Patent Law

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 Cir. 2008)(non-precedential order)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In a non-precedential order, the Federal Circuit agreed to disqualify the Wildman Harrold firm.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Following the only Virginia case on point (an unpublished opinion), the Federal Circuit disqualified the Wildman Firm — finding that Rule 1.9 establishes broad “standards of attorney loyalty” that go beyond client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.