Law is not like baseball. A lawyer cannot play for one team, make a name for himself, build a local following, and then jump ship and join the New York Yankees, only to come back next season to destroy his old teammates.
In law, once you represent a client for a significant amount of time, you can’t simply oppose them down the road, even if they are no longer your client and you now work at a new firm. Obvious, right?
Unfortunately for several former DLA Piper attorneys, something there got lost in translation. A federal judge in San Francisco booted the lawyers, now at the litigation boutique of Feinberg Day, from a patent dispute involving Toshiba and Talon Research. It turned out that the attorneys, who represented Talon Research, had logged more than 3,000 hours for Toshiba when they were still at DLA. Not good.
Let’s look more closely at our benchslap of the day…
The case is Talon Research v. Toshiba, from the U.S. District Court for the Northern District of California. Last week, U.S. District Judge William Alsup said the Talon attorneys’ previous experience “representing Toshiba in intellectual property matters gave them a conflict of interest,” according to Courthouse News.
Judge Alsup said Feinberg needs to “phase itself out promptly.” He gave the plaintiffs 35 days to find new counsel.
It seems like DLA (and former DLA) attorneys could use some help choosing better tech clients.
From Judge Alsup’s order granting motion to disqualify counsel (PDF):
In the Court’s mind, this is not a close call and Feinberg Day should have known better than to sue its recent client on a matter so similar to those on which the client had recently opined its confidences to counsel. The public has a right to expect fidelity to professional standards. Feinberg Day has crossed the line.
According to the opinion, the major problem was that the attorneys had previously worked with Toshiba in matters that involved “NAND [Not And — dealing with binary operations] flash products.” Talon’s attorneys argued all the specific patents cited in the other cases were different, but Judge Alsup said they were “splitting hairs.”
The six former DLA Piper attorneys are M. Elizabeth Day, David Alberti, Marc Belloli, Clayton Thompson, Sal Lim, and Yakov Zolotorev. Ian Feinberg was also disqualified, but he never worked for DLA Piper. We have reached out to the firm, and we will update the story if and when we hear back.
The judge essentially said there was no way to continue without Toshiba’s legitimate fear of “adverse use of information.” Sounds to me like judge-speak for, “Don’t let the door hit you on the way out”:
In its prior representation Feinberg Day attorneys were privy to the identities of key decision makers at Toshiba with respect to its NAND flash technology products. Counsel have important insight to the risk aversion (or not) of their former client and are now in a position to capitalize on that insight. There appears to be overlap even among key witnesses. Even if Feinberg Day performed a collective lobotomy, Toshiba would rightly fear adverse use of information it shared in confidence. Toshiba may not be taken hostage by its former attorneys.
On the plus side, at least the judge didn’t order that the attorneys all get lobotomies. That would’ve been even rougher.
Judge Boots Attorneys From Patent Fight [Courthouse News] Order Granting Motion to Disqualify Counsel, Talon Research v. Toshiba [U.S. District Court for the Northern District of California]