IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF PENNSYLVANIA
November 29, 2007
EMCORE CORPORATION AND JDS UNIPHASE CORPORATION, PLAINTIFF,
OPTIUM CORPORATION, DEFENDANT.
The opinion of the court was delivered by: Ambrose, Chief District Judge.
OPINION and ORDER OF COURT
Defendant, Optium Corporation, filed a Motion to Compel Plaintiffs, EMCORE Corporation and JDS Uniphase Corporation, to immediately produce: (i) all previously withheld documents relating to the subject matter of the "Invention Disclosure" document, bearing production numbers PLF000312684-PLF000312698; and (ii) all previously withheld documents relating to the subject matter of an "Interoffice Memorandum" document, bearing production numbers LOGAN 0047-LOGAN 0049. (Docket No. 151). Specifically, Defendant asserts that Plaintiffs "waived the attorney-client privilege with respect to these documents to use them to attempt to support their invalidity estoppel theory...." Id. With regard to the "Invention Disclosure" document, I have previously ruled that Plaintiffs intentionally waived the attorney-client privilege. (Docket No. 131).
However, as Plaintiffs point out in opposition, I considered this alternative argument when ruling upon Defendant's Motion for Sanctions. Id.; see also, Docket No. 102, p. 4. Defendant has not given me any reason to reconsider this ruling.*fn1 Consequently, Defendant's Motion to Compel is denied with regard to documents relating to the subject matter of the "Invention Disclosure" document.
With regard to the "Interoffice Memorandum" document, Defendant argues that since this document was used at the Gertel deposition the privilege is waived. (Docket No. 152, p. 4). Plaintiffs, however, argue that the "Interoffice Memorandum" was not privileged in the first place and thus the production of the same did not have the effect of waiving any privilege. (Docket No. 173). The issue that must be decided first, therefore, is whether the document is privileged.
"The attorney-client privilege protects the confidentiality of communications between attorney and client made for the purpose of obtaining legal advice." In re EchoStar Communications Corp., 448 F.3d 1294, 1300 (Fed. Cir. 2006), quoting Genentech, Inc. v. Int'l Trade Comm'n, 122 F.3d 1409, 1415 (Fed. Cir.1997). "[T]he central inquiry is whether the communication is one that was made by a client to an attorney for the purpose of obtaining legal advice or services." In re Spalding Sports Worldwide, Inc., 203 F.3d 800, 805 (Fed. Cir. 2000). After a review of the record, I do not find that the "Interoffice Memorandum" (Docket No. 165 - Ex. 14) is privileged. Specifically, I note that the document is sent to in-house counsel at JDS, Mr. Robinson, but does not appear to solicit any legal opinion. (Docket No. 165 - Ex. 14). There is simply no evidence to suggest that it was sent to solicit a legal opinion. See, Docket No. 157, pp. 4-10. Thus, there can be no waiver of the privilege. Accordingly, Plaintiffs cannot be compelled to produce all documents concerning the subject matter of the "Interoffice Memorandum." Consequently, Defendant's Motion to Compel is denied with regard to documents relating to the subject matter of the "Interoffice Memorandum" document.
THEREFORE, this 29th day of November, 2007, after careful consideration and for the reasons set forth within, it is ordered that Defendant's Motion to Compel (Docket No. 151) is denied.
Donetta W. Ambrose, Chief U. S. District Judge