Following Plaintiff CIVIX-DDI’s (CIVIX) motion to disqualify Morrison & Foerster (MoFo) as Yahoo!’s litigation counsel, Yahoo! responded on October 8, 2009 by arguing that (i) CIVIX cannot satisfy the high legal standard to support disqualification, (ii) MoFo did not violate the protective order, (iii) MoFo’s filing of the status update and notice of concurrent proceedings were proper, and (iv) CIVIX did not explain how its confidential information was misused, or how its use prejudiced CIVIX.  (See Yahoo! Opposition here: Yahoo Opposition.)

Yahoo! also argued that CIVIX’s motion to disqualify is untimely, as CIVIX apparently filed its motion more than one year after Yahoo! filed the status update that, as CIVIX alleges, evidences MoFo’s violation of the court’s protective order.  Finally, Yahoo! contends that CIVIX’s motion to disqualify is designed for tactical purposes.

Notably, Yahoo! contends that CIVIX does not understand the “well-established purpose for prosecution bars in protective orders, viz., to prevent a patentee’s counsel from misusing its access to an opponent’s confidential information to craft claims covering its opponent’s products.”  Yahoo! further stated, “[i]t is difficult to fathom what information of CIVIX, a non-practicing entity, Defendants’ attorneys could use to CIVIX’s detriment during reexamination.”  The case is CIVIX-DDI, LLC v. National Association of Realtors, et al., case number 1:05-CV-06869, in the United States District Court for the Northern District of Illinois.