Brown July 25 Docs

1 LEE TRAN & LIANG APLC
K. Luan Tran (SBN 193808)

2 James M. Lee (SBN 192301)
Cyrus Khojandpour (SBN 260233)
3 Lisa J. Chin (SBN 259793)
601 S. Figueroa Street, Suite 3900
4 Los Angeles, CA 90017
Tel. 213-612-3737 / Fax. 213-612-3773
5
RAY A. MANDLEKAR, ATTORNEY AT LAW
6 Ray A. Mandlekar (SBN 196797)
Tel. 213-785-6130 / Fax. 213-254-9001
8
Attorneys for Plaintiff
9 Frank Reginald Brown, IV
10
11 SUPERIOR COURT OF THE STATE OF CALIFORNIA
12 FOR THE COUNTY OF LOS ANGELES
13
14 FRANK REGINALD BROWN, IV, CASE NO: BC501483
15 Plaintiff, Assigned for all purposes to the Honorable John

L. Segal (Dept. 50)
16 v.
17 SNAPCHAT, INC., a Delaware corporation; PLAINTIFF’S REPLY IN SUPPORT OF

TOYOPA GROUP, LLC, a California Limited HIS MOTION TO DISQUALIFY
18 Liability Company; EVAN THOMAS DEFENDANTS’ COUNSEL QUINN
EMANUEL URQUHART & SULLIVAN
19 SPIEGEL, an individual; ROBERT LLP
CORNELIUS MURPHY, an individual; and
20 DOES 1 through 10 inclusive, [Defendants’ Objections to Declarations of
Joseph C. Sarles and Robert Kehr, Response to
21 Defendants. Defendants’ Objections, and Request for
Judicial Notice Filed Concurrently herewtih]
22
Hearing:
23 Date: August 1, 2013
Time: 8:30 a.m.
24 Dept.: 50
25
Action Filed: February 21, 2013
26 Trial Date: Not Assigned Yet
27
28
REPLY ISO PLAINTIFF’S MOTION TO DISQUALIFY DEFENDANTS’ COUNSEL

1 INTRODUCTION
2 The most notable feature of Defendants’ Opposition is that Defendants are unable to cite one
3 single case where a court permitted a law firm to do what Quinn Emanuel is attempting to do here:
4 Obtain confidential information from a client about prospective litigation and then switch sides to
5 oppose that same client in the same litigation, pursuant to a supposed advance waiver of conflict form.
6 No court has allowed a law firm to do this. This Court should not endeavor to be the first.
7 In a recent motion to disqualify that it filed in another matter, Quinn Emanuel called the
8 concept of successively working on both sides of a case “the cardinal sin under the disqualification
9 cases,” and obtained disqualification of the opposing firm by urging the court that “[n]o amount of
10 spin and no ethical wall can change the fact that disqualification” is required. See Request for Judicial
11 Notice (“RJN”), Exh. B at 1:3-8. The same standard—and result—should apply here.
12 Indeed, Defendants do not dispute that Quinn Emanuel attorney Anthony Alden is conflicted
13 (hence the attempt to isolate him with an ethical wall). Case law, applying the established vicarious
14 disqualification rule, is clear that this conflict is imputed to the entire Quinn Emanuel firm. Case law
15 is also clear that no ethical wall can save a side-switching firm from disqualification.
16 The supposed conflict waiver Quinn Emanuel required Plaintiff to sign also does not prevent
17 disqualification, as that supposed waiver is invalid under the factors set forth in Visa U.S.A., Inc. v.
18 First Data Corp., 241 F. Supp. 2d 1100, 1105 (N.D. Cal. 2003). Most notably, when Mr. Alden
19 purported to explain in an email the import of that waiver to Plaintiff, he specifically did not mention
20 that it would ostensibly permit Quinn Emanuel to represent the same adverse parties in the very same
21 matter he and Plaintiff were discussing. This alone is fatal to Defendants’ waiver argument.
22 Defendants – who replaced their previous counsel to knowingly retain a law firm Plaintiff had
23 consulted about this same case – now argue they are entitled to counsel of their choice. But “[t]he
24 paramount concern must be to preserve public trust in the scrupulous administration of justice and the
25 integrity of the bar [and] the important right to counsel of one’s choice must yield to ethical
26 considerations that affect the fundamental principles of our judicial process.” People ex rel. Dept. of
27 Corp. v. SpeeDee Oil Change Systems, Inc., 20 Cal. 4th 1135, 1145 (1999). This means that there are
28 limits to a Defendants’ choice of counsel, and this Court should enforce those limits.

1
ARGUMENT
1
2 I. QUINN EMANUEL SWITCHED SIDES IN THE SAME CASE
3 Defendants know that side-switching in the same case is “[t]he most egregious conflict of
4 interest” mandating automatic disqualification. SpeeDee Oil, 20 Cal. 4th at 1146. As a result,
5 Defendants hired Robert Kehr, a “distinguished ethics expert,” to issue the incredulous opinion that
6 Quinn Emanuel cannot be disqualified because no side-switching had occurred due to the fact that it
7 had declined to represent Plaintiff. Kehr Dec. at 2.
8 At the outset, Mr. Kehr’s entire declaration is inadmissible because it seeks to offer improper
9 legal opinions. See Plaintiff’s Objections to Kehr Decl. In another case, Quinn Emanuel attacked Mr.
10 Kehr for offering the same type of inadmissible opinion: “Mr. Kehr has been reprimanded by courts
11 in the past for these exact types of impermissible opinions. A Westlaw search for opinions in which
12 his testimony has been offered shows that the only two opinions addressing Mr. Kehr’s expert opinion
13 excluded it as offering improper legal conclusions […] The Court should do so here as well.” RJN,
14 Exh. A at 3:2-5. Mr. Kehr’s declaration should suffer the same fate urged by Quinn Emanuel.
15 Regardless, Mr. Kehr is absolutely wrong. Courts have consistently held that an attorney who
16 received confidential information may still be disqualified even if no formal attorney-client

17 relationship had formed or engagement had resulted. See Morrison Knudsen Corp. v. Hancock,
18 Rothert & Bunshofts, 69 Cal. App. 4th 223, 232-33 (1999) (“an attorney’s receipt of confidential
19 information from a non-client may lead to the attorney’s disqualification”); SpeeDee Oil, 20 Cal.4th at
20 1147-48 (“fiduciary relationship existing between a lawyer and client extends to preliminary
21 consultations by a prospective client with a view to retention of the lawyer, although actual
22 employment does not result”); Li v. A Perfect Day Franchise, Inc., 2011 WL 4635176 at *2-5 (N.D.
23 Cal.) (attorney disqualified from “substantially related” matter after previously had a 30-90 minute
24 “preliminary conversation that did not result in professional employment or services”).
25 In another successful motion to disqualify, Quinn Emanuel cited to applicable case law and
26 correctly described the McKool Smith firm as having engaged “in a classic and clearly impermissible
27 case of switching sides” due to a previous 45-minute telephone conversation between Quinn
28 Emanuel’s client and McKool Smith on the same matter that did not result in a formal retention. RJN,

2
1 Exh. E at 14.1 McKool Smith then withdrew from the case. RJN, Exh. F. In sum, Quinn Emanuel
2 clearly engaged in side-switching here although Plaintiff never formally hired it.
3 II. DUE TO MR. ALDEN’S UNDISPUTED CONFLICT, THE ENTIRE QUINN
EMANUEL FIRM MUST BE VICARIOUSLY DISQUALIFIED AS WELL
4
5 A. Defendants Do Not Dispute That Mr. Alden Is Conflicted
6 Defendants do not dispute California courts apply a “substantial relationship” test to determine
7 whether an attorney should be disqualified in a successive representation. See Flatt v. Superior Court,
8 9 Cal. 4th 275, 283 (1994) (“[w]here the requisite substantial relationship between the subjects of the
9 prior and the current representations can be demonstrated, access to confidential information by the
10 attorney in the course of the first representation (relevant, by definition, to the second representation)
11 is presumed and disqualification of the attorney’s representation of the second client is mandatory”).
12 Defendants also do not dispute that under this test, Mr. Alden is disqualified from representing
13 Defendants in this matter because Plaintiff previously consulted him on the same matter. It is noted
14 that while Defendants are not disputing that Mr. Alden has an incurable conflict, they submit a
15 declaration from Mr. Alden essentially denying what he discussed with Plaintiff. But this Court need
16 not get into a “swearing contest” regarding what was discussed:
17 “Courts have long been concerned about the prospect of a swearing contest between the
attorney and former client as to whether the attorney had access to confidential information in
18 the course of the former representation. To avoid this problem, the ‘substantial relationship’
19 test was developed: ‘[The] former client need show no more than that the matters embraced
within the pending suit wherein his former attorney appears on behalf of his adversary are
20 substantially related to the matters or cause of action [where] the attorney previously
represented him, the former client. The Court will assume that during the course of the former
21 representation confidences were disclosed to the attorney bearing on the subject matter of the
representation.” Civil Serv. Com v. Sup. Ct., 163 Cal. App.3d 70,79 (1984) (emphasis added).
22
The substantial relationship test is easily met here because, again, Mr. Alden was consulted on
23
24
Defendants also claim that Plaintiff had “disclaim[ed] an attorney-client relationship” in the
1
25
Advance Waiver. Opposition at 6. However, “[s]uch disclaimers are ineffective.” Benninghoff v.
26 Sup. Ct., 136 Cal. App. 4th 61, 73 (2006). Regardless, an attorney-client relationship had formed
between Plaintiff and Quinn Emanuel. See Evidence Code, §951 (defining “client” as “a person
27 who...consults a lawyer for the purpose of retaining the lawyer or securing legal service or advice
from [the lawyer]…”); In re Dupont's Estate, 60 Cal. App. 2d 276, 288-89 (1943) (noting universal
28 acceptance that communication by client of preliminary statement of his case to an attorney is
privileged even if the attorney is not hired).
3
1 the same lawsuit. Mr. Alden is “assumed” to receive confidential information from Plaintiff and
2 should be disqualified.2 See In re Marriage of Abernethy, 5 Cal.App.4th 1193, 1197, n.3 (1992) (“[i]t
3 is the possibility of the breach of confidence, not the fact of an actual breach that triggers
4 disqualification.”). Indeed, Defendants acknowledge Mr. Alden’s clear disqualification from
5 representing them by purportedly walling him off from this matter.
6 B. The Entire Quinn Emanuel Firm Must Be Vicariously Disqualified
7 Given Mr. Alden’s obvious conflict, Quinn Emanuel must be vicariously disqualified. Flatt, 9
8 Cal.4th at 283 (where, as here, the substantial relationship test is met, “the disqualification extends
9 vicariously to the entire firm”); Goldberg v. Warner/Chappel Music, Inc., 125 Cal.App.4th 752, 765
10 (2d Dist. 2005) (vicarious disqualification rule is based on “a pragmatic recognition that the
11 confidential information will work its way to the nontainted attorneys at some point”). Vicarious
12 disqualification is “especially” required in side-switching cases. See City Nat’l Bank v. Adams, 96
13 Cal. App. 4th 315, 328 (2002) (rule requiring vicarious disqualification of entire law firm “is
14 especially true where the attorney’s disqualification is due to his prior representation of the opposing
15 side during the same lawsuit”) (citations omitted).
16
III. THE ETHICAL SCREEN, AND THE KIRK CASE, DO NOT SAVE QUINN
17 EMANUEL FROM DISQUALIFICATION
18
Kirk Is Distinguishable. The Kirk v. First Am. Title Ins. Co., 183 Cal. App. 4th 776 (2010)
19
does not help Quinn Emanuel. In that case, the court addressed the circumstances under which ethical
20
21 2 Mr. Alden actually received confidential information from Plaintiff and gave legal advice to
22 Plaintiff. See Plaintiff Dec., ¶¶7-13. Even if one were to take Mr. Alden’s declaration at face value,
the declaration and the Advance Waiver still reveal that Plaintiff provided confidential information to
23 Mr. Alden: (i) Plaintiff and Mr. Alden (a very busy litigation partner at a major firm) spoke at least
twice for 40 minutes by phone regarding filing this very same lawsuit; (ii) Mr. Alden does not dispute
24 that he received confidential information about the proposed lawsuit during these phone calls; (iii)
based on the information received in the calls, Mr. Alden knew enough about the key players to
25
identify, in the Advance Waiver, Evan Spiegel, John Spiegel, Bobby Murphy, and Lightspeed
26 Ventures Partners as potential defendants in the proposed lawsuit; (iv) the parties exchanged at least
22 emails regarding the proposed lawsuit; (v) Mr. Alden admitted that during some of the calls, he
27 “tried to gather information from Mr. Brown about the facts and circumstances of his dispute in order
to assess the matter”; and (vi) In the Advance Waiver, Quinn Emanuel acknowledges that during the
28 assessment, “Quinn Emanuel may receive from [Plaintiff] or provide [Plaintiff] confidential
information regarding the Matter.” Plaintiff Dec., Exh. B.
4
1 screening might prevent disqualification of a newly-arrived attorney having confidential information
2 concerning a party his new law firm is adverse to. Indeed, the court focused on policy considerations
3 permitting attorney mobility. See id. at 802 (“attorney mobility and firm mergers have increased
4 exponentially”). The Kirk court was careful “to emphasize that we are not adopting a broad rule
5 permitting ethical screening in all cases” (id. at 802 n.21), and limited its holding by stating that, “In
6 sum, we have concluded that, when a tainted attorney moves from one private law firm to another, the
7 law gives rise to a rebuttable presumption of imputed knowledge to the law firm, which may be
8 rebutted by evidence of effective ethical screening.” Id. at 814 (emphasis added). The Kirk court also
9 noted that the “tainted” attorney already left the firm. Id. 816-816. Significantly, the court explicitly
10 reaffirmed existing case law that ethical screening will never save a firm who, as here, switches sides
11 in the same case from disqualification. See Kirk, 183 Cal. App. 4th at 800 (“vicarious disqualification
12 should be automatic in cases of a tainted attorney possessing actual confidential information from a
13 representation, who switches sides in the same case”) (citing Henriksen v. Great American Savings &
14 Loan, 11 Cal.App.4th 109, 116-117 (1992) (ordering vicarious disqualification of entire firm and
15 holding that “screening concept as not applicable when the attorney in question performed work for
16 the opposing party in the same lawsuit”). Here, we do not have a newly-arrived attorney. Mr. Alden
17 was with Quinn Emanuel when he counseled Plaintiff and is still with the firm, and the firm switched
18 sides in the same case.
19 Quinn Emanuel Agreed That Kirk Is Distinguishable. Not too long ago, Quinn Emanuel
20 agreed with the above analysis of Kirk. In 2011, Quinn Emanuel sought to disqualify the Glaser Weil
21 firm from the high-profile Mattel, Inc. v. MGA Entertainment, Inc. case on the eve of trial for hiring an
22 ex-Quinn attorney who used to work on the same case. RJN, Ex. B. In response to the Glaser Weil’s
23 claim that it had erected an ethical screen consistent with Kirk, Quinn Emanuel represented to the
24 Judge David O. Carter that “[t]he general rule in California is that where an attorney is disqualified,
25 that attorney's entire firm is disqualified as well regardless of efforts to erect an ethical wall.” RJN,
26 Exh. C at 1:1-4, n.1 (emphasis added) (quoting Tuft, Non-Consensual Screening for Conflicts in
27 California, 843 PLI/Lit 35, at 2 (December 2010)).
28 Quinn Emanuel also correctly stated to Judge Carter in the same disqualification motion that

5
1 Kirk is distinguishable because in Kirk, “the ‘tainted’ attorney had already left the firm whose
2 representation was being challenged. See Kirk, 183 Cal. App. 4th at 815-16. That fact is highly
3 significant, because ‘[w]here tainted attorneys and nontainted attorneys are working together at the
4 same firm, there is ... a pragmatic recognition that the confidential information will work its way to the
5 nontainted attorneys at some point,’ but when the tainted attorney is gone, the court can conduct a
6 “dispassionate assessment of whether confidential information was actually exchanged.’ See
7 Goldberg, 125 Cal. App. 4th at 765.” RJN, Exh. B at7:18-21.
8 More importantly, Quinn Emanuel also correctly told Judge Carter that, as shown, Kirk made
9 clear that no ethical wall can save a firm that switched sides in the same lawsuit. RJN, Exh. B at 8
10 (“[e]ven Kirk recognizes that in an egregious case such as this one, where an attorney worked on the
11 other side of the same litigation, an ethical wall cannot ‘cure’ the conflict”).
12 Quinn Emanuel also referred Judge Carter to Openwave Systems, Inc. v. 724 Solutions (US)
13 Inc., 2010 WL 1687825 (N.D.Cal.) (“724 Solutions”), a post-Kirk decision, which granted a motion to
14 disqualify despite the presence an ethical wall. RJN, Exh. B at 6, 7. The 724 Solutions court held that
15 the ethical wall was not sufficient and Kirk did not apply because there was a “substantial
16 relationship” between the former and current representations. Id. at *5. The court also held that the
17 ethical wall was insufficient was required due to the “close proximity” between the “tainted” attorney
18 and the non-tainted attorneys.3 Judge Carter obviously agreed with Quinn Emanuel because he
19 disqualified Glaser Weil. RJN, Exh. D. 4
20
3Here, the substantial relationship test is clearly met, and Mr. Alden works in the same Los Angeles
21
office as all the Quinn Emanuel attorneys representing Defendants.
22
4 Defendants claim that “[s]ince Kirk, courts consistently deny vicarious disqualification motions
23 where ethical walls are in place.” Opposition at 14. However, the cases cited by Defendants do not
hold (and no case has held) that an ethical wall would automatically save a firm from vicarious
24 disqualification. In Openwave Sys. Inc. v. Myriad France S.A.S, 2011 WL 1225978 at *6-7 (N.D.
25 Cal.), disqualification was denied notably because the motion was made just before discovery cut-off,
and disqualification at that juncture would result in great prejudice. The court cautioned that the “main
26 lesson here is that motions to disqualify should be promptly made before the parties are invested
substantially in their litigation line-ups.” Id. at *7. In Silicon Graphics, lnc. v. AT1 Technologies,
27 Inc., 741 F. Supp. 2d 970, 979-81 (W.D. Wis. 2010), the court applied the Seventh Circuit standard for
assessing the adequacy of ethical screens. In Barco N.V. v. Tech. Properties Ltd., 2011 WL 841283
28 (N.D. Cal.), there was not even an ethical wall. Tellingly, Defendants do not cite to the 724 Solutions
case that Quinn Emanuel previously brought to Judge Carter’s attention.
6
1 This Court should adopt the same analysis previously advocated by Quinn Emanuel, and
2 should issue the same relief previously advocated (and obtained) by the firm.5
3
IV. THE ADVANCE WAIVER IS NOT ADEQUATE UNDER THE VISA FACTORS
4
Defendants agree that the enforceability of the Quinn Emanuel’s Advance Waiver is
5
determined under the Visa U.S.A., Inc. v. First Data Corp., 241 F.Supp.2d 1100, 1105 (N.D. Cal.
6
2003) factors. Opposition at 10-13. We discuss these factors below.6
7
Breadth of the Waiver. Contrary to Defendants’ claim, the Advance Waiver is much
8
broader than another waiver that was invalidated by the court in Concat LP v. Unilever, PLC, 350
9
F.Supp.2d 796, 820 (N.D.Cal. 2004). The chart below compares the two waivers:
10
Morgan Lewis Advance Waiver Invalidated Quinn Emanuel Advance Waiver Here
11 in Concat
“Morgan, Lewis & Bockius may continue to Quinn Emanuel “may represent any entity . . .
12
represent, or may undertake in the future to with respect to any matter or case . . . adverse
13 represent, existing or new clients in any matter, to [Plaintiff], including the Matter.”
including litigation, that is not substantially Plaintiff Dec., Exh. B, para. 5. (emphasis
14 related to our work for you, even if the added)
interests of such clients in those other matters are
15 directly adverse to you.” Id. (emphasis added)
16
The Quinn Emanuel Advance Waiver is much broader in that it allows the firm to represent
17
adverse parties in any matter including this matter for which Plaintiff previously consulted the firm.
18
In contrast, the Morgan Lewis waiver only allows the firm to represent adverse parties in a matter
19
20
21 5 The purported ethical wall erected by Quinn Emanuel is also not effective for another reason: the
22 firm admitted that confidential information from Plaintiff had already been disseminated to all of its
partners. See Tayback Dec., ¶3 (acknowledging that an email from Plaintiff to Mr. Alden and other
23 Quinn attorneys was then “forwarded to all Quinn Emanuel partners”). And even if Mr. Alden
purportedly did not discuss this Motion with anyone else in the firm, his lawyer and agent
24 “coordinate[d] with other members of the Firm” in opposing the Motion. Alden Dec., ¶28. The fact
that Mr. Alden’s agent communicated with other firm attorneys is no different than if Mr. Alden
25
himself communicated with other firm attorneys. That is why courts have consistently applied the
26 vicarious disqualification rule because “the confidential information will work its way to the
nontainted attorneys at some point.” Goldberg, 125 Cal.App.4th at 765.
27
6 Defendants claim that “California courts consistently enforce prospective waivers of conflicts.”
28 Opposition at 8. But none of the cases cited in support of this claim are apposite here, because none of
them involved waivers allowing side-switching in the same matter.
7
1 “that is not substantially related to our work for you.” This factor clearly favors Plaintiff.
2 Temporal Scope of the Waiver. Visa states this factor as follows: “whether [the waiver]
3 waived a current conflict or whether it was intended to waive all conflicts in the future.” Visa, 241
4 F.Supp.2d at 1106. This is not even a close call. This factor favors Plaintiff because the Advance
5 Waiver contains no time restriction and, if enforced, would allow Quinn Emanuel to take on any
6 conflicted engagement at any time in the future. See also Concat, 350 F.Supp.2d at 820 (invalidating
7 waiver because “its temporal scope is likewise unlimited”).
8 Quality of the Conflict Discussion. The only communication regarding the Advance Waiver
9 was the short email below from Mr. Alden to Plaintiff, purporting to summarize the document
10 (Plaintiff Dec., ¶ 6):
11 I’ve attached a waiver I’d like you to sign. Because we get many calls from different
people interested in bringing lawsuits, many of which we do not take on, we need to
12 ensure that our discussions with potential clients do not result in us being conflicted
13 from acting for others down the road. In essence, this agreement provides that if we
do not end up representing you in this matter, you cannot disqualify us in the
14 (unlikely) event we’re hired to act against you in the future. The likelihood of this
ever happening is small, but it’s a precaution we need to take. If you have any
15 questions, I’d be happy to discuss them tomorrow or I can refer you to another lawyer
who could go over with you. Alden Dec., Exh. A.
16
Defendants cannot seriously claim that this email amounts to a meaningful conflict discussion.
17
This purported summary does not even mention that the waiver ostensibly allows Quinn Emanuel to
18
represent an adverse party against Plaintiff in the very same matter! Instead, it uses the opaque
19
legalese “conflicted from acting for others down the road” and “act against you in the future.” Of
20
course, Mr. Alden could have made this critical, central aspect of the waiver clear in one sentence– but
21
chose not to do so. Mr. Alden’s lack of clarity explains why Plaintiff testified he thought he was
22
signing an “engagement letter” (Motion at 5), and not a waiver. Mr. Alden also downplayed the
23
conflict potential as “unlikely” and “small,” and that the document was just a “precaution” taken by
24
his firm.
25
Specificity of the Waiver. Quinn Emanuel did not carry their “heavy burden of
26
demonstrating that all relevant facts relating to the conflict were disclosed and explained to the
27
client.” Civil Serv. Comm’n, 163 Cal.App.3d at 84. The Advance Waiver is not specific enough in
28
that it does not disclose all the potential adverse parties. No mention is made whatsoever of the most

8
1 obvious corporate defendants, Snapchat, Inc. or Toyopa Group LLC. Plaintiff Dec., Exh. B. No
2 effort was made to add Benchmark Capital as a potential adversary in the Advance Waiver (although
3 the document recognizes another investor, Lightspeed Venture Partners, as a potential adversary), and
4 there was no disclosure that Benchmark Capital—a potential adversary—was a Quinn Emanuel
5 client. Id. ¶12. Incredibly, Defendants now blame Plaintiff for not including Benchmark in the
6 Advance Waiver despite the fact that: (i) this is a Quinn Emanuel document; and (ii) Benchmark is a
7 Quinn Emanuel client. This factor also favors Plaintiff.
8 Nature of Actual Conflict. The Visa court explained this factor as follows: “whether the
9 attorney sought to represent both clients in the same dispute or in unrelated disputes.” Visa, 241
10 F.Supp.2d at 1106. There is no question here that the successive representations were for the same
11 dispute. This factor is clearly in favor of Plaintiff.
12 Sophistication of Client. Defendants completely misstate this factor, which focuses on the
13 client’s “level of experience with legal services.” Visa, 241 F.Supp.2d at 1109-10 (validating waiver
14 where client “is a knowledgeable and sophisticated user of legal services [that] has a legal department
15 of about fifty lawyers”). There is no dispute that Plaintiff, a 23-year old recent college graduate, has
16 never been involved in any litigation matter. Plaintiff Dec., ¶ 3.
17 Defendants argue that Plaintiff “majored in English,” “worked at a state Attorney’s General
18 Office and consulted with numerous lawyers before Alden.” Opposition at 13. These arguments are
19 meritless. This Visa factor does not focus on proficiency in English, but rather sophistication in hiring
20 law firms. Plaintiff has never been to law school, and started working as an unpaid intern for the
21 South Carolina Attorney’s General Office in March of 2013– long after he consulted with Mr. Alden.
22 Sarles Dec., Exh. D at 13:2-19. And the “numerous lawyers” that Plaintiff consulted consisted of one
23 professor at his alma mater, and two other attorneys (Opposition at 4), and he hired neither of them.
24 Plaintiff is no sophisticated user of legal services. Defendants’ grasping at straws only underscores
25 their lack of credibility in opposing this Motion. This factor also favors Plaintiff.
26 Interest of Justice. This factor favors Plaintiff. As discussed, side-switching in the same
27 matter is the “most egregious conflict of interest.” 20 Cal.4th at 1147. Also, while Defendants– who
28 again, knowingly hired the firm Plaintiff consulted– wish the court to consider their interests in ruling

9
1 on disqualification, this Court should not do so. In Visa, the court refused to consider the interests of
2 the allegedly conflicted counsel and its client because there was no showing that disqualification was
3 sought after delay to gain a tactical advantage. Visa, 241 F.Supp.2d at 1107 n.6. The same analysis
4 applies here.
5 In any event, Defendants will not be prejudiced by Quinn Emanuel’s disqualification because:
6 (i) the firm just recently substituted into the matter; and (ii) since the substitution, the case has
7 essentially been stayed; and (iii) the case is still at an early stage with no trial date scheduled. In
8 contrast, Plaintiff will be prejudiced if he were forced to litigate against the same law firm with which,
9 just a few months earlier, he was sharing confidential information and receiving advice on this same
10 matter.7
11 CONCLUSION
12 For the above reasons, this Court should grant this Motion and disqualify Quinn Emanuel.
13
DATED: July 25, 2013 LEE TRAN & LIANG APLC
14
15
16
17 By
K. Luan Tran
18 James M. Lee
Cyrus Khojandpour
19 Lisa Chin
20 RAY A. MANDLEKAR, ATTORNEY AT LAW

Ray A. Mandlekar (SBN 196797)
21
22
23
24
7 This Motion is not made for tactical purposes. Quinn Emanuel’s conflict is real and Plaintiff raised
25
the conflict issue right away. Motion at 8. SpeeDee Oil, 20 Cal.4th at 1145 n.2 (concerns of tactical
26 abuse in bringing disqualification motion “almost entirely absent” where there was no showing that
the conflict was purposely manufactured or that the party unreasonably delayed in bringing the
27 motion). Also, due to the relationship and friendship between Plaintiff’s attorneys at LTL and Quinn
Emanuel, it should be obvious that LTL would not resort to this type of motion for improper or tactical
28 reasons. If anything, Defendants were the ones that tactically hired Quinn Emanuel right after finding
out that Plaintiff consulted the firm on this case.
10
Tel. 213-612-3737 / Fax. 213-612-3773
5
Tel. 213-785-6130 / Fax. 213-254-9001
8
10
11
SUPERIOR COURT OF THE STATE OF CALIFORNIA
12
FOR THE COUNTY OF LOS ANGELES
13
14
FRANK REGINALD BROWN, IV, CASE NO: BC501483
15
Plaintiff,
16
v. PLAINTIFF FRANK BROWN’S
17 OBJECTIONS TO THE DECLARATION
SNAPCHAT, INC., a Delaware corporation; OF JOSEPH C. SARLES IN SUPPORT OF
18 TOYOPA GROUP, LLC, a California Limited OPPOSITION TO PLAINTIFF’S MOTION
TO DISQUALIFY
19 Liability Company; EVAN THOMAS
SPIEGEL, an individual; ROBERT Assigned for all purposes to the Honorable John
20 CORNELIUS MURPHY, an individual; and L. Segal (Dept. 50)
DOES 1 through 25 inclusive,
21
[Plaintiff’s Reply in Further Support of Motion
Defendants.
22 to Disqualify, Objection to Declaration of
Robert Kehr, Response to Defendants’
23 Objections and Request for Judicial Notice filed
concurrently herewith]
24
25 Hearing:
Date: August 1, 2013
26 Time: 8:30 a.m.
Dept.: 50
27
28 Action Filed: February 21, 2013
Trial Date: Not Assigned Yet
OBJECTIONS TO SARLES DECLARATION ISO OPPOSITION TO PLAINTIFF’S MOTION TO DISQUALIFY

COURT’S
1 MATERIAL OBJECTED TO: GROUNDS FOR OBJECTION: RULING:
2 Sarles Decl., ¶ 4 & Exhibit A Lacks Foundation (Cal. Evid. Code Sustained: _____
(May 8, 2012 email from §§ 403 and 405); Lack of Authentication
3 Brown to Spiegel) (Cal. Evid. Code §§ 1400 and 1401); Overruled: _____
4 Lacks Personal Knowledge (Cal. Evid.
Code §§ 702): Mr. Sarles lacks personal
5 knowledge and foundation to authenticate
Exhibit A, an email dated May 8, 2012
6 purportedly from Plaintiff to Defendant
Spiegel. Mr. Sarles was not the sender or
7 recipient of the email.
8 Offer to Compromise (Cal. Evid. Code §
1152): Moreover, in their Opposition,
9 Defendants cite Exhibit A in support of the
10 proposition that Plaintiff “admitted that his
role in the project was not equal to that of
11 [Defendants] Spiegel and Murphy” by
improperly quoting a the following offer of
12 settlement in the email: “As I expressed to
13 Bobby this past summer, I understood both
then and currently that my role in the
14 process was of a different nature and was
thus willing to accept a significantly less
15 portion of equity than either of you.” This
is improper and cannot be used as evidence.
16
Relevance (Cal. Evid. Code §§ 210 and
17 350): Exhibit A is irrelevant and/or
immaterial to the legal and factual issues at
18 issue in Plaintiff’s Motion to Disqualify.
19 Specifically, the email contains no
statements having any tendency to prove or
20 disprove any disputed fact of consequence
to the determination of whether (i) an
21 attorney-client relationship was formed
22 between Plaintiff and Alden; (ii) any
disqualification should be imputed to the
23 entire Quinn Emanuel firm; (iii) the conflict
waiver should be enforced; (iv) a second
24 conflict waiver was required; or
(iv) whether Quinn Emanuel’s ethical
25 screening prevents disqualification.
26
27
28

-1-
COURT’S
2 Sarles Decl., Exhibit B Relevance (Cal. Evid. Code §§ 210 and Sustained: _____
(Plaintiff’s handwritten 350): Exhibit B is irrelevant and/or
3 notes) immaterial to the legal and factual issues at Overruled: _____
Defendants cite Exhibit B for the
5 proposition that Plaintiff knew that Future
Freshman LLC was owned by Defendants
6 Spiegel and Murphy “60/40.” Regardless,
neither this “fact,” even if true—it is
7 not—nor any other statements in Exhibit B
8 have any tendency to prove or disprove any
disputed fact of consequence to the
9 determination of whether (i) an
attorney-client relationship was formed
11 disqualification should be imputed to the
entire Quinn Emanuel firm; (iii) the conflict
12 waiver should be enforced; (iv) a second
conflict waiver was required; or
13 (iv) whether Quinn Emanuel’s ethical
screening prevents disqualification.
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

-2-
COURT’S
2 Sarles Decl., ¶ 6 & Exhibit C Lacks Foundation (Cal. Evid. Code Sustained: _____
(July 13, 2011 email from §§ 403 and 405); Lack of Authentication
3 Brown to Spiegel) (Cal. Evid. Code §§ 1400 and 1401); Overruled: _____
Exhibit C, an email dated July 13, 2011
Spiegel, attaching a press release for
7 Picaboo. Mr. Sarles was not the sender or
9 350): Exhibit C is irrelevant and/or
10 immaterial to the legal and factual issues at
issue in Plaintiff’s Motion to Disqualify.
11 Defendants cite Exhibit C for the
proposition that Plaintiff knew that Toyopa
12 owned the rights to the disappearing
13 messages application. Regardless, neither
this “fact,” even if true—it is not—nor any
14 other statements in Exhibit C have any
tendency to prove or disprove any disputed
15 fact of consequence to the determination of
whether (i) an attorney-client relationship
16 was formed between Plaintiff and Alden;
17 (ii) any disqualification should be imputed
to the entire Quinn Emanuel firm; (iii) the
18 conflict waiver should be enforced; (iv) a
second conflict waiver was required; or
21
22
23
24
25
26
27
28

-3-
COURT’S
2 Sarles Decl., Exhibit D (April Relevance (Cal. Evid. Code §§ 210 and Sustained: _____
4, 2013 Deposition of 350): Exhibit D at 54:9-56:18 is irrelevant
3 Plaintiff Brown) at and/or immaterial to the legal and factual Overruled: _____
4 54:9-56:18. issues at issue in Plaintiff’s Motion to
Disqualify. Defendants cite this excerpt for
5 the proposition that Plaintiff knew that
Toyopa was owned solely by Spiegel and
6 Murphy. Regardless, this “fact,” even if
true—it is not—does not have any tendency
7 to prove or disprove any disputed fact of
8 consequence to the determination of
(ii) any disqualification should be imputed
10 to the entire Quinn Emanuel firm; (iii) the
13
Sarles Decl., Exhibit D (April Relevance (Cal. Evid. Code §§ 210 and Sustained: _____
14 4, 2013 Deposition of 350): Exhibit D at 231:16-232:9is
15 Plaintiff Brown) at irrelevant and/or immaterial to the legal and Overruled: _____
231:16-232:9 factual issues at issue in Plaintiff’s Motion
16 to Disqualify. Defendants cite this excerpt
for the proposition that Plaintiff knew that
17 Toyopa owned the rights to the
disappearing messages application.
18
Regardless, this “fact,” even if true—it is
19 not—does not have any tendency to prove
or disprove any disputed fact of
to the entire Quinn Emanuel firm; (iii) the
25
26
27
28

-4-
COURT’S
2 Sarles Decl., Exhibit D (April Relevance (Cal. Evid. Code §§ 210 and Sustained: _____
4, 2013 Deposition of 350): Exhibit D at 411:16-412:5 is
3 Plaintiff Brown) at irrelevant and/or immaterial to the legal and Overruled: _____
4 411:16-412:5 factual issues at issue in Plaintiff’s Motion
to Disqualify. Defendants cite this excerpt
5 for the proposition that Plaintiff knew that
Future Freshman LLC was owned solely by
6 Spiegel and Murphy, and not him.
Regardless, this “fact,” even if true—it is
7 not—does not have any tendency to prove
8 or disprove any disputed fact of
consequence to the determination of
9 whether (i) an attorney-client relationship
was formed between Plaintiff and Alden;
conflict waiver should be enforced; (iv) a
12 second conflict waiver was required; or
14 Relevance (Cal. Evid. Code §§ 210 and
Sarles Decl., Exhibit E (July Sustained: _____
350): Exhibit E is irrelevant and/or
15 21, 2011 letter from USPTO
immaterial to the legal and factual issues at Overruled: _____
to Toyopa Group)
16 Defendants cite Exhibit E for the
17 proposition that Plaintiff created a customer
account for Toyopa with the PTO and told
18 Spiegel and Murphy that he would use this
account for the patent application. This fact
19 does not have any tendency to prove or
disprove any disputed fact of consequence
20 to the determination of whether (i) an
between Plaintiff and Alden; (ii) any
24
26
27
28

-5-
COURT’S
Sarles Decl., Exhibit F Sustained: _____
350): Exhibit F is irrelevant and/or
(August 11, 2011 Provisional
Patent Application) Overruled: _____
4 Defendants cite Exhibit F for the
proposition that Plaintiff secretly filed the
5 patent application in an attempt to steal
6 Defendants’ ownership rights. Regardless,
neither this “fact,” even if true—it is
7 not—nor any other statement in Exhibit F
has the tendency to prove or disprove any
8 disputed fact of consequence to the
determination of whether (i) an
disqualification should be imputed to the
11 entire Quinn Emanuel firm; (iii) the conflict
waiver should be enforced; (iv) a second
12 conflict waiver was required; or
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

-6-
COURT’S
2 Sarles Decl., ¶ 10 & Exhibit Lacks Foundation (Cal. Evid. Code Sustained: _____
G (August 22, 2011 email §§ 403 and 405); Lack of Authentication
3 from Brown to Spiegel) (Cal. Evid. Code §§ 1400 and 1401); Overruled: _____
Exhibit G, an email dated August 22, 2011
Spiegel. Mr. Sarles was not the sender or
350): Exhibit G is irrelevant and/or
Defendants cite Exhibit G for the
11 proposition that Brown told Spiegel and
Murphy he had filed the patent application,
12 but refused to provide a copy of it.
13 Regardless, neither this “fact,” even if
true—it is not—nor any other statements in
14 Exhibit G have any tendency to prove or
disprove any disputed fact of consequence
15 to the determination of whether (i) an
attorney-client relationship was formed
21
22
23
24
25
26
27
28

-7-
COURT’S
2 Hearsay (Cal. Evid. Code § 1200):
Sarles Decl., Exhibit H (April Sustained: _____
Exhibit H at 120:19-122:4 contains
9, 2013 Deposition of Robert
3 testimony about a conversation between
Murphy) Overruled: _____
Plaintiff Brown and Defendants Murphy,
4 Spiegel regarding their respective interests
in the company. These are out of court
5 statements offered for the truth of the matter
6 stated, and are therefore inadmissible
hearsay.
7
8 350): Exhibit H is irrelevant and/or
immaterial to the legal and factual issues at
10 Defendants cite Exhibit H for the
proposition that Brown demanded equity in
11 only after Spiegel raised questions about the
patent application. Regardless, neither this
12 “fact,” even if true—it is not—nor any other
statements in Exhibit G have any tendency
13 to prove or disprove any disputed fact of
(ii) any disqualification should be imputed
conflict waiver should be enforced; (iv) a
17
19
20
21
22
By
23 K. Luan Tran
James M. Lee
24 Cyrus Khojandpour
Lisa Chin
25
27 Attorneys for Plaintiff
28

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Tel. 213-612-3737 / Fax. 213-612-3773
5
Tel. 213-785-6130 / Fax. 213-254-9001
8
10
11
12
13
14
15
Plaintiff,
16
v. PLAINTIFF FRANK BROWN’S
17 OBJECTIONS TO THE DECLARATION
SNAPCHAT, INC., a Delaware corporation; OF ROBERT L. KEHR IN SUPPORT OF
18 TOYOPA GROUP, LLC, a California Limited OPPOSITION TO PLAINTIFF’S MOTION
TO DISQUALIFY
19 Liability Company; EVAN THOMAS
SPIEGEL, an individual; ROBERT Assigned for all purposes to the Honorable John
20 CORNELIUS MURPHY, an individual; and L. Segal (Dept. 50)
DOES 1 through 25 inclusive,
21
[Plaintiff’s Reply in Further Support of Motion
Defendants.
22 to Disqualify, Objections to Declaration of
Joseph C. Sarles, Response to Defendants’
23 Objections and Request for Judicial Notice filed
24
25 Hearing:
26 Time: 8:30 a.m.
Dept.: 50
27
OBJECTIONS TO KEHR DECLARATION ISO OPPOSITION TO PLAINTIFF’S MOTION TO DISQUALIFY

1 Plaintiff Frank Reginald Brown, IV’s (“Plaintiff”) objects to the Declaration of Robert L.
2 Kehr in Support of Defendants’ Opposition to Motion to Disqualify (“Kehr Declaration” or “Kehr

3 Decl.”). Plaintiff hereby requests that the Court disregard, exclude, or strike the Kehr Declaration
4 on the basis that it consists entirely of improper legal conclusions in direct contravention of
5 longstanding rules prohibiting expert opinions on questions of law.
6 The Kehr Declaration amounts to nothing more than legal argument, mirroring nearly
1
7 verbatim Defendants’ Opposition to Plaintiff’s Motion to Disqualify. Through the Declaration,
8 Defendants attempt to usurp this Court’s proper role as the ultimate authority on the law in this
9 case, implying that Mr. Kehr is better capable of determining that law than this Court. Defendants’
10 counsel Quinn Emanuel knows that such a declaration is inadmissible, as Quinn Emanuel itself
11 objected to and moved to strike a similar declaration from Mr. Kehr submitted in opposition to a
12 motion to disqualify in another matter on the very same basis—that Mr. Kehr’s declaration offered
13 nothing more than improper legal conclusions.
14 Not only does Mr. Kehr improperly undertake to instruct the Court on “the law,” he tells
15 the Court what he thinks the outcome of the motion should be despite authority categorically
16 announcing that lawyer experts are not permitted to give such opinions. As such, the Kehr
2
17 Declaration should be excluded from consideration and stricken in its entirety.
18 I. APPLICABLE LAW
19 As a general rule, the opinion of an expert is admissible when it is “[r]elated to a subject
20 that is sufficiently beyond common experience that the opinion of an expert would assist the trier
21 of fact . . . . Cal. Evid. Code § 801. Additionally, in California, “[t]estimony in the form of an
22 opinion that is otherwise admissible is not objectionable because it embraces the ultimate issue to
23
24 The 13 pages of the Kehr Declaration so much resembles a legal brief, that Plaintiff also objects
1
on the basis that Defendants’ Opposition brief now exceeds the 15-page limit. See Cal. R. Ct.
25
3.1113
26
2 The only conceivable portion of the Kehr Declaration that may pass muster as a non-legal
27 opinion is Mr. Kehr’s opinion, based on his personal experience, as to the types of advance conflict
waivers “many large law firms now attempt to obtain from new clients.” Kehr Decl. 10:20-24.
28 Even that portion of the declaration is objectionable on the basis of relevance. See Cal. Evid.
Code § 350.
-1-
1 be decided by the trier of fact.” Cal. Evid. Code § 805. However, “the admissibility of opinion
2 evidence that embraces an ultimate issue in a case does not bestow upon an expert carte blanche to
3 express any opinion he or she wishes.” Summers v. A.L. Gilbert Co., 69 Cal. App. 4th 1155, 1178
4 (1999). One notable limitation to expert testimony is the longstanding prohibition on expert
5 opinion on a question of law. Id. (citing Ferreira v. Workmen’s Comp. Appeals Bd., 38
6 Cal.App.3d 120 (1974)).
7 Because the law is the province of the courts, experts are not permitted to testify to legal
8 opinions or conclusions. See Sheldon Appel Co. v. Albert & Oliker, 47 Cal. 3d 863, 884 (1989) (“It
9 is thoroughly established that experts may not give opinions on matters which are essentially
10 within the province of the court to decide.”); WRI Opportunity Loans II, LLC v. Cooper, 154 Cal.
11 App. 4th 525, 532 n.3 (2007) (same). That is, while “Evidence Code section 805 permits expert
12 testimony on the ultimate issue to be decided by the fact finder . . . this rule ‘does not authorize an
13 expert to testify to legal conclusions in the guide of expert opinion.’” Id. (quoting Downer v.
14 Bramet, 152 Cal. App. 3d 837, 841 (1984)).
15 Therefore, courts have particularly disfavored testimony of lawyers as “experts,” except in
16 limited cases. As explained in Downer:

17 While in many cases expert opinions that are genuinely needed may
happen to embrace the ultimate issue of fact (e.g. a medical opinion
18 whether a physician's actions constitute professional negligence),
19 the calling of lawyers as “expert witnesses” to give opinions as to
the application of the law to particular facts usurps the duty of the
20 trial court . . . and results in no more than a modern day “trial by
oath” in which the side producing the greater number of lawyers
21 able to opine in their favor wins.
22
152 Cal. App. 3d 837, 842 (1984); see also Summers, 69 Cal. App. 4th 1155, 1179-81 (1999). The
23
Summers court noted that serious questions concerning the proper role of expert testimony are
24
raised “especially when the purported expert is a lawyer.” 69 Cal. App. 4th at 1178 (emphasis
25
added). The court further explained that “[t]he manner in which the law should apply to the
26
particular facts is a legal question and is not subject to expert opinion.” Id. 1178-79 (citing
27
Ferreira v. Workmen's Comp. Appeals Bd. 38 Cal. App. 3d 120, 125-26 (1974).) Similarly, the
28
court in Adams v. City of Fremont, 68 Cal. App. 4th 243 (1998), concluded that “[o]pinion

-2-
1 testimony is inadmissible and irrelevant to adjudging questions of law.” Id. at 266. Finally, in the
2 case of Sullivan v. Fox, 189 Cal. App. 3d 673 (1987), the court made it clear that interpretation of
3 a statute offered by an attorney as expert opinion in his declaration is inadmissible as involving a
4 question of law and must, for that reason, be disregarded. Id. at 682.
5 II. THE KEHR DECLARATION, IN ITS ENTIRETY, CONSISTS OF
6 INADMISSIBLE LEGAL OPINION.
7 California Evidence Code sections 801 and 805 permit expert opinion solely upon issues of
8 fact, not upon issues of law. In his Declaration, Mr. Kehr sets forth his legal opinions concerning:
9 (1) whether Plaintiff has a “fundamental misunderstanding” of the Rule of Professional Conduct
10 of the State Bar of California (Kehr Decl. 2:1-2), (2) whether Plaintiff’s analysis of the law of
11 “side-switching” is correct (Kehr Decl. 2:8-26), (3) whether Plaintiff and Defendants’ counsel
12 Quinn Emanuel formed an attorney-client relationship (Kehr Decl. 3:3-5:2), (4) California law on
13 the propriety of ethical screens (Kehr Decl 5:3-7:12), (5) California requirements regarding
14 obtaining a second consent form and the applicability of CRPC 3-310(c)(2) (Kehr Decl.
15 7:13-8:17), (6) the multi-factor test that determines whether an advance waiver is enforceable in
16 California (Kehr Decl. 8:18 -11:21), and (7) the legal ramifications of the extent of the interaction
17 and transfer of information between a prospective client and an attorney (Kehr Decl. 11:22-12:14).
18 In support of its many legal propositions Mr. Kehr’s Declaration offers extensive citation
19 to legal authorities and argument interpreting these authorities. See, e.g., Kehr Decl., 9:4-18
20 (interpreting the Zador decision). Even a cursory review of Mr. Kehr’s Declaration reveals its true
21 purpose—Mr. Kehr’s Declaration is not a declaration at all, but rather a memorandum of points
22 and authorities.
23 The Kehr Declaration is replete with legal argument. As just one example:
24 The existence of a lawyer-client relationship is not determined

under the Evidence Code. Rather, one exists when a person actually
25 relies on a lawyer for legal advice or representation and that actual
26 reliance is objectively reasonable under the circumstances. See,
e.g., Restatement Third, The Law Governing Lawyers § 14(1)(b).
27
(Kehr Decl. 4:7-10.). Other times, Mr. Kehr opts to simply proffer propositions of law without
28
citation or authority. See e.g., Kehr Decl. 2:20-22 (“A lawyer switches sides only when the lawyer

-3-
1 represents a party to a lawsuit and, upon the termination of that representation, undertakes to
2 represent an adversary in the same matter.”). Clearly, what Mr. Kehr has offered to this Court is an
3 opinion on the law and, in particular, the meaning, interpretation and application of the Rules of
4 Professional Conduct and the decisional law of California.
5 As the Summers court noted, “California is not alone in excluding expert opinions on issues
6 of law. . . . At least eight circuit courts have held expert testimony on issues of law is not
7 admissible.” 69 Cal. App. 4th at 1181 (noting that “experience is hardly a qualification for
8 construing a document for its legal effect when there is a knowledge gentleman in a robe. . . .”
9 [citations omitted] “Each courtroom comes equipped with a ‘legal expert,’ called a judge.”
10 [citations omitted]).
11 What is troubling about this case is that in April of 2010, Quinn Emanuel moved to
12 disqualify opposing plaintiff’s counsel on the basis of, among other things, a conflict of interest the
13 matter of O’Shea, et al. v. Epson America, Inc. et al., Case No. 09-0863 PSG (CWx), Central
14 District of California. In opposition to the motion to disqualify, plaintiff’s counsel submitted the
15 declaration of one Robert L. Kehr. See Plaintiff’s Request for Judicial Notice , Ex. A.
16 Quinn Emanuel responded by objecting on the same exact bases presented in this
17 objection—that Mr. Kehr rendered inadmissible legal opinions. Id. Quinn Emanuel’s objection
18 noted that:
19 Mr. Kehr has been reprimanded by courts in the past for these exact
types of impermissible opinions. A Westlaw search for opinions in
20 which his testimony has been offered shows that the only two
opinions addressing Mr. Kehr's expert opinion excluded it as
21 offering improper legal conclusions.1 Del Webb Communities, Inc.
v. Partington, 2007 WL 3053709 at *5-6 (D. Nev. Sept. 18, 2009)
22 (holding Mr. Kehr's opinion inadmissible under Federal Rule of
Evidence 702); People v. Reiner, 2004 WL 1171507 at *1 *11 (Cal.
23 App. 2d Dist. May 26, 2004) (affirming the exclusion of Mr. Kehr's
opinion that an attorney who was convicted of attempted extortion
24 and conspiracy to commit extortion “acted in accordance with the
law and was not guilty of any crime" as offering an “an improper
25 opinion on an issue of law”). The Court should do so here as well.
26 Id. at 3:2-12. The Court should not entertain the Kehr Declaration here either for the same reasons.
27 III. CONCLUSION
28 Based on the foregoing objections, Plaintiff respectfully submits that the Court should

-4-
1 strike paragraphs 1 through 5 of the Kehr Declaration.
2
3
4
5
6 By
K. Luan Tran
7 James M. Lee
Cyrus Khojandpour
8 Lisa Chin

10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

-5-
Tel. 213-612-3737 / Fax. 213-612-3773
5
Tel. 213-785-6130 / Fax. 213-254-9001
8
10
11
12
13
14
15
Plaintiff,
16
v. PLAINTIFF FRANK BROWN’S REQUEST
17 FOR JUDICIAL NOTICE IN SUPPORT OF
SNAPCHAT, INC., a Delaware corporation; PLAINTIFF’S MOTION TO DISQUALIFY
18 TOYOPA GROUP, LLC, a California Limited
Assigned for all purposes to the Honorable John
19 Liability Company; EVAN THOMAS L. Segal (Dept. 50)
SPIEGEL, an individual; ROBERT
20 CORNELIUS MURPHY, an individual; and
DOES 1 through 25 inclusive, [Plaintiff’s Reply in Further Support of Motion
21 to Disqualify, Objections to Declarations of
Defendants. Joseph C. Sarles and Robert Kehr, and
22 Response to Defendants’ Objections filed
23
24 Hearing:
25 Time: 8:30 a.m.
Dept.: 50
26
28
REQUEST FOR JUDICIAL NOTICE IN SUPPORT OF PLAINTIFF’S MOTION TO DISQUALIFY

1 Plaintiff Frank Reginald Brown, IV’s (“Plaintiff”) submits this Request for Judicial Notice
2 in support of his concurrently filed reply to Defendants’ Opposition to Motion to Disqualify the
3 Quinn Emanuel firm.
4 The Court may take judicial notice of the content of “[r]ecords of (1) any court of this state
5 or (2) any court of record of the United States or of any state of the United States.” Cal. Evid. Code
6 §§ 452(d), 453. California courts routinely take judicial notice of court proceedings. See, e.g.
7 People v. Lawley, 27 Cal. 4th 102, 116 n.2 & 163 n.24 (2002) (taking judicial notice of court files
8 and transcripts from another criminal case); People v. Moreno, 108 Cal. App. 4th 1, 4 n.4 (2003)
9 (taking judicial notice of record in prior appeal); PG&E Corp. v. Pub. Util. Comm’n, 118 Cal.
10 App. 4th 1174, 1220 n.38 (2004) (judicially noticing complaints filed against defendant in other
11 proceedings under Evidence Code § 452(d)); Oriola v. Thaler, 84 Cal. App. 4th 397, 403 & n.3
12 (2000) (judicially noticing transcript related to injunction proceeding).
13 Defendants therefore request that the Court take judicial notice of the following
14 documents:
15 1. Exhibit A is a true and correct copy of Objections to the Declaration of Robert L. Kehr
16 filed by Quinn Emanuel on May 3, 2010 in O’Shea, et al. v. Epson America, Inc. et al.,
17 Case No. CV – 09-8063 (CWx), in the United States District Court, Central District of
18 California [Doc. 128].
19 2. Exhibit B is a true and correct copy of a Motion to Disqualify Glaser Weil filed by
20 Quinn Emanuel on December 10, 2010 in Mattel, Inc. v. MGA Entertainment, Case No.
21 CV04-9049 (RNBx), in the United States District Court, Central District of California
22 [Doc. 9359].
23 3. Exhibit C is a true and correct copy a Reply in Support of Motion to Disqualify Glaser
24 Weil, filed by Quinn Emanuel on December 19, 2010 in Mattel, Inc. v. MGA
25 Entertainment, Case No. CV04-9049 (RNBx), in the United States District Court,
26 Central District of California [Doc.9416].
27 4. Exhibit D is a true and correct copy of Judge David O. Carter’s December 20, 2010
28 minute order granting Mattel’s Motion to Disqualify Glaser Weil in Mattel, Inc. v.

-1-
1 MGA Entertainment, Case No. CV04-9049 (RNBx), in the United States District
2 Court, Central District of California [Doc. 9531].
3 5. Exhibit E is a true and correct copy of a Motion to Disqualify McKool Smith filed by
4 Quinn Emanuel on September 7, 2011in Packetvideo Corporation v. Spotify USA Inc.,
5 et al., Case No. 3:11-cv-1659 IEG WMc, in the United States District Court, Southern
6 District of California [Doc. 16].
7 6. Exhibit F is a true and correct copy of Judge Irma E. Gonzalez’s September 28, 2011
8 order granting the McKool Smith firm’s Motion to Withdraw in Packetvideo
9 Corporation v. Spotify USA Inc., et al., Case No. 3:11-cv-1659 IEG WMc, in the
10 United States District Court, Southern District of California [Doc. 32].
11
12
13
14
15 By
K. Luan Tran
16 James M. Lee
Cyrus Khojandpour
17 Lisa Chin

19
20
21
22
23
24
25
26
27
28

-2-
EXHIBIT A
Case 2:09-cv-08063-PSG-CW Document 128 Filed 05/03/10 Page 1 of 5 Page ID #:4184
1 QUINN EMANUEL URQUHART & SULLIVAN, LLP

Shon Morgan (Bar No. 187736)
shonmorgan@quinnemanuel.com
Ryan S. Goldstein (Bar No. 208444)
ryangoldstein@quinnemanuel.com
Valerie Roddy (Bar No. 235163)
valerieroddy@quinnemanuel.com
865 South Figueroa Street, 10th Floor
Los Angeles, California 90017-2543
Telephone: (213) 443-3000
Facsimile: (213) 443-3100
Attorneys for Defendants Epson America,
Inc., and Epson Accessories, Inc.
UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA
CHRISTOPHER O'SHEA, GISELE CASE NO. CV 09-8063 PSG (CWx)

ROGERS and JEFF ADAMS,
individuals, on behalf of themselves and DEFENDANTS EPSON AMERICA,
all others similarly situated, INC.'S AND EPSON ACCESSORIES,
INC.'S OBJECTIONS TO THE
Plaintiffs, DECLARATION OF ROBERT L.
KEHR IN SUPPORT OF YUHL
vs. STONER CARR LLP'S OPPOSITION
TO DEFENDANTS' MOTION TO
EPSON AMERICA, INC., a California DISQUALIFY PLAINTIFFS'
corporation; EPSON ACCESSORIES, COUNSEL
INC., a California corporation; and
DOES 1-100, inclusive, Hon. Philip S. Gutierrez
Defendants.
Date: May 17, 2010
Time: 1:30 p.m.
Crtrm.: Roybal, 880
Filing Date: August 28, 2009
Case No. CV 09-8063 PSG (CWx)

DEFENDANTS' OBJECTIONS TO THE DECLARATION OF ROBERT L. KEHR
1 Defendants Epson America, Inc. and Epson Accessories, Inc. ("Epson")

object to the Declaration of Robert L. Kehr in Support of Yuhl Stoner Carr LLP's
Opposition to Defendants' Motion to Disqualify Plaintiffs' Counsel ("Kehr
Declaration"). Epson hereby requests that the Court strike the portions of the Kehr
Declaration to which Epson objects.
I. THE KEHR DECLARATION OFFERS IMPROPER LEGAL

CONCLUSIONS
The Kehr Declaration improperly offers legal conclusions in paragraphs 3 and
4. Questions of law are for the Court's determination and are "inappropriate subjects
for expert testimony." Aguilar v. Int'l Longshoremen's Union Local No. 10, 966
F.2d 443, 447 (9th Cir. 1992) (affirming the exclusion of an expert who offered an
opinion about the reasonable and foreseeable reliance individuals would ascribe to
certain instructions); see Nationwide Transport Finance v. Cass Information
Systems, Inc., 523 F.3d 1051, 1058 (9th Cir. 2008) ("'[A]n expert witness cannot
give an opinion as to her legal conclusion, i.e., an opinion on an ultimate issue of
law.'" (quoting Hangarter v. Provident Life & Accident Ins. Co., 373 F.3d 998, 1016
(9th Cir. 2004))). Here, the Kehr Declaration limits itself to legal conclusions,
offering nothing in the way of analysis.
First, Mr. Kehr concludes that there is no conflict of interest between
plaintiffs' counsel's duties as Fabrice Commelin's agents and as counsel for the class.
(Kehr Decl. ¶ 3.a, at 3:21-22, 4:2-8, :18-19). Mr. Kehr is not offering an opinion
and analysis of specific conduct.
Second, there is no basis even for that legal conclusion insofar as the opinion
is predicated entirely on facts that do not exist here. Mr. Kehr's opinion is explicitly
based on an assumption that, if plaintiffs "were ordered" to act a certain way, that
order could trump the ethical violation currently being committed. (Kehr Decl.
¶ 3.a, at 4:2-8). Even if it may be true that a court can save a party from its ethical
-1- Case No. CV 09-8063 PSG (CWx)
1 conflict with some type of order prohibiting certain conduct, there is no analysis of
2 what such an order would look like here and, in any case, there is no such order here
3 that would be of any avail to plaintiffs.
4 Third, Mr. Kehr concludes that solicitation of class members is legally proper.
5 (Kehr Decl. ¶ 3.b, at 4:24-25). Mr. Kehr does not offer any analysis of the specific
6 conduct of Yuhl Stoner in soliciting class members here, instead offering only a
7 summary of the general law on soliciting prospective class members. This
8 testimony is irrelevant to any issue raised by Epson's motion to disqualify. Epson
9 does not argue that the solicitation of prospective class representatives is generally
10 prohibited. Rather, Epson argued that Mr. Stoner acted unethically by using
11 confidential and privileged information provided to him by his client in one action
12 to solicit class plaintiffs for another prospective case, as confirmed by his use of an
13 internal Epson code name in his solicitation email.
14 Fourth, with respect to plaintiffs' counsel's email offering to sell out the
15 putative class for a good individual settlement for Mr. Commelin, Mr. Kehr only
16 offers his creative spin on the July 29, 2009 email. (Kehr Decl. ¶ 3.c, at 5:4-28).
17 The email speaks for itself. Mr. Kehr's interpretation of what the email "says" is not
18 a proper expert opinion. Rather, courts reject attempts to provide an opinion on how
19 a document would be reasonably understood by a reader. See Aguilar, 966 F.3d at
20 447 (opinion on how a worker would understand the letter rejected: "Here, the
21 reasonableness and foreseeability of the casual workers' reliance were matters of law
22 for the court's determination. As such, they were inappropriate subjects for expert
23 testimony.").
24 Fifth, Mr. Kehr's conclusion in Paragraph 4 that the facts, as assumed in his
25 declaration, "do not provide a basis for [Yuhl Stoner's] disqualification" is
26 impermissible. (Kehr Decl. ¶ 4, at 6:6). The disqualification of plaintiffs' counsel is
27 the ultimate legal issue for the Court and Mr. Kehr's opinion is improperly offering
28 an opinion on the "ultimate issue of law." Nationwide Transport Finance, 523 F.3d
1 at 1058.
2 Mr. Kehr has been reprimanded by courts in the past for these exact types of
3 impermissible opinions. A Westlaw search for opinions in which his testimony has
4 been offered shows that the only two opinions addressing Mr. Kehr's expert opinion
5 excluded it as offering improper legal conclusions.1 Del Webb Communities, Inc. v.
6 Partington, 2007 WL 3053709 at *5-6 (D. Nev. Sept. 18, 2009) (holding Mr. Kehr's
7 opinion inadmissible under Federal Rule of Evidence 702); People v. Reiner, 2004
8 WL 1171507 at *1 *11 (Cal. App. 2d Dist. May 26, 2004) (affirming the exclusion
9 of Mr. Kehr's opinion that an attorney who was convicted of attempted extortion and
10 conspiracy to commit extortion "acted in accordance with the law and was not guilty
11 of any crime" as offering an "an improper opinion on an issue of law"). The Court
12 should do so here as well.
13
14 II. THE KEHR DECLARATION IS CONCLUSORY AND PROVIDES
15 INSUFFICIENT ANALYSIS
16 The conclusory analysis in Mr. Kehr's declaration prevents the Court from
17 analyzing the declaration based on Mr. Kehr's reasoning, therefore, paragraphs 3
18 and 4 of the Kehr Declaration should be stricken. The lack of analysis precludes the
19 Court from determining "if . . . the witness has applied the principles and methods
20 reliably to the facts of the case." Fed. R. Evid. 702. The Kehr Declaration lacks any
21 explanation of how Mr. Kehr concluded that certain conduct satisfies Yuhl Stoner's
22 ethical obligations.
23
24
25
1
26 This is based on a May 3, 2010 search run in the Westlaw "All Federal &
27 State Cases (ALLCASES)" database using the search terms: Robert /5 Kehr /250
expert.
28
1 Conclusion
2 Based on these objections, Epson respectfully submits that the Court should
3 strike paragraphs 3 and 4 of the Kehr Declaration.
4
5 DATED: May 3, 2010 QUINN EMANUEL URQUHART &
SULLIVAN, LLP
6
7
8
By /s/ Shon Morgan
9 Shon Morgan
Attorneys for Defendants Epson America,
10
Inc. and Epson Accessories, Inc.
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
EXHIBIT B
Case 2:04-cv-09049-DOC -RNB Document 9359 Filed 12/10/10 Page 1 of 25 Page ID
#:282293

John B. Quinn (Bar No. 090378)
2 john'luinn@quinnemanuel.com
William C:1'rice (Bar No. 108542)
3 williamrrice@'1uinnemanuel.com)
Michae T. Zeller (Bar No. 196417)
4 michae1zeller@quinnemanuel.com
5 Los Angeles, California 90017-2543
Telephone: (213l443-3000
6 Facsimile: (213 443-3100
7 Attorneys for MatteI, Inc. and
MatteI de Mexico, S.A. de C. V.
8
9
10
11
SOUTHERN DIVISION
CASE NO. CV 04-9049 DOC (RNBx)
Consolidated with
Case Nos. CV 04-09059 & CV 05-
02727
Hon. David O. Carter
MA'ITEL'S MOTION TO
DISQUALIFY GLASER WElL
Hearing Date: TBD

19 Defendant. Time: TBD
Place: Courtroom 9D
20
21 AND CONSOLIDATED ACTIONS Discovery Cutoff: October 4, 2010
Pre-trial Conference: January 4, 2011
Trial: January 11 , 2011
22
23
24
25
26
27
28
MA TTEL'S MOTION TO DlSOUALlFY GLA SER WElL

#:282294
I TO ALL PARTIES AND THEIR COUNSEL OF RECORD:

2 PLEASE TAKE NOTICE that, on a date and at a time to be determined by
3 the Court, before the Honorable David O. Carter, plaintiffs Mattei, Inc. and Mattei
4 de Mexico, S.A. de C.V. (collectively, "Mattei") will, and hereby do, move the
5 Court for an order disqualifYing Glaser, Weil, Fink, Jacobs, Howard & Shapiro,
6 LLP ("Glaser Wei I") from representing MGA Entertainment, Inc., MGAE de
7 Mexico, S.R.L. de C.V., MGA Entertainment (HK), Ltd., and Isaac Larian
8 (collectively, "MGA") in this action.
9 This Motion is made pursuant to Cal. R. Prof. Condo 3-31O(E) and L.R. 83-
10 3.1.2 on the grounds that Glaser Wei! attorney Jill Basinger did prior work for
11 Mattei in this and another substantially related matter and has an indisputable
12 conflict of interest that must be imputed to the entire firm as a matter oflaw.
13 This Motion is based on this Notice of Motion and Motion, the
14 accompanying Memorandum of Points and Authorities, the Declaration of Michael
15 T. Zeller, the records and files of this Court, and all other matters of which the
16 Court may take judicial notice.
17 Certificate of Compliance
18 Lead counsel met and conferred regarding the issue in MatteI's motion on
19 December 8, 20 I 0 but did not reach a resolution.
20
21 DATED: December 10,20 10 QUINN EMANUEL URQUHART &
SULLIVAN. LLP
22
23
Bv lsi John B. Ouinn
24 John B . Quinn
Attorneys for MatteI, Inc. and
25 MatteI de Mexico. S.A. de C.V.
26
27
28
-1-
MATTEL'S MOTION TO DISQUALIFY GLASER WElL
#:282295
I TABLE OF CONTENTS
2
3
4 MEMORANDUM OF POINTS AND AUTHORITIES ............................................ . 1
5 PRELIMINARY STATEMENT.. ................................................................................ I
6 STATEMENT OF FACTS ........................................................................... .. ............. 1
7 LEGAL STANDARD ........................................ .. ...................................... .. ... ............. 3
8 ARGUMENT ................................................ .... .. ... ..... .... .... .. ... ... .... ...... .. ... ...... .. ......... .3
9 l. GLASER WElL HAS AN INCURABLE CONFLICT OF INTEREST ......... .3
10 A. Ms. Basinger Obviously Has A Conflict.. ............................................... 3
II B. Under California Law, the Conflict Is Imputed to Glaser Weil. ............ .4
12 II. NONE OF THE OTHER ARGUMENTS GLASER WEIL MAKES
AGAINST DISQUALIFICATION IS PERSUASIVE, OR EVEN
13 RELEVANT .... .. .................... .. .......................................................................... 9
14 CONCLUSION ....... .............. .......... ......... ................................................................. II
15
16
17
18
19
20
21
22
23
24
25
26
27
28
- )-
#:282296
1 TABLE OF AUTHORITIES
2 Page
3 Cases
.
4 All Am. Semiconductor, Inc. v. Hynix Semiconductor, Inc.,
No. C 07-1200, 2008 WI.. 5484552 (N.D. Cal. Dec. 18,2008) .............................. 5
5
City & Cnty. of San Francisco v. Cobra Solutions, Inc.,
6 38 Cal. 4th 839 (2006) .................................................. ...... .................... ...... ...... 3, 4
7
Flatt v. Super. Ct.,
8 9 Cal. 4th 275 (1994) ...................................................................................... 5, 6, 8
9 Fremont Indemn. Co. v. Fremont Gen. Corn.,

143 Cal. App. 4th 50 (2d Dis!. 2006) ...................................................................... 3
10
Genetech, Inc. v. Sanofi-Aventis Deutschland GMGH,
11 No. C 08-04909 SI (N.D. Cal. Mar. 20, 2010) ....................................................... 5
12
Glaxo Group Ltd. v. Genetech, Inc.,
13 No. SA 10-CV-2764-MRP (C.D. Cal. June 15, 2010) ...................................... .3, 6
14 Goldberg v. Warner/Chappell Music, Inc.,
125 Cal. App. 4th 752 (2d Dis!. 2005) ................................................................ 4, 7
15
H.F. Ahmanson & Co. v. Salomon Bros., Inc.,
16 229 Cal. App. 3d 1445 (2d Dist. 1999) .................................................................. .3
17
Henriksen v. Great A\ll. Say. & Loan,
18 11 Cal. App. 4th 109 (1st Dis!. 1992) .................................................... 3, 4, 5, 7, 8
19 Hitachi, Ltd. v. Tatung Co.,
419 F. Supp. 2d 1158 (N.D. Cal. 2006) ........................ ................ .. ........ ...... ...... 2, 9
20
I-Enternrise Co. v. Draper Fisher Jurvetson Mgm!. CO. V, LLC,
21 No. C-03-1561 MMC, 2005 WI.. 757389 (N.D. Cal. Apr. 4, 2005) ............ .8, 9,10
22
Kirk v. First Am. Title Ins. Co.,
23 183 Cal. App. 4th 776 (2010) ................................ .. .................... ........ .. .. .. .. ....... 6, 7
24 Largo Concrete v. Liberty Mu!. Fire Ins. Co.,
No. C 07-04651 CRE, 2008 WI.. 53128 (N.D. Cal. Jan. 2, 2008) ...................... 6, 9
25
Lucent Techs. Inc. v. Gateway, Inc.,
26 No. 02CV2060-B(CAB); 2007 WI.. 1461406 (S.D. Cal. May 15,2007) ....... 5, 6, 8
27
Meza v. H. Muehlstein & Co.,
28 176 Cal. App. 4tJ:i 969 (2d Dis!. 2009) ................................................... 3, 4, 5, 7, 8
-11-
MATTEL'S MOTION TO DISOUALIFY GLASER WElL
#:282297
I Openwave Sys. v. 724 Solutions (US) Inc.,

No. C 09-3511 RS, 20 10 WL 1687825 (N.D. Cal. Apr. 22,2010) ..... ........ .. ... ..6, 7
2
3 Pound v. DeMera DeMera Cameron,
135 Cal. App. 4th 70 (5th Dist. 2005) .... ..... .... .. .. .. ................ .................. ........ .3, 10
4
Rosenfeld Constr. Co. v. Super. Ct.,
5 235 Cal. App. 3d 566 (1991) .. ... ........ .. ......... ....................................... ..... ............ ..4
6 Sham v. Next Entm't., Inc.,
163 Cal. App. 4th 410 (2d Dist. 2008) .. ..... ... ... ... .. .... ... ........ .. .. .... .. ... .. .... .... ..... ....... 5
7
8 UMG Recordings, Inc. v. MySpace, inc.,
526 F. Supp. 2d 1046 (C.D. Cal. 2007) .. ..... .. .. .. ... ........ ..... .... ... .. ... .. ... .. ... ............... 6
9
10 Other Authorities
II Cal. R. Prof. Conduct 3-3 IO(E) .. .. ...... ... .. .. ... ... ... .. ... .... .... .. .. .. ... .. ............ ...... .......... ...... 3
12 Don J. DeBenedictis,
Bar Updates Rules, Nixes 'Screening' of Conflict Clients,
13 Los Angeles Daily Journal (July 27, 2010) ... ... ............... .......... ...... ........ .... ..... .. .... 7
14 Local Rule 83-3 .1.2 ....... .... ........ ... .. ... ..... ..... .. ...... .. ..... ......... .. .. .. ......... .. .... ..... ......... ...... 2
15
16
17
18
19
20
21
22
23
24
25
26
27
28
-111-
#:282298
I MEMORANDUM OF POINTS AND AUTHORITIES

2 Preliminary Statement
3 Glaser Wei! committed the cardinal sin under the disqualification cases-it
4 hired an attorney who worked on the other side of this very case. The lawyer in
5 question, Jill Basinger, billed over 1,400 hours to MatteI matters while at Quinn
6 Emanuel, including this case and another substantially related matter. No amount of
7 spin and no ethical wall can change the fact that disqualification of Glaser Weil is
8 required.
9 There is and can be no dispute that Ms. Basinger herself has a conflict.
10 Glaser Wei! has not asserted otherwise. And, as MGA's counsel itself proclaimed
11 in correspondence only last year (in the context of inaccurate accusations about prior
12 work by a Quinn Emanuel lawyer): "[A]n attorney's personal disqualification is
13 imputed to every attorney in the lawyer's office, as a matter of law, and the
14 presumption is not rebuttable." Glaser Wei!'s apparent view that California law has
15 somehow now shifted 180 degrees is incorrect. Ms. Basinger's incurable conflict is
16 attributable to the entire Glaser Wei! firm. Disqualification is required.
17 Statement of Facts
18 Jill Basinger is a 1997 law school graduate. She worked at Quinn Emanuel
19 Urquhart & Sullivan, LLP ("Quinn Emanuel") as a senior associate and Of Counsel
20 from 2002 to 2006. During her time at Quinn Emanuel, Ms. Basinger billed 1,473.1
21 hours to multiple Mattei matters. This included 9 hours billed directly to MatteI v.
22 MGA litigation. As part of her work on this matter, Ms. Basinger communicated
23 with Mike Zeller and reviewed confidential MatteI systems and files for potential
24 production.
25 In addition, Ms. Basinger billed 123.3 hours to Viveros v. MatteI, which
26 concerned the origins of MatteI's "Diva Starz" line of products, that overlapped in
27 issues and discovery with the MGA litigation. MGA itself has asserted that there is
28 a substantial relationship between the matters at issue in Viveros and this case by
-1-
MATTEL'S MOTION TO DISOUALIFY GLASER WElL
#:282299
1 asserting that MatteI's "Diva Starz" line was directly relevant to MGA's unclean
2 hands and competition privilege or justification defenses in this case.
3 MGA's Motion to Compel Further Responses to Requests for Production,
4 September 23 , 2009, at 20 (Dkt. No. 6816). As the Court will recall, MGA's
5 counsel repeatedly and specifically relied upon "Diva Starz" at the recent summary
6 judgment hearing for its statute of limitations and other arguments. While working
7 on Viveros, Ms. Basinger was privy to MatteI's litigation strategies with respect to
8 "Diva Starz" and protection of its intellectual property, regularly communicated
9 with in-house counsel for MatteI and was involved in the search for and collection
I 0 of documents concerning "Diva Starz." She also worked on, and discussed strategy
II regarding, the depositions of witnesses, including of persons who are witnesses in
12 both the MGA and the Viveros cases. MatteI's lead counsel in Viveros who
13 regularly communicated with Ms. Basinger on such and other privileged matters
14 was Mike Zeller, who is centrally involved as MatteI's counsel in the MGA
15 litigation. Indeed, the bulk of documents produced in the MGA litigation
16 concerning "Diva Starz," which were demanded by MGA, were collected and
17 reviewed as part of the Viveros case by Ms. Basinger, among other Quinn Emanuel
18 attorneys.
19 On November 24, 2010, MatteI was notified that Patricia Glaser of Glaser
20 Weil would be seeking to associate in as counsel for MGA in this matter. On
21 November 30, 2010, a Quinn Emanuel attorney familiar with the MatteI v. MGA
22 litigation learned that Ms. Basinger had joined Glaser Weil. On December 3, 2010,
23 MatteI sent Glaser Weil a letter, alerting it to the conflict. On December 6, 2010,
24 Glaser Weil responded, acknowledging that Ms. Basinger "may have" previously
25 worked for Mattei on this litigation. Glaser Weil claimed to have taken steps it
26 argued "preclude[d] any imputation of a conflict" and asserted there was "no basis
27 for any objection by MatteI." Numerous meet and confers failed to convince Glaser
28 Weil to withdraw from representing MGA in this litigation.
-2-
MATIEL'S MOTION TO DISQUALIFY GLASER WElL
#:282300
I Legal Standard
2 Attorneys appearing before the United States District Court for the Central
3 District of California are subject to California law governing professional conduct.
4 L.R. 83-3.1.2 (All attorneys must "comply with the standards of
5 professional conduct required of members of the State Bar of California and
6 contained in the State Bar Act, the Rules of Professional Conduct ofthe State Bar of
7 California, and the decisions of any court applicable thereto."); Hitachi, Ltd. v.
8 Tatung Co., 419 F. Supp. 2d 1158, 1160 (N.D. Cal. 2006) ("Motions to disqualify
9 counsel are decided under state law."). Under California law, when an attorney has
10 worked on the other side ofa case, that severe conflict is imputed to the attorney's
II entire firm. Glaxo Group Ltd. v. Genetech, Inc., No. SA 10-CV-2764-
12 MRP, at 7 (C.D. Cal. June 15,2010), attached hereto as Exhibit 1; see also infra
13 Section I.B.
14 Argument
15 I, GLASER WElL HAS AN INCURABLE CONFLICT OF INTEREST
16 A, Ms. Basinger Obviously Has A Conflict
17 Pursuant to Rule 3-31 O(E) of the California Rules of Professional Conduct, an
18 attorney may not represent a new client whose interests are adverse to those of a
19 former client on a matter in which the attorney has obtained confidential
20 information. Cal. R. Prof. Conduct 3-31O(E); see also Henriksen v. Great Am. Sav.
21 & Loan, II Cal. App. 4th. 109, 113 (lst Dist. 1992). To obtain disqualification, the
22 former client is not required to show that the attorney actually possesses any
23 material confidential information; rather, it need establish only that the former
24 representation and the new representation are "substantially related." See id. at 114;
25 H.F. Ahmanson & Co. v. Salomon Bros" Inc., 229 Cal. App. 3d 1445, 1452 (2d
26 Dist. 1999) ("[I[t is well settled actual possession of confidential information need
27 not be proved in order to disqualify the former attorney."). If there is a "substantial
28 relationship" between the current representation and the former representation,
-3-
#:282301
I access to confidential information is presumed, and disqualification is mandatory.

2 See Fremont Indemn. Co. v. Fremont Gen. Corp., 143 Cal. App. 4th 50, 67 (2d Dis!.
3 2006).
4 While a Quinn Emanuel associate and Of Counsel, Ms. Basinger worked not
5 only on related matters-she worked on this very litigation. An attorney who
6 switches sides during a pending litigation is disqualified automatically. See,!h&.
7 City & Cnty. of San Francisco v. Cobra Solutions, Inc., 38 Cal. 4th 839, 846 (2006)
8 ("An attorney may not switch sides during pending litigation representing first one
9 side and then the other."); Meza v. H. Muehlstein & Co., 176 Cal. App. 4th 969, 978
10 (2d Dis!. 2009) (attorney's prior representation of adverse party in the very same
11 suit was a per se conflict of interest); Pound v. OeMera OeMera Cameron, 135 Cal.
12 App. 4th 70, 76 (5th Dis!. 2005) (switching sides in the same action is 'the most
13 egregious conflict of interes!."') (citation omitted). Glaser Wei! cannot, and does
14 not, dispute that Ms. Basinger is disqualified from representing MGA in this action. I
IS B. Under California Law, the Conflict Is Imputed to Glaser Weil
16 In California, an attorney's individual conflict of interest is imputed to her
17 firm because "attorneys, working together and practicing law in a professional
18 organization, share each other's, and their clients, confidential infonnation." Cobra
19 Solutions, Inc., 38 Cal. 4th at 847-48; W also Rosenfeld Constr. Co. v. Super. C!.,
20 235 Cal. App. 3d 566, 573 (1991 )("It has long been recognized . .. that knowledge
21 by any member of a law firm is knowledge by all of the attorneys in the firm,
22 partners as well as associates."). As MGA's counsel put it in a letter to MatteI last
23 year, "an attorney's personal disqualification is imputed to every attorney in the
24 lawyer's office, as a matter of law, and the presumption is not rebuttable." The
25 vicarious disqualification rule is based on "a pragmatic recognition that the
26
27 I Glaser Wei! apparently recognized Ms. Basinger's conflict in attempting to
construct an ethical wall around her.
28
-4-
#:282302
confidential information will work its way to the nontainted attorneys at some
2 point." Goldberg v. Warner/Chappell Music, Inc., 125 Cal. App. 4th 752, 765 (2d
3 Dist. 2005).
4 Vicarious disqualification of the entire firm is compelled where, as here, an
5 attorney's disqualification results from her prior work for the opposing side in the
6 same lawsuit. See Meza, 176 Cal. App. 4th at 978 ("As a general rule in California,
7 where an attorney is disqualified from representation, the entire law firm is
8 vicariously disqualified as well. This is especially true where the attorney's
9 disqualification is due to his prior representation of the opposing side during the
10 same lawsuit."); Henriksen, 11 Cal. App. 4th at 117 ("Where an attorney is
11 disqualified because he formerly represented and therefore possesses confidential
12 information regarding the adverse party in the current litigation, vicarious
13 disqualification of the entire firm is compelled as a matter oflaw."); Flatt v. Super.
14 Ct., 9 Cal. 4th 275, 283 (1994) (citing Henriksen with approval for the same
15 proposition); Lucent Techs. Inc. v. Gateway, Inc., No. 02CV2060-B(CAB), 2007
16 WL 1461406, at *2 (S.D. Cal. May 15, 2007) ("California courts have applied an
17 automatic or per se disqualification of the firm especially where the conflict
18 involves the representation of adverse parties.").
19 In correspondence, Glaser Wei! has asserted that its creation of an "ethical
20 wall" between Ms. Basinger and the attorneys who propose to handle this case
21 insulates it from disqualification. This is not the law. For several decades,
22 California state and federal district courts have treated the rule of vicarious
23 disqualification as absolute and irrebutable---as MGA's own counsel conceded in
24 correspondence in 2009.
25 In Henriksen v. Great Am. Savings & Loan, 11 Cal. App. 4th 109 (1st Dist.
26 1992), for example, an attorney who had previously represented defendants in
27 ongoing litigation joined the firm that was representing the plaintiffs. Although the
28 firm implemented an eihical wall between the tainted attorney and the lawyers
-5-
MA ITEL'S MOTION TO DISQUALIFY GLASER WElL
#:282303
I handling the case, the court held that disqualification of the entire firm was
2 mandatory. Id. at 114-15. Numerous other cases have reached the same result. See,
3 Meza, 176 Cal. App. 4th at 978-80 (ethical wall between an attorney with
4 confidential information who switched sides in the same lawsuit did not prevent
5 disqualification of entire firm); Sharp v. Next Entm't" Inc., 163 Cal. App. 4th 410,
6 438 n. 11 (2d Dist. 2008) ("[I]n the context of private law firms, there is no
7 definitive California authority authorizing ethical walls."); Genetech, Inc. v. Sanofi-
8 Aventis Deutschland GMGH, No. C 08-04909 SI, at 12-13 (N.D. Cal. Mar. 20,
9 2010) (disqualifying entire finn even though it submitted affidavits stating that the
10 tainted attorney was semi-retired and had not been involved in the litigation at
11 issue); All Am. Semiponductor, Inc. v. Hynix Semiconductor, Inc., No. C 07-1200,
12 2008 WL 5484552, at *8-9 (N.D. Cal. Dec. 18,2008) (attorney's prior
13 representation of corporate officer at previous firm disqualified entire new firm from
14 representation adverse to corporation in related matter, despite timely creation of
15 ethical wall and geographical separation of attorneys); Largo Concrete v. Liberty
16 Mut. Fire Ins. Co., No. C 07-04651 CRE, 2008 WL 53128, at *4-5 (N.D. Cal. Jan.
17 2,2008) (plaintiffs' counsel was disqualified even though firm screened off
18 associate who worked on substantially related matters for defendant at previous
19 firm); Lucent, 2007 WL 1461406, at *4-5 (ethical walls are ineffective); UMG
20 Recordings, Inc. v. MySpace, Inc., 526 F. Supp. 2d 1046, 1060-61 (C.D. Cal. 2007)
21 (Flatt requires automatic disqualification of entire firm).
22 Glaser Wei! apparently plans to argue that the California Court of Appeal's
23 recent decision in Kirk v. First Am. Title Ins. Co., 183 Cal. App. 4th 776 (2010),
24 effected a sea-change in California disqualification law. Glaser Wei! is mistaken.
25 In Kirk, the Second District became the first California court to hold that, under
26 certain circumstances, the presumption of vicarious disqualification can be rebutted
27 by an ethical wall at a private law firm. Id. at 806-810. Any argument by Glaser
28 Wei! that California's well-established rule of imputed disqualification was
-6-
MA TIEL'S MOTION TO DISQUALIFY GLASER \VEIL
#:282304
I jettisoned by a single, nonbinding decision of the Court of Appeal would be sorely

2 misplaced, as recognized by this District earlier this year in Glaxo Group Ltd. v.
3 Genetech, Inc., No. SA IO-CV-2764-MRP (C.D. Cal. June 15, 2010). In Glaxo, the
4 court rejected the plaintiff's attempt to rely on Kirk for the proposition that an
5 ethical screen can refute the presumption of an imputed conflict. /d. at 7 ("GSK
6 cannot rely on Kirk because it is not binding authority and contradicts binding
7 California Supreme Court law. See Flatt, 9 Cal. 4th at 283."); see also Qpenwave
8 Sys. v. 724 Solutions (US) Inc., No. C 09-3511 RS, 2010 WL 1687825, at *5 n.6
9 (N.D. Cal. Apr. 22, 2010) (rejecting ethical walls and noting that Kirk is a
10 nonbinding appellate decision).
II Further, in July 2010, the California State Bar rejected the very rule proposed
12 by Glaser Wei!, that ethical walls may screen out conflicted lawyers; this further
13 shows that Kirk is an outlier-not, as Glaser Wei! suggests, established law in
14 California. Don J. DeBenedictis, Bar Updates Rules, Nixes 'Screening' Of
15 Conflict Clients, Los Angeles Daily Journal (July 27, 2010).
16 Even assuming that Kirk were the law, it would not save Glaser Wei! here .. In
17 Kirk, the "tainted" attorney had already left the firm whose representation was being
18 challenged. See Kirk, 183 Cal. App. 4th at 815-16. That fact is highly significant,
19 because "[w]here tainted attorneys and nontainted attorneys are working together at
20 the same firm, there is ... a pragmatic recognition that the confidential information
21 will work its way to the nontainted attorneys at some point," but when the tainted
22 attorney is gone, the court can conduct a "dispassionate assessment of whether
23 confidential information was actually exchanged." See Goldberg, 125 Cal. App. 4th
24 at 765 (emphasis added and internal quotation marks and citation omitted). By
25 contrast, Ms. Basinger is currently at Glaser Weil; there is no way to ensure
26 preservation of Matlel's confidences other than through vicarious disqualification.
27 See id.; Henriksen, II Cal. App. 4th at 114-15; Meza, 176 Cal. App. 4th at 978-80;
28 Openwave, 2010 WL 1687825, at *5 (refusing to extend Kirk to permit the use of an
-7-
MATIEL'S MOTION TO DISQUALIFY GLASER WElL
#:282305
1 ethical wall for existing attorney in light of the substantial relationship between
2 matters).
3 Even Kirk recognizes that in an egregious case such as this one, where an
4 attorney worked on the other side ofthe same litigation, an ethical wall cannot
5 "cure" the conflict. See Kirk, 183 Cal. App. 4th at 800 & n.20 ("[V]icarious
6 disqualification should be automatic in cases of a tainted attorney possessing actual
7 confidential information from a representation, who switches sides in the same
8 case."); see also Openwave, 2010 WL 1687825, at *5 (although Kirk may have
9 "arguably" broken some new ground, "[t]his Court would have to break far more
10 new ground ... to disregard its conclusion that there is a substantial relationship
11 between the [prior representation] and this action, and not [vicariously] disqualify
12 [the firm] under the facts here").
13 No state or district court in California has ever suggested an ethical wall could
14 overcome vicarious disqualification under the circumstances of this case.
15 Lucent, 2007 WL 1461406, at *4 ("[N]o district court cases in the Ninth Circuit
16 have permitted the presumption to be rebutted where the conflict was generated in
17 the context of a single litigation"); I-Enterprise Co. v. Draper Fisher Jurvetson
18 Mgmt. Co. V, LLC, No. C-03-1561 , 2005 WL 757389, at *6 (N.D. Cal. Apr. 4,
19 2005) (same); Flatt, 9 Cal. 4th at 283 ("If an attorney is disqualified because he
20 formerly represented and therefore possesses confidential information regarding the
21 adverse party in the current litigation, vicarious disqualification of the entire firm is
22 compelled as a matter oflaw); Henriksen, 11 Cal. App. 4th at 117 (same); Meza,
23 176 Cal. App. 4th at 979 (an ethical screen will not preclude disqualification of
24 entire firm, especially where the attorney's conflict is due to prior representation of
25 adverse party in the same matter).
26
27
28
-8-
MA TTEL'S MOTION TO DISQUALIFY GLASER WElL
#:282306
I II. NONE OF THE OTHER ARGUMENTS GLASER WElL MAKES

2 AGAINST DISOUALIFICATION IS PERSUASIVE, OR EVEN
3 RELEVANT
4 Glaser Weil's correspondence alludes to several other arguments that Glaser
5 Weil apparently intends to make to avoid disqualification. None of these is
6 sufficient to avoid disqualification of the Glaser Weil firm:
7 • Glaser Weil represented MGA in this action "in the past" - Glaser Weil
8 previously represented MGA in this action, withdrew before the Phase l.A. trial, and
9 then appeared briefly after that trial, withdrawing again in 2009. That Glaser Weil
10 represented MGA in this action before it had a conflict does not in any way support
II the position that Glaser Weil may resume the representation now that it has a
12 conflict. Courts routinely disqualify firms that have represented clients for years
13 when a tainted attorney joins the firm. See supra pp. 4-8.
14 • Jim Asperger "represented MGA at O'Melveny & Myers" - This
IS statement is irrelevant and simply false. Mr. Asperger, a white collar partner,joined
16 Quinn Emanuel in 2009. Unlike Ms. Basinger, he did no work on MGA v. Mattei,
17 and there is and can be no suggestion that Mr. Asperger has any MGA confidential
18 information that is relevant to this case. Prior correspondence confirms this.
19 • Glaser Weil hired Ms. Basinger "from the firm of McDermott. Will &
20 Emery, not Quinn Emanuel" - So what? Disqualification is mandatory if there is a
21 substantial relationship between the former and current representations. See supra
22 Section l.A. It does not matter whether, after obtaining MatteI's material
23 confidences, Ms. Basinger worked at other firms before joining Glaser Wei!.
24 • Ms. Basinger "may have had a limited role in Mattei matters as a low-
25 level associate many years ago" - In reality, Ms. Basinger was a senior associate
26 and Of Counsel, a 5- to 9-year lawyer for Mattei, not a "low-level associate." Ms.
27 Basinger billed over 1,400 hours to Mattei matters, including this litigation and
28 another substantially related matter, during that period. Id. Work by associates far
-9-
MA TIEL'S MOTION TO DISOUALIFY GLASER WElL
#:282307
1 junior to Ms. Basinger, or who billed fewer hours, has supported disqualification
2 orders. I-Enterprise, 2005 WL 757389, at *6 (disqualification of entire
3 firm because it hired attorney who billed one-half hour to the same litigation prior to
4 switching firms); Hitachi, 419 F. Supp. 2d at 1159-61 (ordering disqualification of
5 entire firm, despite claim that associate's prior work for other side on a related
6 matter was "primarily document review" and despite ethical wall); Largo, 2008 WL
7 53128, at *1-5 (disqualification of entire firm despite claim that transferring
8 associate performed 9.8 hours of work as essentially "a paralegal" in a related
9 matter, despite associate's testimony that he did not review anything that would be
10 of use in the pending litigation, and despite ethical wall); Pound, 135 Cal. App. 4th
11 at 80 (attorney associated into case who had a one-hour meeting with counsel for the
12 other side three years earlier required vicarious disqualification of firm).
13 • "There had already been a trial ... when we hired" Ms. Basinger -
14 That the Phase I.A trial occurred in 2008 is irrelevant. There is no rule permitting
15 tainted law firms to participate in subsequent trials notwithstanding disabling
16 conflicts. I-Enterprise, 2005 WL 757389, at *8 (although the remedy of
17 disqualification "is a harsh one, particularly when it comes late in the litigation," no
18 case has denied qualification on grounds of prejudice or expense). The same
19 analysis applies; no matter what the stage of the case, Glaser Weil should be
20 disqualified because it decide to hire an attorney who had represented MatteI on
21 substantially related matters, including work on the other side of this very case.
22 The inapplicable and irrelevant arguments proffered by Glaser Wei! in its
23 correspondence only confirm what the law requires: Glaser Weil should be
24 disqualified because it chose to bring in an attorney who had worked on the other
25 side of this case. No amount of "walls" or excuses can save Glaser Weil from this
26 legally required result.
27
28
-10-
MAITEL'S MOTION TO DlSOUALIFY GLASER WElL
#:282308
Conclusion
2 For the foregoing reasons, Mattei respectfully requests that the Court
3 grant its motion to disqualifY Glaser Weil from representing MGA in this litigation.
4
5 DATED: Decemher 10, 2010 QUINN EMANUEL URQUHART &
SlJLLIVAN. LLP
6
7
Bv Is! Joho B. Quinn
8 John B. Quinn
Attorneys for Mattei, Inc. and
9 Mattei de Mexico. S.A. de C.V.
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
-1 1-
#:282309
Exhibit 1
EXHIBIT /
PAGE It
#:282310
2 LINKS : 30,39, 40
3
4
S
6
7
8 UNITED STATES DISTRICT COURT
9 CENTRAL DISTRICT OF CALIFORNIA
10
II GLAXO GRO UP LIMITED, ET AL., Case No. SA 10·CV·2764· MRP (FMOx)
12 Plaintiff, ORDER RE: MOTION TO
v. DISOUALIFY COUNSEL FOR
13 PLAINTIFFS
GENENTECH, INC., ET AL.,
14
Defendant.
IS 11--------------------------
16 I. INTRODUCTION
17 Plaintiffs Glaxo Group Limited and GlaxoSmithKline LLC (collectively, "GSK")
I8 seek declaratory judgment against Genentech, lnc. ("Genentech") and City of Hope
I9 (collectively, "Defendants") that U.S. Patent No. 6,33 1,41 5 (the "Cabilly II patent") is
20 invalid, unenforceable and not infringed by the manufacture, use, sale, offer to sell , or
21 importation ofGSK's Arzerra™ antibody product. Complaint I. Arzerra™ is a human
22 monocolonal antibody that was approved by the U.S. Food and Drug Administration for
23 the treatm ent of chronic lymphocytic leukemia patients. Complaint 27,30; Answer 27,
24 30.
25 Genentech brought a motion to disquali fy Howrey LLP ("Howrey") from this case
26 because Henry Bunsow, a partner at Howrey, represented Genentech in a case that is
27 alleged to be substantially related to th is case.
28
·1·
Exhibit.---,,-'/
,:::-_ _
page-J.!_ ·'1-._ _
#:282311
II. BACKGROUND
2 A. Background of the Cabilly I and Cabilly II Patents
3 On April 3, 1983, Shmuel Cabilly et al. filed a patent application that issued on
4 March 28,1989 as U.S. Patent No. 4,816,567 (the "Cabilly I patent"). Complaint ,13;
5 Answer The Cabilly! patent was assigned to Defendants. Complaint Answer
6 At the time the Cabilly I patent issued, Defendants had a continuation application
7 pending that later issued as the Cabilly II patent. Complaint Answer '14.
8 Cell tech Therapeutics Ltd. ("Celltech") is the owner of U.S. Patent No. 4,816,397
9 (the "Boss patent"), which has a priority date of March 25,1983. Complaint
10 Answer Defendants copied claims from the Boss patent, as is standard practice,
lIto initiate an interference proceeding to detennine whether the Boss patentees or the
12 Cabilly patentees were entitled to priority for the inventions claimed in the respective
13 patents. Complaint ,14; Answer ,14. In February 1991, the U.S. Patent and Trademark
14 Office ("PTO") Board of Patent Appeals and Interferences ("the BPAI") declared a
15 patent interference between the pending Cabilly II patent application and the Boss patent.
16 Complaint Answer Seven years later, in August 1998, the BPA! found that the
17 Boss patentees were entitled to priority over the Cabilly patentees. Complaint ,15;
18 Answer see Cabilly v. Boss, 55 U.S.P.Q.2d 1238 (B.P.A.1. 1998).
19 In October 1998, Genentech filed an action under 35 U.S.C. § 146 against Celltech
20 to appeal the decision of the BPAI awarding priority to the Boss patent (the "Celltech
21 case"); the parties later settled the case in March 2001 pursuant to a confidential
22 settlement agreement. Complaint ,-r16; Answer ,-r16; Genentech, Inc. v. Cel/tech
23 Therapeutics Ltd., Case No. C98-3926 (N.D. CaL). Pursuant to Celltech and
24 Genentech's confidential settlement agreement, the court ordered the PTO to vacate its
25 BPAI decision in the interference case, revoke the Boss patent, and grant the Cabilly II
26 patent. Genentech, Inc. v. Celltech Therapeutics. Ltd., 2001 U.S. Dist. LEXIS 3489, at
27 *7-9 (N.D. Cal. Mar. 16,2001). Although the PTO refused to act in response to the
28
-2-
EXhibit----;-:-r!_ __
page--LI-LLf_ _
#:282312
court's order, subsequent proceedings resulted in the issuance of the Cabilly II patent on
2 December 18, 200!.
3 B. Background of the Chi ron Case
4 Chiron Corp. filed a patent infringement case against Genentech on June 7, 2000
5 ("the Chiron case"). Chiron Corp. v. Genentech Inc., Case No. 8-00-1252 (ED. Cal.).
6 Notably, the Chiron case was filed less than two years after the BPAI decision in the
7 interference case between the Cabilly II patent application and the Boss patent. While
8 the Chiron case was pending, the Cell tech case settled, resulting in the issuance of the
9 Cabilly II patent in 200 I. As a continuation of the Cabilly I patent, the Cabilly II patent
10 shares a specification with the Cabilly I patent.
11 A jury trial in the Chiron case took place in August and September of 2002.
12 Chiron Corp. v. Genentech Inc., Civ. 8-00-1252 (ED. Cal.). G8K and Genentech
13 dispute how the Cabilly I patent was used in the Chiron case. The Court understands that
14 the Cabilly I patent was used in the Chiron case as follows: In its summary judgment
15 order in the Chiron case, the court declared that the Cabilly I patent disclosed chimeric
16 antibodies in 1983. Chiron Corp. v. Genentech, Inc. , 268 F. 8upp. 2d 1148, 1157 (E.D.
17 Cal. 2002). In the Chiron trial, Genentech used the Cabilly I patent to support its
18 argument that Chiron did not enable or adequately describe chimeric or hybrid antibodies
19 as claimed in the patent at issue ("the Ring patent"). Garner Decl., Ex. B. at 3-5; Nathan
20 Decl., Ex. F at 000138-39, Ex. G at 000178-79, Ex. H.
21 Bunsow was one of three lawyers ofKeker & Van Nest LLP to appear and argue
22 at trial on behalf of Genentech in the Chiron case. See Nathan Decl., Ex. I at 000192.
23 Bunsow examined witnesses at trial to support the argument that Chiron did not
24 adequately enable or adequately describe chimeric or hybrid antibodies in the patent at
25 issue. See Nathan Decl., Ex. I at 000194. Prior to trial in the Chiron case, Bunsow
26 defended the depositions of Sean Johnston, Genentech's General Counsel, and Wendy
27 Lee who prosecuted the Cabilly II patent. Nathan Decl., Ex. C-D. Bunsow is now a
28 member of Howrey, the finn hired by GSK in this case. Howrey began to represent GSK
-3-
EXhibil--;--:;:/:c-_ _
Page / ) '
#:282313
in this case on or about January 27, 2010, and later imposed an ethical screen on Bunsow
2 on or about March II, 2010. Day Decl. ,3; O'Brien Decl. ,5.
3 1II. THE LEGAL STANDARD
4 Under Central District Local Rule 83-3.1.2, each attorney must comply with "the
5 standards of professional conduct required of members of the State Bar of California and
6 contained in the State Bar Act, the Rules of Professional Conduct of the State Bar of
7 California, and the decisions of any court applicable thereto." According to California
8 Rule of Professional Conduct 3-31O(E), absent a written waiver from the client or fonner
9 client, an attorney must not "accept employment adverse to the client or fonner client
10 where, by reason of the representation of the client or fonner client, the member has
II obtained confidential infonnation material to the employment." When a former client
12 seeks to disqualify a fonner attorney from representing an adverse party, the former clien
13 need not prove actual possession of confidential inforrnation by the former attorney;
14 instead, courts presume possession of confidential information if there is a "substantial
15 relationship between the fonner and current representation." H. F. Ahmanson & Co. v.
16 Salomon Bros., 229 Cal. App. 3d 1445, 1452 (1991)(citing Global Van Lines v. Superior
17 Court, 144 Cal. App. 3d 483, 489 (1983» (internal quotation omitted). "The 'substantial
18 relationship ' test mediates between two interests that are in tension in such a context-
19 the freedom of the subsequent client to counsel of choice, on the one hand, and the
20 interest of the fonner client in ensuring the permanent confidentiality of matters disclose
21 to the attorney in the course of the prior representation, on the other." Flatt v. Superior
22 Court, 9 Cal. 4th 275, 283 (1994).
23 The substantial relationship test requires that the fonner client "demonstrate a
24 'substantial relationship' between the subjects of the antecedent and current
25 representations." Id. The subject of the representations includes infonnation material to
26 "the evaluation, prosecution, settlement or accomplishment of the litigation or transaction
27 given its specific legal and factual issues." Jessen v. Hartford Casualty Ins. Co., III Cal.
28 App. 4th 698, 713 (2003). After a substantial relationship has been shown to exist,
-4-
__
Ii
Page-.:/_' - - -
#:282314
"courts ask whether confidential information material to the current dispute would
2 normally have been imparted to the attorney by virtue of the nature of the former
3 representation." Ahmanson, 229 Cal. App. 3d at 1454. It is reasonable to expect that
4 "the attorney may acquire confidential information about the client or the client's affairs
5 which may not be directly related to the transaction or lawsuit at hand but which the
6 attorney comes to know in providing the representation to the fonner client with respect
7 to the previous lawsuit or transaction." Jessen, III Cal. App. 4th at 712. In presuming
8 what confidential information material to the current dispute was likely disclosed to the
9 attorney, "the court should not allow its imagination to run free with a view to
10 hypothesizing conceivable but unlikely situations in which confidential information
11 'might' have been disclosed which would be relevant to the present suit." Talecris
12 Biotherapeutics, Inc. v. Baxter Int'l, Inc. , 491 F. Supp. 2d 510, 515 (D. Del. 2007)
13 (citation omitted).
14 When a substantial relationship between the former and current representation by
15 an attorney is established, not only is the attorney disqualified, but the disqualification
16 extends vicariously to the attorney's law firm. Flatt, 9 Cal. 4th at 283.
17 IV. DISCUSSION
18 The Court first considers whether there is a substantial relationship between the
19 subjects of representation in the Chiron case and this case. The subject of the
20 representation is understood to be broader than the witnesses Bunsow prepared and the
21 documents that Bunsow introduced into evidence on behalf of Genentech in the Chiron
22 case. The subject of Bunsow's representation includes the "the evaluation, prosecution,
23 settlement or accomplishment of the litigation or transaction given its specific legal and
24 factual issues." Jessen, 111 Cal. App. 4th at 713. The subj ect of evaluating and
25 prosecuting the Chiron case included an understanding of the Cabilly I patent and how it
26 related to Genentech's arguments on enablement and written description. To present
27 testimony at trial regarding the Cabilly I patent, Bunsow had to be reasonably acquainted
28 with the Cabilly I patent and its specification such that he could prepare witnesses,
-5-
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Page--'../_7'--_ _
#:282315
defend their depositions, and examine them at trial on the subject of the Cabilty I patent.
2 aSK would have the Court believe that because Cabilly II was not at issue in the Chiron
3 case, there is no substantial relationship between the subjects of representation in the
4 Chiron case and this case. However, because the specifications ofthe Cabilly I and
5 Cabilly II patents are the same and because the specification of a patent is the basis for
6 the claims, there is a relationship between the subjects of representation in these cases.
7 Furthennore, because the Celltech case involving the Cabilly 11 patent application was
8 being simultaneously litigated, a trial attorney employing the Cabilly I patent to attack th
9 validity of the Ring patent in the Chiron case could hardly have failed to be cognizant of
10 the strategy in the Cell tech case. Bunsow's representation of Genentech in the Chiron
11 case would necessarily have resulted in an evaluation of the Cabilly I in light of the
12 Cabilly II patent. Therefore, the Court finds that there is a substantial relationship
13 between the subjects of representation in the Chiron case and this case.
14 Next, after evaluating the scope of the prior representation, courts inquire what
15 confidential information would have been imparted to an attorney given the scope of that
16 representation. See Ahmanson, 229 Cal. App. 3d at 1454. As stated, it is reasonable to
17 presume that Bunsow-a member of a three person trial team in the Chiron case with
18 important responsibilities such as defending the deposition of the Genentech General
19 Counsel and patent prosecutor of the Cabilly II patent-acquired confidential information
20 about Genentech's patent strategy surrounding the Cabilly I and Cabilly II patents. Give
21 that the Cabilly I and Cabilly II patents shared a specification and Genentech was
22 simultaneously litigating the Celltech case, it would have certainly been important that
23 nothing in the Chiron case defense strategy impair Genentech's ability to enforce and
24 defend the Cabilly II patent. To act as competent counsel to Genentech, Bunsow would
25 have to have acquired confidential information material to this case. It could hardly have
26
27
28
-6-
EXhibil_"I".-_ _
page_/'-f=--__
#:282316
been otherwise, especially considering the importance and value of the Cabilly I and
2 Cabilly n patents. I
3 GSK cites Kirk v. First American Title Insurance Company for the proposition
4 that the presumption of an imputed conflict can be rebutted by adequately screening a
5 lawyer from those at the firm representing the adverse party. 183 Cal. App. 4th 776
6 (2010). However, GSK cannot rely on Kirk because it is not binding authority and
7 contradicts binding California Supreme Court law. See Flatt, 9 Cal. 4th at 283 ("Where
8 the requisite substantial relationship between the subjects of the prior and the current
9 representations can be demonstrated .. , disqualification of the attorney's representation
10 of the second client is mandatory; indeed, the disqualification extends vicariously to the
II entire finn."), Even if the Court were to follow Kirk, GSK would not be able to rebut the
12 presumption of an imputed conflict because it did not adequately screen Bunsow from
13 thi s case. Kirk states than an effective screen must "be timely imposed" and impose
14 "preventative measures to guarantee that infonnation will not be conveyed," Id. at 810.
15 Here, it is clear that Howrey did not impose the screen at the time the representation
16 began on or about January 27, 20 I 0, but only imposed the screen at the time Genentech
17 raised the conflict to Howrey's attention on or about March 11 , 2010. Day Decl. 3;
18 O'Brien Decl. Howrey's screen does not meet the "timely imposed" requirement
19 under Kirk because the screen was imposed weeks after the representation began,
20 Genentech objects to Howrey's declaration from Professor David C. Hricik on the
21 groWlds that his opinions state legal conclusions and lack foundation. This Court
22
23 I "[T]he court should not allow its imagination to run free with a view to hypothesizing conceivable but unlikely
situations in which confidential infonnation 'might' have been disc losed which would be relevant to the present
24 suit." Talecris Biotherapeutics, Inc. v. Baxter Int'l, Inc., 491 F, Supp, 2d at 515 (citation omined). Beatuse this
Court has deep experience with the Cabilly II patent and its history as a continuation of the Cabilly I patent, this
25 Court is well situated to make a presumption about what confidential information would have been necessary to
execute the trial strategy in the Chiron case. This Court has handled two notable cases involving the Cabilly II
26 patent. In Medlmmune, a licensee of the Cabi lly II patent brought a declaratory relief action seeking to have the
Cabi l1y "patent declared infringed, invalid, and unenforceable. See MedImmune, Inc. v. Genentech, Inc., No. 2:03-
27 cv-02567 (C.O. Cal, filed Apr. II, 2003), The case settled after years oflitigation that included extensive discovery,
claim construction, an appeal, and a decision by the United States Supreme Court, In Centocor, another licensee of
28 the Cabilly II patent filed a declaratory relief action raising the same claim construction, validity, and enforceabi lity
issues. See Centocor Inc. v, Genentech, Inc., No. 2:08-cv-03573 (C.O. Cal. filed May 30, 2008).
-7-
/
Exhibit ---;-::;----
Page /7
#:282317
declines to address Genentech's objection. Because Prof. Hricik did not discuss the
2 Celltech case and its relationship to the Cabilly I and Cabilly II patents and the Chiron
3 case, the Court places little weight on Prof. Hricik's declaration. Prof. Hricik is
4 obviously unaware of the extraordinary history of the Cabilly I and II patents.
5 Because the Court finds a substantial relationship between Bunsow's fonner
6 representation of Genentech and Howrey's current representation ofGSK, the Court
7 GRANTS Genentech's motion to disqualify Howrey from the representation ofGSK in
8 this case. Although the Court finds Genentech's arguments that the use of evidence on
9 Herceptin in the Chircn case and this case result in a substantial relationship, the Court
10 declines to address Herceptin given its finding of a substantial relationship for the reason
II set forth above. The Court further declines to address Genentech's arguments on the
12 violation of the duty of loyalty although in this case it is undisputed that Howrey intends
13 to make a full scale attack on the Cabilly II patent on multiple grounds including written
14 description and enablement.
IS v. CONCLUSION
16 The Court GRANTS Genentech's motion to disqualify Howrey from this case.
17 The Court ORDERS Howrey to refrain from handing over its work product to successor
18 counsel unti l further order of this Court. The Court ORDERS Genentech to prepare a
19 proposed Statement of Uncontroverted Facts and Conclusions of Law and proposed
20 Order in light of the foregoing and submit it to the Court by Friday, June 25, 2010.
21 IT IS SO ORDERED.
22
23 DATED:June IS, 2010
Hon. Mariana R. Pfaelzer
24 United States District Judge
25
26
27
28
·8·
EXhibill_=I_ __
Page U
EXHIBIT C
Case 2:04-cv-09049-DOC-RNB Document 9416 Filed 12/19/10 Page 1 of 27 Page ID
#:283467

John B. Quinn (Bar No. 090378)
2 Johnquinn^qulnnemanuel.com
William C. rice (Bar No. 108542)
3 williamprice (a^qumnemanuel.com
Michael T. Zeller Bar Na. 19641 )
4 michaelzel l er@qumnemanuel. com
5 Los Angeles , California 90017-2543
Telephone : (213) 443-3000
6 Facsimile : (213) 443-3100
7 Attorneyy s for Mattel, Inc. and
Mattel de Mexico , S.A. de C.V.
81
9
10
11
SOUTHERN DIVISION
12
MATTEL, INC., a Delaware CASE NO. CV 04-9049 DOC (RNBx)
13 corporation, Consolidated with
Case Nos CV 04-09059 & CV OS-
14 02727
Plaintiff,
15 Hon. David O. Carter
16^' vs. REPLY IN SUPPORT QF MOTION

TO DISQUALIFY GLASER WEIL
17 MGA ENTERTAINMENT, INC., a
18 California corporation, et al.,
Hearing Date: TBD
19 Defendant. Time: TBD
Place: Courtroom 9D
20
Discovery Cutoff: October 4, 2010
AND CONSOLIDATED ACTIONS Pre-trial Conference: January 4, 2011
21
Trial: January 11, 2011
22
23
24
25
26
27
28
REPLY IN SUPPORT OF MOTION TO DISQUALIFY GLASER WEIL

#:283468
11 TABLE OF CONTENTS
21 Page
3
4 PRELIMINARY STATEMENT ..................................................................................1
5 ARGUMENT ...............................................................................................................1
6 I. MGA'S OPPOSITION MISSTATES THE LEGAL STANDARD .................1
7 II. MGA'S OTHER ARGUMENTS ARE MERITLESS ......................................4
8 CONCLUSION ..........................................................................................................15
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
_ -i-
r ^ REPLY IN SUPPORT OF MOTION TO DISQUALIFY GLASER WEIL
#:283469
TABLE OF AUTHORITIES
2 Page
3 Cases
4 (Brand v. 20th Century Ins. Co.,
124 Cal. App. 4th 594 (2004 ) ...............................................................................10
5
Chambers v. Superior Court,
6 121 Cal. App. 3d 893 (3d Dist. 1981) ...................................................................11
7
City & County of San Francisco v. Cobra Solutions, Inc.,
8 38 Cal. 4th 839 (2006) ................................................................................9, 10, 14
9 Cit^Nat'1 Bank v. Adams,

96 Cal . App. 4th 315 (2d Dist. 2002 ) ......................................................................7
10
City of Santa Barbara v . Superior Ct.,
11 122 Cal. App. 4th 17 (2d Dist. 2004 ) ....................................................................12
12
In re County of Los Angeles,
13 223 F.3d 990 (9th Cir. 2000) ............................................................................2, 11
14 Flatt v. Super. Ct.,

9 Cal. 4th 275 (1994) ....................................................................................3, 7, 13
15
Global Van Lines, Inc. v. Super. Ct.,
16 144 Cal. App. 3d 483 (4th Dist. 1983) ..............................................................8, 13
17
H.F. Ahmanson & Co. v. Salomon Bros., Inc.,
18 229 Cal. App. 3d 1445 (2d Dist. 1999) .............................................................7, 14
19 Henriksen v. Great Am. Sav. & Loan,

11 Cal. App. 4th 109 (1st Dist. 1992) ............................................ 1, 11, 12, 13, 14
20
Hitachi, Ltd. v. Tatung Co.,
21 419 F. Supp. '2d 1158 (N.D. Cal. 2006) ..............................................................2, 9
22
nterprise Co. LLC v. Draper Fisher Jurvetson Mgmt. Co. V, LLC,
23 2005 WI., 757389 (N.D. Cal. Apr. 4, 2005) ................................................ 8, 10, 13
24 In re Complex Asbestos Litigation,

232 Cal. App. 3d 572 (1st Dist. 1991) ..................................................................12
25
Kirk v. First Am. Title Ins. Co.,
26 183 Cal. App. 4th 776 (2d Dist. 2010) ..................................... 1, 2, 3, 9, 12, 13, 15
27
Largo Concrete Inc. v. Liberty Mut. Fire Ins. Co.,
28 2008 WL ^ 53128 (N.D. Cal. Jan. 2, 2008 ) ...................................................7, 10, 14
-.L-
#:283470
Lutron Elecs . Co., Inc. v. Crestron Elecs., Inc.,

No. 2:09-CV-707 (D. Utah Nov. 12, 2010) ..........................................................13
2
Meza v. H. Muehlstein & Co.,
3 176 Cal. App. 4th 969 (2d Dist. 2009) ..................................................................12
4,
Ochoa v. Fordel,
5 146 Cal. App. 4th 898 (5th Dist. 2007 ) ..................................................................7
6 Openwave Systems v . 724 Solutions (US) Inc.,

2010 WL 1687825 (N.D. Cal. Apr. 22, 2010) ......................................... 3, 5, 8, 10
7
People ex rel . Dept of Corr. v. SpeeDee Oil Change SYs. Inc•,
8 20 Cal. 4th 113 5 (1999) ........................................................................................14
9
Pound v. DeMera DeMera Cameron,
10 135 Cal. App. 4th 70 (5th Dist. 2005 ) ..............................................................9, 10
11 Rosenfeld Constr. Co. v. Super. Ct.,

235 Cal. App. 3d 566 (5th Dist. 1991) ....................................................................8
12
Shadow Traffic Network v . Superior Court,
13 24 Cal. App. 4th 1067 (2d Dist. 1994) ..................................................................12
14
ViChip Corp. v. Lee,
15 2004 WL 2780170 (N.D. Cal. Dec. 3, 2004 ) ........................................................10
16 Western Digital Corp. v. Superior Court,

60 Cal. App. 4th 1471 (4th Dist . 1998) ................................................................12
17
18 Other Authorities
19 Mark L. Tuft, et al., California Practice Guide: Professional
Responsibility (Rutter 2010) .................................................................. 5, 8, 10, 11
20
21 Mark L. Tuft, Non-Consensual Screening_for Conflicts in California.
843 PLI/Lit 35 (December 2010) .......................^.........................................1, 3, 12
22
Utah Rule of Professional Conduct 1.10(c) ...............................................................13
23
24
25
26
27
28
-iii-
#:283471
1 Preliminary Statement
2 "The general rule in California is that where an attorney is

3 disqualified, that attorney's entire firm is disqualified as
4 well regardless of efforts to erect an ethical wall."'
5 Glaser Weil cannot avoid what its own counsel admits are the rules: Glaser
6 ^ Weil must be disqualified because it chose to hire an attorney who previously
7 ^ represented Mattel in this very case. MGA's lengthy opposition, while interjecting
8 ^ numerous irrelevant arguments, fails to acknowledge the applicable legal standard
9 ^ and ignores that no California court has ever permitted this kind of conflict to
10 persist. California law requires disqualification of the entire Glaser Weil firm. As
11 Glaser Weil's own counsel acknowledged in the above-quoted article published this
12 month, no amount of claimed screening can change that conclusion.
13 Argument
14 I. MGA'S OPPOSITION MISSTATES THE LEGAL STANDARD
15^ Glaser Weil cites no authority that justifies its request to be the first California
16' firm ever to hire a lawyer from the other side of the case and avoid disqualification.
17 Glaser Weil's own counsel has noted that even MGA's best case does not change
18 the result: "Under Kirk, ...screening may be a viable solution except in the
19 ^ situation where a tainted attorney was actually involved in the prior representation
20 and switches sides in the same case. In that instance, no amount of screening will be
21 sufficient." Mark L. Tuft, Non-Consensual Screening for Conflicts in California,
22 I^ 843 PLI/Lit 35, at 6 (citing Kirk v. First Am. Title Ins. Co., 183 Cal. App. 4th 776,
23 814 (2d Dist. 2010) and Henriksen v. Great Am. Sav. & Loan, 11 Cal. App. 4th 109
24
I Mark L. Tuft, Non-Consensual Screening for Conflicts in California. 843
25
PLI/Lit 35, at 2 (December 2010), attached hereto as Exhibit A; accord Mark L.
26 Tuft, Screening for Conflicts in California, available at
http://www.cwclaw.com/publications/articleDetail.aspx? id=299 (visited December
27
17, 201 p).
28
REPLY IN SUPPORT OF' MOTION TO DISQUALIFY GLASER WEIL

#:283472
1 (1st Dist. 1992)) (emphasis added). Glaser Weil's counsel acknowledged that this
2 was the law just this month, but now, after being hired by Glaser Weil, maintains
3 that screening is a viable solution to Glaser Weil's attempt to represent MGA after
4 hiring an attorney who represented Mattel in this very case. This revisionist view is
5 ^ not the law in California. Nor is Mattel required to show that Ms. Basinger billed a
6 large number of hours to this case, that she actually possesses material confidential
7 information or that Glaser Weil's "ethical wall" is not working.
8 MGA is also wrong in maintaining that the present motion is governed by
9 ^ "federal law." Qpp. at 4. Tellingly, MGA cites no authority for this assertion. As
10 set forth in Mattel' s motion, see Mot. at 3, this Court is required to apply California
11 disqualification law to the attorneys in this case. See In re County of Los Angeles,
12 223 F.3d 990, 995 (9th Cir. 2000) ("[W]e apply state law in determining matters of
13 disqualification."); Hitachi, Ltd. v. Tatung Co., 419 F. Supp. 2d 1158, 1160 (N.D.
14 Cal. 2006) (same).
15 As Glaser Weil's own counsel explained previously, California law requires
16 disqualification of Ms. Basinger and of the entire Glaser Weil firm. Glaser Weil
17 cannot rely on Kirk v. First American Title Ins. Co., 183 Cal. App. 4th 776 (2d Dist.
18 2010), a case involving a departed lawyer who had not worked on the other side of
19 the litigation in question (the lawyer had only had a 17-minute phone conversation
20 with a prospective client), fpr the proposition that an ethical wall can "solve" its
21 own hiring of a lawyer who remains at the Glaser Weil firm and did work on the
22 opposite side of this litigation. Kirk itself confirms that "if the tainted attorney was
23 (actually involved in the representation of the first client, and switches sides in the
24 same case, no amount of screening will be sufficient." Id. at 814; see also id. at 796
25 (noting the "absolute rule that ethical walls are not sufficient, and vicarious
26 disqualification is mandatory" where the tainted attorney is a nongovernmental
27 attorney that worked on the other side of the same case).
28
2^-
REPLY INSUPPORT OF MOTION TO DISQUALIFY GLASER WEIL
#:283473
1 That Kirk does not change the result is also confirmed by the two relevant,
2 post-Kirk federal decisions that each rejected Glaser Weil's suggestion that ethical
3 walls are suddenly able to obviate conflicts under California law. Glaxo Group Ltd.
4 v. Genetech, Inc., No. SA 10-CV-2764-MRP (FMOx) (C.D. Cal. June 15, 2010),
5 noted that Kirk is non-binding on federal courts and conflicts with California
6 Supreme Court precedent. See id. at 7 (citing Flatt v. Super. Ct., 9 Cal. 4th 275, 283
7 (1994)). Glaxo disqualified a firm that had hired an attorney that had worked on
8 the other side of a substantially related matter, despite an ethical wall. Openwave
9 Systems v. 724 Solutions (US) Inc., No. C 09-3511, 2010 WL 1687825, at *5 (N.D.
10 Cal. Apr. 22, 2010), acknowledged that Kirk "arguably" broke some new ground,
11 but refused to extend Kirk to a situation even less compelling than this one. There
12 the tainted lawyers had worked for the adversary on the other side of related
13 litigation (not the same case).
14 MGA fails to explain why Mattel's reliance on these two 2010 federal
15 decisions-one by this Court and one from the Northern District of California-is
16 "improper[]." Opp. at 15. To the contrary, these cases are the current state of the
17 law. As Glaser Weil's counsel conceded after Kirk was decided, and after the
18 California Supreme Court declined to review the decision, "[u]nder Kirk, .
19 screening may be a viable solution except in the situation where a tainted attorney
20 was actually involved in the prior representation and switches sides in the same
21 case. In that instance, no amount of screening will be sufficient and the presumption
22 of imputed knowledge is conclusive." Mark L. Tuft, Non-Consensual Screening for
23 Conflicts in California, 843 PLI/Lit 35, at 6 (citing Kirk, 183 Cal. App. 4th at 814,
24 and Henriksen, 11 Cal. App. 4th at 109) (emphasis added).2 Under California law,
25
26
2 The same counsel also has submitted athree-page declaration arguing that the
27
California State Bar did not "reject," but rather just declined to include, a provision
28 (footnote continued)
-^
#:283474
1 no amount of screening is sufficient to solve Glaser Weil's hiring of Ms. Basinger.

2 The presumption of imputed knowledge applies to the entire firm, and Glaser Weil
3 must be disqualified.
4 II. MGA' S OTHER ARGUMENTS ARE MERITLESS
5 MGA makes a number of additional arguments that misstate either the law or
6 the facts relevant to this Motion.
7 MGA aûment .• The^•e was no side-switching. MGA surprisingly argues that
8 Ms. Basinger herself should not be disqualified , despite her 9 hours of work on the
9 other side of this very MGA v. Mattel case and 123 hours billed to a substantially
10 related matter. Ms . Basinger claims she "does not recall " performing any work on
11 Mattel v. MGA. Indeed, she maintains she did not even learn of the litigation until
12 she read about it in the newspaper after leaving Quinn Emanuel . See Opp. at 6;
13 Basinger Decl. ¶ 6. Ms. Basinger' s own time records show that she billed 9 hours to
14 this very case on May 13 and 14, 2005. She billed Mattel for time spent discussing
15 case strategy with Mike Zeller, for review of confidential Mattel files and systems
16 that are directly at issue in this case, and for discussions with Mattel' s consulting
17 experts. Ms. Basinger ' s time entries are corroborated by those of Mike Zeller,
18 whose Mattel v. MGA time records confirm that he and Mattel ' s consulting experts
19 spoke with Ms. Basinger about confidential case strategy and that Ms. Basinger
20 participated in a group review of confidential Mattel materials with two partners and
21 two other associates on the case.
22 MGA's repeated argument that Mattel must disclose the privileged "facts"
23 ^^ and "tasks performed" by Ms. Basinger and strategies to which she was privy is,
24 again, not the law -doing so would reveal the very information Mattel is seeking to
25 protect. See Mark L. Tuft, et al., California Practice Guide: Professional
26
approving ethical walls. See Tuft Declaration ¶¶ 3-6. This is a distinction without a
27
difference for purposes of this motion.
28
REPLY IN U PPORT OF MOTION TO DISQUALIFY GLASER WEIL

#:283475
1 Responsibility § 4:199 (Rutter 2010) (citing cases) (courts must "avoid[] the ironic
2 result of disclosing the former client's confidences and secrets through inquiry into
3 the actual state of the lawyer's knowledge in proceedings to disqualify the
4 ^ attorney"); Openwave , 2010 WL 1687825, at *5 (rejecting argument that evidence
5 ^ of the type of work attorneys did was "too vague" to permit presumption that they
6 ^ obtained material confidences). Mattel will, of course, provide full details on Ms.
7 ^ Basinger' s work in camera as ordered by the Court.
8 MGA argument: Mattel has not shown that Viveros and MGA v. Mattel are
9 ^ substantially related. Although not necessary to support disqualification in light of
10 Ms. Basinger's prior work for Mattel on this very case, MGA concedes that Ms.
11 Basinger billed over 120 hours to the Viveros v. Mattel action. MGA further
12 concedes that the Viveros and Mattel v. MGA actions are substantially related "if
13 the issues are sufficiently similar to support a reasonable inference that the attorney
14 in the course of the prior representation was likely to have obtained confidential
15 information material to the current representation" or if the actions involve
16 "similarities in the[ir] legal problem[s]." Opp. at 11 (citing cases). These
17 standards are more than met with respect to Ms. Basinger's work on Viveros.
18 MGA concedes that both cases involved copyright infringement claims with
19 ^ respect to Mattel dolls. Opp. at 11. It does not disavow its own, repeated
20 arguments -including at the most recent summary judgment hearings -that the
21 "Diva Starz" dolls at issue in Viveros are relevant to this case. The relevant
22 witnesses in both cases included many of the very same Mattel personnel. A key
23 issue in both cases is the copyright protectability of dolls and Mattel's litigation
24 strategy -fully relevant here - as to what doll elements are and are not protectable.
25 Ms. Basinger was involved in privileged and work product discussions with Mr.
26 Zeller and Mattel's in-house counsel Mr. Moore on this very issue. She was also
27 involved in document collection and preservation efforts (which included access to
28 confidential and privileged materials) that related to both cases, as corroborated by
-5-
#:283476
1 papers filed three years ago. See Docket No. 793, Declaration of Michael Moore in
2 Support of Mattel, Inc.'s Opposition to MGA Entertainment, Inc.'s Motion for
3 Terminating Sanctions, dated August 13, 2007, at 5-6. As that Declaration reflects,
4 MGA itself put at issue Mattel's document preservation and collection efforts,
5 which included such efforts not only in this case but also in Viveros and other cases.
6 Id. And, there is even more overlap than this, which Mattel can provide to the Court
7 in camera with the appropriate protections for privilege.
8 Attempting to downplay the material relationship between the two cases,
9 MGA makes the implausible claim that Ms. Basinger "was not aware of [the Mattel
10 v. MGA] action at the time she worked on Viveros." This is plainly wrong. Ms.
11 Basinger herself was actually billing time to the Mattel v. MGA matter "at the time
12 she worked on Viveros," and those time entries (as will be shown and explained in
13 camera if the Court so orders) reflect Ms. Basinger's receipt of privileged and work
14 product information about the Mattel v. MGA case. They show she conferred with
15 Mattel's nontestifying consultants about the confidential Mattel materials she
16 reviewed. Indeed, Ms. Basinger also personally delivered to Mr. Zeller, and
17 discussed with him, prior art that she suggested to Mr. Zeller would be useful in
18 defending against the trade dress infringement claims that MGA brought against
19 Mattel in Mattel v. MGA. The details will be presented to the Court in camera, if
20 ordered, but Ms. Basinger will need to explain how she "was not aware of a major
21 Mattel case to which she billed time, about which she discussed legal strategy, on
22 which she reviewed confidential documents (including documents that were not
23 produced) and spoke with consultants, and for which she took the initiative to
24 provide prior art and to suggest prior art defenses.
25 MGA arûment.• There is no showing that Ms. Basinger received confidential
26 ^^ information or was privy to confidential strategy. The short answer is that this is
27 factually incorrect as already explained and, in any event, the law does not require
28 any such showing. Because Ms. Basinger did work for Mattel on this same case,
_ -6-
#:283477
1 and on a substantially related matter, Ms. Basinger's knowledge of Mattel's material

2 confidential information is irrebutably presumed. See Motion at 3-4; Flatt, 9 Cal.
3 4th at 283 ("Where the requisite substantial relationship between the subjects of the
4 prior and the current representations can be demonstrated, access to confidential
5 information ... in the course of the first representation (relevant, by definition, to
6 the second representation) is presumed and disqualification is mandatory;
7 indeed, the disqualification extends vicariously to the entire firm."); City Nat'l Bank
8 v. Adams, 96 Cal. App. 4th 315, 328 (2d Dist. 2002) ("Where the lawyer switches
9 sides in an ongoing dispute such as the one between the parties in this case, the
10 nature of the former representation will always be such that the exchange of relevant
11 confidences must be presumed.") (emphasis in original).
12 MGA is also wrong that some sort of "modified substantial relationship" test
13 should apply here. In Ochoa v. Fordel, 146 Cal. App. 4th 898 (5th Dist. 2007),
14 relied on by MGA, the allegedly conflicted lawyer did not bill any legal services to
15 the client that was moving to disqualify. Id. at 902. Rather, other attorneys at his
16 former firm had done work for the client. In contrast, Ms. Basinger billed more than
17' 130 hours to Mattel - 9 hours to Mattel v. MGA and 123 hours to Viveros -for
18 work that was on this case or substantially related to this case. The conclusive
19 presumption that she acquired material confidential information applies. See, ^,
20 Largo Concrete Inc. v. Liberty Mut. Fire Ins. Co., No. C 07-04651 CRB, 2008 WL
21 53128, at *4 (N.D. Cal. Jan. 2, 2008) (rejecting argument that modified "substantial
22 relationship" test should apply, because the attorney actually billed legal services to
23 the former client who sought to disqualify him).
24 Given that the conclusive presumption described by the California Supreme
25 ^^ Court in Flatt applies, the Court should reject MGA's invitation to conduct a factual
26 inquiry into what Ms. Basinger actually learned while representing Mattel. "The
27 whole point of the presumption ... is that a court does not inquire into the factual
28 particularities of the information conveyed." Id. at *4; see also H.F. Ahmanson &
-^-
#:283478
1 Co. v. Salomon Bros., Inc., 229 Cal. App. 3d 1445, 1453 (2d Dist. 1999) (court may
2 not conduct an "inquiry into the actual state of the lawyer's knowledge" acquired
3 during the former representation); Global Van Lines, Inc. v. Super. Ct., 144 Cal.
4 App. 3d 483, 489 (4th Dist. 1983) (presumption of confidential knowledge and
5 automatic disqualification is a rule of "necessity" because the former client has no
6 way of proving the attorney's knowledge or lack thereof). As Glaser Weil's counsel
7 put it, the presumption is necessary to "avoid[] ... of disclosing the former client's
8 confidences and secrets through inquiry into the actual state of the lawyer's
9 knowledge in proceedings to disqualify the attorney." Mark L. Tuft, et al.,
10 California Practice Guide: Professional Responsibility § 4:199 (citing cases); see
11 also Openwave, 2010 WL 1687825, at *5 (rejecting argument similar to MGA's).
12, Ms. Basinger's claim that she "does not remember" working on this case or
13 receiving confidential information is of no moment. Courts have repeatedly held
14 that where, as here, the prior and subsequent representations are the same or
15 substantially related , an attorney' s claimed inability to remember will not prevent
16 disqualification . See, e.g_, I-Enterprise Co. LLC v. Draper Fisher Jurvetson Mgmt.
17 Co. V, LLC, 2005 WL 757389, at *6-*8 (N.D. Cal. Apr. 4, 2005) (disqualifying
18 entire firm, despite attorney's inability to remember); Rosenfeld Constr. Co. v.
19 Super. Ct. , 235 Cal. App . 3d 566, 576-78 (5th Dist. 1991) (trial court abused its
20 discretion in denying motion to disqualify based on attorney's claimed lack of
21 memory); Global Van Lines, 144 Cal . App. 3d at 487-90 (disqualifying firm where
22 attorney claimed not to recall any material information).
23 Finally, Mattel's motion does make a showing that Ms. Basinger was privy to
24 ^^ material confidential information in the course of her work for Mattel. This is
25 confirmed by her time entries, which the Court can review. On Mattel v. MGA and
26 Viveros, Ms. Basinger billed Mattel for her discussions of strategy with Mr. Zeller
27 and Mattel's consulting experts; on Viveros, she was also involved in privileged and
28
-,^-
Y IN SUPPORT OF MOTION TO DISQUALIFY GLASER WEIL
#:283479
1 work product discussions with Mr. Zeller and Mattel' s in-house counsel. See
2 ^ Motion at 1-2; supra pages 3-4.
3 MGA argument: Ms. Basin^r's involvement was `peripheral, "and her time
4 may have been misbilled. MGA's contention that Ms. Basinger's substantially
5 related work for Mattel was "minimal" and "peripheral" is wrong. Ms. Basinger
6 billed a combined 132.3 hours to Viveros and Mattel v. MGA. As an eighth-year
7 lawyer, Ms. Basinger was not a mere "low-level" or even "mid-level" attorney, as
8 Glaser Weil has inconsistently sought to portray her. She was involved in high-level
9 case strategy, supervised junior associates, and communicated directly with Mattel
10 in-house counsel. Numerous courts have held that far lower-level work or less
11 client contact mandates disqualification. See, ^, City & County of San Francisco
12 v. Cobra Solutions, Inc., 38 Cal. 4th 839, 845 (2006) (disqualifying entire city
13' attorney's office because attorney formerly in private practice spent four-tenths of
14 an hour reviewing a contract in related case); Hitachi, 419 F. Supp. 2d at 1159-61
15 (disqualifying entire firm despite claim that associate's prior work for other side on
16 a related matter was "primarily document review" and despite ethical wall); Pound
17 v. DeMera DeMera Cameron, 135 Cal. App. 4th 70, 80 (5th Dist. 2005) (ordering
18 vicarious disqualification of entire firm based on individual conflict of attorney who
19 had cone-hour meeting with counsel for opposing party three years earlier, claimed
20 to have discussed nothing beyond what one could learn from the pleadings, and was
21 never retained). Even Kirk, the case relied upon so heavily by MGA, held that a 17-
22 minute phone conversation between an attorney and a prospective client disqualified
23 that attorney from representing an adverse party in a related case after switching law
24 firms. See Kirk, 183 Cal. App. 4th at 790-91.
25 Ms. Basinger's relevant work for Mattel was far less "peripheral" than that of
26 numerous other attorneys who have been disqualified. There is no minimum
27 number of hours that an attorney must spend on a representation; even a fraction of
28 an hour on the same or a substantially related matter compels disqualification. ^,

#:283480
1 I-Enterprise, 2005 WL 757389, at *6 (disqualifying firm that hired attorney who

2 billed one-half hour to the same litigation prior to switching firms); Cobra Solutions,
3 3 8 Cal. 4th at 845 (attorney who spent four-tenths of an hour reviewing a contract
4 could not be adverse to former client in related case); see also Largo, 2008 WL
5 53128, at * 1-5 (disqualification of entire firm despite claim that transferring
6 associate performed 9.8 hours of work over 6 days as essentially "a paralegal" in a
7 related matter, despite associate's testimony that he did not review anything that
8 would be of use in the pending litigation and despite ethical wall); ViChip Corp. v.
9 Lee, 2004 WL 2780170, at *3 (N.D. Cal. Dec. 3, 2004) (disqualifying law firm of
10 transferring attorney who billed 2. S hours on behalf of former client in related case);
11 Pound, 135 Cal. App. 4th at 80 (attorney who had one-hour meeting with counsel
12 for other side three years earlier required disqualification of firm).
13 MGA also suggests that Ms. Basinger 's conflict is somehow diminished or
14 eliminated because it has been five years since she did relevant work for Mattel.
15 See, ^, Opp. at 6. This is plainly wrong. As Glaser Weil's counsel states, "[i]f
16 the same subject matter is show^l to be involved, the length of time since the former
17 representation is irrelevant." Mark L. Tuft, et al., California Practice Guide:
18 Professional Responsibility § 4:189.2 (citing cases). No California court has ever

19 permitted an attorney to switch sides in a pending litigation, no matter how many
20 years have elapsed . See, ^, Glaxo, No . SA 10-CV-2764 -MRP (FMOx), at 5-7
21 (firm disqualified because attorney represented opposing party in a related matter
22 eight years earlier); Openwave, 2010 WL 1687825, at *4-*6 (granting motion to
23 disqualify law firm based on attorneys' work on a substantially related case six to
24 ten years earlier); Cobra Solutions, 38 Cal. 4th at 853-54 (disqualifying entire San
25 Francisco City Attorney's Office because City Attorney, in former private practice,
26 spent four-tenths of an hour reviewing contract in a related matter five years earlier);
27 Brand v. 20th Century Ins. Co., 124 Cal. App. 4th 594, 607 (2004) (attorney
28
-10-
#:283481
1^ disqualified from acting as expert because he represented opposing party 12 years

2 ^ earlier).
3 MGA argument.• cases other than Kirk support use of an ethical wall here.
4 ^ MGA cites a number of other factually inapposite cases, see Opp. at 17, none of
5 ^ which suggests that screening can overcome disqualification here:
6 • Chambers v. Superior Court, 121 Cal. App. 3d 893 (3d Dist. 1981),
7 held that an ethical wall prevented vicarious disqualification of a firm that hired a
8 former government lawyer who had worked on the other side of similar lawsuits.
9 That case is distinguishable for at least two reasons. First, unlike Ms. Basinger, the
10 attorney never worked on the other side of the same action. Second, ethical walls
11 are treated differently when applied to former government attorneys, and Chambers
12 expressly limited its holding to that context. See id. at 902-03 (observing that if
13 vicarious disqualification were always the rule for former government employees,
14 this would severely restrict government attorneys' options for future employment);
15 Henriksen, 11 Cal. App. 4th at 115 (noting that "limited acceptance" of ethical walls
16 in California has been confined to "a very different arena that of former
17 government employees now in private practice").
18 • In In re County of Los Angeles, 223 F.3d 990 (9th Cir. 2000), the
19 defendants in a police brutality case sought to disqualify the plaintiff's law firm
20 because one member of the firm, a retired magistrate judge, had presided over
21 settlement negotiations involving two of the defendants in a different police brutality
22 case. Like Chambers, County of Los Angeles is distinguishable because the conflict
23 did not involve the same case and because judicial officers, like former government
24 lawyers, are treated differently. Id. at 994 (distinguishing cases disqualifying firms
25 when former judge had participated in mediation or settlement efforts in the same
26 case); Mark L. Tuft, et al., California Practice Guide: Professional Responsibility
27 § 4:216 ("As with former judicial officers, vicarious disqualification is not imposed
28 as strictly on law firms hiring a former government lawyer.").
-,.^-
Y INSUPPORT OF MOTION TO DISQUALIFY GLASER WEIL
#:283482
1 • City of Santa Barbara v. Superior Ct., 122 Cal. App. 4th 17 (2d Dist.
2 2004), allowed screening where an attorney formerly in private practice joined a
3 government entity, noting that "vicarious disqualification in the public sector
4 context imposes different burdens pn the affected public entities." The court limited
5^ its holding to government employees and indeed made clear that private law firms
6 like Glaser Weil must be disqualified. Id. at 24 ("Were we concerned with a private
7 law firm, the answer would be clear: Knecht's disqualification would be mandatory
8 ^ and would extend to her entire law firm.").
9 • MGA's reliance on In re Complex Asbestos Litigation, Shadow Traffic
10 Network v. Superior Court, and Western Digital Corp. v. Superior Court,
11 demonstrates the absence of California authority supporting MGA's arguments
12 about ethical walls: none of these cases involved a conflicted attorney. See 232 Cal.
13 App. 3d 572 (1st Dist. 1991) (paralegal); 24 Cal. App. 4th 1067 (2d Dist. 1994)
14 (expert), 60 Cal. App. 4th 1471 (4th Dist. 1998) (expert).
15 Further, MGA' s attempts to distinguish the numerous cases cited by Mattel
16 holding that vicarious disqualification is required here are unconvincing. Compare
17 Motion at 4-8 with Opp. at 16-22. As Glaser Weil's counsel has explained, no
18 ',California case-even after Kirk--has ever suggested that screening is permissible
19 where an attorney worked on the other side of the same pending case. See Mark L.
20 Tuft, Non-Consensual Screening for Conflicts in California, 843 PLI/Lit 35, at 6;
21 see also Meza v. H. Muehlstein & Co., 176 Cal. App. 4th 969, 978 (2d Dist. 2009)
22 ("As a general rule in California, where an attorney is disqualified from
23 representation, the entire law firm is vicariously disqualified as well. This is
24 especially true where the attorney's disqualification is due to his prior representation
25 of the opposing side during the same lawsuit."); Henriksen, 11 Cal. App. 4th at 117
26 ("Where an attorney is disqualified because he formerly represented and therefore
27 possesses confidential information regarding the adverse party in the current
28 litigation, vicarious disqualification of the entire firm is compelled as a matter of
-,^-
#:283483
l^ ^ law."); Flatt, 9 Cal. 4th at 283 (1994) (citing Henriksen with approval for same
2 proposition); Kirk, 183 Cal. App. 4th at 814 (acknowledging that this is the rule).
3 MGA argument.• Mattel's aûments a^nst the efficacy of ethical walls are
4 "inconsistent " with Lutron Electronics Co., Inc. v. Crestron Electronics, Inc.
5 Contrary to MGA's suggestion (see Opp. at 2 n. l ), Mattel's arguments are not
6 inconsistent with Lutron Elecs. Co., Inc. v. Crestron Elecs., Inc., No. 2:09-CV-707
7 (D. Utah Nov. 12, 2010), a case involving an unsuccessful attempt to disqualify
8 ^ Quinn Emanuel, nor does that case support Glaser Weil's attempt to avoid
9 ^ disqualification here. Unlike Ms. Basinger, the tainted attorney in Lutron never
10 ^ worked on the other side of the same litigation. Further, the Lutron motion was
11 ^ governed by Utah law, and the Utah Rules of Professional Conduct expressly
12 ^ permitted the ethical screening that had been implemented in that case. See Utah
13 Rule of Professional Conduct 1.10(c); see also Lutron, at 7. The only
14 "inconsistency" here is Glaser Weil's counsel's argument that a wall can screen a
15 California lawyer who moves to the opposite firm in the same case -after
16 publishing articles, post-Kirk, declaring that the rule in California is the opposite.
17 MGA ar uênt: Disqualification would prejudice MGA and infringe u^
18 MGA 's right to counsel o its choice. MGA is wrong that this motion is "a litigation
19 ploy." Opp. at 1. Glaser Weil chose to bring in an attorney who formerly
20 represented Mattel in this very matter just nine days before it sought to (formally)
21 reassociate in as counsel for MGA. "[A]n attorney should not put either himself or
22 his client in such a position." Global Van Lines, 144 Cal. App. 3d at 490 (rejecting
23 argument that court should "wait and see" if ethical wall worked and ordering
24 disqualification of entire firm, despite transferring attorney's claim not to have any
25 knowledge of the litigation). MGA's protests that disqualification would be
26 "drastic" and "disruptive" (see Opp. at 3, 22) are also off-base. Numerous
27 California state and federal courts, while acknowledging that disqualification is a
28 "harsh remedy," have ordered it under these circumstances. See, ^, I-Enterprise,
_ -IJ-

#:283484
1 2005 WL 757389, at *8 (ordering disqualification, despite claims that it would be

2 "harsh and unjust" at late stage of litigation and that getting new counsel up to speed
3 would be "prohibitively expensive"); Henriksen, 11 Cal. App. 4th at 185, 187
4 (rejecting arguments of prejudice and financial hardship and granting motion to
5 disqualify counsel two-and-a-half years into the litigation).
6 As the California Supreme Court has instructed, "[t]he paramount concern
7 must be to preserve public trust in the scrupulous administration of justice and the
8 integrity of the bar. The important right to counsel of one's choice must yield to
9 ethical considerations that affect the fundamental principles of our justice process."
10 People ex rel. Dept of Corr. v. SpeeDee Oil Change Sys. Inc., 20 Cal. 4th 1135,
11 1145 (1999); see also Largo, 2008 WL 53128, at *2 (quoting SpeeDee Oil); Cobra
1 2 Solutions, 38 Cal. 4th at 851 (former client's "overwhelming interest in preserving
13 the confidentiality of information imparted by counsel" overrides any burdens
14 imposed by disqualification); H.F. Ahmanson, 229 Cal. App. 3d at 1451 ("The court
1 5 does not engage in a `balancing of equities' between the former and current clients.
16 The rights and interests of the former client will prevail.").
17 Even if the burden on MGA were relevant-it is not any prejudice to MGA
18 is minimal, given that Glaser Weil withdrew from this action (for a second time) in
19 February 2009-more than twenty-two months ago-and only sought to reassociate
20 as counsel two weeks ago. This is clearly not a case where MGA will be left
21 without representation (although numerous courts have ordered disqualification
22 even under those circumstances )-Orrick has been and will remain lead counsel.
23 No delay in the trial will occur, or even would be warranted, with disqualification
24 here.
25 Finally, any burden to MGA is a result of Glaser Weil's own decision: to hire
26 an attorney who had previously represented Mattel in this very case and in another,
27 substantially related matter. Glaser Weil was aware of Ms. Basinger's work for
28 Mattel when it hired her (Opp. at 2, 24), but it chose to hire her anyway. Glaser
-^-
#:283485
11 Weil and MGA must now live with the consequences of that decision. See Kirk 183
2 Cal. App. 4th at 816 n.37 (distinguishing the "egregious" situation of law firm that
3 "had been fully aware that it was hiring an attorney who had represented a defendant
4 in the same action").
5 Conclusion
6 Mattel respectfully requests that the Court grant its motion.
7 DATED: December 19, 2010 QÎNN EMANUEL URQUHART &
S LIVAN. LLP
8
9 By /^ John B. Ouinn
10 John B. Quinn
y s for Mattel, Inc. and
Attorney
11 Mattel de Mexico . S.A. de C.V.
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
ÎJ-
#:283486
Exhibit A
^zxierr
PAGE ^^
#:283487
Non-Consensual Screening For Conflicts in California
sy
Mark L. Tufts
Cooper, White & Cooper IrLP
Non-consensual screening as a means of avoiding imputation of lateral lawyer
conflicts is an evolving issue in California. California historically has not recognized the
availability of screening to prevent imputation of conflicts between lawyers relocating
between private firms. See Sharp v. Next Entertainment, X nc., 163 Cal. App. 4th 310, 438
(2008). California currently does not have an imputation rule comparable to ABA Model
Rule 1.10, nor does California have rules that address screening in the case of former
government lawyers, {Model Rule 1.11), former judges and third party neutrals {Model
Rule 1.12) or in dealing with prospective clients (Model Rule 1.18). Instead, imputation
of conflicts of interest is a matter of common law. See California Practice Guide:
Professional Responsibility {The Rutter Group; A Division of West, A Thomson Renter's
Business) (2009) ¶ 4:32.
The State Bar Commission for the Revision of the Rules of Professional Conduct
recommended adoption of a modified version of ABA Model Rule 1.1 p permitting non-
consensual screening except where the lawyer was substantially involved in the former
representation. The State Bar Board of Governors recently declined to adopt the
Commiss'ion's recommendation and, instead, approved a version of Model Rule 1.10 that
1 02410 Mark L. Tuft, All rights reserved.
EXNIÎT
639694.1 _ 1 _ ^'
PAGE /
#:283488
does not contain a screening provision. The Board's decision was based on its belief that
screening should continue to be developed through case law rather than through a nlle of
professional conduct.
Vicarious Disqualification
California courts were alnong the first to apply the imputed knowledge rule
relying in part on ABA Model Code DR 5-105(D). Clzadwiclc v. Superior Court, 106
Cal. App. 3d 108, 116 {1980), superseded by statute on other grounds in People v.
Donner, 34 Cal. 3d 141 (1983); Chansbers v. Superior Court, 121 Cal. App. 3d 893, 898
(1981}. The general rule in California is that where an attorney is disqualified, that
attorney's entire firm is disqualified as well regardless of efforts to erect an ethical wall.
Klein v. Superior Court, 198 Cai. App. 3d 894, 912-914 (1998); Henriksen v. Great
A merican Savings c4^ Loan, 11 Cal. App. 4th 149, i 17 {1992).
The California Supreme Court has not expressly changed the presumption of
shared confidences in successive representation cases. City & Cou^xty of San Francisco
v. Cobra Solutions, Inc., 38 CaI.4th 839 (2006). However, based on a statement in
People ex. rel. Dept. of Corporations v. SpeeDee Oil Change Systems, Inc, 20 CaI.4th
1135, 1151-1152 (1999) (that the record lacked ail evidentiary basis for considering
whether an ethical screen could be used to avoid disqualification afthe law firm based on
the firm's disqualified "of counsel"}, the Ninth Circuit noted in I^x re County of Los
A ngeles, 223 F.3d 990, 995 (9th Cir. 2000) that the Court is "sending a signal that [it]
may well adopt a more flexible approach to vicarious disqualification" ill certain cases.
Yet, the basic imputation rule remains intact. Hitachi, Ltd. 1^. Tatacng Company, 419 F.
Supp . 2d 1158,1161 (N.D. GA. 2006).
EXHIBIT
639b94.1 _2
PAGE ^^
#:283489
Several courts have relaxed the imputation standard in specific situations.
Goldberg v. W arner/Chappell Music, Inc., 125 Cal. App. 4th 752 {2005} (where the
disqualified attorney leaves the firm and the prior firm shows it did not receive
confidential information}; A dams v. A erojet-General Corp., 86 CaI. App. 4th 1324 {2001}
{where the new firm shows that the lateral attorney had no exposure to confidential
information relevant to the current action}. Thus, in so-called "double imputation"
situations, disqualification ofthe former lawyer and the lawyer's new firm is not
automatic. Frazier v. Superior Court, 97 Cal. App. 4th 23, 27 (2002); Derivi
Construction &A rchitecture, Inc v. W ong, 118 Cal. App. 4th 1268, 1274-1276 (2004}.
instead, a court must determine whether confidential information material to the current
matter would normally have been imparted to the attorneys by virtue of the nature of the
former representation and the lawyer's involvement. A dams, supra, 86 Cal. App. 4th at
1339; see also, Los Angeles Bar Assn Formal Opinion 501 (1999); ABA Formal
Opinion 99-145.
To determine whether disqualification of a former attorney or the attorney's new
firm is appropriate, California courts have developed a "modified substantial relationship
test." The central focus of the testis whether confidential information was reasonably
likely to have been imparted to the attorney while at the former fine. A dams, supra, 86
Cal. App. 4th at 1340; Frazier, supra, 97 Cal. App. 4th at 33-34; Fauglin v. Perez, 135
Cal. App. 4th 592, 603; Ochoa v. Fordel, Ine.> 146 Cal. App. 4th 898, 908. The
"modified substantial relationship test" is similar in many respects to ABA Model Rule
1.9(b), which the California State Bar Rules Revision Commission has recommended for
adoption, and Restatement Third, The Law Governing Lawyers ^ 124, Comment e(ii); see
EXHIBIT
639694.1 _ 3 _
PAGE _r____. _____ ___..-

#:283490
also Silver Chrysler Plymouth, Inc. v. Chrysler Motor Corp., 518 F.2d 751, 757 {2d. Cir.
1975). Where a showing is made that it is not reasonably likely that material confidential
information was imparted to the attorney at the former firm, a rebuttable presumption
arises and the firm-switching attorney has the burden of proving the attorney did not have
actual exposure to confidential information materraI to the current matter. A dams, supra,
86 Cal. App. 4th at 1341; Ochoa, supra, 146 Cal. App. 4th at 911-912.
Non-Consensual Screening for Migrating Lawyers
Courts in California will permit screening in certain contexts. For example, a law
firrn will not be vicariously disqualified because a former judicial officer who heard a
portion of the case subsequently joins a firm of one of the parties so long as no
confidences were revealed to the judicial officer by the opposing side and appropriate
screening procedures are established . Higdon v. Superior Court, 227 CaI. App. 3d 1b67
{1991); In re County of Los A ngeles , supra, 223 F. 3d 990. However, screening will not
avoid disqualification if the former judicial officer participated in settlement discussions
in the case . Cho v. Superior Court, 39 Cal. App. 4th i 13 (1995).
Screening procedures may also protect against the presumption of shared
confidences when hiring former government lawyers (Chambers v. Superior Court, 121
Cal. App. 3d 893 {1981)} as well as private lawyers joining a government office . City of
Santa Barbara v. Superior Court, 122 Cal. App. 4th 17 (2004}. However, a public office
may not avoid vicarious disqualification by using screening procedures to shield a
conflicted lawyer who becomes the head of the office. Cobra Solutions, supra, 38 CaI.
4th at 850 . Screening procedures can also be effective in overcoming the presumption of
shared confidences when hiring an opposing counsel 's former paralegal or secretary {Iii re
EXHIBIT
639694.1 _ 4. _
PAGE
#:283491
Complex.4sbestos Litigation , 232 Cal. App. 3d 572 ( 1991}} or employing an expert
previously consulted by the other side. Shadow Traffic Network u. Superior Court, 24
Cal. App. 4th 1067, 1087 (1994}; Western Digital Corp, u. Superior Court, 60 Cal. App.
4th 1471 ( 1998).
Recently, the Second District Court of Appeal decided in Kirk v. First A merican
Title ins. Co., 183 Cal.App.4th 776 {2010), that imputation of conflicts may, in certain
circumstances, be prevented in private sector lateral transfers through the use of timely
and effective screening procedures. In Kirk, counsel for plaintiffs in four class actions
brought against a title insurance company contacted an attorney for another insurance
company to serve as plaintiffs' consultant. The attorney declined the assignment and later
joined a private law firm. Plaintiffs' counsel re-contacted the attorney at the firm and the
attorney again declined the assignment as plaintiffs' consultant. Later, lawyers for the
defendant in the class action cases joined the same law firm. It was undisputed that the
tainted lawyer had acquired material confidential information in communications with
plaintiffs' counsel . The court, nevertheless, found that, under these facts, vicarious
disqualification of the law firm was not automatic and could be rebutted by proper
screening measures. Kirk, supra, 183 Ca1.App.4th at 786, 814.
The facts in Kirk involve a "prospective" client conflict situation rather than a
former client conflict. Kirk, supra, 183 Cal.App.4th at 78b-788; see Model Rule 1.18.
California's Rules Revision Commission has recommended adoption of a version of
Model Rule 1.18, which the Board approved but, again, without the screening provision
in Model Rule 1.8(d)(2). The court's holding in Kirlc, however, recognizing screening as
an available means of avoiding vicarious disqualification is not lizxzited to the prospective
EXHI BIT
639694 .1 _^„ ^ /
PAGE
#:283492
client conflict situation. See, e.g., Kirk, supra, 183 Cal.App.4th at 814 {"In sum, we have
concluded that, when a tainted attorney moves from one private law firm to another, the
law gives rise to a rebuttable presumption of imputed knowledge to the law fine, which
may be rebutted by evidence of effective ethical screening."). Under Kirk, vicarious
disqualification is still determined on a case-by-case basis and screening may be a viable
solution except in the situation where the tainted attomey was actually involved in the
prior representation and switches sides in the same case. In that instance, no amount of
screening will be sufficient and the presumption of imputed knowledge is conclusive.
Kirk, supra, 183 Cai.App.4th at 814; and see Henrilrsen v. Great A merican Savings &
Loan (1992) 11 Cal.App.4th 109.
While the Supreme Court has not addressed whether vicarious disqualification of
a tainted lawyer's new firm can be avoided bynon-consensual screening in the private
sector, the Supreme Court denied a petition for review in Kirk and a request that the
decision be de-published. Accordingly, Kirk is good Iaw in California.
What Constitutes an Effective Ethical Screen
What constitutes an effective ethical wall varies from case-to-case. However, as
the court in Kirk explained, two elements are critical: the ethical wall must be established
as early as possible and preventive measures must be imposed to guarantee that
confidential information will not be conveyed. Kirk, supra, 183 Ca1.App.4th at 810. It is
generally understood that a screen or ethical wall means "the isolation of a lawyer from
any participation in a matter through the timely imposition of procedures within a Finn
that are reasonably adequate under the circumstances to protect information that the
isolated lawyer is obligated to protect under the [applicable ethics rules] or other law."
^^
EXHIBIT
639694.1 _ ( _
PAGE ^^
#:283493
ABA Model Rule 1.0(k).
Typical features of an effective ethical wall include: (1) physical, geographic and
departmental separation of attorneys and staff; (2) prohibitions against and sanctions for
discussion of confidential information; (3) established rules and procedures for
preventing access to confidential information and files; (4) procedures preventing a
disqualified attorney from sharing in the profits from the representation; (5) lack of any
supervisory relationship between the tainted attorney and the lawyers involved in the
current matter or vice-versa; and (6) reasonable notice to the client. Kirlc, supra, 183
Ca1.App.4th at 810-813; Henriksen v. Great A merican Savings & Loan, 11 Ca1.App.4t11
109, 116, fn. 6 (1992} ;City of Santa Barbara v. Superior COUI^t, 122 Cal.App.4th 17, 27
(2004).
EXH^îT
639694.1 _7„ ^^
PAGE
EXHIBIT D
#:284832

CIVIL MINUTES - GENERAL
Case No. CV 04-9049 DOC (RNBx) Date December 20, 2010

Title MATTEL INC. -V- MGA ENTERTAINMENT INC., ET AL
Present: The Honorable David O. Carter, U.S. District Judge
Julie Barrera, Kathy Peterson Debbie Gale, Jane Sutton, Deborah Parker N/A
Deputy Clerk Court Reporter / Recorder Tape No.
Attorneys Present for Plaintiffs: Attorneys Present for Defendants:
Michael Quinn Annette Hurst
Michael Zeller Thomas McConville
William Price Patricia Glaser
Stephen Kaus
Alexander Cote
Mark Overland
Proceedings: EVIDENTIARY HEARING ON MATTEL’S MOTION TO DISQUALIFY GLASER

WEIL [9359]; HEARING (NON-EVIDENTIARY) ON MATTEL’S MOTION FOR
PARTIAL SUMMARY JUDGMENT ON MGA’S COUNTERCLAIMS-IN-REPLY
The cause is called and counsel state their appearances. Arguments heard by John Quinn and
Stephen Kaus on Mattel’s Motion to Disqualify Glaser Weil. The courtroom is cleared for in camera
hearing.
Sealed in camera evidentiary hearing held. Exhibit and witness list filed.
Further sealed in camera hearing held with John Quinn, Michael Zeller and William Price.
The Court permits Patricia Glaser to remain as co-lead counsel for MGA but grants Mattel’s
Motion to Disqualify Glaser Weil. The Court orders the parties to return on December 21, 2010 at 10:00
a.m. to discuss conditions associated with Ms. Glaser remaining as co-lead counsel.
All parties return to the courtroom and hearing is held on Mattel’s Motion for Partial Summary
Judgment on MGA’s Counterclaims-in-Reply, which is taken under submission.
evid: 2 : 00
non-evid: 1 56
Initials of Preparer kp
CV-90 (12/02) CIVIL MINUTES - GENERAL Page 1 of 1

EXHIBIT E
Case 3:11-cv-01659-IEG-WMC Document 16-1 Filed 09/07/11 Page 1 of 19

Frederick A. Lorig (Bar No. 057645)
2 fredlorig@quinnemanuel.com
Steven M. Anderson (Bar No. 144014)
3 stevenanderson@quinnemanuel.com
Christopher A. Mathews (Bar No. 144021)
4 chrismathews@quinnemanuel.com
Michael W. Gray (Bar No. 238669)
5 michaelgray@quinnemanuel.com
6 Los Angeles, California 90017-2543
Telephone: (213) 443-3000
7 Facsimile: (213) 443-3100

PACKETVIDEO CORPORATION
9
SOUTHERN DISTRICT OF CALIFORNIA
11
12 PACKETVIDEO CORPORATION, a Delaware CASE NO. 3:11-cv-1659 IEG WMc
13 corporation, MEMORANDUM OF POINTS AND
14 Plaintiff, AUTHORITIES IN SUPPORT OF PLAINTIFF
PACKETVIDEO CORPORATION'S MOTION
15 TO DISQUALIFY MCKOOL SMITH FROM
v. SERVING AS COUNSEL FOR
16 SPOTIFY USA INC., a Delaware corporation, DEFENDANTS
17 SPOTIFY LIMITED, a United Kingdom Place: Courtroom 1

corporation, and SPOTIFY TECHNOLOGY Judge: Hon. Irma E. Gonzalez
18 SARL, a Luxembourg corporation,
19 Defendants.
20
21
22
23
24
25
26
27
28
04558.23511/4317865.4
MEMO. ISO PLAINTIFF'S MOTION
TO DISQUALIFY MCKOOL SMITH
1 TABLE OF CONTENTS
2 Page
3
4 I. INTRODUCTION ................................................................................................................. 1
5 II. STATEMENT OF FACTS.................................................................................................... 4
6 A. PacketVideo And Mr. Chambers, a Partner in McKool Smith's Dallas

Office, Arranged A Phone Call To Discuss PacketVideo's Patent
7 Infringement Action Against Spotify ........................................................................ 4
8 B. In His July 7, 2011 Call With Mr. Chambers, PacketVideo's General

Counsel Disclosed Privileged And Confidential Information, And Obtained
9 Legal Advice, Concerning This Action ..................................................................... 5
10 C. McKool Smith Created Work Product, And Provided PacketVideo With

Specific Legal Advice About This Action In A Follow-Up Call .............................. 7
11
D. After PacketVideo Retained Alternative Counsel, McKool Smith Switched
12 Sides And Appeared On Behalf Of Spotify In This Action ...................................... 8
13 III. ARGUMENT ...................................................................................................................... 10
14 A. California Law Governs Whether McKool Smith, As Prior PacketVideo

Counsel, Can Switch Sides To Represent Spotify In This Action .......................... 10
15
B. McKool Smith Formed An Attorney-Client Relationship With PacketVideo
16 When It Obtained Confidential Information And Provided Legal Advice,
Barring Its Representation Of Spotify In This Action ............................................ 12
17
C. California Law Mandates Vicarious Disqualification Of The Entire McKool
18 Smith Law Firm, Regardless Of Efforts To Erect An Ethical Wall ........................ 13
19 IV. CONCLUSION ................................................................................................................... 14
20
21
22
23
24
25
26
27
28
04558.23511/4317865.4
-i-
1 TABLE OF AUTHORITIES
2 Page(s)
3 Cases
4 Analytica, Inc. v. NPD Research, Inc.,

708 F.2d 1263 (7th Cir. 1983) ....................................................................................................14
5
Beery v. State Bar,
6 43 Cal. 3d 802 (1987) .................................................................................................................12
7 City of Nat'l Bank v. Adams,

96 Cal. App. 4th 315 (2002) .......................................................................................................14
8
In re County of Los Angeles,
9 223 F.3d 990 (9th Cir. 2000) ......................................................................................................14
10 In re Dupont's Estate,
60 Cal. App. 2d 276 (1943) ........................................................................................................12
11
Flatt v. Superior Court,
12 9 Cal. 4th 275 (1994)..................................................................................................................13
13 Henriksen v. Great America Savings and Loan et al.,

11 Cal. App. 4th 109 (1992) .....................................................................................11, 12, 13, 14
14
Hitachi, Ltd. v. Tatung Co.,
15 419 F. Supp. 2d 1158 (N.D. Cal. 2006) ...............................................................................11, 13
16 Laryngeal Mask Co. Ltd. v. Ambu A/S,

No. 07-CV-1988-DMS (NLS), 2008 WL 558561
17 (S.D. Cal. Feb. 25, 2008)..................................................................................2, 3, 11, 12, 13, 14
18 Lucent Tech. Inc. v. Gateway, Inc.,

No. 02CV2060-B(CAB), 2007 WL 1461406 (S.D. Cal. May 15, 2007)........................10, 11, 13
19
People ex rel. SpeeDee Oil Change Sys., Inc.,
20 20 Cal. 4th 1135 (1999)..............................................................................................1, 11, 12, 14
21
Statutes
22
Cal. R. Prof. Conduct 1-100 (D) (2) .................................................................................................11
23
Fed. R. Civ. P. 5(b)(3) ......................................................................................................................16
24
Local Rule 5.4 ..................................................................................................................................16
25
S.D. Cal. Civ. R. 83.4 (b) .................................................................................................................11
26
27
28
04558.23511/4317865.4
-ii-
1 I. INTRODUCTION
2 Plaintiff PacketVideo Corporation ("PacketVideo") respectfully moves the Court to correct
3 "the most egregious conflict of interest" possible between a client and its attorneys: an attorneys'
4 "representation of clients whose interests are directly adverse in the same litigation." People ex rel.
5 SpeeDee Oil Change Sys., Inc., 20 Cal. 4th 1135, 1147 (1999). As discussed hereinafter,
6 Defendants' lead counsel, McKool Smith, previously represented Plaintiff in connection with this
7 litigation and has now switched sides, filing an answer on behalf of Defendants Spotify USA and
8 Spotify Limited. Moreover, McKool Smith "pitched" the case to Defendants after Plaintiff
9 decided to file its Complaint in the present district.
10 In early July of 2011, PacketVideo's General Counsel, Joel Espelien, contacted a partner in
11 McKool Smith's Dallas office to investigate the possibility of hiring McKool Smith to represent
12 PacketVideo in patent infringement action against Defendants Spotify USA Inc., Spotify Limited,
13 and Spotify Technology SARL (collectively, "Spotify"). Mr. Espelien participated in several
14 private discussions with Garret Chambers, a partner at McKool Smith, through which
15 PacketVideo and the McKool Smith firm unequivocally formed an attorney-client relationship.
th
16 During a July 7 call, Mr. Espelien revealed extensive confidential information to Mr. Chambers
17 on a range of strategically sensitive issues, and Mr. Chambers provided legal advice. During a
18 subsequent call, Mr. Chambers provided additional legal advice based on confidential
19 PacketVideo information obtained from Mr. Espelien, and after conducting legal research and
20 consulting with firm colleagues. Throughout their meeting, Mr. Espelien understood and believed
21 that the substantial confidential information he revealed—and the legal advice he obtained—
22 would be treated in confidence as a privileged communication between attorney and client, and
23 Mr. Chambers never indicated otherwise.
24 Because PacketVideo decided to file the present action in its home district, the Southern
25 District of California, Mr. Espelien ultimately decided to not use McKool Smith, a well known
26 Texas firm specializing in patent cases in the Eastern District of Texas. PacketVideo filed its
27 Complaint on July 27, 2011 (D.I. 1). The following week, McKool Smith contacted both
28 Mr. Espelien and PacketVideo's outside counsel to advise that, with full knowledge of Mr.
04558.23511/4317865.4
-1-
1 Chambers' prior confidential discussions, McKool Smith intended to pitch Spotify for the chance
2 to represent it in this litigation. And while McKool Smith claimed that its prior discussions with
3 Mr. Espelien did not create a conflict that would prevent their being able to represent Spotify,
4 Mr. Chambers asked Mr. Espelien to agree that an ethical wall would eliminate any issue (a
5 request that Mr. Espelien rejected). On August 11, 2011, PacketVideo's counsel wrote to McKool
6 Smith to confirm Mr. Espelien's refusal, explaining that because it would be unethical for McKool
7 Smith to act adverse to its former client, PacketVideo would not agree to waive McKool Smith's
1
8 conflict of interest. Declaration of Christopher A. Mathews ("Mathews Decl.") Exh. A, ¶ 3.
9 On September 6, 2011, once Spotify filed its Answer (D.I. 14), PacketVideo learned for
10 the first time that attorneys from McKool Smith's Dallas office—the same office where
11 Mr. Chambers is located—were representing Spotify in this action leaving Plaintiff with no choice
12 but to file this motion since McKool Smith, through its privileged conversation with Plaintiff's
13 General Counsel, is aware of Plaintiff's settlement strategy and other privileged issues identified in
2
14 its General Counsel's declaration which will be filed in camera if the Court so approves.
15 The California Rules of Professional Conduct mandates automatic disqualification of the
16 entire McKool Smith law firm. This was made clear most recently in Laryngeal Mask Co. Ltd. v.
17 Ambu A/S, No. 07-CV-1988-DMS (NLS), 2008 WL 558561 (S.D. Cal. Feb. 25, 2008), a recent
18 Southern District of California decision—of which McKool Smith was previously advised, see
19
1
20 As with the Declaration of Mr. Espelien, see n. 2, infra, PacketVideo has filed with a
Motion to Seal the unredacted version of Mr. Mathews' Declaration. PacketVideo has
21 electronically filed a redacted version of Mr. Mathews' Declaration for the public record.
2
22 For the Court's in camera review, PacketVideo has filed with a Motion to Seal the
unredacted version of Mr. Espelien's Declaration, which describes in detail the specific
23 confidences and legal advice shared between Mr. Espelien and Mr. Chambers during McKool
Smith's representation of PacketVideo in July 2011. In the present motion, which is filed without
24 redaction, PacketVideo sets forth only general topics of discussion, lest disclosure of more specific
information defeat the entire purpose of this Motion. See, e.g., Laryngeal, 2008 WL 558561, at *5
25 ("in camera review is an appropriate method for a moving party to present its evidence concerning
26 the confidences and legal advice discussed at the preliminary interview," whereas "Plaintiffs are
not required to remind Defendants of specific statements that constitute confidences in order to
27 meet their burden of proof on the disqualification motion.") (citations omitted). PacketVideo has
electronically filed a redacted version of Mr. Espelien's Declaration for the public record.
28
04558.23511/4317865.4
-2-
1 Mathews Decl., Exh. A—disqualifying an entire law firm based on strikingly similar
2 circumstances to those presented here. In Laryngeal, the Plaintiff met with attorneys to discuss a
3 potential patent infringement action, just as PacketVideo's General Counsel met with McKool
4 Smith here. Id. at *1. And while in both cases the Plaintiff revealed confidential information and
5 received legal advice in return, in the present situation, McKool Smith's attorney went even
6 further—Mr. Chambers obtained confidential information and provided legal advice over several
7 days and multiple phone calls, consulted with colleagues in his Dallas office, and conducted
8 specific legal research for the sole purpose of providing legal advice on a critical strategic
9 question. Id. And just as in Laryngeal, after attempting to erect an ethical screen around the
10 attorneys who met with the Plaintiff, attorneys from the same office of the same firm appeared on
11 behalf of Defendants in the very same action, just as McKool Smith has done here on behalf of
12 Spotify. Id. at *3.
13 Applying California law, this Court in Laryngeal held that the client's disclosure of
14 confidential information, and the receipt of legal advice, necessarily established an attorney-client
15 relationship between the Plaintiff and the attorneys at the meeting, automatically disqualifying
16 those attorneys from representing the Defendant in the very same action. Id. at *6. The court
17 further explained that California law mandated vicarious disqualification of the attorneys' entire
18 law firm, regardless of any efforts to erect an ethical wall. Id. at *7. Finally, the Laryngeal court
19 found that, despite Defendant's arguments to the contrary, in California an ethical wall does not
20 prevent vicarious disqualification when another attorney from a firm's same office had represented
21 the opposing side in the very same action. Id.
22 For the same reasons explained in Laryngeal, and explored at length in PacketVideo's prior
23 correspondence to McKool Smith (Mathews Decl., Exh. A), PacketVideo respectfully requests
24 that the Court prevent this "most egregious conflict of interest" and disqualify the entire McKool
3
25 Smith law firm from representing Spotify in connection with this action.
26
3
27 Earlier on September 6, 2011, counsel for PacketVideo had worked with James Hardin, an
attorney at Spotify's counsel, Newport Trial Group, to negotiate and prepare a Joint Motion for
04558.23511/4317865.4
-3-
1 II. STATEMENT OF FACTS
2 A. PacketVideo And Mr. Chambers, a Partner in McKool Smith's Dallas

Office, Arranged A Phone Call To Discuss PacketVideo's Patent
3 Infringement Action Against Spotify
4 Because Spotify first began to offer its music streaming services in the Netherlands,
5 starting in 2007, and PacketVideo (through its wholly-owned Swiss subsidiary) brought a patent
6 infringement action against Spotify in the Netherlands (on a related European patent) earlier this
7 year. The present lawsuit involves Spotify's infringement of U.S. Patent No. 5,636,276 ("the '276
8 patent") through the music streaming service Spotify recently began to offer in the United States,
9 in July 2011.
10 PacketVideo began to suspect several months ago that Spotify was preparing to offer its
11 music streaming service in the United States. In early July of 2011, believing the launch of
12 Spotify's service in the Unites States was then imminent, PacketVideo General Counsel Joel
13 Espelien began the search for counsel to represent PacketVideo in a patent infringement action
14 based on its infringement of the '276 patent. Declaration of Joel Espelien ("Espelien Decl."), ¶¶ 2-
15 4. For confidential reasons described in Mr. Espelien's Declaration, McKool Smith was the first
16 and only law firm Mr. Espelien considered to represent PacketVideo. Espelien Decl., ¶ 5. After
17 substantial research, Mr. Espelien was very impressed with McKool Smith and, in particular, with
18 Garret W. Chambers, a Principal in the firm's Dallas office and an experienced patent litigator.
19 Initially, Mr. Espelien contacted Mr. Chambers by email to determine whether McKool
20 Smith would be interested in representing PacketVideo in this action. Espelien Decl., ¶¶ 5-6. On
21 July 5, 2011, Mr. Chambers called Mr. Espelien and explained he and McKool Smith were
22
23
Temporary Stay (D.I. 13). While Mr. Hardin stated that he intended to file answers on behalf of
24 Spotify, at no time did Mr. Hardin indicate that McKool Smith would appear as counsel of record
on Spotify's answer. While PacketVideo still believes that good cause exists for the requested 90
25 day stay—to allow the parties to continue their settlement discussions—because of the sensitive
26 and confidential nature of the strategic information shared with McKool Smith, and the
seriousness of the conflict issues created by McKool Smith's current representation of Spotify,
27 PacketVideo respectfully requests that the Court hear the present motion to disqualify even if the
Court otherwise agrees to grant the parties' request for a temporary stay of this action.
28
04558.23511/4317865.4
-4-
1 interested, but first needed to run a conflicts check to verify there was no reason McKool Smith
2 could not represent PacketVideo. To enable Mr. Chambers to run the conflicts check,
3 Mr. Espelien explained that the action would be against Spotify based on its infringement of the
4 '276 patent. Espelien Decl., ¶ 7. Mr. Chambers and Mr. Espelien ultimately arranged a July 7,
5 2011 meeting via phone to discuss specific details about PacketVideo's action against Spotify.
6 Espelien Decl., ¶ 8.
7 B. In His July 7, 2011 Call With Mr. Chambers, PacketVideo's General
Counsel Disclosed Privileged And Confidential Information, And
8 Obtained Legal Advice, Concerning This Action
9 During a July 7, 2011 telephone call, Mr. Espelien and Mr. Chambers spoke privately for
10 approximately 45 minutes. Espelien Decl., ¶ 8. After Mr. Chambers explained there were no
11 potential conflicts of interest to prevent McKool Smith from representing PacketVideo against
12 Spotify, he and Mr. Espelien spent essentially the entire call discussing strategic considerations
13 and/or legal issues concerning this action. Espelien Decl., ¶ 9. Importantly, at no point during the
14 meeting did Mr. Chambers ever warn or suggest that Mr. Espelien should not share confidential or
15 strategically sensitive information about PacketVideo's planned action against Spotify. Espelien
16 Decl., ¶ 10. In fact, Mr. Chambers actively sought confidential information from Mr. Espelien at
17 several points during the call. With the understanding and belief that their conversation was a
18 privileged and confidential communication between an attorney and client, Mr. Espelien
19 proceeded as he would in any other discussion with counsel; namely, he intentionally revealed
20 substantial privileged and confidential information to Mr. Chambers, and Mr. Chambers provided
21 legal advice based on the information he was provided. Espelien Decl., ¶¶ 10-11.
22 As described in greater detail in the unredacted version of Mr. Espelien's Declaration,
23 during the meeting Mr. Espelien disclosed privileged and confidential information—and obtained
24 Mr. Chambers' legal advice—on a range of important issues concerning this action:
25 • Mr. Espelien revealed confidential information concerning the general context of
26 PacketVideo's action against Spotify. Espelien Decl., ¶ 12.
27
28
04558.23511/4317865.4
-5-
1 • Mr. Chambers sought—and Mr. Espelien disclosed—confidential information
2 regarding the ultimate objective of the action. Espelien Decl., ¶ 13.
3 • Mr. Espelien revealed confidential information with respect to PacketVideo's
4 estimate of the value of the '276 patent, and its strategic settlement position vis-à-
5 vis Spotify. Espelien Decl., ¶ 14.
6 • Mr. Espelien disclosed confidential strategic information about the specific timing
7 of PacketVideo's action against Spotify. Espelien Decl., ¶¶ 8, 15.
8 • Mr. Espelien revealed confidential information concerning potential forums for
9 PacketVideo's action against Spotify. Mr. Chambers sought—and Mr. Espelien
10 disclosed—information about PacketVideo's operations. Using this information,
11 Mr. Chambers provided his legal advice. Together, Mr. Espelien and
12 Mr. Chambers reached a conclusion concerning potential forums for this action.
13 Espelien Decl., ¶¶ 20-21.
14 • Mr. Espelien revealed confidential strategic information regarding potential venues
15 for this action. Mr. Chambers sought—and Mr. Espelien disclosed—information
16 concerning Spotify's and PacketVideo's operations. Based on this information,
17 Mr. Chambers provided legal advice concerning potential venues. Espelien Decl.,
18 ¶¶ 16-18. However, to enable Mr. Chambers to provide more definitive legal
19 advice on this important question, Mr. Chambers advised Mr. Espelien that he
20 would further discuss the venue question with his colleagues. Espelien Decl., ¶ 19.
21 As revealed in a voicemail left by Bradley Caldwell, another partner in the Dallas
22 office of McKool Smith, Mr. Chambers apparently shared this strategic information
23 regarding potential venues for this action with others in his office. Declaration of
24 Christopher A. Mathews ("Mathews Decl.") ¶ 2.4
25
26
4
27 As with the Declaration of Mr. Espelien, PacketVideo has filed under seal the unredacted
version of Mr. Mathews' Declaration, which includes a transcription of Mr. Caldwell's August 4,
04558.23511/4317865.4
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1 Throughout their meeting, Mr. Espelien understood and believed that the confidential
2 information he revealed—and the legal advice he obtained—would be treated in confidence as a

3 privileged communication between attorney and client, and Mr. Chambers never said or did
4 anything to suggest otherwise. Rather, Mr. Espelien's belief was reaffirmed by the proposed next
5 step—namely, Mr. Chambers would confer with his colleagues concerning the question of venue,
6 in light of the confidential information Mr. Espelien had revealed, and would get back to
7 Mr. Espelien shortly with more definitive legal advice. Mr. Espelien was thoroughly impressed
8 with Mr. Chambers, and he expected McKool Smith would represent PacketVideo in its action
9 against Spotify, depending on certain outstanding issues. Espelien Decl., ¶ 22.
10 C. McKool Smith Created Work Product, And Provided PacketVideo
With Specific Legal Advice About This Action In A Follow-Up Call
11
Immediately following the call, Mr. Espelien researched the venue issue in light of the
12
information Mr. Chambers had provided during the call, and ultimately came to a tentative
13
conclusion. That same day, Mr. Espelien sent Mr. Chambers an email explaining his tentative
14
conclusion, asking Mr. Chambers to confirm that his conclusion was correct. Espelien Decl.,
15
Ex. 1, ¶ 23.
16
Soon thereafter, Mr. Chambers called Mr. Espelien and they spoke privately again by
17
phone. Espelien Decl., ¶ 24. During this follow-up call, Mr. Chambers confirmed that he had
18
discussed the venue question with his colleagues, and expressed his resulting legal advice in
19
response to the specific questions Mr. Espelien had posed. Mr. Espelien understood and believed
20
that Mr. Chambers was providing his informed legal advice, based on work product that included
21
Mr. Chambers' legal research and discussions with his colleagues, and Mr. Espelien expected this
22
legal advice would be treated as privileged and confidential. Id.
23
In light of the legal advice he received, Mr. Espelien disclosed more privileged and
24
confidential information concerning PacketVideo's operations and potential venues for its action
25
26
27 2011 voicemail message to Mr. Mathews. That Mr. Chambers had shared confidential
information with others at his firm is evident from Mr. Caldwell's voicemail.
28
04558.23511/4317865.4
-7-
1 against Spotify. See, generally, Espelien Decl., ¶¶ 14-24. Before ending the call, Mr. Espelien
2 thanked Mr. Chambers for his advice, and explained he would need to think further about the
3 appropriate venue and most suitable counsel to represent PacketVideo for this action. Espelien
4 Decl., ¶ 25.
5 D. After PacketVideo Retained Alternative Counsel, McKool Smith
Switched Sides And Appeared On Behalf Of Spotify In This Action
6
Based on the legal advice he received, Mr. Espelien chose to expand his search for suitable
7
counsel to represent PacketVideo in its action against Spotify. Mr. Espelien interviewed several
8
other law firms, ultimately appointing PacketVideo's current counsel—Quinn Emanuel—to bring
9
this action against Spotify in the Southern District of California. Later in July, Mr. Chambers
10
contacted Mr. Espelien expressing continued interest in representing PacketVideo, but
11
Mr. Espelien had already shifted his efforts and therefore did not respond. Espelien Decl., ¶ 26.
12
PacketVideo filed this action against Spotify on July 27, 2011. On August 2, 2011,
13
Mr. Chambers sent an email followed by increasingly persistent phone messages indicating he
14
needed to talk to Mr. Espelien. When they finally spoke over a bad cell phone connection,
15
Mr. Chambers quickly explained that McKool Smith intended to represent Spotify in this very
16
action, and that he just wanted to make sure Mr. Espelien would not have any objection. Taken
17
aback, Mr. Espelien immediately recognized the serious conflict of interest this situation
18
presented, and was especially shocked that Mr. Chambers would seek oral agreement on such an
19
important issue over the phone. Mr. Espelien explained to Mr. Chambers that, given the extensive
20
conversations they had shared concerning PacketVideo's strategy concerning a patent infringement
21
lawsuit against Spotify, he was certainly not comfortable with Mr. Chambers having any
22
involvement in Spotify's representation in the present action. Espelien Decl., ¶ 27.
23
Tellingly, Mr. Chambers acknowledged the conflict of interest created by his discussions
24
with Mr. Espelien, explaining he understood Mr. Espelien's concerns, and that this was why
25
McKool Smith would implement an ethical wall to screen Mr. Chambers off from the firm's
26
representation of Spotify. Although Mr. Chambers was unclear during the call about what exactly
27
he wanted from Mr. Espelien, at no time did he ask for a waiver of the conflict of interest, and
28
04558.23511/4317865.4
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1 Mr. Espelien never agreed to provide one. Espelien Decl., ¶ 27. Mr. Espelien ended the call
2 explaining he was still unsure of what he was being asked for, but that if Mr. Chambers was
3 requesting a waiver of McKool Smith's conflict of interest based on the imposition of an ethical
4 wall, Mr. Chambers needed to send the waiver in writing and Mr. Espelien would review it.
5 Espelien Decl., ¶ 27.
6 On August 4, 2011, another McKool Smith attorney, Bradley Caldwell, contacted
7 PacketVideo's outside trial counsel, leaving a voicemail message. Mathews Decl., ¶ 2. In his
8 message, Mr. Caldwell acknowledges that Mr. Chambers discussed with Mr. Espelien the
9 possibility of bringing an action against Spotify, confirms his receipt (apparently from
10 Mr. Chambers) of confidential strategic information that Mr. Espelien revealed regarding potential
11 venues for this action, confirms the possibility that Mr. Chambers' discussions with Mr. Espelien
12 could raise a conflict of interest for McKool Smith, and requests that PacketVideo's counsel get
13 back to him because they would like to "pitch…the Spotify side of the case" but didn't "want to
14 put them in a bad situation where everybody's briefing some disqualification motion." Id.
15 After consultation with his counsel at Quinn Emanuel and also with his PacketVideo
16 colleagues, Mr. Espelien understandably concluded he was not comfortable with McKool Smith
17 representing Spotify. Based on his phone conversation with Mr. Chambers, Mr. Espelien expected
18 Mr. Chambers to send a formal written request for a conflict waiver, and in response Mr. Espelien
19 planned to tell Mr. Chambers that he would not waive the conflict of interest. But on August 9,
20 Mr. Espelien received only a very brief email from Mr. Chambers, describing an internal draft of
21 an ethical wall memorandum that McKool Smith apparently intended to implement in an effort to
22 insulate the firm from Mr. Chambers' clear conflict of interest. Espelien Decl., Ex. 2, ¶ 28.
23 Despite mischaracterizing the earlier phone conversation by incorrectly suggesting Mr. Espelien
24 would agree to McKool Smith's representation of Spotify if Mr. Chambers were screened off by
25 an ethical wall, Mr. Chambers' email also reaffirms the clear conflict of interest should
26 Mr. Chambers himself be involved in the representation of Spotify: "As I mentioned, we were
27 certain there would not be a conflict for my firm if other McKool Smith lawyers wanted to
28 represent Spotify…I am glad you did not see any issue provided I did not work on the case." Id.
04558.23511/4317865.4
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1 Yet, rather than requesting a formal written waiver of this clear conflict, Mr. Chambers' email
2 simply concludes: "my colleagues are proceeding to work with Spotify." Id.
3 Recognizing the quickly escalating situation, Mr. Espelien forwarded the email to
4 PacketVideo's current counsel, pointing out Mr. Chambers' mischaracterization of his phone
5 conversation and instructing that PacketVideo was not willing to waive the conflict of interest
6 under any circumstances. On August 11, 2011, PacketVideo's counsel, Fred Lorig, contacted
7 Mr. Chambers on PacketVideo's behalf. Mathews Decl., Ex. A, ¶ 3. Mr. Lorig's letter
8 unambiguously states: "given McKool Smith's exposure to PacketVideo's litigation strategy and
9 evaluation of the merits, PacketVideo is not willing to waive McKool Smith's conflict of interest."
10 Id.
11 On August 18, 2011, James Hardin, an attorney at Newport Trial Group, negotiated an
12 extension of time until September 6, 2011, to answer the complaint, and the Newport Trial Group
13 firm filed a motion for an extension of time on behalf of Spotify. (D.I. 9) McKool Smith did not
14 appear as counsel of record for Spotify on this motion. Thereafter, the Newport Trial Group and
15 Plaintiff's counsel agreed to file a joint motion to stay this case to allow the parties to discuss
16 settlement. Shortly after that stipulation was filed with the Court, McKool Smith filed an answer
17 in this case thus necessitating this motion. Thus., despite Mr. Chambers' acknowledgement of this
18 clear conflict of interest, and PacketVideo's justified refusal to grant a waiver, attorneys from
19 Mr. Chambers' McKool Smith Dallas office formally appeared on the other side of this action in
20 the Answer of Defendant Spotify USA, Inc. and Spotify Limited to Complaint, filed on
21 September 6, 2011, leaving PacketVideo with no choice but to bring the present Motion to
22 Disqualify McKool Smith.
23 III. ARGUMENT
24 A. California Law Governs Whether McKool Smith, As Prior

PacketVideo Counsel, Can Switch Sides To Represent Spotify In This
25 Action
26 All attorneys from any jurisdiction appearing before this Court are "subject to California
27 law as it pertains to professional conduct." Lucent Tech. Inc. v. Gateway, Inc., No. 02CV2060-
28
04558.23511/4317865.4
-10-
1 B(CAB), 2007 WL 1461406, at *2 (S.D. Cal. May 15, 2007) (disqualifying entire firm because
2 "disqualification is required under California law, and consistent with Ninth Circuit analyses" with
3 regard to "an imputed conflict created in the context of a single on-going litigation"); see also Cal.
4 R. Prof. Conduct 1-100 (D) (2) ("As to lawyers from other jurisdictions who are not members:
5 These rules shall also govern the activities of lawyers while engaged in the performance of lawyer
6 functions in this state"); S.D. Cal. Civ. R. 83.4 (b) ("Any attorney permitted to practice in this
7 court must be familiar with and comply with the standards of professional conduct required of
8 members of the State Bar of California, and decisions of any court applicable professional conduct
9 which are now adopted as standards of professional conduct of this court").
10 Accordingly, "[m]otions to disqualify counsel are decided under [California] state law."
11 Hitachi, Ltd. v. Tatung Co., 419 F. Supp. 2d 1158, 1160 (N.D. Cal. 2006) (applying "established
12 rule in California [] that where an attorney is disqualified from representing a client because that
13 attorney had previously represented a party with adverse interests in a substantially related matter
14 that attorney's entire firm must be disqualified as well, regardless of efforts to implement an
15 ethical wall"); see also Laryngeal, 2008 WL 558561 (applying California law to disqualify entire
16 firm, despite recognizing at n. 6 that ethical rules of District of Columbia, where attorneys in
17 question practiced, might not require disqualification); Henriksen v. Great America Savings and
18 Loan et al., 11 Cal. App. 4th 109, 113 (1992) (upholding vicarious disqualification of entire law
19 firm under California law "where an attorney is disqualified because he formerly represented and
20 therefore possesses confidential information regarding the adverse party in the current litigation").
21 Subject to and consistent with California law, "the decision to disqualify counsel for
22 conflict of interest is within the trial court's discretion." Hitachi, 419 F.Supp.2d at 1160. In
23 exercising this discretion, the "paramount concern must be to preserve public trust in the
24 scrupulous administration of justice and the integrity of the bar." SpeeDee, 20 Cal. 4th at 1145.
25 And "it is axiomatic that an attorney must avoid even the appearance of a conflict of interest."
26 Laryngeal, 2008 WL 558561, at *1 (citation omitted) (disqualifying entire law firm "because
27 Plaintiffs have shown that they revealed confidential information and obtained legal advice during
28 the preliminary interview which prevents the law firm from representing Defendants in the same
04558.23511/4317865.4
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1 action"). To preserve the public trust and avoid even the appearance of conflict of interest,
2 McKool Smith must be disqualified from switching sides to represent Spotify in this action.
3 B. McKool Smith Formed An Attorney-Client Relationship With
PacketVideo When It Obtained Confidential Information And
4 Provided Legal Advice, Barring Its Representation Of Spotify In This
Action
5
6 "It is well established that a lawyer's fiduciary obligations exist 'even in the earliest stages
7 of the relationship,' including 'preliminary consultations by a prospective client with a view to

8 retention of the lawyer, although actual employment does not result.'" Laryngeal, 2008 WL
9 558561, at *3 (quoting SpeeDee, 20 Cal. 4th 1135); see also Beery v. State Bar, 43 Cal. 3d 802,
10 811-12 (1987); In re Dupont's Estate, 60 Cal. App. 2d 276, 288-89 (1943) (noting universal
11 acceptance that communication by client of preliminary statement of his case to an attorney is
12 privileged even if the attorney is not hired). Regardless of the timing, "[w]hen a party seeking
13 legal advice consults an attorney at law and secures that advice, the relation of attorney and client
14 is established prima facie." SpeeDee, 20 Cal. 4th at 1148 (quotation and citation omitted).
15 Above all else, "[t]he primary concern is whether and to what extent the attorney acquired
16 confidential information." SpeeDee, 20 Cal. 4th at 1148. ("An attorney represents a client–for
17 purposes of a conflict of interest analysis–when the attorney knowingly obtains material
18 confidential information from the client and renders legal advice or services as a result."); see also
19 Laryngeal, 2008 WL 558561, at *4 n. 5 (reviewing cases from other jurisdictions and concluding
20 California rule was consistent in determining existence of attorney-client relationship based on
21 exchange of confidential information and/or legal advice at initial consultation); Henriksen, 11
22 Cal. App. 4th at 112-13 (upholding disqualification of entire firm where partners received some
23 confidential information in brief, exploratory discussion about possibly hiring the firm).
24 During their July 7th call, Mr. Espelien—on behalf of PacketVideo—knowingly and
25 intentionally revealed confidential information to Mr. Chambers on a range of strategic issues

26 concerning PacketVideo's present action against Spotify, including the general context of this
27 action, the ultimate objective of this action, PacketVideo's estimate of the value of the '276 patent
28 and its strategic settlement position with respect to this action, the specific timing of the action,
04558.23511/4317865.4
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1 potential forums for this action, and potential venues for this action. And Mr. Espelien reasonably
2 believed and understood the confidential information he revealed would be treated as such—
3 throughout multiple discussions, Mr. Chambers never warned Mr. Espelien not to disclose
4 confidential information, and, in some cases, actively sought such information. Moreover,
5 Mr. Chambers provided legal advice on several of the topics they discussed. With respect to the
6 question of venue, Mr. Chambers actually went so far as to discuss the situation with his
7 colleagues (including his partner, Mr. Caldwell), conduct research of relevant case law, and then
8 report back with his resulting conclusion to Mr. Espelien on a follow-up call.
9 In short, there can be no legitimate dispute as to whether Mr. Espelien disclosed
10 confidential information to, and obtained legal advice from, Mr. Chambers concerning
11 PacketVideo's present action against Spotify, all with the reasonable belief the information and
12 advice would be kept in strict confidence. Mr. Chambers admitted as much in his August phone
13 call to Mr. Espelien, and in his subsequent email to Mr. Espelien. Hence, PacketVideo and
14 McKool Smith formed an attorney-client relationship, and Mr. Chambers (and those with whom
15 he discussed the case) are "automatically disqualified from representing [Spotify] in the same
16 litigation." Laryngeal, 2008 WL 558561, at *6.
17 C. California Law Mandates Vicarious Disqualification Of The Entire
McKool Smith Law Firm, Regardless Of Efforts To Erect An Ethical
18 Wall
19 "The established rule in California is that where an attorney is disqualified…that attorney's
20 entire firm must be disqualified as well, regardless of efforts to erect an ethical wall." Hitachi,
21 419 F. Supp. 2d at 1161 (reviewing California state and Federal decisions and concluding "as a
22 matter of California law…ethical screening procedures cannot prevent vicarious disqualification");
23 see also Lucent, 2007 WL 1461406, at *2 ("California courts generally have not allowed a law
24 firm to avoid vicarious disqualification by implementing a screening procedure"); Laryngeal, 2008
25 WL 558561, at *7 ("When an attorney is disqualified due to a relationship that amounts to prior
26 representation on the same lawsuit, then the entire firm is disqualified") (citing Flatt v. Superior
27 Court, 9 Cal. 4th 275 (1994)); Henriksen, 11 Cal. App. 4th at 113-114 ("As a general rule in
28
04558.23511/4317865.4
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1 California, where an attorney is disqualified from representation, the entire law firm is vicariously
2 disqualified as well"); SpeeDee, 20 Cal. 4th at 1146 ("A presumption that an attorney has access to
3 privileged and confidential matters relevant to a subsequent representation extends the attorney's
4 disqualification vicariously to the attorney's entire firm."). Under established California law,
5 Mr. Chambers' serious conflict of interest mandates vicarious disqualification of the entire
6 McKool Smith law firm, and no effort to erect an ethical wall can change that.
7 "Even if California law permitted ethical walls to prevent disqualification of other
8 attorneys in a law firm, [] Court[s] would not extend that exception to th[e] case where the lawyers
9 are in the same [] office and the clients are opponents in the same patent litigation." Laryngeal,
10 2008 WL 558561, at *7 (citing In re County of Los Angeles, 223 F.3d 990 (9th Cir. 2000)
11 ("SpeeDee Oil was the kind of case most likely to give rise to automatic disqualification because
12 the same firm represented adverse parties in the same litigation")); see also City of Nat'l Bank v.
13 Adams, 96 Cal. App. 4th 315, 327-28 (2002) (even if limited exception available, it does not apply
14 to adverse representation on same matter); Analytica, Inc. v. NPD Research, Inc., 708 F.2d 1263,
15 1267 (7th Cir. 1983) (ethical wall exception is not available when "the firm itself changed sides");
16 Henriksen, 11 Cal. App. 4th at 111-15 (1992) (imputed disqualification was "clear cut" when new
17 associate had worked on same case but had been screened, despite hardship of hiring new counsel
18 on eve of trial). Hence, even if California were going to permit use of ethical walls in certain
19 circumstances, the entire McKool Smith law firm must still be disqualified from representing
20 Spotify because Mr. Chambers represented PacketVideo in this very same action—a classic and
21 clearly impermissible case of switching sides.
22 IV. CONCLUSION
23 For the foregoing reasons, PacketVideo respectfully asks that the Court grant this Motion
24 to Disqualify the entire McKool Smith law firm, and enter an order forbidding McKool Smith
25 from representing Spotify in this litigation, from consulting or sharing any work product with
26
27
28
04558.23511/4317865.4
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1 Spotify's new counsel, or from otherwise directly or indirectly assisting Spotify in its defense of
2 this lawsuit in any way.
3
4 DATED: September 6, 2011 QUINN EMANUEL URQUHART &
SULLIVAN, LLP
5
6
7 By /s/ Christopher A. Mathews
Christopher A. Mathews
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04558.23511/4317865.4
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1 CERTIFICATE OF SERVICE
2 The undersigned hereby certifies that a true and correct copy of the foregoing document
3 has been served on September 6, 2011 to all counsel of record who are deemed to have consented
4 to electronic service via the Court's CM/ECF system per Fed. R. Civ. P. 5(b)(3) and Civil Local
5 Rule 5.4. Any other counsel of record will be served by electronic mail, facsimile and/or
6 overnight delivery.
7
8
9
10 /s/ Christopher A. Mathews
11 Christopher A. Mathews
chrismathews@quinnemanuel.com
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04558.23511/4317865.4
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EXHIBIT F
Case 3:11-cv-01659-IEG-WMC Document 32 Filed 09/28/11 Page 1 of 1
1
2
3
4
5
6
8 SOUTHERN DISTRICT OF CALIFORNIA
9
PACKETVIDEO CORPORATION, a CASE NO. 11cv1659 - IEG (WMc)
10 Delaware corporation,
ORDER GRANTING MOTION
11 Plaintiff, FOR WITHDRAWAL
12 [Doc. No. 30]
vs.
13
SPOTIFY USA INC., a Delaware
14 corporation; SPOTIFY LIMITED, a United
Kingdom corporation; and SPOTIFY
15 TECHNOLOGY SARL, a Luxembourg
corporation,
16
Defendants.
17
18
Presently before the Court is Defendants’ motion to withdraw Mike McKool Jr., Bradley
19
W. Caldwell, Justin Nemunaitis and the law firm McKool Smith P.C. as counsel for Defendants.
20
[Doc. No. 30.] The motion notes that Scott J. Ferrell, James B. Hardin, and the law firm Newport
21
Trial Group will continue as counsel for Defendants. Pursuant to Civil Local Rule 83.3(g) and for
22
good cause shown, the Court GRANTS Defendant’s motion.
23
IT IS SO ORDERED.
24
DATED: September 28, 2011 _________________________________
______
_ ________
_____
_ _____
____
____
____
____
_____
_ __
_____
__
__
25
IRMA E. GONZALEZ, Chief Ch
C hief Judge
Judg
dge
dg
26 United
i States
S District
i i C Court
27
28
-1- 11cv1659
Tel. 213-612-3737 / Fax. 213-612-3773
5
Tel. 213-785-6130 / Fax. 213-254-9001
8
Frank Reginald Brown, IV
10
11 SUPERIOR COURT OF THE STATE OF CALIFORNIA
12 FOR THE COUNTY OF LOS ANGELES
13
14 FRANK REGINALD BROWN, IV, CASE NO: BC501483
15 Plaintiff, Assigned for all purposes to the Honorable John
L. Segal (Dept. 50)
16 v.
17 SNAPCHAT, INC., a Delaware corporation; PLAINTIFF’S RESPONSES TO
TOYOPA GROUP, LLC, a California Limited DEFENDANTS’ OBJECTIONS TO
18 PLAINTIFF’S EVIDENCE IN SUPPORT
Liability Company; EVAN THOMAS
OF MOTION TO DISQUALIFY
19 SPIEGEL, an individual; ROBERT DEFENDANTS’ COUNSEL QUINN
CORNELIUS MURPHY, an individual; and EMANUEL URQUHART & SULLIVAN
20 DOES 1 through 10 inclusive, LLP
21 Defendants. [Plaintiff’s Reply in Further Support of Motion
to Disqualify, Objections to Declarations of
22
Joseph C. Sarles and Robert Kehr, and Request
23 For Judicial Notice filed concurrently herewith]
24
Hearing:
25 Date: August 1, 2013
Time: 8:30 a.m.
26 Dept.: 50
27
Action Filed: February 21, 2013
28 Trial Date: Not Assigned Yet
RESPONSES TO OBJECTIONS TO PLAINTIFF’S EVIDENCE ISO MOTION TO DISQUALIFY

1 OBJECTIONS AND RESPONSES TO OBJECTIONS TO COURT’S
DECLARATION OF FRANK REGINALD BROWN IV RULING
2 MATERIAL GROUNDS FOR RESPONSE TO RULING ON
3 OBJECTED TO: OBJECTION: OBJECTION: OBJECTION:
Brown Decl., ¶ 6: The Cal. Evid. Code § Cal. Evid. Code § 1523 states
4 only communication that 1523 (testimony that oral testimony is not Sustained: ___
took place regarding this not admissible to admissible to prove the content Overruled: ___
5 document was a short prove the content of a writing. Mr. Brown’s
email from Mr. Alden of a writing). statement is not used or
6
summarizing the Although Brown intended to prove the content
7 document in which he possesses this of the email. Rather, Plaintiff
downplayed the document, he did cites ¶ 6 for the proposition
8 potential of any conflict not provide it. that the communication was
by characterizing the Defendants the only one regarding an
9 possibility of Quinn submitted it as advance waiver. Regardless,
10 Emanuel taking an Exhibit A to the Plaintiff does not object to the
adverse interest to me Alden Declaration. email submitted as Exhibit A
11 down the road as to the Alden Declaration,
“unlikely.” He also which reflects exactly what
12 assured me that the Plaintiff states in ¶ 6 of his
likelihood of this ever declaration.
13 happening is [sic]
14 “small” and this was just
“a precaution we need to
15 take.”
Brown Decl., ¶ 10: Cal. Evid. Code § Cal. Evid. Code § 1523 states
16 During the above oral 1523 (testimony that oral testimony is not Sustained: ___
and written not admissible to admissible to prove the content Overruled: ___
17 communications, Mr. prove the content of a writing. Mr. Brown’s
18 Alden and I discussed in of a writing). To statement is not used or
detail the strengths and the extent Brown’s intended to prove the content
19 weakness of my case. In testimony is of any writings. Rather,
addition, our discussions characterizing the Plaintiff cites ¶ 10 for the
20 involved many content of email general proposition of what
important and strategic communications, it was discussed between him
21
issues related to the is inadmissible. and Mr. Alden. Moreover,
22 litigation. Mr. Alden Defendants do not contest the
offered his suggestions accuracy of Plaintiff’s
23 and gave me legal advice statement in ¶ 10.
accordingly. In addition,
24 Mr. Alden and I
discussed my finances
25
and how costs of
26 litigation would be
handled with respect to
27 Quinn Emanuel.
28

1
DECLARATION OF FRANK REGINALD BROWN IV RULING
Brown Decl., ¶ 12: On Cal. Evid. Code §
Cal. Evid. Code § 1523 states
4 or about December 12, 1523 (testimony
that oral testimony is not Sustained: ___
2012 I informed Mr. not admissible to
admissible to prove the content Overruled: ___
5 Alden that an article had prove the content
of a writing. Mr. Brown’s
been published of a writing). To
statement is not used or
6
indicating that the extent Brown’s
intended to prove the content
7 Benchmark Capital was testimony is of any writings. Rather,
funding Snapchat. characterizing the
Plaintiff cites ¶ 12 for the
8 content of email
general proposition that he
communications, it
informed Mr. Alden of an
9 is inadmissible.
article. Moreover, Defendants
10 do not contest the accuracy of
Plaintiff’s statement in ¶ 12.
11 Brown Decl., ¶ 14: On Cal. Evid. Code § Cal. Evid. Code § 1523 states
or about January 10, 1523 (testimony that oral testimony is not Sustained: ___
12 2013, after over two not admissible to admissible to prove the content Overruled: ___
months of consideration prove the content of a writing. Mr. Brown’s
13 and multiple confidential of a writing). To statement is not used or
14 communications, Mr. the extent Brown’s intended to prove the content
Alden informed me via testimony is of any writings. Rather,
15 email that Quinn characterizing the Plaintiff cites ¶ 14 for the
Emanuel would not content of email general proposition that Alden
16 represent me “at the communications, it informed Plaintiff he could not
current time.” is inadmissible. represent him. Moreover,
17 Defendants do not contest the
18 accuracy of Plaintiff’s
statement in ¶ 14.
19
20
OBJECTIONS AND RESPONSES TO OBJECTIONS TO COURT’S
21 DECLARATION OF K. LUAN TRAN RULING
MATERIAL GROUNDS FOR RESPONSE TO RULING ON
22
OBJECTED TO: OBJECTION: OBJECTION: OBJECTION:
23 Tran Decl., ¶ 6: Below Cal. Evid. Code § Defendants do not dispute the
is a sample of the 1523 (testimony Sustained: ___
accuracy of Mr. Tran’s
24 evidence unearthed so not admissible to characterizations of the Overruled: ___
far in this initial phase of prove the content documents in ¶ 6. Moreover,
25 discovery:…[and all of a writing); Cal. Mr. Tran attaches to his
26 bullet points that follow] Evid. Code § 1200 Declaration all of the
et seq. (hearsay); documents summarized as
27 Cal. Evid. Code Exhibit C.
Cal. Evid. Code §§
28 403, 702 (lacks
foundation).

2
DECLARATION OF K. LUAN TRAN RULING
Counsel’s
4 numerous
unsupported
5 factual assertions
in this paragraph
6
lack foundation.
7 His argumentative
characterizations
8 of newspaper
articles,
9 documents and
10 statements by
other people are
11 inadmissible
hearsay and violate
12 the best evidence
rule. The
13 documents, if they
14 are admissible at
all, speak for
15 themselves.
Tran Decl., Exhibit C. Cal. Evid. Code § Contrary to Defendants
16 1200 et seq. assertions, there are no Sustained: ___
(hearsay); Cal. newspaper articles attached as Overruled: ___
17 Evid. Code § 356 Exhibit C. Rather, Exhibit C
18 (completeness). comprises emails and text
The newspaper messages. Under Cal. Evid.
19 articles in Exhibit Code § 1220, evidence of a
C are all entirely statement is not made
20 inadmissible inadmissible by the hearsay
hearsay. The text rule when offered against the
21
message of declarant in an action to which
22 purported he is a party in either his
statements by a individual or representative
23 third party, John capacity. All of these
Spiegel, are communications involve
24 inadmissible Defendants and therefore
hearsay. The text admissible as party
25
messages between admissions.
26 plaintiff and
defendant
27 Spiegel are
misleadingly
28
incomplete.

3
Tran Decl., ¶ 8 and Cal. Evid. Code § Exhibit D is not hearsay
4 Exhibit D. 1200 et seq. Sustained: ___
because it is not offered for the
(hearsay). truth of matter asserted. Overruled: ___
5 This exhibit Rather, Plaintiff cites the
6 consists entirely of
article for the proposition that
in admissible it was published. See Motion
7 hearsay statements at 6:20-22 (“On or about
in a newspaper December 12, 2012, Plaintiff
8 article. Counsel’s informed Mr. Alden that an
hearsay article had been published
9 characterization ofindicating that Benchmark
10 the newspaper Capital was funding Snapchat.
article is likewiseId. ¶ 12; see also Tran Dec.,
11 inadmissible. Exh. D.”). Moreover,
Defendants do not dispute the
12 accuracy of any of the
13 statements in Exhibit D.
Tran Decl., ¶ 9 – In Cal. Evid. Code §§ Plaintiff cites ¶ 9 of the Tran
light of the foregoing 403, 702 (lacks Sustained: ___
14 Declaration for the proposition
and Plaintiff’s clear foundation); Cal. that “[u]pon learning about Overruled: ___
15 attorney-client Evid. Code § 310 Quinn Emanuel’s retention,
relationship with the (legal conclusion). Plaintiff immediately called
16 Quinn Emanuel firm…. Counsel’s claim for a one week standstill of
17 that plaintiff had a litigation to allow the parties to
“clear investigate the conflict and
18 attorney-client determine whether the issue
relationship” with could be resolved without
19 Quinn Emanuel disqualification proceedings.
20 lacks foundation Tran Dec., ¶ 9. The parties
and is an improper then conducted two
21 legal conclusion. unsuccessful mediation
Moreover, it also sessions and agreed to another
22 contradicts the standstill until June 20, 2013.
Waiver plaintiff Id.” Motion at 8:12-16.
23 signed, which Defendants do not dispute this
24 expressly fact.
disclaims an
25 attorney-client
relationship. See
26 Van Dalsem Decl.,
Ex. B.
27
Tran Decl., ¶ 10 – Cal. Evid. Code §§ Plaintiff cites ¶ 9 of the Tran
stating that Quinn 403, 702 (lacks Declaration for the proposition Sustained: ___
28
Emanuel were plaintiff’s foundation); Cal. that “[a]t the June 19, 2013 Overruled: ___

4
“former attorneys”. Evid. Code § 310 Case Management
4 (legal conclusion). Conference, the parties agreed
Counsel’s claim to stay this action so that
5 that Quinn Plaintiff can move to
Emanuel firm disqualify his former
6
acted as plaintiff’s attorneys, Quinn Emanuel. Id.
7 “former attorneys” ¶ 10.” Motion at 8:16-18.
lacks foundation Defendants do not dispute this
8 and is an improper fact.
legal conclusion.
9 Moreover, it
10 contradicts the
Waiver plaintiff
11 signed, which
expressly
12 disclaims an
attorney-client
13 relationship. See
14 Van Dalsem Decl.,
Ex. B.
15 Tran Decl., ¶ 12 and Cal. Evid. Code § Exhibit F is not hearsay
Exhibit F 1200 et seq. Sustained: ___
because it is not offered for the
16 (hearsay). truth of matter asserted. Overruled: ___
This exhibit Rather, Plaintiff cites the
17 consists entirely of article for the proposition that
18 in admissible certain things stated in a news
hearsay statements article, not that the statements
19 in a newspaper therein are true. See Motion at
article. Counsel’s 3 n.1 (“This week, it was
20 hearsay announced that Snapchat
characterization of received another $80
21
the newspaper million from institutional
22 article is likewise investors at a valuation
inadmissible. approaching $1 billion. Tran
23 Decl., ¶ 12, Exh. F. It was also
announced that Defendants
24 Spiegel and Murphy each
pocketed $10 million from
25
these investors. Id.”).
26
27
28

5
1 DATED: July 25, 2013 LEE TRAN & LIANG APLC
2
3
4 By
K. Luan Tran
5 James M. Lee
Cyrus Khojandpour
6 Lisa Chin

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6

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1 LEE TRAN & LIANG APLC

K. Luan Tran (SBN 193808)

12 FOR THE COUNTY OF LOS ANGELES

15 Plaintiff, Assigned for all purposes to the Honorable John

17 SNAPCHAT, INC., a Delaware corporation; PLAINTIFF’S REPLY IN SUPPORT OF

REPLY ISO PLAINTIFF’S MOTION TO DISQUALIFY DEFENDANTS’ COUNSEL

REPLY ISO PLAINTIFF’S MOTION TO DISQUALIFY DEFENDANTS’ COUNSEL

16 received confidential information may still be disqualified even if no formal attorney-client

REPLY ISO PLAINTIFF’S MOTION TO DISQUALIFY DEFENDANTS’ COUNSEL

REPLY ISO PLAINTIFF’S MOTION TO DISQUALIFY DEFENDANTS’ COUNSEL

REPLY ISO PLAINTIFF’S MOTION TO DISQUALIFY DEFENDANTS’ COUNSEL

REPLY ISO PLAINTIFF’S MOTION TO DISQUALIFY DEFENDANTS’ COUNSEL

20 RAY A. MANDLEKAR, ATTORNEY AT LAW

OBJECTIONS TO SARLES DECLARATION ISO OPPOSITION TO PLAINTIFF’S MOTION TO DISQUALIFY

OBJECTIONS TO SARLES DECLARATION ISO OPPOSITION TO PLAINTIFF’S MOTION TO DISQUALIFY

OBJECTIONS TO SARLES DECLARATION ISO OPPOSITION TO PLAINTIFF’S MOTION TO DISQUALIFY

OBJECTIONS TO SARLES DECLARATION ISO OPPOSITION TO PLAINTIFF’S MOTION TO DISQUALIFY

OBJECTIONS TO SARLES DECLARATION ISO OPPOSITION TO PLAINTIFF’S MOTION TO DISQUALIFY

OBJECTIONS TO SARLES DECLARATION ISO OPPOSITION TO PLAINTIFF’S MOTION TO DISQUALIFY

OBJECTIONS TO SARLES DECLARATION ISO OPPOSITION TO PLAINTIFF’S MOTION TO DISQUALIFY

OBJECTIONS TO SARLES DECLARATION ISO OPPOSITION TO PLAINTIFF’S MOTION TO DISQUALIFY

27 Attorneys for Plaintiff

OBJECTIONS TO SARLES DECLARATION ISO OPPOSITION TO PLAINTIFF’S MOTION TO DISQUALIFY

OBJECTIONS TO KEHR DECLARATION ISO OPPOSITION TO PLAINTIFF’S MOTION TO DISQUALIFY

2 Kehr in Support of Defendants’ Opposition to Motion to Disqualify (“Kehr Declaration” or “Kehr

19 As a general rule, the opinion of an expert is admissible when it is “[r]elated to a subject

16 limited cases. As explained in Downer:

OBJECTIONS TO KEHR DECLARATION ISO OPPOSITION TO PLAINTIFF’S MOTION TO DISQUALIFY

6 INADMISSIBLE LEGAL OPINION.

24 The existence of a lawyer-client relationship is not determined

OBJECTIONS TO KEHR DECLARATION ISO OPPOSITION TO PLAINTIFF’S MOTION TO DISQUALIFY

OBJECTIONS TO KEHR DECLARATION ISO OPPOSITION TO PLAINTIFF’S MOTION TO DISQUALIFY

9 RAY A. MANDLEKAR, ATTORNEY AT LAW

OBJECTIONS TO KEHR DECLARATION ISO OPPOSITION TO PLAINTIFF’S MOTION TO DISQUALIFY

REQUEST FOR JUDICIAL NOTICE IN SUPPORT OF PLAINTIFF’S MOTION TO DISQUALIFY

18 California [Doc. 128].

26 Central District of California [Doc.9416].

REQUEST FOR JUDICIAL NOTICE IN SUPPORT OF PLAINTIFF’S MOTION TO DISQUALIFY

2 Court, Central District of California [Doc. 9531].

4 Quinn Emanuel on September 7, 2011in Packetvideo Corporation v. Spotify USA Inc.,

6 District of California [Doc. 16].

8 order granting the McKool Smith firm’s Motion to Withdraw in Packetvideo

10 United States District Court, Southern District of California [Doc. 32].

18 RAY A. MANDLEKAR, ATTORNEY AT LAW

REQUEST FOR JUDICIAL NOTICE IN SUPPORT OF PLAINTIFF’S MOTION TO DISQUALIFY

1 QUINN EMANUEL URQUHART & SULLIVAN, LLP

UNITED STATES DISTRICT COURT

CHRISTOPHER O'SHEA, GISELE CASE NO. CV 09-8063 PSG (CWx)

Filing Date: August 28, 2009

Case No. CV 09-8063 PSG (CWx)

1 Defendants Epson America, Inc. and Epson Accessories, Inc. ("Epson")

I. THE KEHR DECLARATION OFFERS IMPROPER LEGAL

1 QUINN EMANUEL URQUHART & SULLIVAN, LLP

Hearing Date: TBD

MA TTEL'S MOTION TO DlSOUALlFY GLA SER WElL

I TO ALL PARTIES AND THEIR COUNSEL OF RECORD:

9 Fremont Indemn. Co. v. Fremont Gen. Corn.,

I Openwave Sys. v. 724 Solutions (US) Inc.,

I MEMORANDUM OF POINTS AND AUTHORITIES

I access to confidential information is presumed, and disqualification is mandatory.

I jettisoned by a single, nonbinding decision of the Court of Appeal would be sorely

I II. NONE OF THE OTHER ARGUMENTS GLASER WElL MAKES

1 QUINN EMANUEL URQUHART & SULLIVAN, LLP

16^' vs. REPLY IN SUPPORT QF MOTION

PAGE _r__. _ _..-