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Encyclopaedia Britannica, Inc. v. Dickstein Shapiro, LLP

United States District Court, District of Columbia

November 26, 2012

ENCYCLOPAEDIA BRITANNICA, INC., Plaintiff,
v.
DICKSTEIN SHAPIRO, LLP, Defendant.

Page 151

Joseph E. Digenova, Victoria Toensing, Digenova & Toensing, LLP, Washington, DC, Robert P. Cummins, The Cummins Law Firm, P.C., Chicago, IL, for Plaintiff.

John Douglas Aldock, Matthew Michael Hoffman, Goodwin Procter LLP, Washington, DC, for Defendant.

MEMORANDUM OPINION

JOHN D. BATES, District Judge.

In this legal malpractice action plaintiff Encyclopaedia Britannica, Inc. seeks to invoke judicial estoppel against its former law firm, defendant Dickstein Shapiro, LLP, based on statements Dickstein made as Britannica's attorney. The parties filed motions and cross-motions for partial summary judgment as to the judicial estoppel issue. Britannica also filed a motion for sanctions, arguing that Dickstein engaged in evasive discovery conduct. On November 15, 2012, the Court held a motions hearing. For the reasons explained below, the Court will deny Britannica's motion for partial summary judgment, deny its motion for sanctions, and grant Dickstein's cross-motion for partial summary judgment.

Page 152

BACKGROUND

The background for this dispute is recounted more fully in this Court's prior opinion. See Encyclopaedia Britannica, Inc. v. Dickstein Shapiro, LLP, No. 10-454 (D.D.C. Feb. 2, 2012) [Docket Entry 36]. As relevant here, Dickstein represented Britannica in the prosecution of several patents relating to a multimedia database search system. While prosecuting the patent applications in 2005, Dickstein partner Jon Grossman filed two petitions for expedited treatment with the United States Patent and Trademark Office (" PTO" ) on Britannica's behalf. The petitions for expedited treatment, called Petitions to Make Special, were based on actual infringement. To obtain expedited treatment on that basis, an applicant must file a petition " accompanied by a statement by the applicant, assignee, or an attorney/agent registered to practice before the Office alleging," among other things, " [t]hat a rigid comparison of the alleged infringing device, product, or method with the claims of the application has been made, and that, in his or her opinion, some of the claims are unquestionably infringed." Manual of Patent Examining Procedure § 708.02, Section II (8th ed. rev. 2 2004) (" Manual" ). In 2005, Grossman filed such a statement for two of Encyclopaedia Britannica's applications. Tracking the Manual's language, Grossman stated:

Applicants' attorney is aware of at least one infringing product on the market that infringes one or more claims of this application. Applicants' attorney has made a rigid comparison of the alleged infringing device with the claims of the application. In the opinion of Applicants' attorney, some of the claims are unquestionably infringed. While Applicants have not conducted a recent search of the prior art in connection with this petition, Applicants have a good knowledge of the pertinent prior art based upon years of prosecution of the original parent application, its subsequent reexamination, and the follow-on continuation patent applications that are related to this patent application.

Ex. 33 to Def.'s Cross-Mot. for Partial Summ. J. [Docket Entry 57-13] (June 13, 2005) (" Ex. 33" ) (emphasis added); Ex. 36 to Def.'s Cross-Mot. for Partial Summ. J. [Docket Entry 57-13] (June 13, 2005) (" Ex. 36" ) (emphasis added). Britannica's litigation counsel, Baker Botts, was substantially involved in the decisions surrounding the Petition to Make Special, including providing Grossman with information he needed to form an opinion about infringement. Ultimately, however, Grossman himself signed the statement.

The PTO granted at least one of the two applications.[1] In its decision, the PTO explained that " [a] grantable petition ... must be accompanied by ... statements by an attorney/agent registered to practice before the Patent and Trademark Office" that, among other things, " in his or her opinion, some of the claims are unquestionably infringed." Ex. 34 to Def.'s Cross-Mot. for Partial Summ. J. [Docket Entry 57-13] (Aug. 23, 2005) (" Ex. 34" ). The decision then stated: " Applicant's submission meets all the criteria set out above. Accordingly, the Petition is GRANTED." Id.

After the patents issued, Britannica filed suit in the Western District of Texas seeking damages for their infringement. Britannica's patents claimed an earlier filing date based on a priority chain to a " parent" patent. Due to a technical problem in

Page 153

the priority chain— one application in the chain failed to reference an earlier application in the chain— that court held that Britannica's patents could not get the benefit of the earlier filing date. Because Britannica had published a substantially similar foreign patent application more than a year before the actual filing date, see 35 U.S.C. § 102(b), the court held the patents were invalid. See Encyclopaedia Britannica, Inc. v. Alpine Elecs. of Am., Inc., 643 F.Supp.2d 874, 876 (W.D.Tex.2009), aff'd, 609 F.3d 1345 (Fed.Cir.2010).

After the Western District of Texas court's ruling, Britannica filed this suit against Dickstein alleging malpractice and breach of fiduciary duty. This Court dismissed the fiduciary duty claim. See Encyclopaedia Britannica, Inc., No. 10-454 [Docket Entry 36]. To prevail on its legal malpractice claim, Britannica must show that Dickstein was negligent and that the negligence caused its injury. Britannica now argues that Dickstein should be judicially estopped from denying that the invalid patents were infringed (a key component of proving that the alleged malpractice caused Britannica's injury) based on Grossman's statements to the PTO. At Britannica's suggestion, the Court allowed discovery limited to this issue and set a briefing schedule for a partial motion for summary judgment as to whether Britannica is entitled to invoke judicial estoppel. See May 30, 2012 Scheduling Order [Docket Entry 46]. That motion and cross-motion are now before the Court.

STANDARD OF REVIEW

Summary judgment is appropriate when the pleadings and the evidence demonstrate that " there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(a). The party seeking summary judgment bears the initial responsibility of demonstrating the absence of a genuine dispute of material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). The moving party may successfully support its motion by identifying those portions of " the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations (including those made for purposes of motion only), admissions, interrogatory answers, or other materials," which it believes demonstrate the absence of a genuine issue of material fact. Fed.R.Civ.P. 56(c)(1); see also Celotex, 477 U.S. at 323, 106 S.Ct. 2548.

In determining whether there exists a genuine dispute of material fact sufficient to preclude summary judgment, the court must regard the non-movant's statements as true and accept all evidence and make all inferences in the non-movant's favor. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). A non-moving party, however, must establish more than the " mere existence of a scintilla of evidence" in support of its position. Id. at 252, 106 S.Ct. 2505. Moreover, " [i]f the evidence is merely colorable, or is not significantly probative, summary judgment may be granted." Id. at 249-50, 106 S.Ct. 2505 (citations omitted). Summary judgment, then, is appropriate if the nonmovant fails to offer " evidence on which the jury could reasonably find for the [non-movant]." Id. at 252, 106 S.Ct. 2505.

ANALYSIS

I. Application of Judicial ...


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