Monday, November 2, 2015

Litigation Counsel Barred From Serving as Prosecution Counsel In Lieu of Disqualification

The court granted in part defendant's motion to disqualify plaintiff's counsel who served as both prosecution counsel and litigation counsel and barred counsel from resuming service as prosecution counsel for a year following the conclusion of the case. "[Plaintiff's] removal of [its counsel] as its patent prosecutor appears to resolve [defendant's] arguments that [counsel] should be disqualified as counsel in this case due to his access to [defendant's] trade secrets in this case. . . . [A]s [counsel] is no longer prosecuting patents for [plaintiff], barring him from viewing confidential information and trade secrets disclosed by [defendant] would not be appropriate. It is appropriate, however, to bar [plaintiff] or its successor from reinstating [counsel] – for a period of one year after the final resolution of this case, including appeals – as its patent prosecutor in patent applications that claim priority to the patent in suit here."

Agri-Labs Holdings LLC v. TapLogic, LLC, 1-15-cv-00026 (INND October 29, 2015, Order) (Collins, M.J.)

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