Summary
In Inverness Medical Switzerland GMBH v. Acon Laboratories, Inc., 2005 WL 1491233 (D.Mass. June 23, 2005), a case on which the Lichten firm relies, Judge Saris concluded that Goodwin Procter LLP had met its burden to establish that two attorneys it had hired possessed no information "material" to the matter under Rule 1.10(d)(1).
Summary of this case from O'Donnell v. Robert Half International, Inc.Opinion
Civil Action Nos. 03-11323-PBS, 02-12303-PBS.
June 23, 2005
MEMORANDUM AND ORDER
I. INTRODUCTION
Plaintiffs Inverness Medical Switzerland GmbH, Unipath Diagnostics, Inc., and Church Dwight Co., Inc. (collectively "Inverness") have sued defendant Acon Laboratories, Inc. ("Acon") in an action (the "Charlton litigation") for infringement of three U.S. patents, including U.S. Patent No. 6,485,982 ("the '982 patent"). In a separate action (the "May-Davis litigation"), Inverness has sued Acon for infringement of additional patents. Acon moves to disqualify law firm Goodwin Procter LLP ("Goodwin") as counsel for Inverness in these actions, claiming a violation of Massachusetts Supreme Judicial Court Rules of Professional Conduct 3.7 and 1.10 based on Goodwin's recent hiring of Douglas Kline and Duncan Greenhalgh. Acon contends that disqualification is necessary for two reasons. First, Acon argues that there is a conflict of interest under SJC Rule 1.10 because between January and September 2003, while Kline and Greenhalgh were employed by Testa Hurwitz LLP ("Testa") as patent lawyers, Testa acted as local counsel for Acon. Second, Acon argues that Goodwin must be disqualified under SJC Rule 3.7 because Kline and Greenhalgh will be necessary witnesses in the upcoming trial on Acon's inequitable conduct claims. The Court permitted discovery on these issues. After hearing and review of the record, Acon's motion to disqualify is DENIED.
II. BACKGROUND
A. Testa's Representation of AconDavid Doyle, Acon's lead counsel at Morrison Foerster, LLP in the May-Davis and Charlton litigation, retained Testa to act as co-counsel for Acon in the May-Davis litigation in 2002 and in the Charlton litigation in 2003. (Doyle Decl. Supp. Acon Reply Brief ¶ 2.) In connection with this work, he provided extensive confidential client information regarding Acon to a partner at Testa, Steven Bauer. (Id. ¶¶ 3, 4.) Mr. Doyle's declaration on these points does not mention Kline or Greenhalgh.
Kline and Greenhalgh submitted declarations discussing their involvement with Testa's representation of Acon. Both attorneys state that they have searched their "files and recollections carefully" and do not believe that they received any confidential or proprietary information relating to Acon or to Testa's representation of Acon. (Greenhalgh Decl. ¶¶ 3,5; Kline Decl. ¶¶ 3,4.) While at Testa, they did no work for Acon and billed no time to the Acon matter. (Greenhalgh Decl. ¶ 4; Kline Decl. ¶ 4.) They say that they knew that Testa represented Acon based on discussions with Bauer about possible conflicts related to the firm's representation of both Acon and Church Dwight (then Armkel LLC). (Greenhalgh Decl. ¶ 4; Kline Decl. ¶ 4.) Both Kline and Greenhalgh state that they never discussed Acon's strategies or intellectual property rights with any attorneys at Testa. (Greenhalgh Decl. ¶ 5; Kline Decl. ¶ 5.) Finally, neither attorney recalls discussion of the Acon litigation at any general firm meetings. (Greenhalgh Decl. ¶ 5; Kline Decl. ¶ 5.)
Acon points to several time entries in Testa's bills to Acon that mention Kline and Greenhalgh:
(1) A January 2003 fifteen-minute entry by Stephen Whetstone, another Testa partner working on the Acon matter, reads "vm to S. Bauer re: Acon; email from S. Bauer re: Acon; vm to DJK re: Acon; emails re: Answer, Motion to Dismiss". (Comer Aff. Supp. Mem. re: Dep., Ex. 4 at 2.) Inverness does not dispute that DJK are Kline's initials, or that the notation refers to him.
(2) Another January 2003 fifteen-minute entry by Whetstone states "vm's to/from D. Greenhalgh re: complaint, interested parties." (Id.)
(3) A February 2003 Whetstone entry for two hours states in part: "reviewed proposed litigation timeline; conf. w/N.Maroney re: Saris' views; email re: same; tc's w/DJK, DSG, RSS re: same. . . ." (Id. at 8.)
(4) A September 2003 fifteen-minute Whetstone entry states in part "emails to/from DJK re: SJ papers." (Id. at 16.)
(5) Another September 2003 fifteen-minute entry states "vm to S. Bauer; tc w/DJK re: Inverness's withdrawal request." (Id.)
(6) A third September 2003 entry, for thirty minutes, includes the note "conf w/DJK, DJB re: conflicts analysis. . . ." (Id. at 17.)
(7) An October 2003 fifteen-minute Whetstone entry reads in part "email to/from S. Bauer, DJKline re: withdrawal . . .". (Id. at 19.)
(8) Finally, another October 2003 Whetstone entry, for thirty minutes, states in part "vm from S. Comer re: THT withdrawal; vm's to/from S. Bauer, DJK, N. Maroney re: same . . .". (Id.)
Acon conducted brief depositions of Kline and Greenhalgh in March of this year, questioning them about the invoice entries and their knowledge of Testa's work for Acon. Greenhalgh stated in his deposition that he had never spoken to Whetstone about the Acon litigation, and that he had one conversation with Bauer, in which Kline also participated, about the conflicts issues involved in Testa's representation of Acon. (Greenhalgh Dep. at 10:20-22.) He stated that he had no other conversations about the Acon litigation with anyone at Testa. (Id. at 11:25-12:18.)
Questioned about Whetstone's January 2003 invoice entry that reads "vm's to/from D. Greenhalgh re: complaint, interested parties," Greenhalgh stated that he did not recall discussing the Inverness complaint with Whetstone or receiving a voicemail from Whetstone on this subject. (Id. at 9:21-10:09.)
Kline's deposition testimony is similar to Greenhalgh's. He stated that he does not recall having any conversations with Whetstone about the Acon litigation. (Kline Dep. at 16:04-12.) He has no memory of any e-mails, voice-mails, or conversations referenced in the Whetstone invoice entries. (Id. at 14:08-17:15.) He also stated that he does not recall ever seeing any summary judgment papers related to the Acon matters while at Testa. (Id. at 17:16-19.) Like Greenhalgh, Kline remembers discussing conflict issues related to the Acon representation with Bauer, but he does not remember discussing Acon's litigation strategies or any other substantive aspects of the case. (Id. at 18:04-19:03.)
Bauer has worked at Proskauer Rose, LLP since 2004, and Proskauer has been representing Church Dwight against Acon in this litigation. Acon has not moved to disqualify him or to take his deposition.
B. Testa's Representation of Carter-Wallace and Church Dwight
During the period that Kline and Greenhalgh worked at Testa, Testa acted as counsel for Carter-Wallace, and later Church Dwight, as owner of the '982 patent and other related Charlton patents. Testa was involved in the prosecution of those patents. Edmund Pitcher, the partner at Testa in charge of this representation, is expected to testify at the bench trial in this case involving the defense of inequitable conduct.
As part of the prosecution of the '982 patent, Kline was significantly involved in an interference proceeding between Becton Dickinson and Company and Carter-Wallace. (Kline Decl. ¶ 9.) Among other duties, Kline appeared on behalf of Carter-Wallace at an arbitration between Carter-Wallace and Becton Dickinson in November 2000, and questioned Mr. Charlton as his representative during the arbitration. (Doyle Conf. Aff. Ex. G.) Kline became chair of the patent and intellectual property group at Testa in 2001. (Kline Dep. at 10:23-11:05.)
Greenhalgh stated in his March 2005 deposition that he was primarily responsible for prosecution of at least one Charlton patent after the issuance of the '982 patent in 2002, but that he was not primarily responsible for prosecution of the '982 patent. (Greenhalgh Dep. at 20:01-21:14.) In his declaration, he stated that "[a]lthough I may have worked on the prosecution of the Charlton '982 patent, to the best of my recollection my involvement was minimal. . . ." (Greenhalgh Decl. ¶ 6.) The record on Greenhalgh's involvement in the '982 patent prosecution is somewhat confused, but under any reading, there is no evidence that Greenhalgh was involved in that prosecution before approximately July 1999. See Plaintiffs' Amended and Supplemental Privilege Log, Vinti Decl. of May 19, 2005, Exh. 1. The EPO revocation decision at the heart of Acon's inequitable conduct claim was issued in November 1998. Greenhalgh Dep. at 33:11-12.
In the Charlton litigation, Greenhalgh was designated by Church Dwight to testify as a Federal Rule of Civil Procedure 30(b)(6) deponent about, among other things, plaintiffs' knowledge of the European Patent Office decision to revoke the European counterpart to the '982 patent application, as well as plaintiffs' alleged failure to disclose this revocation to the United States Patent Office (PTO). (Doyle Aff. Ex. D; Doyle Conf. Aff. Ex. C.) Greenhalgh was deposed by Acon as a 30(b)(6) designee on April 16, 2004. (Doyle Conf. Aff. Ex. C.)
In his affidavit, Greenhalgh stated that he "had no prior personal knowledge" of the issues about which he was asked to testify as a 30(b)(6) deponent, and that he "therefore prepared to give testimony by gathering historical information." (Greenhalgh Decl. ¶ 7.) He also stated that "any information I had about Acon's allegations regarding the disclosure of a decision of the European Patent office revoking a European counterpart of the Charlton patent was not from my own personal knowledge, but was information that I had gathered as part of my investigation." (Id.)
Kline appeared as a "may call" witness on Inverness's Third Supplemental Witness List for the November 2004 jury trial before this Court (Docket No. 307), but he did not testify at that trial. Acon did not list Kline as a witness at any time, but listed Greenhalgh within the group of "witnesses whose testimony is expected to be presented by deposition" for the November trial. (Acon Witness List, Sept. 7, 2004 (Docket No. 162).) Greenhalgh's testimony was not presented at trial, either in person or by deposition. Inverness has stated that it does not intend to call either Kline or Greenhalgh in the upcoming bench trial, while Acon contends that it intends to call both attorneys.
III. DISCUSSION
Lawyers appearing before this Court are bound by the Massachusetts Rules of Professional Conduct. United States District Court Local Rule 83.6(4)(B).
"`[D]isqualification, as a prophylactic device for protecting the attorney-client relationship, is a drastic measure which courts should hesitate to impose except when absolutely necessary.'" Adoption of Erica, 686 N.E.2d 967, 970 (Mass. 1997) (quoting Freeman v. Chicago Musical Instrument Co., 689 F.2d 715, 721 (7th Cir. 1982)). Such a measure is generally appropriate only when continued participation by the attorney "taints the legal system or the trial of the cause before it."Borman v. Borman, 393 N.E.2d 847, 856 (Mass. 1979) (citations omitted). Courts should be "alert that the Canons of Ethics are not brandished for tactical advantage." Serody v. Serody, 474 N.E.2d 1171, 1174 (Mass.App.Ct. 1985).
A court deciding whether to disqualify counsel should attempt "to reconcile an individual's right to counsel of his choice with the obligation of maintaining the highest standards of professional conduct and the scrupulous administration of justice." Rodriguez v. Montalvo, 337 F. Supp. 2d 212, 217 (D. Mass. 2004).
A. Alleged Conflict of Interest
Acon argues that Goodwin must be disqualified under Rule 1.10(d) of the Massachusetts Rules of Professional Conduct because Kline and Greenhalgh were employed by Testa during Testa's ten-month representation of Acon in 2003. Rule 1.10(d) provides:
(d) When a lawyer becomes associated with a firm, the firm may not undertake to or continue to represent a person in a matter that the firm knows or reasonably should know is the same or substantially related to a matter in which the newly associated lawyer (the "personally disqualified lawyer"), or a firm with which that lawyer was associated, had previously represented a client whose interests are materially adverse to that person unless:
(1) the personally disqualified lawyer has no information protected by Rule 1.6 or Rule 1.9 that is material to the matter ("material information"); or
(2) the personally disqualified lawyer (i) had neither substantial involvement nor substantial material information relating to the matter and (ii) is screened from any participation in the matter in accordance with paragraph (e) of this Rule and is apportioned no part of the fee therefrom.
Mass. S.J.C. Rule 3:07, Rule 1.10. Neither party disputes that Kline and Greenhalgh are currently associated with Goodwin, that Goodwin represents Inverness in the current matter, that the interests of Inverness are materially adverse to those of Acon, that Acon was previously a client of Testa, and that Kline and Greenhalgh were previously associated with Testa. The relevant disputed issues, then, are whether the current matter is the "same or substantially related" to the matter in which Testa represented Acon, and if it is, whether either of the two safe harbors of Rule 1.10(d) apply here. Because I find that the first safe harbor provision applies, I need not consider the other disputed points.
Comment 9 to Rule 1.10 elaborates on the 1.10(d)(1) exception, stating that a firm need not be disqualified under 1.10(d) if the personally disqualified lawyer does not possess material confidential information:
If the lawyer has no confidential information about the representation of the former client, the new firm is not disqualified and no screening procedures are required. This would ordinarily be the case if the lawyer did no work on the matter and the matter was not the subject of discussion with the lawyer generally, for example at firm or working group meetings. The lawyer must search his or her files and recollections carefully to determine whether he or she has confidential information. The fact that the lawyer does not immediately remember any details of the former client's representation does not mean that he or she does not in fact possess confidential information material to the matter.
Goodwin has the burden of establishing that neither Kline nor Greenhalgh received any confidential information about the Acon representation while at Testa. See Comment 7 to Rule 1.9 ("the burden of proof should rest upon the firm whose disqualification is sought"). Goodwin has met this burden. Both attorneys declared in their affidavits and depositions that they have looked through their files carefully, and that they received no such information. Significantly, there is no evidence that either Kline or Greenhalgh billed any time to the Acon matter at Testa.
Acon relies on the invoice entries to demonstrate the transfer of material confidential information to Kline or Greenhalgh. Most of the entries appear to relate to the conflicts issues and withdrawal from the representation rather than the substance of the litigation. Only the September 23, 2003 fifteen-minute entry noting "emails to/from DJK re: SJ papers" suggests possible discussion of material confidential information. However, summary judgment papers were not filed in the May/Davis litigation until March 2004, after Testa withdrew from representing Acon; in the Charlton litigation, summary judgment papers were filed by Inverness in early September 2003, and Acon filed its opposition on September 16, a week before the invoice entry and a month before Testa withdrew from the representation. There is no evidence that Testa was substantively involved at any point in the Charlton litigation, and Ms. Joan Griffin, then at the law firm of Cooke, Clancy and Greunthal, appeared as local counsel for Acon from the beginning. Based on these facts and the short length of time allotted to the invoice entry (fifteen minutes), it is unclear whether the e-mail involved transfer of substantive information. While there is some evidence that Kline and Greenhalgh had minimal contacts with the Acon litigation, the record contains no persuasive evidence that Kline and Greenhalgh gained material confidential information about the Acon litigation while at Testa.
Acon suggests that because a confidential relationship was established between Testa and Acon, that relationship is imputed to every lawyer in the firm, and then imputed to every lawyer at any firm to which a lawyer from the first firm transfers. The relevant caselaw does not support this position. In Dieter v. Regents of the University of California, 963 F. Supp. 908 (E.D. Cal. 1997), involving California law, lawyers for a party to the litigation had previously worked for a law firm that represented an adverse party, but those lawyers had never worked on the case while at the previous firm, and had worked at a different branch of the firm. Id. at 910. The court cast doubt upon Acon's "double imputation" approach here:
Such imputation upon imputation — imputing to the attorney knowledge of confidences in the first representation and then imputing to the attorney's new firm knowledge of these imputed confidences — could have potentially large effects on the market for attorney services and the ability of attorneys to move from firm to firm.Id. at 911. Cf. Exterior Sys., Inc. v. Noble Composites, Inc., 210 F. Supp. 2d 1062, 1070 (N.D. Ind. 2002) (holding that under Indiana's professional conduct rules, a law firm must "reject representation only where a new lawyer to the firm had represented an adverse client while at his former firm and had acquired actual client confidences" (emphasis in original)).
Although Dieter was decided under California law, the same reasoning applies here. The cases pointed to by Acon are inapposite, as they discuss imputation less attenuated than that proposed in this case. See Bays v. Theran, 639 N.E.2d 720, 722, 724 (Mass. 1994) (affirming disqualification of law firm where lower court found that attorney at the firm had represented adverse party and received confidential information from that party while at the firm); Kevlik v. Goldstein, 724 F.2d 844, 845-46, 850-51 (1st Cir. 1984) (affirming disqualification of defendants' law firm where attorney at the firm had privileged communications with witness relevant to plaintiffs' case while at the firm); Rodriguez, 337 F. Supp. 2d at 217-19 (holding that confidential information imparted by a party to a paralegal is imputed to the attorney supervisors within a firm, and that the imputation remains with those attorney supervisors when they transfer to a new firm, so that they cannot personally represent a client adverse to that party); Atasi Corp. v. Seagate Tech., 847 F.2d 826, 828-29 (Fed. Cir. 1988) (affirming disqualification of law firm where attorney at the firm previously worked at adverse party's law firm and "was personally involved in the matter" while employed there, helping to prepare a brief and signing his name on a pleading (applying Ninth Circuit law)).
Acon also points to language in Bays and Kevlik stating that a court will assume that where an attorney-client relationship existed, confidences were transmitted. See Kevlik, 724 F.2d at 851 ("The Court will assume that during the course of the former representation confidences were disclosed to the attorney bearing on the subject matter of the representation."); Bays, 418 Mass. at 691. That point in no way bolsters Acon's claim here because neither Kline nor Greenhalgh personally represented Acon.
Thus, based on the safe harbor in Rule 1.10(d)(1), Goodwin has proven that neither Kline nor Greenhalgh received confidential information while at Testa. Acon's motion to disqualify based on Testa's previous representation of Acon must be denied.
B. Lawyer-as-Witness Issue
Acon further argues that Goodwin must be disqualified because Kline and Greenhalgh will be necessary witnesses in the upcoming trial, based on their involvement with the prosecution of the Charlton patents for Carter-Wallace while employed by Testa. Acon alleges a violation of Massachusetts Supreme Judicial Court Rule 3:07, Rule 3.7, which states:
(a) A lawyer shall not act as advocate at a trial in which the lawyer is likely to be a necessary witness except where:
(1) the testimony relates to an uncontested issue;
(2) the testimony relates to the nature and value of legal services rendered in the case; or
(3) disqualification of the lawyer would work substantial hardship on the client.
(b) A lawyer may act as advocate in a trial in which another lawyer in the lawyer's firm is likely to be called as a witness unless precluded from doing so by Rule 1.7 or Rule 1.9.
Rule 3.7(a) is inapplicable here, as neither Kline nor Greenhalgh will act as advocate for Inverness in the upcoming trial. Under Rule 3.7(b), the relevant inquiry is whether Kline or Greenhalgh are likely to be called as witnesses, and if so, whether Rule 1.7 or 1.9 would preclude advocacy by Goodwin attorneys. Nothing in Rule 1.9 appears to be relevant to Acon's 3.7(b) claim that Goodwin attorneys should not represent Inverness, and Acon does not provide convincing argument to the contrary. Rule 1.7 states, inter alia:
Acon makes a brief argument under Rule 1.9(c), distinct from its Rule 3.7 argument, that in testifying at trial, Kline or Greenhalgh may improperly use or reveal confidential information relating to Testa's former representations of Acon or Church Dwight without the consent of those parties. (See Acon Reply at 13-14.) Acon has presented no evidence to support this scenario.
(a) A lawyer shall not represent a client if the representation of that client will be directly adverse to another client . . .
(b) A lawyer shall not represent a client if the representation of that client may be materially limited by the lawyer's responsibilities to another client or to a third person, or by the lawyer's own interests, unless:
(1) the lawyer reasonably believes the representation will not be adversely affected; and
(2) the client consents after consultation. . . .
Mass S.J.C. Rule 3:07, Rule 1.7. Rule 1.7(a) is inapplicable to Acon's claim under Rule 3.7. Rule 1.7(b) may be applicable, however, if the testimony of Kline or Greenhalgh is likely to be in conflict with the testimony of witnesses for Inverness. This situation could create conflicting loyalties for counsel from Goodwin, between their client, Inverness, and Goodwin attorneys Kline and Greenhalgh. Comment 5 to Rule 3.7 provides: "[I]f there is likely to be substantial conflict between the testimony of the client and that of the lawyer or a member of the lawyer's firm, the representation is improper. The problem can arise whether the lawyer is called as a witness on behalf of the client or is called by the opposing party." According to the comments to Rule 1.7, a conflict is not in itself sufficient to preclude representation, however; the focus of the court must be on whether the lawyer's loyalty to the client is threatened:
A possible conflict does not itself preclude the representation. The critical questions are the likelihood that a conflict will eventuate and, if it does, whether it will materially interfere with the lawyer's independent professional judgment in considering alternatives or foreclose courses of action that reasonably should be pursued on behalf of the client.
Comment 4 to Rule 1.7.
It is clear that "disqualification may rightly be sought by opposing counsel," as here, "even though he/she is not representing the aggrieved client." Kevlik, 724 F.2d at 848 (citation omitted). Comment 15 to Rule 1.7 advises wariness in such a case, however, noting that "where the conflict is such as clearly to call in question the fair or efficient administration of justice, opposing counsel may properly raise the question," but that [s]uch an objection should be viewed with caution . . . for it can be misused as a technique of harassment." See also Serody, 474 N.E.2d at 1174 ("[C]alling upon the testimony of opposing counsel to maneuver his withdrawal . . . is a practice which, regrettably, holds high fashion.").
Rule 1.7(b) provides an exception to the disqualification requirement where the client has consented to the conflict, as Inverness has done here. However, "when a disinterested lawyer would conclude that the client should not agree to the representation under the circumstances, the lawyer involved cannot properly ask for such agreement or provide representation on the basis of the client's consent." Comment 5 to Rule 1.7.
The Massachusetts precedent cited by both sides on the lawyer-as-witness issue is not entirely applicable here, as it involves cases where the advocate at trial, rather than a different lawyer from the advocate's firm, gives testimony at trial. The ethical dilemma posed where trial counsel actually testifies is more serious than the problem posed here, as the distinction between Rule 3.7(a) and Rule 3.7(b) indicates. However, testimony by a lawyer from the advocate's law firm may be problematic in some cases under Massachusetts law. See Borman, 393 N.E.2d at 855 ("Although the impact on the client, trial, and public lessens when the attorney-witness is not himself trial counsel but only a member of trial counsel's firm, there is an impact nonetheless."). Generally, Massachusetts courts focus on whether a substantial conflict between the lawyer's and client's testimony could emerge. See id. at 858 (Before disqualification is required, "[t]here must be a showing . . . that counsel's testimony on behalf of the opponent will be prejudicial to counsel's client."); Serody, 474 N.E.2d at 1173 ("[Borman] sounds a cautionary note about judicial disqualification of counsel. . . . The matter lies differently, however, if the testimony sought by an opponent is likely to be prejudicial to the client of the lawyer-witness.").
The question before this Court is whether Kline and/or Greenhalgh are likely to be necessary witnesses at trial, and if so, whether their testimony is likely to be in conflict with the testimony of witnesses for Inverness. If such a conflict is likely, the Court must determine whether the conflict is so substantial as to threaten Goodwin counsel's loyalty to its client, to the extent that a disinterested lawyer would conclude that Inverness should not agree to such representation.
1. Necessity as Witnesses and Likelihood of Substantial Conflict
Acon suggests three possible subject areas in which the testimony of Kline will be necessary at trial, and one area in which Greenhalgh's testimony will be necessary. Acon contends that there is likely to be a substantial conflict between the two attorneys' testimony and that of witnesses for Inverness as to all of these subject areas.
First, Acon argues that Charlton's testimony at the November trial conflicts with legal positions regarding obviousness taken by Kline and other Testa lawyers during the Becton Dickinson interference. (Acon Mem. at 5.) In denying Acon's Motion to File its Third Amended Answer and Counterclaim, this Court prohibited Acon from presenting this claim at trial. (See Electronic Order of March 16, 2005.) Acon's Rule 3.7 argument in this regard is therefore moot.
Second, Acon states that Kline's testimony will be relevant regarding Acon's best mode inequitable conduct claim. The best mode claim is based on Acon's contention that Charlton and his attorneys withheld material information from the PTO about the best mode for performing the two-step embodiment of Charlton's invention. Acon alleges that at the November 2000 arbitration with Becton Dickinson at which Kline represented Carter-Wallace and questioned Charlton, Charlton failed to disclose the best buffer he had developed for the two-step embodiment. Acon points to the following exchange from the arbitration, among others:
Q: [Kline] . . . why don't you tell us all briefly how does the premix embodiment differ if at all from the embedded embodiment?
A: [Charlton] . . . Essentially the difference is the placement of where the conjugate is. There's no difference between the buffers you're using or any other way of putting the product together.
Q: [Kline] This is going to be important. Is that clear enough? I want to be sure that we get that.
(Doyle Conf. Aff. Ex. G at 49:09-50:02.) Acon argues that this snippet and similar testimony by Charlton at the arbitration are in conflict with Inverness's current position, and lend support to Acon's best mode claim.
The problem with this argument is that Charlton, who provided the testimony, rather than Kline, who asked the questions, would appear to be the relevant witness regarding the truth of this testimony, and no evidence in the record suggests that Kline would contribute any useful information. See Serody, 474 N.E.2d at 1174 ("If . . . the evidence sought from opposing counsel could as easily be adduced through others, or the lawyer's testimony would be merely cumulative or marginally relevant, it may be desirable to exclude the proffered evidence or to admit the evidence and let the lawyer-witness stay in the case.").
Even if Kline is a necessary witness based on his involvement in the arbitration hearing, there is no indication that his testimony will substantially conflict with the testimony of Inverness witnesses. At his deposition in March 2005, Kline was read the exchange quoted above from the November 2000 arbitration. (Kline Dep. at 27:12-28:06.) Based on privilege, he was instructed not to respond when asked whether he discussed this testimony with Charlton before the hearing. (Id. at 28:07-28:15.) He could not recall whether after the hearing, he had looked at the patent application to see whether a best buffer was disclosed. (Id. at 28:16-28:20.) When asked if he provided any information to the PTO regarding a best buffer, he stated that he was not involved in that process. (Id. at 28:21-29:03.) Based on privilege, he was instructed not to respond to a question about his discussions with colleagues at Testa about a best buffer. (Id. at 29:04-29:12.) None of this testimony provides any support for Acon's claim of substantial conflict in this case.
Third, Acon argues that Kline is a necessary witness regarding Acon's inventorship inequitable conduct claim. The inventorship claim is based on Acon's allegation that Charlton intentionally deceived the PTO by failing to include Dr. Henry Graham as a co-inventor on the '982 patent application. According to Acon, Kline's March 2005 deposition shows that Kline "learned by 1995 that Charlton had conceived of the '982 invention at Ortho, rather than at Carter-Wallace, indicating a potential inventorship defect." (Acon Mem. Re: Depositions at 4.) In fact, in the portion of the deposition cited by Acon to support this point, Acon counsel simply read Kline certain testimony that Charlton had given at a hearing attended by Kline (Kline Dep. at 30:25-32:12), and asked Kline about it. Kline stated that he did not recall being present during the testimony (id. at 32:12-14), and objected to a characterization of a portion of the testimony by Acon's counsel (id. at 32:15-33:01). This deposition testimony provides no support for Acon's claims.
Finally, Acon makes a more general claim that "[b]efore the '982 patent issued in 2002, Kline learned yet further details from Charlton that may include deficiencies of the '982 patent, but which he refused to disclose during the deposition based on the attorney-client privilege." (Acon Mem. Re: Dep. at 4-5.) This is pure conjecture.
Acon contends that Greenhalgh is a necessary witness regarding Acon's European patent revocation inequitable conduct claim. This claim relates to the 1998 revocation by the European Patent Office (EPO) of the European counterpart to the '982 patent, for lack of an "inventive step." Acon alleges that plaintiffs engaged in inequitable conduct by failing to disclose this revocation to the PTO. Greenhalgh's testimony as to the revocation is necessary, according to Acon, because he was designated by Church Dwight as a 30(b)(6) deponent on the subject of the revocation and because he was involved in the prosecution of several Charlton patents. Acon contends that Greenhalgh can address, among other things, "whether Edmund Pitcher was aware that the European Patent Office had revoked the patent and yet did not disclose that action to the United States PTO." (Acon Mem. at 3.)
In his affidavit, Greenhalgh stated that he had no personal knowledge of the issues that he was asked to discuss as a 30(b)(6) deponent, including plaintiffs' knowledge of the EPO revocation decision. (Greenhalgh Decl. ¶ 7.) Without personal knowledge of the relevant events, there is no reason to believe that Greenhalgh's testimony at trial would conflict with the testimony of Pitcher himself. Acon points to the following exchange from Greenhalgh's 30(b)(6) deposition in April 2004:
Q: Did you ask Mr. Pitcher whether or not there came a point in time when he was working on the patent prosecution for Carter-Wallace or Armkel that he became aware that the European Patent Office revoked the '215 patent?
Mr. Vinti: Objection. Attorney-client privilege and attorney work product and instruct you not to answer.
Q: Are you going to follow counsel's instruction not to answer that?
A: I am.
Q: Aside from counsel's instruction, do you possess the knowledge to answer that question?
A: Yes.
(Doyle Conf. Aff. Ex. C, Greenhalgh April 2004 Dep. at 64:25-65:14.) This exchange is problematic because the basis for the assertion of privilege is unclear. However, Acon did not move to compel and this answer is inadequate to demonstrate that Greenhalgh has substantial impeachment evidence.
Acon argues that Greenhalgh's "own conduct supports Acon's inequitable conduct defense." (Acon Mem. Re: Dep. at 2.) Based on Greenhalgh's March 2005 deposition, Acon states that it "now knows that Greenhalgh had personal responsibility for prosecuting the Charlton patents as early as 1999, and prosecuted those patents for three years before issuance of the '982 patents without disclosing the highly material EPO revocation to the PTO," with "no plausible explanation for his failure to disclose." (Id.) In fact, Greenhalgh stated in the deposition that he did not see the EPO revocation decision when it was issued. (Greenhalgh Dep. at 28:04-29:17.) He also testified that while preparing for his 30(b)(6) deposition, he found a document transmitting the EPO revocation decision from Testa to Carter-Wallace (id. at 31:14-24), but that he had not been cc'd on that document and had not seen it at the time that it was written (id. at 34:17-22). Without knowledge of the revocation decision, Greenhalgh could not plausibly be accused of inequitable conduct regarding it. Acon has not presented evidence to refute Greenhalgh's declaration that he had no personal knowledge about the events relevant to the EPO revocation, or otherwise to support its expansive assertions about Greenhalgh's involvement in intentional deception in this regard.
Finally, Acon argues that Greenhalgh's deposition testimony substantially conflicts with that of Edmund Pitcher. In his deposition on March 16, 2005, Pitcher stated that Isabelle Blundell at Testa was charged with producing materials such as the European proceedings documents to the PTO. (Pitcher Dep. at 294:10-295:04.) Pitcher was later asked whether Greenhalgh had "any involvement in forwarding or not forwarding [the EPO revocation decision] to the U.S. PTO," and Pitcher responded, "could have." (Id. at 310:06-310:10.) At Greenhalgh's deposition, Greenhalgh did not recall whether Pitcher had ever told him that Ms. Blundell's role was in part to transmit foreign prosecution documents related to the Charlton patents to the PTO.
(Greenhalgh Dep. at 27:19-28:03.) Based on these statements by Pitcher and Greenhalgh, Acon states: "Greenhalgh refutes Pitcher's delegation explanation for his failure to inform the PTO. Greenhalgh would not confirm that Pitcher ever instructed him or Ms. Blundell to produce all materials for the European proceedings to the PTO." (Acon Mem. Re: Dep. at 3.) This is a mischaracterization of the deposition testimony — Greenhalgh neither disputed nor affirmed Pitcher's statements on this subject. There is simply no evidence of substantial conflict on this record.
In sum, there is insufficient evidence that Greenhalgh's testimony regarding Acon's EPO revocation claim would be in substantial conflict with that of witnesses for Inverness.
IV. POSTSCRIPT
This is not a frivolous motion in light of the musical chairs in this litigation. Given Greenhalgh's and Kline's prior connections to patent prosecution, Acon was not unreasonable in its concerns. Nonetheless, after ample discovery, the challenges did not prove up. In light of the strong policy against disqualification of counsel in Massachusetts, Acon's motion must be denied.
V. ORDER
Defendant's motion to disqualify Goodwin Procter, LLP as counsel for Inverness (Docket No. 429) is DENIED.