American Roller Company v. William D. Budinger, an Individual Appeal of E. I. Du Pont De Nemours & Company ( 1975 )

ALDISERT, Circuit Judge

(dissenting).

I, agree with the reasoning of the majority with respect to Counts III, IV and V. I do not agree that we should require the district court,, at this time, to conduct further proceedings into the subject matter of Counts I and II.

The majority candidly recognize that their position is somewhat less than certain:

Although there is no direct assertion by Du Pont in the record that it claims ownership of the patents, we assume that Du Pont will claim title to the patents during the relevant time period. Otherwise, there is presumably no ground on which it may seek to disqualify Mr. Niro based on the subject matter of Counts I and II.

(Majority Opinion at 985, n.2). (Emphasis added).

At this time Du Pont’s relationship to the subject matter of these counts is, at best, speculative. Only when, and if, it makes a timely assertion of rights to the patents should we place upon the district court the duty to consider the subject matter of Counts I and II.

I would affirm the judgment of the district court.