United States District Court, E.D. New York
MEMORANDUM AND ORDER
L. Pollak United States Magistrate Judge.
October 4, 2017, plaintiff Tour Technology Software, Inc.
(“Tour”) brought this action against defendant
RTV, Inc. (“defendant” or “RTV”) and
a number of John and Jane Does, alleging that defendants had
infringed plaintiff's United States Patent No. 6, 754,
400 (the “440 Patent”) entitled “System and
Method for Creation, Processing and Visualization of
OmniDirectional Images.” Currently pending before this
Court is plaintiff's motion to disqualify defendant's
counsel, Mitchel S. Feller, Esq., on the grounds that he
represented a third party who was a defendant in another case
involving the same 440 Patent. (See generally
Pl.'s Mot. to Disqualify, Mar. 30, 2018, ECF No. 20).
reasons set forth below, the Court denies the motion for
Tour alleges that it is the owner of U.S. Patent No. 6, 754,
400 (the “400 Patent”), which enables the
exploration of an indoor or outdoor location over the
internet as if the person were actually at the location and
looking at the scene through the selected or varying angular
direction of the view. (Compl. ¶ 9, Oct. 4, 2017., ECF
No. 1). Following the creation of the 400 Patent technology,
the U.S. Patent Office issued the 400 Patent on June 22,
2004. (Id. ¶ 24, Ex. A). Through various
assignments, the 400 Patent was assigned to Tour.
(Id. ¶ 26).
RTV is in the business of providing or presenting 360 degree
virtual tour content for its clients, including individuals
and businesses in the United States seeking to sell, rent,
purchase, lease, and/or promote private residences, hotels,
sporting and recreation facilities, schools, and golf
courses, among others. (Id. ¶ 32). Plaintiff
alleges that RTV is literally, or through the doctrine of
equivalence, directly and indirectly infringing the 400
seeks to disqualify defendants' counsel, Mr. Feller, from
representing RTV in this action because Mr. Feller previously
represented a different defendant in the case of Tour
Technology v. Ice Portal, No. 11 CV 3912 (PKC) (E.D.N.Y.
2011), which allegedly involved the same patent and the same
type of infringing activity at issue in this case. (Pl.'s
at 1). According to plaintiff, the prior lawsuit ended in a
settlement memorialized in a confidential settlement
agreement. (Id.) Plaintiff is concerned that because
Mr. Feller was privy to the terms of that confidential
settlement agreement, it “may be used by
Defendant's counsel, Mr. Feller, to the detriment of
Plaintiff Tour Technology, and give Defendant an unfair
advantage in negotiation.” (Id. at
well-settled that the Court's authority to disqualify an
attorney stems from its general supervisory power over the
attorneys who appear before it. Gerffert Co. v.
Dean, No. 09 CV 266, 2011 WL 683963, at *4 (E.D.N.Y.
Feb. 16, 2011). “[I]n deciding questions of
professional ethics [people] of good will often differ in
their conclusions, ” Fund of Funds Ltd. v. Arthur
Andersen & Co., 567 F.2d 225, 227 (2d Cir. 1977),
and thus the Court has wide discretion in deciding whether to
disqualify counsel. See Bobal v. Rensselaer Polytechnic
Inst., 916 F.2d 759, 764 (2d Cir. 1990); Hull v.
Celanese Corp., 513 F.2d 568, 571 (2d Cir. 1975);
Gerffert Co. v. Dean, 2011 WL 683963, at *4. In
exercising that discretion, the Court is mindful of its
responsibility to “preserve a balance, delicate though
it may be, between [the] right to . . . freely chosen counsel
and the need to maintain the highest ethical standards of
professional responsibility.” Ernie Indus., Inc. v.
Patentex, Inc., 478 F.2d 562, 564-65 (2d Cir. 1973).
motion to disqualify an attorney is governed by federal law.
Acme Am. Repairs, Inc. v. Katzenberg, No. 03 CV
4740, 2007 WL 952064, at *4 (E.D.N.Y. Mar. 29, 2007) (citing
Arifi v. De Transp. Du Cocher, Inc., 290 F.Supp.2d
344, 348 (E.D.N.Y. 2003)). The applicable ethical rules are
those provided in the New York Rules of Professional Conduct,
as interpreted by the United States Supreme Court, the Second
Circuit, and this Court. Id. (citing L. Civ. R.
a matter of professional responsibility, an attorney owes a
duty of loyalty to his client . . . not to divulge
confidential communications . . . and not to accept
representation of a person whose interests are opposed to the
client.” Anderson v. Nassau Cty. Dep't of
Corr., 376 F.Supp.2d 294, 297 (E.D.N.Y. 2005) (quoting
Ehrich v. Binghamton City Sch. Dist., 210 F.R.D. 17,
23 (N.D.N.Y. 2002)). However, given that disqualification
imposes “immediate adverse effect[s] on the client by
separating him from counsel of his choice, and that
disqualification motions are often interposed for tactical
reasons, and inevitably cause delay, ” courts
“must demonstrate reluctance” before granting
motions for disqualification. Id. (citing Board
of Ed. of City of N.Y. v. Nyquist, 590 F.2d 1241, 1246
(2d Cir. 1979)). Disqualification of counsel is “viewed
with disfavor in this Circuit . . . because it impinges on
parties' rights to employ the counsel of their
choice.” Intellipayment, LLC v. Trimarco, No.
15 CV 1566, 2016 WL 1239261, at *4 (E.D.N.Y. Mar. 29, 2016)
(citing Stratevest Ltd. v. Rogers, 903 F.Supp. 663,
666 (S.D.N.Y. 1995); Bennett Silvershein Assocs. v.
Furman, 776 F.Supp. 800, 802 (S.D.N.Y. 1991)). A
“high standard of proof” is thus required to
succeed on a motion to disqualify counsel. Id.
(quoting Evans v. Artek Sys. Corp., 715 F.2d 788,
791-92 (2d Cir. 1983)); see also Muniz v. Re Spec
Corp., 230 F.Supp.3d 147, 152 (S.D.N.Y. 2017)
(explaining that motions to disqualify counsel are subject to
“strict scrutiny” because of their
“potential for abuse as a tactical device”)
(quoting Scantek Med., Inc. v. Sabella, 693
F.Supp.2d 235, 238 (S.D.N.Y. 2008)). Moreover, courts have
noted that even when made in good faith, motions to
disqualify counsel “inevitably cause delay.”
Intellipayment, LLC v. Trimarco, 2016 WL 1239261, at
*4 (quoting Evans v. Artek Sys. Corp., 715 F.2d at
“mere speculation” regarding the reasons
supporting disqualification are insufficient, and a motion
for disqualification should only be granted “if the
facts present a real risk that the trial will be
tainted.” Muniz v. Re Spec Corp., 230
F.Supp.3d at 152 (quoting Revise Clothing, Inc. v.
Joe's Jeans Subsidiary, Inc., 687 F.Supp.2d 381, 388
(S.D.N.Y. 2010); accord Intellipayment, LLC v.
Trimarco, 2016 WL 1239261, at *4. Whether to disqualify
counsel “is a matter committed to the sound discretion
of the district court.” Intellipayment, LLC v.
Trimarco, 2016 WL 1239261, at *4 (citing Cresswell
v. Sullivan & Cromwell, 922 F.2d 60, 72 (2d Cir.
standard for disqualification depends on whether the
representation is concurrent- meaning the lawyer represents
two or more current clients at the same time-or successive-
meaning the attorney represents a current client against, or
whose interests are adverse to those of, a former client.
Hempstead Video, Inc. v. Incorporated Vill. of Valley
Stream, 409 F.3d 127, 133 (2d Cir. 2005); see Ehrich
v. Binghamton City Sch. Dist., 210 F.R.D. 17, 24
(N.D.N.Y. 2002) (explaining that “[t]he conflict
analysis differs depending on whether an attorney is
representing interests adverse to a current or former
client”). The status of the representation- and thus
the test applied by the Court-is determined as of the time
the conflict arises, and not at the time the motion for
disqualification is filed. Anderson v. Nassau Cty.
Dep't of Corr., 376 F.Supp.2d at 298. Concurrent
representation, in which an attorney simultaneously
represents a client and another party with interests directly
adverse to that client, is considered per se
improper, and the attorney must be disqualified unless he or
she demonstrates “at the very least, that there will be
no actual or apparent conflict in loyalties or ...