The opinion of the court was delivered by: DuBOIS, J.
This is a patent infringement case. In its Complaint, plaintiff, elcommerce.com, Inc., alleges that defendants, SAP AG and SAP America, Inc. (collectively "SAP") willfully infringed United States Patent Number 6,947,903 (the "903 patent"). Defendants filed Counterclaims seeking declaratory judgments of non-infringement, invalidity and unenforceability.
Presently before the Court is Defendants' Motion to Compel Pre-Suit Communications. By Order dated August 12, 2010, the Court denied the motion as it relates to unspecified pre-suit communications between elcommerce and unidentified law firms, and directed plaintiff to submit to the Court for in camera review the only documents that were specifically identified in the motion: charting documents referred to in document EL00037887, an attachment to an e-mail labeled EL00038856, the documents referenced in elcommerce's privilege log as documents number 56, 58, 79, 85, 86, 87, 98, 103, and 104.
In a letter dated August 18, 2010, elcommerce stated that the attachment to the e-mail labeled EL00038856 could not be found. If that document is found, elcommerce shall provide it to the Court for in camera review. That same letter asserted that the charting documents referenced in document EL00037887 and documents 85 and 98 have already been produced to defendants. SAP responded by letter dated August 20, 2010, stating that those documents had not been produced. In view of defendants' response, duplicate copies of the charting documents and documents 85 and 98 shall be provided to SAP by elcommerce.
The Court has reviewed in camera the remaining documents. For the reasons set forth below, the Court denies defendant's motion as it relates to documents 56, 58, 79, 86, 87, 103, and 104.
Elcommerce's Complaint alleges that SAP willfully infringed patent 903. Seeking to discover the evidentiary basis of this allegation, SAP sent to elcommerce an interrogatory asking for "all facts and circumstances in support of elcommerce's contention that SAP's alleged infringement of the '903 patent is willful, including all facts and circumstances regarding the alleged willful infringement prior to the state elcommerce filed its Complaint." (Pl. elcommerce.com, Inc.'s Resps. to Defs.' Third Set of Interrogs. (13-15) 1 (hereinafter "Interrog. No. 13").) Elcommerce served a twenty-five page answer to that interrogatory which referred to documents prepared by elcommerce attorneys and several pre-suit communications with its outside counsel at the law firm Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. ("Mintz Levin"). SAP avers that, by providing this answer, elcommerce has waived the attorney-client and work-product privileges on a wide variety of subject areas, including claim scope, claim validity, infringement by SAP and others, and damages. Elcommerce contends that any waiver is much narrower in scope.
In its answer to SAP's interrogatory, elcommerce explained that it was represented by Mintz Levin from August 21, 2000 until May 1, 2007. The answer identified several documents and computer discs describing the 903 patent that were provided to Mintz Levin. The answer also described meetings between elcommerce principals and attorneys at Mintz Levin at which the 903 patent, and potential lawsuits against alleged infringers of that patent, were discussed. On June 7, 2006, Mintz Levin returned to elcommerce a portion of the documents and computer discs elcommerce had provided to Mintz Levin. That same day, the law firm of Cooper & Dunham, LLP, filed a patent application on SAP's behalf. That application led to the issuance of patent number 7,426,418, which elcommerce alleges includes aspects of the 903 patent and aspects of statements made by an elcommerce principle at a meeting with Mintz Levin attorneys.
Elcommerce claims that SAP has been a client of Mintz Levin since 2006 and contends that "some information [it] shared in confidence with Mintz Levin was disclosed to SAP and ended up in the SAP patent application filed on June 7, 2006." (Elcommerce.com, Inc.'s Opp. to Defs.' Mot. to Compel Disc. Regarding Privileged Pre-Suit Commc'ns 9.) That is the basis of elcommerce's willfulness claim against SAP.
Elcommerce opposes the production of documents 56, 58, 79, 86, 87, 103, and 104 on the ground that they are covered by the attorney-client and work-product privileges. All of the documents were prepared by elcommerce. Document 56 is a memorandum analyzing SAP's alleged infringement; Document 58 is a chart describing SAP's alleged infringement; Document 79 is a memorandum analyzing potential damages in a patent infringement suit against SAP; Document 86 is a chart describing SAP's alleged infringement; Documents 87 and 104 are the same memorandum analyzing SAP's alleged infringement; and Document 103 is a chart describing SAP's alleged infringement. Elcommerce provided documents 87, 103, and 104 to Mintz Levin, but there is no evidence that those documents were provided to SAP or discussed in a communication with SAP. There is no evidence that the other documents were ever presented to Mintz Levin or discussed in a communication with Mintz Levin.
Elcommerce has the burden of proving that the documents are covered by the attorney-client or work-product privileges and that it has not waived these privileges. See Greene, Tweed of Delaware, Inc. v. DuPont Dow Elastomers, L.L.C., 202 F.R.D. 418, 423 (E.D. Pa. 2001). Defendants do not argue that the documents are not privileged. To the contrary, they assume that all of the withheld documents are privileged. (Defs.' Mot. to Compel Disc. Regarding Pre-Suit Commc'ns 6.)
After in camera review, the Court concludes that the documents are privileged. Elcommerce's response to interrogatories waived this privilege as to some documents. The question ...