not to deal.” The latter, he argues, “crosses the line.” Other patent lawyers say it’s uncommon for law firms to be named as defendants in patent disputes. Defendants often request attorney fees when they believe a case is meritless, says Patricia Thayer, a partner at Heller Ehrman White & McAuliffe in San Francisco. But “seeing lawsuits from one lawyer against another is unusual.” “I’ve never seen anything like it,” adds John Briggs III, a partner in Howrey Simon’s Washington, D.C., office who is representing Rockwell. Niro Scavone, says Briggs, is “unhappy with any firm that defends a client that doesn’t bend to their will.” Niro Scavone and its clients contend that Rockwell’s industrial automation equipment infringes Solaia’s patent on a method of controlling factory production processes. Rather than suing Rockwell for infringement, Solaia has sued Rockwell’s customers, which include Clorox, Boeing, Eastman Kodak and Eli Lilly. Solaia, headquartered in Chicago, purchased the patent from Schneider Automation Inc. Solaia was formed by Dan Henderson, who also founded PhoneTel Communications Inc., a company that enforces the patents of the inventor of the telephone answering machine. Niro Scavone is known as one of the country’s leading patent enforcers and often represents companies like Solaia that have no products but instead license and enforce patents. Solaia’s lawsuit says that 40 companies have accepted licenses, cumulatively paying Solaia nearly $17 million to date. Howrey Simon and Fish & Richardson “have attempted to force a zero price for a license, encouraging potential licensees to refuse licenses even at royalty rates that have been capped between $300,000 and $600,000,” according to the complaint. The suit also alleges that the OPC Foundation, a standards-setting organization for the industrial automation industry, was established by Rockwell and acts as “a mouthpiece for Rockwell” by urging members not to license Solaia’s patent.

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