Goss v. MAN Roland, et al.

2006 DNH 063

Opinion

Goss v . MAN Roland, et a l . 03-CV-513-SM 06/02/06 UNITED STATES DISTRICT COURT

DISTRICT OF NEW HAMPSHIRE

Goss International Americas, Inc., Plaintiff

v. MAN Roland, Inc. and MAN Roland Druckmaschinen AG, Defendants Civil N o . 03-cv-513-SM Opinion N o . 2006 DNH 063 MAN Roland, Inc. and MAN Roland Druckmaschinen AG, Counterclaim Plaintiffs

v. Goss International Americas, Inc. and Heidelberger Druckmaschinen AG, Counterclaim Defendants

O R D E R

In document n o . 1 9 0 , MAN Roland moves to compel

Heidelberger, Goss, and Kenyon & Kenyon (“Kenyon”) 1 to produce

approximately 500 documents that have been withheld from

discovery based upon assertions of attorney-client and/or

attorney work-product privilege. Heidelberger and Goss object.

On December 1 6 , 2005, Heidelberger deposed one of its former

employees, Heins Herbert Baldo Stoltenberg, an attorney who

1 Kenyon & Kenyon is both Goss’s current trial counsel and Heidelberger’s former U.S. patent counsel. served as head of Heidelberger’s patent department before his

retirement. According to MAN Roland, Heidelberger’s questioning

of Stoltenberg elicited privileged information and, therefore,

effected a broad waiver of Heidelberger’s attorney-client

privilege regarding the ’587, ’668, and ’680 patent applications

as well as two Heidelberger files.2 In addition, MAN Roland

argues that Goss (and Kenyon) waived its privilege by

deliberately producing three privileged documents, two internal

Heidelberger “decision sheets”3 and an affidavit given in 1994 by

Heidelberger’s pre-Kenyon patent counsel.4 MAN Roland also

argues, somewhat parenthetically and in a conclusory manner, that

Heidelberger, Goss, and Kenyon have waived the pertinent

privileges by providing deficient privilege logs.5

2 MAN Roland further contends that because the privilege at issue was/is Heidelberger’s to waive, Goss is bound by Heidelberger’s waiver. 3 Those decision sheets, which purportedly contain legal advice given by Stoltenberg and a subordinate to Heildelberger management concerning the prosecution and abandonment of the ’587 application, were produced by Goss. 4 That affidavit, which assertedly discloses legal advice given to Heildelberger concerning the prosecution and abandonment of the ’587 application, was produced by Kenyon. 5 Predictably, Heidelberger counters MAN Roland’s claim of privilege-log deficiency by contending that MAN Roland’s log was even worse (“Notwithstanding that MAN Roland’s own privilege logs suffer to an even larger extent from the same deficiencies . . . ” ) . That sort of argument is neither helpful nor persuasive.

2 MAN Roland’s motion suffers from two principal problems.

First, it is far too vague regarding the specific privileged

communications Heidelberger, Goss, and Kenyon are alleged to have

disclosed. Rather than saying that Party A disclosed that

Attorney X had provided it a particular piece of legal advice,

MAN Roland simply cites to entire documents, or multi-page

sections of the Stoltenberg deposition, and presumes that the

court will identify the privileged material. Second, the scope

of relief MAN Roland seeks is far too broad; if any privilege has

been waived, the waiver extends only to communications concerning

the prosecution of the ’587 application. Not only is MAN

Roland’s motion plainly deficient, but the facts of this case

(i.e., Goss’s status as an assignee of Heidelberger’s patents,

and as a company once wholly owned by Heidelberger, which is also

a party) create all manner of potentially complicated legal

issues concerning precisely whose privilege is at stake and who

may waive that privilege. As well, it is not clear from MAN

Roland’s argument whether Stoltenberg is to be considered an

attorney, a client, or both, depending upon who he was

communicating with at any given time. However, there is no need

to reach those potentially complicated legal issues.

To begin, neither the Stoltenberg deposition nor the

Heidelberger decision sheets appear to disclose any privileged

3 attorney-client communications, which means that neither

Heidelberger’s conduct of the deposition nor Goss’s production of

the decision sheets effected a waiver of privilege. The

attorney-client privilege protects confidential communications

between attorneys and clients seeking legal advice. United

States v . Bisanti, 414 F.3d 1 6 8 , 171 (1st Cir. 2005) (citing

Cavallaro v . United States, 284 F.3d 236, 245 (1st Cir. 2002)).

The pages of the Stoltenberg deposition cited by MAN Roland

describe few if any communications, and several of those, such as

conversations between Stoltenberg and his subordinate, M r .

Bogert, do not qualify as attorney-client communications. And,

as noted above, MAN Roland never really indicates whether

Stoltenberg is a provider of legal advice to his employers or his

employers’ representative in receiving legal advice from Kenyon.

The Heidelberger decision sheets are cryptic at best, and MAN

Roland does not adequately explain how they reflect or embody a

specific confidential communication between a particular attorney

and client.

All that remains is MAN Roland’s contention that Kenyon’s

production of the Tarolli affidavit effected a broad waiver of

Heidelberger’s and/or Goss’s attorney-client privilege with

respect to any communications pertaining to the prosecution of

the ’587, ’668, and ’660 patent applications. First some

4 background. During the late 1980s and early 1990s, Thomas

Tarolli of Tarolli, Sundheim & Covell prosecuted patents for

Harris Graphics Corporation (“HGC”) which, after a series of

corporate acquisitions and name changes, became Goss. In 1989,

Tarolli filed the ’587 application. On February 2 7 , 1991, the

PTO issued a final rejection of that application. On April 2 ,

1991, Tarolli sent HGC’s patent administrator, Peter Loftus, a

letter in which he informed Loftus that HGC “might want to

consider letting the application lapse.” (Pezzano Decl.

(document n o . 2 4 0 ) , Ex. C (Tarolli A f f . ) , ¶ 6.) On January 1 0 ,

1994, Tarolli executed an affidavit in which he described the

content of the April 2 , 1991, letter to Loftus. The record is

silent regarding the context in which Tarolli offered the 1994

affidavit. At some point during discovery in this case, Kenyon

(which replaced Tarolli’s firm as the U.S. patent prosecutor for

HGC/Heidelberg Harris) produced Tarolli’s 1994 affidavit.

As a preliminary matter, and notwithstanding MAN Roland’s

contention to the contrary (see MAN Roland’s Mem. (document n o .

190, attach. 1 ) at 5 ) , it does not appear that Kenyon disclosed

any confidential information. It did not produce the letter from

Tarolli to Loftus, which arguably contained legal advice.

Rather, Kenyon produced Tarolli’s affidavit, which described the

letter to Loftus. Any disclosure of confidential information was

5 effected by Tarolli’s 1994 affidavit, not by Kenyon’s production

of that affidavit ten years later.

Moreover, MAN Roland has failed to demonstrate its

entitlement to a broad subject-matter waiver of the counterclaim-

defendants’ attorney-client privilege. “Virtually every reported

instance of an implied waiver extending to an entire subject

matter involves a judicial disclosure, that i s , a disclosure made

in the course of a judicial proceeding.” In Re Keeper of Records

(Grand Jury Subpoena Addressed to XYZ Corp.), 348 F.3d 1 6 , 24

(1st Cir. 2003) (citing von Bulow v . von Bulow (In re von Bulow),

828 F.2d 9 4 , 103 (2d Cir. 1987)). Waiver regarding an entire

subject matter is necessary after judicial disclosure because, in

that setting, “the likelihood of prejudice looms: once a litigant

chooses to put privileged communications at issue, only the

revelation of all related exchanges will allow the truth-seeking

process to function unimpeded.” In re Keeper of Records, 348

F.3d at 2 4 . In other words, “[w]here a party has not thrust a

partial disclosure into ongoing litigation, fairness concerns

neither require nor permit massive breaching of the attorney-

client privilege.” Id. at 25 (emphasis added).

Here, MAN Roland has not demonstrated that either

Heidelberger or Goss has thrust a partial disclosure of

6 privileged communication into this litigation. I f , indeed, the

actual disclosure of Tarolli’s advice was effected by means of

the 1994 affidavit, that disclosure can hardly be considered an

act by Heidelberger or Goss undertaken for advantage in this

litigation, twelve years later. Or if the recent production of

the 1994 affidavit – perhaps best characterized as the disclosure

of a disclosure of a privileged communication – even qualifies as

a disclosure of confidential attorney-client communications,

Kenyon’s production of a document in response to a discovery

request is not the kind of litigation use that results in an

implied waiver of privilege. See In re von Bulow, 828 F.2d at

103. In order to waive the privilege through disclosure, the

disclosing party must also rely upon the disclosed communication

in some way, but MAN Roland has failed completely to identify any

way in which Heidelberger or Goss has used any confidential

information disclosed in the 1994 affidavit “as both ‘a sword’

and ‘a shield’” or in any other prejudicial manner. See id.

(citing In re Sealed Case, 676 F.2d 793, 809 n.54 (D.C. Cir.

1982)).

The foregoing analysis applies with equal force to the

Stoltenberg deposition and the Heidelberger decision sheets; even

if they do disclose confidential attorney-client communications,

MAN Roland has not demonstrated any use of those materials by

7 Heidelberger or Goss that would support a claim of implied

subject matter waiver.

Two final points. MAN Roland argues in a conclusory way

that Heidelberger and Goss should be denied the benefit of

attorney-client privilege due to the vagueness of their privilege

logs. Without citation to specific substandard entries, that

blanket argument is not persuasive, and the court is not inclined

to comb through the privilege logs, line by line, to determine

which entries pass muster and which do not. MAN Roland also

argues that Kenyon waived the privilege held by Heidelberger

and/or Goss by producing an inadequate privilege log that, among

other things, asserted attorney client and/or work-product

privilege for each of the items it listed. Again, the court is

not inclined to comb through that log, item by item, to determine

its adequacy on the strength of a diffuse general allegation.

For the reasons given, MAN Roland’s motion to compel

(document no. 190) is denied.

SO ORDERED.

^teven J. McAuliffe S Chief Judge

June 2, 2006

8 cc: Daniel E . Will, Esq. Hugh T . Lee, Esq. Richard S . Gresalfi, Esq. Georg C . Reitboeck, Esq. Mark A . Hannemann, Esq. Michael J. Lennon, Esq. T . Cy Walker, Esq. Danielle L . Pacik, Esq. Jonathan M . Shirley, Esq. Alfred H . Hemingway, Jr., Esq. Irvin D. Gordon, Esq. Martin B . Pavane, Esq. Michael J. Songer, Esq. Shari R. Lahlou, Esq. Sidney R. Bresnick, Esq. Teodor J. Holmberg, Esq. Richard D. Margiano, Esq. John F. Sweeney, Esq. Steven F. Meyer, Esq. Tony V . Pezzano, Esq. Bruce W . Felmly, Esq. Seth J. Atlas, Esq. Anthony S . Augeri, Esq.