Opinion
Case No. 4:06CV01191-ERW.
July 9, 2007
MEMORANDUM AND ORDER
This matter comes before the Court on Defendant's Motion to Compel Production of Documents [doc. #63].
I. BACKGROUND
Plaintiff filed suit against Defendants for patent infringement on August 9, 2006. In accordance with the Case Management Order entered on January 26, 2007, the parties are currently pursuing discovery. Defendants requested the production of documents. Plaintiff responded to this request by producing a number of documents as well as providing a privilege log as the basis for failing to produce a number of additional documents. Plaintiff has supplemented its privilege log on a number of occasions, each time producing additional documents to the Defendants. Despite these supplements, Defendants still assert that the privilege log is inadequate and that the documents listed are discoverable. The Court held a hearing on this matter on May 16, 2007, and ordered that the documents in question be produced to the Court for in camera review.
II. STANDARD OF REVIEW
The Federal Rules of Civil Procedure allow a party to "obtain discovery regarding any matter, not privileged, that is relevant to the claim or defense of any party. . . ." Fed.R.Civ.P. 26(1). The Federal Rules further provide for the protection of trial preparation materials;
a party may obtain discovery of documents and tangible things otherwise discoverable under subdivision (b)(1) of this rule and prepared in anticipation of litigation or for trial by or for another party or by or for that other party's representative . . . only upon a 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.
Fed.R.Civ.P. 26(b)(3). These rules allow for the protection of materials under two distinct sets of rules, the first protects communications between an attorney and his client, the second protects information or material assembled in anticipation of litigation. Diversified Industries, Inc. v. Meredith, 572 F.2d 596, 601 (8th Cir. 1977).
When a party withholds documents or materials under a claim of privilege, the rules place the burden on the party asserting the privilege to prove its applicability. Fed.R.Civ.P. 26(b)(5); United States v. Evans, 113 F.3d 1457, 1461 (7th Cir. 1997) ("The party seeking to invoke the privilege bears the burden of proving all of its essential elements."); see also 8 CHARLES ALAN WRIGHT, ARTHUR R. MILLER RICHARD L. MARCUS, FEDERAL PRACTICE AND PROCEDURE, Civil 2d § 2016.1 (2d ed. 1994) ("As a starting point, it is clear that ultimately a party asserting privilege must make a showing to justify withholding materials if that is challenged."). Specifically, the Federal Rules require that
[w]hen 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.
The Eighth Circuit provides a concise definition of Attorney-client privilege: "where legal advice of any kind is sought from a professional legal advisor in his capacity as such, the communications relevant to that purpose, made in confidence by the client, are at his instance permanently protected from disclosure by himself or by the legal advisor except the protection be waived." Diversified, 572 F.3d at 602. The Eighth Circuit further cautions that due to the absolute nature of the privilege, and its adverse effect on the disclosure of truth, the privilege is strictly construed. Id. The Eighth Circuit also provides a definition of the work prodcut doctrine, as protecting those materials "obtained in anticipation of litigation or for trial." Id. at 603. The Eighth Circuit recognizes that "the qualified immunity or privilege accorded to work product by the rule is to some extent broader than the absolute attorney-client privilege that has been discussed[,]" as it "is not confined to information or materials gathered or assembled by a lawyer." Id.
III. DISCUSSION
The Court has reviewed the Documents and the following order lists which documents must be produced, which documents are protected by privilege, and which documents require further explanation by Plaintiff. Due to the large number of documents, the Court will list each document number, as listed in Plaintiff's Fourth Amended Privileged Document Log, the asserted privilege, and whether such document must be disclosed. In reaching its decisions the Court is mindful that the burden is on the Plaintiff to show that the privilege is applicable, and therefore where the Plaintiff has failed to provide sufficient explanation of its claim of privilege, the documents are ordered produced, unless additional evidence is provided to the Court's satisfaction. Priv. Privilege Date Document Court's Ruling Doc. No. Asserted Type Priv. Privilege Date Document Court's Ruling Doc. No. Asserted Type Priv. Privilege Date Document Court's Ruling Doc. No. Asserted Type
0001 Attorney-Client/ 09/08/1988 Lab Notebook Privileged (Attorney-Client) Work Product 0002 Attorney-Client/ 10/20/1988 Lab Notebook Privileged (Attorney-Client) Work Product 0003 Attorney-Client/ 9/21/1988 Lab Notebook Pages 1-4 not privileged- Work Product Produce. Page 5 not privileged- produce. However, the Plaintiff may provide additional information regarding who page five was prepared for, who signed "read and understood" so the Court can determine whether it is privileged. 0005 Attorney-Client/ 10/17/1997 Correspondence Privileged (Attorney-Client) Work Product 0011 Attorney-Client 02/14/1995 Correspondence Privileged 0013 Attorney-Client None Presentation Not Privileged-Produce The Court can find no evidence of an attorney who was involved in producing this presentation. Therefore, the information must be produced. 0021 Attorney-Client 11/05/1998 Form Privileged 0022 Attorney-Client 11/06/1998 Form Privileged 0034 Attorney-Client 11/30/1998 Form Privileged 0035 Attorney-Client 1999 Publication Privileged 0037 Attorney-Client 09/27/1999 Form Privileged 0039 Attorney-Client/ 01/25/1983 Lab Notebook Privileged (Attorney-Client) Work Product 0040 Attorney-Client/ 05/30/1989 Lab Notebook Privileged (Work Product) Work Product 0041 Attorney-Client/ 02/28/1989 Lab Notebook Privileged (Work Product) Work Product 0042 Attorney-Client 06/11/1997 Correspondence Privileged 0044 Attorney-Client 09/01/1999 Correspondence Privileged 0045 Attorney-Client 08/11/1999 E-mail w/ Privileged attachment 0046 Attorney-Client 06/18/1999 Correspondence Privileged 0047 Attorney-Client 04/21/1997 Correspondence Privileged 0055 Attorney-Client 12/01/1995 Correspondence Privileged 0056 Attorney-Client 05/26/1994 Correspondence Privileged 0059 Attorney-Client 05/04/1995 Correspondence Privileged 0060 Attorney-Client 05/26/1994 Correspondence Privileged 0061 Attorney-Client 04/06/1995 Correspondence Privileged 0062 Attorney-Client 05/26/1994 Correspondence Privileged 0065 Attorney-Client 10/12/1994 Correspondence Privileged 0066 Attorney-Client 05/26/1994 Correspondence Privileged 0068 Attorney-Client 07/20/1994 Correspondence Privileged 0069 Attorney-Client 08/28/1996 Correspondence Privileged 0070 Attorney-Client 09/16/2002 Correspondence Privileged 0072 Attorney-Client 02/03/2000 Correspondence Privileged 0076 Attorney-Client 09/15/1999 Correspondence Privileged 0077 Attorney-Client 09/01/1999 Correspondence Privileged 0078 Attorney-Client 04/21/1997 Correspondence Privileged 0082 Attorney-Client 12/17/1998 Correspondence Privileged 0085 Attorney-Client 08/21/1998 Correspondence Privileged 0094 Attorney-Client 02/19/1998 Correspondence Privileged 0095 Attorney-Client 11/09/1989 Report Not Privileged-Produce 0096 Attorney-Client 02/1990 Report Not Privileged-Produce 0097 Attorney-Client 09/05/1990 Report Not Privileged- Produce 0098 Attorney-Client 07/1990- Report Not Privileged-Produce 09/1990 The redacted portions in documents 0095-0098 contain information regarding the prosecution of certain patent applications, which Plaintiff asserts is protected by the attorney-client privilege. Plaintiff is correct that an attorney's advice regarding a patent application is protected by the privilege. Ryobi North America, Inc. v. Union Elec. Co., Inc., 7 F.Supp.2d 1019, 1021-22 (E.D. Mo. 1998) ("[I]nventors and their patent counsel often engage in quite substantive private dialogue as part of the process of shaping and focusing a patent application and like any other attorney-client relationship it is reasonable for them to expect their dialogue to remain confidential."). However, Plaintiff has failed to show how the redacted portions reflect legal advice in this case, and have failed to identify how the redacted portions represent dialogue between an attorney and his client. Plaintiff emphasizes that the documents were located in Monsanto/Dekalb's legal files, however, this alone is not sufficient to apply the attorney-client privilege. The case relied upon by Plaintiff allows for the application of attorney-client privilege without a named author or recipient when the document reflected legal advice, communicated to the party by outside counsel's law firm. Tulip computers Intern, B. V. v. Dell Computer Corp., 2002 WL 31556498, *1 (D.Del. Nov. 18, 2002). The documents before this Court do not contain clear legal advice, but merely reference a patent application. Nor is there evidence that the documents were prepared by outside counsel's firm. Therefore documents 0095-0098 must be produced, unless Plaintiff can provide further information satisfactorily establishing privilege. Priv. Privilege Date Document Court's Ruling Doc. No. Asserted Type Priv. Privilege Date Document Court's Ruling Doc. No. Asserted Type Priv. Privilege Date Document Court's Ruling Doc. No. Asserted Type Priv. Privilege Date Document Court's Ruling Doc. No. Asserted Type Priv. Privilege Date Document Court's Ruling Doc. No. Asserted Type Priv. Privilege Date Document Court's Ruling Doc. No. Asserted Type Priv. Privilege Date Document Court's Ruling Doc. No. Asserted Type Priv. Privilege Date Document Court's Ruling Doc. No. Asserted Type 0099 Attorney-Client 07/1990- Report Privileged 09/1990 0100 Attorney-Client 10/03/1990 Report Privileged 0101 Attorney-Client 01/07/1991 Report Privileged 0103 Attorney-Client/ 2/13/2002- E-mails Privileged Work Product 03/07/2002 0104 Attorney-Client/ 02/19/2002 E-Mail Privileged Work Product 0105 Attorney-Client 09/20/1989 Correspondence Not privileged-Produce. There is no evidence that the communication pertains to legal advice, and furthermore the author is not listed as an employee of Plaintiff corporation. 0106 Attorney-Client 09/18/1989 Correspondence Not privileged-Produce. There is no evidence that the communication pertains to legal advice, and furthermore the recipient is not listed as an employee of Plaintiff corporation. 0108 Attorney-Client 11/20/1986 Memorandum Privileged with attachment 0109 Attorney-Client 12/31/1985 Form with Privileged attachment 0110 Attorney-Client 12/31/1985 Correspondence Privileged 0111 Attorney-Client 11/20/1984 Form Privileged 0112 Attorney-Client 09/29/1986 File History Privileged 0114 Attorney-Client 01/09/1988 Correspondence Privileged 0117 Attorney-Client 05/12/1988 File History Privileged 0128 Attorney-Client 11/09/1989 Report Not Privileged-Produce 0129 Attorney-Client 01/02/1990 Report Not Privileged-Produce 0130 Attorney-Client 02/1990 Report Privileged 0132 Attorney-Client 05/11/1990 Correspondence Not Privileged-Produce. The party asserting the privilege has the burden of proving its applicability. Plaintiff asserts that the redacted portion is advice from outside counsel Warren Woessner, however, this is not evidenced in the document and therefore Plaintiff has failed to meet their burden. Plaintiff must either provide the Court with further evidence in support of Woessner's involvement, or produce the document. 0134 Attorney-Client 10/03/1990 Report Privileged 0135 Attorney-Client 11/05/1990 Correspondence Privileged with attached reports 0136 Attorney-Client 02/15/1991 Correspondence Privileged with attached reports 0137 Attorney-Client 11/17/1989 Correspondence Privileged with attached reports 0143 Attorney-Client/ No Date File Folder Privileged (Attorney-Client) Work Product Cover 0144 Attorney-Client 12/31/1985 Form with Privileged attachment 0145 Attorney-Client 11/20/1984 Form Privileged 0146 Attorney-Client 12/31/1985 Correspondence Privileged with attachment 0147 Attorney-Client 12/31/1985 Correspondence Privileged with attachment 0148 Attorney-Client 12/31/1985 Form with Privileged attachment 0149 Attorney-Client/ 2/13/2002- E-mail chain Privileged Work Product 02/19/2002 0150 Attorney-Client 11/20/1984 Form Privileged 0151 Attorney-Client/ 2/15/2002- E-mail chain Privileged Work Product 3/07/2002 0152 Attorney-Client/ 2/13/2002- E-mail chain Privileged Work Product 2/19/2002 0153 Attorney-Client 04/18/1989 Form with Privileged attachments 0156 Attorney-Client No Date Draft Patent Not Privileged-Produce. Drawings There is no evidence that this document was produced for or by attorney Dennis Hoerner, and no attorney is listed by Plaintiff as creating or receiving the document. Unless Plaintiff can provide further evidence regarding how this document is protected by the Attorney- Client privilege, it must be produced. 0157 Attorney-Client 03/05/1991 Report Privileged 0158 Attorney-Client 04/29/1991 Correspondence Privileged with attached reports 0159 Attorney-Client 04/29/1991 Correspondence This appears to be a duplicate with attached of No. 0158. Plaintiff shall reports explain why duplicates are submitted. 0160 Attorney-Client 06/02/1991 Correspondence Privileged with attached reports 0161 Attorney-Client 11/14/1991 Correspondence Not Privileged-Produce. with attached Plaintiff states in its privilege reports log that this report was located in Monsanto or Dekalb's legal files, and that the redacted portion is legal advice from Warner Woessner. There is no evidence in the document that this was advice from Woessner, and he is neither the recipient nor the author. Plaintiff shall produce the documents, unless they can provide further evidence that the redacted portion is legal advice. 0163 Attorney-Client 08/08/1990 Correspondence Privileged with attached reports, contained within "Field Stations 2nd Qtr. Reports" file folder 0164 Attorney-Client 10/1990 Reports Privileged 0166 Attorney-Client 05/22/1992 Report Privileged 0172 Attorney-Client 07/11/1988 Report Privileged 0174 Attorney-Client 07/18/1990 Report with Privileged hand written notes 0175 Attorney-Client 1990 Report Not Privileged-Produce. Plaintiff states in its privilege log that this report was located in Monsanto or Dekalb's legal files, and that the redacted portion is legal advice from Warner Woessner. There is no evidence in the document that this was advice from Woessner, and he is neither the author nor the recipient. Plaintiff shall produce the document, unless they can provide further evidence that the redacted portion is legal advice. 0177 Attorney-Client 12/04/2004 E-mail chain of Privileged correspondence 0178 Attorney-Client/ 2003 Presentation Privileged (Attorney-Client Work Product and Work Product) 0182 Work Product 2004 Draft Privileged Correspondence 0193 Attorney-Client 04/05/2005 Publication and The hand written notes are hand written privileged. However, the notes remainder of the document is not privileged as it does not reflect legal advice or communication with an attorney and therefore must be produced. 0196 Attorney-Client 05/05/1988 Report Privileged 0198 Attorney-Client 07/1988 Report Privileged 0200 Attorney-Client 02/19/1988 Report Privileged 0201 Attorney-Client 03/25/1988 Report Privileged 0202 Attorney-Client 04/22/1988 Report Privileged 0203 Attorney-Client 07/15/1988 Report The redacted portions on page one under the heading 1. Lysine, are not privileged. Plaintiff must either produce this information or provide the court with further evidence of an attorney's involvement. The redacted portion on page six is Privileged under the Work Product Doctrine. 0204 Attorney-Client 07/15/1988 Report Privileged 0205 Attorney-Client 1992 Report Not Privileged-Produce. Plaintiff states in its privilege log that this report was located in Monsanto or Dekalb's legal files, and that the redacted portion is legal advice from Warner Woessner. There is no evidence in the document that this was advice from Woessner, and he is neither the author nor the recipient. Plaintiff shall produce the document, unless they can provide further evidence that the redacted portion is legal advice. 0207 Attorney-Client No Date Report/Outline Privileged 0220 Attorney-Client 06/27/1996 Correspondence Privileged with attachments 0221 Attorney-Client 01/12/1990 Correspondence Privileged 0222 Attorney-Client 01/12/1990 Correspondence Privileged 0223 Attorney-Client 12/13/1989 Correspondence Privileged 0224 Attorney-Client/ 08/23/2000 Report Privileged-Attorney-Client Work Product 0225 Attorney-Client 03/27/1990 Correspondence Privileged 0226 Attorney-Client 2/14/1990- Correspondence Privileged 2/15/1990 0227 Attorney-Client 02/12/1990 Correspondence Privileged 0228 Attorney-Client 03/071990 Handwritten Privileged Notes 0230 Attorney-Client 06/29/1988 Correspondence Privileged 0232 Attorney-Client 01/15/1990 Handwritten Privileged notes 0233 Attorney-Client 01/15/1990 Draft Patent Not Privileged-Produce. Addendum Plaintiff is to provide the Court with additional explanation as to how they identified Jacobs as the author of this document, otherwise they must produce it. 0234 Attorney-Client 01/19/1990 Notes Not-Privileged Produce. Plaintiff is to provide the Court with additional explanation as to how they identified Jacobs as the author of this document, otherwise they must produce it. 0235 Attorney-Client 05/19/1990 Lab Notebooks The last page of this with attached document is privileged. correspondence However, there are a number of black squares on pages 48- 49. The Court believes that these are illustrations of Western Blots. However, if they are not, Plaintiff shall provide further explanation as to why they are redacted. 0236 Attorney-Client 01/20/2001 Handwritten Privileged Notes 0237 Attorney-Client 05/13/1996 Correspondence Privileged with attachments 0238 Attorney-Client 05/09/1996 Correspondence Privileged 0239 Attorney-Client/ 05/08/1996 Correspondence Privileged (Attorney-Client) Work Product 0241 Attorney-Client 09/19/2001 Correspondence Privileged 0242 Attorney-Client 01/14/2000 Correspondence Privileged 0243 Attorney-Client 09/05/2001 Correspondence Privileged 0244 Attorney-Client 04/17/2001 Correspondence Privileged 0245 Attorney-Client 02/23/1999 Correspondence Privileged 0246 Attorney-Client 02/22/2000 Correspondence Not Privileged-Produce. This document does not show that any connection to Dennis Hoerner. Plaintiff shall either provide additional evidence of Hoerner's involvement, or produce the document. 0247 Attorney-Client 02/01/1994 Notes with Privileged attachment Accordingly,IT IS HEREBY ORDERED that Defendant's Motion to Compel Production of Documents [doc. #63] is GRANTED in part and DENIED in part. Plaintiff shall produce documents in accordance with this order. IT IS FURTHER ORDERED that Plaintiff has ten (10) days from the date of this order to provide the Court with further explanation on those documents specified above, or in the alternative to produce the documents.