Robbins & Myers Canada Ltd v. Torque Control Systems Ltd

Robbins & Myers Canada Ltd v. Torque Control Systems Ltd

Everitt and Kvas, through their prior retainer for ABIL in preparing and filing the patent application, likely received confidential information relevant to the validity and scope of the '975 Patent; that duty of loyalty and presumption of confidentiality extends to Robbins as assignee; no adequate safeguards were shown to prevent misuse; therefore Ridout & Maybee LLP (having absorbed those lawyers) is disqualified from acting for the defendants in this proceeding due to the appearance of impropriety and conflict of interest, and Robbins did not waive the conflict by acquiescence or delay.

Citation
2007 FC 957
Parties
Plaintiff (defendant by Counterclaim): Robbins & Myers Canada, Ltd.; Defendant (plaintiff by Counterclaim): Torque Control Systems Ltd.; Defendant (plaintiff by Counterclaim): Andrew Wright
Court
Federal Court
Jurisdiction
Canada
Judgment Date
24 September 2007
Procedural Posture
Patent Infringement / Motion to Disqualify Counsel (pre Trial)
Outcome
Ridout & Maybee LLP disqualified from acting for Torque Control Systems Ltd. and Andrew Wright in respect of this proceeding; no order as to costs; Ridout not disqualified for limited purpose of any appeal.
Legal Topics
Disqualification of Counsel, Solicitor Client Privilege, Fiduciary Duty and Duty of Loyalty, Assignment of Patent Rights, Waiver and Delay
Source Language
English
Intellectual Property Patent Law Conflict of Interest Legal Ethics Professional Responsibility Disqualification of Counsel Solicitor Client Privilege Fiduciary Duty and Duty of Loyalty +2 more

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Parties

Robbins & Myers Canada, Ltd.

Plaintiff (defendant by Counterclaim)

Torque Control Systems Ltd.

Defendant (plaintiff by Counterclaim)

Andrew Wright

Defendant (plaintiff by Counterclaim)

Procedural Posture

Patent Infringement / Motion to Disqualify Counsel (pre Trial)

Legal Issues

  1. 1 Whether a lawyer who prepared and filed a patent application for a party (ABIL) may act for another party seeking to invalidate the resulting patent owned by an assignee (Robbins)
  2. 2 Whether confidential information was imparted to the solicitor during prior retainer and is relevant to current proceedings
  3. 3 Whether the duty of loyalty and conflict rules extend to an assignee of patent rights

Ratio Decidendi

Everitt and Kvas, through their prior retainer for ABIL in preparing and filing the patent application, likely received confidential information relevant to the validity and scope of the '975 Patent; that duty of loyalty and presumption of confidentiality extends to Robbins as assignee; no adequate safeguards were shown to prevent misuse; therefore Ridout & Maybee LLP (having absorbed those lawyers) is disqualified from acting for the defendants in this proceeding due to the appearance of impropriety and conflict of interest, and Robbins did not waive the conflict by acquiescence or delay.

Court Disposition

Ridout & Maybee LLP disqualified from acting for Torque Control Systems Ltd. and Andrew Wright in respect of this proceeding; no order as to costs; Ridout not disqualified for limited purpose of any appeal.

Orders

  • The firm of Ridout & Maybee, LLP is hereby disqualified from acting for the Defendants, Torque Control Systems Ltd. and Andrew Wright, in respect of this proceeding.
  • There shall be no order as to costs on this motion.