Deetz Family, LLC v. Rust-Oleum Corp. (16-cv-10790).

Dayton Deetz, the sole inventor on a pair of patents relating to magnetic additives for paint, ranted a non-exclusive license to Rust-Oleum in 2005. Deetz asserts that Rust-Oleum failed to make the minimum payments under the license in 2006-2010, and stopped making payments altogether on 2010, leading Deetz to terminate the license. Deetz then filed suit, asserting in addition to breach of contract that Rust-Oleum was continuing to use the patented technology and associated know-how that was transferred as a part of the 2005 license. Deetz then moved to disqualify Rust-Oleum’s litigation counsel, saying that his role in negotiating the 2005 license renders him a likely necessary witness, which would leave him unable to serve as counsel at trial. Judge Hillman denied the motion, noting that Deetz had not put forth any evidence beyond conclusory statements that the attorney was actually involved in the negotiations. Further, as it appeared that the negotiations were primarily (if not entirely) between Deetz and a Rust-Oleum employee, both of whom who would be available to testify. Absent some argument (not presented by Deetz) that the attorney held some unique knowledge that the other two could not provide, the attorney’s testimony would not be “necessary,” but would rather likely be cumulative. Accordingly, Deetz did not satisfy the burden of demonstrating that the attorney was likely to be a necessary witness.

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