April 2012 Vol. 9, No. 1

9.1.3

Conflicts of Interest, Former Client/Mobile Attorney

Case:

Streetspace, Inc. v. Google, Inc. (N.D. Cal. 2012) 2012 WL 293642 

Issue:

In a patent infringement lawsuit, was disqualification of an attorney for one of the defendants warranted where:  (1) the attorney was an intellectual property partner at his prior law firm while a branch office of the firm located in another city prosecuted the patent at issue; (2) the attorney never billed any time to the handling of the patent at issue or discussed it with any other firm attorney; (3) the attorney’s managerial responsibilities as partner at his prior firm were limited to the cases he handled; but where (4) the firm had a centralized file system, that included confidential information about the patent at issue, to which the attorney had access; (5) the attorney worked with a firm attorney handling the prosecution of the patent at issue on an unrelated project; and (6) that other attorney now represented the plaintiff in this patent infringement action?    

Holding:

No.  Disqualification was unnecessary on these facts where the law firm subject to disqualification carried its burden of demonstrating that the attorney did not receive confidential information of the opposing party at his prior law firm that is material to the current lawsuit.  The District Court found this evidence did not support the contention that the attorney obtained confidences regarding plaintiff while at his prior law firm, let alone rebut his unequivocal assertion that he did not.

The Court reaffirmed the rule that “if a lawyer while with one firm acquired no knowledge or information relating to a particular client of the firm, and that lawyer later join[s] another firm, neither the lawyer individually nor the second firm is disqualified from representing another client in the same or a related matter even though the interests of the two clients conflict.”  (2012 WL 293642 at *2, quoting Dieter v. Regents of Univ. of Cal.  (E.D.Cal.1997) 963 F.Supp. 908, 911.)

The Court rejected plaintiff’s contention that disqualification was required based on the attorney’s mere prior access to confidential client information in a centralized filing system.  Such a rule would require disqualification of every attorney and staff member of a firm that could have accessed that file.  Such a rule, said the Court, would be inconsistent with Adams v. Aerojet-Gen. Corp. (2001) 86 Cal.App.4th 1324, which requires courts evaluating motions to disqualify to engage in a fact-based examination.  (2012 WL 293642 at *3, note 19.)

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