Counsel's Prior Substantial Representation of Manufacturer Does Not Justify Disqualification in Lawsuit Against Manufacturer’s Customers​

The court denied a nonparty manufacturer's motion to disqualify plaintiff's counsel in a case against the manufacturer's customers even though the law firm had previously served as the manufacturer's prosecution and litigation counsel and the representations were substantially related. "'[Plaintiff's counsel] handled a wide range of matters for [the manufacturer], including major litigations, patent prosecution matters, strategic portfolio counseling, patent harvesting, due diligence for portfolio acquisition, competitive analysis, and behind-the-scenes offensive and defensive litigation case support.' [The law firm] was involved in prosecuting thousands of [the manufacturer's] U.S. and foreign patents, including hundreds of [the manufacturer's] U.S. patents relating to digital subscriber line ('DSL') and MoCA technologies. . . . [The firm] handled patents covering technology which relates to some of the DSL chips at issue in these cases . . . . I recognize that [counsel's] relationship with [the manufacturer] was long in its duration and wide in its breadth. Although that representation was substantial, generally speaking, it did not touch the subject matter of these cases to any great extent. . . . [The manufacturer] has shown that confidential information acquired by [the law firm] may be of some relevance to this action. [The manufacturer] has not, however, shown that [the firm] has acquired confidential information of such pertinence that [the firm's] continued representation of [plaintiff] would unfairly harm [the manufacturer]. . . . These cases are, to put it mildly, complex. [Plaintiff] accuses hundreds of products of infringing up to thirty-two patents covering DSL technology. If [plaintiff's law firm] were disqualified, [plaintiff] would be prejudiced beyond mere inconvenience. Replacing [plaintiff's firm] and getting new counsel up to speed, would come at a substantial cost-in terms of both time and money. . . . Additionally, and not insignificantly, [plaintiff] did not sue [the manufacturer]."

TQ Delta, LLC v. Pace Americas, LLC et al, 1-13-cv-01835 (DED September 26, 2016, Order) (Andrews, USDJ)