Massachusetts District Court Judge Indira Talwani reminded litigants that for lawyers to be conflicted out of a case, they must be on the other side of the “v” from a former client, not a former adversary, since the issue is ultimately whether counsel will be constrained from vigorous representation of their new client.  The order concerned a case where the plaintiff, Erik Cherdak, filed suit against Koko FitClub, LLC and Koko Fitness, Inc. (together, “Koko”) on September 3, 2013, alleging, among other things, infringement of U.S. Patent No. 8,118,709, directed towards retrieving, encrypting and storing exercise data from a workout machine to a personal device.  Earlier that same year, on January 15, 2013, Cherdak had sued Core Industries, Inc. in the Eastern District of Virginia, alleging copyright infringement.  Two attorneys from Cooley LLP represented Core Industries in the Virginia case.  Cherdak and Core Industries entered into a confidentiality agreement to aid in discussing settlement terms, and the Court entered a scheduling order that also included confidentiality protections for discovery materials. That case settled on June 10, 2013.

When Cooley was engaged to be Koko’s counsel in the Massachusetts action, Cherdak filed a motion to disqualify the firm, alleging that Cooley’s attorneys had received highly confidential information through their representation of Core that would “create a conflict of interest that materially limits their representation of Koko.”  Cherdak v. Koko FitClub LLC, No. 14-cv-10371-IT (D. Mass.), D.I. 86, at 3. Judge Talwani applied Rule 1.7(b) of the Massachusetts Rules of Professional Conduct, which the District of Massachusetts has adopted for attorneys practicing before it pursuant to LR, D. Mass. 83.6(4)(B), and which provides that lawyers may not represent a client if they “may be materially limited by [their] responsibilities to another client or to a third person” unless the lawyer “reasonably believes the representation will not be adversely affected; and [] the client consents after consultation.”  Id.  Judge Talwani found that Cooley’s lawyers were in full compliance, in large part because Cooley was not constrained in the actions it could take on Koko’s behalf.  Cherdak could not identify any specific actions that the Cooley attorneys were not able to take because of their knowledge of Cherdak’s confidential information, particularly actions which would prevent Cooley from pursuing Koko’s best interests.  Accordingly, Judge Talwani denied the motion.

But Cherdak did not stop there:  he subsequently filed a motion for reconsideration of Judge Talwani’s order, or in the alternative, a motion to certify the Court’s order as a “Final Order” so that he might appeal.  Judge Talwani denied this motion as well, finding that Cherdak’s arguments were inapposite because they relied on authority applying a different Massachusetts Rule of Professional Conduct.  So before drafting your next motion to disqualify, put yourself in the opposing side’s shoes:  what would you want your attorney to be able to do that he might be prevented from doing?