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Defendants in a patent action may not depose the plaintiff’s litigation counsel, even though he was responsible for prosecuting the patents at issue in the case, a Southern District of New York judge ruled Thursday. Applying language used by the 2nd U.S. Circuit Court of Appeals on the standard for deposing attorneys, Judge Robert W. Sweet quashed a subpoena aimed at attorney Jeffrey I. Kaplan in the computer software dispute ResQNet.com, Inc. v. Lansa Inc., 01 Civ. 3578. ResQNet.com sued Lansa in 2001 over five software-related patents. Kaplan had shepherded them through the U.S. Patent and Trademark Office. Lansa wanted to depose Kaplan on the prosecution of the patents, his communications with the Patent Office, prior art on the software and draft patent applications. It argued that the law of the Federal Circuit should apply. Judge Sweet said that in “procedural issues not unique to patent law,” the Federal Circuit defers to the regional circuits. The 2nd Circuit, he said, disfavors depositions of opposing counsel because they risk disrupting the attorney-client relationship and impeding litigation. Sweet said he was guided by dicta in the 2nd Circuit’s 2003 opinion in In re Subpoena Issued to Dennis Friedman, 350 F.3d 65 (2003). The court said a motion to quash a subpoena under Rule 26 of the Federal Rules of Civil Procedure requires a district court to adopt a flexible approach to lawyer depositions as it determines whether the deposition “would entail an inappropriate burden or hardship.” “Such considerations may include the need to depose the lawyer, the lawyer’s role in connection with the matter on which discovery is sought and in relation to the pending litigation, the risk of encountering privilege and work-product issues, and the extent of discovery already conducted,” the circuit said in Friedman. Applying these considerations, Sweet said “the fact that the attorney who prosecuted the patent has been selected to serve as litigation counsel does not, in and of itself, protect that attorney from being deposed.” But he rejected Lansa’s argument that deposition of attorneys who have prosecuted patents is “routine.” Lansa had argued it was necessary to depose Kaplan because it was offering the affirmative defense of inequitable conduct by the plaintiff. Sweet disagreed, saying that the company had actually offered the defense of patent misuse, which he said was based on the idea that the use of a properly procured patent has been broadened impermissibly so as to impose an unreasonable restraint on competition. “Misuse renders the patent unenforceable during the period of misuse only, and may be cured so that the patent is again enforceable,” he said. “Inequitable conduct, on the other hand, renders the patent unenforceable permanently, and involves concealing facts or being dishonest in the procurement of the patent.” In this case, the judge said, “Lansa has not made any allegations concerning specific prior art concealed adequate to establish an affirmative defense of inequitable conduct” and that defense cannot be “inferred from the fact that Lansa has reserved the right to assert additional, unspecified affirmative defenses.” The judge said Lansa had not established the need to depose Kaplan on other grounds. It has already deposed the inventors of the relevant patents, asking questions about prosecution histories, prior art, and other matters, he said, and the company has not shown it would be unable to elicit more information from “a variety of expert and fact witnesses.” Moreover, he said, “any of Kaplan’s conclusions regarding the effect of a particular prior art reference on the validity of ResQNet’s patents would appear to be protected as attorney work-product.” Kaplan is a member of Kaplan & Gilman in Woodbridge, N.J. Steven Kimmelman and James H. Hulme of Arent Fox represented the defendant.

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