A blog about patent, copyright and trademark law in the U.S. District Court
for the Southern District of New York

Court Declines to Disqualify Counsel Under Lawyer-Witness Rule

In a March 24, 2014 ruling, Judge Sidney H. Stein denied as premature the defendants’ motion to disqualify counsel for both the plaintiff and the inventor of the invention claimed in the patent-in-suit in the plaintiff’s infringement action. The defendants argued that the inventor of the patent-in-suit defrauded the Patent Office by failing to disclose that the claimed invention had been on the market for three years before the filing of the inventor’s patent application, which would have prevented a patent from issuing. The inventor, a third party defendant in this action, was represented in the Patent Office by the same counsel as in this action. The defendants claimed that they would call counsel as a witness, requiring his disqualification. Judge Stein rejected the argument, ruling that “it is far too early to know whether this action will proceed to trial and whether [the challenged counsel] will participate as trial counsel,” especially in light of pending summary judgment motions. The Court denied the motion without prejudice.
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