Case: 12-129 Document: 21 Page: 1 Filed: 10/23/2012
`
`NOTE: This order is nonprecedentiaL
`
`mntteb ~tate~ ({ourt of §ppeaI~
`for tbe jfeberaI ({trentt
`
`IN RE DELL INC.,
`Petitioner.
`
`Miscellaneous Docket No. 129
`
`On Petition for Writ of Mandamus to the United
`States District Court for the District of Delaware in case
`no. 11-CV-976, Judge Richard G. Andrews.
`
`ON PETITION
`
`Before BRYSON, MOORE, and O'MALLEY, Circuit Judges.
`O'MALLEY, Circuit Judge.
`
`ORDER
`
`This is an unusual case involving whether a bar pre(cid:173)
`cluding an attorney from accessing confidential informa(cid:173)
`the
`ground
`that
`he
`is
`a
`"competitive
`tion
`on
`decisionmaker" must be imputed to other members of his
`law firm. Petitioner Dell, Inc., defendant in this patent
`infringement action, seeks a writ of mandamus to direct
`the United States District Court for the District of Dela(cid:173)
`ware to impose a protective order against the law firm of
`
`
`
`NOTE: This order is nonprecedentiaL
`
`mntteb ~tate~ ({ourt of §ppeaI~
`for tbe jfeberaI ({trentt
`
`IN RE DELL INC.,
`Petitioner.
`
`Miscellaneous Docket No. 129
`
`On Petition for Writ of Mandamus to the United
`States District Court for the District of Delaware in case
`no. 11-CV-976, Judge Richard G. Andrews.
`
`ON PETITION
`
`Before BRYSON, MOORE, and O'MALLEY, Circuit Judges.
`O'MALLEY, Circuit Judge.
`
`ORDER
`
`This is an unusual case involving whether a bar pre(cid:173)
`cluding an attorney from accessing confidential informa(cid:173)
`the
`ground
`that
`he
`is
`a
`"competitive
`tion
`on
`decisionmaker" must be imputed to other members of his
`law firm. Petitioner Dell, Inc., defendant in this patent
`infringement action, seeks a writ of mandamus to direct
`the United States District Court for the District of Dela(cid:173)
`ware to impose a protective order against the law firm of
`
`
`
`Case: 12-129 Document: 21 Page: 2 Filed: 10/23/2012
`
`IN RE DELL INC.
`
`2
`
`Desmarais LLP. The plaintiff in the infringement action,
`Round Rock Research, LLC, which is owned and operated
`by the law firm's named partner John Desmarais, opposes
`the petition.
`
`I.
`
`United States Patent Nos. 6,088,816, 6,145,098,
`6,199,173, 6,243,838, 6,266,721, 6425006, 6,553,416, and
`6,681,342, which have all been asserted against Dell in
`this case, were issued and assigned originally to Micron
`In late 2008, Micron's former legal
`Technology,
`Inc.
`counsel, Mr. Desmarais, established Round Rock and
`purchased from Micron the '816,
`'098,
`'173,
`'838,
`'721,
`'006, and '342 patents along with thousands of Micron's
`other patents.
`
`In June 2011, Round Rock filed an action in the
`United States District Court for the Eastern District of
`Texas, charging Dell and another defendant with patent
`infringement. That suit was soon followed by this action
`against Dell in October 2011 in the United States District
`Court for the District of Delaware.
`
`In both cases, Round Rock hired the Desmarais law
`firm as counsel. That law firm, which has four additional
`partners and approximately ten associates, provides legal
`services relating to licensing, litigation, and patent prose(cid:173)
`cution for Round Rock and other clients.
`
`Soon after the actions were filed, the parties were di(cid:173)
`rected to conduct initial discovery. Because Dell consid(cid:173)
`ered some of the materials to be highly confidential
`technical documents, it sought a protective order to pro(cid:173)
`hibit both Mr. Desmarais and his entire law firm from
`accessing such materials.
`
`
`
`Case: 12-129 Document: 21 Page: 3 Filed: 10/23/2012
`
`3
`
`IN RE DELL INC
`
`The Texas court denied Dell's motion insofar as it
`would prohibit the entire law firm from accessing discov(cid:173)
`ery materials.
`That court explained that, while Mr.
`Desmarais's status as owner and operator of Round Rock
`created an unacceptably high risk that his access to such
`documents would lead to inadvertent disclosure or use
`against Dell, Dell had provided no such basis to limit
`access with regard to other members of the law firm. The
`Texas court explained further that any potential risk of
`disclosure would be outweighed by the actual harm to
`Round Rock of not being represented by its counsel of
`choice.
`
`Like the Texas court, the District of Delaware granted
`the protective order only as to Mr. Desmarais himself.
`The Delaware court concluded that "I don't think Dell is
`close to proving that any of the other 0 Desmarais law(cid:173)
`yers are competitive-decisionmakers for Round Rock."
`The court added that "[t]here is no evidence that they are
`unaware of their obligations of confidentiality, or that
`they perform any role other than that which outside
`counsel traditionally perform." Citing the Texas court's
`reasoning as additional grounds for rejecting Dell's re(cid:173)
`quest to bar the entire Desmarais law firm from accessing
`its confidential information,
`the Delaware court denied
`that portion of the motion.
`
`This petition for a writ of mandamus followed.
`
`II.
`
`In previous cases, this court has held that mandamus
`may be used to correct a denial of an order seeking to
`protect confidential and sensitive information. See In re
`United States, 669 F.3d 1333, 1336 (Fed. Cir. 2012); In re
`Seagate Tech., LLC, 497 F.3d 1360, 1367 (Fed. Cir. 2007)
`(en bane); see also In re Deutsche Bank Trust Co. Ams.,
`
`
`
`Case: 12-129 Document: 21 Page: 4 Filed: 10/23/2012
`
`IN RE DELL INC.
`
`4
`
`605 F.3d 1373, 1377 (Fed. Cir. 2010). The standard for
`obtaining mandamus relief, however, is an exacting one,
`requiring the petitioner to establish that
`the district
`court's decision amounted to a clear abuse of discretion or
`See Cheney v. U.S. Dist.
`judicial usurpation of power.
`Court, 542 U.S. 367, 380 (2004).
`
`Protective order provisions that disallow the use of
`designated confidential information beyond the scope of
`the litigation typically are sufficient to ensure protection
`See In re Deutsche
`of sensitive business information.
`Bank, 605 F.3d at 1378.
`In some limited circumstances,
`however,
`this court has recognized that, even in the
`presence of such protective measures, there are attorneys
`that should be barred from access to confidential informa(cid:173)
`tion due to an unacceptable risk of or opportunity for
`inadvertent disclosure. See id., 605 F.3d at 1378; Matsu(cid:173)
`shita Elec. Indus. Co., Ltd. v. United States, 929 F.2d
`1577, 1578-79 (Fed. Cir. 1991); U.S. Steel Corp. v. United
`States, 730 F.2d 1465, 1468 (Fed. Cir. 1984); see also
`Brown Bag Software v. Symantec Corp., 960 F.2d 1465,
`1470 (9th Cir. 1992). That doctrine arose out of this
`court's decision in U.S. Steel, in which we acknowledged
`the risk of inadvertent disclosure by some attorneys who
`are involved in a client's "competitive decisionmaking,"
`referring to "a counsel's activities, association, and rela(cid:173)
`tionship with a client that are such as to involve counsel's
`advice and participation in any or all of the client's deci(cid:173)
`sions (pricing, product design, etc.) made in light of simi(cid:173)
`lar or corresponding information about a competitor." 730
`F.3d at 1468 n.3.
`
`We need not decide the question of competitive deci(cid:173)
`sionmaker status in the present case. Round Rock stipu(cid:173)
`lated to treating Mr. Desmarais as
`such, and Mr.
`Desmarais will not represent Round Rock as either in(cid:173)
`house or outside counsel in this case. Moreover, and more
`
`
`
`Case: 12-129 Document: 21 Page: 5 Filed: 10/23/2012
`
`5
`
`IN RE DELL INC
`
`importantly for our purposes, Dell does not challenge the
`district court's finding that the other attorneys from the
`Desmarias law firm were not competitive decisionmakers
`for Round Rock.
`
`Instead, Dell argues that the bar against Mr. Des(cid:173)
`marias must be imputed to his entire law firm. According
`to Dell, Mr. Desmarais's obligation to refrain from access(cid:173)
`ing confidential information create a concurrent conflict of
`interest under Rule 1.7(a)(2) of the Model Rules of Profes(cid:173)
`sional Conduct of the American Bar Association (Model
`Rules). 1 That Model Rule provides in relevant part that a
`concurrent conflict of interest exists if "there is a signifi(cid:173)
`cant risk that the representation of one or more clients
`will be materially limited by the lawyer's responsibilities
`to ... a third person[.]" Dell further argues that any
`conflict of interest to Mr. Desmarais must be imputed to
`every member of his law firm under Model Rule 1.10,
`because there is a general presumption of shared confi(cid:173)
`dences among attorneys associated in a firm.
`
`Our prior cases dealing with competitive decisionmak(cid:173)
`ing are of no help to Dell because we have repeatedly
`rejected denial of access on such general assumptions. In
`U.S. Steel, for example, we rejected the trial court's denial
`of access to information produced through discovery based
`solely on the assumption that an in-house counsel was
`more likely to disclose information,
`inadvertently or
`otherwise, based on the pressure to remain with his or
`her employer.
`Id. Likewise, in Matsushita, we held that
`a bar to confidential information cannot rest solely on the
`
`1 The District of Delaware applies the Model Rules
`"[s]ubject to modifications as may be required or permit(cid:173)
`ted by federal statute, court rule, or decision" to all attor(cid:173)
`neys practicing before it in civil matters." D. Del. LR
`83.6(d).
`
`
`
`Case: 12-129 Document: 21 Page: 6 Filed: 10/23/2012
`
`IN RE DELL INC.
`
`6
`
`counsel's regular contact with corporate executives. 129
`F.2d at 1580. The sort of categorical presumption that
`Dell relies on here by invoking the rule of imputation has
`the same problem as the trial courts' stated assumptions
`in U. S. Steel and Matsushita: the basis for barring access
`to discovery materials is not grounded in the actual
`"factual
`circumstances
`surrounding
`each
`individual
`counsel's activities, association, and relationship with a
`party." U.S. Steel, 730 F.2d at 1468.
`
`Nor is Dell in a strong position to argue that the ap(cid:173)
`plication of the Model Rules of professional responsibility
`under Delaware law warrant granting this extraordinary
`relief. On these facts, we do not see the application of
`Rule 1.7 or, consequently, the application of Rule 1.10. It
`is not as if Dell is seeking refuge in the Model Rules out of
`fear that its confidential
`information will be used ad(cid:173)
`versely at trial, or to redress a breach of loyalty owed to it
`by counsel. 2
`In conceding that the Desmarias law firm
`could continue to represent Round Rock without access to
`Dell confidential information, Dell appears to take issue
`more with its failure to show that others at the Desmarias
`law firm are competitive decisionmakers with respect to
`If there is
`Dell than an application of the Model Rules.
`any concern here as far as the Model Rules go, it is be(cid:173)
`tween Round Rock and Mr. Desmarais, who will not have
`access to Dell's confidential information and will not be
`participating in this case as counsel. Dell has cited no
`case establishing a general rule for barring an entire law
`firm from access to discovery materials under remotely
`similar circumstances, and we have found none.
`
`2 We do note that, while Mr. Desmarias has agreed
`to refrain from acting as counsel for Round Rock in this
`action,
`screening procedures are also appropriate to
`ensure that Mr. Desmarias does not have access to Dell
`confidential material.
`
`
`
`Case: 12-129 Document: 21 Page: 7 Filed: 10/23/2012
`
`7
`
`IN RE DELL INC
`
`Moreover, the question of what significance the Model
`Rules should play in a case like this is primarily a ques(cid:173)
`See
`tion for the trial court, not this court,
`to decide.
`generally United States v. Whittaker, 268 F.3d 185, 193-94
`(3d Gir. 2001). The application of the Model Rules that
`Dell endorses here is inconsistent with how some courts
`have generally interpreted them, recognizing instead the
`need to balance ethical concerns and the right to select
`counsel of choice. See, e.g., United States v. Miller, 624
`F.2d 1198, 1201 (3d Gir. 1980) (noting that courts should
`"disqualify an attorney only when it determines on the
`facts of the particular case, that disqualification is an
`appropriate means of enforcing the applicable disciplinary
`rule."); see also Federal Deposit Ins. Corp. v. United States
`Fire Ins. Co., 50 F.3d 1304, 1314 (5th Gir. 1995) ("such
`inflexible application of a professional rule is inappropri(cid:173)
`ate because frequently it would abrogate important
`societal rights, such as the right of a party to his counsel
`of choice and an attorney's right to freely practice her
`profession.").
`The trial court judge is in a far better
`position to assess those factors than are we. The trial
`court balanced those factors against barring the entire
`law firm from accessing discovery materials here, and
`nothing presented to us on petition indicates that the
`district court's assessment is so clearly flawed as to justify
`granting mandamus.
`
`Accordingly,
`
`IT Is ORDERED THAT:
`
`The petition for a writ of mandamus is denied.
`
`
`
`Case: 12-129 Document: 21 Page: 8 Filed: 10/23/2012
`
`IN RE DELL INC.
`
`8
`
`FOR THE COURT
`
`/s/ Jan Horbaly
`Jan Horbaly
`Clerk
`
`s19
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