Opinion
No. C08-80126 MISC MMC (BZ).
August 18, 2008
ORDER GRANTING IN PART AND DENYING IN PART PLAINTIFFS' MOTION TO COMPEL
The Honorable Maxine M. Chesney has referred me plaintiffs' motion to compel non-party ZigBee Alliance ("ZigBee") to produce documents responsive to its third-party subpoena for documents. For the reasons set forth below, plaintiffs' motion is GRANTED, IN PART and DENIED, IN PART.
Plaintiffs sued Cellnet Technology, Inc., Tropos Networks, Inc. ("Tropos"), and Hunt Technologies, LLC and B L Tech Company, Inc. ("B L") in the Northern District of Georgia ("the Georgia suit") for patent infringement, breach of contract and related torts. Plaintiffs served a subpoena on ZigBee for the production of documents in this district. ZigBee objected to the subpoena. After meeting and conferring, Zigbee produced non-privileged documents and a privilege log for the 223 documents it withheld. Plaintiffs have moved to compel the production of those documents.
According to the complaint, B L is the new name for StatSignal Systems, Inc. See Exh. C at ¶ 6 to Taufer Decl.
ZigBee is a non-profit corporation comprised of more than 270 member companies whose goal is to enable "cost-effective, standards-based wireless networking solution[s] that support law data-rates, low-power consumption, security and reliability." (Opp at p. 2.)
The documents at issue are emails and attachments about the Georgia suit as well as other patent suits that plaintiffs have filed against ZigBee members and about whether ZigBee and its members should seek reexamination of some of plaintiffs' patents. ZigBee contends that the motion should be denied because the documents are not relevant, and are protected under the attorney-client privilege and common interest doctrine, and under the work product doctrine.
Plaintiffs have filed at least two other patent infringement lawsuits against ZigBee members. ZigBee consulted counsel regarding several of plaintiffs' patents. ZigBee then filed for reexamination of some of those patents with the United States Patent and Trademark Office ("USPTO").
Relevance
The district court in Georgia bifurcated plaintiffs' patent and breach of contract claims and stayed the patent claims against defendant Tropos. Plaintiffs have filed other infringement suits in Georgia that were stayed in light of the USPTO's reexamination of several of plaintiffs' patents. After the stays, plaintiffs served subpoenas, including the subpoena at issue here, for information regarding the patents being reexamined. In addition to objecting to the subpoena on the grounds of privilege, ZigBee objected on the grounds of relevance. ZigBee contends that requests for information regarding patents being reexamined that are not at issue in the Georgia action are not relevant. ZigBee also contends that requests for information not limited to the defendants in the Georgia action are overbroad and not relevant.
ZigBee, as a nonparty, would ordinarily not be in the best ideal position to know what is relevant in the Georgia suit and none of the defendants have moved to quash. However, Rule 45 emphasizes the need to minimize the burden of a subpoena on a nonparty and requiring a party to produce non-relevant documents or documents whose discovery has been stayed is arguably burdensome. Compaq Computer Corp. v. Packard Bell Electronics, Inc., 163 F.R.D. 329, 335 (N.D. Cal. 1995); Fein v. Numex Corp., 92 F.R.D. 94, 96 (S.D.N.Y. 1981). From the scant information about the Georgia suit in this record, it appears plaintiffs sued for infringement of only United States Patent No. 7,103,511. Plaintiffs argue that their contract and related tort claims allege improper assignment and clouding of title of multiple patents by actively encouraging reexamination of their patents. Thus, information regarding plaintiffs' patents other than the one whose infringement is alleged, including those under reexamination, is relevant for the purpose of discovery. See Fed.R.Civ.P. 26(b)(1).
As for ZigBee's second contention, plaintiffs could not satisfactorily explain at the hearing why information about ZigBee members who are not defendants in the Georgia suit would be relevant to plaintiffs' claims that the Georgia defendants interfered with plaintiffs' patent rights. Plaintiffs cannot use their subpoena to discover documents relevant to another suit or potential suit. See Fed.R.Civ.P. 26(b)(1) and Adv. Comm. Notes to 2000 Amendment (parties "have no entitlement to discovery to develop new claims or defenses that are not already identified in the pleadings"). Plaintiffs' motion, therefore, is GRANTED only as to all communications that were made by, to, or concerning any defendants in the Georgia suit and relate to plaintiffs' claims against the defendants in the Georgia suit.
Attorney Client Privilege
The attorney-client privilege protects confidential communications between lawyers and their clients made for the purpose of securing legal advice. The purpose of the privilege is to "encourage full and frank communication between attorneys and their clients and thereby promote broader public interests in the observance of law and administration of justice." Upjohn Co. v. U.S., 449 U.S. 383, 389 (1981). In Ninth Circuit, the following elements must be shown to establish the privilege:
(1) [w]hen legal advice of any kind is sought (2) from a professional legal adviser in his or her capacity as such, (3) the communications relating to that purpose, (4) made in confidence (5) by the client, (6) are, at the client's instance, permanently protected (7) from disclosure by the client or by the legal adviser (8) unless the protection be waived.U.S. v. Martin, 278 F.3d 988, 999 (9th Cir. 2002); U.S. v. Plache, 913 F.2d 1375, 1379, fn. 1 (9th Cir. 1990). "Ordinarily the compelled disclosure of an attorney's communications or advice to the client will effectively reveal the substance of the client's confidential communication to the attorney. To prevent this result, the privilege normally extends both to the substance of the client's communication as well as the attorney's advice in response thereto." Matter of Fischel, 557 F.2d 209, 211 (9th Cir. 1977).
The party resisting discovery bears the burden of establishing that the attorney client privilege applies. U.S. v. Austin, 416 F.3d 1016, 1019 (9th Cir. 2005) ("[a] party claiming the [attorney-client] privilege must identify specific communications and the grounds supporting the privilege as to each piece of evidence over which privilege is asserted"); U.S. v. Plache, 913 F.2d at 1379; U.S. v. Osborn, 561 F.2d 1334, 1339 (9th Cir. 1977).
The emails at issue fall into three groups. The first group consists of emails between ZigBee's employees and its counsel involving requests for and responses to legal advice regarding the patents that were to be reexamined, the other suits plaintiffs had filed against ZigBee members, and potential suits plaintiffs might file against ZigBee members. Such communications are protected by the attorney client privilege. See Cal. Evi. Code §§ 175, 954. It is difficult for the court to understand why plaintiffs think such documents are not privileged. The second group consists of emails between ZigBee's counsel and ZigBee member's personnel. They are also protected. See U.S. v. Ohio Edison Co, No. C2-99-1181, 2003 U.S. Dist. LEXIS 25029, at *11 — 12 (S.D. Ohio, January 6, 2003). Plaintiffs do not provide authority as to why these communications would not be protected by the attorney client privilege, and argue only that the common interest doctrine is not applicable to them. The motion to compel is DENIED as to these two groups of those emails.
The third group consists of emails between ZigBee's employees and its members' personnel. ZigBee has failed to meet its burden of establishing that those emails constitute confidential communications seeking legal advice from counsel (U.S. v. Martin, 278 F.3d at 999) or counsel's advice to clients (Matter of Fischel, 557 F.2d at 211) thereby warranting protection under the attorney client privilege. U.S. v. Austin, 416 F.3d at 1019.
Of the 223 documents listed on the privilege log, there is one email between ZigBee members' personnel that was copied to a ZigBee employee and counsel. (Privilege Log Document No. 7.) For the purpose of ruling on this motion, I have grouped that email in the third group.
ZigBee argues that those emails should be protected because their purpose is related to seeking legal advice about the reexamination. It relies on declarations of its director, several of its members' personnel and its counsel, all of which are somewhat vague and general. For example, ZigBee's director, William Chase, declares that "ZigBee looked to its members to provide information and advice regarding IPCO and its patents, and ZigBee shared such information with DLA Piper to assist in the review of the Reexamination Patents." (Chase Decl. at ¶ 12.) Several of ZigBee's members' personnel declare that they communicated with ZigBee and understood the communications were "related to analyzing a legal position on behalf of ZigBee" in order to "aid ZigBee's counsel . . . in its review of IPCO's patent portfolio." (Black Decl. at ¶ 3 — 4; Callaway at ¶ 3-4; Ashton at ¶ 3-4.)
ZigBee has not met its burden of establishing that the emails in the third group are protected under the attorney-client privilege. As one court recently noted,
The party asserting the privilege bears the burden of establishing its existence and "must make a `clear showing' that the asserted objection applies." [citation omitted] Accordingly, the asserting party "must `describe in detail' the documents or information sought to be protected and provide `precise reasons' for the objection to discovery and . . . must provide sufficient information to enable the court to determine whether each element of the asserted objection is satisfied; a `blanket claim' as to the applicability of the privilege does not satisfy the burden of proof."Metzger v. American Fid. Assur. Co., 2007 WL 3274922, 1 (W.D. Okla.).
Unlike the second group, none of these emails were sent by or to counsel; they are between Zigbee and its members. Counsel were copied on many of the emails, but it is well settled that merely copying an attorney on an email does not establish that the communication is privileged. ABB Kent-Taylor, Inc. v. Stallings and Co., Inc., 172 F.R.D. 53, 57 (W.D. N.Y. 1996). Conspicuously absent from the declarations is any assertion that counsel requested such communications, or that the communications, which extend over a several year period, related only to the purpose of seeking legal advice, as opposed to any business or associational purpose the members had in communicating about the patents in question. Nor has ZigBee provided any authority that the privilege extends to communications between an association's personnel and its members' personnel, where the communications are not made at the behest of counsel. As such, the situation here is distinguishable from that in AT T Corp. v. Mircrosoft Corp., 2003 U.S. Dist. LEXIS 8710, at *7 — 8 (N.D. Cal.), where it appears that the emails between the client's employees and the technical report at issue there were made at the direction of counsel. Id. Zigbee's showing is so generalized that it could encompass all communications between Zigbee's personnel and its members' personnel about plaintiffs' patents. At a minimum, a more definite connection to seeking legal advice is required.
See Privilege Log Document Nos. 1, 2, 5, 7, 75, 135 — 37, 143, 222.
There is authority that the attorney-client privilege can protect communications between employees of a corporation that are intended to be part of a request for legal advice, (see U.S. v. Chevron Texaco Corp., 241 F.Supp.2d 1065, 1077 (N.D. Cal. 2002)), but it is not clear that that authority would apply to employees of members of a trade association. While corporate employees are all serving the same employer and presumably share the same legal interest, no such allegiance necessarily binds the members of a trade association. One illustration of this is that plaintiffs apparently were provided some of the disputed emails in response to subpoenas served on other Zigbee members, who apparently produced them without objection. See Sanacory Dec. at ¶ 8-15.
Nor is the common interest exception to waiver of the attorney client privilege applicable to the third group of email communications. The common interest doctrine is not a privilege in and of itself. Nidec Corp. v. Victor Co. of Japan, 249 F.R.D. 575, 578 (N.D. Cal. 2007). Rather, it is an exception "to the rule on waiver where communications are disclosed to third parties." Id.; citing United States v. Bergonzi, 216 F.R.D. 487, 495-96 (N.D. Cal. 2003). The privilege here could not be waived because the communications were not privileged. Likewise, I need not consider whether the email communications are permissible third party disclosures because they do not involve attorney-client communications. Accordingly, the motion is GRANTED as to the email exchanges between ZigBee's employees and its members' personnel that were made by, to, or concerning any defendants in the Georgia suit and that relate to plaintiffs' claims about the defendants in the Georgia suit.
Work Product Doctrine
ZigBee also refused to produce 17 of the documents listed in the privilege log alleging the correspondence constituted work product. "Ordinarily, a party may not discover documents and tangible things that are prepared in anticipation of litigation or for trial by or for another party or its representative (including the other party's attorney, consultant, surety, indemnitor, insurer, or agent)." Fed.R.Civ.P. 26(b)(3)(A) ( emphasis added). The Ninth Circuit has concluded that "that the rule, on its face, limits its protection to one who is a party (or a party's representative) to the litigation in which discovery is sought." In re Cal. Pub. Util. Comm'n, 892 F.2d 778, 781 (9th Cir. 1989) citing C. Wright A. Miller, Federal Practice and Procedure, § 2024, at 201-02 ("[D]ocuments prepared for one who is not a party to the present suit are wholly unprotected even though the person may be a party to a closely related lawsuit in which he will be disadvantaged if he must disclose in the present suit."); Loustalet v. Refco, Inc., 154 F.R.D. 243, 247 (C.D. Cal. 1993); United States v. Graham, 55 F.Supp.2d 1046, 1049 — 50 (N.D. Cal. 2008). Even though the emails and attachments may have been created with an eye towards litigation because many of ZigBee's members were concerned that plaintiffs would sue them, they are not protected under the work product doctrine because ZigBee and its members are not parties to the instant litigation. As the Ninth Circuit noted in theCalifornia Public Utilities Commission case, ZigBee could seek a protective order to prevent the production of the 17 documents to the "extent that the disclosures cause hardship" to it, but ZigBee did not do so and the Ninth Circuit's refusal to expand the doctrine to non-parties precludes a determination that the documents are protected by the work product doctrine. 892 F.2d at 781. The motion is GRANTED as to the documents that were listed in the privilege log as being protected by the work product doctrine.
Request for Leave to File Motions for Sanctions
Both plaintiffs and ZigBee have requested leave to file motions for sanctions for the costs related to this motion. Because I am only granting part of plaintiffs' motion, I find both ZigBee's withholding of the documents and plaintiffs filing of the motion "substantially justified." Imposing sanctions is not warranted and the parties requests are DENIED. Fed.R.Civ.Pro. 37(a)(5)(A-B.)