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The patent battle between Gemstar-TV Guide International Inc. and its four competitors in the television set-top-box business was bound to be contentious. After all, billions of dollars in potential licensing fees are at stake. But add 170 lawyers and 18 firms to the picture, and watching it is like channel-flipping through 500 talk shows. Last February, Pasadena, Calif.-based Gemstar asked the International Trade Commission, an independent federal agency based in Washington, D.C., to bar Scientific-Atlanta Inc.; EchoStar Communications Corporation; Pioneer Corporation; and SCI Systems Corp. from importing set-top boxes that Gemstar claims violated four of its patents. A final decision by the ITC is expected by May. The ITC is just one battleground. Gemstar and its competition have two more patent infringement battles and one consolidated antitrust case pending in an Atlanta federal court. The list of firms involved in the ITC and court cases is extensive, and the legal bills generated will probably be dizzying. But what’s really been raising eyebrows is Gemstar’s choice of trial counsel for the ITC fight. By last April, Gemstar had hired five firms: D.C.’s Hogan & Hartson; San Francisco’s Townsend and Townsend and Crew; Pasadena’s Christie, Parker & Hale; D.C.’s Sutherland Asbill & Brennan; and L.A.’s O’Melveny & Myers. When Gemstar moved to add yet another firm, at least one client got huffy. San Francisco’s Orrick, Herrington & Sutcliffe surfaced as a potential Gemstar hire last October when it approached its client, Pioneer, a defendant in the ITC case, for a conflict waiver. Pioneer refused. But when Boston’s Fish & Richardson, another of Pioneer’s firms, made the same request and got the same response, the law firm took a more aggressive stance, dropping Pioneer in favor of Gemstar. Pioneer fought back, using Chicago’s Kirkland & Ellis to try to disqualify Fish & Richardson. The ITC judge eventually denied Kirkland’s request. So Fish & Richardson remains on Gemstar’s case. What are all these different firms doing? Gemstar and its many firms don’t want to talk about the company’s strategy until after the ITC makes its decision. Two lawyers opposing Gemstar say that both Hogan and Townsend and Townsend are handling patent-related matters, while O’Melveny has most of the antitrust issues and some of the expert testimony. Sutherland’s John North appeared as Gemstar’s lead counsel in the preliminary conference of the ITC case, but hasn’t appeared before the court since then. North, say the lawyers, took the lead on the Atlanta case, which at one point seemed to be led by Christie, Parker’s James Doroshow, Gemstar’s longtime go-to litigator. Gemstar used so many lawyers at the ITC — 16 by one estimate — that one involved in the case quips, “It was like there was new counsel for every witness.” According to two lawyers adverse to Gemstar, the closest thing Gemstar had to a lead trial counsel was O’Melveny’s Mark Samuels. Which raises another wrinkle in this over-lawyered saga. Less than three years ago, Gemstar wasn’t thrilled with O’Melveny. The company fired Samuels’ then-partner, Roderick Dorman, for Dorman’s “unilateral insistence and decision to assert positions harmful to Gemstar’s interests and over Gemstar’s objections,” according to court documents. Dorman testified that he was fired for refusing “to file a document prepared by the client that contained factual assertions for which there was no support.” Tough words. But apparently all was forgiven in the interest of adding O’Melveny to the Gemstar army.

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