Solos Technology Limited v. Meta Platforms, Inc. et al

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
SOLOS TECHNOLOGY LIMITED,
Plaintiff,
v.
META PLATFORMS, INC., META
PLATFORMS TECHNOLOGIES, LLC,
OAKLEY, INC., LUXOTTICA OF
AMERICA, INC., and
ESSILORLUXOTTICA USA, INC.,
Defendants.
*
*
*
*
*
*
*
*
*
*
*
*
*
Civil Action No. 26-cv-10304-ADB
MEMORANDUM AND ORDER
BURROUGHS, D.J.
Solos Technology Limited (“Solos”) brings this patent-infringement action against Meta
Platforms, Inc., Meta Platforms Technologies, LLC, Oakley, Inc., Luxottica of America, Inc.,
and EssilorLuxottica USA, Inc. [ECF No. 1]. After an attorney of the law firm Morgan Lewis &
Bockius LLP (“Morgan Lewis”) entered an appearance for Oakley, Inc., Luxottica of America,
Inc., and EssilorLuxottica USA, Inc., [ECF No. 13], Solos moved to disqualify Morgan Lewis,
[ECF No. 18]. For the following reasons, Solos’s motion is DENIED.
Case 1:26-cv-10304-ADB Document 68 Filed 04/06/26 Page 1 of 7

2
The factual basis for Solos’s motion is as follows. See Gen. Mill Supply Co. v. SCA
Servs., Inc., 697 F.2d 704, 710 (6th Cir. 1982) (noting that courts may decide disqualification
issues without an evidentiary hearing if their “factual inquiry” is based “on affidavits and
documents that would be acceptable under Rule 56(e) . . . and if the district judge does not
undertake to decide disputed issues of fact”). In September 2019, Solos was created and entered
into a series of transactions with Kopin Corporation (“Kopin”), through which Solos acquired
Kopin’s smart-glasses division, including certain smart-eyewear technologies and associated
intellectual property, from Kopin and Kopin obtained an ownership interest in Solos. [ECF No.
19-1 ¶ 6]; [ECF No. 33-1 ¶ 6]. Morgan Lewis advised Kopin on these transactions. [ECF No.
19-1 ¶ 9]. Specifically, Morgan Lewis reviewed the underlying Asset Purchase Agreement,
which included as appendices schedules listing basic information concerning the patents and
patent application rights to be transferred from Kopin to Solos, and provided comments on
certain corporate law matters. [ECF No. 24 ¶¶ 12, 14]. Morgan Lewis did not, however, provide
any advice to Kopin about the substance of those patents or patent applications, [id. ¶ 13], and
other law firms served as Kopin’s primary counsel for the transactions and for intellectual-
property matters, [id. ¶¶ 8, 10]. Solos had its own counsel during the transactions. [Id. ¶ 10].
In the run-up to the transactions, Morgan Lewis attended Kopin board meetings, at which
the intellectual property that would end up being transferred to Solos was discussed, [ECF No.
33-1 ¶ 13], and also communicated about the transactions with Dr. John C. C. Fan, Kopin’s then-
Chairman and CEO, who moved to Solos after the transactions and currently serves as Solos’s
Executive Chairman, [id. ¶¶ 5, 13]. Dr. Fan claims that, through its communications with him,
Morgan Lewis had access to a document that contained certain non-public “information
reflecting the value of Solos’ intellectual property,” including a “confidential royalty rate related
Case 1:26-cv-10304-ADB Document 68 Filed 04/06/26 Page 2 of 7

3
to the commercialization of the intellectual property” and “negotiated milestone payments.” [Id.
¶¶ 14, 16]. Morgan Lewis continues to provide legal advice to Kopin today. See [ECF No. 19-1
¶ 21]; [ECF No. 24 ¶ 4].
Solos primarily argues that Morgan Lewis’s prior representation of Kopin is
“substantially related” to this litigation and creates a conflict of interest that requires
disqualification under Mass. R. Prof. C. 1.9 because Morgan Lewis owes confidentiality
obligations to Solos as Solos was a business division within Kopin, Morgan Lewis’s client,
before the spin-off. [ECF No. 19 at 9–12]; [ECF No. 33 at 5–7]. Morgan Lewis counters that
Solos has never been its client and that, in any case, there is no substantial relationship between
Morgan Lewis’s corporate work on the 2019 transactions and the current patent-infringement
lawsuit. [ECF No. 23 at 1–3].1
Massachusetts Rule of Professional Conduct 1.9 forbids “[a] lawyer who has formerly
represented a client in a matter” from “represent[ing] another person in the same or a
substantially related matter in which that person’s interests are materially adverse to the interests
1 Solos also separately argues that Morgan Lewis’s ability to represent Oakley, Inc., Luxottica of
America, Inc., and EssilorLuxottica USA, Inc. is materially limited by its ongoing duties to
Kopin under Massachusetts Rule of Professional Conduct 1.7(a)(2), based on Kopin’s ownership
of a twenty-percent stake in Solos. [ECF No. 33 at 7–8 & n.2]. “The ‘critical inquiry’ in
analyzing potential conflicts under rule 1.7(a)(2), ‘is whether the lawyer has a competing interest
or responsibility that will materially interfere with the lawyer’s independent professional
judgment in considering alternatives or foreclose courses of action that reasonably should be
pursued on behalf of the client.’” Maling v. Finnegan, Henderson, Farabow, Garrett & Dunner,
LLP, 42 N.E.3d 199, 206 (Mass. 2015) (quoting Matter of Driscoll, 856 N.E.2d 840, 847–48
(Mass. 2006)). Notably, however, “simultaneous representation in unrelated matters of clients
whose interests are only economically adverse . . . does not ordinarily constitute a conflict of
interest.” Mass. R. Prof. C. 1.7 cmt. 6. Here, because Solos has provided no reason to believe
that Morgan Lewis’s ongoing obligations to a minority owner of Solos will materially interfere
with its exercise of independent professional judgment in representing defendants in this
litigation, disqualification is not warranted under Mass. R. Prof. C. 1.7(a)(2).
Case 1:26-cv-10304-ADB Document 68 Filed 04/06/26 Page 3 of 7

4
of the former client unless the former client gives informed consent, confirmed in writing.”2
Under this rule, the party seeking disqualification must “show[] (1) that an attorney-client
relationship existed in the former legal representation, and (2) that the former and current
representations are both adverse and substantially related.” Bays v. Theran, 639 N.E.2d 720, 724
(Mass. 1994) (quoting Note, Developments in the Law: Conflicts of Interest in the Legal
Profession, 94 Harv. L. Rev. 1244, 1318 (1981)); see also Adoption of Erica, 686 N.E.2d 967,
971–72 (Mass. 1997) (noting that Massachusetts Rules of Professional Conduct “specifically
incorporate” substantial relationship test). To determine whether matters are “substantially
related,” courts must “compar[e] ‘the overlap and similarity’ between the former and current
representations,” to assess whether counsel “possess[es] confidential information that could be
used against the former client in the current representation.” Wessell v. Mink Brook Assocs.,
Inc., 35 N.E.3d 377, 382 (Mass. App. Ct. 2015) (quoting Slade v. Ormsby, 872 N.E.2d 223, 227
(Mass. App. Ct. 2007)); see also Borges v. Our Lady of the Sea Corp., 935 F.2d 436, 439–40 (1st
Cir. 1991) (describing “the relevant inquiry” as whether “the attorney [could] have obtained
confidential information in the first [representation] that would have been relevant to the second”
(citing Analytica, Inc. v. NPD Rsch., Inc., 708 F.2d 1263, 1266 (7th Cir. 1983))); ebix.com, Inc.
v. McCracken, 312 F. Supp. 2d 82, 93 (D. Mass. 2004) (examining the similarity of “the factual
contexts” and “the legal issues”). The party seeking disqualification bears the burden of
demonstrating that the substantial-relationship test is satisfied. See ebix.com, 312 F. Supp. 2d at
90–91.
2 Under Local Rule 83.6.1(a), “[t]he rules of professional conduct for attorneys appearing and
practicing before this court shall be the Massachusetts Rules of Professional Conduct.”
Case 1:26-cv-10304-ADB Document 68 Filed 04/06/26 Page 4 of 7

5
Here, Morgan Lewis’s representation of Kopin during the 2019 transactions does not
require Morgan Lewis’s disqualification in this litigation under Mass. R. Prof. C. 1.9, for two
reasons. First, Morgan Lewis’s counselling of Kopin did not create an attorney-client
relationship between Morgan Lewis and Solos because (1) “[t]he assignment of a patent does not
transfer an attorney client relationship,” Jefferson St. Holdings, LLC v. Otter Prods., LLC, No.
23-cv-01514, 2023 WL 7551560, at *12 (D. Colo. Nov. 14, 2023) (quoting Telectronics
Proprietary, Ltd. v. Medtronic, Inc., 836 F.2d 1332, 1336 (Fed. Cir. 1988)); see also Coffin v.
Bowater Inc., No. 03-cv-00227-P-C, 2005 WL 5885367, at *2 (D. Me. May 13, 2005) (“[A]
mere transfer of assets does not transfer the attorney-client privilege.”), and (2) “courts have held
that ‘representation adverse to a former client’s affiliate is proper unless there is a high degree of
operational commonality and financial dependence between the affiliated entities,’” Evolutionary
Intel., Inc. v. Facebook, Inc., No. 12-cv-00784, 2013 WL 12140485, at *14 (E.D. Tex. July 3,
2013) (citing GSI Com. Sols., Inc. v. BabyCenter, L.L.C., 618 F.3d 204, 210–11 (2d Cir. 2010)).
Neither Morgan Lewis’s representation of Kopin before the spin-off of Solos—a spin-off during
which the newly formed Solos was represented by separate counsel—nor Kopin’s current
minority ownership interest in Solos transforms Solos into Morgan Lewis’s client for purposes of
Mass. R. Prof. C. 1.9.
Solos relies on UCAR International, Inc. v. Union Carbide Corp., a case in which a court
disqualified counsel who had advised a parent corporation on the sale of fifty percent of a wholly
owned subsidiary in a joint-venture transaction and later sought to represent the subsidiary in a
lawsuit against the parent arising out of the joint venture. No. 00-cv-01338, 2002 WL 31519616,
at *1, 4–6 (S.D.N.Y. Nov. 8, 2002), aff’d, 119 F. App’x 300 (2d Cir. 2004). The UCAR court
made clear, however, that, “[w]hile [the subsidiary] may have expected that [counsel for the
Case 1:26-cv-10304-ADB Document 68 Filed 04/06/26 Page 5 of 7

6
parent] would protect its interests during the transaction, [counsel’s] primary client was [the
parent,] the seller,” emphasizing that counsel had represented the parent “before [the subsidiary]
existed as a separate entity.” Id. at *3. So too here: the fact that Morgan Lewis represented
Kopin when the business division that would later be transferred to Solos was still a part of
Kopin does not, without more, transform Morgan Lewis into Solos’s counsel during or after
Solos’s spin-off from Kopin.
At oral argument, Solos also argued that Morgan Lewis counselled Dr. Fan, who was
then Kopin’s Chairman and CEO and would later become Solos’s Executive Chairman, before
the creation of Solos. There is no evidence, however, that Morgan Lewis represented Dr. Fan,
Kopin’s then-CEO, separate and apart from its representation of Kopin, see [ECF No. 33-1 ¶ 14],
and, in any event, because Dr. Fan is not a party to this lawsuit, any prior representation of him
by Morgan Lewis would not create an issue under Massachusetts Rule of Professional Conduct
1.9.
Second, even if an attorney-client relationship existed between Morgan Lewis and Solos,
there is no substantial relationship between any former representation by Morgan Lewis of Solos
and its current representation of Oakley, Inc., Luxottica of America, Inc., and EssilorLuxottica
USA, Inc. Morgan Lewis’s work on discrete corporate-law issues during the 2019 transactions
appears entirely unrelated to the issues in the instant patent-infringement dispute. See ebix.com,
312 F. Supp. 2d at 91–94 (finding no substantial relationship between counsel’s prior work
“registering copyrights” and claims alleging infringement of those copyrights); Nike, Inc. v.
Lululemon USA Inc., No. 23-cv-00771, 2023 WL 5938942, at *2 (S.D.N.Y. May 1, 2023)
(finding no substantial relationship between counsel’s prior provision of general advice on
“strategies to avoid premature public disclosure of [the client’s] inventions” and later patent-
Case 1:26-cv-10304-ADB Document 68 Filed 04/06/26 Page 6 of 7

7
infringement lawsuit); Regalo Int’l, LLC v. Munchkin, Inc., 211 F. Supp. 3d 682, 692 (D. Del.
2016) (finding no substantial relationship between patent-infringement lawsuit and prior
representation, during which counsel had “performed no work . . . with regard to the general
subject matter of this case (patent law), let alone any work tied to the specific patents or products
at issue in this litigation”). Nor has Solos established that Morgan Lewis through its prior work
gained access to confidential information that it could use against Solos in this litigation. In
making its argument, Solos focuses on Morgan Lewis’s alleged access to a non-public royalty
rate governing certain payments by Solos to Kopin, which it says is relevant to damages in this
litigation. [ECF No. 33 at 3–4]. Solos, however, has not explained how Morgan Lewis could
use such information—which is clearly independently discoverable in this litigation—against it
in this matter. See Wessell, 35 N.E.3d at 382. Accordingly, the Court finds that there is no
substantial relationship between Morgan Lewis’s prior work on the 2019 transactions and its
representation of Oakley, Inc., Luxottica of America, Inc., and EssilorLuxottica USA, Inc. here.
For the reasons above, Solos’s motion to disqualify Morgan Lewis, [ECF No. 18], is
DENIED.
SO ORDERED.
April 6, 2026 	/s/ Allison D. Burroughs
ALLISON D. BURROUGHS
U.S. DISTRICT JUDGE
Case 1:26-cv-10304-ADB Document 68 Filed 04/06/26 Page 7 of 7