Anderson v. Eppstein

Informative decision only: persuasive authority, not binding precedent. When a party petitions under 35 U.S.C. § 32 and 37 CFR § 10.130(b) to disqualify opposing counsel in an interference based on a former representation, the movant bears a heavy burden to show that the earlier application's subject matter is identical or essentially the same as the interfering subject matter and that the relationship was a prior representation under the substantial relationship test. Where the movant fails to show this, the Board will not presume that confidences were disclosed. A presumption that confidences were shared within a firm is rebuttable, and the Board may deny disqualification, including under Canon 9 or on ethics-violation theories, when the record rebuts it. No prior Board precedent directly addressed this issue in the text. The decision borrows the federal-court substantial relationship framework, since the PTO has no specific disqualification rules. A party seeking to disqualify opposing counsel must come with claim-by-claim and disclosure-level proof that the earlier application is essentially the same as the interfering subject matter. A party facing disqualification can defeat it with declarations showing the lawyer did no work, the working attorneys have left, and the files are gone. The Board relied on Federal Circuit authority, Telectronics Proprietary, Ltd. v. Medtronic, Inc., for the point that disqualification rests in the tribunal's discretion, and it distinguished Sun Studs, Inc. v. Applied Theory Associates, Inc. LEGAL TEST OR STANDARD: Substantial relationship test, with the moving party bearing a heavy burden and the Board balancing the right to counsel of choice against the integrity of the adversary process. The Board stated that Anderson must demonstrate that (1) the subject matter of the '567 application is identical or essentially the same as the subject matter in the Anderson patent involved in Interference 103,708, and (2) the relationship between Kokulis and Anderson is a prior representation within the meaning of the substantial relationship test. A presumption that confidences were shared within a firm is rebuttable. TRIGGERING FACTS: Anderson sought to disqualify Kokulis and Pillsbury because Kokulis's former firm, Cushman, prepared and prosecuted only the first of a series of continuing applications, the '567 application, behind the Anderson patent. Anderson showed only some overlap in disclosure and claims, did not explain claim differences, and no longer relied on '567 for priority. Kokulis signed a task order and was listed on a Power of Attorney, but the declarations credited by the Board showed he did no work on '567, the attorneys who did were no longer at Pillsbury, and the '567 file had been returned to NIH. Both sides waived the hearing and cross-examination. KEY QUOTE: "Judges are not like pigs, hunting for truffles buried in briefs." (Paper 361, p. 17) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board followed Telectronics Proprietary, Ltd. v. Medtronic, Inc., 836 F.2d 1332 (Fed. Cir. 1988) on discretion, and T.C. Theatre Corp. v. Warner Bros. Pictures, Inc., 113 F.Supp. 265 (S.D.N.Y. 1953) on the substantial relationship test. It distinguished Sun Studs, Inc. v. Applied Theory Associates, Inc., 772 F.2d 1557 (Fed. Cir. 1985). PRACTICE TIP: If you move to disqualify opposing counsel, build a record, with evidence from witnesses who have first-hand knowledge. Compare the prior work with the interfering claims element by element and show that the subject matter is identical or essentially the same. Prove actual involvement and shared confidences rather than relying on Power of Attorney listings or task-order signatures, because the Board will not compare the documents for you.