By David Hricik, Mercer Law School

In an order granting motions to disqualify — rather than analyzing with discretion a decision of a district court — the Federal Circuit disqualified Katten Muchin Rosenman LLP (“KM”) from representing parties in appeals styled Dr. Falk Pharma GMBH v. Salix Pharma. Int’l., Inc. and Salix Pharma., Inc. v. Mylan Pharma., Inc., available here.

The case involves a number of issues, some of which are obscured by discussion of agreements that, in large measure, turned out to not affect the court’s analysis.  To be clear, this post simplifies the case a lot, but I’ll mention a few weeds at the end.

The story begins in 2001, when a lawyer at KM began to represent Bausch & Lomb (“Bausch”) in trademark matters.  Those representations, apparently a series of off-and-on work (as is common) continued for years.  While it was disputed whether that work continued, at the time of the motion to disqualify, KM was representing Bausch in trademark litigation.  Plainly, the firm could not be adverse to Bausch.

Meanwhile, two lawyers at Alston & Bird (“A&B”) were representing Mylan in patent suits and an IPR.  A&B was plainly representing Mylan, and so could not be adverse to it. Those matters largely wrapped up and were, with one exception, fully briefed before the Federal Circuit.

Then, in May 2018, after all but one of the patent cases and IPR proceeding had been fully briefed before the Federal Circuit, the lawyers who were representing Mylan left A&B for KM.  They then entered appearances for KM in those appeals. (To be clear, some motion practice occurred in the district court before final judgment, but that was stayed and the motions dealt with by the Federal Circuit.)

Thus, as things stood, KM lawyers were representing Mylan in several patent appeals.  Bausch, KM’s client, was not a party to those appeals.

The motions to disqualify filed in the Federal Circuit were based upon the fact that Bausch was a corporate affiliate of parties who were adverse to Mylan in the appeals.  Thus, the motion asserted KM’s representation of Bausch precluded it from being adverse to Bausch’s afiliates in the Mylan matters.  Among the affiliates in the Mylan matters was Bausch’s ultimate parent, Valeant-CA.

So, after motions to intervene and other things, the question the Federal Circuit faced was whether KM could be adverse to a current client’s ultimate (but indirect) parent corporation and its other affiliates, also indirectly related.  Judge O’Malley held it could not.  She gave two rationales for holding that representing Bausch precluded KM from being adverse to the entities involved in the Mylan appeals.

First, the Outside Counsel Guidelines were part of an engagement letter relating to KM’s representation of Bausch that identified Valeant-CA as the client.  KM was representing Mylan against Valeant-CA.  Further, language in the engagement letter indicated that corporate affiliates were also the client, and some affiliates were adverse to Mylan, and so KM was adverse to them.  Thus, KM was adverse to a current client by operation of the OC Guidelines and engagement letter.

Second, Judge O’Malley assumed, arguendo, there was some ambiguity, and relied upon principles developed by the Second Circuit (the Mylan patent cases were in the Third and Fourth, and from the PTAB, but she reasoned those jurisdictions would follow the Second Circuit’s lead), which set out a multi-factor test to determine whether, if there is no agreement, affiliates of a client should be considered to be the client for conflicts purposes, which include: “(i) the degree of operational commonality between affiliated entities, and (ii) the extent to which one depends financially on the other.” Based upon those factors, and the affidavit from the movants showing the interrelationships, she held that by representing Bausch, KM was representing all of the various entities.

After concluding that KM was adverse to a current client, Judge O’Malley noted that there is a split on whether being adverse to a current client automatically requires disqualification or, instead, leads to equitable balancing.  She concluded that, even looking at the equities, disqualification was warranted.

Why does the case matter?

First, if client identity is not clear, a firm’s representation of an entity can result in inability to be adverse to all parts of a far-flung enterprise.  Further, leaving client identity unclear subjects the firm, and existing and future clients, to the multi-factor test, which hardly helps practical planning.

Second, Judge O’Malley in a footnote noted that Federal Circuit law does not apply to ethical issues. Here, she noted that the because the appeals were from New Jersey and Virginia, those regional circuit’s laws applied. The rules are not always the same. Further, although she noted one appeal was from an IPR from the PTAB, she stated — incorrectly — that the USPTO disciplinary rules apply.  But motions to disqualify in the USPTO are not governed by those rules.

Third, her comments about adversity should give pause to patent practitioners.  While obviously being across the “v.” on an appeal is adverse, she observed that “we look to the total context, and not whether a party is named in a lawsuit, to assess whether the adversity is sufficient to warrant disqualification.” (Internal quote marks and citation omitted).

Fourth, and finally, while here disqualification does not appear to have caused significant disruption — briefing in all but one of the cases was done, and co-counsel seems to have been involved — that is not always the case.  Disqualification can hurt clients, and severely.

So, be careful out there.