By Eric Schweibenz
On January 11, 2010, ALJ Robert K. Rogers, Jr. issued the public version of Order No. 10 (dated December 10, 2009) in Certain Printing and Imaging Devices and Component Thereof (Inv. No. 337-TA-690) denying Complainants Ricoh Company, Ltd. and Ricoh Electronics, Inc.’s (collectively “Ricoh”) motion to disqualify the law firm of Nagashima & Hashimoto (“N&H”) from representing Respondents Oki Data Corporation and Oki Data Americas, Inc. (collectively “Oki Data”).

In support of its motion, Ricoh asserted that N&H’s representation of Oki Data in the investigation violated ABA Model Rules 1.7 and 1.9 regarding concurrent and former representation, respectively.  In particular, Ricoh asserted that Mr. Nagashima, an attorney affiliated with the law firm, “has been Ricoh’s lawyer handling patent, licensing, and antitrust matters and now seeks to represent Oki Data in a matter where he would be directly adverse to Ricoh” and that Mr. Nagashima’s work for Ricoh is substantially related to his current representation of Oki Data.  In opposition, Oki Data asserted that Ricoh consented to Mr. Nagashima’s representation of Oki Data in this investigation and that the work he performed for Ricoh was not related to the subject matter of this investigation.  The Commission Investigative Staff supported Ricoh’s motion asserting that ABA Model Rule 1.9 was violated because “Mr. Nagashima’s antitrust and licensing work for Ricoh is substantially related to his current representation of Oki Data” and “the prejudice to Ricoh caused by Mr. Nagashima’s participation in this investigation outweighs the prejudice to Oki Data from being deprived of its counsel of choice.”

According to the Order, ALJ Rogers determined that in order to succeed on its motion, Ricoh was required to demonstrate by clear and convincing evidence that disqualification was warranted.  In ruling with respect to ABA Model Rule 1.9, ALJ Rogers found that Mr. Nagashima’s work for Ricoh “is substantially similar to the subject matter of the investigation.”  In reaching that determination, ALJ Rogers rejected Mr. Nagashima’s testimony regarding the nature of his work for Ricoh as it related to license negotiations and drafting, and found it “incredible that [Mr. Nagashima] would acquiesce in the clerical function of merely drafting terms in an agreement at the direction of the client without providing his best advice to the client regarding the impact of the terms requested.”  Turning to the issue of waiver, ALJ Rogers found that since Ricoh waived any conflict regarding Mr. Nagashima’s representation of Oki Data in license negotiations with Ricoh, which involved the patents-in-suit, Ricoh’s waiver logically extended to the current litigation.  Thus, ALJ Rogers determined that Ricoh failed to demonstrate by clear and convincing evidence that Mr. Nagashima should be disqualified pursuant to ABA Model Rule 1.9.   Regarding ABA Model Rule 1.7, ALJ Rogers also determined that there was no violation of this rule, because Ricoh’s waiver was also applicable to the ABA Model Rule 1.7 analysis.  In particular, ALJ Rogers found that Ricoh was aware of “Mr. Nagashima’s role in the Ricoh-Oki Data negotiations and its waiver . . . when Mr. Nagashima entered an appearance for Ricoh in [a separate] litigation.”  Accordingly, ALJ Rogers denied Ricoh’s motion to disqualify Oki Data’s counsel.

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