FREEMAN EQUIPMENT, INC. v. CATERPILLAR, INC., Dist. Court, ND Illinois 2017 – Google Scholar:
Caterpillar moved to disqualify the lawyer for the plaintiff on two bases: (a) he placed a phone call to a retired Caterpillar employee and (b) he previously acted as local counsel for Caterpillar. Judge Bucklo denied the motion. The case is a patent dispute.
The phone interview was not sufficient because the interview did not reveal privileged information. The second issue, the past representation, was also insufficient because the defendant waited too long to bring the motion and because there was insufficient information in the record to reconstruct the prior representation. The court explained:
I now turn briefly to defendant’s argument that Mr. Padden and his law firm must be disqualified based on Mr. Padden’s past representation of Caterpillar. This argument merits little discussion. First, “[a] motion to disqualify should be made with reasonable promptness after a party discovers the facts which lead to the motion.” Weeks v. Samsung Heavy Indus. Co., 909 F. Supp. 582, 584 (N.D. Ill. 1996) (quoting Kafka v. Truck Insurance Exchange, 19 F.3d 383, 386 (7th Cir. 1994)). All agree that defendant has been aware of Mr. Padden’s involvement in this case since August of 2016, and that defense counsel has actively engaged with him as opposing counsel since that time. Defendant’s explanation for its almost six-month delay in seeking disqualification—that Mr. Padden’s conflict of interest became apparent only after he manifested a “desire to delve into internal Caterpillar legal procedures”—is unsupported by reasoned analysis and does not withstand scrutiny.
Second, notwithstanding defendant’s lengthy apologia for the “appearance of impropriety” standard, all agree that the analysis ultimately turns on whether defendant has shown that Mr. Padden’s previous representation of Caterpillar is “substantially related” to his current representation of Freeman. See LaSalle Nat. Bank v. Lake County, 703 F.2d 252, 255 (7th Cir. 1983). The first step in this “three-level inquiry” requires me to “make a factual reconstruction of the scope of the prior legal representation.” Id. at 256. Then, I must determine whether it is “reasonable to infer that the confidential information allegedly given would have been given to an attorney representing a client in such matters.” Bobkoski v. Bd. of Educ. of Cary Cmty. Consol. Sch. Dist. No. 26, McHenry Cty., Ill., No. 90 C 5737, 1991 WL 61052, at *3 (N.D. Ill. Apr. 12, 1991). Finally, I must decide whether that issue is relevant to the issues presented in the current litigation.” Id.
Here, I need not proceed past the first step. The only evidence defendant offers regarding the scope of Mr. Padden’s previous representation of Caterpillar is his notice of appearance in Global Patent Holdings. Neither that document, nor defendant’s vague reference in its memorandum to another, unspecified patent case in which Mr. Padden was allegedly “involved…for Caterpillar” in 2007, allows me to make a meaningful “factual reconstruction” of the scope of Mr. Padden’s prior representation. Indeed, the only glimpse defendant offers into these previous cases is its acknowledgement that Caterpillar “was not directly adverse to Freeman” in the latter case. Def.’s Mem. at 13. Defendant goes on to speculate that the information shared with Mr. Padden in that case “could have included information pertaining to Caterpillar’s internal legal processes concerning patent procurement, patent infringement analyses, methods for obtaining legal opinions regarding infringement and/or invalidity, as well as a host of other items pertaining to Caterpillar’s legal strategies involving its approach to patent infringement suits.” Def.’s Mem. at 13. But the fact-based, “substantially related” inquiry requires more than mere speculation about information that might have been shared in an unidentified case not involving plaintiff.
In sum, an interesting and informative opinion denying a motion to disqualify.
Edward X. Clinton, Jr.
Legal Ethics Lawyer 