Litigators of the Week: Michael Williams and Harold Barza of Quinn Emanuel
In 2011, Michael Williams of Quinn Emanuel Urquhart & Sullivan was introduced to an entrepreneur, Kumar Ogale, who had a remarkable story to tell. Ogale said he'd commercialized a groundbreaking manufacturing process for a filtration material used in respirators. But, he claimed, 3M Company stole his work, patented his technology, and then sued Ogale for infringing it.
Williams spent the next three years battling 3M on behalf of Ogale's company, TransWeb. This week, he and fellow Quinn Emanuel partner Harold Barza vindicated Ogale's claims in a ruling worth more than $26 million.
U.S. District Judge Faith Hochberg in Newark, N.J., ruled on April 21 that 3M engaged in "inequitable conduct"—i.e., a fraud on the patent office—in the 1990s when it applied for two patents relating to air filter technology. Hochberg concluded that 3M employees hid from the U.S. Patent and Trademark Office that Ogale had created the technology at issue a year before they did and shared aspects of it with 3M at a trade fair.
Hochberg ordered 3M to pay $26.1 million to TransWeb, which is now owned by Clarcor Inc. A special master appointed by Hochberg arrived at that number by taking the amount of money TransWeb and Clarcor spent on Quinn Emanuel—roughly $10 million—and trebling the bulk of it. (Technically speaking, the damages arise not from the inequitable conduct, but from the related antitrust violation of trying to enforce an improperly procured patent, as we explained in more detail here.)
The ruling was a long time coming. In 2012, a jury heard the various patent and antitrust issues in the case and returned a verdict for TransWeb. In her decision this week, Hochberg affirmed the jury's verdict (which was partly advisory) and levied damages, rejecting 3M's claims that Quinn Emanuel's fees were excessive.
In 1996, Ogale developed a method of making filtration material used in industrial face mask respirators. He founded TransWeb the same year in hopes of commercializing his research. Ogale testified that he shared samples of his work with 3M employees at trade fair in 1997. A year later, 3M applied for patents on a manufacturing process similar to the one Ogale used to make his products.
3M then sued TransWeb in 2010, alleging infringement of the two patents. TransWeb countered that 3M employees secured the patents through inequitable conduct. When the 3M employees first applied for patents, they made no mention of Ogale's prior art, TransWeb claimed. When 3M finally mentioned Ogale's research to patent examiners, the company "misled the USPTO into believing that all of TransWeb's efforts had been conducted in secret, which 3M knew was false," TransWeb alleged in court filings.
Clarcor is a longtime Quinn Emanuel client, so when the company acquired TransWeb in 2011 it brought Williams onto the case. Williams sought Barza's help trying it to a jury, and at trial Barza cross-examined the 3M employee and in-house lawyer who procured the company's patents. Williams delivered TransWeb's closing argument.
Judging by Hochberg's ruling, Barza's cross-examinations couldn't have gone better. While on the stand, the inventor of 3M's patent was "flippant" and "arrogant," the judge wrote. "His demeanor was one of a witness trying to distance himself from any knowledge of TransWeb's presence and activities at the Expo," Hochberg added. (In an unusually diplomatic footnote, Hochberg also wrote that 3M's lawyers at Akinn Veltrop & Harkrider weren't to blame for the witness's self-destruction. They "did the best they could with a very difficult witness," she concluded.)
TransWeb argued that it should get back its attorneys fees, part of which should be trebled under antitrust laws. The company retained experts, including a former Paul Hastings partner and a head honcho at the litigation financier Burford Capital, to explain why Quinn Emanuel's rates of up to $970 an hour were reasonable for a New Jersey case. Hochberg awarded TransWeb most of the damages it had sought, writing that "TransWeb's choice of Quinn Emanuel, though not a New Jersey firm, was reasonable given that the survival of the company required successfully defending a patent case against a multinational corporation with extensive resources."
Williams declined to comment, explaining that he and Barza are limited in what they can say until the case is over. In any event, they don't really need to brag about this win. Hochberg's ruling does that for them.
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