Caraway Home, Inc. v. Sensio Inc.

Opinion

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK -----------------------------------------------------------x CARAWAY HOME, INC,

Plaintiff,

-against- 23-cv-9756 (PKC)

ORDER

SENSIO INC. d/b/a Made by Gather,

Defendant. -----------------------------------------------------------x

CASTEL, U.S.D.J. In response to this Court’s Order of May 2, 2024, defendant Sensio Inc. (“Sensio”) has confirmed in a letter to the Court that it received legal advice whether its redesigned product line at issue infringes the ‘421, ‘226 and ‘647 design patents of plaintiff Caraway Home, Inc. (“Caraway”) and certain third parties. (ECF 98.) It further confirms that it intends to assert as a part of a defense of good faith to a claim of willful infringement that it relied on the advice of counsel. (Id.) Sensio’s position results in a waiver of the attorney-client privilege as to all oral or written advice communicated to it by its counsel on the subject of whether its redesigned product line infringes Caraway’s ‘421, ‘226 and ‘647 design patents. See In re County of Erie, 546 F.3d 222, 229 (2d Cir. 2008); United States v. Bilzerian, 926 F.2d 1285, 1292 (2d Cir. 1991). By June 4, 2024, Sensio shall produce all documents in its possession or control, including documents in the possession or control of any attorney retained or employed by it, that reflects, addresses or discusses any oral or written legal advice communicated to Sensio on the subject of whether its redesigned product line would infringe or does infringe any design patent of Caraway. Caraway’s letter motion (ECF 76) is GRANTED to the extent indicated above. SO ORDERED.

ZZ Aen GL United States District Judge Dated: New York, New York May 22, 2024