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Bickering Brothers Break Common Interest and Results in Waiver of Attorney-Client Privilege

Porto Technology Co., LTD (“Porto”) filed a patent infringement action against Cellco Partnership d/b/a Verizon Wireless (“Verizon”). During the litigation, Verizon moved to compel communications between two of the plaintiffs, who are brothers, and counsel. As explained by the district court, the court began by looking at “communications between Ji-Soo Lee, Heung-Soo Lee (“Lee Brothers”) and counsel. Obviously, any communications between Plaintiff Ji-Soo Lee and his counsel pertaining to this or directly related infringement litigation is covered by attorney-client privilege. Communications between Heung-Soo Lee and his counsel do not appear to be similarly cloaked. Any privilege that existed was waived by Heung-Soo Lee by voluntarily disclosing communications concerning this — and related litigation — with both the Court and the Defendant, Verizon. Over 100 unsolicited documents pertaining to the ‘518 and ‘413 patents have been received and retained by the Clerk of this Court.”

The district court then turned to the issue of the Common Interest Doctrine. “Plaintiffs maintain that communications between the Lee Brothers pertaining to litigation strategy or advice of counsel fall squarely within the Common Interest Doctrine and are privileged. Plaintiffs predicate this assertion on their argument that the Lee Brothers have a common interest in the prosecution of the infringement of the patent at issue.’ Although it is difficult to determine whether or not this privilege applies without reviewing the specific document, it appears that the Lee Brothers are adverse to each other. They are currently engaged in litigation in the U.S. District Court for the Eastern District of Virginia, Alexandria Division, over ownership of the closely allied ‘413 patent which embraces claims similar to those in the immediate case. See Lee v. Lee (E.D. Va. 1:13CV1158).”

The district court also concluded that he Lee Brothers were not engaged in a joint strategy for prosecution of the case before the court. “Direct communications between the Lee Brothers pertaining to rights and title to the ‘518 or ‘413 patents or litigation strategy in the case presently before this Court would also be subject to disclosure. The Lee Brothers are obviously not engaged in a joint strategy for the prosecution of this case. They are clearly at loggerheads and simply do not share a common interest.”

Therefore, the district court ordered that the Common Interest Doctrine was not applicable and found that the attorney-client privilege did not prevent the production of the documents sought by Verizon’s motion.

Porto Technology Co., LTD, et al.,v. Cellco Partnership d/b/a Verizon Wireless, Case No. 3:13 CV 265-HEH (E.D. Va. Nov. 5, 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