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Judge Robinson Sanctions Violation of Model Rule 4.2

By Karen E. Keller, Andrew A. Lundgren et al.

Microsoft Corp. v. Alcatel Bus. Sys., C.A. No. 07-090 (D. Del. Dec. 18, 2007).

This case dealt with a violation of Model Rule of Professional Conduct 4.2 by two attorneys from a prominent national firm. The attorneys purchased, on the open market, an Alcatel Communications System that contained certain features at issue in the patent litigation. The system was installed at the attorneys’ Washington D.C. offices, and one of the technicians working on the installation identified himself as an employee of Alcatel-Lucent, one of the originally-named defendants in the case. The employee helped install the system, trained the attorneys on how to use the system, and engaged in ongoing conversations with the attorneys about the administration, use, and configuration of the system. The Court noted that the employee was one of only a limited number of engineers at Alcatel with the experience and training to install the system.

Rule 4.2 prevents an attorney from communicating “about the subject of the representation with a person the lawyer knows to be represented by another lawyer in the matter, unless the lawyer has the consent of the other lawyer or is authorized to do so…” Because the Alcatel-Lucent employee “was directed (as an employee of a represented party) to engage in conduct directly relevant to the subject matter of this litigation,” the court found a violation of Rule 4.2. Op. at 3. The Court also noted the employee’s position and level of responsibility (implying that the employee could either bind or make an admission on behalf of Alcatel such that the employee was “represented”).

As sanctions for the conduct, the Court ordered the attorneys’ firm to pay the costs of the disqualification motion and refused to allow the firm to use the fruits of its conduct, including refusing to allow the attorneys at issue to continue working on the case, refusing to allow Microsoft’s expert to continue working on the case, and prohibiting dissemination of the information gleaned from the employee to any other witness in the matter. The Court found that no confidential information was disclosed by the employee to the attorneys, so the only harm to the other side was the discovery of information about the accused products “without the glaze of litigation strategems that usually accompany the discovery process.” Op. at 4. This lack of disclosure of confidential information appears to have been the Court’s reason for stopping short of complete disqualification.

Full post as published by Delaware IP Law Blog on December 21, 2007 (boomark / email).