Thank you for sharing!

Your article was successfully shared with the contacts you provided.
Scott Rothenberger was changing hats so fast he felt like a three-headed man. The 42-year-old partner in Minneapolis’ Dorsey & Whitney was advising a client on a case in Ecuador. Not only was he functioning as the defense counsel, but he was also the court-appointed expert on both U.S. patent law and the technology under review. It was a situation that couldn’t happen in the U.S., says professor Thomas Andrews, who teaches a professional responsibility course at the University of Washington Law School. “A lawyer is not supposed to be a witness and an advocate in the same case,” he says. But when in Ecuador … . Rothenberger’s participation in the case was thoroughly vetted by Dorsey’s ethics partner, William Wernz. “He said to abide by Ecuadorian rules,” says Rothenberger. Rothenberger is defending Amanco Holdings Inc., a Swiss-owned company headquartered in the British Virgin Islands, in an infringement suit over a method of manufacturing plastic pipe. When the case went to trial before a three-judge tribunal in Ecuador, Rothenberger flew to Quito to assist Falconi Puig, a local firm. “But as soon as the tribunal found out U.S. counsel was involved,” says Rothenberger, “they asked me to come and teach them U.S. patent law and to be an expert in the technology. And they asked me to be an advocate in the case.” The opposing side never objected. The case was argued in December 2001. Rothenberger discovered he won in June. Win or lose, Rothenberger’s multiple roles raised eyebrows. Former Clinton administration U.S. patent commissioner Bruce Lehman says the situation is “bizarre,” and highlights the inadequacy of many courts around the world. Lehman now runs Washington, D.C.-based International Intellectual Property Institute, which sponsors IP education programs for judges and lawyers internationally. Lehman’s successor, Q. Todd Dickinson, is more understanding. Dickinson, now a partner in Washington’s Howrey Simon Arnold & White, says the judges’ action “shows the hunger for knowledge about intellectual-property systems in developing countries. I think they should be commended for trying to educate themselves.”

This content has been archived. It is available exclusively through our partner LexisNexis®.

To view this content, please continue to Lexis Advance®.

Not a Lexis Advance® Subscriber? Subscribe Now

Why am I seeing this?

LexisNexis® is now the exclusive third party online distributor of the broad collection of current and archived versions of ALM's legal news publications. LexisNexis® customers will be able to access and use ALM's content by subscribing to the LexisNexis® services via Lexis Advance®. This includes content from the National Law Journal®, The American Lawyer®, Law Technology News®, The New York Law Journal® and Corporate Counsel®, as well as ALM's other newspapers, directories, legal treatises, published and unpublished court opinions, and other sources of legal information.

ALM's content plays a significant role in your work and research, and now through this alliance LexisNexis® will bring you access to an even more comprehensive collection of legal content.

For questions call 1-877-256-2472 or contact us at [email protected]


ALM Legal Publication Newsletters

Sign Up Today and Never Miss Another Story.

As part of your digital membership, you can sign up for an unlimited number of a wide range of complimentary newsletters. Visit your My Account page to make your selections. Get the timely legal news and critical analysis you cannot afford to miss. Tailored just for you. In your inbox. Every day.

Copyright © 2020 ALM Media Properties, LLC. All Rights Reserved.