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District Court Determines No Common Interest Privilege for Communications with Litigation Funder

Plaintiff Midwest Athletics and Sports Alliance LLC (“MASA”) filed a patent infringement action against Ricoh USA, Inc. (“Ricoh”) alleging infringement of certain printing-related patents. Ricoh sought production of certain categories of documents that MASA contended were privileged and, therefore, not subject to disclosure. Ricoh contended that the documents are responsive to its requests, which seek documents related to MASA’s acquisition of the patents from Kodak and various communications with litigation funding companies, for which MASA asserted a common interest privilege.

The district court explained that “the common interest doctrine protects parties, with shared interest in actual or potential litigation against a common adversary, from waiving their right to assert privilege when they share privileged information.” Gelman v. W2 Ltd., No. 14-cv-6548, 2016 WL 8716248, at *3 (E.D. Pa. Feb. 5, 2016) (quotation omitted). Unlike joint representation, the common interest exception “comes into play when clients with separate attorneys share otherwise privileged information in order to coordinate their legal activities.” In re Teleglobe, 493 F.3d at 359. The legal activities may be litigation or transactional matters, but “the privilege only applies when clients are represented by separate counsel.” Id. at 365.

The district court further explained that to invoke the common interest doctrine, “members of the community of interest must share at least a substantially similar legal interest.” Id. The common interest doctrine requires that the parties be represented by separate counsel and “that the clients’ separate attorneys share information (and not the clients themselves) ….” Id. at 364; see also Gelman, 2016 WL 8716248 at *5 (common interest doctrine “shields only communications or correspondence as between attorneys representing different clients, and not between the separately-represented clients themselves”); FTC, 2015 WL 8623076 at *3 (“The doctrine applies only where attorneys, not the clients, share the information.”). Sharing a mere common commercial interest is insufficient to trigger the doctrine. See Gelman, 2016 WL 8716248 at *3. To be substantially similar, “the interests . . . must be closer to ‘legally identical’ than to ‘legally similar.’” Id. at *4.

One of the litigation funding companies, Brickell, provided funding to MASA. The district court noted that Brickell did not acquire an interest in the asserted patents. As a result, the district court determined “[t]hat relationship is not enough to create a common interest. Thus, MASA’s disclosure of privileged communications to Brickell waived any applicable privilege. Indeed, Document 30a is a communication between two Brickell employees. The Court is hard-pressed to understand how MASA could have a privilege in that communication. The Court rejects MASA’s assertion of privilege …”

Midwest Athletics and Sports Alliance LLC v. Ricoh USA, Inc., Case No. 2:19-cv-00514-JDW (E.D. Penn. Sept. 16, 2020)


The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or

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