Modern legal practice sweeps across a broad spectrum of domestic and international business. Before patents are litigated, they are often exchanged, like any other commodity, on the open market. To effectively pursue the acquisition and protection of intellectual property, businesses must engage counsel experienced in both deals and litigation. It is therefore inevitable that one law firm will find itself retained on aspects of each of these steps.
But what happens when a single firm ends up on opposite sides of the acquisition-litigation coin?
According to District of Delaware Judge Joseph J. Farnan Jr., if the two transactions are wholly unrelated, with no possibility of confidential revelation, a motion to disqualify is unfounded.
In the subject litigation, a law firm first represented the infringement plaintiff in its purchase of the IP rights in the accused product. The same firm then found itself representing the defendant in the infringement litigation. Although the potential for conflict is apparent from this arrangement, the Court noted that the differences in the two transactions make this an atypical case:
The present action concerns issues of infringement . . . . It does not implicate the underlying transaction . . . through which Rhthmol® was acquired nor does it involve any of the provisions, warranties or representations contained in the agreements governing the transaction. (Op. at 5)
This reality, coupled with a dearth of evidence that the firm acquired any confidential information about the accused product during the earlier deal, could not, as a matter of law, give rise to an actionable conflict of interest.