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Privilege Waived Where Attorney Allowed Questioning Over Privileged Document During Remote Deposition

In this patent infringement action, the plaintiff’s counsel deposed one of the defendant’s (DJO) Fed.R.Evid. 30(b)(6) witnesses during a deposition that took place remotely.  At the remote deposition, counsel questioned the witness regarding a license agreement and a privileged letter that was apparently appended to the license agreement.  Plaintiff then contended that any objections to the privileged nature of the letter were waived and that the waiver should be not just to the letter but also to the subject matter of the letter.

To analyze the waiver issue, the district court addressed whether DJO took appropriate steps to claw back the privileged letter.  DJO contended that it did promptly take reasonable steps to rectify the error, explaining that, because the deposition was remote and the letter was attached to many other non-privileged documents, DJO’s counsel could not tell from the remote display of the document whether the letter had been intentionally produced.  Although Mr. DJO’s counsel did not assert privilege over the letter during the deposition or after the letter was discussed, DJO identified the letter as inadvertently produced and requested the destruction of the letter and related testimony “within hours” of the deposition’s conclusion.

The district court found it significant that letter was not identified as inadvertently produced until after plaintiff’s counsel wrote to DJO’s counsel arguing that DJO’s voluntary disclosure of the letter supported plaintiff’s position that DJO waived the attorney-client privilege as to all communications between the author of the letter and DJO.  The district court determined that “under the circumstances, it appears that DJO’s belated invocation of the inadvertent disclosure protections of the Protective Order and Fed. R. Civ. P. 26(b)(5)(B) was done only to bolster DJO’s opposition to Plaintiff’s assertion of subject matter waiver. Although the Court recognizes the technical barriers inherent in a remote deposition, whether or not the remote display of the document was clear, the coinciding testimony regarding the Hill Letter was unmistakably about an attorney-client communication …  This testimony makes quite clear that the document being discussed is a letter from counsel to DJO’s director of new product development containing a freedom to operate opinion. Altogether, Mr. Monroe’s testimony regarding the Hill Letter spanned approximately four minutes, without any privilege objection from counsel. Under Rule 502(b)(3), the producing party is required “to follow up on any obvious indications that a protected communication or information has been produced inadvertently.” Fed. R. Evid. 502(b), advisory committee’s explanatory note. This testimony constitutes such an obvious indication. However, counsel for the producing party did not follow up on the indication until after learning that Plaintiff was asserting subject matter waiver based in part on DJO’s voluntary production of the Hill Letter.”

With respect to the subject matter waiver issue, the district court rejected the “Plaintiff’s argument that the disclosure of the Hill Letter, coupled with Mr. Monroe’s testimony regarding Mr. Hill’s purported 2008 opinion on one of the patents-in-suit, justify a finding of subject matter waiver as to “all documents and communications relating to DJO’s knowledge of and response to [Plaintiff’s] patent applications[.]”  The district court concluded that “subject matter waiver ‘is reserved for those unusual situations in which fairness requires a further disclosure of related, protected information, in order to prevent a selective and misleading presentation of evidence to the disadvantage of the adversary.’ Fed. R. Evid. 502(a), advisory committee’s explanatory note. This is not such a situation.”

Orthopaedic Hosp. v. DJO Global, Inc., Case No. 3:19-cv-00970-JLS-AHG (S.D. Cal. Sept. 8, 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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