Uniloc Usa, Inc. v. Microsoft Corp.

• Decision Date: 14 June 2007
• Docket Number: C.A. No. 03-440 S.
• Citation: 492 F.Supp.2d 47
• Parties: UNILOC USA, INC. and Uniloc Singapore Private Limited, Plaintiffs, v. MICROSOFT CORPORATION, Defendant.
• Court: U.S. District Court — District of Rhode Island

492 F.Supp.2d 47

UNILOC USA, INC. and Uniloc Singapore Private Limited, Plaintiffs, v. MICROSOFT CORPORATION, Defendant.

C.A. No. 03-440 S.

United States District Court, D. Rhode Island.

June 14, 2007.

Andria Coletta, Francis A. Connor, III, Sheri L. Pizzi, Taylor, Duane, Barton & Gilman LLP, Providence, RI, Dean G. Bostock, Paul J. Cronin, Paul J. Hayes, Mintz, Levin, Cohn, Ferris, Glovsky & Popeo, PC, Boston, MA, for Plaintiffs.

Frank E. Scherkenbach, Kurt L. Glitzenstein, Laura R. Braden, Fish & Richardson, P.C., Boston, MA, Isabella E. Fu, Microsoft Corporation, Redmond, WA, Joseph V. Cavanagh, Jr., Blish & Cavanagh, LLP, Providence, RI, for Defendant.

MEMORANDUM OF DECISION

SMITH, District Judge.

I have before me a motion to recuse four years into this complicated patent case. The reluctant movants, Uniloc USA, Inc. and Uniloc Singapore Private Ltd. (collectively, "Uniloc"), argue that my association with a supposedly conflicted judicial intern creates the appearance of partiality, and compels my disqualification under 28 U.S.C. § 455(a). Microsoft Corp. ("Microsoft") opposes the motion. Because I find that the intern in question has no conflict of interest, and because I do not believe that my impartiality might reasonably be questioned, Uniloc's motion is denied. My reasoning follows.

I

Several months ago, I asked the parties to consider whether I should appoint a technical advisor in this case. See In re Peterson, 253 U.S. 300, 312-12, 40 S.Ct. 543, 64 L.Ed. 919 (1920) (observing that district courts have the inherent power to appoint advisors); Reilly v. United States, 863 F.2d 149, 154-161 (1st Cir.1988) (holding that district courts may appoint technical advisors when "faced with problems of unusual difficulty, sophistication, and complexity"), aff'g 682 F.Supp. 150, 152-53 (D.R.I.1988) (appointing a technical advisor in a case involving complex economic theories and demonstrably high stakes). There can be little doubt that the issues in this case are extremely complex: claim construction alone resulted in a sixty-one page opinion that construed twenty-four claim terms (an unusually high number of disputed terms). See generally Uniloc USA, Inc. v. Microsoft Corp., 447 F.Supp.2d 177 (D.R.I.2006). After hearing the parties' argument on summary judgment, I believed that the issues, while ably advanced by sophisticated counsel, might better be resolved with the technical assistance of an advisor skilled in the art. Consequently, I held a status conference in January 2007 for the purpose of discussing this idea with the parties. Uniloc vigorously objected, suggesting that the use of technical advisors was "disfavored" in the First Circuit and "fraught with the danger" of improper fact-finding. Of particular concern, Uniloc continued, was the delay associated with such an appointment. Microsoft expressed some concern over delay as well, but later concluded that "the technical complexity of this case, which is compounded by Uniloc's myriad infringement theories, fully warrants the assistance of a technical advisor."

I took the matter under advisement. Two months later, I received an unsolicited application for an unpaid summer internship from a second-year evening student at Fordham Law School, Guy Eddon, who, fortuitously, was just shy of finishing his Ph.D. in computer science at Brown University. His impressive resume indicated some past connections with Microsoft, and I questioned him extensively on this subject during an interview. The substance and extent of those connections are as follows. At the time of the interview, part of Mr. Eddon's graduate work at Brown was indirectly financed by a Microsoft research grant scheduled to expire by the end of the spring semester (before the summer internship would begin). As I understand it, Mr. Eddon's advisor received the grant from the University, which had, in turn, received it from Microsoft. Also, Mr. Eddon has, over the years, written for Microsoft Systems Journal (contributing editor between 1999 and 2002) and has co-authored four programming guides that were published by Microsoft Press (one each in 1997 and 1999 and two in 1998). I learned from a follow-up conversation with Mr. Eddon that he has received royalties from Microsoft for his programming guides, but, given their short shelf-life, last received a check for $3.97 on February 12, 2007; the check before that was for $8.67 on August 27, 2006. These amounts include royalty payments for all four programming guides.

Out of an abundance of caution, I notified the parties about Mr. Eddon by letter on March 20, 2007. Although I firmly believed that Mr. Eddon could ethically participate in the case, my letter informed them that I had the opportunity to hire an extremely well-qualified judicial intern, disclosed the information above (with the exception of the royalty information I learned of later), and asked whether they believed that these past involvements would present a conflict of interest. Microsoft responded in the negative. Uniloc, mistakenly believing that Mr. Eddon would serve as a technical advisor, objected on largely irrelevant grounds. Although Uniloc did not express any specific objections other than those related to its apparent misunderstanding, I viewed Uniloc's response as an objection based on a perceived conflict or bias.

On April 18, 2007, after careful consideration, I informed the parties by letter that the objection expressed by Uniloc was without any reasonably conceivable basis, and that it was appropriate for Mr. Eddon to work on the case as an unpaid judicial intern. I also invited the parties to file a motion for disqualification, with supporting authority, if there was any reason in light of this decision to question my impartiality in this case. Responding by telecopied letter, Uniloc said that it "does not believe that Your Honor should be recused from this case," but urged me not to let Mr. Eddon work on the case because of "his prior and possibly ongoing relationship with Microsoft." The letter included representations that Mr. Eddon's books "were offered at the not insignificant retail prices of between $39.99-$49.99," and speculation that he "undoubtedly" entered into publishing agreements with Microsoft and "likely" was remunerated "in money or other compensation." Also, Uniloc referenced the preface to one of the programming guides, which includes a generic acknowledgment of appreciation to an individual employed by Microsoft Press. The letter contained no authority whatsoever; only conjecture that "if the shoe were on the other foot, Uniloc has no doubt that Microsoft would be voicing a similar objection."

I scheduled a hearing to address Uniloc's concerns and to put the discussion, which up to that point had been conducted exclusively through correspondence, on the record. At the hearing, Uniloc continued to object based on its theory of "potential partiality" highlighted in its correspondence, but noted that it "did not see objecting to the potential partiality of the intern as reflecting in any way upon you." I explained that, based on my determination that no ethical rule prohibited Mr. Eddon from working on the case, Uniloc could either agree with my decision on the record or file a motion addressing its concerns. Uniloc thereafter filed the present motion.

II

Uniloc does not explore a single ethical rule or any other authority for its premise that Mr. Eddon himself is conflicted out of this case.¹ Instead, Uniloc lists Mr. Eddon's past connections to Microsoft as though a conflict of interest would obviously follow. I disagree. A most generous reading of the Code of Conduct for Judicial Employees ("Employees' Code")² reveals five possibly applicable provisions, three of which are quickly dispatched.³ Mr. Eddon owns no stock in Microsoft, see Employees' Code, Canon 3F(2)(a)(iii) and 3F(4), and has disavowed any personal bias or prejudice concerning either Uniloc or Microsoft. Employees' Code, Canon 3F(2)(a)(i). Also, he has never worked for Microsoft, and none of his publications involved or were in any way related to Microsoft's anti-piracy or product-activation technology that might have given him personal knowledge of disputed evidentiary facts in this case (nor does he have such knowledge from any other source). Id.

Not satisfied with Mr. Eddon's "subjective belief' that he will remain impartial, Uniloc references two instances in the prefatory language of the programming guides where Mr. Eddon expresses appreciation to several individuals employed by Microsoft Press in connection with the publication process. I construe this as an allegation of actual bias under Canon 3F(2)(a)(i) and promptly reject it. These statements are at least eight years old. At best, they are an example of the puffery commonly found in the published works of thoughtful authors. At worst, they are generic acknowledgments of a busy writer who does not wish to be rude. Either way, they are hardly evidence of the prejudice or bias required by Canon 3F(2)(a)(i). Cf. In re United States, 666 F.2d 690, 696 (1st Cir.1981) (finding that the survival of some residual gratitude from past associations would not "cause a judge to jettison his impartiality" or "violate his deepest professional and ethical commitments").⁴ On a related topic, the fact that Mr. Eddon, in a past web-based publication, described an outmoded version of Internet Explorer as "very cool" and as having "neat features" is poor evidence of bias. If I happen to think that a particular Microsoft product is "cool" or "neat" (or if I happen to prefer Microsoft Word over WordPerfect, for example),⁵ am I required to recuse? I think not. To do so would be ridiculous, just as it would be ridiculous for me to isolate Mr. Eddon from working on this case because of certain descriptive terms he used eleven years ago to describe a product that much of the world has seen, used, and appreciated.

Microsoft's...