## Facts

- Andrew Corporation manufactured wireless infrastructure components, including cable transmission line hangers and related accessories.
- Beverly Manufacturing Company produced competing cable-hanger and grounding-clip products.
- After earlier disputes between the companies, attorneys who had represented Beverly joined Barnes & Thornburg LLP (B&T) through a merger, while B&T also continued representing Andrew on other matters.
- Following the merger, Beverly retained B&T attorneys to provide written opinions addressing alleged infringement of Andrew’s patents relating to cable hangers and grounding kits.
- B&T lawyers issued three opinion letters concluding Beverly’s products did not infringe and/or that Andrew’s patents were invalid or unenforceable; Beverly relied on the letters in continuing sales.
- B&T did not obtain Andrew’s informed consent to B&T’s concurrent, directly adverse work for Beverly on matters involving Andrew’s patents.
- Andrew later sued Beverly for patent infringement and alleged willful infringement; Beverly sought to use the opinion letters and attorney testimony to show good-faith noninfringement and negate willfulness.
- After the conflict was identified, B&T withdrew from representing both parties in the litigation.
- Andrew moved to exclude the opinion letters and to bar the B&T attorneys from testifying regarding the opinions.

## Issues

1. Whether a defendant may introduce advice-of-counsel opinion letters to rebut willfulness when the letters were prepared by a firm concurrently representing the plaintiff and the defendant in directly adverse, substantially related matters without informed consent.
2. Whether internal screening between lawyers within the same firm prevents exclusion of the conflicted opinion letters and related testimony.
3. What remedy best protects the duty of loyalty where evidence was generated through conflicted concurrent representation.

## Decision

- The court granted Andrew’s motion.
- The court excluded the three opinion letters from evidence.
- The court barred the B&T attorneys from testifying or otherwise supporting the opinions.
- The court rejected the argument that internal separation between attorney teams cured the conflict for purposes of using the letters.

## Legal Principles

- A law firm’s concurrent representation of directly adverse clients in the same or substantially related matter, without informed consent, violates the duty of loyalty.
- Screening within a firm does not cure a concurrent-representation conflict where the harm is loyalty-based rather than limited to misuse of confidential information.
- Evidence generated through a breach of the duty of loyalty may be excluded to prevent a litigation advantage derived from conflicted representation.
- Advice-of-counsel evidence offered to negate willfulness may be unavailable when the underlying legal advice was produced under an unwaived conflict.

## Conclusion

The court barred Beverly from using opinion letters and related attorney testimony to contest willfulness because the opinions were created during unconsented, directly adverse concurrent representation, and an internal screen did not remove the taint of the loyalty breach.


Andrew Corp. v. Beverly Mfg. Co., 415 F. Supp. 2d 919 (N.D. Ill. 2006)