United States District Court, D. Colorado
Kristen L. Mix United States Magistrate Judge.
matter is before the Court on Plaintiff's Motion
to Compel Williams Intellectual Property's Compliance
with Subpoena and for Expedited Briefing
[#1](the “Motion”). Respondent
Williams Intellectual Property (“WIP”) timely
filed a Response [#12] in opposition to the Motion [#1]. The
Court held a hearing on the Motion [#1] on December 7, 2018.
See Minutes [#13]. The Court has reviewed the Motion
[#1], the Response [#12], the entire case file, and the
applicable law, and is sufficiently advised in the premises.
For the reasons set forth below, the Motion [#1] is
GRANTED in part and DENIED in
Luv N' Care, Ltd. (“LNC”) filed this Motion
[#1] on November 13, 2018, pursuant to Federal Rule of Civil
Procedure 45(d)(2)(B)(i). Motion [#1] at 1. The
underlying proceeding in this case is a patent dispute in the
United States District Court for the Western District of
Louisiana between Plaintiff LNC and Defendants Lindsey
Laurain (“Laurain”) and her company, Eazy-PZ, LLC
(“Eazy-PZ”). Id. Ms. Laurain retained
Ben Williams of WIP, a registered patent agent, to prosecute
the two patents at issue in the underlying litigation.
Id. at 3. Here, LNC seeks an order compelling WIP, a
nonparty to this suit, to produce certain documents and a
privilege log responsive to a subpoena issued in the
underlying litigation. Id. at 1. On October 25,
2018, WIP produced what it described as a log
“employing a ‘categorical approach'” to
its assertions of privilege. Response [#12] at 2. On
December 7, 2018, the morning of a hearing on the present
Motion, WIP produced an amended privilege log to counsel for
LNC. Hr'g Tr. [# 22] at 14. At the hearing, the
Court ordered WIP to once again amend its privilege log to
identify the documents listed on the privilege log by the
categories sought in LNC's subpoena. Id. at 31.
It is this third privilege log that is in dispute in the
current matter. See Ex. 2 to Response [#20-2]. LNC
argues that the communications it seeks from WIP are not
subject to the patent-agent privilege because Eazy-PZ was not
a client of WIP at the time and did not become a client until
Ms. Laurain officially assigned her intellectual property
rights to Eazy-PZ on October 9, 2016. Id. at 3. WIP
contends that WIP was de facto retained by Eazy-PZ when Ms.
Laurain founded Eazy-PZ on April 10, 2014, because WIP was
paid by Eazy-PZ and not Ms. Laurain. Response [#12]
at 4. WIP also avers that regardless of whether Eazy-PZ was
an official client of WIP, the common interest doctrine
applies because Ms. Laurain and Eazy-PZ had a “common
interest in the patent prosecution and resulting patent
rights, ” precluding waiver of the patent-agent
privilege. Id. at 5.
further argues that “all privilege assertions with
respect to the Williams IP documents should be waived”
due to the inadequacy of its privilege log even after its
third revision attempt. Response [#20] at 6. LNC
emphasizes that “[h]undreds of the documents have no
information regarding who authored the document or who
received it, ” arguing that an assertion of privilege
with respect to such documents cannot stand because LNC
“does not know what is being withheld or why it is
being withheld.” Id.
the Court holds that WIP has failed to satisfy its burden of
establishing that the patent-agent privilege applies, even
assuming its recognition in the Tenth Circuit Court of
Appeals, the Court does not address the issues of whether
Eazy-PZ was a client of WIP at the relevant time or of
whether the common interest doctrine applies.
Court first examines the scope of the attorney-client
privilege as applied in the Tenth Circuit. The Court next
addresses the question of whether the patent-agent privilege
applies in the Tenth Circuit. Finally, the Court applies its
analysis to WIP's privilege log and categorically
determines which entries are protected from disclosure under
the asserted privileges.
Rule of Civil Procedure 26(b)(1) requires production of
“any nonprivileged matter that is relevant to any
party's claim or defense and proportional to the needs of
the case.” Because there is no argument that the
requested documents are not relevant, the question for the
Court is whether Plaintiff seeks privileged information.
Federal courts “narrowly construe all
privileges.” Everitt v. Brezzel, 750 F.Supp.
1063, 1066 (D. Colo. 1990). The party asserting
attorney-client privilege as a bar to discovery has the
burden of establishing that the privilege applies. Peat,
Marwick, Mitchell & Co. v. West, 748 F.2d 540, 542
(10th Cir. 1984); Fed.R.Civ.P. 26(b)(5).
parameters of the attorney-client privilege are
well-established. See Upjohn Co. v. United States,
449 U.S. 383, 389 (1981) (noting that the attorney-client
privilege is “the oldest of the privileges for
confidential communications known to the common law”).
The “mere fact that an attorney was involved in a
communication does not automatically render the communication
subject to the attorney-client privilege, ” Motley
v. Marathon Oil Co., 71 F.3d 1547, 1550-51 (10th Cir.
1995); rather, “[t]he attorney-client privilege
protects communications between a client and an attorney,
made in order to obtain or deliver legal assistance, that
were intended by the participants to be confidential.”
Bethel v. U.S. ex rel Veterans Admin. Med. Ctr., No.
05-cv-01336-PSF-KLM, 2008 WL 45382, at *7 (D. Colo. Jan. 2,
2008) (citing Aull v. Cavalcade Pension Plan, 185
F.R.D. 618, 624 (D. Colo. 1998)).
well-settled that when privileged communications are
voluntarily disclosed to a third party, the privilege is
waived: “the privilege must be jealously guarded by the
holder of the privilege lest it be waived. The courts will
grant no greater protection to those who assert the privilege
than their own precautions warrant.” In re Sealed
Case, 877 F.2d 976, 980 (D.C. Cir. 1989). “Only
confidential information is protected by the privilege; if
the information has been or is later shared with third
parties, the privilege does not apply.” Wildearth
Guardians v. U.S. Forest Serv., 713 F.Supp.2d 1243, 1265
(D. Colo. 2010). The party asserting the privilege bears the
burden of establishing non-waiver. L-3 Commc'ns Corp.
v. Jaxon Eng'g & Maint., Inc., No.
10-cv-02868-MSK-KMT, 2014 WL 3732943, at *5 (D. Colo. July
“[j]ust because an email is copied to in-house counsel
does not render the document subject to privilege.”
Pandeosingh v. Am. Med. Response, Inc., No.
14-cv-01792-PAB-KMT, 2014 WL 5488415, at *2. (D. Colo. Oct.
30, 2014). In order to be covered by the attorney-client
privilege, a communication between a lawyer and a client must
relate to legal advice or strategy sought by the client.
United States v. Johnston, 146 F.3d 785, 794 (10th
Cir. 1998). For example, the Court previously determined that
a party asserting attorney-client privilege over an email
exchange failed to carry its burden of establishing that the
privilege applied where the party's counsel was a
carbon-copy recipient of every email in the exchange.
Pownell v. Credo Petroleum Corp., No.
09-cv-1540-WYD-KLM, 2011 WL 1045418, at *3-4 (D. Colo. Mar.
17, 2011). Because the party did not show that the emails
were “‘made for the express purpose of
securing legal' advice, ” the assertion of
privilege failed. Id. (citing AAMCO
Transmissions, Inc. v. Marino, Nos. 88-5522, 88-6197,
1991 WL 193502, at *3 (E.D. Pa. Sept. 23, 1991)).
question of whether a patent-agent privilege exists is one of
first impression in the Tenth Circuit. The privilege was
first formally recognized by the Federal Circuit in In re
Queen's University at Kingston, 820 F.3d 1287 (Fed.
Cir. 2016); since Queen's University, every
federal court that has been faced with the question of
recognition of the patent-agent privilege has agreed with the
Federal Circuit's determination. See, e.g.,
Onyx Therapeutics, Inc. v. Cipla Ltd., No.
16-988-LPS, 2019 WL 668846 (D. Del. Feb. 15, 2019);
LL's Magnetic Clay, Inc. v. Safer Med. of Mont.,
Inc., No. A-17-CV-649-SS, 2018 WL 5733178 (W.D. Tex.
Aug. 2, 2018); Lund v. City of Rockford, No. 17 CV
50035, 2017 WL 5891186 (N.D. Ill. Nov. 29, 2017); TCL
Commc'ns Tech. Holdings Ltd. v. Telefonaktenbologet LM
Ericsson, No. SACV 14-00341 JVS (ANx), 2016 WL 6921124