BOSTON SCIENTFIC CORPORATION et al v. MIROWSKI FAMILY VENTURES, LLC

Filing 120

ENTRY - ON DEFENDANTS MOTION TO DISQUALIFY COUNSEL; The Defendants motion is now ripe and the Court, being duly advised, DENIES the motion. The Plaintiff's have filed a motion for leave to file a surreply in opposition to the Defendants motio n (docket #71). The motion is well-taken and is hereby GRANTED. The Plaintiffs' surreply is deemed filed as of the date of this entry. The Defendant has filed a motion for oral argument on the instant motion (docket #48)the motion is DENIED. *** SEE ORDER FOR FURTHUR INFORMATION ***. Signed by Judge William T. Lawrence on 6/1/2012. (CKM)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF INDIANA
INDIANAPOLIS DIVISION
BOSTON SCIENTIFIC
CORPORATION, et al.,
Plaintiffs,
vs.
MIROWSKI FAMILY
VENTURES, LLC,
Defendant.

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Cause No. 1:11-cv-736-WTL-DKL

ENTRY ON DEFENDANT’S MOTION TO DISQUALIFY COUNSEL
This cause is before the Court on the Defendant’s motion to disqualify Finnegan
Henderson Farabow Garrett & Dunner as counsel to Plaintiffs/Counterclaim Defendants (docket
#46).1 The Defendant’s motion is now ripe, and the Court, being duly advised, DENIES the
motion for the reasons set forth below.
I. STANDARD
Disqualification is a drastic measure courts should hesitate to impose except when
absolutely necessary, because it deprives a party of the representation of their choosing. Owen v.
Wangerin, 985 F.2d 312, 317 (7th Cir.1993); Freeman v. Chicago Musical Instrument Co., 689
F.2d 715, 721-22 (7th Cir.1982). Accordingly, motions to disqualify “should be viewed with
extreme caution for they can be misused as techniques of harassment.” Id. At the same time, this
Court has “broad discretion in determining whether disqualification is required in a particular

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The Plaintiffs have filed a motion for leave to file a surreply in opposition to the
Defendant’s motion (docket #71). The motion is well-taken and is hereby GRANTED. The
Plaintiffs’ surreply is deemed filed as of the date of this entry.
The Defendant has filed a motion for oral argument on the instant motion (docket #48).
The motion is DENIED.

case.” Whiting Corp. v. White Mach. Corp., 567 F.2d 713, 715 (7th Cir. 1977). “[T]he burden is
on the moving party to show the facts requiring disqualification.”Bogosian v. Bd. of Educ. of
Cmty. Unit Sch. Dist. 200, 95 F. Supp. 2d 874, 875 (N.D. Ill. 2000).
II. FACTUAL BACKGROUND
This case concerns the technical contours of the relationship between patent owners,
licensees, and their agents as they are represented before the United States Patent and Trademark
Office (“PTO”). Specifically, patent owner and Defendant Mirowski Family Ventures, LLC
(“MFV”) argues that attorneys paid by its exclusive licensee, Plaintiffs Boston Scientific,
Cardiac Pacemakers, Inc., Guidant LLC, and Guidant Sales LLC (“Guidant”), formed an
attorney-client relationship with MFV when these attorneys litigated a patent reissue and a patent
reexamination.
Many years ago, Dr. Mieczyslaw Mirowski invented the implantable cardioverter
defibrillator (“ICD”) and obtain several patents for his invention. In 1973, the Plaintiffs (through
predecessor entities) acquired from Dr. Mirowski an exclusive license to several of those patents
and future inventions. Pursuant to this agreement, Dr. Mirowski “retain[ed] the full right, title
and interest in and to . . . future developments.” However, he was obligated to promptly advise
the Plaintiffs of all future developments and apply for a patent on those developments “in his
own name and through patent counsel mutually agreed upon.” The agreement provided that Dr.
Mirowski controlled the prosecution of each patent and patent application in consultation with
Guidant; however, Guidant was obligated to pay “all costs and expenses relating to the filing,
prosecution, grant and maintenance of any application” for a patent on future developments.
Similar terms are found in the parties’ amended and restated license agreement dated January 28,

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2004. Of relevance to this case are two patents prosecuted and patented following the 1973
agreement and pursuant to its terms.
A. ’288 Patent
The law firm of Fleit, Jacobson, Cohn & Price (“Fleit Jacobson”) prosecuted the
application of U.S. Patent No. 4,407,288 (the “’288 patent”). Martin Fleit, an attorney with Fleit
Jacobson, testified that he prosecuted the application, which led to issuance of the ’288 patent
on October 4, 1983.
On October 26, 1998, in conjunction with litigation concerning the ’288 patent, a
competitor filed a request for reexamination of the ’288 patent. At that time, the ’288 patent was
owned by Anna Mirowksi, the widow of Dr. Mirowski, and exclusively licensed to Plaintiff
Guidant. Attorney Fleit performed some initial work on the reexamination. During this time,
Guidant retained the law firm of Finnegan, Henderson, Farabow, Garrett & Dunner (“Finnegan”)
to serve as counsel during the reexamination. On September 27, 1999, Mirowski family general
counsel Sidney Silver instructed Fleit that Finnegan lawyers J. Michael Jakes and Kara F. Stoll
had been selected to prosecute the ongoing reexamination of the ’288 patent. Fleit then granted
powers of attorney on behalf of Anna Mirowski to Jakes and Stoll to serve as “associate
attorneys” during the reexamination proceedings. The power of attorney directed that all future
correspondence should be sent to Finnegan.
After filing the power of attorney, Jakes corresponded regularly with the PTO on
behalf of the “Patent Owner,”Anna Mirowski. From October 1999 through May 4, 2000, when
the reexamination process was completed, Jakes defended the validity of the existing ’288 claims
and drafted and proposed new claims. Jakes made representations that he represented the “Patent

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Owner,” for example: “Patent Owner recently hired new counsel to prosecute the patent in this
reexamination proceeding, as evidenced by the Associate Power of Attorney filed concurrently
with this request [appointing Jakes].” Jakes and Stoll repeatedly corresponded with the PTO on
behalf of the “Patent Owner.” Jakes and Stoll also appeared for an interview with the PTO patent
examiner on November 9, 1999, as the “owner’s representative.”
B. ’119 Patent
Another of Dr. Mirowski’s patents, U.S. Patent No. 4,928,688, was originally prosecuted
by Fleit Jacobson and the law firm of Haugen & Nikolai. On May 29, 1992, a request for reissue
of the patent application was filed. As with the ’288 reexamination proceedings, Guidant
retained Finnegan to serve as counsel during the reissue proceedings in September 2000. One
year later, in September 2001, right and title to the patents was transferred by Anna Mirowski to
Mirowski Family Ventures, LLC (“MFV”). On October 18, 2001, Silver again directed Fleit to
grant powers of attorney on behalf of MFV to Jakes and Stoll to serve as “associate attorneys”
during the reissue proceedings. The power of attorney also directed that all future
correspondence should be sent to Finnegan. This patent was ultimately reissued as RE38,119
(the “’119 patent”) on May 20, 2003.
C. Finnegan Attorneys’ Relationship with the Parties
Attorney Martin Fleit testified that, during his work related to the ’119 and ’288 patents,
it was “always crystal clear” that he represented and maintained an attorney-client relationship
with Dr. Mirowksi, Anna Mirowski, and/or MFV. Fleit explained that, while expenses associated
with the prosecution of ’119 and ’288 patents were paid by the licensee according to the license
agreement and “licensees were cooperated with to the greatest extent possible,” his client was

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Dr. Mirowski, Anna Mirowski, or MFV. During work on the ’288 and ’119 patents, Fleit was
never given the authority to act on behalf of the licensee. According to Fleit, the powers of
attorney he executed enabled the Finnegan lawyers to “step into his shoes” and act directly on
behalf of the patent owner at the time. Fleit also believed that his communications with Finnegan
lawyers would be entitled to all the rights and protections afforded by the relationship created by
the powers of attorney and by the attorney-client relationship that each held with the respective
patent owners. Neither Jakes nor Stoll ever advised Fleit that Finnegan attorneys did not
represent the patent owners. Similarly, Silver testified that he believed that Finnegan attorneys
represented Mirowski and the Plaintiffs when it prosecuted the patents at issue. He also testified
that he considered Kara Stoll the attorney for Mirowski for the purposes of patent prosecution.
During the ’288 reexamination and the ’119 reissue proceedings, Finnegan attorneys took
instructions from Guidant, received payment from Guidant, and had communications with
Guidant that were not sent to Mirowski. All of Finnegan’s billing entries indicate that their client
was “Cardiac Pacemakers,” a subsidiary of Guidant. Stoll testified that she did not recall any
officer or representative from MFV or its predecessors-in-interest attempting to give Finnegan
attorneys instruction on how to handle those matters. Similarly, Finnegan attorneys did not
solicit instructions from Mirowski on those matters. While Finnegan attorneys understood that
Guidant and Mirowski had an identity of interests in the PTO, they believed that Guidant, not
Mirowski, was their client.
III. DISCUSSION
The Defendant argues that Finnegan attorneys have a conflict of interest and must be
disqualified. The Indiana Rules of Professional Conduct and the Seventh Circuit Standards of

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Professional Conduct govern the conduct of those practicing before this Court. S.D. Ind. L.R. 853(e). Under the Indiana Rules, “a lawyer who has formerly represented a client in a matter shall
not thereafter represent another person in the same or a substantially related matter in which that
person’s interests are materially adverse to the interests of the former client unless the former
client gives informed consent, confirmed in writing.” Ind. R. Prof’l Cond. 1.9(a). According to
the Defendant, Finnegan attorneys must be disqualified not only because it previously
represented the Defendant on a substantially related matter, but also because, even if there is no
prior relationship, the appearance of impropriety created by Finnegan’s representation of the
Plaintiffs requires disqualification. The Court addresses each argument below.
A. Substantial Relationship Test
When determining whether an attorney has a conflict of interest with a former client, the
court must determine whether a substantial relationship exists between the subject matter of the
prior and present representations. This so-called “substantial relationship” test has three steps:
(1) the judge must make a factual reconstruction of the scope of the prior legal representation;
(2) it must be determined whether it is reasonable to infer that the confidential information
allegedly given would have been given to a lawyer representing a client in those matters;2 and

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While the Defendant asserts that the entire inquiry into conflicts of interest must be
resolved in favor of lingering doubt, only the inquiry into whether the presumption that
confidential information was shared was sufficiently rebutted requires the resolution of doubts in
favor of disqualification. LaSalle Nat’l Bank v. Lake Co., 703 F.2d 252, 255-56 (7th Cir. 1983)
(“Having concluded . . . that a substantial relationship existed between the subjects of the past
and present representation, we are entitled to presume that confidential information was received
during the prior representation, but must still decide whether that presumption has been rebutted
on the facts of this case. . . . A very strict standard of proof must be applied to the rebuttal of this
presumption, however; and any doubts as to the existence of an asserted conflict of interest must
be resolved in favor of disqualification.”).
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(3) it must be determined whether that information is relevant to the issues raised in the litigation
pending against the former client. LaSalle Nat’l Bank v. Lake Co., 703 F.2d 252, 255-56 (7th Cir.
1983).
Step one of the test – reconstruction of the scope of the prior legal representation –
presupposes the existence of a representation, but it goes without saying that the Court can not
reconstruct the scope of the prior representation where no attorney-client relationship existed. Cf.
Telectronics Proprietary, Ltd. v. Medtronic, Inc., 836 F.2d 1332, 1336 (Fed. Cir. 1988); Hacker
v. Holland, 570 N.E.2d 951, 955 (Ind. Ct. App. 1991) (explaining that, in an attorney malpractice
action, the “plaintiff must first prove the existence of an attorney-client relationship”). While the
existence of an attorney-client relationship is often clear and undisputed, it is not so here. The
Court thus turns to this analysis first.
Under Indiana law,3 “[a]n attorney-client relationship need not be express, but may be
implied by the conduct of the parties.” Matter of Anonymous, 655 N.E.2d 67, 70 (Ind. 1995).
“Attorney-client relationships have been implied where a person seeks advice or assistance from

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The Plaintiffs argue that Federal Circuit law applies, while the Defendant argues that
District of Columbia law applies. Neither is correct; Indiana law governs. Even if an appeal of
this Court’s decision were properly reviewed by the Federal Circuit, “procedural matters that are
not unique to patent issues will be reviewed under the law of the regional circuit court where
appeals from the district court would normally lie.” Sun Studs, Inc. v. Applied Theory Assocs.,
Inc., 772 F.2d 1557, 1566 (Fed. Cir. 1985) (applying Ninth Circuit law to district court orders
disqualifying attorneys). Thus, whether reviewed by the Federal or Seventh Circuit, the
reviewing court will apply Seventh Circuit law. This Court governs the conduct of counsel
before it through the Indiana Rules of Professional Conduct, and an attorney appearing before
this Court could be disqualified if his representation of a client would run afoul of those rules as
interpreted under Indiana law. Whether Finnegan attorneys and the Defendant formed an
attorney-client relationship under District of Columbia law is irrelevant to the question of
whether Finnegan attorneys’ representation of the Plaintiffs before this Court would run afoul of
the law regarding conflicts of interest as it stands in Indiana.
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an attorney, where the advice sought pertains to matters within the attorney’s professional
competence, and where the attorney gives the desired advice or assistance.” Id. “An important
factor is the putative client’s subjective belief that he is consulting a lawyer in his professional
capacity and on his intent to seek professional advice.” Id. However, “[t]he relationship is
consensual, existing only after both attorney and client have consented to its formation.” Hacker,
570 N.E.2d at 955. As a result, a “would-be client’s unilateral belief cannot create an attorneyclient relationship.” Id.
The Defendant argues that Finnegan had an attorney-client relationship with both the
Plaintiffs and Anna Mirowski as executor of Dr. Mirowski’s estate with respect to the ’288
patent and with MFV with respect to the ’119 patent, while the Plaintiffs argue that no attorneyclient relationship existed with respect to either party. According to the Defendant, Finnegan’s
attorney-client relationship with Mirowski and MFV can be derived from the powers of attorney
Fleit executed, Stoll’s testimony in two depositions, and Mirowksi and MFV’s expectations. The
Court disagrees; the evidence the Defendant puts forth is insufficient to establish an attorneyclient relationship.
While the Defendant initially argues that the “powers of attorney created an attorneyclient relationship between Finnegan and the patent owner,” it argues in its reply brief that the
powers of attorney are “evidence of, not the sole basis for, the existence of an attorney-client
relationship.” This concession appears prudent in the light of the cases cited by the Plaintiffs
holding that a power of attorney does not ipso facto create an attorney-client relationship. E.g.,
Sun Studs, Inc. v. Applied Theory Assocs., Inc., 772 F.2d 1557 (Fed Cir. 1985); Levin v. Ripple
Twist Mills, Inc., 416 F. Supp. 876 (E.D. Penn. 1976).Yet the Defendant is correct that nothing

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in the cases cited by the Plaintiffs suggests that a power of attorney cannot be evidence of an
attorney-client relationship. The language of the parties’ 1973 and 2004 licensing agreements
certainly contemplates a relationship that could qualify, as it provides that the licensor “controls”
patent prosecution, which prosecution is effected by attorneys paid by the licensee. One
imagines that the party controlling the prosecution would interact with the attorneys prosecuting
the patent at a level indicative of an attorney-client relationship.4 However, whether such a
relationship could have been formed, and whether it was, are two different questions, and only
the answer to the latter is dispositive here. Accordingly, the Court turns to the other evidence the
Defendant argues establishes an attorney-client relationship.
According to the Defendants, Finnegan’s representations to the PTO that it represented
the “patent owner,” Finnegan’s submission of claims to the PTO on behalf of the Defendant,
Finnegan’s appearance at a PTO interview as “owner’s representative,” and Finnegan attorney
Stoll’s deposition testimony that Finnegan represented the “patent owner” establish an attorneyclient relationship. However, each of these facts is simply a product of the technical relationship
created between Finnegan and the Defendant by virtue of the execution of powers of attorney.
The patent owner or his agent, not a licensee or a licensee’s agent, may apply for reissuance of a
patent, 35 U.S.C. § 251, and the patent owner or his agent, not the licensee or the licensee’s
agent, may participate in the reexamination proceedings, 35 U.S.C. § 304 (“The patent owner
will be given a reasonable period . . . within which he may file a statement on [the new question

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The Plaintiffs argue that the section of the licensing agreement regarding control over
patent prosecutions is not applicable here because the reexamination proceeding is “an adjunct to
the defense of an infringement proceeding,” and thus falls under the section of the licensing
agreement providing that the licensee controls infringement proceedings. If that is the case, there
is an even stronger argument that no attorney-client relationship ever arose.
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of patentability]”).5 Thus, to authorize the attorneys to participate in the proceedings, the
Defendant was required to grant powers of attorney to Finnegan attorneys and the Finnegan
attorneys were in turn entitled to assert that they represented the patent owners. As a result, when
attorney Stoll testified that Finnegan “represented” MFV “as the patent owners,” she was merely
accurately describing the technical relationship created by the execution of the power of
attorney. Similarly, when Finnegan attorneys asserted claims on behalf of the “Patent Owners,”
they was doing the same. However, as explained above, the existence of this technical
relationship is not enough to establish an attorney-client relationship by itself.
Apart from evidence derived from the powers of attorney, the Defendant presents little
evidence to support its contention that it had an attorney-client relationship with Finnegan. In
fact, the only other evidence the Defendant offers is the deposition testimony of Sidney Silver,
Mirowski family counsel, that “there was no question” he considered Attorney Stoll to be
MFV’s attorney for purposes of the patent prosecution.6 While this statement offers at least some
evidence of the would-be client’s intent to form an attorney-client relationship, there is no
evidence whatsoever of Finnegan’s intent to form an attorney-client relationship with Anna
Mirowski or MFV. The Defendant’s argument thus falls far short of establishing the consensual

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The Defendant acknowledges as much: “If, as Finnegan now contends, it was allegedly
not representing Mirowski at that time, it lacked standing to prosecute the ’288 reexamination
and acted improperly.” Def.’s Reply in Supp. of Def.’s Mot. to Disqualify Finnegan 15, Feb. 9,
2012, ECF No. 69.
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The Defendant argues that Fleit’s testimony as to his understanding of his relationship
with Dr. Mirowski, Anna Mirowski, and MFV also serves as evidence supporting the existence
of an attorney-client relationship between Finnegan and the Defendant. However, this evidence
speaks to the wrong relationship, as the Defendant itself recognizes: “The issue is who Finnegan
was representing, not who Mr. Fleit was representing.” Def.’s Reply in Supp. of Def.’s Mot. to
Disqualify Finnegan 6, Feb. 9, 2012, ECF No. 69.
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relationship between the parties that Indiana law requires. Furthermore, the Defendant is silent
on a number of factors that could bear on the analysis, including evidence one would expect to
find when the licensor “controls” the patent prosecution, such as the nature of Finnegan’s
communications and interactions with Anna Mirowski or MFV, including whether Anna
Mirowski or MFV assumed these communications were confidential. See Layne Christensen Co.
v. Purolite Co., 2011 WL 1113543 at *8 (D. Kan. 2011). The Defendant is similarly silent on
other factors, likely because they weigh against an attorney client-relationship, such as the fact
that Finnegan was selected as counsel by Guidant, Guidant paid all of Finnegan’s bills, Guidant
and Finnegan exchanged communications that were not shared with Mirowski or MFV, and
Finnegan neither received nor solicited instructions from Mirowski or MFV about how to handle
the prosecution. While Finnegan may have technically represented the Defendant before the
PTO, this relationship does not qualify as an attorney-client relationship and thus is not a “prior
relationship” under the substantial relationship test. Because no prior relationship existed,
Finnegan’s continued representation of the Plaintiffs will not run afoul of Indiana 1.9(a) and
disqualification is not warranted.
B. Appearance of Impropriety
The Defendant argues in the alternative that, even if no attorney-client relationship
existed between Finnegan and Mirowski or MFV, the Court must disqualify Finnegan to protect
“the integrity of the adversarial process.” According to the Defendant, in the instant case
Finnegan will question the validity of patents it previously represented during reexamination and
reissue proceedings, and this it may not do.

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It is true that permitting a law firm to later question the validity of patents it helped
prosecute would cast a shadow over the integrity of the patent prosecution system. Sun Studs,
772 F.2d at 1567 (“We do not believe any court would hold that it is within the bounds of
propriety to permit a law firm to assist a client in obtaining a patent which was equitably owned
by another and then to lead the attack against the patent’s validity once it is transferred to its
rightful owner.”); Monon Corp. v. Wabash Nat’l Corp., 764 F. Supp. 1320, 1323 (N.D. Ind.
1991) (“Now the same lawyer [who drafted the patent application] goes so far as to claim that
the same invention lacks the conditions of patentability. No matter who the clients were or are;
no what confidential information is possessed by whom, this simple circumstance gives ‘an
unsavory appearance of conflict of interest that is difficult to dispel in the eyes of the law public
– or for that matter the bench and bar.”) (citing Analytica, Inc. v. NPD Research, Inc., 708 F.2d
1263, 1269 (7th Cir. 1983). But see Telectronics, 836 F.2d 1332 (“[A]ttorneys represent clientsnot legal positions or patents. . . . Telectronics does concede that it would be unusual to have
counsel impeaching their own work product. But that is not this case.”). However, the Plaintiffs
do not contest the validity of the patents; rather, the Plaintiffs assert only that “claim 4 of the
’288 patent is invalid to the extent MFV disregards the Federal Circuit’s clear holding on the
scope of claim 4, i.e., that ‘infringement can only occur in cases in which the patented method
[of delivering cardioversion therapy] is practiced.’” In other words, the Plaintiffs may question
the meaning and import of Federal Circuit’s interpretation of the scope of the patent, but will not

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contest the validity of the patent itself. Because Finnegan does not seek to invalidate the patents,
no appearance of impropriety arises.7
C. Attorney Testimony
Finally, the Defendant seeks to disqualify Finnegan on the basis that the Plaintiffs have
not agreed that they will not call any current Finnegan attorney as a witness. “The advocatewitness rule, which articulates the professional impropriety of assuming the dual role of advocate
and witness in a single proceeding, has deep roots in American law. That counsel should avoid
appearing both as advocate and witness except under special circumstances is beyond question.”
United States v. Ewing, 979 F.2d 1234, 1236 (7th Cir. 1992) (citations omitted). However, the
Defendant has not shown that a Finnegan attorney will actually testify as a witness, and for this
reason disqualification is not warranted. Furthermore, if either party later indicates its intent to
call a Finnegan attorney as a witness, the Court has other means of addressing the potential
professional impropriety. See, e.g., Harter v. Univ. of Indianapolis, 5 F. Supp. 2d 657, 667 & n.4
(S.D. Ind. 1998).
IV. CONCLUSION
For the foregoing reasons, the Defendant’s motion to disqualify counsel is DENIED.
SO ORDERED: 06/01/2012
_______________________________
Hon. William T. Lawrence, Judge
United States District Court
Southern District of Indiana

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The Defendant also suggests that the appearance of impropriety arises because Finnegan
will be questioning the “value” and “worth” of the patents. While it may be true that claims
made during reissue and reexamination proceedings affect the value and worth of a patent, the
Defendant has not shown that Finnegan ever made any representations as to the value and worth
of the patents when it litigated the reexamination and reissue proceedings. The Defendant has
therefore not shown that Finnegan will somehow contradict its prior work.
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Copies to all counsel of record via electronic communication

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