Jack Winter, Inc. v. Koratron Co.

N.D. California

Jack Winter, Inc. v. Koratron Co.

54 F.R.D. 44, 172 U.S.P.Q. (BNA) 201, 1971 U.S. Dist. LEXIS 10668, 1972 Trade Cas. (CCH) 74,037

District Court, N.D. California·Decided November 22, 1971·No. Civ. A. Nos. 49392, 47273, 49671, 50063, 50854, 51301, 51653, 51691, 49558, 49913, 50827, 51281, 51650, 51654, C-701252 and C-701443·Published·Cited by 50 cases

Opinion

MEMORANDUM OPINION RE PRIVILEGED DOCUMENTS

WILLIAM E. DOYLE, District Judge.

In this multidistrict litigation there has arisen a problem late in the proceedings having to do with numerous documents in the files of Koratron. In the [46]*46course of discovery proceedings, just pri- or to the final closing, it appeared that these documents existed. We determined that there should be in camera inspection of these files and we have proceeded to do so.

A total of 415 documents were delivered, and an effort has been made to list and classify them and, finally, to carefully examine each and every one so as to avoid any group or mass ruling. Following the initial inspection, tentative distinctions were made and the documents were listed, described and submitted to counsel. Following this, briefs were filed by both sides addressed to these tentative drafts. Finally, oral arguments were carried out and we now submit our final rulings.

The effort has been to protect fully the confidentiality which a client would ordinarily anticipate in his dealings with his lawyer. At the same time, the relationships here are those of patentee and licensee and the issues involved range from patent validity and misuse to fraud on the Patent Office and alleged antitrust violations. Thus, rights of discovery have had to have been carefully weighed and considered.

One other complicating factor has been that during the period in question Koratron’s counsel exercised a broad authority to transact business matters surrounding and relating to the obtaining of patents not only in the United States but also in foreign countries. The consequence of this was that much routine business flowed through the hands of the attorneys and this was seemingly carried out without any consideration of the fact that it was confidential. Nevertheless, in all of those instances in which the documents disclose legal analysis and conclusions on the part of the lawyers the privilege has been found to obtain whether the memorandum or letter was addressed to the client or to correspondent counsel or to patent agents in Great Britain. In numerous instances our tentative rulings have been changed and we have reclassified documents as confidential which had been tentatively classified as non-confidential.

The majority of the documents here classified as privileged are generally client requests for legal advice and attorney responses thereto. The remainder of the privileged documents involve either client communications intended to keep the attorney apprised of continuing business developments, with an implied request for legal advice based thereon, or self-initiated attorney communications intended to keep the client posted on legal developments and implications, including implications of client activity noticed by the attorney but with regard to which no written request for advice from the client has been found. This approach is agreeable to our earlier expressions in Winter, Inc. v. Koratron Co., 50 F.R.D. 225 (1970). and cases there cited.

A number of documents have been ruled to fall outside the boundaries of the attorney-client privilege. This has been done only after most careful consideration of the actual contents of each document. The determinations have been particularly difficult in instances of communications primarily factual in nature. Generally, when factual information was communicated so that the attorney could disclose it in a patent or trademark application, the communication was viewed as non-privileged. On the other hand, documents containing considerable technical factual information but which were nonetheless primarily concerned with giving legal guidance to the client were classified as privileged. In other words, doubts have been resolved in favor of the privilege.

As is not infrequently the case in patent matters, the problem of classification [47]*47here was particularly troublesome as the attorneys for Koratron performed virtually every task incident to filing for and obtaining a patent or trademark registration. They were so closely associated with the activities of Koratron that picking out from the mass of documents presented to the court those which involved non-legal transactions not soliciting or offering legal advice,¹ and the separating of these from documents which did involve the exercise of the attorney's art, became at times an arduous and complex exercise. Yet we have sought to not lose sight of the importance of the distinction, for it is important that the attorney-client privilege not be downgraded in the interests of expedient results. At the same time, corporate dealings are not made confidential merely by funnelling them routinely through an attorney.

Thus, we have taken the view that many of the tasks performed for Koratron by White, such as determining the requirements for filing, the expense of filing, writing checks to cover filings and obtaining photostatic copies of certain current registrations, did not under any stretch of the imagination involve the attorney’s art. But the court is also aware that in view of the current state of the law, especially in antitrust as it affects patent and trademark claims, the attorney’s counsel is vital to the conduct of business. The client therefore does have a right to expect that the confidentiality of interchange designed to promote the exercise of this counsel will be preserved. See Chore-Time Equipment, Inc. v. Big Dutchman, Inc., 255 F.Supp. 1020, 1021 (W.D.Mich.1966); Baird v. Koerner, 279 F.2d 623, 629 (9th Cir. 1960).

Documents classified as non-privileged in the present case consist principally of the following:

(1) Client authorizations to file applications and take other steps necessary to obtain registration;

(2) Papers submitted to the Patent Office;

(3) Compendiums of filing fees and requirements in the United States and foreign countries for various types of applications ;

(4) Résumés of applications filed and registrations obtained or rejected (including dates and file or registration numbers);

(5) Technical information communicated to the attorney but not calling for a legal opinion or interpretation and meant primarily for aid in completing patent applications;

(6) Business advice such as that related to product marketing; and

(7) Communications whose confidentiality Koratron has waived.

On the other hand, documents written by or obtained from third parties, even though attached to communications seeking or giving legal advice, have been separated and classified as non-privileged. See Giordani v. Hoffman, 278 F.Supp. 886 (E.D.Pa.1968).

Matters that could be classed as attorney work product, such as preliminary drafts of legal documents, license agreements and/or assignments, have been classified as privileged.

Following oral argument and the submission of memoranda of law on the subject of privilege by both sides, the court has, as noted above, modified a number of the tentative rulings. In all instances, the changes involved transferring documents previously ruled non-privileged to the category of privileged. Arguments were advanced with respect to a number [48]

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