61. Redundant of prior requests—need not be answered.
62. Redundant of prior requests—need not be answered.
64. Redundant of prior requests—need not be answered.
71. Overbroad—need not be answered.
72. Overbroad—need not be answered.
76. Must be answered only with regard to PA–8000 family of processors, together with servers or workstations containing accused CPU units.
77. Must be answered only with regard to PA–8000 family of processors, together with servers or workstations containing accused CPU units.
78. Must be answered only with regard to PA–8000 family of processors together with servers or workstations containing accused CPU units.
79. Must be answered, limited to documents specifically discussing competitors and competition for the PA 8000 family processors together with any servers or work stations containing such CPU units.
107. Redundant—need not be answered.
108. Redundant—need not be answered.
109. Redundant—need not be answered.
110. Redundant and overbroad—need not be answered.
111. Must be answered, limited to accused products, together with servers and workstations containing such allegedly infringing CPU units.
112. Redundant and overbroad—need not be answered.
113. Redundant and overbroad—need not be answered.
117. Redundant—need not be answered.
118. Redundant—need not be answered.
119. Redundant—need not be answered.
The foregoing is without prejudice to CRF's right to renew any of the foregoing requests for information, narrowed in form, based upon demonstrable evidence that such *66 documents exist and the scope of the request is reasonable, and upon a showing of relevance which outweighs the burden associated with production.
In this portion of their motion, plaintiffs seek to probe questions of infringement and willfulness by requesting HP to identify and produce various documents including any opinions of non-liability with regard to the '115 patent. Those efforts implicate Cornell Interrogatory No. 2 and RFP No. 1 (McKenzie Decl. (Dkt. No. 93) Exhs. 17, 32), as well as CRF's Fourth RFP Nos. 100–105. Id.
Exh. 8. In its original motion, CRF maintained that as of that time of its filing HP had not identified or provided so much as a single document in answer to those requests, nor had any documents withheld but falling within the scope of the requests been included in a proper privilege log.
The primary, though not exclusive, thrust of the requests falling within this category is to garner information related to attorney opinions of non-liability, presumably to be offered by HP to rebut a finding of willful infringement. In its responsive submission to the court, HP agreed that on or before a deadline which has since passed it would *71 disclose to the plaintiffs any non-liability opinions upon which it intends to rely at trial. To this extent the parties appear to be in agreement as to the appropriateness of such a compromise. The parties differ, however, as to the scope of any attorney-client privilege waiver associated with such opinions of counsel to be relied upon at trial. HP, without citing any authority, argues that the waiver applies only to any communications between HP and opinion counsel on the same subject matter of the opinion, as well as things relied upon by opinion counsel, but should “not apply to any communications between HP and litigation counsel.” Brown Letter dated March 21, 2003 (Dkt. No. 92) at 11. CRF, on the other hand, contends that the waiver extends not only to the opinions to be relied upon, but to evidence which “may undermine, conflict with, or be in any way inconsistent with the opinion relied upon by the infringer” and additionally should extend “to any and all materials available to the attorneys rendering the advice that is in any way related to the non-liability opinions, including work product materials.” McKenzie Letter dated March 14, 2003 (Dkt. No. 91) at 17–18.
During the May 14, 2003 hearing HP augmented its response by noting that there is only one opinion falling within this category and advising that it would produce that opinion. From the parties' submissions, however, it appears that they differ concerning the significance of that disclosure and the scope of any attorney-client privilege or work product doctrine waiver resulting from reliance upon that opinion.
The issue at hand is governed, in the first instance, by Rule 501 of the Federal Rules of Evidence, which in a case such as this provides that matters of privilege are informed by decisional authority of the federal courts “in the light of reason and experience.” Fed.R.Evid. 501; see also
United States v. Goldberger & Dubin, P.C., 935 F.2d 501, 505 (2d Cir.1991). As is true with regard to other discovery exemptions, such as attorney work product, the burden of establishing entitlement to claim privilege, including all of the required elements associated with such a claim, falls upon the party seeking to invoke its protection. von Bulow v. von Bulow, 811 F.2d 136, 144 (2d Cir.), cert. denied sub nom.,
Reynolds v. von Bulow by Auersperg, 481 U.S. 1015, 107 S.Ct. 1891, 95 L.Ed.2d 498 (1987); see generally
Lawyers Title Ins. Corp. v. Bank of New York, No. 90 Civ. 6529, 1991 WL 158961, at *1 (S.D.N.Y. Aug.12, 1991) (citing United States v. Stern, 511 F.2d 1364, 1367 (2d Cir.), cert. denied,
423 U.S. 829, 96 S.Ct. 47, 46 L.Ed.2d 46 (1975)).
Although variously stated, depending upon the context in which it has been presented, the attorney-client privilege is generally thought to encompass eight distinct elements, applying in instances
(1) where legal advice of any kind is sought (2) from a professional legal adviser [sic] in his capacity as such, (3) the communications relating to that purpose (4) made in confidence (5) by the client, (6) are at his instance permanently protected (7) from disclosure by himself or by the legal adviser [sic], (8) except the protection be waived.
Golden Trade, S.r.L. v. Lee Apparel Co., 143 F.R.D. 514, 517 (S.D.N.Y.1992) (quoting 8 J. Wigmore, Evidence § 2292 at 554 (McNaughton Rev.1961)). It has been noted, moreover, that while this formulation is obviously limited to communications from client to attorney, “courts appear to hold that the same protection should extend to legal advice rendered by the attorney, at least if it might reflect or reveal the client's confidential communications.” Lee Apparel Co., 143 F.R.D. at 517–18 (collecting cases).
In determining whether it should apply, a court should not lose sight of the strong policy considerations which form the underpinning of the attorney-client privilege—one which is deeply rooted in our country's jurisprudence, and finds its origins in English common law. See
*72 Upjohn Co. v. United States, 449 U.S. 383, 389, 101 S.Ct. 677, 682, 66 L.Ed.2d 584 (1981) (citing 8 J. Wigmore, Evidence § 2290). In serving its underlying policy considerations the privilege seeks “to encourage full and frank communication between attorneys and their clients”. Upjohn Co., 449 U.S. at 389, 101 S.Ct. at 682. It is generally thought that serious encroachment upon this privilege would vastly undermine the ability of an attorney to represent a client effectively, and would have a potentially chilling effect upon the unfettered and candid flow of communications necessary for proper fulfillment of an attorney's role. Id.; see also
24 Charles Alan Wright & Kenneth W. Graham, Jr. Federal Practice & Procedure, Evidence § 5472 (1986 & 2003).
6It is well established that notwithstanding the historical underpinnings of the privilege, an alleged infringer who, during the course of defending against infringement claims, signals an intention to rely upon advice of counsel to avoid a finding of willful infringement, waives any claim of attorney-client privilege or work product protection with regard to matters associated with the non-infringement opinion. Novartis Pharms. Corp. v. Eon Labs Mfg., Inc., 206 F.R.D. 396, 398 (D.Del.2002); Micron Separations, Inc. v. Pall Corp., 159 F.R.D. 361, 363–64 (D.Mass.1995). While this much does not appear to be controversial, the parties' positions diverge with regard to the scope of the waiver and specifically what materials in addition to the actual opinion letter must be disclosed.
The analysis as to the proper scope to attribute to the limited waiver resulting from reliance upon advice of counsel must begin with the precept that the willful infringement inquiry is focused upon the alleged infringer's state of mind at the time of infringement. See
Dunhall Pharms., Inc. v. Discus Dental, Inc., 994 F.Supp. 1202, 1203–04 (C.D.Cal.1998); Micron Separations, Inc., 159 F.R.D. at 363. This fact has led some courts to construe the waiver requirement narrowly, and thus to mandate disclosure only of materials actually communicated to the alleged infringer prior to the time of infringement. See
Dunhall Pharms., Inc., 994 F.Supp. at 1203–04; Micron Separations, Inc., 159 F.R.D. at 363–65. It is true that in patent cases, as elsewhere, any waiver of the privilege resulting from reliance upon advice of counsel is generally construed narrowly. Kelsey–Hayes Co. v. Motor Wheel Corp., 155 F.R.D. 170, 172 (W.D.Mich.1991) (citing Fonar Corp. v. Johnson & Johnson, 227 U.S.P.Q. 886, 888, 1985 WL 186693 (D.Mass.1985)). As one court has cautioned, however,
[a] narrowly circumscribed waiver, at the discovery state, creates a danger of a defendant utilizing favorable opinion letters while allowing unfavorable evidence to languish in their attorney's files under the protection of the work product doctrine.
Dunhall Pharms., 994 F.Supp. at 1204. For this reason, courts have generally extended the scope of the waiver beyond merely those communications between counsel and client which would be admissible at trial, in recognition of the fact that the scope of discovery traditionally extends beyond the bounds of admissibility. Dunhall Pharms., 994 F.Supp. at 1204–05.
7Having considered the matter carefully, I agree with those courts that have extended the waiver beyond the limits of admissibility, and therefore will order HP to produce all materials related to the opinion disclosed by HP, including documents or materials used by or prepared by HP or its counsel and referred to in the opinion, as well as any other opinions which support, contradict or weaken the attorney's opinions. Kelsey–Hayes, 155 F.R.D. at 172;see also
Novartis Pharms., 206 F.R.D. at 399 (“In the Court's view, it is critical for the patentee to have a full opportunity to probe, not only the state of mind of the infringer, but also the mind of the infringer's lawyer upon which the infringer so firmly relied. There is no reason why the alleged infringer's waiver of the attorney-client privilege should not be considered absolute, encompassing materials typically protected by the work product doctrine.”). I will also require HP to provide a more complete privilege log identifying any materials relating to this issue which have been withheld notwithstanding my ruling.
It is my hope that the foregoing provides some guidance to the parties and in some way contributes to the objective of crystalizing the parties' disclosure obligations. My goal in undertaking this task has been to ensure that a requesting party can gain some level of assurance and comfort that a full search has been made by the responding party and that subject to any documents withheld and properly identified on a privilege log, full disclosure of required documents has occurred. With this objective in mind, based upon the foregoing, it is hereby
ORDERED that CRF's motion to compel is GRANTED in part, as to the following:
1) CRF's request for basic damage calculation data, as relates to CRF Interrogatory Nos. 5 and 6 and CRF Document Request No. 5, as more specifically narrowed and delineated on pages 20–21 of this opinion;
2) CRF's request for information related to peripherals, as relates to CRF Interrogatory Nos. 5 and 6 and Document Request No. 5, as more specifically narrowed and delineated on pages 24–25 of this opinion;
3) CRF Fourth Document Request Nos. 76, 77 and 78, only with regard to PA–8000 family of processors, together with servers or workstations containing accused CPU units;
4) CRF Fourth Document Request No. 79, limited to documents specifically discussing competitors and competition for the PA–8000 family of processors together with any servers or workstations containing such CPU units;
5) CRF Fourth Document Request No. 111, limited to accused products, together with servers and workstations containing such alleged infringing CPU units;
6) CRF Interrogatory No. 8, relating to contention interrogatories—HP is required *83 to describe the factual basis for its patent exhaustion defense, and to identify all documents (whether or not in the possession, custody or control of HP) supporting that defense, and witnesses with knowledge of that defense;
7) CRF Interrogatory No. 7, as it relates to agreements with HP and third parties concerning HP–8000 family as well as any other CPU units manufactured under other labels or model numbers by or for HP which have the ability to process non-sequential instructions;
8) Cornell Request for Production No. 1; HP is to supply documents related to or identified in its answer to Cornell Interrogatory No. 3, relating to understandings or agreements between HP and any third party regarding HP patent;
9) CRF First Request for Production Nos. 5 and 6, as they related to PA–8000 processors; HP is instructed to identify documents with specificity, and identify documents being withheld that would otherwise fall within the scope of this discovery request, setting forth specific grounds for withholding them;
10) CRF Fourth Request for Production Nos. 6–8, only to the extent of identifying and producing any documents upon which HP intends to rely on at trial;
11) Cornell Interrogatory No. 2 and Request for Production No. 1 and CRF Fourth Request For Production Nos. 100–105; HP instructed to produce all materials related to non-liability opinion disclosed by HP, including documents or materials used by or prepared by HP or its counsel and referred to in the opinion, as well as any other opinions which support, contradict or weaken the attorney's opinions; HP also instructed to provide a more complete privilege log identifying any materials relating to this issue that have been withheld;
12) CRF Second Request for Production, relating to technical specifications, drawings and schematics for the accused processors, including the HP–8000 series; HP is instructed to make available to plaintiffs' expert, during business hours and for a reasonable period of time not to exceed eight hours in total, the technical drawings and specification which it maintains in the ordinary course of business in electronic format regarding the PA–8000 family, subject to terms and conditions negotiated between the parties, including parameters such as presence of HP personnel and after CRF representations during the process;
13) CRF Fourth Request for Production Nos. 68–70 concerning schematics exchanged between HP and third parties relating to the accused products; HP is instructed to produce such information in digital or electronic media format;
14) CRF Interrogatory No. 13 and accompanying Fifth Request for Production No. 8, and CRF Third Request for Production Nos. 1–9, relating to tracking dependencies and nullification;
15) CRF's May 9, 2003 request for the Lotz declaration given to Dr. Flynn, HP's testifying expert;
16) to the extent that HP is required to make certain certifications to plaintiffs and the court, HP is instructed to certify to the court and CRF's counsel within a reasonable time period specified by the parties that:
a) it has supplied information necessary to allow CRF to calculate total number of accused devices manufactured by outside vendors which may be licensed under '115 patent, and identify specifically the documents that contain this information;
b) all documents complying with CRF Interrogatory No. 7 have been produced, with descriptions of those documents and corresponding Bates Nos.;
c) it has fully responded to Interrogatory No. 3;
d) it has produced all documents responsive to CRF Second Request for Production Nos. 31 and 32, and to identify which documents have been produced, which have been withheld and what basis, if any, for withholding;
e) it has provided CRF with access to all responsive, non-privileged documents within its possession, custody or control with regard to CRF Interrogatory No. 13, Fifth Request for Production No. 8, and CRF Third RFP *84 Nos. 1–9, and to extent that documents have been withheld, identify these documents on privilege log together with indication of basis for withholding;
f) it is not withholding any documents solely on the basis of the blanket objections it has asserted;
g) defendant's counsel, including though not limited to Barry Shelton, no longer have available to them in any form—including electronic—drafts of Dr. Flynn's declaration; and
15) to the extent that CRF has moved to compel HP to submit a more detailed privilege log, HP is instructed to provide a proper privilege log in compliance with Rule 26(b)(5) of the Federal Rules of Civil Procedure concerning any documents withheld on the basis of attorney-client privilege or work product doctrine within thirty (30) days of this order; and it is further
ORDERED, that CRF's motion to compel is DENIED, as follows:
1) documents requested pursuant to CRF Document Request No. 6, as that document request is unduly confusing and redundant;
2) CRF Fourth Document Request Nos. 61, 62, 64, 71, 72, 107, 108, 109, 100, 112, 113, 117, 118, and 119, as redundant and/or overbroad, without prejudice to CRF's right to renew any of these, narrowed in form, based upon a demonstration that such documents exist and that the scope of the request is reasonable, and upon a showing of relevance which outweighs the burden of production;
3) CRF Fourth RFP Nos. 9–49, without prejudice to CRF's right to reapply to court, after meeting and conferring with HP to impasse, for directive that HP comply with these requests as narrowed and more clearly defined in scope;
4) CRF's motion to compel is otherwise DENIED; and it is further
ORDERED, that HP's motion to compel discovery is GRANTED in part, in that to the extent that CRF is required to make certain certifications to defendants and the court, CRF is instructed to certify to the court and HP's counsel within a reasonable time period specified by the parties that:
1) it has responded to HP Interrogatory Nos. 3 and 13, related to plaintiff's claim construction contention, by preparing a chart as agreed by the parties;
2) it has supplemented and responded to HP Interrogatory No. 5, concerning licensing and negotiations for rights under the '115 patent;
3) it has responded to HP Interrogatory No. 12, seeking information concerning plaintiff's awareness of prior art related to the '115 patent, as modified;
4) CRF has supplemented and responded with all documents within its possession, custody or control to Requests for Production Nos. 9, 10, 12, 28, 29, 31, 32, 33, 42, 51 and HP's Second Document Request;
5) Cornell has supplemented and responded with all documents within its possession, custody or control to Request for Production Nos. 7, 8, 10, 18, 19, 21, 22, 23, 31, and 40;
6) it has provided information concerning page count for documents listed on its privilege log;
7) it has provided enough information on its privilege log concerning the existence and content of any attachments, with sufficient particularity without disclosing confidential material, to allow HP to understand the scope of what is being withheld; and
8) it has detailed on its privilege log the basis for any withheld attachment,
as distinct from the document to which the attachment is appended; and it is further
ORDERED, that HP's motion to compel is otherwise DENIED; and it is further
ORDERED, that CRF redesignate its privilege log as “Confidential—Level 2”; and it is further
ORDERED, that both parties comply with compromise reached during May 14, 2003 hearing that third party communications designated as “Confidential—Level 1” and notes at issue—including Bates Nos. CR310728–30, CR031735, CR0310747, CR0310762–63, and CR0310764—be excepted from the protective order, in that HP would be permitted to show any particular document within that group to two additional HP employees, other *85 than individuals privy under the protective order to “Confidential—Level 1” documents, and would not be required to reveal the identities of those two employees to CRF, provided that the individuals to whom those documents are shown first sign an agreement to be bound by the protective order; and it is further
ORDERED that the Clerk of the Court serve a copy of this order upon counsel for the parties by regular mail.