Freeman Equip., Inc. v. Caterpillar, Inc., No. 16 C 9172, Slip Op. (N.D. Ill. Mar. 13, 2017) (Bucklo, J.).
Judge Bucklo denied defendant Caterpillar’s motion to disqualify plaintiff Freeman Equipment’s (“Freeman”) counsel in this patent case involving final drive guard assemblies.
Caterpillar sought disqualification for two reasons: 1) counsel’s allegedly improper interview of a former Caterpillar employee; and 2) counsel’s alleged prior representation of Caterpillar as local counsel in a patent litigation and as counsel in at least one other matter. The accounts of counsel’s interview of the former employee did not suggest that counsel sought or received any privileged information. In fact, the interview only garnered information that was otherwise publicly available about Caterpillar’s practices. Counsel did not ask about specific patent applications, just Caterpillar’s general patenting process. And to the extent that Caterpillar’s arguments that its general patenting process was irrelevant to the case at hand, discussing irrelevant matters with a former employee would not warrant the extreme result of disqualification.
Caterpillar’s more than six month delay in addressing counsel’s prior representation was problematic. Furthermore, Caterpillar offered no evidence regarding the prior case or cases which would have allowed the Court to make the required factual reconstruction of the prior matters’ scope. Speculation of what might have been disclosed was insufficient basis for the analysis. Without an ability to perform that initial step of the disqualification analysis, the Court could not disqualify counsel.