Opinion
No. 01 C 6181
June 3, 2003
MEMORANDUM OPINION AND ORDER
This case is before the Court on plaintiffs objection to Magistrate Judge Bobrick's November 13, 2002 order which denied plaintiffs motion to compel production of patent documents pursuant to Fed.R.Civ.P. 37(a). For the following reasons, plaintiffs objection is denied.
BACKGROUND
Plaintiff filed a motion to compel production of patent documents pursuant to Fed.R.Civ.P. 37(a) seeking to compel defendant to produce documents related to studies of the validity of the `820 patent that had been performed by defendant's patent attorney, Fred Lockwood, in April and July 1998. Plaintiff based his motion on the doctrine of implied waiver and the crime/fraud exception to the attorney-client privilege. Magistrate Judge Bobrick rejected plaintiffs arguments and denied the motion.
Plaintiff has filed an objection to Magistrate Judge Bobrick's order. In his objection, plaintiff relies on the doctrine of implied waiver of the attorney-client privilege and on the contention that the legal opinions of defendant's patent counsel, Fred Lockwood, constitute business advice and are not entitled to the protection of the attorney-client privilege.
DISCUSSION
Magistrate Judge Bobrick's order is reviewed by this Court under the "clearly erroneous" or "contrary to law" standard. Fed.R.Civ.P. 72(a); 28 U.S.C. § 636 (b)(1)(A). The Seventh Circuit has explained the standard as follows:
The district court's view of any discovery-related decisions made by the magistrate judge is governed by Rule 72(a) of the Federal Rules of Civil Procedure, which provides: "The district court to whom the case is assigned shall consider such objections and shall modify or set aside any portion of the magistrate judge's order found to be clearly erroneous or contrary to law.'
Fed.R.Civ.P. 72(a); see also 28 U.S.C. § 636 (b)(1). The clear error standard means that the district court can overturn the magistrate judge's ruling only if the district court is left with the definite and firm conviction that a mistake has been made. (Citations omitted).
In this case, whether plaintiff engaged in inequitable conduct before the U.S. Patent Trademark Office ("PTO") depends on the truth and materiality of the representations which plaintiff and his attorney made to the PTO during the prosecution of the `820 patent. Defendant's assertion that plaintiff committed intentional fraud on defendant by submitting bogus drawings to defendant in lieu of the drawings which he actually filed with the PTO does not waive, expressly or impliedly, defendant's attorney-client privilege with respect to the legal opinions prepared by defendant's patent counsel.
For implied waiver to occur, "a party must affirmatively try to use the privileged communication to defend itself or attack its opponent." Trustmark Ins. Co. v. General Cologne, 2000 WL 189858 (N.D. Ill. Dec. 20, 2000). In this case, as Magistrate Judge Bobrick noted:
There is no implied waiver of the attorney-client privilege in this case because the communications will not find their way into the litigation. The defendant Adjustable does not at all represent that it is going to use the communications between it and his lawyer in these proceedings in any way, shape or form to substantiate its affirmative defenses.
For these reasons, we find that the Magistrate Judge was correct in his finding that the defendant has not impliedly waived its attorney-client privilege.
Moreover, there is no evidence to suggest that attorney Lockwood's advice was business advice rather than legal advice. Lockwood's opinions are protected by the attorney-client privilege. They provide legal advice based on his review and study of a legal document in response to defendant's request for that legal advice. Plaintiff has offered no evidence to the contrary. While it is true that solely personal or business advice is not protected by the attorney client privilege, legal advice relating to business matters clearly is. As the Court stated in Weeks v. Samsung Heavy Industries, Ltd., 1996 WL 288511 at *2 (N.D. Ill. May 30, 1996):
The case law is clear that the attorney-client privilege is not vitiated simply because the attorney has weighed business considerations in rendering legal advice. Courts have utilized the following test to distinguish legal from nonlegal advice: [A] matter committed to a professional legal adviser is prima facie so committed for the sake of legal advice . . . and is therefore within the privilege unless it appears to be lacking in aspects requiring legal advice.
For these reasons, we find that Magistrate Judge Bobrick's ruling rejecting plaintiffs "business advice" argument is correct.
CONCLUSION
For the foregoing reasons, we deny plaintiffs objection to Magistrate Judge Bobrick's November 13, 2002 order which denied plaintiffs motion to compel production of patent documents.