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Disclosure of Opinions of Counsel to Customers Waived Privilege as to the Opinions and the Subject Matter of the Opinions

Plaintiff The Procter & Gamble Company (“Plaintiff”) filed a patent infringement action against Clio USA, Inc. (“Clio”). Plaintiff moved to compel certain opinions of counsel and other documents concerning the subject matter of those opinions. In the litigation, Clio had produced to Plaintiff copies of two abridged opinions, which were marked on their face as containing privileged communications.

Clio intentionally disclosed the abridged opinions to various third parties, including Clio’s co-Defendants, the co-Defendants’ customers, and Plaintiff. Clio claimed that it disclosed one of the abridged opinions to co-Defendants under a common interest privilege. But Plaintiff identified documents from co-Defendant Team Technologies, Inc. (“Team Tech”) showing further dissemination of counsel’s opinions to retailers. For example, CVS demanded documentation of a “legal nature” to “show there is no patent infringement,” and Clio responded that it would provide such documentation. Meijer requested a similar legal opinion, and a legal opinion letter was furnished to CVS.

Plaintiff asserted that these productions waived the attorney client privilege.

As the district court explained, “[b]oth the attorney-client privilege and work-product protection are waived by voluntary disclosure of private communications to third parties.” New Phoenix Sunrise Corp. v. Comm’r of Internal Revenue, 408 F. App’x 908, 918 (6th Cir. 2010); In re Grand Jury Proceedings Oct. 12, 1995, 78 F.3d 251, 254 (6th Cir. 1996) (“By voluntarily disclosing her attorney’s advice to a third party, for example, a client is held to have waived the privilege because the disclosure runs counter to the notion of confidentiality”).

Further, once a party waives the attorney-client privilege with respect to some items, that waiver extends beyond those items to all other communications relating to the same subject matter. Fort James Corp. v. Solo Cup Co., 412 F.3d 1340, 1349 (Fed. Cir. 2005) (“The widely applied standard for determining the scope of a waiver of attorney-client privilege is that the waiver applies to all other communications relating to the same subject matter”).

Clio contended that disclosure of the abridged opinions to their customers and to Plaintiff’s counsel did not waive the privilege because the documents were allegedly “summary letter[s].” The district court disagreed. “In reality, however, the four-page abridged opinions reveal counsel’s detailed legal analysis, opinions, and facts. As in In re Grand Jury Proceedings, Clio “did not merely assert that [its] attorney had looked into the matter; [it] … revealed [its] attorney’s legal conclusions and the facts on which those conclusions were based.” 78 F.3d at 254. Thus, because Clio “revealed both the legal conclusion and the reasoning behind the conclusion[,]” the attorney-client privilege has been waived as it relates to the subject matter of these opinions. Id
As further explained by the district court, “Defendants disclosed the abridged opinions to assuage their customers’ concerns, and, in so doing, waived the privilege as to all related communications. New Phoenix, 408 F. App’x at 919 (affirming broad subject matter waiver as to all related communications because the “attorney-client privilege cannot at once be used as a shield and a sword”). Having made these disclosures, Defendants waived any privilege relating to the full opinions and all related documents and communications.

The district court then explained that “[w]hen a party waives privilege over a patent opinion, that waiver extends to all communications concerning whether that patent is valid, enforceable, and infringed by the accused products. This includes all communications, whether created before or after the date of the opinion. V. Mane Fils, 249 F.R.D. at 155; see also McCormick-Morgan, Inc. v. Teledyne Indus., Inc., 765 F. Supp. 611, 613 (N.D. Cal. 1991) (finding it inappropriate “to limit the waiver on a temporal basis”).

As a result, the district court found that the Defendants waived the privilege before the lawsuit was filed for the purposes of advancing their business interests, not defending against a claim of willful infringement. Accordingly, the district court found that that “[w]hether Defendants may also choose to rely on these opinions at some point in the future in defense of willful infringement is irrelevant. Moreover, the probative value of the opinions and related documents extends well beyond the question of Defendants’ willful infringement. The relevance standard set forth in Fed. R. Civ. P. 26 is very broad. Lewis v. ACB Bus. Servs., 135 F.3d 389, 402 (6th Cir. Ohio 1998) (“The scope of discovery under the Federal Rules of Civil Procedure is traditionally quite broad”).”

Finally, the district court concluded that “[t]here is no question that the requested information is relevant under this liberal standard. There is also no guarantee that Defendants will rely on advice of counsel in defense of willful infringement, and if they do not, Defendants would be able to shield this probative information indefinitely. Consequently, Defendants must produce the opinions and related documents forthwith.”

The Procter & Gamble Company v. Team Technologies, Inc., et al., Case No. 1:12-cv-552 (S.D. Ohio July 18, 2013)

The authors of are patent trial 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