Minatronics Corp. v. Buchanan Ingersoll, P.C.

23 Pa. D. & C.4th 1, 1995 Pa. Dist. & Cnty. Dec. LEXIS 179
CourtPennsylvania Court of Common Pleas, Alleghany County
DecidedFebruary 14, 1995
Docketno. GD92-7496
StatusPublished
Cited by6 cases

This text of 23 Pa. D. & C.4th 1 (Minatronics Corp. v. Buchanan Ingersoll, P.C.) is published on Counsel Stack Legal Research, covering Pennsylvania Court of Common Pleas, Alleghany County primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Minatronics Corp. v. Buchanan Ingersoll, P.C., 23 Pa. D. & C.4th 1, 1995 Pa. Dist. & Cnty. Dec. LEXIS 179 (Pa. Super. Ct. 1995).

Opinion

WETTICK, J,

Plaintiff’s motion to compel the return of inadvertently produced documents is the subject of this opinion and order of court.

Minatronics Corporation’s complaint alleges that in March 1986 Minatronics retained the law firm of Buchanan Ingersoll, P.C., to obtain patent protection for a fiber optic cable personal property security system. The supervising attorney assigned to the case set December 31, 1986 as the deadline for filing the application. The attorney whom the law firm assigned to file the patent application never filed an application; however, allegedly he falsely furnished information to Minatronics [3]*3which indicated that an application had been filed. In May 1990, Minatronics first learned that the Buchanan law firm had never filed a patent application. On November 30, 1990, Attorney Robert L. Potter of the law firm of Strassburger, McKenna, Gutnick & Potter instituted this lawsuit on behalf of Minatronics. After learning that Buchanan Ingersoll had failed to file an application, Minatronics also retained Attorney Ansel M. Schwartz, a patent attorney, for the purpose of determining whether Minatronics could obtain any patent protections for the current generation of its fiber optic security system and for the purpose of rendering an opinion as to the patent protection that Minatronics would have received if Buchanan Ingersoll had timely filed a patent application.

Voluminous documents which Minatronics produced inadvertently included December 2, 1991, February 3, 1992, and March 13,1992 letters from Edwin P. Wilson, Minatronics’ president, to Mr. Schwartz.1 These letters are confidential communications between an attorney and a client made in connection with the representation. Consequently, they are protected by the attorney-client privilege unless that privilege has been waived.

Defendants contend that Minatronics waived the privilege by including these letters in the documents which it produced in response to defendants’ discovery requests. Defendants also contend that Minatronics waived the privilege by authorizing Mr. Schwartz to turn over other records involving his representation of Minatronics.

[4]*4I.

The Pennsylvania appellate courts have never addressed the issue of whether counsel’s inadvertent disclosure of documents protected by the attorney-client privilege constitutes a waiver of the privilege. This issue is arising with greater frequency because “the burgeoning of multi-party cases, the availability of xerography and the proliferation of facsimile machines and electronic mail make it technologically ever more likely that through inadvertence, privileged or confidential materials will be produced to opposing counsel.” ABA Committee on Ethics and Professional Responsibility, Formal Opinion 368 (1992) (Inadvertent Disclosure of Confidential Materials).

The issue usually arises during the pre-trial stage of the litigation. The privileged documents are inadvertently produced in response to a discovery request. The party which produced the documents learns of the inadvertent production after the documents have already. been reviewed by the party that received the documents. The party that inadvertently produced the privileged documents now seeks a court order barring the party that received the documents from (1) introducing the documents into evidence at trial, (2) making any reference to the documents for the remainder of the litigation including trial, and (3) giving or showing the documents to any additional persons.2

[5]*5The issue of whether the inadvertent production of privileged documents to an opposing party constitutes a waiver of the attorney-client privilege has been addressed in many reported cases, most of which have been decided within the past 10 years. Most opinions written within the past 10 years refer to three categories or lines of cases.

The first line of cases holds that the production by counsel destroys the privilege. Under this case law, the privilege is lost as soon as counsel makes the privileged documents available to an opposing party; it does not matter whether the documents which counsel produced included documents that counsel did not intend to produce. See e.g., In re Sealed Case, 877 F.2d 976 (D.C. Cir. 1989); Federal Deposit Insurance Corp. v. Singh, 140 F.R.D. 252 (D. Me. 1992); Golden Valley Microwave Foods Inc. v. Weaver Popcorn Company Inc., 132 F.R.D. 204 (N.D. Ind. 1990); International Digital Systems Corp. v. Digital Equipment Corp., 120 F.R.D. 445 (D. Mass. 1988); Champion International Corp. v. International Paper Co., 486 F. Supp. 1328 (N.D. Ga. 1980).

The second line of cases holds that the privilege is never lost through an inadvertent production of a privileged document. Under this line of cases, the protections of the attorney-client privilege are not waived through a truly inadvertent disclosure by counsel provided that counsel takes prompt action to rectify the situation upon discovery of the inadvertent disclosure. See e.g., Stratagem Development Corp. v. Heron International N.V., 153 F.R.D. 535, 543-44 (S.D. N.Y. 1994); Shriver v. Baskin-Robbins Ice Cream Company Inc., 145 F.R.D. 112 (D. Colo. 1992); Georgetown Manor Inc. v. Ethan Allen Inc., 753 F. Supp. 936 (S.D. Florida 1991); Helman v. Murry’s Steaks Inc., 728 F. [6]*6Supp. 1099 (D. Del. 1990); Kansas-Nebraska National Gas Co. Inc. v. Marathon Oil Co., 109 F.R.D. 12 (D. Neb. 1984); Mendenhall v. Barber-Greene Co., 531 F. Supp. 951 (N.D. Ill. 1982).

The third line of cases to which the opinions refer holds that the production of a privileged document may but does not necessarily destroy the privilege, depending upon the relevant circumstances surrounding the production. Although the courts refer to the third line of cases which consider the surrounding circumstances as if this was a single line of cases using a third approach for resolving the issue of whether the inadvertent production of documents waives the attorney-client privilege, the opinions which say that they are using this “middle” approach to decide the issue actually take two very different approaches. One approach modifies the absolute rule that any production destroys the privilege by in certain instances restoring the privilege if the privileged documents were produced despite the exercise of reasonable care. The other approach follows the rule that an inadvertent production does not waive the privilege and considers the circumstances surrounding the production of the privileged documents solely for the purpose of determining whether the production was actually inadvertent.

Most of the opinions which state that they are applying the middle approach refer to a five-factor analysis developed in the cases of Lois Sportswear U.S.A. Inc. v. Levi Strauss & Company, 104 F.R.D. 103 (S.D. N.Y. 1985), wad Hartford Fire Insurance Co. v. Garvey, 109 F.R.D. 323 (N.D. Cal. 1985). As stated in Hartford Fire Insurance:

“To summarize, the recent case of Lois Sportswear, supra, 104 F.R.D. at 105, contains a complete and careful analysis which correctly reflects the majority rule on [7]*7inadvertent production.... The.

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23 Pa. D. & C.4th 1, 1995 Pa. Dist. & Cnty. Dec. LEXIS 179, Counsel Stack Legal Research, https://law.counselstack.com/opinion/minatronics-corp-v-buchanan-ingersoll-pc-pactcomplallegh-1995.