Trading Techs. Int’l., Inc. v. eSpeed, Inc., No 04 C 5312, 05 C 1079, 05 C 4088, 05 C 4120, 05 C 4811 & 05 C 5164, 2007 WL 1302765 (N.D. Ill. May 1, 2007) (Moran, Sen. J.).
Judge Moran granted in part and denied in part plaintiff Trading Technologies’ ("TT") motion to compel production of defendants’ communications between themselves (more on this case in the Blog’s archives). Defendants asserted claims of attorney-client and work product privileges regarding various communications and information exchanged as part of a joint defense agreement among, at least, the various defendants and DJ-plaintiff (collectively "defendants") in the patent suits regarding TT’s patents. The Court explained that the joint defense privilege protects communications and exchange of information between parties that have expressly decided to cooperate in a litigation – with or without a written agreement. The Court held that defendants had expressed a sufficient intent to cooperate in their respective litigations against TT and, therefore, held that defendants need not produce communications made in relation to their joint defense. The Court required that defendants produce any written joint defense agreement or, in the absence of a written agreement, the identities of all members of the joint defense. The Court further held that third parties need not be identified to the extent that their identities are protected as work product, but that third parties should be identified if defendants’ communications with them are allegedly protected by attorney-client privilege. The Court also required that defendants produce all prior art in their possession, regardless of how it was located. And finally, the Court noted that "it must rely on the integrity of counsel to determine what is and is not privileged." As a result, the Court required that defendants produce "any communications not protected by a legitimate privilege . . . ."
You can download the opinion here.
Murata Mfg. , Ltd. v. Bel Fuse, Inc., No. 03 C 2934, 2007 WL 781252 (N.D. Ill. Mar. 8, 2007) (Cole, Mag. J.).
Judge Cole held that plaintiff’s inequitable conduct defense did not waive its privilege and, therefore, denied defendant’s motion to compel privileged documents. Defendant asserted that plaintiff engaged in inequitable conduct by failing to disclose an allegedly material piece of prior art during prosecution of the patent-in-suit. Defendant’s defense was essentially that their counsel and inventors fully understood their disclosure obligations and chose not to disclose the alleged prior art because it was not material or even similar to the patent-in-suit. Defendant argued that plaintiff waived its privilege when its 30(b)(6) deponent testified that: 1) he had been told that plaintiff’s in-house counsel instructed its prosecuting attorneys to disclose all relevant prior art to the PTO; and 2) that he was confident that the inventors understood their duties of disclosure based upon their past experience as patentees and the fact that they had each had several conversations with plaintiff’s prosecution counsel. But the Court held that disclosure of the occurrence of these conversations, without disclosing any of the contents did not act as waiver. The Court noted that if disclosure of the existence of these conversations without elaboration constituted wavier, then the exchange of privilege logs would also constitute waiver.
Rowe Int’l. Corp. v. Ecast, Inc., __ F. Supp.2d __, 2007 WL 831772 (N.D. Ill. Mar. 19, 2007) (Kennelly, J.).
Judge Kennelly held that plaintiff Arachnid waived its privilege as to a limited scope of information and held that Arachnid’s related uses of the information did not rise to the level of the crime-fraud exception, even if they may have been inequitable conduct. Arachnid filed a motion seeking the return of three inadvertently produced, privileged "patent reports." Defendants filed a cross-motion to compel production of privileged materials arguing that Arachnid waived the privilege as to the three documents and that the crime-fraud exception destroyed the privilege to the extent it was not waived. The Court agreed that the patent reports were inadvertently produced, but still held the privilege was waived on a limited scope of information. In 1999, a former Arachnid employee testified that he learned from Arachnid’s attorneys that "the only way we would receive [one of] the patent[s-in-suit] was if we included that information." While a former employee cannot waive the privilege, Arachnid’s attorneys attended the deposition in question and failed to object to the question or the answer. Additionally, Arachnid later turned the transcript over to the PTO during prosecution of a subsequent application and to defendants during production in the instant case. These actions combined to waive the privilege as to the specific information discussed by the ex-employee, the inclusion of figure 2 in the patent.