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Law360 (March 6, 2020, 5:48 PM EST ) Citing the COVID-19 outbreak, a company tangled in a patent dispute over artificial Christmas trees is fighting an order to hold depositions in Hong Kong, saying it's unfair to make its attorneys "choose between risking [their] health" and proper representation.
Taiwan-based Willis Electric Co. Ltd., which is duking it out with Hong Kong rival Polygroup Trading Ltd. over each other's artificial Christmas tree patents, told a Minnesota federal court on Thursday that it shouldn't be forced to depose Polygroup's employees in Hong Kong.
In denying Willis' request to hold depositions in Minnesota, U.S. Magistrate Judge Katherine Menendez in February abused her discretion by failing to consider whether there are "peculiar" circumstances that favored one location over another, the company said.
"There are currently risks to staying in hotels in Hong Kong for long periods of time, as it has an open border with China and active community transmissions of a novel virus," Willis wrote. "It is unfair to ask counsel to choose between risking the health of herself and her staff and adequate representation of a client whose business is at risk."
Willis had expressed concern that the U.S. government could close the border to all foreign travelers to prevent the virus' spread, leaving its U.S.-based attorneys stuck in Hong Kong. But the magistrate had determined that because the U.S. reported a potentially greater number of infections as Hong Kong, it was not necessarily safer to travel to either place, according to the brief.
An attorney for Willis declined to comment Friday. Counsel for Polygroup did not immediately respond to a request for comment.
Willis and Polygroup, which bills itself as the world's largest maker of artificial Christmas trees, have been locked in a sprawling fight over each other's patents since at least 2015.
In its lawsuit, Willis claimed that Polygroup sold artificial prelit trees that infringed its patents, which purportedly make the trees easier to assemble, and that the rival ignored letters demanding that it cease infringement and obtain proper licensing.
The lawsuit was put on hold while the Patent Trial and Appeal Board reviewed the patents at issue. The board had upheld the validity of several Willis patents, but the Federal Circuit in early 2019 vacated and remanded those decisions back to the board.
The magistrate judge lifted the stay last March, according to court documents.
Polygroup also filed its own infringement lawsuit against Willis, though both sides agreed to drop that case last month after a series of patent challenges at the PTAB, filings show.
The patents-in-suit are U.S. Patent Nos. 8,454,186; 8,454,187; 8,936,379; 9,044,056; 9,066,617; and 8,974,072.
Willis is represented by Larina Alton, R. Christopher Sur, Terrance C. Newby, Thomas Pack and Ann E. Motl of Maslon LLP, and Douglas J. Christensen of Christensen Fonder Dardi & Herbert PLLC.
Polygroup is represented by Rachel C. Hughey, Thomas J. Leach and Paige Stradley of Merchant & Gould PC, and Robert A. Angle, Dabney J. Carr IV, Christopher J. Forstner, Laura Anne Kuykendall and Douglas D. Salyers of Troutman Sanders LLP.
The case is Willis Electric Co. Ltd. v. Polygroup Trading Ltd. et al., case number 0:15-cv-03443, in the U.S. District Court for the District of Minnesota.
--Editing by Adam LoBelia.
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