argue that communications between Howes and his patent attorney, and between the patent attorney and the Japanese patent agent, are privileged.
During discovery, the defendants requested documents relating to Howes patent applications in several foreign countries. At issue in the present motion are six official actions or responses relating to Howes' application before the Japanese Patent Office. The defendants state that on May 6, 1988, they learned through "independent sources" that Howes multi-lumen catheter was held unpatentable by the Japanese Patent Office. Counsel for plaintiffs asserts that on May 10, in response to an inquiry from defendants' counsel, he obtained from Howes' patent attorney the file containing the Japanese patent application materials. On that day, he informed counsel for defendant MedComp that plaintiffs had already produced three of the six official actions or responses. The plaintiffs' counsel produced two more of these documents on May 11, 1988. According to plaintiffs' counsel, he was unable to produce the final document until August 30, 1988, as it was not in his files nor in the files of Howes' patent attorney. The defendants invite the Court to treat the plaintiffs' conduct as a failure to provide discovery.
Fed.R.Civ.Pro. 37 permits the Court to impose a variety of sanctions following a party's failure to provide discovery, including the award of expenses and attorney's fees. Generally, the imposition of sanctions, and the choice of an appropriate sanction, is a matter committed to the sound discretion of the trial court. DiGregorio v. First Rediscount Corp., 506 F.2d 781, 786 (3d Cir. 1974). The presence of willfulness or bad faith, while not conclusive, is a relevant factor in this determination. Id.; Wright and Miller, Federal Practice and Procedure: Civil § 2291.
In this case, I do not find that the circumstances surrounding the production of the Japanese patent materials warrant the imposition of sanctions. The plaintiffs produced three of the six official actions or responses on or about January 6, 1988, produced two of the remaining documents shortly after they were received in May 1988, and produced the final such document after it was received in August 1988. As for the other documents relating to Howes' Japanese patent application, the plaintiff made timely objections to the production of the requested documents, and provided identifying information about each document withheld. Therefore, no sanctions are appropriate for the plaintiffs' failure to produce those documents. See Lapenna v. Upjohn Corp., 110 F.R.D. 15, 25 (E.D.Pa. 1986).
The defendants object to the plaintiff's failure to provide English translations, or summaries, of the documents produced, arguing that it is "inconceivable" that Howe did not receive a direct translation or English summary of the official actions of the Japanese Patent Office. Deft's Memo. (Docket No. 102), at 5. The plaintiffs counter that under Fed.R.Civ.Pro. 34(b), they are required to produce documents only "as they are kept in the usual course of business." The documents in question, the plaintiffs assert, "exist in the plaintiffs' files in Japanese, not as English translations." Plff's Memo. (Docket No. 130), at 6.
As the plaintiffs correctly point out, they cannot be compelled to translate foreign language documents for the benefit of their adversary. In re Puerto Rico Electric Power Authority, 687 F.2d 501, 506-07 (1st Cir. 1982). However, defendants maintain that while they do not claim a right to review nonexistent documents, they are entitled to discovery of English language documents giving the substance of the Japanese actions and responses, such as correspondence from Howes' Japanese patent agent which merely summarizes or paraphrases the rulings.
I agree with the defendants that the attorney-client privilege, whatever its scope in the context of communications to or from foreign patent agents, does not apply to communications which simply summarize the official proceedings before foreign patent offices. A communication with an attorney is privileged to the extent that it seeks legal services or advice. S.E.C. v. Gulf & Western Industries, Inc., 518 F. Supp. 675 (D.D.C.1981); Bird v. Penn Central Co., 61 F.R.D. 43, 46 (E.D.Pa. 1973). The communications at issue here cannot be considered a solicitation of legal services or advice, and their disclosure would not violate the principles of confidentiality underlying the attorney-client privilege. Moreover, disclosure of English summaries of the Japanese actions and responses would further the interests of justice and convenience, and expedite this litigation. I will therefore order the production of documents, or portions of documents, which simply summarize or describe objectively the official actions and responses.
The defendants also seek to compel the production of communications between Howes and his patent attorney, and between the patent attorney and a Japanese patent agent, concerning the Japanese patent application.
The plaintiffs contend that these documents are protected by the attorney-client privilege, and are therefore non-discoverable.
Not all communications between an attorney and his client relevant to patent matters are protected by the attorney-client privilege. Whether a matter is protected is determined on a case by case basis, keeping in mind the purpose behind the privilege and the need for "flexibility and discretion." In re Natta, 410 F.2d 187, 191 (3d Cir. 1969). Furthermore, it is by no means clear that all communications between an attorney and a foreign patent agent are privileged under the attorney-client doctrine. Compare Vernitron Medical Products, Inc. v. Baxter Labs, Inc., 186 U.S.P.Q. (BNA) 324 (D.N.J.) with Detection Systems, Inc. v. Pittway Corp., 96 F.R.D. 152, 220 U.S.P.Q. (BNA) 716 (W.D.N.Y. 1982) and Duplan Corp. v. Deering Milliken, Inc., 397 F. Supp. 1146 (D.S.C. 1974). Accordingly, I am persuaded that the prudent course at this point is to reserve my ruling until I have had an opportunity to review the withheld documents. I will therefore order the plaintiffs to produce these documents for in camera inspection.
Defendants' Motion for a Limited Re-opening of Discovery
The defendants have moved for a limited reopening of discovery to allow them to take another deposition of Patent Examiner Dalton L. Truluck, who examined the patent at issue in this litigation. The defendants state that the only question that they wish to put to Truluck is whether his "reasons for confirming the patentability of Claim 7 . . . are the same as the reasons for granting the reissue in 1984. "Deft's Motion (Docket No. 127), at 1-2.
At his August 1987 deposition, Truluck was examined at some length about the reissue proceeding and was asked specifically about his reasons for allowing the reissue of Claim 7. At that deposition, the Solicitor instructed Truluck not to answer that question. Plff's Memo: (Docket No. 129), Exh. A at 71-72, 120. Although the defendants stated in a September 17, 1987 motion for extension of time that they were contemplating filing a motion to compel Truluck to respond to its deposition questions, no such motion was filed before the close of discovery.
I find that the defendants have not made a sufficient showing of need to take a second deposition, nor have they convincingly demonstrated that their proposed question would elicit a different response than the one they have already received at the last deposition. Accordingly, I will deny the defendants' motion.
An appropriate order is attached.
Upon consideration of Defendants' Motion to Dismiss for Failure to Join an Indispensable Party, Defendants' Motion for Sanctions Under Rule 37, Defendants' Motion for a Limited Re-Opening of Discovery, and the plaintiffs' responses thereto, and for the reasons stated in the accompanying memorandum, it is ORDERED that:
1. The Defendants' Motion to Dismiss for Failure to Join an Indispensable Party is DENIED.
2. The plaintiffs shall, within twenty (20) days of the date of entry of this order, file a report with the clerk describing their efforts to contact Bennett and to secure an undertaking from him similar to the Baham undertaking.
3. The Defendants' Motion for Sanctions Under Rule 37 is DENIED.
4. The plaintiffs shall produce to the defendants, within twenty (20) days of the date of entry of this order, copies of all documents, or portions of documents, which translate, summarize, paraphrase, or describe the official actions or responses on plaintiff Randolph Howes' application before the Japanese Patent Office. The plaintiff may redact portions of such documents which do not translate, summarize, paraphrase, or describe the official actions or responses. The plaintiffs shall provide to the Court, at Reading chambers, unredacted and redacted copies of the documents provided to the defendants.
4. The plaintiffs shall provide to the Court (Reading chambers), for in camera inspection, copies of all withheld documents concerning plaintiff Howes' Japanese patent applications. These documents shall be provided within twenty (20) days of the date of entry of this order. As to each such document, the plaintiffs shall provide a concise explanation of the specific reason for their assertion of privilege.
5. Defendants' Motion for a Limited Re-Opening of Discovery is DENIED.
IT IS SO ORDERED.