Intellectual Property Law

Judge Sue L. Robinson: Disqualification of an attorney is never automatic.

By Karen E. Keller, Andrew A. Lundgren et al.

In Boston Scientific Corporation, et al. v. Johnson & Johnson, et al., C.A. No. 07-765-SLR (D. Del. August 25, 2009), Defendant Wyeth sought to disqualify the firm Howrey LLP from representing Plaintiffs due to Howrey?s current representation of Wyeth in another matter in the European patent office. The Court noted that Wyeth has divisions and subsidiaries all over the world with similar names. Id. at 2. While Howrey had represented Wyeth in several matters over the years it was not clear which entity was involved. The Court found that Howrey was currently representing Wyeth in a matter in the European patent office, thereby also finding that Howrey violated Model Rule 1.7(b) which prohibits representations involving a concurrent conflict of interest. Id. at 7. However, noting that in the Third Circuit, ?whether disqualification is appropriate depends on the facts of the case and is never automatic[?]? the Court decided that disqualification was not an appropriate remedy. Id. at 9. The relevant factors supporting this decision included the unrelatedness of the current matter and the European matter, the fact that Howrey?s Washington, D.C. office is representing plaintiffs here whereas Howrey?s Europe-based attorneys are handling the matter in Europe, and that an ethical wall was in place. Id. at 8-9. Moreover, the Court found that ?Howrey?s failure to comply with Model Rule 1.7 [was], to a significant degree, due to Wyeth?s conduct.? This conduct included Wyeth?s ?naming conventions, its use of the same in-house counsel on matters involving different subsidiaries without consistently identifying to Howrey which entity those in-house attorneys were representing, and the willingness of it and its subsidiaries to receive billing invoices for matters on which they were not directly engaged with Howrey.? Id. at 9.

Boston Scientific Corporation, et al. v. Johnson & Johnson, et al., C.A. No. 07-765-SLR (D. Del. Aug. 25, 2009)

Full post as published by Delaware IP Law Blog on September 04, 2009 (boomark / email).