United States: District Court Disqualifies Entire Firm Because An Attorney At The Firm Was The Named Inventor On The Asserted Patents

Last Updated: January 4 2012
Article by Andrew S. Dallmann

In Whitserve, LLC. v. GoDaddy.com, Inc., Case No. 3 11-CV-948 (JCH), Whitserve sued GoDaddy.com for patent infringement. In an interesting twist, the named inventor on Whitserve's patents was Wesley Whitmyer, who not only was the managing member of Whitserve, but was also a member of plaintiff Whitserve's law firm, St. Onge, Steward, Johnston, & Reens ("SSJR"). Not surprisingly, defendant GoDaddy.com moved to disqualify the SSJR firm pursuant to Connecticut's Local Rule 83.13, which provides:

'[a] lawyer shall not accept employment in contemplated or pending litigation if he or she or a lawyer in the same firm ought to be called as a witness,' unless the testimony will relate solely to an uncontested matter, the testimony will relate solely to a matter of formality, or the testimony will relate solely to the nature and value of the legal services performed on behalf of the client.

Order at 2, quoting L.R. 83.13(a). Case No. 3 11-CV-948 Ruling Re Defendant's Motion to Disqualify Counsel.pdf

In granting GoDaddy.com's motion to disqualify the SSJR firm the court stated that:

Wesley Whitmyer is the sole inventor of the patents at issue in this case, and he is a member of SSJR. It is undisputed that Whitmyer will be a key witness at trial for both parties. Similarly, it appears to be undisputed that Whitmyer's testimony will not be related solely to uncontested issues, matters of formality, or the value of legal services.

Order at 2. Given the language of Local Rule 83.13(a) the court disqualified not only Mr. Whitmyer but the entire SSJR firm.

In reaching this decision the district court distinguished the Second Circuit's decision in Bottaro v. Hatton Associates, 680 f.2d 895, 897 (2d Cir. 1982), which held that a "'lawyer-litigant-witness' is entitled to select a law partner as trial counsel." Order at 3. The district court distinguished Bottaro on the basis that although Whitmyer is one of three members and the managing member of Whitserve, he was not personally named as a plaintiff. Order at 3. "Consequently, Whitmyer does not fit the role of 'lawyer-litigant-witness' as contemplated by Bottaro because Whitmyer the witness is not a litigant." Order at 3. In reaching this conclusion the district court, like the Bottaro court, looked to the language of the ABA Model Code DR5-102(A), which sought to avoid jury confusion when an attorney had the dual roles of trial witness and lawyer.

Indeed, ABA Model Rule Code DR5-102(A) appears to suggest that when a lawyer is a "lawyer-litigant-witness" a jury would understand that the "lawyer [as witness] is distorting the truth for the sake of the client" however, in cases where the same lawyer is not the litigant, the jury would accept the testimony of the witness and not understand that the "lawyer-litigant-witness" is guilding the lily to benefit the plaintiff. Oddly, if this is the case, seemingly Whitserve could have avoided disqualification of SSJR merely by naming Whitmyer as a co-plaintiff.

The court also concluded that disqualifying the entire SSJR firm was appropriate because one of the partners of the firm, St. Onge, had been involved in the prosecution of Whitserve's patent and had "hired a full-time programmer to help design the system." Order at 4. Relying on In re Deutsche Bank Trust Co. Ams., 605 F.3d 1373, 1379 (Fed. Cir. 2010), because St. Onge would receive confidential GoDaddy.com discovery documents, as a prosecutor for Whitserve, the disqualification of the entire SSJR firm was justified. Interestingly, however, cases which permit such a prosecution bar typically limit the bar only to the prosecuting attorney and not to the entire firm. See Cheah IP LLC v. Plaxo, Inc., 2009 U.S. Dist. LEXIS 40823, at *8-*9 (N.D. Cal. May 4, 2009) (finding a prosecution bar necessary even though the attorneys to be barred were not currently engaged in patent prosecution for the party, but the "bar is narrow; it does not apply to the entire firm. It applies only to those attorneys who see the confidential technical information.")

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