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Chicago IP Litigation Tracking Northern District of Illinois IP Cases

Tag Archives: Privilege

Experts Review of Document Erases Privilege

Posted in Trial

Tellabs Ops., Inc. v. Fujitsu Ltd., No. 08 C 3379 & 09 C 4530, Slip Op. (N.D. Ill. Aug. 29, 2012) (Cole, Mag. J.).

Judge Cole, after an evidentiary hearing, ordered Fujitsu to produce all documents related to an extensive inspection of plaintiff Tellabs’ optical scanner in this patent case.  Fujitsu claimed that certain reports related to the inspection were privileged, but Fujitsu’s expert report stated that the expert had reviewed those report.  Fujitsu and its expert argued that the expert’s statements about reviewing the reports were erroneous.  While the expert had received the reports, he thought they were other documents and put them in a pile without ever reading them.  Regardless of whether the expert and counsel remembered the facts correctly, the story was improbable.  The Court did not believe that an “eminent” professor who was acutely aware of the need for accuracy could mistakenly misstate what he had reviewed twice.  Because the Court held that the expert had considered the reports, any privilege that may have attached to them was waived.

Fees Awarded for Deposition Related to Rule 11 Investigation

Posted in Discovery

Morningware, Inc. v. Hearthware Home Products, Inc., No. 09 C 4348, Slip Op. (N.D. Ill. Oct. 6, 2011) (St. Eve, J.).

Judge St. Eve granted in part plaintiff/counter-defendant Morningware’s motion to compel the deposition of defendant/counter-plaintiff’s employee that conducted pre-suit, Rule 11 testing in this Lanham Act and patent infringement case involving convection ovens. The Court held that the witness at issue – Kim – was involved in the testing. In fact, Hearthware produced a video showing Kim performing tests. Furthermore, not all of Kim’s actions were privileged. Communications with counsel were privileged, while testing was not. And even as to communications, Morningware was entitled to information regarding the date of the communication, the parties in the communication, their titles and the subject matter of the communications. The Court also granted Morningware its fees related to the motion.

Court Orders Production of Allegedly Privileged Documents After In Camera Review

Posted in Discovery

Heriot v. Byrne, No. 08 C 2272, Slip Op. (N.D. Ill., Apr. 9, 2008) (Ashman, Mag. J.).

Judge Ashman issued this Order finding that certain of defendants’ allegedly privileged documents were privileged and ordering that others be produced.  The Court did not discuss specific documents or the analysis that went into the decisions.  But the Court  did provide the following list of general explanations for why some documents asserted to be privileged were in fact not privileged and had to be produced:

  • not confidential;
  • did not reveal privileged communications, directly or indirectly; or
  • the advice was that of accountants, not lawyers, and was not used to assist the lawyers in giving legal advice.

Both young lawyers preparing privilege logs and senior lawyers reviewing them for exchange would do well to read this list.  It covers most of the common reasons documents are erroneously withheld as privileged.

FRE 502 Applies in Case Pending on 502’s Effective Date

Posted in Discovery

Heriot v. Byrne, No. 08 C 2272, Slip Op. (N.D. Ill., Mar. 20, 2008) (Ashman, Mag. J.).

Judge Ashman denied in part and granted in part Defendants’ discovery motion seeking certain allegedly privileged documents, and denied in part and withheld ruling on the remainder of plaintiffs discovery motion regarding allegedly privileged documents.  Of particular interest, the Court held that new Fed. R. Evid. 502 governing inadvertent disclosure of privileged documents applied in this case although it was not filed after the rule took effect because the case was pending at that time and because defendants, who opposed application of the rule, identified no reason that its application in this case would be unjust.  Having decided that Fed. R. Evid. 502(b) applied to allegedly inadvertent disclosures, the Court identified the test to determine whether the disclosure was a waiver of privilege as follows:  1) determine whether the disclosed material was privileged; 2) determine whether all three Fed. R. Evid. 502(b) factors are met, including inadvertence.  The Court also noted that in analyzing the three factors courtss were free to consider any of the five factors from Judson Atkinson Candies, Inc. v. Latini-Hohberger Dhimantec, 529 F.3d 371 (7th Cir. 2008).

Subpoena of Plaintiff’s Prosecution/Trial Counsel Denied.

Posted in Legal News

Miyano Machinery USA, Inc. v. MiyanoHitec Machinery, Inc., No. 08 C 526, 2008 WL 236610 (N.D. Ill. Jun. 6, 2008) (Nolan, Mag. J.).

Judge Nolan granted plaintiff’s motion to quash defendants’ subpoenas of plaintiff’s counsel – who represented: 1) plaintiffs and perhaps individual defendants in plaintiffs’ earlier trademark prosecution; and 2) plaintiffs in this case. The Court denied defendants’ motions to compel production of communications between plaintiffs and plaintiffs’ counsel and to pierce the privilege.

Defendants argued that plaintiffs committed fraud on the PTO, and therefore inequitable conduct, when plaintiffs’ counsel allegedly knowingly submitted false declarations during prosecution of plaintiffs’ trademarks. Defendants based their claims on an allegedly privileged communication between plaintiff and its counsel (Exhibit L) that plaintiffs claimed was inadvertently produced.


The Court held that Exhibit L was inadvertently produced – it was just one document among 22,000 pages and plaintiffs requested its return immediately after discovering its production. Furthermore, Exhibit L was essentially a list of questions from counsel to plaintiffs, by which counsel was making sure he had sufficient information to file the declarations in question – evidence supporting plaintiffs’ defense of defendants’ inequitable conduct claims.

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Court Limits Scope of Privilege Waivers

Posted in Discovery

Goss Int’l Am., Inc. v. Graphic Management Assocs., Inc., No. 05 C 5622, 2007 WL 161684 (N.D. Ill. Oct. 9, 2007) (Valdez, Mag. J.).*

Magistrate Judge Valdez granted in part the parties’ cross motions to compel various discovery. Each party’s alleged waived privilege is of particular interest. The Court denied plaintiff’s motion to compel all documents reflecting defendants’ trial counsel’s** mental impressions of the case, whether or not they were shared with defendants. In light of In re Seagate, the Court held that defendants’ reliance upon advice of counsel does not waive its privilege as to trial counsel’s mental impressions not communicated to defendants. 

The Court denied in part defendants’ motion to compel all previously privileged documents related to prosecution of the patent in suit. Defendants alleged that plaintiff’s production of a Record of Invention document prepared by the inventors at counsel’s direction and request waived privilege. The Court held that plaintiff intentionally waived privilege by disclosing the document, but limited the waiver to documents related to development of plaintiff’s invention.

Click here for more on this case in the Blog’s archives.

** It is not entirely clear, but it appears from the opinion that defendants used the same firm or attorneys for both opinion counsel and trial counsel.

Privilege Claims Must be Supported by Specific Facts

Posted in Discovery

Nutrinova Nutrition Specialties & Food Ingredients GmbH v. Viachem, No. 07 C 4232, Min. Order (N.D. Ill. Nov. 21, 2007) (St. Eve, J.).

Judge St. Eve granted in part plaintiff’s motion to compel various discovery. The Court ordered defendants to produce various once-privileged documents disclosed to unidentified customers pursuant to an alleged common interest privilege. The Court acknowledged that common interest could protect such disclosures. But defendants failed to identify the specific customers that were shown documents, which documents were disclosed or when the disclosures occurred. On that record, the Court could not find that defendants had maintained the privilege. 

The Court also ordered defendants to update their privilege log to identify any attorneys on the log. And the Court ordered the parties to meet and confer regarding uncrystalized disputes over defendants’ answers to some interrogatories.

Practice Tip: It is the rare judge that appreciates discovery motions, let alone motions where the parties did not identify what the actual issues were. It is very important to follow both the letter and the spirit of Local Rule 37.2 meet and confers.

Third Parties’ Communications With Other Third Parties Are Not Relevant

Posted in Discovery

Trading Techs. Int’l., Inc. v. eSpeed, Inc., No. 04 C 5312, Slip Op. (N.D. Ill. May 17, 2007) (Moran, Sen. J.).

Judge Moran denied plaintiff Trading Technologies’ ("TT") motion to compel additional production from third party Chicago Mercantile Exchange ("CME").  TT served CME with a subpoena seeking, among other things, anything referring or relating to potential prior art to the patents at issue and communications between CME and any other entity regarding the patents at issue, including any joint defense agreement between CME and such parties.  After TT filed the motion to compel, CME produced thousands of pages, including what it stated were all documents in its possession regarding possible prior art.  Because all prior art documents had been produced, the Court denied TT’s motion to compel additional prior art-related documents.

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Court Reminds Parties of Their Discovery Obligations

Posted in Discovery

Trading Techs. Int’l., Inc. v. eSpeed, Inc., No. 05 C 4120, (N.D. Ill. May 16, 2007) (Moran, Sen. J.).

Judge Moran granted in part and denied in part plaintiff Trading Technologies’ ("TT") motion to compel additional production from defendants GL Consultants, Inc. and GL Trade SA (collectively "GL").  The Court required GL to update certain interrogatory responses and to produce documents based upon an earlier priority date that GL had argued for, as opposed to stopping at the later priorit date alleged by TT.  The Court also required GL to provide TT access to original source code and certain electronic archives, without regard to whether TT had provided GL similar access.  Finally, the Court denied TT’s request to lower the confidentiality designation of the source code for GL’s "GL Tradepad" software.  But what is most interesting about the Court’s opinion is its reminder to the parties about how the Court expects them to conduct discovery:

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Joint Defense Agreement May Protect Third Party Communications

Posted in Discovery

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.

Inequitable Conduct Defense Does Not Waive Privilege

Posted in Discovery

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.

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Failure to Object at a Deposition Waives Privilege

Posted in Discovery

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.

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Privilege Logs Bolster Inadvertent Production Arguments

Posted in Discovery

Wunderlich-Malec Sys., Inc. v. Eisenmann Corp., No. 05 C 04343, 2006 WL 3370700 (N.D. Ill. Nov. 17, 2006) (Ashman, Mag. J.).

Magistrate Judge Ashman granted plaintiff’s motion to compel certain documents and held that defendant waived privilege as to certain documents it produced despite claiming attorney-client and work product privileges.  Defendant produced for inspection twenty two binders of documents, including four binders which defendant’s counsel had internally identified as privileged and did not intend to produce for inspection.  About six weeks after the inspection, defendant realized that it had provided certain of these documents to plaintiff and sought the return of seventeen pages from the four binders.  Then, over the next several weeks, defendant sought the return of the remainder of the produced documents from the four binders claiming that they contained privileged information or trade secrets unrelated to the case.  Plaintiff retained the bulk of the documents arguing that any privilege that existed had been waived by disclosure of the documents.  Defendant argued that the documents were disclosed inadvertently and should be returned.

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Be Careful With Privileged Documents

Posted in Discovery

Abbott Labs. V. Andrx Pharm., Inc., No. 05 C 1490, 2006 WL 2092377 (N.D. Ill. July 25, 2006) (Brown, Mag. J.).

Using nonprivileged documents that are connected to privileged documents, such as fax coversheets or cover emails used to send a privileged report, to question a witness regarding the related privileged documents can waive the privilege.  Applying Seventh Circuit law (the privilege questions at issue are unrelated to substantive patent law, so Federal Circuit law does not apply), the Court held that plaintiff Abbott waived privilege with respect to an entire document where:  1) Abbott produced a fax coversheet from a document over which it had claimed attorney-client and work product privilege; and 2) used that cover sheet in a line of questioning regarding the underlying document, despite Abbott’s decision not to produce the underlying document.

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Scope of Waiver of Attorney-Client Privilege and Work Product Protection

Posted in Discovery

Beck Sys., Inc. v. ManageSoft Corp., No. 05 C 2036, 2006 WL 2037356 (N.D. Ill. July 14, 2006) (Schenkier, Mag. J.).

In considering the scope of attorney-client privilege and work product waivers stemming from defendant ManageSoft’s reliance on an opinion of counsel, Magistrate Judge Schenkier undertook a detailed analysis of the Federal Circuit’s recent In re Echostar Communications, 448 F.3d 1294 (Fed. Cir. 2006), decision and how it changes the Northern District of Illinois’ previous ruling on the issue in Beneficial Franchise Co., Inc. v. Bank One N.A., 205 F.R.D. 212 (N.D. Ill. 2001).

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