Opinion
Civil Action No. 00-10836-GAO
August 1, 2002
ORDER
The parties' pending motions to compel are resolved as follows:
A. Agfa's Motion to Compel (Dkt. No. 73)
1. The issue concerning the production of non-sales-related pre-1997 documents was resolved at the January 9, 2002 hearing by the defendants' undertaking to produce technical documents pertaining to prior art devices regardless of date and to produce pre-1997 U.S. sales information in summary form. The defendants' objection to producing pre-1997 technical data pertaining to the issue of infringement was implicitly sustained.
2. Document requests 24, 26, 27, and 74 pertaining to the obviousness defense were similarly resolved at the January 9, 2002 hearing.
3. The issue of the level of detail in the defendants' disclosure of sales information was similarly resolved at the January 9, 2002 hearing. However, the defendants are ordered to produce the twenty-one sales contracts, provided, however, that all information permitting the identification of particular customers may be redacted. As an alternative, if the sales contracts are simply customized versions of a standard contract, the defendants may produce the standard contract along with summaries of customized variations as appropriate, sufficient to disclose the substance of individual contracts without identifying particular customers.
4. The defendants' response to Document Requests 5, 15, 34, and 35, seeking documents pertaining to marketing and promotional efforts appears generally to have been sufficient, except that the defendants shall produce beta test contracts and communications concerning tests conducted pursuant to such contracts, provided, however, that all information permitting the identification of particular customers may be redacted.
5. The defendants appear to have adequately responded to Document Requests 36, 47, 49, and 51, pertaining to profitability of the accused machines.
6. The defendants appear to have adequately responded to Document Request 60, pertaining to market studies.
7. The defendants are ordered to produce, in response to Document Request 6, communications with customers that specifically address comparison between the defendants' CTP systems and/or placesetters and those made or sold by Agfa. Again, customer-identifying information may be redacted.
8. The defendants' response to Interrogatory 5 and Document Request 14 appear to have been adequate.
9. As ordered above, the defendants are to produce sales contracts and beta test agreements, which may be redacted to omit customer-identifying information. The defendants' response to Document Requests 15 and 53 insofar as they seek agreements, etc., with others concerning CTP systems or the patents-in-suit appears to have been adequate.
10. The issue of the production of documents pertaining to the merger, sought by Document Request 23, was resolved at the January 9, 2002 hearing.
11. The defendants' response to Document Requests 53, 54, 55, and 58, pertaining to royalty and licensing documents, appears to have been adequate.
Insofar as the defendants are ordered in the preceding paragraphs to make further production of documents, Agfa's motion to compel is GRANTED. In all other respects, it is DENIED.
B. Creo's Motion to Compel
After review of the parties' arguments and relevant cases, I conclude that communications to a patent agent who is authorized to practice before the United States Patent and Trademark Office but who is not an attorney licensed to practice before any state or federal court is not protected by the attorney-client privilege unless the purpose of the communication is to obtain legal advice from an attorney.
The attorney-client privilege is to be construed narrowly. See Cavallaro v. United States, 284 F.3d 236, 245-46 (1st Cir. 2002); In re Grand Jury Subpoena, 274 F.3d 563, 571 (1st Cir. 2001) ("[T]he privilege applies only to the extent necessary to achieve its underlying goal of ensuring effective representation through open communication between lawyer and client."). See also United States v. Nixon, 418 U.S. 683, 710 (1974) (stating that "exceptions to the demand for every man's evidence are not lightly created nor expansively construed, for they are in derogation of the search for truth").
I see no reason to extend, contrary to these cautions, the common law attorney-client privilege to non-lawyer patent agents authorized to practice before Patent and Trademark Office. Courts that have done so have reasoned that the underlying basis of the privilege, certain policy considerations, and the role played by patent agents warrant the extension of the privilege to patent agents as "professional legal advisers" with respect to proceedings before the PTO. See Mold Masters Ltd. v. Husky Injection Molding Systems, Ltd., 2001 WL 1268587 (N.D.Ill. 2001); accord Dow Chemical Co. v. Atlantic Richfield Co., 227 U.S.P.Q. 129, 133-34 (E.D. Mich. 1985); In re Ampicillin Antitrust Litigation, 81 F.R.D. 377, 393-94 (D.D.C. 1978). I am not persuaded by these reasons. At a strictly literal level, a patent agent could in some sense be thought to be a "professional legal adviser," because some part of the agent's work would include applying in practice on behalf of an inventor what she understood to be the requirements of the law. The same could be said, however, for any number of non-lawyer advocates who formally undertake to "represent" "clients" before some tribunal and who advise the clients about how the law might apply to or affect the clients' interests. The "looks like a duck, walks like a duck" analysis relied on by cases such as those cited above works only if it regards as insignificant the fact that privilege is rooted, both historically and philosophically, in the special role that lawyers have, by dint of their qualifications and license, to give legal advice. The courts have consistently refused to recognize a common law privilege of confidentiality for accountants, for example, unless they are shown to be working under the direction of an attorney and thus may be thought to be agents of the attorney, who is the necessary "professional legal adviser." See Couch v. United States, 409 U.S. 322, 335 (1973); Cavallaro, 284 F.3d at 246.
Agfa argues that Sperry v. Florida, 373 U.S. 379 (1963) supports the extension of the privilege to non-attorney patent agents. In Sperry, the Supreme Court held that a State could not prohibit a registered patent agent from preparing and prosecuting patent applications before the United States Patent Office in accordance with federal statutes and rules. The opinion contains absolutely no discussion of whether the attorney-client privilege extends to patent agents. To the contrary, underlying the issue resolved in Sperry is the recognition that there is a clear distinction between a non-lawyer patent agent and a lawyer formally admitted to practice before a state bar.
I have reviewed the privilege logs at issue on this motion. My determination that communications with patent agents are not protected by the privilege unless the agent is acting under the direction of an attorney resolves those claims of privilege that appear to involve simply communications with patent agents alone. As to those, the invocation of the privilege is overruled and the motion to compel is granted.
Since the party asserting the privilege bears the burden of proving that the privilege protects the communications at issue, see Cavallaro, 153 F. Supp.2d 52, 56 (D.Mass. 2001) aff'd 284 F.3d 236 (1st Cir. 2002), Agfa bears the burden of establishing the claim with respect to each disputed document. The appendix attached to this order discloses the resolution of the claims document by document, based on available information. In reviewing the logs, I have upheld the privilege as to any communication that was from, to, or shared with an attorney. I have relied on the information presented in the logs and the parties' memoranda in determining who might be a lawyer. In the absence of information indicating that a particular person was a lawyer, I have assumed that the person was not a lawyer.
Accordingly, the defendants' motion to compel is GRANTED IN PART and DENIED IN PART, all as reflected in the appendix attached hereto.
It is SO ORDERED.