In Re University of South Florida Board of Trustees , 455 F. App'x 988 ( 2012 )

United States Court of AppeaIs
for the Federal Circuit
IN RE UNIVERSITY OF SOUTH FLORIDA BOARD
OF TRUSTEES, 4
Petiti0n,er.
Miscellaneous Docket No. 111
On Petition for Writ of Mandamus to the United
States District Court for the Eastern District of Pennsyl-
vania in case no. 10-CV-6908, Judge 'l‘im0thy J. Savage.
ON PETITION
Before NEWMAN, L1NN, and REYNA, Circuit Judges.
LINN, Circuit Judge.
0 R D E R
The University of South Florida Board of Trustees
(USF) petitions for a writ of mandamus to direct the
United States District Court for the Eastern District of
Pennsylvania to vacate its order denying the law firm of
Bryan Cave, LLP’s (B1yan Cave) motion to withdraw as
counsel for the Alzheimer’s Institute of America, lnc.
(AIA). Bryan Cave responds. AIA opposes USF replies
On N0ve1nber 24, 2010, AIA, represented by Bryan
Cave, filed a complaint against Avid Radi0phar1naceuti-
IN RE UNIV SOUTH FLORlDA 2
cals and The Trustees of the University of Pennsylvani.a
(Avid), alleging infringement of its patents involving
technology related to A1zhei1ner’s Disease known as the
"Swedish mutation.” AIA asserted it was assigned the
rights to the patents by Michael Mullan, who discovered
the Swedish mutation while employed by USF. During
the course of proceedings Avid asserted that AIA lacked
standing to bring the suit because the patents in question
were properly owned by USF. In an August 31, 2011
opinion, the district court found that pursuant to Florida
law, the patents were owned by USF because 'Mullan was
employed by USF at the time the invention behind the
patents was conceived, and because the invention was in
the field or discipline of Mullan’s employment The
district court further found that there were contested
material facts regarding whether USF had waived its
ownership rights in the invention. The district court then
ordered a trial on the waiver issue, and on whether Mul-
lan was the sole inventor. USF then moved to intervene,
which the district court granted, but only as to the issue
of whether or not it waived its rights in the Mullan’s
invention.
On September 23, 2011, Bryan Cave informed USF
that it had represented, and was currently representing,
USF in unrelated patent prosecution and licensing pro-
ceedings. Bryan Cave further informed USF that, pursu-
ant to the rules of professional conduct of California,
where the Bryan Cave attorney was licensed, Bryan Cave
could not represent AIA unless USF provided its informed
consent. USF refused to give consent Subsequently,
Bryan Cave moved to withdraw as counsel for AIA, which
AIA opposed through separate counsel. After conducting
an evidentiary hearing, on November 1, 2011, the district
court denied the motion to withdraw. On November 17,
2011, the district court denied USF’s motion for certifica-
tion pursuant to 28 U.S.C. § 1292(b).
3 IN RE UNIV SOUTH FLORlDA
On December 7, 2011, the district court issued a
memorandum opinion explaining its denial of Bryan
Cave’s motion to withdraw. Determining that Pennsyl-
vania Rules of Professional Conduct were app1icable, the
district court found that, under the Pennsylvania rules,
Bryan Cave was prohibited from representing AIA be-
cause of its concurrent conflict of interest due to its repre-
sentation of USF in a separate matter and the refusal by
USF to give consent to Bryan Cave’s representation of
AIA. However, the district court also noted that, under
the ru1es, Bryan Cave could still represent AIA if ordered
by the court.
In ultimately deciding to deny Bryan Cave’s motion to
withdraw, the district court weighed three factors to
determine whether good cause existed to permit the
withdrawal. Specifically, the district court considered the
potential prejudice that the withdrawal would cause to
the clients, lawyers, and other parties to the suit, the
delay to the proceedings, and the harm to the administra-
tion of justice. In considering the factors, the district
court first found that AIA would be prejudiced by Bryan
Cave’s withdrawal because Bryan Cave had served as
AIA’s counsel over the last two and half years, had spent
a significant amount of time on AIA’s case, and that it
would be extremely difficult for AlA to find replacement
counsel, which would also result in an inordinate expense
for A_l_A. In contrast, the district court noted that USF
conceded that Bryan Cave’s representation of USF is
unrelated to Bryan Cave’s representation of AIA and that
it could not identify any material harm that it had suf-
fered or would suffer if Bryan Cave continued to represent
AIA in the current action. The district also noted that
USF stipulated that Bryan Cave had not and would not
receive any confidential information from USF that would
be relevant in the current action. Next, the district court
found that there would be significant delay if AIA was
IN RE UNIV SOUTH FLORIDA 4
required to find new counsel, because it would take new
counsel many weeks if not months to become familiar
with the case and to prepare for trial due to the complex-
ity of the science and the extensive discovery involved in
the case. Finally, the district court found that allowing
Bryan Cave to withdraw would harm the administration
of justice because it would disrupt the flow of the litiga-
tion by causing delay which would affect pending related
cases in other jurisdictions Based on its weighing of the
factors, the district court found that Bryan Cave could
continue to represent AIA, at least through the trial on
the waiver issue.
The remedy of mandamus is available in extraordi-
nary situations to correct a clear abuse of discretion or
usurpation of judicial power. In re Calmar, In.c., 854 F.2d
461, 464 (Fed. Cir. 1988). This court has thus held that a
party seeking a writ bears the burden of proving that it
has no other means of obtaining the relief des`ired1, Mal-
lard u. U.S. Dist. C0urt, 490 U.S. 296, 309 (1989), and
that the right to issuance of the writ is “clear and indis-
putable,” Allied Chem. C'0rp. u. Daiflon, In,c., 449 U.S. 33,
35 (1980). A request for mandamus relief is determined
under Federal Circuit law, except to the extent that
underlying procedural issues may be governed by the law
of the regional circuit, which in this case is the law of the
Third Circuit. In re Pioneer Hi-Bred Int’l, In,c., 238 F.3d
1370, 1374 (Fed. Cir. 2001). Under Third Circuit juris-
prudence, “[t]he district court’s power to disqualify an
attorney derives from its inherent authority to supervise
the professional conduct of attorneys appearing before it. .
1 AIA contends that the petition must be denied be-
cause USF has other means of obtaining the relief de-
sired. We disagree Orders involving the disqualiHcation
of counsel can be remedied through a writ of mandamus.
See In. re Shared Memory Graphics, LLC, 659 F.3d 1336,
1340 (Fed. Cir. 2011).
5 IN RE UNIV SOUTH FLORIDA
. . As a general rule, the exercise of this authority is
committed to the sound discretion of the district court and
will be overturned on appeal only for an abuse of discre-
tion." Unt`ted States v. Miller, 624 F.2d 1198, 1201 (3rd
Cir. 1980). I-n the Eastern District of Pennsylvania, the
court has adopted the Pennsylvania Rules of Professional
Conduct to supervise the professional conduct of attorneys
appearing before it. See E.D. Pa. Civ. R. 83.6, Part IV(B).
USF argues that under both California and Pennsyl-
vania Rules of Professional Conduct, the district court
abused its discretion in refusing to allow Bryan Cave to
withdraw as counsel for AIA. We disagree.
As an initial matter, we conclude that the district
court was correct in only applying the Pennsylvania R`ules
of Professional Conduct Under Pennsylvania Rule 8.5, in
determining the choice of law that should be applied with
respect to attorney conduct, “for conduct in_connection
with a matter pending before a tribunal, the rules of the
jurisdiction in which the tribunal sits shall be applied,
unless the rules of the tribunal provide otherwise." The
California rules also support the district court’s determi-
nation that Pennsylvania rules should apply in this case.
California Rule 1-100(D) states that California rules will
apply to its members in and outside California "except as
members lawfully practicing outside this state may be
specifically required by a jurisdiction in which they are
practicing to follow rules of professional conduct different
from these rules." Therefore, as in this case, where law-
yers licensed in California practice in the Eastern District
of Pennsylvania, Pennsylvania rules govern their conduct.
See also fiction Air Freight, Inc. v. Pilot Air Freight Corp.,
769 F. Supp. 899, 902 (E.D. Pa. 1991) (finding Pennsyl-
vania rules govern California lawyers’ conduct when
practicing in the Eastern District).
ln the Eastern District of Pennsylvania, even if a
court finds that counsel has violated the Pennsylvania
IN RE UNIV SOUTH FLORIDA 6
Rules of Professional Conduct, disqualification is not
mandatory, but within the sound discretion of the district
court. See Granberry v. Byrne, 2011 WL 4852463, *2
(E.D. Pa. Oct. 13, 2011). “Counsei may be disqualified if
the Court determines, on the facts of the particular case,
that disqualification is an appropriate means of enforcing
the applicable disciplinary rule, given the ends that the
disciplinary rule is designed to serve." Mil£er at 1201.
"When determining whether disqualification is appropri-
ate, a court must also consider ‘countervailing policies,
such as permitting a litigant to retain his chosen counsel
and permitting attorneys to practice without excessive
restrictions.’” Grcmberry, at *2 (internal citations omit-
ted).
We cannot conclude that USF established a clear and
indisputable right to have Bryan Cave disqualified as
counsel for AlA. in this case, the district court found that
AlA would be prejudiced by the withdrawal of Bryan Cave
because of their close working relationship and because it
would be extremely difficult to find new counsel, resulting
in significant added time and expense. At the same time,
the district court found, and USF conceded, that it would
not suffer any specific or material harm if Bryan Cave
continued to represent AIA, and that Bryan Cave did not
receive any confidential information from USF related to
the current action. The district court also found that
there would be a significant delay in proceedings if AIA
were required to obtain new counsel. Under these cir-
cumstances, we cannot say that USF has met its burden
of establishing a clear and indisputable right to manda-
mus relief.
Accordingly,
I'l‘ 18 ORDERED THAT:
The petition for writ of mandamus is denied.
7
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FoR THE CoURT
JAN 12 2012
/s/ J an Horbaly
J an Horbaly
Clerk
Date
Steven B. Kelber, Esq.
Peter C. Buckley, Esq.
K. Lee Marshall, Esq.
Clerk, United States District Court For The Eastern
strict Of Pennsylvania
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JAN '| 2 2012
HORBAlV
JANCLERK