July 2012 Vol. 9, No. 2


Rule 5-210: Advocate-Witness Rule


Calouri v. One World Technologies, Inc. (C.D.Cal. 2012) 2012 WL 2004173


Was plaintiff’s patent prosecution counsel, who had worked on the case since its inception, properly excluded from representing plaintiff at trial in a patent dispute where defendant claimed that plaintiff failed to name the correct inventors while prosecuting the patent at issue and engaged in inequitable conduct by failing to disclose his own highly relevant prior art, making patent counsel a necessary trial witness and where plaintiff would not be unduly prejudiced because plaintiff would still be represented at trial by capable counsel who had litigated the dispute on plaintiff’s behalf?


Yes.  On its face, California’s advocate-witness rule, Rule of Professional Conduct 5-210, appears to allow an attorney to represent a client at trial, even though the attorney would be a witness, as long as the attorney obtains the informed written consent of the client.  (Rule 5-210(C).)  Plaintiff claimed that the motion to exclude patent counsel from representing him at trial must be denied because he had given his informed written consent to the representation.

The Court rejected the argument, applying ABA Model Rule 3.7, which requires disqualification of an attorney likely to be a necessary trial witness unless:  (1) the testimony relates to an uncontested issue; (2) the testimony relates to the nature and value of the attorney’s legal services; or (3) disqualification of the attorney would work an undue hardship on the client.  Citing among other cases Kennedy v. Eldridge (2011) 201 Cal.App.4th 1197, the Court found that “recent decisions regarding the [advocate-witness] rule demonstrate that the California courts are increasingly looking to and relying upon the ABA Model Rules for guidance in its application.”  (2012 WL 2004173, *5.)  The Court also noted that if a client’s consent were enough to avoid disqualification of trial counsel likely to serve as a witness, a motion to disqualify would have to be denied “any time a client consents regardless of the prejudice to the moving party or the damage to the integrity of [the] judiciary.”  (Ibid. at note 4.)

The Court found that patent counsel would indeed be a necessary trial witness.  Given his familiarity with the patent at issue and its prosecution history, his testimony would be relevant and material at least to the issues of inventorship and enforceability.  (Ibid.)

The Court found that none of the general exceptions to the advocate-witness rule applied.  Patent counsel’s testimony would not concern an uncontested issue or the nature and value of his services.  Plaintiff also would suffer no undue hardship since he would be represented at trial by the “capable” counsel who had signed every paper filed with the Court in the action and taken and defended every fact and expert deposition in the case.  In addition, although patent counsel was being barred from serving as trial counsel, “he is not excluded from all further involvement in this lawsuit.  That is, while [patent counsel] may not appear before the jury or the Court as trial counsel, he may continue to serve as an adviser to plaintiff and to” trial counsel.  (Id. at *6.)

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