Judge Boots Attorneys From Patent Fight

SAN FRANCISCO (CN) - A federal judge disqualified attorneys for Talon Research in a patent squabble because they had represented Toshiba, the defendant, in earlier litigation.

U.S. District Judge William Alsup ruled that the more than 3,000 hours Talon's attorneys spent representing Toshiba in intellectual property matters gave them a conflict of interest.

Six of the seven attorneys used to work for DLA Piper, during which time they represented Toshiba. They now work for Feinberg Day.

"In the Court's mind, this is not a close call and Feinberg Day should have known better than to sue its recent client on a matter so similar to those on which the client had recently opined its confidences to counsel," Alsup wrote. "The public has a right to expect fidelity to professional standards. Feinberg Day has crossed the line."

The attorneys represented Toshiba in seven previous proceedings by or against Hynix Semiconductor, relating to patents claims for flash memory devices.

In the Hynix proceedings, Toshiba and Hynix alleged infringement of each other's NAND [Not And - dealing with binary operations] flash products. The patents asserted in the present case also relate to flash technology.

Alsup rejected Talon's claim that because the patents at issue in the previous litigation were not cited in the present case, the relationship between the current and previous representations is not substantial.

"Plaintiff provides no authority for its proposed citation requirement or even approval of such a requirement by any court. This argument is merely splitting hairs," Alsup wrote.

He noted that there is overlap of the products, since all relate to Toshiba's NAND flash products.

"Confidential information the Feinberg Day attorneys may have received about Toshiba's microSD product line would certainly be relevant to the present proceeding. Moreover, highly confidential information on defendant Toshiba's investment in NAND flash testing was among the documents filed in prior proceedings. This is more than mere similarity. There is a literal overlap in the types of products plaintiff, itself, put at issue," according to the ruling.

Alsup noted that Talon seeks information regarding Toshiba's corporate structure and its relationship with SanDisk, both of which "were directly at issue in the Hynix proceeding. Knowledge of Toshiba's tolerance for litigation, approach to patent litigation, as well as pressure points within its chain of command would enable counsel to here induce a favorable settlement," Alsup wrote.

The ruling continues: "In its prior representation Feinberg Day attorneys were privy to the identities of key decision makers at Toshiba with respect to its NAND flash technology products. Counsel have important insight to the risk aversion (or not) of their former client and are now in a position to capitalize on that insight. There appears to be overlap even among key witnesses. Even if Feinberg Day performed a collective lobotomy, Toshiba would rightly fear adverse use of information it shared in confidence. Toshiba may not be taken hostage by its former attorneys."

Alsup gave Talon 35 days to obtain new representation, and ordered Feinberg to "phase itself out promptly."

The disqualified Feinberg Day attorneys who used to work for DLA Piper are M. Elizabeth Day, David Alberti, Marc Belloli, Clayton Thompson, Sal Lim and Yakov Zolotorev. Ian Feinberg is the sole Feinberg Day attorney named in this case who was not previously counsel to Toshiba. They all represent Feinberg Day Alberti & Thompson, of Palo Alto.

Toshiba is represented by Gabriel Azar and others from multiple Paul Hastings locations.

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