On August 6, 2009, ALJ E. James Gildea issued the public version of Order No. 15 (dated July 17, 2009) denying a motion by Finnegan, Henderson, Farabow, Garrett & Dunner LLP (“Finnegan”) to intervene for the purpose of enforcing the terms of a retainer agreement in Certain Cold Cathode Fluorescent Lamp (“CCFL”) Inverter Circuits and Products Containing the Same (Inv. No. 337-TA-666).  The retainer agreement at issue is between Finnegan and Melvin Ray Mercer and was entered into on behalf of Finnegan’s clients in a prior litigation, Sony Corporation, Sony EMCS Corporation, and Sony Electronic Inc. (collectively, “Sony”).

Finnegan represents respondents Monolithic Power Systems, Inc., ASUSTeK Computer Inc., and ASUS Computer International America (collectively, “the MPS and ASUS respondents”) in the investigation.  Finnegan argued that Mercer has a conflict of interest that prevents him from serving as a technical consultant to complainants 02 Micro International Ltd. and 02 Micro Inc. (collectively, “O2 Micro”).  Mercer was retained by Finnegan to assist the firm in defending Sony in a patent infringement lawsuit in the Eastern District of Texas regarding three patents that, although different than the patent asserted in the investigation, share the same specification with the asserted patent.  Finnegan argued that Mercer was privy to Finnegan’s work product that is potentially applicable to defenses that MPS and ASUS may assert in this investigation, and that O2 Micro was seeking to gain an unfair advantage by gaining access to that work product.

O2 Micro and the Commission Investigate Staff opposed the motion.  O2 Micro argued that Mercer did not perform any work for Sony pursuant to the Texas litigation and did not request or receive any payments from Sony.  Further, O2 Micro argued that the mere assertion of a work product claim is insufficient to demonstrate a protectable interest to justify intervention.  The Staff argued that permitting Mercer access to MPS and ASUS Respondents’ confidential information would not violate the protective order, and that the Commission was not the proper venue in which to resolve an alleged violation of the Texas retainer agreement.

According to the Order, Mercer and Finnegan both agreed that Mercer participated in a 3.5-4.5 hour meeting with Finnegan in February 2007 where the patents-at-issue in the Texas litigation were discussed, but there were conflicting declarations concerning the level of detail of the discussion.

In July 2007, Finnegan informed Mercer that the Texas litigation was on hold as a result of potential settlement.  In October 2008, Mercer contacted Finnegan and requested confirmation that he was permitted to act as a consultant for O2 Micro “in an unrelated litigation.”  Finnegan informed Mercer that the retainer agreement was still binding, but said it would check with Sony.  Mercer did not hear from Finnegan.  He was contacted again in February 2009 by O2 Micro’s attorneys, and in April 2009, O2 Micro’s attorneys provided notice that it intended to share confidential business information with Mercer.  Finnegan objected to the disclosure.

ALJ Gildea found that good cause does not exist for granting Finnegan’s motion to intervene.  He found that Finnegan did not provide sufficient analysis of how it meets the four-part test associated with FRCP 24(a).  Further, ALJ Gildea found that the protective order did not preclude O2 Micro from disclosing the MPS and ASUS Respondents’ confidential business information to Mercer.  He found that O2 Micro was not unfairly advantaged, and that the MPS and ASUS Respondents were not unfairly prejudiced, as a result of Mercer’s alleged access to Finnegan work product from the Texas litigation.