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Category Archives: Contract

In-House Patent Lawyers Can Design Around Patents They Wrote For Their Former Employer

In house lawyers, even patent lawyers, can jump to a competitor, as long as they don’t violate duties owed to their former employer/client. Furthermore, patent lawyers are free to conduct for their new employer infringement analyses of patents they wrote for their former employer. That is the holding in a 2016 Massachusetts case, Gillette Co. v. Provost. The court wrote: “It is perfectly lawful for Gillette’s former patent attorney to help a competitor avoid infringing Gillette patents, so long as he does not disclose or use any confidential information obtained from Gillette.”

The lawyer in question worked for a number of years as an in-house patent attorney for Gillette. He then took a job as General Counsel at ShaveLogic (Dollar Shave Club), where his job responsibilities included helping ShaveLogic design around patents he had prosecuted while at Gillette. Gillette sought an injunction preventing him from doing that work on the basis that the lawyer had breached the fiduciary duty a lawyer owes a former client under Massachusetts Rule of Professional Conduct 1.9. The rule prohibits a lawyer from representing a second client in the same or a substantially related matter in which the second client’s interests are materially adverse to the interests of the former client

The court held that the design-around work did not violate the rule because Gillette could not show that it involved misuse of Gillette’s confidential information; the wrong Rule 1.9 is designed to prevent. Patents are pubic documents, and opining on whether a particular product infringes a patent requires nothing more than comparing that product to the public patent. Confidential information could not help. The court explained that if the in-house lawyer’s new job had involved assessing the validity of patents he prosecuted at Gillette, the result might have been different. In that circumstance the lawyer might have confidential information concerning prior art or inventor behavior that would aid his analysis.

Arbitration: Everything You Promised, Nothing You Didn’t

If you agree to arbitrate with a particular arbitrator, but that arbitrator won’t serve, you go to court. That is the teaching of a recent case out of the Second Circuit, Moss v. First Premier Bank. In Deborah Moss’ online contract with her payday lender she agreed to arbitrate any dispute using NAF as the arbitrator. When Moss wanted to bring a claim against the payday lender’s banking partner, NAF could not serve as the arbitrator because NAF had entered into a consent degree with the Minnesota Attorney General prohibiting it from arbitrating consumer disputes. The bank wanted to require Moss to arbitrate before a different arbitrator, reasoning that the parties had agreed to arbitrate, so if the chosen arbitrator wasn’t available, they should pick another. “Not so fast” said the district court, and then the Second Circuit. Moss only agreed to arbitrate with NAF, not anyone else. If NAF is unavailable, she can sue. She can’t be forced to choose someone else. Although there is a general policy favoring arbitration, arbitration agreements are contracts and courts can’t rewrite contracts to change the parties’ agreement. The Second Circuit noted that other Circuits (the Seventh and Third) have reached contrary results.

If you really want to arbitrate regardless of the arbitrator, either don’t identify the arbitrator in the contract or, if you do, agree to choose another if your first choice is unavailable. If you’d rather go to court than pick another arbitrator, specify the arbitrator you want in your contract.

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