Greene, Tweed of Delaware, Inc. v. Dupont Dow Elastomers, L.L.C.
Docket: No. CIV. A. 00-3058
Court: District Court, E.D. Pennsylvania; May 3, 2001; Federal District Court
Greene, Tweed of Delaware, Inc. has initiated a legal action against DuPont Dow Elastomers, L.L.C., alleging willful infringement of U.S. Patent No. 5,461,107. The plaintiff seeks increased damages and attorneys’ fees, asserting that DuPont Dow's infringement was willful. The current matter involves a motion to compel DuPont Dow to produce specific documents listed in its Second Privilege Log, including those related to an opinion of counsel that DuPont Dow intends to use to counter the claim of willful infringement. The plaintiff argues that DuPont Dow has waived its attorney-client and work product privileges concerning these documents due to its intention to rely on the opinion of counsel asserting the patent's invalidity.
DuPont Dow concedes that it has waived privilege regarding the opinion of counsel but contends that the plaintiff's request includes documents for which privilege has not been waived. The legal principles governing this case highlight that when a party discloses privileged communications related to a particular subject, it waives the privilege over all communications on that subject. This waiver extends to work product immunity as well. In patent infringement cases, courts must evaluate the scope of privilege waivers on a case-by-case basis while considering the totality of circumstances surrounding claims of willful infringement.
DuPont Dow seeks to rebut the plaintiffs' claim of willful infringement of the ‘107 patent by asserting reliance on an opinion from outside patent counsel, which stated that the patent was invalid under 35 U.S.C. 102(f) and 102(g). Both parties agree that asserting such advice waives attorney-client privilege and work product immunity concerning the relevant advice; however, they dispute the extent of this waiver. The plaintiff argues that the waiver encompasses all matters related to the validity of the ‘107 patent, while DuPont Dow contends it should be restricted to invalidity under sections 102(f) and 102(g).
DuPont Dow’s July 3, 1996 letter to its patent counsel requested an opinion on the validity of the ‘107 patent and included related documents for assessment. This indicates that the subject matter for which DuPont sought advice was indeed the patent's validity. The rationale for waiving privilege in this situation is based on fairness, preventing a party from selectively disclosing favorable opinions while concealing unfavorable information. It would be unjust for DuPont Dow to disclose supportive opinions while withholding those that could harm its position.
Furthermore, DuPont Dow failed to provide any precedent where a court limited the waiver to a narrower subject matter than the validity of a patent. The relevant legal standard requires that the counsel’s opinion be comprehensive enough to reasonably convince an infringer that a court might find the patent invalid, not infringed, or unenforceable. The referenced case, McCormick-Morgan, Inc. v. Teledyne Industries, Inc., supports this position, as the court denied a request to narrow the subject matter scope of waiver to specific bases of challenge already disclosed.
In Mushroom Associates v. Monterey Mushrooms, Inc., the plaintiff contended that the defendants waived attorney-client privilege and work product immunity regarding documents related to patent infringement by invoking an advice of counsel defense. The Court determined that the defendants had indeed waived attorney-client privilege concerning all documents relevant to the patent infringement. It specified that DuPont Dow, having sought legal counsel's evaluation of the validity of the ‘107 patent and subsequently relying on that opinion as a defense against claims of willful infringement, also waived privilege concerning the patent's validity. However, DuPont Dow need not disclose privileged documents solely concerning non-infringement or unenforceability of the patent.
The plaintiff argued for an extension of the temporal scope of the waiver to the trial date, while DuPont Dow maintained that such a request was excessive, citing cases that limited waiver to the date of the filing of the civil actions. The Court found the temporal scope issue moot since the documents in question were dated before the plaintiff's Complaint was filed.
To assert a claim of privilege, the party must specifically designate and describe the documents in question and provide valid reasons for maintaining confidentiality. The burden lies with the party claiming the privilege to demonstrate its applicability and non-waiver, which requires competent evidence, not mere assertions. An affidavit or record evidence must provide detailed facts supporting the claim. In contrast, when asserting work product immunity, the burden of proving waiver resides with the party challenging the immunity. The trial court retains discretion over discovery matters, determining the existence of privilege or immunity independent of the assertions made by the claiming party's attorney.
Plaintiffs' motion addresses whether DuPont Dow waived its claimed attorney-client privilege and work product immunity. The key issue is whether DuPont Dow has sufficiently demonstrated that it has not waived these privileges. DuPont Dow's argument largely relies on general descriptions in its privilege logs and an unsuccessful assertion that any waiver should be limited to specific invalidity claims under 35 U.S.C. §§ 102(f) and 102(g). However, the court finds that DuPont Dow has not provided adequate justification for withholding the specific documents requested by plaintiffs.
DuPont Dow acknowledges that many documents it collected are pertinent to the invalidity of the ‘107 patent beyond the limited scope it proposed. Consequently, DuPont Dow has not met its burden to prove that the privileged documents sought by plaintiffs are irrelevant to the validity issues. The court will therefore address the specific documents in question, including Document Nos. 7, 12, 13, and 17, which DuPont Dow's Second Privilege Log identifies as relating to the invalidity of the ‘107 patent. Additionally, Document No. 5, a letter regarding the validity assessment of the ‘107 patent, further supports the conclusion that DuPont Dow has waived privilege concerning these documents.
Document Nos. 3, 8, and 11, which contain legal advice regarding U.S. Patent No. 4,713,418 (‘418 patent), are also relevant since DuPont Dow believes the ‘418 patent undermines the validity of the ‘107 patent. The court notes that DuPont Dow provided information on the ‘418 patent to outside counsel for a validity opinion, reinforcing the connection and waiver of privilege regarding these documents.
Moreover, Document Nos. 9 and 10, related to Teflon PFA, are relevant to DuPont Dow's invalidity analysis and must also be produced. Document Nos. 20 and 23 involve correspondence from plaintiffs' counsel inquiring about DuPont Dow's non-infringement stance regarding the ‘107 patent. Overall, the court concludes that DuPont Dow has waived both attorney-client privilege and work product immunity concerning the documents requested by plaintiffs, necessitating their production.
Document No. 20 is a letter from DuPont Dow’s outside patent counsel to in-house counsel addressing plaintiffs' inquiries. Document No. 23 includes plaintiffs' original letter with inquiries and a handwritten note from DuPont Dow’s counsel. Both documents contain information pertinent to the 1996 Opinion regarding the validity of the ‘107 patent, necessitating their production to the plaintiff.
For Document Nos. 1, 4, 6, 15, 24, and 27, DuPont Dow has not sufficiently demonstrated that these documents are protected by attorney-client privilege or that they do not pertain to the validity of the ‘107 patent. An in camera review indicates their relevance to this issue, thus they must also be produced.
Document No. 18, a handwritten note from in-house counsel about the monomer composition of Kalrez, along with Document No. 17, has been acknowledged by DuPont Dow’s outside patent counsel as confirmatory of the ideas expressed in the 1996 Opinion. Both documents are related to the validity of the ‘107 patent and must be produced.
Document No. 2, a handwritten fax memo regarding legal advice on the ‘189 Patent, has been deemed relevant to the validity of the ‘107 patent, leading to the granting of the motion to compel its production.
Document No. 19, a handwritten note on pre-litigation strategy, is not relevant to the validity of the ‘107 patent and need not be produced.
Document No. 22, related to potential damages and infringement rather than validity, also does not require production.
Document No. 25 is a letter/spreadsheet supporting a patent application, while Document No. 26 is a memo listing prior art for patentability analysis, both described in the Second Privilege Log. Further action on these documents is not specified in the excerpt.
The April 5, 2001 letter from the defendant's outside counsel indicates that Document Nos. 25 and 26 are relevant to the prosecution of the '189 patent. The plaintiff concedes insufficient knowledge to claim the waiver of privilege regarding these documents but asserts their relevance to understanding prior art and claim interpretation, impacting the evaluation of DuPont Dow's reliance on a 1996 opinion of counsel. Document No. 26 is found to relate to prior art pertinent to the validity of the '107 patent, leading to the granting of the plaintiff's motion to compel its production. In contrast, Document No. 25, containing unrelated test data, results in the denial of the motion for that document. DuPont Dow initially provided a privilege log (First Privilege Log) listing protected documents, later issuing a more detailed second log (Second Privilege Log) without claiming inaccuracies in the first. The plaintiff withdrew requests for two additional documents during oral arguments. DuPont Dow has submitted the contested documents for in camera review. Under Title 35 U.S.C. §§ 102(f) and 102(g), a patent may be denied if the inventor did not create the claimed invention or if another inventor had previously made it without abandoning it. DuPont Dow acknowledges the plaintiff's entitlement to documents related to the opinions of counsel from 1996. The plaintiff's counsel confirmed possession of a specific letter listed in the Second Privilege Log. To establish attorney-client privilege, four essential elements must be satisfied: the holder must be a client, the communication must be made to a qualified attorney, the communication must pertain to securing legal advice, and the privilege must be claimed and not waived.
Doc. Nos. 7 and 12 in the Second Privilege Log correspond to Doc. Nos. 15 and 20 in the First Privilege Log, both originally labeled as "Memo re information for Opinion." Similarly, Doc. Nos. 3 and 11 from the Second Privilege Log match Doc. Nos. 6 and 19 in the First Privilege Log, with the former described as "Memo re information gathered for Opinion" and the latter as "Memo re information for Opinion." DuPont Dow contends that Doc. No. 3 was "improperly designated" under work product immunity and should instead be classified under attorney-client privilege. Additionally, DuPont Dow asserts that Doc. No. 4 in the Second Privilege Log was also "improperly designated" as work product immunity and should be reclassified under attorney-client privilege. Doc. Nos. 9 and 10 in the Second Privilege Log are identified as Doc. Nos. 17 and 18 in the First Privilege Log. Documents Nos. 1, 4, 6, and 15 in the Second Privilege Log correlate with Document Nos. 2, 7, 12, and 28 in the First Privilege Log and are described as related to "information gathered for Opinion." Finally, Doc. No. 17 in the Second Privilege Log has been previously addressed and must also be produced.
