Indianapolis, Indiana – In a patent infringement lawsuit pending in the Southern District of Indiana, plaintiff Capital Machine Company, Inc., an Indianapolis-based manufacturer of veneer production equipment, achieved dismissal of opposing party Miller Veneers‘ attorneys based on the law firm’s previous work for Capital on matters “substantially related” to the present one.
Miller Veneers, also of Indianapolis, IN, is a wood veneer manufacturer and past Capital Machine customer accused of infringing several patents covering machinery and methods for more efficiently cutting veneer. Co-Defendant Robert Brand is Capital’s former Vice President of Engineering, and the inventor of the patents at issue. After leaving Capital in 1996, worked for Miller Veneers, where he assisted in designing the allegedly infringing machines.
About a year after the suit was filed, Miller retained the services of Indianapolis-based law firm Barnes & Thornburg LLP (“B&T”). Upon B&T’s appearance in the case, Capital filed an Emergency Motion to Disqualify Counsel to disqualify B&T. This Motion was based on a conflict of interest arising from work that B&T had done for Capital, including providing advice regarding employment Brand’s relationship with Capital.
Under the law of the Seventh Circuit, a lawyer is prohibited from representing a new client who is adverse to a former client in a “substantially related matter.” In granting Capital’s motion top disqualify B&T, Judge Jane E. Magnus-Stinson noted that “Capital had, to varying degrees, used B&T for legal services, including both patent and labor/employment issues since the mid-1980’s” and found that B&T records corroborated in part, and did not refute, Capital’s claims that the current litigation is substantially similar to the prior B&T representation. The Court afforded “significant weight” to evidence that Capital had shared confidential information with B&T lawyers and that B&T provided Capital with, among other things, “[c]ounseling regarding employment matters generally, and specifically, as they relate to: (a) the ownership of inventions; and (b) Capital’s employment relationship with Defendant Robert Brand.”
Note: The patent litigation attorneys of Overhauser Law Offices, the publisher of this site, represented Capital Machine Company in obtaining the disqualification of Barnes & Thornburg. The Case No. is 1:09-cv-00702-JMS-DML, and a copy of the Order is available below.