Risk Update

Conflicts News — IP Disqualification Dodged, Importance of Family Tree “Planting Time”, California SLAPP Situation Simmering

Posted Dan Bressler

 

“Judge Won’t Bar IP Law Firm Fish in Semiconductor Patent Fight” —

  • “A Delaware district court judge has refused to disqualify Fish & Richardson PC from representing Volterra Semiconductor LLC in a patent lawsuit against rival semiconductor company Monolithic Power Systems Inc.”
  • “Judge Colm Connolly of the U.S. District Court for the District of Delaware said the infringement dispute wasn’t substantially similar to patent work that the intellectual property boutique firm had done for Monolithic.”
  • “The decision Wednesday illustrates how courts consider whether a firm’s work for a former client rises to the level of a conflict that creates issues in a future case.”
  • See: Full Decision

And the latest spotted by Bill Freivogel:

  • Corporate Family: Sempiturno in Motion, LLC v. Cajun 417, LLC, No. 20-681 (E.D. La. Aug. 25, 2020).
    • “The Bader family owns a number of bars and restaurants in New Orleans. In March 2019 the Baders formed the defendant Cajun. Cajun operates under the name ‘House of the Rising Sun.'”
    • “In this suit Plaintiff claims that ‘House of the Rising Sun’ infringes Plaintiff’s trademarks. Cajun moved to disqualify Plaintiff’s law firm (‘Law Firm’) because a member of Law Firm earlier had represented the Bader family and their companies on trademark matters. That representation ended in 2014.”
    • “In this opinion the court denied the motion. The court held that Lawyer never represented defendant Cajun because Cajun did not exist until 2019. Thus, Rule 1.9 did not apply, and the court did not need to get to the substantial relationship analysis.”
    • “The court’s analysis of the corporate family issue suggests that had Cajun existed while Lawyer represented the Bader family, and given the tight-knit nature of the Bader organization, the court might have disqualified Law Firm.”
  • Current Client: Bohm Wildish & Matsen, LLP v. Selfridge, No. G058327 (Cal. App. Unpub. Aug. 24, 2020).
    • “The Kenneth faction of the Sacher family (“Kenneth”) was fighting with the Fred faction of the family (“Fred”). Kenneth was represented by Lewis Brisbois. Fred was represented by James Bohm and the Bohm Wildish law firm.”
    • “In three related cases Kenneth and Lewis Brisbois were claiming that James Bohm exercised undue influence over Fred, and committed other ethical violations, in family trust matters.The problem was that Lewis Brisbois was representing the Bohm Wildish firm in an unrelated matter. Thus, Fred and James Bohm moved to disqualify Lewis Brisbois in the Sacher family cases. The trial court granted the motion, and the appellate court affirmed.”
    • “That brings us to this case: Bohm Wildish is suing Lewis Brisbois for breaching its duty of loyalty to Bohm Wildish by accusing Bohm Wildish of misconduct in the Sacher family cases. Lewis Brisbois moved to strike the complaint under California’s anti-SLAPP law. The trial court denied the motion. In this opinion the appellate court affirmed.”