III. RULINGS ON DOCUMENTS AND DOCUMENT CATEGORIES
Finally, the Court has established some general directions with respect to the recurrent privilege issues that arose in the course of reviewing the nearly 700 documents submitted for in camera review. These directions reflect the Court's holdings on those issues and should be applied to all documents of the type addressed by the rule, without regard to whether a particular document is discussed.
41. Non–English Documents: First, documents that are written in a language other than English must be translated if Warner Lambert wishes to assert either work product or attorney-client privilege over them. Obviously, the court cannot make a determination as to the status of these documents without knowing what they say. Therefore, Warner Lambert is ordered to provide the Magistrate Judge with a translation of all documents written in a foreign language that it asserts are privileged.
The following documents (as well as any others that do not meet the criteria for either privilege for the reasons adduced above) must be produced, including document numbers 798, 109, 110, 111, 112, 115, 117, 118, 123, 124, 140, 141, 142, 143, 198, 199, 635, 639, 640, 728, 780, 815, 842, 819, 549, 559, 627, 700, 781, and 810.
2. Non–English Documents which are clearly non-privileged: Warner Lambert has provided documents which, although not written in English, are clearly recognizable as correspondence or other pre-existing documents from patent offices and the like. These documents are not protected under any imaginable privilege and must be produced.
Document numbers 127, 445 (except for cover sheet), as well as any others in this category that do not meet the criteria for either privilege for the reasons adduced above, must be produced.
2(b). Translated documents that are communications from a foreign patent office, patent examiner, or otherwise fall outside the scope of the attorney client or work product privilege such as document numbers 135, 120, 121, 122, 136, and 137 must be produced.
53. Non-privileged communications or documents forwarded or Cc'd to an attorney: If documents are created for routine business purposes, by non-attorneys, they do not fall within the purview of the work product privilege. Forwarding an e-mail or other such document that fits this description to an attorney does not transform it into the attorney's work product–i.e. a reflection of his “mental impressions,” or “legal strategy,”and such documents are not “created in anticipation of litigation”. Neither can it be said that communications between clients, unrelated to legal issues or advice, fall under the attorney client privilege. Including an attorney on the distribution list of an interoffice memo, Cc'ing numerous people who are ancillary to the discussion, one of whom happens to be an attorney, or forwarding an e-mail several times until it reaches an attorney does not amount to “attorney client communication.”
Accordingly, documents fitting this description must be produced, (as well as any others that do not meet the criteria for either privilege for the reasons adduced above) including 43, 44, 46, 87, 316, 404, 483, 485, 544, 560, 633, 731, and 861.
The first and third pages of # 212 must be produced.
Document number 84 must be produced, but the first paragraph may be redacted.
*187 Document 84 must be produced, but the handwritten note at the bottom may be redacted.
64. Attorney's Notes Dated prior to May 7, 1998 or Undated Attorney's Notes whose date of creation cannot be determined: Warner Lambert has submitted a group of documents that consists of (mostly handwritten) notes made by attorneys, for which they claim both work product and attorney client privilege. As is discussed at length, supra, the party asserting the privilege bears the burden of establishing those facts that are the essential elements of the privileged relationship. Warner Lambert has failed to establish the elements as to these documents. Since it impossible to tell when or why the undated documents were created, we are precluded from finding that they were created in anticipation of litigation and therefore order them produced. Documents dated prior to May 7, 1998 must be produced unless they are protected by the attorney client privilege. To the extent that documents in this category clearly reflect conversations or other communications with clients, they are of course privileged. However, attorney's notes and personal musings do not constitute “communications,” are not privileged, and must be produced.
Accordingly, document numbers 16, 32, 34, 47, 35, 33, 30, 29, 28, 27, 26, 25, 24, 23, 22, 21, 20,18,17,14,155, 161, 190,204,231,232, 233,236,301, 328, 352,484,487,488,492,502,786, and 857 (as well as any others that do not meet the criteria for either privilege for the reasons adduced above) must be produced.
5. Pre-existing government documents and other public records: Clearly, documents from the patent office or the patent examiner, or other governmental or public records are not privileged under either the attorney client or work product privileges. Furthermore, a privileged fax cover letter does not make, for instance, an Office Action from the Patent Examiner privileged.
Accordingly, document numbers 10, 162, 167, 200, 234, 217, 478, 294, 295,299, 322, 323, 332, 340, 333, 453, 514, 520, 798, 812, 818, 820, and 824, as well as any others that do not meet the criteria for either privilege for the reasons adduced above must be produced.
The first two pages of # 406 are privileged, but the rest must be produced.
6. Foreign Patents: Warner Lambert's document category “E” consists entirely of communications regarding foreign patent applications. Generally, the party asserting a privilege over foreign documents must provide the court with the applicable foreign statute, which the court will apply as a matter of comity if it recognizes privileges on a parallel with our own, or reject. However, since the Defendants have raised no objection to the continued protection of the documents related to foreign patents, the Court will refrain from discussing them. Therefore, all documents in category “E,” except for those within the ambit of paragraph 5 of this opinion, need not be produced.
77. Privileged Cover Letters attached to non-privileged documents: Warner Lambert has marked and indexed, as complete documents, submissions which are a mixture of privileged and non-privileged materials. However, stapling one privileged document to a non-privileged document does not cloak the non-privileged material with protection from discovery. Therefore, to the extent that privileged fax or other cover sheets are attached to non-privileged documents that fall into any of the other enumerated categories, the non-privileged documents must be produced.
Accordingly, with respect to the following documents, the first page is privileged and may be withheld, but the rest must be produced: # 2, 42, 296, 318, 77, 79, 422, 431, 432, 460, 748. In the case of document # 211, the second and fourth pages are not privileged and must be produced.
8. Documents Related to the May 11, 1999 Interview with the Patent Examiner
Finally, Defendants argue that documents related to the May 11, 1999 interview with the Patent Examiner should be produced, even if they would otherwise be considered attorney work product. Defendants claim to have a substantial need for these documents which, they contend, outweighs Warner Lambert's interest in withholding them. To the extent that the Court has decided that the *188 documents at issue must be produced for other reasons, those decisions are noted supra.
Otherwise, the Defendants have not demonstrated a substantial need for information about the May 11, 1999 interview and an inability, without due hardship, to obtain the equivalent of the materials by other means. See
Fed.R.Civ.P. 26(b)(3); Martin v. Bally's Park Place Hotel & Casino, 983 F.2d 1252, 1255 (3d Cir.1993).