Case: 12-129     Document: 21   Page: 1    Filed: 10/23/2012




          NOTE: This order is nonprecedentiaL

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                   IN RE DELL INC.,
                       Petitioner.


               Miscellaneous Docket No. 129


    On Petition for Writ of Mandamus to the United
States District Court for the District of Delaware in case
no. 11-CV-976, Judge Richard G. Andrews.


                     ON PETITION


 Before BRYSON, MOORE, and O'MALLEY, Circuit Judges.
O'MALLEY, Circuit Judge.

                       ORDER

    This is an unusual case involving whether a bar pre-
cluding an attorney from accessing confidential informa-
tion on the ground that he is a "competitive
decisionmaker" must be imputed to other members of his
law firm. Petitioner Dell, Inc., defendant in this patent
infringement action, seeks a writ of mandamus to direct
the United States District Court for the District of Dela-
ware to impose a protective order against the law firm of
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IN RE DELL INC.                                             2

Desmarais LLP. The plaintiff in the infringement action,
Round Rock Research, LLC, which is owned and operated
by the law firm's named partner John Desmarais, opposes
the petition.

                             I.

    United States Patent Nos. 6,088,816, 6,145,098,
6,199,173, 6,243,838, 6,266,721, 6425006, 6,553,416, and
6,681,342, which have all been asserted against Dell in
this case, were issued and assigned originally to Micron
Technology, Inc. In late 2008, Micron's former legal
counsel, Mr. Desmarais, established Round Rock and
purchased from Micron the '816, '098, '173, '838, '721,
'006, and '342 patents along with thousands of Micron's
other patents.

    In June 2011, Round Rock filed an action in the
United States District Court for the Eastern District of
Texas, charging Dell and another defendant with patent
infringement. That suit was soon followed by this action
against Dell in October 2011 in the United States District
Court for the District of Delaware.

    In both cases, Round Rock hired the Desmarais law
firm as counsel. That law firm, which has four additional
partners and approximately ten associates, provides legal
services relating to licensing, litigation, and patent prose-
cution for Round Rock and other clients.

    Soon after the actions were filed, the parties were di-
rected to conduct initial discovery. Because Dell consid-
ered some of the materials to be highly confidential
technical documents, it sought a protective order to pro-
hibit both Mr. Desmarais and his entire law firm from
accessing such materials.
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3                                           IN RE DELL INC

    The Texas court denied Dell's motion insofar as it
would prohibit the entire law firm from accessing discov-
ery materials. That court explained that, while Mr.
Desmarais's status as owner and operator of Round Rock
created an unacceptably high risk that his access to such
documents would lead to inadvertent disclosure or use
against Dell, Dell had provided no such basis to limit
access with regard to other members of the law firm. The
Texas court explained further that any potential risk of
disclosure would be outweighed by the actual harm to
Round Rock of not being represented by its counsel of
choice.

    Like the Texas court, the District of Delaware granted
the protective order only as to Mr. Desmarais himself.
The Delaware court concluded that "I don't think Dell is
close to proving that any of the other 0 Desmarais law-
yers are competitive-decisionmakers for Round Rock."
The court added that "[t]here is no evidence that they are
unaware of their obligations of confidentiality, or that
they perform any role other than that which outside
counsel traditionally perform." Citing the Texas court's
reasoning as additional grounds for rejecting Dell's re-
quest to bar the entire Desmarais law firm from accessing
its confidential information, the Delaware court denied
that portion of the motion.

    This petition for a writ of mandamus followed.

                            II.
    In previous cases, this court has held that mandamus
may be used to correct a denial of an order seeking to
protect confidential and sensitive information. See In re
United States, 669 F.3d 1333, 1336 (Fed. Cir. 2012); In re
Seagate Tech., LLC, 497 F.3d 1360, 1367 (Fed. Cir. 2007)
(en bane); see also In re Deutsche Bank Trust Co. Ams.,
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IN RE DELL INC.                                           4

605 F.3d 1373, 1377 (Fed. Cir. 2010). The standard for
obtaining mandamus relief, however, is an exacting one,
requiring the petitioner to establish that the district
court's decision amounted to a clear abuse of discretion or
judicial usurpation of power. See Cheney v. U.S. Dist.
Court, 542 U.S. 367, 380 (2004).

    Protective order provisions that disallow the use of
designated confidential information beyond the scope of
the litigation typically are sufficient to ensure protection
of sensitive business information. See In re Deutsche
Bank, 605 F.3d at 1378. In some limited circumstances,
however, this court has recognized that, even in the
presence of such protective measures, there are attorneys
that should be barred from access to confidential informa-
tion due to an unacceptable risk of or opportunity for
inadvertent disclosure. See id., 605 F.3d at 1378; Matsu-
shita Elec. Indus. Co., Ltd. v. United States, 929 F.2d
1577, 1578-79 (Fed. Cir. 1991); U.S. Steel Corp. v. United
States, 730 F.2d 1465, 1468 (Fed. Cir. 1984); see also
Brown Bag Software v. Symantec Corp., 960 F.2d 1465,
1470 (9th Cir. 1992). That doctrine arose out of this
court's decision in U.S. Steel, in which we acknowledged
the risk of inadvertent disclosure by some attorneys who
are involved in a client's "competitive decisionmaking,"
referring to "a counsel's activities, association, and rela-
tionship with a client that are such as to involve counsel's
advice and participation in any or all of the client's deci-
sions (pricing, product design, etc.) made in light of simi-
lar or corresponding information about a competitor." 730
F.3d at 1468 n.3.

    We need not decide the question of competitive deci-
sionmaker status in the present case. Round Rock stipu-
lated to treating Mr. Desmarais as such, and Mr.
Desmarais will not represent Round Rock as either in-
house or outside counsel in this case. Moreover, and more
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5                                            IN RE DELL INC

importantly for our purposes, Dell does not challenge the
district court's finding that the other attorneys from the
Desmarias law firm were not competitive decisionmakers
for Round Rock.

    Instead, Dell argues that the bar against Mr. Des-
marias must be imputed to his entire law firm. According
to Dell, Mr. Desmarais's obligation to refrain from access-
ing confidential information create a concurrent conflict of
interest under Rule 1.7(a)(2) of the Model Rules of Profes-
sional Conduct of the American Bar Association (Model
Rules). 1 That Model Rule provides in relevant part that a
concurrent conflict of interest exists if "there is a signifi-
cant risk that the representation of one or more clients
will be materially limited by the lawyer's responsibilities
to ... a third person[.]" Dell further argues that any
conflict of interest to Mr. Desmarais must be imputed to
every member of his law firm under Model Rule 1.10,
because there is a general presumption of shared confi-
dences among attorneys associated in a firm.

    Our prior cases dealing with competitive decisionmak-
ing are of no help to Dell because we have repeatedly
rejected denial of access on such general assumptions. In
U.S. Steel, for example, we rejected the trial court's denial
of access to information produced through discovery based
solely on the assumption that an in-house counsel was
more likely to disclose information, inadvertently or
otherwise, based on the pressure to remain with his or
her employer. Id. Likewise, in Matsushita, we held that
a bar to confidential information cannot rest solely on the

    1  The District of Delaware applies the Model Rules
"[s]ubject to modifications as may be required or permit-
ted by federal statute, court rule, or decision" to all attor-
neys practicing before it in civil matters." D. Del. LR
83.6(d).
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IN RE DELL INC.                                             6

counsel's regular contact with corporate executives. 129
F.2d at 1580. The sort of categorical presumption that
Dell relies on here by invoking the rule of imputation has
the same problem as the trial courts' stated assumptions
in U. S. Steel and Matsushita: the basis for barring access
to discovery materials is not grounded in the actual
"factual circumstances surrounding each individual
counsel's activities, association, and relationship with a
party." U.S. Steel, 730 F.2d at 1468.

     Nor is Dell in a strong position to argue that the ap-
plication of the Model Rules of professional responsibility
under Delaware law warrant granting this extraordinary
relief. On these facts, we do not see the application of
Rule 1.7 or, consequently, the application of Rule 1.10. It
is not as if Dell is seeking refuge in the Model Rules out of
fear that its confidential information will be used ad-
versely at trial, or to redress a breach of loyalty owed to it
by counsel. 2 In conceding that the Desmarias law firm
could continue to represent Round Rock without access to
Dell confidential information, Dell appears to take issue
more with its failure to show that others at the Desmarias
law firm are competitive decisionmakers with respect to
Dell than an application of the Model Rules. If there is
any concern here as far as the Model Rules go, it is be-
tween Round Rock and Mr. Desmarais, who will not have
access to Dell's confidential information and will not be
participating in this case as counsel. Dell has cited no
case establishing a general rule for barring an entire law
firm from access to discovery materials under remotely
similar circumstances, and we have found none.

    2   We do note that, while Mr. Desmarias has agreed
to refrain from acting as counsel for Round Rock in this
action, screening procedures are also appropriate to
ensure that Mr. Desmarias does not have access to Dell
confidential material.
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7                                            IN RE DELL INC

    Moreover, the question of what significance the Model
Rules should play in a case like this is primarily a ques-
tion for the trial court, not this court, to decide. See
generally United States v. Whittaker, 268 F.3d 185, 193-94
(3d Gir. 2001). The application of the Model Rules that
Dell endorses here is inconsistent with how some courts
have generally interpreted them, recognizing instead the
need to balance ethical concerns and the right to select
counsel of choice. See, e.g., United States v. Miller, 624
F.2d 1198, 1201 (3d Gir. 1980) (noting that courts should
"disqualify an attorney only when it determines on the
facts of the particular case, that disqualification is an
appropriate means of enforcing the applicable disciplinary
rule."); see also Federal Deposit Ins. Corp. v. United States
Fire Ins. Co., 50 F.3d 1304, 1314 (5th Gir. 1995) ("such
inflexible application of a professional rule is inappropri-
ate because frequently it would abrogate important
societal rights, such as the right of a party to his counsel
of choice and an attorney's right to freely practice her
profession."). The trial court judge is in a far better
position to assess those factors than are we. The trial
court balanced those factors against barring the entire
law firm from accessing discovery materials here, and
nothing presented to us on petition indicates that the
district court's assessment is so clearly flawed as to justify
granting mandamus.

    Accordingly,

    IT Is ORDERED THAT:

    The petition for a writ of mandamus is denied.
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IN RE DELL INC.                                          8
                                   FOR THE COURT


                                   /s/ Jan Horbaly
                                   Jan Horbaly
                                   Clerk

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