Inadvertent Disclosure of Reexamination Strategies Protected by CourtIn Acer Inc., et al v. Technology Properties Limited LTD et al. (NDCA), the plaintiffs are seeking a declaratory judgment of non-infringement and invalidity of TPL patent 5,809,336. Previously, the ‘336 Patent was the subject of an ex parte patent reexamination.During discovery, two emails between an inventor of the ‘336 Patent and reexamination counsel were inadvertently provided to the plaintiffs. The first email appeared to discuss the attorney’s impression of the interview, while the second email conveyed the inventor’s thoughts on issues considered in the reexamination. Not surprisingly, once produced, TPL informed the plaintiffs that the emails were privileged and should be returned. Of course, the plaintiffs disagreed, and left it for the judge to decide.The judge explained in short fashion, that:Despite Plaintiffs’ doubt, the two emails in question, “mac336.htm” and “Moore0058,” are protected by the attorney- privilege. “The attorney-client privilege protects the confidentiality of communications between attorney and client made for the purpose of obtaining legal advice.” . . . . As the emails at issue describe confidential conversations between only TPL executives (including Moore) and TPL’s attorneys about Moore’s USPTO interview in relation to the ‘336 patent reexamination, these emails are clearly protected by the attorney-client privilege.Privileged documents are often times mistakenly provided to an adversary during litigation. Given the nature of the documents, it is not especially noteworthy or surprising that the court found them to be protected by attorney-client privilege. Still, with the vast majority of patent reexamination now conducted concurrent with litigation, this case is a helpful reminder that communications should be conveyed in a manner to preserve privilege. For example, by limiting distribution of such communications to key decision makers, especially in the case of joint defense scenarios where communications may be poorly controlled.Acer was brought to my attention by the great Docket Navigator
In Acer Inc., et al v. Technology Properties Limited LTD et al. (NDCA), the plaintiffs are seeking a declaratory judgment of non-infringement and invalidity of TPL patent 5,809,336. Previously, the ‘336 Patent was the subject of an ex parte patent reexamination.
During discovery, two emails between an inventor of the ‘336 Patent and reexamination counsel were inadvertently provided to the plaintiffs. The first email appeared to discuss the attorney’s impression of the interview, while the second email conveyed the inventor’s thoughts on issues considered in the reexamination. Not surprisingly, once produced, TPL informed the plaintiffs that the emails were privileged and should be returned. Of course, the plaintiffs disagreed, and left it for the judge to decide.
The judge explained in short fashion, that:
Despite Plaintiffs’ doubt, the two emails in question, “mac336.htm” and “Moore0058,” are protected by the attorney- privilege. “The attorney-client privilege protects the confidentiality of communications between attorney and client made for the purpose of obtaining legal advice.” . . . . As the emails at issue describe confidential conversations between only TPL executives (including Moore) and TPL’s attorneys about Moore’s USPTO interview in relation to the ‘336 patent reexamination, these emails are clearly protected by the attorney-client privilege.
Privileged documents are often times mistakenly provided to an adversary during litigation. Given the nature of the documents, it is not especially noteworthy or surprising that the court found them to be protected by attorney-client privilege. Still, with the vast majority of patent reexamination now conducted concurrent with litigation, this case is a helpful reminder that communications should be conveyed in a manner to preserve privilege. For example, by limiting distribution of such communications to key decision makers, especially in the case of joint defense scenarios where communications may be poorly controlled.
Acer was brought to my attention by the great Docket Navigator.