Plaintiff in patent litigation asks judge to disqualify Orrick from representing defendant

Two video doorbell companies dueling in a patent infringement case are now engaged in a spat over whether lawyers from Orrick, Herrington & Sutcliffe LLP may represent the defendant, given the firm advised the plaintiff shortly before the beginning of the litigation.

Attorneys representing SkyBell Technologies Inc. -- a smart video doorbell technology company that brought patent enforcement claims against competitor Ring Inc. in January -- filed a motion in federal court Monday arguing that Orrick should be disqualified from participating in the case.

SkyBell said the firm created an attorney-client relationship with the company by advising it on legal issues similar to those in the current litigation.

"SkyBell previously approached Orrick about bringing this lawsuit against Ring and shared with Orrick substantial confidential information about this suit," SkyBell claims in the motion. "Orrick's disqualification is thus mandated by California law."

The firm says, however, that it is protected by the American Bar Association's model rules.

"Orrick presented its capabilities to Skybell, who chose to hire another firm to service its legal needs," Annette Hurst, who co-chair's the firm's IP litigation practice, said in a statement to the Daily Journal Wednesday.

"Newly adopted Rule 1.18 conforms California to the ABA Model Rules and precludes a prospective client from disqualifying a firm that it chose not to hire," she continued. "We intend to vigorously oppose Skybell's motion."

Clement S. Roberts has been representing the defendant Ring Inc. as an Orrick partner since June. Previously, he represented Ring as an attorney at Durie Tangri LLP.

The debacle is perhaps a cautionary tale to big law firms in the era of regular lateral partner hires.

According to SkyBell's motion for disqualification, the Irvine-based company entered into discussions about enforcing a number of its patents through litigation with Orrick lawyers in fall of 2017.

The firm recommended a team of attorneys to work with SkyBell, including partners Tyler Jensen, Tyler Miller, Johannes Hsu and Chris Ottenweller.

Orrick also produced a lengthy report detailing potential litigation strategies to be employed against competitors including Ring, the motion said.

However, SkyBell elected to use the services of Susman Godfrey LLP to file the suit against Ring.

Ring turned to Durie Tangri to defend the suit, hiring then-partner Clement Roberts, who acted as lead lawyer.

In June, Roberts decamped to Orrick, but before doing so, he inquired with SkyBell attorneys as to whether the company would make any objections to his representation given his change in firm.

According to the document filed Monday, SkyBell's lawyers would not answer the request until completing an investigation into the matter.

In the interim, the disqualification motion says Roberts pressed forward with the move, and Orrick established an "ethical wall" to segregate Roberts' team from lawyers and firm personnel who had consulted earlier with SkyBell.

That effort hasn't satisfied SkyBell's lawyers.

Now represented by Russ August & Kabat, the company is claiming Orrick must be removed from the case, pointing to Rule 3-310(E) of the California Rules of Professional Conduct, which prohibits lawyers from representing parties adverse to a client or former client without informed written consent.

"Even though no engagement agreement was ever signed, SkyBell was unquestionably a client of Orrick in November of 2017," lawyers from Russ August wrote in the motion.

"Orrick is disqualified from representation of Ring" because it received confidential information from SkyBell in the prior consultation, Russ August argued.

U.S. District Judge James V. Selna is presiding over the case. SkyBell Technologies Inc. v. Ring Inc., 18-CV00014 (C.D. Cal., filed Jan. 5, 2018).