By Dennis Crouch
In re Shared Memory Graphics LLC (Fed. Cir. 2011), Opinion by Judge Dyk, dissent by Judge Newman (Can you believe that these two would disagree?)
This case involves a disqualification motion. Nintendo (the alleged infringer) was sued for infringement by SMG. The firm of Floyd & Buss represents the plaintiffs and the firm's partnership includes Kent Cooper who is the former IP director at Advanced Micro Devices (AMD).
While Cooper was at AMD, Nintendo and AMD were co-defendants in a separate patent infringement lawsuit and part of a joint defense agreement. The JDA included a provision that the agreement would not be used to "seek to disqualify the respective counsel of such party in any future litigation." However, Nintendo argued in the JDA does not apply to Cooper because he is no longer AMD's counsel. The district court agreed with this interpretation disqualified the Floyd & Buss firm based upon the conclusive presumption that Cooper had access to Nintendo's confidential information. (The district court more broadly disqualified Floyd & Buss from representing the plaintiffs against any of the accused infringers.)
On writ of mandamus, the Federal Circuit reversed – finding that the plain language of the JDA covered Cooper even after he left his position at AMD. The court also held that such a waiver is enforceable – especially when signed by two sophisticated parties.
In dissent, Judge Newman suggested that Cooper's switching of sides and failure to maintain confidences is damning to our system of professional legal representation: "the issue is the integrity of the system of legal representation in today's world of mobile lawyers and large law firms with interacting clients. . . . [I]t appears that Cooper in his new employment is associated with issues involving his former employer, and that his former employment was at the highest level in interaction with Nintendo's legal and strategic interests. If there is doubt, it must be resolved in favor of the entity whose information is in jeopardy."