SAN FRANCISCO – The U.S. District Court for the Northern District of California recently denied a motion to transfer a patent dispute between Simpson Strong-Tie Co. and OZ-Post International to Texas and also denied a motion to disqualify counsel for OZ-Post.
In the patent dispute between the two companies that make wood fastener products, OZ-Post International claims decorative hardware made by Simpson Strong-Tie violates the copyright of Oz-Post.
In his 30-page ruling filed Aug. 17 on the two motions in the case, U.S. District Judge William H. Orrick noted that since neither side disagreed that “this case was properly brought here but could also have been brought in the Eastern District of Texas,” it is up to Oz-Post to provide proof that transferring the case to another venue is appropriate.
Orrick rejected Oz-Post's argument that having the case transferred to the U.S. District Court for the Eastern District of Texas would be more convenient for the company as it has its headquarters and a warehouse in the Texas court's jurisdiction.
Orrick denied the motion to disqualify Oz-Post's counsel, Foley & Lardner LLP, ruling there was no conflict of interest for the law firm.
Orrick discussed the argument about a potential conflict of interest in the case regarding the attorney-client relationship between Simpson Strong-Tie and Foley & Lardner. The judge noted that the law firm is representing OZ-Post While in this case and also represented Simpson Strong-Tie’s parent company, Simpson Manufacturing, in the past with labor-related issues.
Orrick noted that Simpson Manufacturing and Foley had signed a waiver in which the law firm could work on cases representing clients that were against Simpson Manufacturing as long as that work did not conflict with issues that Foley was working on with Simpson Manufacturing. Also, the law firm agreed not to disclose Simpson Manufacturing’s confidential information.
Orrick wrote that he thought Simpson Strong-Tie was bringing up the conflict issue “for strategic reasons” and indicated that “there are several factors that suggest Simpson is not truly concerned with a potential breach of loyalty.” This includes the company knowing about the issue for over a year before bringing it up.