MEMORANDUM AND ORDER
Plаintiff, Monon Corporation, (“Monon”) has moved this court to disqualify defendant’s counsel, the law firm of Trexler, Bushnell, Giangiorgi & Blackstone, Ltd. (“Trexler Bushnell”). A hearing was held in open court in Lafayette, Indiana on December 21, 1990 in which both parties summarizеd their respective positions on this matter.
I.
Facts
The merits of this case involve Plaintiff’s claim that Defendant (“Wabash”) is infringing Plaintiff’s patent on a plate trailer. Before this court can ever address the similarities of the two parties’ products, however, it must wade through the similarities of the parties themselves.
In the mid-1960s, Mr. Donald J. Ehrlich was president of Monon Trailer, Inc., whose intellectual property work was done by Attorney Richard Bushnell. Monon Trailer, Inc. was purchased by Evans Products, Inc. in the mid-1970s and became a division of Evans Transportation. Mr. Ehrlich remained with the company; Mr. Bushnell’s services were replaced by Evans in-house counsel.
Mr. Ehrlich then planned to buy Monon Trailer Division and, apparently with an eye toward his future businеss, retained Mr. Bushnell to prepare a patent application for a trailer invented by Mr. Rodney Ehrlich. Mr. Bushnell accomplished this before the anticipated purchase was complete, so he was advised by Donald J. Ehrlich tо submit his bill to Monon Trailer Division. The patent application eventually was successful, but the purchase of Monon Trailer Division fell through. Instead, Mr. Ehrlich and several others formed Wabash National Corporation, with Donald J. Ehrlich as presidеnt and Rodney Ehrlich as director of engineering. Monon Trailer Division in time became Monon Corporation.
Upon learning of the new incorporations, Mr. Bushnell gave his file for Rodney Ehrlich’s patent application to Monon’s attorney, Henry Price. He informed Mr. Price that he intended to represent Donald J. Erhlieh and Wabash National Corporation.
On February 27, 1990, United States Letters Patent No. 4,904,017, entitled “Trailer Construction”, (“the ’017 Patent”), was issued to Rodney Ehrlich, who assigned it to Monon Corporation.
*1322 II.
Legal Analysis
Canon 4 of the A.B.A.Code of Professional Responsibility provides that “a lawyer should preserve the confidences and secrets of a client.” Canon 9 admonishes that “a lawyer should avoid even the appеarance of professional impropriety.” When deciding a question of attorney disqualification, federal courts embody the substance of these canons in the substantial relationship rule.
Novo Terapeutisk Laboratorium v. Baxter Travenol Laboratories, Inc.,
An issue of plaintiff Monon Corрoration’s status as a successor in interest to Monon Trailer Division of Evans Corporation has been raised. This court has been furnished with documents pertaining to the merger of Monon Holding Co. into Monon Corporation and the assignment оf patent rights to Monon Corporation and finds that the plaintiff Monon is a mere continuation of Monon Trailer Division.
See Upholsterer's International Union Pension Fund v. Artistic Furniture of Pontiac,
The court must now turn to the question of whether Trexler Bushnеll’s past representation of Monon is substantially related to its current representation of Wabash. This circuit uses a three-part test for finding a substantial relationship. First, the trial court must make a factual reconstruction of the scope of the prior representation. Next, the court determines whether it is reasonable to infer that the confidential information allegedly given would have been given to a lawyer representing a client in those matters. Finally comes a determination whether that information is relevant to the issues raised in the litigation pending against the former client. Novo Terapeutisk, supra.
Applying the above test to the facts at hand, this court finds that the scope of the prior representatiоn entailed Trexler Bushnell’s working with the inventor to prepare a patent application, and then filing the patent application in the United States Patent and Trademark Office with Trexler Bushnell as counsel of record. The representation ended before the prosecution of the '017 patent was completed.
Monon has not pointed out specific confidential information Trexler Bushnell possesses, other than Mr. Bushnell’s knowledge of the ’017 patent generally. How *1323 ever, this court finds it reasonable to infer that information concerning the patent at issue, including the technical aspects of the invention and possibly business concerns relevant to its use, would have been given to а lawyer in Attorney Bushnell’s position.
Whether the confidential information that Monon allegedly shared with Trexler Bushnell is relevant to the issues raised in this litigation against it is a simple determination in this case, given that the subject matter is the very same patent. 2
Trexler Bushnell’s prior representation of Monon and its present representation of Wabash are therefore substantially related. Once a substantial relationship has been found, it is irrebuttably presumed that counsel had access to confidential information.
Novo Terapeutisk, supra; Schloetter v. Railoc of Indiana,
Canon 9 admonishes that a lawyer must avoid even the appearance of impropriety. A simplistic view of this situation is that Trexler Bushnell obtained a patent for one party and now attempts to deny the same patent for the other рarty. A more careful examination of the facts and consideration of the technicalities still makes clear that Attorney Bushnell, at the very least, made initial determinations that Rodney Ehrlich’s invention was patentable and then draftеd claims for a patent application designed to convince the PTO that the invention was patentable. Now the same lawyer goes so far as to claim that the same invention lacks the conditions of pat-entability. No mаtter who the clients were or are; no matter what confidential information is possessed by whom, this simple circumstance gives “an unsavory appearance of conflict of interest that is difficult to dispel in the eyes of the lay рublic — or for that matter the bench and bar ...”
Analytica, Inc. v. NPD Research, Inc.,
Trexler Bushnell here argues for а waiver. Such a waiver is far too slender a reed given the fundamentally important professional ethical values that inhere in this circumstance. Given the extensive involvement of Mr. Bushnell here the tactic of building a so called “Chinese wall” emphasized in Analytica, supra at 1270-1280 would simply not work.
When considering an issue of disqualifying a party’s counsel, a court must recognize and attempt to preserve a balance between the right to confidentiality and the prerogative of a party to choose its counsel.
Novo Terapeutisk, supra, Panduit Corp. v. All States Plastic Mfg. Co.,
The law firm of Trexler, Bushnell, Gian-giorgi & Blackstone, Ltd. is disqualified from the representation of Defendant Wabash National Corporation in this civil action.
Here, Monon seeks counsel fees and costs against Wabash and/or Trexler Bushnell. This court has revisited the brief summary ending comment in Analytica at page 1270 regarding the award of fees and expenses on the basis of bad faith. There was also reference to stubbornness in resisting disqualification. Certainly, Trexler Bushnell was stubborn here, but such does not automatically extrapolate into bad faith. Thеre, Judge Grady specifically found bad faith. Here, this judge makes a full and careful examination of all the relevant circumstances and declines to find the element of bad faith. Plaintiff’s request is therefore denied. IT IS SO ORDERED.
Notes
. Rule 1.9 of the Indiana Rules оf Professional Conduct expressly calls for the same test. "A lawyer who has formerly represented a client in a matter shall not thereafter: (a) represent another person in the same or a substantially related matter in which thаt person’s interests are materially adverse to the interests of the former client unless the client consents after consultation.”
. Trexler Bushnell has contended that the completed '017 patent is not the same as the patent aрplication which was originally filed with the PTO. This argument is not persuasive. While this court is aware that patent applications are frequently modified in the course of prosecution, for various reasons, it is still reasonable to infer that сounsel would be given all of the relevant information from the outset, and that any differences between the application initially filed and the application in its final form did not stem from new information which Mr. Bushnell did not have.
. Trexler Bushnell argues that any information it may have from Monon cannot be confidential; everything it knows is now part of a patent, which is a public record. This contention is answered by Professor Drinker: "[privelege] is not nullified by the fact that the circumstances to be disclosed are part of a public record, or that there are other available sources for such information, or by the fact that the lawyer received the same information from other sources.” Drinker, H., Legal Ethics 135 (1953).