*1 Before the court by order of reference is defendant Wright Medical Technology, Inc.'s (“Wright”) Motion to Compel the Production of Documents Improperly Withheld by AngleFix [Tech, LLC] (“AngleFix”) and for Which There has Been a Subject Matter Waiver (the “Motion to Compel”), filed on May 4, 2017. (ECF No. 233.) Plaintiff AngleFix filed a response in opposition on May 18, 2017. (ECF No. 236.) Wright Medical filed a reply on May 25, 2017. (ECF No. 238.) For the following reasons, the Motion to Compel is GRANTED in part and DENIED in part.

On March 6, 2017, the court entered an order (ECF No. 228) granting in part and denying in part a previous motion to compel filed by Wright, focusing primarily on various challenges to AngleFix's assertions of the attorney-client privilege. Pursuant to that order and of relevance here, AngleFix was compelled to produce (1) a “Patent Analysis” listed as item number 8 on AngleFix's privilege log, which appears to be an e-mail dated September 12, 2011 (the “patent analysis e-mail”), (2) documents alleged by Wright to include legal advice identifying alleged infringers and infringing products, including e-mails attached to Wright's motion as Exhibits F and G, and (3) the un-redacted version of the document Bates numbered as AF00448-479, which appears to be a preliminary draft of the relevant patent application with handwritten notes by the inventor, Dr. Laurence Dahners.[2] (See ECF No. 228 at 26-27.)

The patent analysis e-mail references an attachment. The attachment appears to be in the possession of AngleFix's counsel, but AngleFix has refused to provide the attachment to Wright. (See ECF No. 233, Ex. D (e-mail from AngleFix counsel to Wright counsel).) As to the legal advice regarding alleged infringers and infringing products, Wright claims that the information produced “is significant because it contradicts the proffered opinions of [AngleFix's] damages expert,” showing that the expert relied “upon at least two faulty assumptions[.]” (ECF No. 233-1 at 6-7.) Finally, Wright alleges that the patent application marked-up by Dr. Dahners is a disclosure of legal advice related to patent prosecution that effects “a broad subject matter waiver as to the preparation and prosecution of the application that led to the” applicable patent. (Id. at 9.) For these reasons, Wright requests that the court order (1) the production of the attachment to the patent analysis e-mail and (2) the production of documents and communications “reflecting legal advice related to suspected infringement” and “concerning the preparation and prosecution of the application that led to the” applicable patent, pursuant to a declaration of subject matter waiver as to those topics. (Id. at 17-18.)

A. The Patent Analysis E-mail Attachment

*2 The issue of e-mail attachments has already come before the court during the course of this litigation. The court stated that proper production of electronically stored information requires e-mails to be produced “with any corresponding attachments ... in a logically comprehensible manner.” (ECF No. 217 at 6 (citing Graff v. Haverhill N. Coke Co., No. 1:09-CV-670, 2011 WL 13078603, at *10 (S.D. Ohio Aug. 8, 2011)).) On March 6, 2017, the court ordered production of item number 8 on AngleFix's privilege log (i.e., the patent analysis e-mail), and that includes any attachments to that e-mail. This issue has been adjudicated, and the time for objections (such as the relevance objection argued by AngleFix in its response to this motion) has passed. The patent analysis e-mail clearly references an attachment, and AngleFix's counsel has represented that he has the attachment in his possession. It must be produced. As to this issue, the Motion to Compel is GRANTED.

B. Subject Matter Waiver

Likewise, the issue of subject matter waiver is not new to this case. In determining whether to find that privilege has been waived as to a particular subject matter, the court stated that the focus belongs on whether a party's conduct is “intentional, seemingly deceptive, and unfair[.]” (ECF No. 228 at 14 (citing Fed. R. Evid. 502; In re Grand Jury Proceedings Oct. 12, 1995, 78 F.3d 251, 256 (6th Cir. 1996)).) On March 6, 2017, the court denied the part of Wright's prior motion seeking subject matter waivers, finding that Wright had “not presented sufficient evidence to demonstrate that AngleFix intentionally put itself at an unfair advantage by waiving privilege over” the disclosed materials at issue. (Id.)

As to the present motion, Wright alleges that certain documents produced pursuant to the prior court order strike at the credibility of AngleFix's damages expert. Additionally, Wright alleges to now be privy to certain comments of inventor Dr. Dahners regarding the patent application, which AngleFix had previously tried to shield behind an assertion of privilege. It is possible that these compelled productions may very well be helpful to Wright's case. However, it does not follow that Wright should be entitled to additional information that AngleFix has claimed to be privileged just because such information might also support Wright's positions.[3] Setting aside the threshold question of whether the assertion of privilege over materials that were produced only upon an order of the court can be considered intentionally waived, Wright has not shown that AngleFix has “put itself at an unfair advantage.” Wright has not sufficiently indicated any particular fairness concerns or offensive uses of any waived materials that persuade the court to declare a subject matter waiver.[4] As to this issue, the Motion to Compel is DENIED.

For the above reasons, Wright's Motion to Compel is GRANTED in part and DENIED in part, as indicated. AngleFix is ORDERED to produce the attachment to the patent analysis e-mail within fourteen (14) days of the date of this order.

IT IS SO ORDERED.

This patent infringement action was originally filed on June 11, 2013, and the case in its present state proceeds in accordance with presiding District Judge Jon Phipps McCalla's July 13, 2017 Order Concerning Motions for Summary Judgment of Infringement/Non-Infringement and Invalidty and Motion to Dismiss (ECF No. 241). This section is strictly limited to the background necessary for analysis of the present motion.

The court's order compelled the production of other documents that do not appear to be directly relevant to the present motion.

For the purpose of clarification, AngleFix has already been ordered to produce all documents that are not logged on AngleFix's privilege log (or exempted pursuant to the parties' protective order), and AngleFix must do so if that includes any of the documents currently sought. (See ECF No. 228 at 12.) Except to this extent, the court does not read the present motion to challenge AngleFix's underlying privilege assertions.

This includes Wright's argument in reply that AngleFix waived specific legal advice in its response to the present motion. (See ECF No. 238 at 4.) To the contrary, the deposition excerpt provided by Wright as Exhibit P shows that AngleFix has been consistent in protecting the content of (as opposed to the fact of) said advice.