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A company called Friskit is asking a federal judge to boot Howrey from a big-ticket patent dispute, saying the firm learned its secrets and then agreed to represent its rival. Friskit Inc. is nearing trial in its lawsuit against RealNetworks, which it has accused of infringing on several patents associated with playing and organizing audio and video content. Represented by Foley & Lardner, Friskit alleged in a May 25 motion that Howrey should be disqualified from representing RealNetworks because Friskit shared confidential strategic information with Howrey in consultations with the firm in January. Friskit, which is based in San Francisco, had used Chicago-based Baniak Pine & Gannon, but that firm dissolved in December. So the company, which has no software products but owns several patents, met with attorneys in Howrey’s East Palo Alto office Jan. 16. According to Friskit’s motion, Howrey told the company that the Friskit/RealNetworks litigation raised no conflicts, and that everything discussed would be considered privileged. But three days later, Howrey partner Robert Taylor e-mailed Friskit’s chief executive to say the firm could not represent the company because it was about to hire a lateral from Seattle-based RealNetworks, the Friskit motion alleged. Taylor wrote that the new lateral’s “insider knowledge of RealNetworks’ IP policies and strategies would make Howrey an easy target for disqualification if [Howrey] were to show up on [Friskit's] side.” David Stewart, RealNetworks’ former deputy general counsel, joined Howrey on April 11. Less than a month later, he announced his intention to represent RealNetworks in the Friskit case, filed in California’s Northern District. Stewart declined to comment on the Friskit motion. But Henry Bunsow, Howrey’s managing partner for its Northern California offices, broadly rejected the claimed conflict.
Attempts to disqualify opposing counsel ‘happens so much that there is some feeling among the IP bar that it’s … overused and abused on some occasions.

William Gallagher Golden Gate University School of Law

“This is just a typical attempt to abuse what is a nonexistent conflict to try to gain some substantive advantage in the litigation by forcing the client to hire counsel that may not be as adept at contesting the case,” Bunsow said. “We intend to strongly contest it.” Howrey’s decision to pass on Friskit as a client had to do with “financial and substantive reasons,” Bunsow said, not conflicts. When asked about the e-mail to Friskit, sent by one of his firm’s own partners, Bunsow said he didn’t “agree” with how it had been characterized in the motion. Bunsow would not discuss the reasons further, but pointed out that the attorneys who consulted with Friskit had never spoken to Stewart about the case. “There was no retainer agreement, there was no confidentiality agreement, and no attorney-client relationship,” Bunsow said. “This is not unlike conversations that happen on a daily basis between lawyers and prospective clients, and if every one of those conversations resulted in a disqualification, how could you ever talk to a client about representation?” Foley & Lardner attorneys who worked on the motion declined to comment, saying Friskit hadn’t cleared them to do so. The dispute highlights the tricky nature of consultations with firms to handle intellectual property litigation, said longtime IP attorney Craig Opperman, a partner with Morgan, Lewis & Bockius. “Think of the practical realities here,” he said. “A client comes to me, they want to engage me as a trial lawyer. I’m in sell mode. What do attorneys do when they’re in sell mode? They think about strategies, they get involved. The danger in doing that is you start to get too much confidential information.” Then, if the client does not hire the firm, the firm might find itself barred from representing another client because it knows too much about the original client, Opperman said. “I’m not suggesting Howrey did anything wrong,” he said. “I’ve got to believe that [the firm] looked at this very, very carefully.” Parties in IP disputes are attempting to disqualify opposing counsel more and more frequently, said William Gallagher, who teaches both intellectual property law and legal ethics at Golden Gate University School of Law. “It happens so much that there is some feeling among the IP bar that it’s being used as a strategic tool � that it’s overused and abused on some occasions,” he said. “Good firms have very systematic practices to make sure they don’t have conflicts.” If Friskit’s allegations are true, “it sounds potentially very serious,” Gallagher said. However, with such allegations, a full picture of the truth won’t emerge until RealNetworks files a response, he said. “The devil’s in the details.” RealNetworks has about 10 more days to file its response, Bunsow said.

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