Santrade, Ltd. v. General Electric Co.

150 F.R.D. 539, 27 U.S.P.Q. 2d (BNA) 1446, 1993 U.S. Dist. LEXIS 18489, 1993 WL 335395
CourtDistrict Court, E.D. North Carolina
DecidedApril 15, 1993
DocketNo. 90-107-CIV-7-D
StatusPublished
Cited by26 cases

This text of 150 F.R.D. 539 (Santrade, Ltd. v. General Electric Co.) is published on Counsel Stack Legal Research, covering District Court, E.D. North Carolina primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Santrade, Ltd. v. General Electric Co., 150 F.R.D. 539, 27 U.S.P.Q. 2d (BNA) 1446, 1993 U.S. Dist. LEXIS 18489, 1993 WL 335395 (E.D.N.C. 1993).

Opinion

ORDER

McCOTTER, United States Magistrate Judge.

This patent infringement action is before the court on the motion of General Electric Company (GE) for an order compelling plaintiffs, Santrade, Ltd., and Sandvik Special Metals Corporation (referred to here as Sandvik) to produce to GE certain documents withheld from discovery on the basis of attorney-client privilege.

The attorney-client privilege protects the “substance of confidential communications from client to attorney.” Republican Party of North Carolina v. Martin, 136 F.R.D. 421, 426 (E.D.N.C.1991). The privilege also protects legal advice that could “arguably reveal a client’s confidences.” Id.

A party may withhold documents from discovery on the basis of privilege if each of the following elements applies to the document:

‘(1) the asserted holder of the privilege is or sought to become a client; (2) the person to whom the communication was made (a) is a member of the bar of a court, or his subordinate and (b) in connection with the communication is acting as a lawyer; (3) the communication relates to a fact of which the attorney was informed (a) by his client (b) without the presence of strangers (c) for the purpose of securing primarily (i) an opinion of law or (ii) legal services or (iii) assistance in some legal proceeding, and not (d) for the purpose of committing a crime or tort; and (4) the privilege has been (a) claimed and (b) not waived by the client.’

Republican Party of North Carolina, 136 F.R.D. at 425-426 (quoting N.C. Elec. Membership Corp. v. Carolina Power & Light Co., 110 F.R.D. 511, 513 (M.D.N.C.1986); Burroughs Wellcome Co. v. Barr Laboratories, Inc., 143 F.R.D. 611, 615 (E.D.N.C.1992) (quoting United States v. Jones, 696 F.2d 1069, 1072 (4th Cir.1982)).

The party asserting the privilege has “the burden of persuasion as to each element of the privilege.” Republican Party of North Carolina, 136 F.R.D. at 426 (emphasis in original). Under Fourth Circuit law, the privilege is strictly construed. United States v. Jones, 696 F.2d 1069 (4th Cir.1982).

The original attorney-client privilege claims were made by Sandvik in detailed document listings provided to GE during discovery. Sandvik first contends that GE’s motion is untimely. It appears that GE’s motion was timely filed but that the memorandum in support was filed four days after the cut-off date for filing pre-trial motions. The timeliness objection is overruled.

Sandvik has provided GE with three detailed lists of withheld documents. These lists appear as Exhibits A and B in the McNally Declaration accompanying GE’s motion to compel. These lists include identification of the date, article, and recipient(s) of the document, the identity of others copied with the document, the privilege invoked, and a description of the general subject matter of the document. These lists are in the format [543]*543suggested in Duplan Corp. v. Deering Milliken, 397 F.Supp. 1146, 1156 (D.S.C.1974).

GE has divided the contested documents into Groups I, II, and III and further divided Groups I and II into sub-categories. See Exhibits B, C, and D of Declaration of Jeremy Lack. These sub-categories correspond with GE’s specific arguments as to why the identified documents are not protected by attorney-client privilege. Documents may appear in one or more groups and/or subcategories. This court’s order may refer to a document more than once because the court has found that several documents are not protected by attorney-client privilege for one or more reasons. Furthermore, the court has found some documents to be unprotected for different reasons than assigned by GE. Because of the complexity of this case, this court decided that an in camera inspection of the documents would be necessary to properly decide the motion. See Burroughs Wellcome, 143 F.R.D. at 614. The court has conducted the in camera review.

In response to GE’s motion, Sandvik has re-evaluated its claim of attorney-client privilege and has agreed to voluntarily produce to GE some of the documents, provided GE stipulates that it will not assert this production as a waiver of attorney-client privilege as to any further documents. GE refuses to enter such stipulation.

Of the documents which Sandvik is willing to produce subject to a stipulation against waiver, this court concludes that the following do not contain any client confidences:

Documents Nos. 63, 73, 92, 94, 100, 101, 102, 108, 109, 114, 119, 129, 130, 148, 152, 153, 156, 157, 158, 160, 161, 166, 202 and 216.

Some of the information is technical or business information which is not protected by the attorney-client privilege as well as not containing client confidences communicated to counsel for legal advice or opinion. Accordingly, Sandvik is ORDERED to forthwith disclose to GE the above-mentioned documents. In respect to Document No. 204, the second page contains attorney-client confidences. However, Sandvik is ORDERED to produce the first page, which does not. Document No. 210 also contains attorney-client confidences. Accordingly, the motion to compel is DENIED as to the second page of Document No. 204 and all of Document No. 210.

GE contends that the Sandvik has failed to provide in the affidavits “precise and certain reasons” for upholding their claims of privilege. See North Carolina Electric Membership Corp. v. Carolina Power & Light, 110 F.R.D. 511, 515 (M.D.N.C.1986). The affidavits together with the court’s in camera inspection provide a sufficient basis for the court to decide the privilege claims.

GROUP I DOCUMENTS

GE contends that Sandvik has not established that Group 1(a) documents contain “client confidences.” First, GE argues that the documents do not contain “client confidences” where the person to whom the communication was made is not a member of a bar of a court, is not acting as a lawyer, or is not accorded attorney-client privilege under the law of the foreign country in which the person is domiciled. See Burroughs Wellcome, 143 F.R.D. at 615, 617. GE says, for example, that the Taquist Declaration fails to establish that he is admitted to the bar of any court, is a lawyer or is accorded attorney-client privilege under Swedish law. GE’s argument as to Taquist is without merit. In his affidavit, Exhibit 2 to Plaintiffs’ Memorandum in Opposition to GE’s Motion to Compel Production of Privileged Documents, Taquist says that he is “recognized as an intellectual property attorney under the laws of Sweden, duly registered to practice before the Swedish Patent Office ...” and “authorized to practice before the European Patent Office” and that he is in-house counsel to Santrade and Sandvik. Taquist states that he has reviewed privileged information as patent attorney for Sandvik which, according to Swedish law, he cannot give testimony on unless there is an extraordinary reason, and the Swedish rule on privileged information is similar to that of the State of North Carolina. GE is not entitled to production of Group 1(a) documents for this reason.

GE next contends that Group 1(b) documents do not contain “client confidenc[544]

Free access — add to your briefcase to read the full text and ask questions with AI

Related

MR. DEE'S INC.,et al v. INMAR, INC.
M.D. North Carolina, 2021
Mischler v. Novagraaf Group Bv
District of Columbia, 2019
Cadence Pharmaceuticals, Inc. v. Fresenius Kabi USA, LLC
996 F. Supp. 2d 1015 (S.D. California, 2014)
Williams v. Sprint/United Management Co.
238 F.R.D. 633 (D. Kansas, 2006)
In re Rivastigmine Patent Litigation
237 F.R.D. 69 (S.D. New York, 2006)
SmithKline Beecham Corp. v. Apotex Corp.
232 F.R.D. 467 (E.D. Pennsylvania, 2005)
Deel v. Bank of America, N.A.
227 F.R.D. 456 (W.D. Virginia, 2005)

Cite This Page — Counsel Stack

Bluebook (online)
150 F.R.D. 539, 27 U.S.P.Q. 2d (BNA) 1446, 1993 U.S. Dist. LEXIS 18489, 1993 WL 335395, Counsel Stack Legal Research, https://law.counselstack.com/opinion/santrade-ltd-v-general-electric-co-nced-1993.