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Judge Andrews denies plaintiff’s motion to disqualify defendant’s counsel based on earlier prosecution work for plaintiff.

Judge Richard G. Andrews recently denied a plaintiff’s motion to disqualify one of a defendant’s attorneys and his firm. Walker Digital, LLC v. Axis Communications AB, et al., C.A. No. 11-558-RGA (D. Del. Nov. 21, 2012).
The Court concluded that the current patent infringement suit was not substantially related to the “junior prosecution work,” id. at 6, the attorney had done for the plaintiff while working for a different law firm. Id. at 7. While the Court recognized that the plaintiff’s “general patent prosecution or claim drafting strategies” may have been disclosed in the prior representation, it concluded that, even if the attorney had been privy to these “general confidences,” they were not relevant to the present action, which involved “different patents and a different subject matter.” Id. at 6. Additionally, the Court noted that the scope of the patents in suit would not be determined by the plaintiff’s “subjective intent or business strategy.” Id. And “it [was] not apparent at all how confidential knowledge of [the plaintiff’s] strategies and plans fifteen years ago could be relevant to any issue in the case, or harmful to [the plaintiff] in some other way.” Id. at 6.


Walker Digital, LLC v. Axis Communications AB, et al., C.A. No. 11-558-RGA (D. Del. Nov. 21, 2012).

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