## Facts

- Maxell, Ltd. sued Apple Inc. for patent infringement in the Eastern District of Texas.
- Attorney Justin Park worked at Mayer Brown LLP and represented Maxell in litigation against Apple, giving him access to Maxell’s confidential information, attorney-client communications, and litigation strategy.
- Park later left Mayer Brown and joined DLA Piper LLP (US) (DLA), ending his work for Maxell.
- Before Park left Mayer Brown, his assistant emailed him files for other clients he expected to continue representing after the move. Those emails later proved to contain some confidential Maxell documents embedded within other client materials, sent inadvertently.
- At the time Park joined DLA, DLA was not representing Apple in the Maxell-Apple lawsuit.
- About six months later, Apple retained DLA in the lawsuit. Around that period, Park had a brief conversation with a DLA lawyer working on the Apple matter in which Park commented that Mayer Brown’s Maxell lawyers were good lawyers; Park said nothing else about Maxell.
- Mayer Brown attorney Jamie Beaber contacted Park about the conflict. Park stated he had not shared Maxell’s confidential information and agreed an ethical wall should be implemented separating him from any DLA work adverse to Maxell.
- DLA established an ethical wall restricting Park’s access and communications regarding Maxell and the lawsuit, and Park notified Beaber that the wall was in place. DLA then formally appeared for Apple.
- Maxell contended Park’s conflict required disqualification of DLA firm-wide and complained that it did not receive timely written notice of the wall and that the wall could not be trusted.
- Two months after DLA began representing Apple, DLA sent a letter to Mayer Brown describing the ethical-wall steps and confirming Park had not shared Maxell information with the Apple team.
- After continued objections, Park searched his emails for Maxell-related materials and discovered the earlier inadvertent emails containing Maxell confidential documents.
- Park immediately forwarded the materials to DLA’s general counsel and deleted his copies. DLA’s technology department reviewed access logs and concluded no one besides Park had accessed the emails.
- DLA notified Mayer Brown of the discovery and the technology department’s findings.
- With trial only weeks away, Maxell moved to disqualify DLA from representing Apple, arguing the wall was not properly implemented or documented and that Park’s possession of Maxell documents showed the wall was ineffective. DLA responded with affidavits from the Apple team stating they received no Maxell confidential information from Park.

## Issues

1. Whether DLA Piper should be disqualified from representing Apple because Justin Park previously represented Maxell in substantially related matters and joined DLA during the litigation.
2. Whether DLA’s ethical wall and supporting evidence (including attorney affidavits and technology access findings) were sufficient to prevent imputed disqualification despite Park’s inadvertent possession of Maxell confidential documents and complaints about notice.

## Decision

- The court denied Maxell’s motion to disqualify DLA Piper.
- The court treated Park as conflicted based on his prior work for Maxell, but focused on whether Maxell showed any actual or likely transmission or use of Maxell confidences by DLA’s Apple team.
- The court credited evidence that DLA implemented an ethical wall separating Park from the Apple matter and that DLA instructed Park not to communicate about Maxell or the case with the Apple team.
- The court relied on sworn statements from DLA’s Apple team that they received no confidential information from Park.
- The court found the inadvertent Maxell documents discovered in Park’s email did not justify disqualification where Park promptly reported and deleted them, and DLA’s technology review indicated no one else accessed the emails.
- The court considered the late timing of the motion, filed only weeks before trial, and the disruption and prejudice that disqualification would cause, and concluded the record did not justify that remedy.

## Legal Principles

- A lawyer who previously represented a client may not represent an opposing party in the same or a substantially related matter when the lawyer possesses material confidential information, absent informed consent.
- Disqualification is a discretionary remedy and is generally reserved for circumstances where the moving party shows a meaningful risk that confidential information will be used or the proceedings will be tainted.
- A lateral lawyer’s conflict is not necessarily imputed to the entire new firm when the firm timely installs effective screening measures and the record supports that confidential information was not shared with the team handling the adverse matter.
- Courts may consider affidavits from the screened lawyer and members of the litigation team, along with technical evidence about access to files or emails, in deciding whether confidential information likely crossed a screen.
- Delay in seeking disqualification, particularly close to trial, may weigh against disqualification because of the harm to the client’s choice of counsel and the court’s schedule.

## Conclusion

The court refused to disqualify DLA Piper because, although Park had previously represented Maxell against Apple, DLA set up an ethical wall separating him from the Apple matter, the evidence (including team affidavits and access-log findings) did not show Maxell confidences reached Apple’s DLA team, and the requested disqualification—raised only weeks before trial—would have imposed substantial disruption without a sufficient showing of taint.


Maxell, Ltd. v. Apple Inc., 2021 WL 1100098 (2021)