Regalo International, LLC V. Munchkin, Inc.

211 F. Supp. 3d 682, 2016 U.S. Dist. LEXIS 146457, 2016 WL 5667624
CourtDistrict Court, D. Delaware
DecidedSeptember 29, 2016
DocketCivil Action No. 15-1103-LPS-CJB
StatusPublished
Cited by6 cases

This text of 211 F. Supp. 3d 682 (Regalo International, LLC V. Munchkin, Inc.) is published on Counsel Stack Legal Research, covering District Court, D. Delaware primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

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Regalo International, LLC V. Munchkin, Inc., 211 F. Supp. 3d 682, 2016 U.S. Dist. LEXIS 146457, 2016 WL 5667624 (D. Del. 2016).

Opinion

MEMORANDUM ORDER

Christopher J. Burke, UNITED STATES MAGISTRATE JUDGE

Before the Court is Defendant Munchkin, Inc.’s (“Defendant” or “Munehkin”) “Motion to Disqualify Plaintiffs Counsel Panitch, Schwarze, Belisario & Nadel LLP” (the “Motion”). (D.I. 18) For the reasons set forth below, Defendant’s Motion is DENIED.

I. BACKGROUND

A. Procedural Background

Plaintiff Regalo International, LLC (“Plaintiff’ or “Regalo”) filed this patent infringement action against Munehkin on November 30, 2015. (D.I. 1). In the Complaint, Regalo accuses Munchkin’s MK0032 Toddler Safety Bed Rail and Munchkin’s MKCA0509 Bedrail (collectively, the “accused products” or the “Sleep bedrail product”) of infringing three Regalo patents. (Id; D.I. 19 at 7)

After filing an Answer on January 20, 2016, (D.I. 9), Munehkin filed the instant Motion on March 1, 2016, (D.I. 13). In filing the Motion, Munehkin asserted that, because the law firm Panitch, Schwarze, Belisario & Nadel LLP (hereinafter, “Pan-itch” or the “Panitch firm”) represented Munehkin in the past on numerous trademark matters, Panitch may not now represent Regalo in this case.

Chief Judge Leonard P. Stark referred the Motion to the Court for resolution on March 2, 2016. (D.I. 16) The Motion was fully briefed by March 31, 2016, (D.I. 29), and the parties submitted additional letters regarding the Motion in June 2016, (D.I. 47, D.I. 50). The Court heard oral argument on the Motion on September 15, 2016.

B. Factual Background

It is undisputed that Panitch represented Munehkin from January 2008 until December 2014. (D.I. 15, Declaration of Laura Genovese (“Genovese Deck”) at ¶¶ 9-10) Panitch’s past representation of Munehkin coincided with, and was largely due to, Panitch’s employment of Laura Genovese. [684]*684(Genovese Decl. at ¶¶3-4) Ms. Genovese, an attorney, began working at Panitch in January 2008, and was a partner at the firm from January 2012 until her departure in December 2014.

Ms. Genovese’s relationship with Munchkin predated her employment at Panitch. In fact, from the time Munchkin came into existence in or about 1991, Ms. Genovese has served as Munchkin’s “outside global trademark counsel.” (Id. at ¶¶ 4-5) In that role, she has “handled or been involved in virtually every one of Munchkin’s trademark applications in the United States and abroad,” as well as “numerous trademark opposition proceedings on Munchkin’s behalf.” (Id. at ¶ 5) Ms. Genovese left Panitch in December 2014 to start a new law firm, K & G Law, LLC (“K & G”), and took the Munchkin client relationship with her; since that month, Panitch has not billed any time to Munchkin. (Genovese Decl. ¶ 9; Declaration of Dennis Butler (“Butler Decl.”), D.I. 22 at ¶¶ 8-10)

During the time Ms. Genovese worked at Panitch, Panitch’s work for Munchkin largely consisted of trademark matters handled by three legal professionals: Ms. Genovese, Maureen Kassner (an attorney who left Panitch to start K & G Law with Ms. Genovese), and Christine Smith (a paralegal who also now works at K & G Law with Ms. Genovese and Ms. Kassner). (Butler Decl. at ¶¶9, 11; Declaration of Patricia Smink Rogowski (“Rogowski Decl.”), D.I. 21 at ¶¶ 5, 7; D.I. 19 at 4) From February 2008 to December 2014, Panitch attorneys spent approximately 1, 480 hours working on Munchkin matters, and Panitch invoiced Munchkin approximately $667, 267 for this legal work. (Butler Decl. at ¶ 8; Genovese Decl. at ¶ 10) Ms. Genovese, Ms. Kassner and Ms. Smith entered 1, 370.7 of these hours (or approximately 93% of the total). (Butler Decl. at ¶ 9)

The remaining time billed by Panitch attorneys and staff during this period— amounting to approximately 110 hours of work—was dispersed among a few other legal professionals. Over 90 hours (or approximately 6%) of the total were entered by Panitch attorneys and staff who departed Panitch prior to the departures of Ms. Genovese, Ms. Kassner, and Ms. Smith. (Id. at ¶ 11) Ronald Panitch, the only current Panitch partner who has billed Munchkin, billed 0.4 hours in September 2010. (Id. at ¶ 5) Keith Jones, a current Panitch associate who has performed work for Regalo in this case (see D.I. 46, D.I. 47, D.I. 50), billed Munchkin 14.1 hours for work performed between September 30 and October 26, 2013, on a single trademark opposition matter. (Declaration of Keith Jones (“Jones Decl.”), D.I. 23 at ¶ 4; Butler Decl. at ¶ 7)1 Lastly, two current, non-attorney Panitch staff members billed 3.3 hours for work taking place in 2008, 2012 and 2013. (Butler Decl. at ¶ 6)

All (or nearly all) of the above work performed by Panitch for Munchkin from February 2008 to December 2014 related to trademark matters. There is no record evidence indicating that Panitch performed any work for Munchkin on patent matters during this time, such as patent prosecution, patent licensing, patent clearance work, patent post-grant review or patent litigation. (Declaration of Frederick A. Tecce (“Tecce Decl.”), D.I. 20 at ¶ 18)2 [685]*685Additionally, it is uncontested that none of Panitch’s work for Munehkin (including Ms. Genovese’s trademark work) involved the accused products at issue in this litigation. (Id. at ¶¶ 18-19)

During the course of her work as Munchkin’s outside global trademark counsel, Ms. Genovese was frequently exposed to a significant amount of Munchkin’s confidential business information. (Genovese Decl. at ¶ 6) This included “information concerning not only Munchkin’s trademark portfolio and corresponding strategies, but also related issues like Munchkin’s licensing positions and strategies, product development and placement strategies, and overall market position strategies.” (Id.) Ms. Genovese also “participated in and assisted with strategy development, factual discovery, and document production in certain Munehkin litigation matters.” (Id. at ¶ 7) Additionally, she had “frequent contact” with Munchkin’s Vice President and General Counsel, Petty Rader, and had “relatively frequent contact” with Munchkin’s Chief Executive Officer (“CEO”) and President, Steven Dunn, and other Munchkin officers and business managers. (Id. at ¶ 8)

Although Ms. Genovese was the linchpin of the Panitch-Munchkin relationship, she did share information about Munehkin with other attorneys at the firm. For example, she states that on multiple occasions she conveyed information about “Munchkin’s business and its active and prospective intellectual property matters” during Panitch partner meetings. (Id. at ¶ 12) Ms. Genovese believes that a number of the partners who attended these meetings are still partners at Panitch today. (Id.)

The only specific conversation with a Panitch partner that Ms. Genovese has recounted involves a discussion she had with Frederick Tecce, who represents Re-galo in this matter.3 In the fall of 2012, Ms. Genovese helped Mr. Tecce to prepare for a meeting with Mr. Dunn and Ms. Rader. (Tecce Decl. at ¶ 10; Genovese Decl. at ¶ 11) Mr. Tecce was to meet with the two to discuss whether Panitch might represent Munehkin in additional, non-trademark, litigation matters—and in particular a false marketing and advertising case (involving diaper pail advertising) to which Munehkin was then a party. (Tecce Decl. at ¶ 10; Genovese Decl. at ¶ 11) Ms. Ge-novese states that, prior to Mr.

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211 F. Supp. 3d 682, 2016 U.S. Dist. LEXIS 146457, 2016 WL 5667624, Counsel Stack Legal Research, https://law.counselstack.com/opinion/regalo-international-llc-v-munchkin-inc-ded-2016.