United States District Court, D. Massachusetts
MEMORANDUM AND ORDER
B. Saris Chief United States District Judge.
case involves a patent dispute between Altova GmbH and
Altova, Inc. (collectively, “Altova”), and Syncro
Soft SRL (“Syncro Soft”), direct competitors in
the market for extensible markup language
(“XML”) editor software. The patent at issue,
owned by Altova, concerns an automatic fix feature for errors
in XML coding.
Soft has moved to disqualify its former law firm Sunstein
Kann Murphy & Timbers LLP (“Sunstein”) from
representing Altova, based on Sunstein's representation
of Syncro Soft. The Court has stayed the proceedings pending
resolution of the inter partes review of the patent
at issue, but the parties have asked the Court to decide the
motion to disqualify counsel at this time. After hearing, the
Court ALLOWS the motion to
disqualify Sunstein (Docket No. 20).
The Patent and Accused Product
and Syncro Soft both sell XML editor software, which helps
software and website developers with data management, data
integration, and writing programs. Docket No. 39 at 11,
13-14. The patent at issue is U.S. Patent No. 9, 501, 456
(“the '456 Patent”), which is owned by Altova
GmbH. Docket No. 12 ¶ 8. The '456 Patent is entitled
“AUTOMATIC FIX FOR EXTENSIBLE MARKUP LANGUAGE ERRORS,
” and is directed to “[m]ethods and apparatus,
including computer program products, for an automatic fix for
[XML] errors.” '456 Patent, at , . The
patent application was filed on March 15, 2013, and the
patent issued on November 22, 2016. '456 Patent, at ,
accused product is version 19.0 of Syncro Soft's OXYGEN
XML Editor software, which includes a feature called
“Quick Fix.” See Docket No. 12 ¶
15. Altova alleges that the Quick Fix feature “helps
[users] resolve errors that appear in an XML document by
offering Quick Fixes to problems such as missing
required attributes or invalid elements.” Docket No. 12
¶ 15. Altova maintains that, via the Quick Fix function,
Syncro Soft directly and indirectly infringes at least Claim
1 of the '456 Patent. Docket No. 12 ¶¶ 11-12.
Legal Representation Timeline
Syncro Soft's 2004 Trademark Dispute with Oxygen Media
October 2004, Syncro Soft received a cease and desist letter
from Oxygen Media LLC, which accused Syncro Soft's OXYGEN
XML Editor software of trademark infringement and dilution.
Docket No. 21 ¶ 2. Syncro Soft sought legal counsel to
respond to the cease and desist letter. Docket No. 21 ¶
2. Lee Carl Bromberg of Bromberg Sunstein LLP, the firm that
would later become Sunstein, first agreed to represent Syncro
Soft in connection with this matter in early November 2004.
Docket No. 21-1 at 2.
2004 engagement letter specified that Syncro Soft was
granting the law firm “power of attorney to execute on
[Syncro Soft's] behalf all documents relating to the
matters for which [the firm has] been retained.” Docket
No. 21-1 at 2. The letter also included a paragraph regarding
possible future conflicts of interest. It read:
Occasionally, because of ethical considerations, attorneys
are required to withdraw from the representation of clients.
While we do not anticipate having to withdraw from your
representation, you should be aware that because our firm
represents a large number of clients, there is always a
possibility that a conflict of interest might develop which
would force us to cease representing you. However, we would
only do so upon reasonable notice.
Docket No. 21-1 at 3. Stefan Vasile, Syncro Soft's Chief
Executive Officer, executed the agreement on November 2,
2004. Docket No. 21-1 at 5. The dispute with Oxygen Media LLC
was resolved to Syncro Soft's satisfaction ...