Friday, September 11, 2015

"Devilishly Difficult" and "a Lot of Work" – IP Conflicts Contentions


Coming off a short break to attend the excellent ILTA conference (risk news on that shortly), we resume the investigation of all intriguing things risk. Today is another IP day. First off: "Finnegan Takes Swipes in High-Stakes Malpractice Fight" --
  • "The Massachusetts Supreme Judicial Court didn't sound eager Tuesday to rewrite the conflict-of-interest laws for patent prosecution. While that may be good news to the many law firms that joined amicus curiae briefs in Maling v. Finnegan Henderson, it might not be enough to get Finnegan Henderson Farabow Garrett & Dunner off the hook for malpractice in a case where it helped two competitors obtain patents on similar inventions."
  • "Several justices suggested that Finnegan may have breached the standard of care—at least as pleaded in former client Christopher Maling's complaint—by failing to turn up Masunaga Optical Manufacturing Co.'s patent application in a search for prior art. Finnegan says the application was confidential when it did its initial prior art search for Maling, but a couple of justices pointed out it became public a few months later."
  • "Maling's case has caught the legal industry's attention because it presents an early test of state ethics rules after the U.S. Supreme Court divested federal courts of jurisdiction over patent malpractice cases in 2013."
  • "From the court's perspective, reframing the dispute as one of competent prior art searches might have appeal, said intellectual property ethics expert John Steele. That's because drawing up new conflicts rules for prosecuting 'similar' patents would be 'devilishly difficult,' he said. But searching for prior art is no small undertaking, and there's no clear-cut duty to perform searches on an ongoing basis. Some law firms might do it for big institutional clients, in part to win new business, he said. But for one-off inventors on a limited budget, repeated searches are typically 'outside the scope of the assignment.'"
Next comes: "Quinn Emanuel DQ'd From Urban Compass IP Theft Suit" --
  • "Quinn Emanuel Urquhart & Sullivan LLP was disqualified Thursday from representing an ex-business partner of Urban Compass founder Robert Reffkin, who allegedly stole proprietary information, after a former lawyer on the Kirkland & Ellis LLP team representing Reffkin and the rental search business jumped to Quinn."
  • "At a hearing Thursday on the defense's motion, New York Supreme Court Justice Jeffrey K. Oing said Quinn’s offer to provide the court with monthly affidavits attesting that client confidences were being maintained would be 'a lot of work.'"
  • "'A client has an absolute right to have a lawyer of their choosing ... but the facts of this case compel me to go the other way' and grant the disqualification motion, the judge said. 'I can’t sit here and learn what he learned in terms of confidential information.'"
  • "In their bid to disqualify Quinn, the defendants said Myre worked directly on two Urban Compass matters, including the Dorfman suit, and interviewed Urban Compass executives to develop defense strategies. Myre left Kirkland & Ellis in January for Quinn, after preparing Urban Compass’ motion to dismiss an amended complaint, according to the defense. By April, Quinn Emanuel had been retained to work with other plaintiffs counsel on the case."
For additional background on this case, see an earlier story laying out the facts and history.

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