Defense Counsel Disqualified Based on Contact With a Defendant’s “Outside In-House Counsel” Who Previously Represented Plaintiff

The court granted plaintiff's motion to disqualify defense counsel because defense counsel had contact with one defendant’s “outside in-house counsel” who had previously represented plaintiff. “This outcome is unfortunate, because there is not a molecule of evidence that [defense counsel] did anything other than act with integrity and in a manner consistent with the highest traditions of the legal profession. . . . This court is not aware of any case analyzing whether the Vicarious Presumption Rule applies to such a situation. . . . This court concludes that the Vicarious Presumption Rule should be applied here (i.e., that it should be presumed that [defense counsel] has relevant confidential information about [plaintiff].). . . The Attorney [who previously represented plaintiff] served as [one defendant's] outside in-house counsel for intellectual property matters, and the Three Current Cases are high-stakes, complex patent matters. The importance of in-house counsel effectively cooperating, coordinating, and communicating with their company’s attorneys is self-evident. Defendants’ argument that the Attorney 'played a limited role' in the Three Current Cases is unavailing.”

Advanced Messaging Technologies Inc. v. EasyLink Services International Corporation, 2-11-cv-04239 (CACD December 19, 2012, Order) (Pregerson, J.).