District Court Case of Note: Crossroads Systems v. Dot Hill

Firm Which Authored Non‑infringement Opinion Disqualified as Trial Counsel

In Crossroads Systems (Texas) Inc. v. Dot Hill Systems Corp, 82 USPQ2d 1517 (W.D. Tex. 2006), Crossroads brought an action against Dot Hill for patent infringement, for which defendant asserts an invalidity defense.  Dot Hill is represented by three different firms as trial counsel.  Plaintiff filed a Motion to Disqualify Morgan & Finnegan as Trial Counsel for Dot Hill.  In September 9, 2004, the Court held a hearing on Crossroads’ motion to compel discovery, and became aware that certain members of the Morgan & Finnegan law firm provided Dot Hill with non-infringement options related to the accused products at issue.  On motion to disqualify Morgan & Finnegan, the Court held that it would not allow Morgan & Finnegan to serve as trial counsel if the opinions of other members of the firm were offered to support Dot Hill’s defense.  Dot Hill’s counsel stated that it would not call any of the Morgan & Finnegan attorneys to testify at trial, and that in the event it would, Morgan & Finnegan would not represent Dot Hill as trial counsel because there were two other firms representing Dot Hill.  Since September 2004, Dot Hill indicated that it intends to call Morgan & Finnegan counsel to participate at trial; as a result, Crossroads brought a disqualification motion.  At the hearing, Crossroads firmly stated that it would call at least one Morgan & Finnegan attorney to testify at trial; consequently the Court held it will not permit Morgan & Finnegan to serve as counsel in this matter.  Continue reading