Asyst Technologies, Inc. v. Empak, Inc.

ORDER DISQUALIFYING DEFENSE COUNSEL

May a law firm represent a party challenging the validity of a patent when two of its partners prosecuted the patent for a different client? I conclude it may not and grant plaintiffs motion to disqualify Wilson, Sonsi-ni, Goodrich & Rosati from representing three of the defendants in this action.

Between 1984 and 1988, attorneys Stephen C. Durant and Mark A. Haynes, then employed by the law firm of Fliesler, Dubb, Meyer & Lovejoy, represented plaintiff As-yst Technologies, Inc., in prosecuting and obtaining several patents, including the ’166 and ’421 patents. Thereafter, Durant and Haynes became partners in the law firm of Wilson, Sonsini, Goodrich & Rosatti. On October 28,1996, Asyst, represented by the law firm of Cooley Godward, filed this complaint alleging that defendants Empak, Inc., Bmt-rak, Inc., Jenoptik, A.G., and Jenoptik Infab, Inc., infringed the ’166 and ’421 patents. On December 13, 1996, three of the defendants, represented by the New York firm of McAu-lay Fisher Nissen Goldberg & Kiel and by Wilson Sonsini filed an answer and counterclaims that, in part, challenge the validity of the patents which Durant and Haynes helped…