`EXHIBIT 2002
`EXHIBIT 2002
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`Case 3:11-cv-01810-DMS-WVG Document 541-1 Filed 11/22/13 Page 1 of 31
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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.
`
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`IN RE: AMERANTH
`PATENT LITIGATION
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`
`
`UNITED STATES DISTRICT COURT
`
`SOUTHERN DISTRICT OF CALIFORNIA
`
`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 AKIN GUMP
`
`
`Date:
`
`Time:
`Courtroom:
`Judge:
`
`
`Complaint Filed: August 15, 2011
`
`January 3, 2014
`1:30 p.m.
`13A
`Hon. Dana M. Sabraw
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`Case 3:11-cv-01810-DMS-WVG Document 541-1 Filed 11/22/13 Page 3 of 31
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`
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`TABLE OF CONTENTS
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`Page
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`I. INTRODUCTION ............................................................................................. 1
`
`II. BACKGROUND FACTS ................................................................................ 5
`
`III. ARGUMENT .................................................................................................. 9
`
`A. California Courts Look To ABA Rule 1.12 As Persuasive
`Authority. ........................................................................................... 10
`
`B. Mr. Everingham’s Firm, Akin Gump, Is Now Working Against
`Ameranth On The Same Subject Matter Mr. Everingham Was
`Involved With In A Judicial Capacity. .............................................. 12
`
`C. Mr. Everingham Has Worked Closely With David Stein,
`Hilton’s Counsel Here, And Has Been In Close Proximity To
`Mr. Stein In a Small Office. ............................................................... 17
`
`D. Ameranth Shared Its Confidential Information Directly With
`Judge Everingham But Did Not Divulge That Confidential
`Information To Defendants In The Ameranth v. Menusoft Case. ...... 20
`
`E. Defendants Would Not Be Prejudiced By
`Disqualification Of Their Tainted Present Counsel. .......................... 23
`
`IV. CONCLUSION ............................................................................................ 24
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`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Page
`
`Advanced Messaging Techs. v. EasyLink Services Intern.
`913 F.Supp. 2d 900 (C.D. Cal. 2010) ....................................................... 21
`
`
`Archuleta v. Turley
`904 F.Supp. 2d 1185 (D. Utah 2012) .................................................. 13, 23
`
`
`Bernhoft Law Firm, S.C. v. Pollock
`2013 WL 542087 (S.D. Cal. 2013) .......................................................... 10
`
`
`Cho v. Superior Court
`39 Cal. App. 4th 113 (1995) .................................................... 10, 11, 22, 23
`
`
`City and County of San Francisco v. Cobra Solutions
`38 Cal.4th 839 (2006)) ............................................................................. 21
`
`
`County of Los Angeles v. Forsyth
`223 F.3d 990 (9th Cir. 2000) ................................................................ 10, 21
`
`
`Fredonia Broadcasting v. RCA Corp.
`569 F.2d 251 (5th Cir. 1978) .................................................................... 16
`
`
`Higdon v. Superior Court
`227 Cal. App. 3d 1667 (1991) ............................................................. 10, 11
`
`
`Honeywell Int’l, Inc. v. Philips Lumileds Lighting Co.
`2009 WL 256831 (E.D. Tex. 2009) ......................................................... 19
`
`
`In re de Brittingham
`319 S.W.3d 95 (Tex. App. 2010) ............................................................. 15
`
`
`Isidor Paiewonsky Assoc., Inc. v. Sharp Prop., Inc.
`1990 WL 303427 (D. Virgin Is. 1990) ..................................................... 13
`
`
`j2 Global Comms. Inc. v. Captaris Inc.
`2012 WL 6618272 (C.D. Cal. 2012) ..................................................... 5, 21
`
`
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`
`
`James v. Mississippi Bar
`962 So. 2d 528 (2007) .............................................................................. 15
`
`
`Jessen v. Hartford Ca. Ins. Co.
`111 Cal. App.4th 698 (2003) ..................................................................... 15
`
`
`Kennedy v. Eldridge
`201 Cal.App.4th 1197 (2011) ................................................................... 10
`
`
`Laker Airways Ltd. v. Pan American World Airways
`103 F.R.D. 22 (D.D.C. 1984) ................................................................... 12
`
`
`Lodsys, LLC v. Caesars Interactive Entertainment, Inc.
`C.A. No. 2:13-cv-00272 (E.D. Tex. 2013)............................................ 9, 18
`
`
`Macrosolve, Inc. v. Wyndham Hotel Group, LLC
`C.A. No. 6:13-cv-00675-KNM (E.D. Tex.) .......................................... 9, 18
`
`
`Markman v. Westview Instr., Inc.
`517 U.S. 370 (1996) ................................................................................. 15
`
`
`Mississippi Comm’n on Jud. Performance v. Atkinson
`645 So. 2d 1331 (Miss. 1994) .................................................................. 16
`
`
`Monument Builders of Pennsylvania, Inc. v. Catholic Cemeteries Ass'n
`190 F.R.D. 164 (E.D. Pa. 1999) ............................................................... 15
`
`
`Multimedia Patent Trust v. Apple Inc.
`2011 WL 1636928 (S.D. Cal. 2011) .......................................................... 3
`
`
`Openwave Sys. Inc. v. Myriad France S.A.S.
`2011 WL 1225978 (N.D. Cal. 2011) ........................................................ 23
`
`
`Paul E. Iacono Structural Eng'r, Inc. v. Humphrey
`722 F.2d 435 (9th Cir. 1983) .................................................................... 10
`
`
`People ex rel. Dept. of Corporations v. SpeeDee Oil Change Systems, Inc.
`20 Cal.4th 1135 (2006) ............................................................................. 10
`
`
`Poly Software Int'l v. Datamost Corp.
`880 F.Supp. 1487 (D. Utah 1995) ................................................. 13, 22, 23
`
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`
`
`Precor Inc. v. Fitness Quest, Inc.
`2006 WL 2469123 (W.D. Wash. 2006) ................................................... 16
`
`
`Sec. Investor Protection Corp. v. Vigman
`587 F.Supp. 1358 (C.D. Cal. 1984) .......................................................... 13
`
`
`State Compensation Ins. Fund v. WPS, Inc.
`70 Cal. App. 4th 644 (1999) ..................................................................... 10
`
`
`State Farm Mut. Auto. Ins. Co. v. Federal Ins. Co.
`72 Cal.App.4th 1422 (1999) ...................................................................... 24
`
`
`SuperSpeed, LLC, v. IBM Corp.,
`C.A. No. 2:07-cv-089 (E.D. Tex. 2008) .............................................. 14, 16
`
`
`U.S. v. Villaspring Health Care Center, Inc.
`2011 WL 5330790 (E.D. Ky. 2011) ......................................................... 15
`
`
`
`Other
`
`ABA Model Rule 1.10 ........................................................................................ 21
`
`ABA Model Rule 1.11 ....................................................................... 12, 13, 21, 23
`
`ABA Model Rule 1.12 ...........................1, 2, 3, 4, 9, 10, 11, 12, 13, 14, 20, 21, 23
`
`Cal. Civ. Proc. Code § 128(a)(5) ........................................................................ 10
`
`Local Rule 83.4(b) ......................................................................................... 1, 3, 9
`
`35 USC §112 ....................................................................................................... 17
`
`37 C.F.R.§11.112 ............................................................................................... 3, 9
`
`
`
`
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`I. INTRODUCTION
`
`Plaintiff Ameranth, Inc. (“Ameranth”) moves to disqualify Akin Gump,
`
`defense counsel for defendants Hilton Resorts Corp., Hilton Worldwide, Inc.
`
`and Hilton Int’l Co. (collectively “Hilton” or “Hilton Defendants”) in order to
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`avoid violation of applicable ethics rules, including Rule 1.12 of the ABA Rules
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`of Professional Conduct and Local Rule 83.4(b).
`
`Attorney David Stein, lead counsel for Hilton in these consolidated cases,
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`accepted the representation of Hilton in this matter in 2012 for Akin Gump
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`despite the fact that he works closely with Charles Everingham, a former
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`Magistrate Judge from the Eastern District of Texas who presided over the
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`Ameranth v. Menusoft patent infringement lawsuit from its filing to disposition
`
`of post-trial motions, as well as the Ameranth v. Par patent infringement
`
`lawsuit, regarding several of the same patents, and concerning many of the same
`
`issues, involved in the consolidated cases. Mr. Stein and Mr. Everingham are
`
`partners with Akin Gump, and both work out of Akin Gump’s Longview, Texas
`
`office. These facts call into question whether Akin Gump could have possibly
`
`adequately screened Mr. Everingham from matters involving Ameranth.1
`
`Moreover, irrespective of any screening that may or may not have
`
`occurred, neither Ameranth, the Court, nor the USPTO was given notice of the
`
`/ / /
`
`/ / /
`
`/ / /
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`
`
`1
`
` Mr. Stein and Mr. Everingham are working together on other hotel defendant
`patent cases involving web/wireless technology, along with lawyers representing
`Hilton here and in the CBM proceedings (Kellie Johnson and Emily Johnson).
`
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`
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`potential issue regarding Mr. Everingham, and thus disqualification of Akin
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`Gump is mandated under ABA Rule 1.12(c) and similar authorities.2
`
`The Ameranth v. Menusoft case presided over by former Judge
`
`Everingham from 2007-2011, and the Ameranth v. Par case assigned to him
`
`from 2010-2011, involved Ameranth’s ‘850, ‘325 and ‘733 patents, each of
`
`which are among the four patents in suit in the consolidated cases before this
`
`Court. Mr. Everingham is now a partner at Akin Gump in Akin’s Longview,
`
`Texas office. Attorney David Stein, lead counsel for Hilton here, also works out
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`of Akin’s Longview office (at least part of the time—Mr. Stein also works in
`
`Los Angeles). Exh. 2. Only one other attorney lists their situs on the Akin
`
`Gump website as Longview, and that is Akin’s Global Head of IP and member
`
`of the firm management committee, with principal office in either Houston or
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`New York. The close proximity of Mr. Stein and Mr. Everingham utilizing the
`
`same office, their involvement in numerous patent litigation matters together
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`concerning subject matters in the same field as the consolidated cases before this
`
`Court, and the lack of any notices of screening (as required by Rule 1.12) raise
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`serious concerns over whether Mr. Everingham has been screened from contact
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`with the consolidated cases and the CBM proceedings involving the Ameranth
`
`patents. This concern is accentuated by the fact that Hilton has specifically
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`raised issues to this Court regarding the effect of the proceedings in the
`
`/ / /
`
`
`
`2 Ameranth wishes to make clear that it has the highest respect for Judge
`Everingham and does not allege that he has intentionally disclosed information
`adverse to Ameranth. However, due to his unique knowledge of Ameranth and
`the similar subject matter fields he is working in at Akin Gump, with the same
`Akin Gump counsel working on these consolidated cases, the possibility of
`inadvertent disclosure is simply too high to allow the Akin Gump representation
`against Ameranth to continue.
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`
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`Ameranth v. Menusoft and Ameranth v. Par lawsuits presided over by Judge
`
`Everingham when he was on the bench.
`
`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
`
`Association.”3 This District looks to the ABA Model Rules of Professional
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`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:
`
`
`
`3 The standard of care exercised by this Court is exemplified in this case by both
`Judges Sammartino and Stormes recusing themselves from the case to assure
`that no conflicts were presented.
`
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`
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`(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
`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. Everingham was the judge in the Ameranth v. Menusoft and
`
`Ameranth v. Par lawsuits involving the same patents and many of the same
`
`issues of patent validity present in the consolidated cases and in the CBM
`
`proceedings, both Mr. Everingham and his entire law firm should be disqualified
`
`for failing to properly ethically screen Mr. Everingham from these matters.
`
`Moreover, even if proper and timely screening can be shown, Akin Gump
`
`should be disqualified because neither Ameranth, the Court nor the Patent Office
`
`was notified of the issue presented by Akin Gump attorneys working adverse to
`
`Ameranth while Mr. Everingham was a partner in their firm and collaborating
`
`with them on other cases, as required by Rule 1.12(c)(2). Osborne Decl., ¶ 11.
`
`Further, the non-Hilton defendants in the consolidated cases pending in
`
`this Court are parties to a joint defense agreement with Hilton, are co-petitioners
`
`in the CBM proceedings before the USPTO,4 and the non-Hilton defendants’
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`counsel have interacted with Hilton counsel regarding the subject matter over
`
`
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`4 Ameranth plans to bring a similar disqualification motion before the USPTO.
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`
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`which Judge Everingham presided in the Ameranth v. Menusoft and Ameranth v.
`
`Par litigations. Without evidence of proper and timely screening, these
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`interactions create the possibility of improper transmission of information from
`
`tainted Hilton counsel to all of the other defendants in this case. Therefore,
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`discovery should be permitted into the extent of joint defense group
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`communications between disqualified members of the Akin Gump firm and
`
`other defense counsel in the joint defense group to determine if additional
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`disqualifications are appropriate.5 See j2 Global Comms. Inc. v. Captaris Inc.,
`
`2012 WL 6618272 *10 (C.D. Cal. 2012) (ordering co-counsel that had
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`discussions with the disqualified attorney to be screened from the case).
`
`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
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`case was assigned to the Hon. Charles Everingham. The defendants in the
`
`Ameranth v. Menusoft lawsuit were accused of infringing three of Ameranth’s
`
`patents—the ‘850, ‘325 and ‘733 patents. The claims of the terms were
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`construed by the court, and a jury trial was held from September 13-20, 2010
`
`before Judge Everingham. Osborne Decl., ¶¶2-3.
`
`In 2010, Ameranth filed a patent infringement lawsuit in the Eastern
`
`District of Texas against Par Technology Corp. and other defendants styled as
`
`Ameranth v. Par, Civil Case No. 10-cv-294. The Ameranth v. Par case was
`
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`5 Although Ameranth was aware that Mr. Everingham left the bench and entered
`private practice, it did not investigate any potential conflict until mid-November
`of 2013, when it became aware that Mr. Everingham’s former law clerk, Jim
`Warriner, was working on the consolidated cases and CBM petitions for the
`Fulbright Firm, which is part of the joint defense group with Akin Gump.
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`assigned to Judge Everingham as well, and also involved claims for
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`infringement of the ‘850 and ‘325 patents. Osborne Decl., ¶4.
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`Ameranth filed the earliest of the consolidated cases in August of 2011.
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`Ameranth sued Hilton in June of 2012 on the ‘850, ‘325 and ‘077 patents.
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`Hilton has been represented at all times by Akin Gump, and David Stein, Emily
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`Johnson and Kellie Johnson have been among the primary members of the firm
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`representing Hilton since inception of the case. Osborne Decl., ¶7-8.
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`In the consolidated cases, the defendants—including Hilton—raise
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`numerous challenges to the validity of the ‘850, ‘325 and ‘733 patents, including
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`the same challenges previously raised to those same patents in the Ameranth v.
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`Menusoft and Ameranth v. Par actions. Furthermore, the defendants, including
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`Hilton, raise a number of defenses and issues arising directly out of the
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`Ameranth v. Menusoft and Ameranth v. Par lawsuits. For example, defendants
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`argue that the judgment entered in the Ameranth v. Menusoft case (and
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`subsequently vacated), or subsequent orders entered in Ameranth v. Par based
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`on such judgment, should collaterally estop Ameranth from asserting the claims
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`of the patents against the defendants here. See, e.g., Case No. 12-cv-1636, Dkt.
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`No. 17-1, pp. 5-12 (Hilton Motion to Dismiss); Case No. 11-cv-1810, Dkt. No.
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`457-1 (Hilton Motion for Reconsideration). Likewise, defendants argue that
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`Judge Everingham’s claim construction rulings should unilaterally collaterally
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`estop Ameranth (but not the defendants) from asserting other constructions. Dkt
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`No. 497 (Transcript of Proceedings, pp. 10-11, Sept. 12, 2013). Furthermore,
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`defendants assert claims of inequitable conduct against Ameranth on the
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`(incorrect) grounds that Ameranth supposedly failed to disclose to the USPTO
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`the alleged “prior art” references that the defendants in the Ameranth v.
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`Menusoft submitted to the Eastern District of Texas. See, e.g., Case No. 12-cv-
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`1636, Dkt. No. 44, ¶¶136-139, 205; 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 and Ameranth v. Par
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`litigation and the consolidated cases before this Court. Hilton itself made the
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`following representation to this Court: “The exact same factual and legal issues
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`concerning the invalidity of the ’850 and ’325 patents that are presented by this
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`litigation were previously adjudicated in Ameranth, Inc. v. Menusoft Sys. Corp.
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`et al., No. 2:07-CV-271 (E.D. Tex.).” Case No. 12-cv-1636, Dkt. No. 17-1, p. 5,
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`ll. 22-25 (Hilton Motion to Dismiss—signed by David Stein).
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`Akin Gump, on behalf of Hilton, has been aggressively pursuing issues
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`directly related to the Markman orders and other rulings that Mr. Everingham
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`issued as a judge, seeking to exploit and/or reverse key aspects of those prior
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`rulings. Hilton filed a motion to dismiss in this matter arguing that the vacated
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`judgment in Ameranth v. Menusoft, and an order issued by Judge Everingham in
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`Ameranth v. Par arising from that judgment before it was vacated, collaterally
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`estopped Ameranth from pursuing patent infringement claims here. Case No.
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`12-cv-1632, Dkt. No. 17-1. After Judge Sammartino denied that motion, Hilton
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`filed a request for reconsideration with this Court, based in part upon the very
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`rulings and or verdicts that Judge Everingham issued or presided over in
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`Ameranth v. Menusoft and Ameranth v. Par. Case No. 11-cv-1810, Dkt. No.
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`457-1. Hilton argued, among other things, that Ameranth should even be
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`estopped from litigating patent claims that were not adjudicated in Texas.
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`The collateral estoppel argument Hilton made in the present action is
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`particularly relevant to the ethical issues presented by Mr. Everingham’s
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`presence at Akin Gump because Judge Everingham explicitly rejected that very
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`same argument in the Ameranth v. Par case. Ameranth v. Par, 2:10-cv-0294-
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`DF-CE, Dkt. No. 107, p. 5 (Exh. 12) (“there could have been no final decision
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`on the validity of claims that were withdrawn, not asserted, or never litigated in
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`first case – that is, there could have been no final decision on “the identical
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`question” of the validity of claims that were not presented to the jury in the first
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`case. Accordingly, the undersigned recommends that the court deny Kudzu’s
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`motion to dismiss claims of the patent s-in-suit that were not previously
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`adjudicated”). Likewise, the CBM petitions challenge the validity of the patents
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`in suit on many of the same grounds unsuccessfully asserted as defenses by the
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`Fulbright Firm on behalf of the defendants in Ameranth v. Menusoft.
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`According to an Akin Gump press release appearing on its website, Mr.
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`Everingham joined Akin Gump as a partner on or about October 3, of 2011—
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`approximately nine months prior to Ameranth’s suit against Hilton and at the
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`same time David Stein, Hilton’s lead counsel here, arrived at the firm:
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`Akin Gump Strauss Hauer & Feld LLP announced today that
`former U.S. magistrate judge Chad Everingham has joined as a
`partner in its intellectual property practice in the firm’s newly
`established office in Longview, Texas. His arrival coincides with
`that of partner David M. Stein, who joined the firm’s intellectual
`property practice today in its Downtown Los Angeles office. . . .
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` “I couldn’t be more thrilled to welcome Chad and David to the
`firm,” stated firm Chairman R. Bruce McLean. “Our clients will
`benefit greatly from the addition of these talented partners—
`particularly with their deep experience in critical jurisdictions such
`as the Eastern District of Texas.” . . .
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`Mr. Stein . . . will practice in the firm’s Los Angeles office, in
`addition to its Longview, Texas, office.
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`(Akin Gump Press Release, Oct. 3, 2011 (Exh. 1)).
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`The press release implies that Mr. Everingham and Mr. Stein would be
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`working together representing clients of the firm in patent cases. Ameranth has
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`recently learned that both Mr. Everingham and Mr. Stein practice out of Akin
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`Gump’s Longview, Texas office and practice together in patent suits. As
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`detailed below, Mr. Everingham and Mr. Stein have worked together, and are
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`currently working together, on cases from the Longview office, many of which
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`involve subject matter fields and legal issues very similar to the subject matter
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`of the Ameranth patents. See, e.g., Answer in Lodsys, LLC v. Caesars
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`Interactive Entertainment, Inc., C.A. No. 2:13-cv-00272 (E.D. Tex. June 17,
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`2013) (Exh. 7); Macrosolve, Inc. v. Wyndham Hotel Group, LLC, C.A. No.
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`6:13-cv-00675-KNM (E.D. Tex.) (Exhs. 8-10). In light of his management and
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`trial of the Ameranth v. Menusoft lawsuit and management of the Ameranth v.
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`Par litigation as the presiding judge (the parties consented to Judge Everingham
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`conducting all proceedings), Mr. Everingham is disqualified from participation
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`in the consolidated cases and the CBM petitions under ABA Model Rule 1.12,
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`Local Rule 83.4(b), and USPTO ethical rule 37 C.F.R. §11.112.
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`Ameranth does not presently assert that Mr. Everingham has actually
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`directly participated in any of these matters. However, unless Mr. Everingham
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`was ethically screened from these matters, the entire Akin Gump firm must be
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`disqualified pursuant to Rule 1.12(c). Still further, by virtue of the joint defense
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`relationship between Hilton and the other defendants, there is a distinct
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`likelihood that counsel for other defendants in the consolidated cases have
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`become tainted by virtue of their communications, information sharing and
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`cooperation with the Akin Gump attorneys. Under such circumstances, all other
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`defense counsel would be subject to potential disqualification.
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`III. ARGUMENT
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`Ameranth has only very recently become aware that it may be prejudiced
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`by the conduct of the Akin Gump firm. Based on Ameranth’s recent
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`investigation, there is at least the potential for improper disqualifying conduct
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`arising from Mr. Everingham’s status as a partner at Akin Gump and his
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`relationship with attorneys David Stein, Julie Johnson and Emily Johnson, all of
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`whom represent Hilton in the consolidated cases and in the CBM proceedings.
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`Mr. Everingham never represented Ameranth, but his position as the
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`judge assigned to cases involving the patents asserted here disqualifies him from
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`serving in a capacity adverse to Ameranth in these matters. “[N]o California
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`case has held that only a client or former client may bring a disqualification
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`motion.” Kennedy v. Eldridge, 201 Cal.App.4th 1197, 1204, 135 Cal.Rptr.3d
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`545 (2011) (emphasis added). This is because “[a] trial court's authority to
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`disqualify an attorney derives from the power inherent in every court ‘[t]o
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`control in furtherance of justice, the conduct of its ministerial officers, and of all
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`other persons in any manner connected with a judicial proceeding before it, in
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`every matter pertaining thereto.’” People ex rel. Dept. of Corporations v.
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`SpeeDee Oil Change Systems, Inc., 20 Cal.4th 1135, 1145, 86 Cal.Rptr.2d 816,
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`980 P.2d 371 (2006) (quoting Cal. Civ. Proc. Code § 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.
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`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 a