Opinion
SA CV 02-578 AHS (ANx).
June 18, 2007
I. PROCEDURAL HISTORY
On January 30, 2007, Plaintiffs filed a Motion to Disqualify Defendants' Counsel Orrick, Herrington Sutcliffe LLP and James W. Geriak Due to Former and Continuing Representation of Plaintiff Hassan Kunbargi ("Motion to Disqualify"). On February 12, 2007, Defendants filed opposition thereto. On February 16, 2007, Plaintiffs filed a reply. On February 26, 2007, the Court held a hearing on the Motion to Disqualify ("the hearing") and provided the parties with a Tentative Ruling. The Court vacated the hearing date on all pending motions and took the matter under submission in light of new material proffered by Defendants at the hearing.
At the close of the February 26, 2007 hearing, the Court allowed Defendants to file (1) certain documents located by Defendant Edward K. Rice that Defendants contend demonstrate that Fibermesh, Inc. ("Fibermesh") is the "true owner" of the `992 patent; (2) a declaration by Defendants' legal ethics expert; and (3) a list of legal authorities not cited in Defendants' opposition, but upon which Defendants relied at the hearing. On February 27, 2007, Plaintiff Hassan Kunbargi ("Kunbargi") filed an Objection to Additional Citations and Hearsay Evidence Filed After Hearing on Motion to Disqualify Defendants' Counsel Orrick Herrington. On April 30, 2007, Plaintiffs filed a Request for Judicial Notice of New Authority Re: Motion to Disqualify Defendants' Counsel Orrick Herrington.
In addition, after the hearing, Defendants filed a Supplemental Declaration of Conrad R. Solum, Jr. in Support of Defendants' Motion to Disqualify Defendants' Counsel Orrick, Herrington Sutcliffe LLP and James W. Geriak ("Supplemental Solum Declaration"). Because the Supplemental Solum Declaration was not requested nor authorized by the Court at the hearing, the Court orders the Supplemental Solum Declaration stricken from the record.
The Court overrules Plaintiffs' objection.
The Court grants Plaintiffs' request for judicial notice.
II. FACTUAL BACKGROUND
Plaintiffs, including Kunbargi, are the patent holders and licensees of a patent for clinker (a precursor compound to cement) and the resulting cement that rapidly hardens into high-strength concrete. Defendants include Edward K. Rice ("Rice") and his company, CTS Cement Manufacturing Company.Kunbargi and Rice have a long and tumultuous history. During the late 1980's, Kunbargi worked for Rice as a consultant, and Rice was Kunbargi's advisor in a Ph.D. program at UCLA. The facts at issue in this motion involve one of Kunbargi and Rice's joint inventions for a method of testing cement. The cement-testing invention is the subject of United States Patent No. 4,866,992 (`992), issued in September 1989.
The `992 patent is not in issue in this litigation.
The law firm Lyon Lyon LLP ("Lyon") prosecuted the `992 patent on behalf of inventors Kunbargi and Rice before the United States Patent and Trademark Office ("PTO") from approximately 1986-89. Attorney James W. Geriak ("Geriak") was a partner at Lyon during that time. The primary attorney responsible for prosecution of the `992 patent was Walter Duft ("Duft"), and the partner in charge of Rice's and CTS's business with Lyon was Conrad Solum ("Solum"). In connection with prosecution of the `992 patent, Rice and Kunbargi executed a Power of Attorney, designating as their attorneys Solum, Duft, Geriak, and several other Lyon attorneys, "with full power of substitution and revocation, to prosecute this application and transact all business in the Patent and Trademark Office connected therewith." The Power of Attorney was submitted to the PTO as part of the `992 patent file.
Solum began working for Rice and his companies in the 1960's and worked on many issues for Rice over the years.
In his declaration, Kunbargi states that he remembers working directly with Geriak during the course of Lyon's representation of Rice and Kunbargi. Geriak and other attorneys who worked at Lyon during that time have no such recollection. Kunbargi further states that he divulged confidences to Geriak regarding Kunbargi's working relationship with Rice. After the `992 patent issued, Lyon continued to transact business with regard to the `992 patent before the PTO, filing a change of address form in 1999, which continued to list Geriak on the Power of Attorney.
The parties dispute whether Rice and Kunbargi or Fibermesh, Inc. ("Fibermesh"), are the "true owners" of the `992 patent for purposes of establishing an attorney-client relationship. Plaintiffs contend that because the patent was never assigned and the Power of Attorney designates Lyon and Geriak as counsel, Rice and Kunbargi are Lyon's and Geriak's clients. Defendants assert that Fibermesh, as the true owner of the `992 patent, was Lyon's and Geriak's client until Fibermesh decided to let the patent lapse.
In June 1986, before the concrete testing method was invented, Rice executed an agreement with Fibermesh ("the Agreement"). The Agreement provides that any "Contractor Inventions" belong to Fibermesh. "Contractor Invention" is defined in the Agreement as "an Invention which is conceived by the Contractor or conceived by the Contractor in a joint effort with others during the Contractor's engagement by the Company hereunder which results directly from work on the Project and is within the defined limits of the Project." (Emphasis added.) The Agreement also states that "Should the Company elect to file any application for patent protection . . . the Contractor will execute all necessary papers and documents, including formal assignments to the Company. . . ." The Agreement further obligates Rice to cooperate with any attorneys of Fibermesh's choosing in the prosecution of a patent.
Kunbargi is not a signatory to the Agreement. No assignment of the `992 patent was made. Fibermesh's name is not on the patent file wrapper for the `992 patent.
In 2001, the 12-year patent maintenance fee for the `992 patent became due. Rice, acting pursuant to orders from Fibermesh, instructed Lyon not to pay the fee. The `992 patent subsequently lapsed. Kunbargi was not consulted regarding the nonpayment of the 12-year patent maintenance fee. Kunbargi wants the `992 patent reinstated.
In August 2002, Geriak retired from Lyon. Shortly thereafter, Lyon dissolved. It is unknown what happened to Lyon's `992 patent files. In September 2002, Geriak joined Orrick, Herrington Sutcliffe LLP ("Orrick"). In the summer of 2006, Orrick and Geriak became counsel of record for Defendants in this action. By now, the term of the `992 patent has expired.
No Lyon files have been produced in support of Defendants' position.
III. SUMMARY OF PARTIES' CONTENTIONS
A. Plaintiffs' Motion
In the Motion to Disqualify, Plaintiffs contend that defense counsel Geriak currently represents Kunbargi with regard to the `992 patent and must therefore be disqualified from representing Defendants in this action. The PTO rules confirm that every patent practitioner mentioned in the Power of Attorney for a patent is counsel of record for the named inventors or other listed patent owners. Case law also confirms that Geriak is Kunbargi's counsel. See Mindscape, Inc. v. Media Depot, Inc., 973 F. Supp. 1130, 1132 (N.D. Cal. 1997) (holding that law firm designated on Power of Attorney for patent owned by plaintiff could not simultaneously represent a defendant in an unrelated suit brought by plaintiff). In addition, Geriak and Orrick must withdraw under the rules of successive representation because Geriak and Lyon learned material information from Kunbargi concerning his business relationship with Rice from 1986-1989. Further, the `992 matter is substantially related to the current litigation because Kunbargi and Rice's business relationship is material to the Defendants' shop right defense.
B. Defendants' Opposition
Defendants contend that Plaintiffs cannot satisfy the high standard of proof required for disqualification. The true owner of the `992 patent is Fibermesh, and therefore Lyon and Geriak never represented Kunbargi with respect to the `992 patent. Any alleged representation of Kunbargi ended when Fibermesh instructed Rice to let the patent lapse. Geriak did not work on prosecution of the `992 patent and had no opportunity to obtain confidences from Kunbargi. Plaintiffs waived objection to Geriak's and Orrick's representation of Defendants because, in 2002, when the instant action was filed, Plaintiffs did not raise the conflict issue with respect to the representation of Defendants by Solum, Geriak's colleague at Lyon. Further, Plaintiffs ignore the critical fact that Kunbargi and Rice, as co-inventors, were at best joint clients of Lyon. As joint clients, communications with counsel are not privileged as between the joint clients, and there is no basis for disqualification due to conflict of interest. If the Court is inclined to grant Plaintiff's motion, it must also disqualify Plaintiffs' counsel Foley Lardner LLP ("Foley") because some former Lyon attorneys are now at Foley.
C. Plaintiffs' Reply
Plaintiffs reply that the joint client privilege exception does not apply to concurrent representation. With regard to successive representation, the California Court of Appeal rejected the joint client argument advanced by Defendants in Western Continental Operating Co. v. Natural Gas Corp. of California, 212 Cal. App. 3d 752, 761, 261 Cal. Rptr. 100 (Cal.Ct.App. 1989). Geriak's conclusory denials of receipt of confidential information are insufficient as a matter of law. Where there is a substantial relationship between the prior and current matters, receipt of confidences is presumed. Even if considered, Geriak's conclusory denial is insufficient because such a claim should be supported by time sheets or internal correspondence files from Lyon, and Lyon's internal file is noticeably absent from the opposition. Plaintiffs did not waive objection in 2002 because Solum voluntarily withdrew based upon an unrelated conflict of interest before Plaintiffs could bring a motion to disqualify. There is no record of assignment of the patent to Fibermesh or anyone else, and Lyon represented on the wrapper that the patent is not assigned. Rice and Kunbargi applied for and obtained the patent in their own names. Lyon took the instruction of Rice alone and did not notify their other client and co-inventor Kunbargi of the maintenance fee. The failure to do so was negligence that must now be rectified, and the continuing obligation to cure also means Geriak continues to represent Kunbargi pursuant toMindscape, It is irrelevant that other Lyon attorneys joined Foley Lardner LLP.
D. Defendants' Supplemental Brief
At the hearing, Defendants, relying on Sun Studs, Inc. v. Applied Theory Associates, Inc., 772 F.2d 1557, 1567-68 (Fed. Cir. 1985), argued that the Power of Attorney is not dispositive on the issue of whether an attorney-client relationship exists for purposes of a conflicts analysis. Defendants also asserted that any purported conflict was merely imputed to Geriak because he worked at Lyon during the prosecution of the `992 patent. Under the former representation conflicts analysis of Adams v. Aerojet-General Corp., 86 Cal. App. 4th 1324, 104 Cal. Rptr. 2d 116 (Cal.Ct.App. 2001), he should not be disqualified.
IV. LEGAL STANDARD
A court must examine a motion to disqualify carefully "to ensure that literalism does not deny the parties substantial justice." People ex rel. Dept. of Corporations v. SpeeDee Oil Change Systems, Inc., 20 Cal. 4th 1135, 1144, 86 Cal. Rptr. 2d 816 (Cal. 1999). The movant bears the burden of establishing grounds for disqualification. See Evans v. Artek Systems Corp., 715 F.2d 788, 791 (2nd Cir. 1983) (observing that courts require particularly high standard of proof for disqualification based upon former representation). Disqualification motions are subject to strict judicial scrutiny because of the potential for misuse for tactical purposes. Optyl Eyewear Fashion International Corp. v. Style Companies, Ltd., 760 F.2d 1045, 1051 (9th Cir. 1985); see also Western Continental Operating Co. v. Natural Gas Corp. of California, 212 Cal. App. 3d 752, 763, 261 Cal. Rptr. 100 (Cal.Ct.App. 1989) (noting that a trial court may properly consider the possibility that the party brought the motion as a tactical device to delay litigation).
The United States District Court for the Central District of California adopts the Rules of Professional Conduct of the State Bar of California, and decisions of any court applicable thereto, as its standards of professional conduct. Local Rule 83-3.1.2;see also Christensen v. United States District Court for the Central District of California, 844 F.2d 694, 697 n. 6 (9th Cir. 1988) (noting that because the Central District of California has expressly adopted the California ethical rules, the question on appeal is whether the district court properly applies them). The California Rules of Professional Conduct govern an attorney's duties of confidence and loyalty to his client. California Rule of Professional Conduct 3-310 ("Rule 3-310") provides that a member of the bar shall not, without informed written consent of each client, accept representation of more than one client in which the interests of the clients potentially or actually conflict. Cal. St. Bar Rule of Prof. Cond. § 3-310(C). Rule 3-310 further provides that a member of the bar shall not, without informed written consent of each client, "represent a client in a matter and at the same time in a separate matter accept as a client a person or entity whose interest in the first matter is adverse to the client in the first matter." Id. § 3-310(C). Rule 3-310 also prohibits a member of the bar, without obtaining informed consent of both clients, from accepting "employment adverse to the client or former client where, by reason of the representation of the client or former client, the member has obtained confidential information material to the employment."Id. § 3-310(E).
V. DISCUSSION
A. Plaintiffs Did Not Waive Objection to Orrick and Geriak's Representation of Defendants by Unreasonably Delaying the Motion to Disqualify
Defendants contend that Plaintiffs waived their objection to any purported conflict by failing to raise it when Solum originally represented Defendants in 2002. California recognizes an exception to disqualification when a party unreasonably delays in bringing a motion to disqualify. See Western, 212 Cal. App. 3d at 763-64 (noting that "the delay and the ensuing prejudice must be extreme" to result in denial of a motion to disqualify); see also River West, Inc. v. Nickel, 188 Cal. App. 3d 1297, 1309-10, 234 Cal. Rptr. 33 (Cal.Ct.App. 1987) (adopting unreasonable delay and prejudice rule and citing Trust Corp. of Montana v. Piper Aircraft Corp., 701 F.2d 85 (9th Cir. 1983) to demonstrate that the Court of Appeals for the Ninth Circuit frames the issue in terms of waiver). If the party opposing the motion demonstrates prima facie evidence of unreasonable delay causing prejudice to the current client, the burden shifts to the party seeking disqualification to justify the delay. River West, 188 Cal. App. 3d at 1309.
Defendants argue that Plaintiffs waived objection to Geriak and Orrick's representation of Defendants by failing to object to Solum's initial representation of Defendants. Plaintiffs point out that Solum voluntarily withdrew in 2002 due to an unrelated conflict before Plaintiffs could bring a motion based upon all available grounds for disqualification. Under these circumstances, it appears to the Court that Plaintiffs were under no obligation to put the attorneys at Lyon on notice of any additional duties of professional responsibility.
The relevant period of representation for purposes of this motion begins in August 2006 when Orrick and Geriak became counsel of record for Defendants. Defendants contend that Plaintiffs waited five months after Geriak and Orrick became counsel of record before bringing this motion on the eve of trial. Defendants further contend that Plaintiffs have "concocted this issue in an attempt to further delay this case, drive up the litigation costs for Defendants, and harass Defendants. . . ." (Defs.' Opp. at 12.) A five-month delay is not unreasonable in this case, however, given the complexities wrought by Lyon's dissolution. Compare Western, 212 Cal. App. 3d at 764 (two-month delay not unreasonable) with River West, 188 Cal. App. 3d at 1312-13 (47 month delay unreasonable). Consequently, Plaintiffs did not waive the conflict or unreasonably delay in bringing the instant motion.
B. Kunbargi is not Geriak's client for purposes of a conflict analysis
The threshold issue in this case is whether execution of the Power of Attorney created an attorney-client relationship between Geriak and Kunbargi with regard to prosecution of the `992 patent. If there is no attorney-client relationship between Geriak and Kunbargi, then there is no conflict, and no need for disqualification. If, on the other hand, Geriak continues to represent Kunbargi with regard to the `992 patent, he may not simultaneously represent Rice in an action adverse to Kunbargi, and must be disqualified.
The PTO Rules of Practice ("PTO Rules") govern the patent prosecution process and contain rules regarding the designation of Power of Attorney. The PTO Rules define the Power of Attorney as "a written document by which a principal authorizes one or more patent practitioners or joint inventors to act on his behalf." Rules of Practice in Patent Cases, 37 C.F.R. § 1.31(a)(2). A "principal" means "either an applicant for a patent or an assignee of entire interest of the applicant for patent. . . ." Id. § 1.32(a)(3). The Power of Attorney must identify ten or fewer patent practitioners as being of record in the Power of Attorney. Id. § 1.32(c)(3). A Power of Attorney may be revoked at any stage of the proceedings by an applicant for a patent, the assignee of the entire interest of the applicant, or the owner of the entire interest in the patent. Id. § 1.36(a). A registered patent attorney or patent agent who has been given a Power of Attorney may also withdraw upon application to and approval from the Director. Id. § 1.36(b).
In general, only the actual inventor or inventors may apply for a patent. 37 C.F.R. § 1.41. This is true even when the patent to be issued is assigned to a third party. Id. § 1.46. In Sun Studs, the Court of Appeals for the Federal Circuit, considering a motion to disqualify based upon a Power of Attorney, held that "a Power of Attorney does not ipso facto create an attorney-client relationship." 772 F.2d at 1568. Under general agency principles, "one who grants a Power of Attorney for the benefit of a third person does not create an attorney-client relationship between the grantor and the attorney." Id.
In Sun Studs, the defendant-inventor sought to disqualify counsel for the plaintiff company based upon a Power of Attorney. The court reasoned that pursuant to the inventor rights clause of the parties' agreement, the defendant-inventor had agreed to assign the patent to the plaintiff and was required by contract to execute "whatever papers are necessary" for prosecution of the patent. 772 F.2d at 1568. In general, where a patent is to be assigned, the selection of patent counsel is the choice of the assignee rather than of the inventor. Id. The court thus found that any relationship between the patent counsel and the inventor was "solely technical in nature" and that the patent counsel was working on behalf of the plaintiff company, rather than the inventor, during prosecution of the patent. Id. The court further found that the Power of Attorney was given for the benefit of the plaintiff company, not for the defendant-inventor's own benefit.Id. at 1569. The court held that no former attorney-client relationship existed between the inventor and patent counsel. Id. at 1569.
The invention rights clause stated that title to all domestic and foreign patents on inventions arising out of the consulting work under the contract would be assigned to Sun Studs. Sun Studs, 772 F.2d at 1564.
Defendants refer to Levin v. Ripple Twist Mills, 416 F. Supp. 876 (E.D. Pa. 1976) for the proposition that lack of formal assignment is not dispositive on the issue of representation. In Ripple Twist, the plaintiff-inventor made a contract with the defendant licensee pursuant to which he granted the defendant a license in any patents prosecuted. 416 F. Supp. at 885-86. Under the agreement, the licensee had the right to prosecute patents in the inventor's name, and the inventor was obligated to cooperate with counsel of the licensee's choice. Id. The plaintiff was a patent attorney who routinely negotiated licenses and prosecuted patents himself and who had represented himself during the negotiation of the license agreement. Id. After the licensee determined that it was no longer in his interest to bear the expense of the patent prosecutions, the inventor revoked the Power of Attorney he had given to the licensee's counsel. Id. at 886. The court found that in "the very special circumstances of this case," there was no prior representation of the inventor by the licensee's law firm. Id.
The Sun Studs court cited Ripple Twist with approval. See Sun Studs, 772 F.2d at 1568 n. 8.
Plaintiffs rely primarily on Mindscape, In Mindscape, there was no dispute over ownership of the patent at issue. The court disqualified a law firm based in part on the law firm being listed on the Power of Attorney. 973 F. Supp. at 1332-33. The court found that plaintiff Mindscape granted Power of Attorney regarding the patent to the defendant's law firm, designating two of the law firm's attorneys to represent it in all matters relating to the patent. Id. The court found that the Power of Attorney "constitutes an ongoing relationship that bars Chan [the law firm] from simultaneously representing Thunder Max in litigation with Mindscape." Id. at 1133. The court observed that an attorney's relationship with a client is imputed to the entire firm, and the law firm was listed with the PTO as the addressee for all correspondence. Id.
Because a Power of Attorney does not ipso-facto create an attorney-client relationship, the Court proceeds to determine for whose benefit the Power of Attorney was executed in this case: the inventors or a third party. It is undisputed that the `992 patent was never formally assigned to Fibermesh. Nor is there any evidence of a licensing agreement similar to the one at issue inRipple Twist, Defendants contend, nonetheless, that Fibermesh is the true owner of the `992 patent, and therefore, under Sun Studs, Lyon's and Geriak's only client with regard to prosecution of the `992 patent.
"The general rule is that an individual owns the patent rights to the subject matter of which he is an inventor, even though he conceived it or reduced it to practice in the course of his employment." Banks v. Unisys Corp., 228 F.3d 1357, 1359 (Fed. Cir. 2000). Two exceptions to this presumption in favor of inventor ownership exist. First, an employee may enter into an express contract granting his employer ownership of the employee's inventions. Id. at 1359. Second, if an employee is hired to invent something or to solve a particular problem, a resulting invention may belong to the employer. Id. This latter exception is known as the "employed-to-invent" rule. Id.
In support of the contention that Fibermesh is the true owner of the `992 patent, Defendants submit the Agreement executed by Rice and Fibermesh. Defendants also present invoices, generated by Lyon and sent to Rice for services provided in January-February 1987. For January 14, 1987, there is an entry that states "Professional Services CRSolum, regarding U.S. Patent application Docket 177/80, review of and revision to draft patent application." Defendants include a letter from Rice to Kunbargi, dated January 3, 1989, reminding Kunbargi that "Fibermesh paid us for [the `992 patent's] development and therefore the rights belong to them," and a letter from Kunbargi, dated December 29, 1988, that tends to show that Kunbargi believed the patent was issued in Rice and Kunbargi's names, but was within the scope of Rice and Kunbargi's work for Fibermesh.
The `992 patent application number is 177/80.
Rice states in his Supplemental Declaration, produced after the hearing on the Motion to Disqualify, that Fibermesh did not want its name on the `992 patent because "having a patented testing device could potentially make it more difficult for researchers to achieve the same test results as those achieved by Fibermesh." (Supplemental Decl. of Edward K. Rice ("Supp. Rice Decl.") ¶ 3.) Rice attaches a letter, dated October 1, 1987, from Rice to the president of Fibermesh, in which Rice states that "the patent effort," with the exception of the "Tensile Testing device" (later known as the `992 patent), will be moved from Lyon to Fibermesh's Atlanta patent counsel. Attached to the letter is a letter from Rice to another representative of Fibermesh, in which Rice conveys that Lyon wants Fibermesh to request the patent files directly, rather than through Rice, because "the original documents other than the tensile testing device [later known as the `992 patent] were submitted to Lyon and Lyon by you [Fibermesh]." (Supp. Rice Decl. ¶ 2, Ex. A.)
Defendants appear to argue that the Agreement establishes that Fibermesh owns the patent pursuant to an exception to the inventor ownership rule, and thus, under Sun Studs, Kunbargi and Rice executed the Power of Attorney for the benefit of Fibermesh. Plaintiffs dispute that the `992 patent belongs to Fibermesh, and there is conflicting evidence on this point. As noted previously, the `992 patent was never assigned to Fibermesh. The uncontroverted evidence further shows that Fibermesh became uninterested in the `992 patent. Unlike the plaintiff in Ripple Twist, Kunbargi is not a patent attorney. Nor was he a signatory to the Agreement. He did not bargain for the Agreement's terms. Rather, in the late 1980's, Kunbargi was a graduate student working as a consultant for Rice. It is undisputed that Kunbargi and Rice are joint inventors of the `992 patent. There is no evidence of communications between Lyon and Fibermesh regarding the `992 patent. The `992 patent was prosecuted by Lyon, Rice's longtime counsel.
On the other hand, Rice executed the Agreement, which granted all ownership rights in Contractor Inventions to Fibermesh. The Agreement places Rice within the first exception to the inventor ownership rule. See Banks, 228 F.3d 1359; see also Teets v. Chromalloy Gas Turbine Corp., 82 F.3d 403, 407 (Fed. Cir. 1996) ("An employee may thus freely consent by contract to assign all rights in inventive ideas to the employer."). And, it is undisputed that Kunbargi was working for Rice when the subject matter of the `992 patent was invented. Kunbargi's work appears to fall within the scope of the term "Contractor Invention," as defined by the Agreement, because it was conceived in joint effort with Rice.
Plaintiffs do not dispute that the `992 patent is a Contractor Invention as defined in the Agreement. Rather, Plaintiffs argue that the lack of formal assignment is evidence that Fibermesh relinquished whatever claims it had to the `992 patent. It is true that Lyon billed Rice, not Fibermesh, for Lyon's services associated with prosecution of the `992 patent. However, Rice states that he, in turn, billed Fibermesh, and he produces an invoice so indicating. Rice declares that he acted at the direction of Fibermesh in transactions regarding the `992 patent, including declining to pay maintenance fees in 2001.
Plaintiffs rely on the Power of Attorney and lack of assignment of the `992 patent to demonstrate that Kunbargi, not Fibermesh, was Geriak's client. Neither of these pieces of evidence is dispositive on the issue. See Sun Studs, 772 F.2d at 1568; Ripple Twist, 416 F. Supp. At 886. The Agreement executed by Rice and Fibermesh establishes that Fibermesh was positioned to become the owner of the `992 patent. The Court therefore concludes that Kunbargi and Rice executed the Power of Attorney for the benefit of Fibermesh. Under Sun Studs, execution of the Power of Attorney did not make Kunbargi the client of Lyon and Geriak for purposes of the `992 patent prosecution. Consequently, no attorney-client relationship existed between Kunbargi and Geriak during the prosecution of the `992 patent. Plaintiffs do not meet their burden to establish grounds for disqualification.
Upon review of conflicting evidence, the Court finds that Geriak did not receive actual confidences from Kunbargi during the course of the `992 patent prosecution. The Court discounts Kunbargi's declaration on this point and credits Geriak's declaration along with declarations of other attorneys who worked at Lyon during the prosecution of the `992 patent.
VI. CONCLUSION
For the foregoing reasons, Plaintiffs' Motion to Disqualify Defendants' Counsel Orrick, Herrington Sutcliffe LLP and James W. Geriak Due to Former and Continuing Representation of Plaintiff Hassan Kunbargi is denied. The Court orders the Supplemental Declaration of Conrad R. Solum, Jr. in Support of Defendants' Motion to Disqualify Defendants' Counsel Orrick, Herrington Sutcliffe LLP and James W. Geriak stricken from the record.
IT IS SO ORDERED.
IT IS FURTHER ORDERED that the Clerk shall serve a copy of this Order on counsel for all parties in this action.