The opinion of the court was delivered by: Lucy H. Koh United States District Judge
United States District Court For the Northern District of California
ORDER DENYING MOTION TO 12
DISQUALIFY COUNSEL AS MOOT
On July 11, 2011, Defendants Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC (collectively "Samsung") filed a 21 motion seeking to disqualify Plaintiff's counsel, Bridges & Mavrakakis, from this case. Samsung's 22 Mot. to Disqualify Bridges & Mavrakakis LLP, July 11, 2011, ECF No. 101. Kenneth Bridges and 23 Michael Pieja, two attorneys*fn1 with Bridges & Mavrakakis ("Bridges firm") representing Apple, 24 Inc. ("Apple") in this matter, previously represented Samsung in a patent infringement case 25 brought by Ericsson in 2006. In its motion, Samsung argued that the Bridges firm should be 26 disqualified from representing Apple because there was a substantial relationship between the Bridges attorneys' representation of Samsung in the Ericsson suit and their present representation 2 of Apple. At issue in the Ericsson litigation, like the present litigation, were patents related to the 3 user interfaces of cellular equipment. Indeed, the same patent is at issue in both the present 4 litigation and in the Ericsson litigation.
In response, Apple argued that the Bridges firm represents Apple only with respect to the 6 affirmative claims that Apple brought against Samsung, and that the Bridges firm has not 7 represented Apple in its defense against Samsung's counterclaims, including Samsung's 8 counterclaim for patent infringement of the same patent at issue in the Ericsson litigation. Apple 9 argued that Samsung's counterclaims for patent infringement are fundamentally separate from its 10 affirmative claims, and therefore, there is no substantial relationship between the Bridges attorneys' representation of Samsung in the Ericsson litigation and their current limited representation of Apple. 13
August 25, Apple filed a notice of withdrawal of Bridges & Mavrakakis. ECF No. 188. The Court 15 directed Samsung to respond as to whether its motion to disqualify was mooted by the withdrawal 16 of Plaintiff's counsel. ECF No. 191. On August 31, 2011, Samsung filed a letter brief indicating 17 that while "B&M's [Bridges & Mavrakakis] withdrawal moots the need to issue an order 18 disqualifying B&M from appearing as counsel of record in this case," it nonetheless requested that 19 the Court issue an order directing that: (1) Bridges & Mavrakakis "will not provide support 20 services, consult, or participate in any further aspects of this case or any cases between Apple and 21 Samsung relating to tablet computers and mobile devices;" (2) Apple return all attorney work 22 product prepared by Bridges & Mavrakakis; and (3) Bridges & Mavrakakis will not share work 23 product relating to the present litigation with Apple and its current counsel.*fn2 See ECF No. 198.
A hearing was held on August 24, 2011 and the matter was taken under submission. On 2 both parties have already conceded. For the reasons set forth below, the Court also declines to 3 issue an order restricting Bridges & Mavrakakis' potential future representation of Apple, or 4 restricting the use of Bridges & Mavrakakis' work product, as requested by Samsung. 5
6 or any cases between to Apple and Samsung would be an inappropriate encroachment on the 7 authority of other courts to determine matters pending before them. This Court is required to apply California state law in determining matters of disqualification before it. Civ. L.R. 11-4(a)(1); In re 9
The Court DENIES Samsung's motion to disqualify Bridge & Mavrakakis as moot-as First, an order prohibiting Bridges & Mavrakakis from providing services to Apple on this
County of Los Angeles, 223 F.3d 990, 995 (9th Cir. 2000). Conversely, any future or pending 10 representation that Bridges & Mavrakakis provides to Apple must be analyzed by the court, and pursuant to the laws of the jurisdiction, in which the action is brought. Moreover, to the extent that Samsung is concerned with Bridges & Mavrakakis' future involvement in this case, Apple has 13 already agreed that Bridges & Mavrakakis "will not provide support services, consult or participate 14 in any further aspect of this case." Samsung's Letter Brief, Ex B, ECF No. 198. If Samsung 15 obtains evidence in the future that Bridges & Mavrakakis has breached its agreement to withdraw 16 from this action, it may renew its motion to disqualify at that time. Until that time, the Court 17 deems Bridges & Mavrakakis' withdrawal notice sufficient to moot the issue presented in 18
Second, the Court declines to order additional relief*fn3
restricting the work product that
Bridges & Mavrakakis created prior to its withdrawal notice. The
destruction of already created 21 work product (either by forcing
Apple to return work product to Bridges & Mavrakakis or 22 prohibiting
Bridges & Mavrakakis from turning over already created work product to
Apple's other 23 counsel) is a remedy that punishes the client and not
the attorney for the attorney's improper 24 representation. See Cal
Pak Delivery, Inc. v. United Parcel Service, Inc., 52 Cal. App. 4th 1,
Samsung's motion to disqualify.
(1997). The Court accepts as true the representations made by attorneys at the Bridges firm;
Morrison & Foerster; Wilmer Hale; and Apple itself, as officers of the court, that the Bridges 2 firm's representation of Apple -- and the work they have performed on behalf of Apple -- has been 3 limited to Apple's affirmative claims, and that they have never communicated any Samsung 4 confidential information to Apple or anyone representing Apple in the form of work product or 5 otherwise. See Bridges Decl. ¶¶ 28-29, 36; Pieja Decl. ¶ 18; Whitt Decl. ¶¶ 6, 8; Jacobs Decl. ¶¶ 4, 6
6; Selwyn Decl. ¶¶ 5 & 6, ECF Nos. 142-144. Thus, the Court is satisfied that the drastic 7 destruction of attorney work product is not necessary.*fn4 See Cal Pak Delivery, Inc., 52 Cal. App. 4th at 17 ("Among the principles guiding imposition of such a penalty is that the court must focus 9 on the specific injury to the movant caused by the disqualifying conduct and formulate a ...