NOTE: This order is nonprecedential.
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VALEANT INTERNATIONAL BERMUDA,
Plaintiff- Appellee,
v.
WATSON PHARMACEUTICALS, INC., WATSON
LABORATORIES, INC. - FLORIDA, AND WATSON
PHARMA, INC.,
Defendants-Appellants.
2012-1117, -1307
Appeals from the United States District Court for the
Southern District of Florida in case no. 10·CV·20526,
Chief Judge Federico A. Moreno.
ON MOTION
Before BRYSON, LINN, and REYNA, Circuit Judges.
LINN, Circuit Judge.
ORDER
Valeant International Bermuda moves to disqualify
counsel for Watson Pharmaceuticals, Inc. et. al. and
VALEANT INTERNATIONAL v. WATSON PHAR 2
"renews" its motion. Watson opposes. Valeant replies.
Watson moves for leave to file a sur-reply.
On March 20, 2012, the United States District Court
for the Southern District of Florida ruled on Valeant's
pending motions relating to its request for injunctive
relief and issued a second amended final judgment. On
March 23, 2012, Watson filed its amended notice of ap-
peal.
In this case, Watson was represented by the firm
Kasowitz, Benson, Torres & Friedman LLP in the United
States District Court for the Southern District of Florida
during the trial court proceeding relating to infringement
and validity of Valeant's patents. In unrelated cases,
Valeant asserted the same patents against other compa-
nies, collectively referred to as "Valeant Matters." On
appeal, Kasowitz informed Valeant of Watson's intention
to retain Winston & Strawn for this appeal. Valeant
declined to consent to Winston & Strawn's representation
of Watson and timely informed Watson of its opposition.
Valeant argues that two legal professionals now at
Winston & Strawn had formerly represented Valeant in
the Valeant Matters while at Howrey LLP and obtained
relevant knowledge about the matters. Valeant identifies
these individuals as attorney Georgianna Braden and
paralegal Alissa Hodges. Applying Florida's Rules of
Professional Conduct, Valeant argues that, because Ms.
Braden acquired Valeant's protected information during
her time at Howrey, her new firm, Winston & Strawn
must now be disqualified from representing Watson in
this appeal.
Watson argues that this court should not apply Flor-
ida's Rules of Professional Conduct, but instead only the
ethical code of the United States Court of Appeals for the
Eleventh Circuit. Watson argues that the Eleventh
3 VALEANT INTERNATIONAL v. WATSON PHAR
Circuit allows for ethical screening of otherwise-barred
attorneys in cases like this and that Winston & Strawn
has implemented such a bar.
Because this is a procedural matter that is not unique
to patent law, this court applies the law of the regional
circuit court where appeals from the district court would
normally lie, here the Eleventh Circuit. Sun Studs, Inc. v.
Applied Theory Associates,
772 F.2d 1557 (Fed. Cir. 1985).
The parties dispute whether the regional circuit law in
this case also includes ethical rules applicable to the
underlying district court. In previous unpublished rul-
ings, this court has applied a district court's ethical rules
to determine whether counsel should be disqualified on
appeal. See Touchcom, Inc. v. Bereskin & Parr,
299 Fed.
Appx. 953, 954 (Fed. Cir. 2008); Outside the Box Innova-
tions, LLC v. Travel Candy, Inc., No. 2009-1171,
2010 WL
2160753 (Fed. Cir. May 26, 2010). In any event, there
could be inconsistencies if we did not apply the district
court's ethical rules, for example, if this court's decision
requires a remand to the district court. We determine
that it is appropriate to apply the Florida Bar Rules in
this instance.
Rule 4.1-10 of the Florida Bar Rules of Professional
Conduct states that "[w]hen a lawyer becomes associated
with a firm, the firm may not knowingly represent a
person in the same or substantially related matter in
which that lawyer, or a firm with which the lawyer was
associated, had previously represented a client whose
interests are materially adverse to that person and about
whom the lawyer had acquired information protected by
rules 4-1.6 and 4-1.9(b) and (c) that is material to the
matter."
Watson does not contest that Ms. Braden was previ-
ously associated with Howrey, who represented Valeant
VALEANT INTERNATIONAL v. WATSON PHAR 4
in the related matters. Rather, Watson contests whether
the material that Ms. Braden acquired while at Howrey
would have been protected by the Florida Bar Rules.
Watson argues that any information about Valeant that
Ms. Braden acquired while at Howrey is "generally
known" as defined by Florida Bar Rule 4-1.9(b) and there-
fore not disqualifying.
Watson relies on comments to the rules, which state
that "[i]nformation that has been widely disseminated by
the media to the public, or that typically would be ob-
tained by any reasonably prudent lawyer who had never
represented the former client, should be considered gen-
erally known and ordinarily will not be disqualifying."
Watson argues that any information Ms. Braden acquired
should be considered generally known, largely due to the
fact that the material has been publicly litigated in the
Valeant Matters.
Florida courts have addressed the issue of a newly as-
sociated lawyer abiding by the directives of the Florida
Bar Rules. Namely, a court must first determine whether
the movant has shown that the newly associated lawyer
had acquired confidential information relating to the
claims. Bon Secours-Maria Manor Nursing Care Center,
Inc. u. Seaman,
959 So. 2d 774, 776 (Fla. App. 2 Dist.
2007). Then, the court must determine if the new firm
has overcome this prima facie showing and has proved
that the newly-associated lawyer has "no actual knowl-
edge of any confidential information material to this
case."
Id.
Declarations submitted by both Valeant and Watson
indicate that Ms. Braden had knowledge about confiden-
tial information material to this case. She worked on
validity issues for several asserted patents and reviewed
confidential documents, such as laboratory notebooks.
5 VALEANT INTERNATIONAL v. WATSONPHAR
She prepared for and deposed an expert witness, assisted
the drafting of expert witness reports, and reviewed
Valeant's confidential mediation statement. Whether she
reviewed other confidential and privileged Valeant mate-
rials is disputed, but at a minimum she had access to all
Valeant documents.
Watson argues that this information would be consid-
ered "generally known" because some Valeant matters
have been litigated publicly and some information would
be gleaned through typical discovery procedures. The
comments to the Florida Bar Rules, however, indicate
that while "information acquired in a prior representation
may have been rendered obsolete by the passage of time,"
"knowledge of specific facts gained in a prior representa-
tion that are relevant to the matter in question ordinarily
will preclude such a representation." Florida Bar Rule 1-
9, cmt. Watson has not convinced us that confidential
matters became publicly known, nor have the declarations
submitted by Watson overcome the prima facie showing
that Ms. Braden had knowledge of at least some confiden-
tial information material to this case. Because Ms.
Braden is otherwise prohibited from representing Watson,
her new firm is likewise prohibited. See Edward J. De-
Bartolo Corp. v. Petrin,
516 So. 2d 6, 6-7 (Fla. 5th Dist.
Ct. App. 1987).
Accordingly,
IT Is ORDERED THAT:
(1) The motion to disqualify counsel is granted.
Winston & Strawn must withdraw from representation in
this appeal. A new principal attorney must enter an
appearance for Watson within 30 days of the date of this
order. Watson's opening brief is due within 75 days of the
date of this order.
VALEANTINTERNATIONALv.WATSONPHAR 6
(2) The motion for leave to file a sur-reply is granted.
FOR THE COURT
DEC 26 L011 lsi Jan Horbaly
Date Jan Horbaly
Clerk
cc: Theresa Marie Gillis, Esq.
James F. Hurst, Esq.
COURf``EALS
u.s.THE FEDERAl. r.!RCUlTFOR
s24
DEC 26 Z01Z
JANHORBAlY
CLERK
