`EXHIBIT 2001
`
`EXHIBIT 2001
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`

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`Case 3:11-cv-01810-DMS-WVG Document 534-1 Filed 11/21/13 Page 1 of 30
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`
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`CALDARELLI HEJMANOWSKI & PAGE LLP
`William J. Caldarelli (SBN #149573)
`Ben West (SBN #251018)
`12340 El Camino Real, Suite 430
`San Diego, CA 92130
`Telephone: (858) 720-8080
`Facsimile: (858) 720-6680
`wjc@chplawfirm.com
`dbw@chplawfirm.com
`
`FABIANO LAW FIRM, P.C.
`Michael D. Fabiano (SBN #167058)
`12526 High Bluff Drive, Suite 300
`San Diego, CA 92130
`Telephone: (619) 742-9631
`mdfabiano@fabianolawfirm.com
`
`OSBORNE LAW LLC
`John W. Osborne (Appointed Pro Hac Vice)
`33 Habitat Lane
`Cortlandt Manor, NY 10567
`Telephone: (914) 714-5936
`josborne@osborneipl.com
`
`WATTS LAW OFFICES
`Ethan M. Watts (SBN #234441)
`12340 El Camino Real, Suite 430
`San Diego, CA 92130
`Telephone: (858) 509-0808
`Facsimile: (619) 878-5784
`emw@ewattslaw.com
`
`Attorneys for Plaintiff Ameranth, Inc.
`
`
`
`MEMO OF POINTS & AUTHORITIES IN SUPPORT OF AMERANTH,
`INC.’S MOTION TO DISQUALIFY COUNSEL 11-cv-01810-DMS-WVG
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`Case 3:11-cv-01810-DMS-WVG Document 534-1 Filed 11/21/13 Page 2 of 30
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`UNITED STATES DISTRICT COURT
`
`SOUTHERN DISTRICT OF CALIFORNIA
`
`
`
`IN RE: AMERANTH
`PATENT LITIGATION
`
`CASE NOS.
`
`11cv1810 DMS (WVG) 12cv1643 DMS (WVG)
`12cv0729 DMS (WVG) 12cv1644 DMS (WVG)
`12cv0731 DMS (WVG) 12cv1646 DMS (WVG)
`12cv0732 DMS (WVG) 12cv1648 DMS (WVG)
`12cv0733 DMS (WVG) 12cv1649 DMS (WVG)
`12cv0737 DMS (WVG) 12cv1650 DMS (WVG)
`12cv0739 DMS (WVG) 12cv1651 DMS (WVG)
`12cv0742 DMS (WVG) 12cv1652 DMS (WVG)
`12cv0858 DMS (WVG) 12cv1653 DMS (WVG)
`12cv1627 DMS (WVG) 12cv1654 DMS (WVG)
`12cv1629 DMS (WVG) 12cv1655 DMS (WVG)
`12cv1630 DMS (WVG) 12cv1656 DMS (WVG)
`12cv1631 DMS (WVG) 13cv0350 DMS (WVG)
`12cv1633 DMS (WVG) 13cv0352 DMS (WVG)
`12cv1634 DMS (WVG) 13cv0353 DMS (WVG)
`12cv1636 DMS (WVG) 13cv1072 DMS (WVG)
`12cv1640 DMS (WVG) 13cv1520 DMS (WVG)
`12cv1642 DMS (WVG) 13cv1525 DMS (WVG)
`12cv2350 DMS (WVG) 13cv1840 DMS (WVG)
`
`MEMORANDUM OF POINTS AND
`AUTHORITIES IN SUPPORT OF PLAINTIFF
`AMERANTH, INC.’S MOTION TO DISQUALIFY
`COUNSEL
`
`Date:
`Time:
`Location:
`Judge:
`
`
`
`Complaint Filed: August 15, 2011
`
`
`
`
`
`
`
`January 3, 2014
`1:30 p.m.
`Courtroom 13A
`Hon. Dana M. Sabraw
`
`
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`MEMO OF POINTS & AUTHORITIES IN SUPPORT OF AMERANTH,
`INC.’S MOTION TO DISQUALIFY COUNSEL 11-cv-01810-DMS-WVG
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`Case 3:11-cv-01810-DMS-WVG Document 534-1 Filed 11/21/13 Page 3 of 30
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`
`
`TABLE OF CONTENTS
`
`Page
`
`I. INTRODUCTION ............................................................................................. 1
`
`II. BACKGROUND FACTS ................................................................................ 4
`
`III. ARGUMENT .................................................................................................. 7
`
`A. California Courts Look To ABA Rule 1.12 As Persuasive
`Authority. ............................................................................................. 8
`
`B. Mr. Warriner Is Now Working Against Ameranth On The Same
`Subject Matter He Was Involved With In A Judicial Capacity. .......... 9
`
`C. Mr. Warriner Was Likely Privy To Confidential Information
`Which Ameranth Shared Directly With Judge Everingham But
`Did Not Divulge To Defendants In Ameranth v. Menusoft. .............. 16
`
`D. Defendants Have Asserted New Arguments Since Mr. Warriner
`Joined the Fulbright Firm to Work on These Matters. ...................... 20
`
`E. The Fulbright Defendants Would Not Be Unduly Prejudiced By
`Disqualification Of Their Present Counsel. ....................................... 22
`
`IV. CONCLUSION ............................................................................................ 23
`
`
`
`
`
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`MEMO OF POINTS & AUTHORITIES IN SUPPORT OF AMERANTH,
`INC.’S MOTION TO DISQUALIFY COUNSEL 11-cv-01810-DMS-WVG
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`Case 3:11-cv-01810-DMS-WVG Document 534-1 Filed 11/21/13 Page 4 of 30
`
`
`
`TABLE OF AUTHORITIES
`
`Page
`
`Advanced Messaging Techs. v. EasyLink Services Intern.
`913 F.Supp. 2d 900 (C.D. Cal. 2010) ....................................................... 16
`
`
`Archuleta v. Turley
`904 F.Supp.2d 1185 (D. Utah 2012). .................................................. 11, 19
`
`
`Bernhoft Law Firm, S.C. v. Pollock
`2013 WL 542087 (S.D. Cal. 2013) ............................................................ 8
`
`
`Cho v. Superior Court of Los Angeles County
`39 Cal. App. 4th 113 (1995) ............................................................ 8, 18, 19
`
`
`City and County of San Francisco v. Cobra Solutions
`38 Cal.4th 839, 847–48 (2006)................................................................. 15
`
`
`County of Los Angeles v. Forsyth
`223 F.3d 990 (9th Cir. 2000) .................................................................. 8, 17
`
`
`Fredonia Broadcasting v. RCA Corp.
`569 F.2d 251 (5th Cir. 1978) .................................................................... 14
`
`
`Hall v. Small Business Admin.
`695 F.2d 175 (5th Cir. 1983) ............................................................... 14, 18
`
`
`Hamid v. Price Waterhouse
`51 F.3d 1411 (9th Cir. 1995) ..................................................................... 18
`
`
`Higdon v. Superior Court
`227 Cal. App. 3d 1667 (1991) .................................................................... 8
`
`
`In re de Brittingham
`319 S.W.3d 95 (Tex. App. 2010) ............................................................. 13
`
`
`Isidor Paiewonsky Assoc., Inc. v. Sharp Prop., Inc.
`1990 WL 303427 (D. Virgin Is. 1990) ..................................................... 10
`
`
`j2 Global Comms. Inc. v. Captaris Inc.
`2012 WL 6618272 (C.D. Cal. 2012) ..................................................... 3, 15
`ii
`MEMO OF POINTS & AUTHORITIES IN SUPPORT OF AMERANTH,
`INC.’S MOTION TO DISQUALIFY COUNSEL 11-cv-01810-DMS-WVG
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`Case 3:11-cv-01810-DMS-WVG Document 534-1 Filed 11/21/13 Page 5 of 30
`
`
`
`James v. Mississippi Bar
`962 So. 2d 528 (2007) .............................................................................. 12
`
`
`Jessen v. Hartford Ca. Ins. Co.
`111 Cal. App.4th 698 (2003) ..................................................................... 12
`
`
`Kennedy v. Eldridge
`201 Cal.App.4th 1197 (2011) ..................................................................... 7
`
`
`Laker Airways Ltd. v. Pan American World Airways
`103 F.R.D. 22 (D.D.C.1984) .................................................................... 10
`
`
`Markman v. Westview Instr., Inc.
`517 U.S. 370 (1996) ................................................................................. 13
`
`
`Mississippi Comm’n on Jud. Performance v. Atkinson
`645 So. 2d 1331 (Miss. 1994) .................................................................. 15
`
`
`Monument Builders of Pennsylvania, Inc. v. Catholic Cemeteries Ass'n
`190 F.R.D. 164 (E.D. Pa. 1999) ............................................................... 12
`
`
`Multimedia Patent Trust v. Apple Inc.
`2011 WL 1636928 (S.D. Cal. 2011) .......................................................... 2
`
`
`Openwave Sys. Inc. v. Myriad France S.A.S.
`2011 WL 1225978 (N.D. Cal. 2011) ........................................................ 19
`
`
`Paul E. Iacono Structural Eng'r, Inc. v. Humphrey
`722 F.2d 435 (9th Cir. 1983) ..................................................................... 8
`
`
`People ex rel. Dept. of Corporations v. SpeeDee Oil Change Systems, Inc.
`20 Cal.4th 1135 (2006) ............................................................................... 8
`
`
`Poly Software Int'l v. Datamost Corp.,
`880 F.Supp. 1487 (D.Utah 1995) .................................................. 10, 18, 19
`
`
`Precor Inc. v. Fitness Quest, Inc.
`2006 WL 2469123 (W.D. Wash. 2006) ................................................... 14
`
`
`Sec. Investor Protection Corp. v. Vigman
`587 F.Supp. 1358 (C.D. Cal. 1984) .......................................................... 11
`iii
`MEMO OF POINTS & AUTHORITIES IN SUPPORT OF AMERANTH,
`INC.’S MOTION TO DISQUALIFY COUNSEL 11-cv-01810-DMS-WVG
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`Case 3:11-cv-01810-DMS-WVG Document 534-1 Filed 11/21/13 Page 6 of 30
`
`
`
`State Compensation Ins. Fund v. WPS, Inc.
`70 Cal. App. 4th 644 (1999) ....................................................................... 8
`
`
`State Farm Mut. Auto. Ins. Co. v. Federal Ins. Co.
`72 Cal.App.4th 1422 (1999) ...................................................................... 23
`
`
`Superspeed, LLC, v. IBM Corp.
`C.A. No. 2:07-cv-089 (E.D. Tex. Jan. 18, 2008) ................................ 11, 15
`
`
`U.S. v. Villaspring Health Care Center, Inc.
`2011 WL 5330790 (E.D. Ky. 2011) ......................................................... 12
`
`
`
`OTHER
`
`ABA Model Rule 1.11 ................................................................... 9, 10, 13, 17, 19
`
`ABA Model Rule 1.12 .................... 1, 2, 7, 8, 9, 10, 11, 12, 14, 15, 16, 17, 19, 23
`
`Cal. Code Civ. Proc. § 128(a)(5) .......................................................................... 8
`
`Local Rule 83.4(b) ....................................................................................... 1, 7, 23
`
`37 C.F.R. §11.112 ........................................................................................ 2, 7, 23
`
`35 USC §112 ....................................................................................................... 14
`
`
`
`
`
`
`
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`MEMO OF POINTS & AUTHORITIES IN SUPPORT OF AMERANTH,
`INC.’S MOTION TO DISQUALIFY COUNSEL 11-cv-01810-DMS-WVG
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`Case 3:11-cv-01810-DMS-WVG Document 534-1 Filed 11/21/13 Page 7 of 30
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`
`
`I. INTRODUCTION
`
`Plaintiff Ameranth, Inc. moves to disqualify attorney Jim Warriner, one of
`
`the counsel for defendants Papa John’s, Expedia, Fandango, Hotel Tonight,
`
`Hotels.com, Hotwire, Kayak, Live Nation/TicketMaster, Micros, Orbitz,
`
`StubHub, Travelocity, Wanderspot and OpenTable (the “Fulbright
`
`Defendants”), and Mr. Warriner’s law firm, Norton Rose Fulbright (fka
`
`Fulbright & Jaworski LLP)(the “Fulbright Firm”), for violation of Rule 1.12 of
`
`the ABA Rules of Professional Conduct and Local Rule 83.4(b).
`
`Mr. Warriner served as the judicial law clerk to the Hon. Chad
`
`Everingham of the United States District Court for the Eastern District of Texas
`
`when the Ameranth v. Menusoft lawsuit was prosecuted and tried before that
`
`court involving Ameranth’s ‘850, ‘325 and ‘733 patents, each of which are
`
`among the four patents in suit in the consolidated cases pending before this
`
`Court. Defense counsel in the Texas litigation included Fulbright attorneys
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`Richard Zembek, Mark Delflache, and Dustin Mauck, each of whom also
`
`represents the Fulbright Defendants in these consolidated cases. Mr. Warriner is
`
`now employed as an attorney with the Fulbright firm and he is directly involved
`
`with both the consolidated cases before this Court and the covered business
`
`method (“CBM”) proceedings before the United States Patent & Trademark
`
`Office (“Patent Office” or “PTO”).
`
`Southern District of California Local Rule 83.4(b), entitled “Standards of
`
`Professional Conduct,” advises counsel to conduct themselves in compliance
`
`with the “Code of Professional Responsibility of the American Bar
`
`/ / /
`
`/ / /
`
`/ / /
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`Case 3:11-cv-01810-DMS-WVG Document 534-1 Filed 11/21/13 Page 8 of 30
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`
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`Association.”1 This District looks to the ABA Model Rules of Professional
`
`Conduct when determining disqualification motions. See, e.g., Multimedia
`
`Patent Trust v. Apple Inc., 2011 WL 1636928 *2 (S.D. Cal. 2011).
`
`ABA Model Rule 1.12 (“Former Judge, Arbitrator, Mediator or Other
`
`Third-Party Neutral”) provides that:
`(a) … a lawyer shall not represent anyone in connection with a
`matter in which the lawyer participated personally and substantially
`as a judge or other adjudicative officer or law clerk to such a person
`or as an arbitrator, mediator or other third-party neutral, unless all
`parties to the proceeding give informed consent, confirmed in
`writing.
`…
`(c) If a lawyer is disqualified by paragraph (a), no lawyer in a firm
`with which that lawyer is associated may knowingly undertake or
`continue representation in the matter unless:
`
`(1)
`
`the disqualified lawyer is timely screened from any
`participation in the matter and is apportioned no part of the
`fee therefrom; and
`
`(2) written notice is promptly given to the parties and any
`appropriate tribunal to enable them to ascertain compliance
`with the provisions of this rule.
`
`ABA Model Rule 1.12 is the basis of a substantively identical Patent
`
`Office ethical rule, codified at 37 C.F.R. §11.112, which provides:
`
`(a) … a practitioner shall not represent anyone in connection with a
`matter in which the practitioner participated personally and substantially
`as a judge or other adjudicative officer or law clerk to such a person or as
`
`
`
`1 The standard of care exercised by this Court in assuring compliance with
`applicable ethical considerations is exemplified in this very case by Judges
`Sammartino and Stormes, among others, recusing themselves to assure that no
`conflicts were presented.
`
`2
`MEMO OF POINTS & AUTHORITIES IN SUPPORT OF AMERANTH,
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`
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`an arbitrator, mediator or other third-party neutral, unless all parties to the
`proceeding give informed consent, confirmed in writing.
`. . .
`(c) If a practitioner is disqualified by paragraph (a) of this section,
`no practitioner in a firm with which that practitioner is associated may
`knowingly undertake or continue representation in the matter unless:
`
`(1) The disqualified practitioner is timely screened from any
`participation in the matter and is apportioned no part of the fee therefrom;
`and
`
`(2) Written notice is promptly given to the parties and any
`appropriate tribunal to enable them to ascertain compliance with the
`provisions of this section.
`
`Because Mr. Warriner served as a judicial law clerk in the Ameranth v.
`
`Menusoft lawsuit involving the same patents and many of the same critical
`
`issues of patent validity present in the consolidated cases and in the CBM
`
`proceedings, both Mr. Warriner and his employer—the Fulbright Firm—should
`
`be disqualified in this action. Further, the Fulbright Defendants and non-
`
`Fulbright Defendants are parties to a joint defense agreement and are co-
`
`petitioners in the CBM petitions2. Discovery should be permitted into
`
`communications within the joint defense group to determine whether other
`
`counsel are tainted and further disqualifications are consequently appropriate.
`
`See j2 Global Comms. Inc. v. Captaris Inc., 2012 WL 6618272 *10 (C.D. Cal.
`
`2012) (ordering co-counsel that had discussions with the disqualified attorney to
`
`be screened from the case).
`
`As discussed herein, courts across the country have decisively dealt with
`
`situations of this ilk by disqualifying the conflicted attorneys and their laws firm
`
`
`
`2 Ameranth plans to bring a similar disqualification motion before the USPTO.
`
`3
`MEMO OF POINTS & AUTHORITIES IN SUPPORT OF AMERANTH,
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`
`
`in order to avoid the appearance of impropriety and to protect the integrity of the
`
`judicial system. A similar result should obtain here.
`
`II. BACKGROUND FACTS
`
`In 2007, Ameranth filed a patent infringement lawsuit in the Eastern
`
`District of Texas against Menusoft Corporation and other defendants styled as
`
`Ameranth v. Menusoft, Civil Case No. 07-cv-271. The Ameranth v. Menusoft
`
`case was assigned to the Honorable Chad Everingham. Judge Everingham’s law
`
`clerk for the bulk of the substantive proceeding in the lawsuit, including for the
`
`Markman hearing, claim construction, settlement conferences, and the trial
`
`itself, was Jim Warriner3. Osborne Decl., ¶¶ 2, 4.
`
`The defendants in the Ameranth v. Menusoft lawsuit were accused of
`
`infringing three of Ameranth’s patents—the ‘850, ‘325 and ‘733 patents. The
`
`claim terms were construed by the court, and a jury trial was held from
`
`September 13-20, 2010 before Judge Everingham. Jim Warriner was Judge
`
`Everingham’s sole law clerk throughout the key phases of the litigation
`
`including at the Markman Hearing, for dispositive motion dispositions and at the
`
`trial. Exhs. 3, 11. Judge Everingham also held confidential settlement meetings
`
`with the parties to attempt to resolve the matter. Osborne Decl., ¶ 4; McNally
`
`Decl., ¶ 5.
`
`Defendants in the Ameranth v. Menusoft lawsuit were represented by the
`
`Fulbright Firm. Richard Zembek, Mark Delflache and Dustin Mauck of the
`
`Fulbright Firm were primary defense counsel and attended and participated in
`
`the trial. Mr. Zembek and Mr. Delflache attended the Markman Hearing with
`
`
`
`3 Mr. Warriner was also, for a short period of time, Judge Everingham’s law
`clerk while Ameranth v. Par Technology Corp., Eastern District of Texas Case
`No. 2:10-cv-294, was assigned to Judge Everingham. NOL, Exh. 13; Osborne
`Decl., ¶ 6. Ameranth v. Par was likewise a suit for infringement of Ameranth’s
`‘850, ‘325 and ‘733 patents.
`4
`MEMO OF POINTS & AUTHORITIES IN SUPPORT OF AMERANTH,
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`
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`Mr. Zembek primarily presenting the defendants’ positions. Osborne Decl., ¶¶
`
`3, 5; NOL, Exh. 3.
`
`Ameranth commenced the earliest of the consolidated cases currently
`
`pending before this Court in August of 2011. Dkt. No. 1. One of the original
`
`defendants sued at that time on the ‘850 and ‘325 patents (and subsequently
`
`sued on the ‘077 patent) was Papa John’s. Papa John’s has been represented at
`
`all times by the Fulbright Firm, and Richard Zembek, and Mark Delflache and
`
`Dustin Mauck have been among the primary members of the Fulbright team
`
`representing Papa John’s in the matter. Osborne Decl., ¶ 8.
`
`As the litigation has progressed, and additional defendants have been
`
`added to the consolidated cases, the Fulbright Firm has expanded its
`
`representation of defendants accused of infringing Ameranth’s ‘850, ‘325, ‘733
`
`and ‘077 patents, so that the Fulbright Firm now represents all 14 of the
`
`“Fulbright Defendants” identified above. Osborne Decl., ¶ 9.
`
`In the consolidated cases, the defendants—including the Fulbright
`
`Defendants—raise numerous challenges to the validity of the ‘850, ‘325 and
`
`‘733 patents, including the same challenges previously raised to those same
`
`patents in the Ameranth v. Menusoft action. Furthermore, the defendants,
`
`including the Fulbright Defendants, raise a number of defenses and issues
`
`arising directly out of the Ameranth v. Menusoft lawsuit. For example,
`
`defendants argue that the judgment entered in the Ameranth v. Menusoft case
`
`(and subsequently vacated while on appeal to the Federal Circuit) should
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`collaterally estop Ameranth from asserting the claims of the patents against the
`
`defendants in this action. See, e.g., Case No. 12-cv-1636, Dkt. No. 17-1, pp. 5-
`
`12. Likewise, defendants argue that the claim construction rulings issued by
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`Judge Everingham should unilaterally collaterally estop Ameranth (but not the
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`defendants) from asserting other constructions. Dkt. No. 497 (Transcript of
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`Proceedings, pp. 10-11, Sept. 12, 2013). Furthermore, defendants assert claims
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`of inequitable conduct against Ameranth on the (incorrect) grounds that
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`Ameranth supposedly failed to disclose to the USPTO the alleged “prior art”
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`references that the defendants in the Ameranth v. Menusoft submitted to the
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`Eastern District of Texas. See, e.g., Case No. 12-cv-733, Dkt. No. 59, ¶¶169-72;
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`Case No. 12-cv-1651, Dkt. No. 40, ¶209. Thus, there are substantial
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`overlapping issues between the Ameranth v. Menusoft litigation and the
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`consolidated cases before this Court. Likewise, the CBM petitions challenge the
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`validity of the patents in suit on many of the grounds unsuccessfully asserted as
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`defenses in the Ameranth v. Menusoft matter. Osborne Decl., ¶ 11.
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`According to Mr. Warriner’s professional profile, he joined the Fulbright
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`Firm as an associate attorney in August of 2013—approximately two years after
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`the earliest of the Consolidated Cases were filed against Papa John’s and others
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`and roughly two months before the defendants filed their Covered Business
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`Method (“CBM”) petitions in the Patent Office. Exh. 2. Email correspondence
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`demonstrates that Mr. Warriner started working on this case and the defendants’
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`CBM petitions almost immediately after joining Fulbright. Exhs. 4-9.
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`A review of recent emails exchanges between counsel for Ameranth and
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`the Fulbright Firm reveal that Mr. Warriner has been involved with both the
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`CBM petitions, and with the defense of the consolidated cases, since at least
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`September 27, 2013. Exh. 44. Mr. Warriner is working on these matters with
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`the same Fulbright attorneys who tried the Ameranth v. Menusoft lawsuit before
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`Judge Everingham while Mr. Warriner was Judge Everingham’s law clerk—
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`Richard Zembek, Mark Delflache, and Dustin Mauck—among others. Osborne
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`Decl., ¶¶ 3, 8, 10.
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`
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`4 Although Mr. Warriner began appearing in emails by September 27, 2013,
`Ameranth’s counsel did not realize who he was until mid-November 2013.
`Osborne Decl., ¶ 12.
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`INC.’S MOTION TO DISQUALIFY COUNSEL 11-cv-01810-DMS-WVG
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`Case 3:11-cv-01810-DMS-WVG Document 534-1 Filed 11/21/13 Page 13 of 30
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`From this evidence it is clear that: 1) Mr. Warriner participated personally
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`and substantially in the Ameranth v. Menusoft lawsuit as a judicial law clerk to
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`Judge Everingham (Exhs. 1-3, 11); 2) Mr. Warriner has participated personally
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`and substantially in both the consolidated cases and the CBM petitions (Exhs. 4-
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`8) as an associate attorney with the Fulbright Firm, and consequently has not
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`been timely screened from involvement, participation or contact in or with the
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`consolidated cases or the CBM petitions; and 3) the notices required by Rule
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`1.12 have never been served upon Ameranth, the Court or the USPTO. Osborne
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`Decl., ¶ 13.
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`In light of his substantial personal involvement with the Ameranth v.
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`Menusoft lawsuit as a judicial law clerk, Mr. Warriner is disqualified from
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`participation in the consolidated cases, and the CBM petitions, under ABA
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`Model Rule 1.12, Local Rule 83.4(b), and USPTO ethical rule 37 C.F.R.
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`§11.112. Furthermore, because Mr. Warriner has not been ethically screened
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`from the rest of the Fulbright Firm in a timely manner, the entire Fulbright Firm
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`is disqualified from participation in those matters as well. Moreover, discovery
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`should be permitted into the extent of joint defense group communications
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`between tainted members of the Fulbright Firm and other defense counsel in the
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`joint defense group to determine if additional disqualifications are appropriate.
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`III. ARGUMENT
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`Mr. Warriner was not formerly Ameranth’s attorney, but his position as
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`law clerk to the judge who presided over a case involving the same Ameranth
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`patents asserted in this matter disqualifies him from working in a capacity
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`adverse to Ameranth here. Indeed, “no California case has held that only a
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`client or former client may bring a disqualification motion.” Kennedy v.
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`Eldridge, 201 Cal.App.4th 1197, 1204 (2011) (emphasis added). This is
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`because “[a] trial court's authority to disqualify an attorney derives from the
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`Case 3:11-cv-01810-DMS-WVG Document 534-1 Filed 11/21/13 Page 14 of 30
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`power inherent in every court ‘[t]o control in furtherance of justice, the conduct
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`of its ministerial officers, and of all other persons in any manner connected with
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`a judicial proceeding before it, in every matter pertaining thereto.’” People ex
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`rel. Dept. of Corporations v. SpeeDee Oil Change Systems, Inc., 20 Cal.4th
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`1135, 1145 (2006) (quoting Cal. Code Civ. Proc. § 128(a)(5)). Ultimately,
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`California law recognizes that “[t]he important right to counsel of one's choice
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`must yield to ethical considerations that affect the fundamental principles of our
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`judicial process.” Id. “Disqualification of counsel not only prevents attorneys
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`from breaching their ethical duties, but also protects the judicial process from
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`any taint of unfairness that might arise from conflicts of interest.” Bernhoft Law
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`Firm, S.C. v. Pollock, 2013 WL 542087 *2 (S.D. Cal. 2013).
`A. California Courts Look To ABA Rule 1.12 As Persuasive
`Authority.
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`Courts applying California ethics law look to the ABA Model Rules of
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`Professional Conduct as persuasive authority, including Rule 1.12. See County
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`of Los Angeles v. Forsyth, 223 F.3d 990, 993 (9th Cir. 2000) (“Though the
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`Model Rules of Professional Conduct have not been adopted as binding under
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`California law (which governs here), see State Compensation Ins. Fund v. WPS,
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`Inc., 70 Cal. App. 4th 644, 655-56 (1999), we rely on the Rules as persuasive
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`authority. See Paul E. Iacono Structural Eng'r, Inc. v. Humphrey, 722 F.2d 435,
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`439 (9th Cir. 1983); see also Cho v. Superior Court, 39 Cal. App. 4th 113, 121
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`n.2 (1995); Higdon v. Superior Court, 227 Cal. App. 3d 1667, 1680, 278 Cal.
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`Rptr. 588 (1991)”).
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`Former clerk Warriner and his current firm, Fulbright, are clearly
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`disqualified from representing parties adverse to Ameranth in the consolidated
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`cases. Rule 1.12 provides that:
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`(a) … a lawyer shall not represent anyone in connection with a
`matter in which the lawyer participated personally and
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`substantially as a judge or other adjudicative officer or law clerk .
`. . unless all parties to the proceeding give informed consent,
`confirmed in writing.
`…
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`(c)
`If a lawyer is disqualified by paragraph (a), no lawyer in a
`firm with which that lawyer is associated may knowingly
`undertake or continue representation in the matter unless:
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`(1) the disqualified lawyer is timely screened from any
`participation in the matter and is apportioned no part of the
`fee therefrom; and
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`(2) written notice is promptly given to the parties and any
`appropriate tribunal to enable them to ascertain compliance
`with the provisions of this rule. (Emphasis added).
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`Mr. Warriner is now working on matters which involve the same subject
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`matter and issues as presented in Ameranth v. Menusoft, Ameranth was not
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`notified of and has not consented to Mr. Warriner’s participation in these
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`matters, Mr. Warriner was not timely screened from the actions adverse to
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`Ameranth (in fact he apparently was hired and immediately assigned to work on
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`those matters), and neither Mr. Warriner nor the Fulbright Firm provided any
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`written notice to Ameranth, the Court or the Patent Office. Under these
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`circumstances, the application of the Rule is clear: Mr. Warriner and his firm
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`must be disqualified from the consolidated cases and from the CBM
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`proceedings.
`B. Mr. Warriner Is Now Working Against Ameranth On The
`Same Subject Matter He Was Involved With In A Judicial
`Capacity.
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`Numerous courts have held that the ABA Rule of Professional Conduct
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`broad interpretation of “matter” in Rule 1.11(d) provides definition to the term
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`“matter” in ABA Rule 1.12:
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`Case 3:11-cv-01810-DMS-WVG Document 534-1 Filed 11/21/13 Page 16 of 30
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`[T]he term “matter” includes:
`(1) any judicial or other proceeding, application, request for a
`ruling or other determination, contract, claim, controversy,
`investigation, charge, accusation, arrest or other particular matter
`involving a specific party or parties....
`Model Rule 1.11(d). As one commentator has stated, the thrust of
`the word “is more in the direction of universality than of
`delimitation.” C. Wolfram, Modern Legal Ethics § 8.10 (1986) at
`471, 472–73 (additionally stating that the same issue of fact
`involving the same parties and the same situation or conduct is the
`same matter); see also Laker Airways Ltd. v. Pan American World
`Airways, 103 F.R.D. 22, 34, 38 & n. 60 (D.D.C.1984) (interpreting
`similar language in a District of Columbia rule to require that the
`relationship between issues in prior and present cases be “patently
`clear”).
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`In his roles as territorial court judge and special master, Feuerzeig
`participated personally and substantially in attempts to resolve a
`disagreement concerning the existence and extent of an easement
`over Parcel No. 38 . . . those same parties are now before the AAA.
`. . [T]the arbitration panel will have to ascertain whether an
`easement exists and, if so, the extent of the easement and how it
`was created. Hence, the same “matter” in which Feuerzeig
`participated personally and substantially as judge and special
`master is before the panel in the arbitration proceeding, in which
`Feuerzeig is ARI's lead counsel. Rule 1.12(a) requires, therefore,
`that Feuerzeig be disqualified from further representation of ARI in
`the disputes that are now before the AAA.
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`Isidor Paiewonsky Assoc., Inc. v. Sharp Prop., Inc., 1990 WL 303427 at *8 (D.
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`Virgin Is. 1990).
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`By choosing the word “matter” for Rule 1.11 and Rule 1.12, the
`Utah Supreme Court intended the two rules to encompass more
`than just the same lawsuit. In the context of interpreting “matter”
`for the purpose of understanding Rule 1.12, courts have held: “The
`same lawsuit or litigation is the same matter. The same issue of fact
`involving the same parties and the same situation or conduct is the
`same matter.... [T]he same ‘matter’ is not involved [when] ... there
`is lacking the discrete, identifiable transaction of conduct involving
`a particular situation and specific parties.” See Poly Software Int'l v.
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