"Email: the cockroaches of litigation."—Anonymous
Employees routinely save documents on the company server that would have traditionally been tossed had they been stored in paper form. Many such documents are technical in nature and include schematics, calculations, patent searches, and patent applications. This raises a problem for companies that have such technical documents: If patent litigation arises, what technical documents are protected by the attorney-client privilege or work-product doctrine?
In other words, if you sue or are sued, and opposing counsel asks that you produce certain technical documents, can you refuse to do so based on either the attorney-client privilege or work-product doctrine? This article provides points to consider when you evaluate how your organization manages and retains its technical documents. The attorney-client privilege will be addressed followed by a brief discussion of the work-product doctrine.
Whether technical information is protected by the attorney-client privilege is best answered by addressing the following questions.
These questions are addressed below.Question #1: Is the Technical Information Truly a Communication?
To be privileged, information must actually be communicated to or from an attorney. Information need not, however, explicitly indicate the document was sent to or from an attorney. For example, an engineer's list of technical calculations that he eventually provides to his company's attorney may constitute a communication. In re Spalding Sports Worldwide, 203 F.3d 800 (Fed. Cir. 2000). While the company may not need to produce the list of calculations, the engineer may, however, be deposed as to what the calculations were.Question #2: Is the Communication Confidential (or at Least Intended To Be Confidential)?
To be protected by the attorney-client privilege, communications must be confidential or at least intended to be confidential. Communications made in the presence of strangers are not privileged. In fact, numerous parties listed on a technical memorandum's circulation list may significantly decrease the chances that the memo is privileged. Knogo Corp. v. United States, 213 U.S.P.Q. 936, 941 (Ct. Cl. 1980). Furthermore, a privileged communication cannot be based on a nonconfidential source such as public information or information from a third party.Question #3: Is the Communication between the Client and Its Lawyer?
Information that is protected by the attorney-client privilege must have been communicated between the client and its lawyer. For these purposes, in-house counsel is treated no differently than outside counsel. Also, patent agents are generally treated as lawyers for purposes of determining whether a document is privileged. The communication with the agent (e.g., an email describing how an invention works), however, must pertain to the specific rights granted to him to practice before the U.S. Patent and Trademark Office. John Labatt Ltd. v. Molson Breweries, 898 F. Supp. 471, 475 (E.D. Mich. 1995).Question #4: Does the Communication Relate to the Lawyer-Client Professional Relationship?
Question #4 is a big one. This question is best explained by considering real-life examples. The following types of information have been held to be protected by the attorney-client privilege.
To better illustrate the concept, we will further consider the engineer's infringement notes (item #5). If these notes were made to help an attorney determine whether there is infringement, the notes may relate to the lawyer-client professional relationship. If the notes were made with no intention of using them to inform the attorney, privilege may not be granted. Now, please consider the following communications that have been held to not be privileged.
Technical drawings (item #5) provide a good illustrative example. If the drawings were to be generated regardless of whether they were ever sent to a lawyer, a party may be unable to argue the communication truly related to the lawyer-client relationship. Opposing counsel may argue the analogy of a criminal that shoots a man and then gives the gun to his lawyer. Was the gun really given to the lawyer to further the attorney-client relationship? The answer is typically "no." The gunman is merely trying to keep the gun from the district attorney. So, were the technical drawings created and given to the lawyer so he could, for example, draft a patent application? Or, in contrast, were they generated in the normal course of business and, as an afterthought, given to the lawyer in an attempt to gain privileged status?Question #5: Has the Privilege Been Waived?
A voluntary disclosure of an otherwise privileged communication may waive the attorney-client privilege for that specific communication and for all other attorney-client communications on the same subject. In a typical patent litigation scenario, an accused infringer may, in defense to a charge for willful infringement, produce a formal legal opinion stating there is no infringement. The opinion would normally be privileged, but production of the opinion would waive that privilege. Furthermore, such production may waive privilege for other documents concerning infringement such as, for example, an email from an engineer to the lawyer spelling out the differences in a patent claim and the accused product.Question #6: Has the Privilege Been Pierced?
The attorney-client privilege may be pierced if the privileged communication was made in furtherance of a crime or fraud. The crime-fraud exception typically arises in the patent litigation context in cases where the accused infringer alleges that the patent in dispute was procured by inequitable conduct. To invoke the crime-fraud exception, however, a showing of inequitable conduct is insufficient. The required fraud requires higher threshold showings of both intent and materiality. In re Spalding Sports Worldwide, 203 F.3d at 807. For example, an email where the client tells his lawyer to not cite a particular journal article to the U.S. Patent and Trademark Office (because doing so would doom his efforts to patent his alleged invention) may result in the privilege being pierced?
Even if a document is not protected under the attorney-client privilege, it may be protected pursuant to work-product immunity. Information is protected from discovery by work-product immunity provided the information constitutes documents or tangible things that were prepared in anticipation of related litigation or for trial. To be "prepared in anticipation" of litigation, there must be an articulable claim that is likely to lead to litigation. Also, the claim must pertain to a particular opposing party and not to the world in general. Several courts have found that work-product immunity may attach to patent prosecution documents if the primary purpose for their creation was for use in pending or anticipated litigation. McCook Metals L.L.C. v. Alcoa Inc., 192 F.R.D. 242, 261 (N.D. Ill. 2000). To further examine the doctrine, please consider the following examples where work-product immunity has been withheld:
Regarding routine analysis (item #3), items such as accident report forms filled out by insurance companies have be denied coverage because they were deemed routine and products generated in the insurance company's usual course of business. Targeted analysis of a certain accused infringer's specific device, however, may potentially be protected.
The question of what technical documents, if any, are protected by the attorney-client privilege or work-product doctrine is a complex one. The issue has been generally addressed above but the fact-intensive nature of the inquiry necessitates detailed discernment between a client and IP counsel. In short, a risk manager would be wise to consider how her company handles technical information.
The risk associated with these questions can be managed with forward-thinking policies and due diligence from the risk manager. Failure to meet the issue head on, however, may provide the proper environment for the "cockroaches of litigation" to breed. Ugh!
E.E. ("Jack") Richards II is an associate with Winstead Sechrest Minick in Austin, Texas, where he specializes in intellectual property, technology, litigation, dispute resolution, and nanotechnology. He received his BS degree from Texas A&M and his JD degree, cum laude, from the University of Houston Law Center. Before entering law school, he worked as an engineer for a start-up company in the medical device industry, focusing on electronics and software related to cardiac data (electrophysiology and hemodynamics).
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