United States: Defense Attorney Frozen Out By Prior Representation

Last Updated: March 14 2014
Article by   Orrick

Can you be disqualified from representing a client in patent litigation because a former client was acquired by a company that, seven years later, asserts a patent you never saw against your current client?

On June 30, 2006, Tilia International, Inc., the maker of the FoodSaver®, late-night infomercial star¹ and "#1 vacuum sealing system," was acquired by Sunbeam Products Inc. and met its end as a corporate entity.  Also ceasing to exist: the nearly decade-long collaboration between Tilia and attorney Kenneth Wilson, who had represented Tilia as patent counsel during at least 1998-2004, and in other matters up until the merger.  Coincidentally, in June 2006 Sunbeam acquired U.S. Patent No. 7,003,928, "Appliance for Vacuum Sealing Food Containers."   Flash forward seven years to August 2013.  Sunbeam files suit against Oliso, Inc. for infringement of the '928 patent and Oliso retains Mr. Wilson... through summary judgment, at least.

On Tuesday, Judge Illston disqualified Mr. Wilson from representing Oliso in the Sunbeam litigation pursuant to California Rule of Professional Conduct 3-310(E).  CRPC 3-310(E) governs successive representation:

A member shall not, without the informed written consent of the client or former client, accept employment adverse to the client or former client where, by reason of the representation of the client or former client, the member has obtained confidential information material to the employment.

The rule prevents an attorney from later representing a party in a manner adverse to a former client, where there is a "substantial relationship" between the former and current representation.  HF Ahmanson & Co. v. Salomon Bros., Inc., 229 Cal. App. 3d 1445, 1452 (1991) (citation omitted).  If there is a "substantial relationship," the attorney is presumed to have access to the former client's confidential information and, upon opposing counsel's motion, is likely to find himself or herself out of a job.  Whether a "substantial relationship" exists depends upon "the practical consequences of the attorneys representation of the former client and [ ] whether confidential information material to the current dispute would normally have been imparted to the attorney by virtue of the nature of the former representation," Id., at   1454.

In Mr. Wilson's case, the "former client" is Sunbeam—when it acquired Tilia, it also acquired Tilia's attorney-client privilege.  But is it fair to hold Mr. Wilson accountable for having confidential information he never actually received, about a patent he was never involved with?  In the Ninth Circuit, precedent says "yes."  "The former client need not prove that the attorney is actually in receipt of confidential information; instead 'courts ask whether confidential information material to the current dispute would normally have been imparted to the attorney by virtue of the nature of the former representation.'"  Ahmanson, 229 Cal. App. 3d at 1454.  And, "In the patent context, courts within the Ninth Circuit do not require the patents at issue in the successive representations to be identical, or even essentially the same."

Although this result might seem harsh – the facts in this case actually illustrate the pros for such a holding, rather than the cons.  Wilson had represented Tilia in patent cases involving vacuum sealing technology for at least six years, and now sought to defend Oliso against Sunbeam in a similar matter.  Moreover, the prior art cited by Sunbeam's '928 patent included patents that Mr. Wilson was involved with while representing Tilia.  And, sealing the deal, so to speak, "[i]n Oliso's Motion for Summary Judgment in this matter, Mr. Wilson himself referenced one of the patents he was formerly responsible for defending as Tilia's attorney."  All of this—and, one has to speculate, especially the Motion for Summary Judgment—added up in the Court's eyes to Mr. Wilson's nearly decade-old representation of Tilia remaining timely— as if frozen with the freshness sealed in.

Nor is this case a particularly close call.  For example, in a case Judge Illston relied on, Openwave Sys., Inc. v. 724 Solutions (US) Inc. , No. C 09-3511 RS, 2010 WL 1687825 (N.D. Cal. Apr. 22, 2010), Judge Seeborg disqualified Fish & Richardson from representing the defendant when it had, several years prior, represented the plaintiff in opposing the issuance of an Australian patent whose U.S. counterpart formed the basis of an obviousness rejection to the patent-in-suit.  Fish argued that because its assignment was essentially to gather prior art and provide it to Australian counsel, they were not required to know anything about their then-client Openwave Systems, and had no confidential information.  Openwave, arguing for disqualification, submitted declarations detailing the confidential information that "likely" would have been discussed with Fish attorneys.  Because the test doesn't care what was actually discussed, instead focusing on what "normally" would have been imparted given the nature of the representation, what was "likely" discussed was sufficient to carry the day.  And, Judge Seeborg disqualified Fish despite the fact that Fish—albeit belatedly—erected an ethical wall between the attorneys in question.


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