Activision TV, Inc. v. Pinnacle Bancorp, Inc.

Filing 38

AMENDED MEMORANDUM AND ORDER - Activision's Motion for a Preliminary Injunction 8 is granted to the extent set forth herein. The law firm of Farney Daniels and the attorneys in that law firm may file their application pro hac vice in this cas e. The law firm of Farney Daniels and the attorneys therein are free to represent their client Activision in this case and any other federal patent case directly or indirectly associated with this case and the Nebraska Attorney General's cease and desist order is not applicable to those cases. Ordered by Judge Joseph F. Bataillon. (MKR)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEBRASKA
ACTIVISION TV, INC.,
Plaintiff,

8:13CV215

vs.
PINNACLE BANCORP, INC., JON
BRUNING, DAVID COOKSON, DAVID
LOPEZ,

AMENDED MEMORANDUM AND
ORDER

Defendants.

This matter is before the Court on plaintiff Activision TV, Inc.’s (Activision) motion
for a preliminary injunction, Filing No. 8, against defendants Jon Bruning, David
Cookson and David Lopez.

The Court conducted a hearing on the preliminary

injunction on September 19, 2013.

Filing No. 30. Following the hearing, the Court

indicated that it would file two separate orders.

This first order addresses the issue of

whether the law firm of Farney Daniels1 could represent the plaintiff in this case without
running afoul of the Nebraska Attorney General’s cease and desist order (discussed
hereinafter). The second order will be issued at a later date and will address whether
this court has jurisdiction to determine the constitutionality of the cease and desist
order.
BACKGROUND
Activision, through counsel Farney Daniels, believed that certain companies were
violating its patents2 throughout the United States. Farney Daniels sent letters to these

1

Farney Daniels is a patent law firm that represents Activision nation-wide.

2

The patents in this case involve digital signage.

companies (five in Nebraska) asking for information to determine if in fact violations
occurred or were occurring.

See Filing No. 7, Exs. C1-C6x. From February to June

of 2013, the Nebraska Attorney General’s Office Consumer Mediation Center
received three complaints regarding patent license solicitation letters sent by
Farney Daniels PC (“Farney Daniels”) and/or an entity named BriPol LLC,
AccNum LLC, or IsaMai LLC, on behalf of an entity named MPHJ Technology
Investments, LLC. Filing 23-1 at ¶ 3. On July 12, 2013, Activision filed this lawsuit
against Pinnacle Bancorp, Inc., alleging patent infringement.

On July 18, 2013, the

Nebraska Attorney General filed a cease and desist letter against the law firm Farney
Daniels.

Filing No. 7, Ex. F. This cease and desist letter prohibited the law firm from

initiating new patent infringement enforcement efforts within the State of Nebraska. Id.
at 2. As a result of the cease and desist order, the law firm of Farney Daniels contends
it is unable to represent Activision in this and other federal court cases.
DISCUSSION
During the hearing, the Court questioned counsel for the Nebraska Attorney
General.

Counsel conceded that this court has complete and exclusive jurisdiction

over patent cases. He further conceded that the cease and desist order is not intended
to keep Farney Daniels from representing Activision in this case or a case in any other
jurisdiction.

He also agreed that counsel for Activision can pursue any of the

prospective infringers that have already been identified and can file suit against any
newly identified potential infringers. Counsel for the Nebraska Attorney General stated
that the cease and desist order only prohibits Farney Daniels law firm from sending out
letters to potential new infringers.
2

With these concessions, the Court will rule that Farney Daniels can file an
appearance in this case or any other federal cases without running the risk of violating
the State of Nebraska Attorney General’s cease and desist order.

Further, Farney

Daniels and its attorneys may proceed to prosecute their cases, including all discovery,
as it would in any other lawsuit.

THEREFORE, IT IS ORDERED THAT:
1. Activision’s motion for a preliminary injunction, Filing No. 8, is granted to the
extent set forth herein.
2. The law firm of Farney Daniels and the attorneys in that law firm may file their
application pro hac vice in this case.
4. The law firm of Farney Daniels and the attorneys therein are free to represent
their client Activision in this case and any other federal patent case directly or indirectly
associated with this case and the Nebraska Attorney General’s cease and desist order
is not applicable to those cases.

Dated this 26th day of September, 2013.
BY THE COURT:
s/ Joseph F. Bataillon
United States District Judge

3