Judge Hall issued a detailed privilege opinion last week, finding no privilege or work product protection for a number of documents after an in-camera review (while also finding that some others were privileged).
There are a number of useful holdings in the opinion. Some of the disputes arose in part because the custodian of the documents in question was unavailable, which means that the producing party lacks context for many of the documents.
For that reason, the producing party was unable to defend against production by offering a declaration that a document was prepared in anticipation of litigation, and the opinion resolves many of the disputes based purely on the text of the documents.
Even Damages Analyses and Claim Charts Must Be Produced If Plaintiff Cannot Prove They Were Created in Anticipation of Litigation
The first holding that caught my eye involved spreadsheets of estimated damages and reasonable royalties for potential patent infringers. Judge Hall held that they were not privileged material or work product prepared in anticipation of litigation:
These documents are all spreadsheets. We don’t know who prepared them or who allegedly directed that they be prepared. I have examined them and I cannot find that they were prepared in anticipation of litigation, at the direction of counsel, or to facilitate the provision of legal advice. They might well have been. But, given the nature of Plaintiff’s business, another reasonable inference is that they were prepared by a non-attorney to determine which companies to reach out to regarding a licensing deal. . . . On this record, I find that Plaintiff has not met its burden to establish that either the attorney-client privilege or work product doctrine applies.
The Court similarly found no work product protection for other arguably-litigation-related documents, after plaintiff failed to offer sufficient evidence:
- A draft licensing agreement
- A claim chart
- An "[e]valuation of revenues, profits, and potential damages from various possible defendants in potential infringement suit," given that there was "no evidence regarding who prepared this document and why"
- Various product testing results
Judge Hall Set Forth Her View on Non-Privileged Attachments to Privileged E-mails
Judge Hall required production of non-privileged attachments to privileged e-mails, and ordered that the production indicate which custodian was in possession of the document in the attachment:
Courts have taken varying approaches regarding the privilege claims over email attachments. . . . Here is how I see it. The emails themselves demonstrate that the client sender (or client recipient) had the non-privileged article in their possession because at one point they sent (or received) it. The client cannot immunize discovery of those articles merely because they were sent to (or received from) their lawyer. Nor can the client conceal the fact that they were and are in possession of those articles. On the other hand, I am sensitive to the possibility that the fact that a client sent (or received) a particular article to (or from) his attorney on a certain date can implicate privilege concerns.
[T]his is how the parties should proceed with respect to this group. . . . Plaintiff must either (1) produce the non-privileged attachments or (2) if Plaintiff contends that the act of sending a particular attachment is privileged, confirm that the attachment has already been produced in discovery under circumstances that demonstrate which custodians had possession of it.
Other Holdings
Judge Hall also made a few other interesting holdings:
- A communication solely relating to setting up a call with an attorney is not privileged, even when offered as part of a longer e-mail chain.
- She ordered production of an unredacted version of a contingent fee engagement letter with a 30(b)(6) witness:
Plaintiff has designated Mr. Epstein as its sole Rule 30(b)(6) witness. The Contingent Fee Engagement Letter discusses the compensation to be paid to Epstein. Having previously concluded that the Contingent Fee Engagement Letter has some potential relevance to bias, I ordered that it be produced. I also stated that relevance redactions were inappropriate but that the document may be redacted to the extent it contained some privileged information. I have reviewed the provisions that are currently being redacted by Plaintiff and they do not constitute privileged information. They are contract terms. The agreement should be produced in unredacted form.
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