FACETEC INC v. JUMIO CORPORATION (2025)

ORDER DENYING MOTION TO DISQUALIFY MORRISON & FOERSTER AS COUNSEL

FaceTec, Inc. (“FaceTec”) brings this suit against Jumio Corporation (“Jumio”), alleging that Jumio infringed four of its patents (the “Asserted Patents”). All of the Asserted Patents concern biometric liveness technology, which FaceTec has alleged is embodied in its flagship product, ZoOm. On December 16, 2024, FaceTec moved to disqualify Perkins Coie (“Perkins”), Jumio's counsel at the time, based on the firm's prior representation of FaceTec. Although the Court concluded that Perkins did not prosecute the Asserted Patents or other applications to which the Asserted Patents claimed priority, it granted the motion to disqualify Perkins because it found that there was a substantial risk that information acquired by Perkins through its prior representation of FaceTec might become material to the current lawsuit. That conclusion was reached, in part, because Perkins' attorneys had represented FaceTec on general corporate and intellectual property matters during FaceTec's infancy, and those attorneys had received confidential information about what FaceTec believed made ZoOm innovative and valuable at the time. Thus, because “a potentially key issue [in this lawsuit] [could] be whether ZoOm's commercial success [in 2015] was attributable to the innovative nature of the patented features, rather than other differentiators,” disqualification of Perkins was warranted. (Dkt. No. 94 at 1-2.)¹

Morrison & Foerster now appears on behalf of Jumio as its counsel.² FaceTec moves to disqualify Morrison & Foerster, arguing that the conflict attributed to Perkins should be vicariously imputed to Morrison & Foerster because both firms appeared in this case at the beginning of the litigation. (Dkt. No. 103.) For the reasons stated below, the motion is DENIED. This order assumes that the reader is familiar with the facts of the case, the applicable legal standards, and the parties' arguments.

FaceTec argues that, based on Morrison & Foerster's appearance at the outset of this litigation, Perkins and Morrison & Foerster acted as co-counsel for two months. That conclusion is not supported by the evidence. At the time that this litigation was filed in June 2024, Morrison & Foerster was representing Jumio in a separate arbitration matter that involved FaceTec. Jumio did not hire Morrison & Foerster to represent it on the merits in this litigation at that time, but did authorize the firm to ask FaceTec for an extension of time to respond to the new lawsuit. At the arbitration hearing six days after the lawsuit was filed, a Morrison & Foerster attorney therefore asked FaceTec's counsel for the extension and explained that he was representing Jumio for the limited purpose of seeking that extension. FaceTec agreed to the extension, and Morrison & Foerster filed the stipulation confirming the extension on the docket for this case.

Jumio then hired Perkins to represent it in the case, and Perkins filed Jumio's answer and counterclaims on August 23, 2024. (Dkt. No. 18.) Three days later, on August 26, 2024, Morrison & Foerster filed its notice of withdrawal from the case. (Dkt. No. 20.) As Morrison & Foerster's attorneys attest, Morrison & Foerster “did not have any oral or written communications with Perkins at all prior to filing [its] notice of withdrawal.” (Dkt. No. 119-1 (“Kuwayti Decl.”) ¶ 20; see also Dkt. No. 119-8 (“Kinsel Decl.”) ¶ 8.). During the period between Morrison & Foerster's withdrawal from the case and Perkins' disqualification, attorneys from the two firms had limited communications, all by email. None of these communications involved the Perkins attorneys who had received the confidential information from FaceTec that led to Perkins' disqualification. Moreover, all of those communications involved Morrison & Foerster providing information to Perkins concerning the arbitration, rather than Perkins providing information to Morrison & Foerster regarding the litigation. In its reply brief, FaceTec does not rebut this characterization of the evidence. On the facts, this is insufficient to establish that Morrison & Foerster and Perkins acted as co-counsel in this case.

FaceTec further argues that Morrison & Foerster and Perkins have currently been serving as co-counsel because Perkins has not formally filed its notice of withdrawal from the case. However, Perkins has already been disqualified, and therefore there is no basis from which to draw that conclusion.

Nevertheless, even if Perkins and Morrison & Foerster had had a co-counsel relationship in 2024, that would not provide a basis for disqualification. FaceTec cites to, among other cases, Advanced Messaging Technologies, Inc. v. EasyLink Services Corp., 913 F. Supp. 2d 900 (C.D. Cal. 2012), and Pound v. Cameron, 36 Cal. Rptr. 3d 922 (Ct. App. 2005), for the proposition that the vicarious disqualification rule applies to the co-counsel of a disqualified attorney or law firm, and that the presumption of disqualification is irrebuttable. However, in those cases, the co-counsel was engaging with the tainted attorney who had actually received the confidential information themselves, not just with an attorney to whom the conflict had been imputed. See Flatworld Interactives LLC v. Apple Inc., No. 12-cv-01956-WHO, 2013 WL 4039799, at *5 (N.D. Cal. Aug. 7, 2013) (denying motion to disqualify on that basis and distinguishing Pound because in that case, “the court disqualified an attorney because his co-counsel actually had confidential information from their adverse party and was therefore conflicted even though the co-counsel never shared the information with the attorney”).

That is not the case here. The undisputed record is that Morrison & Foerster's attorneys did not communicate with any attorneys from Perkins who had received confidential information. Accordingly, as this Court is “unaware of any case in which a court disqualified an attorney or a law firm when no attorney had actual knowledge or possession of confidential information about an adverse party but one was conflicted only through imputation,” it finds that even if Morrison & Foerster and Perkins had acted as co-counsel in this case in 2024, the vicarious disqualification rule would not apply. Id.

Finally, FaceTec argues that, in any event, Morrison & Foerster should be prohibited from receiving documents—including work product—from Perkins. That is not required. The transfer of work product is typically allowed where there is no evidence that the documents may be tainted with confidential client information. See, e.g., Andric v. California, 55 F. Supp. 2d 1056, 1069 (C.D. Cal. 1999) (allowing transfer of work product, “including their views, strategies, notes and all aspects of case preparation,” where there was no evidence in the record that the attorneys working on the matter had obtained confidential information); Cal Pak Delivery, Inc. v. United Parcel Serv., Inc., 60 Cal. Rptr. 2d 207, 217 (Ct. App. 1997) (“Among the principles guiding imposition of such a penalty is that the court must focus on the specific injury to the movant caused by the disqualifying conduct and formulate a remedy which removes any improper advantage that has been, or might be, gained over the movant.” (quotation omitted) (emphasis in original)). In July 2024, when Perkins was retained to represent Jumio in this litigation, Perkins implemented a precautionary screen to wall off its attorneys who had previously represented FaceTec in 2014 and 2015. (Dkt. No. 70-18 (“Precautionary Screen”) at 2.) As the Court explained in its prior order disqualifying Perkins, the precautionary screen was insufficient to cure the conflict as to Perkins (and therefore prevent disqualification) because the firm did not provide notice of the screen to FaceTec, as was required under the ethics rules. (Dkt. No. 94 at 13-14.) However, the undisputed evidence is that, because a precautionary screen was in place, no confidential information acquired by the tainted attorneys was shared with Perkins' litigation team, meaning that there is no risk that Perkins' work product relating to this case is tainted with such confidential information at this juncture.

Moreover, even where disqualification of a law firm or attorney is ordered, courts have found that transfer of work product may be appropriately limited by accompanying declarations, signed under penalty of perjury. See, e.g., Advanced Messaging, 913 F. Supp. 2d at 913 (authorizing the transfer of non-public documents when accompanied by declaration attesting that the reviewing attorney has “exercised due diligence in evaluating the propriety of transmitting the non-public documents” and that the tainted attorney “did not provide, directly or indirectly, any information contained within the non-public documents”).

Therefore, in connection with the transition of counsel, Perkins is permitted to transmit to Morrison & Foerster its files concerning this case, including all attorney work product. However, non-public documents that pertain to secondary considerations of obviousness may not be transmitted, unless they are accompanied with a declaration, signed under penalty of perjury, from a partner (the “Partner”) at Perkins with substantial familiarity with this case, attesting as follows: that the Partner has exercised due diligence in evaluating the propriety of transmitting the non-public documents to successor counsel, and attests to the best of such Partner's information and belief that no Perkins attorney who received confidential information from FaceTec provided, directly or indirectly, any information contained within the non-public documents.

Based on the foregoing reasons, the motion to disqualify Morrison & Foerster is denied. The stay of this litigation is lifted, and the parties shall submit a joint filing with a proposed adjusted case schedule by July 30, 2025.

IT IS SO ORDERED.

FOOTNOTES

1.   Citations to page numbers refer to the ECF pagination.

2.   I was previously a partner at Morrison & Foerster, prior to leaving the firm to become a federal prosecutor in 2014. I have not had any involvement with the law firm since 2014, including financial involvement, and have not socialized with or done significant work with any of the Morrison & Foerster attorneys identified on the pleadings. Although I see no obstacles to being fair and impartial and there is no basis for recusal, this information is provided to the parties in the interest of full disclosure.

RITA F. LIN United States District Judge