W.L. Gore & Associates, Inc. v. International Medical Prosthetics Research Associates, Inc., No. 84-1283

CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit
Writing for the CourtBefore MARKEY, Chief Judge, NIES and NEWMAN; NIES
Citation745 F.2d 1463,223 USPQ 884
Docket NumberNo. 84-1283
Decision Date17 October 1984
PartiesW.L. GORE & ASSOCIATES, INC. and Gore Enterprise Holdings, Inc., Appellees, v. INTERNATIONAL MEDICAL PROSTHETICS RESEARCH ASSOCIATES, INC., a/k/a IMPRA, Inc., Appellant. Appeal

Page 1463

745 F.2d 1463
223 U.S.P.Q. 884
W.L. GORE & ASSOCIATES, INC. and Gore Enterprise Holdings,
Inc., Appellees,
v.
INTERNATIONAL MEDICAL PROSTHETICS RESEARCH ASSOCIATES, INC.,
a/k/a IMPRA, Inc., Appellant.
Appeal No. 84-1283.
United States Court of Appeals,
Federal Circuit.
Oct. 17, 1984.

Page 1464

James F. Polese, Phoenix, Ariz., argued, for appellant. With him on the brief were Gerald D.W. North, Chicago, Ill., and P. Douglas Folk, Phoenix, Ariz.

David H. Pfeffer, New York City, argued, for appellee. With him on the brief were J. Robert Dailey and Janet Dore, New York City, of counsel. John S. Campbell, Newark, Del., of counsel. And Donald W. Bivens, Phoenix, Ariz., of counsel.

Before MARKEY, Chief Judge, NIES and NEWMAN, Circuit Judges.

NIES, Circuit Judge.

This is an appeal from an order of the United States District Court for the District of Arizona, entered May 18, 1984. The district court granted a motion by W.L. Gore and Associates, Inc. and Gore Enterprise Holdings, Inc. (collectively, Gore) to disqualify the law firm of Reed, Goldstein, and Jenkins-Reed, P.C., from representing International Medical Prosthetics Research Associates, Inc. (IMPRA). We affirm.

Background

Gore commenced this action on April 3, 1984, accusing IMPRA of infringing its U.S. Patent No. 4,187,390. 1 Gore is represented in this action by several law firms including Martori, Meyer, Hendricks and Victor.

IMPRA counterclaimed, alleging violation of 15 U.S.C. Secs. 1 and 2 (Sherman Anti-Trust Act) in connection with marketing the subject goods of the parties. IMPRA has been represented by the law firm of McCabe, Polese & Pietzsch, P.A., from at least as early as commencement of this suit through the present time. On April 10, 1984, IMPRA also retained Kenneth Reed and his firm of Reed, Goldstein & Jenkins-Reed, P.C., as co-counsel.

Three days after IMPRA had retained the Reed, Goldstein firm, Gore advised IMPRA orally of its objection to Reed, Goldstein representing IMPRA in this litigation. In a letter of April 18, 1984, Gore formally requested that the firm voluntarily withdraw. The subject motion to disqualify was filed on April 25, 1984, and was granted in an order dated May 18, 1984.

Gore's motion to disqualify the Reed, Goldstein firm charges that both Kenneth Reed and David Goldstein, two of the three name partners in the firm, are tainted from their earlier employment with firms representing Gore against IMPRA in prior related litigation (the '74 action). 2 IMPRA seeks to keep Kenneth Reed and the firm, except for David Goldstein, as its counsel asserting that the record established no conflict as to Reed.

Gore's complaint in the '74 action charged IMPRA and Harold Green, a former Gore employee who is now president of IMPRA, with, inter alia, unfair competition by misappropriation of Gore's trade secrets relating to expanded, porous PTFE,

Page 1465

particularly as applied to artificial vascular grafts.

IMPRA's counterclaim in the '74 action charged Gore with, inter alia, violations of 15 U.S.C. Secs. 1 and 2 in connection with such products.

Gore was represented in the '74 action by the Martori firm (one of its present counsel) and also by Brown, Vlassis & Bain (Brown firm). During the time of the '74 action, Reed was a litigation associate in his third and fourth years with the Martori firm. During the same period Goldstein was a first year associate at the Brown firm.

There is no dispute that, at the Brown firm, Goldstein played an active role in representing Gore against IMPRA. During the pendency of the '74 action, Goldstein corresponded directly with Gore and its counsel. Goldstein's signature appears on requests for production of documents, responses to requests for production, answers to interrogatories, stipulations and notices of deposition. Goldstein also met personally with Gore's in-house and outside patent counsel on at least one occasion. IMPRA seeks to save Reed and the rest of the firm from disqualification through Goldstein by screening Goldstein from this case.

With respect to Reed, IMPRA disputes that Reed was tainted by his former employment. In response to the motion, Reed filed an affidavit averring that while at the Martori firm he never performed any services for Gore. He stated further that he "never saw any files, documents or other materials relating to [the Gore litigation]," nor does he have any "present recollection" of any matters that related to the '74 action.

Reed averred that he was aware of the possible conflict regarding Goldstein even before Reed's first meeting with IMPRA, that Goldstein has had no access to the pertinent files, and that the case has not been discussed in Goldstein's presence.

IMPRA seeks reversal of the disqualification order or, alternatively, seeks remand in view of the failure of the district court to make specific findings in ruling on the motion.

OPINION

In an order dated July 12, 1984 in this appeal 3, this court stated that the appealability of an order disqualifying counsel would be resolved in accordance with the regional circuit law. We noted further that the Ninth Circuit permits the immediate review of the grant of a motion to disqualify counsel. See Gough v. Perkowski, 694 F.2d 1140 (9th Cir.1982). We also stated that this court would review the disqualification order in light of Ninth Circuit precedents. 4

A district court order disqualifying counsel will not be disturbed, under Ninth Circuit precedent, if the record reveals "any sound basis" for the court's action. Paul E. Iacono Structural Engineer, Inc. v. Humphrey, 722 F.2d 435, 438 (9th Cir.), cert. denied, --- U.S. ----, 104 S.Ct. 162, 78 L.Ed.2d 148 (1983); Gas-A-Tron of Arizona v. Union Oil Company of California, 534 F.2d 1322, 1325 (9th Cir.), cert. denied, 429 U.S. 861, 97 S.Ct. 164, 50 L.Ed.2d 139 (1976); cf. In re Coordinated Pretrial Proceedings in Petroleum Products Antitrust...

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13 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
    ...be ``substantially related'' actions. See W.L. Gore & Associates, Inc. v. International Medical Prosthetics Research Associates, Inc., 223 USPQ 884 (Fed. Cir. 1984). When a practitioner has been directly involved in a specific transaction, subsequent representation of other clients with......
  • Part II
    • United States
    • Federal Register December 12, 2003
    • December 12, 2003
    ...be ``substantially related'' actions. See W.L. Gore & Associates, Inc. v. International Medical Prosthetics Research Associates, Inc., 223 USPQ 884 (Fed. Cir. 1984). When a practitioner has been directly involved in a specific transaction, subsequent representation of other clients with......
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    • August 9, 1985
    ...Inc., 739 F.2d 618, 620 (Fed.Cir.1984); W.L. Gore & Associates, Inc. v. International Medical Prosthetics Research Associates, Inc., 745 F.2d 1463, 223 USPQ 884 (Fed.Cir.1984); Panduit Corp. v. All States Plastic Manufacturing Co., 744 F.2d 1564, 223 USPQ 465 (Fed.Cir.1984) (all concerning ......
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    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • November 8, 1984
    ...authority over the district court under 28 U.S.C. Sec. 1294. In W.L. Gore & Assoc., Inc. v. Int'l Med. Prosthetics Research Assoc., Inc., 745 F.2d 1463 (Fed.Cir.1984) the merits panel reviewed and applied Ninth Circuit In Panduit Corp. v. All States Plastic Manufacturing Co., Inc., 744 F.2d......
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11 cases
  • Cable Elec. Products, Inc. v. Genmark, Inc., No. 84-1412
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    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • August 9, 1985
    ...Inc., 739 F.2d 618, 620 (Fed.Cir.1984); W.L. Gore & Associates, Inc. v. International Medical Prosthetics Research Associates, Inc., 745 F.2d 1463, 223 USPQ 884 (Fed.Cir.1984); Panduit Corp. v. All States Plastic Manufacturing Co., 744 F.2d 1564, 223 USPQ 465 (Fed.Cir.1984) (all concerning ......
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    • November 8, 1984
    ...authority over the district court under 28 U.S.C. Sec. 1294. In W.L. Gore & Assoc., Inc. v. Int'l Med. Prosthetics Research Assoc., Inc., 745 F.2d 1463 (Fed.Cir.1984) the merits panel reviewed and applied Ninth Circuit In Panduit Corp. v. All States Plastic Manufacturing Co., Inc., 744 F.2d......
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