Hitachi, Ltd. v. Tatung Co.

MEMORANDUM AND ORDER RE: MOTION TO DISQUALIFY GREENBERG TRAURIG, LLP

Plaintiff, Hitachi, Ltd. (“Hitachi”), filed a complaint alleging that defendants, Ta-tung Co. and Tatung Co. of America, Inc. (collectively “Tatung”), infringed three Hitachi patents. Plaintiff now moves to disqualify defense counsel, Greenberg Trau-rig, LLP, on the ground that Greenberg’s representation of defendants constitutes a conflict of interest under Rule 3-310(E) of the Rules of Professional Conduct of the State Bar of California.

BACKGROUND

Hitachi alleges that Tatung infringed three Hitachi patents, U.S. Patent Nos. 6,247,090 (filed March 10, 1999), 6,513,088 (filed Dec. 8, 2000), and 6,549,970 (filed Dec. 8, 2000). Hitachi is represented by McDermott, Will & Emery LLP (“McDer-mott”).

Between December 2003 and November 2004, McDermott represented Hitachi in Top Victory Electronics, et al. v. Hitachi, Ltd., Case No. C 03-5792 WHA (N.D.Cal.)(dismissed on November 16, 2004 per settlement agreement)(“TVP case”). In the TVP case, Hitachi asserted the same three patents asserted in this lawsuit against Tatung. Hitachi claims that the accused products in the TVP case operate virtually identically to the…