Judge Kinkeade Refuses To Disqualify Sterne Kessler from Representing Global Tel*Link

On September 18, 2017, Judge Kinkeade entered an Order (available here) in Securus v. Global Tel*Link. Securus had moved to disqualify Sterne Kessler from representing Global Tel. Before January 2017, Global Tel was represented by Kellogg Huber. Two Kellogg attorneys of record then left Kellogg and joined Sterne Kessler. Sterne Kessler and Kellogg presently represent Global Tel.

Securus moved to disqualify Sterne Kessler because it has some attorneys representing Global Tel against Securus in the instant litigation and other attorneys representing Global Tel in prosecuting Global Tel’s patents before the U.S. Patent & Trademark Office. Securus was concerned that GTL’s litigation counsel in this case has access to Securus’ confidential information, and that this confidential information might be transferred from such litigation attorneys to those working on USPTO proceedings and used to Securus’ detriment—e.g., used to draft claims on Securus’ products.

Global Tel, in response, asserted that Sterne Kessler need not be disqualified because neither Sterne Kessler nor the two Kellogg attorneys who left Kellogg to join Sterne Kessler had ever represented Securus, so none of them has any obligation under the ethical rules related to confidential information of a former client (since Securus was never a client in the first place). Global Tel further asserted that the case’s protective order and an ethical wall will be sufficient to prevent unauthorized access and use of Securus’ confidential information.

Judge Kinkeade found:

The Court agrees with GTL’s argument that [the two attorneys] do not technically have any duty to Securus as they would to a former client because they have never represented Securus. But the Court also recognizes the validity of Securus’ concerns regarding the safe-keeping and proper use of Securus’ confidential information obtained by GTL’s litigation counsel. [The two attorneys] have access to Securus’ confidential information through discovery in this matter; information GTL’s attorneys working on its patents and USPTO proceedings would not have. Certainly, the improper use of this information could harm Securus; however, access to an opposing party’s confidential information through litigation discovery is not an unusual situation, especially in patent litigation.

Protections for access and distribution of a party’s confidential information are controlled through the use of protective orders. . . . Th[e] [case’s] Agreed Protective Order places safeguarding restrictions on the dissemination and use of Securus’ confidential information disclosed in this litigation, including: (1) restrictions on who can access the information; (2) restriction requiring that the confidential material be used only in this litigation and in the other cases between these parties that are pending in this district; (3) restriction specifically preventing use of the information in any patent prosecution, reexamination, reissue, or review proceeding concerning any application or issue patent; (4) a patent prosecution bar preventing attorneys who have accessed confidential information from participating in GTL patent prosecution; and (5) a bar preventing attorneys who have accessed confidential information from participating in other patent review proceedings in which GTL would be able to amend claim language.

In addition to the protection already in place through the Agreed Protective Order, Sterne acknowledges that it has a duty to maintain the confidentiality of Securus’ information. Sterne also acknowledges a concern may be raised about its ability to comply with its duty because Sterne has some lawyers working on this GTL litigation and other Sterne lawyers working on other GTL matters. Sterne has already established an ethical wall to separate its litigation section from its prosecution and USPTO sections. The Court agrees with Sterne and GTL that this is a prudent practice that Sterne shall continue to use to protect Securus’ confidential information. The need to create and maintain this wall, however, does not come from an ethical rule that would disqualify Sterne. Sterne’s duty to do this comes from the Miscellaneous Order and Agreed Protective Order issued by this Court.

Accordingly, the Court denied the disqualification request but ordered Sterne Kessler to maintain its ethical wall to prevent unauthorized access to and use of Securus’ confidential information.

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