In Re Apeldyn Corp. , 391 F. App'x 873 ( 2010 )

N0'I‘E: This order is nonprecedential.
United States Court of AppeaIs
for the FederaI Circuit
IN RE APELDYN CORPORATION,
Petitioner.
MiSCel1aneous Docket No. 934
On Petiti0n for Writ of Mandamus to the United
States District Court for the District of De1aware in case
no. 08-CV-0568, Judge Sue L. Robinson.
ON PETITION FOR WRIT OF MANDAMUS
Before RADER, Chief Judge, BRYSON, and MOORE, Circuit
Judges.
RADER, C'hief Judge.
0 R D E R
Ape1dyn Corporation seeks a writ of mandamus to
direct the United States District Court for the District of
DelaWare to vacate its orders disqualifying R. Tyler
GoodWyn, IV, a partner at the law firm of McKenna Long
& Aldridge, L.L.P. (McKenna) and the entire McKenna
firm from further representation in this case. Samsung
Electronics Co., Ltd. et a1. (Samsung) 0ppose.
IN RE APELDY``N 2
This petition arises out of a suit brought by Apeldyn,
alleging that Samsung’s liquid crystal display (LCD)
products infringe Apeldyn’s patent relating to overdrive
functionality. ln its orders granting Samsung’s motion for
disqualification and denying Apeldyn’s motion for
reconsideration, the district court determined that a
substantial relationship exists between this case and a
prior. infringement suit involving a separate patent
relating to digital random access memory (DRAM).
Goodwyn represented Samsung as a defendant in that
prior DRAM patent infringement suit, while he was a
partner in a previous law firm. The court noted that
Goodwyn had played a lead role in that suit, billing more
than 4,000 hours, performed extensive work related to
analyzing Samsung’s DRAM products in a patent
infringement defense context, and was also "exposed to
factors that Samsung considers important in settlement."
The court also explained that it was undisputed that
DRAM was a “required element" for the accused overdrive
functionality The court acknowledged that the patent at
bar neither mentioned DRAM specifically nor memory at
all. However, the court explained that because the
relevant claim limitations were written as means plus
function terms and DRAM was essential to Samsung’s
accused overdrive functionality, it could not fathom how
Apeldyn would prove or how Samsung would rebut an
allegation that the DRAM memory component meets the
test of structural equivalency necessary to prove literal
infringement without dealing with the structure of
Samsung’ s accused products.
The court further noted that despite Apeldyn’s
contentions that the internal structure of the memory of
Samsung’ s accused products was irrelevant to the case at
bar, “[Apeldyn] has not, in spite of defendants prompting,
supported this position with an infringement contention
demonstrating that structural analysis of DRAM is
3 IN RE APELDYN
unnecessary to carrying its burden." The court therefore
concluded that there was a "‘common sense inference’ that
Apeldyn will necessarily be using specimens and
documentati0ns that are the same type, if not the same,
as those collected and reviewed by Mr. Goodwyn [in the
prior action].”
As to disqualification of the entire McKenna firm, the
court`` explained that "not only did [McKenna] fail to
institute [an effective] screening measure; it affirmatively
involved Mr. Goodwyn with this matter." In this regard,
the court determined that McKenna had failed to
thoroughly vet Goodwyn’s potential conflicts at the time
he joined the firm. The court added that within months of
being hired, McKenna asked Goodwyn, out of numerous
other attorneys at the firm, to work on this matter. The
court also noted that despite McKenna’s assertion that an
informal screen of silence had been put around Goodwyn
he continued to receive documents and emails relating to
the case. The court therefore concluded that "the
appearance of impropriety in [McKenna’s] representation"
resulting from its failure to vet potential conflicts and
Goodwyn’s significant role representing Samsung in a
prior case warranted disqualification
This court may issue mandamus upon a showing that
the district court’s disqualification of counsel was so
clearly an abuse of discretion that it amounted to an
unlawful exercise of judicial authority. In. re Pressmcm-
Gutmom, Co., Inc., 459 F.3d 383, 401-02 (3d Cir. 2006).
Applying Third Circuit law in cases arising from district
courts in that circuit, attorney disqualification is governed
by the precedent of that circuit and the principles and
rules set forth in the ABA Model Rules of Professional
Conduct. In re Corn Derivatives Antitrust Litigati0n, 748
F.2d 157, 160-61 (3d cia 19s4).
lN RE APELDYN 4
ABA Model Rule 1.9(a) provides that “A lawyer who
has formerly represented a client in a matter shall not
thereafter represent another person in the same or a
substantially related matter in which that person’s
interests are materially adverse to the interests of the
former client unless the former client gives informed
consent, confirmed in writing." Comment Three to Rule
1.9 notes "matters" are “substantially related" for
purposes of this Rule if "they involve the same transaction
or legal dispute or if there otherwise is a substantial risk
that confidential factual information as would normally
have been obtained in the prior representation would
materially advance the client’s position in the subsequent
matter.” In addition, ABA Model Rule 1.10 provides that
while lawyers are associated in a firm, none of them shall
knowingly represent a client when any one of them
practicing alone would be prohibited from doing so under
Rule 1.9.
The mandamus standard is an exacting one and has
not been met in this case. While it is undisputed that
memory is not expressly mentioned in the patent
specification at bar, it is unclear what significance the
DRAM component of Samsung’s accused overdrive
functionality will play in this case. That uncertainty rests
on the failures of the petitioner. As noted above, the
district court explained that "[Apeldyn] has not, in spite of
defendants prompting, supported this position with an
infringement contention demonstrating that structural
analysis of DRAM is unnecessary to carrying its burden."
Apeldyn defends its position, contending that the burden
of disqualification rested with Samsung. However,
Apeldyn has been equally unassertive in this regard here
where it, not Samsung, maintains the burden.
Samsung contends that Apeldyn places too narrow a
focus the differences in the technical issues between the
two cases. We agree. While the district court analyzed
5 IN RE APELDY``N
and rejected Apeldyn’s contention that the internal
aspects of the DRAM component of the accused devices
will not play a role in the test of structural equivalency
necessary to prove literal infringement, the court also
more generally explained that because DRAM is essential
to the accused overdrive function, it was likely that
specimens and documentation at this trial will be the
same as those previously collected and reviewed by
Goodwyn. The court added that Goodwyn’s prior
representation of Samsung "exposed [him] to factors that
Samsung considers important in settlement." These are
sufficient findings to support the court’s determination
that confidential information could be used materially
against Samsung with Goodwyn’s continued
representation
Apeldyn also argues that the district court clearly
erred in disqualifying the entire McKenna firm because
there was an informal screen put up around Goodwyn
after being notified of the potential conflict. We disagree
with this contention. As a general matter, Rule 1.10
provides that while lawyers are associated in a firm, none
of them shall knowingly represent a client when any one
of them practicing alone would be prohibited from doing
so under Rule 1.9. While the Third Circuit may recognize
that proper screening measures under certain
circumstances may eliminate the need for disqualification
of a single conflicted attorney, we agree with the district
court that such circumstances did not exist here. First,
the district court concluded that Apeldyn failed to
thoroughly vet potential conflicts upon Goodwyn’s hiring.
Second, from the record, it appears that when the
potential conflict was brought to McKenna’s attention, the
firm undertook the risk of continuing representation
based only on an analysis of the technical distinctions
between the two patents rather than the potential
adverse use of confidential information Third, there is
IN RE APELDYN 6
enough evidence here to support the district court’s
determination that l\/[cKenna’s measures were not
effective enough to warrant allowing the firm to continue
its representation in this case, as Goodwyn continued to
receive communications regarding the case after
McKenna asserts that the screen was in place.
Accordingly,
lT lS ORDERED THATZ
The petition for a writ of mandamus is denied
FOR THE COURT
AUG -2 2010 '
/s/ J an Horbaly
Date J an Horbaly
Clerk
cc: Gaspare J. Bono, Esq.
Neil Phillip Sirota, Esq.
s 1 9
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AUG 072 2010
JAN HORBALY
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