Last week, Judge Andrews ruled on claims of privilege by Express Mobile ("EM") in Shopify, Inc. v. Express Mobile, Inc., C.A. No. 19-439-RGA, finding that several of the claims were "frivolous," and ordering a revised privilege log and supporting lawyer declarations "so that I know who to blame should Express Mobile continue to baselessly assert claims of privilege."
Judge Andrews found that EM had engaged in a licensing and litigation campaign to monetize its patents over the last decade, and that "EM's theory seems to be that anything related to licensing or infringement done by anybody connected to EM is privileged."
Judge Andrews had reviewed thirteen documents in camera in an effort to resolve the privilege log dispute. He found that eleven of the thirteen were not privileged, including several that involved only non-lawyers discussing commercial issues without any indication that they were seeking or discussing legal advice.
Four of the claims of privilege were deemed "frivolous," including the claims pertaining to (1) an email between non-lawyers discussing potential contacts who might be interested in buying EM's patents, (2) an email between non-lawyers deemed "simply a business communication," (3) an email among non-lawyers speculating about a potential buyer for EM's patents, and (4) an email between non-lawyers including a discussion of "document presentation options for claim charts."
Communications with attorneys involved fared better (from EM's perspective)—two of the four were found privileged.
Following resolution of the dispute, Judge Andrews answered
the question of what to do about the generally unreasonable positions taken by Express Mobile in regard to these particular documents, which presumably is an indication of an unreasonable position taken in regard to other documents.
He ordered Express Mobile to review its privilege log and produced a revised log within five business days. He also ordered EM to
file one or more declarations under oath by the lawyer or lawyers responsible for the assertions of privilege in the revised privilege log, so that I know who to blame should Express Mobile continue to baselessly assert claims of privilege.
Finally, he ordered letter submissions and stated that any remaining disputes would be referred to a Special Master, "who will have the power to apportion the costs of the referral, including attorney's fees."
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