Northern District of Texas Blog

On March 1, 2013, Judge Kinkeade issue and Order (available here) in Innovative Sonic Limited v. Research in Motion. RIM filed a motion to compel “information and materials pertaining to prelitigation testing performed by ASUSTeK engineers on certain RIM products, including the BlackBerry smartphone devices accused of infringing the patents-in-suit.” Judge Kinkeade, in a thorough opinion, denied the motion to compel, finding that the discovery at issue was protected by the work product doctrine:

The Court has little difficulty concluding that materials pertaining to ASUSTeK’s prelitigation infringement testing of the accused RIM products are protected by the work product doctrine. The record establishes that ASUSTeK engineers conducted the testing at the request of Plaintiff’s outside counsel in anticipation of litigation involving the patents-in-suit. ASUSTeK shared the test results only with Plaintiff’s counsel. None of ASUSTeK’s employees are expected to be called as witnesses at trial. Given these circumstances, the pre-litigation test reports, related files, and communications generated by ASUSTeK in this case are precisely the type of documents and tangible things that courts routinely recognize as protected work product material.

Judge Kinkeade cited many, many cases supporting his decision.

Plaintiff is represented by Darin Klemchuk and Kirby Drake, both of Klemchuk Kubasta LLP; and Andrew Mace, Lia Smith, Melissa Keyes, Ronald Lemieux, and Vidya Bhakar, all of Cooley LLP.

RIM is represented by David Pritikin, Edward Poplawski, John Wisse, Li Chen, Paul Tripodi, and Tung Nguyen, all of Sidley Austin LLP; Tala Toufanian, Sarah Columbia, Russell Hayman, Jon Dean, Hasan Rashid, and Eric Hagen, all of McDermott Will & Emery; and Brooks Taylor, Leon Carter, and Sean Hamada, all of Carter Stafford Arnett Hamada Mockler PLLC.

On February 21, 2013, Judge Kinkeade issued an Order (available here) denying Galderma’s motion to disqualify Vinson & Elkins in a patent infringement lawsuit pending in the Northern District of Texas.

Galderma retained V&E in 2003. V&E sent Galderma an engagement letter. “As part of the engagement letter, V&E sought Galderma’s consent to broadly waive future conflicts of interest, subject to specific limitations identified in the engagement letter.” The relevant provision of the engagement agreement read:

We understand and agree that this is not an exclusive agreement, and you are free to retain any other counsel of your choosing. We recognize that we shall be disqualified from representing any other client with interest materially and directly adverse to yours (i) in any matter which is substantially related to our representation of you and (ii) with respect to any matter where there is a reasonable probability that confidential information you furnished to us could be used to your disadvantage. You understand and agree that, with those exceptions, we are free to represent other clients, including clients whose interests may conflict with ours in litigation, business transactions, or other legal matters. You agree that our representing you in this matter will not prevent or disqualify us from representing clients adverse to you in other matters and that you consent in advance to our undertaking such adverse representations.

Starting in 2003, V&E represented Galderma in connection with employee issues and did so into July of 2012. In June 2012, while V&E was still advising Galderma on employment issues, Galderma (represented by DLA Piper and Munch Wilson) filed this lawsuit against Actavis. “At that time, V&E had already represented various Actavis entities in intellectual property matters for six years. Without any additional communication to Galderma, V&E began working on this matter for Actavis, and in July 2012, V&E filed Actavis’s answer and counterclaims.” Galderma then requested that V&E withdraw from representing Actavis. “On August 6, 2012, V&E chose to terminate its attorney-client relationship with Galderma rather than Actavis. On that same day, V&E stated that it would not withdraw from representing Actavis, because Galderma had consented to V&E representing adverse parties in litigation when it signed the waiver of future conflicts in the 2003 engagement letter.”

Galderma then filed the instant motion to disqualify.

Ultimately, in a thorough and impressive 32 page decision providing a detailed discussion of the relevant law governing disqualification, Judge Kinkeade found that Galderma gave its informed consent to V&E’s representation of clients directly adverse to Galderma in matters that were not substantially related to the V&E’s representation of Galderma. Accordingly, Galderma’s motion to disqualify was denied.

Of particular note was the following:

The Texas rule on conflicts of interest involving current clients is more lenient than the Model Rules. [The Texas] rule permits representing clients against current clients so long as the two matters are not substantially related or reasonably appears to be or become adversely limited. Under the Texas rule, there is no need for informed consent. A lawyer representing an enterprise with diverse operations may accept employment as an advocate against the enterprise in a matter unrelated to any matter being handled for the enterprise.

(Judge Kinkeade rejected the application of the Texas Rules, and found that the Model Rules and the authority related to them must control in determining Galderma’s motion to disqualify. The Model Rules permit a client’s waiver of future conflicts when the client gives informed consent.)

Galderma is represented by Michael Wilson, Daniel Venglarik, and Jamil Alibhai, all of Munck Wilson Mandala, LLP; and Aaron Fountain, Jeffrey Johnson, and Stuart Pollack, all of DLA Piper LLP.

Actavis is represented by Sean Kelly, Kristen Foster, and Stephen Hash, all of Vinson & Elkins LLP.

Vinson & Elkins was represented by Michael Lynn, Andres Correa, and Richard Smith, all of Lynn Tillotson Pinker & Cox LLP.