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District Court Determines Pre-Litigation Analysis Sent from Current Litigation Counsel—But Before Retention—Is Not Privileged

In this patent infringement action, the plaintiff, Payrange, sought to withhold as privileged a PowerPoint presentation (the “Proposal”) prepared by its current litigation counsel, Wilson Sonsini. Prior to representing Payrange, but in the hope that it would be retained, Wilson Sonsini prepared the presentation and then forwarded it to Payrange. Payrange asserted that the Proposal was a privileged communication protected by both the attorney-client and work-product privileges, that it was inadvertently produced, and that it was clawed back promptly when Defendants raised their intention to rely on the presentation in a filing.

As explained by the district court, the Proposal primarily contains background regarding Wilson Sonsini’s litigation experience, its experience in the intellectual property and patent space, information regarding attorney experience, and a proposed fee arrangement. Additionally, the Proposal contains a comparison of possible venue districts for this litigation. On the executive summary page, the Proposal recommends a preference for one of those venues, and, finally, also on the executive summary page, the Proposal offers a suggestion that Payrange discourage other companies from working with the Defendants.

The Defendants challenged the claim of privilege on a number of bases, beginning with the fact that the Proposal was created before Plaintiff retained Wilson Sonsini. The defendants further argued that the fee arrangement information should be discoverable, particularly since Payrange filed a claim for attorneys’ fees. The defendants also contended that the statement on the executive summary page, which recommends that Payrange discourage prospective customers from working with Defendants, is the provision of business advice, not legal advice and because the statement suggesting that Payrange deter customers from working with Defendants was “in furtherance of a tort,” it would undermine public policy to permit Payrange to use privilege to withhold the document.

To analyze whether the Proposal should be protected, the district court broke the Proposal into three parts. First, the district court noted that it was a bid for legal services and reflected information that Wilson Sonsini could have included in any proposal for legal services in the intellectual property and patent area, tailored slightly for Payrange. Most of the information was specific only to Wilson Sonsini, detailing its accolades in its intellectual property and patent litigation practice areas, along with generalized litigation strategy statements, and attorney biographies. The Proposal also included a proposed litigation budget. The district court noted that the opposition did not address this portion of the Proposal and offered neither argument nor evidence to substantiate its claim of privilege to any of this content.

Second, the Proposal contained a comparison of possible venues. Defendants argued that the factual statements were limited to publicly available information about the Defendants’ respective places of business and, relatedly, litigation statistics and timelines. After noting that the purpose of the privilege is to protect communications and not facts, the district court found that Payrange had not met its burden but allowed limited redactions that the Defendants proposed in reply to the motion.

Third, the Proposal contained a statement on the executive summary page offering the suggestion that Payrange discourage others from conducting business with the Defendants. Payrange argued that the statement “implicitly cover[s] a legal recommendation— whether and how [Plaintiff] was legally entitled to publicize the allegations of its complaint.” The district court noted that “[w]hile the contested statement is, unlike the remainder of the Proposal’s content, targeted specifically to Plaintiff’s dispute with Defendants, it does not establish that Plaintiff sought legal advice regarding the question of whether it could publicize the allegations. Nor did Plaintiff substantiate this proffer with evidence that the client sought advice on its right to publicize, and it is far from intuitive from the words on the page that this is what transpired. In the absence of any supporting evidence, Plaintiff has failed to prove by a preponderance of the evidence that the Proposal reflects sought-after, protected legal advice, and thus Plaintiff’s claim for attorney-client privilege fails.”

The district court rejected the attorney work-product argument as well. “Plaintiff offers no factual support for the assertion that the Proposal reflects the mental impressions of its counsel. The only evidence advanced to support Plaintiff’s privilege assertions or explain the origin of the Proposal is the declaration of Wilson Sonsini, which explains only that “[o]n or before February 13, 2020, Wilson Sonsini provided the Proposal to [Plaintiff’s CEO] Paresh Patel.” The district court also rejected Payrange’s argument that because counsel compiled the facts, the Proposal necessarily reflected counsel’s mental impressions. “Without more, this is conclusory and insufficient to sustain Plaintiff’s claim for work-product privilege.”

Accordingly, the district court ordered the Proposal produced with limited redactions to which the Defendants agreed.

Payrange, Inc. v. Kiosoft Technologies, LLC, Case No. 20-cv-20970 (S.D. Fla. March 10, 2021)


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