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REPLY ISO PLAINTIFFS MOTION TO DISQUALIFY DEFENDANTS COUNSEL


LEE TRAN & LIANG APLC
K. Luan Tran (SBN 193808)
James M. Lee (SBN 192301)
Cyrus Khojandpour (SBN 260233)
Lisa J. Chin (SBN 259793)
601 S. Figueroa Street, Suite 3900
Los Angeles, CA 90017
Tel. 213-612-3737 / Fax. 213-612-3773

RAY A. MANDLEKAR, ATTORNEY AT LAW
Ray A. Mandlekar (SBN 196797)
601 S. Figueroa Street, Suite 4050
Los Angeles, CA 90017
Tel. 213-785-6130 / Fax. 213-254-9001

Attorneys for Plaintiff
Frank Reginald Brown, IV


SUPERIOR COURT OF THE STATE OF CALIFORNIA
FOR THE COUNTY OF LOS ANGELES


FRANK REGINALD BROWN, IV,

Plaintiff,

v.

SNAPCHAT, INC., a Delaware corporation;
TOYOPA GROUP, LLC, a California Limited
Liability Company; EVAN THOMAS
SPIEGEL, an individual; ROBERT
CORNELIUS MURPHY, an individual; and
DOES 1 through 10 inclusive,

Defendants.
CASE NO: BC501483

Assigned for all purposes to the Honorable John
L. Segal (Dept. 50)


PLAINTIFFS REPLY IN SUPPORT OF
HIS MOTION TO DISQUALIFY
DEFENDANTS COUNSEL QUINN
EMANUEL URQUHART & SULLIVAN
LLP

[Defendants Objections to Declarations of
Joseph C. Sarles and Robert Kehr, Response to
Defendants Objections, and Request for
Judicial Notice Filed Concurrently herewtih]

Hearing:
Date: August 1, 2013
Time: 8:30 a.m.
Dept.: 50


Action Filed: February 21, 2013
Trial Date: Not Assigned Yet
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INTRODUCTION
The most notable feature of Defendants Opposition is that Defendants are unable to cite one
single case where a court permitted a law firm to do what Quinn Emanuel is attempting to do here:
Obtain confidential information from a client about prospective litigation and then switch sides to
oppose that same client in the same litigation, pursuant to a supposed advance waiver of conflict form.
No court has allowed a law firm to do this. This Court should not endeavor to be the first.
In a recent motion to disqualify that it filed in another matter, Quinn Emanuel called the
concept of successively working on both sides of a case the cardinal sin under the disqualification
cases, and obtained disqualification of the opposing firm by urging the court that [n]o amount of
spin and no ethical wall can change the fact that disqualification is required. See Request for Judicial
Notice (RJN), Exh. B at 1:3-8. The same standardand resultshould apply here.
Indeed, Defendants do not dispute that Quinn Emanuel attorney Anthony Alden is conflicted
(hence the attempt to isolate him with an ethical wall). Case law, applying the established vicarious
disqualification rule, is clear that this conflict is imputed to the entire Quinn Emanuel firm. Case law
is also clear that no ethical wall can save a side-switching firm from disqualification.
The supposed conflict waiver Quinn Emanuel required Plaintiff to sign also does not prevent
disqualification, as that supposed waiver is invalid under the factors set forth in Visa U.S.A., Inc. v.
First Data Corp., 241 F. Supp. 2d 1100, 1105 (N.D. Cal. 2003). Most notably, when Mr. Alden
purported to explain in an email the import of that waiver to Plaintiff, he specifically did not mention
that it would ostensibly permit Quinn Emanuel to represent the same adverse parties in the very same
matter he and Plaintiff were discussing. This alone is fatal to Defendants waiver argument.
Defendants who replaced their previous counsel to knowingly retain a law firm Plaintiff had
consulted about this same case now argue they are entitled to counsel of their choice. But [t]he
paramount concern must be to preserve public trust in the scrupulous administration of justice and the
integrity of the bar [and] the important right to counsel of ones choice must yield to ethical
considerations that affect the fundamental principles of our judicial process. People ex rel. Dept. of
Corp. v. SpeeDee Oil Change Systems, Inc., 20 Cal. 4th 1135, 1145 (1999). This means that there are
limits to a Defendants choice of counsel, and this Court should enforce those limits.

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ARGUMENT


I. QUINN EMANUEL SWITCHED SIDES IN THE SAME CASE
Defendants know that side-switching in the same case is [t]he most egregious conflict of
interest mandating automatic disqualification. SpeeDee Oil, 20 Cal. 4th at 1146. As a result,
Defendants hired Robert Kehr, a distinguished ethics expert, to issue the incredulous opinion that
Quinn Emanuel cannot be disqualified because no side-switching had occurred due to the fact that it
had declined to represent Plaintiff. Kehr Dec. at 2.
At the outset, Mr. Kehrs entire declaration is inadmissible because it seeks to offer improper
legal opinions. See Plaintiffs Objections to Kehr Decl. In another case, Quinn Emanuel attacked Mr.
Kehr for offering the same type of inadmissible opinion: Mr. Kehr has been reprimanded by courts
in the past for these exact types of impermissible opinions. A Westlaw search for opinions in which
his testimony has been offered shows that the only two opinions addressing Mr. Kehrs expert opinion
excluded it as offering improper legal conclusions [] The Court should do so here as well. RJN,
Exh. A at 3:2-5. Mr. Kehrs declaration should suffer the same fate urged by Quinn Emanuel.
Regardless, Mr. Kehr is absolutely wrong. Courts have consistently held that an attorney who
received confidential information may still be disqualified even if no formal attorney-client
relationship had formed or engagement had resulted. See Morrison Knudsen Corp. v. Hancock,
Rothert & Bunshofts, 69 Cal. App. 4th 223, 232-33 (1999) (an attorneys receipt of confidential
information from a non-client may lead to the attorneys disqualification); SpeeDee Oil, 20 Cal.4th at
1147-48 (fiduciary relationship existing between a lawyer and client extends to preliminary
consultations by a prospective client with a view to retention of the lawyer, although actual
employment does not result); Li v. A Perfect Day Franchise, Inc., 2011 WL 4635176 at *2-5 (N.D.
Cal.) (attorney disqualified from substantially related matter after previously had a 30-90 minute
preliminary conversation that did not result in professional employment or services).


In another successful motion to disqualify, Quinn Emanuel cited to applicable case law and
correctly described the McKool Smith firm as having engaged in a classic and clearly impermissible
case of switching sides due to a previous 45-minute telephone conversation between Quinn
Emanuels client and McKool Smith on the same matter that did not result in a formal retention. RJN,
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Exh. E at 14.
1
McKool Smith then withdrew from the case. RJN, Exh. F. In sum, Quinn Emanuel
clearly engaged in side-switching here although Plaintiff never formally hired it.

II. DUE TO MR. ALDENS UNDISPUTED CONFLICT, THE ENTIRE QUINN
EMANUEL FIRM MUST BE VICARIOUSLY DISQUALIFIED AS WELL


A. Defendants Do Not Dispute That Mr. Alden Is Conflicted
Defendants do not dispute California courts apply a substantial relationship test to determine
whether an attorney should be disqualified in a successive representation. See Flatt v. Superior Court,
9 Cal. 4th 275, 283 (1994) ([w]here the requisite substantial relationship between the subjects of the
prior and the current representations can be demonstrated, access to confidential information by the
attorney in the course of the first representation (relevant, by definition, to the second representation)
is presumed and disqualification of the attorneys representation of the second client is mandatory).
Defendants also do not dispute that under this test, Mr. Alden is disqualified from representing
Defendants in this matter because Plaintiff previously consulted him on the same matter. It is noted
that while Defendants are not disputing that Mr. Alden has an incurable conflict, they submit a
declaration from Mr. Alden essentially denying what he discussed with Plaintiff. But this Court need
not get into a swearing contest regarding what was discussed:

Courts have long been concerned about the prospect of a swearing contest between the
attorney and former client as to whether the attorney had access to confidential information in
the course of the former representation. To avoid this problem, the substantial relationship
test was developed: [The] former client need show no more than that the matters embraced
within the pending suit wherein his former attorney appears on behalf of his adversary are
substantially related to the matters or cause of action [where] the attorney previously
represented him, the former client. The Court will assume that during the course of the former
representation confidences were disclosed to the attorney bearing on the subject matter of the
representation. Civil Serv. Com v. Sup. Ct., 163 Cal. App.3d 70,79 (1984) (emphasis added).
The substantial relationship test is easily met here because, again, Mr. Alden was consulted on


1
Defendants also claim that Plaintiff had disclaim[ed] an attorney-client relationship in the
Advance Waiver. Opposition at 6. However, [s]uch disclaimers are ineffective. Benninghoff v.
Sup. Ct., 136 Cal. App. 4th 61, 73 (2006). Regardless, an attorney-client relationship had formed
between Plaintiff and Quinn Emanuel. See Evidence Code, 951 (defining client as a person
who...consults a lawyer for the purpose of retaining the lawyer or securing legal service or advice
from [the lawyer]); In re Dupont's Estate, 60 Cal. App. 2d 276, 288-89 (1943) (noting universal
acceptance that communication by client of preliminary statement of his case to an attorney is
privileged even if the attorney is not hired).
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the same lawsuit. Mr. Alden is assumed to receive confidential information from Plaintiff and
should be disqualified.
2
See In re Marriage of Abernethy, 5 Cal.App.4th 1193, 1197, n.3 (1992) ([i]t
is the possibility of the breach of confidence, not the fact of an actual breach that triggers
disqualification.). Indeed, Defendants acknowledge Mr. Aldens clear disqualification from
representing them by purportedly walling him off from this matter.
B. The Entire Quinn Emanuel Firm Must Be Vicariously Disqualified
Given Mr. Aldens obvious conflict, Quinn Emanuel must be vicariously disqualified. Flatt, 9
Cal.4th at 283 (where, as here, the substantial relationship test is met, the disqualification extends
vicariously to the entire firm); Goldberg v. Warner/Chappel Music, Inc., 125 Cal.App.4th 752, 765
(2d Dist. 2005) (vicarious disqualification rule is based on a pragmatic recognition that the
confidential information will work its way to the nontainted attorneys at some point). Vicarious
disqualification is especially required in side-switching cases. See City Natl Bank v. Adams, 96
Cal. App. 4th 315, 328 (2002) (rule requiring vicarious disqualification of entire law firm is
especially true where the attorneys disqualification is due to his prior representation of the opposing
side during the same lawsuit) (citations omitted).


III. THE ETHICAL SCREEN, AND THE KIRK CASE, DO NOT SAVE QUINN
EMANUEL FROM DISQUALIFICATION

Kirk Is Distinguishable. The Kirk v. First Am. Title Ins. Co., 183 Cal. App. 4th 776 (2010)
does not help Quinn Emanuel. In that case, the court addressed the circumstances under which ethical


2
Mr. Alden actually received confidential information from Plaintiff and gave legal advice to
Plaintiff. See Plaintiff Dec., 7-13. Even if one were to take Mr. Aldens declaration at face value,
the declaration and the Advance Waiver still reveal that Plaintiff provided confidential information to
Mr. Alden: (i) Plaintiff and Mr. Alden (a very busy litigation partner at a major firm) spoke at least
twice for 40 minutes by phone regarding filing this very same lawsuit; (ii) Mr. Alden does not dispute
that he received confidential information about the proposed lawsuit during these phone calls; (iii)
based on the information received in the calls, Mr. Alden knew enough about the key players to
identify, in the Advance Waiver, Evan Spiegel, John Spiegel, Bobby Murphy, and Lightspeed
Ventures Partners as potential defendants in the proposed lawsuit; (iv) the parties exchanged at least
22 emails regarding the proposed lawsuit; (v) Mr. Alden admitted that during some of the calls, he
tried to gather information from Mr. Brown about the facts and circumstances of his dispute in order
to assess the matter; and (vi) In the Advance Waiver, Quinn Emanuel acknowledges that during the
assessment, Quinn Emanuel may receive from [Plaintiff] or provide [Plaintiff] confidential
information regarding the Matter. Plaintiff Dec., Exh. B.
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screening might prevent disqualification of a newly-arrived attorney having confidential information
concerning a party his new law firm is adverse to. Indeed, the court focused on policy considerations
permitting attorney mobility. See id. at 802 (attorney mobility and firm mergers have increased
exponentially). The Kirk court was careful to emphasize that we are not adopting a broad rule
permitting ethical screening in all cases (id. at 802 n.21), and limited its holding by stating that, In
sum, we have concluded that, when a tainted attorney moves from one private law firm to another, the
law gives rise to a rebuttable presumption of imputed knowledge to the law firm, which may be
rebutted by evidence of effective ethical screening. Id. at 814 (emphasis added). The Kirk court also
noted that the tainted attorney already left the firm. Id. 816-816. Significantly, the court explicitly
reaffirmed existing case law that ethical screening will never save a firm who, as here, switches sides
in the same case from disqualification. See Kirk, 183 Cal. App. 4th at 800 (vicarious disqualification
should be automatic in cases of a tainted attorney possessing actual confidential information from a
representation, who switches sides in the same case) (citing Henriksen v. Great American Savings &
Loan, 11 Cal.App.4th 109, 116-117 (1992) (ordering vicarious disqualification of entire firm and
holding that screening concept as not applicable when the attorney in question performed work for
the opposing party in the same lawsuit). Here, we do not have a newly-arrived attorney. Mr. Alden
was with Quinn Emanuel when he counseled Plaintiff and is still with the firm, and the firm switched
sides in the same case.
Quinn Emanuel Agreed That Kirk Is Distinguishable. Not too long ago, Quinn Emanuel
agreed with the above analysis of Kirk. In 2011, Quinn Emanuel sought to disqualify the Glaser Weil
firm from the high-profile Mattel, Inc. v. MGA Entertainment, Inc. case on the eve of trial for hiring an
ex-Quinn attorney who used to work on the same case. RJN, Ex. B. In response to the Glaser Weils
claim that it had erected an ethical screen consistent with Kirk, Quinn Emanuel represented to the
Judge David O. Carter that [t]he general rule in California is that where an attorney is disqualified,
that attorney's entire firm is disqualified as well regardless of efforts to erect an ethical wall. RJN,
Exh. C at 1:1-4, n.1 (emphasis added) (quoting Tuft, Non-Consensual Screening for Conflicts in
California, 843 PLI/Lit 35, at 2 (December 2010)).
Quinn Emanuel also correctly stated to Judge Carter in the same disqualification motion that
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Kirk is distinguishable because in Kirk, the tainted attorney had already left the firm whose
representation was being challenged. See Kirk, 183 Cal. App. 4th at 815-16. That fact is highly
significant, because [w]here tainted attorneys and nontainted attorneys are working together at the
same firm, there is ... a pragmatic recognition that the confidential information will work its way to the
nontainted attorneys at some point, but when the tainted attorney is gone, the court can conduct a
dispassionate assessment of whether confidential information was actually exchanged. See
Goldberg, 125 Cal. App. 4th at 765. RJN, Exh. B at7:18-21.
More importantly, Quinn Emanuel also correctly told Judge Carter that, as shown, Kirk made
clear that no ethical wall can save a firm that switched sides in the same lawsuit. RJN, Exh. B at 8
([e]ven Kirk recognizes that in an egregious case such as this one, where an attorney worked on the
other side of the same litigation, an ethical wall cannot cure the conflict).
Quinn Emanuel also referred Judge Carter to Openwave Systems, Inc. v. 724 Solutions (US)
Inc., 2010 WL 1687825 (N.D.Cal.) (724 Solutions), a post-Kirk decision, which granted a motion to
disqualify despite the presence an ethical wall. RJN, Exh. B at 6, 7. The 724 Solutions court held that
the ethical wall was not sufficient and Kirk did not apply because there was a substantial
relationship between the former and current representations. Id. at *5. The court also held that the
ethical wall was insufficient was required due to the close proximity between the tainted attorney
and the non-tainted attorneys.
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Judge Carter obviously agreed with Quinn Emanuel because he
disqualified Glaser Weil. RJN, Exh. D.
4



3
Here, the substantial relationship test is clearly met, and Mr. Alden works in the same Los Angeles
office as all the Quinn Emanuel attorneys representing Defendants.

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Defendants claim that [s]ince Kirk, courts consistently deny vicarious disqualification motions
where ethical walls are in place. Opposition at 14. However, the cases cited by Defendants do not
hold (and no case has held) that an ethical wall would automatically save a firm from vicarious
disqualification. In Openwave Sys. Inc. v. Myriad France S.A.S, 2011 WL 1225978 at *6-7 (N.D.
Cal.), disqualification was denied notably because the motion was made just before discovery cut-off,
and disqualification at that juncture would result in great prejudice. The court cautioned that the main
lesson here is that motions to disqualify should be promptly made before the parties are invested
substantially in their litigation line-ups. Id. at *7. In Silicon Graphics, lnc. v. AT1 Technologies,
Inc., 741 F. Supp. 2d 970, 979-81 (W.D. Wis. 2010), the court applied the Seventh Circuit standard for
assessing the adequacy of ethical screens. In Barco N.V. v. Tech. Properties Ltd., 2011 WL 841283
(N.D. Cal.), there was not even an ethical wall. Tellingly, Defendants do not cite to the 724 Solutions
case that Quinn Emanuel previously brought to Judge Carters attention.
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This Court should adopt the same analysis previously advocated by Quinn Emanuel, and
should issue the same relief previously advocated (and obtained) by the firm.
5


IV. THE ADVANCE WAIVER IS NOT ADEQUATE UNDER THE VISA FACTORS
Defendants agree that the enforceability of the Quinn Emanuels Advance Waiver is
determined under the Visa U.S.A., Inc. v. First Data Corp., 241 F.Supp.2d 1100, 1105 (N.D. Cal.
2003) factors. Opposition at 10-13. We discuss these factors below.
6

Breadth of the Waiver. Contrary to Defendants claim, the Advance Waiver is much
broader than another waiver that was invalidated by the court in Concat LP v. Unilever, PLC, 350
F.Supp.2d 796, 820 (N.D.Cal. 2004). The chart below compares the two waivers:

Morgan Lewis Advance Waiver Invalidated
in Concat
Quinn Emanuel Advance Waiver Here
Morgan, Lewis & Bockius may continue to
represent, or may undertake in the future to
represent, existing or new clients in any matter,
including litigation, that is not substantially
related to our work for you, even if the
interests of such clients in those other matters are
directly adverse to you. Id. (emphasis added)
Quinn Emanuel may represent any entity . . .
with respect to any matter or case . . . adverse
to [Plaintiff], including the Matter.
Plaintiff Dec., Exh. B, para. 5. (emphasis
added)

The Quinn Emanuel Advance Waiver is much broader in that it allows the firm to represent
adverse parties in any matter including this matter for which Plaintiff previously consulted the firm.
In contrast, the Morgan Lewis waiver only allows the firm to represent adverse parties in a matter


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The purported ethical wall erected by Quinn Emanuel is also not effective for another reason: the
firm admitted that confidential information from Plaintiff had already been disseminated to all of its
partners. See Tayback Dec., 3 (acknowledging that an email from Plaintiff to Mr. Alden and other
Quinn attorneys was then forwarded to all Quinn Emanuel partners). And even if Mr. Alden
purportedly did not discuss this Motion with anyone else in the firm, his lawyer and agent
coordinate[d] with other members of the Firm in opposing the Motion. Alden Dec., 28. The fact
that Mr. Aldens agent communicated with other firm attorneys is no different than if Mr. Alden
himself communicated with other firm attorneys. That is why courts have consistently applied the
vicarious disqualification rule because the confidential information will work its way to the
nontainted attorneys at some point. Goldberg, 125 Cal.App.4th at 765.

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Defendants claim that California courts consistently enforce prospective waivers of conflicts.
Opposition at 8. But none of the cases cited in support of this claim are apposite here, because none of
them involved waivers allowing side-switching in the same matter.
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that is not substantially related to our work for you. This factor clearly favors Plaintiff.
Temporal Scope of the Waiver. Visa states this factor as follows: whether [the waiver]
waived a current conflict or whether it was intended to waive all conflicts in the future. Visa, 241
F.Supp.2d at 1106. This is not even a close call. This factor favors Plaintiff because the Advance
Waiver contains no time restriction and, if enforced, would allow Quinn Emanuel to take on any
conflicted engagement at any time in the future. See also Concat, 350 F.Supp.2d at 820 (invalidating
waiver because its temporal scope is likewise unlimited).
Quality of the Conflict Discussion. The only communication regarding the Advance Waiver
was the short email below from Mr. Alden to Plaintiff, purporting to summarize the document
(Plaintiff Dec., 6):

Ive attached a waiver Id like you to sign. Because we get many calls from different
people interested in bringing lawsuits, many of which we do not take on, we need to
ensure that our discussions with potential clients do not result in us being conflicted
from acting for others down the road. In essence, this agreement provides that if we
do not end up representing you in this matter, you cannot disqualify us in the
(unlikely) event were hired to act against you in the future. The likelihood of this
ever happening is small, but its a precaution we need to take. If you have any
questions, Id be happy to discuss them tomorrow or I can refer you to another lawyer
who could go over with you. Alden Dec., Exh. A.
Defendants cannot seriously claim that this email amounts to a meaningful conflict discussion.
This purported summary does not even mention that the waiver ostensibly allows Quinn Emanuel to
represent an adverse party against Plaintiff in the very same matter! Instead, it uses the opaque
legalese conflicted from acting for others down the road and act against you in the future. Of
course, Mr. Alden could have made this critical, central aspect of the waiver clear in one sentence but
chose not to do so. Mr. Aldens lack of clarity explains why Plaintiff testified he thought he was
signing an engagement letter (Motion at 5), and not a waiver. Mr. Alden also downplayed the
conflict potential as unlikely and small, and that the document was just a precaution taken by
his firm.
Specificity of the Waiver. Quinn Emanuel did not carry their heavy burden of
demonstrating that all relevant facts relating to the conflict were disclosed and explained to the
client. Civil Serv. Commn, 163 Cal.App.3d at 84. The Advance Waiver is not specific enough in
that it does not disclose all the potential adverse parties. No mention is made whatsoever of the most
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obvious corporate defendants, Snapchat, Inc. or Toyopa Group LLC. Plaintiff Dec., Exh. B. No
effort was made to add Benchmark Capital as a potential adversary in the Advance Waiver (although
the document recognizes another investor, Lightspeed Venture Partners, as a potential adversary), and
there was no disclosure that Benchmark Capitala potential adversarywas a Quinn Emanuel
client. Id. 12. Incredibly, Defendants now blame Plaintiff for not including Benchmark in the
Advance Waiver despite the fact that: (i) this is a Quinn Emanuel document; and (ii) Benchmark is a
Quinn Emanuel client. This factor also favors Plaintiff.
Nature of Actual Conflict. The Visa court explained this factor as follows: whether the
attorney sought to represent both clients in the same dispute or in unrelated disputes. Visa, 241
F.Supp.2d at 1106. There is no question here that the successive representations were for the same
dispute. This factor is clearly in favor of Plaintiff.
Sophistication of Client. Defendants completely misstate this factor, which focuses on the
clients level of experience with legal services. Visa, 241 F.Supp.2d at 1109-10 (validating waiver
where client is a knowledgeable and sophisticated user of legal services [that] has a legal department
of about fifty lawyers). There is no dispute that Plaintiff, a 23-year old recent college graduate, has
never been involved in any litigation matter. Plaintiff Dec., 3.
Defendants argue that Plaintiff majored in English, worked at a state Attorneys General
Office and consulted with numerous lawyers before Alden. Opposition at 13. These arguments are
meritless. This Visa factor does not focus on proficiency in English, but rather sophistication in hiring
law firms. Plaintiff has never been to law school, and started working as an unpaid intern for the
South Carolina Attorneys General Office in March of 2013 long after he consulted with Mr. Alden.
Sarles Dec., Exh. D at 13:2-19. And the numerous lawyers that Plaintiff consulted consisted of one
professor at his alma mater, and two other attorneys (Opposition at 4), and he hired neither of them.
Plaintiff is no sophisticated user of legal services. Defendants grasping at straws only underscores
their lack of credibility in opposing this Motion. This factor also favors Plaintiff.
Interest of Justice. This factor favors Plaintiff. As discussed, side-switching in the same
matter is the most egregious conflict of interest. 20 Cal.4th at 1147. Also, while Defendants who
again, knowingly hired the firm Plaintiff consulted wish the court to consider their interests in ruling
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on disqualification, this Court should not do so. In Visa, the court refused to consider the interests of
the allegedly conflicted counsel and its client because there was no showing that disqualification was
sought after delay to gain a tactical advantage. Visa, 241 F.Supp.2d at 1107 n.6. The same analysis
applies here.
In any event, Defendants will not be prejudiced by Quinn Emanuels disqualification because:
(i) the firm just recently substituted into the matter; and (ii) since the substitution, the case has
essentially been stayed; and (iii) the case is still at an early stage with no trial date scheduled. In
contrast, Plaintiff will be prejudiced if he were forced to litigate against the same law firm with which,
just a few months earlier, he was sharing confidential information and receiving advice on this same
matter.
7

CONCLUSION
For the above reasons, this Court should grant this Motion and disqualify Quinn Emanuel.


DATED: July 25, 2013 LEE TRAN & LIANG APLC



By
K. Luan Tran
James M. Lee
Cyrus Khojandpour
Lisa Chin

RAY A. MANDLEKAR, ATTORNEY AT LAW
Ray A. Mandlekar (SBN 196797)

Attorneys for Plaintiff



7
This Motion is not made for tactical purposes. Quinn Emanuels conflict is real and Plaintiff raised
the conflict issue right away. Motion at 8. SpeeDee Oil, 20 Cal.4th at 1145 n.2 (concerns of tactical
abuse in bringing disqualification motion almost entirely absent where there was no showing that
the conflict was purposely manufactured or that the party unreasonably delayed in bringing the
motion). Also, due to the relationship and friendship between Plaintiffs attorneys at LTL and Quinn
Emanuel, it should be obvious that LTL would not resort to this type of motion for improper or tactical
reasons. If anything, Defendants were the ones that tactically hired Quinn Emanuel right after finding
out that Plaintiff consulted the firm on this case.
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OBJECTIONS TO SARLES DECLARATION ISO OPPOSITION TO PLAINTIFFS MOTION TO DISQUALIFY




LEE TRAN & LIANG APLC
K. Luan Tran (SBN 193808)
James M. Lee (SBN 192301)
Cyrus Khojandpour (SBN 260233)
Lisa J. Chin (SBN 259793)
601 S. Figueroa Street, Suite 3900
Los Angeles, CA 90017
Tel. 213-612-3737 / Fax. 213-612-3773

RAY A. MANDLEKAR, ATTORNEY AT LAW
Ray A. Mandlekar (SBN 196797)
601 S. Figueroa Street, Suite 4050
Los Angeles, CA 90017
Tel. 213-785-6130 / Fax. 213-254-9001

Attorneys for Plaintiff
Frank Reginald Brown, IV



SUPERIOR COURT OF THE STATE OF CALIFORNIA
FOR THE COUNTY OF LOS ANGELES


FRANK REGINALD BROWN, IV,

Plaintiff,

v.

SNAPCHAT, INC., a Delaware corporation;
TOYOPA GROUP, LLC, a California Limited
Liability Company; EVAN THOMAS
SPIEGEL, an individual; ROBERT
CORNELIUS MURPHY, an individual; and
DOES 1 through 25 inclusive,

Defendants.
CASE NO: BC501483



PLAINTIFF FRANK BROWNS
OBJECTIONS TO THE DECLARATION
OF JOSEPH C. SARLES IN SUPPORT OF
OPPOSITION TO PLAINTIFFS MOTION
TO DISQUALIFY

Assigned for all purposes to the Honorable John
L. Segal (Dept. 50)

[Plaintiffs Reply in Further Support of Motion
to Disqualify, Objection to Declaration of
Robert Kehr, Response to Defendants
Objections and Request for Judicial Notice filed
concurrently herewith]

Hearing:
Date: August 1, 2013
Time: 8:30 a.m.
Dept.: 50

Action Filed: February 21, 2013
Trial Date: Not Assigned Yet
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MATERIAL OBJECTED TO: GROUNDS FOR OBJECTION:
COURTS
RULING:
Sarles Decl., 4 & Exhibit A
(May 8, 2012 email from
Brown to Spiegel)
Lacks Foundation (Cal. Evid. Code
403 and 405); Lack of Authentication
(Cal. Evid. Code 1400 and 1401);
Lacks Personal Knowledge (Cal. Evid.
Code 702): Mr. Sarles lacks personal
knowledge and foundation to authenticate
Exhibit A, an email dated May 8, 2012
purportedly from Plaintiff to Defendant
Spiegel. Mr. Sarles was not the sender or
recipient of the email.
Offer to Compromise (Cal. Evid. Code
1152): Moreover, in their Opposition,
Defendants cite Exhibit A in support of the
proposition that Plaintiff admitted that his
role in the project was not equal to that of
[Defendants] Spiegel and Murphy by
improperly quoting a the following offer of
settlement in the email: As I expressed to
Bobby this past summer, I understood both
then and currently that my role in the
process was of a different nature and was
thus willing to accept a significantly less
portion of equity than either of you. This
is improper and cannot be used as evidence.
Relevance (Cal. Evid. Code 210 and
350): Exhibit A is irrelevant and/or
immaterial to the legal and factual issues at
issue in Plaintiffs Motion to Disqualify.
Specifically, the email contains no
statements having any tendency to prove or
disprove any disputed fact of consequence
to the determination of whether (i) an
attorney-client relationship was formed
between Plaintiff and Alden; (ii) any
disqualification should be imputed to the
entire Quinn Emanuel firm; (iii) the conflict
waiver should be enforced; (iv) a second
conflict waiver was required; or
(iv) whether Quinn Emanuels ethical
screening prevents disqualification.
Sustained: _____
Overruled: _____
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MATERIAL OBJECTED TO: GROUNDS FOR OBJECTION:
COURTS
RULING:
Sarles Decl., Exhibit B
(Plaintiffs handwritten
notes)
Relevance (Cal. Evid. Code 210 and
350): Exhibit B is irrelevant and/or
immaterial to the legal and factual issues at
issue in Plaintiffs Motion to Disqualify.
Defendants cite Exhibit B for the
proposition that Plaintiff knew that Future
Freshman LLC was owned by Defendants
Spiegel and Murphy 60/40. Regardless,
neither this fact, even if trueit is
notnor any other statements in Exhibit B
have any tendency to prove or disprove any
disputed fact of consequence to the
determination of whether (i) an
attorney-client relationship was formed
between Plaintiff and Alden; (ii) any
disqualification should be imputed to the
entire Quinn Emanuel firm; (iii) the conflict
waiver should be enforced; (iv) a second
conflict waiver was required; or
(iv) whether Quinn Emanuels ethical
screening prevents disqualification.
Sustained: _____
Overruled: _____
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MATERIAL OBJECTED TO: GROUNDS FOR OBJECTION:
COURTS
RULING:
Sarles Decl., 6 & Exhibit C
(July 13, 2011 email from
Brown to Spiegel)
Lacks Foundation (Cal. Evid. Code
403 and 405); Lack of Authentication
(Cal. Evid. Code 1400 and 1401);
Lacks Personal Knowledge (Cal. Evid.
Code 702): Mr. Sarles lacks personal
knowledge and foundation to authenticate
Exhibit C, an email dated July 13, 2011
purportedly from Plaintiff to Defendant
Spiegel, attaching a press release for
Picaboo. Mr. Sarles was not the sender or
recipient of the email.
Relevance (Cal. Evid. Code 210 and
350): Exhibit C is irrelevant and/or
immaterial to the legal and factual issues at
issue in Plaintiffs Motion to Disqualify.
Defendants cite Exhibit C for the
proposition that Plaintiff knew that Toyopa
owned the rights to the disappearing
messages application. Regardless, neither
this fact, even if trueit is notnor any
other statements in Exhibit C have any
tendency to prove or disprove any disputed
fact of consequence to the determination of
whether (i) an attorney-client relationship
was formed between Plaintiff and Alden;
(ii) any disqualification should be imputed
to the entire Quinn Emanuel firm; (iii) the
conflict waiver should be enforced; (iv) a
second conflict waiver was required; or
(iv) whether Quinn Emanuels ethical
screening prevents disqualification.
Sustained: _____
Overruled: _____
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MATERIAL OBJECTED TO: GROUNDS FOR OBJECTION:
COURTS
RULING:
Sarles Decl., Exhibit D (April
4, 2013 Deposition of
Plaintiff Brown) at
54:9-56:18.


Relevance (Cal. Evid. Code 210 and
350): Exhibit D at 54:9-56:18 is irrelevant
and/or immaterial to the legal and factual
issues at issue in Plaintiffs Motion to
Disqualify. Defendants cite this excerpt for
the proposition that Plaintiff knew that
Toyopa was owned solely by Spiegel and
Murphy. Regardless, this fact, even if
trueit is notdoes not have any tendency
to prove or disprove any disputed fact of
consequence to the determination of
whether (i) an attorney-client relationship
was formed between Plaintiff and Alden;
(ii) any disqualification should be imputed
to the entire Quinn Emanuel firm; (iii) the
conflict waiver should be enforced; (iv) a
second conflict waiver was required; or
(iv) whether Quinn Emanuels ethical
screening prevents disqualification.
Sustained: _____
Overruled: _____
Sarles Decl., Exhibit D (April
4, 2013 Deposition of
Plaintiff Brown) at
231:16-232:9
Relevance (Cal. Evid. Code 210 and
350): Exhibit D at 231:16-232:9is
irrelevant and/or immaterial to the legal and
factual issues at issue in Plaintiffs Motion
to Disqualify. Defendants cite this excerpt
for the proposition that Plaintiff knew that
Toyopa owned the rights to the
disappearing messages application.
Regardless, this fact, even if trueit is
notdoes not have any tendency to prove
or disprove any disputed fact of
consequence to the determination of
whether (i) an attorney-client relationship
was formed between Plaintiff and Alden;
(ii) any disqualification should be imputed
to the entire Quinn Emanuel firm; (iii) the
conflict waiver should be enforced; (iv) a
second conflict waiver was required; or
(iv) whether Quinn Emanuels ethical
screening prevents disqualification.
Sustained: _____
Overruled: _____
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MATERIAL OBJECTED TO: GROUNDS FOR OBJECTION:
COURTS
RULING:
Sarles Decl., Exhibit D (April
4, 2013 Deposition of
Plaintiff Brown) at
411:16-412:5
Relevance (Cal. Evid. Code 210 and
350): Exhibit D at 411:16-412:5 is
irrelevant and/or immaterial to the legal and
factual issues at issue in Plaintiffs Motion
to Disqualify. Defendants cite this excerpt
for the proposition that Plaintiff knew that
Future Freshman LLC was owned solely by
Spiegel and Murphy, and not him.
Regardless, this fact, even if trueit is
notdoes not have any tendency to prove
or disprove any disputed fact of
consequence to the determination of
whether (i) an attorney-client relationship
was formed between Plaintiff and Alden;
(ii) any disqualification should be imputed
to the entire Quinn Emanuel firm; (iii) the
conflict waiver should be enforced; (iv) a
second conflict waiver was required; or
(iv) whether Quinn Emanuels ethical
screening prevents disqualification.
Sustained: _____
Overruled: _____
Sarles Decl., Exhibit E (July
21, 2011 letter from USPTO
to Toyopa Group)
Relevance (Cal. Evid. Code 210 and
350): Exhibit E is irrelevant and/or
immaterial to the legal and factual issues at
issue in Plaintiffs Motion to Disqualify.
Defendants cite Exhibit E for the
proposition that Plaintiff created a customer
account for Toyopa with the PTO and told
Spiegel and Murphy that he would use this
account for the patent application. This fact
does not have any tendency to prove or
disprove any disputed fact of consequence
to the determination of whether (i) an
attorney-client relationship was formed
between Plaintiff and Alden; (ii) any
disqualification should be imputed to the
entire Quinn Emanuel firm; (iii) the conflict
waiver should be enforced; (iv) a second
conflict waiver was required; or
(iv) whether Quinn Emanuels ethical
screening prevents disqualification.
Sustained: _____
Overruled: _____
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MATERIAL OBJECTED TO: GROUNDS FOR OBJECTION:
COURTS
RULING:
Sarles Decl., Exhibit F
(August 11, 2011 Provisional
Patent Application)
Relevance (Cal. Evid. Code 210 and
350): Exhibit F is irrelevant and/or
immaterial to the legal and factual issues at
issue in Plaintiffs Motion to Disqualify.
Defendants cite Exhibit F for the
proposition that Plaintiff secretly filed the
patent application in an attempt to steal
Defendants ownership rights. Regardless,
neither this fact, even if trueit is
notnor any other statement in Exhibit F
has the tendency to prove or disprove any
disputed fact of consequence to the
determination of whether (i) an
attorney-client relationship was formed
between Plaintiff and Alden; (ii) any
disqualification should be imputed to the
entire Quinn Emanuel firm; (iii) the conflict
waiver should be enforced; (iv) a second
conflict waiver was required; or
(iv) whether Quinn Emanuels ethical
screening prevents disqualification.
Sustained: _____
Overruled: _____
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OBJECTIONS TO SARLES DECLARATION ISO OPPOSITION TO PLAINTIFFS MOTION TO DISQUALIFY




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MATERIAL OBJECTED TO: GROUNDS FOR OBJECTION:
COURTS
RULING:
Sarles Decl., 10 & Exhibit
G (August 22, 2011 email
from Brown to Spiegel)
Lacks Foundation (Cal. Evid. Code
403 and 405); Lack of Authentication
(Cal. Evid. Code 1400 and 1401);
Lacks Personal Knowledge (Cal. Evid.
Code 702): Mr. Sarles lacks personal
knowledge and foundation to authenticate
Exhibit G, an email dated August 22, 2011
purportedly from Plaintiff to Defendant
Spiegel. Mr. Sarles was not the sender or
recipient of the email.
Relevance (Cal. Evid. Code 210 and
350): Exhibit G is irrelevant and/or
immaterial to the legal and factual issues at
issue in Plaintiffs Motion to Disqualify.
Defendants cite Exhibit G for the
proposition that Brown told Spiegel and
Murphy he had filed the patent application,
but refused to provide a copy of it.
Regardless, neither this fact, even if
trueit is notnor any other statements in
Exhibit G have any tendency to prove or
disprove any disputed fact of consequence
to the determination of whether (i) an
attorney-client relationship was formed
between Plaintiff and Alden; (ii) any
disqualification should be imputed to the
entire Quinn Emanuel firm; (iii) the conflict
waiver should be enforced; (iv) a second
conflict waiver was required; or
(iv) whether Quinn Emanuels ethical
screening prevents disqualification.
Sustained: _____
Overruled: _____
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MATERIAL OBJECTED TO: GROUNDS FOR OBJECTION:
COURTS
RULING:
Sarles Decl., Exhibit H (April
9, 2013 Deposition of Robert
Murphy)
Hearsay (Cal. Evid. Code 1200):
Exhibit H at 120:19-122:4 contains
testimony about a conversation between
Plaintiff Brown and Defendants Murphy,
Spiegel regarding their respective interests
in the company. These are out of court
statements offered for the truth of the matter
stated, and are therefore inadmissible
hearsay.

Relevance (Cal. Evid. Code 210 and
350): Exhibit H is irrelevant and/or
immaterial to the legal and factual issues at
issue in Plaintiffs Motion to Disqualify.
Defendants cite Exhibit H for the
proposition that Brown demanded equity in
only after Spiegel raised questions about the
patent application. Regardless, neither this
fact, even if trueit is notnor any other
statements in Exhibit G have any tendency
to prove or disprove any disputed fact of
consequence to the determination of
whether (i) an attorney-client relationship
was formed between Plaintiff and Alden;
(ii) any disqualification should be imputed
to the entire Quinn Emanuel firm; (iii) the
conflict waiver should be enforced; (iv) a
second conflict waiver was required; or
(iv) whether Quinn Emanuels ethical
screening prevents disqualification.
Sustained: _____
Overruled: _____

DATED: July 25, 2013 LEE TRAN & LIANG APLC


By
K. Luan Tran
James M. Lee
Cyrus Khojandpour
Lisa Chin

RAY A. MANDLEKAR, ATTORNEY AT LAW
Ray A. Mandlekar (SBN 196797)

Attorneys for Plaintiff

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OBJECTIONS TO KEHR DECLARATION ISO OPPOSITION TO PLAINTIFFS MOTION TO DISQUALIFY




LEE TRAN & LIANG APLC
K. Luan Tran (SBN 193808)
James M. Lee (SBN 192301)
Cyrus Khojandpour (SBN 260233)
Lisa J. Chin (SBN 259793)
601 S. Figueroa Street, Suite 3900
Los Angeles, CA 90017
Tel. 213-612-3737 / Fax. 213-612-3773

RAY A. MANDLEKAR, ATTORNEY AT LAW
Ray A. Mandlekar (SBN 196797)
601 S. Figueroa Street, Suite 4050
Los Angeles, CA 90017
Tel. 213-785-6130 / Fax. 213-254-9001

Attorneys for Plaintiff
Frank Reginald Brown, IV



SUPERIOR COURT OF THE STATE OF CALIFORNIA
FOR THE COUNTY OF LOS ANGELES


FRANK REGINALD BROWN, IV,

Plaintiff,

v.

SNAPCHAT, INC., a Delaware corporation;
TOYOPA GROUP, LLC, a California Limited
Liability Company; EVAN THOMAS
SPIEGEL, an individual; ROBERT
CORNELIUS MURPHY, an individual; and
DOES 1 through 25 inclusive,

Defendants.
CASE NO: BC501483



PLAINTIFF FRANK BROWNS
OBJECTIONS TO THE DECLARATION
OF ROBERT L. KEHR IN SUPPORT OF
OPPOSITION TO PLAINTIFFS MOTION
TO DISQUALIFY

Assigned for all purposes to the Honorable John
L. Segal (Dept. 50)

[Plaintiffs Reply in Further Support of Motion
to Disqualify, Objections to Declaration of
Joseph C. Sarles, Response to Defendants
Objections and Request for Judicial Notice filed
concurrently herewith]

Hearing:
Date: August 1, 2013
Time: 8:30 a.m.
Dept.: 50

Action Filed: February 21, 2013
Trial Date: Not Assigned Yet
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OBJECTIONS TO KEHR DECLARATION ISO OPPOSITION TO PLAINTIFFS MOTION TO DISQUALIFY




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Plaintiff Frank Reginald Brown, IVs (Plaintiff) objects to the Declaration of Robert L.
Kehr in Support of Defendants Opposition to Motion to Disqualify (Kehr Declaration or Kehr
Decl.). Plaintiff hereby requests that the Court disregard, exclude, or strike the Kehr Declaration
on the basis that it consists entirely of improper legal conclusions in direct contravention of
longstanding rules prohibiting expert opinions on questions of law.
The Kehr Declaration amounts to nothing more than legal argument, mirroring nearly
verbatim Defendants Opposition to Plaintiffs Motion to Disqualify.
1

Through the Declaration,
Defendants attempt to usurp this Courts proper role as the ultimate authority on the law in this
case, implying that Mr. Kehr is better capable of determining that law than this Court. Defendants
counsel Quinn Emanuel knows that such a declaration is inadmissible, as Quinn Emanuel itself
objected to and moved to strike a similar declaration from Mr. Kehr submitted in opposition to a
motion to disqualify in another matter on the very same basisthat Mr. Kehrs declaration offered
nothing more than improper legal conclusions.
Not only does Mr. Kehr improperly undertake to instruct the Court on the law, he tells
the Court what he thinks the outcome of the motion should be despite authority categorically
announcing that lawyer experts are not permitted to give such opinions. As such, the Kehr
Declaration should be excluded from consideration and stricken in its entirety.
2

I. APPLICABLE LAW
As a general rule, the opinion of an expert is admissible when it is [r]elated to a subject
that is sufficiently beyond common experience that the opinion of an expert would assist the trier
of fact . . . . Cal. Evid. Code 801. Additionally, in California, [t]estimony in the form of an
opinion that is otherwise admissible is not objectionable because it embraces the ultimate issue to


1
The 13 pages of the Kehr Declaration so much resembles a legal brief, that Plaintiff also objects
on the basis that Defendants Opposition brief now exceeds the 15-page limit. See Cal. R. Ct.
3.1113

2
The only conceivable portion of the Kehr Declaration that may pass muster as a non-legal
opinion is Mr. Kehrs opinion, based on his personal experience, as to the types of advance conflict
waivers many large law firms now attempt to obtain from new clients. Kehr Decl. 10:20-24.
Even that portion of the declaration is objectionable on the basis of relevance. See Cal. Evid.
Code 350.
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OBJECTIONS TO KEHR DECLARATION ISO OPPOSITION TO PLAINTIFFS MOTION TO DISQUALIFY




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be decided by the trier of fact. Cal. Evid. Code 805. However, the admissibility of opinion
evidence that embraces an ultimate issue in a case does not bestow upon an expert carte blanche to
express any opinion he or she wishes. Summers v. A.L. Gilbert Co., 69 Cal. App. 4th 1155, 1178
(1999). One notable limitation to expert testimony is the longstanding prohibition on expert
opinion on a question of law. Id. (citing Ferreira v. Workmens Comp. Appeals Bd., 38
Cal.App.3d 120 (1974)).
Because the law is the province of the courts, experts are not permitted to testify to legal
opinions or conclusions. See Sheldon Appel Co. v. Albert & Oliker, 47 Cal. 3d 863, 884 (1989) (It
is thoroughly established that experts may not give opinions on matters which are essentially
within the province of the court to decide.); WRI Opportunity Loans II, LLC v. Cooper, 154 Cal.
App. 4th 525, 532 n.3 (2007) (same). That is, while Evidence Code section 805 permits expert
testimony on the ultimate issue to be decided by the fact finder . . . this rule does not authorize an
expert to testify to legal conclusions in the guide of expert opinion. Id. (quoting Downer v.
Bramet, 152 Cal. App. 3d 837, 841 (1984)).
Therefore, courts have particularly disfavored testimony of lawyers as experts, except in
limited cases. As explained in Downer:

While in many cases expert opinions that are genuinely needed may
happen to embrace the ultimate issue of fact (e.g. a medical opinion
whether a physician's actions constitute professional negligence),
the calling of lawyers as expert witnesses to give opinions as to
the application of the law to particular facts usurps the duty of the
trial court . . . and results in no more than a modern day trial by
oath in which the side producing the greater number of lawyers
able to opine in their favor wins.

152 Cal. App. 3d 837, 842 (1984); see also Summers, 69 Cal. App. 4th 1155, 1179-81 (1999). The
Summers court noted that serious questions concerning the proper role of expert testimony are
raised especially when the purported expert is a lawyer. 69 Cal. App. 4th at 1178 (emphasis
added). The court further explained that [t]he manner in which the law should apply to the
particular facts is a legal question and is not subject to expert opinion. Id. 1178-79 (citing
Ferreira v. Workmen's Comp. Appeals Bd. 38 Cal. App. 3d 120, 125-26 (1974).) Similarly, the
court in Adams v. City of Fremont, 68 Cal. App. 4th 243 (1998), concluded that [o]pinion
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testimony is inadmissible and irrelevant to adjudging questions of law. Id. at 266. Finally, in the
case of Sullivan v. Fox, 189 Cal. App. 3d 673 (1987), the court made it clear that interpretation of
a statute offered by an attorney as expert opinion in his declaration is inadmissible as involving a
question of law and must, for that reason, be disregarded. Id. at 682.
II. THE KEHR DECLARATION, IN ITS ENTIRETY, CONSISTS OF
INADMISSIBLE LEGAL OPINION.
California Evidence Code sections 801 and 805 permit expert opinion solely upon issues of
fact, not upon issues of law. In his Declaration, Mr. Kehr sets forth his legal opinions concerning:
(1) whether Plaintiff has a fundamental misunderstanding of the Rule of Professional Conduct
of the State Bar of California (Kehr Decl. 2:1-2), (2) whether Plaintiffs analysis of the law of
side-switching is correct (Kehr Decl. 2:8-26), (3) whether Plaintiff and Defendants counsel
Quinn Emanuel formed an attorney-client relationship (Kehr Decl. 3:3-5:2), (4) California law on
the propriety of ethical screens (Kehr Decl 5:3-7:12), (5) California requirements regarding
obtaining a second consent form and the applicability of CRPC 3-310(c)(2) (Kehr Decl.
7:13-8:17), (6) the multi-factor test that determines whether an advance waiver is enforceable in
California (Kehr Decl. 8:18 -11:21), and (7) the legal ramifications of the extent of the interaction
and transfer of information between a prospective client and an attorney (Kehr Decl. 11:22-12:14).
In support of its many legal propositions Mr. Kehrs Declaration offers extensive citation
to legal authorities and argument interpreting these authorities. See, e.g., Kehr Decl., 9:4-18
(interpreting the Zador decision). Even a cursory review of Mr. Kehrs Declaration reveals its true
purposeMr. Kehrs Declaration is not a declaration at all, but rather a memorandum of points
and authorities.
The Kehr Declaration is replete with legal argument. As just one example:

The existence of a lawyer-client relationship is not determined
under the Evidence Code. Rather, one exists when a person actually
relies on a lawyer for legal advice or representation and that actual
reliance is objectively reasonable under the circumstances. See,
e.g., Restatement Third, The Law Governing Lawyers 14(1)(b).
(Kehr Decl. 4:7-10.). Other times, Mr. Kehr opts to simply proffer propositions of law without
citation or authority. See e.g., Kehr Decl. 2:20-22 (A lawyer switches sides only when the lawyer
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represents a party to a lawsuit and, upon the termination of that representation, undertakes to
represent an adversary in the same matter.). Clearly, what Mr. Kehr has offered to this Court is an
opinion on the law and, in particular, the meaning, interpretation and application of the Rules of
Professional Conduct and the decisional law of California.
As the Summers court noted, California is not alone in excluding expert opinions on issues
of law. . . . At least eight circuit courts have held expert testimony on issues of law is not
admissible. 69 Cal. App. 4th at 1181 (noting that experience is hardly a qualification for
construing a document for its legal effect when there is a knowledge gentleman in a robe. . . .
[citations omitted] Each courtroom comes equipped with a legal expert, called a judge.
[citations omitted]).
What is troubling about this case is that in April of 2010, Quinn Emanuel moved to
disqualify opposing plaintiffs counsel on the basis of, among other things, a conflict of interest the
matter of OShea, et al. v. Epson America, Inc. et al., Case No. 09-0863 PSG (CWx), Central
District of California. In opposition to the motion to disqualify, plaintiffs counsel submitted the
declaration of one Robert L. Kehr. See Plaintiffs Request for Judicial Notice , Ex. A.
Quinn Emanuel responded by objecting on the same exact bases presented in this
objectionthat Mr. Kehr rendered inadmissible legal opinions. Id. Quinn Emanuels objection
noted that:

Mr. Kehr has been reprimanded by courts in the past for these exact
types of impermissible opinions. A Westlaw search for opinions in
which his testimony has been offered shows that the only two
opinions addressing Mr. Kehr's expert opinion excluded it as
offering improper legal conclusions.1 Del Webb Communities, Inc.
v. Partington, 2007 WL 3053709 at *5-6 (D. Nev. Sept. 18, 2009)
(holding Mr. Kehr's opinion inadmissible under Federal Rule of
Evidence 702); People v. Reiner, 2004 WL 1171507 at *1 *11 (Cal.
App. 2d Dist. May 26, 2004) (affirming the exclusion of Mr. Kehr's
opinion that an attorney who was convicted of attempted extortion
and conspiracy to commit extortion acted in accordance with the
law and was not guilty of any crime" as offering an an improper
opinion on an issue of law). The Court should do so here as well.

Id. at 3:2-12. The Court should not entertain the Kehr Declaration here either for the same reasons.
III. CONCLUSION
Based on the foregoing objections, Plaintiff respectfully submits that the Court should
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OBJECTIONS TO KEHR DECLARATION ISO OPPOSITION TO PLAINTIFFS MOTION TO DISQUALIFY




- 5 -
strike paragraphs 1 through 5 of the Kehr Declaration.

DATED: July 25, 2013 LEE TRAN & LIANG APLC



By
K. Luan Tran
James M. Lee
Cyrus Khojandpour
Lisa Chin

RAY A. MANDLEKAR, ATTORNEY AT LAW
Ray A. Mandlekar (SBN 196797)

Attorneys for Plaintiff

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REQUEST FOR JUDICIAL NOTICE IN SUPPORT OF PLAINTIFFS MOTION TO DISQUALIFY




LEE TRAN & LIANG APLC
K. Luan Tran (SBN 193808)
James M. Lee (SBN 192301)
Cyrus Khojandpour (SBN 260233)
Lisa J. Chin (SBN 259793)
601 S. Figueroa Street, Suite 3900
Los Angeles, CA 90017
Tel. 213-612-3737 / Fax. 213-612-3773

RAY A. MANDLEKAR, ATTORNEY AT LAW
Ray A. Mandlekar (SBN 196797)
601 S. Figueroa Street, Suite 4050
Los Angeles, CA 90017
Tel. 213-785-6130 / Fax. 213-254-9001

Attorneys for Plaintiff
Frank Reginald Brown, IV



SUPERIOR COURT OF THE STATE OF CALIFORNIA
FOR THE COUNTY OF LOS ANGELES


FRANK REGINALD BROWN, IV,

Plaintiff,

v.

SNAPCHAT, INC., a Delaware corporation;
TOYOPA GROUP, LLC, a California Limited
Liability Company; EVAN THOMAS
SPIEGEL, an individual; ROBERT
CORNELIUS MURPHY, an individual; and
DOES 1 through 25 inclusive,

Defendants.
CASE NO: BC501483



PLAINTIFF FRANK BROWNS REQUEST
FOR JUDICIAL NOTICE IN SUPPORT OF
PLAINTIFFS MOTION TO DISQUALIFY

Assigned for all purposes to the Honorable John
L. Segal (Dept. 50)

[Plaintiffs Reply in Further Support of Motion
to Disqualify, Objections to Declarations of
Joseph C. Sarles and Robert Kehr, and
Response to Defendants Objections filed
concurrently herewith]

Hearing:
Date: August 1, 2013
Time: 8:30 a.m.
Dept.: 50

Action Filed: February 21, 2013
Trial Date: Not Assigned Yet
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REQUEST FOR JUDICIAL NOTICE IN SUPPORT OF PLAINTIFFS MOTION TO DISQUALIFY




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Plaintiff Frank Reginald Brown, IVs (Plaintiff) submits this Request for Judicial Notice
in support of his concurrently filed reply to Defendants Opposition to Motion to Disqualify the
Quinn Emanuel firm.
The Court may take judicial notice of the content of [r]ecords of (1) any court of this state
or (2) any court of record of the United States or of any state of the United States. Cal. Evid. Code
452(d), 453. California courts routinely take judicial notice of court proceedings. See, e.g.
People v. Lawley, 27 Cal. 4th 102, 116 n.2 & 163 n.24 (2002) (taking judicial notice of court files
and transcripts from another criminal case); People v. Moreno, 108 Cal. App. 4th 1, 4 n.4 (2003)
(taking judicial notice of record in prior appeal); PG&E Corp. v. Pub. Util. Commn, 118 Cal.
App. 4th 1174, 1220 n.38 (2004) (judicially noticing complaints filed against defendant in other
proceedings under Evidence Code 452(d)); Oriola v. Thaler, 84 Cal. App. 4th 397, 403 & n.3
(2000) (judicially noticing transcript related to injunction proceeding).
Defendants therefore request that the Court take judicial notice of the following
documents:
1. Exhibit A is a true and correct copy of Objections to the Declaration of Robert L. Kehr
filed by Quinn Emanuel on May 3, 2010 in OShea, et al. v. Epson America, Inc. et al.,
Case No. CV 09-8063 (CWx), in the United States District Court, Central District of
California [Doc. 128].
2. Exhibit B is a true and correct copy of a Motion to Disqualify Glaser Weil filed by
Quinn Emanuel on December 10, 2010 in Mattel, Inc. v. MGA Entertainment, Case No.
CV04-9049 (RNBx), in the United States District Court, Central District of California
[Doc. 9359].
3. Exhibit C is a true and correct copy a Reply in Support of Motion to Disqualify Glaser
Weil, filed by Quinn Emanuel on December 19, 2010 in Mattel, Inc. v. MGA
Entertainment, Case No. CV04-9049 (RNBx), in the United States District Court,
Central District of California [Doc.9416].
4. Exhibit D is a true and correct copy of Judge David O. Carters December 20, 2010
minute order granting Mattels Motion to Disqualify Glaser Weil in Mattel, Inc. v.
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REQUEST FOR JUDICIAL NOTICE IN SUPPORT OF PLAINTIFFS MOTION TO DISQUALIFY




- 2 -
MGA Entertainment, Case No. CV04-9049 (RNBx), in the United States District
Court, Central District of California [Doc. 9531].
5. Exhibit E is a true and correct copy of a Motion to Disqualify McKool Smith filed by
Quinn Emanuel on September 7, 2011in Packetvideo Corporation v. Spotify USA Inc.,
et al., Case No. 3:11-cv-1659 IEG WMc, in the United States District Court, Southern
District of California [Doc. 16].
6. Exhibit F is a true and correct copy of Judge Irma E. Gonzalezs September 28, 2011
order granting the McKool Smith firms Motion to Withdraw in Packetvideo
Corporation v. Spotify USA Inc., et al., Case No. 3:11-cv-1659 IEG WMc, in the
United States District Court, Southern District of California [Doc. 32].

DATED: July 25, 2013 LEE TRAN & LIANG APLC



By
K. Luan Tran
James M. Lee
Cyrus Khojandpour
Lisa Chin

RAY A. MANDLEKAR, ATTORNEY AT LAW
Ray A. Mandlekar (SBN 196797)

Attorneys for Plaintiff


































EXHIBIT A


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Case No. CV 09-8063 PSG (CWx)
DEFENDANTS' OBJECTIONS TO THE DECLARATION OF ROBERT L. KEHR
QUINN EMANUEL URQUHART & SULLIVAN, LLP
Shon Morgan (Bar No. 187736)
shonmorgan@quinnemanuel.com
Ryan S. Goldstein (Bar No. 208444)
ryangoldstein@quinnemanuel.com
Valerie Roddy (Bar No. 235163)
valerieroddy@quinnemanuel.com
865 South Figueroa Street, 10th Floor
Los Angeles, California 90017-2543
Telephone: (213) 443-3000
Facsimile: (213) 443-3100

Attorneys for Defendants Epson America,
Inc., and Epson Accessories, Inc.


UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

CHRISTOPHER O'SHEA, GISELE
ROGERS and JEFF ADAMS,
individuals, on behalf of themselves and
all others similarly situated,

Plaintiffs,

vs.

EPSON AMERICA, INC., a California
corporation; EPSON ACCESSORIES,
INC., a California corporation; and
DOES 1-100, inclusive,

Defendants.

CASE NO. CV 09-8063 PSG (CWx)

DEFENDANTS EPSON AMERICA,
INC.'S AND EPSON ACCESSORIES,
INC.'S OBJECTIONS TO THE
DECLARATION OF ROBERT L.
KEHR IN SUPPORT OF YUHL
STONER CARR LLP'S OPPOSITION
TO DEFENDANTS' MOTION TO
DISQUALIFY PLAINTIFFS'
COUNSEL

Hon. Philip S. Gutierrez


Date: May 17, 2010
Time: 1:30 p.m.
Crtrm.: Roybal, 880
Filing Date: August 28, 2009

Case 2:09-cv-08063-PSG-CW Document 128 Filed 05/03/10 Page 1 of 5 Page ID #:4184
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-1-
Case No. CV 09-8063 PSG (CWx)
DEFENDANTS' OBJECTIONS TO THE DECLARATION OF ROBERT L. KEHR
Defendants Epson America, Inc. and Epson Accessories, Inc. ("Epson")
object to the Declaration of Robert L. Kehr in Support of Yuhl Stoner Carr LLP's
Opposition to Defendants' Motion to Disqualify Plaintiffs' Counsel ("Kehr
Declaration"). Epson hereby requests that the Court strike the portions of the Kehr
Declaration to which Epson objects.

I. THE KEHR DECLARATION OFFERS IMPROPER LEGAL
CONCLUSIONS
The Kehr Declaration improperly offers legal conclusions in paragraphs 3 and
4. Questions of law are for the Court's determination and are "inappropriate subjects
for expert testimony." Aguilar v. Int'l Longshoremen's Union Local No. 10, 966
F.2d 443, 447 (9th Cir. 1992) (affirming the exclusion of an expert who offered an
opinion about the reasonable and foreseeable reliance individuals would ascribe to
certain instructions); see Nationwide Transport Finance v. Cass Information
Systems, Inc., 523 F.3d 1051, 1058 (9th Cir. 2008) ("'[A]n expert witness cannot
give an opinion as to her legal conclusion, i.e., an opinion on an ultimate issue of
law.'" (quoting Hangarter v. Provident Life & Accident Ins. Co., 373 F.3d 998, 1016
(9th Cir. 2004))). Here, the Kehr Declaration limits itself to legal conclusions,
offering nothing in the way of analysis.
First, Mr. Kehr concludes that there is no conflict of interest between
plaintiffs' counsel's duties as Fabrice Commelin's agents and as counsel for the class.
(Kehr Decl. 3.a, at 3:21-22, 4:2-8, :18-19). Mr. Kehr is not offering an opinion
and analysis of specific conduct.
Second, there is no basis even for that legal conclusion insofar as the opinion
is predicated entirely on facts that do not exist here. Mr. Kehr's opinion is explicitly
based on an assumption that, if plaintiffs "were ordered" to act a certain way, that
order could trump the ethical violation currently being committed. (Kehr Decl.
3.a, at 4:2-8). Even if it may be true that a court can save a party from its ethical
Case 2:09-cv-08063-PSG-CW Document 128 Filed 05/03/10 Page 2 of 5 Page ID #:4185
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-2-
Case No. CV 09-8063 PSG (CWx)
DEFENDANTS' OBJECTIONS TO THE DECLARATION OF ROBERT L. KEHR
conflict with some type of order prohibiting certain conduct, there is no analysis of
what such an order would look like here and, in any case, there is no such order here
that would be of any avail to plaintiffs.
Third, Mr. Kehr concludes that solicitation of class members is legally proper.
(Kehr Decl. 3.b, at 4:24-25). Mr. Kehr does not offer any analysis of the specific
conduct of Yuhl Stoner in soliciting class members here, instead offering only a
summary of the general law on soliciting prospective class members. This
testimony is irrelevant to any issue raised by Epson's motion to disqualify. Epson
does not argue that the solicitation of prospective class representatives is generally
prohibited. Rather, Epson argued that Mr. Stoner acted unethically by using
confidential and privileged information provided to him by his client in one action
to solicit class plaintiffs for another prospective case, as confirmed by his use of an
internal Epson code name in his solicitation email.
Fourth, with respect to plaintiffs' counsel's email offering to sell out the
putative class for a good individual settlement for Mr. Commelin, Mr. Kehr only
offers his creative spin on the July 29, 2009 email. (Kehr Decl. 3.c, at 5:4-28).
The email speaks for itself. Mr. Kehr's interpretation of what the email "says" is not
a proper expert opinion. Rather, courts reject attempts to provide an opinion on how
a document would be reasonably understood by a reader. See Aguilar, 966 F.3d at
447 (opinion on how a worker would understand the letter rejected: "Here, the
reasonableness and foreseeability of the casual workers' reliance were matters of law
for the court's determination. As such, they were inappropriate subjects for expert
testimony.").
Fifth, Mr. Kehr's conclusion in Paragraph 4 that the facts, as assumed in his
declaration, "do not provide a basis for [Yuhl Stoner's] disqualification" is
impermissible. (Kehr Decl. 4, at 6:6). The disqualification of plaintiffs' counsel is
the ultimate legal issue for the Court and Mr. Kehr's opinion is improperly offering
an opinion on the "ultimate issue of law." Nationwide Transport Finance, 523 F.3d
Case 2:09-cv-08063-PSG-CW Document 128 Filed 05/03/10 Page 3 of 5 Page ID #:4186
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-3-
Case No. CV 09-8063 PSG (CWx)
DEFENDANTS' OBJECTIONS TO THE DECLARATION OF ROBERT L. KEHR
at 1058.
Mr. Kehr has been reprimanded by courts in the past for these exact types of
impermissible opinions. A Westlaw search for opinions in which his testimony has
been offered shows that the only two opinions addressing Mr. Kehr's expert opinion
excluded it as offering improper legal conclusions.
1
Del Webb Communities, Inc. v.
Partington, 2007 WL 3053709 at *5-6 (D. Nev. Sept. 18, 2009) (holding Mr. Kehr's
opinion inadmissible under Federal Rule of Evidence 702); People v. Reiner, 2004
WL 1171507 at *1 *11 (Cal. App. 2d Dist. May 26, 2004) (affirming the exclusion
of Mr. Kehr's opinion that an attorney who was convicted of attempted extortion and
conspiracy to commit extortion "acted in accordance with the law and was not guilty
of any crime" as offering an "an improper opinion on an issue of law"). The Court
should do so here as well.

II. THE KEHR DECLARATION IS CONCLUSORY AND PROVIDES
INSUFFICIENT ANALYSIS
The conclusory analysis in Mr. Kehr's declaration prevents the Court from
analyzing the declaration based on Mr. Kehr's reasoning, therefore, paragraphs 3
and 4 of the Kehr Declaration should be stricken. The lack of analysis precludes the
Court from determining "if . . . the witness has applied the principles and methods
reliably to the facts of the case." Fed. R. Evid. 702. The Kehr Declaration lacks any
explanation of how Mr. Kehr concluded that certain conduct satisfies Yuhl Stoner's
ethical obligations.


1
This is based on a May 3, 2010 search run in the Westlaw "All Federal &
State Cases (ALLCASES)" database using the search terms: Robert /5 Kehr /250
expert.
Case 2:09-cv-08063-PSG-CW Document 128 Filed 05/03/10 Page 4 of 5 Page ID #:4187
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Case No. CV 09-8063 PSG (CWx)
DEFENDANTS' OBJECTIONS TO THE DECLARATION OF ROBERT L. KEHR
Conclusion
Based on these objections, Epson respectfully submits that the Court should
strike paragraphs 3 and 4 of the Kehr Declaration.

DATED: May 3, 2010 QUINN EMANUEL URQUHART &
SULLIVAN, LLP



By /s/ Shon Morgan
Shon Morgan
Attorneys for Defendants Epson America,
Inc. and Epson Accessories, Inc.

Case 2:09-cv-08063-PSG-CW Document 128 Filed 05/03/10 Page 5 of 5 Page ID #:4188












EXHIBIT B


Case 2:04-cv-09049-DOC -RNB Document 9359 Filed 12/10/10 Page 1 of 25 Page ID
#:282293
1 QUINN EMANUEL URQUHART & SULLIVAN, LLP
John B. Quinn (Bar No. 090378)
2 john'luinn@quinnemanuel.com
William C:1'rice (Bar No. 108542)
3 williamrrice@'1uinnemanuel.com)
Michae T. Zeller (Bar No. 196417)
4 michae1zeller@quinnemanuel.com
865 South Figueroa Street, 10th Floor
5 Los Angeles, California 90017-2543
Telephone: (213l443-3000
6 Facsimile: (213 443-3100
7 Attorneys for MatteI, Inc. and
MatteI de Mexico, S.A. de C. V.
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
SOUTHERN DIVISION
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Defendant.
21 AND CONSOLIDATED ACTIONS
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CASE NO. CV 04-9049 DOC (RNBx)
Consolidated with
Case Nos. CV 04-09059 & CV 05-
02727
Hon. David O. Carter
MA'ITEL'S MOTION TO
DISQUALIFY GLASER WElL
Hearing Date:
Time:
Place:
TBD
TBD
Courtroom 9D
Discovery Cutoff:
Pre-trial Conference:
October 4, 2010
January 4, 2011
January 11 , 2011 Trial:
MA TTEL'S MOTION TO DlSOUALlFY GLASER WElL
Case 2:04-cv-09049-DOC -RNB Document 9359 Filed 12/10/10 Page 2 of 25 Page ID
#:282294
I TO ALL PARTIES AND THEIR COUNSEL OF RECORD:
2 PLEASE TAKE NOTICE that, on a date and at a time to be determined by
3 the Court, before the Honorable David O. Carter, plaintiffs Mattei, Inc. and Mattei
4 de Mexico, S.A. de C.V. (collectively, "Mattei") will, and hereby do, move the
5 Court for an order disqualifYing Glaser, Weil , Fink, Jacobs, Howard & Shapiro,
6 LLP ("Glaser Wei I") from representing MGA Entertainment, Inc., MGAE de
7 Mexico, S.R.L. de C.V., MGA Entertainment (HK), Ltd., and Isaac Larian
8 (collectively, "MGA") in this action.
9 This Motion is made pursuant to Cal. R. Prof. Condo 3-31O(E) and L.R. 83-
10 3.1. 2 on the grounds that Glaser Wei! attorney Jill Basinger did prior work for
11 Mattei in this and another substantially related matter and has an indisputable
12 conflict of interest that must be imputed to the entire firm as a matter oflaw.
13 This Motion is based on this Notice of Motion and Motion, the
14 accompanying Memorandum of Points and Authorities, the Declaration of Michael
15 T. Zeller, the records and files of this Court, and all other matters of which the
16 Court may take judicial notice.
17 Certificate of Compliance
18 Lead counsel met and conferred regarding the issue in MatteI's motion on
19 December 8, 20 I 0 but did not reach a resolution.
20
21 DATED: December 10,2010
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QUINN EMANUEL URQUHART &
SULLIVAN. LLP
Bv lsi John B. Ouinn
John B. Quinn
Attorneys for MatteI, Inc. and
MatteI de Mexico. S.A. de C.V.
-1-
MATTEL'S MOTION TO DISQUALIFY GLASER WElL
Case 2:04-cv-09049-DOC -RNB Document 9359 Filed 12/10/10 Page 3 of 25 Page ID
#:282295
I
2
3
TABLE OF CONTENTS
4 MEMORANDUM OF POINTS AND AUTHORITIES ............................................ . 1
5 PRELIMINARY STATEMENT.. ................................................................................ I
6 STATEMENT OF FACTS ........................................................................... .. ............. 1
7 LEGAL STANDARD ........................................ .. ...................................... .. ... ............. 3
8 ARGUMENT ................................................ .... .. ... ..... .... .... .. ... ... .... ...... .. ... ...... .. ......... .3
9 l. GLASER WElL HAS AN INCURABLE CONFLICT OF INTEREST ......... . 3
10 A. Ms. Basinger Obviously Has A Conflict.. ............................................... 3
I I B. Under California Law, the Conflict Is Imputed to Glaser Weil. ............ .4
12 II. NONE OF THE OTHER ARGUMENTS GLASER WEIL MAKES
AGAINST DISQUALIFICATION IS PERSUASIVE, OR EVEN
13 RELEVANT .... .. .................... .. .......................................................................... 9
14 CONCLUSION ....... .............. .......... ......... ................................................................. II
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- )-
MATTEL'S MOTION TO DISQUALIFY GLASER WElL
Case 2:04-cv-09049-DOC -RNB Document 9359 Filed 12/10/10 Page 4 of 25 Page ID
#:282296
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TABLE OF AUTHORITIES
Page
Cases
All Am. Semiconductor, Inc. v. Hynix Semiconductor, Inc.,
.
No. C 07-1200, 2008 WI.. 5484552 (N.D. Cal. Dec. 18,2008) .............................. 5
City & Cnty. of San Francisco v. Cobra Solutions, Inc.,
38 Cal. 4th 839 (2006) .................................................. ...... .................... ...... ...... 3, 4
Flatt v. Super. Ct.,
9 Cal. 4th 275 (1994) ...................................................................................... 5, 6, 8
Fremont Indemn. Co. v. Fremont Gen. Corn.,
143 Cal. App. 4th 50 (2d Dis!. 2006) ...................................................................... 3
Genetech, Inc. v. Sanofi-Aventis Deutschland GMGH,
No. C 08-04909 SI (N.D. Cal. Mar. 20, 2010) ....................................................... 5
Glaxo Group Ltd. v. Genetech, Inc.,
No. SA 10-CV-2764-MRP (C.D. Cal. June 15, 2010) ...................................... .3, 6
Goldberg v. Warner/Chappell Music, Inc. ,
125 Cal. App. 4th 752 (2d Dis!. 2005) ................................................................ 4, 7
H.F. Ahmanson & Co. v. Salomon Bros., Inc. ,
229 Cal. App. 3d 1445 (2d Dist. 1999) .................................................................. .3
Henriksen v. Great A\ll. Say. & Loan,
11 Cal. App. 4th 109 (1st Dis!. 1992) .................................................... 3, 4, 5, 7, 8
Hitachi, Ltd. v. Tatung Co.,
419 F. Supp. 2d 1158 (N.D. Cal. 2006) ........................ ................ .. ........ ...... ...... 2, 9
I-Enternrise Co. v. Draper Fisher Jurvetson Mgm!. CO. V, LLC,
No. C-03-1561 MMC, 2005 WI.. 757389 (N.D. Cal. Apr. 4, 2005) ............ . 8, 9,10
Kirk v. First Am. Title Ins. Co.,
183 Cal. App. 4th 776 (2010) ................................ .. .................... ........ .. .. .. .. ....... 6, 7
Largo Concrete v. Liberty Mu!. Fire Ins. Co.,
No. C 07-04651 CRE, 2008 WI.. 53128 (N.D. Cal. Jan. 2, 2008) ...................... 6, 9
Lucent Techs. Inc. v. Gateway, Inc.,
No. 02CV2060-B(CAB); 2007 WI.. 1461406 (S.D. Cal. May 15,2007) ....... 5, 6, 8
Meza v. H. Muehlstein & Co.,
176 Cal. App. 4tJ:i 969 (2d Dis!. 2009) ................................................... 3, 4, 5, 7, 8
-11-
MATTEL'S MOTION TO DISOUALIFY GLASER WElL
Case 2:04-cv-09049-DOC -RNB Document 9359 Filed 12/10/10 Page 5 of 25 Page ID
#:282297
I Openwave Sys. v. 724 Solutions (US) Inc.,
2
No. C 09-3511 RS, 2010 WL 1687825 (N.D. Cal. Apr. 22,2010) ..... ........ .. ... .. 6, 7
3 Pound v. DeMera DeMera Cameron,
135 Cal. App. 4th 70 (5th Dist. 2005) .... ..... .... .. .. .. ................ .................. ........ .3, 10
4
Rosenfeld Constr. Co. v. Super. Ct.,
5 235 Cal. App. 3d 566 (1991) .. ... ........ .. ......... ....................................... ..... ............ . .4
6 Sham v. Next Entm't., Inc.,
7
163 Cal. App. 4th 410 (2d Dist. 2008) .. ..... ... ... ... .. .... ... ........ .. .. .... .. ... .. .... .... ..... ....... 5
8 UMG Recordings, Inc. v. MySpace, inc. ,
526 F. Supp. 2d 1046 (C.D. Cal. 2007) .. ..... .. .. .. ... ........ ..... .... ... .. ... .. ... .. ... ............... 6
9
10
Other Aut horities
II Cal. R. Prof. Conduct 3-3 IO(E) .. .. ...... ... .. .. ... ... ... .. ... .... .... .. .. .. ... .. ............ ...... .......... ...... 3
12 Don J. DeBenedictis,
Bar Updates Rules, Nixes 'Screening' of Conflict Clients,
13 Los Angeles Daily Journal (July 27, 2010) ... ... ............... .......... ...... ........ .... ..... .. .... 7
14 Local Rule 83-3.1.2 ....... .... ........ ... .. ... ..... ..... .. ...... .. ..... ......... .. .. .. ......... .. .... ..... ......... ...... 2
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MATTEL'S MOTION TO DISQUALIFY GLASER WElL
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I MEMORANDUM OF POINTS AND AUTHORITIES
2 Preliminary Statement
3 Glaser Wei! committed the cardinal sin under the disqualification cases-it
4 hired an attorney who worked on the other side of this very case. The lawyer in
5 question, Jill Basinger, billed over 1,400 hours to MatteI matters while at Quinn
6 Emanuel, including this case and another substantially related matter. No amount of
7 spin and no ethical wall can change the fact that disqualification of Glaser Weil is
8 required.
9 There is and can be no dispute that Ms. Basinger herself has a conflict.
10 Glaser Wei! has not asserted otherwise. And, as MGA's counsel itself proclaimed
11 in correspondence only last year (in the context of inaccurate accusations about prior
12 work by a Quinn Emanuel lawyer): "[A]n attorney's personal disqualification is
13 imputed to every attorney in the lawyer's office, as a matter of law, and the
14 presumption is not rebuttable." Glaser Wei!'s apparent view that California law has
15 somehow now shifted 180 degrees is incorrect. Ms. Basinger's incurable conflict is
16 attributable to the entire Glaser Wei! firm. Disqualification is required.
17 Statement of Facts
18 Jill Basinger is a 1997 law school graduate. She worked at Quinn Emanuel
19 Urquhart & Sullivan, LLP ("Quinn Emanuel") as a senior associate and Of Counsel
20 from 2002 to 2006. During her time at Quinn Emanuel, Ms. Basinger billed 1,473.1
21 hours to multiple Mattei matters. This included 9 hours billed directly to MatteI v.
22 MGA litigation. As part of her work on this matter, Ms. Basinger communicated
23 with Mike Zeller and reviewed confidential MatteI systems and files for potential
24 production.
25 In addition, Ms. Basinger billed 123.3 hours to Viveros v. MatteI, which
26 concerned the origins of MatteI's "Diva Starz" line of products, that overlapped in
27 issues and discovery with the MGA litigation. MGA itself has asserted that there is
28 a substantial relationship between the matters at issue in Viveros and this case by
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1 asserting that MatteI's "Diva Starz" line was directly relevant to MGA's unclean
2 hands and competition privilege or justification defenses in this case.
3 MGA's Motion to Compel Further Responses to Requests for Production,
4 September 23, 2009, at 20 (Dkt. No. 6816). As the Court will recall, MGA's
5 counsel repeatedly and specifically relied upon "Diva Starz" at the recent summary
6 judgment hearing for its statute of limitations and other arguments. While working
7 on Viveros, Ms. Basinger was privy to MatteI's litigation strategies with respect to
8 "Diva Starz" and protection of its intellectual property, regularly communicated
9 with in-house counsel for MatteI and was involved in the search for and collection
I 0 of documents concerning "Diva Starz." She also worked on, and discussed strategy
II regarding, the depositions of witnesses, including of persons who are witnesses in
12 both the MGA and the Viveros cases. MatteI's lead counsel in Viveros who
13 regularly communicated with Ms. Basinger on such and other privileged matters
14 was Mike Zeller, who is centrally involved as MatteI's counsel in the MGA
15 litigation. Indeed, the bulk of documents produced in the MGA litigation
16 concerning "Diva Starz," which were demanded by MGA, were collected and
17 reviewed as part of the Viveros case by Ms. Basinger, among other Quinn Emanuel
18 attorneys.
19 On November 24, 2010, MatteI was notified that Patricia Glaser of Glaser
20 Weil would be seeking to associate in as counsel for MGA in this matter. On
21 November 30, 2010, a Quinn Emanuel attorney familiar with the MatteI v. MGA
22 litigation learned that Ms. Basinger had joined Glaser Weil. On December 3, 2010,
23 MatteI sent Glaser Weil a letter, alerting it to the conflict. On December 6, 2010,
24 Glaser Weil responded, acknowledging that Ms. Basinger "may have" previously
25 worked for Mattei on this litigation. Glaser Weil claimed to have taken steps it
26 argued "preclude[ d] any imputation of a conflict" and asserted there was "no basis
27 for any objection by MatteI." Numerous meet and confers failed to convince Glaser
28 Weil to withdraw from representing MGA in this litigation.
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I Legal Standard
2 Attorneys appearing before the United States District Court for the Central
3 District of California are subject to California law governing professional conduct.
4 L.R. 83-3.1.2 (All attorneys must "comply with the standards of
5 professional conduct required of members of the State Bar of California and
6 contained in the State Bar Act, the Rules of Professional Conduct ofthe State Bar of
7 California, and the decisions of any court applicable thereto."); Hitachi, Ltd. v.
8 Tatung Co., 419 F. Supp. 2d 1158, 1160 (N.D. Cal. 2006) ("Motions to disqualify
9 counsel are decided under state law."). Under California law, when an attorney has
10 worked on the other side ofa case, that severe conflict is imputed to the attorney's
II entire firm. Glaxo Group Ltd. v. Genetech, Inc., No. SA 10-CV-2764-
12 MRP, at 7 (C.D. Cal. June 15,2010), attached hereto as Exhibit 1; see also infra
13 Section I.B.
14 Argument
15 I,
16
GLASER WElL HAS AN INCURABLE CONFLICT OF INTEREST
A, Ms. Basinger Obviously Has A Conflict
17 Pursuant to Rule 3-31 O(E) of the California Rules of Professional Conduct, an
18 attorney may not represent a new client whose interests are adverse to those of a
19 former client on a matter in which the attorney has obtained confidential
20 information. Cal. R. Prof. Conduct 3-31O(E); see also Henriksen v. Great Am. Sav.
21 & Loan, II Cal. App. 4th. 109, 113 (lst Dist. 1992). To obtain disqualification, the
22 former client is not required to show that the attorney actually possesses any
23 material confidential information; rather, it need establish only that the former
24 representation and the new representation are "substantially related." See id. at 114;
25 H.F. Ahmanson & Co. v. Salomon Bros" Inc., 229 Cal. App. 3d 1445, 1452 (2d
26 Dist. 1999) ("[I[t is well settled actual possession of confidential information need
27 not be proved in order to disqualify the former attorney."). If there is a "substantial
28 relationship" between the current representation and the former representation,
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I access to confidential information is presumed, and disqualification is mandatory.
2 See Fremont Indemn. Co. v. Fremont Gen. Corp., 143 Cal. App. 4th 50, 67 (2d Dis!.
3 2006).
4 While a Quinn Emanuel associate and Of Counsel, Ms. Basinger worked not
5 only on related matters-she worked on this very litigation. An attorney who
6 switches sides during a pending litigation is di squalified automatically. See,!h&.
7 City & Cnty. of San Francisco v. Cobra Solutions, Inc., 38 Cal. 4th 839, 846 (2006)
8 ("An attorney may not switch sides during pending litigation representing first one
9 side and then the other."); Meza v. H. Muehlstein & Co., 176 Cal. App. 4th 969, 978
10 (2d Dis!. 2009) (attorney's prior representation of adverse party in the very same
11 suit was a per se conflict of interest); Pound v. OeMera OeMera Cameron, 135 Cal.
12 App. 4th 70, 76 (5th Dis!. 2005) (switching sides in the same action is 'the most
13 egregious conflict of in teres!."') (citation omitted). Glaser Wei! cannot, and does
14 not, dispute that Ms. Basinger is disqualified from representing MGA in this action. I
IS B. Under California Law, the Conflict Is Imputed to Glaser Weil
16 In California, an attorney's individual conflict of interest is imputed to her
17 firm because "attorneys, working together and practicing law in a professional
18 organization, share each other's, and their clients, confidential infonnation." Cobra
19 Solutions, Inc. , 38 Cal. 4th at 847-48; W also Rosenfeld Constr. Co. v. Super. C!.,
20 235 Cal. App. 3d 566, 573 (1991 )("It has long been recognized . .. that knowledge
21 by any member of a law firm is knowledge by all of the attorneys in the firm,
22 partners as well as associates."). As MGA's counsel put it in a letter to MatteI last
23 year, "an attorney's personal disqualification is imputed to every attorney in the
24 lawyer's office, as a matter of law, and the presumption is not rebuttable." The
25 vicarious disqualification rule is based on "a pragmatic recognition that the
26
27 I Glaser Wei! apparently recognized Ms. Basinger's conflict in attempting to
construct an ethical wall around her.
28
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confidential information will work its way to the nontainted attorneys at some
2 point." Goldberg v. Warner/Chappell Music, Inc., 125 Cal. App. 4th 752, 765 (2d
3 Dist. 2005).
4 Vicarious disqualification of the entire firm is compelled where, as here, an
5 attorney's disqualification results from her prior work for the opposing side in the
6 same lawsuit. See Meza, 176 Cal. App. 4th at 978 ("As a general rule in California,
7 where an attorney is disqualified from representation, the entire law firm is
8 vicariously disqualified as well. This is especially true where the attorney's
9 disqualification is due to his prior representation of the opposing side during the
10 same lawsuit."); Henriksen, 11 Cal. App. 4th at 117 ("Where an attorney is
11 disqualified because he formerly represented and therefore possesses confidential
12 information regarding the adverse party in the current litigation, vicarious
13 disqualification of the entire firm is compelled as a matter oflaw."); Flatt v. Super.
14 Ct., 9 Cal. 4th 275, 283 (1994) (citing Henriksen with approval for the same
15 proposition); Lucent Techs. Inc. v. Gateway, Inc., No. 02CV2060-B(CAB), 2007
16 WL 1461406, at *2 (S.D. Cal. May 15, 2007) ("California courts have applied an
17 automatic or per se disqualification of the firm especially where the conflict
18 involves the representation of adverse parties.").
19 In correspondence, Glaser Wei! has asserted that its creation of an "ethical
20 wall" between Ms. Basinger and the attorneys who propose to handle this case
21 insulates it from disqualification. This is not the law. For several decades,
22 California state and federal district courts have treated the rule of vicarious
23 disqualification as absolute and irrebutable---as MGA's own counsel conceded in
24 correspondence in 2009.
25 In Henriksen v. Great Am. Savings & Loan, 11 Cal. App. 4th 109 (1st Dist.
26 1992), for example, an attorney who had previously represented defendants in
27 ongoing litigation joined the firm that was representing the plaintiffs. Although the
28 firm implemented an eihical wall between the tainted attorney and the lawyers
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I handling the case, the court held that disqualification of the entire firm was
2 mandatory. Id. at 114-15. Numerous other cases have reached the same result. See,
3 Meza, 176 Cal. App. 4th at 978-80 (ethical wall between an attorney with
4 confidential information who switched sides in the same lawsuit did not prevent
5 disqualification of entire firm); Sharp v. Next Entm't" Inc., 163 Cal. App. 4th 410,
6 438 n. 11 (2d Dist. 2008) ("[I]n the context of private law firms, there is no
7 definitive California authority authorizing ethical walls."); Genetech, Inc. v. Sanofi-
8 Aventis Deutschland GMGH, No. C 08-04909 SI, at 12-13 (N.D. Cal. Mar. 20,
9 2010) (disqualifying entire finn even though it submitted affidavits stating that the
10 tainted attorney was semi-retired and had not been involved in the litigation at
11 issue); All Am. Semiponductor, Inc. v. Hynix Semiconductor, Inc., No. C 07-1200,
12 2008 WL 5484552, at *8-9 (N.D. Cal. Dec. 18,2008) (attorney's prior
13 representation of corporate officer at previous firm disqualified entire new firm from
14 representation adverse to corporation in related matter, despite timely creation of
15 ethical wall and geographical separation of attorneys); Largo Concrete v. Liberty
16 Mut. Fire Ins. Co., No. C 07-04651 CRE, 2008 WL 53128, at *4-5 (N.D. Cal. Jan.
17 2,2008) (plaintiffs' counsel was disqualified even though firm screened off
18 associate who worked on substantially related matters for defendant at previous
19 firm); Lucent, 2007 WL 1461406, at *4-5 (ethical walls are ineffective); UMG
20 Recordings, Inc. v. MySpace, Inc., 526 F. Supp. 2d 1046, 1060-61 (C.D. Cal. 2007)
21 (Flatt requires automatic disqualification of entire firm).
22 Glaser Wei! apparently plans to argue that the California Court of Appeal's
23 recent decision in Kirk v. First Am. Title Ins. Co., 183 Cal. App. 4th 776 (2010),
24 effected a sea-change in California disqualification law. Glaser Wei! is mistaken.
25 In Kirk, the Second District became the first California court to hold that, under
26 certain circumstances, the presumption of vicarious disqualification can be rebutted
27 by an ethical wall at a private law firm. Id. at 806-810. Any argument by Glaser
28 Wei! that California's well-established rule of imputed disqualification was
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I jettisoned by a single, nonbinding decision of the Court of Appeal would be sorely
2 misplaced, as recognized by this District earlier this year in Glaxo Group Ltd. v.
3 Genetech, Inc., No. SA IO-CV-2764-MRP (C.D. Cal. June 15, 2010). In Glaxo, the
4 court rejected the plaintiff's attempt to rely on Kirk for the proposition that an
5 ethical screen can refute the presumption of an imputed conflict. /d. at 7 ("GSK
6 cannot rely on Kirk because it is not binding authority and contradicts binding
7 California Supreme Court law. See Flatt, 9 Cal. 4th at 283."); see also Qpenwave
8 Sys. v. 724 Solutions (US) Inc., No. C 09-3511 RS, 2010 WL 1687825, at *5 n.6
9 (N.D. Cal. Apr. 22, 2010) (rejecting ethical walls and noting that Kirk is a
10 nonbinding appellate decision).
II Further, in July 2010, the California State Bar rejected the very rule proposed
12 by Glaser Wei!, that ethical walls may screen out conflicted lawyers; this further
13 shows that Kirk is an outlier-not, as Glaser Wei! suggests, established law in
14 California. Don J. DeBenedictis, Bar Updates Rules, Nixes 'Screening' Of
15 Conflict Clients, Los Angeles Daily Journal (July 27, 2010).
16 Even assuming that Kirk were the law, it would not save Glaser Wei! here .. In
17 Kirk, the "tainted" attorney had already left the firm whose representation was being
18 challenged. See Kirk, 183 Cal. App. 4th at 815-16. That fact is highly significant,
19 because "[w]here tainted attorneys and nontainted attorneys are working together at
20 the same firm, there is ... a pragmatic recognition that the confidential information
21 will work its way to the nontainted attorneys at some point," but when the tainted
22 attorney is gone, the court can conduct a "dispassionate assessment of whether
23 confidential information was actually exchanged." See Goldberg, 125 Cal. App. 4th
24 at 765 (emphasis added and internal quotation marks and citation omitted). By
25 contrast, Ms. Basinger is currently at Glaser Weil; there is no way to ensure
26 preservation of Matlel's confidences other than through vicarious disqualification.
27 See id.; Henriksen, II Cal. App. 4th at 114-15; Meza, 176 Cal. App. 4th at 978-80;
28 Openwave, 2010 WL 1687825, at *5 (refusing to extend Kirk to permit the use of an
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1 ethical wall for existing attorney in light of the substantial relationship between
2 matters).
3 Even Kirk recognizes that in an egregious case such as this one, where an
4 attorney worked on the other side ofthe same litigation, an ethical wall cannot
5 "cure" the conflict. See Kirk, 183 Cal. App. 4th at 800 & n.20 ("[V]icarious
6 di squalification should be automatic in cases of a tainted attorney possessing actual
7 confidential information from a representation, who switches sides in the same
8 case."); see also Openwave, 2010 WL 1687825, at *5 (although Kirk may have
9 "arguably" broken some new ground, "[t]his Court would have to break far more
1 0 new ground ... to disregard its conclusion that there is a substantial relationship
11 between the [prior representation] and this action, and not [vicariously] disqualify
12 [the firm] under the facts here").
13 No state or di strict court in California has ever suggested an ethical wall could
14 overcome vicarious di squalification under the circumstances of this case.
15 Lucent, 2007 WL 1461406, at *4 ("[N]o district court cases in the Ninth Circuit
16 have permitted the presumption to be rebutted where the conflict was generated in
17 the context of a single litigation"); I-Enterprise Co. v. Draper Fisher Jurvetson
18 Mgmt. Co. V, LLC, No. C-03-1561, 2005 WL 757389, at *6 (N.D. Cal. Apr. 4,
19 2005) (same); Flatt, 9 Cal. 4th at 283 ("If an attorney is di squalified because he
20 formerly represented and therefore possesses confidential information regarding the
21 adverse party in the current litigation, vicarious di squalification of the entire firm is
22 compelled as a matter oflaw); Henriksen, 11 Cal. App. 4th at 117 (same); Meza,
23 176 Cal. App. 4th at 979 (an ethical screen will not preclude disqualification of
24 entire firm, especially where the attorney's conflict is due to prior representation of
25 adverse party in the same matter).
26
27
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I II. NONE OF THE OTHER ARGUMENTS GLASER WElL MAKES
2 AGAINST DISOUALIFICATION IS PERSUASIVE, OR EVEN
3 RELEVANT
4 Glaser Weil's correspondence alludes to several other arguments that Glaser
5 Weil apparently intends to make to avoid disqualification. None of these is
6 sufficient to avoid disqualification of the Glaser Weil firm:
7 Glaser Weil represented MGA in this action "in the past" - Glaser Weil
8 previously represented MGA in this action, withdrew before the Phase l.A. trial, and
9 then appeared briefly after that trial, withdrawing again in 2009. That Glaser Weil
10 represented MGA in this action before it had a conflict does not in any way support
II the position that Glaser Weil may resume the representation now that it has a
12 conflict. Courts routinely disqualify firms that have represented clients for years
13 when a tainted attorney joins the firm. See supra pp. 4-8.
14 Jim Asperger "represented MGA at O'Melveny & Myers" - This
IS statement is irrelevant and simply false. Mr. Asperger, a white collar partner,joined
16 Quinn Emanuel in 2009. Unlike Ms. Basinger, he did no work on MGA v. Mattei,
17 and there is and can be no suggestion that Mr. Asperger has any MGA confidential
18 information that is relevant to this case. Prior correspondence confirms this.
19 Glaser Weil hired Ms. Basinger "from the firm of McDermott. Will &
20 Emery, not Quinn Emanuel" - So what? Disqualification is mandatory if there is a
21 substantial relationship between the former and current representations. See supra
22 Section l.A. It does not matter whether, after obtaining MatteI's material
23 confidences, Ms. Basinger worked at other firms before joining Glaser Wei!.
24 Ms. Basinger "may have had a limited role in Mattei matters as a low-
25 level associate many years ago" - In reality, Ms. Basinger was a senior associate
26 and Of Counsel, a 5- to 9-year lawyer for Mattei, not a "low-level associate." Ms.
27 Basinger billed over 1,400 hours to Mattei matters, including this litigation and
28 another substantially related matter, during that period. Id. Work by associates far
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1 junior to Ms. Basinger, or who billed fewer hours, has supported disqualification
2 orders. I-Enterprise, 2005 WL 757389, at *6 (disqualification of entire
3 firm because it hired attorney who billed one-half hour to the same litigation prior to
4 switching firms); Hitachi, 419 F. Supp. 2d at 1159-61 (ordering disqualification of
5 entire firm, despite claim that associate's prior work for other side on a related
6 matter was "primarily document review" and despite ethical wall); Largo, 2008 WL
7 53128, at *1-5 (disqualification of entire firm despite claim that transferring
8 associate performed 9.8 hours of work as essentially "a paralegal" in a related
9 matter, despite associate's testimony that he did not review anything that would be
10 of use in the pending litigation, and despite ethical wall); Pound, 135 Cal. App. 4th
11 at 80 (attorney associated into case who had a one-hour meeting with counsel for the
12 other side three years earlier required vicarious disqualification of firm).
13 "There had already been a trial ... when we hired" Ms. Basinger -
14 That the Phase I.A trial occurred in 2008 is irrelevant. There is no rule permitting
15 tainted law firms to participate in subsequent trials notwithstanding disabling
16 conflicts. I-Enterprise, 2005 WL 757389, at *8 (although the remedy of
17 disqualification "is a harsh one, particularly when it comes late in the litigation," no
18 case has denied qualification on grounds of prejudice or expense). The same
19 analysis applies; no matter what the stage of the case, Glaser Weil should be
20 disqualified because it decide to hire an attorney who had represented MatteI on
21 substantially related matters, including work on the other side of this very case.
22 The inapplicable and irrelevant arguments proffered by Glaser Wei! in its
23 correspondence only confirm what the law requires: Glaser Weil should be
24 disqualified because it chose to bring in an attorney who had worked on the other
25 side of this case. No amount of "walls" or excuses can save Glaser Weil from this
26 legally required result.
27
28
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Conclusion
2 For the foregoing reasons, Mattei respectfully requests that the Court
3 grant its motion to disqualifY Glaser Weil from representing MGA in this litigation.
4
5 DATED: Decemher 10, 2010
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QUINN EMANUEL URQUHART &
SlJLLIV AN. LLP
Bv Is! Joho B. Quinn
John B. Quinn
Attorneys for Mattei, Inc. and
Mattei de Mexico. S.A. de C.V.
-1 1-
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Exhibit 1
EXHIBIT /
PAGE It
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#:282310
2
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S
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LINKS: 30,39, 40
8
9
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
I I GLAXO GROUP LIMITED, ET AL.,
12 Plaintiff,
13
14
v.
GENENTECH, INC., ET AL.,
Defendant.
IS 11 --------------------------
Case No. SA 10CV2764 MRP (FMOx)
ORDER RE: MOTION TO
DISOUALIFY COUNSEL FOR
PLAINTIFFS
16 I. INTRODUCTION
17 Plaintiffs Glaxo Group Limited and GlaxoSmithKline LLC (collectively, "GSK")
I 8 seek declaratory judgment against Genentech, l nc. ("Genentech") and City of Hope
I 9 (collectively, "Defendants") that U.S. Patent No. 6,33 1,41 5 (the "Cabilly II patent") is
20 invalid, unenforceable and not infri nged by the manufacture, use, sale, offer to sell , or
21 importation ofGSK's Arzerra antibody product. Complaint I. Arzerra is a human
22 monocolonal antibody that was approved by the U.S. Food and Drug Administration for
23 the treatment of chronic lymphocytic leukemia patients. Complaint 27,30; Answer 27,
24 30.
25 Genentech brought a motion to disquali fy Howrey LLP ("Howrey") from thi s case
26 because Henry Bunsow, a partner at Howrey, represented Genentech in a case that is
27 alleged to be substantially related to this case.
28
1
Exhibit.---,,-'/ ,:::-__
page-J. !_ '-. 1 __
Case 2:04-cv-09049-DOC -RNB Document 9359 Filed 12/10/10 Page 19 of 25 Page ID
#:282311
II. BACKGROUND
2 A. Background of the Cabilly I and Cabilly II Patents
3 On April 3, 1983, Shmuel Cabilly et al. filed a patent application that issued on
4 March 28,1989 as U.S. Patent No. 4,816,567 (the "Cabilly I patent"). Complaint ,13;
5 Answer The Cabilly! patent was assigned to Defendants. Complaint Answer
6 At the time the Cabilly I patent issued, Defendants had a continuation application
7 pending that later issued as the Cabilly II patent. Complaint Answer '14.
8 Cell tech Therapeutics Ltd. ("Celltech") is the owner of U.S. Patent No. 4,816,397
9 (the "Boss patent"), which has a priority date of March 25,1983. Complaint
10 Answer Defendants copied claims from the Boss patent, as is standard practice,
lIto initiate an interference proceeding to detennine whether the Boss patentees or the
12 Cabilly patentees were entitled to priority for the inventions claimed in the respective
13 patents. Complaint ,14; Answer ,14. In February 1991, the U.S. Patent and Trademark
14 Office ("PTO") Board of Patent Appeals and Interferences ("the BPAI") declared a
15 patent interference between the pending Cabilly II patent application and the Boss patent.
16 Complaint Answer Seven years later, in August 1998, the BPA! found that the
17 Boss patentees were entitled to priority over the Cabilly patentees. Complaint ,15;
18 Answer see Cabilly v. Boss, 55 U.S.P.Q.2d 1238 (B.P.A.1. 1998).
19 In October 1998, Genentech filed an action under 35 U.S.C. 146 against Celltech
20 to appeal the decision of the BPAI awarding priority to the Boss patent (the "Celltech
21 case"); the parties later settled the case in March 2001 pursuant to a confidential
22 settlement agreement. Complaint ,-r16; Answer ,-r16; Genentech, Inc. v. Cel/tech
23 Therapeutics Ltd., Case No. C98-3926 (N.D. CaL). Pursuant to Celltech and
24 Genentech's confidential settlement agreement, the court ordered the PTO to vacate its
25 BPAI decision in the interference case, revoke the Boss patent, and grant the Cabilly II
26 patent. Genentech, Inc. v. Celltech Therapeutics. Ltd., 2001 U.S. Dist. LEXIS 3489, at
27 *7-9 (N.D. Cal. Mar. 16,2001). Although the PTO refused to act in response to the
28
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EXhibit----;-:-r! __ _
page--LI-LLf __
Case 2:04-cv-09049-DOC -RNB Document 9359 Filed 12/10/10 Page 20 of 25 Page ID
#:282312
court's order, subsequent proceedings resulted in the issuance of the Cabilly II patent on
2 December 18, 200!.
3 B. Background of the Chi ron Case
4 Chiron Corp. filed a patent infringement case against Genentech on June 7, 2000
5 ("the Chiron case"). Chiron Corp. v. Genentech Inc., Case No. 8-00-1252 (ED. Cal.).
6 Notably, the Chiron case was filed less than two years after the BPAI decision in the
7 interference case between the Cabilly II patent application and the Boss patent. While
8 the Chiron case was pending, the Cell tech case settled, resulting in the issuance of the
9 Cabilly II patent in 200 I. As a continuation of the Cabilly I patent, the Cabilly II patent
10 shares a specification with the Cabilly I patent.
11 A jury trial in the Chiron case took place in August and September of 2002.
12 Chiron Corp. v. Genentech Inc., Civ. 8-00-1252 (ED. Cal.). G8K and Genentech
13 dispute how the Cabilly I patent was used in the Chiron case. The Court understands that
14 the Cabilly I patent was used in the Chiron case as follows: In its summary judgment
15 order in the Chiron case, the court declared that the Cabilly I patent disclosed chimeric
16 antibodies in 1983. Chiron Corp. v. Genentech, Inc. , 268 F. 8upp. 2d 1148, 1157 (E.D.
17 Cal. 2002). In the Chiron trial, Genentech used the Cabilly I patent to support its
18 argument that Chiron did not enable or adequately describe chimeric or hybrid antibodies
19 as claimed in the patent at issue ("the Ring patent"). Garner Decl., Ex. B. at 3-5; Nathan
20 Decl., Ex. F at 000138-39, Ex. G at 000178-79, Ex. H.
21 Bunsow was one of three lawyers ofKeker & Van Nest LLP to appear and argue
22 at trial on behalf of Genentech in the Chiron case. See Nathan Decl., Ex. I at 000192.
23 Bunsow examined witnesses at trial to support the argument that Chiron did not
24 adequately enable or adequately describe chimeric or hybrid antibodies in the patent at
25 issue. See Nathan Decl., Ex. I at 000194. Prior to trial in the Chiron case, Bunsow
26 defended the depositions of Sean Johnston, Genentech's General Counsel, and Wendy
27 Lee who prosecuted the Cabilly II patent. Nathan Decl., Ex. C-D. Bunsow is now a
28 member of Howrey, the finn hired by GSK in this case. Howrey began to represent GSK
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in this case on or about January 27, 2010, and later imposed an ethical screen on Bunsow
2 on or about March II, 2010. Day Decl. ,3; O'Brien Decl. ,5.
3 1II. THE LEGAL STANDARD
4 Under Central District Local Rule 83-3.1.2, each attorney must comply with "the
5 standards of professional conduct required of members of the State Bar of California and
6 contained in the State Bar Act, the Rules of Professional Conduct of the State Bar of
7 California, and the decisions of any court applicable thereto." According to California
8 Rule of Professional Conduct 3-31O(E), absent a written waiver from the client or fonner
9 client, an attorney must not "accept employment adverse to the client or fonner client
10 where, by reason of the representation of the client or fonner client, the member has
II obtained confidential infonnation material to the employment." When a former client
12 seeks to disqualify a fonner attorney from representing an adverse party, the former clien
13 need not prove actual possession of confidential inforrnation by the former attorney;
14 instead, courts presume possession of confidential information if there is a "substantial
15 relationship between the fonner and current representation." H. F. Ahmanson & Co. v.
16 Salomon Bros., 229 Cal. App. 3d 1445, 1452 (1991)(citing Global Van Lines v. Superior
17 Court, 144 Cal. App. 3d 483, 489 (1983 (internal quotation omitted). "The 'substantial
18 relationship' test mediates between two interests that are in tension in such a context-
19 the freedom of the subsequent client to counsel of choice, on the one hand, and the
20 interest of the fonner client in ensuring the permanent confidentiality of matters disclose
21 to the attorney in the course of the prior representation, on the other." Flatt v. Superior
22 Court, 9 Cal. 4th 275, 283 (1994).
23 The substantial relationship test requires that the fonner client "demonstrate a
24 'substantial relationship' between the subjects of the antecedent and current
25 representations." Id. The subject of the representations includes infonnation material to
26 "the evaluation, prosecution, settlement or accomplishment of the litigation or transaction
27 given its specific legal and factual issues." Jessen v. Hartford Casualty Ins. Co., III Cal.
28 App. 4th 698, 713 (2003). After a substantial relationship has been shown to exist,
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"courts ask whether confidential information material to the current dispute would
2 normally have been imparted to the attorney by virtue of the nature of the former
3 representation." Ahmanson, 229 Cal. App. 3d at 1454. It is reasonable to expect that
4 "the attorney may acquire confidential information about the client or the client' s affairs
5 which may not be directly related to the transaction or lawsuit at hand but which the
6 attorney comes to know in providing the representation to the fonner client with respect
7 to the previous lawsuit or transaction." Jessen, III Cal. App. 4th at 712. In presuming
8 what confidential information material to the current dispute was likely disclosed to the
9 attorney, "the court should not allow its imagination to run free with a view to
10 hypothesizing conceivable but unlikely situations in which confidential information
11 'might' have been disclosed which would be relevant to the present suit." Talecris
12 Biotherapeutics, Inc. v. Baxter Int'l, Inc. , 491 F. Supp. 2d 510, 515 (D. Del. 2007)
13 (citation omitted).
14 When a substantial relationship between the former and current representation by
15 an attorney is established, not only is the attorney disqualified, but the disqualification
16 extends vicariously to the attorney's law firm. Flatt, 9 Cal. 4th at 283.
17 IV. DISCUSSION
18 The Court first considers whether there is a substantial relationship between the
19 subjects of representation in the Chiron case and this case. The subject of the
20 representation is understood to be broader than the witnesses Bunsow prepared and the
21 documents that Bunsow introduced into evidence on behalf of Genentech in the Chiron
22 case. The subject of Buns ow's representation includes the "the evaluation, prosecution,
23 settlement or accomplishment of the litigation or transaction given its specific legal and
24 factual issues." Jessen, 111 Cal. App. 4th at 713. The subj ect of evaluating and
25 prosecuting the Chiron case included an understanding of the Cabilly I patent and how it
26 related to Genentech's arguments on enablement and written description. To present
27 testimony at trial regarding the Cabilly I patent, Bunsow had to be reasonably acquainted
28 with the Cabilly I patent and its specification such that he could prepare witnesses,
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defend their depositions, and examine them at trial on the subject of the Cabilty I patent.
2 aSK would have the Court believe that because Cabilly II was not at issue in the Chiron
3 case, there is no substantial relationship between the subjects of representation in the
4 Chiron case and this case. However, because the specifications ofthe Cabilly I and
5 Cabilly II patents are the same and because the specification of a patent is the basis for
6 the claims, there is a relationship between the subjects of representation in these cases.
7 Furthennore, because the Celltech case involving the Cabilly 11 patent application was
8 being simultaneously litigated, a trial attorney employing the Cabilly I patent to attack th
9 validity of the Ring patent in the Chiron case could hardly have failed to be cognizant of
10 the strategy in the Cell tech case. Bunsow's representation of Genentech in the Chiron
11 case would necessarily have resulted in an evaluation of the Cabilly I in light of the
12 Cabilly II patent. Therefore, the Court finds that there is a substantial relationship
13 between the subjects of representation in the Chiron case and this case.
14 Next, after evaluating the scope of the prior representation, courts inquire what
15 confidential information would have been imparted to an attorney given the scope of that
16 representation. See Ahmanson, 229 Cal. App. 3d at 1454. As stated, it is reasonable to
17 presume that Bunsow-a member of a three person trial team in the Chiron case with
18 important responsibilities such as defending the deposition of the Genentech General
19 Counsel and patent prosecutor of the Cabilly II patent-acquired confidential information
20 about Genentech's patent strategy surrounding the Cabilly I and Cabilly II patents. Give
21 that the Cabilly I and Cabilly II patents shared a specification and Genentech was
22 simultaneously litigating the Celltech case, it would have certainly been important that
23 nothing in the Chiron case defense strategy impair Genentech's ability to enforce and
24 defend the Cabilly II patent. To act as competent counsel to Genentech, Bunsow would
25 have to have acquired confidential information material to this case. It could hardly have
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been otherwise, especially considering the importance and value of the Cabilly I and
2 Cabi lly n patents. I
3 GSK cites Kirk v. First American Title Insurance Company for the proposition
4 that the presumption of an imputed conflict can be rebutted by adequately screening a
5 lawyer from those at the firm representing the adverse party. 183 Cal. App. 4th 776
6 (2010). However, GSK cannot rely on Kirk because it is not binding authority and
7 contradicts binding California Supreme Court law. See Flatt, 9 Cal. 4th at 283 ("Where
8 the requisite substantial relationship between the subjects of the prior and the current
9 representations can be demonstrated .. , disqualification of the attorney's representation
10 of the second client is mandatory; indeed, the disqualification extends vicariously to the
I I entire finn."), Even if the Court were to follow Kirk, GSK would not be able to rebut the
12 presumption of an imputed conflict because it did not adequately screen Bunsow from
13 thi s case. Kirk states than an effective screen must "be timely imposed" and impose
14 "preventative measures to guarantee that infonnation will not be conveyed," Id. at 810.
15 Here, it is clear that Howrey did not impose the screen at the time the representation
16 began on or about January 27, 20 I 0, but only imposed the screen at the time Genentech
17 raised the conflict to Howrey's attention on or about March 11 , 2010. Day Decl. 3;
18 O'Brien Decl. Howrey's screen does not meet the "timely imposed" requirement
19 under Kirk because the screen was imposed weeks after the representation began,
20 Genentech objects to Howrey's declaration from Professor David C. Hricik on the
21 groWlds that hi s opinions state legal conclusions and lack foundation. This Court
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I "[T]he court should not allow its imagination to run free with a view to hypothesizing conceivable but unlikely
si tuations in which confidential infonnation 'might' have been di sc losed which would be relevant to the present
sui t." Talecris Biotherapeutics, Inc. v. Baxter Int'l, Inc., 491 F, Supp, 2d at 515 (citation omined). Beatuse this
Court has deep experi ence with the Cabilly II patent and its history as a continuation of the Cabilly I patent, this
Court is well situated to make a presumption about what confidential information would have been necessary to
execute the trial strategy in the Chiron case. This Court has handled two notable cases involving the Cabilly II
patent. In Medlmmune, a licensee of the Cabi lly II patent brought a declaratory relief action seeking to have the
Cabi l1 y "patent declared infringed, invalid, and unenforceable. See MedImmune, Inc. v. Genentech, Inc., No. 2:03-
cv-02567 (C.O. Cal, filed Apr. II, 2003), The case settled after years oflitigation that included extensive di scovery,
claim construction, an appeal, and a decision by the United States Supreme Court, In Centocor, another li censee of
the Cabilly II patent filed a declaratory relief action raising the same claim construction, validity, and enforceabi lity
issues. See Centocor Inc. v, Genentech, Inc., No. 2:08-cv-03573 (C.O. Cal. filed May 30, 2008).
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declines to address Genentech's objection. Because Prof. Hricik did not discuss the
2 Celltech case and its relationship to the Cabilly I and Cabilly II patents and the Chiron
3 case, the Court places little weight on Prof. Hricik's declaration. Prof. Hricik is
4 obviously unaware of the extraordinary history of the Cabilly I and II patents.
5 Because the Court finds a substantial relationship between Bunsow's fonner
6 representation of Genentech and Howrey's current representation ofGSK, the Court
7 GRANTS Genentech's motion to disqualify Howrey from the representation ofGSK in
8 this case. Although the Court finds Genentech's arguments that the use of evidence on
9 Herceptin in the Chircn case and this case result in a substantial relationship, the Court
10 declines to address Herceptin given its finding of a substantial relationship for the reason
II set forth above. The Court further declines to address Genentech's arguments on the
12 violation of the duty of loyalty although in this case it is undisputed that Howrey intends
13 to make a full scale attack on the Cabilly II patent on multiple grounds including written
14 description and enablement.
IS v. CONCLUSION
16 The Court GRANTS Genentech's motion to disqualify Howrey from this case.
17 The Court ORDERS Howrey to refrain from handing over its work product to successor
18 counsel unti l further order of this Court. The Court ORDERS Genentech to prepare a
19 proposed Statement of Uncontroverted Facts and Conclusions of Law and proposed
20 Order in light of the foregoing and submit it to the Court by Friday, June 25, 2010.
21 IT IS SO ORDERED.
22
23 DATED:June IS, 2010
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Hon. Mariana R. Pfaelzer
United States District Judge
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EXHIBIT C


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QUINN EMANUEL URQUHART & SULLIVAN, LLP
John B. Quinn (Bar No. 090378)
Johnquinn^qulnnemanuel.com
William C. rice (Bar No. 108542)
williamprice(a^qumnemanuel.com
Michael T. Zeller Bar Na. 19641 )
michaelzel l er@qumnemanuel. com
865 South Figueroa Street, 10th Floor
Los Angeles, California 90017-2543
Telephone : (213) 443-3000
Facsimile : (213) 443-3100
Attorneyys for Mattel, Inc. and
Mattel de Mexico, S.A. de C.V.
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
SOUTHERN DIVISION
MATTEL, INC., a Delaware
CASE NO. CV 04-9049 DOC (RNBx)
corporation,
Consolidated with
Case Nos CV 04-09059 & CV OS-
vs.
02727
Plaintiff,
Hon. David O. Carter
REPLY IN SUPPORT QF MOTION
TO DISQUALIFY GLASER WEIL
MGA ENTERTAINMENT, INC., a
California corporation, et al.,
Defendant.
AND CONSOLIDATED ACTIONS
Hearing Date: TBD
Time: TBD
Place: Courtroom 9D
Discovery Cutoff: October 4, 2010
Pre-trial Conference: January 4, 2011
Trial: January 11, 2011
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TABLE OF CONTENTS
Page
PRELIMINARY STATEMENT ..................................................................................1
ARGUMENT ...............................................................................................................1
I.
MGA'S OPPOSITION MISSTATES THE LEGAL STANDARD .................1
II.
MGA'S OTHER ARGUMENTS ARE MERITLESS ......................................4
CONCLUSION ..........................................................................................................15
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TABLE OF AUTHORITIES
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Page
Cases
(Brand v. 20th Century Ins. Co.,
124 Cal. App. 4th 594 (2004) ...............................................................................10
Chambers v. Superior Court,
121 Cal. App. 3d 893 (3d Dist. 1981) ...................................................................11
City & County of San Francisco v. Cobra Solutions, Inc.,
38 Cal. 4th 839 (2006) ................................................................................9, 10, 14
Cit^Nat'1 Bank v. Adams,
96 Cal . App. 4th 315 (2d Dist. 2002) ......................................................................7
City of Santa Barbara v. Superior Ct.,
122 Cal. App. 4th 17 (2d Dist. 2004) ....................................................................12
In re County of Los Angeles,
223 F.3d 990 (9th Cir. 2000) ............................................................................2, 11
Flatt v. Super. Ct.,
9 Cal. 4th 275 (1994) ....................................................................................3, 7, 13
Global Van Lines, Inc. v. Super. Ct.,
144 Cal. App. 3d 483 (4th Dist. 1983) ..............................................................8, 13
H.F. Ahmanson & Co. v. Salomon Bros., Inc.,
229 Cal. App. 3d 1445 (2d Dist. 1999) .............................................................7, 14
Henriksen v. Great Am. Sav. & Loan,
11 Cal. App. 4th 109 (1st Dist. 1992) ............................................ 1, 11, 12, 13, 14
Hitachi, Ltd. v. Tatung Co.,
419 F. Supp. '2d 1158 (N.D. Cal. 2006) ..............................................................2, 9
nterprise Co. LLC v. Draper Fisher Jurvetson Mgmt. Co. V, LLC,
2005 WI., 757389 (N.D. Cal. Apr. 4, 2005) ................................................ 8, 10, 13
In re Complex Asbestos Litigation,
232 Cal. App. 3d 572 (1st Dist. 1991) ..................................................................12
Kirk v. First Am. Title Ins. Co.,
183 Cal. App. 4th 776 (2d Dist. 2010) ..................................... 1, 2, 3, 9, 12, 13, 15
Largo Concrete Inc. v. Liberty Mut. Fire Ins. Co.,
2008 WL ^ 53128 (N.D. Cal. Jan. 2, 2008) ...................................................7, 10, 14
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Lutron Elecs . Co., Inc. v. Crestron Elecs., Inc.,
No. 2:09-CV-707 (D. Utah Nov. 12, 2010) ..........................................................13
Meza v. H. Muehlstein & Co.,
176 Cal. App. 4th 969 (2d Dist. 2009) ..................................................................12
Ochoa v. Fordel,
146 Cal. App. 4th 898 (5th Dist. 2007) ..................................................................7
Openwave Systems v. 724 Solutions (US) Inc.,
2010 WL 1687825 (N.D. Cal. Apr. 22, 2010) ......................................... 3, 5, 8, 10
People ex rel . Dept of Corr. v. SpeeDee Oil Change SYs. Inc,
20 Cal. 4th 113 5 (1999) ........................................................................................14
Pound v. DeMera DeMera Cameron,
135 Cal. App. 4th 70 (5th Dist. 2005) ..............................................................9, 10
Rosenfeld Constr. Co. v. Super. Ct.,
235 Cal. App. 3d 566 (5th Dist. 1991) ....................................................................8
Shadow Traffic Network v . Superior Court,
24 Cal. App. 4th 1067 (2d Dist. 1994) ..................................................................12
ViChip Corp. v. Lee,
2004 WL 2780170 (N.D. Cal. Dec. 3, 2004) ........................................................10
Western Digital Corp. v. Superior Court,
60 Cal. App. 4th 1471 (4th Dist . 1998) ................................................................12
Other Authorities
Mark L. Tuft, et al., California Practice Guide: Professional
Responsibility (Rutter 2010) .................................................................. 5, 8, 10, 11
Mark L. Tuft, Non-Consensual Screening_for Conflicts in California.
843 PLI/Lit 35 (December 2010) .......................^.........................................1, 3, 12
Utah Rule of Professional Conduct 1.10(c) ...............................................................13
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Preliminary Statement
"The general rule in California is that where an attorney is
disqualified, that attorney's entire firm is disqualified as
well regardless of efforts to erect an ethical wall."'
Glaser Weil cannot avoid what its own counsel admits are the rules: Glaser
^ Weil must be disqualified because it chose to hire an attorney who previously
^ represented Mattel in this very case. MGA's lengthy opposition, while interjecting
^ numerous irrelevant arguments, fails to acknowledge the applicable legal standard
^ and ignores that no California court has ever permitted this kind of conflict to
persist. California law requires disqualification of the entire Glaser Weil firm. As
Glaser Weil's own counsel acknowledged in the above-quoted article published this
month, no amount of claimed screening can change that conclusion.
Argument
I. MGA'S OPPOSITION MISSTATES THE LEGAL STANDARD
Glaser Weil cites no authority that justifies its request to be the first California
firm ever to hire a lawyer from the other side of the case and avoid disqualification.
Glaser Weil's own counsel has noted that even MGA's best case does not change
the result: "Under Kirk, ...screening may be a viable solution except in the
^ situation where a tainted attorney was actually involved in the prior representation
and switches sides in the same case. In that instance, no amount of screening will be
sufficient." Mark L. Tuft, Non-Consensual Screening for Conflicts in California,
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843 PLI/Lit 35, at 6 (citing Kirk v. First Am. Title Ins. Co., 183 Cal. App. 4th 776,
814 (2d Dist. 2010) and Henriksen v. Great Am. Sav. & Loan, 11 Cal. App. 4th 109
I Mark L. Tuft, Non-Consensual Screening for Conflicts in California. 843
PLI/Lit 35, at 2 (December 2010), attached hereto as Exhibit A; accord Mark L.
Tuft, Screening for Conflicts in California, available at
http://www.cwclaw.com/publications/articleDetail.aspx? id=299 (visited December
17, 201 p).
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(1st Dist. 1992)) (emphasis added). Glaser Weil's counsel acknowledged that this
was the law just this month, but now, after being hired by Glaser Weil, maintains
that screening is a viable solution to Glaser Weil's attempt to represent MGA after
hiring an attorney who represented Mattel in this very case. This revisionist view is
^ not the law in California. Nor is Mattel required to show that Ms. Basinger billed a
large number of hours to this case, that she actually possesses material confidential
information or that Glaser Weil's "ethical wall" is not working.
MGA is also wrong in maintaining that the present motion is governed by
^ "federal law." Qpp. at 4. Tellingly, MGA cites no authority for this assertion. As
set forth in Mattel' s motion, see Mot. at 3, this Court is required to apply California
disqualification law to the attorneys in this case. See In re County of Los Angeles,
223 F.3d 990, 995 (9th Cir. 2000) ("[W]e apply state law in determining matters of
disqualification."); Hitachi, Ltd. v. Tatung Co., 419 F. Supp. 2d 1158, 1160 (N.D.
Cal. 2006) (same).
As Glaser Weil's own counsel explained previously, California law requires
disqualification of Ms. Basinger and of the entire Glaser Weil firm. Glaser Weil
cannot rely on Kirk v. First American Title Ins. Co., 183 Cal. App. 4th 776 (2d Dist.
2010), a case involving a departed lawyer who had not worked on the other side of
the litigation in question (the lawyer had only had a 17-minute phone conversation
with a prospective client), fpr the proposition that an ethical wall can "solve" its
own hiring of a lawyer who remains at the Glaser Weil firm and did work on the
opposite side of this litigation. Kirk itself confirms that "if the tainted attorney was
(actually involved in the representation of the first client, and switches sides in the
same case, no amount of screening will be sufficient." Id. at 814; see also id. at 796
(noting the "absolute rule that ethical walls are not sufficient, and vicarious
disqualification is mandatory" where the tainted attorney is a nongovernmental
attorney that worked on the other side of the same case).
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That Kirk does not change the result is also confirmed by the two relevant,
post-Kirk federal decisions that each rejected Glaser Weil's suggestion that ethical
walls are suddenly able to obviate conflicts under California law. Glaxo Group Ltd.
v. Genetech, Inc., No. SA 10-CV-2764-MRP (FMOx) (C.D. Cal. June 15, 2010),
noted that Kirk is non-binding on federal courts and conflicts with California
Supreme Court precedent. See id. at 7 (citing Flatt v. Super. Ct., 9 Cal. 4th 275, 283
(1994)). Glaxo disqualified a firm that had hired an attorney that had worked on
the other side of a substantially related matter, despite an ethical wall. Openwave
Systems v. 724 Solutions (US) Inc., No. C 09-3511, 2010 WL 1687825, at *5 (N.D.
Cal. Apr. 22, 2010), acknowledged that Kirk "arguably" broke some new ground,
but refused to extend Kirk to a situation even less compelling than this one. There
the tainted lawyers had worked for the adversary on the other side of related
litigation (not the same case).
MGA fails to explain why Mattel's reliance on these two 2010 federal
decisions-one by this Court and one from the Northern District of California-is
"improper[]." Opp. at 15. To the contrary, these cases are the current state of the
law. As Glaser Weil's counsel conceded after Kirk was decided, and after the
California Supreme Court declined to review the decision, "[u]nder Kirk, .
screening may be a viable solution except in the situation where a tainted attorney
was actually involved in the prior representation and switches sides in the same
case. In that instance, no amount of screening will be sufficient and the presumption
of imputed knowledge is conclusive." Mark L. Tuft, Non-Consensual Screening for
Conflicts in California, 843 PLI/Lit 35, at 6 (citing Kirk, 183 Cal. App. 4th at 814,
and Henriksen, 11 Cal. App. 4th at 109) (emphasis added).2 Under California law,
2 The same counsel also has submitted athree-page declaration arguing that the
California State Bar did not "reject," but rather just declined to include, a provision
(footnote continued)
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no amount of screening is sufficient to solve Glaser Weil's hiring of Ms. Basinger.
The presumption of imputed knowledge applies to the entire firm, and Glaser Weil
must be disqualified.
II. MGA' S OTHER ARGUMENTS ARE MERITLESS
MGA makes a number of additional arguments that misstate either the law or
the facts relevant to this Motion.
MGA a^ument . The^e was no side-switching. MGA surprisingly argues that
Ms. Basinger herself should not be disqualified , despite her 9 hours of work on the
other side of this very MGA v. Mattel case and 123 hours billed to a substantially
related matter. Ms. Basinger claims she "does not recall " performing any work on
Mattel v. MGA. Indeed, she maintains she did not even learn of the litigation until
she read about it in the newspaper after leaving Quinn Emanuel . See Opp. at 6;
Basinger Decl. 6. Ms. Basinger' s own time records show that she billed 9 hours to
this very case on May 13 and 14, 2005. She billed Mattel for time spent discussing
case strategy with Mike Zeller, for review of confidential Mattel files and systems
that are directly at issue in this case, and for discussions with Mattel' s consulting
experts. Ms. Basinger' s time entries are corroborated by those of Mike Zeller,
whose Mattel v. MGA time records confirm that he and Mattel ' s consulting experts
spoke with
Ms. Basinger about confidential case strategy and that Ms. Basinger
participated in a group review of confidential Mattel materials with two partners and
two other associates on the case.
MGA's repeated argument that Mattel must disclose the privileged "facts"
^^ and "tasks performed" by Ms. Basinger and strategies to which she was privy is,
again, not the law -doing so would reveal the very information Mattel is seeking to
protect. See Mark L. Tuft, et al., California Practice Guide: Professional
approving ethical walls. See Tuft Declaration 3-6. This is a distinction without a
difference for purposes of this motion.
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Responsibility 4:199 (Rutter 2010) (citing cases) (courts must "avoid[] the ironic
result of disclosing the former client's confidences and secrets through inquiry into
the actual state of the lawyer's knowledge in proceedings to disqualify the
^ attorney"); Openwave, 2010 WL 1687825, at *5 (rejecting argument that evidence
^ of the type of work attorneys did was "too vague" to permit presumption that they
^ obtained material confidences). Mattel will, of course, provide full details on Ms.
^ Basinger' s work in camera as ordered by the Court.
MGA argument: Mattel has not shown that Viveros and MGA v. Mattel are
^ substantially related. Although not necessary to support disqualification in light of
Ms. Basinger's prior work for Mattel on this very case, MGA concedes that Ms.
Basinger billed over 120 hours to the Viveros v. Mattel action. MGA further
concedes that the Viveros and Mattel v. MGA actions are substantially related "if
the issues are sufficiently similar to support a reasonable inference that the attorney
in the course of the prior representation was likely to have obtained confidential
information material to the current representation" or if the actions involve
"similarities in the[ir] legal problem[s]." Opp. at 11 (citing cases). These
standards are more than met with respect to Ms. Basinger's work on Viveros.
MGA concedes that both cases involved copyright infringement claims with
^ respect to Mattel dolls. Opp. at 11. It does not disavow its own, repeated
arguments -including at the most recent summary judgment hearings -that the
"Diva Starz" dolls at issue in Viveros are relevant to this case. The relevant
witnesses in both cases included many of the very same Mattel personnel. A key
issue in both cases is the copyright protectability of dolls and Mattel's litigation
strategy -fully relevant here - as to what doll elements are and are not protectable.
Ms. Basinger was involved in privileged and work product discussions with Mr.
Zeller and Mattel's in-house counsel Mr. Moore on this very issue. She was also
involved in document collection and preservation efforts (which included access to
confidential and privileged materials) that related to both cases, as corroborated by
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papers filed three years ago. See Docket No. 793, Declaration of Michael Moore in
Support of Mattel, Inc.'s Opposition to MGA Entertainment, Inc.'s Motion for
Terminating Sanctions, dated August 13, 2007, at 5-6. As that Declaration reflects,
MGA itself put at issue Mattel's document preservation and collection efforts,
which included such efforts not only in this case but also in Viveros and other cases.
Id.
And, there is even more overlap than this, which Mattel can provide to the Court
in camera with the appropriate protections for privilege.
Attempting to downplay the material relationship between the two cases,
MGA makes the implausible claim that Ms. Basinger "was not aware of [the Mattel
v. MGA] action at the time she worked on Viveros." This is plainly wrong. Ms.
Basinger herself was actually billing time to the Mattel v. MGA matter "at the time
she worked on Viveros," and those time entries (as will be shown and explained in
camera if the Court so orders) reflect Ms. Basinger's receipt of privileged and work
product information about the Mattel v. MGA case. They show she conferred with
Mattel's nontestifying consultants about the confidential Mattel materials she
reviewed. Indeed, Ms. Basinger also personally delivered to Mr. Zeller, and
discussed with him, prior art that she suggested to Mr. Zeller would be useful in
defending against the trade dress infringement claims that MGA brought against
Mattel in Mattel v. MGA. The details will be presented to the Court in camera, if
ordered, but Ms. Basinger will need to explain how she "was not aware of a major
Mattel case to which she billed time, about which she discussed legal strategy, on
which she reviewed confidential documents (including documents that were not
produced) and spoke with consultants, and for which she took the initiative to
provide prior art and to suggest prior art defenses.
MGA ar^ument. There is no showing that Ms. Basinger received confidential
^^ information or was privy to confidential strategy. The short answer is that this is
factually incorrect as already explained and, in any event, the law does not require
any such showing. Because Ms. Basinger did work for Mattel on this same case,
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and on a substantially related matter, Ms. Basinger's knowledge of Mattel's material
confidential information is irrebutably presumed. See Motion at 3-4; Flatt, 9 Cal.
4th at 283 ("Where the requisite substantial relationship between the subjects of the
prior and the current representations can be demonstrated, access to confidential
information ... in the course of the first representation (relevant, by definition, to
the second representation) is presumed and disqualification is mandatory;
indeed, the disqualification extends vicariously to the entire firm."); City Nat'l Bank
v. Adams, 96 Cal. App. 4th 315, 328 (2d Dist. 2002) ("Where the lawyer switches
sides in an ongoing dispute such as the one between the parties in this case, the
nature of the former representation will always be such that the exchange of relevant
confidences must be presumed.") (emphasis in original).
MGA is also wrong that some sort of "modified substantial relationship" test
should apply here. In Ochoa v. Fordel, 146 Cal. App. 4th 898 (5th Dist. 2007),
relied on by MGA, the allegedly conflicted lawyer did not bill any legal services to
the client that was moving to disqualify. Id. at 902. Rather, other attorneys at his
former firm had done work for the client. In contrast, Ms. Basinger billed more than
130 hours to Mattel - 9 hours to Mattel v. MGA and 123 hours to Viveros -for
work that was on this case or substantially related to this case. The conclusive
presumption that she acquired material confidential information applies. See, ^,
Largo Concrete Inc. v. Liberty Mut. Fire Ins. Co., No. C 07-04651 CRB, 2008 WL
53128, at *4 (N.D. Cal. Jan. 2, 2008) (rejecting argument that modified "substantial
relationship" test should apply, because the attorney actually billed legal services to
the former client who sought to disqualify him).
Given that the conclusive presumption described by the California Supreme
^^ Court in Flatt applies, the Court should reject MGA's invitation to conduct a factual
inquiry into what Ms. Basinger actually learned while representing Mattel. "The
whole point of the presumption ... is that a court does not inquire into the factual
particularities of the information conveyed." Id. at *4; see also H.F. Ahmanson &
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Co. v. Salomon Bros., Inc., 229 Cal. App. 3d 1445, 1453 (2d Dist. 1999) (court may
not conduct an "inquiry into the actual state of the lawyer's knowledge" acquired
during the former representation); Global Van Lines, Inc. v. Super. Ct., 144 Cal.
App. 3d 483, 489 (4th Dist. 1983) (presumption of confidential knowledge and
automatic disqualification is a rule of "necessity" because the former client has no
way of proving the attorney's knowledge or lack thereof). As Glaser Weil's counsel
put it, the presumption is necessary to "avoid[] ... of disclosing the former client's
confidences and secrets through inquiry into the actual state of the lawyer's
knowledge in proceedings to disqualify the attorney." Mark L. Tuft, et al.,
California Practice Guide: Professional Responsibility 4:199 (citing cases); see
also Openwave, 2010 WL 1687825, at *5 (rejecting argument similar to MGA's).
Ms. Basinger's claim that she "does not remember" working on this case or
receiving confidential information is of no moment. Courts have repeatedly held
that where, as here, the prior and subsequent representations are the same or
substantially related, an attorney' s claimed inability to remember will not prevent
disqualification. See, e.g_, I-Enterprise Co. LLC v. Draper Fisher Jurvetson Mgmt.
Co. V, LLC, 2005 WL 757389, at *6-*8 (N.D. Cal. Apr. 4, 2005) (disqualifying
entire firm, despite attorney's inability to remember); Rosenfeld Constr. Co. v.
Super. Ct. , 235 Cal. App. 3d 566, 576-78 (5th Dist. 1991) (trial court abused its
discretion in denying motion to disqualify based on attorney's claimed lack of
memory); Global Van Lines, 144 Cal . App. 3d at 487-90 (disqualifying firm where
attorney claimed not to recall any material information).
Finally, Mattel's motion does make a showing that Ms. Basinger was privy to
^^
material confidential information in the course of her work for Mattel. This is
confirmed by her time entries, which the Court can review. On Mattel v. MGA and
Viveros, Ms. Basinger billed Mattel for her discussions of strategy with Mr. Zeller
and Mattel's consulting experts; on Viveros, she was also involved in privileged and
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work product discussions with Mr. Zeller and Mattel' s in-house counsel. See
^ Motion at 1-2; supra pages 3-4.
MGA argument: Ms. Basin^r's involvement was `peripheral, "and her time
may have been misbilled. MGA's contention that Ms. Basinger's substantially
related work for Mattel was "minimal" and "peripheral" is wrong. Ms. Basinger
billed a combined 132.3 hours to Viveros and Mattel v. MGA. As an eighth-year
lawyer, Ms. Basinger was not a mere "low-level" or even "mid-level" attorney, as
Glaser Weil has inconsistently sought to portray her. She was involved in high-level
case strategy, supervised junior associates, and communicated directly with Mattel
in-house counsel. Numerous courts have held that far lower-level work or less
client contact mandates disqualification. See, ^, City & County of San Francisco
v. Cobra Solutions, Inc., 38 Cal. 4th 839, 845 (2006) (disqualifying entire city
attorney's office because attorney formerly in private practice spent four-tenths of
an hour reviewing a contract in related case); Hitachi, 419 F. Supp. 2d at 1159-61
(disqualifying entire firm despite claim that associate's prior work for other side on
a related matter was "primarily document review" and despite ethical wall); Pound
v. DeMera DeMera Cameron, 135 Cal. App. 4th 70, 80 (5th Dist. 2005) (ordering
vicarious disqualification of entire firm based on individual conflict of attorney who
had cone-hour meeting with counsel for opposing party three years earlier, claimed
to have discussed nothing beyond what one could learn from the pleadings, and was
never retained). Even Kirk, the case relied upon so heavily by MGA, held that a 17-
minute phone conversation between an attorney and a prospective client disqualified
that attorney from representing an adverse party in a related case after switching law
firms. See Kirk, 183 Cal. App. 4th at 790-91.
Ms. Basinger's relevant work for Mattel was far less "peripheral" than that of
numerous other attorneys who have been disqualified. There is no minimum
number of hours that an attorney must spend on a representation; even a fraction of
an hour on the same or a substantially related matter compels disqualification. ^,
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I-Enterprise, 2005
WL 757389, at *6 (disqualifying firm that hired attorney who
billed one-half
hour to the same litigation prior to switching firms); Cobra Solutions,
3 8 Cal. 4th at 845 (attorney who spent four-tenths of an hour reviewing a contract
could not be adverse to former client in related case); see also Largo, 2008 WL
53128, at * 1-5 (disqualification of entire firm despite claim that transferring
associate performed 9.8 hours
of work over 6 days as essentially "a paralegal" in a
related
matter, despite associate's testimony that he did not review anything that
would be of use in the pending litigation and despite ethical wall); ViChip Corp. v.
Lee, 2004 WL 2780170, at *3 (N.D. Cal. Dec. 3, 2004) (disqualifying law firm of
transferring attorney who billed 2. S hours on behalf of former client in related case);
Pound, 135 Cal. App. 4th at 80 (attorney who had one-hour meeting with counsel
for other side three years earlier required disqualification of firm).
MGA also suggests that Ms. Basinger's conflict is somehow diminished or
eliminated because it has been five years since she did relevant work for Mattel.
See,
^, Opp. at 6. This is plainly wrong. As Glaser Weil's counsel states, "[i]f
the same subject matter is show^l to be involved, the length of time since the former
representation is irrelevant."
Mark L. Tuft, et al., California Practice Guide:
Professional Responsibility 4:189.2 (citing cases).
No California court has ever
permitted an attorney to switch sides in a pending litigation, no matter how many
years have elapsed. See, ^, Glaxo, No. SA 10-CV-2764-MRP (FMOx), at 5-7
(firm disqualified because attorney represented opposing party in a related matter
eight years earlier); Openwave, 2010 WL 1687825, at *4-*6 (granting motion to
disqualify law firm based on attorneys' work on a substantially related case six to
ten years earlier); Cobra Solutions, 38 Cal. 4th at 853-54 (disqualifying entire San
Francisco City Attorney's Office because City Attorney, in former private practice,
spent four-tenths of an hour reviewing contract in a related matter five years earlier);
Brand v. 20th Century Ins. Co., 124 Cal. App. 4th 594, 607 (2004) (attorney
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disqualified from acting as expert because he represented opposing party 12 years
^ earlier).
MGA argument. cases other than Kirk support use of an ethical wall here.
^ MGA cites a number of other factually inapposite cases, see Opp. at 17, none of
^ which suggests that screening can overcome disqualification here:
Chambers v. Superior Court, 121 Cal. App. 3d 893 (3d Dist. 1981),
held that an ethical wall prevented vicarious disqualification of a firm that hired a
former government lawyer who had worked on the other side of similar lawsuits.
That case is distinguishable for at least two reasons. First, unlike Ms. Basinger, the
attorney never worked on the other side of the same action. Second, ethical walls
are treated differently when applied to former government attorneys, and Chambers
expressly limited its holding to that context. See id. at 902-03 (observing that if
vicarious disqualification were always the rule for former government employees,
this would severely restrict government attorneys' options for future employment);
Henriksen, 11 Cal. App. 4th at 115 (noting that "limited acceptance" of ethical walls
in California has been confined to "a very different arena that of former
government employees now in private practice").
In In re County of Los Angeles, 223 F.3d 990 (9th Cir. 2000), the
defendants in a police brutality case sought to disqualify the plaintiff's law firm
because one member of the firm, a retired magistrate judge, had presided over
settlement negotiations involving two of the defendants in a different police brutality
case. Like Chambers, County of Los Angeles is distinguishable because the conflict
did not involve the same case and because judicial officers, like former government
lawyers, are treated differently. Id. at 994 (distinguishing cases disqualifying firms
when former judge had participated in mediation or settlement efforts in the same
case); Mark L. Tuft, et al., California Practice Guide: Professional Responsibility
4:216 ("As with former judicial officers, vicarious disqualification is not imposed
as strictly on law firms hiring a former government lawyer.").
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City of Santa Barbara v. Superior Ct., 122 Cal. App. 4th 17 (2d Dist.
2004), allowed screening where an attorney formerly in private practice joined a
government entity, noting that "vicarious disqualification in the public sector
context imposes different burdens pn the affected public entities." The court limited
its holding to government employees and indeed made clear that private law firms
like Glaser Weil must be disqualified. Id. at 24 ("Were we concerned with a private
law firm, the answer would be clear: Knecht's disqualification would be mandatory
^ and would extend to her entire law firm.").
MGA's reliance on In re Complex Asbestos Litigation, Shadow Traffic
Network v. Superior Court, and Western Digital Corp. v. Superior Court,
demonstrates the absence of California authority supporting MGA's arguments
about ethical walls: none of these cases involved a conflicted attorney. See 232 Cal.
App. 3d 572 (1st Dist. 1991) (paralegal); 24 Cal. App. 4th 1067 (2d Dist. 1994)
(expert), 60 Cal. App. 4th 1471 (4th Dist. 1998) (expert).
Further, MGA' s attempts to distinguish the numerous cases cited by Mattel
holding that vicarious disqualification is required here are unconvincing. Compare
Motion at 4-8 with Opp. at 16-22. As Glaser Weil's counsel has explained, no
',California case-even after Kirk--has ever suggested that screening is permissible
where an attorney worked on the other side of the same pending case. See Mark L.
Tuft, Non-Consensual Screening for Conflicts in California, 843 PLI/Lit 35, at 6;
see also Meza v. H. Muehlstein & Co., 176 Cal. App. 4th 969, 978 (2d Dist. 2009)
("As a general rule in California, where an attorney is disqualified from
representation, the entire law firm is vicariously disqualified as well. This is
especially true where the attorney's disqualification is due to his prior representation
of the opposing side during the same lawsuit."); Henriksen, 11 Cal. App. 4th at 117
("Where an attorney is disqualified because he formerly represented and therefore
possesses confidential information regarding the adverse party in the current
litigation, vicarious disqualification of the entire firm is compelled as a matter of
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^ law."); Flatt, 9 Cal. 4th at 283 (1994) (citing Henriksen with approval for same
proposition); Kirk, 183 Cal. App. 4th at 814 (acknowledging that this is the rule).
MGA argument. Mattel's a^uments a^nst the efficacy of ethical walls are
"inconsistent " with Lutron Electronics Co., Inc. v. Crestron Electronics, Inc.
Contrary to MGA's suggestion (see Opp. at 2 n. l ), Mattel's arguments are not
inconsistent with Lutron Elecs. Co., Inc. v. Crestron Elecs., Inc., No. 2:09-CV-707
(D. Utah Nov. 12, 2010), a case involving an unsuccessful attempt to disqualify
^ Quinn Emanuel, nor does that case support Glaser Weil's attempt to avoid
^ disqualification here. Unlike Ms. Basinger, the tainted attorney in Lutron never
^ worked on the other side of the same litigation. Further, the Lutron motion was
^ governed by Utah law, and the Utah Rules of Professional Conduct expressly
^ permitted the ethical screening that had been implemented in that case. See Utah
Rule of Professional Conduct 1.10(c); see also Lutron, at 7. The only
"inconsistency" here is Glaser Weil's counsel's argument that a wall can screen a
California lawyer who moves to the opposite firm in the same case -after
publishing articles, post-Kirk, declaring that the rule in California is the opposite.
MGA ar u^ent: Disqualification would prejudice MGA and infringe u^
MGA's right to counsel o its choice. MGA is wrong that this motion is "a litigation
ploy." Opp. at 1. Glaser Weil chose to bring in an attorney who formerly
represented Mattel in this very matter just nine days before it sought to (formally)
reassociate in as counsel for MGA. "[A]n attorney should not put either himself or
his client in such a position." Global Van Lines, 144 Cal. App. 3d at 490 (rejecting
argument that court should "wait and see" if ethical wall worked and ordering
disqualification of entire firm, despite transferring attorney's claim not to have any
knowledge of the litigation). MGA's protests that disqualification would be
"drastic" and "disruptive" (see Opp. at 3, 22) are also off-base. Numerous
California state and federal courts, while acknowledging that disqualification is a
"harsh remedy," have ordered it under these circumstances. See, ^, I-Enterprise,
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2005 WL 757389, at *8 (ordering disqualification, despite claims that it would be
"harsh and unjust" at late stage of litigation and that getting new counsel up to speed
would be "prohibitively expensive"); Henriksen, 11 Cal. App. 4th at 185, 187
(rejecting arguments of prejudice and financial hardship and granting motion to
disqualify counsel two-and-a-half years into the litigation).
As the California Supreme Court has instructed, "[t]he paramount concern
must be to preserve public trust in the scrupulous administration of justice and the
integrity of the bar. The important right to counsel of one's choice must yield to
ethical considerations that affect the fundamental principles of our justice process."
People ex rel. Dept of Corr. v. SpeeDee Oil Change Sys. Inc., 20 Cal. 4th 1135,
1145 (1999); see also Largo, 2008 WL 53128, at *2 (quoting SpeeDee Oil); Cobra
Solutions, 38 Cal. 4th at 851 (former client's "overwhelming interest in preserving
the confidentiality of information imparted by counsel" overrides any burdens
imposed by disqualification); H.F. Ahmanson, 229 Cal. App. 3d at 1451 ("The court
does not engage in a `balancing of equities' between the former and current clients.
The rights and interests of the former client will prevail.").
Even if the burden on MGA were relevant-it is not any prejudice to MGA
is
minimal, given that Glaser Weil withdrew from this action (for a second time) in
February 2009-more than twenty-two months ago-and only sought to reassociate
as counsel two weeks ago. This is clearly not a case where MGA will be left
without representation (although numerous courts have ordered disqualification
even under those circumstances )-Orrick has been and will remain lead counsel.
No delay in the trial will occur, or even would be warranted, with disqualification
here.
Finally, any burden to MGA is a result of Glaser Weil's own decision: to hire
an attorney who had previously represented Mattel in this very case and in another,
substantially related matter. Glaser Weil was aware of Ms. Basinger's work for
Mattel when it hired her (Opp. at 2, 24), but it chose to hire her anyway. Glaser
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Weil and MGA must now live with the consequences of that decision. See Kirk 183
Cal. App. 4th at 816 n.37 (distinguishing the "egregious" situation of law firm that
"had been fully aware that it was hiring an attorney who had represented a defendant
in the same action").
Conclusion
Mattel respectfully requests that the Court grant its motion.
DATED: December 19, 2010 Q^INN EMANUEL URQUHART &
S LIVAN. LLP
By /^ John B. Ouinn
John B. Quinn
Attorney ys for Mattel, Inc. and
Mattel de Mexico. S.A. de C.V.
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Exhibit A
^zxierr
PAGE ^^
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#:283486
Non-Consensual Screening For Conflicts in California
sy
Mark L. Tufts
Cooper, White & Cooper IrLP
Non-consensual screening as a means of avoiding imputation of lateral lawyer
conflicts is an evolving issue in California. California historically has not recognized the
availability of screening to prevent imputation of conflicts between lawyers relocating
between private firms. See Sharp v. Next Entertainment, Xnc., 163 Cal. App. 4th 310, 438
(2008).
California currently does not have an imputation rule comparable to ABA Model
Rule 1.10, nor does California have rules that address screening in the case of former
government lawyers, {Model Rule 1.11), former judges and third party neutrals {Model
Rule 1.12) or in dealing with prospective clients (Model Rule 1.18). Instead, imputation
of conflicts of interest is a matter of common law.
See California Practice Guide:
Professional Responsibility
{The Rutter Group; A Division of West, A Thomson Renter's
Business) (2009) 4:32.
The State Bar Commission for the Revision of the Rules of Professional Conduct
recommended adoption of a modified version of ABA Model Rule 1.1 p permitting non-
consensual screening
except where the lawyer was substantially involved in the former
representation.
The State Bar Board of Governors recently declined to adopt the
Commiss'
ion's recommendation and, instead, approved a version of Model Rule 1.10 that
1 02410 Mark L. Tuft, All rights reserved.
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does not contain a screening provision. The Board's decision was based on its belief that
screening should continue to be developed through case law rather than through a nlle of
professional conduct.
Vicarious Disqualification
California courts were alnong the first to apply the imputed knowledge rule
relying in part on ABA Model Code DR 5-105(D). Clzadwiclc v. Superior Court, 106
Cal. App. 3d 108, 116 {1980), superseded by statute on other grounds in People v.
Donner, 34 Cal. 3d 141 (1983); Chansbers v. Superior Court, 121 Cal. App. 3d 893, 898
(1981}. The general rule in California is that where an attorney is disqualified, that
attorney's entire firm is disqualified as well regardless of efforts to erect an ethical wall.
Klein v. Superior Court, 198 Cai. App. 3d 894, 912-914 (1998); Henriksen v. Great
American Savings c4^ Loan, 11 Cal. App. 4th 149, i 17 {1992).
The California Supreme Court has not expressly changed the presumption of
shared confidences in successive representation cases. City & Cou^xty of San Francisco
v. Cobra Solutions, Inc.,
38 CaI.4th 839 (2006). However, based on a statement in
People ex. rel. Dept. of Corporations v. SpeeDee Oil Change Systems, Inc, 20 CaI.4th
1135, 1151-1152 (1999) (that the record lacked ail evidentiary basis for considering
whether an ethical screen could be used to avoid disqualification afthe law firm based on
the firm's disqualified "of counsel"}, the Ninth Circuit noted in I^x re County of Los
Angeles, 223 F.3d 990, 995 (9th Cir. 2000) that the Court is "sending a signal that [it]
may well adopt a more flexible approach to vicarious disqualification" ill certain cases.
Yet, the basic imputation rule remains intact. Hitachi, Ltd. 1^. Tatacng Company, 419 F.
Supp. 2d 1158,1161 (N.D. GA. 2006).
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Several courts have relaxed the imputation standard in specific situations.
Goldberg v. Warner/Chappell Music, Inc., 125 Cal. App. 4th 752 {2005} (where the
disqualified attorney leaves the firm and the prior firm shows it did not receive
confidential information}; Adams v. Aerojet-General Corp., 86 CaI. App. 4th 1324 {2001}
{where the new firm shows that the lateral attorney had no exposure to confidential
information relevant to the current action}. Thus, in so-called "double imputation"
situations, disqualification ofthe former lawyer and the lawyer's new firm is not
automatic. Frazier v. Superior Court, 97 Cal. App. 4th 23, 27 (2002); Derivi
Construction &Architecture, Inc v. Wong, 118 Cal. App. 4th 1268, 1274-1276 (2004}.
instead, a court must determine whether confidential information material to the current
matter would normally have been imparted to the attorneys by virtue of the nature of the
former representation and the lawyer's involvement. Adams, supra, 86 Cal. App. 4th at
1339; see also, Los Angeles Bar Assn Formal Opinion 501 (1999); ABA Formal
Opinion 99-145.
To determine whether disqualification of a former attorney or the attorney's new
firm is appropriate, California courts have developed a "modified substantial relationship
test." The central focus of the testis whether confidential information was reasonably
likely to have been imparted to the attorney while at the former fine. Adams, supra, 86
Cal. App. 4th at 1340; Frazier, supra, 97 Cal. App. 4th at 33-34; Fauglin v. Perez, 135
Cal. App. 4th 592, 603; Ochoa v. Fordel, Ine.> 146 Cal. App. 4th 898, 908. The
"modified substantial relationship test" is similar in many respects to ABA Model Rule
1.9(b), which the California State Bar Rules Revision Commission has recommended for
adoption, and Restatement Third, The Law Governing Lawyers ^ 124, Comment e(ii); see
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also Silver Chrysler Plymouth, Inc. v. Chrysler Motor Corp., 518 F.2d 751, 757 {2d. Cir.
1975).
Where a showing is made that it is not reasonably likely that material confidential
information was imparted to the attorney at the former firm, a rebuttable presumption
arises and the firm-switching attorney has the burden of proving the attorney did not have
actual exposure to confidential information materraI to the current matter. Adams, supra,
86 Cal. App. 4th at 1341; Ochoa, supra, 146 Cal. App. 4th at 911-912.
Non-Consensual Screening for Migrating Lawyers
Courts in California will permit screening in certain contexts. For example, a law
firrn will not be vicariously disqualified because a former judicial officer who heard a
portion of the case subsequently joins a firm of one of the parties so long as no
confidences were revealed to the judicial officer by the opposing side and appropriate
screening procedures are established. Higdon v. Superior Court, 227 CaI. App. 3d 1b67
{1991); In re County of Los Angeles, supra, 223 F. 3d 990. However, screening will not
avoid disqualification if the former judicial officer participated in settlement discussions
in the case. Cho v. Superior Court, 39 Cal. App. 4th i 13 (1995).
Screening procedures may also protect against the presumption of shared
confidences when hiring former government lawyers (Chambers v. Superior Court, 121
Cal. App. 3d 893 {1981)} as well as private lawyers joining a government office . City of
Santa Barbara v. Superior Court, 122 Cal. App. 4th 17 (2004}. However, a public office
may not avoid vicarious disqualification by using screening procedures to shield a
conflicted lawyer who becomes the head of the office. Cobra Solutions, supra, 38 CaI.
4th at 850 .
Screening procedures can also be effective in overcoming the presumption of
shared confidences when hiring an opposing counsel ' s former paralegal or secretary {Iii re
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Complex.4sbestos Litigation, 232 Cal. App. 3d 572 ( 1991}} or employing an expert
previously consulted by the other side. Shadow Traffic Network u. Superior Court, 24
Cal. App. 4th 1067, 1087 (1994}; Western Digital Corp, u. Superior Court, 60 Cal. App.
4th 1471 ( 1998).
Recently, the Second District Court of Appeal decided in Kirk v. First American
Title ins. Co., 183 Cal.App.4th 776 {2010), that imputation of conflicts may, in certain
circumstances, be prevented in private sector lateral transfers through the use of timely
and effective screening procedures. In Kirk, counsel for plaintiffs in four class actions
brought against a title insurance company contacted an attorney for another insurance
company to serve as plaintiffs' consultant. The attorney declined the assignment and later
joined a private law firm. Plaintiffs' counsel re-contacted the attorney at the firm and the
attorney again declined the assignment as plaintiffs' consultant. Later, lawyers for the
defendant in the class action cases joined the same law firm. It was undisputed that the
tainted lawyer had acquired material confidential information in communications with
plaintiffs' counsel . The court, nevertheless, found that, under these facts, vicarious
disqualification of the law firm was not automatic and could be rebutted by proper
screening measures. Kirk, supra, 183 Ca1.App.4th at 786, 814.
The facts in Kirk involve a "prospective" client conflict situation rather than a
former client conflict. Kirk, supra, 183 Cal.App.4th at 78b-788; see Model Rule 1.18.
California's Rules Revision Commission has recommended adoption of a version of
Model Rule 1.18, which the Board approved but, again, without the screening provision
in Model Rule 1.8(d)(2). The court's holding in Kirlc, however, recognizing screening as
an available means of avoiding vicarious disqualification is not lizxzited to the prospective
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client conflict situation. See, e.g., Kirk, supra, 183 Cal.App.4th at 814 {"In sum, we have
concluded that, when a tainted attorney moves from one private law firm to another, the
law gives rise to a rebuttable presumption of imputed knowledge to the law fine, which
may be rebutted by evidence of effective ethical screening."). Under Kirk, vicarious
disqualification is still determined on a case-by-case basis and screening may be a viable
solution except in the situation where the tainted attomey was actually involved in the
prior representation and switches sides in the same case. In that instance, no amount of
screening will be sufficient and the presumption of imputed knowledge is conclusive.
Kirk, supra, 183 Cai.App.4th at 814; and see Henrilrsen v. Great American Savings &
Loan (1992) 11 Cal.App.4th 109.
While the Supreme Court has not addressed whether vicarious disqualification of
a tainted lawyer's new firm can be avoided bynon-consensual screening in the private
sector, the Supreme Court denied a petition for review in Kirk and a request that the
decision be de-published. Accordingly, Kirk is good Iaw in California.
What Constitutes an Effective Ethical Screen
What constitutes an effective ethical wall varies from case-to-case. However, as
the court in Kirk explained, two elements are critical: the ethical wall must be established
as early as possible and preventive measures must be imposed to guarantee that
confidential information will not be conveyed. Kirk, supra, 183 Ca1.App.4th at 810. It is
generally understood that a screen or ethical wall means "the isolation of a lawyer from
any participation in a matter through the timely imposition of procedures within a Finn
that are reasonably adequate under the circumstances to protect information that the
isolated lawyer is obligated to protect under the [applicable ethics rules] or other law."
^^
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ABA Model Rule 1.0(k).
Typical features of an effective ethical wall include: (1) physical, geographic and
departmental separation of attorneys and staff; (2) prohibitions against and sanctions for
discussion of confidential information; (3) established rules and procedures for
preventing access to confidential information and files; (4) procedures preventing a
disqualified attorney from sharing in the profits from the representation; (5) lack of any
supervisory relationship between the tainted attorney and the lawyers involved in the
current matter or vice-versa; and (6) reasonable notice to the client. Kirlc, supra, 183
Ca1.App.4th at 810-813; Henriksen v. Great American Savings & Loan, 11 Ca1.App.4t11
109, 116, fn. 6 (1992} ;City of Santa Barbara v. Superior COUI^t, 122 Cal.App.4th 17, 27
(2004).
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EXHIBIT D


UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
CV-90 (12/02) CIVIL MINUTES - GENERAL Page 1 of 1
Case No. CV 04-9049 DOC (RNBx) Date December 20, 2010
Title MATTEL INC. -V- MGA ENTERTAINMENT INC., ET AL
Present: The Honorable David O. Carter, U.S. District Judge
Julie Barrera, Kathy Peterson Debbie Gale, Jane Sutton, Deborah Parker N/A
Deputy Clerk Court Reporter / Recorder Tape No.
Attorneys Present for Plaintiffs: Attorneys Present for Defendants:
Michael Quinn
Michael Zeller
William Price
Annette Hurst
Thomas McConville
Patricia Glaser
Stephen Kaus
Alexander Cote
Mark Overland
Proceedings: EVIDENTIARY HEARING ON MATTELS MOTION TO DISQUALIFY GLASER
WEIL [9359]; HEARING (NON-EVIDENTIARY) ON MATTELS MOTION FOR
PARTIAL SUMMARY JUDGMENT ON MGAS COUNTERCLAIMS-IN-REPLY
The cause is called and counsel state their appearances. Arguments heard by John Quinn and
Stephen Kaus on Mattels Motion to Disqualify Glaser Weil. The courtroom is cleared for in camera
hearing.
Sealed in camera evidentiary hearing held. Exhibit and witness list filed.
Further sealed in camera hearing held with John Quinn, Michael Zeller and William Price.
The Court permits Patricia Glaser to remain as co-lead counsel for MGA but grants Mattels
Motion to Disqualify Glaser Weil. The Court orders the parties to return on December 21, 2010 at 10:00
a.m. to discuss conditions associated with Ms. Glaser remaining as co-lead counsel.
All parties return to the courtroom and hearing is held on Mattels Motion for Partial Summary
Judgment on MGAs Counterclaims-in-Reply, which is taken under submission.
evid: 2
non-evid: 1
: 00
56
Initials of Preparer kp
Case 2:04-cv-09049-DOC-RNB Document 9531 Filed 12/20/10 Page 1 of 1 Page ID
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EXHIBIT E


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04558.23511/4317865.4

MEMO. ISO PLAINTIFF'S MOTION
TO DISQUALIFY MCKOOL SMITH
QUINN EMANUEL URQUHART & SULLIVAN, LLP
Frederick A. Lorig (Bar No. 057645)
fredlorig@quinnemanuel.com
Steven M. Anderson (Bar No. 144014)
stevenanderson@quinnemanuel.com
Christopher A. Mathews (Bar No. 144021)
chrismathews@quinnemanuel.com
Michael W. Gray (Bar No. 238669)
michaelgray@quinnemanuel.com
865 South Figueroa Street, 10th Floor
Los Angeles, California 90017-2543
Telephone: (213) 443-3000
Facsimile: (213) 443-3100

Attorneys for Plaintiff
PACKETVIDEO CORPORATION


UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF CALIFORNIA

PACKETVIDEO CORPORATION, a Delaware
corporation,

Plaintiff,

v.

SPOTIFY USA INC., a Delaware corporation,
SPOTIFY LIMITED, a United Kingdom
corporation, and SPOTIFY TECHNOLOGY
SARL, a Luxembourg corporation,

Defendants.
CASE NO. 3:11-cv-1659 IEG WMc

MEMORANDUM OF POINTS AND
AUTHORITIES IN SUPPORT OF PLAINTIFF
PACKETVIDEO CORPORATION'S MOTION
TO DISQUALIFY MCKOOL SMITH FROM
SERVING AS COUNSEL FOR
DEFENDANTS

Place: Courtroom 1
Judge: Hon. Irma E. Gonzalez



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04558.23511/4317865.4
-i-
MEMO. ISO PLAINTIFF'S MOTION
TO DISQUALIFY MCKOOL SMITH
TABLE OF CONTENTS
Page

I. INTRODUCTION ................................................................................................................. 1
II. STATEMENT OF FACTS .................................................................................................... 4
A. PacketVideo And Mr. Chambers, a Partner in McKool Smith's Dallas
Office, Arranged A Phone Call To Discuss PacketVideo's Patent
Infringement Action Against Spotify ........................................................................ 4
B. In His July 7, 2011 Call With Mr. Chambers, PacketVideo's General
Counsel Disclosed Privileged And Confidential Information, And Obtained
Legal Advice, Concerning This Action ..................................................................... 5
C. McKool Smith Created Work Product, And Provided PacketVideo With
Specific Legal Advice About This Action In A Follow-Up Call .............................. 7
D. After PacketVideo Retained Alternative Counsel, McKool Smith Switched
Sides And Appeared On Behalf Of Spotify In This Action ...................................... 8
III. ARGUMENT ...................................................................................................................... 10
A. California Law Governs Whether McKool Smith, As Prior PacketVideo
Counsel, Can Switch Sides To Represent Spotify In This Action .......................... 10
B. McKool Smith Formed An Attorney-Client Relationship With PacketVideo
When It Obtained Confidential Information And Provided Legal Advice,
Barring Its Representation Of Spotify In This Action ............................................ 12
C. California Law Mandates Vicarious Disqualification Of The Entire McKool
Smith Law Firm, Regardless Of Efforts To Erect An Ethical Wall ........................ 13
IV. CONCLUSION ................................................................................................................... 14

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04558.23511/4317865.4
-ii-
MEMO. ISO PLAINTIFF'S MOTION
TO DISQUALIFY MCKOOL SMITH
TABLE OF AUTHORITIES
Page(s)
Cases
Analytica, Inc. v. NPD Research, Inc.,
708 F.2d 1263 (7th Cir. 1983) ....................................................................................................14
Beery v. State Bar,
43 Cal. 3d 802 (1987) .................................................................................................................12
City of Nat'l Bank v. Adams,
96 Cal. App. 4th 315 (2002) .......................................................................................................14
In re County of Los Angeles,
223 F.3d 990 (9th Cir. 2000) ......................................................................................................14
In re Dupont's Estate,
60 Cal. App. 2d 276 (1943) ........................................................................................................12
Flatt v. Superior Court,
9 Cal. 4th 275 (1994) ..................................................................................................................13
Henriksen v. Great America Savings and Loan et al.,
11 Cal. App. 4th 109 (1992) .....................................................................................11, 12, 13, 14
Hitachi, Ltd. v. Tatung Co.,
419 F. Supp. 2d 1158 (N.D. Cal. 2006) ...............................................................................11, 13
Laryngeal Mask Co. Ltd. v. Ambu A/S,
No. 07-CV-1988-DMS (NLS), 2008 WL 558561
(S.D. Cal. Feb. 25, 2008) ..................................................................................2, 3, 11, 12, 13, 14
Lucent Tech. Inc. v. Gateway, Inc.,
No. 02CV2060-B(CAB), 2007 WL 1461406 (S.D. Cal. May 15, 2007) ........................10, 11, 13
People ex rel. SpeeDee Oil Change Sys., Inc.,
20 Cal. 4th 1135 (1999) ..............................................................................................1, 11, 12, 14
Statutes
Cal. R. Prof. Conduct 1-100 (D) (2) .................................................................................................11
Fed. R. Civ. P. 5(b)(3) ......................................................................................................................16
Local Rule 5.4 ..................................................................................................................................16
S.D. Cal. Civ. R. 83.4 (b) .................................................................................................................11

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04558.23511/4317865.4
-1-
MEMO. ISO PLAINTIFF'S MOTION
TO DISQUALIFY MCKOOL SMITH
I. INTRODUCTION
Plaintiff PacketVideo Corporation ("PacketVideo") respectfully moves the Court to correct
"the most egregious conflict of interest" possible between a client and its attorneys: an attorneys'
"representation of clients whose interests are directly adverse in the same litigation." People ex rel.
SpeeDee Oil Change Sys., Inc., 20 Cal. 4th 1135, 1147 (1999). As discussed hereinafter,
Defendants' lead counsel, McKool Smith, previously represented Plaintiff in connection with this
litigation and has now switched sides, filing an answer on behalf of Defendants Spotify USA and
Spotify Limited. Moreover, McKool Smith "pitched" the case to Defendants after Plaintiff
decided to file its Complaint in the present district.
In early July of 2011, PacketVideo's General Counsel, Joel Espelien, contacted a partner in
McKool Smith's Dallas office to investigate the possibility of hiring McKool Smith to represent
PacketVideo in patent infringement action against Defendants Spotify USA Inc., Spotify Limited,
and Spotify Technology SARL (collectively, "Spotify"). Mr. Espelien participated in several
private discussions with Garret Chambers, a partner at McKool Smith, through which
PacketVideo and the McKool Smith firm unequivocally formed an attorney-client relationship.
During a July 7
th
call, Mr. Espelien revealed extensive confidential information to Mr. Chambers
on a range of strategically sensitive issues, and Mr. Chambers provided legal advice. During a
subsequent call, Mr. Chambers provided additional legal advice based on confidential
PacketVideo information obtained from Mr. Espelien, and after conducting legal research and
consulting with firm colleagues. Throughout their meeting, Mr. Espelien understood and believed
that the substantial confidential information he revealedand the legal advice he obtained
would be treated in confidence as a privileged communication between attorney and client, and
Mr. Chambers never indicated otherwise.
Because PacketVideo decided to file the present action in its home district, the Southern
District of California, Mr. Espelien ultimately decided to not use McKool Smith, a well known
Texas firm specializing in patent cases in the Eastern District of Texas. PacketVideo filed its
Complaint on July 27, 2011 (D.I. 1). The following week, McKool Smith contacted both
Mr. Espelien and PacketVideo's outside counsel to advise that, with full knowledge of Mr.
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04558.23511/4317865.4
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MEMO. ISO PLAINTIFF'S MOTION
TO DISQUALIFY MCKOOL SMITH
Chambers' prior confidential discussions, McKool Smith intended to pitch Spotify for the chance
to represent it in this litigation. And while McKool Smith claimed that its prior discussions with
Mr. Espelien did not create a conflict that would prevent their being able to represent Spotify,
Mr. Chambers asked Mr. Espelien to agree that an ethical wall would eliminate any issue (a
request that Mr. Espelien rejected). On August 11, 2011, PacketVideo's counsel wrote to McKool
Smith to confirm Mr. Espelien's refusal, explaining that because it would be unethical for McKool
Smith to act adverse to its former client, PacketVideo would not agree to waive McKool Smith's
conflict of interest. Declaration of Christopher A. Mathews ("Mathews Decl.") Exh. A, 3.
1

On September 6, 2011, once Spotify filed its Answer (D.I. 14), PacketVideo learned for
the first time that attorneys from McKool Smith's Dallas officethe same office where
Mr. Chambers is locatedwere representing Spotify in this action leaving Plaintiff with no choice
but to file this motion since McKool Smith, through its privileged conversation with Plaintiff's
General Counsel, is aware of Plaintiff's settlement strategy and other privileged issues identified in
its General Counsel's declaration which will be filed in camera if the Court so approves.
2

The California Rules of Professional Conduct mandates automatic disqualification of the
entire McKool Smith law firm. This was made clear most recently in Laryngeal Mask Co. Ltd. v.
Ambu A/S, No. 07-CV-1988-DMS (NLS), 2008 WL 558561 (S.D. Cal. Feb. 25, 2008), a recent
Southern District of California decisionof which McKool Smith was previously advised, see

1
As with the Declaration of Mr. Espelien, see n. 2, infra, PacketVideo has filed with a
Motion to Seal the unredacted version of Mr. Mathews' Declaration. PacketVideo has
electronically filed a redacted version of Mr. Mathews' Declaration for the public record.
2
For the Court's in camera review, PacketVideo has filed with a Motion to Seal the
unredacted version of Mr. Espelien's Declaration, which describes in detail the specific
confidences and legal advice shared between Mr. Espelien and Mr. Chambers during McKool
Smith's representation of PacketVideo in July 2011. In the present motion, which is filed without
redaction, PacketVideo sets forth only general topics of discussion, lest disclosure of more specific
information defeat the entire purpose of this Motion. See, e.g., Laryngeal, 2008 WL 558561, at *5
("in camera review is an appropriate method for a moving party to present its evidence concerning
the confidences and legal advice discussed at the preliminary interview," whereas "Plaintiffs are
not required to remind Defendants of specific statements that constitute confidences in order to
meet their burden of proof on the disqualification motion.") (citations omitted). PacketVideo has
electronically filed a redacted version of Mr. Espelien's Declaration for the public record.
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MEMO. ISO PLAINTIFF'S MOTION
TO DISQUALIFY MCKOOL SMITH
Mathews Decl., Exh. Adisqualifying an entire law firm based on strikingly similar
circumstances to those presented here. In Laryngeal, the Plaintiff met with attorneys to discuss a
potential patent infringement action, just as PacketVideo's General Counsel met with McKool
Smith here. Id. at *1. And while in both cases the Plaintiff revealed confidential information and
received legal advice in return, in the present situation, McKool Smith's attorney went even
furtherMr. Chambers obtained confidential information and provided legal advice over several
days and multiple phone calls, consulted with colleagues in his Dallas office, and conducted
specific legal research for the sole purpose of providing legal advice on a critical strategic
question. Id. And just as in Laryngeal, after attempting to erect an ethical screen around the
attorneys who met with the Plaintiff, attorneys from the same office of the same firm appeared on
behalf of Defendants in the very same action, just as McKool Smith has done here on behalf of
Spotify. Id. at *3.
Applying California law, this Court in Laryngeal held that the client's disclosure of
confidential information, and the receipt of legal advice, necessarily established an attorney-client
relationship between the Plaintiff and the attorneys at the meeting, automatically disqualifying
those attorneys from representing the Defendant in the very same action. Id. at *6. The court
further explained that California law mandated vicarious disqualification of the attorneys' entire
law firm, regardless of any efforts to erect an ethical wall. Id. at *7. Finally, the Laryngeal court
found that, despite Defendant's arguments to the contrary, in California an ethical wall does not
prevent vicarious disqualification when another attorney from a firm's same office had represented
the opposing side in the very same action. Id.
For the same reasons explained in Laryngeal, and explored at length in PacketVideo's prior
correspondence to McKool Smith (Mathews Decl., Exh. A), PacketVideo respectfully requests
that the Court prevent this "most egregious conflict of interest" and disqualify the entire McKool
Smith law firm from representing Spotify in connection with this action.
3


3
Earlier on September 6, 2011, counsel for PacketVideo had worked with James Hardin, an
attorney at Spotify's counsel, Newport Trial Group, to negotiate and prepare a Joint Motion for
(footnote continued)
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04558.23511/4317865.4
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MEMO. ISO PLAINTIFF'S MOTION
TO DISQUALIFY MCKOOL SMITH
II. STATEMENT OF FACTS
A. PacketVideo And Mr. Chambers, a Partner in McKool Smith's Dallas
Office, Arranged A Phone Call To Discuss PacketVideo's Patent
Infringement Action Against Spotify

Because Spotify first began to offer its music streaming services in the Netherlands,
starting in 2007, and PacketVideo (through its wholly-owned Swiss subsidiary) brought a patent
infringement action against Spotify in the Netherlands (on a related European patent) earlier this
year. The present lawsuit involves Spotify's infringement of U.S. Patent No. 5,636,276 ("the '276
patent") through the music streaming service Spotify recently began to offer in the United States,
in July 2011.
PacketVideo began to suspect several months ago that Spotify was preparing to offer its
music streaming service in the United States. In early July of 2011, believing the launch of
Spotify's service in the Unites States was then imminent, PacketVideo General Counsel Joel
Espelien began the search for counsel to represent PacketVideo in a patent infringement action
based on its infringement of the '276 patent. Declaration of Joel Espelien ("Espelien Decl."), 2-
4. For confidential reasons described in Mr. Espelien's Declaration, McKool Smith was the first
and only law firm Mr. Espelien considered to represent PacketVideo. Espelien Decl., 5. After
substantial research, Mr. Espelien was very impressed with McKool Smith and, in particular, with
Garret W. Chambers, a Principal in the firm's Dallas office and an experienced patent litigator.
Initially, Mr. Espelien contacted Mr. Chambers by email to determine whether McKool
Smith would be interested in representing PacketVideo in this action. Espelien Decl., 5-6. On
July 5, 2011, Mr. Chambers called Mr. Espelien and explained he and McKool Smith were

Temporary Stay (D.I. 13). While Mr. Hardin stated that he intended to file answers on behalf of
Spotify, at no time did Mr. Hardin indicate that McKool Smith would appear as counsel of record
on Spotify's answer. While PacketVideo still believes that good cause exists for the requested 90
day stayto allow the parties to continue their settlement discussionsbecause of the sensitive
and confidential nature of the strategic information shared with McKool Smith, and the
seriousness of the conflict issues created by McKool Smith's current representation of Spotify,
PacketVideo respectfully requests that the Court hear the present motion to disqualify even if the
Court otherwise agrees to grant the parties' request for a temporary stay of this action.
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interested, but first needed to run a conflicts check to verify there was no reason McKool Smith
could not represent PacketVideo. To enable Mr. Chambers to run the conflicts check,
Mr. Espelien explained that the action would be against Spotify based on its infringement of the
'276 patent. Espelien Decl., 7. Mr. Chambers and Mr. Espelien ultimately arranged a July 7,
2011 meeting via phone to discuss specific details about PacketVideo's action against Spotify.
Espelien Decl., 8.
B. In His July 7, 2011 Call With Mr. Chambers, PacketVideo's General
Counsel Disclosed Privileged And Confidential Information, And
Obtained Legal Advice, Concerning This Action

During a July 7, 2011 telephone call, Mr. Espelien and Mr. Chambers spoke privately for
approximately 45 minutes. Espelien Decl., 8. After Mr. Chambers explained there were no
potential conflicts of interest to prevent McKool Smith from representing PacketVideo against
Spotify, he and Mr. Espelien spent essentially the entire call discussing strategic considerations
and/or legal issues concerning this action. Espelien Decl., 9. Importantly, at no point during the
meeting did Mr. Chambers ever warn or suggest that Mr. Espelien should not share confidential or
strategically sensitive information about PacketVideo's planned action against Spotify. Espelien
Decl., 10. In fact, Mr. Chambers actively sought confidential information from Mr. Espelien at
several points during the call. With the understanding and belief that their conversation was a
privileged and confidential communication between an attorney and client, Mr. Espelien
proceeded as he would in any other discussion with counsel; namely, he intentionally revealed
substantial privileged and confidential information to Mr. Chambers, and Mr. Chambers provided
legal advice based on the information he was provided. Espelien Decl., 10-11.
As described in greater detail in the unredacted version of Mr. Espelien's Declaration,
during the meeting Mr. Espelien disclosed privileged and confidential informationand obtained
Mr. Chambers' legal adviceon a range of important issues concerning this action:
Mr. Espelien revealed confidential information concerning the general context of
PacketVideo's action against Spotify. Espelien Decl., 12.
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Mr. Chambers soughtand Mr. Espelien disclosedconfidential information
regarding the ultimate objective of the action. Espelien Decl., 13.
Mr. Espelien revealed confidential information with respect to PacketVideo's
estimate of the value of the '276 patent, and its strategic settlement position vis--
vis Spotify. Espelien Decl., 14.
Mr. Espelien disclosed confidential strategic information about the specific timing
of PacketVideo's action against Spotify. Espelien Decl., 8, 15.
Mr. Espelien revealed confidential information concerning potential forums for
PacketVideo's action against Spotify. Mr. Chambers soughtand Mr. Espelien
disclosedinformation about PacketVideo's operations. Using this information,
Mr. Chambers provided his legal advice. Together, Mr. Espelien and
Mr. Chambers reached a conclusion concerning potential forums for this action.
Espelien Decl., 20-21.
Mr. Espelien revealed confidential strategic information regarding potential venues
for this action. Mr. Chambers soughtand Mr. Espelien disclosedinformation
concerning Spotify's and PacketVideo's operations. Based on this information,
Mr. Chambers provided legal advice concerning potential venues. Espelien Decl.,
16-18. However, to enable Mr. Chambers to provide more definitive legal
advice on this important question, Mr. Chambers advised Mr. Espelien that he
would further discuss the venue question with his colleagues. Espelien Decl., 19.
As revealed in a voicemail left by Bradley Caldwell, another partner in the Dallas
office of McKool Smith, Mr. Chambers apparently shared this strategic information
regarding potential venues for this action with others in his office. Declaration of
Christopher A. Mathews ("Mathews Decl.") 2.
4


4
As with the Declaration of Mr. Espelien, PacketVideo has filed under seal the unredacted
version of Mr. Mathews' Declaration, which includes a transcription of Mr. Caldwell's August 4,
(footnote continued)
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Throughout their meeting, Mr. Espelien understood and believed that the confidential
information he revealedand the legal advice he obtainedwould be treated in confidence as a
privileged communication between attorney and client, and Mr. Chambers never said or did
anything to suggest otherwise. Rather, Mr. Espelien's belief was reaffirmed by the proposed next
stepnamely, Mr. Chambers would confer with his colleagues concerning the question of venue,
in light of the confidential information Mr. Espelien had revealed, and would get back to
Mr. Espelien shortly with more definitive legal advice. Mr. Espelien was thoroughly impressed
with Mr. Chambers, and he expected McKool Smith would represent PacketVideo in its action
against Spotify, depending on certain outstanding issues. Espelien Decl., 22.
C. McKool Smith Created Work Product, And Provided PacketVideo
With Specific Legal Advice About This Action In A Follow-Up Call

Immediately following the call, Mr. Espelien researched the venue issue in light of the
information Mr. Chambers had provided during the call, and ultimately came to a tentative
conclusion. That same day, Mr. Espelien sent Mr. Chambers an email explaining his tentative
conclusion, asking Mr. Chambers to confirm that his conclusion was correct. Espelien Decl.,
Ex. 1, 23.
Soon thereafter, Mr. Chambers called Mr. Espelien and they spoke privately again by
phone. Espelien Decl., 24. During this follow-up call, Mr. Chambers confirmed that he had
discussed the venue question with his colleagues, and expressed his resulting legal advice in
response to the specific questions Mr. Espelien had posed. Mr. Espelien understood and believed
that Mr. Chambers was providing his informed legal advice, based on work product that included
Mr. Chambers' legal research and discussions with his colleagues, and Mr. Espelien expected this
legal advice would be treated as privileged and confidential. Id.
In light of the legal advice he received, Mr. Espelien disclosed more privileged and
confidential information concerning PacketVideo's operations and potential venues for its action

2011 voicemail message to Mr. Mathews. That Mr. Chambers had shared confidential
information with others at his firm is evident from Mr. Caldwell's voicemail.
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against Spotify. See, generally, Espelien Decl., 14-24. Before ending the call, Mr. Espelien
thanked Mr. Chambers for his advice, and explained he would need to think further about the
appropriate venue and most suitable counsel to represent PacketVideo for this action. Espelien
Decl., 25.
D. After PacketVideo Retained Alternative Counsel, McKool Smith
Switched Sides And Appeared On Behalf Of Spotify In This Action

Based on the legal advice he received, Mr. Espelien chose to expand his search for suitable
counsel to represent PacketVideo in its action against Spotify. Mr. Espelien interviewed several
other law firms, ultimately appointing PacketVideo's current counselQuinn Emanuelto bring
this action against Spotify in the Southern District of California. Later in July, Mr. Chambers
contacted Mr. Espelien expressing continued interest in representing PacketVideo, but
Mr. Espelien had already shifted his efforts and therefore did not respond. Espelien Decl., 26.
PacketVideo filed this action against Spotify on July 27, 2011. On August 2, 2011,
Mr. Chambers sent an email followed by increasingly persistent phone messages indicating he
needed to talk to Mr. Espelien. When they finally spoke over a bad cell phone connection,
Mr. Chambers quickly explained that McKool Smith intended to represent Spotify in this very
action, and that he just wanted to make sure Mr. Espelien would not have any objection. Taken
aback, Mr. Espelien immediately recognized the serious conflict of interest this situation
presented, and was especially shocked that Mr. Chambers would seek oral agreement on such an
important issue over the phone. Mr. Espelien explained to Mr. Chambers that, given the extensive
conversations they had shared concerning PacketVideo's strategy concerning a patent infringement
lawsuit against Spotify, he was certainly not comfortable with Mr. Chambers having any
involvement in Spotify's representation in the present action. Espelien Decl., 27.
Tellingly, Mr. Chambers acknowledged the conflict of interest created by his discussions
with Mr. Espelien, explaining he understood Mr. Espelien's concerns, and that this was why
McKool Smith would implement an ethical wall to screen Mr. Chambers off from the firm's
representation of Spotify. Although Mr. Chambers was unclear during the call about what exactly
he wanted from Mr. Espelien, at no time did he ask for a waiver of the conflict of interest, and
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Mr. Espelien never agreed to provide one. Espelien Decl., 27. Mr. Espelien ended the call
explaining he was still unsure of what he was being asked for, but that if Mr. Chambers was
requesting a waiver of McKool Smith's conflict of interest based on the imposition of an ethical
wall, Mr. Chambers needed to send the waiver in writing and Mr. Espelien would review it.
Espelien Decl., 27.
On August 4, 2011, another McKool Smith attorney, Bradley Caldwell, contacted
PacketVideo's outside trial counsel, leaving a voicemail message. Mathews Decl., 2. In his
message, Mr. Caldwell acknowledges that Mr. Chambers discussed with Mr. Espelien the
possibility of bringing an action against Spotify, confirms his receipt (apparently from
Mr. Chambers) of confidential strategic information that Mr. Espelien revealed regarding potential
venues for this action, confirms the possibility that Mr. Chambers' discussions with Mr. Espelien
could raise a conflict of interest for McKool Smith, and requests that PacketVideo's counsel get
back to him because they would like to "pitchthe Spotify side of the case" but didn't "want to
put them in a bad situation where everybody's briefing some disqualification motion." Id.
After consultation with his counsel at Quinn Emanuel and also with his PacketVideo
colleagues, Mr. Espelien understandably concluded he was not comfortable with McKool Smith
representing Spotify. Based on his phone conversation with Mr. Chambers, Mr. Espelien expected
Mr. Chambers to send a formal written request for a conflict waiver, and in response Mr. Espelien
planned to tell Mr. Chambers that he would not waive the conflict of interest. But on August 9,
Mr. Espelien received only a very brief email from Mr. Chambers, describing an internal draft of
an ethical wall memorandum that McKool Smith apparently intended to implement in an effort to
insulate the firm from Mr. Chambers' clear conflict of interest. Espelien Decl., Ex. 2, 28.
Despite mischaracterizing the earlier phone conversation by incorrectly suggesting Mr. Espelien
would agree to McKool Smith's representation of Spotify if Mr. Chambers were screened off by
an ethical wall, Mr. Chambers' email also reaffirms the clear conflict of interest should
Mr. Chambers himself be involved in the representation of Spotify: "As I mentioned, we were
certain there would not be a conflict for my firm if other McKool Smith lawyers wanted to
represent SpotifyI am glad you did not see any issue provided I did not work on the case." Id.
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Yet, rather than requesting a formal written waiver of this clear conflict, Mr. Chambers' email
simply concludes: "my colleagues are proceeding to work with Spotify." Id.
Recognizing the quickly escalating situation, Mr. Espelien forwarded the email to
PacketVideo's current counsel, pointing out Mr. Chambers' mischaracterization of his phone
conversation and instructing that PacketVideo was not willing to waive the conflict of interest
under any circumstances. On August 11, 2011, PacketVideo's counsel, Fred Lorig, contacted
Mr. Chambers on PacketVideo's behalf. Mathews Decl., Ex. A, 3. Mr. Lorig's letter
unambiguously states: "given McKool Smith's exposure to PacketVideo's litigation strategy and
evaluation of the merits, PacketVideo is not willing to waive McKool Smith's conflict of interest."
Id.
On August 18, 2011, James Hardin, an attorney at Newport Trial Group, negotiated an
extension of time until September 6, 2011, to answer the complaint, and the Newport Trial Group
firm filed a motion for an extension of time on behalf of Spotify. (D.I. 9) McKool Smith did not
appear as counsel of record for Spotify on this motion. Thereafter, the Newport Trial Group and
Plaintiff's counsel agreed to file a joint motion to stay this case to allow the parties to discuss
settlement. Shortly after that stipulation was filed with the Court, McKool Smith filed an answer
in this case thus necessitating this motion. Thus., despite Mr. Chambers' acknowledgement of this
clear conflict of interest, and PacketVideo's justified refusal to grant a waiver, attorneys from
Mr. Chambers' McKool Smith Dallas office formally appeared on the other side of this action in
the Answer of Defendant Spotify USA, Inc. and Spotify Limited to Complaint, filed on
September 6, 2011, leaving PacketVideo with no choice but to bring the present Motion to
Disqualify McKool Smith.
III. ARGUMENT
A. California Law Governs Whether McKool Smith, As Prior
PacketVideo Counsel, Can Switch Sides To Represent Spotify In This
Action

All attorneys from any jurisdiction appearing before this Court are "subject to California
law as it pertains to professional conduct." Lucent Tech. Inc. v. Gateway, Inc., No. 02CV2060-
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B(CAB), 2007 WL 1461406, at *2 (S.D. Cal. May 15, 2007) (disqualifying entire firm because
"disqualification is required under California law, and consistent with Ninth Circuit analyses" with
regard to "an imputed conflict created in the context of a single on-going litigation"); see also Cal.
R. Prof. Conduct 1-100 (D) (2) ("As to lawyers from other jurisdictions who are not members:
These rules shall also govern the activities of lawyers while engaged in the performance of lawyer
functions in this state"); S.D. Cal. Civ. R. 83.4 (b) ("Any attorney permitted to practice in this
court must be familiar with and comply with the standards of professional conduct required of
members of the State Bar of California, and decisions of any court applicable professional conduct
which are now adopted as standards of professional conduct of this court").
Accordingly, "[m]otions to disqualify counsel are decided under [California] state law."
Hitachi, Ltd. v. Tatung Co., 419 F. Supp. 2d 1158, 1160 (N.D. Cal. 2006) (applying "established
rule in California [] that where an attorney is disqualified from representing a client because that
attorney had previously represented a party with adverse interests in a substantially related matter
that attorney's entire firm must be disqualified as well, regardless of efforts to implement an
ethical wall"); see also Laryngeal, 2008 WL 558561 (applying California law to disqualify entire
firm, despite recognizing at n. 6 that ethical rules of District of Columbia, where attorneys in
question practiced, might not require disqualification); Henriksen v. Great America Savings and
Loan et al., 11 Cal. App. 4th 109, 113 (1992) (upholding vicarious disqualification of entire law
firm under California law "where an attorney is disqualified because he formerly represented and
therefore possesses confidential information regarding the adverse party in the current litigation").
Subject to and consistent with California law, "the decision to disqualify counsel for
conflict of interest is within the trial court's discretion." Hitachi, 419 F.Supp.2d at 1160. In
exercising this discretion, the "paramount concern must be to preserve public trust in the
scrupulous administration of justice and the integrity of the bar." SpeeDee, 20 Cal. 4th at 1145.
And "it is axiomatic that an attorney must avoid even the appearance of a conflict of interest."
Laryngeal, 2008 WL 558561, at *1 (citation omitted) (disqualifying entire law firm "because
Plaintiffs have shown that they revealed confidential information and obtained legal advice during
the preliminary interview which prevents the law firm from representing Defendants in the same
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action"). To preserve the public trust and avoid even the appearance of conflict of interest,
McKool Smith must be disqualified from switching sides to represent Spotify in this action.
B. McKool Smith Formed An Attorney-Client Relationship With
PacketVideo When It Obtained Confidential Information And
Provided Legal Advice, Barring Its Representation Of Spotify In This
Action

"It is well established that a lawyer's fiduciary obligations exist 'even in the earliest stages
of the relationship,' including 'preliminary consultations by a prospective client with a view to
retention of the lawyer, although actual employment does not result.'" Laryngeal, 2008 WL
558561, at *3 (quoting SpeeDee, 20 Cal. 4th 1135); see also Beery v. State Bar, 43 Cal. 3d 802,
811-12 (1987); In re Dupont's Estate, 60 Cal. App. 2d 276, 288-89 (1943) (noting universal
acceptance that communication by client of preliminary statement of his case to an attorney is
privileged even if the attorney is not hired). Regardless of the timing, "[w]hen a party seeking
legal advice consults an attorney at law and secures that advice, the relation of attorney and client
is established prima facie." SpeeDee, 20 Cal. 4th at 1148 (quotation and citation omitted).
Above all else, "[t]he primary concern is whether and to what extent the attorney acquired
confidential information." SpeeDee, 20 Cal. 4th at 1148. ("An attorney represents a clientfor
purposes of a conflict of interest analysiswhen the attorney knowingly obtains material
confidential information from the client and renders legal advice or services as a result."); see also
Laryngeal, 2008 WL 558561, at *4 n. 5 (reviewing cases from other jurisdictions and concluding
California rule was consistent in determining existence of attorney-client relationship based on
exchange of confidential information and/or legal advice at initial consultation); Henriksen, 11
Cal. App. 4th at 112-13 (upholding disqualification of entire firm where partners received some
confidential information in brief, exploratory discussion about possibly hiring the firm).
During their July 7
th
call, Mr. Espelienon behalf of PacketVideoknowingly and
intentionally revealed confidential information to Mr. Chambers on a range of strategic issues
concerning PacketVideo's present action against Spotify, including the general context of this
action, the ultimate objective of this action, PacketVideo's estimate of the value of the '276 patent
and its strategic settlement position with respect to this action, the specific timing of the action,
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potential forums for this action, and potential venues for this action. And Mr. Espelien reasonably
believed and understood the confidential information he revealed would be treated as such
throughout multiple discussions, Mr. Chambers never warned Mr. Espelien not to disclose
confidential information, and, in some cases, actively sought such information. Moreover,
Mr. Chambers provided legal advice on several of the topics they discussed. With respect to the
question of venue, Mr. Chambers actually went so far as to discuss the situation with his
colleagues (including his partner, Mr. Caldwell), conduct research of relevant case law, and then
report back with his resulting conclusion to Mr. Espelien on a follow-up call.
In short, there can be no legitimate dispute as to whether Mr. Espelien disclosed
confidential information to, and obtained legal advice from, Mr. Chambers concerning
PacketVideo's present action against Spotify, all with the reasonable belief the information and
advice would be kept in strict confidence. Mr. Chambers admitted as much in his August phone
call to Mr. Espelien, and in his subsequent email to Mr. Espelien. Hence, PacketVideo and
McKool Smith formed an attorney-client relationship, and Mr. Chambers (and those with whom
he discussed the case) are "automatically disqualified from representing [Spotify] in the same
litigation." Laryngeal, 2008 WL 558561, at *6.
C. California Law Mandates Vicarious Disqualification Of The Entire
McKool Smith Law Firm, Regardless Of Efforts To Erect An Ethical
Wall

"The established rule in California is that where an attorney is disqualifiedthat attorney's
entire firm must be disqualified as well, regardless of efforts to erect an ethical wall." Hitachi,
419 F. Supp. 2d at 1161 (reviewing California state and Federal decisions and concluding "as a
matter of California lawethical screening procedures cannot prevent vicarious disqualification");
see also Lucent, 2007 WL 1461406, at *2 ("California courts generally have not allowed a law
firm to avoid vicarious disqualification by implementing a screening procedure"); Laryngeal, 2008
WL 558561, at *7 ("When an attorney is disqualified due to a relationship that amounts to prior
representation on the same lawsuit, then the entire firm is disqualified") (citing Flatt v. Superior
Court, 9 Cal. 4th 275 (1994)); Henriksen, 11 Cal. App. 4th at 113-114 ("As a general rule in
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California, where an attorney is disqualified from representation, the entire law firm is vicariously
disqualified as well"); SpeeDee, 20 Cal. 4th at 1146 ("A presumption that an attorney has access to
privileged and confidential matters relevant to a subsequent representation extends the attorney's
disqualification vicariously to the attorney's entire firm."). Under established California law,
Mr. Chambers' serious conflict of interest mandates vicarious disqualification of the entire
McKool Smith law firm, and no effort to erect an ethical wall can change that.
"Even if California law permitted ethical walls to prevent disqualification of other
attorneys in a law firm, [] Court[s] would not extend that exception to th[e] case where the lawyers
are in the same [] office and the clients are opponents in the same patent litigation." Laryngeal,
2008 WL 558561, at *7 (citing In re County of Los Angeles, 223 F.3d 990 (9th Cir. 2000)
("SpeeDee Oil was the kind of case most likely to give rise to automatic disqualification because
the same firm represented adverse parties in the same litigation")); see also City of Nat'l Bank v.
Adams, 96 Cal. App. 4th 315, 327-28 (2002) (even if limited exception available, it does not apply
to adverse representation on same matter); Analytica, Inc. v. NPD Research, Inc., 708 F.2d 1263,
1267 (7th Cir. 1983) (ethical wall exception is not available when "the firm itself changed sides");
Henriksen, 11 Cal. App. 4th at 111-15 (1992) (imputed disqualification was "clear cut" when new
associate had worked on same case but had been screened, despite hardship of hiring new counsel
on eve of trial). Hence, even if California were going to permit use of ethical walls in certain
circumstances, the entire McKool Smith law firm must still be disqualified from representing
Spotify because Mr. Chambers represented PacketVideo in this very same actiona classic and
clearly impermissible case of switching sides.
IV. CONCLUSION
For the foregoing reasons, PacketVideo respectfully asks that the Court grant this Motion
to Disqualify the entire McKool Smith law firm, and enter an order forbidding McKool Smith
from representing Spotify in this litigation, from consulting or sharing any work product with
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Spotify's new counsel, or from otherwise directly or indirectly assisting Spotify in its defense of
this lawsuit in any way.

DATED: September 6, 2011 QUINN EMANUEL URQUHART &
SULLIVAN, LLP



By /s/ Christopher A. Mathews
Christopher A. Mathews
Attorneys for Plaintiff
PACKETVIDEO CORPORATION

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CERTIFICATE OF SERVICE
The undersigned hereby certifies that a true and correct copy of the foregoing document
has been served on September 6, 2011 to all counsel of record who are deemed to have consented
to electronic service via the Court's CM/ECF system per Fed. R. Civ. P. 5(b)(3) and Civil Local
Rule 5.4. Any other counsel of record will be served by electronic mail, facsimile and/or
overnight delivery.



/s/ Christopher A. Mathews

Christopher A. Mathews
chrismathews@quinnemanuel.com
Attorneys for Plaintiff
PACKETVIDEO CORPORATION


Case 3:11-cv-01659-IEG-WMC Document 16-1 Filed 09/07/11 Page 19 of 19












EXHIBIT F


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- 1 - 11cv1659
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF CALIFORNIA
PACKETVIDEO CORPORATION, a
Delaware corporation,
Plaintiff,
CASE NO. 11cv1659 - IEG (WMc)
ORDER GRANTING MOTION
FOR WITHDRAWAL
[Doc. No. 30]
vs.
SPOTIFY USA INC., a Delaware
corporation; SPOTIFY LIMITED, a United
Kingdom corporation; and SPOTIFY
TECHNOLOGY SARL, a Luxembourg
corporation,
Defendants.
Presently before the Court is Defendants motion to withdraw Mike McKool Jr., Bradley
W. Caldwell, Justin Nemunaitis and the law firm McKool Smith P.C. as counsel for Defendants.
[Doc. No. 30.] The motion notes that Scott J. Ferrell, James B. Hardin, and the law firm Newport
Trial Group will continue as counsel for Defendants. Pursuant to Civil Local Rule 83.3(g) and for
good cause shown, the Court GRANTS Defendants motion.
IT IS SO ORDERED.
DATED: September 28, 2011 _________________________________
IRMA E. GONZALEZ, Chief Judge
United States District Court
__ ___ ____ ______ _______ ________ __ __ __ __ __ __ __ ______ ________ _________ __ __ __ __ __ __ ____ __ _ __ ___ __ __ __ __ ___ __ __ ______ __ __ __ __ ____ __ _ __ __ __ __ ____ __ ______ _____________ __________ __ ________ __ ___ __ _________ ___
IRMA E. GONZALEZ, Ch Ch Ch Ch Ch Ch Ch Ch Ch Ch Ch Ch Ch Ch Chh CCC ief Judg dg dg dg dg dg dg dg dg dg dg dg dg dg dg dg dg dg dg dge
i S i i C
Case 3:11-cv-01659-IEG-WMC Document 32 Filed 09/28/11 Page 1 of 1
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RESPONSES TO OBJECTIONS TO PLAINTIFFS EVIDENCE ISO MOTION TO DISQUALIFY


LEE TRAN & LIANG APLC
K. Luan Tran (SBN 193808)
James M. Lee (SBN 192301)
Cyrus Khojandpour (SBN 260233)
Lisa J. Chin (SBN 259793)
601 S. Figueroa Street, Suite 3900
Los Angeles, CA 90017
Tel. 213-612-3737 / Fax. 213-612-3773

RAY A. MANDLEKAR, ATTORNEY AT LAW
Ray A. Mandlekar (SBN 196797)
601 S. Figueroa Street, Suite 4050
Los Angeles, CA 90017
Tel. 213-785-6130 / Fax. 213-254-9001


Attorneys for Plaintiff
Frank Reginald Brown, IV

SUPERIOR COURT OF THE STATE OF CALIFORNIA
FOR THE COUNTY OF LOS ANGELES


FRANK REGINALD BROWN, IV,

Plaintiff,

v.

SNAPCHAT, INC., a Delaware corporation;
TOYOPA GROUP, LLC, a California Limited
Liability Company; EVAN THOMAS
SPIEGEL, an individual; ROBERT
CORNELIUS MURPHY, an individual; and
DOES 1 through 10 inclusive,

Defendants.
CASE NO: BC501483

Assigned for all purposes to the Honorable John
L. Segal (Dept. 50)


PLAINTIFFS RESPONSES TO
DEFENDANTS OBJECTIONS TO
PLAINTIFFS EVIDENCE IN SUPPORT
OF MOTION TO DISQUALIFY
DEFENDANTS COUNSEL QUINN
EMANUEL URQUHART & SULLIVAN
LLP

[Plaintiffs Reply in Further Support of Motion
to Disqualify, Objections to Declarations of
Joseph C. Sarles and Robert Kehr, and Request
For Judicial Notice filed concurrently herewith]


Hearing:
Date: August 1, 2013
Time: 8:30 a.m.
Dept.: 50


Action Filed: February 21, 2013
Trial Date: Not Assigned Yet
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RESPONSES TO OBJECTIONS TO PLAINTIFFS EVIDENCE ISO MOTION TO DISQUALIFY




1
OBJECTIONS AND RESPONSES TO OBJECTIONS TO
DECLARATION OF FRANK REGINALD BROWN IV
COURTS
RULING
MATERIAL
OBJECTED TO:
GROUNDS FOR
OBJECTION:
RESPONSE TO
OBJECTION:
RULING ON
OBJECTION:
Brown Decl., 6: The
only communication that
took place regarding this
document was a short
email from Mr. Alden
summarizing the
document in which he
downplayed the
potential of any conflict
by characterizing the
possibility of Quinn
Emanuel taking an
adverse interest to me
down the road as
unlikely. He also
assured me that the
likelihood of this ever
happening is [sic]
small and this was just
a precaution we need to
take.
Cal. Evid. Code
1523 (testimony
not admissible to
prove the content
of a writing).
Although Brown
possesses this
document, he did
not provide it.
Defendants
submitted it as
Exhibit A to the
Alden Declaration.
Cal. Evid. Code 1523 states
that oral testimony is not
admissible to prove the content
of a writing. Mr. Browns
statement is not used or
intended to prove the content
of the email. Rather, Plaintiff
cites 6 for the proposition
that the communication was
the only one regarding an
advance waiver. Regardless,
Plaintiff does not object to the
email submitted as Exhibit A
to the Alden Declaration,
which reflects exactly what
Plaintiff states in 6 of his
declaration.
Sustained: ___
Overruled: ___
Brown Decl., 10:
During the above oral
and written
communications, Mr.
Alden and I discussed in
detail the strengths and
weakness of my case. In
addition, our discussions
involved many
important and strategic
issues related to the
litigation. Mr. Alden
offered his suggestions
and gave me legal advice
accordingly. In addition,
Mr. Alden and I
discussed my finances
and how costs of
litigation would be
handled with respect to
Quinn Emanuel.


Cal. Evid. Code
1523 (testimony
not admissible to
prove the content
of a writing). To
the extent Browns
testimony is
characterizing the
content of email
communications, it
is inadmissible.

Cal. Evid. Code 1523 states
that oral testimony is not
admissible to prove the content
of a writing. Mr. Browns
statement is not used or
intended to prove the content
of any writings. Rather,
Plaintiff cites 10 for the
general proposition of what
was discussed between him
and Mr. Alden. Moreover,
Defendants do not contest the
accuracy of Plaintiffs
statement in 10.
Sustained: ___
Overruled: ___
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RESPONSES TO OBJECTIONS TO PLAINTIFFS EVIDENCE ISO MOTION TO DISQUALIFY




2
OBJECTIONS AND RESPONSES TO OBJECTIONS TO
DECLARATION OF FRANK REGINALD BROWN IV
COURTS
RULING
MATERIAL
OBJECTED TO:
GROUNDS FOR
OBJECTION:
RESPONSE TO
OBJECTION:
RULING ON
OBJECTION:
Brown Decl., 12: On
or about December 12,
2012 I informed Mr.
Alden that an article had
been published
indicating that
Benchmark Capital was
funding Snapchat.


Cal. Evid. Code
1523 (testimony
not admissible to
prove the content
of a writing). To
the extent Browns
testimony is
characterizing the
content of email
communications, it
is inadmissible.
Cal. Evid. Code 1523 states
that oral testimony is not
admissible to prove the content
of a writing. Mr. Browns
statement is not used or
intended to prove the content
of any writings. Rather,
Plaintiff cites 12 for the
general proposition that he
informed Mr. Alden of an
article. Moreover, Defendants
do not contest the accuracy of
Plaintiffs statement in 12.
Sustained: ___
Overruled: ___
Brown Decl., 14: On
or about January 10,
2013, after over two
months of consideration
and multiple confidential
communications, Mr.
Alden informed me via
email that Quinn
Emanuel would not
represent me at the
current time.
Cal. Evid. Code
1523 (testimony
not admissible to
prove the content
of a writing). To
the extent Browns
testimony is
characterizing the
content of email
communications, it
is inadmissible.
Cal. Evid. Code 1523 states
that oral testimony is not
admissible to prove the content
of a writing. Mr. Browns
statement is not used or
intended to prove the content
of any writings. Rather,
Plaintiff cites 14 for the
general proposition that Alden
informed Plaintiff he could not
represent him. Moreover,
Defendants do not contest the
accuracy of Plaintiffs
statement in 14.
Sustained: ___
Overruled: ___

OBJECTIONS AND RESPONSES TO OBJECTIONS TO
DECLARATION OF K. LUAN TRAN
COURTS
RULING
MATERIAL
OBJECTED TO:
GROUNDS FOR
OBJECTION:
RESPONSE TO
OBJECTION:
RULING ON
OBJECTION:
Tran Decl., 6: Below
is a sample of the
evidence unearthed so
far in this initial phase of
discovery:[and all
bullet points that follow]
Cal. Evid. Code
1523 (testimony
not admissible to
prove the content
of a writing); Cal.
Evid. Code 1200
et seq. (hearsay);
Cal. Evid. Code
Cal. Evid. Code
403, 702 (lacks
foundation).
Defendants do not dispute the
accuracy of Mr. Trans
characterizations of the
documents in 6. Moreover,
Mr. Tran attaches to his
Declaration all of the
documents summarized as
Exhibit C.
Sustained: ___
Overruled: ___
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RESPONSES TO OBJECTIONS TO PLAINTIFFS EVIDENCE ISO MOTION TO DISQUALIFY




3
OBJECTIONS AND RESPONSES TO OBJECTIONS TO
DECLARATION OF K. LUAN TRAN
COURTS
RULING
MATERIAL
OBJECTED TO:
GROUNDS FOR
OBJECTION:
RESPONSE TO
OBJECTION:
RULING ON
OBJECTION:
Counsels
numerous
unsupported
factual assertions
in this paragraph
lack foundation.
His argumentative
characterizations
of newspaper
articles,
documents and
statements by
other people are
inadmissible
hearsay and violate
the best evidence
rule. The
documents, if they
are admissible at
all, speak for
themselves.
Tran Decl., Exhibit C.

Cal. Evid. Code
1200 et seq.
(hearsay); Cal.
Evid. Code 356
(completeness).
The newspaper
articles in Exhibit
C are all entirely
inadmissible
hearsay. The text
message of
purported
statements by a
third party, John
Spiegel, are
inadmissible
hearsay. The text
messages between
plaintiff and
defendant
Spiegel are
misleadingly
incomplete.
Contrary to Defendants
assertions, there are no
newspaper articles attached as
Exhibit C. Rather, Exhibit C
comprises emails and text
messages. Under Cal. Evid.
Code 1220, evidence of a
statement is not made
inadmissible by the hearsay
rule when offered against the
declarant in an action to which
he is a party in either his
individual or representative
capacity. All of these
communications involve
Defendants and therefore
admissible as party
admissions.
Sustained: ___
Overruled: ___
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RESPONSES TO OBJECTIONS TO PLAINTIFFS EVIDENCE ISO MOTION TO DISQUALIFY




4
OBJECTIONS AND RESPONSES TO OBJECTIONS TO
DECLARATION OF K. LUAN TRAN
COURTS
RULING
MATERIAL
OBJECTED TO:
GROUNDS FOR
OBJECTION:
RESPONSE TO
OBJECTION:
RULING ON
OBJECTION:
Tran Decl., 8 and
Exhibit D.

Cal. Evid. Code
1200 et seq.
(hearsay).
This exhibit
consists entirely of
in admissible
hearsay statements
in a newspaper
article. Counsels
hearsay
characterization of
the newspaper
article is likewise
inadmissible.
Exhibit D is not hearsay
because it is not offered for the
truth of matter asserted.
Rather, Plaintiff cites the
article for the proposition that
it was published. See Motion
at 6:20-22 (On or about
December 12, 2012, Plaintiff
informed Mr. Alden that an
article had been published
indicating that Benchmark
Capital was funding Snapchat.
Id. 12; see also Tran Dec.,
Exh. D.). Moreover,
Defendants do not dispute the
accuracy of any of the
statements in Exhibit D.
Sustained: ___
Overruled: ___
Tran Decl., 9 In
light of the foregoing
and Plaintiffs clear
attorney-client
relationship with the
Quinn Emanuel firm.

Cal. Evid. Code
403, 702 (lacks
foundation); Cal.
Evid. Code 310
(legal conclusion).
Counsels claim
that plaintiff had a
clear
attorney-client
relationship with
Quinn Emanuel
lacks foundation
and is an improper
legal conclusion.
Moreover, it also
contradicts the
Waiver plaintiff
signed, which
expressly
disclaims an
attorney-client
relationship. See
Van Dalsem Decl.,
Ex. B.
Plaintiff cites 9 of the Tran
Declaration for the proposition
that [u]pon learning about
Quinn Emanuels retention,
Plaintiff immediately called
for a one week standstill of
litigation to allow the parties to
investigate the conflict and
determine whether the issue
could be resolved without
disqualification proceedings.
Tran Dec., 9. The parties
then conducted two
unsuccessful mediation
sessions and agreed to another
standstill until June 20, 2013.
Id. Motion at 8:12-16.
Defendants do not dispute this
fact.
Sustained: ___
Overruled: ___
Tran Decl., 10
stating that Quinn
Emanuel were plaintiffs
Cal. Evid. Code
403, 702 (lacks
foundation); Cal.
Plaintiff cites 9 of the Tran
Declaration for the proposition
that [a]t the June 19, 2013
Sustained: ___
Overruled: ___
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RESPONSES TO OBJECTIONS TO PLAINTIFFS EVIDENCE ISO MOTION TO DISQUALIFY




5
OBJECTIONS AND RESPONSES TO OBJECTIONS TO
DECLARATION OF K. LUAN TRAN
COURTS
RULING
MATERIAL
OBJECTED TO:
GROUNDS FOR
OBJECTION:
RESPONSE TO
OBJECTION:
RULING ON
OBJECTION:
former attorneys.

Evid. Code 310
(legal conclusion).
Counsels claim
that Quinn
Emanuel firm
acted as plaintiffs
former attorneys
lacks foundation
and is an improper
legal conclusion.
Moreover, it
contradicts the
Waiver plaintiff
signed, which
expressly
disclaims an
attorney-client
relationship. See
Van Dalsem Decl.,
Ex. B.
Case Management
Conference, the parties agreed
to stay this action so that
Plaintiff can move to
disqualify his former
attorneys, Quinn Emanuel. Id.
10. Motion at 8:16-18.
Defendants do not dispute this
fact.
Tran Decl., 12 and
Exhibit F

Cal. Evid. Code
1200 et seq.
(hearsay).
This exhibit
consists entirely of
in admissible
hearsay statements
in a newspaper
article. Counsels
hearsay
characterization of
the newspaper
article is likewise
inadmissible.
Exhibit F is not hearsay
because it is not offered for the
truth of matter asserted.
Rather, Plaintiff cites the
article for the proposition that
certain things stated in a news
article, not that the statements
therein are true. See Motion at
3 n.1 (This week, it was
announced that Snapchat
received another $80
million from institutional
investors at a valuation
approaching $1 billion. Tran
Decl., 12, Exh. F. It was also
announced that Defendants
Spiegel and Murphy each
pocketed $10 million from
these investors. Id.).
Sustained: ___
Overruled: ___
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RESPONSES TO OBJECTIONS TO PLAINTIFFS EVIDENCE ISO MOTION TO DISQUALIFY




6

DATED: July 25, 2013 LEE TRAN & LIANG APLC


By
K. Luan Tran
James M. Lee
Cyrus Khojandpour
Lisa Chin

RAY A. MANDLEKAR, ATTORNEY AT LAW
Ray A. Mandlekar (SBN 196797)

Attorneys for Plaintiff