Case 5:19-cv-00036-RWS Document 576 Filed 11/09/20 Page 1 of 21 PageID #: 30566
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
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`MAXELL, LTD.,
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`Plaintiff,
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`v.
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`APPLE INC.,
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`
`
`Defendant.
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`§
`§
`§
`§
`§ Case No. 5:19-CV-00036-RWS
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`§
`§
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`OPPOSITION BY DLA PIPER LLP (US) TO MAXELL, LTD’S
`MOTION TO DISQUALIFY DLA PIPER LLP (US)
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`Case 5:19-cv-00036-RWS Document 576 Filed 11/09/20 Page 2 of 21 PageID #: 30567
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`Page
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`TABLE OF CONTENTS
`INTRODUCTION ...................................................................................................................... - 1 -
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`FACTUAL BACKGROUND ......................................................................................................... - 2 -
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`A.
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`B.
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`DLA Implemented An Ethical Screen Before It Was Retained In This
`Case................................................................................................................ - 2 -
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`DLA Later Learned That Mayer Brown Included Seven Maxell-
`Related Emails In The Files Of A Different Client Who Followed Mr.
`Park To DLA As Part Of An Electronic Transfer To DLA Via The
`Cloud.............................................................................................................. - 4 -
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`C.
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`Apple Retained DLA To Serve As Its Lead Trial Counsel In This Case...... - 5 -
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`LEGAL STANDARD .................................................................................................................. - 6 -
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`ARGUMENT ............................................................................................................................. - 7 -
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`I.
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`Absolutely No Confidences Have Been Disclosed, DLA At All Times
`Has Acted Appropriately And In Good Faith, And Maxell Has Failed
`To Prove Otherwise. ...................................................................................... - 7 -
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`A.
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`B.
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`C.
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`D.
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`The Uncontroverted Evidence Confirms That No Maxell
`Confidences Have Been Shared With Any Lawyer Representing
`Apple. ................................................................................................. - 8 -
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`DLA Reasonably Screened Mr. Park From The Apple Team,
`Which Alternatively Rebuts Any Presumption Of Shared
`Confidences. ...................................................................................... - 10 -
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`DLA Provided To Maxell Adequate Notice of Its
`Representation of Apple. .................................................................. - 12 -
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`DLA Certified, And Is Willing To Certify, Its Ongoing
`Compliance. ...................................................................................... - 13 -
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`II.
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`Disqualifying DLA Would Be Inequitable And Highly Prejudicial To
`Apple. ............................................................................................................ - 13 -
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`CONCLUSION ........................................................................................................................ - 15 -
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`ii
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`Case 5:19-cv-00036-RWS Document 576 Filed 11/09/20 Page 3 of 21 PageID #: 30568
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`
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`TABLE OF AUTHORITIES
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`
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`Cases
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`Page(s)
`
`Abney v. Wal-Mart,
`984 F. Supp. 526 (E.D. Tex. 1997) ........................................................................................................... 7
`
`Am. Int’l Grp., Inc. v. Bank of Am. Corp.,
`827 F. Supp. 2d 341 (S.D.N.Y. 2011)..................................................................................................... 10
`
`Arista Records LLC v. Lime Grp. LLC,
`No. 06 CV 5936 KMW, 2011 WL 672254 (S.D.N.Y. Feb. 22, 2011) ........................................ 12, 15
`
`Biote Med., LLC v. Jacobsen,
`No. 4:18-CV-866, 2020 WL 2813201 (E.D. Tex. May 29, 2020)......................................................... 7
`
`BMO Harris Bank N.A. v. Novak Druce Connolly Bove & Quigg LLP,
`No. CV H-17-1616, 2018 WL 7253967 (S.D. Tex. Feb. 22, 2018)...................................................... 6
`
`Carbo Ceramics, Inc. v. Norton-Alcoa Proppants,
`144 F.R.D. 158 (N.D. Tex. 1994) ........................................................................................................... 15
`
`In re Del-Val Fin. Corp. Sec. Litig.,
`158 F.R.D. 270 (S.D.N.Y. 1994) ............................................................................................................. 12
`
`F.D.I.C. v. U.S. Fire Ins. Co.,
`50 F.3d 1304 (5th Cir. 1995) ................................................................................................................6, 14
`
`Galderma Labs., L.P. v. Actavis Mid Atl. LLC,
`927 F. Supp. 2d 390 (N.D. Tex. 2013) ..................................................................................................... 7
`
`Gen. Elec. Co. v. Mitsubishi Heavy Indus., Ltd.,
`No. 3:10-CV-276-F, 2011 WL 13201855 (N.D. Tex. Sept. 12, 2011) .............................. 6, 13, 14, 15
`
`Lemaire v. Texaco, Inc.,
`496 F. Supp. 1308 (E.D. Tex. 1980) ......................................................................................................... 9
`
`Levin v. Raynor,
`No. 03cv4697 (GBD), 2004 WL 2937831 (S.D.N.Y. Dec. 17, 2004) ............................................... 10
`
`Manning v. Waring, Cox, James, Sklar & Allen,
`849 F.2d 222 (6th Cir. 1988) .................................................................................................................... 10
`
`In re Meador,
`968 S.W.2d 346 (Tex. 1998) ....................................................................................................................... 9
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`Nat’l Oilwell Varco, L.P. v. Omron Oilfield & Marine, Inc.,
`60 F. Supp. 3d 751 (W.D. Tex. 2014) ................................................................................................7, 15
`
`In re ProEducation Int’l, Inc.,
`587 F.3d 296 (5th Cir. 2009) ........................................................................................................... 6, 7, 14
`
`Reilly v. Computer Assocs. Long-Term Disability Plan,
`423 F. Supp. 2d 5 (E.D.N.Y. 2006) ........................................................................................................ 12
`
`Sailsbery v. Vill. of Sauk Vill.,
`No. 15 C 10564, 2017 WL 5885323 (N.D. Ill. Nov. 28, 2017) .......................................................... 12
`
`Cromley v. Bd. of Educ. of Lockport Twp. High Sch. Dist. 205,
`17 F.3d 1059 (7th Cir. 1994) .................................................................................................................... 12
`
`Silicon Graphics Inc. v. ATI Techs., Inc.,
`741 F. Supp. 2d 970 (W.D. Wis. 2010) .................................................................................................... 7
`
`Simmons v. Houston Cty., Texas,
`No. 9:05-CV-82, 2006 WL 8440543 (E.D. Tex. Feb. 2, 2006) ......................................................... 6, 8
`
`Soverain Software LLC v. CDW Corp.,
`No. 6:07 CV 511, 2010 WL 1038731 (E.D. Tex. Mar. 18, 2010) ........................................................ 6
`
`Other Authorities
`
`ABA Comm. on Ethics & Prof’l Responsibility, Formal Op. 442 (2006) ................................................. 9
`
`ABA Standing Committee on Ethics & Professional Responsibility, Report to the
`House of Delegates (Feb. 2009)................................................................................................................ 7
`
`Rules
`
`Comment 10 to Model Rule 1.0(k) ................................................................................................................ 10
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`Fed. R. Civ. P. 26(b)(5)(B) ................................................................................................................................ 9
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`Local Rule AT-2 ................................................................................................................................................. 6
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`Model R. Prof. Cond. 1.0(k) ........................................................................................................................... 10
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`INTRODUCTION
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`It is uncontroverted that nobody on DLA’s Apple team ever received or even solicited any of
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`Maxell’s privileged or confidential information from Justin Park. Maxell’s carefully-crafted hearsay
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`insinuation that Mr. Park stole Maxell’s documents is demonstrably false. Nevertheless, Maxell tries
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`to disqualify DLA, Apple’s lead trial counsel, just days before trial. Maxell has failed to meet its burden
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`of proof for disqualification.
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`Faced with these insurmountable hurdles, Maxell says instead that Mr. Park—the former
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`Mayer Brown partner who joined DLA’s Washington, DC office in January 2020 and never discussed
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`anything about Maxell with any lawyer or paralegal representing Apple—should have realized sooner
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`that Mayer Brown mistakenly had included a handful of Maxell documents in other client files that Mayer
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`Brown sent via the cloud to Mr. Park when those clients moved to DLA.
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`On July 30, 2020, Peter Lindau, from DLA’s Office of General Counsel (“OGC”), communi-
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`cated with Mr. Park, who understood that he could not speak with anyone at DLA about Maxell or
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`any of Mayer Brown’s other clients who did not join him at DLA. That communication was on the
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`same day that Jamie Beaber, Maxell’s lead counsel and Mr. Park’s friend, initially contacted Mr. Park
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`to ask about an ethical wall in an ITC matter for which Apple had just retained DLA. Also on that
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`same day, Mr. Lindau initiated a screening process at DLA, which was completed well before August
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`28, 2020, when Apple first retained DLA in this case. Mr. Park and Mr. Lindau have confirmed all of
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`the foregoing under oath.
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`Maxell’s final argument about its supposed lack of notice rings hollow. DLA advised Mayer
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`Brown of its retention by Apple in the ITC matter within two days, and a month before DLA was
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`retained in this case. Mayer Brown also plainly knew of Mr. Park’s work with Maxell while at Mayer
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`Brown, and it was told about the measures DLA had put in place to ensure that DLA’s Apple team
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`(in Texas and California) did not discuss Maxell, and certainly not any of its confidences, with Mr.
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`Park (in Washington, DC). This is reflected in the correspondence Maxell submitted with its motion,
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`including two sworn declarations from DLA—correspondence that Maxell’s motion mischaracterizes.
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`Maxell seeks to substantially prejudice Apple by disqualifying its lead trial counsel, who have
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`devoted more than 3,000 hours to prepare for trial in this case, which inevitably would require a trial
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`continuance. Indeed, confirming the tactical nature of this motion, Maxell inexplicably failed to dis-
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`close its purported concerns to the Court during an all-day hearing on October 8 for dispositive and
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`other motions, allowing DLA to continue to handle the substance of this case then and to continue
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`its extensive efforts on Apple’s behalf until this motion is heard on November 12. Nor has Maxell
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`advised the court of the purported concerns in the ITC matter or a related matter pending in the
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`Western District of Texas. In any event, the pragmatic analysis required by the Fifth Circuit precludes
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`disqualification where, as here, these facts and other measures already in place can avoid any legitimate
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`concern by Maxell. Accordingly, DLA respectfully requests that Maxell’s motion be denied.
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`FACTUAL BACKGROUND
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`A.
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`DLA Implemented An Ethical Screen Before It Was Retained In This Case.
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`Mr. Park joined DLA in January 2020 from Mayer Brown, where he had performed some legal
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`work for Maxell. Ex. 2 (Park) ¶ 3. Since joining DLA, Mr. Park has neither worked on any matter
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`for Apple nor communicated with any DLA lawyers or paralegals representing Apple about any sub-
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`stantive aspect of any dispute between Maxell and Apple. Id. ¶ 4; Ex. 1 (Cunningham) ¶ 7; Ex. 6–36
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`(App. Team Cons.) ¶¶ 4–7. In fact, his only conversation touching on Maxell or its team at all involved
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`a brief statement to a friend that Maxell’s counsel were good lawyers. Ex. 2 (Park) ¶ 6.
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`On July 30, 2020, Mr. Beaber called Mr. Park to ask about DLA’s notice of appearance on July
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`28 in an ITC matter Maxell had initiated against Apple. Id. ¶ 8. Mr. Beaber assured Mr. Park that
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`Maxell had no intention of seeking to disqualify DLA. Id. Mr. Beaber and Mr. Park agreed that Mr.
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`Park should ask DLA to establish an ethical wall. Id. ¶ 8. Mr. Park contacted Mark Fowler, U.S. Vice
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`Chair of the Intellectual Property and Technology practice group at DLA, that same day to alert him
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`to that discussion. Id. ¶ 9. Moreover, Mr. Park already understood upon his arrival at DLA that
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`matters he had worked on at Mayer Brown were confidential and should not be discussed with DLA
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`personnel unless the client and the matter followed him to DLA. Id. ¶ 8.
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`Mr. Park and the OGC’s Peter Lindau communicated that same day; Mr. Park understood he
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`should not to talk to anyone on the Apple team about Maxell, and he did not do so. Ex. 3 (Lindau) ¶
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`4; Ex. 2 (Park) ¶ 9. Mr. Lindau then initiated the process at DLA for the creation of an ethical screen,
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`which was finalized on August 18, 2020. Ex. 3 (Lindau) ¶¶ 4–5. This was before DLA was retained by
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`Apple for this case. Ex. 1 (Cunningham) ¶ 5; Ex. 10, 14, 24, 27–31(App. Team Cons.) ¶ 7.
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`This completed what Mr. Beaber had requested; he never requested any further response from
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`Mr. Park. Ex. 2 (Park) ¶ 10. Indeed, Mr. Beaber and Mr. Park had a personal text exchange on August
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`10, in which Mr. Beaber never referenced Apple or Maxell at all, though Mr. Park did volunteer that
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`he had contacted “Fowler and the in house counsel re Chinese wall so we are good.” Ex. 2 (Park) ¶
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`10; Ex. A to Ex. 2.
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`On August 28, 2020, Apple retained DLA as its lead trial counsel in this case. Ex. 1 (Cun-
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`ningham) ¶ 6. This was after DLA had implemented the ethical screen. Two weeks later, Mr. Beaber
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`revived the matter in a letter to DLA. Ex. 3 (Lindau) ¶ 6. Notably, his letter began by complaining
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`about a conflict issue Apple’s prior counsel had raised where a current member of Maxell’s Mayer
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`Brown team had previously represented Apple, thereby revealing the retributive nature of this motion.
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`Over the next six weeks, DLA provided considerable information to Mayer Brown to allay Maxell’s
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`purported concerns, including a declaration by Mr. Park testifying to his lack of involvement in any
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`matter for Apple, the undisputed fact that he never shared Maxell confidences with anyone on the
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`Apple team, and the ethical screen. Ex. 3 (Lindau) ¶ ¶ 6–12; Exs. A–E to Ex. 3.
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`DLA’s uncontroverted evidence to substantiate these points is considerable. Mr. Park has not
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`had any meetings or communications with Apple. Ex. 2 (Park) ¶ 4. He has never discussed with
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`anyone on the Apple team or at DLA (other than OGC’s Charles Deem and Mr. Lindau, and even
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`then, nothing substantive) anything related to his previous work for Maxell. Id. ¶¶ 4, 12; Ex. 3 (Lindau)
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`¶¶ 4–5, 9; Ex. 4 (Deem) ¶¶ 4, 7. He has not disclosed any confidential or privileged Maxell infor-
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`mation. Ex. 2 (Park) ¶ 5. And each lawyer and paralegal on DLA’s Apple team adverse to Maxell has
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`corroborated this under oath. Ex. 1 (Cunningham) ¶¶ 5, 8; Ex. 6–36 (App. Team Cons.) ¶¶ 4–7. In
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`fact, nobody on the DLA Apple team works in Washington, D.C., where Mr. Park works, even putting
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`aside the fact that DLA’s offices have been closed since March due to the pandemic. Ex. 1 (Cunning-
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`ham) ¶ 12; Ex. 6–36 (App. Team Cons.) ¶ 2; Ex. 2 (Park) ¶ 2.
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`B.
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`DLA Later Learned That Mayer Brown Included Seven Maxell-Related
`Emails In The Files Of A Different Client Who Followed Mr. Park To DLA
`As Part Of An Electronic Transfer To DLA Via The Cloud.
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`In October 2020, Mr. Park decided to create an Outlook file folder to store his email commu-
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`nications with DLA’s OGC. To do that, he searched his email for, among other things, the keyword
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`“Maxell.” In so doing, he discovered seven emails, some of which had attachments, that Mayer Brown
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`previously had sent to DLA as part of the file transfer for a different client. Ex. 2 (Park) ¶ 12. Mr.
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`Park did not review the emails; instead, he immediately provided them to Mr. Lindau and Mr. Deem
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`and then deleted them from his email folder. Ex. 2 (Park) ¶ 12; Ex. 3 (Lindau) ¶ 9; Ex. 4 (Deem) ¶ 4.
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`Mr. Lindau and Mr. Deem have fully secured their copies from anyone else at DLA pending this
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`Court’s determination of what DLA should do with them. Ex. 3 (Lindau) ¶ 9; Ex. 4 (Deem) ¶¶ 4–5.
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`That Mr. Park unknowingly came into possession of those emails is undisputedly due to Mayer
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`Brown’s error. The uncontroverted facts are that Mr. Park had requested from Mayer Brown case
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`files for several clients that followed Mr. Park to DLA. Ex. 2 (Park) ¶¶ 14, 15. Mayer Brown compiled
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`and sent those materials to DLA a month after Mr. Park’s departure. Ex. 2 (Park) ¶ 15. Because Mr.
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`Park could not access the transferred materials, he asked DLA’s IT group to transfer them to a folder
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`on his computer, where they made up a separate collection of emails there. Ex. 2 (Park) ¶¶ 15–16.
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`When Mr. Park’s October 8 search of his emails for “Maxell” identified for the first time the seven
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`emails described above, he had never reviewed the entirety of any of those client files to inventory
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`what was in it. Ex. 2 (Park) ¶ 13. Accordingly, Mr. Park reasonably understood until October 8 that
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`the file Mayer Brown had sent was limited to documents for the clients that followed him to DLA
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`and no other former clients. Id.
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`C.
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`Apple Retained DLA To Serve As Its Lead Trial Counsel In This Case.
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`DLA assumed all lead trial responsibilities for this matter upon its retention in August, and by
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`October, DLA had devoted more than 3,000 hours to this effort on just this case. Ex. 1 (Cunningham)
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`¶ 11. DLA has handled all pretrial filings, the joint pretrial order, and nearly all of the dispositive and
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`other motions this Court heard for an entire day on October 8, 2020—where Mayer Brown sat silently
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`about this issue and its disqualification motion. DLA has been immersed in trial preparation and
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`made myriad attendant strategic decisions in consultation with Apple—e.g., crafting voir dire, the open-
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`ing statement, fact and expert witness examinations, designations of deposition transcripts and objec-
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`tions to Maxell’s designations, and all other trial preparation tasks. Ex. 1 (Cunningham) ¶¶ 10–13.
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`Significantly, the O’Melveny firm has not been meaningfully involved in any of this, much less
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`sufficiently to take over as lead trial counsel for a December 7 trial. If DLA were unable to represent
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`Apple at trial, Apple would need to request a continuance to allow substitute trial counsel sufficient
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`time to prepare to serve as lead trial counsel in this complex matter. To be clear, Apple wants none
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`of that nor the associated delay; in reality, it is Maxell that is effectively seeking the “delay” that it tries
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`to foist on Apple. The trial setting is mere days from the filing of this Opposition, and all pretrial
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`work is complete as the parties work (with the added burden of COVID-19 restrictions) to complete
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`all pretrial tasks before the Thanksgiving holiday week. It is impossible for any other law firm to take
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`over this late and keep the trial date.
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`LEGAL STANDARD
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`Disqualification motions are substantive and are governed by federal law. F.D.I.C. v. U.S. Fire
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`Ins. Co., 50 F.3d 1304, 1312 (5th Cir. 1995). Even where, as here, the Local Rules reference the Texas
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`Disciplinary Rules (Local Rule AT-2), the Texas Rules “are not the sole authority governing a motion
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`to disqualify.” In re ProEducation Int’l, Inc., 587 F.3d 296, 299 (5th Cir. 2009) (internal quotations omit-
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`ted). Courts must consider “the ethical rules announced by the national profession in light of the
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`public interest and the litigants’ rights.” Id. (internal quotations omitted). “The Fifth Circuit has
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`recognized the ABA Model Rules of Professional Conduct (Model Rules) as the national standards to
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`consider in reviewing motions to disqualify.” Id.
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`“Depriving a party of the right to be represented by the attorney of his or her choice is a
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`penalty that must not be imposed without careful consideration.” U.S. Fire Ins., 50 F.3d at 1313.
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`“[I]nflexible application of a professional rule is inappropriate because frequently it would abrogate
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`important societal rights, such as the right of a party to his counsel of choice and an attorney’s right
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`to freely practice her profession.” Id. Consideration of the potential prejudice to the parties resulting
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`from disqualification therefore is of “paramount importance.” Gen. Elec. Co. v. Mitsubishi Heavy Indus.,
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`Ltd., No. 3:10-CV-276-F, 2011 WL 13201855, at *9 (N.D. Tex. Sept. 12, 2011).
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`The moving party bears the burden of proving that disqualification is warranted. Soverain
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`Software LLC v. CDW Corp., No. 6:07 CV 511, 2010 WL 1038731, at *1 (E.D. Tex. Mar. 18, 2010).
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`The motion cannot be based on speculation. BMO Harris Bank N.A. v. Novak Druce Connolly Bove &
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`Quigg LLP, No. CV H-17-1616, 2018 WL 7253967, at *2 (S.D. Tex. Feb. 22, 2018). It must contain
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`admissible evidence proving the factual bases for disqualification. Simmons v. Houston Cty., Texas, No. 9:05-
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`CV-82, 2006 WL 8440543, at *3–4 (E.D. Tex. Feb. 2, 2006) (rejecting disqualification where plaintiff
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`“offer[ed] no evidence” and did “not submit documentation, pleadings or evidence”). “A severe rem-
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`edy such as disqualification cannot be granted on generalities.” Soverain Software, 2010 WL 1038731,
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`at *4. Courts apply this “exacting standard” to “discourage the use of such motions as a dilatory trial
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`tactic” and “to protect a party’s right to counsel of choice.” Biote Med., LLC v. Jacobsen, No. 4:18-CV-
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`866, 2020 WL 2813201, at *2 (E.D. Tex. May 29, 2020). See also Abney v. Wal-Mart, 984 F. Supp. 526,
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`528 (E.D. Tex. 1997) (same); Galderma Labs., L.P. v. Actavis Mid Atl. LLC, 927 F. Supp. 2d 390, 394
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`(N.D. Tex. 2013) (cautioning that “[d]isqualification motions may be used as ‘procedural weapons’ to
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`advance purely tactical purposes”) (quoting In re Am. Airlines, Inc., 972 F.2d 605, 611 (5th Cir. 1992)).
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`ARGUMENT
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`I.
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`Absolutely No Confidences Have Been Disclosed, DLA At All Times Has Acted
`Appropriately And In Good Faith, And Maxell Has Failed To Prove Otherwise.
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`Practical considerations govern disqualification motions under federal law.1 In 2009, the Fifth
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`Circuit rejected any irrebuttable presumption of shared confidences. ProEducation, 587 F.3d at 300,
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`303–04. Indeed, the Court left open the possibility that “no presumption remains.” Id. at 304 n.7.
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`Thus, “under Fifth Circuit precedent, there is no established irrebuttable presumption a lawyer shares
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`client confidences he possesses with other lawyers at his law firm.” Nat’l Oilwell, 60 F. Supp. 3d at
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`762–63. Likewise, Model Rule 1.10(a)(2) expressly precludes automatic imputation of any conflict to
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`an entire law firm in circumstances such as this case. See also Silicon Graphics Inc. v. ATI Techs., Inc., 741
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`F. Supp. 2d 970, 975–77 (W.D. Wis. 2010) (noting that “in recent years, attorney mobility and firm
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`mergers have increased exponentially,” and explaining that Model Rule 1.10 “generally permit[s]”
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`screening so as to reconcile the goals of “client protection and lawyer mobility”) (internal quotations
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`omitted); ABA Standing Committee on Ethics & Professional Responsibility, Report to the House of
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`Delegates, at 11 (Feb. 2009) (explaining that the amendment “permitting private lateral screening” is
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`1Maxell states in a footnote that Texas law creates an irrebuttable presumption that confidences are
`shared (Mot. at 9 n.5), even though its brief effectively concedes that Texas law does not control. In
`federal court, even if there is a presumption, it is rebuttable. Nat’l Oilwell Varco, L.P. v. Omron Oilfield
`& Marine, Inc., 60 F. Supp. 3d 751, 762–63 (W.D. Tex. 2014).
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`“particularly timely” in light of changes in the legal marketplace, and noting that “restrictions on mo-
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`bility affect the interests of other clients in being represented by the lawyer of their choice”).
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`The uncontroverted evidence here confirms that no Maxell confidences were disclosed to
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`DLA, Apple, or anyone else; DLA reasonably and timely isolated Mr. Park from every lawyer and
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`paralegal representing Apple in any matter involving Maxell; and DLA otherwise fully complied with
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`its obligations under Model Rule 1.10(a)(2).
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`A.
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`The Uncontroverted Evidence Confirms That No Maxell Confidences Have
`Been Shared With Any Lawyer Representing Apple.
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`Mr. Park has testified under oath that he never disclosed any confidential or privileged infor-
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`mation of Maxell to any lawyer representing Apple, that he knew he should not do so before he even
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`arrived at DLA in January 2020, and he understood this when he communicated with Mr. Lindau on
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`July 30, 2020. Ex. 2 (Park) ¶¶ 8–9; Ex. 3 (Lindau) ¶ 4. The DLA lawyers representing Apple have
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`sworn that they never obtained, nor attempted to obtain, confidential Maxell information from Mr.
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`Park, that Mr. Park never disclosed any confidential Maxell information to them, and that they never
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`accessed, nor attempted to access, any documents Mayer Brown transmitted via the cloud to DLA.
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`Ex. 1 (Cunningham) ¶¶ 5, 8; Ex. 6–36 (App. Team Cons.) ¶¶ 4–7. DLA’s Senior Manager for IT
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`Services (David Hoofnagle) confirmed that none of those lawyers obtained the emails that are the
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`basis of Maxell’s motion. Ex. 5 (Hoofnagle) ¶¶ 3–8.
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`By contrast, Maxell has “offer[ed] no evidence” and did “not submit documentation, pleadings
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`or evidence” showing that Mr. Park disclosed any of Maxell’s confidences. Simmons, 2006 WL
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`8440543, at *3. Maxell tries to suggest otherwise by raising a single, isolated conversation (which DLA
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`disclosed to Maxell) in which Mr. Park, speaking about a topic completely unrelated to Maxell, merely
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`remarked to a friend that Mr. Beaber and his team were “good lawyers.” Ex. 2 (Park) ¶ 6. Mr. Park
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`never disclosed any Maxell confidences in that conversation or otherwise, as the sworn testimony of
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`the two participants confirms. Ex. 2 (Park) ¶ 6; Ex. 29 (Patrick Park) ¶¶ 4–5.
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`Case 5:19-cv-00036-RWS Document 576 Filed 11/09/20 Page 13 of 21 PageID #: 30578
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`Equally unavailing is Maxell’s outrageous attempt to leverage Mayer Brown’s mistaken inclusion
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`of seven Maxell emails in the electronic file of a different client—a file that Mayer Brown transferred to
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`DLA—based on a grossly misleading insinuation in paragraph 19 of Mr. Beaber’s declaration. That
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`carefully-crafted, hearsay paragraph plainly seeks to create the false impression, without actually stating,
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`that Mr. Park asked his former assistant to place the Maxell emails in the email file folder of another
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`client before he left Mayer Brown. Mr. Beaber’s falsehood, which is parroted more aggressively in
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`Maxell’s brief (pp. 3, 11 & fns.3, 6), has been categorically denied by Mr. Park under oath—the only
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`admissible evidence on this point. Ex. 2 (Park) ¶¶ 14–15. Indeed, Maxell’s entire theory, which glar-
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`ingly omits a declaration from the unnamed “assistant” Mr. Park allegedly “directed,” is not credible
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`because the alleged events occurred seven months before Apple retained DLA.
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`As soon as Mr. Park realized on October 8 that Mayer Brown had included these emails, the
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`reasons for which Mr. Park has explained in great detail in his declaration, Mr. Park provided them to
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`DLA’s OGC, who promptly sequestered them as permitted by applicable law pending direction from
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`the Court,2 and then he promptly deleted them from his outlook folder. Ex. 2 (Park) ¶ 12; Ex. 3
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`(Lindau) ¶ 9; Ex. 4 (Deem) ¶ 4. DLA has confirmed that no member of DLA’s Apple team accessed,
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`or even attempted to access, those emails. Ex. 5 (Hoofnagle) ¶¶ 6–8; Ex. 4 (Deem) ¶¶ 5–6.
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`In short, courts will deny disqualification where, as here, “the evidence [was] uncontradicted
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`that [the attorney] steadfastly continue[d] to refuse to discuss this case with any member of the [his
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`law firm],” and where the movant “failed to show . . . that there is a reasonable possibility that some
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`2 Contrary to Maxell’s assertion, see Mot. at 1, 12, DLA was not obligated to return or destroy all copies
`of these documents. The Texas Rules and federal standards recognize that an attorney in receipt of
`privileged information outside the context of formal discovery may sequester the documents and refrain from
`using them until a court rules on their disposition. See, e.g., In re Meador, 968 S.W.2d 346, 353 (Tex.
`1998). See also ABA Comm. on Ethics & Prof’l Responsibility, Formal Op. 442 (2006) (providing that
`a lawyer may return inadvertently sent materials, but is under no obligation to do so); Fed. R. Civ. P.
`26(b)(5)(B) (providing that an attorney may “sequester” the documents).
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`specifically identifiable impropriety did in fact occur.” Lemaire v. Texaco, Inc., 496 F. Supp. 1308, 1310
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`(E.D. Tex. 1980). See also id. at 1311 (holding that disqualification would be “manifestly unfair” under
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`such circumstances). Indeed, there is “no evidence of information actually being passed, the case
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`remains untainted, and [Maxell] [has] not been prejudiced.” Levin v. Raynor, No. 03cv4697 (GBD),
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`2004 WL 2937831, at *4 (S.D.N.Y. Dec. 17, 2004).
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`B.
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`DLA Reasonably Screened Mr. Park From The Apple Team, Which Alterna-
`tively Rebuts Any Presumption Of Shared Confidences.
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`Another method of establishing that no confidences have been shared is by means of an ethical
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`screen. See, e.g., Manning v. Waring, Cox, James, Sklar & Allen, 849 F.2d 222, 225 (6th Cir. 1988); Am.
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`Int’l Grp., Inc. v. Bank of Am. Corp., 827 F. Supp. 2d 341, 346 (S.D.N.Y. 2011). There is no magic
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`formula regarding the timing or nature of that screen. Comment 10 to Model Rule 1.0(k), for instance,
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`suggests it should be erected “as soon as practical after a lawyer or law firm knows or reasonably
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`should know that there is a need for screening.” And the Rule itself defines “screened” as “the isolation
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`of a lawyer from any participation in a matter through the timely imposition of procedures within a
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`firm that are reasonably adequate under the circumstances to protect information that the isolated lawyer is
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`obligated to protect under these Rules or other law.” Model R. Prof. Cond. 1.0(k) (emphases added).
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`Mr. Park joined DLA in January 2020. Ex. 2 (Park) ¶ 3. DLA was retained in the ITC matter
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`on July 28, 2020, and on this case on August 28, 2020. Ex. 1 (Cunningham) ¶¶ 4, 6. When Mr. Park
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`joined DLA in January, he already knew that ethics rules precluded him from sharing any client con-
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`fidences of any client (not just Maxell) unless they moved their files to DLA. Ex. 2 (Park) ¶ 9. Notably,
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`because DLA had not been engaged by Apple adverse to Maxell at that time, there was no need for
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`any screen, and DLA’s OGC was unaware of Mr. Park’s prior work for Maxell until July 30. Ex. 3
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`(Lindau) ¶ 4.
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`Much later, when Mr. Beaber of Mayer Brown called Mr. Park on July 30, Maxell admits Mr.
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`Beaber knew DLA represented Apple when inquiring about a screen for the ITC matter. Mr. Beaber
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`Case 5:19-cv-00036-RWS Do