Opinion
No. 00-2334-KHV.
November 14, 2001
MEMORANDUM AND ORDER
Pending before the Court is Defendant Intervenor Nikitin's ("Nikitin") Motion to Compel Discovery Involving Plaintiff's Motion to Disqualify Blackwell Sanders Peper Martin (doc. 125). In his Motion, Nikitin requests the Court "compel production of all the documents and information which FHS [Flint Hills Scientific, LLC] is withholding and attempting to withhold pursuant to a claim of attorney-client privilege." Defendant Nikitin's Motion to Compel at p. 1 (doc. 125). Nikitin states that the documents and information he seeks are relevant to the "issues raised by [FHS's October 3, 2001] motion to disqualify Blackwell Sanders." If the Court should deny Nikitin's Motion to Compel, he requests — in the alternative — that the Court preclude FHS from using the withheld documents and information in the January 7, 2002 evidentiary disqualification hearing. For the reasons set forth below, Nikitin's Motion is deferred pending both a submission by FHS of additional information and, based on this information, a subsequent decision by the Court regarding privilege and confidentiality.
RELEVANT FACTS
Founded in 1995, FHS is a company that specializes in real-time advanced signal processing, analysis and control methods. Davidchack began working for FHS as a consultant in 1996. Nikitin, a friend of Davidchack's, began employment with FHS in September 1998. Nikitin asserts that from 1996 to August 1998, he and Davidchack developed a general method of signal analysis ("the Invention"). Nikitin resigned from his employment with FHS on February 9, 2000. After Nikitin's resignation, a dispute arose between Nikitin and FHS regarding who owned intellectual property rights to the Invention. On April 3, 2000, Nikitin and Davidchack filed a patent application for the Invention at issue, and both Nikitin and Davidchack signed the patent application as co-inventors.
On May 5, 2000, FHS filed a Petition for monetary and injunctive relief against Nikitin in the District Court of Douglas County, Kansas alleging (1) Nikitn breached his fiduciary duty to FHS; (2) Nikitin misappropriated trade secrets belonging to FHS; (3) Nikitin engaged in unfair competition with FHS; and (4) Nikitin breached his consulting agreement with FHS. Nikitin retained the law firm of Blackwell Sanders Peper Martin, LLP ("Blackwell Sanders") to represent him in the Douglas County lawsuit. As its first order of discovery in the state action against Nikitin, FHS subpoenaed Davidchack for deposition. After Davidchack's deposition, FHS initiated this federal lawsuit alleging claims against Davidchack almost identical to those alleged against Nikitin in the state court petition. Upon timely motion, Nikitin subsequently was allowed to intervene in this federal lawsuit as a defendant pursuant to Fed.R.Civ.P. 24(a)(2) (intervention as a matter of right).
On October 3, 2001, FHS filed a Motion to Disqualify Blackwell Sanders from serving as Nikitin's attorney in the federal lawsuit. In its motion, FHS asserts it recently became aware of a conflict of interest regarding Blackwell Sanders' representation of Nikitin, in that Kyle Elliott ("Elliott"), an attorney employed by Blackwell Sanders, previously represented FHS and its operating manager Mark Frei ("Frei") in a matter substantially related to the one currently pending in this lawsuit. Apparently, the alleged representation by Elliott of FHS occurred in the scope of Elliott's former employment as an attorney at the law firm of Hovey, Williams, Timmons Collins ("Hovey Williams"). In support of its Motion to Disqualify, FHS submitted for in camera review by the Court a multitude of documents it alleges are confidential and privileged.
FHS also filed a Motion to Disqualify Blackwell Sanders in the Douglas County case.
The Court held a telephone status conference regarding the Motion to Disqualify soon after it was filed and, pursuant to discussion at the conference, set a discovery deadline and a briefing schedule on the isolated issue of disqualification, as well as set an evidentiary hearing on the actual Motion to Disqualify itself. The Court further ordered the parties to file by October 12, 2001 any motion to compel relating to the Motion to Disqualify. Nikitin subsequently filed this Motion to Compel requesting the Court order FHS to either turn over to Nikitin "all the documents and information which FHS is withholding and attempting to withhold pursuant to a claim of attorney-client privilege raised by the motion to disqualify" or, in the alternative, requesting the Court disregard the allegedly confidential and privileged documents submitted in making its decision on the Motion to Disqualify.
Before addressing the substantive issues raised by the pending Motion to Compel, the Court finds it necessary to review the unique procedural circumstances surrounding Nikitin's Motion. As a preliminary manner, the Court notes that Nikitin brings his Motion to Compel "pursuant to Fed.R.Civ.P. 37(a) and (c)(1)." Nikitin's Motion to Compel at p. 1 (doc. 125). Rule 37 is the federal rule addressing sanctions in those instances where a party fails to make disclosures or fails to cooperate in discovery. More specifically, Rule 37 provides, in relevant part:
(a) Motion for Order Compelling Disclosure or Discovery. A party may, upon reasonable notice to other parties and all persons affected thereby, may apply for an order compelling disclosure or discovery as follows:
* * * * * * * *
(2) Motion.
(A) If a party fails to make a disclosure required by Rule 26(a), any other party may move to compel disclosure and for appropriate sanctions.
* * * * * * * *
(B) If a deponent fails to answer a question propounded or submitted under Rules 30 or 31, or a corporation or other entity fails to make a designation under Rule 30(b)(6) or 31(a), or a party fails to answer an interrogatory submitted under Rule 33, or if a party, in response to a request for inspection submitted under Rule 34, fails to respond . . . the discovering party may move for an order compelling an answer, or a designation, or an order compelling inspection in accordance with the request.
* * * * * * * *
(c) Failure to Disclose; False or Misleading Disclosure; Refusal to Admit.
(1) A party that without substantial justification fails to disclose information required by Rule 26(a) or 26(e)(1), or to amend a prior response to discovery as required by Rule 26(e)(2), is not, unless such failure is harmless, permitted to use as evidence at a trial, at a hearing, or on a motion any witness or information not so disclosed.
Although Nikitin specifically moves to compel production of documents and information pursuant to Rule 37, he fails to specify whether he does so as a result of FHS's failure to
• make or supplement his initial disclosures pursuant Rule 26(a)(1)
• answer an interrogatory pursuant to Rule 33; or
• respond to a request for inspection pursuant to Rule 34.
Because Nikitin neither refers to interrogatories or requests for inspections/production within his Motion nor attach such pleadings to his Motion as exhibits, the Court will construe Nikitin to have made the request pursuant to Rule 37 as a result of FHS's failure — after filing its Motion to Disqualify — to supplement its initial disclosures with "all the documents and information which FHS is withholding and attempting to withhold pursuant to a claim of attorney-client privilege . . . relating to issues raised by FHS's Motion to Disqualify." Consistent with this interpretation is the fact that FHS, approximately two weeks after filing its Motion to Disqualify, submitted for in camera review by the Court in support of its Motion to Disqualify a box of documents it claims are confidential and privileged. Notably, FHS states in the pleading that accompanied the box of documents that the documents submitted for in camera review consist of documents protected from disclosure by not only the attorney-client privilege, but by work product protection as well.
Based on this discussion, the issue currently before the Court is whether the Court should compel FHS to produce to Nikitin the box of documents FHS submitted to the Court for in camera review. In support of his Motion to Compel, Nikitin argues the documents at issue are not protected by the attorney-client privilege. Nikitin goes on to argue that even if the documents are protected from disclosure by the attorney-client privilege, such privilege has been waived: either explicitly by statute or implicitly by affirmatively placing the documents at issue in this case. The Court will address each of Nikitin's arguments concerning the attorney-client privilege in turn.
Notably, Nikitin does not respond to FHS's assertion in the pleading accompanying the box that many of the documents are protected from disclosure by the work product doctrine.
DISCUSSION
• Attorney-Client Privilege
1. Are the Documents Protected from Disclosure by the Attorney-Client Privilege?
Kansas state law provides the rule of decision as to application of the attorney-client privilege. Thus, the essential elements of the attorney-client privilege are: (1) Where legal advice is sought (2) from a professional legal advisor in his capacity as such, (3) the communications made in the course of that relationship (4) made in confidence (5) by the client (6) are permanently protected (7) from disclosures by the client, the legal advisor, or any other witness (8) unless the privilege is waived. State v. Maxwell , 10 Kan. App. 2d 62, 63, 691 P.2d 1316, 1319 (1984) (citation omitted); see also , K.S.A. 60-426 (1994). The privilege "protects confidential communications by a client to an attorney made in order to obtain legal assistance from the attorney in his capacity as a legal advisor." Marten v. Yellow Freight Sys., Inc ., No. 96-2013-GTV, 1998 WL 13244, at *6 (D.Kan. Jan.6, 1998) (quoting Jones v. Boeing Co . , 163 F.R.D. 15, 117 (D.Kan. 1995)). The privilege also protects advice given by the lawyer in the course of representing the client. See Upjohn Co. v. United States , 449 U.S. 383, 390 (1981) ("[T]he privilege exists to protect not only the giving of professional advice to those who can act on it but also the giving of information to the lawyer to enable him to give sound and informed advice."); Sprague v. Thorn Americas, Inc ., 129 F.3d 1355, 1370-71 (10th Cir. 1997) (finding protection of communications from an attorney to a client in the course of providing legal advice is within the scope of the federal rule). The privilege, however, "is to be extended no more broadly than necessary to effectuate its purpose." Great Plains Mut. Ins. Co ., 150 F.R.D. at 196 (citation omitted). The party asserting the privilege bears the burden of establishing its existence. Id .
Actually, there is no real conflict between federal and Kansas law regarding the attorney-client privilege. See Hiskett v. Wal-Mart Stores, Inc., 180 F.R.D. 403, 405 (D.Kan. 1998); Marten v. Yellow Freight Sys., Inc., No. Civ.A. 96-2013-GTV, 1998 WL 13244, at *4-6 (D.Kan. Jan. 6, 1998). "[T]he Kansas statute concerning the attorney-client privilege and its exceptions is typical of the laws of other jurisdictions." In re A.H. Robins Co., 107 F.R.D. 2, 8 (D.Kan. 1985) (citation omitted.) Whether the court applies federal or Kansas law generally makes no difference in determining whether the attorney-client privilege applies. See Great Plains Mut. Ins. Co. v. Mutual Reinsurance Bureau, 150 F.R.D. 193, 196 n. 3 (D.Kan. 1993) (citing K.S.A. 60-426; Wallace, Saunders, Austin, Brown Enochs, Chtd. v. Louisburg Grain Co., 250 Kan. 54, 824 P.2d 933 (1992)).
"Parties objecting to discovery on the basis of the attorney-client privilege bear the burden of establishing that it applies." ERA Franchise Sys. v. Northern Ins. Co . , 183 F.R.D. at 278 (citing Boyer v. Bd of County Comm'rs ., 162 F.R.D. 687, 688 (D.Kan. 1995)). "To carry the burden, they must describe in detail the documents or information to be protected and provide precise reasons for the objection to discovery." Id . at 278-79 (citing National Union Fire Ins. Co. v. Midland Bancor, Inc . , 159 F.R.D. 562, 567 (D.Kan. 1994)). "A `blanket claim' as to the applicability of a privilege does not satisfy the burden of proof." Id . (citing Kelling v. Bridgestone/Firestone, Inc . , 157 F.R.D. 496, 497 (D.Kan. 1994)). Parties who withhold discovery on privilege grounds must "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 the information itself privileged or protected, will enable other parties to assess the applicability of the privilege or protection." Fed.R.Civ.P. 26(b)(5). Upon a preliminary review of a portion of the documents submitted for in camera review, the Court concludes — at least from the face of several of the documents reviewed — that the attorney-client privilege appears to be applicable to such documents. Upon review of some of the documents, however, the Court finds it does not possess sufficient information to enable it to determine whether each element of the asserted privilege is satisfied. See Jones v. Boeing Co . , 163 F.R.D. 15, 17 (D.Kan. 1995) (holding that a claim of privilege fails upon insufficient evidence as to any element). Given the failure of FHS to provide all of the information required for the Court to determine the applicability of the privilege, the Court has discretion to make a finding that there is no privilege for those documents where such privilege cannot be determined from the face of the document.
Although submitted prior to filing of the Motion to Disqualify — and therefore representative of only a small portion of the documents submitted for in camera review — the privilege log submitted to Nikitin by FHS on October 2, 2001 validates the Court's finding that some of the documents appear to be privileged on their face and some may or may not be privileged, depending on what additional information is provided:
• PCT Patent Application Data Sheet (no date);
• 7/31/97 handwritten notes of Inventors drafted at the direction of attorney Arjun Sanga;
• 2/17/99 letter to Mark Frei from attorney Luebbering re: European Patent Application;
• 2/22 phone message to attorney Thomas Luebbering to call Mark Frei (no year);
• 2/23/99 letter to attorney Kyle Elliott from Mark Frei;
• 2/23/99 letter to attorney Kyle Elliott from Mark Frei;
• 2/27/99 letter to Mark Frei from attorney Kyle Elliott re: European Patent Application enclosing copy of official Supplementary European Search Report and references cited;
• 2/27/99 letter to Medtronic, Inc. from attorney Elliott re: European Patent Application enclosing copy of official Supplementary European Search Report; and
• 3/12/99 letter to Curtis Kinghorn from attorney Elliott re: Japanese National Phase Application.
In light of the unique circumstances presented here, however, the Court will defer making such a finding and instead directs FHS to provide to the Court and all parties by November 16, 2001 a list with "a detailed description" of each document within the box of documents submitted to the Court for in camera review and the "specific and precise reasons for [the] claim of protection from disclosure." Snowden v. Connaught Lab., Inc., 137 F.R.D. 325, 334 (D.Kan. 1991) (citation omitted). The description should include at least the following information for each such document:
• A description of the document (i.e. correspondence, memorandum, etc.);
• Date prepared or date notations made;
• Date of document (if different from #2);
• Who prepared the document or made notations on the document;
• For whom the document was prepared and to whom the document was directed;
• Purpose of preparing the document or making the notations;
• Number of pages of each document; and
• Basis for withholding discovery.
If a detailed privilege log setting forth the information referenced above is not provided within the deadline imposed, FHS will waive its right to protect those documents that do not appear to be privileged on their face from disclosure on grounds of attorney-client privilege.
2. The Statutory Exception to the Attorney-Client Privilege
Nikitin next argues that even if all or some of the documents submitted to the Court by FHS are protected from disclosure by the attorney-client privilege, they ultimately are discoverable under the statutory exception to the privilege because they "are relevant to a breach of duty by the lawyer to his client." Notably, Kansas statute does create an exception to the attorney-client privilege for communications that "are relevant to a breach of duty by the lawyer to his client." K.S.A. 60-426(b)(3). Contrary to what Nikitin claims, however, the statute is not a general exception allowing disclosure of any privileged communication simply because it is raised in litigation. Simmons Foods, Inc. v. Willis, 191 F.R.D. 625, 632 (D.Kan. 2000).
A plain reading of the statute indicates a waiver occurs when either the attorney or client charges the other with a breach of duty arising from their professional relationship. K.S.A. 60-426(b)(3); see, also, Simmons Foods, Inc. v. Willis, 191 F.R.D. at 632 (citing Dyson v. Hempe, 140 Wis.2d 792, 810-11, 413 N.W.2d 379, 387 (Wis.Ct.App. 1987) (privilege deemed to have been waived under a statutory exception similar to the one in Kansas when client sues his former lawyer for malpractice); State v. Flores, 170 Wis.2d 272, 277-78, 488 N.W.2d 116, 118 (Wis.Ct.App. 1992) (privilege deemed to have been waived under a statutory exception similar to the one in Kansas when client seeks to reverse a criminal conviction on the grounds that former attorney rendered ineffective assistance of counsel.)).
In situations where an attorney or client charges the other with a breach of duty, it would be unjust for a party to that relationship to maintain the privilege so as to preclude disclosure of confidential communications relevant to the issue of breach. This rationale, however, has no application to the present case. Nikitin argues disclosure of communications is appropriate under the statutory exception because FHS is accusing attorney Kyle Elliott of breaching a duty to FHS. The problem with Nikitin's argument, however, is that FHS is not alleging Elliott breached a duty; instead, FHS is alleging Blackwell Sanders has a conflict of interest in representing Nikitin due to Elliott's former representation of FHS and Frei in a matter substantially related to the one currently pending. The Court finds the statutory exception to the attorney-client privilege was not designed to allow disclosure of privileged communications under these circumstances.
3. The "At Issue" Waiver
Nikitin next asserts that FHS waived the attorney-client privilege by filing its Motion to Disqualify; thus, putting the confidential communications "at issue" in this lawsuit. Nikitin relies on the so-called "at issue" or implied waiver principle. See WLIG-TV, Inc. v. Cablevision Sys. Corp., 879 F. Supp. 229, 234 (E.D.N Y 1994) (recognizing that both names refer to the same principle.) There has been no definitive test utilized in Kansas regarding how to determine if a privilege has been waived pursuant to an implied waiver theory.
As a general rule, courts have followed three different approaches when ruling on whether a party has waived its privilege by placing protected information "at issue." Frontier Refining, Inc. v. Gorman-Rupp Co., Inc., 136 F.3d 695, 699 (10th Cir. 1998). The first theory is the "automatic waiver" rule. Id. The second theory utilizes a test to evaluate the need for discovery against the importance of the privilege. Id. The third theory provides for waiver of the attorney-client privilege if, and only if, "the litigant directly puts the attorney's advice at issue in the litigation." Id. at 700.
As noted above, Kansas courts have not spoken to which of these three approaches should be followed with respect to the "at issue" waiver of the attorney-client privilege. If there is no applicable statute or if the Kansas Supreme Court has not spoken on an issue, this Court must determine how it believes the Kansas Supreme Court would rule if confronted with the question. Frontier Refining Inc., v. Gorman-Rupp Co., Inc., 136 F.3d at 700 (where Wyoming Supreme Court has not directly announced a definitive test on issue, federal court must predict how that court would resolve it.) In making this determination, the court should consider "other state-court decisions, well-reasoned decisions from other jurisdictions, and any other available authority to determine the applicable state law." Id. (citing Burns v. International Ins. Co., 929 F.2d 1422, 1424 (9th Cir. 1991)).
In Frontier Refining, the Tenth Circuit Court of Appeals recently undertook a similar task with respect to Wyoming law. That case provides the following assistance:
Courts generally employ some version of one of the three following general approaches to determine whether a litigant has waived the attorney-client privilege. The first of these general approaches is the "automatic waiver" rule, which provides that a litigant automatically waives the privilege upon assertion of a claim, counterclaim, or affirmative defense that raises as an issue a matter to which otherwise privileged material is relevant. The second set of generalized approaches provides that the privilege is waived only when the material to be discovered is both relevant to the issues raised in the case and either vital or necessary to the opposing party's defense of the case. Finally, several courts have recently concluded that a litigant waives the attorney-client privilege if, and only if, the litigant directly puts the attorney's advice at issue in the litigation.
136 F.3d at 699 (citations omitted.) The Tenth Circuit limited its discussion to these three general approaches. This Court will do likewise. Although other approaches may exist, there is no reason to address them, as neither the parties nor the courts of Kansas suggest their applicability. As the Tenth Circuit apparently concluded in Frontier Refining, the court need only consider the stated three general approaches in determining which rule a state court would apply. It would be a daunting task, furthermore, to attempt a fully encompassing analysis of all existing approaches.
The Tenth Circuit concluded that the courts of Wyoming would reject the "automatic waiver" rule. Id. at 700-01. For the reasons stated in the Frontier opinion, this Court concludes Kansas would not adopt the "automatic waiver" rule. The rule "has been roundly criticized in the circuits, does not adequately account for the importance of the attorney-client privilege to the adversary system, and is more applicable to constitutional, rather than attorney-client, privileges." Id. at 700. The Supreme Court of Kansas has emphasized the importance of the attorney-client privilege to the administration of justice. Wallace, Saunders, Austin, Brown Enochs, Chtd. v. Louisberg Grain Co., 250 Kan. 54, 63, 824 P.2d 933, 940 (1992). It cautioned that "[t]he privilege should not be set aside lightly." Id. The automatic waiver rule is inconsistent with that philosophy. "Carried to its ultimate conclusion, the automatic waiver rule would destroy the attorney-client privilege any time a litigant asserted a claim or defense." T. Maxfield Bahner Michael L. Gallion, Waiver of Attorney-client Privilege Via Issue Injection: A Call for Uniformity, 65 Def. Couns. J. 199, 201 (Apr. 1998).
The Court thus has two competing approaches from which to choose. The Tenth Circuit found no need to choose between them, because the party seeking the privileged information failed to demonstrate its entitlement to the privileged materials under the more liberal, remaining approach to waiver, i.e., the three-prong test enunciated in Hearn v. Rhay, 68 F.R.D. 574 (E.D.Wash. 1975) (evaluating the need for discovery against the importance of the privilege.) Frontier Refining, Inc., 136 F.3d at 701. Here, the Court finds it unnecessary to address the more liberal Hearn approach because Nikitin sufficiently has demonstrated waiver under the more stringent approach — that a litigant waives the attorney-client privilege if, and only if, the litigant directly puts the attorney's advice at issue in the litigation. See Rhone-Poulenc Rorer, Inc. v. The Home Indemnity Co., 32 F.3d 851, 863 (3d Cir. 1994) (holding a party waives the privilege only when he or she "has made the decision and taken the affirmative step in the litigation to place the advice of the attorney in issue."); see, also, Steelcase, Inc. v. Haworth, Inc., 954 F. Supp. 1195 (W.D.Mich. 1997); Saint-Gobain/Norton Indus. Ceramics Corp. v. General Elec. Co., 884 F. Supp. 31 (D.Mass. 1995); Thorn EMI N. Am., Inc. v. Micron Tech., Inc., 837 F. Supp. 616 (D.Del. 1993).
In determining when the attorney's advice is put at issue, the Third Circuit Court of Appeals specifically rejected the proposition that a party waives the privilege merely by asserting a defense that would make an attorney's advice relevant. Rhone-Poulenc Rorer, Inc. v. The Home Indemnity Co., 32 F.3d at 863. Rather, the Rhone-Poulenc court held that "[t]he advice of counsel is placed in issue where the client asserts a claim or defense, and attempts to prove that claim or defense by disclosing or describing an attorney-client communication." Id. In explaining its ruling, the Rhone-Poulenc court used the example of a patent case in which a defendant denies the charge of willful infringement. The court explained that while the advice of the alleged infringer's lawyer may be "relevant to the question of whether the infringer acted with a willful state of mind, . . . the advice of the infringer's counsel is not placed in issue, and the privilege is not waived, unless the infringer seeks to limit its liability by describing that advice and by asserting that he relied on that advice." Id.
Here, Nikitin asserts that the substance of the confidential communications between FHS with its counsel are relevant and at issue as a direct result of FHS's affirmative decision to file its Motion to Disqualify. The Court agrees. FHS initiated this lawsuit and subsequently filed the pending Motion to Disqualify. In its Motion to Disqualify, FHS alleges Blackwell Sanders has a conflict of interest in representing Nikitin because Elliott, a lawyer currently working for Blackwell Sanders, formerly represented FHS and thus possesses material and confidential information regarding issues relevant in this lawsuit. FHS does not want to disclose the substance of the information known by Elliott, however, because it asserts such information is protected from disclosure by privilege.
Based on these facts, the Court finds FHS directly put the confidential and privileged communications at issue when it filed the pending Motion to Disqualify. Accordingly, the Court holds FHS has waived the attorney-client privilege with regard to the confidential communications at issue. B. Alternative Grounds for Protection from Disclosure
Nikitin's Motion to Compel specifically describes the documents he seeks as "all the documents and information which FHS is withholding and attempting to withhold pursuant to a claim of attorney-client privilege raised by the motion to disqualify." Nikitin's Motion to Compel at p. 1 (doc. 125). Although FHS filed a responsive brief addressing the discrete issue presented — attorney-client privilege — FHS did not discuss in its brief alternative grounds upon which it relies in withholding from disclosure to Nikitin the documents submitted to the Court for in camera review. Included within the pleading that accompanied the box of documents submitted to the Court in camera, however, is FHS's assertion that it is relying on not just the attorney-client privilege in protecting the documents from disclosure, but by the work product doctrine as well. Plaintiff's Submission of Privileged Attorney-Client and Attorney Work Product Documents In Camera (doc. 132). FHS also asserts in this pleading concerns regarding the confidentiality of the referenced documents.
• Work Product Protection
As the asserting party, FHS has the burden of establishing work product protection. See McCoo v. Denny's, Inc., 192 F.R.D. 675, 683 (D.Kan. 2000); Boyer v. Board of County Comm'rs, 162 F.R.D. 687, 688 (D. Kan 1995). To carry that burden, FHS must make a "clear showing" that the asserted objection applies. See McCoo, 192 F.R.D. at 683; Ali v. Douglas Cable Communications, Ltd. Partnership, 890 F. Supp. 993, 944 (D.Kan. 1995). A "blanket claim" as to the applicability of the work product doctrine does not satisfy the burden of proof. McCoo, 192 F.R.D. at 680. It is well settled that the party seeking to invoke work product immunity has the burden to establish all elements of the immunity and that this burden can be met only by an evidentiary showing based on competent evidence. Id. "That burden cannot be "discharged by mere conclusory or ipse dixit assertions." Id. (quotations and citations omitted).
To establish work product protection, FHS must show that "(1) the materials sought to be protected are documents or tangible things; (2) they were prepared in anticipation of litigation or for trial; and (3) they were prepared by or for a party or a representative of that party." Johnson v. Gmeinder, 191 F.R.D. 638, 643 (D.Kan. 2000) (citations omitted).
Upon review of the documents submitted for in camera review, the Court again finds it does not possess sufficient information to enable it to determine whether each element of the asserted privilege is satisfied. Accordingly, and as ordered above, the Court hereby directs FHS to provide to the Court and all parties by November 16, 2001 a list with "a detailed description" of each document within the box of documents submitted to the Court for in camera review and the "specific and precise reasons for [the] claim of protection from disclosure." Snowden v. Connaught Lab., Inc., 137 F.R.D. 325, 334 (D.Kan. 1991) (citation omitted); Cypress Media, Inc. v. City of Overland Park, No. 82,353, 2000 WL 85362, at *13-14 (same).
Again, the description should include at least the following information for each document:
A description of the document (i.e. correspondence, memorandum, etc.);
Date prepared or date notations made;
Date of document (if different from #2);
Who prepared the document or made notations on the document;
For whom the document was prepared and to whom the document was directed;
Purpose of preparing the document or making the notations;
Number of pages of each document; and
Basis for withholding discovery.
If a detailed privilege log setting forth the information referenced above is not provided within the deadline imposed, FHS will waive its right to work product protection for those documents that do not appear to be privileged on their face.
2. Confidentiality Concerns
Federal Rule of Civil Procedure 26(c) provides that upon a showing of good cause, a court "may make any order which justice requires to protect a party or person from annoyance, embarrassment oppression, or undue burden or expense." The party seeking a protective order has the burden to demonstrate good cause. Sentry Ins. v. Shivers, 164 F.R.D. 255, 256 (D. Kan. 1996). In determining whether good cause exists to issue a protective order that prohibits the dissemination of documents or other materials obtained in discovery, "the initial inquiry is whether the moving party has shown that disclosure of the information will result in a `clearly defined and very serious injury.'" Zapata v. IBP, Inc., 160 F.R.D. 625, 627 (D.Kan. 1995) (quoting Koster v. Chase Manhattan Bank, 93 F. R. D. 471, 480 (S.D.N.Y. 1982)) (internal quotations omitted). The moving party must also make "a particular and specific demonstration of fact, as distinguished from stereotyped and conclusory statements." Gulf Oil Co. v. Bernard, 452 U.S. 89, 102 n. 16 (1981).
Notably, there is no absolute privilege for trade secrets or similar confidential information. Federal Open Market Comm. of Federal Reserve Sys. v. Merrill, 443 U.S. 340, 362 (1979); Centurion Indus., Inc. v. Warren Steurer Assocs., 665 F.2d 323, 325 (10th Cir. 1981). To resist disclosure under Rule 26(c)(7), a person must first establish that the information is a trade secret or other confidential research, development, or commercial information and then demonstrate that its disclosure might be harmful. Centurion, 665 F.2d at 325-26. If these requirements are met, the burden then shifts to the party seeking discovery to establish that disclosure of a trade secret or other confidential information is relevant and necessary to the action. Id. Finally, the district court must balance the need for discovery of the trade secrets against the claim of injury resulting from disclosure. Id.
The structure of Rule 26 demonstrates that the means by which protection from discovery of trade secrets is to be obtained is by motion under Rule 26(c)(7). Here, although FHS has stated the documents deserve protection (doc. 132), FHS has not yet explicitly requested a protective order permitting it to withhold the discovery at issue on grounds of confidentiality and/or trade secrets in the event the Court grants Nikitin's Motion to Compel. Without such an explicit request, the Court is not in a position to determine whether good cause exists to issue a protective order and whether FHS carried its burden to establish with the requisite particularity — as distinguished from stereotyped and conclusory statements — that the information is a trade secret or other confidential research, development, or commercial information and that its disclosure will result in a "clearly defined and very serious injury." See Gulf Oil Co. v. Bernard, 452 U.S. at 102 n. 16; Zapata v. IBP, Inc., 160 F.R.D. at 627. Without such an initial determination, the Court cannot go on to balance the need for discovery of the trade secrets against the claim of injury resulting from disclosure.
Given the unique circumstances presented here, the Court will allow FHS an opportunity to formally move for a Protective Order permitting it to withhold from discovery alleged trade secrets and confidential information, but any such motion must be filed by November 16, 2001 and must be served upon all parties by facsimile on that same day. Nikitin shall file any response to the motion for protective order by November 23, 2001.
CONCLUSION
Based upon the discussion above, it is hereby ordered that if FHS seeks to protect the documents at issue from disclosure on grounds of attorney-client privilege or work product protection, it shall provide by November 16, 2001 to the Court and to all parties a privilege log as specifically described in sections A(1) and B(1) of this Order for each item within the box of documents submitted for in camera review. The Court shortly thereafter will issue a ruling regarding applicability of the privilege on a document by document basis.
It is further ordered that if FHS seeks to protect the documents at issue from disclosure on grounds of confidentiality, FHS shall file by November 16, 2001 a Motion for Protective Order as specifically described in section B(2) of this Order and must serve such pleading upon all parties by facsimile on that same day. Nikitin shall file any response to the motion for protective order by November 23, 2001.
It is further ordered that Nikitin's Motion to Compel (doc. 125) is deferred pending a decision by the Court regarding protection from disclosure on grounds of attorney-client privilege, work product protection and confidentiality concerns.
It is further ordered that the November 30, 2001 deadline for discovery on the attorney disqualification issue is hereby extended to December 14, 2001, any response to Plaintiff's Motion to Disqualify shall be filed by December 21, 2001 and any reply shall be filed by December 28, 2001.
The January 7, 2002 hearing date on Plaintiff's Motion to Disqualify (doc. 116) remains unchanged.
IT IS SO ORDERED.