Henry Filters, Inc. v. Peabody Barnes, Inc., No. 91WD114

CourtUnited States Court of Appeals (Ohio)
Writing for the CourtSHERCK; At a pretrial conference
Citation611 N.E.2d 873,82 Ohio App.3d 255
Docket NumberNo. 91WD114
Decision Date04 September 1992
PartiesHENRY FILTERS, INC., Appellant, v. PEABODY BARNES, INC., Appellee.

Page 255

82 Ohio App.3d 255
611 N.E.2d 873
HENRY FILTERS, INC., Appellant,
v.
PEABODY BARNES, INC., Appellee.
No. 91WD114.
Court of Appeals of Ohio, Sixth District, Wood County.
Decided Sept. 4, 1992.

[611 N.E.2d 874]

Page 257

Drew A. Hanna, Bowling Green, for appellant.

Thomas W. Mack, Cincinnati, Martin Kimel, Washington, DC, and Daniel T. Spitler, Bowling Green, for appellee.

Page 258

SHERCK, Judge.

This is an appeal from the order of the Wood County Court of Common Pleas disqualifying the law firm of Brooks and Kushman from representing appellant, Henry Filters, Inc. Because we find that substantial evidence supports the conclusion that appellant's attorneys, Brooks and Kushman, had an existing attorney-client relationship with appellee when this litigation commenced, we affirm the order of the trial court.

Appellee, Peabody Barnes, Inc., f.k.a. Barnes Pump, is in the business of supplying motors and pumps for various uses. Appellant, Henry Filters, Inc., is in the business of manufacturing machine tool coolant filtration and recovery systems which employ pumps and motors such as those supplied by appellee. In May 1988, appellant's president, Stephen McEwen, began discussions with appellee's chief engineer concerning the possibility of the companies' entering into a project for the purpose of developing a unique pump to be known as the "Henry pump." In September 1988, appellant ordered from appellee a prototype of the submersible seventy-five horsepower motor to be used in the Henry pump.

In November 1988, appellant and appellee tested the Henry pump prototype. The prototype incorporated the motor produced by appellee. In the course of the testing, engineers from appellant and appellee discovered that a certain bearing arrangement resulted in improved motor cooling. Both parties felt that the improvement was significant; as a result, the companies decided to seek a joint patent on the improved design.

Appellant and appellee decided to work together in the preparation and prosecution of the joint patent application. The parties agreed that appellant's counsel, Brooks and Kushman, would prepare and prosecute the application. Appellee agreed to reimburse [611 N.E.2d 875] appellant one half the cost of seeking the patent.

During the contractual negotiations which took place concerning the sharing of the invention's benefits, each party was represented by separate counsel; appellant was represented by Brooks and Kushman, while appellee was represented by other counsel.

In the course of the preparation of the patent application, an attorney from Brooks and Kushman consulted with engineers from both appellant and appellee. Among the various documents associated with the patent application was a declaration form prepared by Brooks and Kushman. That document, signed by both parties, included the statement: "I hereby appoint the following attorney(s) and/or agents to prosecute this application and to transact all business in the Patent and Trademark Office connected therewith."

Page 259

002cents= That clause then listed members of the firm of Brooks and Kushman. Thus, appellee, on a form supplied by Brooks and Kushman, expressly appointed Brooks and Kushman as its attorney to prosecute the patent application.

During the preparation of the patent application, employees of appellee gave extensive information to Brooks and Kushman that appellee considered confidential. Appellee's engineer was later to testify that, at the time and although it was not discussed, he had no objection to sharing the information with appellant. It is clear, however, that appellee expected that Brooks and Kushman would not use the information to appellee's detriment.

In January 1991, Brooks and Kushman abandoned the patent application after the Patent Office determined that the application contained nothing new or patentable. However, Brooks and Kushman never notified appellee that the application was no longer being pursued.

The present lawsuit commenced three months prior to Brooks and Kushman's abandonment of the patent application. On September 28, 1990, appellant filed suit against appellee, alleging that the motors and pump assemblies sold by appellee to appellant were defective goods. The alleged defective goods incorporated the devices that were described in the patent application.

On May 13, 1991, appellee filed its motion to disqualify appellant's counsel, Brooks and Kushman. Appellant opposed the motion. The trial court, Judge Donald DeCessna, heard oral arguments and ordered additional briefing. Shortly thereafter, Judge DeCessna recused himself from the case due to a potential conflict of interest, and Judge Randall L. Basinger assumed responsibility for the litigation.

At a pretrial conference, Judge Basinger invited even more briefing of the issues. The parties declined, indicating that the motion was ripe for decision. Accordingly, on October 29, 1991, the trial court made extensive findings of fact and granted the motion to disqualify Brooks and Kushman. Appellant filed this timely appeal, asserting the following sole...

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33 practice notes
  • Practice and procedure: Patent and trademark cases rules of practice; representation of others before Patent and Trademark Office,
    • United States
    • Federal Register December 12, 2003
    • December 12, 2003
    ...each applicant would benefit directly from successful prosecution of the application. See Henry Filters, Inc. v. Peabody Barnes, Inc., 611 N.E.2d 873 (Ohio The scope of a ``matter'' for purposes of Sec. 11.109 may depend on the facts of a particular situation or transaction. The practitione......
  • Part II
    • United States
    • Federal Register December 12, 2003
    • December 12, 2003
    ...each applicant would benefit directly from successful prosecution of the application. See Henry Filters, Inc. v. Peabody Barnes, Inc., 611 N.E.2d 873 (Ohio The scope of a ``matter'' for purposes of Sec. 11.109 may depend on the facts of a particular situation or transaction. The practitione......
  • John M. Mcguire v. Draper, Hollenbaugh and Briscoe Co., L.P.A., 02-LW-4629
    • United States
    • United States Court of Appeals (Ohio)
    • November 4, 2002
    ...that the attorney would therefore advance the interests of the putative client." Henry Filters, Inc. v. Peabody Barnes, Inc. (1992), 82 Ohio App.3d 255, 261, 611 N.E.2d 873. {¶42} In Landis, the court upheld the trial court's conclusion that no attorney-client relationship existed between ......
  • In re Grand Jury Subpoenas, 2005 Ohio 4607 (OH 8/24/2005), No. 04CA2966.
    • United States
    • United States State Supreme Court of Ohio
    • August 24, 2005
    ...will not be reversed when that determination is supported by substantial evidence." Henry Filters, Inc. v. Peabody Barnes, Inc. (1992), 82 Ohio App.3d 255, 261, 611 N.E.2d 873, citing Jackson v. Johnson (1992), 5 Cal.App.4th 1350, 7 Cal.Rptr.2d 482, and In re Thorup (D.C.App.1983), 461 A.2d......
  • Request a trial to view additional results
31 cases
  • John M. Mcguire v. Draper, Hollenbaugh and Briscoe Co., L.P.A., 02-LW-4629
    • United States
    • United States Court of Appeals (Ohio)
    • November 4, 2002
    ...that the attorney would therefore advance the interests of the putative client." Henry Filters, Inc. v. Peabody Barnes, Inc. (1992), 82 Ohio App.3d 255, 261, 611 N.E.2d 873. {¶42} In Landis, the court upheld the trial court's conclusion that no attorney-client relationship existed between ......
  • In re Grand Jury Subpoenas, 2005 Ohio 4607 (OH 8/24/2005), No. 04CA2966.
    • United States
    • United States State Supreme Court of Ohio
    • August 24, 2005
    ...will not be reversed when that determination is supported by substantial evidence." Henry Filters, Inc. v. Peabody Barnes, Inc. (1992), 82 Ohio App.3d 255, 261, 611 N.E.2d 873, citing Jackson v. Johnson (1992), 5 Cal.App.4th 1350, 7 Cal.Rptr.2d 482, and In re Thorup (D.C.App.1983), 461 A.2d......
  • Davis v. Montenery, No. 06 JE 48.
    • United States
    • United States Court of Appeals (Ohio)
    • November 15, 2007
    ...that the attorney would therefore advance the interests of the putative client." Henry Filters, Inc. v. Peabody Barnes, Inc. (1992), 82 Ohio App.3d 255, 261, 611 N.E.2d 873; see also Hardiman, 100 Ohio St.3d 260, 2003-Ohio-5596, 798 N.E.2d 369, at ¶ 10 ("Thee determination of whether an att......
  • Lillback v. Metro. Life Ins. Co., No. 14085
    • United States
    • United States Court of Appeals (Ohio)
    • March 30, 1994
    ...service. Landis v. Hunt (1992), 80 Ohio App.3d 662, 669, 610 N.E.2d 554, 558; and Henry Filters, Inc. v. Peabody Barnes, Inc. (1992), 82 Ohio App.3d 255, 260, 611 N.E.2d 873, 876. Though the districts of this state do not express the sine qua non of an attorney-client relationship in the sa......
  • Request a trial to view additional results

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