NOTE: This order is nonprecedential.
United States Court of Appeals for the Federal Circuit
2009-1171, -1558
OUTSIDE THE BOX INNOVATIONS, LLC (doing business as Union Rich USA),
Plaintiff/Counterclaim Defendant-
Cross-Appellant,
and
BONAKA LIMITED, BONAKA PLASTIC MANUFACTURING CO., LTD.,
UNION RICH PLASTIC FACTORY, LTD., CHRISTOPHER URE,
and MATT WILLIAMS,
Counterclaim Defendants-Appellees,
and
TERRY KINSKEY and LYNN MARTINEAU,
Counterclaim Defendants,
v.
TRAVEL CADDY, INC.
Defendant/Counterclaimant-
Appellant,
and
ROOSTER PRODUCTS (doing business as The Rooster Group),
Defendant/Counterclaimant.
Appeals from the United States District Court for the Northern District of Georgia
in case no. 1:05-CV-2482, Senior Judge Orinda D. Evans.
ON MOTION
Before MAYER, BRYSON, and DYK, Circuit Judges.
DYK, Circuit Judge.
ORDER
Outside the Box Innovations, LLC (doing business as Union Rich, USA)
(hereafter, "Union Rich") moves to disqualify the law firm of King & Spalding from
representing Travel Caddy, Inc. in this appeal. Travel Caddy opposes. Union Rich
replies. Travel Caddy moves for leave to file a surreply.
BACKGROUND
This motion stems from a declaration submitted in the district court by Anthony B.
Askew, Esq. as an expert witness in support of Union Rich’s motion for attorney fees.
According to the papers submitted, Askew was and still is a partner in the law firm of
King & Spalding. In his declaration, Askew opined that the requested amount of
attorney fees requested by Union Rich was reasonable, based on his experience.
Travel Caddy opposed Union Rich's motion for attorney fees and challenged the
strength of and analysis in Askew’s declaration. Ultimately, although the district court
had found there was inequitable conduct and that the case was exceptional, the district
court denied the request for attorney fees because "it would not be 'grossly unjust' to
require Union Rich to bear the burden of its own counsel." The district court stated that
"[a]s a result of the conduct of both parties, this litigation has been protracted and
contentious. Under such circumstances, this Court finds that it is best 'to leave the
parties where it finds them,' and it is within the Court's discretion to do so. Propat Int'l
Corp. v. RPost, Inc., 473 F.3d 1187, 1195 (Fed. Cir. 2007)."
After the conclusion of the trial court’s proceedings and filing of the notice of
appeal, Travel Caddy selected three attorneys from King & Spalding to represent Travel
Caddy during the course of this appeal. Union Rich filled this motion, contending that
2009-1171, -1558 2
Travel Caddy and Union Rich’s interests are materially adverse, that King & Spalding’s
attorneys have “switched sides” without the knowledge and consent of the parties, and
that the firm should be disqualified under the principle of imputed disqualification.
DISCUSSION
The parties present the issue as whether, under the Georgia Rules of
Professional Conduct (GRPC), a law firm is disqualified from accepting representation
of a client on appeal because one of the firm’s attorneys was an expert witness in the
same matter on behalf of another party with adverse interests. The parties devote most
of their arguments to whether or not Askew created an attorney-client relationship with
Union Rich. Although we doubt that there was an attorney-client relationship between
Union Rich and Askew, merely because he served as an expert witness regarding the
amount of fees, we focus our attention on a matter raised by Union Rich which requires
that King & Spalding be disqualified.
GRPC 1.7 ("Conflict of Interest: General Rule") provides:
(a) A lawyer shall not represent or continue to represent a client if there is
a significant risk that the lawyer's own interests or the lawyer's duties to
another client, a former client, or a third person will materially and
adversely affect the representation of the client, except as permitted in (b).
(b) If client consent is permissible a lawyer may represent a client
notwithstanding a significant risk of material and adverse effect if each
affected or former client consents, preferably in writing, to the
representation after:
(1) consultation with the lawyer,
(2) having received in writing reasonable and adequate information
about the material risks of the representation, and
(3) having been given the opportunity to consult with independent
counsel.
2009-1171, -1558 3
(c) Client consent is not permissible if the representation:
(1) is prohibited by law or these rules;
(2) includes the assertion of a claim by one client against another
client represented by the lawyer in the same or substantially related
proceeding; or
(3) involves circumstances rendering it reasonably unlikely that the
lawyer will be able to provide adequate representation to one or
more of the affected clients.
Union Rich states that it will be arguing in its opening brief as cross-appellant
"that the conduct of their counsel below was necessary and proper under the totality of
the circumstances and will rely, at least in part, on the K & S testimony provided by Mr.
Askew." Thus, to properly represent the interests of Travel Caddy, the lawyers from
King & Spalding would need to consider whether to challenge the sufficiency of Askew's
expert opinion in this appeal. Members of the firm may not be able to provide adequate
representation on that issue without challenging Askew's opinion. We note that prior
counsel for Travel Caddy did specifically challenge the sufficiency of Askew's expert
opinion before the district court. The question whether King & Spalding should
challenge the expert opinion of one of King & Spalding's partners in our view would
materially and adversely affect the firm's representation of Travel Caddy on appeal. We
determine that Rule 1.7(a) is applicable. There has been no showing that Travel Caddy
waived the conflict pursuant to GRPC 1.7(b), even assuming that the conflict is one that
can be waived. For example, there is no written waiver included in the submissions;
there has been no showing that Travel Caddy "received in writing reasonable and
adequate information about the material risks of the representation"; or that Travel
Caddy was "given the opportunity to consult with independent counsel." GRPC 1.7(b).
2009-1171, -1558 4
Thus, pursuant to GRPC 1.7, King & Spalding may not represent Travel Caddy in this
appeal.
Accordingly,
IT IS ORDERED THAT:
(1) The motion for disqualification is granted. New counsel for Travel Caddy
must enter an appearance within 30 days of the date of filing of this order.
(2) The motion for leave to file a surreply is granted.
(3) The appellant's opening brief is due within 60 days of the date of filing of
this order.
FOR THE COURT
February 1, 2010 /s/ Jan Horbaly____________
Date Jan Horbaly
Clerk
cc: J. Rodman Steele, Jr., Esq.
Joel D. Myers, Esq.
Jeffrey D. Mills, Esq.
s19
2009-1171, -1558 5