Risk Update

Law Firm Conflicts Spotlight — Privilege Fight Over Conflicts-driven Discovery, Lawyer’s First Amendment Argument on USPTO Conflicts Suspension Fails

Judge Says Privilege Doesn’t Cover Documents Sought in Suit Against Eckert Seamans” —

  • “A federal judge upheld an order against Eckert Seamans Cherin & Mellott in a discovery dispute central to a former client’s conflict-of-interest suit against the firm.”
  • “The Tuesday decision from U.S. District Judge Jennifer Wilson of the Middle District of Pennsylvania affirmed a magistrate judge’s order directing Eckert Seamans to turn over certain documents to plaintiff Pace-O-Matic Inc. despite the firm’s assertion that the information in question was protected by attorney-client privilege.”
  • “Wilson said in a memorandum that Magistrate Judge Joseph Saporito did not abuse his discretion by applying judicial estoppel and was correct in his conclusion that Eckert Seamans adopted inconsistent positions in bad faith.”
  • “POM, a gambling device manufacturer, claimed that Eckert Seamans represented the company in a suit over its devices’ legality while simultaneously representing Parx Casino, a competitor that had been arguing in a separate suit that those same devices should be outlawed. POM claimed it was dropped as an Eckert Seamans client when it brought up the alleged conflict of interest.”
  • “POM filed suit against Eckert Seamans in February 2020 and sought documents and information from the firm and other parties regarding a Commonwealth Court case involving POM and Parx. The parties objected, asserting attorney-client and work-product privileges, sparking a dispute…”
  • “Wilson supported the finding that the firm took two irreconcilable stances, writing, ‘On one hand, Eckert has taken the position that it does not represent any party adverse to POM in litigation, including Parx. On the other hand, Eckert invokes the attorney-client privilege to oppose the production of documents maintained by Eckert involving Parx, a party with interests adverse to POM.'”
  • “Wilson said that by presenting conflicting positions, the firm forced the court to make a choice between the two. She ordered that the unredacted documents covered by Saporito’s order be given to the plaintiffs by July 27.”

Fed. Circ. Refuses To Lift Atty’s USPTO Conflict Suspension” —

  • “The Federal Circuit on Friday refused to block an attorney’s suspension from practicing before the U.S. Patent and Trademark Office, rejecting his First Amendment challenge to the finding that he violated conflict of interest laws by representing clients while working for the U.S. Navy.”
  • “Correll was suspended after the USPTO learned that he represented clients in patent and trademark matters at the office for 15 years while he was simultaneously employed by the U.S. Department of the Navy. The office found that he violated federal conflict of interest statutes that bar federal employees from representing clients in any matter in which the U.S. is a party or has an interest.”
  • “The Federal Circuit was unimpressed with Correll’s claims that the suspension violated his constitutional rights to free speech and free association, concluding that ‘we agree with the district court that the government’s interest in avoiding even the appearance of impropriety outweighs the burden that Mr. Correll’s suspension has on his rights.'”
  • “When Correll registered to practice before the USPTO, he signed an oath promising to observe the agency’s rules of practice, which include a prohibition on federal employees representing private clients, the appeal court wrote.”
  • “It added that the U.S. Supreme Court has acknowledged that ‘attorneys regularly and voluntarily waive certain free speech rights as part of their duties,’ so even if Correll was correct that his rights were violated, ‘the First Amendment does not excuse him from obligations willingly undertaken, nor does it forbid the PTO’s discipline.'”
  • “He filed or prosecuted 211 patent applications and 80 trademark registration applications between 2002 and 2017, when the USPTO’s Office of Enrollment and Discipline received notice of his activities and opened an investigation, the opinion said. According to the opinion, Correll continued to do both jobs despite being reminded by a USPTO survey in 2003 that federal employees may not represent private clients at the agency.”