Visa, Black Card Spar Over Virus Safety In $600M IP Fight

By Andrew Karpan
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Law360 (October 19, 2020, 7:17 PM EDT) -- The credit card loyalty program Black Card has called on a federal judge to let its $600 million licensing contract dispute with Visa go before a Wyoming jury next month as planned, citing Judge Rodney Gilstrap's decision to hold a jury trial in Texas in July.

Black Card LLC focused on the five years it already spent litigating against Visa USA Inc. in a Sunday filing, urging U.S. District Judge Scott W. Skavdahl to reject the credit card behemoth's efforts to push the date for the 10-day jury trial to April 2021. Currently, the case is set to begin Nov. 9.

"Courts all over the country are balancing their critical public service function — including preserving public access and the jury trial as the cornerstone of the judicial process — with the need to reduce the risk of COVID-19 transmission," Black Card said.

Black Card pointed to U.S. District Judge Gilstrap's late July decision to reject Apple's efforts to, similarly, postpone an in-person jury trial in Texas over the tech giant's 4G LTE technology. In that case, the jury in August delivered a $506 million verdict to the patent holding company PanOptis, one of the biggest patent verdicts of the last 10 years.

After their win, attorneys for PanOptis had called the court's handling of the jury trial surprisingly normal, despite the face shields, plexiglass and temperature checks.

But last week, Visa told Judge Skavdahl that "COVID-19 cases, community spread, and hospitalizations in Wyoming are all increasing at an alarming rate."

On Oct. 9, a local newspaper had reported that the state had just set a single-day record of new coronavirus cases, Visa said. As of Sunday, the Wyoming Department of Health reports that 9,025 people have confirmed or probable cases of the novel coronavirus and 57 people have died.

Black Card, which runs the eponymous credit card loyalty program, had sued Visa after its partnership with the credit card giant fell apart in 2016 over a dispute regarding promoting the companies' co-branded "Visa Black Card."

After leaving Visa for rival Mastercard, Black Card alleged that an executive of a Visa subsidiary in China let slip that Visa planned to compete with Black Card in both the domestic and international markets. Black Card said that Visa had shared confidential information about Black Card with Visa corporate subsidiaries, violating the terms of the licensing agreement that it had signed with Visa.

Following a lengthy and successful effort to disqualify lawyers from Holland & Hart LLP from representing Visa, Black Card was handed a ruling in April 2017 that it couldn't hold Visa to the terms of a 2008 licensing agreement since it had already expired by the time Black Card left.

But last year, the Tenth Circuit ruled that an email from Visa that told Black Card to proceed with "business as usual" after that first contract ended had created an implied contract, over which Black Card could sue.

In early January, Judge Skavdahl scheduled a jury trial to begin in November, though Black Card admits that the state's federal courts have yet to conduct any civil trials so far.

Instead, the company points to naturalization ceremonies and "numerous jury trials in criminal cases" that have taken place utilizing social distancing, physical barriers and face coverings.

The loyalty program added that there's little reason to suspect that conducting a jury trial next April will be any safer than next month.

But in last week's motion, Visa had pinned delays in the case on Black Card.

"Visa appreciates that this case was filed in 2015. But Visa has not been the cause of any substantial delay. Forty-five months of that time was spent on a disqualification motion filed by plaintiff, an appeal filed by plaintiff, and plaintiff's substitution of experts which led to additional fact discovery," Visa said.

Michael McCue, a partner at Lewis Roca Rothgerber Christie LLP and part of the legal team representing Visa in the case, told Law360 on Monday that "the health and safety of Visa employees is our top priority."

"We have comprehensive safety measures in place, including restricted business travel, to help minimize the impact of COVID-19 on our teams and our ability to service our clients," McCue said.

Representatives for Black Card did not respond to a request for comment on Monday.

Black Card is represented by Mistee L. Elliott and Jeffery J. Oven of Crowley Fleck PLLP, Mark A. Hutchison, Cynthia G. Milanowski and Piers R. Tueller of Hutchison & Steffen PLLC, Jeffrey I. Shinder, Adam Owen Glist, Grant Petrosyan and James J. Kovacs of Constantine Cannon LLP.

Visa is represented by John A. Masterson of Welborn Sullivan Meck & Tooley PC and Michael J. McCue, Meng Zhong and Randy Papetti of Lewis Roca Rothgerber Christie LLP.

The case is Black Card LLC v. Visa USA Inc., case number 2:15-cv-00027, in the U.S. District Court for the District of Wyoming.

--Additional reporting by Tiffany Hu and Dani Kass. Editing by Emily Kokoll.

For a reprint of this article, please contact reprints@law360.com.

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Case Information

Case Title

Black Card LLC v. Visa USA Inc


Case Number

2:15-cv-00027

Court

Wyoming

Nature of Suit

Contract: Other

Judge

Scott W Skavdahl

Date Filed

February 18, 2015

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