Tuesday, March 26, 2013

Risk News: Patents, Conflicts and Advanced Waivers

New updates of interest. Via Bill Frievogel comes:

Philadelphia Bar Association Ethics Opinion 2012-11 (issued Jan, 2013) -- "Co. A, a client of Law Firm, asks Law Firm to write an opinion letter to Co. B stating that Co. A's product does not infringe Co. B's patent. Co. B is a client of Law Firm on matters unrelated to the product. In this opinion the committee held that writing the opinion would be directly adverse to Co. B. The committee cited Va. Op. 1774 (2003) and Andrew Corp. v. Beverly Mfg. Co., 415 F. Supp. 2d 919 (N.D. Ill. 2006), the only authorities known to us on this subject."

Galderma Labs., L.P. v. Actavis Mid Atl. LLC, 2013 U.S. Dist. LEXIS 24171 (N.D. Tex. Feb. 21, 2013) -- "This is a patent infringement case. Law Firm represents Defendant. At the time this case was filed, Law Firm was doing employment work for Plaintiff. Plaintiff's in-house general counsel had signed an advanced waiver agreeing that Law Firm could take on unrelated matters adverse to Plaintiff. Plaintiff moved to disqualify Law Firm in this case. In this opinion the court denied the motion. The opinion is a comprehensive discussion of many of the authorities dealing with advance waivers. Most significantly, the court specifically disagreed with a contrary holding with very similar circumstances in Celgene Corp. v. KV Pharm. Co., 2008 U.S. Dist. LEXIS 58735 (D.N.J. July 29, 2008)."

Additionally, our friends at the Legal Ethics Forum hosted interesting discussion on the advance conflicts waivers piece we posted last week. See the complete thread for more detail --
  • John Steele: "...I've seen some of the OCGs get more and more expansive and have wondered when the case law and ethics opinions would start looking at how far they can go... I have an intuition that at some point the OCG restrictions are troubling from the point of view of creating other conflicts, reducing independence, and being agreements that the two parties don't really intend to live up to. I'd agree that the first line of resistance to any over reaching OCGs should be the law firms refusing to sign them."
  • Stephen Gillers: "Or the opposite. The OCG can make the demand because the firm wants the business, often because there's a lot of it. So the firm agrees. Who would decline to be outside GC for Apple if the condition was never to work for a competitor on anything so long as Apple was a client? Anyway, even if the OCG does not request the restriction but then firm begins to represent a competitor, the OCG can let it be known that the company is prepared to change counsel and the reason. The firm will quickly view the competitor's work as a business conflict, assuming it did not anticipate that at the outset."

No comments:

Post a Comment