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Fish & Richardson Accused of 'Hot Potato' Move
The Recorder
February 25, 2009
A San Francisco Bluetooth headset maker says Fish & Richardson played an unseemly game of hot potato by dropping it as a client and then turning around and suing for patent infringement the very next day.
Aliph Inc. moved to disqualify Fish from representing Bluetooth rival Plantronics in the patent case two weeks ago, arguing that the firm shouldn't be allowed to sue its own client or get out of the mess by suddenly disowning Aliph at 8:30 p.m. the night before.
Diane Karpman, an ethics lawyer with Karpman & Associates, said what Fish is accused of doing took a lot of "chutzpah."
"It's breathtaking that a firm would disengage at 8:30 and then sue them in the morning," Karpman said. "It would seem to be a pretty valid argument that they were working on this beforehand."
Aliph says in court papers that it hired the firm to do FCC regulatory work in May. In December, the company got a call from the relationship partner, Terry Mahn of the firm's Washington, D.C., office, trying to get Aliph's consent for Fish to represent an adverse party in litigation. Fish wouldn't identify the party or the matter, according to Aliph, and the company refused to waive the conflict.
Following further unsuccessful entreaties, Mahn sent an e-mail to Aliph on Jan. 14 saying, "Unfortunately, firm management has now weighed in and has directed me to inform you that we can no longer represent Aliph on regulatory matters without Aliph's consent to the firm being adverse on IP matters unrelated to our regulatory work, as was explained in our initial engagement letter." The next day, Fish attorneys from the firm's Dallas office filed the patent infringement suit for Plantronics against Aliph in the Eastern District of Texas. The suit claims that the earbuds used for Aliph's Jawbone Bluetooth headsets infringe on a Plantronics patent.
"Unlike more complicated and ambiguous disqualification cases, which involve law firm mergers or lateral attorney transfers that occur well after the suit has been filed, here Fish knew of its conflict and began acting adverse to Aliph before filing the suit," Aliph says in the motion to disqualify, written by the company's attorneys, from Morrison & Foerster and Townsend and Townsend and Crew.
MoFo's James Pooley, the lead lawyer, said he couldn't comment publicly on the motion.
Fish has yet to respond in court papers, and a spokesman said the intellectual property firm had no comment. Mahn also declined to comment, saying, "That's a matter for the attorneys, I just work here."
Aliph's lawyers say that Fish's behavior is condemned by the so-called "hot potato doctrine," which frowns on a law firm creating a conflict so it can drop a smaller client for a more lucrative one.
As part of the engagement letter, Fish did have a prospective conflict waiver, stating, "In the past, when we have been retained for regulatory work only, we have made it an express condition of our representation that the firm not be conflicted from taking any intellectual property work that might otherwise be adverse to our clients."
In a letter to Aliph requesting a waiver, Mahn also said that an ethical wall would be constructed between the regulatory lawyers and the lawyers working on the litigation.
Aliph's lawyers say the waiver in the engagement letter is too broad and doesn't provide the informed consent that is required by the courts.
