September 16, 2016
Authored and Edited by Hala S. Mourad; Elizabeth D. Ferrill; Jeff T. Watson
In Dynamic 3D Geosolutions LLC v. Schlumberger Ltd., Nos. 15-1628, -1629 (Fed. Cir. Sept. 12, 2016), the Federal Circuit affirmed the district court’s decision to disqualify Dynamic 3D’s counsel and dismiss its patent infringement complaint without prejudice because Charlotte Rutherford, Dynamic 3D’s in-house counsel at a related subsidiary, previously worked for Schlumberger and was presumed to possess relevant confidential information.
Dynamic 3D sued Schlumberger, alleging infringement of U.S. Patent 7,986,319, which discloses three-dimensional displays of geological data. After Schlumberger raised the potential conflict of interest, the district court found that Rutherford’s work at Schlumberger was substantially related to her current work at Acacia Research Group LLC, a wholly-owned subsidiary of Acacia Research Corporation, the parent company of Dynamic 3D. The district court disqualified Rutherford, other Acacia in-house counsel, and Dynamic 3D’s outside counsel from representing Dynamic 3D. The district court also dismissed Dynamic 3D’s claims against Schlumberger without prejudice because the pleadings were drafted by counsel Rutherford interacted with who were presumed to possess Schlumberger’s confidential information.
The Federal Circuit agreed with the district court’s conclusion that Rutherford’s work for Schlumberger and for Acacia and Dynamic 3D were substantially related. The Court noted Rutherford’s senior roles at Schlumberger and her involvement in a project evaluating the Schlumberger product later accused of infringement by Dynamic 3D. The Court also agreed that Rutherford’s interactions with other in-house and outside counsel warranted that Rutherford’s knowledge be imputed to those attorneys and that those attorneys be disqualified from representing Dynamic 3D. Noting that Rutherford’s actions contaminated all aspects of the case, including her involvement with the purchase of the asserted patent and her preparation to file suit against Schlumberger, the Court also found that the district court did not abuse its discretion in requiring Dynamic 3D to begin with a fresh complaint rather than “to continue drawing from a poisoned well.”
Copyright © 2016 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.
Lecture
Patent Protection for Software-Related Inventions in Europe and the USA Training Course
June 5, 2024
Hybrid
Webinar
May 9, 2024
Webinar
Workshop
Life Sciences Workshop: Updates and Key Trends in Pharmaceutical and Biotechnology IP Law
May 2, 2024
Cambridge
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.