Detection Systems, Inc. v. Pittway Corp.

96 F.R.D. 152, 220 U.S.P.Q. (BNA) 716, 1982 U.S. Dist. LEXIS 16284
CourtDistrict Court, W.D. New York
DecidedNovember 8, 1982
DocketNo. CIV-77-169B(C)
StatusPublished
Cited by58 cases

This text of 96 F.R.D. 152 (Detection Systems, Inc. v. Pittway Corp.) is published on Counsel Stack Legal Research, covering District Court, W.D. New York primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Detection Systems, Inc. v. Pittway Corp., 96 F.R.D. 152, 220 U.S.P.Q. (BNA) 716, 1982 U.S. Dist. LEXIS 16284 (W.D.N.Y. 1982).

Opinion

CURTIN, Chief Judge.

This is plaintiff’s motion seeking to compel discovery and production of some 47 categories of documents from defendant. The Pittway Corporation objects to any production of these documents, claiming they are protected from discovery by attorney-client privilege and work-product immunity. Pittway has submitted the documents for in camera inspection by the court, and after review of the materials and consideration of the positions expressed by the parties, the applicability of Pittway’s privilege claims may best be considered within three basic categories: documents previously reviewed by the Magistrate, documents related to the Sontrix U.S. Patent, and documents relating to the Sontrix foreign patents.

1. Documents Previously Reviewed by the Magistrate

Prior to the transfer of this case, Detection Systems requested an in camera inspection and review of Pittway documents, which was conducted by Magistrate Olga Jurco in Chicago. The Magistrate determined that attorney-client privilege applied to 14 of the documents presented here for court review (Items 5, 6, 19, 28, 32, 34, 35, 38, 39, 40, 42, 43, 44, 45); therefore, these documents were shielded from discovery. Detection Systems now requests that the court reconsider the Magistrate’s determination.

The court may reconsider discovery matters referred to a Magistrate pursuant to 28 U.S.C. § 636(b)(1)(A) if . the Magistrate’s rulings are “clearly erroneous or contrary to law.” Moreover, in resolving discovery disputes, the Magistrate is afforded broad discretion which will be overruled only if abused. Citicorp v. Interbank Card Ass’n, 478 F.Supp. 756, 765 (S.D.N.Y.1979). After careful inspection and review of these documents, the court finds the Magistrate’s ruling to be neither erroneous nor contrary to law. Accordingly, the Magistrate’s determination that this set of documents is privileged from discovery by Detection Systems is affirmed.

2. Documents Related to the Sontrix U.S. Patent

It is now settled that the attorney-client privilege is applicable to corporate clients such as Pittway as the successor to Sontrix, Upjohn Co. v. United States, 449 U.S. 383, 101 S.Ct. 677, 66 L.Ed.2d 584 (1981); and the essential elements of this privilege have been outlined by Wigmore:

(1) Where legal advice of any kind is sought (2) from a professional legal adviser in his capacity as such, (3) the communications relating to that purpose, (4) made in confidence (5) by the client, (6) are at his instance permanently protected (7) from disclosure by himself or by the legal adviser, (8) except the protection to be waived.

VIII J. Wigmore on Evidence § 2292 (McNaughten Rev. 1961). This definition provides the basic framework for analyzing Pittway’s claims of privilege. The burden of establishing the elements of attorney-client privilege falls squarely upon Pittway, the party asserting the privilege, Fisher v. United States, 425 U.S. 391, 96 S.Ct. 1569, 48 L.Ed.2d 39 (1976), and the mere existence of an attorney-client privilege does not raise a presumption of confidentiality. Duplan Corp. v. Deering Milliken, Inc., 397 F.Supp. 1146 (D.S.C.1975).

In patent cases such as this, several types and categories of documents have been held to be not protected by attorney-client privilege. These include:

(1) Client authorizations to file applications and to take other steps necessary to obtain patent registration;
(2) Compendiums of filing fees and requirements in the United States and foreign countries for patent applications;
[155]*155(8) Resumes of patent applications filed and registrations obtained or rejected (including dates and file or registration numbers);
(4) Technical information communicated to the attorney but not calling for a legal opinion or interpretation and meant primarily for aid in completing patent applications;
(5) Communications which pass through an attorney who acts only as a conduit for a third party;
(6) Transmittal letters or acknowledgement of receipt letters devoid of legal advice or requests for such advice and disclosing no privileged matters.

Duplan Corp. v. Deering Milliken, Inc., 397 F.Supp. at 1168; Jack Winter, Inc. v. Koratron Co., 54 F.R.D. 44, 47 (N.D.Cal.1971).

(7) Patent disclosures, draft patent applications, technical non-legal material related to the final patent, or studies of the prior art.

Sneider v. Kimberly-Clark Corp., 91 F.R.D. 1, 5, 7 (N.D.Ill.1980); Choat v. Rome Industries, Inc., 462 F.Supp. 728, 732 (N.D.Ga.1978).

Applying these standards to the documents presented to the court for review, it is clear that many of these materials cannot be considered protected by attorney-client privilege. A significant number of these documents are transmittal letters which are devoid of legal advice and disclose nothing which could possibly be considered privileged. Another group of documents comprise draft patent applications to which no privilege attaches. In those instances where both privileged and non-privileged material exist, the privileged material has been deleted. A summary of the court’s determination concerning which documents may be produced to Detection Systems under these standards is contained in Appendix A of this decision.

Pittway also claims that these same documents are protected by work-product immunity from discovery. Yet, it is axiomatic that in order to claim this type of immunity, such documents must be prepared in anticipation of litigation or in preparation for trial. Federal Rules of Civil Procedure, Rule 26(b)(3). Although the work-product immunity applies to materials prepared when litigation is merely a contingency, Stix Products, Inc. v. United Merchants and Manufacturers, 47 F.R.D. 334 (S.D.N.Y.1969), more than the mere possibility of litigation must be evident. In patent cases, work-product immunity is not “extended to preparations for ex parte proceedings such as patent proceedings,” Choat v. Rome Industries, Inc., 462 F.Supp. at 732; Hercules v. Exxon Corp., 434 F.Supp. 136, 152 (D.Del.1977). In reviewing this set of documents, it is clear that the materials were prepared and concern an ex parte proceeding before the Patent Office, and therefore, Pittway’s claims of immunity cannot shield the documents from discovery.

3. Documents Related to the Sontrix Foreign Patents

At the court’s request, the parties have submitted additional briefs concerning the applicability of attorney-client privilege to foreign patent agents in various nations. As a general rule, “no communications from patent agents, whether American or foreign, are subject to an attorney-client privilege in the United States,” Duplan Corp. v. Deering Milliken, Inc., 397 F.Supp. at 1169.

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96 F.R.D. 152, 220 U.S.P.Q. (BNA) 716, 1982 U.S. Dist. LEXIS 16284, Counsel Stack Legal Research, https://law.counselstack.com/opinion/detection-systems-inc-v-pittway-corp-nywd-1982.