University of New Mexico v. Fordham University

Informative decision only: persuasive authority, not binding precedent. Where a party seeks disqualification of opposing counsel in an interference based on a current-client conflict, the Board does not apply a per se or strict-liability rule; the presumption of harm from a current-client conflict can be overcome by evidence, and the Board balances harm to the movant against harm to the party that would lose its chosen counsel. Where the attorney-client relationship is at best attenuated, there is no substantial relationship to the interference subject matter and no showing of shared confidences, the Board will decline to recommend disqualification and leave unrelated misconduct to the Director of Enrollment and Discipline or state bars. No prior Board precedent directly addressed this issue: the Commissioner decisions UNM cited, except Beghin-Say, involved former clients, and in Beghin-Say the attorney was held not to have been the party's attorney, so none set a standard for current-client conflicts. For the party seeking disqualification, a current-client conflict is not strict liability; it must show real harm bearing on its ability to act in the interference, and conceding no substantial relationship and no shared confidences is fatal. For the party whose counsel is challenged, the decision protects its chosen counsel against tactical disqualification motions where the movant's harm is attenuated or unrelated, since the Board weighs the actual harm to that party from losing its counsel. The Board relied on Federal Circuit authority, Picker Int'l v. Varian Assocs., 869 F.2d 578, which rejected a per se rule and approved balancing of harms under regional circuit law, and Panduit Corp. v. All States Plastics Mfg. Co., 744 F.2d 1564, which says the Federal Circuit applies regional circuit law and that the standard for showing no harm is lenient. LEGAL TEST OR STANDARD: The movant bears the burden of showing error on reconsideration. For a current-client conflict, the Board follows Picker Int'l in rejecting a per se rule. A presumption of harm arises between current clients, but presumptions evaporate in the face of evidence, and the standard for showing no harm (proving a negative) is lenient. The Board then balances the lack of harm to the movant against the actual harm to the opposing party (not just its counsel) from disqualification of its chosen counsel. The Board assumed, without deciding, that UNM was a client. TRIGGERING FACTS: P&E prosecuted an unrelated-technology application for a third party on which a UNM employee was a co-inventor; UNM gave P&E a power of attorney and appears to be a co-assignee. The conflict arose when an attorney joined P&E with his UNM-related work while P&E was trying to provoke an interference against a UNM patent, and P&E failed to obtain consent. UNM conceded no substantial relationship between the subject matter of P&E's work and the interference, and presented no facts supporting shared confidences. Such facts supported a finding of no meaningful harm to UNM; a movant outside the rule would need to show harm connected to the interference. KEY QUOTE: "The question thus framed is whether a current- client conflict is a strict liability offense." (Paper No. 47, p. 6) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board noted that the Commissioner decisions UNM cited (Gilman Corp. v. Gilman Bros., Unico Am. Corp. v. Unico Banking Grp., American Sigma, Halcon Int'l v. Werbow, Plus Prods. v. Con-Stan Indus., Sunkist Growers v. Ansehl Co., all former client) did not set a current-client standard, and that Beghin-Say v. Rasmussen found no attorney relationship. It followed Picker Int'l v. Varian Assocs., 869 F.2d 578, and Panduit Corp. v. All States Plastics Mfg. Co., 744 F.2d 1564. PRACTICE TIP: When moving to disqualify opposing counsel in an interference on a current-client conflict, do not rely on the presumption of harm or a per se theory; submit evidence of concrete harm to your ability to act in the interference, such as a substantial relationship or shared confidences, and expect the Board to balance the harm to the other party. Take unrelated grievances to the Office of Enrollment and Discipline or a state bar.