Andrew Corp v. Beverly Mfg., (N.D.Ill. 2006, 04–6214:146).
Andrew sued Beverly for willful infringement of Andrew’s cable-hanger patents. Beverly then brought forth three opinion letters written by its counsel in an attempt to avoid the willfulness charge.
The opinion letters provide, for instance that Beverly’s new product “does not fall within the claims of [Andrew’s] patent.”
As it turned out, Beverly’s law firm recently merged — and the merged firm represents both Andrew and Beverly.
On motion to disqualify the opinions, the firm responded that “lawyers who represented Andrew have never discussed any Beverly matter with the [lawyers] who represented Beverly and visa versa.”
District Judge Holderman, however, found a clear conflict:
[The firm’s] attorneys took positions directly adverse to its client Andrew in the [two] opinion letters on behalf of its other client Beverly, without obtaining informed consent from both Andrew and Beverly, in violation of Local Rule 83.51.7 and 83.51.10. These opinion letters advised Beverly that 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. [The firm] possessed sufficient information to have determined that its work for Beverly was adverse to its existing client Andrew, that it would affect its relationship with Andrew and that the [firm] as a whole was disqualified under the imputed conflict rule.
Remedy: Because of the conflict, the court determined that the opinions could not, as a matter of law, be competent. As such, all opinion letters from the firm were excluded from the case.