Case 5:19-cv-00036-RWS Document 554 Filed 10/28/20 Page 1 of 21 PageID #: 29608
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
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`Plaintiff,
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`Case No. 5:19-cv-00036-RWS
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`JURY TRIAL DEMANDED
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`MAXELL, LTD.,
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`v.
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`APPLE INC.,
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`Defendant.
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`MAXELL, LTD.’S MOTION TO DISQUALIFY DLA PIPER LLP (US)
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`Case 5:19-cv-00036-RWS Document 554 Filed 10/28/20 Page 2 of 21 PageID #: 29609
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`Table of Contents
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`PAGE
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`FACTS .............................................................................................................................. 2 
`I. 
`LEGAL STANDARDS .................................................................................................... 8 
`II. 
`III.  ARGUMENT .................................................................................................................... 9 
`DLA Piper Did Not Implement a Timely and Effective Ethical Screen
`A. 
`as Required by ABA Model Rule 1.10(a)(2)(i) .................................................. 9 
`DLA Piper Did Not Provide Maxell with the Prompt Written Notice
`as Required by ABA Model Rule 1.10(a)(2)(ii) ............................................... 13 
`DLA Piper Should be Disqualified In View of All the Facts and the
`Substantial Prejudice to Maxell ........................................................................ 13 
`IV.  CONCLUSION .............................................................................................................. 15 
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`B. 
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`C. 
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`i
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`Case 5:19-cv-00036-RWS Document 554 Filed 10/28/20 Page 3 of 21 PageID #: 29610
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`Cases
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`TABLE OF AUTHORITIES
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`Page(s)
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`Canatella v. Krieg, Keller, Sloan, Reilley & Roman LLP,
`No. C 11–05535, 2012 WL 847493 (N.D. Cal. Mar. 13, 2012) ..............................................14
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`Maxell, Ltd. v. Huawei Technologies Co. Ltd. et al.,
`Case No. 5:16-cv-178-RWS, D.I. 130 (E.D. Tex. Dec. 11, 2017) ............................................2
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`Maxell, Ltd. v. ZTE Corporation et al.,
`Case No. 5:16-cv-00179-RWS, D.I. 36 (E.D. Tex. Apr. 4, 2017) .............................................2
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`National Oilwell Varco, L.P. v. Omron Oilfield & Marine, Inc.,
`60 F.Supp.3d 751 (W.D. Tex. 2014)....................................................................................9, 14
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`Parallel Networks, LLC v. Abercrombie & Fitch Co.,
`No. 6:10-cv-111, 2016 WL 3883392 (E.D. Tex. Apr. 1, 2016) ................................................8
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`In re ProEducation Int’l, Inc.,
`587 F.3d 296 (5th Cir. 2009) .....................................................................................................8
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`Other Authorities
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`Local Rule AT-2 ..............................................................................................................................8
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`Texas Disciplinary Rule of Professional Conduct 1.09 ...................................................................8
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`ABA Model Rule 1.10(a)(2) ................................................................................................. passim
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`ii
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`Case 5:19-cv-00036-RWS Document 554 Filed 10/28/20 Page 4 of 21 PageID #: 29611
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`Apple Inc. (“Apple”) has employed a delay strategy since the outset of this case,
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`including multiple attempts to stay this case. Then, with fewer than three months to trial, Apple –
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`the wealthiest company in the world that employs hundreds of law firms in the United States
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`alone – hired DLA Piper LLP (US) (“DLA Piper”) to try this case. This is not unheard of, but
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`rather than hire any one of the many law firms Apple regularly hires, Apple hired a firm that
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`itself had just hired a former Mayer Brown LLP (“Mayer Brown”) partner that worked on this
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`exact case. That former Mayer Brown partner not only has critical knowledge regarding Maxell,
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`Ltd. (“Maxell”), its trial strategy, and the underlying issues in this case, but also has Maxell
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`confidential attorney-client privileged documents that were (unknowingly to Mayer Brown or
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`Maxell) taken with him to DLA Piper, including confidential presentations to the client regarding
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`Maxell’s licensing strategy. DLA Piper initially failed to disclose to Mayer Brown or Maxell that
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`it had those documents in its possession. Once it did, DLA Piper failed to properly protect, and
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`still refuses to fully return or destroy, them.1 These facts alone should have prevented DLA Piper
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`and Apple from engaging, but, as Maxell has only recently learned, DLA Piper did not bother to
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`comply with the straightforward provisions of Texas Disciplinary Rule of Professional Conduct
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`1.09 and ABA Model Rule of Professional Conduct 1.10(a)(2). Before Mayer Brown raised the
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`conflict with DLA Piper, DLA Piper did not screen the former Mayer Brown attorney from the
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`case (in fact, the former Mayer Brown attorney had discussions with DLA Piper’s attorneys on
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`this case regarding at least the Mayer Brown/Maxell team). It did not notify Maxell of the
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`potential conflict or that it had Maxell highly confidential and privileged information. Nor did it
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`confirm that steps had been taken to protect Maxell’s highly confidential information.
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`1 As of the meet and confer with Apple’s counsel for this motion, Apple’s counsel indicated that
`it wished to maintain these materials in order to respond to this motion. Apple’s position is
`inconsistent with the Protective Order in this case, which requires that inadvertently produced
`documents be “immediately returned” or destroyed. D.I. 45, ¶ 16(b).
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`1
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`Case 5:19-cv-00036-RWS Document 554 Filed 10/28/20 Page 5 of 21 PageID #: 29612
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`These facts warrant DLA Piper’s disqualification. The ethical rules are in place to protect
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`clients from the very activities that have transpired here, and Maxell would be substantially
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`prejudiced by having to litigate against opposing counsel that has strategic confidential and
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`attorney-client privileged information about the very case being tried. Maxell would also be
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`substantially prejudiced by any delay associated with DLA Piper’s disqualification. In fact, no
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`such delay is warranted here as O’Melveny & Myers LLP, who has been involved since the
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`inception of this case, continues to represent Apple and is fully capable of trying this case on the
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`current schedule. Apple should not be allowed to take advantage of its own conduct to further
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`delay the trial. Further or at a minimum, the Court should issue an order reprimanding DLA
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`Piper for its improper conduct (to prevent similar conduct in the future) and require the return or
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`destruction of Maxell’s highly confidential and attorney-client privileged documents.
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`I.
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`FACTS
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`While Counsel and eventually a Partner at Mayer Brown from April 2016 to January
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`2020, Mr. Justin Park worked on all of Mayer Brown’s smartphone matters for Maxell and was
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`an integral part of the Maxell litigation team, including on this case against Apple. Ex. A,
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`Declaration of Jamie B. Beaber (“Beaber Decl.”) at ¶ 2. Specifically, Mr. Park billed hundreds of
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`hours on these matters, including many hours spent on the Apple matters, attending strategy
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`meetings and drafting and reviewing documents and filings. Id.2 As a result of his work on these
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`Maxell matters, Mr. Park (1) accessed and had full access to all of Maxell’s highly confidential
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`2 Mr. Park was also counsel of record in Maxell’s cases against Huawei and ZTE, which involved
`some of the same or related patents as those asserted against Apple in this case. See Maxell, Ltd.
`v. Huawei Technologies Co. Ltd. et al., Case No. 5:16-cv-178-RWS, D.I. 130 (E.D. Tex. Dec.
`11, 2017); Maxell, Ltd. v. ZTE Corporation et al., Case No. 5:16-cv-00179-RWS, D.I. 36 (E.D.
`Tex. Apr. 4, 2017). There are clearly overlapping issues between this case and Maxell’s prior
`cases against Huawei and ZTE. For example, U.S. Patent Nos. 6,748,317, 8,339,493, 6,408,193,
`and 6,329,794 asserted against Apple in this case were also asserted against ZTE in Case No.
`5:16-cv-00179-RWS (E.D. Tex.). Additionally, U.S. Patent No. 7,116,438 asserted against Apple
`in this case was also asserted against Huawei in Case No. 5:16-cv-00178-RWS (E.D. Tex.).
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`2
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`business, technical, and attorney-client privileged information and documents, (2) was on the
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`internal and external e-mail distribution lists for these cases where hundreds of confidential and
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`attorney-client privileged e-mails both within Mayer Brown and with Maxell were exchanged,
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`(3) attended meetings with Maxell related to this case, including at the client’s headquarters in
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`Japan, (4) attended numerous depositions relating to the Maxell smartphone matters, (5) has
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`direct knowledge of Maxell’s litigation strategy (which includes again privileged attorney mental
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`impressions and work product), and (5) saw confidential and attorney-client information,
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`technical and strategic, related to these cases (and the Apple matters specifically). Ex. A, Beaber
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`Decl. at ¶ 3. Significantly, Mr. Park took some of Maxell’s highly confidential and attorney-
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`client case materials to DLA Piper without Maxell or Mayer Brown’s knowledge or consent.3
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`Mr. Park joined DLA Piper in approximately January 2020. Id. at ¶ 4. To Mayer Brown’s
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`knowledge, DLA Piper was not engaged by Apple on this matter or the International Trade
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`Commission matter4 adverse to Maxell at that time. Id. On July 30, 2020, DLA Piper filed a
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`Public Interest Statement on behalf of Apple in the pending International Trade Commission
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`investigation between Maxell and Apple, Certain Mobile Electronic Devices and Laptop
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`Computers, Inv. No. 337-TA-1215. Id. This was the first time Maxell and Mayer Brown learned
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`that DLA Piper had been retained to represent Apple in matters adverse to Maxell. Id. On July
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`30, 2020, Mayer Brown reached out to Mr. Park at DLA Piper requesting a formal response
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`concerning whether any protections were put in place to safeguard Maxell’s confidential
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`information at that time. Id. at ¶ 5. During Mayer Brown’s July 30, 2020 call with Mr. Park, he
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`3 Two days before leaving Mayer Brown and without Maxell’s or Mayer Brown’s knowledge or
`consent, Mr. Park directed his assistant to move certain e-mail file folders into a database for one
`of his transferring clients (not Maxell). Within those folders were certain highly confidential and
`attorney-client privileged Maxell materials which are now at DLA Piper. Ex. A at ¶ 19.
`4 At the appropriate time, Maxell will file a motion to disqualify in the International Trade
`Commission matter as well.
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`3
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`noted that he had discussions with at least one DLA Piper team member working on the Apple
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`matters adverse to Maxell regarding the attorneys at Mayer Brown working for Maxell on the
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`smartphone matters. Id. On August 10, 2020, Mr. Park responded to Mayer Brown’s request
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`informally by noting that he had contacted Mr. Mark Fowler (lead counsel to Apple in this case)
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`and in-house counsel at DLA Piper regarding implementing an ethical screen, with no further
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`details, for example, on how and when it was implemented and its scope. Id. at ¶ 6.
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`Over two weeks later, on August 28, 2020, while Mayer Brown was waiting for DLA
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`Piper’s formal response to its request for information related to the protection of Maxell’s highly
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`confidential information, a large number of DLA Piper attorneys (in the same practice group that
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`Mr. Park recently joined) noticed appearances adverse to Maxell on behalf of Apple in this case.
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`See D.I. 512-522, 524, 529. Surprised at DLA Piper’s appearance in this case despite having
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`received no formal response to its request from July 30, Mayer Brown sent a follow-up letter on
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`September 11, 2020 to Apple’s litigation counsel on this case and the General Counsel at DLA
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`Piper stating that DLA Piper’s representation of Apple in this case raises a conflict of interest
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`that may require disqualification and renewing its request for information regarding the
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`protection of Maxell’s highly confidential information. Ex. A, Beaber Decl. at ¶ 7; Ex. B, Letter
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`from J. Beaber to S. Cunningham and E. King (Sept. 11, 2020). In the September 11, 2020 letter,
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`Mayer Brown requested that DLA Piper describe in detail (1) Mr. Park’s role in this case,
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`(including proposals to Apple, etc.), if any, (2) any actions that DLA Piper took to notify Maxell
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`of this potential conflict of interest as required by the canons and to protect Maxell’s confidential
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`information received by Mr. Park, and (3) the scope and parameters of any ethical screen
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`implemented with respect to Mr. Park. Id.
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`DLA Piper responded on September 16, 2020, stating that it did not believe that it had a
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`disqualifying conflict of interest in this case. Ex. A, Beaber Decl. at ¶ 8; Ex. C, Letter from P.
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`Lindau to J. Beaber (Sept. 16, 2020). DLA Piper further stated that Mr. Park had not disclosed
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`any Maxell confidential information to anyone at DLA Piper representing Apple in this case and
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`that DLA Piper erected an ethical wall with respect to Mr. Park. Id. Mayer Brown responded on
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`September 18, 2020, noting that DLA Piper did not promptly and timely notify Maxell of this
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`conflict of interest and that DLA Piper’s letter did not provide sufficient detail about the timing
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`and parameters of the ethical wall to allow Maxell to fully evaluate its adequacy in protecting
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`Maxell’s confidential information. Ex. A, Beaber Decl. at ¶ 9; Ex. D, Letter from J. Beaber to P.
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`Lindau (Sept. 18, 2020). Mayer Brown also noted that on July 30, 2020 Mr. Park divulged that
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`he had a conversation with at least one member working on the Apple matters adverse to Maxell
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`regarding the Mayer Brown team’s work for Maxell. Id.
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`DLA Piper responded substantively on September 28, 2020. Ex. A, Beaber Decl. at ¶ 10;
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`Ex. E, Letter from P. Lindau to J. Beaber (Sept. 28, 2020). DLA Piper confirmed that “Mayer
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`Brown, and thus Maxell, were aware of the Firm’s representation of Apple in the ITC matter
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`upon or shortly after the filing of the Public Interest Statement with the ITC on July 30, 2020,”
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`contending that this constitutes sufficient notice under the canons, and “[t]he initial ethical screen
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`relating to the ITC matter was initiated immediately after your July 30, 2020 call with Mr. Park,
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`and was fully implemented on or before August 18, 2020.” Id. DLA Piper’s September 28, 2020
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`letter also stated emphatically that “Mr. Park brought no confidential files or materials with him
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`from Mayer Brown pertaining to Maxell.” Id. A declaration from Mr. Park accompanying this
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`letter similarly stated that “[w]hen I left Mayer Brown, I did not take with me any information or
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`documents relating to my work for Maxell, nor do I have possession of any such confidential or
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`5
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`privileged documents or information pertaining to Maxell.” Id. DLA Piper also incorrectly stated
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`that Mr. Park’s conversation with at least one member working on the Apple matters adverse to
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`Maxell mentioned by Mr. Park on the July 30, 2020 call was “Mr. Park’s notice to Mark Fowler
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`that the Firm should erect a screen.” Id.
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`On September 29, 2020, Mayer Brown responded and noted that DLA Piper (1) had not
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`provided Maxell with the prompt and timely written notice of the conflict of interest and
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`screening procedures employed as required by ABA Model Rule 1.10(a)(2)(ii) and (2) did not
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`“timely screen” Mr. Park pursuant to ABA Model Rule 1.10(a)(2)(i) and only then implemented
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`the ethical wall after Mayer Brown inquired about its existence. Ex. A, Beaber Decl. at ¶ 11; Ex.
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`F, Letter from J. Beaber to P. Lindau (Sept. 29, 2020). Mayer Brown further explained that the
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`conversation with at least one DLA Piper Apple team member mentioned by Mr. Park on the
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`July 30, 2020 call could not have been with Mr. Fowler because “the discussion at issue predated
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`Mr. Park’s communication with Mr. Fowler.” Id. DLA Piper responded on September 30, 2020,
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`but it did not provide any justification or explanation for its failure to comply with the
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`requirements of ABA Model Rule 1.10(a)(2). Ex. A, Beaber Decl. at ¶ 12; Ex. G, Letter from P.
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`Lindau to J. Beaber (Sept. 30, 2020).
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`On October 5, 2020, Mayer Brown was required to follow up yet again, requesting
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`further details on DLA Piper’s improper view that its ethical wall was “timely initiated” and the
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`contents of Mr. Park’s discussions with a DLA Piper Apple team member. Ex. A, Beaber Decl.
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`at ¶ 13; Ex. H, Letter from J. Beaber to P. Lindau (Oct. 5, 2020). DLA Piper did not respond at
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`all, and Mayer Brown again reached out on October 12, 2020 requesting a substantive response.
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`Ex. A, Beaber Decl. at ¶ 14; Ex. I, Letter from J. Beaber to P. Lindau (Oct. 12, 2020).
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`Then, on October 14, 2020, despite having previously represented that “Mr. Park brought
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`no confidential files or materials with him from Mayer Brown pertaining to Maxell,” DLA Piper
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`revealed that “[l]ate last week” Mr. Park had located several e-mails, some of which included
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`attachments, concerning Maxell. Ex. A, Beaber Decl. at ¶ 15; Ex. J, Letter from P. Lindau to J.
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`Beaber (Oct. 14, 2020). These e-mail attachments located by Mr. Park at DLA Piper on the
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`firm’s servers include multiple versions of a Microsoft Powerpoint presentation given by Mayer
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`Brown to Maxell stamped on their face “Privileged & Confidential – Attorney Client
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`Communication” which contain highly confidential case settlement strategies for two Maxell
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`cases involving its smartphone patent portfolio as well as royalty rates for the Maxell smartphone
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`patent portfolio. Id. DLA Piper also stated that the e-mails located by Mr. Park “are now and
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`will remain inaccessible to DLA Piper staff and lawyers, including Mr. Park, outside the Office
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`of General Counsel.” (emphasis added). Id. DLA Piper further explained that Mr. Park’s
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`conversation with a DLA Piper Apple team member adverse to Maxell “did not involve any of
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`Maxell’s confidential or privileged information” and was “a casual interaction in which Mr. Park
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`acknowledged that he knows you and, in fact, complimented you and your team.” Id.
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`Mayer Brown responded on October 16, 2020, expressing serious concerns about the
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`efficacy of DLA Piper’s ethical wall given that Mr. Park was able to easily locate e-mails
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`containing Maxell’s highly confidential and privileged information “[l]ate last week” and DLA
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`Piper’s statement that “[t]he enclosed e-mails are now and will remain inaccessible to DLA
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`Piper staff and lawyers, including Mr. Park, outside the Office of General Counsel.” (emphasis
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`added). Ex. A, Beaber Decl. at ¶ 16; Ex. K, Letter from J. Beaber to P. Lindau (Oct. 16, 2020).
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`Mayer Brown expressed further concerns about the substance of Mr. Park’s conversation with a
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`member of the DLA Piper Apple litigation team, including whether Mr. Park discussed any
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`qualities, skills, strengths, etc. of any member of the Mayer Brown Maxell litigation team based
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`on his personal experience working on the Maxell smartphone matters. Id. To date, DLA Piper
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`has still not provided any justification for its departure from the ABA Model Rules, and DLA
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`Piper’s Office of General Counsel continues to retain copies of Maxell’s highly confidential and
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`attorney-client privileged documents, despite Mayer Brown’s request that such documents be
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`returned or destroyed. Ex. A, Beaber Decl. at ¶ 17. This has been an exercise in deflection, delay,
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`and gross negligence warranting the requested relief.
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`II.
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`LEGAL STANDARDS
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`“Motions for attorney disqualification in federal courts are governed by federal standards
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`under the law of the regional circuit.” Parallel Networks, LLC v. Abercrombie & Fitch Co., No.
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`6:10-cv-111, 2016 WL 3883392, at *1 (E.D. Tex. Apr. 1, 2016). When considering
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`disqualification issues, the Fifth Circuit has directed courts to carefully consider all the facts
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`particular to the case in the context of the relevant ethical criteria. In re ProEducation Int’l, Inc.,
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`587 F.3d 296, 299-300 (5th Cir. 2009). The Eastern District of Texas Local Rules expressly
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`adopt the Texas Disciplinary Rules “as a guide governing the obligations and responsibilities of
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`all attorneys appearing in this court.” Eastern District of Texas, Local Rule AT-2. At the same
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`time, “[t]he Fifth Circuit has recognized the ABA Model Rules of Professional Conduct (Model
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`Rules) as the national standards to consider in reviewing motions to disqualify.” In re
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`ProEducation Int’l, 587 F.3d at 299-300. Accordingly, “[t]his Court must thus look to the
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`American Bar Association’s Model Rules of Professional Conduct and the Texas Disciplinary
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`Rules of Professional Conduct, which govern the conduct of attorneys practicing in Texas.”
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`Parallel Networks, 2016 WL 3883392, at *2.
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`Texas Disciplinary Rule of Professional Conduct 1.09 (b) reads in relevant part:
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`[W]hen lawyers are or have become members of or associated with a firm, none of them
`shall knowingly represent a client if any one of them practicing alone would be
`prohibited from doing so by paragraph (a).
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`ABA Model Rule 1.10(a)(2) states:
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`(a) 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 by Rules
`1.7 or 1.9, unless
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`(2) the prohibition is based upon Rule 1.9(a) or (b) and arises out of the
`disqualified lawyer’s association with a prior firm, and
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`(i) the disqualified lawyer is timely screened from any participation in the
`matter and is apportioned no part of the fee therefrom;
`(ii) written notice is promptly given to any affected former client to enable
`the former client to ascertain compliance with the provisions of this Rule,
`which shall include a description of the screening procedures employed; a
`statement of the firm’s and of the screened lawyer’s compliance with these
`Rules; a statement that review may be available before a tribunal; and an
`agreement by the firm to respond promptly to any written inquiries or
`objections by the former client about the screening procedures.
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`III. ARGUMENT
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`Mr. Park is undeniably a disqualified attorney under the relevant ethical rules. DLA Piper
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`failed to comply with the relevant ethical rules in accepting this representation of Apple and did
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`not properly handle Maxell’s highly confidential and attorney-client privileged documents, and
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`thus Mr. Park’s conflict of interest must be imputed to DLA Piper.
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`A.
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`DLA Piper Did Not Implement a Timely and Effective Ethical Screen as
`Required by ABA Model Rule 1.10(a)(2)(i)
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`ABA Model Rule 1.10(a)(2)(i) requires that a disqualified lawyer be “timely screened.”5
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`Yet DLA Piper did not take any affirmative steps to implement an ethical wall when it first
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`sought out this representation of Apple or when it was first retained to represent Apple in this
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`case, despite having an affirmative duty to do so.
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`5 “Under Texas law, efforts to screen conflicted attorneys through mechanisms like ‘Chinese
`walls’ cannot rebut the presumption of shared confidences among lawyers.” National Oilwell
`Varco, L.P. v. Omron Oilfield & Marine, Inc., 60 F.Supp.3d 751, n. 11 (W.D. Tex. 2014).
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`When law firms attempt to get retained for a new client or case, they always run a
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`conflict check. Most law firms also require lateral partner questionnaires in order to determine
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`whether there are any potential conflicts with respect to a new hire. Not only would it be
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`unsurprising, but it is likely that DLA Piper knew of this potential conflict months earlier when it
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`interviewed Mr. Park and when Mr. Park submitted his Lateral Partner Questionnaire to DLA
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`Piper. DLA Piper has admitted that it did not even begin to implement any ethical wall with
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`respect to Mr. Park until after it had already started representing Apple in matters adverse to
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`Maxell, and even then only after Mayer Brown first inquired as to the existence of any ethical
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`wall on July 30, 2020. DLA Piper’s failure to timely implement an ethical screen allowed Mr.
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`Park to have a conversation with a member of the DLA Piper Apple litigation team adverse to
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`Maxell regarding Mayer Brown’s work for Maxell on the smartphone matters. The substance of
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`this conversation is still unclear, including whether Mr. Park discussed any qualities, skills,
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`strengths, etc. of any member of the Mayer Brown Maxell litigation team based on his personal
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`experience working on the Maxell smartphone matters (i.e., information that but for Mr. Park
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`would not have been available to the DLA Piper Apple litigation team). Further, Mr. Park’s
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`supervisor, Mr. Fowler, is the lead counsel for Apple in this litigation and the individual that Mr.
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`Park first approached regarding the conflict of interest issue in this case.
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`Additionally, DLA Piper has not explained why it took between July 30, 2020 and
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`August 18, 2020 (nearly three weeks) to erect the ethical wall surrounding Mr. Park or whether
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`DLA Piper had any precautions in place to protect Maxell’s confidential and privileged
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`information during that time period. It is further unclear what DLA Piper meant when it said that
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`the ethical wall with respect to Mr. Park was “fully implemented on or before August 18, 2020.”
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`Ex. E, Letter from P. Lindau to J. Beaber (Sept. 28, 2020) (emphasis added). DLA Piper’s
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`inability to provide a definitive date raises serious concerns with respect to its adequacy to
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`protect Maxell’s highly confidential information.
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`Indeed, the efficacy of DLA Piper’s ethical wall has already been seriously called into
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`question. On September 28, 2020, DLA Piper stated emphatically that “Mr. Park brought no
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`confidential files or materials with him from Mayer Brown pertaining to Maxell.” Ex. E, Letter
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`from P. Lindau to J. Beaber (Sept. 28, 2020). Mr. Park himself also similarly stated that “[w]hen
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`I left Mayer Brown, I did not take with me any information or documents relating to my work for
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`Maxell, nor do I have possession of any such confidential or privileged documents or
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`information pertaining to Maxell.” Id. But as explained in DLA Piper’s October 14 letter, Mr.
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`Park had located several e-mails, some of which included attachments, concerning Maxell “[l]ate
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`last week.”6 Ex. J, Letter from P. Lindau to J. Beaber (Oct. 14, 2020). These e-mail attachments
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`located by Mr. Park at DLA Piper include Microsoft Powerpoint presentations given by Mayer
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`Brown to Maxell stamped on their face “Privileged & Confidential – Attorney Client
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`Communication” which contain highly confidential case settlement strategies for two related
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`Maxell cases involving its smartphone patent portfolio as well as royalty rates for the Maxell
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`smartphone patent portfolio. Ex. A, Beaber Decl. at ¶ 15. The fact that Mr. Park’s declaration
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`falsely stated that he did not take any Maxell confidential or privileged information with to him
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`to DLA Piper raises a reasonable suspicion as to whether other statements in his declaration are
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`true and accurate. It is at least evident that DLA Piper did not promptly conduct a full blown
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`investigation and thoroughly search Mr. Park’s files when it first sought to be retained for this
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`6 DLA Piper claims that “Mayer Brown assembled materials” for Mr. Park to take to DLA Piper.
`Ex. J, Letter from P. Lindau to J. Beaber (Oct. 14, 2020). But as discussed above, Mr. Park
`directed his assistant to move certain e-mail file folders into a database for one of his transferring
`clients (not Maxell). Within those folders were certain highly confidential and attorney-client
`privileged Maxell materials which are now at DLA Piper. Ex. A, Beaber Decl. at ¶ 19.
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`case or, at a bare minimum, when Mayer Brown first raised this conflict of interest with Mr. Park
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`on July 30, 2020. Ex. A, Beaber Decl. at ¶ 17. But there was no plan or direction from DLA
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`Piper to thoroughly search Mr. Park’s files, and indeed DLA Piper had no idea they had Maxell’s
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`highly confidential and attorney-client privileged documents, until “[l]ate last week.” See Ex. J.
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`At a minimum, DLA Piper’s statement that the e-mails and attachments located by Mr.
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`Park in mid-October “are now and will remain inaccessible to DLA Piper staff and lawyers,
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`including Mr. Park, outside the Office of General Counsel” (Ex. J, emphasis added) conclusively
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`demonstrates that DLA Piper did not even comply with its own ethical wall and that the ethical
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`wall is ineffective and insufficient to protect Maxell’s highly confidential information and
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`privileged documents. It is unclear why these e-mails and attachments were previously
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`accessible to DLA Piper staff and lawyers, even though the ethical wall was in place according
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`to DLA Piper “on or before August 18, 2020.” See Ex. E.
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`Finally, as stated in its October 14 letter and confirmed on the meet and confer, DLA
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`Piper’s Office of General Counsel is still maintaining copies of Maxell highly confidential and
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`attorney-client privileged documents, despite Mayer Brown’s request that such documents and
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`all copies be returned or destroyed and DLA Piper’s statement that “[w]e are returning copies of
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`those e-mails to you.” Ex. A, Beaber Decl. at ¶ 18; Ex. J, Letter from P. Lindau to J. Beaber
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`(Oct. 14, 2020). DLA Piper alleges that it is appropriate for its Office of General Counsel to keep
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`copies of these privileged documents in order to respond to this motion. Ex. A, Beaber Decl. at ¶
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`18. But DLA Piper has no right to keep, and indeed has an obligation to return or destroy, all
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`copies of these documents. If such documents were inadvertently produced by Maxell in this
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`case, DLA Piper would be required to “immediately return” and/or destroy “all copies” pursuant
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`to the Protective Order. D.I. 45, ¶ 16(b).
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`B.
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`DLA Piper Did Not Provide Maxell with the Prompt Written Notice as
`Required by ABA Model Rule 1.10(a)(2)(ii)
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`When Mayer Brown inquired as to when DLA Piper alleges that it complied with ABA
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`Model Rule 1.10(a)(2)(ii), DLA Piper stated that “Mayer Brown, and thus Maxell, were aware of
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`the Firm’s representation of Apple in the ITC matter upon or shortly after the filing of the Public
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`Interest Statement with the ITC on July 30, 2020.” Ex. E, Letter from P. Lindau to J. Beaber
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`(Sept. 28, 2020). DLA Piper cannot seriously contend that the mere notice of an appearance is
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`sufficient notice and compliance with the canons of ethics. Initially, this alleged notice does not
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`satisfy ABA Model Rule 1.10(a)(2)(ii)’s requirement that the prompt written notice “shall
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`include a description of the screening procedures employed...” (emphasis added). DLA Piper’s
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`alleged notice merely established publicly that it would be representing Apple in matters adverse
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`to Maxell but did not describe any screening procedures employed or otherwise explain its
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`compliance with ABA Model Rule 1.10(a)(2).
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`Furthermore, it is undisputed that DLA Piper did not provide Maxell (or Mayer Brown as
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`Maxell’s representative) with the “prompt” written notice required by ABA Model Rule
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`1.10(a)(2)(ii) when it was first retained to represent Apple in this case or whe