Deuterium Corp. v. United States

19 Cl. Ct. 697, 16 Fed. R. Serv. 3d 955, 1990 U.S. Claims LEXIS 101, 1990 WL 26961
United States Court of Claims·Decided March 12, 1990·No. No. 425-82 C·Published·Cited by 9 cases

Opinion

ORDER

RADER, Judge.

Plaintiff, Deuterium Corporation, seeks compensation from the United States on several counts, including patent infringe[699]*699ment. Plaintiff’s patent, United States Patent No. 4,123,506 (the '506 patent), covers a process for removing hydrogen sulfide from geothermal steam. Plaintiff contends that the United States Department of Energy used the process at The Geysers geothermal power plant in California.

Before the present judge received this case, plaintiff requested extensive discovery from defendant. Defendant refused to comply on the basis of the attorney-client privilege and the work product doctrine. Plaintiff filed motions to compel discovery, to suspend proceedings, to impose sanctions, and more. Defendant’s Brief, No. 425-82C, filed Oct. 13, 1989, Appendix (Def.App.), at A-l-3. Defendant responded with a motion for a protective order.1 Id.

On November 10,1983, the United States Claims Court ordered defendant to deliver to the court 50 documents for in camera inspection. The parties resolved the controversy on ten of the documents. Therefore, on November 25, 1983, defendant filed 40 documents with the court.

On August 31, 1989, during a telephonic status conference, plaintiff orally renewed its motion to compel discovery. Defendant opposed the request. This court ordered defendant to file a status report concerning the advisability of employing a protective order to permit release of the sealed documents.2 On October 13, 1989, defendant filed a memorandum reasserting the attorney-client privilege or the work product doctrine as a bar to release of the documents.

After document-by-document review of the record with both attorneys offering oral argument, this court orders the release of 17 documents. Either the attorney-client privilege or the work product doctrine applies to the remaining documents.

Attorney-Client Privilege
Federal Rule of Evidence 501 states: [T]he privilege of a witness, person, government, State, or political subdivision thereof shall be governed by the principles of the common law as they may be interpreted by the courts of the United States in light of reason and experience.

Fed.R.Evid. 501. The oldest common law privilege applies to communications between attorneys and clients. Upjohn Co. v. United States, 449 U.S. 383, 389, 101 S.Ct. 677, 682, 66 L.Ed.2d 584 (1981). The privilege “encourage[s] full and frank communication between attorneys and their clients and thereby promote[s] broader public interests in the observance of law and administration of justice.” Upjohn, 449 U.S. at 389, 101 S.Ct. at 682. The attorney-client privilege protects a client’s confidential communications to an attorney during legal counselling. Id.; American Standard Inc. v. Pfizer Inc., 828 F.2d 734, 745 (Fed.Cir.1987).

Plaintiff argues that communications from Government employees to Government lawyers should not receive full protection of the attorney-client privilege. The Supreme Court, however, applied the privilege to prevent disclosure of communications from corporate employees to corporate counsel. Upjohn, 449 U.S. at 383, 101 S.Ct. at 677. The Court expressly rejected efforts to confine coverage of the privilege to those managers with control over corporate affairs. Id. at 392-93, 101 S.Ct. at 684-85. The Court reasoned that mid- and lower-level employees can embroil the corporation in legal difficulties. Id. at 391, 101 S.Ct. at 683. Therefore, to ensure full disclosure of pertinent information to counsel, the Court applied the privilege to protect communications from these employees as well. Id. This court applies the same reasoning and result to Government employees at all levels.

[700]*700Plaintiff also suggests that the attorney-client privilege may not apply to communications with a Government employee who is not acting in the role of an attorney. The United States Court of Claims explained that the General Counsel or Solicitor of an agency acts as an attorney for other officials of the agency. Cities Serv. Helex, Inc. v. United States, 216 Ct.Cl. 470, 476 (1978). The privilege also applies to communications with other agency lawyers who provide legal counsel in connection with the impending litigation. General Elec. Co. v. United States, 176 U.S.P.Q. 83, 85-87 (1972); Air Shield, Inc. v. Air Reduction Co., 46 P.R.D. 96, 159 U.S.P.Q. 376 (N.D.Ill.1968).

Protection of communications from the attorney to the client depends on the circumstances of each case. American Standard, 828 F.2d at 745. To the extent that attorney communications reveal information received from the client, the privilege bars disclosure. Id. Moreover, the United States Court of Appeals for the Federal Circuit rejected the notion that patent-validity opinions are never protected by the attorney-client privilege. American Standard, 828 F.2d at 745-46. Rather, the Federal Circuit placed on the trial court the obligation to determine whether attorney-to-client communications contain confidential information. Id. at 746. Specifically, this court must determine if attorney-to-client communications “disclose, directly or indirectly,” information received from the client. Id. at 745.

Work Product Doctrine
RUSCC 26(b)(2) states:
[A] party may obtain discovery of documents ... prepared in anticipation of litigation or for trial ... only upon a showing that the party seeking discovery has substantial need of the materials ... and that he is unable without undue hardship to obtain the substantial equivalent of the materials by other means. In ordering discovery of such materials when the required showing has been made, the court shall protect against disclosure of the mental impressions, conclusions, opinions, or legal theories of an attorney or other representative of a party concerning the litigation.

RUSCC 26(b)(2). The Supreme Court has acknowledged that an attorney must work in an atmosphere of privacy. Hickman v. Taylor, 329 U.S. 495, 510, 67 S.Ct. 385, 393, 91 L.Ed. 451 (1946). Otherwise, “much of what is now put down in writing would remain unwritten.” Id. at 511, 67 S.Ct. at 393. Thus, intrusions on an attorney’s thought and work products would impede “the interests of clients and the cause of justice.” Id.

RUSCC 26 affords “special protection to work product revealing the attorney’s mental processes.” Upjohn, 449 U.S. at 400, 101 S.Ct. at 688.3 In the case of documents disclosing attorney mental processes, the Supreme Court required a stronger showing than the “substantial need” and “without undue hardship” standards. Id. at 401, 101 S.Ct. at 688.

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Deuterium Corp. v. United States, 19 Cl. Ct. 697, 16 Fed. R. Serv. 3d 955, 1990 U.S. Claims LEXIS 101, 1990 WL 26961 (cc 1990).

19 Cl. Ct. 697 (Deuterium Corp. v. United States) — published by Counsel Stack Legal Research, free access to 12M+ legal documents.

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