A recent privilege decision from Judge Fallon became public this week, after the redactions period expired, and it has some interesting conclusions about communications between patent prosecution and patent litigation counsel.
In Huber Engineered Woods LLC v. Louisiana-Pacific Corp., C.A. No. 19-342-GBW-SRF (D. Del.), the defendant accused infringer brought an inequitable conduct counterclaim, alleging that plaintiff knowingly submitted five false "Substitute Statements in Lieue of Oath or Declaration" to the PTO.
As the Court explains, the defendant apparently relied on testimony from the person who signed the statements, and from the inventors, to allege that they were false:
These Substitute Statements, which were signed by [plaintiff] HEW employee Dave Willis, represented that the five named inventors had been contacted, but they were unable or refused to execute the requisite oaths or declarations necessary to issue the patents. . . . According to LP, HEW'S prosecution counsel knew the Substitute Statements were false and submitted them with the intention of deceiving the USPTO. In support of this contention the pleading references the testimony of Mr. Willis and several of the inventors who claimed the named inventors were not contacted or informed of the need to execute the declarations.
That sounds pretty good, if true. After an investigation, the plaintiff filed certificates of correction relating to the priority information for some of its patents.
This decision, however, is focused on privilege issues surrounding discovery on the inequitable conduct claim. There are several interesting issues, but one that caught my eye relates to privilege between prosecution and litigation counsel.
A "Sword and Shield" Privilege Waiver Argument Doesn't Work If There Is No Sword
In the process of pushing back on inequitable conduct, plaintiff sought to show that it was diligent in seeking the certificates of correction.
To show diligence, it produced 92 pages of e-mails between prosecution counsel and litigation counsel:
[Defendant] LP . . . argues that HEW waived the privilege by producing some, but not all, communications between outside prosecution counsel and outside litigation counsel regarding its efforts to obtain the Certificates of Correction. . . . According to LP, these communications disclose strategic details and go beyond transmitting office actions; therefore, HEW should be compelled to produce all documents pertaining to the same subject matter. . . . In support of its position, LP refers generally to 92 pages of emails attached in two exhibits to its letter submission.
The Court, however, found no waiver here, because the communications simply were not privileged (and, presumably, could not have been withheld):
LP has not established that the communications disclosed by HEW were privileged in the first instance. . . . The majority of the communications cited by LP are emails confirming the status of filings with the USPTO. . . . Communications of this type contain no legal strategy or substantive advice and are therefore not privileged.
The Court likewise found that—although this is pretty obvious—communications with PTO employees were not privileged:
Other communications involve outside prosecution counsel seeking guidance from USPTO employees. . . . These communications are not privileged because they were not made between privileged persons, and any advice derived from these communications came from USPTO employees instead of counsel.
Ultimately, you can't have privilege waiver without privilege:
Because the communications at issue here did not reveal the legal analyses or strategies of counsel, the disclosure of the communications does not support a privilege waiver extending to all documents regarding the same subject matter.
Will This Be Useful in Discovery in Other Cases?
Maybe! I think if you asked most patent litigators whether they would try to withhold all communications between outside litigation and outside prosecution counsel on privilege grounds, they'd say yes. But this decision explains why they'd be wrong, and that "status" communications simply are not privileged.
In a case involving inequitable conduct, I could imagine a request for production along these lines, for example:
All communications with prosecution counsel confirming the status of filings with the USPTO.
I would certainly expect that RFP to draw a privilege objection. But this opinion seems to indicate that such a privilege objection would be unsupportable, and the documents must be produced. Interesting!
Other Good Stuff
This opinion addresses a number of other privilege issues, each time coming out on the side of no waiver—including a determination that communications with a now-third-party inventors were not privileged. But you'll have to read the opinion—we can only fit so much in one post!
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