In re Application of AIS GmbH Aachen Innovative Solutions et al

Filing 48

ORDER by Magistrate Judge Howard R. Lloyd deeming moot 19 Thoratec, LLC's Motion to Disqualify Counsel. (hrllc2, COURT STAFF) (Filed on 4/5/2017)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

United States District Court
Northern District of California

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In re Application of AIS GMBH AACHEN
INNOVATIVE SOLUTIONS & ABIOMED
EUROPE GMBH, Petitioners, for an Order
Pursuant to 28 U.S.C. § 1782 to Take
Discovery for Use in Foreign Proceedings,
Pursuant to the Federal Rules of Civil
Procedure, of Respondent Thoratec LLC

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Case No. 5:16-mc-80094-HRL
ORDER DEEMING MOOT
THORATEC, LLC'S MOTION TO
DISQUALIFY COUNSEL
Re: Dkt. No. 19

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This is a miscellaneous action ancillary to patent litigation in Germany. The German

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action was filed by AIS GmbH Aachen Innovative Solutions (AIS) and Abiomed Europe

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(Abiomed) against Thoratec, LLC (Thoratec). AIS and Abiomed are represented in Germany by

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the Bird & Bird law firm. Pursuant to 28 U.S.C. § 1782, the present miscellaneous action was

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filed here by the Ropes & Gray law firm to obtain discovery from Thoratec in aid of the German

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litigation.
Thoratec moved for an order from this court disqualifying Ropes & Gray, as well as a

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motion to stay discovery in this miscellaneous proceeding pending resolution of the

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disqualification issue. In sum, Thoratec says that Bird & Bird has a conflict of interest because

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that firm previously represented Thoratec with respect to patents that are at issue in Germany.1

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Details concerning Bird & Bird’s prior representation have been sealed and need not be
discussed here.

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Ropes & Gray was not involved in Bird & Bird’s prior representation of Thoratec. Nor has it

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entered an appearance in the German lawsuit. Nevertheless, Thoratec contends that, by working

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with Bird & Bird in the present proceeding before this court, Ropes & Gray has been tainted by

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Bird & Bird’s alleged conflict of interest. Bird & Bird is not before this court; and, according to

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Thoratec, there is no disqualification procedure in Germany---or at least not one that Thoratec

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finds practicable.

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In response, and while it disputed that there was any basis for disqualification, Ropes &

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Gray advised that it was willing to bow out from this miscellaneous action. To that end, the firm

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filed a notice of its withdrawal from this case and substitution of new counsel, the LeClairRyan
law firm. LeClairRyan apparently represented that it has not received any information or had

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United States District Court
Northern District of California

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conversations with Ropes & Gray or Bird & Bird about the subject matter of this action; has not

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received any work product from Ropes & Gray or Bird & Bird; and will not discuss the subject

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matter of this action with Ropes & Gray or Bird & Bird.

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Based on LeClairRyan’s representations, Thoratec withdrew its motion for a discovery

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stay. Nevertheless, it is dissatisfied with Ropes & Gray’s withdrawal from this matter because it

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doesn’t feel that the withdrawal goes far enough. Thoratec requests that this court issue an order

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prohibiting Ropes & Gray from communicating with Bird & Bird about three patents (two

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European patents and one U.S. patent) that Thoratec says give rise to Bird & Bird’s conflict of

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interest.

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Ropes & Gray contends that Thoratec’s motion to disqualify is moot. It says that what

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Thoratec actually seeks is a global injunction prohibiting European counsel from communicating

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with one another in patent litigation pending there. Ropes & Gray advises that its lawyers in

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London are representing AIS and Abiomed in patent litigation against Thoratec in the United

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Kingdom (UK). This court is told that the UK suit involves two of the three patents that Thoratec

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does not want Ropes & Gray to discuss with Bird & Bird. Bird & Bird is not involved in the UK

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suit; and, as discussed above, Ropes & Gray is not involved in the German action. But Ropes &

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Gray says that its European lawyers do talk with Bird & Bird in Europe about the patent suits

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pending in the UK and Germany. Nonetheless, Ropes & Gray says that it has determined that it
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has no conflict of interest under UK rules in proceeding in the UK litigation and that Bird & Bird

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has determined that it has no conflict of interest under German rules with respect to the German

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suit. As such, Ropes & Gray argues that there is no basis for this court to issue an injunction

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against the lawyers in Europe.

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Thoratec denies that it seeks a global injunction as to the European counsel in either the

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UK or the German action. But, if this court issues an order granting the requested relief and that

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order happens to affect the UK case being litigated by Ropes & Gray, then Thoratec says that is

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simply a consequence to Ropes & Gray of having an international practice.

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Pointing out that none of the cited cases limits disqualification geographically, Thoratec
says that under California’s vicarious presumption rule, one attorney’s conflict generally is

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United States District Court
Northern District of California

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imputed to the entire firm. However, none of the cases cited by the parties addresses the specific

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situation presented here where the scope of relief requested impacts the conduct of litigation

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abroad, where different rules concerning potential or actual conflicts of interest may apply.

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Thoratec maintains that this court has authority to grant the requested relief because this

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miscellaneous action is ancillary to the German proceeding. But, the fact remains that Bird & Bird

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is not before this court, and Ropes & Gray (the actual target of Thoratec’s disqualification motion)

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is not involved in the German action. And, while Ropes & Gray disputes that it has been “tainted”

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by anything Bird & Bird may have done, it has voluntarily withdrawn from any further

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involvement in this ancillary proceeding. This court therefore concludes that Ropes & Gray has

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the better argument. To the extent Thoratec seeks an order enjoining or otherwise regulating the

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conduct of counsel in other actions not before this court, it must seek relief from the adjudicators

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in those actions. See Thomas Kinkaide Co. v. Hazlewood, No. C06-7034 MHP, 2007 WL

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1655846, at *5-6 (N.D. Cal., June 6, 2007) (This court almost certainly lacks jurisdiction to

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preclude plaintiffs’ counsel from appearing in actions not before this court. Attempts to disqualify

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plaintiffs’ counsel from other proceedings are properly directed toward the adjudicators in those

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actions.”).

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For the foregoing reasons, Thoratec’s motion to disqualify Ropes & Gray is deemed moot.

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Any additional relief Thoratec seeks beyond Ropes & Gray’s voluntary withdrawal from this case
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is denied.
SO ORDERED.
Dated: April 5, 2017

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HOWARD R. LLOYD
United States Magistrate Judge

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United States District Court
Northern District of California

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5:16-mc-80094-HRL Notice has been electronically mailed to:
Andrew Radsch [e-mail], [e-mail],
[e-mail], [e-mail]

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Jennifer Koh

[e-mail], [e-mail]

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Michelle Patricia Woodhouse

[e-mail], #[e-mail]

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Patricia L. Peden

[e-mail], [e-mail]

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Rebecca Rose Carrizosa [e-mail], [e-mail],
[e-mail]

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Richard T. McCaulley, Jr

[e-mail]

Roger J. Chin

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United States District Court
Northern District of California

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Terrence J.P. Kearney [e-mail], #[e-mail],
[e-mail], [e-mail]

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[e-mail], #[e-mail]

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