Case 5:19-cv-00036-RWS Document 640 Filed 03/02/21 Page 1 of 27 PageID #: 32570
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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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`Defendant.
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`CIVIL ACTION NO. 5:19-CV-00036-RWS
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`MAXELL, LTD.,
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`v.
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`APPLE INC.,
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`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`
`ORDER
`Before the Court is Plaintiff Maxell, Ltd.’s Motion to Disqualify DLA Piper LLP (US)
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`(Docket No. 554) and DLA Piper’s Motion to Strike Certain Portions of Jamie B. Beaber’s
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`Declaration in Support of Maxell’s Motion to Disqualify (Docket No. 577). For the reasons set
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`forth below, both motions are DENIED.
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`BACKGROUND
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`Maxell filed its initial complaint in this action on March 15, 2019, alleging that Apple’s
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`products infringe ten smartphone-related patents.1 Docket No. 1. The case has since been
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`narrowed to six patents and, after being reset twice, is currently set for trial on March 22, 2021.
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`Docket Nos. 593, 619, 624. Maxell filed the instant motion on October 28, 2020—at the time, less
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`than six weeks before the previous trial date, December 6, 2020. Docket No. 554. The Court
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`heard argument on the motion following the pretrial conference on November 12, 2020 (Docket
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`No. 582).
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`1 U.S. Patent Nos. 6,748,317; 6,580,999; 8,339,493; 7,116,438; 6,408,193; 10,084,991; 6,928,306; 6,329,794;
`10,212,586; and 6,430,498.
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`

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`The events that form the factual background of this motion are generally undisputed, but
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`each party’s interpretation of the events is heavily contested. Maxell and DLA Piper have each
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`submitted declarations and documentary evidence in support of their interpretation. The factual
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`allegations in Maxell’s motion are supported by the declaration of Jamie Beaber (Docket No. 554-
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`1, Ex. A (“Beaber Decl.”)), counsel for Maxell from Mayer Brown. The facts alleged in DLA
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`Piper’s response are supported by the declaration of Justin Park (Docket No. 576-2, Ex. 2 (“Park
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`Decl.”)), the attorney whose actions are central to this motion, declarations of members of DLA
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`Piper’s Office of General Counsel (“OGC”) (Docket No. 576-3, Ex. 3 (“Lindau Decl.”), Docket
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`No. 576-4, Ex. 4 (“Deem Decl.”)), the declaration of David Hoofnagle, Senior IT Manager for
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`DLA Piper (Docket No. 576-5, Ex. 5 (“Hoofnagle Decl.”)) and declarations of each lawyer and
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`paralegal on DLA Piper’s Apple team adverse to Maxell (Docket No. 576-1, Ex. 1 (“Cunningham
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`Decl.”); Docket Nos. 576-6–36, Exs. 6–36 (“Apple Team Decls.”)). The following is a timeline
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`of relevant facts.
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`I.
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`Justin Park’s Time at Mayer Brown
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`Maxell alleges that from April 2016 to January 2020, Justin Park worked on smartphone
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`matters for Maxell as counsel at Mayer Brown and was an integral part of the Maxell litigation
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`team. Docket No. 554 at 2. Through his work on Maxell matters, Maxell states that Mr. Park:
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`(1) Accessed and had full access to all of Maxell’s highly confidential business,
`technical, and attorney-client privileged information and documents, (2) was on the
`internal and external e-mail distribution lists for these cases where hundreds of
`confidential e-mails both within Mayer Brown and with Maxell were exchanged,
`(3) attended meetings with Maxell related to this case including at the client’s
`headquarters in Japan, (4) attended numerous depositions relating to the Maxell
`smartphone matters, (5) has direct knowledge of Maxell’s litigation strategy (which
`includes again privileged attorney mental impressions and work product), and (6)
`saw confidential and attorney-client information, technical and strategic, related to
`these cases (and the Apple matters specifically).
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`Beaber Decl. ¶ 3. Mr. Park agrees that Maxell was one of his clients while at Mayer Brown. Park
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`Decl. ¶ 3. In January 2020, Mr. Park left Mayer Brown and began working in the Washington,
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`D.C. office of DLA Piper. Beaber Decl. ¶ 4; Park Decl. ¶ 3. At the time, DLA Piper was not
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`engaged by Apple in this matter or in the related International Trade Commission (“ITC”) matter
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`adverse to Maxell—Certain Mobile Electronic Devices and Laptop Computers, Inv. No. 337-TA-
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`1215. Beaber Decl. ¶ 4.
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`Six months later, that changed. On July 30, 2020, DLA Piper filed a Public Interest
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`Statement on Apple’s behalf in the ITC matter. Id. That same day, Mr. Beaber reached out to Mr.
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`Park via telephone to discuss DLA Piper’s management of any potential conflicts of interest
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`involving Mr. Park. Id. ¶ 5; Park Decl. ¶ 8. Mr. Beaber’s declaration refers to this conversation
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`as a request for “a formal response regarding whether any confidential Maxell information had
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`been disclosed to anyone on the DLA Piper Apple litigation team adverse to Maxell and whether
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`any efforts were undertaken to protect Maxell’s confidential information at that time.” Beaber
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`Decl. ¶ 5. Mr. Park characterizes the conversation as an informal call between former colleagues.
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`Park Decl. ¶ 8. According to Mr. Park, Mr. Beaber told him that “Maxell had no intention of
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`seeking to disqualify” DLA Piper and agreed that Mr. Park should ask the firm to establish an
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`ethical wall. Id.
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`During their conversation, Mr. Beaber claims Mr. Park informed him that he had “had
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`discussions with at least one DLA Piper team member working on the matters adverse to Maxell
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`regarding the attorneys at Mayer Brown working on the Maxell smartphone matters.” Beaber
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`Decl. ¶ 5. Mr. Park concedes that on July 28, 2020—two days prior to his conversation with Mr.
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`Beaber—he spoke with Patrick Park, a DLA Piper attorney in Los Angeles whom he considers a
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`personal friend. Park Decl. ¶ 6. But Mr. Park states that the “discussions” Mr. Beaber refers to
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`were innocuous; during “a brief portion of what was otherwise a personal conversation,” Patrick
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`Park asked him if he knew Mr. Beaber, and Mr. Park responded that Mr. Beaber and his team
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`“were good lawyers.” Id. Mr. Park testifies that he did not disclose any confidential client
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`information to Patrick Park at that time or at any other time. Id.
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`In response to his conversation with Mr. Beaber, Mr. Park emailed Mark Fowler, vice chair
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`of his practice group at DLA Piper, regarding an ethical wall. Id. ¶ 9; Docket No. 576-13, Ex. 13
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`(“Fowler Decl.”) ¶ 4. Mr. Fowler forwarded that email to Peter Lindau, a member of the firm’s
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`Office of General Counsel (“OGC”). Park Decl. ¶ 9; Fowler Decl. ¶ 5; Lindau Decl. ¶ 4. Before
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`that email, DLA Piper’s OGC was unaware of Mr. Park’s prior work for Maxell. Lindau Decl. ¶
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`4. Mr. Lindau informed Mr. Park that he could not speak with anyone working on the ITC matter
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`about Maxell or disclose any information about Maxell to anyone representing Apple. Park Decl.
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`¶ 9; Lindau Decl. ¶ 4. Mr. Park states that he always knew of these ethical obligations and
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`complied with them at all times. Park Decl. ¶ 9.
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`On August 10, 2020, Mr. Beaber testifies that Mr. Park “responded informally” to his
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`inquiry and said that he had contacted Mr. Fowler and OGC about implementing an ethical screen.
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`Beaber Decl. ¶ 6. Mr. Park provided no further details regarding the ethical screen’s timing or
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`scope. Id. Mr. Park testifies that this exchange was part of a text conversation initiated by Mr.
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`Beaber about unrelated, personal matters, and he had let Mr. Beaber know that he “contacted
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`Fowler and the inhouse counsel re Chinese wall so we are good [sic].” Park Decl. ¶ 10; Ex. A
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`(text exchange between Mr. Park and Mr. Beaber dated 8/10/20). Because the conversation
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`continued regarding personal matters without a response from Mr. Beaber regarding the ethical
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`wall, Mr. Park assumed that no further communications were necessary on the topic. Id.
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`On August 18, 2020, Mr. Park testifies that he received a formal ethical screen notification
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`from OGC. Id. ¶ 11. Although Mr. Park maintains that he was well aware of his duties under the
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`ethical rules prior to reviewing the notification, he testifies that the ethical screen mandated that
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`he (1) have no communications with any member of the DLA Apple team related to Maxell; (2)
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`not work on anything related to his previous work for Maxell; (3) not have access to any case files,
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`physical or electronic, for any matter involving Apple and Maxell; and (4) not receive any
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`information about any matter involving Apple and Maxell from any of Apple’s counsel, including
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`any member of the DLA Apple team. Id. Mr. Lindau confirms that the ethical screen was “fully
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`implemented” by August 18, 2020. Lindau Decl. ¶ 4.
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`On August 28, 2020, a number of DLA Piper attorneys entered appearances in this matter.
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`Docket Nos. 512–22, 524, 529. Because he “had not yet received a formal response” to his request
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`to Mr. Park on July 30 regarding an ethical screen, Mr. Beaber states that he was “surprised” at
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`DLA Piper’s appearance in this matter. Beaber Decl. ¶ 7. He then initiated the first in a series of
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`communications between Mayer Brown and DLA Piper that began on September 11, 2020. Id.
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`II.
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`Communications Between Mayer Brown and DLA Piper
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`On September 11, 2020, Mr. Beaber sent a letter to DLA Piper’s opposing counsel and
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`OGC “stating that DLA Piper’s representation of Apple in this case raises a conflict of interest that
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`may require disqualification and renewing my request for information regarding the protection of
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`Maxell’s highly confidential information.” Id.; Docket No. 554-2, Ex. B (Sept. 11, 2020 email
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`from Jamie Beaber to Sean Cunningham and Elisha King). The letter specifically asked DLA
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`Piper to describe in detail (1) Mr. Park’s role in the case, if any; (2) any actions that DLA Piper
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`took to notify Maxell of this potential conflict of interest and to protect Maxell’s confidential
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`information; and (3) the scope and parameters of any ethical screen implemented with respect to
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`Mr. Park. Id.
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`On September 16, 2020, DLA Piper responded that it did not believe it had a disqualifying
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`conflict of interest in this case as Mr. Park had not disclosed any Maxell confidential information
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`to anyone on DLA Piper’s Apple team and an ethical screen was in place. Docket No. 554-3, Ex.
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`C (Sept. 16, 2020 email from Peter Lindau to Jamie Beaber). DLA Piper also expressed concerns
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`that the purported issue was tactical in nature. Id. It then described the ethical screen:
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`Justin Park has not disclosed any information regarding Maxell or any matter for
`Maxell in which he may have been involved (“the Maxell Matters”) to anyone
`representing Apple. The lawyers representing Apple in the cases cited above have
`neither sought nor received any information from Mr. Park regarding Maxell or the
`Maxell Matters.
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`DLA Piper erected an ethical wall, and separately reiterated to Mr. Park that he is
`prohibited from disclosing any information he may have regarding Maxell or the
`Maxell Matters to anyone representing Apple. The lawyers representing Apple
`have been advised that they may not seek or attempt to access any confidential
`information regarding Maxell or the Maxell Matters. If anyone were to attempt to
`breach the wall, even inadvertently, the Office of General Counsel would be
`notified. We have not received any such notification.
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`Mayer Brown responded on September 18, 2020, rejecting the contention that the concerns
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`Id.
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`were “tactical.” Docket No. 554-4, Ex. D (Sept. 18, 2020 email from Jamie Beaber to Peter
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`Lindau). The response informed DLA Piper that it had not complied with ABA Model Rule
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`1.10(a)(2)(ii), which requires prompt written notice of a firm’s compliance with Model Rule
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`1.10(a)(2)(i) (screening of a disqualified attorney), including a description of the screening
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`procedures employed and a statement of the firm’s compliance. Id. It also noted that Mr. Park’s
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`“discussions” with a member of the Apple Team regarding Mayer Brown and its work on the
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`Maxell smartphone matters raised confidentiality concerns. Id.
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`On September 28, 2020, DLA Piper responded, stating that the firm had fully complied
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`with its ethical obligations. Docket No. 544-5, Ex. E (Sept. 28, 2020 email from Peter Lindau to
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`Jamie Beaber). DLA Piper stated that “Mayer Brown, and thus Maxell, were aware of the Firm’s
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`representation of Apple in the ITC matter upon or shortly after the filing of the Public Interest
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`Statement with the ITC on July 30, 2020.” Id. This is confirmed, DLA Piper claimed, by Mr.
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`Beaber’s conversation with Mr. Park on July 30 regarding an ethical screen. Id. DLA Piper then
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`described the ethical screening procedures in greater detail:
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`The initial ethical screen relating to the ITC matter was initiated immediately after
`your July 30, 2020 call with Mr. Park, and was fully implemented on or before
`August 18, 2020. Moreover, no confidential information had been communicated
`by Mr. Park to anyone at DLA Piper, including those professionals assisting in the
`representation of Apple, before the ethical screen was erected. And no such
`information has been communicated by Mr. Park to anyone at DLA Piper since that
`time. At the time the ethical screen was initiated, the Firm had not yet been retained
`by Apple on the matter pending in the Eastern District of Texas referenced above.
`A screen for that matter was automatically initiated upon our retention by Apple
`and the opening of that matter, and notification of the screen was sent automatically
`to all members of the Apple team working on that matter—both attorneys and
`paralegals—who were not already subject to the existing ethical screen.
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`The Firm’s attorneys and paralegals working on the Apple matters and Mr. Park
`were advised of the erection of the screen and instructed that Mr. Park could not
`work on the Matters and should be denied access to any files, electronic or physical,
`relating to the Matters. The Apple team members were also instructed to have no
`communications with Mr. Park regarding the Matters. Moreover, Mr. Park was
`instructed to have no communications with the Apple team on the Matters as well.
`And he was explicitly denied access to any files, physical or electronic, maintained
`in connection with the Matters. The Firm’s software prevents the lawyers and
`paralegals on opposite sides of a screen from accessing electronic documents.
`Further, as I previously advised, if anyone were to even attempt to breach the ethical
`screen, even inadvertently, the Firm’s Office of General Counsel would be notified.
`To date, we have received no such notification.
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`Id.
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`DLA Piper attached the sworn declaration of Sean Cunningham, one of the lead attorneys
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`for Apple in this matter, corroborating the above description and confirming that he had spoken
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`with each member of the DLA Piper Apple team. Id. Each confirmed that they had no
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`communications with Mr. Park pertaining to any prior work he performed for Maxell. Id. Mr.
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`Park also provided a sworn declaration, summarized in the response below:
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`Mr. Park provides further confirmation of these facts in his attached declaration.
`Mr. Park brought no confidential files or materials with him from Mayer
`Brown pertaining to Maxell. And since joining DLA Piper, Mr. Park has not
`worked on any matters involving or adverse to Maxell, including the Matters at
`issue. He also confirms that he has not worked on any matters for Apple. Most
`importantly, Mr. Park confirms that he has not disclosed any confidential
`information that he purportedly learned while representing Maxell to anyone at the
`Firm, including members of the team of lawyers and paralegals representing Apple.
`And he has never been asked by anyone at the Firm to disclose any such
`information.
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`Id. (emphasis added). The response closed with an assurance that DLA Piper would follow up
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`with Mr. Park and the Apple team periodically to ensure the efficacy of the ethical screen and
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`offered to provide certifications at reasonable intervals upon Maxell’s request. Id.
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`On September 29, 2020, Mayer Brown responded, contending that DLA Piper’s response
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`was inadequate and that based on the firm’s representations to date, “it remains clear that DLA
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`Piper is in violation of the ethical rules.” Docket No. 554-6, Ex. F (Sept. 29, 2020 email from
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`Jamie Beaber to Peter Lindau). Specifically, Mayer Brown argued that: (1) DLA Piper did not
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`provide Maxell or Mayer Brown with prompt and timely written notice as required by Model Rule
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`1.10(a)(2)(ii) of its representation of Apple in either this matter or the ITC matter; and (2) DLA
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`Piper did not “timely screen” Mr. Park because the ethical screen was initiated after Mr. Beaber
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`“raised the issue” with Mr. Park. Id. Mayer Brown requested a “comprehensive response” to these
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`points by October 1, 2020. Id.
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`The next day, DLA Piper provided a brief response:
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`In response to your letter of September 29, 2020, we have already provided
`declarations confirming that (1) an ethical wall was timely initiated, and (2) no
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`confidential or privileged information of your client was disclosed to the Apple
`team. This should satisfy any legitimate concerns your client may have had.
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`Docket No. 554-7, Ex. G (Sept. 30, 2020 email from Peter Lindau to Jamie Beaber).
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`Dissatisfied with DLA Piper’s response, on October 5, 2020, Mayer Brown sent another
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`email expressing Maxell’s “serious concerns” due to DLA Piper’s “conflicting information.”
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`Docket No. 554-8, Ex. H (Oct. 5, 2020 email from Jamie Beaber to Peter Lindau). The email
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`requested that DLA Piper immediately provide comprehensive responses to Maxell’s concerns
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`regarding the timeliness of the ethical screen and written notice of DLA Piper’s representation of
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`Apple. Id.
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`A week passed, within which DLA Piper did not respond. Mayer Brown then sent a notice
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`requesting DLA Piper’s response or “a date and time you are available for a meet and confer on
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`Maxell, Ltd.’s motion to disqualify.” Docket No. 554-9, Ex. I (Oct. 12, 2020 email from Jamie
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`Beaber to Peter Lindau).
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`III. Discovery of Maxell’s Confidential Materials
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`On October 14, 2020, DLA Piper responded. Docket No. 554-10, Ex. J (Oct. 14, 2020
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`email from Peter Lindau to Jamie Beaber). DLA Piper clarified that the “discussions” Mr. Park
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`had with a member of the Apple team was merely a casual interaction in which Mr. Park
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`acknowledged that he knows Mr. Beaber and complimented him and his team. Id.
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`The response then stated that Mr. Park had recently created a consolidated folder of his
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`communications with OGC regarding the ethical screen. Id. In doing so, Mr. Park searched his
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`email for the term “Maxell.” Id. That search uncovered several email threads pertaining to Maxell.
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`Id. DLA Piper explains that Mayer Brown “erroneously included” the emails during Mr. Park’s
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`transfer as part of a separate transferring client’s files. Id. Until this time, DLA Piper maintains,
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`no one at DLA Piper, including Mr. Park, knew that he possessed the emails. Id. Mr. Park
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`immediately forwarded the emails to OGC. Id.
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`After the emails were discovered, DLA Piper states that its IT department conducted an
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`investigation and concluded that none of the emails were accessed by anyone other than Mr. Park
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`and OGC. Id. DLA Piper attached the Maxell emails to its response, stating that the “emails are
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`now and will remain inaccessible to DLA Piper staff and lawyers, including Mr. Park, outside the
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`Office of General Counsel.” Id.
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`Mayer Brown responded two days later, stating that the materials Mr. Park found in his
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`files were “highly confidential Maxell case settlement strategies and royalty rates for the Maxell
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`smartphone patent portfolio.” Docket No. 554-11, Ex. K (Oct. 16, 2020 email from Jamie Beaber
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`to Peter Lindau). The response argues that their belated discovery demonstrates that “[t]here was
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`no plan or direction from DLA Piper to thoroughly search Mr. Park’s files,” calling into question
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`the efficacy of the purported ethical wall. Id. Further, Mr. Park’s previous declaration that he
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`“brought no confidential files or materials with him from Mayer Brown pertaining to Maxell” was
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`now, in Maxell’s view, proven to be false. Id. In light of this new information, and in the absence
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`of DLA Piper’s comprehensive response requested in its previous emails, Mayer Brown informed
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`DLA Piper that Maxell would be moving to disqualify. Id. Maxell filed its motion to disqualify
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`DLA Piper on October 28, 2020. Docket No. 554.
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`LEGAL STANDARDS
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`I.
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`Motions to Disqualify
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`“As disqualification is a procedural matter not unique to patent law, regional circuit law
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`applies.” Adaptix, Inc. v. Dell, Inc., No. 6:13-cv-437, 2014 WL 11730482, at *4 (citing Picker
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`Int’l, Inc. v. Varian Assocs., Inc., 869 F.2d 578, 580–81 (Fed. Cir. 1989)). In the Fifth Circuit, a
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`motion to disqualify is a substantive motion “affecting the rights of the parties” and is thus
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`“determined by applying standards developed under federal law.” In re Am. Airlines, Inc., 972
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`F.2d 605, 610 (5th Cir. 1992) (quoting In re Dresser Industries, 972 F.2d 540, 543 (5th Cir. 1992)).
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`While the Fifth Circuit is “sensitive to preventing conflicts of interest,” it has warned that
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`disqualification should not be applied “mechanically” or “cavalierly.” In re ProEducation Int'l,
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`Inc., 587 F.3d 296, 299–300 (5th Cir. 2009) (citing Am. Airlines, 972 F.2d at 610; FDIC v. U.S.
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`Fire Ins. Co., 50 F.3d 1304, 1312 (5th Cir. 1995)).
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`Rather, the Fifth Circuit has directed courts to carefully “consider ‘[a]ll the facts particular
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`to [the] case . . . in the context of the relevant ethical criteria and with meticulous deference to the
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`litigant’s rights.’ ” Id. at 300 (quoting U.S. Fire, 50 F.3d at 1314.); Woods v. Covington Cty. Bank,
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`537 F.2d 804, 810 (5th Cir. 1976) (“A court should be conscious of its responsibility to preserve a
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`reasonable balance between the need to ensure ethical conduct on the part of lawyers appearing
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`before it and other social interests, which include the litigant's right to freely chosen counsel.”).
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`To that end, courts are to consider a motion to disqualify “in light of the litigant’s rights and the
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`public interest, considering ‘whether a conflict has (1) the appearance of impropriety in general,
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`or (2) a possibility that a specific impropriety will occur, and (3) the likelihood of public suspicion
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`from the impropriety outweighs any social interests which will be served by the lawyer’s continued
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`participation in the case.’ ” Horaist v. Doctor's Hosp. of Opelousas, 255 F.3d 261, 266 (5th Cir.
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`2001) (citing Dresser, 972 F.2d at 543).
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`When deciding a motion to disqualify, a court first looks to that court’s specific local rules.
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`U.S. Fire, 50 F.3d at 1312. In the Eastern District of Texas, “[t]he standards of professional
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`conduct adopted as part of the Rules Governing the State Bar of Texas shall serve as a guide
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`governing the obligations and responsibilities of all attorneys appearing in this court.” L.R. AT-
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`2(a). District courts, however, are not limited to their local rules in deciding a motion to disqualify.
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`Am. Airlines, 972 F.2d at 610. In fact, in reviewing motions to disqualify, courts must also
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`“consider the ethical rules announced by the national profession in light of the public interest and
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`the litigants’ rights.” Id. To this aim, the Fifth Circuit has acknowledged that the ABA Model
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`Rules of Professional Conduct (the “Model Rules”) are the “national standards to consider in
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`reviewing motions to disqualify.” ProEducation, 587 F.3d at 299. Therefore, the Court considers
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`both the Texas Rules and the Model Rules.
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`II.
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`Relevant Ethical Rules
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`Model Rule 1.09 provides:
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`(a) A lawyer who has formerly represented a client in a matter shall not thereafter
`represent another person in the same or a substantially related matter in which
`that person's interests are materially adverse to the interests of the former client
`unless the former client gives informed consent, confirmed in writing.
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`(b) A lawyer shall not knowingly represent a person in the same or a substantially
`related matter in which a firm with which the lawyer formerly was associated
`had previously represented a client
`(1) whose interests are materially adverse to that person; and
`(2) about whom the lawyer had acquired information protected by Rules
`1.6 and 1.9(c) that is material to the matter; unless the former client
`gives informed consent, confirmed in writing.
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`(c) A lawyer who has formerly represented a client in a matter or whose present or
`former firm has formerly represented a client in a matter shall not thereafter:
`(1) use information relating to the representation to the disadvantage of
`the former client except as these Rules would permit or require with
`respect to a client, or when the information has become generally
`known; or
`(2) reveal information relating to the representation except as these Rules
`would permit or require with respect to a client.
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`Texas Disciplinary Rule of Professional Conduct 1.09(a)–(b) provides:
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`(a) Without prior consent, a lawyer who personally has formerly represented a client
`in a matter shall not thereafter represent another person in a matter adverse to the
`former client:
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`(1) in which such other person questions the validity of the lawyer's services
`or work product for the former client;
`(2) if the representation in reasonable probability will involve a violation of
`Rule 1.05; or
`(3) if it is the same or a substantially related matter.
`
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`(b) Except to the extent authorized by Rule 1.10, when 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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`Both the Texas rules and Model Rules prohibit other lawyers from the disqualified
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`attorney’s firm from representing the conflicting client. Tex. Disciplinary Rule of Prof’l Conduct
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`1.09(b); Model R. Prof. Conduct 1.10(a). But the Model Rules allow for screening as a means of
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`avoiding imputed conflicts under certain circumstances. Model Rule 10(a)(2)(i)–(iii) provides:
`
`(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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`
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`(2) the prohibition is based on Rule 1.9(a) or (b) and arises out of the disqualified
`lawyer’s association with a prior firm, and
`
`
`
`(i)
`
`(ii)
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`the disqualified lawyer is timely screened from any participation in
`the matter and is apportioned no part of the fee therefrom;
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`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; and
`
`(iii)
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`certifications of compliance with these Rules and with the screening
`procedures are provided to the former client by the screened lawyer
`and by a partner of the firm, at reasonable intervals upon the former
`client's written request and upon termination of the screening
`procedures.
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`DISCUSSION
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`Maxell moves to disqualify DLA Piper for failure to comply with the relevant ethical rules.
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`Docket No. 554 at 9. In its motion, Maxell argues that because (1) DLA Piper did not implement
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`a timely and effective screen as required by Model Rule 1.10(a)(2)(i), and (2) DLA Piper did not
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`provide Maxell with prompt written notice as required by Model Rule 1.10(a)(2)(ii), Mr. Park’s
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`conflict must be imputed to DLA Piper, disqualifying the firm from representing Apple in this
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`case. Docket No. 554 at 9, 13.
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`DLA Piper responds that no Maxell confidential information has been shared with any
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`member of the firm and the firm reasonably screened Mr. Park from the Apple team. Docket No.
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`576 at 8–12. DLA Piper contends that Maxell had adequate notice of its representation of Apple
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`and the firm is willing to certify its ongoing compliance with the ethical rules. Id. at 12–13.
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`Further, DLA Piper argues that disqualifying it at this stage of the case would be inequitable and
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`highly prejudicial to Apple’s trial preparations. Id. at 13–15.
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`There is no dispute that (1) Mr. Park acquired confidential information in his representation
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`of Maxell during his time at Mayer Brown; and (2) Mr. Park is now associated with DLA Piper, a
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`firm that is representing the opposing side of a very active Maxell matter. Arista Records LLC v.
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`Lime Group LLC, No. 06 CV 5936 KMW, 2011 WL 672254, at *5 (S.D.N.Y Feb. 22, 2011); Park
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`Decl. ¶ 3. The question for the Court is therefore whether Mr. Park’s status as a disqualified
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`attorney must be imputed to DLA Piper.
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`Conflicts are usually imputed to a disqualified attorney’s firm based on the presumption of
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`shared client confidences. Hempstead Video, Inc. v. Inc. Vill. of Valley Stream, 409 F.3d 127, 132
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`(2d Cir. 2005). Fifth Circuit and Texas law conflicts on whether this presumption is rebuttable.
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`When a lawyer moves to another firm, Texas courts apply an irrebuttable presumption that the
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`lawyer shares confidences with its members, “requiring imputed disqualification of the firm.” In
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`re Columbia Valley Healthcare Sys., L.P., 320 S.W.3d 819, 824 (Tex. 2010). But “under Fifth
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`Circuit precedent, there is no established irrebuttable presumption [that] a lawyer shares client
`
`confidences he possesses with other lawyers at his law firm.” Nat’l Oilwell, 60 F.Supp.3d at 762
`
`(citing ProEducation, 587 F.3d at 304 n.7). Indeed, “to the extent there is still a presumption . . .
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`the presumption is rebuttable.” Id. at 763; see also DataTreasury Corp. v. Wells Fargo & Co.,
`
`No. 2:06-cv-72-DF, 2009 WL 10679840, at *9 (E.D. Tex. Dec. 30, 2009), aff’d, In re
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`DataTreasury Corp., No. 2010-M928, 2010 WL 3074395 (Fed. Cir. 2010).
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`Because motions to disqualify are governed by the law of the regional circuit, the Court
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`will not apply an irrebuttable presumption that Mr. Park shared Maxell’s confidential information
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`with other members of DLA Piper. 2 Adaptix, 2014 WL 11730482, at *4 (citing Picker, 869 F.2d
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`at 580–81). Instead, DLA Piper may rebut any presumption that Mr. Park shared Maxell
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`confidences with other DLA Piper attorneys based on the factual record. See Nat’l Oilwell, 60
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`F.Supp.3d at 765–66, 767 n.11 (under Fifth Circuit law, the Court considers efforts to screen the
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`disqualified attorney from the litigation as part of the factual record). In considering the factual
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`record, the Court follows the balancing approach deemed most pruden