IP Law Daily, PATENT—Fed. Cir.: Petition to reverse disqualification of attorneys denied, (Apr 23, 2026)

By Thomas K. Lauletta, J.D.

The requirements for mandamus to overturn the disqualification of the attorneys were not satisfied.

The U.S. Court of Appeals for the Federal Circuit denied the motion to vacate the district court’s order disqualifying the petitioners’ attorneys from representing them in a patent ownership dispute. The district court had adopted a magistrate judge’s findings that an agreement between Lincoln Diagnostics and the petitioners’ attorneys constituted an impermissible conflict of interest that required disqualification of the attorneys’ ability to represent the petitioners. The appellate court denied the petitioners’ mandamus action that would have required the district court to reverse the disqualification of the petitioners’ attorneys (In Re Ehud Arbit, No. 26-131 (Fed. Cir. Apr. 21, 2026)).

Both the petitioners and Dr. Ziv Harish are named as inventors of U.S. Patent No. RE46,823 (“the ’823 patent”), which relates to an allergy testing device. Dr. Harish filed this action in 2021 against the petitioners asserting a claim for correction of inventorship, alleging that he is the sole inventor of the ’823 patent.

The petitioner thereafter assigned their rights under the “823 patent to Lincoln Diagnostics. The petitioners and Lincoln entered into agreements with their attorneys memorializing their common interest and purporting to waive any conflicts of interest. After it was later disclosed that Lincoln was paying the attorneys’ fees, a magistrate concluded that the attorneys’ representation of both Lincoln and the petitioners created an impermissible conflict that could not be waived because “Lincoln has influenced decisions during the course of this litigation.” The district court thereafter adopted the magistrate judge’s findings.

In the current action, the petitioners seek mandamus review of the disqualification order. A party seeking a writ of mandamus bears the burden of proving (1) it has “no other adequate means to attain the relief it desires,” (2) the right to the writ is “clear and indisputable,” and (3) “the writ is appropriate under the circumstances.”

The appellate court applied the law of the regional circuit, which was the Court of Appeals for the Third Circuit. Under the law of the Third Circuit, an attorney's disqualification decision would not be overturned unless the disqualification decision rested upon a clearly erroneous finding of fact or law or an improper application of law to the facts.

The appellate court concluded that the petitioners failed to demonstrate that mandamus relief was warranted. First, the petitioners had not shown that the district court committed a clear abuse of discretion. Second, under New Jersey rules, the petitioners’ attorneys could not accept fees from Lincoln if there was a significant risk that doing so could materially limit or interfere with the attorneys’ representation of the petitioners’ interests. The appellate court found that the magistrate judge plausibly found that the terms of the representation agreement showed the dominance of Lincoln’s interest over the petitioners’ interests and that Lincoln had been directing, regulating and interfering with the attorneys’ professional judgment.

The appellate court also stated that it could not conclude that the decision to disqualify the attorneys was clearly arbitrary or erroneous. Accordingly, after finding that there were no adequate alternatives to the disqualification, the appellate court denied the petitioners’ mandamus action to overturn the attorney’s disqualification order of the district court.

The Case is No. 26-131.

Judge: Stark, L.

Attorneys: David N. Cinotti (Pashman Stein Walder Hayden, PC) for Ehud Arbit. Noam Kritzer (Kritzer McPhee LLP) for Ziv Harish.

Cases: Patent FedCirNews