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District Court Grants Motion to Compel Documents That Were Clawed Back Finding that Defendant Waived Work Product Protection by Voluntarily Producing the Documents

The crux of this case revolves around a dispute over patent infringement, trade secret misappropriation, and unfair competition filed by Nielsen (or Plaintiff) against Hyphametrics (or Defendant). At the heart of the issue in this motion were specific documents – experimental reports. These reports were initially produced by Hyphametrics to Nielsen but were later retracted under the assertion of work product protection.

The Memorandum Order issued by the court dissected the arguments presented by both parties and presented the court’s rationale for its ruling on Nielsen’s motion to compel Hyphametrics to produce the disputed documents. The court began by addressing Hyphametrics’ intentional production of certain reports to Nielsen. Despite Hyphametrics’ claim that the documents were mistakenly believed to be unprotected by the work product doctrine, the court noted that the intentional release of these documents nullified any work product protection. The court emphasized that the mistaken belief in their protection status cannot serve as a valid basis for claiming inadvertent production.

The court explained that Defendant’s prior counsel (“prior counsel”) produced three reports at issue here to Plaintiff. “When prior counsel did so, it knew all of the facts one would need to know to understand that, under the law, those documents were protected by the work product doctrine. A document is protected by the work product doctrine if it is prepared in anticipation of litigation or trial by a party or its representative. Fed. R. Civ. P. 26(b)(3)(A). It is undisputed here that the reports fit this bill, and prior counsel knew this when they intentionally produced the reports.” As a result, the court concluded that Defendant therefore waived any work product protection for the reports by intentionally producing them here.

The court also rejected Defendant’s argument to the contrary, i.e., that no waiver occurred “because prior counsel mistakenly thought that the reports were not work product protected—in that prior counsel mistakenly thought that in order for the reports to be so protected, an attorney for Defendant must have requested that the reports be prepared for litigation or trial (and prior counsel believed at the time that the reports had not been generated at an attorney’s direction).”

The court found that this argument failed because “[b]oth sides here agree that prior counsel’s belief in this regard amounted to a mistake of law.” See United Coal Cos. v. Powell Constr. Co., 839 F.2d 958, 966 (3d Cir. 1988) (“[F]ederal courts have consistently ruled that the work-product doctrine is not inapplicable merely because the material was prepared by or for [a non-attorney.]”); SightSound Techs., LLC v. Apple, Inc., Civil Action No. 11-1292, 2012 WL 12896267, at *2 (W.D. Pa. Oct. 17, 2012) (explaining that “attorney involvement is not a requirement for materials to be afforded work-product protection”).

The court further explained that “the fact that an attorney made a clear mistake of law as to whether an intentionally-produced document was protected by an applicable privilege cannot be a basis to claim that such production was somehow inadvertent.”

Hyphametrics also argued that Section 11 of the Protective Order allowed for documents to be clawed back even if they were intentionally produced. The court disagreed. The court’s analysis underscored that this section of the Protective Order is designed to address inadvertently produced documents, not those intentionally shared. The court also references Rule 502(d) of the Federal Rules of Evidence, which is oriented toward mistakenly or unintentionally produced materials, which further undermined Hyphametrics’ argument.

Accordingly, the district court order the retracted documents produced to Nielsen.


The Nielsen Company (US), LLC v. HyphaMetrics, Inc., Case No. 1-21-cv-01951 (D. Del. May 19, 2023)

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