Risk Update

IP Conflicts News — International Imputation Conflict Concern, Lateral Hire Leads to Rejected Ethical Wall + DQ Push in Patent Matter, IP Theft Prosecution Unpacked

Posted Dan Bressler

“Reebok Asks Court to Disqualify Hogan Lovells in Trademark Suit” —

  • “Hogan Lovells ignored the conflict of interest arising out of the firm’s prior seven-year relationship with Reebok, the company said in a memo on Friday. The firm worked on trademark matters, including the marks this suit hinges on, for Reebok in the EU between 2015 and 2022, according to the memo.”
  • “Reebok sued Autry International S.r.l for infringing multiple marks used on shoes in May 2023, in the US District Court for the District of Massachusetts. ‘Hogan Lovell’s representation of Autry violates its duties to Reebok as a former client and requires disqualification,’ Reebok said in a memo.”
  • “Reebok says that it doesn’t matter that Hogan Lovells worked on issues in Europe since the firm operates as one entity.”
  • “‘Hogan Lovells’ prior representations of Reebok in matters that are substantially related to the instant lawsuit create a conflict of interest that is imputable to the entire firm,’ the shoe company said in its memo.”

“Viasat asks judge to boot Gibson Dunn from patent case after lawyer hire” —

  • “Satellite communications company Viasat has asked a federal judge to disqualify Western Digital’s lead attorney and her new law firm in a Texas patent case between the companies, arguing that the firm is ethically conflicted because it already represents Viasat in related litigation.”
  • “In a court filing made public on Thursday, Viasat said the conflict arose when Western Digital’s lawyer Kieran Kieckhefer left her former law firm Shearman & Sterling to join Gibson, Dunn & Crutcher in a move announced on Monday.”
  • “Viasat said in its disqualification motion that it has been a Gibson Dunn client since 2017 and that the firm represents it in another legal dispute over the same technology.”
  • “‘Either alone is enough justification to disqualify Gibson Dunn,’ Viasat said. ‘Together, the conflict — and risks that Viasat information is improperly used against Viasat — is overwhelming.'”
  • “Viasat said Gibson Dunn represents it in a separate lawsuit against Acacia Communications over related error-correction technology. Viasat won a $49.3 million jury verdict in that case in 2019. It said in the Thursday filing that a California state court awarded it nearly $100 million more last month.”
  • “According to Viasat, Gibson Dunn received confidential information in the Acacia case that is relevant to the Western Digital case, and both cases relate to the value of Acacia’s patent license.”
  • “Viasat’s motion said Gibson Dunn rejected its proposal for an ‘ethical wall’ blocking lawyers with conflicts from the Acacia case.”

“Deloitte IP Theft Prosecutor Ousted Over US Atty Conflict” —

  • “A West Virginia federal judge recused the lead prosecutor in the case of two former Deloitte employees facing trade secret theft charges over their work for competitor Sagitec Solutions LLC, saying the prosecutor’s boss’ prior representation of Sagitec during an internal investigation of the allegations ‘creates a substantial conflict of interest.'”
  • “The order Monday from U.S. District Judge Irene C. Berger of the Southern District of West Virginia to recuse Andrew Cogar came at the request of David Gerald Minkkinen and Sivaraman Sambasivam, who were indicted on 13 counts in the district in August.”
  • “The Northern District of West Virginia began the investigation, but the U.S. Department of Justice recused the office because U.S. Attorney William Ihlenfeld, who was confirmed in October 2021, represented Sagitec while in private practice in 2019 and 2020. But Cogar, who works for the Northern District under Ihlenfeld, was allowed to continue working on the case under the supervision of the Southern District.”
  • “Minkkinen and Sambasivam argued Cogar’s involvement in the case ‘creates at least an appearance of impropriety and conflict,’ and Judge Berger agreed.”
  • “The indictment against Minkkinen and Sambasivam alleges they left Deloitte in 2013 to work for Sagitec as senior partners with the company’s unemployment insurance practice. Prosecutors say they and others conspired to convert Deloitte’s trade secrets from its proprietary unemployment system for Sagitec’s use.”
  • “While Ihlenfeld worked at Bowles Rice LLP, he was part of a team that produced an internal investigative report regarding the allegations against Sagitec before Minkkinen and Sambasivam were charged, and Sagitec provided that report to the government, Judge Berger said.”
  • “‘The report documents certain materials that the defendants and other employees used during their employment with Sagitec that may have originated with Deloitte. However, it concluded that the materials used did not constitute trade secrets and that no trade secrets were stolen from Deloitte,’ Judge Berger said.””Minkkinen and Sambasivam said Ihlenfeld’s role in authoring the report and interviewing them means he is likely to be called as a trial witness. That will put Cogar in a difficult position, the defendants argued.”
  • “The government opposed Cogar’s recusal, saying he does not have a conflict of interest and that prosecutors planned to call another attorney involved in Sagitec’s internal investigation instead of Ihlenfeld. That was not enough to persuade Judge Berger to allow Cogar to remain on the case.”