Kai USA Ltd. v. Camillus Cutlery Co.

224 F.R.D. 326, 59 Fed. R. Serv. 3d 1225, 2004 U.S. Dist. LEXIS 21503
CourtDistrict Court, E.D. New York
DecidedOctober 27, 2004
DocketNo. 04 MISC. 177
StatusPublished
Cited by5 cases

This text of 224 F.R.D. 326 (Kai USA Ltd. v. Camillus Cutlery Co.) is published on Counsel Stack Legal Research, covering District Court, E.D. New York primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Kai USA Ltd. v. Camillus Cutlery Co., 224 F.R.D. 326, 59 Fed. R. Serv. 3d 1225, 2004 U.S. Dist. LEXIS 21503 (E.D.N.Y. 2004).

Opinion

MEMORANDUM OF DECISION AND ORDER

SPATT, District Judge.

The present motion to quash is before this Court on the miscellaneous docket, and arises in the context of a patent infringement suit brought in the District Court for the Western District of Oregon by plaintiff Kai USA Ltd., d/b/a Kershaw Knives (“Kershaw” or the Plaintiff), and against the defendant Camillus Cutlery Company (“Camillus” or the Defendant). Michael A. Kroll, Esq. (“Kroll”), a non-party patent attorney, moves this Court under Rule 45(c) of the Federal Rules of Civil Procedure to quash the subpoena duces tecum dated July 12, 2004, and served on Kroll by the Defendant in the underlying infringement action. Kroll asserts that the documents requested are privileged. For the following reasons, the motion is denied.

I. BACKGROUND

The underlying action pending in the District of Oregon involves an allegation that the Defendant infringed on U.S. Patent No. 6,145,202 (the “'202 patent”), purportedly invented by one Kenneth Onion and now owned by the Plaintiff. Initially, the application for the 202 patent was rejected by the U.S. Patent and Trademark Office due to the existence of an earlier application, U.S. Patent No. 5,802,722 (the “'722 patent”), which was filed by Kroll on behalf of named inventors Michael Maxey and Helga Maxey.

After the 202 patent application was rejected, Plaintiff obtained an assignment of the 722 patent from the Maxeys and filed a formal request for the named inventor to be changed to Kenneth Onion, which was granted by the U.S. Patent and Trademark Office. Subsequently, the '202 patent was issued because Onion was now the named inventor of both the '722 and '202 patents, and thus, the '722 patent was no longer considered prior art.

The '722 patent is not alleged to be infringed by the Plaintiff in the underlying action, nor is its validity or inventorship at issue. Instead, Camillus seeks to defend the underlying action by obtaining evidence regarding the '722 patent that Kroll prepared and filed. On July 12, 2004, Defendant issued a subpoena duces tecum on Kroll seeking, among other things, “[a]ll documents and things referencing, evidencing, or otherwise relating to the prosecution of the application issuing as the '722 patent,” and “[a]ll documents evidencing or referencing the date on which Michael and/or Helga Maxey first contacted you.” (Kroll’s Mem. of Law Ex. A). Plaintiff served the subpoena despite Kroll’s prior written objection that the documents [328]*328sought were protected by the attorney-client privilege.

On July 22, 2004, Kroll filed this motion to quash the subpoena claiming that the documents and date are protected by the attorney-client privileged. On the other hand, the Defendant seeks an order in this Court compelling the production of: (1) any responsive documents not protected by the attorney-client privilege; and (2) a privilege log identifying and describing all responsive documents to which Kroll believes a privilege applies. The Defendant also requests that all privileged documents be turned over under the theory that the communications were in furtherance of the commission of a fraud.

II. DISCUSSION

Rule 45 of the Federal Rules of Civil Procedure protects non-parties subject to a subpoena by vesting the court in which the subpoena was issued with the power to “quash or modify the subpoena if it ... requires disclosure of privileged or other protected matter and no exception or waiver applies.” Fed.R.Civ.P. 45. The party claiming the privilege has the burden of establishing the essential elements of the privilege. United States v. Construction Prods. Research, 73 F.3d 464, 473 (2d Cir., 1996); von Bulow v. von Bulow, 811 F.2d 136, 144 (2d Cir.1987). Furthermore, Rule 45 requires that the party claiming a privilege prepare a privilege log detailing “the nature of the documents, communications, or things not produced that is sufficient to enable the demanding party to contest the claim.” Fed.R.Civ.P. 45(d)(2). Failure to submit a privilege log may be deemed a waiver of the underlying privilege claim. Dorf & Stanton Communications, Inc. v. Molson Breweries, 100 F.3d 919, 923 (Fed.Cir.1996); see also In re Grand Jury Subpoena, 274 F.3d 563, 576 (1st Cir.2001); GFL Advantage Fund, Ltd. v. Colkitt, 216 F.R.D. 189 (D.D.C.2003).

In this case Kroll did not prepare a privilege log in response to the subpoena as required by Rule 45. Instead, Kroll brought this motion, claiming that the preparation of a log would reveal the date upon which Kroll first met with the Maxeys. Kroll submits that the date is protected by the privilege because its disclosure may shed light on his clients’ date of invention, if one were to infer that the date of invention would come before the commencement of the attorney-client relationship. Thus the Court must examine whether the date when an attorney-client relationship is formed is protected by the attorney-client privilege.

Fed.R.Evid. 501 requires that federal law govern the analysis of the attorney-client privilege in any action arising out of federal law. See United States v. Goldberger & Dubin, P.C., 935 F.2d 501, 505 (2d Cir. 1991); von Bulow v. von Bulow, 811 F.2d 136, 141 (2d Cir.1987). Generally, a court looks to Federal Circuit law when deciding issues unique to patent law. In re Spalding Sports Worldwide, Inc., 203 F.3d 800, 803 (applying Federal Circuit law in reviewing whether an invention record was a communication to an attorney). However, a court applies the law of the circuit in which the district court sits on non-patent issues. Dorf & Stanton, 100 F.3d at 922 (applying Second Circuit law in reviewing whether attorney-client privilege applied to an order compelling discovery). The key inquiry is whether the issue implicates or is essentially related to patent law. In re Spalding, 203 F.3d at 803. It has been held that “[a]n order quashing a subpoena is not unique to patent law.” Truswal Systems Corp. v. Hydro-Air Engineering, Inc., 813 F.2d 1207, 1209 (Fed. Cir.1987). Here, the existence of a patent is irrelevant to the issue of whether the date of the commencement of an attorney-client relationship should be privilege.

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Bluebook (online)
224 F.R.D. 326, 59 Fed. R. Serv. 3d 1225, 2004 U.S. Dist. LEXIS 21503, Counsel Stack Legal Research, https://law.counselstack.com/opinion/kai-usa-ltd-v-camillus-cutlery-co-nyed-2004.