Avocent Redmond Corp. v. Rose Electronics, Inc.

• Decision Date: 09 October 2007
• Docket Number: No. C06-1711MJP.,C06-1711MJP.
• Citation: 516 F.Supp.2d 1199
• Parties: AVOCENT REDMOND CORP., Plaintiffs, v. ROSE ELECTRONICS, INC., et al., Defendants.
• Court: U.S. District Court — Western District of Washington

Page 1199

516 F.Supp.2d 1199

AVOCENT REDMOND CORP., Plaintiffs, v. ROSE ELECTRONICS, INC., et al., Defendants.

No. C06-1711MJP.

United States District Court, W.D. Washington, at Seattle.

October 9, 2007.

Donald L. Jackson, J. Scott Davidson, James D. Berquist, Davidson Berquist Jackson & Gowdey LLP, Arlington, VA, John Alan Knox, Williams Kastner & Gibbs, Seattle, WA, for Plaintiffs.

Brian L. Jackson, Jeffrey J. Phillips, Michael S. Dowler, Thomas L. Casagrande, Howrey LLP, Houston, TX, Lawrence Carl Locker, Philip S. McCune, Summit Law Group, Seattle, WA, Ming-Tao Yang, Yitai Hu, Akin Gump Strauss Hauer & Feld LLP, Palo Alto, CA, Richard J. Codding, Sr., Akin Gump Strauss Hauer & Feld LLP, Los Angeles, CA, Thomas Fitzgerald Ahearne, Jeremy Robert Larson, Foster Pepper, Michael A. Moore, Corr Cronin Michelson Baumgardner & Preece, Seattle, WA, David Enzminger, Ryan Yagura, Vision L. Winter, O'Melveny & Myers, Los Angeles, CA, for Defendants.

ORDER DENYING MOTION TO DISQUALIFY PLAINTIFF'S COUNSEL

MARSHA J. PECHMAN, District Judge.

This matter comes before the Court on Defendant Rose Electronics' motion to disqualify Plaintiff's law firm Davidson Berquist Jackson & Gowdey LLP ("Davidson Berquist") from participating in this case. (Dkt. No. 128.) Plaintiff opposes the motion. (Dkt. No. 136.) Having considered the motion and response, Defendant's reply (Dkt. No. 144), all documents submitted in support thereof and the record herein, the Court DENIES Rose Electronics' motion to disqualify.

Background

This is a suit for patent infringement, brought by Avocent Redmond Corporation against Rose Electronics and others. Avocent alleges infringement of U.S. Patent No. 5,884,096 ("'096 patent"), U.S. Patent No. 6,112,264 ("'264 patent"), and U.S. Patent No. 7,113,978 ("the '978 patent") in violation of 35 U.S.C. § 271. These are the second, third, and fourth patents in a family of patents referred to as the "Beasley Patent" family.¹ (See Exs. 1-3 to Compl.; Berquist Decl. ¶ 5.) These patents all involve keyboard-video-mouse ("KVM") switch technology.

Plaintiff Avocent Redmond is a wholly-owned subsidiary of Avocent Corporation, and was formerly known as Apex PC Solutions, Inc. In 1998, Apex was the plaintiff in two related cases in this district — one against Rose Electronics and another against Cybex Computer Products Corporation — based on the first patent in the Beasley Patent family. See Apex PC Solutions, Inc. v. Rose Electronics, C98-245Z; Apex PC Solutions, Inc. v. Cybex Computer Products Corp., C98-246Z. Apex moved to consolidate the two actions, a motion which both Rose and Cybex opposed. (See Berquist Decl., Exs. 2-3.) Rose opposed the consolidation on the following grounds:

Rose and Cybex are unrelated parties whose products were developed completely independent of one another. Rose is unaware of any areas of commonality between the two companies' products and Apex has identified none in its motion for consolidation. The evidence relating to the details of the various products that each defendant manufactures will be different, involving analysis of a different set of documents and testimony from different witnesses. Any evidence of infringement by Cybex will be irrelevant to Apex's case against Rose, and any evidence of infringement by Rose will be irrelevant to Apex's case against Cybex.

(Berquist Decl., Ex. 2, p. 2.) The Honorable Thomas S. Zilly consolidated discovery in the two actions, but deferred the decision of whether to consolidate for trial. (Id., Ex 4.) Rose and Cybex were required to cooperate in the scheduling of discovery and in deposition discovery. Both actions ended in early 1999 through the filing of separate stipulated dismissals without prejudice. (Id. ¶ 35; Davidson Decl. ¶ 20.)

In the 1998 Apex litigation, Cybex was represented by Scott Davidson, Jay Berquist, and Don Jackson of Nixon & Vanderhye PC. Rose was represented by Robert McAughan and Michael Turton of Arnold White & Durkee (now Howrey). In 2000, Apex and Cybex merged. (Berquist Decl., Ex. 11.) The merger created a common parent, Avocent Corporation, and two wholly-owned subsidiaries, Avocent Redmond Corp. (formerly Apex) and Avocent Huntsville Corp. (formerly Cybex). (Id.) Since the merger, Avocent Redmond and Avocent Huntsville have retained attorneys Scott Davidson, Jay Berquist, and Don Jackson, now at Davidson Berquist Jackson & Gowdey, for patent matters. (Davidson Decl. ¶ 21; Berquist Decl. ¶ 42.)

Attorneys Davidson, Berquist, and Jackson represent Avocent Redmond in this patent infringement action against Rose and other defendants. Rose argues that the prior representation of Cybex in the Apex litigation against Cybex and Rose, prohibits these attorneys from now representing Avocent in a related matter against Rose.

Discussion

I. Standard to be Applied & Burden of Proof

In actions based on federal law, such as a patent infringement suit, the federal common law of attorney-client privilege applies. Admiral Ins. Co. v. U.S. Dist. Ct., 881 F.2d 1486, 1492 (9th Cir. 1989). Rose Electronics argues that the Davidson Berquist attorneys should be disqualified because Davidson Berquist's former client, Cybex, and Rose maintained a joint defense in the prior 1998 Apex litigation. The burden of proving that a joint defense or common interest privilege applies falls on the party seeking disqualification. United States v. Stepney, 246 F.Supp.2d 1069, 1076 (N.D.Cal.2003); see also In re Bevill, Bresler & Schulman Asset Mgmt. Corp., 805 F.2d 120, 126 (3d Cir.1986).

II. Motions to Strike

A. Rose's motion to strike certain statements in declarations of attorneys Berquist, Davidson and Jackson

Rose Electronics moves to strike certain portions of the declarations of James Berquist, Scott Davidson, and Donald Jackson. The local rules make clear that motions to strike must be included "in the responsive brief." Local Civil Rule 7(g). In this case, Rose mentioned the motion to strike in its reply brief, but set out the specific reasons for its motion in a separate exhibit attached to its reply. (See Dkt. No. 144-2.) This attempt to avoid the page limitations in the local rules is not well-taken. See Local CR 7(e)(4) (reply briefs for non-dispositive motions shall not exceed six pages).

Regardless, the motion to strike is, with one exception, moot. The Court has not relied upon the statements identified in the motion to strike. The only exception is the last four sentences of paragraph twelve of Mr. Davidson's declaration. That paragraph describes how Cybex pursued another patent that Cybex believed might invalidate Apex's patent. (Davidson Decl. ¶ 12.) Contrary to Rose's assertion, this statement is not conclusory or speculative, and, because he was lead counsel for Cybex, it is presumably information within Mr. Davidson's personal knowledge. The motion to strike the last four sentences of paragraph twelve of the Davidson declaration is therefore DENIED.

B. Avocent's motion to strike Exhibit D

In response to a separately filed motion to seal, Avocent moved to strike Exhibit D to Rose's motion to disqualify. (See Dkt. No. 134.) In ruling on the motion to seal, the Court stated that it would address the motion to strike in the context of this motion.

Exhibit D contains selected and redacted invoices from Rose's counsel generated during the 1998 Apex litigation. (See Dkt. No. 129.) Avocent argues that these invoices are attorney-client privileged information, and that Rose cannot use them to its advantage without revealing the remainder of the invoices, which Avocent believes would reveal that Rose communicated regarding the same topics with both Cybex and its opponent, Apex. Avocent argues that these withheld invoices would therefore overcome any impression that confidential information was disclosed to Cybex's lawyers.

Exhibit D does not contain attorney-client privileged information. Particular time entries are privileged only if they "reveal the motive of the client in seeking representation, litigation strategy, or the specific nature of the services rendered, such as researching the particular areas of the law." Clarke v. Am. Commerce Nat'l Bank, 974 F.2d 127, 129 (9th Cir.1992). These redacted invoices do not reveal any client confidences — they use boilerplate language to describe routine legal tasks. Moreover, as the Court explains below, the invoices do not create an impression that client confidences were shared. Avocent need not be concerned that Rose will effectively use the invoices as both a sword and a shield. The motion to strike Exhibit D is DENIED.

III. Joint Defense/Common Interest Privilege

Rose Electronics moves to disqualify Avocent's counsel on the theory that the Davidson Berquist lawyers were privy to Rose's confidences in a prior related case in which Davidson Berquist's client was a co-defendant of, and shared a common interest with, Rose. The "common interest" or "joint defense" privilege is an exception to the general rule that the voluntary disclosure of a privileged attorney-client or work-product communication to a third party waives the privilege. See Hunydee v. United States, 355 F.2d 183, 185 (9th Cir.1965). The privilege protects the confidentiality of communications passing from one party to the attorney of another party when made to further a joint effort. United States v. Schwimmer, 892 F.2d 237, 243 (2d Cir.1989). The privilege can give rise to a "disqualifying conflict where information gained in confidence by an attorney becomes an issue. ..." United States v. Henke, 222 F.3d 633, 637 (9th Cir.2000) ("[A]n attorney should ... not be allowed to proceed against a co-defendant of a former client where the subject matter of the present controversy is substantially related to the matters in which the attorney was previously involved, and wherein confidential exchanges of information took place between the various co-defendants in preparations of a joint defense.") (quoting ...