Waiver of Attorney-Client Privilege

May 23, 2011

The district court determined that plaintiff had waived the attorney-client privilege because the plaintiff's in-house counsel revealed too much information in answering questions during a deposition. The defendants raised the waiver issue in the context of a motion to compel by contending that the plaintiff's in-house counsel's answers during a deposition revealed attorney-client communications and therefore waived the privilege regarding the plaintiff's motivation in seeking the reissuance of its patent.

The district court found that the in-house counsel "expanded on the statements to the PTO, revealing that because of the issue of the different effective filing dates, there was a specific concern that the mixed subject matter claims were technically anticipated by" another published application. The in-house counsel also explained that there were additional communications between himself and other in-house and outside counsel that led to this concern. The district court found that these types of statements were sufficient to waive the attorney-client privilege.

Indeed, the district court concluded that these statements themselves revealed confidential attorney-client communications and that they therefore were voluntary waivers of the privilege. "The Court is persuaded that these conversations constituted confidential attorney-client communications concerning the reissue application, and that the deposition statements about the role of the PCT application therefore constitute a waiver of privilege."

* * *

This decision of the district court illustrates the importance of careful planning and strategic decisionmaking in preparing for a deposition. Questions and answers coming any where near privileged matter must be watched closely and should be objected to and an instruction not to answer given. Even revealing an attorney's thought process based on advice of other counsel may waive the privilege. As shown by this case, a few words too many and the privilege can be lost opening up confidential, attorney-client communications.

Monsanto Company v. E.I. Dupont De Nemours and Company, et. al., Case No. 4-09-cv-00686 (E.D. Mo. May 10, 2011)
______________________________

The authors of www.PatentLawyerBlog.com are patent litigation lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.