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Agsaver LLC v. Fmc Corporation

June 9, 2011

AGSAVER LLC, PLAINTIFF,
v.
FMC CORPORATION, DEFENDANT.



The opinion of the court was delivered by: Buckwalter, S.J.

MEMORANDUM

Currently pending before the Court is the Motion of Defendant FMC Corporation for Disqualification of Plaintiff AgSaver LLC's Counsel. For the following reasons, the Motion is denied.

I. FACTUAL HISTORY

A. Basis of the Litigation

According to the facts set forth in the Amended Complaint, Plaintiff AgSaver LLC ("AgSaver") is an Arkansas limited liability corporation holding seven pesticide registrations with the United States Environmental Protection Agency ("EPA"), and with several additional pesticide registration applications pending with the EPA. (Am. Compl. ¶ 2.) Defendant FMC Corporation ("FMC") is a Delaware Corporation that holds over 270 EPA pesticide product registrations and is the assignee of more than 1,000 patents. (Id. ¶ 3.)

Plaintiff alleges generally that Defendant has violated 35 U.S.C. § 292 by marking products it manufactured, distributed, marketed, or sold as being covered by a patent when those products were not actually covered by a valid patent. (Id. ¶ 6.) Specifically, Plaintiff asserts that FMC is the owner of three expired patents for pesticides. The first -- United States Patent No. 4,238,505, issued on December 9, 1980 -- expired on June 25, 1999. (Id. ¶¶ 7-8.) The second -- United States Patent No. 4,405,357, issued on September 20, 1983 -- expired on May 11, 2001. (Id. ¶¶ 9-10.) Finally, the third -- United States Patent No. 4,024,167, issued on May 17, 1977 -- expired on August 13, 1994. (Id. ¶¶ 11-12.) FMC holds registrations from the EPA for multiple products which were at one time covered by the use of these three patents. It marketed such products either under the name "Command" ("Command Line Products" - '357 Patent), the names "Capture," "Brigade," or "Talstar" (collectively, the "CBT Line Products" -- '505 Patent), or "Pounce" or "Dragnet" (collectively the "Pounce/Dragnet" Line Products -- '163 Patent). (Id. ¶¶ 30-36.) For all of these product lines, FMC has allegedly marked, affixed to, or used in advertising -- and continues to do so -- the word "patent" or other words or numbers implying patents. (Id. ¶¶ 31, 33, 36.)

Plaintiff AgSaver sells several products which contain the same active ingredient as, and compete with, FMC's CBT Line Products identified in the Amended Complaint. (Id. ¶¶ 34, 37.) In light of such competition, Plaintiff avers that FMC, a sophisticated pesticide manufacturing company, has continued to mark and advertise its CBT Line Products, its Command Line Products, and its Pounce/Dragnet Line Products with words or numbering indicating that such products are patented with the intent to deceive the public and to deter existing and potential competing registrants from seeking generic registration of products containing the same active ingredients. (Id. ¶¶ 38-40, 42.) In support of this allegation, the Amended Complaint asserts that FMC employs experienced in-house patent counsel who are aware that patents have limited terms generally and who were aware of the terms and expiration dates of the '505, '357, and '163 Patents specifically. (Id. ¶ 41.) Despite knowing that it needed to modify its CBT Line, Command Line, and Pounce/Dragnet Line Product labels and advertising to remove any indicia of patents, Defendant knowingly and intentionally failed to do so. (Id. ¶¶ 55-57.)

Plaintiff initiated the present litigation on February 9, 2011, and filed an Amended Complaint on March 10, 2011. Plaintiff's sole cause of action contends that Defendant violated 35 U.S.C. § 292 by falsely marking, affixing, and/or advertising its CBT Line, Command Line, and Pounce/Dragnet Line Product labels. (Id. ¶¶ 58-81.)

B. Facts Relevant to the Motion for Disqualification

To assist Defendant with the legal regulatory aspects of its pesticides group, Defendant FMC has long retained the law firm of Keller and Heckman LLP ("K&H"). (Decl. of John Cummings ("Cummings Decl.") ¶ 6, Apr. 13, 2011.) K&H provides to FMC "legal representation related broadly to regulation and approval requirements for chemical substances, including substances used in industrial, pesticidal, pharmaceutical end uses and uses related to foods, medical devices and cosmetics . . ." (Id. Ex. B.) The Managing Partner of K&H directly oversaw this pesticide-related work. (Decl. of Telisport W. Putsavage ("Putsavage Decl.") ¶ 9, May 2, 2011.)

Plaintiff's current counsel, Telisport W. Putsavage, was originally counsel to the firm of Wright & Sielaty, P.C., where he worked with regulatory scientists Dr. Robert Butz and Ms. Janine Gydus, and where he represented Plaintiff AgSaver or its principals and related businesses. (Id. ¶ 8; Cummings Decl. ¶ 7.) His work with AgSaver included counseling on various issues related to generic agricultural pesticides. (Id.)

In 2006, however, Mr. Putsavage joined K&H as a partner in the pesticides group. (Putsavage Decl. ¶ 6.) From 2007-2009, he provided legal representation and advice to FMC on certain regulatory matters. (Cummings Decl. ¶ 7.) According to Defendant, Mr. Putsavage directly represented FMC on legal regulatory issues related to FMC chemical products, including the VigorOx line produced by FMC for which FMC sought and gained EPA approval as a pesticide. (Decl. of Luann Maloney ("Maloney Decl.") ¶ 5 & Ex. A, Apr. 12, 2011.) More specifically, Mr. Putsavage provided legal counsel to FMC regarding EPA labeling issues concerning FMC's chemical products, including VigorOx SP-15 and VigorOx 15/23. (Id. ¶ 6 & Ex. A.) Also during that time period, K&H counseled FMC regarding FDA approvals of Spectrum, Blitz, and other FMC chemical products and pesticides. (Id. ¶ 3.) None of the antimicrobial pesticides for which he provided FMC with regulatory advice are at issue in the current litigation. (Putsavage Decl. ¶ 23.)

In July 2009, Mr. Putsavage joined the law firm of Carter Ledyard & Milburn LLP ("CLM") in its Pesticides and Federal Insecticide, Fungicide, and Rodenticide Act ("FIFRA") practice group. (Decl. of Geoffrey A. Zelley ("Zelley Decl.") ¶ 3 & Ex. A. (Apr. 13, 2011).) Also joining him were the two scientists from K&H's pesticides group, Robert Butz and Janine Gydus. (Id.) Acting in his new role as a partner with CLM, Mr. Putsavage brought the present litigation on behalf of Plaintiff AgSaver, setting forth a qui tam action for alleged false patent markings related to three patents concerning FMC Pesticide products.

On April 14, 2011, Defendant moved to disqualify Mr. Putsavage and his firm of CLM as attorneys for Plaintiff. Plaintiff filed a Response in Opposition on May 2, 2011. Defendant then submitted a Reply Brief on May 9, 2011, and Plaintiff answered with a Sur-reply Brief on May 13, 2011. This Motion is now ripe for the Court's consideration.

II. STANDARD FOR A MOTION TO DISQUALIFY COUNSEL

"Federal courts have inherent authority to supervise the conduct of attorneys appearing before them." Henry v. Delaware River Joint Toll Bridge Comm'n, No. CIV.A.00-6415, 2001 WL 1003224, at *1 (E.D. Pa. Aug. 24, 2001). To guide such supervision, the United States District Court for the Eastern District of Pennsylvania has adopted the Pennsylvania Rules of Professional Conduct. See E.D. PA. CIV. R. 83.6, Part IV(B). Under such Rules, one of a court's available tools is the disqualification of counsel. Henry, 2001 WL 1003224, at *1. "Counsel may be disqualified if the Court determines, on the facts of the particular case, that disqualification is an appropriate means of enforcing ...


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