## Facts

- CellPro and others, including its former patent counsel Lyon & Lyon, LLP, were defendants in a federal securities-fraud class action brought by shareholders, including Oxford Systems, Inc.
- Becton Dickinson & Co. previously litigated major patent and antitrust disputes against CellPro involving Johns Hopkins University stem-cell patents and related infringement claims.
- In the earlier CellPro-related litigation, Becton retained Perkins Coie as Washington local counsel and used the firm for Washington matters over a multi-year period.
- Separate Delaware patent litigation resulted in findings of willful infringement and bad faith by CellPro and an award of significant fees and costs; Lyon’s patent opinions were central to the bad-faith and fee findings.
- After the Delaware judgment, Becton sought to recover the fee award from Lyon, arguing Lyon’s patent opinions had been misleading.
- In the securities-fraud class action, plaintiffs likewise challenged Lyon’s patent opinions and statements about patent risks as false or misleading.
- Perkins Coie entered the securities-fraud case to represent Lyon; Becton intervened and moved to disqualify Perkins based on Perkins’s prior attorney-client relationship with Becton in the CellPro patent/antitrust disputes.
- Perkins offered declarations from two attorneys asserting they had not received Becton confidences, without accounting for all lawyers who worked on Becton matters.

## Issues

1. Whether Perkins Coie had a continuing attorney-client relationship with Becton when it undertook representation of Lyon in the securities-fraud action.
2. If Becton was a former client, whether Perkins’s prior representation of Becton was substantially related to Perkins’s representation of Lyon such that disqualification was required.
3. Whether Perkins rebutted any presumption that it received material confidential information from Becton during the prior representation.

## Decision

- The court granted Becton’s motion to disqualify Perkins Coie from representing Lyon in the securities-fraud action.
- The court found Becton reasonably viewed Perkins as continuing counsel for Washington and CellPro-related matters, notwithstanding staffing changes.
- The court alternatively held that, even under a former-client framework, the prior and current matters were substantially related because both centered on the same patents, the same litigation history, and the same Lyon patent opinions and related conduct.
- Upon finding a substantial relationship, the court applied a presumption that Perkins received confidential information material to the later matter.
- The court held Perkins’s limited attorney declarations did not rebut the presumption and did not justify continued representation.

## Legal Principles

- A law firm may be disqualified where it represents a party adverse to a current client in the same or a closely connected matter.
- For former-client conflicts, disqualification is warranted when the prior and current representations are substantially related and the new representation is materially adverse to the former client.
- Once a substantial relationship is established, courts presume the lawyer received confidential information; the rule avoids requiring a former client to reveal confidences to prove the conflict.
- Declarations from selected attorneys may be insufficient to rebut the presumption where other firm lawyers could have obtained the former client’s confidential information.
- Disqualification may be ordered to protect client confidences and maintain fairness and public confidence in the judicial process.

## Conclusion

The court disqualified Perkins Coie from representing Lyon because Perkins’s prior work for Becton in CellPro-related patent litigation was ongoing or, at minimum, substantially related to the securities-fraud dispute attacking the same patent opinions and litigation conduct, triggering an unrebutted presumption of access to Becton’s confidential information.


Oxford Sys., Inc. v. CellPro, Inc., 45 F. Supp. 2d 1055 (W.D. Wash. 1999)