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Magistrate Judge Burke Declines to Disqualify Plaintiff’s Counsel in Patent Infringement Action

Magistrate Judge Burke denied a motion to disqualify Plaintiff’s counsel, who had previously represented the Defendant from 2008 to 2014 as trademark counsel. There was no dispute that the firm representing the Plaintiff had previously done substantial legal work for the Defendant through a handful of attorneys that had long represented the Defendant in trademark matters both before joining that firm and after leaving it. Regalo Int’l, LLC v. Munchkin, Inc., C.A. No. 15-1103-LPS-CJB, Memo. Or. at 1-6 (D. Del. Sept. 29, 2016).

Given these facts, the Court’s analysis focused only on whether this case was “substantially related” to the prior matters in which Plaintiff’s counsel had represented the Defendant. Although the two representations in question were a patent litigation and trademark counseling and did not involve overlap in the products at issue, the Defendant contended that the firm had high-level strategic knowledge of the Defendant based on handling hundreds of matters for the Defendant in the past. Judge Burke found, however, that this did not establish that “(1) the prior and current representations are sufficiently related for purposes of this inquiry, nor that (2) [the Defendant] has met its burden to demonstrate that any [of its] confidences previously disclosed . . . Are sufficiently ‘relevant’ to the present action or sufficiently ‘detrimental’ . . . in this case.” Id. at 12. Indeed, Judge Burke explained that the Court tends “not to give great weight in this analysis to unfocused concerns that a party’s former counsel knows that party’s ‘playbook.’ Instead, in the main, they tend to require a party who is moving to disqualify counsel in a patent matter to demonstrate a fairly close legal and factual nexus between the present and prior representations.” Id.

Regalo Int’l, LLC v. Munchkin, Inc., C.A. No. 15-1103-LPS-CJB (D. Del. Sept. 29, 2016).

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