Nasdaq ISE Files Motion to Disqualify Fish & Richardson at PTAB Over Prior Representation
Nasdaq ISE’s motion to disqualify Fish & Richardson was made pursuant to 37 CFR 11.109, which prevents a practitioner from representing a party adverse to a former client in substantially similar proceedings; this duty is imputed to the practitioner’s law firm under 37 CFR 11.110. In its motion, Nasdaq argued that the PTAB should adopt the magistrate judge’s finding that the defense of MIAX, including the CBM reviews challenging the validity of the patents asserted against MIAX, is a collaborative effort and Fish & Richardson should be disqualified because of the conflict of interest. The particular patent-at-issue in this CBM review was filed and prosecuted during the period in which Fish represented Nasdaq. “Because patent-eligibility, this sole issue in this CBMR, is evaluated from the time of invention… the confidential factual information Fish obtained from Nasdaq is material to the issues in this [CBM review],” the motion reads.