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Ltd. v. Williams Intellectual Property

United States District Court, D. Colorado

June 12, 2019

LUV N' CARE, LTD., Plaintiff,


          Kristen L. Mix United States Magistrate Judge.

         This matter is before the Court on Plaintiff's Motion to Compel Williams Intellectual Property's Compliance with Subpoena and for Expedited Briefing [#1][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 part.

         I. Background

         Plaintiff 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.

         LNC 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.

         Because 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.

         II. Analysis

         The 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.

         A. Attorney-Client Privilege

         Federal 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).

         The 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)).

         It is 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 29, 2014).

         Further, “[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)).

         B. Patent-Agent Privilege

         The 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 ...

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