MasterObjects, Inc. v. Amazon.com, Inc.

Background

MasterObjects brought this patent-infringement action against Amazon in 2020. The patents concern an asynchronous communication system that can suggest search terms as a user types, such as autocomplete or predictive search results.

The disqualification motion focused on the prosecution history of MasterObjects’ patent family rather than directly on the asserted patents. In 2001, the law firm later referred to as FDML drafted and filed the application that became the ’529 patent. The patents asserted in this case are descendants of that patent and share or incorporate its specification.

Scott Sanford worked at FDML for approximately eighteen months after graduating from law school, from October 2000 until he moved to O’Melveny & Myers in April 2002. Sanford later became Amazon’s in-house counsel and worked closely with Hueston Hennigan LLP, Amazon’s outside counsel. After learning of Sanford’s prior connection to FDML, MasterObjects moved to disqualify both Sanford and Hueston Hennigan.

Legal standard

The court said federal district courts apply state law to attorney-disqualification questions. The parties agreed that California’s modified “substantial relationship” test applied. Under that test, when a lawyer’s former firm represented a client in a matter substantially related to the current case, but the lawyer did not personally represent that former client, the court asks whether confidential information material to the current representation would normally have been shared with the lawyer. Relevant considerations include the lawyer’s work for the former client, possible exposure to related strategy or policy, office location, and administrative or management responsibilities.

Court’s analysis

The court found a substantial relationship between the current litigation and FDML’s work on the ’529 patent. Sanford stated, and MasterObjects did not dispute, that he did not personally represent MasterObjects while at FDML.

The court then considered whether Sanford would normally have received MasterObjects’ material confidential information. Subpoenas to successor firms and individuals likely to have Sanford’s billing records produced no documents connecting him to MasterObjects. Sanford also stated that he did not work on matters for MasterObjects or Mark Smit.

The court found that FDML’s size and structure did not require a conclusion that Sanford received MasterObjects’ confidential information. Although the firm had approximately a dozen attorneys and evidence differed about how attorneys worked together and accessed client files, the court held that the opportunity to access files alone was not enough to presume receipt of material confidential information.

The court also considered Sanford’s junior status. He had been a practicing attorney for only eighteen months and had no administrative or management responsibilities. His practice focused on semiconductor, medical-device, and other non-software technologies, and he stated that he never worked with the attorneys who prosecuted MasterObjects’ patents. The court found it unreasonable to infer that a junior associate would normally have confidential information about a client unrelated to his developing practice.

The court found that Sanford’s deposition testimony contradicted part of his declaration about when he told Hueston Hennigan of his former FDML affiliation. This weakened his credibility somewhat. But the court concluded that the timing of his disclosure did not resolve the central question—whether he would normally have received material confidential information at FDML. The court found that he had not received or had access to MasterObjects’ confidential information during his time there. Although his credibility was not perfect, the court found it adequate for this purpose.

Disposition

The court declined to disqualify Scott Sanford or Hueston Hennigan from representing Amazon in the litigation. It denied MasterObjects’ motion for disqualification. The court also overruled Amazon’s evidentiary objections to the extent they affected the motion, while stating that the ruling did not prevent future evidentiary objections.