Xerox Corporation (“Xerox”) filed a patent infringement action against Google and Yahoo! in the United States District Court for the District of Delaware. After construing certain terms of the patent-in-suit as part of a claim construction proceeding, the district court resolved a discovery dispute between the parties over the production of communications between Xerox and a third-party licensing company, IPValue. Google and Yahoo! sought production of documents that Xerox exchanged with IPValue and which Xerox had listed on its privilege log based on a common interest privilege.
Google and Yahoo! contended that the documents could not be protected by the common interest privilege because the relationship between Xerox and IPValue is purely commercial. Xerox disagreed contending that both it and IPValue retain attorneys to perform legal analyses on issues relating to patent rights and because Xerox and IP Value have a joint objective of successfully asserting the Xerox intellectual property rights, which requires close cooperation between the companies. IPValue is a patent licensing company that works with other companies to help monetize their patent portfolios. Prior to the litigation, Xerox and IPValue had entered into agreements designating IPValue as Xerox’s worldwide agent for intellectual property licensing.
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