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Defense Attorneys Disqualified for Hiring Plaintiffs’ Trial Technician from a Previous Case Involving the Same Patents

Plaintiff Tyco Healthcare Group and United States Surgical Corporation moved to disqualify defendant Ethicon Endo-Surgery’s attorneys of record (the law firm of Akin Gump). Tyco based the motion to disqualify on the ground that Akin Gump had improper access to privileged and confidential information of Tyco because Akin Gump hired and used a trial presentation technology consultant who had worked on a related trial involving the same patents four years earlier.

In the previous related case, Tyco’s counsel hired TrialGraphix to assist Tyco’s counsel with presenting witnesses and exhibits in a December 2007 bench trial. As a result, a trial technician provided by TrialGraphix worked directly with Tyco and Tyco’s attorneys. During and in preparation for the bench trial, the trial technician worked closely with the Tyco trial team and received confidential and privileged information.

At the bench trial in 2007, Tyco lost when it became clear that that it was not the patent owner. This subsequent action was then filed to correct the patent ownership issue.

In April 2011, the trial technician left TrialGraphix and went to work for Akin Gump as a trial presentation specialist. In August 2011, Akin Gump assigned him to work as a trial technician on the subsequent action. Three weeks before the start of trial, Akin Gump notified Tyco’s counsel that their former trial technician would be assisting Akin Gump’s trial team. Tyco promptly filed a motion to disqualify and was also permitted to take the deposition of the trial technician and obtain e-mails from the trial technician and Akin Gump’s attorneys.

After reviewing the law of disqualification in the Second Circuit and noting that disqualification is “disfavored” and only warranted in “rare circumstances,” the district court analyzed the facts. It first noted that this case involved a non-lawyer (treated as a lawyer in determining issues of disqualification) exposed to attorney confidences and trial strategies. It is a case of “one side switching sides” and that the situation “here is analogous to that of a contract attorney, brought in to work on a specific aspect of trial, and switching sides during the pendency of the litigation.”

The district court also noted that there must be a “substantial relationship” between the subject matter of the prior representation and the issues involved in the current action. The district court found that this requirement was satisfied because “the trial at issue is not merely substantially related, but is in fact a continuation four years later, with updating, of the same claims.”

The district court next examined the likelihood of access to relevant privileged information. Finding that the “Defendant does not dispute that Plaintiff had access to relevant privileged information and for the purposes of this motion does not dispute the applicability” of the presumption that this element is met, the district court turned to whether “Defendant has rebutted the presumption of shared confidences that are imputed to members of a firm.” The district court found that the affidavits submitted by the Defendants did not rebut this presumption because they were self-serving. The district court also examined whether there was a sufficient risk of trial taint and concluded that there was, finding that the trial technician himself appeared uncomfortable at being staffed on the same matter on the opposite side. “In spite of this Akin incomprehensibly insisted on staffing him on their trial team and delayed disclosure to opposing counsel.”

The district court also balanced the prejudice to the parties and concluded that an order of disqualification was appropriate to avoid the taint to the trial proceedings. To alleviate some pressure to the defendant from losing its entire trial team after several years of work, the district court disqualified only those individuals who had worked with the trial technician and not the entire firm. “Taking guidance from the medical devices at issue in this case, the Court finds that a minimally invasive surgical approach is appropriate to reduce Plaintiffs’ pain at the prospect of disclosure of its trial strategies and tactics, lower the risk of Ethicon’s hemorrhaging from total loss of its seven-year litigation relationship with the trial partners, and lessen the recovery time for the established trial schedule. . . . Specifically, all members of the Ethicon trial team that worked directly with [the trial technician] . . . and the damages expert team are disqualified from any further work on this case and from any contact regarding this case with the Akin Gump trial partners . . . or any other attorneys working on their trial team.

Tyco Healthcare Group LP and United States Surgical Corp. v. Ethicon Endo-Surgery, Inc., Case No. 3:10cv60 (JBA) (D. Conn. Dec. 30, 2011)
The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or