United States: Federal Circuit Judge Bryson Denies Motion To Disqualify Plaintiff's Counsel

Providing a rare glimpse into a Federal Circuit judge's views on the rules of professional conduct governing conflicts of interest, on February 26, 2016, Federal Circuit Judge William Bryson, sitting as a trial judge, denied a motion to disqualify the law firm of Fish & Richardson, P.C. Erfindergemeinschaft Uropep GbR v. Eli Lilly & Co., No. 2:15-CV-1202 (E.D. Tex. Feb. 26, 2016). Fish represented the co-defendant in the present case, Brookshire Brothers, Inc., in a previous patent infringement suit, GeoTag, Inc. v. The Western Union Co., No. 2:10-CV-574 (E.D. Tex. 2010). Brookshire moved to disqualify Fish because it now represents Uropep against Brookshire.

Judge Bryson decided first whether Brookshire was Fish's former, not current, client at all relevant times. When Brookshire hired Fish for the GeoTag case, Brookshire and Fish entered into an engagement agreement providing that Brookshire was retaining Fish for only the GeoTag case and that any other matter would require another agreement. The engagement agreement contained also a broad waiver by Brookshire of future conflicts, extending to Fish's representation of parties against Brookshire in subsequent matters that were not the same as the GeoTag case. The GeoTag case against Brookshire settled on November 20, 2013, and Fish provided no further services to Brookshire except responding to a question about the settlement agreement in June 2014. 

Uropep first contacted Fish in the fall of 2014, and retained the firm in March 2015. In May 2015, Fish initiated and completed a conflict check on Brookshire as a potential defendant in the present suit, filed in July 2015, and on May 19, 2015, Fish sent Brookshire a letter observing that "we . . . have not had an attorney client relationship with you in over a year. . . . [W]e think that it would be best to formalize the end of our attorney/client relationship . . . ."

Judge Bryson found that Brookshire was a former client of Fish at all relevant times. He noted that an attorney-client relationship depends on a contract between lawyer and client and that the relationship generally terminates when the purpose of the employment is completed. He reasoned that the engagement letter stated that Brookshire retained Fish for only the GeoTag case, that Fish performed no work for Brookshire after June 2014, that Uropep did not become a Fish client until March 2015, and that Fish did not begin to explore whether it could be adverse to Brookshire until May 2015. Applying Texas and ABA Rules of Professional Conduct, Judge Bryson therefore proceeded to consider whether Fish violated its duties to its former client by representing an adverse party in a substantially related matter or by receiving confidential information in the prior representation that it reasonably likely would use against Brookshire in the present case.

Judge Bryson found that the GeoTag case and the present case are not substantially related. Brookshire argued that the GeoTag case and the present case both involved "the same delivery of pharmacy services." Judge Bryson rejected that argument because the GeoTag case concerned a patent relating to locating Brookshire's pharmacies through a web page while the present case concerned allegations that Brookshire infringed a patent by dispensing the drug Cialis. Although both cases asserted patent infringement, Judge Bryson relied on the commentary in the ABA Model Rules that disqualification requires more than that two cases involve the same type of legal problem.

Judge Bryson considered next whether Fish received confidential information from Brookshire in the GeoTag case that might be used against Brookshire in the present case, and rejected Brookshire's arguments that it did. Judge Bryson found that in the previous litigation, Brookshire did not provide Fish with any confidential financial or technical documents. Judge Bryson rejected also Brookshire's allegation that it orally disclosed confidential financial information to Fish for failure of proof. Moreover, Judge Bryson reasoned that any such confidential financial information at the time of the previous litigation would be obsolete by the time of the present litigation and therefore would not require disqualification even if disclosed to Fish. Similarly, Judge Bryson found that Brookshire had not disclosed to Fish its document retention policies and even if it had, "that kind of information would be readily discoverable."

Judge Bryson next considered Brookshire's assertion that Fish's notice of termination of the attorney-client relationship in May 2015 was improper. Because the May 2015 letter stated that it was formalizing the end of the attorney-client relationship, Brookshire argued that there was an attorney-client relationship until that time. Although Judge Bryson acknowledged that the letter could cause confusion, he found that it simply memorialized that the relationship had already terminated at an earlier time.

Finally, in response to Brookshire's challenging the validity of the prospective conflict waiver in the engagement letter, Judge Bryson acknowledged that "[s]uch sweeping advance conflict waivers are of dubious validity, at least where the precise nature of the prospective conflict is not spelled out with scrupulous care." But Judge Bryson found that disqualification was not required regardless of the validity of the advance waiver provision in the engagement agreement.

To summarize, the engagement letter played an important role by providing that Brookshire retained Fish for only the GeoTag case and that representation with respect to another matter would require an additional written agreement. The termination letter, however, would better have clearly said that the attorney-client relationship expired when Fish's services for Brookshire in the GeoTag case ended. Finally, relying on only a broad advance waiver provision might not avoid disqualification.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

In association with
Related Topics
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions