UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
GATEWAY 2000, INC.,
DELL COMPUTER CORP.,
Case Number 97-2523 (JGP)
Case Number 97-2526 (JPG)
DECLARATION OF BRUCE A. LEHMAN IN SUPPORT OF HÅKAN LANS’ MOTION FOR RECONSIDERATION OF THE COURT’S SEPTEMBER 6, 2001 ORDER CONCERNING ATTONREY FEES
Bruce A. Lehman declares:
1. I am a member of the District of Columbia Bar and licensed to practice before this Court. I am President and CEO of the International Intellectual Property Institute (IIPI), a non-partisan, not-for-profit institution, based in Washington, D.C. that fosters the creation of modern intellectual property systems and the use of intellectual property rights as a mechanism for investment, technology transfer and the creation of wealth in developing countries of the world. I am a member of the Policy Advisory Commission to the Director General of the World Intellectual Property Organization (WIPO), a specialized United Nations agency headquartered in Geneva, Switzerland. I am President of the U.S. Committee for the WIPO and I have served or currently am serving as a member of several corporate Boards, including the Patent & Licensing Exchange, Inc. and Ford Technology Licensing, Inc., a wholly owned subsidiary of the Ford Motor Company.
2. From 1993 through 1998, I served as Assistant Secretary of Commerce and United States Commissioner of Patents and Trademarks. For my work as Assistant Secretary of Commerce and United States Commissioner of Patents and Trademarks, in 1994 the National Law Journal named me its “Lawyer of the Year”.
3. From 1983 until 1993, I was a partner in the Washington, D.C. law firm of Swidler & Berlin, where I represented individuals, companies, and trade associations in the areas of intellectual property rights. My clients were drawn from the motion picture, telecommunications, pharmaceutical, computer software and broadcasting industries.
4. From 1974 until 1983, I worked in the U.S. House of Representatives as Counsel to the Committee on the Judiciary and Chief Counsel to the Subcommittee on Courts, Civil Liberties, and the Administration of Justice, where I was the Committee’s principal legal adviser in the drafting of the 1976 Copyright Act, the 1980 Computer Software Amendments, and 1982 amendments to the Patent Laws.
5. I am a member of the following professional organizations: the American Bar Association; the American Intellectual Property Law Association, and Intellectual Property Owners, Inc. A list of my publications is attached.
6. I have previously testified as an expert witness in the case of Power Mosfet Technologies, L.L.C. v. Infineon Technologies Corp., Civil Action Nos. 2:99CV168-DF and 2:00CV208-DF in the United States District Court for the Eastern District of Texas.
7. I have been asked by Forrest A. Hainline III, counsel for Håkan Lans, to give my opinion concerning the standard of care of an attorney filing a patent infringement lawsuit, and whether, given the materials provided to me, Mr. Lans’ former attorneys, Louis S. Mastriani, Esq. and Adduci, Mastriani & Schaumberg, L.L.P. met that standard of care.
8. I am qualified by virtue of my knowledge, skill, experience, training and education to give the expert opinion testimony requested of me.
9. In order to develop my opinion in this case, I have reviewed the following materials that Mr. Hainline provided to me:
a. License Agreement dated October 19, 1989 between International Business Machines Corporation (“IBM”) and Uniboard Aktiebolag (“Uniboard”);
b. December 2, 1996 Notice of Infringement letter;
c. A letter dated February 19, 1997 from Mr. Lans to Mr. Mastriani, and related correspondence;
d. Letter dated April 9, 1997 from Tom M. Schaumberg, Esq. to Edward S. Gershuny, Esq. of IBM;
e. Letter dated April 18, 1997 from Mr. Schaumberg to Mr. Gershuny;
f. Sept. 6, 2001 Court Memorandum - Deciding attorney fees Hakan Lans v. Gateway 2000, Dell Computer, Acer America, Ast Research;
g. The opinions, Hakan Lans v. Digital Equipment Corporation (252 F. 3d 1320); Hakan Lans v. Gateway 2000, Inc. (84 F. Supp. 2d 112); Hakan Lans v. Gateway 2000, Inc. (110 F. Supp. 2d 1); Uniboard Aktiebolag v. Acer America Corp. (118 F. Supp. 2d 19);
h. Pages from the website of Mr. Mastriani’s lawfirm pertaining to the firm’s expertise in intellectual property.
I understand that copies of the evidentiary documents are being provided to the Court with Mr. Hainline’s declaration.
10. The standard of care for an attorney filing a patent lawsuit requires the attorney independently to investigate and determine that the suit is being brought in the name of the patent owner. The nature and extent of this investigation will vary depending upon the information the attorney has while preparing the litigation. In these cases, by January 1997, Mr. Mastriani and his firm had the IBM license agreement and were familiar with its provisions. Knowledge of the IBM license agreement standing alone would require an attorney to inquire as to basis for Uniboard’s right to license the Lans patent to IBM. Paragraph 6.1 made IBM’s payment to Uniboard contingent upon “receipt by IBM of satisfactory documentary evidence of UNIBOARD’s right to grant the said license and immunities.” If Mr. Lans could not provide the “satisfactory documentary evidence” to Mr. Mastriani and his lawfirm, then these attorneys had an obligation to contact IBM and obtain the document(s). For Mr. Mastriani and his firm to file patent litigation on behalf of Mr. Lans, knowing of the IBM license agreement and being familiar with its terms, without obtaining the documentary evidence of Uniboard’s right to grant the license to IBM, was below the standard of care.
11. In February, 1997, well before the lawsuits were filed on October 24, 1997, Mr. Lans had written Mr. Mastriani, “As you know the license has been signed with a company (UNIBOARD AB) and not with me as an individual (the patent has been transferred to the company for many years ago and the agreement with IBM was made with UNIBOARD AB). The company has the same address as my private address. In order to make this clear I have signed a paper for changing registration at the US Patent office. Dr. Berril Grennberg will send you this document.” The standard of care for an attorney professing familiarity with preparing, filing and prosecuting U.S. patent applications, when faced with confusion or ambiguity regarding ownership of a patent, would be to clarify the ownership issue by creating and filing appropriate documentation with the Patent and Trademark Office. In this case, because Mr. Lans owned 100% of Uniboard, it would have been a straightforward procedure to create and file an assignment of the Lans Patent rights either from Mr. Lans to Uniboard, or from Uniboard to Mr. Lans. An assignment from Uniboard to Mr. Lans made subject to the IBM License Agreement would have complied with ¶ 9.2 of that agreement. Given Mr. Mastriani’s knowledge of the confusion regarding ownership of the Lans patent, he and his firm acted beneath the standard of care in failing to prepare and file the necessary clarifying documents.
12. I have reviewed the website of Mr. Mastriani’s law firm pertaining to the firm’s expertise in intellectual property. That website states that the firm, “assist(s) clients with a wide range of intellectual property matters including…. preparing, filing and prosecuting U.S. Patent Applications.” In holding itself out to the public as being able to file and prosecute patent applications at the United States Patent and Trademark Office (USPTO) the Mastriani firm is representing that it has very specific professional qualifications not possessed by ordinary lawyers. Representation of patent applicants before the USPTO requires that an attorney representing an applicant be a patent agent registered with the USPTO. Such registration requires passing an examination and meeting other professional requirements set forth in USPTO rules. Patent agents who regularly practice before the USPTO are familiar with the patent statute and the Manual of Patent Examining Procedure (MPEP). The statute, at 35 U.S.C. 261, sets forth provisions for recording the assignment of a patent “or any interest therein…” at the USPTO. Chapter 300 of the MPEP elaborates on this statute and sets forth the procedures governing the recordation of assignments in considerable detail. The purpose of recordation of assignments is to prevent confusion over the ownership of rights in patent-related transactions and litigation. The letter dated February 19, 1997 from Mr. Lans to Mr. Mastriani clearly states that Mr. Lans not only believed that his patent had been assigned to Uniboard AB, but also that steps had been taken to record this assignment. Clearly, this letter should have put Mr. Mastriani on notice that the patent had been assigned. In holding out himself and is firm as experts in the procedures of the patent office Mr. Mastriani should particularly have known that he should have checked the assignment records at the USPTO to determine whether the “change of registration” referred to in Mr. Lans’ letter had taken place. If he had discovered that it had not occurred he should have so advised Mr. Lans and recommended that the assignment to Uniboard AB be recorded. Had this been done there would have been no question about the ownership of patent number 4,303,086 and arrangements would have been made to bring infringement actions in the name of the actual patent holder.
13. I am aware of the Clarification Contract dated October 27, 1989. I have not reviewed the original of the document and have no opinion as to its authenticity. The Clarification Contract strengthens my opinion that the IBM license agreement and Mr. Lans’ February 19, 1997 note created sufficient uncertainty regarding the ownership of the Lans Patent to require a competent attorney experienced in the field of patents to prepare and file with the United States Patent and Trademark Office documentation clarifying the ownership of the Lans Patent.
14. I have also been informed that Mr. Mastriani maintains that Mr. Lans instructed him not to file these lawsuits in the name of Uniboard. I have no knowledge of whether Mr. Lans so instructed Mr. Mastriani or even if that is Mr. Mastriani’s contention. However, if Mr. Lans did so instruct Mr. Mastriani, the standard of care required Mr. Mastriani and his law firm to inform Mr. Lans that under United States law, they could neither file the lawsuits in his name, nor Uniboard’s without first thoroughly investigating the matter and obtaining all documentation underlying the IBM license agreement, including by requesting such documentation from IBM. The standard of care in such a circumstance also required Mr. Mastriani and his lawfirm to prepare clarifying documents and file them with the Patent and Trademark Office.
15. I am not a trial attorney and have not had occasion to sign a pleading or other paper to a court. I am nevertheless familiar with Federal Rule of Civil Procedure 11 in that I have regularly worked with trial attorneys involved in litigation of patents and other intellectual property rights. Because Mr. Mastriani failed to meet the standard of care required of an attorney preparing litigation on behalf of a patent holder, in that he failed to obtain the documents referred to in the IBM License Agreement under which Uniboard professed to have the right to license the Lans Patent to IBM, Mr. Mastriani necessarily failed to conduct a reasonable investigation into the fundamental facts underlying the litigation.
16. If Mr. Mastriani had performed his duties within the standard of care, and had (a) investigated the basis for Uniboard’s assignment to IBM, or (b) had prepared documentation clarifying ownership of the Lans Patent and filed it with the Trademark and Patent Office, the cases would have proceeded on their merits and none of the grounds found by the Court to justify its exceptional case finding would exist.
I declare under penalty of perjury under the laws of the United States that the foregoing is true and correct.
Executed in Washington, DC on December ____, 2001
Bruce A. Lehman, Esq.
BRUCE A. LEHMAN
1. Boggs, Tim A. and Bruce Lehman. How Uncle Sam Covers the Mails. The Civil Liberties Review, May/June 1977.
2. Lehman, Bruce. Intellectual Property Under the Clinton Administration. The George Washington Journal of International Law and Economics, Volume 27, Numbers 2 & 3. 395 (1993-94)
3. Lehman, Bruce A. & Brown, Ronald H. Intellectual Property and the National Information Infrastructure: A Preliminary Draft of the Report of the Working Group in Intellectual Property Rights ~ Green Paper (1994)
4. Lehman. Bruce A. Intellectual Property and the National Information Infrastructure: The Report of the Working Group on Intellectual Property Rights (1995)
5. Lehman, Bruce. Intellectual Property and the National and Global Information Infrastructures. The Future of Copyright in a Digital Environment: Kluwer Law International, July 1995.
6. Lehman. Bruce A. Showeti, Ellen Harvey, & Amram, Fred M.B., From Indian Corn to Outer Space: Women Invent in America (1995)
7. Lehman, Bruce A. Intellectual Property: America’s Competitive Advantage in the 21st Century, Journal of World Business, Vol. 31, Issue I (Spring 1996)
8. Lehman, Bruce A., Symposium Issue, Intellectual Property and the FDA, Article: Major Biotechnology Issues for the U.S. Patent and Trademark Office, 33 Ca. W.L. Rev. 49 (Fall 1996)
9. Lehman, Bruce A. , Global Intellectual Property in the 21st Century, 7 Fordham I.P., Media & Ent. L. J. 9 (Fall 1996)
10. Lehman, Bruce. Symposium Issue, Intellectual Property and the FDA, Article: Major Biotechnology Issues for the U.S. Patent and Trademark Office, 33 Ca. W.L. Rev. 49 (Fall 1996)
11. Lehman, Bruce A. Should the Patent and Trademark Office be a Government Corporation: Pro & Con, Congressional Digest, Vol. 75, Issue 12 (December 1996)
12. Lehman. Bruce A. The Conference on Fair Use: Final Report to the Commissioner on the Conclusion of the Conference on Fair Use (September 1998)
13. Lehman, Bruce. The Changing Character, Use and Protection of Intellectual Property, GACC 4th Public Symposium, The Changing Character, Use and Protection of Intellectual Property, Washington, DC, December 3-4, 1998 (1999)
14. Lehman, Bruce. Symposium Issue, Beyond Napster: Debating the Future of Copyright on the Internet, Introductory Remarks, American University Law Review, Volume 50, Number 2 (November 16, 2000)