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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS TYLER DIVISION ADAPTIX INC.

, Plaintiff, v. DELL INC., ET AL., Defendants. DELL INC.’S MOTION TO DISQUALIFY PLAINTIFF’S COUNSEL Civil Action No. 6:13-cv-437

Deron R. Dacus ddacus@dacusfirm.com Texas State Bar No. 00790553 THE DACUS FIRM, PC 821 ESE Loop 323, Suite 430 Tyler, TX 75701 Telephone: (903) 705-1117 Facsimile: (903) 705-1117 Kimball R. Anderson kanderson@winston.com Kathleen B. Barry kbarry@winston.com Solana P. Flora sflora@winston.com WINSTON & STRAWN LLP 35 West Wacker Drive Chicago, IL 60601 Telephone: (312) 558-5600 Facsimile: (312) 558-5700 Attorneys for Defendant Dell Inc.

I.

INTRODUCTION Plaintiff Adaptix Inc. (“Adaptix”) seeks to be represented in this case by lawyers from

the Hayes, Messina, Gilman & Hayes, LLC law firm (“Hayes Messina”) and the Tadlock Law Firm. For the reasons explained herein, these lawyers have conflicts of interest and cannot represent Adaptix in this case. Certain lawyers in the Hayes Messina firm recently represented Dell Inc. (“Dell”) in a patent infringement lawsuit pending in this District captioned Lodsys Group, LLC v. Dell Inc., No. 2:12-CV-289 (E.D. Tex.). When these lawyers were retained by Dell in the Lodsys case, their law firm (then known as Hayes Bostock & Cronin LLC) agreed by contract dated July 12, 2012, that they would not represent any other party in a patent infringement lawsuit adverse to Dell for a period of 36 months. Under the parties’ agreement, all patent infringement lawsuits against Dell were deemed “substantially related” and the conflict of interest expressly was not waived. On or about July 1, 2013, the Hayes Messina law firm was formed. Three of the five Hayes Bostock1 partners became partners at Hayes Messina. Hayes Messina, which is a very small law firm, includes the lawyers who previously worked for Dell on the Lodsys case (attorneys Kevin Gannon and Jonathan DeBlois). Indeed, Gannon was partner at Hayes Bostock and is now a partner at Hayes Messina. Hayes Messina now wants to represent Adaptix in this case adverse to Dell. The firm proposes to do so by screening from this action the two lawyers who represented Dell in the Lodsys case. The Texas Disciplinary Rules of Professional Conduct, however, prohibit

screening as a means of avoid this kind of conflict. Similarly, the ABA Model Rules of

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The Hayes Bostock & Cronin LLC website (www.hbcllc.com) now advises the reader to “Visit the New Website http://hayesmessina.com.” (See Ex. A, attached hereto.)

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Professional Conduct do not allow screening under the circumstances of this case. The Hayes Messina law firm, therefore, cannot represent Adaptix in this case. The Tadlock Law Firm is similarly conflicted. The Tadlock Law Firm is co-counsel with the Hayes Messina law firm in this case. As recently held in In re CHM Homes, Inc., co-counsel are considered “associated” for conflict imputation purposes under Texas Disciplinary Rule of Professional Conduct 1.09(b) even if they do not practice in the same firm. No. 04-13-00050CV, 2013 WL 2446724, at *5 (Tex. Ct. App. June 5, 2013). The Hayes Messina law firm’s conflict is therefore imputed to its co-counsel, the Tadlock Law Firm. I. FACTUAL BACKGROUND A. The Hayes Bostock Firm Represents Dell And Agrees That It Is Conflicted From Being Adverse To Dell For Three Years.

On May 10, 2012, Dell was sued by Lodsys Group, LLC (“Lodsys”). The complaint was captioned Lodsys Group, LLC v. Dell Inc., No. 2:12-CV-289 (E.D. Tex.), and was assigned to Judge Rodney Gilstrap in the Eastern District of Texas. Lodsys’ complaint against Dell asserted infringement by, among other products, Dell printers, which were made by Lexmark. Dell requested defense and indemnification from Lexmark for products made by Lexmark in the Lodsys complaint against Dell. At the time Dell was sued by Lodsys, Lexmark had already been sued by Lodsys for infringing the same patent. The complaint against Lexmark was captioned Lodsys Group, LLC v. Brother International Corporation, et al., No. 2:11-CV-00090-JRG (E.D. Tex.) (“Lead Lodsys Complaint”). The court consolidated Lodsys’ complaint against Dell with the Lead Lodsys Complaint. Consolidation Order, No. 2:11-CV-00090-JRG (E.D. Tex.), Docket No. 258, filed Aug. 17, 2012.

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In response to Dell’s request for defense and indemnity, Lexmark offered the Hayes Bostock firm to defend Dell with regard to the accused Dell products, which were made by Lexmark. Dell agreed to be represented by the firm, but only on certain conditions. Those conditions were memorialized in a July 24, 2012 Engagement Letter and Acknowledgement for Lodsys v. Dell Inc. (“Engagement Letter”). See Ex. B. The Engagement Letter dealt with conflicts as follows: During Hayes Bostock and Cronin LLC’s representation of Dell, it will be working closely with the Dell patent litigation and patent teams and will be privy to confidential information and general strategy. As such, Dell considers all patent matters to be substantially related to the Patent Matter and considers representation of a plaintiff or entity asserting its patents against Dell in any patent matter to be a conflict. Dell expressly objects to any lawyer who views Dell confidential material or bills time to the Patent Matter from representing a plaintiff against Dell for a period of 36 months after conclusion of the lawyer’s representation of Dell in the Patent Matter; Dell does not waive this conflict. Ex. B at 3. The Engagement Letter, therefore, avoided the frequently litigated issue under the applicable rules of professional responsibility of whether subsequent patent infringement lawsuits were substantially related to the prior lawsuits.2 Avoiding this issue altogether, the parties agreed that all future patent infringement lawsuits against Dell would be deemed substantially related to the Lodsys matter, but that the conflict would cease to exist 36 months after the conclusion of the Lodsys matter. Lawyers now at Hayes Messina, including Kevin Gannon and Jonathan DeBlois, worked on Dell’s behalf in the Lodsys matter. See Ex. C (July 18, 2013 Email from S. Lipman to K. Anderson) (identifying Messrs. Gannon and DeBlois as attorneys who billed time on the Lodsys matter).

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See, e.g., TEX. DISCIPLINARY R. PROF’L CONDUCT 1.09.

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B.

Hayes Bostock Recognizes The Conflict And Withdraws From Representing Adaptix.

On May 28, 2013, Hayes Bostock appeared on behalf of Adaptix in this lawsuit against Dell. Adaptix, Inc. v. Dell Inc., No. 6:13-CV-437 (E.D. Tex.). Dell promptly objected that the firm was conflicted. Hayes Bostock, recognizing the conflict of interest, withdrew as Adaptix’s counsel. See Plaintiff Adaptix’s Notice of Withdrawal of Counsel, No. 6:13-CV-437, Docket No. 10, filed June 6, 2013. C. Hayes Messina’s Attempt To Avoid The Conflict.

On or about July 23, 2013, Hayes Messina announced to Dell’s counsel that it planned to represent Adaptix and would avoid the conflict by screening the admittedly conflicted attorneys who represented Dell in the Lodsys matter. See Ex. C and Ex. D. Dell immediately objected. See Ex. E (July 23, 2013 Email from K Anderson to S. Lipman). Dell’s counsel pointed out that the Texas Disciplinary Rules do not permit screening as a means of avoiding this type of conflict of interest. Id. Dell’s counsel also pointed out that the Hayes Messina conflict was imputed to the Tadlock Law Firm. Id. Despite Dell’s objection, the Hayes Messina firm and the Tadlock Law Firm appeared as counsel on behalf of Adaptix. See Notice of Appearance, No. 6:13-CV-437, Docket No. 17, filed Sept. 27, 2013. II. ARGUMENT A. This Court Should First Look To The Texas Rules And Then, If Necessary, To The National Standards, In Resolving Disqualification Issues.

Although this is a patent case, the Court should apply the law of the Fifth Circuit to the disqualification question. See JuxtaComm-Texas Software, LLC v. Axway, Inc., No. 6:10CV11, 2010 WL 4920909, at *1 (E.D. Tex. Nov. 29, 2010) (citing Picker Int’l, Inc. v. Varian Assocs.,

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Inc., 869 F.2d 578, 580-81 (Fed. Cir. 1989) (“As disqualification is a procedural matter not unique to patent law, regional circuit law applies.”)). The Fifth Circuit has explained that “[w]hen considering motions to disqualify, courts should first look to ‘the local rules promulgated by the local court itself.’” In re ProEducation Int’l, Inc., 587 F.3d 296, 299 (5th Cir. 2009) (emphasis added) (quoting FDIC v. U.S. Fire Ins. Co., 50 F.3d 1304, 1312 (5th Cir. 1995)). The Local Rules of the Eastern District of Texas provide that “[t]he standards of professional conduct adopted as part of the Rules Governing the State Bar of Texas shall serve as a guide governing the obligations and responsibilities of all attorneys appearing in this court.” E.D. Tex. Local R. AT-2. However, “the Texas Rules ‘are not the sole authority governing a motion to disqualify.’” In re ProEducation Int’l, Inc., 587 F.3d at 299 (quoting In re Am. Airlines, Inc., 972 F.2d 605, 610 (5th Cir. 1992) (internal quotation marks omitted)). Rather, the court “‘consider[s] the motion governed by the ethical rules announced by the national profession in light of the public interest and the litigants’ rights.’” Id. (quoting In re Am. Airlines, 972 F.2d at 610). The ABA Model Rules of

Professional Conduct are “the national standards to consider in reviewing motions to disqualify.” Id. (citing In re Am. Airlines, 972 F.2d at 610). Dell has the burden of demonstrating that the Hayes Messina firm and the Tadlock Law Firm should be disqualified from representing Adaptix in the Adaptix matter. JuxtaComm-Texas Software, LLC, 2010 WL 4920909, at *1 (citing In re Am. Airlines, Inc., 972 F.2d at 614; Duncan v. Merrill Lynch, Pierce, Fenner & Smith, Inc., 646 F.2d 1020, 1028 (5th Cir. 1981)). “The attorney disqualification rules are not to be mechanically applied” and “‘[a]ll of the facts particular to a case must be considered, in the context of the relevant ethical criteria and with meticulous deference to the litigant’s rights.’” Id. (citing Johnston v. Harris County Flood

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Control Dist., 869 F.2d 1565, 1569 (5th. Cir. 1989) and quoting F.D.I.C. v. U.S. Fire Ins. Co., 50 F.3d 1304, 1314 (5th Cir. 1995)). B. Hayes Messina Is Conflicted Under Both The Texas Rules And The ABA Model Rules.

Hayes Messina has acknowledged that a conflict exists. See Ex. B (July 18, 2013 Email from S. Lipman to K. Anderson). Moreover, the conflict is readily apparent from Texas Rule 1.06(b)(2), which states: “[A] lawyer shall not represent a person if the representation of that person… reasonably appears to be or become adversely limited by the lawyer’s or law firm’s responsibilities to another client or to a third person or by the lawyer’s or law firm’s own interests.” TEX. DISCIPLINARY R. PROF’L CONDUCT 1.06(b)(2). Here, the Hayes Messina lawyers have material ongoing responsibilities to Dell by virtue of the July 12, 2012 Engagement Letter that creates a conflict of interest under the Texas Rules. Similarly, the conflict is readily apparent under ABA Model Rule 1.7, which provides in pertinent part: (a) Except as provided in paragraph (b), a lawyer shall not represent a client if the representation involves a concurrent conflict of interest. A concurrent conflict of interest exists if: … (2) there is a significant risk that the representation of one or more clients will be materially limited by the lawyer’s responsibilities to another client, a former client or a third person or by a personal interest of the lawyer. ABA MODEL R.
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PROF’L CONDUCT 1.7(a)(2). Again, the Hayes Messina lawyers have

material ongoing responsibilities to Dell by virtue of the July 12, 2012 Engagement Letter. These ongoing responsibilities to Dell create a conflict of interest under Model Rule 1.7(a)(2).

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Because it is beyond peradventure that a conflict of interest exists, the only real issue is whether the conflict can be avoided by screening. As demonstrated below, it cannot. C. Screening Does Not Avoid The Conflict Of Interest. 1. The Texas Rules Do Not Recognize Screening As A Means Of Avoiding This Conflict.

Texas Rules 1.06 and 1.09 provide that disqualification of individual lawyers results in disqualification of the entire firm. Specifically, Rule 1.06(f) states: “If a lawyer would be prohibited by this Rule from engaging in particular conduct, no other lawyer while a member or associated with that lawyer’s firm may engage in that conduct.” TEX. DISCIPLINARY R. PROF’L CONDUCT 1.06. Similarly, Rule 1.09(b) states: “Except to the extent authorized by Rule 1.10, when lawyers are or have become members of or associated with a firm, none of them shall knowingly represent a client if any one of them practicing alone would be prohibited from doing so by paragraph (a).” TEX. DISCIPLINARY R. PROF’L CONDUCT 1.09. “Under Texas Rule 1.09(b), the personal conflicts of one attorney are imputed to all other members of a firm.” In re ProEducation Int’l, Inc., 587 F.3d 296, 300 (5th Cir. 2009). Screening a conflicted lawyer from matters relating to a former client will not cure an otherwise prohibited representation by the new firm. See The Professional Ethics Committee for the State Bar of Texas, Op. 578 (July 2007); see also Henderson v. Floyd, 891 S.W.2d 252, 254 (Tex. 1995) (screening of associate who transferred to opposing counsel’s firm did not prevent disqualification of firm). Unlike the rules of professional conduct in certain other states, the Texas Rules simply do not recognize screening as a means of avoiding the imputation of conflicts that arise under Rules 1.06 and 1.09. Instead, the Texas Rules recognize screening as a means of avoiding the

imputation of conflicts only under two very limited situations, namely successive government and private employment (see TEX. DISCIPLINARY R. PROF’L CONDUCT 1.10) and adjudicatory 7

officials/law clerks (see TEX. DISCIPLINARY R. PROF’L CONDUCT 1.11). circumstances are not implicated here. 2.

Those limited

National Standards Also Do Not Absolve The Hayes Messina Conflict. a. ABA Model Rules Do Not Allow Screening Without Client Consent As A Means Of Avoiding Rule 1.7(a)(2) Conflicts.

ABA Model Rule 1.10 allows for screening as a means of avoiding imputed conflicts, but only under limited circumstances not present here. Model Rule 1.10(a)(2) states in pertinent part: (a) While lawyers are associated in a firm, none of them shall knowingly represent a client when any one of them practicing alone would be prohibited from doing so by Rules 1.7 or 1.9, unless … (2) the prohibition is based upon Rule 1.9(a) or (b) and arises out of the disqualified lawyer’s association with a prior firm, and (i) the disqualified lawyer is timely screened from any participation in the matter and is apportioned no part of the fee therefrom; (ii) written notice is promptly given to any affected former client to enable the former client to ascertain compliance with the provisions of this Rule, which shall include a description of the screening procedures employed; a statement of the firm’s and of the screened lawyer’s compliance with these Rules; a statement that review may be available before a tribunal; and an agreement by the firm to respond promptly to any written inquiries or objections by the former client about the screening procedures; and (iii) certifications of compliance with these Rules and with the screening procedures are provided to the former client by the screened lawyer and by a partner of the firm, at reasonable intervals upon the former client’s written request and upon termination of the screening procedures. ABA MODEL R. OF PROF’L CONDUCT 1.10. Parsing Model Rule 1.10(a), the general rule is that an entire firm is conflicted if any one lawyer in the firm is conflicted under Model Rules 1.7 or 1.9. We established above that certain Hayes Messina lawyers are conflicted under Model Rule 1.7. 8

Model Rule 1.10(a)(2) then allows for screening of certain conflicts of interest, but only for conflicts of interest that arise out of Rules 1.9(a) or (b), and then only if the conflict arises out of the disqualified lawyer’s association with a prior firm,3 the disqualified lawyer is timely screened from the matter and does not participate in the fees earned from the screened matter. See ABA MODEL R.
OF

PROF’L CONDUCT 1.10. Here, as explained above, the Hayes Messina

conflict arises under Model Rule 1.7(a)(2) (material limitation conflict). Therefore, ABA Model Rule 1.10(a) does not allow for screening of this type of conflict. b. Even if Model Rules 1.9(a) or (b) Were Implicated, Screening Is Unavailable To Cure The Conflict.

Even if ABA Model Rules 1.9(a) or (b) were implicated here, for several reasons the Hayes Messina firm cannot avail itself of unconsented screening to avoid the imputed conflict. First, under Model Rules 1.9(a) and (b), a lawyer who formerly represented a client in the same or substantially related matter cannot represent a new client adverse to the former client absent the consent of the former client in writing.4 Here, the Engagement Letter memorialized the express agreement of the parties that the Lodsys case and the Adaptix case were “substantially related” and that Dell did not waive the conflict. Ex. B at 3.

It is debatable whether Hayes Messina is truly a new firm or whether it is substantively the same firm as Hayes Bostock with the a new name and website created in an apparent effort to continue representing Adaptix against Dell in the face of conflicts of interest.
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ABA Model Rule 1.9 states in pertinent part:

(a) A lawyer who has formerly represented a client in a matter shall not thereafter represent another person in the same or a substantially related matter in which that person's interests are materially adverse to the interests of the former client unless the former client gives informed consent, confirmed in writing. (b) A lawyer shall not knowingly represent a person in the same or a substantially related matter in which a firm with which the lawyer formerly was associated had previously represented a client (1) whose interests are materially adverse to that person; and (2) about whom the lawyer had acquired information protected by Rules 1.6 and 1.9(c) that is material to the matter; unless the former client gives informed consent, confirmed in writing.

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Second, although Rules 1.9 (a) and (b) conflicts can be avoided in certain circumstances by screening under Model Rule 1.10(a)(2), Hayes Messina plainly has not complied with Model Rule 1.10(a)(2). For starters, Rule 1.10(a)(2)(i) requires “timely” screening. ABA MODEL R. OF PROF’L CONDUCT 1.10. Here, the Adaptix lawsuit against Dell was commenced on May 10, 2012, at a time when Hayes Bostock lawyers were still representing Dell in the Lodsys matter.5 No effort was made to timely screen attorneys Kevin Gannon and Jonathan DeBlois (the attorneys who represented Dell in the Lodsys matter) from, for example, their partners Paul J. Hayes and Justin Hayes. Hayes Messina attorneys Paul J. Hayes, Samiyah Diaz, and Steven E. Lipman now represent Adaptix in this action against Dell even though they were not screened from attorneys Gannon and DeBlois when this action was commenced. See Docket Nos. 17, 18, 19. Moreover, even after Gannon and DeBlois joined the Hayes Messina firm on July 1, 2013, the firm waited until July 18, 2013, to notify Dell’s counsel that a screen would be implemented. See Ex. C (July 18, 2013 Email from S. Lipman to K. Anderson). Local counsel, the Tadlock Law Firm, then waited until September 19, 2013, to serve Dell with summons and complaint. See Docket No. 15. This tardiness does not pass muster under Model Rule 1.10(a)(2)(i). Under Model Rule 1.10(a)(2)(i), screening mechanisms must be timely implemented. Indeed, the screening

procedures should be in place before the moving lawyer arrives at the new firm. See, e.g., Chinese Auto. Distribs. of Am. LLC v. Bricklin, No. 07 civ. 4113 (LLS) 2009 WL 47337, at *4 (firm disqualified where screen was imposed more than three months after attorney joined the firm) (S.D.N.Y. Jan. 8, 2009); Owens v. First Family Fin. Servs., Inc., 379 F. Supp. 2d 840, 851The Lodsys v. Dell case was dismissed on July 31, 2013 (Docket No. 784). See also TQP Dev. LLC v. Adobe Systems, Inc., Case No. 2:12-CV-570-JRG-RSP, 2013 WL 3731492 (E.D. Tex. July 13, 2013) (copy attached hereto as Ex. F) (disqualifying plaintiff’s law firm because of concurrent client conflict under ABA Model Rule 1.7(a)).
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52 (S.D. Miss. 2005) (screen not possible where firm utilized conflicted paralegal for several months); Mitchell v. Metro. Life Ins. Co., Inc., No. 01 CIV 2112 (WHP), 2002 WL 441194, at *10 (S.D.N.Y. March 21, 2002) (screen established almost two months after lawyer arrived did not prevent disqualification); Nelson v. Green Builders, Inc., 823 F. Supp. 1439, 1451 (E.D. Wisc. 1993) (screen untimely); see also RESTATEMENT (THIRD)
OF THE

LAW GOVERNING

LAWYERS § 124, cmt. d(iii) (2000); ABA MODEL R. OF PROF’L CONDUCT 1.10, cmt. 10. Model Rule 1.10(a)(2)(i) also requires that the screened lawyers receive no portion of the fees earned from the screened matter. ABA MODEL RULES
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PROFESSIONAL CONDUCT 1.10.

Yet, Hayes Messina has not complied with this provision of the Model Rule. Kevin Gannon, for example, is conflicted from representing Dell and he is a partner in the Hayes Messina law firm. See Hayes Messina Gilman & Hayes LLC, “Our Partners,” available at

http://hayesmessina.com/our-partners/ (last visited Oct. 7, 2013). This failure to comply with ABA Model Rule 1.10(a)(2)(i) alone is grounds for disqualifying Hayes Messina, even if the applicable rules permitted screening. Cf. Norfolk S. Ry. Co. v. Reading Blue Mountain & N. R.R. Co., 397 F. Supp. 2d 551, 554 (M.D. Pa. 2005) (citing the Pennsylvania rule on screening, which specifies that the screened lawyer must be apportioned no part of the fee). Finally, it is well-accepted under the ABA Model Rules that screens are ineffective to avoid imputed conflicts in small law firms. For example, the Northern District of Illinois rejected a screen as a means to resolve a conflict within a small firm, explaining that: The small size of the firm also weighs heavily against an effective screen. Although [the firm] does not explain the structure of the firm, it cannot have the formal divisions of large firms which often help facilitate a successful Chinese Wall. In such a small firm, it is questionable whether a screen can ever work. Van Jackson v. Check ’N Go of Illinois, Inc., 114 F. Supp. 2d 731, 733 (N.D. Ill. 2000). In another case, the Northern District of New York explained that: “Cases in which a screen has 11

been rejected as a method for preventing disclosure include instances in which the law firm was small, and there remained doubts that even the most stringent screening methods would be effective.” Human Electronics, Inc. v. Emerson Radio Corp., 375 F. Supp. 2d 102, 107

(N.D.N.Y. 2004) (citing Young v. Cent. Square Sch. Dist., 213 F. Supp. 2d 202, 216 (N.D.N.Y. 2002) (relying on the relatively small size of the firm in support of disqualification, and citing favorably another case involving a 35-member law firm); see also Filippi v. Elmont Union Free Sch. Dist. Bd. of Educ., 722 F. Supp. 2d 295, 308-09 (E.D.N.Y. 2010) (citing cases and noting that courts in the Second Circuit “often find[] that screening procedures are inadequate in small firms”); Mitchell v. Metro. Life Ins. Co., No. 01 Civ. 2112 (WHP), 2002 WL 441194, at *6 (S.D.N.Y. Mar. 21, 2002) (screening measures put in place at a 12-lawyer office were insufficient); Baird v. Hilton Hotel Corp., 771 F. Supp. 24, 27 (E.D.N.Y. 1991) (disqualifying nine-attorney law firm). Under these authorities, screening is particularly inappropriate in this case because of the small and intimate nature of the Hayes Messina law firm and the extensive nature of the Hayes Messina firm’s representation of Adaptix. The firm’s website identifies only five partners in the firm. Eight Hayes Messina attorneys have appeared in cases on behalf of Adaptix.6 Together, the Hayes Messina lawyers are appearing on behalf of Adaptix in 31 cases.7 Moreover, attorneys

The eight Hayes Messina attorneys appearing on behalf of Adaptix are: Paul J. Hayes, Dean Bostock, Samiyah Diaz, Steven E. Lipman, Thomas R. Fulford, Jonathan Ross DeBlois, Kevin Gannon, and Michael James Ercolini. In addition, six Hayes Bostock attorneys had previously filed appearances on behalf of Adaptix: Dean G. Bostock, Paul J. Hayes, James C. Hall, Paul J. Cronin, Samiyah Diaz, and Steven E. Lipman. Hayes Messina attorneys are appearing in the following cases on behalf of Adaptix: ADAPTIX, INC. v. CELLCO PARTNERSHIP ET AL. (6:12-CV-00120) (E.D. Tex.); ADAPTIX, INC. v. CELLCO PARTNERSHIP ET AL. (6:12-CV-00121) (E.D. Tex.); ADAPTIX, INC. v. APPLE, INC. ET AL. (6:12-CV-00124) (E.D. Tex.); ADAPTIX, INC. v. APPLE, INC. ET AL. (6:12-CV-00125) (E.D. Tex.); ADAPTIX, INC. v. MOTOROLA MOBILITY LLC ET AL. (6:12-CV-00016) (E.D. Tex.); ADAPTIX, INC. v. AT&T, INC. ET AL. (6:12-CV-00017) (E.D. Tex.); ADAPTIX, INC. v. AT&T, INC. ET AL. (6:12-CV-00019) (E.D. Tex.); ADAPTIX, INC. v. PANTECH WIRELESS INC., ET AL, (6:12-cv-00020) (E.D. Tex.); ADAPTIX, INC. v. MOTOROLA MOBILITY LLC ET AL. (5:13-CV-01774) (N.D. Cal.); ADAPTIX, INC. v. APPLE, INC. ET AL. (5:13-CV-01776) (N.D. Cal.); ADAPTIX, INC. v. APPLE, INC. ET AL., (5:13-CV-01777) (N.D. Cal.); ADAPTIX, INC. v. AT&T, INC. ET AL.
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Gannon and DeBlois are personally involved in the Adaptix litigation concerning the ’212 and ’748 patents (the same patents at issue in this case against Dell). Specifically, Messrs. Gannon and DeBlois have appeared in six cases on behalf of Adaptix. Where, as here, the entire Hayes Messina firm appears to be working on Adaptix matters in the same small office, no comfort exists that the conflicted lawyers Gannon and DeBlois can avoid collaborating, speaking with, or otherwise communicating with their colleagues who represent Adaptix in this case against Dell. Under the authorities cited above, any screen will not allay the conflict of interest and client confidentiality concerns that lie at the heart of the ABA Model Rules.
(5:13-CV-01778) (N.D. Cal.); ADAPTIX, INC. v. CELLCO PARTNERSHIP ET AL. (5:13-CV-01844) (N.D. Cal.); ADAPTIX, INC. v. APPLE, INC. ET AL. (5:13-CV-02023) (N.D. Cal.); ADAPTIX, INC. v. APPLE, INC. ET AL. (6:13-CV-00028) (N.D. Cal.); ADAPTIX, INC. v. MOTOROLA MOBILITY LLC ET AL. (6:13-CV00296) (N.D. Cal.); ADAPTIX, INC. v. PANTECH CO. LTD ET AL. (6:13-CV-00424) (E.D. Tex.); ADAPTIX, INC. v. AMAZON.COM, INC. ET AL. (6:13-CV-00432) (E.D. Tex.); ADAPTIX, INC. v. ASUSTEK ET AL. (6:13-CV-00433) (E.D. Tex.); ADAPTIX, INC. v. RESEARCH IN MOTION LIMITED ET AL. (6:13-CV-00434) (E.D. Tex.); ADAPTIX, INC. v. RESEARCH IN MOTION LIMITED ET AL. (6:13-CV-00435) (E.D. Tex.); ADAPTIX, INC. v. RESEARCH IN MOTION LIMITED ET AL. (6:13-CV-00436) (E.D. Tex.); ADAPTIX, INC. v. HUAWEI TECHNOLOGIES CO., LTD. ET AL. (6:13-CV-00438) (E.D. Tex.); ADAPTIX, INC. v. HUAWEI TECHNOLOGIES CO., LTD. ET AL. (6:13-CV-00439) (E.D. Tex.); ADAPTIX, INC. v. HUAWEI TECHNOLOGIES CO., LTD. ET AL. (6:13-CV-00440) (E.D. Tex.); ADAPTIX, INC. v. HUAWEI TECHNOLOGIES CO., LTD. ET AL. (6:13-CV-00441) (E.D. Tex.); ADAPTIX, INC. v. SONY MOBILE COMMUNICATIONS, INC. ET AL. (6:13-CV-00442) (E.D. Tex.); ADAPTIX, INC. v. ZTE CORPORATION ET AL. (6:13-CV-00443) (E.D. Tex.); ADAPTIX, INC. v. ZTE CORPORATION ET AL. (6:13-CV-00444) (E.D. Tex.); ADAPTIX, INC. v. ZTE CORPORATION ET AL. (6:13-CV-00445) (E.D. Tex.); ADAPTIX, INC. v. ZTE CORPORATION ET AL. (6:13-CV-00446) (E.D. Tex.). In addition, Hayes Bostock attorneys previously entered appearances in 24 cases on behalf of Adaptix: ADAPTIX, INC. v. CELLCO PARTNERSHIP ET AL. (6:12-CV00120) (E.D. Tex.); ADAPTIX, INC. v. MOTOROLA MOBILITY LLC ET AL. (5:13-CV-01774) (N.D. Cal.); ADAPTIX, INC. v. APPLE, INC. ET AL. (5:13-CV-01776) (N.D. Cal.); ADAPTIX, INC. v. APPLE, INC. ET AL., (5:13-CV-01777) (N.D. Cal.); ADAPTIX, INC. v. AT&T, INC. ET AL. (5:13-CV-01778) (N.D. Cal.); ADAPTIX, INC. v. CELLCO PARTNERSHIP ET AL. (5:13-CV-01844) (N.D. Cal.); ADAPTIX, INC. v. APPLE, INC. ET AL. (5:13-CV-02023) (N.D. Cal.); ADAPTIX, INC. v. APPLE, INC. ET AL. (6:13-CV-00028) (N.D. Cal.); ADAPTIX, INC. v. MOTOROLA MOBILITY LLC ET AL. (6:13-CV-00296) (N.D. Cal.); ADAPTIX, INC. v. PANTECH CO. LTD ET AL. (6:13-CV-00424) (E.D. Tex.); ADAPTIX, INC. v. AMAZON.COM, INC. ET AL. (6:13-CV-00432) (E.D. Tex.); ADAPTIX, INC. v. ASUSTEK ET AL. (6:13-CV-00433) (E.D. Tex.); ADAPTIX, INC. v. RESEARCH IN MOTION LIMITED ET AL. (6:13-CV-00434) (E.D. Tex.); ADAPTIX, INC. v. RESEARCH IN MOTION LIMITED ET AL. (6:13-CV-00435) (E.D. Tex.); ADAPTIX, INC. v. RESEARCH IN MOTION LIMITED ET AL. (6:13-CV-00436) (E.D. Tex.); ADAPTIX, INC. v. HUAWEI TECHNOLOGIES CO., LTD . ET AL. (6:13-CV-00438) (E.D. Tex.); ADAPTIX, INC. v. HUAWEI TECHNOLOGIES CO., LTD . ET AL. (6:13-CV-00439) (E.D. Tex.); ADAPTIX, INC. v. HUAWEI TECHNOLOGIES CO., LTD. ET AL. (6:13-CV00440) (E.D. Tex.); ADAPTIX, INC. v. HUAWEI TECHNOLOGIES CO., LTD. ET AL. (6:13-CV-00441) (E.D. Tex.); ADAPTIX, INC. v. SONY MOBILE COMMUNICATIONS, INC. ET AL. (6:13-CV-00442) (E.D. Tex.); ADAPTIX, INC. v. ZTE CORPORATION ET AL. (6:13-CV-00443) (E.D. Tex.); ADAPTIX, INC. v. ZTE CORPORATION ET AL. (6:13-CV-00444) (E.D. Tex.); ADAPTIX, INC. v. ZTE CORPORATION ET AL. (6:13CV-00445) (E.D. Tex.); ADAPTIX, INC. v. ZTE CORPORATION ET AL. (6:13-CV-00446) (E.D. Tex.).

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D.

Co-counsel The Tadlock Law Firm Must Also Be Disqualified.

The Tadlock Law Firm (Adaptix’s co-counsel in Texas) also is conflicted in this matter. In In re CHM Homes, Inc., the Court of Appeals of Texas held that under Texas Disciplinary Rule of Professional Conduct 1.09(b), co-counsel are considered “associated” for conflict imputation purposes even if they do not practice in the same firm. No. 04-13-00050-CV, 2013 WL 2446724, at *5 (June 5, 2013). As a result, the conflicted lawyer was irrebuttably presumed to have shared confidential information with co-counsel, requiring co-counsel’s disqualification. Id. at *7-8. Moreover, as discussed above, the Texas Disciplinary Rules do not recognize screening as a means of avoiding this type of conflict. The outcome for the Tadlock Law Firm is the same under the ABA Model Rules. No effort whatsoever has been made to screen the conflicted Hayes Messina lawyers from the Tadlock Law Firm. To the contrary, by all accounts the Tadlock Firm works closely with the Hayes Messina firm, including the conflicted lawyers, Indeed, the Tadlock Law Firm (which consists of only two lawyers), has appeared with the Hayes Messina law firm on behalf of Adaptix in 20 cases.8

8

Attorney Charles Tadlock is appearing in all 20 of the cases and attorney Keith Smiley is appearing in 19 of the cases (he has not appeared in 6:13-CV-00585). The 20 cases have all been filed in the Eastern District of Texas: ADAPTIX, INC. v. AT&T, INC. ET AL. .(6:12-CV-00017); ADAPTIX, INC. v. PANTECH WIRELESS INC., ET AL. (6:12-cv-00020); ADAPTIX, INC. v. CELLCO PARTNERSHIP ET AL. (6:12-CV-00120); ADAPTIX, INC. v. PANTECH CO. LTD ET AL. (6:13-CV-00424); ADAPTIX, INC. v. AMAZON.COM, INC. ET AL. (6:13-CV00432); ADAPTIX, INC. v. ASUSTEK ET AL. (6:13-CV-00433); ADAPTIX, INC. v. RESEARCH IN MOTION LIMITED ET AL. (6:13-CV-00434); ADAPTIX, INC. v. RESEARCH IN MOTION LIMITED ET AL. (6:13-CV00435); ADAPTIX, INC. v. RESEARCH IN MOTION LIMITED ET AL. (6:13-CV-00436); ADAPTIX, INC. v. DELL, INC. ET AL. (6:13-CV-00437); ADAPTIX, INC. v. HUAWEI TECHNOLOGIES CO., LTD. ET AL. (6:13CV-00438); ADAPTIX, INC. v. HUAWEI TECHNOLOGIES CO., LTD . ET AL. (6:13-CV-00439); ADAPTIX, INC. v. HUAWEI TECHNOLOGIES CO., LTD . ET AL. (6:13-CV-00440); ADAPTIX, INC. v. HUAWEI TECHNOLOGIES CO., LTD. ET AL. (6:13-CV-00441); ADAPTIX, INC. v. SONY MOBILE COMMUNICATIONS, INC. ET AL. (6:13-CV-00442); ADAPTIX, INC. v. ZTE CORPORATION ET AL. (6:13CV-00443); ADAPTIX, INC. v. ZTE CORPORATION ET AL. (6:13-CV-00444); ADAPTIX, INC. v. ZTE CORPORATION ET AL. (6:13-CV-00445); ADAPTIX, INC. v. ZTE CORPORATION ET AL. (6:13-CV-00446); ADAPTIX, INC. v. NEC CASIO MOBILE COMMUNICATIONS, LTD . ET AL. (6:13-CV-00585).

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Given the Tadlock Law Firm’s extensive working relationship with the Hayes Messina firm on Adaptix matters, screening would not be effective to avoid disqualification. Under similar circumstances, courts have disqualified co-counsel under the ABA Model Rules because of imputed conflicts. See, e.g., j2 Global Commc’ns, Inc. v. Captaris Inc., No. CV 09-04150 DDP (AJWx), 2012 WL 6618272, *7-10 (C.D. Cal. Dec. 19, 2012) (presuming co-counsel had relevant confidential information); Burnett v. Olson, No. Civ. A. 04-2200, 2005 WL 711602, at *7-8 (E.D. La. Mar. 18, 2005) (co-counsel disqualified based on the imputation of a conflict); Pound v. DeMera DeMera Cameron, 135 Cal. App. 4th 70, 75-80 (applying mandatory disqualification rule to firm with tainted co-counsel) (Cal. App. 2005); Zarco Supply Co. v. Bonnell, 658 So. 2d 151, 153-55 (Fla. Dist. Ct. App. 1995) (presuming co-counsel had relevant confidential information). III. CONCLUSION For the foregoing reasons, both the Hayes Messina firm and the Tadlock Law Firm should be disqualified from representing Adaptix in this case against Dell. Dated: October 11, 2013 By: /s/ Kimball R. Anderson Kimball R. Anderson kanderson@winston.com Kathleen B. Barry kbarry@winston.com Solana P. Flora sflora@winston.com WINSTON & STRAWN LLP 35 West Wacker Drive Chicago, IL 60601 Telephone: (312) 558-5600 Facsimile: (312) 558-5700 Deron R. Dacus Texas State Bar No. 00790553 THE DACUS FIRM, PC 15

821 ESE Loop 323, Suite 430 Tyler, TX 75701 Telephone: (903) 705-1117 Facsimile: (903) 705-1117 ddacus@dacusfirm.com Attorneys for Defendant Dell Inc.

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CERTIFICATE OF SERVICE I hereby certify that on October 10, 2013, I electronically filed the foregoing MOTION TO DISQUALIFY PLAINTIFF’S COUNSEL with the Clerk of the Court using the Court’s ECF system, which will send notification of such filing to all counsel of record.

Dated:

October 11, 2013 By: /s/ Kimball R. Anderson Deron R. Dacus ddacus@dacusfirm.com Texas State Bar No. 00790553 THE DACUS FIRM, PC 821 ESE Loop 323, Suite 430 Tyler, TX 75701 Telephone: (903) 705-1117 Facsimile: (903) 705-1117 Kimball R. Anderson kanderson@winston.com Kathleen B. Barry kbarry@winston.com Solana P. Flora sflora@winston.com WINSTON & STRAWN LLP 35 West Wacker Drive Chicago, IL 60601 Telephone: (312) 558-5600 Facsimile: (312) 558-5700 Attorneys for Defendant Dell Inc.

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CERTIFICATE OF CONFERENCE I hereby certify that counsel for Defendant Dell Inc. has complied with Local Rule CV7(h), and counsel for Plaintiff Adaptix Inc. has indicated that Dell’s Motion to Disqualify Plaintiff’s Counsel is opposed. On October 10, 2013, Dell counsel Kimball R. Anderson

conferred by phone with counsel for Plaintiff, Steven E. Lipman. After discussing the issues presented in Dell’s Motion to Disqualify Plaintiff’s Counsel, counsel for Dell and counsel for Plaintiff reached an impasse that requires resolution by the Court. In addition to the formal conference in compliance with Local Rule CV-7(h) held via telephone on October 10, 2013, Kimball R. Anderson and Steven E. Lipman previously discussed issues related to this motion via telephone on June 6, 2013, as well as via multiple e-mail exchanges during July 2013 and August 2013. On October 11, 2013, Dell counsel Solana P. Flora conferred by phone with local counsel for Plaintiff, Charles Craig Tadlock. After discussing the issues presented in Dell’s Motion to Disqualify Plaintiff’s Counsel, counsel for Dell and local counsel for Plaintiff reached an impasse that requires resolution by the Court.

Dated:

October 11, 2013 By: /s/ Kimball R. Anderson Kimball R. Anderson kanderson@winston.com Solana P. Flora sflora@winston.com WINSTON & STRAWN LLP 35 West Wacker Drive Chicago, IL 60601 Telephone: (312) 558-5600 Facsimile: (312) 558-5700 Attorneys for Defendant Dell Inc. 18