in Re Shared Memory Graphics LLC v. Floyd

United States Court of Appeals
for the Federal Circuit
__________________________
IN RE SHARED MEMORY GRAPHICS LLC,
Petitioner.
__________________________
Miscellaneous Docket No. 978
__________________________
On Petition for Writ of Mandamus to the United
States District Court for the Northern District of Califor-
nia in case no. 10-CV-2475, Judge Maxine M. Chesney.
__________________________
ON PETITION
__________________________
ARTHUR G OLLWITZER , III, F&B LLP, of Austin, Texas,
for petitioner Shared Memory Graphics LLC. With him
on the petition were ADAM V. F LOYD and CHAD ENNIS .
G RANT E. K INSEL, Perkins Coie LLP, of Los Angeles,
California, for respondents Nintendo Co., Ltd., et al.
__________________________
Before NEWMAN , SCHALL, and DYK , Circuit Judges.
Opinion for the court filed by Circuit Judge D YK . Dissent-
ing opinion filed by Circuit Judge N EWMAN .
D YK , Circuit Judge.

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IN RE SHARED MEMORY GRAPHICS 2
O R D E R
Shared Memory Graphics LLC (“SMG”) petitions for a
writ of mandamus to direct the United States District
Court for the Northern District of California to vacate its
order granting Nintendo Co. of America’s (“Nintendo”)
motion to disqualify the law firm of Floyd & Buss, LLP
from further representation in this case based on the
conflict-of-interest of Kent Cooper, one of the firm’s part-
ners. See Shared Memory Graphics LLC v. Apple Inc., No.
10-CV-2475 (N.D. Cal. Dec. 17, 2010) (granting Nin-
tendo’s motion to disqualify) [hereinafter Disqualification
Order]; see also Shared Memory Graphics LLC v. Apple
Inc., No. 10-CV-2475 (N.D. Cal. Mar. 4, 2011) (denying,
inter alia, SMG’s motion to clarify the December 17, 2010,
disqualification order) [hereinafter Clarification Order].
Nintendo opposes. SMG replies. Because Nintendo
clearly and indisputably waived the conflict-of-interest,
we grant mandamus and direct the court to vacate its
disqualification orders.
BACKGROUND
This petition arises out of SMG’s patent infringement
suit against Nintendo, Apple, Inc., Samsung Electronics
Co., and Sony Corporation of America. SMG’s claims
against Nintendo—the only party that sought disqualifi-
cation here—involve the “Hollywood chip,” a complex
memory chip composed of multiple components.
The Hollywood chip was previously the subject of a
suit for patent infringement, which was brought by Lon-
estar Inventions, L.P. Advanced Micro Devices (“AMD”)
and Nintendo were defendants in that suit, and they
decided to exchange information concerning litigation
tactics and settlement strategies, drafts of briefs, and
other confidential information under a Joint Defense

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IN RE SHARED MEMORY GRAPHICS 3
Agreement. Paragraph 6 of the Agreement provided as
follows:
Nothing contained in this Agreement has the ef-
fect of transforming outside or inside counsel for
either party into counsel for the other party, or of
creating any fiduciary or other express or implied
duties between a party or its respective counsel
and the other party or its respective counsel, other
than the obligation to comply with the express
terms of this Agreement, or of interfering with
each lawyer’s obligation to ethically and properly
represent his or her own client. The parties ex-
pressly acknowledge and agree that nothing in
this Agreement, nor compliance with the terms of
this Agreement by either party, shall be used as a
basis to seek to disqualify the respective counsel
of such party in any future litigation.
P.A. 17.
Kent Cooper—the attorney at the center of this dis-
pute—was working as the Director of Patents and Licens-
ing for AMD at the time of the Lonestar litigation. He
helped assess the infringement claim and the validity of
the patent at issue in that case. After the Lonestar
litigation, Cooper left AMD to join the law firm of Floyd &
Buss as a partner. Admittedly, the firm did not screen
Cooper upon his entry.
Soon thereafter, Floyd & Buss filed this suit on behalf
of SMG against Nintendo and the other defendants.
Nearly ten months after the suit was filed, Nintendo
moved to disqualify Floyd & Buss from continued repre-
sentation in this case. Although the parties agreed that
Cooper never represented Nintendo at any time, there
was a dispute whether Cooper received confidential
information from Nintendo during the Lonestar litigation.

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IN RE SHARED MEMORY GRAPHICS 4
The district court granted the motion and disqualified the
entire firm from continued representation.
In the district court’s view, the Joint Defense Agree-
ment’s provision waiving any basis to seek disqualifica-
tion of the “respective counsel of such party in any future
litigation,” did not pertain to an attorney like Cooper who
subsequently left AMD or Nintendo or its counsel and
joined another company or firm. Disqualification Order
at 6. Instead, the court held that the Agreement’s waiver
provision only contemplated conflicts between AMD and
Nintendo as “either party.” Id. The court stated that
“[t]here is no evidence to suggest that the waiver contem-
plated covering attorneys who left their respective com-
panies for new clients.” Id. Therefore, in the view of the
district court, “the Lonestar JDA does not foreclose Nin-
tendo’s motion to disqualify Cooper for breach of confiden-
tiality.” Id. Finding that the case at bar and the
Lonestar litigation involved similar technology and simi-
lar legal issues pertaining to whether the Hollywood chip
infringed the asserted claims, the district court applied a
conclusive presumption that Cooper had accessed Nin-
tendo’s confidential information and held that disqualifi-
cation of the entire Floyd & Buss firm was therefore
necessary. Id. at 7–9.
In a subsequent ruling, the district court clarified that
Floyd & Buss was not only disqualified from representing
SMG against Nintendo, but disqualified from represent-
ing SMG against all of the defendants in the action. See
Clarification Order at 2.
SMG filed this petition, which seeks a writ of man-
damus to vacate these rulings and for the district court to
be directed to reinstate Floyd & Buss as counsel for SMG.

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IN RE SHARED MEMORY GRAPHICS 5
D ISCUSSION
The remedy of mandamus is available in extraordi-
nary situations to correct a clear abuse of discretion or
usurpation of judicial power. In re Calmar, Inc., 854 F.2d
461, 464 (Fed. Cir. 1988). This court has thus held that a
party seeking a writ bears the burden of proving that it
has no other means of obtaining the relief desired, Mal-
lard v. U.S. Dist. Court, 490 U.S. 296, 309 (1989), and
that the right to issuance of the writ is “clear and indis-
putable,” Allied Chem. Corp. v. Daiflon, Inc., 449 U.S. 33,
35 (1980).
Citing Richardson-Merrell, Inc. v. Koller, 472 U.S. 424
(1985), Nintendo contends that mandamus authority
cannot be exercised under the circumstances of this case.
Nintendo’s reliance on Richardson-Merrell for this propo-
sition, however, is misplaced. The question at issue there
was whether an order disqualifying counsel could be
appealed under the collateral-order doctrine, which fur-
nishes “an exception to the final judgment rule for a
‘small class’ of prejudgment orders.” Id. at 430.
Far from stating that an order disqualifying counsel
may not be remedied through a writ of mandamus, the
Court specifically noted that “a rule precluding appeal
[under the collateral-order doctrine] would not necessarily
leave the client or the disqualified attorney without a
remedy” because “a party may seek . . . a writ of manda-
mus from the court of appeals.” Id. at 435.
Nintendo also cannot seriously contest that SMG
could meaningfully obtain this relief other than by seek-
ing a writ of mandamus. By the time an appeal here
could be taken, the trial would be over, and SMG would
have gone through the litigation without the counsel of its

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IN RE SHARED MEMORY GRAPHICS 6
choice.1 Mandamus thus acts as a safety valve to prevent
such irreparable harm if appropriate circumstances are
presented. See Mohawk Indus., Inc. v. Carpenter, 130
S.Ct. 599, 608 (2009).
We therefore turn to the merits. A request for man-
damus relief is determined under Federal Circuit law,
except to the extent that underlying procedural issues
may be governed by the law of the regional circuit, which
in this case is the law of the Ninth Circuit. In re Pioneer
Hi-Bred Int’l, Inc., 238 F.3d 1370, 1374 (Fed. Cir. 2001).
Motions to disqualify under the law of that circuit in turn
are decided under state law, in this case California law,
where this case is pending. See In re Cnty. of Los Angeles,
223 F.3d 990, 995 (9th Cir. 2000).
SMG argues that the district court erred by granting
Nintendo’s motion for disqualification. SMG contends
that the motion was precluded by the waiver-of-conflict
provision in the Lonestar Joint Defense Agreement.
According to SMG, the Agreement clearly intended to bar
Nintendo from seeking to disqualify “respective counsel”
like Cooper who subsequently left one of the parties or its
counsel to join another company or law firm. That waiver
provision, set forth in Paragraph 6 of the Joint Defense
Agreement, provides:
1 The Supreme Court has described the circum-
stances in which an order disqualifying counsel could be
reviewed on direct appeal, stating that, “should the Court
of Appeals conclude after the trial has ended that permit-
ting continuing representation was prejudicial error, it
would retain its usual authority to vacate the judgment
appealed from and order a new trial.” Firestone Tire &
Rubber Co. v. Risjord, 449 U.S. 368, 378 (1981). In other
words, it appears as though a showing of prejudice would
be required. Practically speaking, it would be very diffi-
cult to demonstrate prejudice absent some sort of miscon-
duct on the part of counsel.

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IN RE SHARED MEMORY GRAPHICS 7
The parties expressly acknowledge and
agree that nothing in this Agreement, nor
compliance with the terms of this Agree-
ment by either party, shall be used as a
basis to seek to disqualify the respective
counsel of such party in any future litiga-
tion.
P.A. 17.
We agree with SMG’s interpretation. As an initial
matter, while challenging SMG’s reading of the Joint
Defense Agreement, Nintendo cannot dispute that these
types of waiver provisions are enforceable where, as here,
there is a non-attorney-client relationship (Cooper did not
represent Nintendo in the Lonestar litigation) involving
sophisticated parties. See generally Model Rules of Prof’l
Conduct 1.7 cmt. 22 (noting “if the client is an experienced
user of the legal services involved and is reasonably
informed regarding the risk that a conflict may arise,
such consent is more likely to be effective”).
Even in attorney-client situations, general rules of
professional legal conduct recognize that in certain cir-
cumstances it is not only proper but beneficial for parties
to contractually consent to a waiver of future conflicts of
interest. See Restatement (Third) of the Law Governing
Lawyers, § 122 cmt. D (2000) (“[T]he gains to both lawyer
and client from a system of advance consent to defined
future conflicts might be substantial.”); see generally
Model Rules of Prof’l Conduct 1.7 cmt. 22 (recognizing the
appropriateness of contracting advanced waivers of con-
flicts of interest). Moreover, courts applying California
law, which governs motions to disqualify counsel, In re
Cnty. of Los Angeles, 223 F.3d at 995, have generally
recognized the enforceability of advanced waiver of poten-
tial future conflicts, even if the waiver does not specifi-

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IN RE SHARED MEMORY GRAPHICS 8
cally state the exact nature of the future conflict, see Visa
U.S.A., Inc. v. First Data Corp., 241 F.Supp.2d 1100, 1105
(N.D. Cal. 2003).
Though California law governs motions to disqualify
counsel, Paragraph 13 of the Joint Defense Agreement
provides that the agreement is to be “governed by and
construed in accordance with the laws of the State of
Washington.” Our task is to give effect to the plain lan-
guage of the parties’ agreement. In doing so, we look to
the document as a whole, being careful to avoid an inter-
pretation that would render any part of the Agreement
superfluous. See Wagner v. Wagner, 95 Wash. 2d 94, 101
(1980); see also Restatement (Second) of Contracts §
203(a) & cmt. b (1981) (“Since an agreement is interpreted
as a whole, it is assumed in the first instance that no part
of it is superfluous.”).
In view of these principles, the Agreement’s terms
clearly point away from the district court’s conclusion that
Cooper was not covered by the waiver provision. Nin-
tendo agreed not to seek disqualification of then “respec-
tive counsel of such party [i.e., AMD] in any future
litigation.” Cooper was indisputably a “respective coun-
sel” of AMD, and, contrary to Nintendo’s objections, the
breadth and temporal scope of the waiver are broad
enough to include “any future litigation” between Nin-
tendo and a party employing, or represented by, Cooper.
This interpretation is bolstered by the fact that “re-
spective counsel” was a term used consistently throughout
Paragraph 6 of the Joint Defense Agreement. Just before
the waiver provision, the paragraph provides: “Nothing
contained in this Agreement has the effect of . . . creating
any . . . duties between a party or its respective counsel
and the other party or its respective counsel, other than

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IN RE SHARED MEMORY GRAPHICS 9
the obligation to comply with the express terms of this
Agreement[.]” (emphasis added).
To limit the definition of “respective counsel” in this
provision to current counsel of AMD and Nintendo
(namely, counsel for AMD and Nintendo in 2010 and
2011, or at the time of the SMG litigation), however,
would produce an illogical result: former counsel such as
Cooper would have no ongoing obligation of confidential-
ity. In addition, such a reading of the Joint Defense
Agreement would violate the fundamental principle that a
contract should be interpreted so as to give meaning to
each of its provisions. See Brinderson-Newberg Joint
Venture v. Pac. Erectors, Inc., 971 F.2d 272, 278-79 (9th
Cir. 1992); Wagner, 95 Wash. 2d at 101; see also Restate-
ment (Second) of Contracts § 203(a) & cmt. b (“Since an
agreement is interpreted as a whole, it is assumed in the
first instance that no part of it is superfluous.”). The
parties clearly expressed their intention for Cooper and
other “respective counsel” to comply with the terms of
confidentiality. Pursuant to the district court’s interpre-
tation, however, limiting “respective counsel” to current
counsel for AMD or Nintendo would mean that the Joint
Defense Agreement imposes no ongoing obligation of
confidentiality with respect to former counsel. Such a
reading of the agreement is plainly illogical and contrary
to the intent of the parties. This would contradict the
very reason why any joint defense agreement is in effect
in the first place.
Because the only construction that honors the parties’
intent to protect their confidential information while
keeping the paragraph internally consistent is to include
Cooper as a “respective counsel,” we agree with SMG that
the district court’s determination was incorrect as a

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IN RE SHARED MEMORY GRAPHICS 10
matter of law.2 Furthermore, we believe that SMG will
be adversely affected if it is required to wait until after a
final adverse judgment to have this issue addressed
because it will have been required to proceed through the
litigation without counsel of its choice. We therefore hold
that SMG has demonstrated that its right to issuance of
the writ is “clear and indisputable,” and that the writ of
mandamus should be granted. Although SMG raises
other assertions of error, because we agree Nintendo
waived this potential conflict, we do not address these
issues.
Accordingly,
IT IS O RDERED THAT:
The petition is granted. The district court is directed
to vacate its order disqualifying Cooper and the Floyd &
Buss law firm from further representation in this case.
FOR THE C OURT
September 22, 2011
Date
/s/ Jan Horbaly
Jan Horbaly Clerk
2 In holding that waiver provision applicable to
counsel who have left the employment of one of the par-
ties to the agreement, we in no way suggest that counsel
subject to the agreement could not be disqualified for
failure to comply with the agreement itself.

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United States Court of Appeals
for the Federal Circuit
__________________________
IN RE SHARED MEMORY GRAPHICS LLC,
Petitioner.
__________________________
Miscellaneous Docket No. 978
__________________________
On Petition for Writ of Mandamus to the United States
District Court for the Northern District of California in
case no. 10-CV-2475, Judge Maxine M. Chesney.
__________________________
ON PETITION
__________________________
NEWMAN , Circuit Judge, dissenting.
O R D E R
It is not disputed that as Director of Patents and Li-
censing and in-house counsel to AMD, Kent Cooper was a
member of AMD’s litigation team when Nintendo and
AMD entered into an agreement to exchange vital confi-
dential information, and pursue a common defense
against the Lonestar Corporation in a patent infringe-
ment suit involving the same accused graphics processing
chip at issue here.
Nor is it disputed that after Cooper joined the law
firm of Floyd and Buss, the firm was and is representing
parties adverse to Nintendo. The firm did not take any

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IN RE SHARED MEMORY GRAPHICS 2
steps to exclude Cooper from the firm’s activities in this
lawsuit; there is no representation that the traditional
“firewall” was erected. While Cooper states that he does
not remember receiving Nintendo’s confidential informa-
tion, even his co-counsel at AMD states that Cooper was
privy to litigation tactics and strategies that are likely
relevant in this substantially-related case. Whether or
not Cooper drew upon his insider’s information in past
interaction with Nintendo, it cannot be presumed that
this did not occur. See generally In re Am. Airlines, 972
F.2d 605, 614, n.1 (5th Cir. 1992).
The issue is not simply whether Nintendo’s informa-
tion may be used against itself during this litigation; the
issue is the integrity of the system of legal representation
in today’s world of mobile lawyers and large law firms
with interacting clients. Thus the system of firewalls has
been accepted for many situations. Here, however, it
appears that Cooper in his new employment is associated
with issues involving his former employer, and that his
former employment was at the highest level in interaction
with Nintendo’s legal and strategic interests. If there is
doubt, it must be resolved in favor of the entity whose
information is in jeopardy.
The district court applied these routine precepts, and
excluded Cooper and his new firm from this litigation, for
the possible threat posed to Nintendo is not tolerated
under the laws of California or the rules of professional
conduct. It is well established that a disqualification is
proper when an attorney has received information in his
role as an attorney, even if the source of the information
is not a “client” of the attorney. See Oaks Management
Corp. v. Superior Court, 145 Cal.App.4th 453, 464 (2006);
Morrison Knudsen Corp. v. Hancock, Rothert & Bunshoft,
69 Cal.App.4th 223, 232-33 (1999) (“an attorney’s receipt
of confidential information from a non-client may lead to

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IN RE SHARED MEMORY GRAPHICS 3
the attorney’s disqualification”); see also United States v.
Henke, 222 F.3d 633, 637 (9th Cir. 2000) (a joint defense
agreement can create a disqualifying conflict where
information gained in confidence by an attorney becomes
an issue).
The California courts have accepted the presumption
of receipt of confidential information, to protect not only
the holder of the information but also the attorney, ensur-
ing that the attorney does not need to “engage in a subtle
evaluation of the extent to which he acquired relevant
information in the first representation and of the actual
use of that knowledge and information in the subsequent
representation.” Global Van Lines, Inc. v. Superior Court,
144 Cal.App.3d 483, 489 (1983). Cooper’s disqualifying
conflict thus warranted his disqualification and, in the
district court’s discretion, the disqualification of the law
firm that represents the adverse interests. The integrity
of the legal process demands no less.
My colleagues on this panel, however, hold that Nin-
tendo waived this conflict, from their reading of the
following paragraph in the Agreement:
Nothing contained in this Agreement has
the effect of transforming outside or inside
counsel for either party into counsel for
the other party, or of creating any fiduci-
ary or other express or implied duties be-
tween a party or its respective counsel and
the other party or its respective counsel,
other than the obligation to comply with
the express terms of this Agreement, or of
interfering with each lawyer’s obligation
to ethically and properly represent his or
her own client. The parties expressly ac-
knowledge and agree that nothing in this

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IN RE SHARED MEMORY GRAPHICS 4
Agreement, nor compliance with the terms
of this Agreement by either party, shall be
used as a basis to seek to disqualify the
respective counsel of such party in any fu-
ture litigation.
While the majority finds this statement to be “clear
and indisputable” evidence of a waiver as to Cooper and
his new law firm, it is neither clear nor indisputable.
According to my colleagues’ understanding, Nintendo
disclosed confidential information with the knowledge
that Cooper might leave AMD and use that information to
Nintendo’s disadvantage, and waived all right to object to
such adverse activity. Such a waiver would be remark-
able, and cannot be presumed.
There is no carve-out provision from the conditions of
confidentiality that would allow an attorney to represent
another party against Nintendo or AMD in a future
action. The Agreement’s waiver provision, while attempt-
ing to avert disputes, does not authorize future adverse
representation. The majority extracts text from several
different parts of the paragraph, to support its result.
However, the standard that SMG must meet is that
Nintendo’s waiver clearly met this clear-cut conflict
situation. That standard has not been met.
The district court, applying California law and prac-
tice, found that any waiver did not apply to the situation
presented by Cooper and his new association. In addition
to its rejection of Nintendo’s interpretive arguments, the
district court stated that the parties had failed to present
any “evidence to suggest that the waiver contemplated
covering attorneys who left their respective companies for
new clients.” Shared Memory Graphics LLC v. Apple,
Inc., No. 10-CV-2475, slip op. at 6 (N.D. Cal. Dec. 17,
2010).

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IN RE SHARED MEMORY GRAPHICS 5
The majority of this panel, in considering this court’s
mandamus authority in local disqualification matters,
overlooks the most important: that even in the face of
irreparable harm, the district court’s reasonable conclu-
sion is within that court’s discretion. The Ninth Circuit,
whose law we apply here, has made clear “that a district
court has the prime responsibility for controlling the
conduct of lawyers practicing before it, and that an order
disqualifying counsel will not be disturbed if the record
reveals ‘any sound’ basis for the district court’s action.” In
re Coordinated PreTrial Proceedings in Petroleum Prod-
ucts Antitrust Litigation, 658 F.2d 1355, 1358 (9th Cir.
1981) (citing Gas-A-Tron of Arizona v. Union Oil Co. of
California, 534 F.2d 1322, 1325 (9th Cir. 1976)).
Our task is to ensure that the district court’s decision
was not a “clear abuse of discretion or ‘usurpation of
judicial power.’” Bankers Life & Cas. Co. v. Holland, 346
U.S. 379, 382 (1953) (citation omitted). That standard
cannot be met where, as here, there is plausible support
for the district court’s ruling. See In re Cordis Corp., 769
F.2d 733, 737 (Fed. Cir. 1985) (noting that “if a rational
and substantial legal argument can be made in support of
the rule in question, the case is not appropriate for man-
damus.”).
Despite my colleagues’ unwillingness to recognize that
disqualification is proper based on breach of the lawyer’s
professional obligations, in a footnote this court appar-
ently acknowledges that Cooper and his law firm could be
disqualified if they are found to breach the Agreement.
However, professional responsibility in the legal system
does not distinguish between a written agreement to
protect information received as an attorney, and the
ethical obligation to protect information received as an
attorney. The possible adverse use of such information,
flowing from a change in the lawyer’s employment, is

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IN RE SHARED MEMORY GRAPHICS 6
prohibited under any theory. The district court so recog-
nized.
The district court’s decision to disqualify Cooper and
his law firm was not an abuse of the trial judge’s discre-
tion. This court has inappropriately intruded into the
district court’s authority and responsibility, to the detri-
ment of the integrity of legal practice. I respectfully
dissent.

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