United States District Court, N.D. Illinois, Eastern Division
MEMORANDUM OPINION AND ORDER
E. Bucklo United States District Judge.
patent infringement suit, plaintiff alleges that defendant
Caterpillar manufactures and sells heavy duty tractor
crawlers incorporating “final drive guard
assemblies” that infringe three of plaintiff's
patents. Before me is defendant's motion to disqualify
plaintiff's counsel, which I deny for the following
asserts two bases for disqualification: first, that
plaintiff's counsel, Michael Padden, spoke by telephone
to William Perry, a retired Caterpillar employee, about
“Caterpillar's internal legal practices pertaining
to patent procurements, ” without disclosing to Mr.
Perry that he represented an entity suing Caterpillar for
patent infringement; and second, that Mr. Padden previously
represented Caterpillar in a patent infringement litigation.
Defendant seeks to disqualify both Mr. Padden and his law
firm from representing plaintiff in this action.
chief complaint is that Mr. Padden called Mr. Perry on
February 2, 2017, and, without identifying himself or his
client, asked Mr. Perry whether he recalled a conversation he
had had with Ernie Freeman (the owner of Freeman Equipment)
at a tradeshow in 2008. Perry Decl., Exh. 1 to Def.'s
Mot. at ¶ 4. Mr. Perry responded that he did not.
Id. Mr. Padden also asked: 1) whether Caterpillar
had any internal process for evaluating and drafting patent
applications, and if so, what that process was; and 2) about
Caterpillar's inventor disclosure form, and the
incentives Caterpillar uses to encourage employees to
disclose patentable inventions. Id. at ¶¶
5-6. Finally, Mr. Padden allegedly asked “if anyone at
Caterpillar would ever attempt to falsely represent an idea
as their own in order to obtain a patent or other
reward.” Id. at ¶ 6. The Perry
Declaration does not disclose how Mr. Perry responded to
these questions. It states that the conversation lasted
twenty to thirty minutes. Id. at ¶ 7.
disputes that Mr. Padden failed to identify himself during
the call with Mr. Perry. Plaintiff points to Mr. Padden's
declaration, which states that at the outset of the call, he
introduced himself by name and explained that he was an
attorney representing plaintiff in a patent case against
Caterpillar involving final drive guards. Padden Decl., Exh.
3 to Pl.'s Resp., at ¶ 6. Mr. Padden further states
that he asked Mr. Perry if he would be willing to answer some
questions about Mr. Freeman's guards, and that Mr. Perry
agreed. Id. at ¶ 7. The Padden Declaration goes
on to describe the nature of Mr. Padden's questions and
of Mr. Perry's answers. Id. at ¶¶ 8-9.
Mr. Padden acknowledges asking Mr. Perry “about the
general procedures for evaluating and patenting new
inventions at Caterpillar, ” and states that he told
Mr. Perry he “only wanted a general outline of the
process, not any specific details or confidential
information.” Id. at ¶ 10. Mr. Padden
states affirmatively that Mr. Perry did not “talk about
any legal advice he had seen or received at Caterpillar, or
about any specific internal matter.” Id. at
defendant argues that disqualification is required based on
Mr. Padden's previous representation of Caterpillar
“in a number of litigations, including a patent
infringement litigation.” Def.'s Mem. at 12. In
support of this argument, defendant attaches Mr. Padden's
notice of appearance in a case captioned Global Patent
Holdings LLC v. Green Bay Packers, Inc., et al., No. 00
C 4623 (N.D. Ill. 2000), which identifies Mr. Padden as local
counsel for Caterpillar. See Yashar Decl., Exh. 10.
Defendant also refers to another, unidentified patent
infringement suit in which Mr. Padden “was
involved...for Caterpillar, ” Def.'s Mem. at 13,
but offers no evidence of that litigation or of Mr.
Padden's role in it.
Padden, for his part, confirms that he acted as local counsel
for Caterpillar in Global Patent Holdings, a case he
recalls as involving “a patent on some type of website
functionality against a wide variety of businesses.”
Padden Decl. at ¶ 2. Mr. Padden attaches to his
Declaration a copy of the docket in Global Patent
Holdings, which reflects that the only substantive
pleading filed on Caterpillar's behalf was an answer and
counterclaim, which was filed by Caterpillar's lead
counsel. Padden Decl., Exh. A at ¶ 98. Mr. Padden states
that the case was stayed pending reexamination of the
asserted patent, and was later dismissed without prejudice by
agreement of all parties in view of the ongoing reexamination
proceedings. Padden Decl. at ¶ 4. Mr. Padden does not
recall having been involved in any substantive analysis of
the complaint or of Caterpillar's counterclaims, or
having access to Caterpillar's confidential information.
Id. at ¶ 5.
for disqualification are evaluated using a two-step analysis.
First, I consider whether an ethical violation has occurred.
Second, if I find that there has been a violation, I
determine whether disqualification is the appropriate remedy.
Guillen v. City of Chicago, 956 F.Supp. 1416, 1421
(N.D. Ill. 1997). The Seventh Circuit has cautioned that
disqualification “is a drastic measure which courts
should hesitate to impose except when absolutely
necessary.” Freeman v. Chicago Musical
Instrument Co., 689 F.2d 715, 721 (7th Cir. 1982).
The court emphasized that because disqualification deprives a
party of representation of its choosing, motions to
disqualify “should be viewed with extreme caution for
they can be misused as techniques of harassment.”
Id. at 722. Accordingly, the movant “bears a
heavy burden of proving facts required for
disqualification.” Guillen, 956 F.Supp. at
argues that Mr. Padden's phone call to Mr. Perry violated
Rules 4.3 and 4.4 of the Illinois Rules of Professional
Conduct. Rule 4.3 provides:
In dealing on behalf of a client with a person who is not
represented by counsel, a lawyer shall not state or imply
that the lawyer is disinterested. When the lawyer knows or
reasonably should know that the unrepresented person
misunderstands the lawyer's role in the matter, the
lawyer shall make reasonable efforts to correct the
In re Air Crash Disaster Near Roselawn, Indiana on
October 31, 1994, 909 F.Supp. 1116, 1123 (N.D.
Ill. 1995). On its face, the Perry Declaration does not
suggest that Mr. Padden either stated or implied that he was
“disinterested” in this litigation. Rather, Mr.
Perry states that Mr. Padden did not mention the litigation
at all. In defendant's view, that omission was an ethical
breach because Mr. Padden had an affirmative duty to inform
Mr. Perry of the litigation, his role in it, and the fact
that his client is adverse to Mr. Perry's former
employer. Def.'s Mem. at 3 (citing Brown v. St.
Joseph Cty., 148 F.R.D. 246, 254 (N.D. Ind. 1993). But
even if I assume that Mr. Perry indeed failed to provide that
information, it is clear that defendant suffered no harm as a
the record does not suggest that Mr. Padden sought, or
obtained, any privileged information from Mr. Perry. To the
contrary, the evidence reveals that defendant has publicly
disclosed its practices relating to the very topics it now
faults Mr. Padden for discussing with Mr. Perry:
Caterpillar's patent evaluation and application process
and its inventor incentive program. See Pl.'s
Resp., Exh. 1 (Simon Crompton, How Caterpillar Protects
Its IP, Managing Intellectual Property, (July 16, 2014)
(describing the “patent review process” that
takes place “for all new ideas” as part of
Caterpillar's New Product Introduction process)); Exh. 2,
Jacqueline Bell, Invention Incentive Programs Get
Results: Survey, Law360 (Jan. 28, 2009) (identifying
Caterpillar as among 220 companies that ...