Opinion
Civil Action No. 99-MD-1298, SECTION "G" (2).
July 12, 2001.
ORDER AND REASONS
This order addresses the following seven motions, which are pending before me: (1) Papst's motion to compel IBM to answer the Papst Parties' first set of Multi-District Litigation ("MDL") interrogatories; (2) the Minebea Parties' motion to compel; (3) Papst's motion to compel production of discovery regarding core issues of patent validity, patent claim interpretation and patent exhaustion; (4) the Papst Parties' second motion to compel; (5) Papst's motion for leave to file supplemental memorandum in support of its motion for summary judgment; (6) Minebea's motion to compel the return of privileged documents; and (7) Minebea's motion to defer briefing and hearing on Papst's motion for summary judgment.
An eighth motion, Papst Licensing's re-noticed motion to compel discovery, has been deferred at the request of counsel.
The Papst Parties consist of Papst Licensing GmbH Co. KG and Georg Papst. I sometimes refer to them collectively as "Papst."
The Minebea Parties consist of Minebea Co., Ltd., Precision Motors Deutsche Minebea and Nippon Miniature Bearing Corporation. I sometimes refer to them collectively as "Minebea."
I. BACKGROUND
On October 13, 1999, the Panel on Multi-District Litigation transferred four civil actions to the Eastern District of Louisiana pursuant to 28 U.S.C. § 1407. The actions involve patents and licensing agreements pertaining to computer hard disk drives.
One of these four actions, Hewlett-Packard Co. v. Papst Licensing, GmbH, originally filed in the District of Delaware, has been settled and dismissed. A fifth action, Papst Licensing, GmbH v. International Business Machines, Civil Action No. 00-3760, was filed in the Eastern District of Louisiana in December 2000 and consolidated with the pending actions as a "tag-along" case pursuant to 28 U.S.C. § 1407.
Two case management orders were issued by Judge Morey L. Sear in this action. Case Management Order ("CMO") No. 1 was filed on February 18, 2000. It authorized the parties to proceed with limited discovery directed solely to the preparation of motions permitted by Section VI of the CMO. All other discovery was deferred until resolution of those motions.
On December 5, 2000, after resolution of the parties' motions filed pursuant to Section VI of CMO No. 1, Judge Sear issued CMO No. 2, taking into consideration the proposals submitted by counsel. CMO No. 2 provided, among other things, a schedule for the commencement and completion of discovery in phases. The order prohibited contention interrogatories. It also provided that common, core discovery must be completed prior to the commencement of discovery directed to the individual cases.
After two status conferences held on January 12 and 22, 2001, Judge Sear issued an amendment to CMO No. 2. In the amendment, among other things, Judge Sear clarified that discovery in the individual actions not involving common, core issue discovery would commence no later than 60 days after completion of core discovery. Judge Sear did not specifically define the scope of core discovery, having determined that the parties were in the best position to determine which issues were common, core issues and which issues were individualized only to particular cases.
The parties were unable to agree upon the scope of common, core discovery. Lead counsel submitted separate proposals to Judge Sear, and a status conference was held on April 19, 2001. By minute entry filed on April 23, 2001, Judge Sear ordered that core discovery would be limited to "issues relevant and material to the validity and/or enforceability of the patents in suit." However, the parties continued to disagree about what particular discovery relates to the validity and enforceability of the patents in suit.
On April 24, 2001, I heard two hours of oral argument in connection with four of the pending motions: (1) Papst's motion to compel IBM to answer the Papst Parties' first set of MDL interrogatories; (2) the Minebea Parties' motion to compel; (3) Papst's motion to compel production of discovery regarding core issues of patent validity, patent claim interpretation, and patent exhaustion; and (4) the Papst Parties' second motion to compel. A substantial portion of the parties' arguments was directed to the question whether particular interrogatories and requests for production are relevant and material to the core issues of validity and/or enforceability of the patents in suit.
After extensive review of these four motions, and after hearing oral argument, I conferred with Judge Sear and lead counsel in May 2001 concerning the scope of discovery and the status of the case. Those discussions included this court's inclination that the scope of core discovery should be expanded. I then received additional briefs and heard oral argument on July 6, 2001, concerning the suggestions of counsel as to whether the case management orders should be modified.
Based on these discussions and review of the record and having consulted with Judge Sear, I have concluded that the case management order must be modified and that the pending motions must be decided by applying those modifications, if the goals and purposes of MDL treatment are to be realized. The principal goals of both the MDL statute, 28 U.S.C. § 1407, and the case management orders that have been entered in this court are to promote the just and efficient conduct of these actions and to substantially advance them toward resolution. Those goals have not been attained in this case to date for several reasons.
First, the civil actions are dissimilar in significant ways. The action filed by Minebea against Papst in the District of the District of Columbia is materially different in important respects from the other cases. While there are some commonalities between the D.C. case and the others, the D.C. case will not make sufficient progress toward resolution if the current case management order and restrictions on discovery are maintained or if the latest case management proposals submitted by the hard disk drive manufacturers are adopted.
Second, the issues involved appear insusceptible to "common/core" discovery that will both save any party or the court significant time or effort and advance these cases toward resolution. The facts about which discovery is being sought are so intertwined and interrelated that discovery phased by legal issue has proved not to be a practical or efficient approach in this case. The parties and their counsel, not this court, are in the best position (through their superior knowledge of the history of these disputes, the technicalities of the subject matter, and the complexity of the applicable substantive law) to devise a methodology by which these cases might be efficiently and economically brought to resolution, yet they have been unable to agree on a workable approach.
For example, at the request of counsel, after the court outlined during the May 2001 conferences the contemplated changes to the case management order contained herein, all parties were permitted to file briefs outlining their case management proposals, and they did so. Record Doc. Nos. 212, 213, 218, 219 and 220. The Papst Parties made no proposal, and their reply brief is essentially an expression of concern that almost anything the court might do along the lines of limited, phased initial discovery as proposed by the other parties will fail to achieve case management efficiencies or to minimize costly and time-consuming discovery disputes of the type the court now faces.
The hard disk drive manufacturers' proposal essentially was that initial discovery be limited to their affirmative defenses of patent exhaustion and misuse. However, these terms of art of patent law are no clearer or more susceptible to meaningful specification by the court or agreement among the parties for purposes of guiding future, limited, efficient discovery than the failed patent validity and enforceability limitation in the previous CMO. The suggestion in the hard disk drive manufacturers' brief that such discovery could be completed in 90 days seems unrealistically optimistic in light of the record in this case. Thus, while the theory of the hard disk drive manufacturers' proposal is laudable, the court is confident, based on this record, that its execution would fail.
Minebea's latest case management proposal is similarly unworkable. Minebea suggests that initial discovery should proceed on "the issues which are common to all of the cases includ(ing) patent licensing; patent exhaustion; patent misuse; patent invalidity and claim interpretation," while "individualized issues includ(ing) patent infringement; Minebea's fraud claims; antitrust claims; Lanham Act claim and various business torts . . . should be transferred back to their transferor jurisdictions." Record Doc. No. 213 at pp. 2-3. Issue remand of the type suggested by Minebea prior to completion of all common discovery is contrary to the theory of MDL treatment. This court has already attempted to limit initial discovery to "core" issues of the type listed by Minebea, and that effort has not succeeded in efficiently moving these cases toward resolution.
Finally, the court's CMO, coupled with the inability of the parties to reach any consensus concerning discovery, has had the unintended effect of complicating, rather than economizing, these proceedings, as evidenced by the massive discovery-related motion practice and many case management conference requests with which the court has been confronted in the past few months. Ironically, the court's efforts to move these cases toward resolution efficiently and economically have had the opposite of the intended effect to date.
Thus, instead of concluding at this time that these cases are simply not amenable to beneficial MDL treatment, this court will attempt to move this matter forward by (a) modifying the case management order; (b) issuing this ruling on the pending discovery motions that applies an expanded scope of initial discovery under the CMO modification, while also attempting to limit excessive discovery quantitatively; and (c) crafting a new schedule of deadlines for discovery that the court will set in consultation with counsel.
Accordingly, this ruling will be based on the following modifications to CMO No. 2, as amended:
1. Contention interrogatories will be allowed. A contention interrogatory is one whose answer "involves an opinion or contention that relates to fact or the application of law to fact." Fed.R.Civ.P. 33(c).
2. Discovery will proceed as to all issues, EXCEPT:
(a) Whether valid, enforceable patents held by Papst are being infringed by specific products manufactured by the non-Papst Parties; and
(b) Damages.
3. The interpretation and enforceability of the contractual agreements between Minebea and Papst, including but not limited to the Settlement Agreement of 1995, will be included in the discovery that will be permitted to proceed at this time.
4. New discovery deadlines and limitations will be set at a status conference to be scheduled by the court.
The remainder of this order will address the pending motions in the context of CMO No. 2, as modified above.
II. THE MOTIONS (A) PAPST'S MOTIONS TO COMPEL
This part of the order addresses three discovery motions filed by the Papst Parties. All three motions concern the same set of 13 interrogatories propounded by Papst in this MDL proceeding. Specifically, these motions are (1) the Papst Parties' motion to compel IBM to produce all documents responsive to the Papst Parties' first set of MDL interrogatories, Record Doc. No. 140; (2) the Papst Parties' motion to compel production of discovery regarding core issues of patent validity, patent claim interpretation and patent exhaustion (the "Core Issues Motion"), Record Doc. No. 148; and (3) the Papst Parties' second motion to compel, Record Doc. No. 157, in which they complain about alleged specific kinds of deficiencies in the interrogatory answers of the other parties. These Papst motions are GRANTED IN PART AND DENIED IN PART as follows:
(1) The Core Issues Motion
The Core Issues Motion does not seek answers to all of the Papst Parties' interrogatories. Instead, the motion seeks an order (1) that patent validity, patent claim interpretation and patent exhaustion are core issues as to which discovery may proceed at this time under the case management order; (2) compelling production of certain responsive documents; and (3) requiring complete answers to Interrogatories No. 1, 2, 3, 6, 8, 10, 11 and 12.
The Core Issues Motion is denied insofar as it seeks an order identifying core issues. As discussed above, the distinction concerning core issues for discovery purposes in the court's previous case management orders is being eliminated because it is unworkable. There is no longer any need to define core issues for discovery purposes in the manner sought in this motion.
The Core Issues Motion is granted in part insofar as it requests an order concerning document production. Documents in the possession, custody or control of responding parties or their agents must be made available for inspection as provided in the case management order and to the extent required in the remainder of this order.
The request in the Core Issues Motion for relief as to Interrogatories No. 1, 2, 3, 6, 8, 10, 11 and 12 is addressed below in connection with the other two motions of the Papst Parties concerning their 13 MDL interrogatories.
(2) Specific Interrogatories
As to the 13 specific interrogatories at issue in the Core Issues Motion and the other two Papst motions, the motions are granted in part and denied in part as follows:
At oral argument on April 24, 2001, counsel for the Papst Parties stated that they are not seeking relief from the court concerning Interrogatories No. 7, 9 and 13. However, counsel's statement was clearly based on his understanding at that time of the court's limitation of current discovery to core issues. Because that limitation is being expanded in this order, rulings as to these three interrogatories will also be made at this time.
The motions are granted as to Interrogatory No. 1, which expressly addresses patent validity. All objections are overruled, except any objection as to privilege and except the objection as to providing responsive information separately for each individual claim, as discussed below.
The current responses, as supplemented, do not answer the question and are incomplete and evasive. For example, although IBM's current response purports to refer to documents from which the answer may be derived, as permitted by Fed.R.Civ.P. 33(d), it is limited to "information regarding prior art affecting the validity of the Papst patents," a category of documents narrower than what was requested. Prior art may not be the only indication of patent validity. In addition, IBM's current response concedes on its face that it is incomplete when it states that the identified documents are only "some of which" provide the requested information. The current answers of the other parties are similarly incomplete. They "direct" Papst to certain documents, with no statement that the indicated documents are all the requested documents.
In addition, the answers to Interrogatory No. 1 do not identify the documents "[s]eparately for each claim of each patent at issue," as requested. However, it appears from the arguments of the parties that theclaims at issue have not yet been precisely identified and that, apparently, not every claim of the hundreds of claims in the two dozen or so relevant patents is now or will be at issue. Thus, the objection to this interrogatory is sustained in part. At the current time, it is sufficient for the responding parties to organize their interrogatory answers and identify the responsive documents separately for each patent at issue, rather than separately as to each claim of each patent at issue. This ruling applies to all other Papst interrogatories (e.g., Interrogatories No. 2 and 3) in which this separate claim identification request has been made.
As to this interrogatory and every other discovery request of any other party at issue in these motions, unless otherwise stated herein (for example, in connection with the discussion of Minebea's pre-MDL discovery requests in the District of Columbia case discussed below), the terms "patent(s) at issue," "patents in suit," or similar phrases mean each and every patent at issue in any of the consolidated actions included in this MDL proceeding, regardless whether the patents are at issue in all of the consolidated actions or only one or some of the actions.
The motion is also granted insofar as it addresses the listing of "all persons with knowledge." The current listing of names only is largely useless and does not respond to the question. The answer must be amended to provide each person's last known address and telephone number (either home or business where the person may be served with a subpoena, if necessary); job title and employer; and a brief description of the subject matter of his or her knowledge. This ruling applies to all other discovery requests (e.g., Papst Parties' Interrogatories No. 2 and 3) requesting such witness information.
The motion is granted as to Interrogatories No. 2, 7 and 8, which expressly address patent enforceability. All objections are overruled, except any objection as to privilege. The current responses, as supplemented, do not answer the questions and are incomplete and evasive. Although the current responses purport to refer to documents from which the answers may be derived, as permitted by Fed.R.Civ.P. 33(d), they are limited to "agreements between Papst (and others) that authorize or license third parties under any of the Asserted Patents," prosecution histories and certain pleadings in another case, all of which are categories of documents narrower than what was requested. The enumerated agreements, prosecution histories and pleadings from another case do not necessarily provide the only circumstances determinative of patent enforceability, including exhaustion or implied licensing. In addition, the current responses concede on their face that they are incomplete when some state that the identified documents are only "examples" of responsive agreements and others are only "some of which" provide the requested information. The responses must identify all responsive documents in the custody, possession or control of the responding party and its agents.
As discussed above, the motion is also granted insofar as it addresses the request in these interrogatories to identify "all persons with knowledge." For example, the current generic reference to "attorneys and agents" in IBM's answer to Interrogatory No. 2 and to "persons participating in the negotiation of agreements" in IBM's answer to Interrogatory No. 8 and the listing of four additional persons by names only are largely useless and do not respond to the question. These answers must be amended to provide the name of each person with knowledge and each person's address and telephone number (either home or business where the person may be served with a subpoena, if necessary); job title and employer; and a brief description of the subject matter of his or her knowledge.
The motion is granted as to Interrogatory No. 3, which expressly addresses prior art, an indicator of patent validity. All objections are overruled, except any objection as to privilege. The current responses, as supplemented, do not answer the question and are incomplete and evasive. Although the current responses purport to refer to documents from which the answer may be derived, as permitted by Fed.R.Civ.P. 33(d), the current responses concede on their faces that they are incomplete; for example, when IBM states that the identified documents are only "some of which" provide the requested information, and when Quantum, Maxtor and MKE "direct" Papst to certain documents without any indication that they are all the requested items. Minebea's current answer is similarly incomplete, evasive and confusing in its cross-reference to another interrogatory answer. The responding parties must provide clear and complete answers to this interrogatory.
Finally, the current answers are incomplete in that they provide no information in response to that part of the question that asks to "state with specificity how the prior art by itself and/or in connection with other prior art invalidates the claim." Although this part of the interrogatory was a previously foreclosed "contention" interrogatory, it must now be answered pursuant to the court's revised case management order.
The motion is denied as to Interrogatories No. 4, 5 and 13. Minebea's answers are sufficient and all objections to additional responses are sustained. While some of the information sought in response to these extremely broad interrogatories may be relevant or may lead to the discovery of admissible evidence, much that is responsive to these interrogatories is clearly irrelevant. In addition, to the extent that these extremely broad interrogatories may include requests for discoverable information, I find that such information is obtainable by other means and through other sources (including the more narrowly drawn other interrogatories that are the subject of this motion) in a manner that will be more convenient, less burdensome and less expensive than requiring responses to these interrogatories and that the burden and expense of the particular discovery sought in these three interrogatories outweigh its likely benefit. Fed.R.Civ.P. 26(b)(2)(i) and (iii).
The motion is granted as to Interrogatory No. 6 because the current responses, as supplemented, are incomplete. All objections are overruled, except as to privilege. It appears that the responding parties have limited their responses to this interrogatory to intrinsic claim interpretation evidence. While it is true that in interpreting the claims of a patent, the court should always consider intrinsic evidence first, it may also examine extrinsic evidence if the intrinsic evidence is insufficient to determine the meaning of a particular claim or if the claim is ambiguous. Markman v. Westview Instrs., Inc., 517 U.S. 370, 388-89 (1996); Netword, LLC v. Centraal Corp., 242 F.3d 1347, 1352 (Fed. Cir. 2001); Biovail Corp. Int'l v. Andrx Pharm., Inc., 239 F.3d 1297, 1300 (Fed. Cir. 2001); CAE Screenplates Inc. v. Hienrich Fiedler GmbH Co. KG, 224 F.3d 1308, 1318 (Fed. Cir. 2000). Thus, extrinsic evidence of claim interpretation is relevant under Fed.R.Civ.P. 26(b)(1). Claim interpretation documents of all kinds, whether intrinsic or extrinsic, are discoverable under the modified case management order included herein.
Although the current responses of IBM and Minebea purport to refer to documents from which the answer may be derived, as permitted by Fed.R.Civ.P. 33(d), they concede on their faces that they are incomplete, as when IBM states that the identified documents are only "prosecution histories, some of which" provide the requested information. Prosecution histories are not the only conceivable source of responsive documents. In addition, Minebea's cross-reference to another interrogatory answer seeking different kinds of information is confusing and therefore evasive. Maxtor, Quantum and MKE have provided no information responsive to this interrogatory. The parties must supplement their answers to provide all requested information or to clarify that they have already done so.
The motion is denied as to Interrogatory No. 9, which relates strictly to damages. The requested information goes beyond the scope of currently permissible discovery, even under the modified version of the case management order set out herein.
The motion is denied as to Interrogatories No. 10 and 11. In these interrogatories, the Papst Parties seek a broad range of information concerning the identification, design, operation, research, development history, manufacture, sales and/or purchase of the accused infringing products of IBM and the other parties. Among its many briefs and written submissions, Papst has explained that it requires this "HDD Group" information because
[t]he Non-Papst Parties infringe 26 Papst patents on hard disk drive related technology. . . . IBM, Maxtor, Quantum and MKE have sold a very large number of different models of hard disk drives over the past several years that each infringe one or more of these patents. One of the significant issues in these proceedings is the exact design and construction of each one of these very large numbers of different models so that it can be determined which of the patent claims of each of the 26 [Papst] patents cover each model.
Record Doc. No. 155 at p. 3 (Papst Parties' Memorandum in Support of Their Second Motion to Compel) (emphasis added).
In my view, this discovery relates primarily to the question of whether Papst patents are being infringed by specific products manufactured by the Non-Papst Parties. Infringement by specific products is one of only two issues that remains excluded from initial discovery at this time, even under the modified case management order set out herein. The intent of this expanded discovery order is to permit the gathering of information relevant to determining, by motion if possible, whether the Papst patents that are the subject of this litigation are valid and enforceable, before proceeding to additional discovery concerning infringement and damages, while also permitting the dissimilar claims between Minebea and Papst asserted in the District of Columbia case to progress toward resolution. Interrogatories No. 10 and 11 do not contribute to that goal.
Similarly, the motion is denied in substantial part as to Interrogatory No. 12, which seeks sales and/or purchase histories for each "HDD Group." For the most part, this interrogatory appears largely relevant to damages. However, Papst argues that this information also addresses the "commercial success" of the infringing products, which relates to patent validity and enforceability.
"Commercial access" is one of several secondary indicia of nonobviousness, used to rebut other factors that tend to establish obviousness. In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998);Gillette Co. v. S.C. Johnson Son, Inc., 919 F.2d 720, 723 (Fed. Cir. 1990). Evidence of commercial success is extrinsic evidence; that is, evidence outside of the language of the patent and its prosecution history, which are considered intrinsic evidence. As discussed above in connection with claim interpretation discovery, the court should always consider intrinsic evidence first when interpreting the claims of a patent, and should only examine extrinsic evidence if the intrinsic evidence is insufficient to determine the meaning of a particular claim or if the claim is ambiguous. Thus, secondary considerations are only relevant if a comparison of the claimed invention with the prior art reveals doubt concerning the invention's nonobviousness.
In this instance, the Papst Parties seek to compel evidence of the commercial success of the accused infringing products, not of its own patented inventions. Determining the scope of the claims depends on the specification in the patent, the prosecution history and the state of the prior art at the time of the invention, which are construed independently of the accused product. Union Oil Co. v. Atlantic Richfield Co., 208 F.3d 989, 995 (Fed. Cir. 2000), cert. denied, 112 S.Ct. 1167 (2001). Commercial success of the accused products is largely irrelevant to this inquiry.
Moreover, for the commercial success of the accused products to be relevant, the Papst Parties must first prove that the accused products contain the inventions claimed in the Papst Parties' patents. Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988); Sjolund v. Musland, 847 F.2d 1573, 1582 (Fed. Cir. 1988). This proof goes primarily to infringement, not validity, and is more appropriately left to a later phase of discovery.
The Non-Papst Parties have offered to produce the dollar amount and number of units sold for each accused device. This limitation is appropriate at this time, and the motion is granted in part to require production only of this limited information.
(B) MINEBEA PARTIES' MOTION TO COMPEL DISCOVERY
In this motion, the Minebea Parties seek additional discovery from the Papst Parties in response to requests propounded in the District of Columbia action prior to MDL centralization and in this court after MDL consolidation. Specifically, Minebea seeks additional responses to (1) Minebea's Second Set of Pre-MDL Interrogatories; (2) the Non-Papst Parties' First Set of MDL Interrogatories; (3) Minebea's Second Set of Designated Pre-MDL Document Requests; (4) Plaintiffs' Third Set of Document Requests to Defendants Papst Licensing, GmbH and Georg Papst; (5) Minebea's Pre-MDL Requests to Admit; and (6) Minebea's Pre-MDL Subpoenas to Non-Parties.
(1) Minebea's Second Set of Pre-MDL Interrogatories
This part of the motion addresses a single contention interrogatory. The prohibition against contention interrogatories has been lifted. However, the objections are sustained in part in that the interrogatory is overly broad, unduly burdensome and extends to information that is irrelevant and not reasonably calculated to lead to the discovery of admissible evidence when it asks for information concerning "each patent which Papst has ever asserted to be infringed," etc. On the other hand, the court cannot determine whether Papst's response, as supplemented, is sufficient or complies with Fed.R.Civ.P. 33(d). Accordingly, this part of the motion is granted in part as follows. The Papst Parties must provide a narrative answer to this interrogatory, without reference to documents (because the interrogatory does not request document identification), limited to identifying each patent which the Papst Parties assert in these consolidated MDL actions to be infringed by the manufacture, use or sale of a hard disk drive by any other party in these consolidated MDL actions. The motion is denied in all other respects. Specifically, the answer need not separately identify as to each such patent the allegedly infringing product, because discovery of that kind of information remains prohibited at this time, even under the modified case management order.
(2) The Non-Papst Parties' First Set of MDL Interrogatories
In this part of the motion Minebea complains that the objections and/or responses of the Papst Parties to all 39 interrogatories in this set are meritless and/or insufficient.
The motion is denied as to Interrogatory No. 1 and all objections are sustained. The current answer, as supplemented, is sufficient. While I agree that the 1995 agreement between Minebea and Papst is not the only relevant agreement between the parties for purposes of initial discovery, this interrogatory is objectionable. In requesting a description "in full and complete detail [of] all events leading to the execution" of the agreements described therein (emphasis added), Minebea has submitted an interrogatory so overly broad, vague and burdensome that all limitations of Fed.R.Civ.P. 26(b)(2) are violated.
The motion is denied as to Interrogatories No. 2, 3 and 4 because they relate primarily to alleged infringement of Papst products by specific products manufactured by the Non-Papst Parties, an issue that remains outside the scope of the modified case management order concerning permissible discovery at this time.
The motion is granted as to Interrogatories No. 5 and 14, and all objections are overruled, except as "to any privilege. The current answers are incomplete and unresponsive in that they fail to identify oral communications and preface their reference to written communications with "See, e.g.," indicating on the face of the answer that all responsive written communications have not been identified.
The motion is granted as to Interrogatories No. 6, 7, 8, 9, 11, 32, 33 and 34 and all objections are overruled, except as to any privilege. The current answers are incomplete and evasive. It is impossible for the court to determine from these answers if they comply with Fed.R.Civ.P. 33(d). In addition, the Papst Parties' use of the phrase "See, e.g.," indicates on the face of these answers that all responsive information isnot being provided. The Papst Parties must provide complete narrative answers to these interrogatories.
The motion is denied in substantial part as to Interrogatory No. 10. The current answer is sufficiently responsive, except that the motion is granted in part in that the Papst Parties must supplement their current responses (1) to provide any identifying number or other designation attached by the United States Patent and Trademark Office ("USPTO") to the identified pending patent applications and (2) to clarify that their answer addresses all patents at issue in this litigation.
The motion is granted as to Interrogatories No. 12 and 13 and all objections are overruled, except as to any privilege. The current answers appear incomplete and unresponsive. It is impossible for the court to determine whether Papst's responses as supplemented are sufficient or comply with Fed.R.Civ.P. 33(d) because the current answers do not provide the requested dates and concede on their faces that they are incomplete when they use "See, e.g.," in their references to the identified documents. Full and complete answers to these interrogatories must be provided.
The motion is denied as to Interrogatory No. 15. Fed.R.Civ.P. 26(b)(2)(i), (ii).
Although all objections to Interrogatory No. 16 are overruled, except as to any privilege, the motion is denied as to that interrogatory because the responsive information provided in that part of the answer which is not an objection is sufficient, subject to the ongoing obligations imposed by Fed.R.Civ.P. 26(e)(2) and (g)(2).
The motion is granted in part as to Interrogatories No. 17 and 18 in that the Papst Parties must identify all responsive documents or other tangible items. All objections are overruled, except as to any privilege and except as stated hereafter. In using the phrase "See, e.g." in identifying responsive documents, the current answer, as amended, concedes that it is incomplete. The motion is denied in part insofar as the interrogatory requests "events or things," terms so overly broad and vague in this context as to be incomprehensible.
The motion is granted in part as to Interrogatory No. 19 in that the Papst Parties must identify all responsive communications and documents. The current answer is incomplete in its reference only to documents, preceded by the ubiquitous "See, e.g.," indicating that oral communications have been excluded and not all responsive documents have been identified. The motion is denied in part insofar as the interrogatory seeks identification of "events," a term so overly broad and vague in this context as to be incomprehensible. All other objections are overruled, except as to any privilege.
The motion is denied as to Interrogatory No. 20. The current answer is sufficient. More detailed responsive information is more efficiently obtained by other means. Fed.R.Civ.P. 26(b)(i).
The motion is denied as to Interrogatory No. 21, which relates to a statutory limitation on damages, an issue precluded from discovery at this stage of the proceedings by the case management order, even as modified herein.
The motion is granted as to Interrogatory No. 22 and all objections are overruled, except as to any privilege.
The motion is denied as to Interrogatory No. 23. The term "events" is so overly broad and vague in this context as to make a response to this interrogatory impossible. Fed.R.Civ.P. 26(b)(2). The current response is sufficient.
The motion is granted as to Interrogatory No. 24 and all objections are overruled, except as to any privilege. The interrogatory seeks the identity of the "first buyer and seller" of the specified products. Use of the term "See e.g." in the current response renders the current answer incomplete. The Papst Parties must clarify their current answer to state whether all information responsive to this interrogatory can be derived from these documents, pursuant to Fed.R.Civ.P. 33(d), and if not, it must be provided.
The motion is granted in part as to Interrogatory No. 25 in that the last known employer, business title and home or business address of the persons identified in the current response, as supplemented, must also be provided. The motion is denied insofar as it seeks a full identification of all communications of the sort requested in the interrogatory and its accompanying "definitions and instructions." Requiring such a response would be unduly burdensome and violate Fed.R.Civ.P. 26(b)(2)(i) and (iii). Instead, it will be sufficient for the supplemental answer to describe generally the nature of such communications, the persons with whom such communications were conducted and the time frame within which they occurred. All other objections are overruled, except as to any privilege.
The motion is granted in limited part as to Interrogatory No. 26. The current answer is sufficient, except that it must also briefly summarize the "contribution" of each named inventor.
The motion is denied as to Interrogatory No. 27. The current answer, as supplemented, is sufficient, and all objections are sustained to the extent that the motion seeks further responsive information.
The motion is granted in part as to Interrogatory No. 28, in that the Papst Parties must identify all responsive documents and tangible items. The motion is denied in part insofar as the interrogatory seeks identification of "events," a term so overly broad and vague in this context as to be incomprehensible. All other objections are overruled, except as to any privilege.
The motion is granted in part as to Interrogatories No. 29, 30 and 31. All objections are overruled, except those asserting any privilege and those relating to the vague and overly broad term "events." Subject to these limitations, all responsive documents and tangible things must be identified, not just the illustrative list following the term "See, e.g." in the current response.
The motion is denied as to Interrogatory No. 35. I note the irony of the following circumstances: Minebea's submission of this interrogatory and Requests for Production No. 1-43 of its Third Set of Pre-MDL Document Requests to Papst; Papst's submission of its similar Interrogatory No. 4 to Minebea; each party's assertion of almost identical objections to the other party's almost identical discovery requests; followed by each party's motion to compel from the other materials and information which it objects to providing itself. In these discovery requests, Papst and Minebea seek virtually the same information about other litigation from each other, yet each side objects. This would seem to be a fertile area for consensus among the parties concerning the scope of discovery of litigation materials from other cases, yet none has been reached. For these reasons and some of the others discussed below in connection with Minebea's Third Set of Pre-MDL Document Requests, this part of the motion is denied. The parties are encouraged actually to engage in the good faith discussions aimed at compromise contemplated by Fed.R.Civ.P. 37(a)(2)(B) concerning their mutually ironic desire for, and abhorrence of, discovery concerning other litigation. Without an agreement between the parties, the court will not order this discovery.
The motion is denied as to Interrogatory No. 36. For the same reasons relating to the parties' "commercial success" argument discussed above in connection with the Papst Parties' Interrogatories No. 10-12, this interrogatory is overly broad and requests much that goes beyond issues about which initial discovery will be permitted at this time.
The motion is denied as to Interrogatory No. 37, which seeks information bearing on the "calculation" of royalty or other payments. While the occurrence of royalty or other payments may be relevant to initial discovery issues, their "calculation" appears relevant only to damages, an issue as to which discovery is prohibited at this time.
The motion is denied as to Interrogatory No. 38. The current response, as supplemented and incorporating the answer to Interrogatory No. 26, is sufficient.
The motion is denied as to Interrogatory No. 39 because the interrogatory is incomprehensible to the court as written.
(3) Minebea's Second Set of Designated Pre-MDL Document Requests
The parties have agreed to omit 27 of the 94 requests set forth in Minebea's Second Set of Designated Pre-MDL Document Requests. As to the remaining 67 requests, Minebea's motion to compel is granted in part and denied in part, as follows.
The "Definitions and Instructions" section of Minebea's Second Set of Pre-MDL Requests for Production attempts to define three categories of patents, which Minebea labels "Admitted Licensed Patents" (Paragraph "K"); "Allegedly Unlicensed Patents" (Paragraph "L"); and "Purported Drive Patents" (Paragraph "M"). The Minebea Parties apparently seek through this method to have Papst identify, in the context of each separate request addressed to one or more these categories, which patents the Papst Parties "admit" are licensed to Minebea, which patents they do not admit to be licensed to Minebea and which patents Papst contends to be unlicensed to Minebea under the June 1995 Settlement Agreement. These defined terms are used in more than 50 of the requests. The Papst Parties object to the terms as "vague and ambiguous and to the extent they call for a legal conclusion."
I find that the use of these terms. in the specific requests makes many of the requests vague, ambiguous, redundant and/or superfluous. Accordingly, these terms are stricken from the requests. Instead, the requests are limited to the patents at issue in the action in which the requests were made; i.e., Civil Action No. 99-3318. Although Papst argues that all of the patents included in Minebea's action are not common to the other actions, the definition of core discovery for initial discovery purposes has been modified and this discovery will be permitted to proceed.
Requests No. 1, 3, 4, 5, 13, 15, 16 and 17 all seek documents that Minebea claims are directed to establishing the extent of contacts between the United States and the Papst Parties. Papst has denied that Georg Papst and Papst Licensing are subject to personal jurisdiction in the United States. The defense of lack of personal jurisdiction makes a variety of factual circumstances relevant for discovery purposes, including but not limited to, for example, the place where a party's employees and agents work, the location of its bank accounts, where its contracts are delivered and performed, mailings, the place where it makes its purchases, sales and other activities systematically and continuously conducted. 4 C. Wright A. Miller, Federal Practice and Procedure § 1067 (West 1987). Lack of personal jurisdiction is a defense best addressed early in the prosecution of any lawsuit. Unless the Papst Parties waive their personal jurisdiction defense in a writing filed in this court's record within ten (10) days of entry of this order, this discovery should proceed now, and the Minebea Parties' motion to compel is granted as to these requests with the following modifications and subject to the conditions stated below.
Request No. 1 is limited to documents between the years 1990 and 2001, inclusive.
The motion is denied as to Requests No. 3 and 4 for the reasons given in connection with the court's denial of Interrogatory No. 35 of the Non-Papst Parties' First Set of MDL Interrogatories.
Request No. 5 is limited to assets owned by the Papst Parties. The term "controlled" is vague and ambiguous and no response is required in that regard.
Request No. 13 is vague, ambiguous, overly broad and unduly burdensome. "All documents that pertain to communications" will be modified to read "all written communications." Further, the categories of patents ("admitted," "alleged," "purported") are omitted and restricted as provided above and the response is limited to the time period 1990 through 2001. All privilege objections are expressly reserved.
Request No. 15 will be allowed, but limited to a time period of 1990 through 2001 and with the omission of the patent categories.
The motion is denied as to Request No. 16 and the Papst Parties' objections to this request are sustained. "Plans or goals" do not establish contacts.
The motion is granted as to Request No. 17, but limited to a time period of 1990 through 2001 and with the omission of the patent categories and the substitution concerning patents set out above.
Again, my order granting the foregoing requests concerning personal jurisdiction is subject to the following condition: If the Papst Parties waive their personal jurisdiction defense in writing as provided above,no additional responses to Requests No. 1, 3, 4, 5, 13, 15, 16 and 17 are required.
As to the remaining requests in Minebea's Second Set of Designated Pre-MDL Document Requests that are the subject of this motion, the motion is granted in part and denied in part as set out below. As to any of the following requests for which relief is granted, privilege objections of any kind are not overruled and are preserved.
The motion is granted in part as to Request No. 2, subject to the omission and restriction of the patent categories discussed above. Further, the request is vague and ambiguous as to patents "controlled by" Papst and will be limited to patents "owned by" Papst. The request is also limited to the time period of 1990 through 2001.
The motion is granted in part as to Request No. 7. This request is vague and overly broad. It is modified to address any license, covenant not to sue, release or non-assertion agreement entered into between Georg Papst or Papst Licensing and any individual or entity, relating to any patent at issue in this litigation. Although Papst has responded that, subject to its objections, Papst "will produce responsive documents relating to parties to this MDL proceeding concerning the patents at issue to the extent they exist, in conformity with Case Management Order No. 2 and its Amendment," Papst must amend its response to this request as modified herein to assure Minebea and this court that all responsive documents in Papst's custody, possession or control are produced.
The motion is denied as to Request No. 8. This request for documents pertaining to "any effort" to license patents is vague, ambiguous and overly broad. Papst's objections to this request are sustained.
The motion is granted in part as to Request No. 9. This request is limited to the patents at issue in this litigation, as ordered above. In addition, all pleadings, briefs or other submissions to any court asserting patent infringement need not be produced. If the requested assertion of patent infringement was made in a court proceeding, production of a single document asserting such a claim and bearing the name of the court and the case number will suffice. Further, Papst must amend its response to the request as modified to assure Minebea and this court that all responsive documents in Papst's possession, custody or control will be produced, subject to the limitations imposed herein.
The motion is granted in part as to Request No. 10. This request will be limited to patents at issue in this litigation and to the time period of 1990 through 2001. Further, Papst must amend its response to assure Minebea and this court that all responsive documents in Papst's possession, custody or control will be produced.
The motion is granted in part as to Requests No. 11(a) and 12 because the nature and scope of the business relationship between Papst and Minebea is a highly material issue in this litigation. However, the patent classifications will be omitted, and the time period is limited to 1990 through 2001. The subparagraphs in Requests No. 11(b), (c) and (d) are redundant because any documents pertaining, referring or relating to Minebea would include any documents pertaining, referring or relating to Minebea and concerning the patents, so that the motion is denied as to Requests No. 11(b), (c) and (d). Papst must amend its response in order to assure Minebea and this court that all responsive documents in Papst's possession, custody and control will be produced.
The motion is granted in part as to Request No. 14. However, this request is overly broad and will be limited to agreements or documents reflecting or referring to agreements concerning the patents at issue in this litigation.
The motion is granted as to Requests No. 18 and 19 and all objections to these requests are overruled, except as to any privilege. Full responses to these highly relevant requests must be provided.
The motion is granted in part as to Request No. 20, but only because the Papst Parties have responded to this request that, subject to their objections, they will produce "responsive documents." They should do so, but in all other respects the motion is denied. This request for "documents or things concerning the review or evaluation of products with respect to one or more claims" of patents appears defectively ambiguous. I cannot determine with any degree of certainty whether the request pertains to Papst's evaluation of products in connection with obtaining patents, or in connection with Papst's analysis of patents they believe are being infringed. To the extent these requests are directed to infringement claims of specific products, the request is not directed to permissible initial discovery as currently defined.
The motion is denied as to Requests No. 21, 22 and 23. These requests appear redundant to Request No. 20 in that the products made or sold by Minebea would be included in the general category of products referred to in Request No. 20. In any event, these requests appear to be directed to the issue of infringement of specific products and will not be allowed at this time.
The motion is granted as to Request No. 24 except that the categories of patents will be omitted as discussed above. The request will be limited to patents at issue in this litigation.
The motion is denied as to Request No. 25. This request for documents or things "relating to the uses" of hard disk drive spindle motors is vague and ambiguous. Papst's objections to this request are sustained.
The motion is denied as to Request No. 26. Minebea contends that "marking" is relevant to a determination of enforceability, but its argument in that regard is unpersuasive. In addition, it appears that this request is substantially similar to Interrogatory No. 21 of the Non-Papst Parties' First Set of MDL Interrogatories, absent the express reference to the damages limitation statute contained in Interrogatory No. 21. Under these circumstances, I conclude that this request relates primarily to damages and should be precluded at this time.
The motion is granted as to Request No. 27, limited to prior art in the possession, custody or control of Papst or its agents concerning patents at issue in this litigation. Papst must amend its response to assure Minebea and this court that all responsive documents in Papst's possession, custody or control are being produced.
The motion is granted as to Request No. 28, except that it is limited to the patents at issue in this litigation. All objections are overruled, except as to any privilege, and Papst must amend its response in order to assure Minebea and this court that all responsive documents in Papst's possession, custody or control are being produced.
The motion is granted as to Request No. 29, except that it is limited to the specific items referred to — inventor's notebooks and invention disclosures, and to patents at issue in this litigation, with the categories of patents omitted as discussed above. Papst must amend its response in order to assure Minebea and this court that all responsive documents in Papst's possession, custody or control will be produced.
The motion is denied as to Request No. 30. This request is vague and overly broad and does not appear to be reasonably calculated to lead to the discovery of admissible evidence. Minebea has not provided the court with a specific relevance basis for this request. Papst's objection to this request is sustained.
The motion is granted as to Requests No. 31, 32, 33 and 34, limited to patents at issue in this litigation.
The motion is denied as to Requests No. 35 and 37. These requests, as written, would require Papst Licensing to produce information about every employee, director and shareholder Papst Licensing has ever had, regardless whether they have knowledge of anything relevant to this lawsuit, and the complete minutes of every board or shareholder meeting, regardless whether they have anything to do with this lawsuit. The requests are overly broad and will not be enforced as written.
The motion is granted as to Request No. 38 and all objections are overruled, except as to any privilege.
The motion is granted in part as to Requests No. 39, 40, 41 and 42. These requests will be limited to the design, marketing, manufacture and sale of hard disk drive spindle motors incorporating any of the patents at issue in this litigation. Papst responded to these requests that, subject to the objections, responsive documents would be produced. Papst must now amend its responses in order to assure Minebea and this court that all responsive documents in the possession, custody or control of Papst and its agents will be produced.
The motion is denied as to Request No. 43. This request is directed to profits earned on the sale of hard disk drive spindle motors. Minebea has not provided a specific reason why this request should be included in the initial discovery that is being permitted at this time. In my view, this request goes far beyond the limited need at this time for information relevant to the issue of commercial success as an indication of nonobviousness. Rather, it appears primarily directed to the issue of damages. The Papst Parties' objection to this request is sustained.
The motion is denied as to Request No. 44. This request concerns the formation of Papst Licensing. Minebea did not provide a specific reason why these documents should be produced, other than that they are related to "core issues," and I cannot discern why this request for documents concerning the formation of or the decision to form Papst Licensing is calculated to lead to the discovery of admissible evidence. Papst's objection to this request is sustained.
For similar reasons, the motion is denied as to Requests No. 45 and 46. These requests are directed to employment and other types of agreements between Papst and the patent inventors. The objections to these requests are sustained.
The motion is granted in part as to Requests No. 47 and 48, except that they are limited to documents reflecting (as opposed to "concerning") the characterization of any patents at issue in this litigation as "disk drive patents," "drive patents," "motor patents," "hard disk drive spindle motor patents," or "HDD motor patents." The term "or the like" is stricken as vague.
The motion is granted as to Request No. 49. All objections, except as to any privilege, are overruled.
The motion is granted in part as to Requests No. 50, 51 and 52. As to both subsections (a) and (b), the phrase "concerning or comprising" is modified to read "comprising or consisting of." Further, subsection (b) is limited to patents at issue in this litigation, and not "allegedly unlicensed" or "purported" patents. Papst must amend its response to assure Minebea and this court that all responsive documents in the possession, custody or control of Papst and its agents will be produced.
The motion is granted in part as to Request No. 54. This request is modified to omit "other documents relating to unexecuted license agreements." Further, the request is limited to spindle motor technology. "Related technologies" is vague and overly broad.
The motion is granted in part as to Request No. 56. This request is vague and overly broad, as written. It is hereby limited to all documents setting out or describing any policies, programs or procedures for licensing Papst patents. Papst must amend its response to assure Minebea Parties that all responsive documents in the possession, custody or control of Papst and its agents have been produced.
The motion is denied as to Request No. 65. Minebea has failed to provide a reason why this request is relevant or reasonably calculated to lead to the discovery of admissible evidence, and I can discern none. Accordingly, the Papst Parties' objection to these requests is sustained.
The motion is granted as to Request No. 73 and all objections are overruled, except as to any privilege.
The motion is denied as to Request Nos. 77, 78, and 79. These requests appear to be directed solely to the issue of damages. Minebea has not offered any specific reason why these requests are calculated to lead to the discovery of admissible evidence pertaining to initial discovery. Accordingly, this discovery will not be permitted at this time.
The motion is denied as to Request Nos. 81 and 82. These requests are directed to industry reports and other reports prepared internally or by consultants. Papst has objected to these requests as overly broad, unduly burdensome and not reasonably calculated to lead to the discovery of admissible evidence. However, subject to these objections, Papst responds that it will produce responsive documents concerning the patents at issue. I am unable to determine why these reports are relevant or otherwise discoverable. Nevertheless, since Papst has chosen to produce "responsive documents concerning the documents at issue," its should do so, but no further relief will be ordered at this time.
The motion is granted as to Request Nos. 85, 86 and 87. These requests, which are directed to documents relating to the financial structuring of the Sale of Intangible Assets Agreement, and the scope and intent of the contractual relationship between the parties, could reasonably lead to discoverable evidence concerning the scope of the patent rights sold or licensed to Minebea, among other relevant things. All objections are overruled, except as to any privilege.
The motion is denied as to Request Nos. 90 and 91. These requests are overly broad and vague in scope. They also appear to be cumulative and duplicative of other discovery requests that have been permitted. Fed.R.Civ.P. 26(b)(2)(i).
The motion is granted in limited part as to Request No. 94. The request is overly broad to the extent it requests documents "referring or relating to" the organizational structure of the Papst entities. The request appropriately asks for organizational charts and Papst has responded that it has no charts for Papst Licensing. Because Papst does not address whether it has organizational charts for any other Papst entity, Papst must amend its response in order to assure Minebea and this court that all responsive documents in the possession, custody or control of the Papst Parties and their agents have been produced.
(4) Plaintiffs' Third Set of Document Requests to Defendants. Papst Licensing GmbH and Georg Papst
The motion is denied in its entirety as to Minebea's Third Set of Designated Pre-MDL Document Requests for the following reasons.
These requests for production are objectionable on several grounds. First, 43 of the 44 requests seek documents and things related to "the defined subject matter," a term which Minebea has unilaterally defined in a single, run-on sentence covering more than a full page and including a non-exclusive ("without limitation") listing of 24 separate types of information. Minebea's definition is so complex, broad and burdensome on its face as to defy either a rational response by parties receiving these requests or an evaluation by this court. For example, the definition includes all things "relating to . . . `PMDM,'" a term further defined to include two business entities in which Minebea itself was apparently involved, and their predecessors; "background information" regarding four Papst persons and entities; and "the relationship" between and among various parties.
Fed.R.Civ.P. 34(b) requires that requests for production "shall set forth, either by individual item or by category, the items to be inspected and describe each with reasonable particularity."
Particularity of designation, however, like so many other things in life and law, is a matter of degree, dependent upon a pragmatic consideration of the circumstances in each case. Necessarily the test must be a relative one, turning on the degree of knowledge that a movant in a particular case has about the documents it requests. . . .
Even a generalized designation should be sufficient when the party seeking discovery cannot give a more particular description and the party from whom discovery is sought will have no difficulty in understanding what is wanted. . . .
The goal is that the designation be sufficient to apprise a person of ordinary intelligence what documents are required and that the court be able to ascertain whether the requested documents have been produced.
C. Wright, A. Miller and R. Marcus, Federal Practice and Procedure § 2211 at 412-15 (West 1994). I am a United States Magistrate Judge of ordinary intelligence. The construction of these requests, contaminated by Minebea's unwieldy definition of "the defined subject matter," is such that I am unable to require further responses to them.
Second, although these MDL cases, viewed in combination, are certainly cases in which the stakes, amount in controversy and resources of the parties are substantial, the limitations imposed on discovery by Fed.R.Civ.P. 26(b)(2) cannot be ignored. Minebea's Third Set of Designated Pre-MDL Document Requests is broad and burdensome by any standard. Beyond the magnitude and breadth of Minebea's definition of "the defined subject matter" addressed above, Requests No. 1-43 seek all manner of litigation materials in 18 other separate lawsuits, pending at one time or another in courts around the United States and in the International Trade Commission. The requested materials include disclosures pursuant to Fed.R.Civ.P. 26(a); all items "related to the defined subject matter" served in those litigations; all responses to discovery requests; all privilege logs; all affidavits and declarations of the Papst Parties; all transcripts of depositions, court testimony and hearings; and all briefs, memoranda of law, motions and exhibits.
Like Papst in connection with its Interrogatory No. 4, which doubles as a request for production under the court's case management order, Minebea has not explained how the materials generated in these other lawsuits are relevant or reasonably calculated to lead to the discovery of information in these MDL cases. Moreover, if the manner in which the parties have filed materials in this MDL proceeding is any indication of their conduct in the 18 other proceedings identified in these requests, all or most of the requested materials are probably available to Minebea by inspection of the public records or purchase of the requested transcripts from court reporters or official custodians of these items. If Minebea wants these tangentially relevant materials (as Papst also appears to want similar materials from Minebea in response to its Interrogatory No. 4), it should shoulder the burden itself of first determining whether they are available in the public records and obtaining them through its own efforts on its own nickel. Fed.R.Civ.P. 26(b)(2)(i), (iii).
Finally, Request No. 44 seeks "[a]ll agreements ordered to be produced by Papst Licensing and/or Georg Papst in the Papst Licensing v. Fujitsu Action." This request appears to be duplicative and cumulative of the other requests for production that have been permitted in this case. Fed.R.Civ.P. 26(b)(2)(i).
In the remainder of this order, the parties are being assigned a large-scale discovery effort that will require substantial investments of time and effort for all parties who must respond to discovery. There is no reason to add to that burden by requiring responses to Minebea's Third Set of Requests. I find that doing so would violate Fed.R.Civ.P. 26(b)(2).
(5) Minebea's Pre-MDL Requests to Admit
Prior to MDL centralization, Minebea propounded 421 Requests to Admit to the Papst Parties. Pursuant to an agreement of the parties, the Papst Parties responded only to the first 280 requests. Minebea's Exh. 19. The Papst Parties contend that Minebea "withdrew" the remaining requests, while Minebea argues that the Papst Parties' obligation to respond to the remaining requests was merely deferred pursuant to an order of the district court for the District of Columbia, where the action was pending at the time. Minebea does not present the court with any order to support its argument.
The Requests for Admissions submitted by Minebea in the District of Columbia action were excessive. This court's Amendment to Case Management Order No. 2 permits the Non-Papst Parties to file no more than 25 Requests for Admissions each. Record Doc. No. 124, ¶ 5. Minebea's motion to compel the Papst Parties to respond to its Requests to Admit Nos. 281-421 is denied. Fed.R.Civ.P. 26(b)(2).
(6) Minebea's Pre-MDL Subpoenas to Non-Parties
In September 1999, Minebea issued subpoenas through the District of Columbia court to the Papst Parties' patent prosecution and licensing counsel, attorney Richard Smith and the law firm of Finnegan, Henderson, Farabow, Garrett Dunner, both located in Washington, D.C., for depositions and document production in that city. Minebea Exh. 20. Minebea now seeks to compel the Papst Parties to comply with the document production portion of the subpoenas on the basis that the Papst Parties have constructive control over the documents maintained in their counsel's files. The Papst Parties argue that the District of Columbia court, not this court, is the proper court to enforce subpoenas issued by that court for discovery in that district, Fed.R.Civ.P. 37(a)(1), and to rule on the written objections that were served by the non-parties in response to the subpoenas. Papst Parties Exh. I; Fed.R.Civ.P. 45(c)(2)(B) (production can be compelled only by "an order of the court by which the subpoena was issued").
In its reply memorandum, Minebea responds that 28 U.S.C. § 1407(b) empowers the MDL transferee court to enforce pre-MDL subpoenas issued by another district court. Section 1407(b) provides that the "judge or judges to whom such actions are assigned . . . may exercise the powers of a district judge in any district for the purpose of conducting pretrial depositions in such coordinated or consolidated pretrial proceedings." (Emphasis added). The Fifth Circuit has held that
a transfer under section 1407 transfers the action lock, stock, and barrel. The transferee district court has the power and the obligation to modify or rescind any orders in effect in the transferred case which it concludes are incorrect. In addition, when the [Judicial Panel on Multidistrict Litigation] orders a case transferred, the transferor district court is deprived of jurisdiction until the case is returned to it.Astarte Shipping Co. v. Allied Steel Export Serv., 767 F.2d 86, 87 (5th Cir. 1985).
This court therefore has the power to enforce the subpoena issued by the District of Columbia court. In doing so, this court would "invoke its powers under § 1407(b) to sit as a District of Columbia district judge." In re Corrugated Container Antitrust Litig., 647 F.2d 460, 461 (5th Cir. 1981).
In light of these authorities, it is clear that 28 U.S.C. § 1407(b) gives this court the authority to rule, as transferee judge, on the motion to compel compliance with the subpoena issued in the District of Connecticut. This conclusion is not only consistent with the cases, it is consistent with the purpose of § 1407, which is to create an expedited procedure for the handling of multidistrict litigation.In re Factor VIII or XI Concentrate Blood Prods. Litig., 174 F.R.D. 412, 415 (N.D. Ill. 1997) (citing In re Corrugated Container Anti-Trust Litig., 620 F.2d 1086, 1089-91 (5th Cir. 1980); In re Sunrise Secs. Litig., 130 F.R.D. 560 (E.D. Pa. 1989); In re San Juan Dupont Plaza Hotel Fire Litig., 117 F.R.D. 30 (D.P.R. 1987)).
Thus, Minebea's motion to enforce the subpoenas issued to non-parties Smith and Finnegan, Henderson is denied and the subpoenas are quashed. Subpoenas duces tecum to non-parties are discovery. Rice v. United States, 164 F.R.D. 556, 557 (N.D. Okla. 1995). Thus, they are subject to the same standards as other discovery devices concerning scope and limitations on discovery established in Fed.R.Civ.P. 26(b)(1) and (2). 9A C. Wright A. Miller, Federal Practice and Procedure § 2452 (West 1995).
The subject subpoenas were directed to counsel for the Papst Parties. The predominant view of the case law appears to be that a client's documents are deemed to be in the possession, custody or control of the client for purposes of Fed.R.Civ.P. 34 when the client's attorneys have possession of them. Axler v. Scientific Ecology Group, Inc., 196 F.R.D. 210, 212 (D. Mass. 2000); Gossard v. ADIA Servs., Inc., No. 91C2047, 1992 WL 198424, at *2 (N.D. Ill. Aug. 11, 1992); Gray v. Faulkner, 148 F.R.D. 220, 223 (N.D. Ind. 1992); Zitin v. Turley, No. 89-2061-PHX-CAM, 1991 WL 283814, at *5 (D. Ariz. June 20, 1991). Thus, the Papst Parties' discoverable documents in the possession of counsel for the Papst Parties must be produced in response to requests for production to the Papst Parties themselves. Minebea's subpoena duces tecum to counsel for the Papst Parties is therefore cumulative and duplicative and seeks information more conveniently and efficiently sought from the Papst Parties themselves. Minebea has other options available, which it has amply exercised, to seek documents directly from the Papst Parties. This discovery by subpoena duces tecum to counsel is prohibited under Fed.R.Civ.P. 26(b)(2)(i). Concomitantly, all parties are directed to produce upon request to them all non-privileged responsive documents or other items in possession of their counsel.
(C) PRIVILEGE LOGS
Part of the parties' discovery dispute is their disagreement over the scope and content of the privilege logs they are required to submit to their opponents pursuant to Fed.R.Civ.P. 26(b)(5), which provides:
When a party withholds information otherwise discoverable under these rules by claiming that it is privileged or subject to protection as trial preparation material, the party shall make the claim expressly and shall describe the nature of the documents, communications, or things not produced or disclosed in a manner that, without revealing information itself privileged or protected will enable other parties to assess the applicability of the privilege or protection. (Emphasis added.)
The court rejects the argument of the Papst Parties that a log of the type they have submitted listing withheld documents by broad category should be sufficient in this case. On more than one occasion, the United States Court of Appeals for the Fifth Circuit has stated that privileges "must be specifically asserted with respect to particular documents,"United States v. El Paso Co., 682 F.2d 530, 539 (5th Cir. 1982), and noted "the unacceptability of blanket assertions of the attorney-client privilege. . . . Such assertions disable the court and the adversary party from testing the merits of the claim of privilege." Id. at 541 (citingUnited States v. Davis, 636 F.2d 1028, 1044 n. 20 (5th Cir. 1981)).
The log submitted by the Papst Parties does not enable other parties or the court to assess the applicability of claimed privileges. A privilege log of the type proposed by Papst will only make more difficult the task of the court and discovering parties of assessing the propriety of the assertion of particular privilege claims in the future of this proceeding. While the court is free to relieve the parties of what can be a burdensome and time-consuming task required by Rule 26(b)(5), it has provided the parties with ample opportunity to reach agreement on a stipulation that would lighten this load. Like almost everything else related to discovery in this case, however, the parties have failed to do so. The court is unable to concoct a means of lessening this burden on the parties when their own counsel, more knowledgeable than the court of the burdens and practicalities involved, have been unable to do so. Accordingly,
IT IS ORDERED that all documents withheld from production in discovery on grounds of any privilege must be logged separately and individually, in the manner described by Professor Rice in P. Rice, Attorney-Client Privilege in the United States § 11.8 (Lawyers Coop. 1993). While the task of logging all withheld documents separately and individually is substantial, it is consistent with the manner in which the parties have conducted discovery to date and is no more substantial than the task all parties have assigned themselves in all other respects by submitting voluminous discovery requests. Accordingly, all documents withheld on grounds of any privilege must be individually and separately logged and described, without exception and regardless of the date of their generation, unless counsel reach a written stipulation, filed in the record of these proceedings, in which they jointly agree to some more limited method of preparing and submitting privilege logs.
In his letter to the court dated April 27, 2001, counsel for Minebea submitted a proposed stipulation for limiting the parties' burden in connection with preparing and exchanging privilege logs. In my view, the proposal contained several useful suggestions and several other unworkable features. The response of counsel for the Papst Parties was not useful in advancing the discussions toward compromise. Reasonable persons making a good faith attempt to reach an agreement as to the Rule 26(b)(5) requirement in this case might have agreed upon some of the limiting provisions in the proposed stipulation (such as the exclusion of communications between counsel of record and their clients and work product prepared by counsel of record related solely to commencement, pursuit or defense of the consolidated MDL actions, and communications defined by Case Management Order No. 1, Paragraph VIII), even if they could not agree upon them all.
(D) MINEBEA'S MOTION TO COMPEL RETURN OF PRIVILEGED DOCUMENTS
In February 2001, Minebea responded to Papst's discovery requests by producing approximately 300,000 pages of documents, contained in 128 boxes. On March 21, 2001, Papst filed a motion entitled, "Papst Licensing's Motion for Leave to File Supplemental Memorandum Regarding Newly Discovered Evidence in Support of Papst's Motion for Summary Judgment on Fraud Counts." Papst attached to its memorandum in support of that motion two documents (Exhibits "A" and "D") that Minebea had produced the month before. Minebea contends that these documents are privileged and were inadvertently produced. On the same day that Minebea's attorney received a copy of Papst's motion, he forwarded by fax a letter to Papst's attorney, requesting that the allegedly privileged documents be returned in accordance with the Protective Order issued in this court on June 7, 2000. To date, Papst has refused to return the documents.
numbers were provided in Minebea's Memorandum in Support of its Motion to Compel Return of Privileged Documents, filed on April 18, 2001, Record Doc. No. 174. I accept these numbers as accurate because Papst has not disputed them in its memorandum.
Minebea states in its memorandum, at p. 2, that one of the documents is attached to Papst's motion as Exhibit "B," but a review of the exhibits makes it clear that the document is attached as Exhibit "A." Exhibit "B" is a chart prepared by Minebea.
In this motion, Minebea contends that it is entitled to return of the documents under the language of the Protective Order. Papst argues that the documents are not privileged because Minebea waived any privilege that might have existed by: (1) bringing this suit; (2) pleading fraud, reliance and reasonable reliance; (3) offering into evidence the declaration of its in-house counsel on the issue of reliance; and (4) arguing to the District of Columbia court prior to MDL transfer that Minebea relied on an attorney who was not a "registered patent attorney," when in fact Minebea relied on an experienced patent attorney to help draft the 1995 Settlement Agreement. Extensive oral argument was conducted concerning this motion on July 6, 2001.
(1) The Documents
Minebea seeks the return of a letter from attorney Joel Lutzker to Takuya Naka of Minebea, dated July 10, 1991, and Bates-stamped number M050503. The body of the letter consists of two sentences:
We are returning herewith the original Papst Joint Venture Files which your office had sent to us. We have made complete copies of these files in the event that we require them in the future.
Minebea also seeks return of a 17-page "document" Bates-stamped numbers M073705 through M073721. These pages are not, in fact, one document. They consist of the following five documents translated from Japanese into English by a translator retained by Minebea: (a) M073705-06. June 17, 1993 internal memorandum to N. Yoshimura, Manager of Precision Motor Division, from M. Sato; (b) M073707-14. August 5, 1992 internal memorandum to N. Yoshimura from T. Kurasawa; (c) M073715-16 June 18, 1993 internal memorandum to M. Sato from N. Yoshimura; (d) M073717-18. October 13, 1992 internal memorandum to R. Mizukami and N. Yoshimura, directors, from T. Naka; and (e) M073719-21. July 16, 1992 internal memorandum to R. Mizukami from N. Yoshimura.
Minebea contends that M073705 through M073721 are part of a single translation of Japanese documents and are protected under the work product privilege. Minebea also contends that M073717-73721 (Mr. Yoshimura's October 13 and July 16, 1992 memoranda), M050503 (the 1991 Lutzker letter), and the second paragraph of M073715 (the June 18, 1993 letter) are protected by the attorney-client privilege.
In addition to the documents attached to Papst's motion, Minebea requests the return of an additional 27 documents which it contends are privileged, but which Papst has not yet used in these proceedings. These documents have been submitted to the court for in camera review, and have not been identified for Papst by Bates-stamped numbers or otherwise. Minebea claims that they, too, are subject to the attorney-client and/or work product protection and should be returned.
(2) The Work Product Doctrine
Minebea contends that many of the inadvertently produced documents are privileged because they represent communications translated from Japanese into English in anticipation of litigation. The Declaration of Leonard S. Sorgi, an attorney for Minebea, states that the translations were prepared "specifically at the request of Minebea's in-house counsel for the use of Minebea's outside counsel in order to assist in the instant litigation." Further, Mr. Sorgi states that the translation is not certified, `but rather a rough' translation meant to give outside counsel a basic idea of the contents of the documents."
Record Doc. No. 173, Exhibit B, Declaration of Leonard Sorgi, paragraph 30 (submitted to the court for in camera review).
Id.
Rule 26(b)(3) of the Federal Rules of Civil Procedure provides that documents prepared in anticipation of litigation may be discovered "only upon showing that the party seeking discovery has substantial need of the materials in the preparation of the party's case and that the party is unable without undue hardship to obtain the substantial equivalent of the materials by other means."
The few reported cases which have addressed this issue have held that translated documents are discoverable, even where the translations are merely summaries or selected portions of the original foreign language documents. While it is possible for Papst "to translate the documents, this could not be done without considerable expense, inconvenience, and delay." Howes v. Medical Components, Inc., 698 F. Supp. 574, 581 n. 4 (E.D. Pa. 1988); see also In re Air Crash Disaster Near Warsaw, Poland on May 9. 1987, No. MDL 787, 1996 WL 684434, at *2 (E.D.N.Y. Nov. 19, 1996).
I find that Papst has substantial need of the documents, particularly in light of the use Minebea has made of the declaration of its in-house counsel, Douglas L. Hymas, and that Papst cannot obtain the substantial equivalent of the documents without undue hardship that would arise if Papst were required to obtain translations of the original Japanese documents. Therefore, Minebea's motion is denied as to these documents.
(3) The Attorney-Client Privilege
Minebea also claims that three documents and part of a fourth are subject to the attorney-client privilege. However, Papst contends that Minebea has waived the privilege as to these documents. If Minebea has waived this privilege, both their alleged inadvertent production and any possible application of the protective order are irrelevant. Accordingly, I will first evaluate whether the attorney-client privilege has been waived.
Count II of Minebea's Second Amended Complaint alleges that Papst engaged in fraudulent representations and concealment in its negotiations with Minebea. Papst's pending motion for summary judgment is directed to these fraud allegations.
In response to the motion for summary judgment, Minebea filed the declaration of its Associate General Counsel, Douglas L. Hymas. Mr. Hymas states in his declaration that he worked as the only assistant to Mr. Naka, General Counsel of Minebea. He declares that he graduated from law school in 1990, did not receive any training in patent law and is not a registered patent lawyer. While much of Mr. Hymas's declaration does not set out information that is even arguably privileged, principally because it reveals communications between himself and others who are not his client or between Papst and Minebea representatives, some parts do reveal confidential communications between lawyer and client for purposes of giving or receiving legal advice. Specifically, he describes in detail several statements made to him by Mr. Mizukami, Managing Director of Minebea. These include:
Mr. Hymas's declaration has been attached to Papst's Memorandum, Record Doc. No. 178, as Exhibit "B."
Mr. Mizukami told me that I could rely on Papst to properly identify on that appendix the so-called drive patents that were unrelated to Minebea's business. (Paragraph 9);
Mr. Mizukami . . . cautioned me to further curtail my activities in order to achieve a smooth resolution of any outstanding issues. (Paragraph 10);
I raised the issue [with Mr. Mizukami] of reviewing the patents and estimated that the time and cost requirement of an independent review were prohibitive, whereupon Mr. Mizukami instructed me not to conduct any independent analysis of these patents. (Paragraph 11).
Among other things, Papst argues that by submitting Mr. Hymas's testimony revealing attorney-client communications, Minebea has waived its privilege as to any communications directed to the issue of its reliance on Papst's alleged representations.
(4) Choice of Law
Papst cites cases from various jurisdictions on the issues relevant to waiver of attorney-client privilege, but does not suggest in its briefs to the court what law should apply. Minebea states in a footnote that "[a]ll parties agree that New York law controls Minebea's fraud claims." However, this agreement does not make New York's privilege laws applicable to this evidentiary issue.
Record Doc. No. 201, Minebea's Reply Memorandum, p. 9, n. 12.
Federal law governs the analysis of the attorney-client privilege at issue. Under Federal Rule of Evidence 501, privilege questions are generally governed by common law unless otherwise required by federal law. Thus, privilege questions are governed by the federal courts' interpretation of federal common law, except when state law supplies the rule of decision, in which case state law on privilege governs. Fed.R.Evid. 501; United States v. Moore, 970 F.2d 48, 49-50 (5th Cir. 1992);Hancock v. Hobbs, 967 F.2d 462, 466 (11th Cir. 1992); Robertson v. Neuromed, Ctr., 169 F.R.D. 80, 81-82 (M.D. La. 1996); Soriano v. Treasure Chest Casino, Inc., No. 95-3945, 1996 WL 736962, at *2 (E.D. La. Dec. 23, 1996).
Minebea's action is brought under the Federal Declaratory Judgments Act and the Lanham Act. Minebea asserts supplemental jurisdiction over its common law claims under 28 U.S.C. § 1367(a) and 28 U.S.C. § 1338(b). Federal law provides the rule of decision on Minebea's federal claims, while state law provides the rule of decision on its state law claims. "Rule 501 makes it clear that state privilege law will apply in diversity cases, and that federal privilege law will apply in federal question cases. However, in federal question cases where pendent state law claims have been asserted, the rule is equivocal." In re Combustion, Inc., 161 F.R.D. 51, 53 (W.D.La. 1995) (Tynes, M.J.), aff'd, 161 F.R.D. 54 (W.D. La. 1995) (Haik, J.) (citing Hancock v. Hobbs, 967 F.2d at 466; Hancock v. Dodson, 958 F.2d 1367 (6th Cir. 1992); American Civil Liberties Union of Miss., Inc. v. Finch, 638 F.2d 1336, 1343 (5th Cir. Unit A March 1981)).
"[T]he weight of authority among courts that have confronted this issue in the context of discovery is that the federal law of privilege governs even where the evidence sought might be relevant to pendent state law claims." Robertson, 169 F.R.D. at 82-83 (citing Hancock, 967 F.2d at 466; von Bulow by Auersperg v. von Bulow, 811 F.2d 136, 141 (2d Cir. 1987); Wm. T. Thompson Co. v. General Nutrition Corp., 671 F.2d 100, 104 (3d Cir. 1982); Memorial Hosp. v. Shadur, 664 F.2d 1058, 1061 n. 3 (7th Cir. 1981); In re Combustion, Inc., 161 F.R.D. at 54; Pagano v. Oroville Hosp., 145 F.R.D. 683, 687 (E.D.Cal. 1993), overruled in part on other grounds by Jaffee v. Redmond, 518 U.S. 1, 8 (1996)).
For the reasons stated in the cases cited above, I conclude "that the federal law of privilege provides the rule of decision with respect to privilege issues affecting the discovery of evidence in this federal question case involving pendent state law claims." In re Combustion, Inc., 161 F.R.D. at 53.
(5) The Parameters of the Attorney-Client Privilege Under Federal Common Law
Federal courts have looked to various sources to define the federal common law of attorney-client privilege. Some courts rely on the time-honored Wigmore formulation.
The elements of the attorney-client privilege are as follows: (1) Where legal advice of any kind is sought (2) from a professional legal adviser in his capacity as such, (3) the communications relating to that purpose, (4) made in confidence (5) by the client, (6) are at his instance permanently protected (7) from disclosure by himself or by the legal adviser, (8) unless the protection is waived.Reed v. Baxter, 133 F.3d 351, 355-56 (6th Cir. 1998) (citations omitted); accord United States v. Massachusetts Inst. of Tech., 129 F.3d 681, 684 (1st Cir. 1997) (quoting 8 J. Wigmore, Evidence § 2292, at 554 (McNaughton rev. 1961)). Relying in part on the Wigmore formulation, Judge Alvin B. Rubin stated: "The oldest of the privileges for confidential communications, the attorney-client privilege protects communications made in confidence by a client to his lawyer for the purpose of obtaining legal advice. The privilege also protects communications from the lawyer to his client, at least if they would tend to disclose the client's confidential communications." Hodges, Grant Kaufmann v. United States, 768 F.2d 719, 720-21 (5th Cir. 1985).
In addition, proposed Federal Rule of Evidence 503
provides a useful starting place for our discussion. Although not enacted by Congress, courts have relied upon [proposed Federal Rule of Evidence 503, also known as Supreme Court Standard 503] as an accurate definition of the federal common law of attorney-client privilege. . . . Consequently, despite the failure of Congress to enact a detailed article on privileges, Standard 503 should be referred to by the Courts. The most relevant aspect of Standard 503 is its statement of the general rule:
A client has a privilege to refuse to disclose and to prevent any other person from disclosing confidential communications made for the purpose of facilitating the rendition of professional legal services to the client, (1) between himself or his representative and his lawyer or his lawyer's representative, or (2) between his lawyer and his lawyer's representative, or (3) by him or his lawyer to a lawyer representing another in a matter of common interest, or (4) between representatives of the client or between the client and a representative of the client, or (5) between lawyers representing the client.In re Bieter Co., 16 F.3d 929, 935 (8th Cir. 1994) (quoting Supreme Court Standard 503(b); additional citations and quotations omitted).
The court "may also look to state privilege law . . . if it is enlightening." Tennenbaum v. Deloitte Touche, 77 F.3d 337, 340 (9th Cir. 1996) (citing Lewis v. United States, 517 F.2d 236, 237 (9th Cir. 1975) ("In determining the federal law of privilege in a federal question case, absent a controlling statute, a federal court may consider state privilege law. But the rule ultimately adopted, whatever its substance, is not state law but federal common law.")).
"`[D]isclosure of any significant portion of a confidential communication waives the privilege as to the whole.'" Nguyen v. Excel Corp., 197 F.3d 200, 207 (5th Cir. 1999) (quoting Industrial Clearinghouse, Inc. v. Browning Mfg., 953 F.2d 1004, 1007 (5th Cir. 1992)); accord United States v. Davis, 636 F.2d 1028, 1043 n. 18 (5th Cir. 1981) (citing United States v. Cote, 456 F.2d 142, 144-145 (8th Cir. 1972)); 8 J. Wigmore, Evidence § 2327. "Patently, a voluntary disclosure of information which is inconsistent with the confidential nature of the attorney[-]client relationship waives the privilege."Alldread v. City of Grenada, 988 F.2d 1425, 1434 (5th Cir. 1993). "Waiver of the privilege in an attorney-client communication extends to all other communications relating to the same subject matter." In re Grand Jury Subpoena (Zerendow), 925 F. Supp. 849, 855 (D. Mass. 1995) (citing In re Sealed Case, 877 F.2d 976, 980-81 (D.C. Cir. 1989)) (emphasis added)).
I find that Minebea revealed privileged attorney-client communications when its Associate General Counsel, Mr. Hymas, included in his declaration the statements quoted above made to him by Minebea's representative, Mr. Mizukami. Read in the context of the full declaration, all three of the specific statements from Mr. Hymas's declaration quoted above were communications between lawyer and client, outside the presence of any third party, for purposes of giving or obtaining legal advice relating to the extent to which Minebea (a) could rely upon the representations of Papst concerning the identity of the patents with which they were dealing and (b) should conduct its own review of the patents. The revealed communications are directly related to the subject matter of Minebea's assertions that (a) it trusted and relied on Papst for identification of drive patents unnecessary to Minebea's business and (b) Minebea's counsel was involved in only a limited capacity. Mr. Hymas's disclosure was not inadvertent. It was intentionally included in a sworn declaration, the planned purpose of which was to defeat a motion for summary judgment. Therefore, Minebea has waived its attorney-client privilege concerning communications between it and its attorneys relating to the same subject matter.
(6) Scope of Waiver
The "waiver by implication" doctrine appears applicable to these circumstances. That doctrine provides that the disclosure of otherwise privileged communications can "in some circumstances . . . waive the privilege not only with respect to the disclosed documents but also as to all other communications made about the same subject between the attorney and the client." Palazzetti Import/Export, Inc. v. Morson, No. 98 CIV 0722, 2000 WL 1015921, at *4 (S.D.N.Y. July 21, 2000) (quoting In re Leslie Fay Cos. Secs. Litig., 161 F.R.D. 274, 282 (S.D.N.Y. 1995)).
Waiver by implication is determined by the standard of fairness. If the disclosure of privileged communications "may be misleading because only favorable material has been disclosed, waiver is likely to be found for so much of the withheld information as will make the disclosure complete and not misleadingly one-sided." Koster v. Chase Manhattan Bank, No. 81 Civ. 5018, 1984 WL 883, at *4 (S.D.N.Y. Sept. 18, 1984).
In Palazzetti, the court found that defendants had produced to plaintiff's counsel two memoranda from one of the defendants to his attorney. Defendants claimed that production of the documents was inadvertent, but their attorney allowed a defendant to answer questions concerning the documents at a deposition. The court concluded that the defendants had waived their attorney-client privilege as to these memoranda, then turned to the scope of the waiver. The court held that the defendants would be required to disclose all documents or portions of documents "necessary to ensure that the disclosure of the Waiver Documents . . . [was] not misleading." Palazzetti, 2000 WL 1015921, at *4
In Glenmede Trust Co. v. Thompson, 56 F.3d 476 (3rd Cir. 1995), the Thompson parties alleged fraud, breach of contract and negligence in connection with a transaction involving certain trusts. Glenmede raised as an affirmative defense that it was advised by counsel that it was legally precluded by Internal Revenue Service rules from doing what the Thompson parties alleged Glenmede should have done. Glenmede conceded that by placing at issue its reliance on advice of counsel, it waived the attorney-client privilege as to the subject matter at issue. However, Glenmede argued that it had waived its privilege only as to the tax advice and other advice set forth in the opinion letter which it produced, and objected to production of its attorney's entire file concerning services it received in connection with the transaction at issue. The court ordered production of the file.
There is an inherent risk in permitting the party asserting a defense of its reliance on advice of counsel to define the parameters of the waiver of the attorney-client privilege as to that advice. That party should not be permitted to define selectively the subject matter of the advice of counsel on which it relied in order to limit the scope of the waiver of the attorney-client privilege and therefore the scope of discovery. To do so would undermine the very purpose behind the exception to the attorney-client privilege at issue here — fairness.Id. at 486; see also In re Sealed Case, 877 F.2d 976, 981 (D.C. Cir. 1989) ("[A] waiver of the privilege in an attorney-client communication extends to `all other communications relating to the same subject matter.'") (quoting In re Sealed Case, 676 F.2d 793, 809 (D.C. Cir. 1982)).
The statements made in Mr. Hymas's declaration relate to the subject matter of whether Minebea reasonably relied on alleged representations made by Papst. Minebea was not required to waive the attorney-client privilege, but affirmatively chose to do so by using privileged communications in opposition to a motion for summary judgment as purported evidence that Minebea relied reasonably, and solely, on Papst, rather than on its own attorneys.
(7) Application to the Four Documents
Minebea claims that four documents are subject to the attorney-client privilege.
The earliest document (M050503) is a letter from Joel Lutzker, Minebea's U.S. patent attorney, to Mr. Naka, General Counsel for Minebea in Japan. The letter, which is dated July 10, 1991, states in full:
We are returning herewith the original Papst Joint Venture Files which your office had sent to us. We have made complete copies of these files in the event that we require them in the future.
Assuming that this letter constitutes a confidential communication subject to the attorney-client privilege, I find that the privilege has been waived as to this document, since it is relevant to Minebea's claim that it relied on Papst's representations with only the limited assistance of counsel.
The second document (M073719-21) is a three-page fax dated July 16, 1992 from one director of Minebea to another, with a copy to Mr. Naka, Minebea's general counsel. This document is not a traditional attorney-client communication from counsel to client. Minebea, however, characterizes the communication as one transmitting advice or information received from counsel. Minebea argues that the conveyance of privileged information from a corporate officer disclosing legal counsel's advice is protected by the privilege. Assuming that the document contains communications protected by the attorney-client privilege, Minebea has waived that privilege as to this document. Mr. Yoshimura's discussion and questions in the memorandum concerning the characterization of various patents and the implications of pending litigation are relevant to what Minebea knew or believed three years before the 1995 Settlement Agreement, which bears directly on the issue of whether Minebea relied, reasonably or otherwise, on Papst's representations leading up to the Settlement Agreement.
Record Doc. No. 174, Minebea's Memorandum in Support of Motion to Compel Return of Privileged Documents, at p. 10.
The third document (M073717-18) is an October 13, 1992 memorandum from Mr. Naka, Minebea's general counsel, to Minebea directors, Messrs. Mizukami and Yoshimura. Although the memorandum is clearly the kind of confidential communication intended to be protected by the attorney-client privilege, Minebea has waived that privilege as to this document which states, in pertinent part, "I still think that our judgment should not be based on the opinion of Papst's attorneys."
The fourth document (M073715) is a one-page memorandum from Mr. Yoshimura, director, to Mr. Sato. Minebea claims that the second paragraph of the three-paragraph document is subject to the attorney-client privilege. Once again, assuming that a communication from director to director can be construed as an attorney-client communication, the privilege has been waived, for the paragraph is directly relevant to the issue of reliance:
We agree with you to appoint a person to be in charge of your patent administration. I think it appropriate for you to choose a right person from among your engineers who understand English as well as motor. (I have already discussed this matter with Mr. Naka.)
(8) Withdrawal of Document That Waived the Privilege
Minebea contends, as an alternative argument, that if it waived its attorney-client privilege by submitting Mr. Hymas's declaration, it has the right to withdraw those portions of the declaration which result in the waiver. As support for this position, Minebea cites several Louisiana cases applying Louisiana law. However, federal common law, not Louisiana law, applies to this issue. I note that one of the cases cited by Minebea, Newpark Env. Sen's., L.L.C. v. Admiral Ins. Co., No. 99-331, 2000 WL 136006 (E.D. La. Feb. 3, 2000), was a decision issued by me. The facts of that case are clearly distinguishable. The issue in Newpark was whether a party waives the attorney-client privilege when he pleads a claim or defense in such a way that he will be forced to draw upon a privileged communication at trial in order to prevail. I found that the plaintiff in that case had waived its privilege. Id. at *3-4. Here, it is unnecessary to address the issue of waiver by pleading alone because Minebea waived its privilege not merely by pleading a claim or defense but by the affirmative, voluntary act of submitting Mr. Hymas's declaration as evidence in opposition to a summary judgment motion, thereby revealing communications between him and his client.
Minebea waived its privilege on the issue of reliance by submitting Mr. Hymas's declaration in response to Papst's motion for summary judgment. Despite Minebea's protests to the contrary, Papst did not by its actions mandate the disclosure of confidential communications. Minebea chose to meet Papst's defense to the fraud claims by affirmatively disclosing attorney-client communications, thus waiving the attorney-client privilege.
For these reasons, I find that Minebea has waived any attorney-client privilege that may have existed in connection with the four documents. Minebea's motion to compel the return of these documents on the basis of privilege is denied because they are no longer privileged.
(9) The 27 Unidentified Documents
Minebea has not provided Papst with the production numbers of these documents, nor has Minebea provided Papst with privilege log information concerning these documents, such as dates, authors, recipients or general subject matter of the documents. However, the documents have been submitted to the court for in camera review, together with the declaration of Leonard Sorgi, one of Minebea's attorneys, and a chart describing each document and setting forth the privilege claimed and the basis for the privilege.
I have reviewed the documents and make the following findings:
MO24537 and 069050. These documents are identical copies of the same letter transmitting documents. The letter contains no confidential communications between attorney and client for the purpose of giving or obtaining legal advice. Minebea's motion to compel return of these documents is denied.
MO34452. This February 18, 1997 memorandum from Minebea's in-house counsel to outside counsel and Minebea representatives contains confidential communications pertaining to litigation discovery issues. The attorney-client privilege as to this document has not been waived by the submission of Mr. Hymas's declaration because the communications in the memorandum do not pertain to the issue of reliance or reasonable reliance.
Papst has argued in connection with the documents it seeks to attach to its supplemental memorandum in support of summary judgment that Minebea's attorney-client privilege has been waived not only by the submission of Mr. Hymas's declaration, but also by: (1) bringing this suit; (2) pleading fraud, reliance, and reasonable reliance; and (3) arguing to the District of Columbia court prior to MDL transfer to this court that Minebea relied on an attorney who was not a "registered patent attorney," when Minebea actually relied on an experienced patent attorney, Joel Lutzker, to help draft the. 1995 Settlement Agreement. Each of these arguments, even if correct, would result in a waiver of the attorney-client privilege solely on the issue of reliance. Therefore, if the Hymas declaration does not result in waiver of the privilege in connection with M034452, then neither do the facts on which Papst bases its other arguments. Minebea's motion to compel return of this document is granted.
To state a claim for common law fraud under New York law, plaintiff must allege justifiable reliance upon the misrepresentation.Bridgestone/Firestone Inc. v. Recovery Credit Serys., Inc., 98 F.3d 13, 19 (2d Cir. 1996); Rich v. Maidstone Fin., Inc., No. 98 CIV 2569 (DAB), 2001 WL 286757, at *11 (S.D.N.Y. Mar. 23, 2001).
M034453-034455. This February 3, 1997 memorandum from Minebea's outside counsel to in-house counsel contains confidential communications pertaining to litigation discovery issues. The attorney-client privilege as to this document has not been waived, for the same reasons provided in connection with M034452. Minebea's motion to compel return of this document is granted.
M034917-18, M053714, M057149-50, M069630, M069644, M073702, M209052-209082 and M0274904. All of these documents are in Japanese and no translation has been provided to me. As the party invoking the privilege, Minebea bears the burden of proving that the documents are privileged, Hodges, Grant Kauflnann, 768 F.2d at 721, but its characterization of these documents as privileged is unsupported. Accordingly, the motion to compel return of these documents is denied.
M035581-M035601. This 1991 document has one handwritten note on M-035583 that Minebea contends should be redacted because it is a note written by an attorney pertaining to strategy. However, the note is written next to a "daily record of events" that is almost exclusively in Japanese. Minebea has not provided the court with a translation of the relevant entries, and I am unable to determine the context of the handwritten note. Minebea has failed to sustain its burden of demonstrating that the note is privileged, and its motion to compel return of this document in order to redact it is denied.
M050572-73 and M0163939-40. There are handwritten notes in Japanese on these letters. I have not been provided with a translation of the notes. Since Minebea's characterization of these notes as privileged is unsupported, the motion to compel return or redaction of these documents is denied.
M073422. This letter transmitting documents does not contain privileged communications. The motion to compel return of this document is denied.
M182054. This memorandum from outside counsel to inside counsel contains confidential information between attorney and client, but the privilege as to the issue discussed in the letter has been waived. The motion to compel return of this document is denied.
M0164690-164709. This document is a published opinion copied from Lexis. There are no handwritten notes on the copy. No privilege applies to this document, and the motion to compel its return is denied.
M048453, M026590, M050145, M168013, and M208683. Three of these documents are identical copies of the same memorandum, and two of these documents are identical copies of the memorandum with a postscript added. These documents contain confidential communications that are privileged on a matter that has not been waived, for the reasons provided in connection with M034452 and M034453-55. The motion to compel return of these documents is granted.
M162955, M165067 and M0185434-439. These three letters contain confidential communications that are privileged on matters that have not been waived, for the reasons provided in connection with M034452, M034453-55, M048453, M026590, M050145, M168013, and M208683. The motion to compel return of these documents is granted.
M67272. This handwritten note has nothing that would indicate who wrote it or what it means. Minebea contends it is a note based on advice of counsel associated with privileged document 67251-67270. This document has not been provided to me. Because Minebea has not sustained its burden of proof as to its characterization of this handwritten note as privileged, the motion to compel return of this document is denied.
(E) PAPST'S MOTION FOR LEAVE TO FILE SUPPLEMENTAL MEMORANDUM REGARDING NEWLY DISCOVERED EVIDENCE IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT ON FRAUD COUNTS
Minebea has waived its attorney-client privilege as to the documents which Papst has moved to use to supplement its summary judgment. Because these documents were not provided to Papst until more than two years after the summary judgment motion was initially filed, and Papst has promptly requested an opportunity to use these documents, Papst's motion is granted.
(F) MINEBEA'S MOTION TO DEFER BRIEFING AND HEARING ON PAPST'S MOTION FOR SUMMARY JUDGMENT ON MINEBEA'S FRAUD COUNTS
Minebea argues that briefing and hearing on the Papst motion for summary judgment should be deferred until a ruling has been made concerning the documents which Minebea claims were inadvertently produced and subject to the attorney-client and/or work product privileges. This ruling has been made.
Minebea also argues that the motion should be deferred until after the completion of non-core discovery because the fraud issues are non-core. Although Minebea's characterization of the fraud issues as non-core was correct under the prior case management orders, this is no longer the case. As stated in an earlier section of this opinion, I find that discovery should now proceed concerning the interpretation, validity and scope of the 1995 Settlement Agreement. Minebea's allegations of fraud are inextricably related to those issues.
Papst's motion to supplement its motion for summary judgment has been granted. If Judge Sear concurs, a deadline by which Minebea must file its opposition to the motion will be set as provided below.
III. CONCLUSION
In preparing interrogatory answers, all parties are instructed to comply with Fed.R.Civ.P. 33(b)(1) and (2) requiring that they be verified. In preparing documents for production, counsel are instructed that the court contemplates no change to the previously issued case management orders concerning the manner in which document production is to be logistically conducted.
As to those inadvertently produced privileged documents which this order directs must be returned to Minebea, the documents must be returned within ten (10) days of entry of this order. In all other respects, because this order contemplates an expansion of the scope of initial discovery to be permitted under the court's case management orders, no deadlines will be set at this time for submission of the supplemental interrogatory answers, written responses to requests for production, privilege logs and document production ordered herein. Instead, deadlines will be established in consultation with Judge Sear and lead counsel, after whatever review of this order might be requested pursuant to 28 U.S.C. § 636(b)(1)(A), Fed.R.Civ.P. 72(a) and Local Rule 74.1E, taking into consideration any estimates to be provided by counsel as to the reasonable amount of time required to complete this work. Until new dates and deadlines are established by further order of this court, all parties are prohibited from submitting or scheduling additional discovery of any kind. However, all parties should also begin immediately to gather materials and information that are subject to this order, so that production of discovery ordered herein may occur as expeditiously as possible upon entry of the new scheduling order.