Free Memorandum and Order - District Court of Delaware - Delaware

Case 1:07-cv—00090-SLR Document 72 Filed 12/19/2007 Page1 of 4
IN THE UN|'I'ED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
MICROSOFT CORPORATION, )
Plaintiff, ;
v. g Civ. N0. 07-090-SLR
ALCATEL BUSINESS SYSTEMS and g
GENESYS TELECOMMUNICATIONS )
LABORATORIES, INC., )
Defendants. g n
MEMORANDUM ORDER
At Wilmington this 18th day of December, 2007, having reviewed defendants’
motion to disqualify Fish & Richardson P.C. ("F&R") and the papers submitted in
connection therewith, as well as having conducted an evidentiary hearing related to
said motion and having reviewed certain papers Q @;
IT IS ORDERED that said motion (D.I. 30) is granted in part and denied in part,
for the reasons that follow:
1. Underlying facts. The above captioned patent case was filed in this court in
February 2007. ln June 2007, plaintiffs counsel F&R purchased, on the open market,
an Alcatel Unified Communications System comprising certain features that are
accused of infringing the patents in suit, including the OmniPCS Enterprise ("OXE") and
the OmniTouch Unified Communications software suite ("OTUC") (collectively, the
"AIcatel System"). F&R arranged for the installation of said accused system in its

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Washington D.C. office. One ofthe technicians working on the installation, Po Ching
Lin, identified himself as an employee of Alcatel-Lucent, one ofthe originally named
defendants in this case.1 Mr. Lin was directed to and, in fact, did provide training on the
administration, use and configuration of the Alcatel Systemz to two F&R lawyers;
indeed, these lawyers engaged Mr. Lin in ongoing conversations where they questioned
him about the administration, use and configuration ofthe Alcatel System.3
2. Standard of review. The court has the inherent authority "to supervise the
professional conduct of attorneys appearing before it," including the power to disqualify
attorneys. United States v. Miller, 624 F.2d 1198, 1201 (3d Cir. 1980). Pursuant to D.
Del. LR 83.6(d), attorneys appearing before the court have an obligation to adhere to
the Model Rules of Professional Conduct of the American Bar Association ("the Model
Rules"). Defendants contend that the above described conduct by F&R violates several
ofthe Model Rules. For purposes of this proceeding, the court will analyze just one of
the Model Rules implicated by F&R’s conduct,4 Rule 4.2, which provides in relevant part
that,
‘According to the docket, A|catel—Lucent was terminated as a party defendant on
May 30, 2007; the installation occurred over several days, commencing on June 28,
2007.
2Mr. Lin is currently an engineer in the Professional Services Group at Alcatel
USA, a subsidiary of Alcatel-Lucent, and is one of a limited number of Alcatel engineers
with the experience and training sufficient to install the Alcatel System.
"’The court reviewed, Q g , the notes of these two lawyers.
“Defendants assert that the conduct also violated, E &, Model Rules 4.1 and
8.4(c), which rules deal with deceptive and dishonest conduct, as well as Rule 4.3,
which prohibits lawyers from misleading persons who are not represented by counsel.
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[i]n representing a client, a lawyer shall not communicate
about the subject of the representation with a person the
lawyer knows to be represented by another lawyer in
the matter, unless the lawyer has the consent of the other
lawyer or is authorized to do so by law or a court order.
Model Rules of Profl Conduct R. 4.2 (2002). In the case of a corporation such as
Alcatel, an employee is "represented" if, for example, his or her statement may bind the
organization regarding the subject ofthe litigation, or where the employee is capable of
making an admission on behalf ofthe corporation. g Model Rules of Prof’| Conduct
R. 4.2 cmt. 7 (2002); ABA Comm. on Ethics and Prof’I Responsibility, Formal Op. 95-
396 (1995).
3. Analysis. Given Mr. Lin’s position and level of responsibility with respect to
the Alcatel System, and because he was directed (as an employee of a represented
party) to engage in conduct directly relevant to the subject matter of this litigation by
F&R,5 the court finds that F&R violated Model Rule 4.2.
4. The question remains as to what sanctions, if any, should be imposed. The
court finds that no confidential information was disclosed to F&R as a result of its
conduct;6 indeed, the only resulting prejudice the court can discern from the record is
5ln the alternative, F&R was neither forthright nor disinterested when it
consciously put Mr. Lin, without the benefit of legal representation, in the unwitting
position of being directed to engage in conduct that has direct consequences vis a vis
his employer and the subject matter of this litigation, conduct that violates Model Rules
4.1(a), 4.3 and 8.4(c).
“There is no evidence of record that F&R gleaned anything more from the
installation and training process than any other customer of defendants. Defendants
argue that, because F&R was not a "real" customer, any information disclosed to F&R
should be deemed confidential. The court rejects defendants' reasoning, as it tends to
imply that information about the actual administration, use and configuration of the
accused products would normally not be disclosed through customary litigation
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that F&R managed to get objective information about the accused products, without the
glaze of litigation stratagems that usually accompanies the discovery process.
Nevertheless, the violation of the Model Rules must be recognized and deterrence
enforced through the imposition of a sanction. Therefore, the court concludes that, as a
sanction for its conduct, F&R must pay the costs of this motion practice. Further,
plaintiff may not use the fruits of l:&R‘s conduct, that is, plaintiffs expert, Mr. Chang,
may not serve as a consultant or expert witness in this litigation, nor may the two F&R
lawyers who oversaw the installation be involved in the litigation, nor may the
information be given to any other witness for use in this litigation.
United States Disgict Judge
procedures. l
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