Volterra Semiconductor LLC, v. Monolithic Power Systems, INC.

Filing 59

MEMORANDUM OPINION Signed by Judge Colm F. Connolly on 8/26/2020. (nmf)

IN THE UNITED STATES DISTRICT COURT00
FOR THE DISTRICT OF DELA WARE
VOLTERRA SEMICONDUCTOR
LLC,
Plaintiff,

v.

Civil Action No. 19-2240-CFC

MONOLITHIC POWER SYSTEMS,
INC.,
Defendant.

Robert Oakes, FISH & RICHARDSON, P.C., Wilmington, Delaware; David
Barkan, FISH & RICHARDSON, P.C., Redwood City, California

Counsel for Plaintiff
Andrew Russell, Karen Keller, Nathan Hoeschen, SHAW KELLER LLP,
Wilmington, Delaware; Robert Benjamin Cassady, FINNEGAN, HENDERSON,
FARABOW, GARRETT & DUNNER, LLP, Washington, D.C.; Lionel Lavenue,
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP,
Reston, Virginia; Bob Steinberg, Matthew Moore, LATHAM & WATKINS LLP,
Washington, D.C.; Surendra Ravula, LATHAM & WATKINS LLP, Chicago,
Illinois

Counsel for Defendant
MEMORANDUM OPINION
August 26, 2020
Wilmington, Delaware

mi: CONNOLLY
UNITED STATES DISTRICT JUDGE
Plaintiff Volterra Semiconductor LLC has sued Defendant Monolithic
Power Systems, Inc. for infringement of U.S. Patent Nos. 6,362,986; 7,525,408;
and 7,772,955. D.I. 1. Monolithic has moved under Model Rules of Professional
Conduct l.9{a) and l.lO(a) to disqualify Volterra's counsel from the firm of Fish &
Richardson P.C. on the grounds that Fish previously represented Monolithic in
matters that are substantially related to this case. D.I. 17.

I.

BACKGROUND
Monolithic and Volterra are semiconductor companies that specialize in

high-performance power management solutions. D.I. 1 ,r 13; D.I. 20 ,r 2; D.I. 18 at
4. The asserted Volterra patents cover direct current to direct current (DC-to-DC)
power converters that are based upon a coupled inductor architecture. D.I. 16 at 6;
D.I. 31 at 3. Volterra accuses Monolithic's DC-to-DC converter technology of
infringing the asserted patents. D.I. 1 ,r 18. Volterra accuses by name only one
Monolithic product, Monolithic's "48V-1V Power Solution for CPU, SoC or ASIC
Controller" (Power Solution). D.I. 1 ,r 18. Volterra has stated that it reserves "the
right to add additional accused products and additional claims as warranted by
discovery and the Court's schedule." D.I. 21, Ex. 19 at 1.
The law firm representing Volterra in this case, Fish, previously represented

Monolithic in legal matters. Fish's representation of Monolithic began in July
2007. D.I. 20 ,r 7; D.I. 20, Ex. 2 at 2. At the time Monolithic engaged Fish,
Volterra was a Fish client. D.I. 35, Ex. J at 2. Before Fish began work for
Monolithic, Fish informed Monolithic that Volterra was Fish's client and that Fish
could not do any work adverse to Volterra. D.I. 35, Ex. J at 2.
Fish's representation of Monolithic lasted five years. D.I. 18 at 5-6; D.I. 35
at 1. During those five years, over 30 Fish attorneys worked on 13 matters related
to DC-to-DC converter technology for Monolithic. D.I. 48 at 1, 4.
In litigation matters, Fish asserted or prepared to assert on Monolithic' s
behalf patents related to DC-to-DC converter technology. D.I. 20 ,r,r 39-44; D.I.

35 at 6. Fish also defended Monolithic from competitors in litigation matters
involving "power inverters" that relate to "many of the same underlying
technologies as DC-to-DC converters." D.I. 20 ,r,r 45-47.
In prosecution matters, Fish prosecuted two Monolithic patent applications
related to DC-to-DC converter technology and represented Monolithic in a
reexamination proceeding for a patent related to DC-to-DC converter technology.
D.I. 20 ,r,r 54-55.
In 2007-2008, Fish conducted a "[t]echnology [r]eview" at Monolithic. D.I.
20 ,r,r 15, 17; D.I. 35 at 7. As part of the review, Fish interviewed Monolithic
personnel and reviewed Monolithic's intellectual property, products, and financial

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data for Monolithic products. D.I.20119; D.I. 20, Ex. 5 at 11-12.
Finally, during the five years that Fish represented Monolithic, Fish advised
Monolithic "on the steps for setting up and establishing a joint venture with
Microsemi Corporation called Powertech Association LLS." D.I. 18 at 7; D.I. 20 ,r
25. That representation resulted in Fish asserting Powertech' s patents related to
DC-to-DC converter technology against competitors. D.I. 18 at 7; D.I.20125.
Before asserting the Powertech patents, Fish required Monolithic to agree that Fish
was representing Powertech and not Monolithic in those matters. D.I. 20, Ex 3 at
14 ("MPS hereby understands and agrees that [Fish] only represents Powertech in
the [lawsuits in which Fish asserted Powertech's patents], and does not represent
MPS with respect to the Lawsuits.").
None of these 13 matters that Monolithic cites involved Volterra, Volterra
patents, or the accused Power Solution product.
Ten of the 30 attorneys that completed work for Monolithic still work for
Fish; all ten are partners/principals at Fish. D.I. 19 ,r 6.
During the five years that Fish provided legal services to Monolithic,
Monolithic had its own in-house legal department that included a General Counsel
and a Director of Patents. D.I. 20 ,I 1; D.I. 35, Ex. K. Also, during those five
years, firms other than Fish completed patent work for Monolithic. For example,
in 2009, Monolithic replaced Fish with other law firms as counsel on two litigation

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matters that related to DC-to-DC converter technology, D.I. 35, Ex. L; D.I. 35, Ex.
M, and the majority of Monolithic's patent prosecution work in 2007-2012 was
completed by another law firm, D.I. 35, Ex. N.
In July of 2012, Fish informed Monolithic that it intended to terminate its
attorney-client relationship with Monolithic. D.I. 20, Ex. 13 at 1. The termination
was formalized in September 2012 and Fish returned its remaining Monolithic files
to Monolithic. D.I. 20, Ex. 4 at 1. In 2014, Monolithic's attorneys from another
law firm asked Fish for documents and information related to a matter that Fish
had handled for Monolithic. D.I. 20 ,r 65; D.I. 20, Ex. 15. Before Fish provided
the requested items to Monolithic' s counsel, Fish required Monolithic to agree that
Fish no longer had and was not forming an attorney-client relationship with
Monolithic. D.I. 20, Ex. 15 at 1-3.
II.

LEGAL STANDARDS

District Courts have the "inherent authority to supervise the professional
conduct of attorneys appearing before it," including the power to disqualify an
attorney from a representation. United States v. Miller, 624 F.2d 1198, 1201 (3d
Cir. 1980) (citations omitted). "[M]otions to disqualify are generally disfavored"
and, therefore, require the moving party to "clearly demonstrate that continued
representation would be impermissible." Talecris Biotherapeutics, Inc. v. Baxter
Int 'l Inc., 49 l F. Supp. 2d 510, 513 (D. Del. 2007) (internal quotation marks and

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citations omitted).
"An attorney's conduct is measured by the ethical standards of the court
before which the attorney appears." Id. The District of Delaware has adopted the
Model Rules of Professional Conduct (MRPC). See D. Del. LR 83.6(d). MRPC
Rule l .9(a) provides:
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.
For a representation to violate Rule 1.9, therefore, the representation must meet
four elements:
( 1) the lawyer must have had an attorney-client
relationship with the former client; (2) the present
client's matter must either be the same as the matter the
lawyer worked on for the first client, or a substantially
related matter; (3) the interests of the second client must
be materially adverse to the interests of the former client;
and (4) the former client must not have consented to the
representation after consultation.

Apeldyn Corp. v. Samsung Elecs. Co., Ltd., 660 F. Supp. 2d 557, 561 (D. Del.
2009) (internal quotation marks and citation omitted).
"To the extent that a motion to disqualify involves imputing an individual
lawyer's representation to an entire firm, M.R.P.C. 1.l0(a) is also relevant."

Intellectual Ventures I LLC v. Checkpoint Software Techs. Ltd., 2011 WL

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2692968, at *6 (D. Del. June 22, 2011). MRPC Rule l.l0(a) provides:
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 ( 1) the prohibition is based on a
personal interest of the prohibited lawyer and does not
present a significant risk of materially limiting the
representation of the client by the remaining lawyers in
the firm.
Rule l.l0(a), therefore, "imputes one attorney's conflicts to all other attorneys in
his firm." United States v. McDade, 404 Fed. Appx. 681, 683 (3d Cir. Dec. 22,
2010).
"[W]hether disqualification is appropriate depends on the facts of the case
and is never automatic." Boston Sci. Corp. v. Johnson & Johnson, Inc., 647 F.
Supp. 2d 369, 374 n.7 (D. Del. 2009) (citations omitted). This Court "approaches
motions to disqualify counsel with cautious scrutiny, mindful of a litigant's right to
the counsel of its choice." Intellectual Ventures I, 2011 WL 2692968, at *6; see

also Satellite Fin. Planning Corp. v. First Nat. Bank of Wilmington, 652 F. Supp.
1281, 1283 (D. Del. 1987) ("A movant for disqualification must have evidence to
buttress his claim of conflict because a litigant should, as much as possible, be able
to use the counsel of his choice.").

III.

DISCUSSION
The parties agree that three of the four requirements for a violation of MRPC

Rule 1.9(a) are met: (1) Fish had an attorney-client relationship with Monolithic;
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(2) Volterra's interest in this litigation is materially adverse to Monolithic's
interest; and (3) Monolithic did not consent to Fish's representation of Volterra in
this matter. The parties dispute, however, whether the present litigation between
Volterra and Monolithic is "substantially related" to Fish's prior representation of
Monolithic.
To determine whether a current matter is "substantially related" to a matter
from a former representation, a court must answer the following three questions:
( 1) What is the nature and scope of the prior
representation at issue? (2) What is the nature of the
present lawsuit against the former client? (3) In the
course of the prior representation, might the client have
disclosed to his attorney confidences which could be
relevant to the present action? In particular, could any
such confidences be detrimental to the former client in
the current litigation?

Satellite Fin. Planning Corp., 652 F. Supp. at 1283 (citations omitted).

A.

What is the nature and scope of the prior representation at issue?

Fish provided legal services to Monolithic for five years between 2007 to
2012. Fish represented Monolithic in litigation and patent prosecution matters that
involved DC-to-DC converter technology. Fish also conducted a "technology
review" for Monolithic and counselled Monolithic through the formation of
Monolithic's joint venture with Powertech. Fish's representation of Monolithic
never involved Volterra, Volterra patents, or the accused Power Solution product.

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B.

What is the nature of the present lawsuit against the former
client?

Volterra has sued Monolithic for infringement of three Volterra patents that
cover a subset of DC-to-DC converter technology related to coupled inductors. In
the Complaint, Volterra defines the accused products broadly as "DC-to-DC Power
Converters," but the Complaint names just one accused product, Monolithic's
Power Solution. D.I. 1 ,r 18. Volterra has reserved the right to accuse additional
products "as warranted by discovery and the Court's schedule." D.I. 21, Ex. 19 at
1.

C.

In the course of the prior representation, might the client have
disclosed to its attorney confidences that could be detrimental to
the client in the present action?

In resolving this third question, "the court should not allow its imagination
to run free with a view to hypothesizing conceivable but unlikely situations in
which confidential information 'might' have been disclosed which would be
relevant to the present suit." Satellite Fin. Planning, 652 F. Supp. at 1284 (citation
omitted). To justify disqualification, "[m]ore facts of a relationship are needed
than a simple statement of prior work done in a superficially similar area." Id. at
1285.
It is undisputed that Monolithic disclosed confidences to Fish in connection
with Fish's prior representations. But Monolithic has failed to establish that those
confidences could be used by Fish to Monolithic' s detriment in this case.

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Monolithic' s principal argument is that this case and the work Fish did for
Monolithic in the past are substantially related because they both concern DC-toDC converters. "DC-to-DC converter technology," however, is too broad a subject
area to establish a substantial relationship between the representations. As a 2013
Institute of Electrical and Electronics Engineers textbook states, DC-to-DC
converters are "currently being employed in various electronic equipment and
systems" and they "look so varied in their topologies and operation that the
diversity of de-to-de converters is seemingly amazing, even mysterious." D.I. 35,
Ex. A at 123. More than 36,000 U.S. patents mention DC-to-DC converter
technology in their written descriptions and more than 8,000 patents mention the
technology in their claims. D.I. 35, Ex. H; D.I. 35, Ex. I. Monolithic alone sells
hundreds of different DC-to-DC converters. The "DC-DC Power Converters"
category on Monolithic's website lists 746 products, D.I. 35, Ex. E, and the first 15
pages of Monolithic' s product catalog covers only "DC/DC Power Conversion"
with over 300 products, DJ. 35, Ex. G.
Monolithic also argues that a substantial relationship between the
representations exists because Fish served as its "IP general counsel" and that
because Fish's work for Monolithic was "wide-ranging, spanned the course of five
years, and touched on [Monolithic]'s entire business," "it is impossible to predict
or protect against all potential harm to [Monolithic]." D.I. 18 at 15. Monolithic

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alleges that Fish "focused on all of [Monolithic]'s IP issues" and "encouraged
[Monolithic] to disclose to Fish its most strategic, sensitive, and confidential knowhow and business aspirations." D.I. 18 at 5.
As an initial matter, I am not persuaded that Fish acted as Monolithic's "IP
general counsel." Monolithic' s engagement letter with Fish makes no reference to
"IP general counsel." See generally D.I. 20, Ex. 2. Moreover, during the time Fish
represented Monolithic, Fish represented Monolithic' s competitors, including
Volterra; Monolithic had its own in-house legal department with a General
Counsel and a Director of Patents; and other law firms did patent work for
Monolithic. But, in any event, Monolithic does not identify specific confidential
information or even a specific type of confidential information that Fish likely
obtained from its putative "general counsel" representation that could be used to
Monolithic' s detriment in this case.
In short, Monolithic has not clearly demonstrated that Fish's representation
of Volterra in this case is substantially related to Fish's prior work for Monolithic. 1

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Monolithic also asserts that "Fish advised [Monolithic] on the steps for setting up
and establishing a joint venture with [Powertech] ... which led to Fish asserting
patents on DC-to-DC converter-related technologies against competitors on behalf
of Powertech." D.I. 18 at 7 (citation omitted). That work, however, did not
involve Volterra, Volterra patents, or the accused product. Also, such evidence is
not relevant to the present motion because Fish represented Powertech when it
asserted Powertech' s patents, not Monolithic; Monolithic expressly agreed that
Fish's representation of Powertech was not a representation of Monolithic. D.I.
20, Ex. 3 at 14.
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Monolithic has therefore failed to meet its burden to establish that a conflict exists
under Rule l .9(a). And because no conflict exists under Rule l .9(a), no conflict is
imputed to the Fish law firm under Rule 1.1 O(a).

IV. CONCLUSION
For the foregoing reasons, I will deny Monolithic's motion to disqualify. The
Court will enter an order consistent with this Memorandum.

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