David Hricik Professor, Mercer Law School Of Counsel, Taylor, - - PowerPoint PPT Presentation
David Hricik Professor, Mercer Law School Of Counsel, Taylor, English, Duma LLP Why Conflicts Matter You have to be ethical. Rare for a patent prosecution conflict, alone, to cause malpractice claim, disqualification, or
David Hricik Professor, Mercer Law School Of Counsel, Taylor, English, Duma LLP
malpractice claim, disqualification, or grievance.
state court, or arbitration, unless there’s diversity
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developed in case law.
litigation, opinions, and then apply those lessons to prosecution.
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This Can be Outcome Determinative
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apply state disciplinary rules in malpractice, disqualification.
apply to patent prosecution because…
8.5(b): For conduct pending before a tribunal, its rules control, unless they say otherwise.
(b) In any exercise of the disciplinary authority of this jurisdiction, the Rules of Professional Conduct to be applied shall be as follows: (1) For conduct in connection with a matter pending before a court before which a lawyer has been admitted to practice (either generally or for purposes of that proceeding), the rules to be applied shall be the rules of the jurisdiction in which the court sits, unless the rules of the court provide otherwise, and (2) For any other conduct….
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NJ: If not before ”tribunal,” the rules where the conduct occurred unless “predominant effect of the conduct” was in another jurisdiction, then its rules apply. NY: If not before “court,” the rules where the lawyer principally practices, unless “predominant effect” is in another jurisdiction in which the lawyer is licensed, then its rules apply.
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NJ would apply USPTO Rules (USPTO is a “tribunal”), but NY rules would apply since USPTO is not a ”court.” And, where is “predominant effect” of patent prosecution? Takeaway: a good starting point is to recognize more than one set of rules could apply and that following the most stringent rules is a good starting point for the analysis.
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rules.
sometimes depending on the procedural issue in which the ethical issue arises.
differently.
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applying ABA Model Rules.
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usually state rules;
must apply “national standards” apply
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its rules, that should control/help.
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Two Forms
(a) Except as provided in paragraph (b)…, a practitioner shall not represent a client if the representation involves a concurrent conflict of interest. A concurrent conflict of interest exists if: (1) The representation of one client will be directly adverse to another client;
(2) There is a significant risk that the representation of one or more clients will be materially limited by the practitioner’s responsibilities to... [anybody].
Informed Consent
(b) [A] practitioner may represent a client if: (1) The practitioner reasonably believes that the practitioner will be able to provide competent and diligent representation to each affected client; (2) The representation is not prohibited by law; (3) The representation does not involve the assertion of a claim by one client against another client represented by the practitioner in the same litigation or other proceeding before a tribunal; and (4) Each affected client gives informed consent, confirmed in writing.
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pending claims for a different client.
who only represented the applicant would not have done so.
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even in an unrelated matter.
unrelated matter.
young lawyer, etc. -- no impact (generally) on analysis.
Appearing in suit, ITC, IPR to represent
to a client. “simultaneous representation in unrelated matters of clients whose interests are only economically adverse”
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indemnity claim against a client is adverse.
(delay in filing, bad faith, etc.)
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company sells a part to another one.
down?
client’s obligation to indemnify or its warranty?
Pepper Hamilton Complainant v. Device Makers ITC 337 proceeding Google Open Source Consortium gave Android OS to device makers Open Source Consortium
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No adversity even though lawyer was seeking to exclude phones using Android OS, costing Google money Google intervenes to DQ PH firm
Apple LG Chem sold batteries to Apple Celgard v. LG Chem Appeal to affirm preliminary injunction against LG Chem CAFC disqualified JD from appeal because it “asserted the position that an injunction on behalf of one client should limit the activities of another” and Jones Day’s representation would let Celgard use the injunction as leverage in business negotiations with Apple. Jones Day
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Apple intervenes on appeal to DQ JD firm
the phones being excluded?
the batteries?
time?
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MBP Firm
Owner of 1 modified plane, Evergreen v. Plane modifier, GATX
BoNY
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with differing results. See Milwaukee Elec. Tool Corp. v. HILTI, Inc., 2015 WL 1898393 (E.D. Wis. Apr. 27, 2015) (citing four of the cases) and SAS Institute (the fifth, discussed below)
can’t sue one, a client.
client?
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Court: not adverse to represent patentee despite knowing SAS would be sued later… (assembling the documents?) But court found fee agreement breached fiduciary duty: it entitled AG to 20% of ”all value received” from patent, even if AG not involved, stating AG’s work was “the foundation and framework” for later patent
the documents CFA: If Patentee A were to sue SAS, other firm would represent it.
The Authorities are Clear… But Too Clear?
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patent Client A owns, or whether that patent is invalid.
its products did not infringe Andrew's patents, attacked Andrew's patents, provided potential litigation arguments and provided a factual basis for a potential defense against future claims by Andrew of willful infringement.”
about another client’s patent.
infringing” patents obtained for former client.
a current client’s patent lawyer had obtained would be adverse.
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(1) Patents are sold regularly. Is there an obligation to check
(2) What about the initial cut/quick look ”opinions:” is that adverse? Where is the line?
Rumsfeld was Right
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Adversity risk rises the closer the technology:
application in an office action; and
product.
Pulling punches risk rises the closer the technology:
claims -- lawyer who represented only one client would contend it was entitled to subject matter.
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proceeding against Client B.
interference.
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clients.
would not have made same amendment.
in some states!
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narrow the claims? Pulling punches?
patentee? Did you “assemble the documents” to be used against it if it asserts that patent?
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references before responding.
was raised in Pennie & Edmund suit, but not resolved.
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who sell compatible products?
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client will tell a lawyer a confidence that’s material to another client’s application.
more likely one client could contend firm used its trade secret to benefit other client.
language from its then-unpublished application as “background” language for later client.
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application Client B’s application… and uses it to describe inventions claimed in Client B’s application!
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conflicts checks on them.
within a small group.
applied in an OA as primary reference for rejection.
actual conflict develops).
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technological fields and alert the firm if they see applications identifying [your firm] as prosecuting counsel….”
“valuable defensive measure.”
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David Hricik Professor, Mercer Law School Of Counsel, Taylor English Duma, LLP