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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.”

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