Farhang v. Indian institute of Technology Kharagpur et al

Filing 491

ORDER by Judge Ronald M Whyte denying 467 Motion to Disqualify Counsel. (rmwlc2, COURT STAFF) (Filed on 4/4/2014)

Download PDF
1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 NORTHERN DISTRICT OF CALIFORNIA 10 United States District Court For the Northern District of California SAN JOSE DIVISION 11 12 13 M.A. MOBILE LTD., a limited liability company chartered in Dominica; and MANDANA D. FARHANG 16 17 18 19 ORDER DENYING PLAINTIFFS’ MOTION FOR DISQUALIFICATION AFTER RECONSIDERATION Plaintiffs, 14 15 Case No. C-08-02658-RMW v. [Re Docket No. 467] INDIAN INSTITUTE OF TECHNOLOGY KHARAGPUR, an Indian Institute of Technology incorporated under the “Institutes of Technology Act, 1961”; PARTHA P. CHAKRABARTI; and DOES 1 through 100, inclusive, Defendants. 20 21 Plaintiffs Mandana Farhang (“Farhang”) and M.A. Mobile Ltd. (collectively “plaintiffs”) 22 move the court to reconsider its January 13, 2010 Order Denying Plaintiffs’ Motion to Disqualify 23 the law firm Orrick, Herrington & Sutcliffe LLP (“Orrick”) as counsel for defendants Indian 24 Institute of Technology Kharagpur (“IIT”) and Partha P. Chakrabarti’s (“Chakrabarti”). The court’s 25 prior ruling was based on the premise that Attorney Neel Chatterjee, lead counsel for defendants, 26 did not enter into an attorney-client relationship with the defendants until after Attorney James 27 Telfer, an Orrick attorney who represented Farhang from July 2000 to January 2001, had left the 28 Orrick firm. Dkt. Nos. 86, 98. After the court issued its order, new facts were presented to the court ORDER DENYING DISQUALIFICATION Case No. C-08-02658-RMW LRM -1- 1 showing that Attorney Chatterjee had privileged communications with defendant Chakrabarti while 2 Attorney Telfer was still at Orrick. Dkt. No. 458-4. The court therefore granted leave to plaintiffs to 3 file a motion for reconsideration based on new material facts. See Local Rule 7-9(b); Dkt. No. 485. 4 After reviewing the new facts and reconsidering parties’ previous submissions and the evidence, the 5 court DENIES the motion for disqualification. 6 The issue of disqualification is a difficult one to resolve and the court has carefully analyzed 7 the substantial relationship question on which the motion now turns. The parties’ acrimony has led 8 to some extreme accusations in their papers that the court finds lack support in the evidentiary 9 record. See, e.g., Dkt. No. 473, Orrick Opp. at 23 (stating that motion to disqualify was “a baldface United States District Court For the Northern District of California 10 litigation tactic”); Dkt. No. 467, Motion to Disqualify at 23-24 (listing “facts” suggesting that 11 Attorney Chatterjee stole information from Orrick’s client files for Chakrabarti). These 12 overstatements were not helpful in resolving this motion. Hopefully, the parties can avoid extreme 13 rhetoric in going forward with this case. 14 I. BACKGROUND 15 A. Current Litigation 16 In the current lawsuit, Farhang accuses defendants of taking her intellectual property and 17 breaching a joint venture agreement. Plaintiff alleges that she initiated discussion with defendants in 18 May of 2003 concerning a joint business venture and they then unsuccessfully negotiated over a 19 three-year period during which time defendants developed her invention. Plaintiff further claims 20 that defendants then stopped communicating with her and terminated their relationship. She now 21 sues on theories of breach of contract and fraud, among others. 22 B. Attorney Telfer’s Prior Representation of Plaintiff 23 In July of 2000, Farhang retained Orrick in connection with her negotiations over an 24 employment agreement with the company Ikonodyne. Dkt. No. 30, Telfer Decl. ¶ 3; Dkt. No. 34-1 25 (Engagement Letter). Attorney Jim Telfer (“Attorney Telfer”) was the primary Orrick attorney who 26 rendered services to Farhang. He signed an engagement letter on July 27, 2000 which defined the 27 scope of representation as providing assistance “in connection with your negotiations concerning 28 your employment agreement.” Dkt. No. 34-1. The parties do not appear to dispute that the ORDER DENYING DISQUALIFICATION Case No. C-08-02658-RMW LRM -2- 1 employment agreement to be negotiated would define the rights of Farhang and lkonodyne with 2 respect to intellectual property originally invented by Brian Kenville of Ikonodyne and one of his 3 former colleagues and in collaboration with plaintiff. 4 The negotiations were not successful and Telfer’s representation ended in January 2001. 5 Farhang then initiated litigation against Ikonodyne’s founders using different counsel. Orrick was 6 not involved in that litigation. The lawsuit settled in May 2003. Farhang acquired ownership rights 7 in the intellectual property through the May 2003 settlement. Dkt. No. 31, Farhang Decl. ¶ 14. Orrick’s billing records for the period of time during which it represented Farhang reflect 9 only work on an employment agreement and show that she was billed for a total of 19.5 hours of 10 United States District Court For the Northern District of California 8 time: James Telfer- 19 hours; Greg Schick- 0.25 hours and Richard Rahm- 0.25 hours. Telfer and 11 Schick were in Orrick’s Compensation and Benefits Group while Rahm was in the Employment 12 Law Group. None of the three was still with Orrick at the time Farhang instituted the current lawsuit 13 against IIT and Chakrabarti. Telfer left Orrick on January 14, 2008; Schick left June 8, 2007 and 14 Rahm departed September 23, 2003. Dkt. No. 34 (Kaufman Decl.) ¶¶ 6, 7. 15 C. Attorney Chatterjee’s 2004 and 2006 Communications with Chakrabarti 16 While Attorney Telfer was still employed at Orrick, Orrick Attorney Neel Chatterjee 17 (“Attorney Chatterjee”) had privileged communications with defendant Chakrabarti about plaintiff 18 Farhang and a “business proposal.” See Dkt. No. 463-4 (Dec. 31, 2013 privilege log) (Priv. 251, 19 “email chain” between Attorney Chatterjee and defendant Chakrabarti “providing legal advice 20 regarding business proposal” on April 8, 2006; Priv. 252, 253, August 30, 2006 email regarding 21 same; Priv. 307-310, March 28, 2004 email “regarding potential legal assistance”); see also Dkt. 22 No. 458-11 (Aug. 17, 2013 privilege log) (disclosing March 28, 2004 and April 2004 emails 23 between Attorney Chatterjee and defendant Chakrabarti “regarding potential legal assistance”); see 24 also Dkt. No. 458-4 (Nov. 6, 2012 letter from Attorney Chatterjee to the court disclosing 25 “communications with [defendant Chakrabarti] in which he sought my legal advice regarding Ms. 26 Farhang.”). The court refers to these communications as the “Chakrabarti-Chatterjee” 27 communications. 28 ORDER DENYING DISQUALIFICATION Case No. C-08-02658-RMW LRM -3- 1 2 3 4 5 6 7 8 9 United States District Court For the Northern District of California 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 D. Prior Motion to Disqualify In May 2009, Farhang, at that point proceeding pro se, filed a Motion to Disqualify Orrick. Dkt. No. 29. The basis for her motion was that the current litigation between her and IIT and Chakrabarti is substantially related to the representation provided to her by Orrick, and, therefore, Orrick should be disqualified under California’s imputed conflicts rule. See Cal. R. Prof. Conduct 3310(E). After reviewing the parties’ submissions, the court focused on whether the conflicted attorneys, prior to leaving, shared Farhang’s confidential information with other attorneys in the firm or whether other attorneys had any dealings with Farhang. Dkt. No. 86. To answer this question, the court held an evidentiary hearing on January 12, 2010. See Dkt. No. 100. The court heard from five witnesses and determined that “no current Orrick attorney has confidential information material to the current litigation” Dkt. No. 98 at 3. The court therefore denied the motion to disqualify. Id. Critical to the court’s decision was the fact that Telfer, Schick, and Rahm had all left Orrick prior to the filing of Farhang’s lawsuit against IIT and Chakrabarti. E. Subsequent Litigation Following denial of the motion to disqualify, litigation proceeded with Orrick as counsel for defendants. On November 6, 2012, Attorney Chatterjee sent a letter to the court indicating that he had communications with Chakrabarti about Farhang that were not revealed at the 2010 hearing. Dkt. No. 458-4 (Nov. 6, 2012 letter). This letter “deeply concerned” the plaintiffs and counsel, who began “to investigate this matter further.” Dkt. No. 468-2 (Singh Decl., Ex. 1A) (Nov. 27, 2012 letter). One year later, plaintiff’s counsel subpoenaed Attorney Chatterjee, seeking his deposition to probe his relationship with Chakrabarti. Defendants moved to quash the subpoena. Dkt. No. 458. The court held a hearing on the motion to quash, and expressed its concern that the pre-suit communications raised new issues regarding the earlier motion to disqualify. Dkt. No. 466 (Hearing Tr. at 3-4). Following the hearing, plaintiffs filed the instant Motion for Reconsideration of the prior Order Denying Disqualification. Dkt. No. 467. The court granted the motion to quash because 28 ORDER DENYING DISQUALIFICATION Case No. C-08-02658-RMW LRM -4- 1 deposing Attorney Chatterjee was not likely to lead to relevant, non-privileged information, but 2 authorized plaintiffs’ filing of the Motion for Reconsideration. Dkt. No. 485. 3 After the hearing on the motion for reconsideration, Orrick submitted the Chakrabarti- 4 Chatterjee communications for in camera review by the court. Consistent with defendants’ privilege 5 logs, the communications show that Attorney Chatterjee had provided Chakrabarti with confidential 6 legal advice while Attorney Telfer was still at Orrick. Contrary to plaintiffs’ speculation, nothing in 7 the communications contains any suggestion that Attorney Chatterjee talked to Attorney Telfer or 8 accessed Attorney Telfer’s files. The communications are consistent with Orrick’s representations 9 throughout this lawsuit: Attorney Chatterjee and Chakrabarti know each other through family United States District Court For the Northern District of California 10 connections, and Chakrabarti reached out to Attorney Chatterjee personally for legal assistance. 11 Attorney Chatterjee provided legal advice without first running a conflicts check through Orrick 12 because he was essentially giving advice on the spot to a family friend. 13 The court now reconsiders its prior Order Denying Disqualification. 14 II. ANALYSIS 15 A. Imputed Conflicts of Interest 16 A motion to disqualify counsel implicates two competing issues: the current client’s right to 17 the attorney of his or her choice versus the need to maintain ethical standards of professional 18 responsibility. Jessen v. Hartford Cas. Ins. Co., 111 Cal. App. 4th 698 (2003). 19 Farhang moves to disqualify Orrick under California Rule of Professional Conduct 3-310(E). 20 Rule 3-310(E) prohibits an attorney from later agreeing to represent an adversary of the attorney’s 21 former client unless the former client provides an “informed written consent” waiving the conflict. 22 If the attorney fails to obtain such consent and undertakes to represent the adversary, the former 23 client may disqualify the attorney by showing a “substantial relationship” between the subjects of 24 the prior and the current representations. Flatt v. Superior Court, 9 Cal. 4th 275, 283 (1994). 25 Here, the undisputed facts show that Attorney Chatterjee had confidential attorney-client 26 communications with Chakrabarti while Attorney Telfer was still at Orrick. Therefore, under 27 California’s imputed conflicts rule, Orrick must be disqualified if there is a substantial relationship 28 between the two representations. There is no need to inquire as to whether any Orrick attorney ORDER DENYING DISQUALIFICATION Case No. C-08-02658-RMW LRM -5- 1 actually received confidential information, which was a key question on the prior Motion to 2 Disqualify. See Dkt. Nos. 86, 98 (applying imputed conflicts rule for departed law firm attorneys). 3 However, as part of reconsidering the prior Order Denying Disqualification, the court takes a second 4 look at whether such a substantial relationship exists. See also Dkt. No. 473 (Orrick Opp.) at 20 5 (requesting that the court reconsider its prior finding of a substantial relationship). 6 7 8 9 United States District Court For the Northern District of California 10 11 B. Reconsideration of the Issue of Whether there is a Substantial Relationship Between the Telfer Representation and the Current Representation To determine whether there is a substantial relationship between successive representations, the courts focus less on the meaning of the words substantial and relationship and look instead at the practical consequences of the attorney’s representation of the former client. The courts ask whether confidential information material to the current dispute would normally have been imparted to the attorney by virtue of the nature of the former representation. 12 H. F. Ahmanson & Co. v. Salomon Bros., Inc., 229 Cal. App. 3d 1445, 1454 (1991). Jessen 13 elaborated on the Ahmanson test, and concluded that 14 15 16 17 successive representations will be “substantially related” when the evidence . . . supports a rational conclusion that information material to the evaluation, prosecution, settlement, or accomplishment of the former representation given its factual issues is also material to the evaluation, prosecution, settlement, or accomplishment of the current representation given its factual and legal issues. 18 Jessen, 111 Cal. App. 4th. at 713. 19 As mentioned above, the Telfer representation involved negotiation of an employment 20 agreement between Farhang and Ikonodyne. Some of the issues addressed included Farhang’s role 21 within Ikonodyne, compensation for her services, and formation of a new company which would 22 hold a license to certain rights in Ikonodyne’s technology. Dkt. No. 473-5 (Employment 23 Agreement) (filed under seal); Dkt. No. 31 (Farhang Decl.) ¶ 5. However, this agreement was never 24 signed, and Farhang actually acquired her interest in the intellectual property in her later litigation 25 settlement with Ikonodyne. Farhang Decl. ¶ 14 (“In 2003, I acquired rights to the Invention as part 26 of a confidential agreement that I entered into with Mr. Kenville and Ikonodyne . . . . This 27 foundation enabled me to immediately embark upon my plans to develop and market the 28 Invention . . . .”). ORDER DENYING DISQUALIFICATION Case No. C-08-02658-RMW LRM -6- 1 Plaintiffs allege that Orrick’s involvement with the intellectual property creates the 2 substantial relationship. Farhang alleges that Orrick learned of her “long term goals as they 3 pertained to the Invention,” “what rights [she] preferred to own regarding the Invention,” and “what 4 role [she] intended to play in furthering the work of the Invention.” Id. ¶¶ 3, 5. 5 Farhang’s client file suggests that the only legal service Orrick provided to Farhang was to 6 attempt to negotiate an employment agreement with Ikonodyne or Kenville or otherwise splitting 7 the Invention between Farhang and Ikonodyne. Orrick did not prosecute any patents on the 8 intellectual property. It does not appear that Orrick provided any advice tailored to the intellectual 9 property beyond what was included in the draft employment agreement. Farhang had intellectual United States District Court For the Northern District of California 10 property counsel from the Fenwick firm accompany her at the settlement discussions with 11 Ikonodyne. In fact, Farhang testified that no one gave her advice concerning the intellectual 12 property during the ligation with Ikonodyne and Kenville: 13 14 15 16 17 18 The Court: Who did your I.P – who did you consult with for I.P. matters when Orrick no longer represented you? Ms. Farhang: As part of my settlement with Mr. Kenville, I actually had the Fenwick firm come with me. The Court: All right. But who – as I understand it, you were concerned about your I.P. rights when you were negotiating the settlement with Mr. Kenville. Ms. Farhang: Right. 19 The Court: That wasn’t resolved until months after Orrick was no longer representing you; correct? 20 Ms. Farhang: Correct. 21 22 23 24 25 26 27 28 The Court: Who gave you advice concerning I.P. during the time between when Orrick stopped representing you and the time that you settled with Kenville? Ms. Farhang: No one gave me advice. The litigation counsel may have used someone, but because it was not at the point yet in the case where the I.P. was being examined, there were no experts or anything, and then I ended up getting all the rights, so there was no negotiations at that point about how to split the I.P. because I – it was sort of clear that I was going to get everything. So – which I did end up getting. The Court: So that was different than the situation when you were with Mr. Telfer? Ms. Farhang: Well, Mr. – yes. At the point when I was with Mr. Telfer, there were – we were trying to settle the matter by splitting up the ORDER DENYING DISQUALIFICATION Case No. C-08-02658-RMW LRM -7- intellectual property into different groups so that I could go my own way with part of it and Mr. Kenville could go his way with part of it. But as we entered the litigation it became clear that Mr. Kenville’s case was so weak and really his liability was so large that I actually ended up getting all of the I.P. rights and there was no need to split them up. So all – I got all the parts, if you will. 1 2 3 4 Dkt. No. 400 (Farhang test.) at 132:25-134:17 5 6 7 8 9 United States District Court For the Northern District of California 10 11 The issues raised in the current litigation relate to Farhang’s attempt to develop intellectual property she secured through a different agreement from the employment agreement that Attorney Telfer tried to negotiate for her. Farhang’s original complaint did not mention Ikonodyne, Mr. Kenville, or Farhang’s prior employment. 1 Instead, the facts giving rise to the complaint all occurred after her separation from Ikonodyne and after the Telfer representation. Dkt. No. 147, Third Amended Complaint at ¶¶ 22, 86. The knowledge that Orrick had acquired about Farhang and the intellectual property became close to irrelevant after the Ikonodyne settlement. 12 13 14 15 16 17 Farhang also alleges that Orrick has acquired “playbook” knowledge of her litigation and settlement strategies. In some cases, “playbook” knowledge is enough to require disqualification. See, e.g. Global Van Lines v. Superior Court, 144 Cal. App. 3d 483, 488-89 (1983). This is not such a case. Farhang was billed for less than 20 hours legal work performed in a non-litigation setting. It is difficult to believe that Orrick acquired an in-depth understanding of Farhang’s litigation philosophy or “substantial knowledge of [her] policies, attitudes, and practices.” Id. 18 19 20 21 22 23 24 25 In addition, a significant amount of time passed between the Telfer representation and the Chakrabarti-Chatterjee communications. During that time, Farhang had entered into a litigation settlement with Ikonodyne in which Orrick played no role or even had knowledge. The Telfer representation related to events involving Farhang and the intellectual property that are two steps removed from the current dispute. Based on the court’s more critical analysis of the legal services Orrick rendered to Farhang, the court reconsiders its previous finding of a substantial relationship and now finds that there is not a substantial relationship between Orrick’s current representation of IIT and Chakrabarti and Orrick’s past representation of Farhang. The court finds that it is highly 26 27 28 1 The current complaint, the Third Amended Complaint contains two references to Ikonodyne. The first states that plaintiff maintained confidentiality of the IP owned by Ikonodyne while working there. Dkt. No. 147 at 21:7-11. The second alleges that Farhang showed Chakrabarti an “Ikonodyne Business Plan.” Id. at 41:14. ORDER DENYING DISQUALIFICATION Case No. C-08-02658-RMW LRM -8- 1 unlikely that confidential information material to the current dispute would have been imparted to 2 Attorney Telfer by virtue of the nature of his representation of Farhang. Therefore, in light of the 3 court’s reconsideration of the relationship between the Orrick firm and Farhang, it continues to deny 4 disqualification. As an added assurance that Orrick respects the confidentiality of its past 5 communications with Farhang, it must continue to wall-off Farhang’s client file and its ethics 6 counsel from all other Orrick attorneys. 2 See Dkt. No. 473-1 (Alderman Decl.) ¶ 8. 7 III. ORDER For the reasons explained above, the court denies the motion to disqualify. 8 9 United States District Court For the Northern District of California 10 11 Dated: April 4, 2014 _________________________________ Ronald M. Whyte United States District Judge 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 2 The court therefore denies the motion for a finding of implied limited waiver of privilege. Dkt. No. 472. ORDER DENYING DISQUALIFICATION Case No. C-08-02658-RMW LRM -9-

Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.


Why Is My Information Online?