Thursday, June 6, 2013

Defense Counsel Disqualified Due to Prior Prosecution Work on Plaintiff’s Behalf

The court granted plaintiff's motion to disqualify defendants' counsel because defense counsel had been prosecution counsel for plaintiff for two patents, one of which was similar to the patent-in-suit and shared the same inventor. "[T]his is a classic case of side-switching: the successive representation of one client followed by another adverse to the first client’s interests. . . . [Plaintiff] argues that by questioning the propriety of [the inventor's] inventorship of the [patent-in-suit] during his deposition, the position [defense counsel] has taken on behalf of defendants in this case threatens the validity of all of [plaintiff's] patents. . . . While defendants further argue that the questions asked of [the inventor] are standard and asked of any named inventor of a patent asserted in litigation, this does not absolve [counsel] of its ongoing duty of loyalty to its former client. [Counsel] was apparently aware of this potential conflict when it agreed to represent defendants, as evidenced by their decision finally to close long-inactive [plaintiff] matters in the same month it appeared on defendants’ behalf in this case. Yet it failed to obtain a written conflict waiver from [plaintiff] . . . or even to establish an ethical wall preventing [its] attorneys representing defendants from accessing [plaintiff's] confidential information and from speaking to attorneys at the firm familiar with the [plaintiff's] representation."

Malico, Inc. v. Cooler Master USA Inc., et. al., 3-11-cv-04537 (CAND June 4, 2013, Order) (Seeborg, J.).

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