Firm Disqualified from Representing Patentee in Malpractice Suit After Defending Deposition of Prosecuting Attorney

Touchcom v. Bereskin & Parr (Fed. Cir. 2008)(non-precedential order)

This is an attorney malpractice case. The Canadian firm Bereskin & Parr prepared and prosecuted Touchcom’s US patents relating to fuel pumps. Touchcom then sued Dresser, Inc, but lost when the district court granted summary judgment of invalidity under 35 USC 112 (indefiniteness). After that loss, Touchcom sued the B&P for malpractice in preparing and filing the patent application.

Wildman Harrold represented Touchcom in the original infringement action and also in the malpractice case. During the original litigation, Wildman Harrold had also defended the deposition of the B&P patent agent who had filed the case.  Based on that conflict, B&P asked that Wildman firm be disqualified from arguing the appeal, and the Federal Circuit agreed.

In a non-precedential order, the Federal Circuit agreed to disqualify the Wildman Harrold firm. Because the malpractice case arose in the Eastern District of Virginia, the court applied Virginia Professional Conduct Rule 1.9.  That rule prohibits (without consent) an attorney from being adverse to a former client in a matter substantially related to the prior representation.

“A lawyer who has formerly represented a client in a matter shall not thereafter represent another person in the same or a substantially related matter in which that person’s interests are materially adverse to the interests of the former client unless both the present and former client consent after consultation.” Rule 1.9.

Wildman agreed that it had represented the patent agent and that the matter was substantially related. However, Wildman argued that it could turn against its former client because the firm was representing both Touchcom and the B&P patent agent.  And, the nature of the litigation meant that the B&P patent agent had no expectation that Wildman would keep any secrets from Touchcom.

Following the only Virginia case on point (an unpublished opinion), the Federal Circuit disqualified the Wildman Firm — finding that Rule 1.9 establishes broad “standards of attorney loyalty” that go beyond client confidences.

Holding: The motion to disqualify is granted to the extent that attorneys from Wildman Harrold are disqualified from representing Touchcom in this case. Replacement counsel for Touchcom is directed to file an entry of appearance within 30 days of the date of filing of this order.

 

Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

23 thoughts on “Firm Disqualified from Representing Patentee in Malpractice Suit After Defending Deposition of Prosecuting Attorney

  1. Speaking of disgusting behavior, why do Mooney posts always have some kind of reference to toilets or doo doo?

  2. In looking through the Eastern district of Texas ruling, this doesn’t seem to be a case of simply “writing a bad application” this is a case of “forgetting to file ALL of the application”. Part of the source code for the program wasn’t filed with the application.

  3. UNRELATED QUESTION:

    I do IP for a tech transfer office. We have a technology that has garnered great interest in countries beyond our current patent protection. Any thoughts about how to license, if at all, in these areas? I was thinking some kind of know how license or the like. Any thoughts?

  4. “It seems like you’d have to argue first that the PTO was not just wrong in issuing an allowance, but that they were so wrong that it would be malpractice to rely on their determination that the claims satisfy 112.”

    It is in an interesting scenario to ponder. Let’s say you file an application and you get some really weak 102 rejections. You argue back and then O LUCKY DAY the Examiner pulls out his rubber stamp and sends you a Notice of Allowance. The client is thrilled. You pay the issue fee (no continuation necessary with the awesome claim set that was granted) and get back to drafting that application that’s been dogging you for the past three weeks. Eight years later, the patent is asserted and is quickly destroyed by the accused infringer who points out that the claims are invalid as overbroad. Now the patentee — your previously delighted client — files lawsuit against you for not filing a bunch of dependent claims that would have survived the infringer’s invalidity challenges.

    Yes, it’s truly disgusting behavior on the client’s part. But we’ll surely be seeing a lot more of this as the economy swirls down the hole at the bottom of the bolw.

  5. Missing a date, prosecutorial misconduct that would certainly be found out in litigation and would invalidate the patent, or just not claiming an obviously important novel feature would all seem more ripe for malpractice. But 112? It seems like you’d have to argue first that the PTO was not just wrong in issuing an allowance, but that they were so wrong that it would be malpractice to rely on their determination that the claims satisfy 112. Am I missing something?

  6. Sorry, off topic–but where else to discuss??
    Just wanted to gripe about a final Office Action recently mailed where the Examiner refused to consider scientific publications because the date of publication was omitted from the 1449 Form; all other identifiers were present and of course copies of the references were included with the 1449 and of course have the date of publication on their first pages. I can’t get around to seeing this as anything other than an extremely aggravating waste of time and money–points to the Examiner for finding a technicality to avoid doing work, though. Has anyone else had this happen? I would like to officially complain.

    On the other hand, my day was brightened today by receiving (from a different Examiner, of course) an actual Advisory Action that responded to our previously filed response. I was very pleasantly surprised to see that at least one Examiner still does this–thanks. Unfortunately, I also appreciate that this person is not gaming the system as efficiently as their colleague mentioned above, which again points out the negative effects of the current PTO incentive system. Please, PTO, heal thyself.

  7. Establishing a solid means-plus-function claim foundation, the specification should explicitly point out the corresponding element (device) to function the same manner as the claim describes. If the drafter purposely or tries to mislead the examiner (any future reader), the gap between the M plus F clause causes confusing and eventually may end up indefinite.

  8. I think you’re right, Humorless Democrat. Missing a date is such a clear case of attorney error. It’s a compelling malpractice case where you can show the value lost due to the loss of patent rights. Whether a patent is bad enough to amount to malpractice is a much more complex inquiry.

  9. Early in my career, a veteran practitioner told me that “No one’s ever going to sue you for writing a bad patent.” Does anyone have statistics for patent malpractice suits based on bad patents versus missing a date? I would guess there a many more of the latter than the former.

  10. His comment is directed to the hallucinations and voices in his head…

    I would strongly advise against taking anything Mooney says seriously (sheeesh, no wonder the left coast is so woefully out of touch – they base their practice on blog posts)

  11. Malcolm,

    “They are all going to be discontinued eventually anyway”

    Is your comment limited to software 112p6 claims, or do you mean 112p6 claims from other art fields (e.g., electro-mechanical)?

  12. You play with 112P6, you play with fire.

    Reason #43,323 to avoid means-plus-fxn claims. They are all going to be discontinued eventually anyway, so why waste time with them now?

  13. Interesting case. In my experience, plaintiff’s lawyers almost always assist in document production and defend depositions of prosecution counsel. So this would mean that any subsequent malpractice cases would need to be pursued by other counsel.

    I do wonder if this establishes an attorney-client relationship automatically, or if that was just inferred from the admission of the folks at WH.

  14. Relationship between paragraph 2 and paragraph 6 from In re Dossel:

    “If a specification in which a claim setting forth a means-plus-function limitation appears to fail to set forth any corresponding structure sufficient to determine equivalency, the claim may be rejected for indefiniteness under Section 112’s second paragraph. . . .”

  15. Fiber,

    The lower court does state in the first and last paragraphs of its opinion that the patent was invalid because of indefiniteness (suggesting paragraph 2). The analysis conducted in the opinion which resulted with a determination of invalidity, however, was paragraph 6.

  16. “Is it indefinite or are we talking about paragraph 6?”

    A means-plus-function claim under 112p6 is indefinite under 112p2 if there is no corresponding structure in the specification that performs the function of the means-plus-function element.

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