*1 Before the court by order of reference is Defendant Wright Medical Technology, Inc.'s (“Wright Medical”) Motion to Compel Plaintiff AngleFix Tech, LLC (“AngleFix”) to Produce Documents Over Which AngleFix has Waived or Improperly Asserted a Claim of Privilege, filed on March 30, 2016. (ECF No. 118.) AngleFix filed a response in opposition on April 18, 2016. (ECF No. 126.) Wright Medical filed a reply on April 28, 2016. (ECF Nos. 136 & 137.) On May 10, 2016, the court held a telephonic hearing on the motion, at which the parties reported that all claims remain unresolved. (ECF No. 145.)

On June 27, 2016, the case was stayed in accordance with the court's Order Granting in Part and Denying in Part Defendant's Motion for Summary Judgment. (ECF No. 169.) The stay was lifted on November 15, 2016, pursuant to the court's Order Granting Plaintiff's Motion to Intervene, Denying Defendant's Motion for Summary Judgment for Lack of Standing, and Lifting Stay, and the University of North Carolina (“UNC”) was joined as a co-plaintiff. (ECF No. 191.) After resumption of the case, the court held a telephonic hearing on November 30, 2016, to confer with the parties, and the parties confirmed that their respective positions as to the present motion have not changed in the interim period. (ECF No. 200.) Therefore, the court addresses each of Wright Medical's claims herein:

B. That attorney-client privilege should be deemed waived as to certain documents produced by AngleFix a second time on March 11, 2016. For the reasons stated herein, the motion as to this claim is GRANTED in part and DENIED in part.

C. That AngleFix be compelled to produce un-redacted versions of all documents over which a privilege has been asserted but that do not properly appear as items on AngleFix's March 11, 2016 privilege log. For the reasons stated herein, the motion as to this claim is GRANTED.

D. That AngleFix be compelled to produce any otherwise privileged documents relating to the same subject matters as those documents over which AngleFix has waived its privilege. For the reasons stated herein, the motion as to this claim is DENIED.

E. That AngleFix be compelled to produce items distributed to or sent by third parties (i.e., parties other than AngleFix representatives or attorneys) over which it has allegedly improperly asserted the attorney-client privilege. For the reasons stated herein, the motion as to this claim is GRANTED.

F. That AngleFix be compelled to produce the “non-infringement report” prepared by Alston & Bird LLP. For the reasons stated herein, the motion as to this claim is DENIED.

G. That the court award Wright Medical its costs and fees incurred in bringing this motion. For the reasons stated herein, the motion as to this claim is DENIED.

*2 In the context of the litigation between the parties, the matters at issue here arise from a February 5, 2016 order of the court compelling AngleFix to produce certain documents from the webmail account of Michael Shinsheimer, AngleFix's principal, by February 19, 2016. (ECF No. 107.) On the date of the deadline, AngleFix's counsel, Joseph Zito of DNL Zito, e-mailed Wright Medical's counsel to inform them that the production was in process but that AngleFix would not be able to meet the deadline. (ECF No. 118, Ex. A.) In response, one of Wright Medical's attorneys, Jeffrey Pollack of Duane Morris LLP, sent multiple e-mails to Zito reiterating that the deadline had been missed and indicating that Wright Medical would move that the court hold a status conference to discuss AngleFix's failure to complete production in a timely manner. (Id.) Eventually, on March 2, 2016, AngleFix, via an e-mail from Zito, produced a subset of the required e-mails, noting that the material had been reviewed for privilege. (Id.) The next day, March 3, 2016, Zito completed the production, noting this time that AngleFix had “not had the opportunity to review all of this material for privilege and reserve[d] the right to claw back material should it be necessary.” (ECF No. 118, Ex. B (e-mail from Zito to Pollack and other Wright Medical attorneys).)

Wright Medical's review of the produced e-mails was short-lived, as Wright Medical discovered many seemingly privileged communications and felt that its ethical responsibilities (particularly pursuant to Tenn. Sup. Ct. R. 8, RPC 4.4) precluded further review. The issue of how to proceed occupied much of the status conference between the parties held telephonically on March 7, 2016, in front of the presiding district judge, Judge Jon Phipps McCalla. (ECF No. 116 (transcript).) At the status conference, Wright Medical argued, and the court agreed, that AngleFix's failure to produce a privilege log also contributed to Wright Medical's difficulties in evaluating AngleFix's assertions of privilege and proceeding with its review of AngleFix's production. Therefore, as a result of the status conference, the court ordered that AngleFix correct its March 2 and 3 production and produce a privilege log, all by March 11, 2016. (ECF No. 115.)

This time, AngleFix met its deadline and provided Wright Medical with a new production of the Shinsheimer webmail along with a privilege log on March 11, 2016. However, AngleFix chose to produce the webmail with new Bates numbers, rather than complete a reproduction with the same Bates numbers while redacting the alleged privileged items. Moreover, its privilege log was sparse in detail and failed to identify the documents clawed back by AngleFix. Nonetheless, Wright Medical was able to deduce that approximately 10% of the March 2 and 3 production was clawed back under an assertion of privilege as part of the March 11 reproduction. In addition, Wright Medical took issue with a number of other items related to the production of Shinsheimer's webmail and AngleFix's assertions of privilege via its privilege log and otherwise. The parties corresponded multiple times regarding Wright Medical's concerns, but they were unable to come to a satisfactory resolution. (See, e.g., ECF No. 118, Exs. F & G.) This led to Wright Medical filing the instant motion on March 30, 2016, specifying in particular the seven claims described above and discussed in detail below.

A. The March 2 and 3 Production

At issue here is whether documents produced by AngleFix on March 2 and 3, 2016, over which AngleFix has since asserted attorney-client privilege should nonetheless be discoverable under the theory that the privilege was waived by the initial production. On November 16, 2015, a Stipulated Protective Order, agreed to by the parties, was filed in this case. (ECF No. 82.) Section 5(A) addresses this situation, stating, “If information subject to a claim of attorney—client privilege ... is nevertheless inadvertently or unintentionally produced, such production shall in no way prejudice or otherwise constitute a waiver ....” (Id. at 14); see generally Fed. R. Evid. 502(d) (stating that a court order will control when the order indicates that privilege is not to be waived by disclosure within the same legal proceeding).

“[I]nadvertent disclosure of protected communications ... does not constitute a waiver if the holder took reasonable steps to prevent disclosure and also promptly took reasonable steps to rectify the error. This position is in accord with the majority view on whether inadvertent disclosure is a waiver.” Fed. R. Evid. 502 advisory committee notes to subdivision (b). Wright Medical's claim hinges on AngleFix's privilege review of the e-mails produced on March 2 and 3 being “per se unreasonable” because of the sheer amount of alleged privilege material produced, which Wright Medical calculates to be “over 10%” of the entire production.[1] (ECF No. 118-1 at 10-11.) Though vague as to the details, AngleFix, in its response, claims to have taken steps to protect its privilege proportional to the time allotted for production, and Zito noted upon production that AngleFix's clawback rights under the Stipulated Protective Order were reserved because of his inability to review “all” of the material for privilege, implicitly indicating that some material was reviewed. (See ECF No. 126.) Based on these assertions, the importance of the attorney-client privilege as recognized by the courts, see Albritton v. CVS Caremark Corp., No. 5:13-CV-218-TBR-LLK, 2015 WL 6942498, at *2 (W.D. Ky. Nov. 10, 2015), and the interests of justice in these circumstances, the court finds that the March 2 and 3 production of privileged material was inadvertent. Thus, AngleFix properly asserted its clawback rights under the Stipulated Protective Order. For these reasons, Wright Medical's motion to compel the documents produced by AngleFix on March 2 and 3 over which AngleFix has since asserted attorney-client privilege is DENIED.

B. The March 11 Production

*3 At the outset, the court notes that AngleFix has asserted no claim of privilege over the documents produced to Wright Medical on March 11, 2016, and AngleFix has no right to assert a claim of privilege over any of the March 11 documents moving forward.[2] Therefore, the only matter at issue here is whether the court must construe, per Wright Medical's request, certain of the documents released on March 11 to have been privileged until such privilege was waived by AngleFix pursuant to the production (as opposed to being nonprivileged, as AngleFix claims). This distinction, though it may seem a semantic one, is potentially significant as it relates to Wright Medical's subject matter waiver challenge, as the court discusses infra Section II.D.

“Questions of privilege are to be determined by federal common law in federal question cases,” which includes this case. Reed v. Baxter, 134 F.3d 351, 356 (6th Cir. 1998).

Pierce v. Wyndham Vacation Resorts, Inc., No. 3:13-CV-641-PLR-CCS, 2014 WL 4748309, at *2 (E.D. Tenn. Sept. 23, 2014) (quoting Reed, 134 F.3d at 356); see also Kamenski v. Wellington Exempted Vill. Sch., No. 1:14-CV-01589, 2016 WL 1732872, at *4-5 (N.D. Ohio May 2, 2016) (stating same elements from Reed). The court has reviewed the documents specified by Wright Medical and provided as Exhibit A to Wright Medical's Reply Brief (ECF Nos. 136 & 137) to determine whether they exhibit the elements of the attorney-client privilege. The court finds that the following documents are privileged documents over which AngleFix has waived its privilege:

The court finds that the following documents are nonprivleged due to lacking one or more elements of the privilege:

*4 Thus, Wright Medical's motion as to the March 11 production is GRANTED in part and DENIED in part, but, as to all the documents listed above, AngleFix reserves no right to assert privilege in this case.

C. The Privilege Log

The Stipulated Protective Order requires that a “privilege log, or amended log, shall be served on the other parties by the producing party not more than sixty days after each production of documents,” exempting “any document or communication dated on or after the filing of the lawsuit.” (ECF No. 82 at 15.) It is undisputed that AngleFix's only privilege log in this case is the privilege log provided to Wright Medical on March 11, 2016, and included as Exhibit E to Wright Medical's motion (ECF No. 118). AngleFix only produced this log after being ordered to do so by the court. (See ECF No. 115.) It is clear from the March 7, 2016 hearing transcript that Judge McCalla intended this log to cover the entirety of AngleFix's logging responsibilities in this case, and not just the documents produced on March 2 and 3 over which AngleFix subsequently claimed a privilege. (See ECF No. 116.) AngleFix appears to agree by admittedly logging a series of documents that were not included in the March 2 and 3 production. Moreover, the court was explicit that no privilege may be asserted over any documents that were not logged as of the March 11, 2016 deadline: “Don't put it in [the log], of course, obviously no privilege asserted.” (Id. at 23); see also Etheredge v. Etheredge, No. CIV.A. 1:12-0165, 2013 WL 4084642, at *4 (M.D. Tenn. Aug. 12, 2013) (in case where privilege log was required, failure to produce privilege log constituted waiver of privilege).

Therefore, the motion, as to any documents dated prior to the filing of the lawsuit that were previously produced with redactions or withheld due to an assertion of privilege and are not on the March 11 privilege log, is GRANTED, and such documents are hereby ORDERED to be produced in full. Specifically, Wright Medical has cited and provided to the court for review: AF238-AF239, AF261-AF262, AF263, AF327-AF328, AF365-AF366, AF375-AF376, AF377-AF378, AF380-AF381, AF382-AF383, AF389-AF390, AF395-AF397, AF448-AF479, and AF580-AF582. AngleFix contends that these documents were logged on the privilege log as items 8, 9, 10, 12, and 13. The court has reviewed this assertion and finds it factually inaccurate, meaning AngleFix must produce un-redacted versions of the above-listed documents. Wright Medical also specifically cites AF6630-AF6633. However, this document did not need to be logged because it appears to be dated after the filing of the lawsuit, and it may remain redacted.

D. Subject Matter Waiver

*5 Coming to the issue of subject matter waiver, the court reaches the heart of Wright Medical's motion – its argument that the various attorney-client privilege waivers discussed above compel the court to find that AngleFix has effectively waived all privilege as to the topics of “patent prosecution, patent licensing, legal advice on patent issues, and the evaluation, prosecution and potential settlement of AngleFix's claims against Wright Medical.” (ECF No. 118 at 2.) Wright Medical has touched upon an issue intended to be addressed by the enactment of Rule 502 of the Federal Rules of Evidence, with subdivision (a) governing subject matter waiver.[5] See Fed. R. Evid. 502 advisory committee notes (“[Rule 502] resolves some longstanding disputes in the courts about the effect of certain disclosures of communications or information protected by the attorney-client privilege ... specifically those disputes involving ... subject matter waiver.”). As the advisory committee makes clear:

Id. (notes to subdivision (a)). Rule 502 places the focus on intentional, seemingly deceptive, and unfair conduct, and the emphasis on fairness has long guided the Sixth Circuit in this area. See In re Grand Jury Proceedings Oct. 12, 1995, 78 F.3d 251, 256 (6th Cir. 1996) (in determining the scope of a waiver, “the District Court must be guided by fairness concerns”).

As an initial matter, the list of topics at issue appears to be significantly less broad than suggested by Wright Medical. As discussed above, AngleFix has been found to have waived privilege via its March 11 production over documents relating to settlement strategy, document production strategy, and one particular foreign patent application. Also as discussed above, AngleFix has waived privilege as to the redacted documents not included on the privilege log, but the court does not have enough information to determine the subject matters of those documents at this time. Regardless of the precise topics at issue, Wright Medical has not presented sufficient evidence to demonstrate that AngleFix intentionally put itself at an unfair advantage by waiving privilege over these materials. A finding that privilege as to subject matter has not been waived is in line with the district courts in the Sixth Circuit that have considered similar issues. See, e.g., Lott v. Tradesmen Int'l, Inc., Civil Action No. 5:09-CV-183-KKC, 2013 WL 308853, at *2 (E.D. Ky. Jan. 25, 2013) (finding no subject matter waiver under Rule 502 when privilege was waived over certain attorney-client e-mails in circumstances such that the waiving party would “gain no tactical advantage”); GATX Corp. v. Appalachian Fuels, LLC, Civil Action No. 09-41-DLB, 2010 WL 5067688, at *6 (E.D. Ky. Dec. 7, 2010) (finding subject matter waiver inconsistent with the purpose of Rule 502(a) when privilege was waived over only a small subset of alleged privileged documents and there was no indication the waiving party intended to use the waived documents to prove its case). The district courts in the Sixth Circuit that have come out differently and found a subject matter waiver have typically had particular fairness concerns based on the specific facts of those cases. See, e.g., Roa v. Tetrick, No. 1:13-CV-379, 2014 WL 695961, at *4-5 (S.D. Ohio Feb. 24, 2014) (“Here, any photographic or audio information or materials taken in conjunction with the surveillance of plaintiffs and their family are similar to the video evidence already produced and should in fairness be disclosed to plaintiffs. Like video evidence, photographic or audio evidence is potentially subject to distortion or manipulation and may be misleading depending on the context in which it was produced or presented. In fairness, plaintiffs should be given the opportunity to examine these materials to prevent the potential for selective and misleading presentation of the evidence. However, defendants need not produce [various paper records related to the surveillance].” (internal citation omitted) (citing Fed. R. Evid. 502(a)(3))); Lee v. Med. Protective Co., 858 F. Supp. 2d 803, 807-09 (E.D. Ky. 2012) (in a case where a party had its appellate counsel testify to privileged matters on its behalf, fairness considerations under Rule 502 required the party to produce communications from its trial counsel on the same subject matters).

*6 For the reasons above, Wright Medical's motion as to subject matter waiver is DENIED. Of course, should future material developments in the course of the litigation justify revisiting the subject matter waiver issue, Wright Medical may bring such a motion at the appropriate time.

E. Communications Involving Third Parties

At issue here are a number of documents listed as items on AngleFix's privilege log over which Wright Medical argues privilege has been improperly asserted due to the documents being distributed to or sent by third parties (i.e., parties other than AngleFix representatives or attorneys). As discussed above, one of the elements necessary for establishing the attorney-client privilege is that the subject communications be made “in confidence.” Reed, 134 F.3d at 356. “Communications made in the presence of a third party not acting as an agent for the attorney or client are generally not made in confidence.” Lucas v. Gregg Appliances, Inc., No. 1:14-CV-70, 2014 WL 6901518, at *2 (S.D. Ohio Dec. 5, 2014) (citing Reed, 134 F.3d at 358). Therefore, the documents in question here can only be protected if they fall under an exception to this requirement.

AngleFix claims that both the joint representation and common interest exceptions apply. However, AngleFix has not briefed the elements of either exception. The only fact brought forth in support is that one of the third parties at issue, John Sonderegger, is “paying for prosecution” on behalf of AngleFix and thus is entitled to information from the attorneys as to that matter. (ECF No. 126 at 13.) Additionally, AngleFix asserts that “UNC is also represented by Plaintiff's counsel in this matter and thus jointly represented with a common interest.” (Id. at 2.) District courts within the Sixth Circuit have varied as to the parameters of what constitutes joint representation. Compare Burkhead & Scott, Inc. v. City of Hopkinsville, No. 5:12-CV-00198-TBR, 2014 WL 6751205, at *3 (W.D. Ky. Dec. 1, 2014) (“Joint representation refers to situations where two parties share a common attorney for representation in a particular matter.”), with Libbey Glass, Inc. v. Oneida, Ltd., 197 F.R.D. 342, 347 (N.D. Ohio 1999) (“Where several parties, though represented by separate counsel, are on the same side of a legal dispute and share information for their mutual benefit in that dispute, the joint litigant privilege protects attorney-client privileged matters when they are shared with co-parties, even though those parties are represented by separate counsel.” (internal quotation marks omitted)). Likewise, though recognized by the Sixth Circuit in Reed, 134 F.3d at 357, the courts within the Sixth Circuit have interpreted the common interest exception in different ways. See, e.g., Ford Motor Co. v. Mich. Consol. Gas Co., Civil Action No. 08-CV-13503, 2013 WL 5435184, at *5 (E.D. Mich. Sept. 27, 2013) (requiring legal interest to be “identical” for common interest to apply); Cooey v. Strickland, 269 F.R.D. 643, 652-53 (S.D. Ohio 2010) (finding that common interest applies only when all parties have agreed to a joint approach (though not necessarily on every point), the communications are intended to further the common interest (which does not necessarily need to be a pending legal action), and, likely, an attorney is included directly in the communication); Broessel v. Triad Guar. Ins. Corp., 238 F.R.D. 215, 220 (W.D. Ky. 2006) (requiring only a “common legal or commercial interest”); Abrams v. First Tenn. Bank Nat'l Ass'n, No. 3:03-CV-428, 2006 WL 842980, at *2 (E.D. Tenn. Mar. 28, 2006) (requiring “identical (or nearly identical) legal interest”).

*7 What is clear is that the burden of establishing the privilege rests with the party asserting it. See Cooey, 269 F.R.D. at 648 (citing United States v. Dakota, 197 F.3d 821, 825 (6th Cir. 1999)). Moreover, mere assertions will not suffice. See In re Trans-Indus., Inc., No. 1:10 MC 34, 2011 WL 1130410, at *4 (N.D. Ohio Mar. 28, 2011).

Id. (alteration in original) (internal quotation marks omitted) (quoting Lewis v. United States, No. 02–2958B, 2005 WL 1926655, at *1 (W.D. Tenn. June 20, 2005)). Correspondingly, when a party relies on its privilege log to satisfy its burden, the log “must be detailed enough to prove that the communications in question were in fact confidential communications relating to legal advice.” Cooey, 269 F.R.D. at 649 (citing In re Search Warrant Executed at Law Offices of Stephen Garea, No. 97-4112, 1999 WL 137499, at *2 (6th Cir. Mar. 5, 1999)).

Here, the burden rests with AngleFix to establish that its alleged privileged communications involving third parties fall within an exception to the attorney-client privilege's “in confidence” requirement. Specifically, Wright Medical challenges privilege log items 2, 8-14, 16-21, 23, 41-44, 45-47, and 49-52. (ECF No. 118-1 at 20.) The court can determine on the face of the privilege log that items 20 and 21 are communications that do not in fact include third parties, and, therefore, are not appropriately challenged here. As to all of the other cited items, the court is unable to conclude from the information provided in the privilege log or otherwise by AngleFix whether there is a legitimate claim of privilege. The privilege log lacks detail as to many of the parties, their relationships to the attorneys and AngleFix representatives, and the specific bases for AngleFix's privilege assertions. Moreover, AngleFix has failed to provide this information to Wright Medical such that Wright Medical could properly assess the privilege claims, even though Wright Medical requested it on multiple occasions. (See, e.g., ECF No. 118, Exs. G & N.)

Additionally, AngleFix relies solely on Sonderegger's status as the prosecution's financial backer in asserting that communications involving him remain in confidence. “Courts in the Sixth Circuit ... hold that creation of an attorney-client relationship is not dependant upon payment of fee or formal contract, but rather may be implied from the conduct of the parties.” Quicken Loans v. Jolly, No. 2:07-CV-13143, 2008 WL 2566373, at *2 (E.D. Mich. June 24, 2008); see also Tenn. Sup. Ct. R. 8, RPC 1.7 comment 13 (stating that a “lawyer may be paid from a source other than the client” and thus implying that mere payment of legal fees does not establish representation).

In sum, AngleFix did not do enough by merely asserting joint representation and common interest; rather, evidence must be put forward to establish these protections or, at a minimum, the privilege log must provide sufficient detail so that the court and the opposing party can evaluate the privilege claims.[6] AngleFix could have done this during discovery, during its second opportunity to produce a privilege log for the case, as part of its response to Wright Medical's motion to compel, or even by requesting leave of the court to file a sur-reply. AngleFix did not take advantage of any of these ample opportunities to meet its burden and, therefore, Wright Medical's motion to compel the challenged privilege log items involving third parties is GRANTED due to AngleFix's improper assertion of privilege. Specifically, AngleFix is ORDERED to produce the documents logged as items 2, 8-14, 16-19, 23, 41-44, 45-47, and 49-52 on its privilege log.

F. Non-Infringement Report

*8 Wright Medical asserts that AngleFix has waived any privilege over a non-infringement report prepared for it by Alston & Bird LLP because (a) it was not identified on AngleFix's privilege log, (b) AngleFix has touted the conclusions in the report to third parties, and (c) the contents of the report have been put at issue due to AngleFix's denial of Wright Medical's claim that the present action is barred by the doctrine of laches. Wright Medical is unable to succeed on any of these arguments. As to the first assertion, AngleFix has contended from the onset of this matter that the “non-infringement report” is the same document as the “Validity Opinion” listed on its privilege log as item 21. The parties agreed that AngleFix would submit the document for in camera review so that the court could determine whether the same opinion covers both validity and infringement. The court has reviewed the opinion and can confirm that it does.

That does not, however, resolve the matter entirely, as Wright Medical puts forth two substantive arguments as to why privilege should be waived even if the report was logged. First, Wright Medical points to a small handful of e-mails in which Shinsheimer touts, in brief, the conclusions of the infringement report to investors and potential customers. As discussed above, communications must be made in confidence in order for the attorney-client privilege to apply. See Reed, 134 F.3d at 356. In the context of a plan or report, the Sixth Circuit considers a waiver to have occurred when “the substance of the attorney's advice” - meaning legal conclusions, facts, and legal reasoning – has been divulged. In re VisionAmerica, Inc. Sec. Litig., No. 02-MC-OCC D/V, 2002 WL 31870559, at *3 (W.D. Tenn. Dec. 18, 2002) (discussing In re Grand Jury, 78 F.3d at 254-56 (finding privilege waived as to attorney's review of elements of a marketing plan where waiving party previously revealed not just the attorney's conclusion that an element of the plan could be considered an illegal inducement but also the reasoning that the illegality would be because of the provision of certain free materials)). Even more particularly apt to this case, “a release of a report's findings, without revealing the facts that led to the findings[,] does[ ] not divulge the subject matter of that report and does not waive attorney-client privilege.”[7] Id. at *4 (citing In re Grand Jury, 78 F.3d at 254). That is precisely what happened here. The e-mails cited by Wright Medical in Exhibit K to its motion to compel show Shinsheimer reporting nothing but the basic conclusion of the report, without indicating any of the facts or legal reasoning, and this is not enough to consider the privilege waived.

Lastly, in regard to its affirmative defense of laches, Wright Medical asserts that “AngleFix cannot simultaneously claim ignorance of when it first became aware of Wright Medical as an alleged infringer while refusing to disclose potentially relevant facts regarding the answer to that question through assertion of privilege.” (ECF No. 118-1 at 17.) They cite no direct authority for this, and the court can find none. Wright Medical instead cites only United States v. Quiel, 595 F. App'x 692 (9th Cir. 2014), where the Ninth Circuit found a party relying on an advice-of-counsel defense had thus waived the attorney-client privilege in that circumstance.

*9 To be certain, “litigants cannot hide behind the [attorney-client] privilege if they are relying upon privileged communications to make their case.” In re Lott, 424 F.3d 446, 454 (6th Cir. 2005). Put another way, the “privilege cannot at once be used as a shield and a sword.” Id. This is commonly the case in the situation that Wright Medical finds analogous: when a party seeks to assert an advice-of-counsel defense but then shield that very advice behind a wall of privilege. The court finds the matter at hand distinct from the advice-of-counsel scenario. Here, Wright Medical, not AngleFix, has injected the defense of laches into the case. Wright Medical attempted to develop this defense through discovery, including the deposition of Shinsheimer, as is its right. That Wright Medical is dissatisfied with the answers received (namely, Shinsheimer's lack of memory as to when he became aware of Wright Medical as a potential infringer) is no basis for requiring AngleFix to produce an otherwise privileged document. See Am. Family Life Assurance Co., 2010 WL 3000238, at *2 (“[T]o waive the attorney client privilege by voluntarily injecting an issue in the case, a defendant must do more than merely deny a plaintiff's allegations. The holder must inject a new factual or legal issue into the case.” (internal quotation marks and alterations omitted)). The Sixth Circuit has said that when “the sword stays sheathed, the privilege stands.” In re Lott, 424 F.3d at 454. For these reasons, Wright Medical's motion to compel production of the non-infringement report is DENIED.

G. Costs and Fees

Based on a review of the entire record in this matter, in the court's discretion an award of costs and fees is not justified under the circumstances. See Fed. R. Civ. P. 37(a)(5)(C) (“If the motion [to compel] is granted in part and denied in part, the court ... may, after giving an opportunity to be heard, apportion the reasonable expenses for the motion.” (emphasis added)). Therefore, Wright Medical's request for costs and fees is DENIED.

For the above reasons, Wright Medical's motion to compel is GRANTED in part and DENIED in part, as so indicated. Specifically:

All productions ordered herein must be completed within fourteen (14) days of the date of this order.

IT IS SO ORDERED.

The court also notes, as does Wright Medical, that this entire matter, including Wright Medical's ability to present its arguments, was unnecessarily complicated by AngleFix's decision to assign new Bates numbers to its reproduction on March 11 (rather than simply redact the alleged privileged documents using the previously assigned Bates numbers).

As discussed below, AngleFix is precluded from asserting privilege over any documents not listed as items on its privilege log produced concurrently with the March 11 documents.

This e-mail indicates that it included attachments, which are the subject of a separate motion and, thus, not addressed here. (See ECF No. 122.)

The third parties referenced here have “unc.edu” e-mail addresses, and, thus, are presumed to be associated with UNC. That UNC is now a party to the action does not change the court's analysis. As more fully discussed below, no party has successfully established any theory that would automatically apply a privilege to communications between AngleFix and UNC.

Rule 502(a) provides:

The fact that UNC is now a party to the action does not establish a retroactive privilege. AngleFix has claimed joint representation and common interest with UNC since well before UNC actually joined the suit as a co-plaintiff. (See ECF No. 126 at 2, 13.) However, as discussed, AngleFix's assertion alone is not sufficient, and UNC's recent appearance in the case does nothing to satisfy AngleFix's burden of proving that a privilege applied at the time of the communications in question. In the case of establishing joint representation or common interest, AngleFix is required to present clear evidence, and it has not done so. See, e.g., Broessel, 238 F.R.D. at 219 (“More and more, to protect the joint defense privilege, parties enter into written joint defense agreements in an effort to assure that information shared among the attorneys for each of the defendants will remain privileged despite the sharing.”). For this reason, the recent developments in the case do not alter the court's analysis.

Wright Medical discusses a case out of the Middle District of Georgia that holds differently and would appear to support a finding in its favor. Am. Family Life Assurance Co. v. Intervoice, Inc., Civil Action No. 4:08-cv-167 (HL), 2010 WL 3000238, at *4 (finding that privilege was waived when conclusions of legal opinions were revealed publicly). The case is distinguishable. It involves an intentional public disclosure through the party's Securities and Exchange Commission (“SEC”) filings. Here, the conclusions were revealed only to a small group of current investors and potential customers, nothing near the scale of a public SEC filing.