Defendant seeks the following documents (numerical references are to plaintiff's privilege log):

See Defendant's Motion, Exhibit C. Defendant served subpoenas on three law firms to obtain these documents: Sperry, Zoda & Kane (“Sperry”); Mathews, Woodbridge & Collins (“Mathews”); and Panitch, Schwarze, Jacobs & Nadel, P.C. (“Panitch”).[2]

Defendant asserts that, as a general rule, draft patent applications, technical non-legal materials related to the final patent and studies of prior art, are not protected by the attorney-client privilege. Defendant argues that this general rule rests on the premise that the attorneys are simply conduits for factual information to be used in the patent process. The documents listed in categories 1, 2 and 3 above, defendant maintains, relate to prior art and are a matter of public record. Defendant further argues that when plaintiff commissioned the law firms to conduct prior art searches regarding the 267 Patent, it was contemplated that the results of the searches would be communicated to the United States Patent and Trademark Office. Consequently, the results of the searches were not intended to be the type of communications protected by the attorney-client privilege. Defendant further argues that the drafts of the original patent and the reexamination applications contain only technical information and, therefore, are not protected by the attorney-client privilege. Defendant also claims that the documents it seeks in the motion were prepared in anticipation of ex parte proceedings before the patent office, and not in anticipation of litigation or for trial, therefore, the work product doctrine does not protect them from production.

In its response, plaintiff argues that technical information gathered in the prosecution of a patent application is not ipso facto unprotected by the attorney-client privilege and that courts are divided on this issue. Plaintiff further asserts that the work product doctrine applies to reexamination proceedings. Moreover, the work product materials it seeks to protect, plaintiff contends, were gathered in anticipation of litigation against various parties and as part of ongoing litigation by plaintiff against other parties.

*2 The law regarding attorney-client privilege and the work product doctrine in patent cases is continuing to develop. Generally, in order to establish that communications are protected by the attorney-client privilege, the following elements must be present: (1) the asserted holder of the privilege is or sought to become a client; (2) the person to whom the communication was made (a) is a member of the bar of a court, or his or her subordinate, and (b) in connection with this communication is acting as a lawyer; (3) the communication relates to a fact of which the attorney was informed (a) by his client (b) without the presence of strangers (c) for the purpose of securing primarily either (i) an opinion of law or (ii) legal services or (iii) assistance in some legal proceeding, and (d) not for the purpose of committing a crime or tort; and (4) the privilege has been (a) claimed and (b) not waived by the client. Rhone–Poulenc Rorer, Inc. v. Home Indem. Co., 32 F.3d 851, 862 (3d Cir.1994).[3] The privilege extends to verbal statements, documents and tangible objects conveyed to an attorney in confidence for the purpose of any legal advice. Only the communication between the attorney and the client itself is privileged; the underlying facts as well as the factual circumstances surrounding the attorney-client relationship are not privileged. Upjohn Co. v. United States, 449 U.S. 383, 389 (1981). “When the record is ambiguous as to the elements necessary to establish a claim of attorney-client privilege, the burden is on the party asserting it ... [to] show, by record evidence such as affidavits, sufficient facts as to bring the communications at issue within the narrow confines of the privilege.” In re Sunrise Securities Litigation, 130 F.R.D. 560, 570 (E.D.Pa.1989) (quoting Delco Wire & Cable, Inc. v. Weinberger, 109 F.R.D. 680, 687–88 (E.D.Pa.1986)).

Courts that generally have found patent applications unprotected by the attorney-client privilege, have based their decisions on three separate theories. Some courts have viewed the attorney as merely a scrivener or a conduit from the inventor to the patent office. This conduit theory is premised on the notion that patent attorneys did little more than convert scientific language to legalese for purposes of the patent application. See, e.g., Jack Winter, Inc. v. Koratron, Inc., 50 F.R.D. 225 (N.D.Cal.1970). Other courts have adopted a rationale that the information given to the attorney is expected to be given to the patent office, so that the client has no reasonable expectation that the communication will remain confidential. See, e.g., id. Finally, some courts have found that the duty of the inventor and his attorney to be totally candid with the patent office overrides the attorney-client privilege. See, e.g., id.

The majority of courts have rejected the rationale of the above decisions and recognize that attorneys render legal advice in the traditional sense when helping inventors apply for patents. Patent attorneys are increasingly recognized as more than mere scriveners, and inventors can have an interest in communicating privately with their attorneys. See Rohm and Haas Company v. Brotech Corporation, 815 F.Supp. 793, 797 (D.Del.1993) (Draft patent applications “often contain information and communications relating to the subject matter of the document, including, ..., proposed material to be included, suggested additions and deletions, and comments on the contents, all of which are intended to be considered confidential between attorney and client and not intended for public disclosure.”) Further, the duty of candor owed to the patent office is no greater than the duty of candor owed by attorneys to the courts, and should not override the attorney-client privilege. Knogo Corporation v. United States, 213 U.S.P.Q. 936, 939–41 (Ct.Cl.1980). See Ball Corporation v. American National Can Company, 27 U.S.P.Q.2d 1958, 1993 WL 475966, at *2 (S.D.Ind. May 13, 1993) (attorney-client privilege attaches to draft patent applications). And see also Natta v. Zletz, 418 F.2d 633 (7th Cir.1969) (same); Natta v. Hogan, 392 F.2d 686 (10th Cir.1968) (same); Advanced Cardiovascular Systems, Inc. v. C.R. Bard, Inc., 144 F.R.D. 372 (N.D.Cal.1992) (same).

*3 In Hogan v. Zletz (In re Natta), 410 F.2d 187, 191 (3d Cir.1969), our court of appeals held that “in a particular situation both attorney-client and work product immunity may be available to the solicitation of a party's own patent.... We deem it wise that flexibility be maintained and that sound judicial discretion be exercised on a case by case basis.” That court concluded that the attorney-client privilege should apply to documents in patent suits that are “fundamentally legal opinions and analyses.” Id. at 193. The fact that the documents may recite the data upon which the opinions or analyses were based, does not remove them from the protection of the privilege. Id.

Some courts which adopt the rigid conduit theory also recognize that, in certain circumstances, communications with respect to patent applications may be protected by the attorney-client privilege. In Howes v. Medical Components, Inc., 7 U.S.P.Q.2d 1511, 1512 (E.D.Pa.1988), for example, the district court cited the Third Circuit's decision in Natta, and stated that “communications with respect to patent prosecutions may be protected by the attorney-client privilege.” The court continued, however, that the attorney-client privilege does not protect technical information meant primarily to aid in the completion of a patent application. Id. The court further concluded that “[t]ransmittal letters and client authorizations to file applications and take other steps” necessary to register a patent that do not contain legal advice or requests for legal advice and disclose no privileged matter, are not protected by the attorney-client privilege. Id. See also Bio–Rad Laboratories, Inc. v. Pharmacia, Inc., 130 F.R.D. 116, 126 (N.D.Cal.1990) (Adopting the conduit theory but stating that “if the communication contains considerable factual information but is primarily concerned with giving legal advice to the client, it may be privileged.”) Although the court in Howes expressly adopted the conduit theory in certain circumstances, while our court of appeals in Natta did not, the rules enunciated are similar. Whether the attorney-client privilege applies in patent matters is to be determined on a case by case basis, keeping in mind the purposes of the privilege and the need for “flexibility and sound judicial discretion.” Natta, 410 F.2d at 191.

Fed.R.Civ.P. 26(b)(3) codifies the work product doctrine set forth in Hickman v. Taylor, 329 U.S. 495 (1947), for documents and tangible things “prepared in anticipation of litigation” by or for a party or a party's representative.[4]The purpose of the work product doctrine differs from that of the attorney-client privilege. While the attorney-client privilege promotes the attorney-client relationship and, indirectly thereby, the functioning of the legal system, the work product doctrine promotes the adversary system directly by protecting the confidentiality of papers prepared by or on behalf of attorneys in anticipation of litigation.

*4 The party asserting the work product doctrine must establish the necessary elements. The burden then shifts to the party seeking discovery to show that there is a substantial need for the documents which cannot be readily obtained elsewhere. Thus, the work product doctrine recognizes a qualified evidentiary protection in contrast to the absolute protection afforded by the attorney-client privilege. Westinghouse Electric Corporation v. The Republic of Philippines, 951 F.2d 1414, 1429 (3d Cir.1991). The right to assert the privilege belongs to the attorney, rather than the client, and “efforts to obtain disclosure of opinion work product should be evaluated with particular care.” Rhone–Poulenc, 32 F.3d at 866.

Our court of appeals has held that “work product immunity may be available” in patent cases. Natta, 410 F.2d at 191. The court further held that the work product doctrine applies to patent proceedings, even though they are administrative in nature. The court refused to construe the work product doctrine “so tightly as to confine it to proceedings in a court of record.” Id. at 192. The documents at issue in Natta dealt with a pending patent interference proceeding. The court of appeals found that the documents were “not ordinary business records of a corporate legal department but were prepared especially for the said Interference” and that the work product doctrine may be applicable. Id.

Also at issue in the instant matter, is plaintiff's argument that some of the documents to which it asserts the work product doctrine were prepared in anticipation of and/ or for the reexamination of the 267 Patent requested by plaintiff in 1990 and patent infringement litigation against other parties. The issue raised is whether this is sufficient to satisfy the requirement of the work product doctrine that the documents sought to be protected were prepared in anticipation of litigation. This question is often a difficult factual matter. Rockwell, 897 F.2d at 1266. Our court of appeals adopted a test which asks whether “in light of the nature of the document and the factual situation in the particular case, the document can fairly be said to have been prepared in anticipation of litigation.” Id. (quoting In re Grand Jury Proceedings, 604 F.2d 798, 803 (3d Cir.1979)). In formulating this standard, the court realized that “[p]rudent parties anticipate litigation and begin preparation prior to the time the suit is formally commenced.” Id. In a later case, the court stated that

*5 Martin v. Bally's Park Place Hotel and Casino, 983 F.2d 1252, 1260 (3d Cir.1993).

With respect to the application of the work product doctrine in subsequent litigation to documents created in prior litigation, the Supreme Court has stated that “the literal language of [Fed.R.Civ.P. 26(b)(3) ] protects materials prepared in any litigation or trial as long as they were prepared by or for a party to the subsequent litigation.” F.T.C. v. Grolier Inc., 462 U.S. 19, 25 (1983) (emphasis in original). In a concurring opinion, Justice Brennan noted that the majority specifically rejected the “related litigation” test stating that the prior and subsequent cases need not be related for the work product doctrine to apply. Id. at 30, 33.

This court finds that the reexamination proceeding is an adversarial proceeding, similar to “litigation”, to which the work product doctrine applies. See Hewlett–Packard Company v. Bausch & Lomb Inc., 4 U.S.P.Q.2d 1676, 1684 (N.D.Cal.1987) (“A reexamination is nowhere nearly as non-adversarial and as ex parte as is a typical application for initial issuance of a patent.”) In Hewlett–Packard, the reexamination was initiated by a competitor, not the patent holder, and the competitor submitted a substantial brief attacking the validity of the patent. Id. at 1684. In the instant matter, although plaintiff requested the reexamination, it did so after communications with at least one competitor concerning the validity of the 267 Patent. Leslie Kasten, one of plaintiff's attorneys, submitted an Affidavit, see Plaintiff's Brief, Exhibit A, explaining that the reexamination was requested because of communications with Phone Base Systems, Inc., a competitor, concerning the validity of the 267 Patent. Further, a few days after the request of the reexamination, plaintiff sued another entity for patent infringement in federal court in Georgia. Thus, the reexamination proceeding itself is adversarial, and the documents prepared for that proceeding were also prepared in anticipation of litigation with Phone Base and others. For either of these two reasons, plaintiff has satisfied this requirement of the work product doctrine.

Plaintiff submitted the documents requested by defendant to this court for in camera review. Plaintiff claims that documents nos. 13, 168, and 170 have been produced to defendant. Thus, the court need not examine these documents. With respect to the remaining documents, the court will first examine the documents plaintiff claims are protected only by the attorney-client privilege.

Document No. 2. Plaintiff describes this document as: “Undated handwritten note by Zoda, Esquire entitled '800 Automatic Dealer Referral' with no text. Search notes.” This court cannot tell from the face of the document or from plaintiff's brief description, whether this document contains the type of information requiring protection under the attorney-client privilege. Plaintiff, the party asserting the privilege, has failed to meet its burden of proving the applicability of the privilege and, therefore, this document must be produced.

*6 Document Nos. 18, 23, 24, and 28. Plaintiff describes these documents as, respectively: “Undated outline entitled ‘Applied Telematics Inc.—Patent Application’ ”; “Undated draft of drawings for the patent containing handwritten notes”; “Undated handwritten notes and drawings entitled ‘Secondary Routing’ ”; and “Unwritten [sic] hand-drawn diagram of ‘Proposed USA–Dial Routing’ ”. Plaintiff has failed to identify the drafter of these documents or their recipient. This court cannot discern whether these documents were isolated from third parties and, therefore, made with the expectation that they would remain confidential. Plaintiff has failed to meet its burden of proving the applicability of the attorney-client privilege to these documents and they must be produced.

Document No. 29. Plaintiff describes this document as “Undated draft ‘USA Dial Patent Application’ ”. This document is not fundamentally a legal opinion or analysis. Rather, it contains only technical information regarding plaintiff's product. This document is not protected by the attorney-client privilege and must be produced.

Document No. 31. Plaintiff describes this document as “Letter dated 8/20/85 from Zoda, Esquire to B. Riskin reporting results of patent search and providing patentability opinion.” This document is a legal opinion and contains legal analyses. Consequently, it is protected from discovery by the attorney-client privilege.

Document Nos. 44 and 45. These documents collectively are a seven page letter which plaintiff describes as “Letter dated 9/29/86 from Woodbridge, Esquire to B. Riskin giving patentability opinion and terms for preparing patent application.” This letter is fundamentally a legal opinion and analysis and is protected by the attorney-client privilege.

Document Nos. 50 and 51. Plaintiff describes these documents as, respectively, “Draft of claims for patent, ‘... system for automatically connecting ...’ dated 11/28/86”; and “Draft of ‘Application for the V–H Coordinate System to the Dealer Locator Program’ with handwritten note: R. Woodbridge 12/7/86.” Comparing documents number 50 and 51 to document number 53, it appears that the former documents were prepared by Mr. Riskin. These documents are not fundamentally legal opinions or analyses, nor do they seek such opinions or analysis. They must be produced.

Document No. 53. Plaintiff describes this document as “Letter 12/10/86 B. Riskin to Woodbridge, Esquire re: Bell Labs plans for ANI, etc. with a revised ‘Application for the V–H Coordinate System’ (document 52 above) containing handwritten notes.' ” Document number 53, the one page letter, addresses a meeting Mr. Riskin hoped to set up with Bell Labs and appears to be a discussion of strategy between B. Riskin and his counsel. It is, therefore, protected by the attorney-client privilege. The attached draft of the application, however, is not. Again, this draft is not fundamentally a legal analysis or opinion, or a request for legal advice. It is a recitation of technical information. The handwritten notes merely indicate where the new information was inserted and do not convey privileged communications. Document no. 53, therefore, must be produced.

*7 Document No. 62. Plaintiff describes this document as “Letter 4/29/87 Woodbridge to Riskin re: revised drawings with a rough draft copy of application attached.” This letter is not fundamentally a legal analysis or opinion, or a request for legal advice. It is a recitation of technical information which must be produced.

Document Nos. 65, 132 and 135. Plaintiff describes these documents as, respectively, “Handwritten note 11/26/87 from Ian Michel [President of ATI] to Woodbridge, Esquire re: possible infringement” (This document also contains a three page typed document); “Handwritten notes 6/11/90 Michel to Woodbridge asking for opinion on enforcement”; and “Handwritten note 6/13/90 by ‘M’ (Woodbridge) employee transmitting telephone message from Michel to Woodbridge”. These documents are protected by the attorney-client privilege as they clearly are seeking legal advice. Documents number 65, 132 and 135 need not be produced.

Document Nos. 66 and 67. Plaintiff describes these documents collectively as “Letter 3/16/88 Woodbridge to Riskin notifying of claims allowed by Patent Office and requesting approval of proposed Amendment (attached).” Neither the cover letter (document 66), nor the amendment (document 67) contains legal analyses or opinions, or requests for advice. The amendments appear to be nothing more than a title change and correction of typographical errors. The attorney-client privilege does not protect these documents.

Plaintiff claims that the following documents are protected solely by the work product doctrine.

Document No. 3. Plaintiff describes this document as “Draft, undated, Request for Re–Examination Transmittal Form.” This document is a three page form from the Patent Office completed by counsel from Panitch. No enclosures are attached. This document does not contain mental impressions, legal conclusions, opinions or theories and, therefore, is not protected by the work product doctrine.

Document Nos. 4 and 14. Plaintiff describes this single three page document as “Draft, undated, Request for Re–Examination (marked up).” This document reflects the thought processes and theories of counsel in preparing the final request for examination and is protected from discovery by the work product doctrine.

Document No. 6. Plaintiff describes this document as “Handwritten notes, undated, of Kasten, Esquire commenting on prior art.” This court cannot discern whether this document was prepared with respect to the reexamination of the patent or other litigation concerning plaintiff's patent. Consequently, plaintiff has not met its burden of proving that this document is protected by the work product doctrine.

Document No. 15. Plaintiff describes this document as “Draft, undated, of Power of Attorney for Re–Examination Proceeding.” This document does not contain mental impressions, conclusions, opinions or legal theories of counsel and, therefore, is not protected by the work product doctrine.

*8 Document No. 19. Plaintiff describes this document as “Undated ‘Brief Description of the Drawings' with drawings attached (marked up).” This court cannot discern who prepared this document, or whether it was prepared with respect to the reexamination of the patent or other litigation concerning plaintiff's patent. Some pages of the document bear a crossed out date of January 14, 1987. The document predates plaintiff's request for reexamination (1990), its commencement of patent infringement litigation against other parties (1990 and thereafter), and its anticipation thereof. Consequently, plaintiff has not met its burden of proving that this document is protected by the work product doctrine.

Document No. 30. Plaintiff describes this document as “Letter, 7/22/85 from Zoda, Esquire to Robert Smith, describing invention and requesting patentability search.” This document was prepared in 1985, and relates to Riskin's efforts to obtain the patent. This document was not prepared in anticipation of the reexamination, or other patent infringement litigation and, therefore, is not protected by the work product doctrine.

Document No. 118. Plaintiff describes this document as “Letter, 12/1/89 from Woodbridge, Esquire to Kasten, Esquire re: opinion U.S. Patent 4,757,267 and enclosing copy of that patent and several prior art patents.” Defendant argues that the prior art patents are discoverable because they are a matter of public record. Counsel's actions of compiling these certain prior art patents and analyzing them, evidence the attorneys' thoughts processes, conclusions and legal theories. See Petersen v. Douglas County Bank & Trust Co., 967 F.2d 1186 (8th Cir.1992) (Documents selected or compiled in anticipation of litigation were entitled to protection of the work product doctrine.) This document need not be produced.

Document No. 144. Plaintiff describes this document as “Memorandum 8/20/90 Kasten to file re: Re–Examination.” This document reflects Kasten's mental impressions and Kasten's and Woodbridge's proposed legal theories in preparation for the reexamination. This document is protected by the work product doctrine.

Document No. 149. Plaintiff describes this document as “Fax cover sheet 8/29/90 Belisario, Esquire to Pat Brecht ordering copies U.S. patents.” Pages one and two of this document, the fax cover sheet and fax confirmation sheet are not protected by the work product doctrine and must be produced. Page three of this document lists numerous patents plaintiff compiled for examination. For the reasons stated above with respect to document no. 118, counsel's compilation of these certain documents evidences mental impressions and legal theories protected by the work product doctrine.

Document Nos. 153, 154, 158, 160 and 161. Plaintiff describes these documents as, respectively “Fax cover sheet 9/12/90, Woodbridge to Kasten commenting on proposed Re–Examination” (documents no. 153 and 154); “Letter 9/17/90 Kasten to Woodbridge (marked up) discussing Request for Re–Examination”; and “Letter 9/21/90 Woodbridge to Kasten commenting on Request for Re–Examination” (documents no. 160 and 161). These documents appear to be a continuation of the Kasten/Woodbridge strategy session for the reexamination discussed above with respect to document no. 144. These documents are protected by the work product doctrine.[5]

*9 Document Nos. 167 and 169. Plaintiff describes these documents as “Letter 10/26/90 Woodbridge to Belisario enclosing copy of prior art.” These documents reflect counsel's thought processes in analyzing a certain prior art and their mental impressions and legal theories. Therefore, they are protected from discovery by the work product doctrine.

Document No. 173. Plaintiff describes this document as “Letter 11/8/90 Phillip Gross Phone Base Systems to Michel re: business relationship containing handwritten notes of Kasten.” According to Kasten's Affidavit, see Plaintiff's Brief, Exhibit A, communications with Phone Base Systems prompted the plaintiff to request the reexamination in order to strengthen the patent in anticipation of litigation with Phone Base and others. This document contains information and mental impressions of counsel in anticipation of that litigation and is protected by the work product doctrine.

Document No. 184. Plaintiff describes this document as “Letter 2/26/91 Belisario to Riskin forwarding draft of Declaration for Re–Examination Application for his review.” This is a draft document to be submitted with respect to the reexamination as required by federal statute. This document was prepared by counsel and contains Riskin's arguments and theories to be pressed at the reexamination. This document is protected by the work product doctrine.

Document Nos. 188 and 190. Plaintiff describes these documents as, respectively, “Handwritten notes 3/19/91 of Belisario re: meeting with the Examiner concerning citation of Weber patent”; and “Memo to file 3/20/91 from Belisario formalizing handwritten notes (document 188).” These documents merely recite what the Examiner, the “adversary” in the reexamination proceeding, told Belisario and do not contain mental impressions, conclusions, opinions, or legal theories. These documents must be produced.

Plaintiff claims that the following documents are protected by both the attorney-client privilege and the work product doctrine.

Document Nos. 123 and 124. Plaintiff describes this single seven page document as “Letter 1/30/90 from Leslie Kasten, Esquire to Ian Michel re: negotiations with Phone Base Systems, Inc.” This document contains the mental impressions, legal conclusions and opinions of counsel relating to claims by Phone Base Systems and, therefore, is protected by the work product doctrine. This document is also protected by the attorney-client privilege because it contains confidential communications between plaintiff and its counsel.

Document Nos. 125, 130 and 139. Plaintiff describes these documents as, respectively “Letter 4/26/90 Kasten to Ian Michel enclosing draft letter re: Phone Base”; “Draft 6/6/90 by Kasten of letter from Michel to Phillip J. Gross of Phone Base Systems re: Patent”; and “Facsimile cover sheet 6/6/90 Kasten to Michel transmitting draft of proposed letter Michel to Phillip Gross”. These documents contain the mental impressions, legal conclusions and opinions of counsel relating to claims by Phone Base Systems and, therefore, are protected by the work product doctrine. These documents are also protected by the attorney-client privilege because they contain confidential communications between plaintiff and its counsel. With respect to document no. 139, however, the first page of this document is a facsimile cover sheet containing no attorney work product or confidential attorney-client communications. The first page of document no. 139 must be produced.

*10 Document No. 171. Plaintiff describes this document as “Letter 11/13/90 Kasten to Michel re: submission of prior art to PTO by Phone Base”. This document is merely a transmittal letter containing no mental impressions or legal opinions of counsel and no protected attorney-client communications. Document no. 171 must be produced.

Document No. 180. Plaintiff describes this document as “Letter 2/1/91 Kasten to Michel discussing changes to patent claims (draft claims attached)”. This document contains the mental impressions and legal conclusions of counsel as to how the claims should be amended and is protected from discovery by the work product doctrine.

Document No. 191. Plaintiff describes this document as “Letter 3/22/91 Kasten to Michel re: Examiner Interview Summary Record and enclosing copy of memorandum regarding Examiner's statements concerning the Weber patent [document 190]”. Document no. 191 is merely a transmittal letter containing no mental impressions or legal conclusions of counsel, or protected attorney-client communications. Document no. 191 must be produced.

Document No. 192. Plaintiff describes this document as “Handwritten Note 3/6/91 by Kasten of telephone conversation with Michel re: hiring litigation attorney”. This document appears to be a brief factual recitation of a telephone conversation between Michel and Kasten. It does not reflect Michel requesting legal advice. Nor does it contain mental impressions or legal conclusions of counsel, or protected attorney-client communications. Further, this document is mostly illegible and, therefore, plaintiff failed to meet its burden of proving the applicability of these privileges.

Defendant did not attempt to demonstrate any substantial need for the documents the court has held are protected by the work product doctrine and, therefore, has not overcome the protections of the doctrine.

An appropriate Order follows.

AND NOW, this 18th day of September, 1996, upon consideration of defendant's motion to compel production of documents, and plaintiff's response thereto, and for the reasons stated in the accompanying Memorandum of Decision, it is hereby

1. The motion is GRANTED to the extent set forth in the accompanying Memorandum of Decision; and

2. Plaintiff shall produce to defendant the following documents, as referenced by their numbers on plaintiff's privilege log, within ten (10) days from the date of this Order: 2, 3, 6, 15, 18, 19, 23, 24, 28, 29, 30, 50, 51, 53, 62, 66, 67, 139 (page 1 only), 149 (pages 1 and 2 only), 171, 188, 190, 191, and 192.

Planitiff is the owner, by assignment, of United States Patent No. 4,757,267 (the “267 Patent”). The 267 Patent recites a telephone system for connecting a customer to a supplier of goods. The function of the system is to route potential customers that call a central “800–type” number to the dealer of the desired product or service that is located the shortest geographic distance to the caller. Plaintiff instituted this patent infringement action alleging that defendant offers two services to its customers, Sprint Telemedia and Enhanced 800, that infringe on Claims 1, 11, 14, 43, and 44 of the 267 Patent.

This court understands that Sperry was hired by Bernard Riskin to conduct a patentability search prior to Riskin's assignment of his rights in the 267 Patent to plaintiff. Mathews performed patent application work for plaintiff. Panitch performed patent work for plaintiff, including work during the reexamination of the patent. See Defendant's Brief at 2.

See also 42 Pa.Con.Stat.Ann. § 5928 which states as follows:

Fed.R.Civ.P. 26(b)(3) provides, in pertinent part:

This court does not have a copy of document no. 153, or a complete copy of document no. 154. To the extent that document no. 153 is merely a fax cover sheet without notations, it must be produced. The first page of document no. 154, the only page this court has, contains information protected by the work product doctrine. For this reason, the court finds that the entire document is protected from discovery. If a dispute arises with respect to document no. 153, plaintiff shall submit it to this court for in camera review.