ResQNet.com v. Lansa: Subpoena Quashed

InventBlog: In an infringement case involving software for remotly downloading information (screen recognition and terminal emulation), a SDNY court recently quashed the defendant's motion to depose the attorney who drafted and prosecuted the patent applications. In its decision, the court applied 2nd Circuit law disfavoring depositions of opposing counsel.

Lansa wanted to depose Mr. 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 Second Circuit, he said, disfavors depositions of opposing counsel because they risk disrupting the attorney-client relationship and impeding litigation.

Comment: If this decision holds, it may push more patent litigation to botique firms that both prosecute and litigate patents.