## Facts

- Silicon Graphics, Inc. (SGI) sued ATI entities for patent infringement; the case narrowed to claims involving U.S. Patent No. 6,650,327 after trial and appeal.
- During the litigation, David Leichtman (then a partner at Morgan, Lewis & Bockius LLP) worked for SGI on the same case in 2006–2007, including discovery and issues related to inequitable conduct and damages.
- While the appeal was pending, Leichtman lateraled to Robins, Kaplan, Miller & Ciresi LLP, which represented ATI in the litigation through its Minneapolis office.
- Before Leichtman began at Robins Kaplan, the firm implemented a screen: attorneys were instructed not to discuss the case with or around Leichtman; he was denied access to case records; he was told not to provide any information; and he would receive no fees attributable to the matter.
- Declarations from Leichtman and ATI’s litigation team stated there were no case discussions with him and he had not reviewed case files; a computer analysis indicated he had not accessed electronic case materials.
- After remand from the Federal Circuit for further proceedings on infringement, SGI moved to disqualify Robins Kaplan, arguing Leichtman’s prior representation created an uncured conflict and that screening was insufficient.

## Issues

1. Whether federal law or state professional-conduct rules govern a motion to disqualify counsel in a federal patent case.
2. Whether Robins Kaplan should be disqualified where a lateral attorney previously represented the opposing party in the same matter, and whether the firm’s screen rebutted any imputed-conflict presumption.

## Decision

- The court denied SGI’s motion to disqualify Robins Kaplan.
- The court applied federal standards governing attorney conduct and disqualification in federal-question litigation.
- The court found Robins Kaplan’s screen timely and effective and found no evidence of disclosure or use of SGI confidential information.
- The court also denied a request for oral argument and permitted supplemental filings aimed at confirming continued noninvolvement.

## Legal Principles

- Federal courts have inherent authority to supervise attorneys appearing before them; in federal-question cases, disqualification is decided under federal standards rather than state ethics rules as binding law.
- Disqualification is an exceptional remedy and should be imposed only when necessary to protect the integrity of the proceeding.
- When a lawyer switches firms and the new firm represents an adverse party in the same matter, a presumption of shared confidences may arise, but firm-wide disqualification may be avoided if the presumption is rebutted through effective screening.
- An ethical screen may be sufficient even when the lateral attorney performed substantial work for the former client, if the screen is implemented promptly and prevents access, communication, and financial participation in the matter.
- The absence of evidence of screen breach or actual disclosure, combined with concrete screening steps (access restrictions, instructions, geographic separation, and sworn declarations), weighs against disqualification, particularly where disqualification would significantly prejudice the current client.

## Conclusion

The court refused to disqualify ATI’s counsel because federal disqualification standards permitted reliance on a timely, documented ethical screen that prevented the lateral attorney from accessing or sharing SGI confidences, and SGI offered no evidence that the screen failed or that its confidential information was at risk.


Silicon Graphics, Inc. v. ATI Techs., Inc., 741 F. Supp. 2d 970 (W.D. Wis. 2010)