Posts Tagged: "ISE"

Nasdaq ISE Files Motion to Disqualify Fish & Richardson at PTAB Over Prior Representation

Nasdaq ISE’s motion to disqualify Fish & Richardson was made pursuant to 37 CFR 11.109, which prevents a practitioner from representing a party adverse to a former client in substantially similar proceedings; this duty is imputed to the practitioner’s law firm under 37 CFR 11.110. In its motion, Nasdaq argued that the PTAB should adopt the magistrate judge’s finding that the defense of MIAX, including the CBM reviews challenging the validity of the patents asserted against MIAX, is a collaborative effort and Fish & Richardson should be disqualified because of the conflict of interest. The particular patent-at-issue in this CBM review was filed and prosecuted during the period in which Fish represented Nasdaq. “Because patent-eligibility, this sole issue in this CBMR, is evaluated from the time of invention… the confidential factual information Fish obtained from Nasdaq is material to the issues in this [CBM review],” the motion reads.

Fish & Richardson Scores Patent Victory with Motions in Limine

So what is unique about this particular victory at the district court that caught my attention? The timing of the victory and circumstances surrounding the culmination of the case seemed peculiar to me. Moments before opening arguments were set to begin and after the jury had been selected ISE consented to entry of a judgment of non-infringement in favor of CBOE. ISE had been seeking over $400 million in actual damages and was requesting those damages be tripled. But why throw in the towel right before trial on a case that had already once gone up to the Federal Circuit? Fish & Richardson attributes the victory, and particularly the timing of the victory, to a strategy that involved a series of pre-trial motions, including motions in limine to exclude certain evidence at trial.