Hercules Inc. v. Exxon Corp.

434 F. Supp. 136, 24 Fed. R. Serv. 2d 1343, 196 U.S.P.Q. (BNA) 401, 1977 U.S. Dist. LEXIS 15700
CourtDistrict Court, D. Delaware
DecidedMay 26, 1977
DocketCiv. A. 3439
StatusPublished
Cited by174 cases

This text of 434 F. Supp. 136 (Hercules Inc. v. Exxon Corp.) is published on Counsel Stack Legal Research, covering District Court, D. Delaware primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Hercules Inc. v. Exxon Corp., 434 F. Supp. 136, 24 Fed. R. Serv. 2d 1343, 196 U.S.P.Q. (BNA) 401, 1977 U.S. Dist. LEXIS 15700 (D. Del. 1977).

Opinion

CALEB M. WRIGHT, Senior District Judge.

Presently before the Court are two discovery motions filed by defendant, Exxon Corp., to compel production of plaintiff’s withheld documents and to compel answers to interrogatories. The motions arise out of an action charging defendant with patent infringement. Defendant has counterclaimed for invalidity, unenforceability and non-infringement. The patent in suit, U.S. Patent No. 3,211,709 to Adamek, et al. (the “Adamek patent”), discloses a type of artificial rubber which is readily sulfur-vulcan-izable according to commonly used methods. The claims cover an elastomeric copolymer consisting of at least two alpha-olefins 1 together with an unsaturated bridged-ring diene 2 as a third monomer. The claims are limited by the requirement that the bridged-ring hydrocarbon contain at least two double bonds, one of which must be in the bridged-ring structure. The location of the second double bond, or of any other double bond, is unspecified. Plaintiff contends that the claims ate broad enough to cover the use, as the third monomer, both of bridged-ring hydrocarbons with double bonds inside a ring structure 3 and of bridged-ring hydrocarbons with one double bond inside the ring structure and a second double bond in a linear side-chain substitu- *142 ent. The allegedly infringing products of defendant are both of the latter variety, with one double bond exocyclic to the ring structure. 4

The U.S. application for the Adamek patent was filed in 1958 by Dunlop Co., Ltd., a British corporation, claiming the priority of two 1957 British applications. Rights to' the application were assigned to Hercules in November, 1961. During the prosecution of the application, an interference was declared between the Adamek application and a U.S. Patent No. 3,000,866 issued to Tar-ney which disclosed and claimed an EPT sulfur-vuleanizable rubber with DCP as the third diene. Adamek was awarded priority on the basis of the British filing dates. The patent issued on October 12, 1965.

I. Motion to Compel Production.

Since filing of the complaint in this action, both parties have engaged in substantial discovery through interrogatories, depositions and requests for production of documents. 5 The present motion to compel production concerns 255 documents which plaintiff claims are protected by attorney-client privilege or work product immunity. Defendant alleges that any protection which might attach to the documents in question is vitiated by fraud or waiver. In support of its allegations of fraud, defendant has presented to this Court a large number of documentary exhibits. The withheld documents were produced to the Court for in camera inspection, together with a copy of the file wrapper of the Adamek application and copies of certain produced documents which defendant claims constitute a waiver of privilege.

For the most part, the disputed documents are communications between Hercules patent department attorneys and members of the Hercules operating divisions or research department or between patent department attorneys and outside counsel, Davis, Hoxie, Faithful and Hapgood. 6 Some communications were also sent to house counsel in Hercules Legal Department. Claims of attorney-client privilege or work product are also made as to certain internal memoranda, drafts and communications of the Patent Department attorneys or of outside counsel. As the documents embrace a wide range of subject matter, they have been classified into the following categories: *143 Plaintiff has submitted a schedule listing the identification of each document and its recipients, and the grounds supporting the claims of attorney-client privilege or work product immunity.

*142 I. Documents relating to the prosecution of the application for the patent in suit.
II. Documents relating to Adamek, et al. v. Tarney, Interference No. 93,018.
III. Documents relating to Hercules v. Copolymer, Civil Action No. 76-25, in the Eastern District of Louisiana.
IV. Documents relating to the present action.
V. Licenses and agreements relating to the patent in suit.
VI. Documents relating to the scope of the Adamek application.
VII. Documents relating to infringement of the Adamek patent.
VIII. Miscellaneous withheld documents.

*143 As with any claim of privilege made in connection with patent matters, the problem of classification into protected and non-proteeted communications is troublesome. Jack Winter, Inc. v. Koratron Company, Inc., 54 F.R.D. 44 (N.D.Cal.1971). Patent attorneys, particularly those employed in corporate patent departments, often serve dual functions — as legal advisers and as business advisers. Communications between those attorneys and members of operating or research departments often concern technical information which may or may not be relevant to particular legal advice requested from the attorney. As to much of that information, the attorney may be acting merely as a conduit, to relay the data to the Patent Office as part of an ex parte patent application. There is a legitimate public interest in insuring that the applicant is not able to circumvent his duty of full disclosure to the Patent Office merely by channeling information into the hands of an attorney. In re Natta, 410 F.2d 187 (3rd Cir. 1969). Defendant’s allegations of fraud and waiver add further complications. Documents which otherwise satisfy the criteria for attorney-client or work product protection may be discoverable if made in furtherance of a fraud on the Patent Office or if the protection has been waived. The Court has, therefore, examined the documents individually at two levels: to determine first whether the document falls within the scope of the claimed protection; and, second, whether that protection has been vitiated by fraud or waived.

Although defendant attempts to resuscitate the question of the applicability of attorney-client and work product protection to patent matters, that dispute appears now to be well settled. Almost every court which has considered the problem in recent years, including the Third Circuit, has found that communications with respect to patent prosecution or litigation matters may be protected, regardless of whether the attorney is outside counsel, “house” counsel or patent department counsel.

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434 F. Supp. 136, 24 Fed. R. Serv. 2d 1343, 196 U.S.P.Q. (BNA) 401, 1977 U.S. Dist. LEXIS 15700, Counsel Stack Legal Research, https://law.counselstack.com/opinion/hercules-inc-v-exxon-corp-ded-1977.