In one of several patent battles that Apple is waging across the country against Google's Android operating system, Motorola moved to exclude the testimony of one of the inventors of the patent-in-suit. As part of determining this motion, the district court, Judge Posner, requested that Apple answer several questions in camera, including why the inventor retained certain counsel and under what circumstances the inventor retained the additional counsel provided by Apple.
Judge Posner noted that, although the attorneys responded, the response was incomplete. The lawyer did state that he volunteered his legal assistance to the inventor at no charge. Judge Posner found that the only purpose of this representation was to discourage the inventor from giving testimony that would be helpful to Motorola. "Kreeger's only motive in thus volunteering could have been to discourage Han from giving any testimony at his deposition that might be helpful to Motorola or other Android affiliates in their patent war with Apple, of which the present case is one of the battles. Kreeger's initial response to my order did not acknowledge that he had attended the deposition with Han and examined Han in the course of it. The response also did not disclose the substance of his conversations with Han. The retention agreement that he submitted contains a comprehensive waiver by Han to any objection to conflicts of interest by that, Cherensky states in his affidavit: 'Because I and my firm, and the other firms representing Apple in this litigation do not represent Mr. Han, and because Apple has no contractual relationship with Mr. Han, neither Apple's counsel in this litigation nor Apple itself have any authority over Mr. Han. We do not have access to Mr. Han's privileged information and cannot direct him to waive any privilege.' This statement is disingenuous, since the retention agreement states as I said that "Apple may waive that privilege if it determines that it is necessary to dos so."
As a result of the arrangement between the Apple lawyers and the inventor, Judge Posner found that no bona fide attorney-client relation was created: "The only plausible motive for an Apple lawyer to volunteer his services--free of charge--would be to coach Han so that he wouldn't say anything damaging to Apple in his deposition. Kreeger's retention agreement with Han required Han not to waive attorney-client privilege but gave Apple the power to waive neither required legal counseling from Kreeger to 'protect' him from Motorola nor, so far as I can determine from the affidavits, received any. I concluded that no bona fide attorney-client relationship was created and that Apple's assertion of attorney-client privilege is unfounded. "
Accordingly, Judge Posner concluded that if Apple attempted to use the inventor's deposition in the case, then Motorola would be entitled to cross-examine the inventor regarding the discussions with the Apple lawyers.
Apple Inc. and NeXT Software Inc. v. Motorola, Inc. and Motorola Mobility, Inc., Case No. 1:11-cv-08540 (N.D. Ill. April 23, 2012)