Reliant Pharmaceuticals, Inc., v. Par Pharmaceutical, Inc., C.A. No. 06-774-JJF, April 24, 2008.
Farnan, J. Plaintiff moves to disqualify law firm from representing the defense based on firm’s previous representation of plaintiff in a related matter. Court denies motion where representation was limited and did not extend to advice concerning the nature, scope, potential infringement, design around and validity of the patent-in-suit.
This patent infringement action alleges infringement of the ‘588 patent. Between June 2003 and October 2003, Frommer Lawrence & Haug LLP (“Frommer Lawrence”) represented plaintiff in connection with its acquisition of Rythmol® and the ‘588 patent from Abbott. Plaintiff contends that Frommer Lawrence served as its due diligence counsel during this transaction and assisted with the evaluation of the intellectual property concerning Rythmol® and Rythmol ® SR and that the firm had access to confidential information including the development, composition and manufacturing of Rythmol®. In November 2004, the firm began its representation of the defendant with respect to its ANDA for a generic version of Rythmol® SR and its related Paragraph IV certification regarding the ‘588 patent. Plaintiff argues that Frommer Lawrence should be disqualified because its current representation of defendant is materially adverse and substantially related to its prior representation of plaintiff which cannot be cured through the use of an information wall. Defendant contends that the firm’s representation four years ago does not warrant disqualification because the representation was limited both in time and scope and was unrelated to the infringement, validity and enforceability of the ‘588 patent. In addition, the lawyer primarily involved in the representation left the firm and the representation amounted to less than 20 billed hours. Moreover, the firm never rendered any opinions related to the ‘588 patent. The Court applies the Model Rules of Professional Conduct and notes that public policy favors allowing a litigant to choose counsel. As such, motions to disqualify are disfavored. The Court concludes that plaintiff has not demonstrated that disqualification is warranted given that the present action does not concern the underlying transaction with Abbott and the firm’s prior representation of plaintiff was limited. The Court finds no concrete evidence to support plaintiff’s contention that the scope of representation for the Rythmol® acquisition extended to advice concerning the nature, scope, potential infringement, design around and validity of the ‘588 patent. Thus the motion to disqualify is denied.
A full copy of the opinion is available here.
