Lawyers from Finnegan, Henderson, Farabow, Garrett & Dunner aren’t making any friends at other law firms in an ongoing patent fight over smart phones and tablets at the International Trade Commission. Firm lawyers want Morgan, Lewis & Bockius; Reed Smith; and Cooley—which are not involved in the case—to turn over reams of documents that Finnegan client Research in Motion thinks might be useful. It’s not unusual in ITC cases to ask for information from third parties, but going after law firms is far less common, and the firms are fighting back. To Morgan Lewis partner Michael Lyons, the subpoena is an “overbroad fishing expedition designed to intentionally burden or otherwise harass the firm,” he wrote in court papers. Reed Smith partner Mark Wasserman sounded equally indignant, writing that it would take several months and tens of thousands of dollars to comply, and most of the documents would be privileged anyway. The tempest began when Alexandria, Va.-based Pragmatus, which describes itself on its website as specializing in “monetizing intellectual property,” filed suit at the ITC in February. Represented by company founders William Marino and Anthony Grillo, both patent lawyers, Pragmatus alleged that seven electronics companies, including RIM, Samsung Electronics, HTC Corp. and LG Electronics, were infringing five of its patents related to teleconferencing and videoconferencing. Morgan Lewis has a tenuous connection to the matter at best. The firm doesn’t represent any of the companies involved. Nor does it represent Intellectual Ventures LLC, the company that sold the patents at issue to Pragmatus. Rather, Morgan Lewis once represented Avistar Communications, which sold the patents to Intellectual Ventures before it sold them to Pragmatus. And Morgan Lewis hasn’t even counted Avistar as a client since 2008, when the partner that represented Avistar left the firm, and took the company with him. Nonetheless, RIM counsel from Finnegan, led by partner Thomas Jarvis, subpoenaed documents from Morgan Lewis that it described in ITC court papers as “highly relevant to this Investigation.” “Morgan Lewis was at least involved in the prosecution of these patents, and potentially involved in licensing the technology within,” wrote Jarvis, who did not respond to a request for comment. “It is imperative that RIM be able to understand the scope of these licensing activities.” Lyons from Morgan Lewis didn’t see it that way, calling the request “unduly burdensome and not likely to produce admissible evidence, but rather would yield only a burdensome, and ultimately unhelpful, privilege log.” Lyons also did not respond to a request for comment. As for Reed Smith, it’s representing Pragmatus in two patent cases pending before the U.S. District Court for the Northern District of California involving different patents. “As an initial matter, RIM has not explained why its discovery requests go far beyond the five U.S. patents that are involved in [the ITC] investigation,” Wasserman wrote in ITC court papers. “RIM’s claim that it is ‘possible’ that ‘prosecution records from related patents will be relevant to… claim construction in this case’ is hardly a sufficient justification to drag a non-party through tens of thousands of dollars of expense and annoyance.” He added, “Not only is the number of documents to be reviewed enormous, but many of the documents will be subject to the attorney-client privilege and/or work product doctrine.” Wasserman did not return a call and an email seeking comment. Both Reed Smith and Morgan Lewis have asked ITC Administrative Law Judge E. James Gildea to quash the subpoenas. Their motions are pending. Cooley was not so fortunate. It’s not clear from the ITC court record how the firm is connected to the proceedings, but it too was hit with a subpoena from Finnegan on RIM’s behalf, with a response due on August 31. On that day, Cooley partner Stephen Smith filed an unopposed motion asking for a one-week extension to to respond to and/or move to quash or limit the subpoena. Gildea said no, ruling that the motion came a day too late. While the response was indeed due on August 31, he wrote, the “Ground Rules for this Investigation require that all requests for extensions of time be filed no later than the day before the due date.”
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