Morgan Lewis is trying to get Fish & Richardson disqualified from defending 724 Solutions in a suit by former F&R client Openwave Systems, Inc.
Last week, Morgan, Lewis partner Brett Schuman moved to disqualify Fish (pdf). According to Schuman, Fish lawyers worked on patents and third-party oppositions to patents that are “substantially related” to the technology in the lawsuit. The firm also did some IP analysis and litigation for Openwave.
This isn’t the first time the IP boutique has had this sort of problem.
After the jump, we recap one of the firm’s previous conflicts debacles and how it’s not particular to Fish & Richardson.
As the Recorder notes, patent prosecution is a good way to get new clients, but it often leads to conflicts later.
It’s a constant challenge that faces the few patent boutiques like Fish that have patent prosecution and litigation practices. And it’s why most big general practice firms don’t have big patent prosecution practices.
“It is true that if you look at a lot of the large firms, they have very small patent prosecution practices — and they mainly do it as favors — because of the conflict issue,” said Justin Beck, a veteran San Jose patent litigator with Beck, Ross, Bismonte & Finley.
Alarm bells should sound when there’s a practice area that big firms are loathe to enter despite clients who are willing to pay. Fish & Richardson probably thought this one was OK because none of the 10 patents they worked on for Openwave are involved, but Morgan Lewis thinks the general area of technology is close enough.
Although Fish has yet to file a response, a spokesman said the firm believes it is on solid ground.
“Fish & Richardson takes very seriously its ethical obligations, and we have considered the facts of this case carefully,” spokesman David Maizenberg wrote in an e-mail to The Recorder. “We would not have elected to remain in the case after receipt of notice from the lawyers representing Openwave unless we believed that we were correct in doing so.”
They’d better! We thought F&R would be particularly sensitive to this subject, considering it was almost exactly a year ago that they made one of the worst conflicts missteps we’ve seen in a long time.
Last February, the firm was accused of dropping a client in the morning and suing it in the afternoon. Not surprisingly, they had to withdraw from the whole mess.
Trivia: Morgan Lewis used to own the “mlb.com” domain now occupied by Major League Baseball, but they handed it over to their client ten years ago.
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