Verinata Health, Inc. et al v. Ariosa Diagnostics, Inc et al

Filing 366

ORDER RE: DISCOVERY #357 #360 . (Illston, Susan) (Filed on 4/11/2017)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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VERINATA HEALTH, INC., et al.,

Case No. 12-cv-05501-SI

Plaintiffs,
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v.

ORDER RE: DISCOVERY

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ARIOSA DIAGNOSTICS, INC, et al.,

Re: Dkt. No. 357, 360

Defendants.

United States District Court
Northern District of California

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The Court is in receipt of two joint discovery statements from the parties. Dkt. Nos. 357,

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360. In the first joint letter, defendant Ariosa seeks an order compelling supplemental responses

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to its Requests for Admission (“RFA”) Nos. 124-29. Dkt. No. 357. In the second joint letter,

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Ariosa seeks an order compelling Illumina’s production of certain purportedly privileged

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documents. Dkt. No. 360.

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I.

Requests for Admission Nos. 124-29

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The parties first dispute whether Illumina’s responses, supplemental responses, and

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corrected supplemental responses to Ariosa RFAs 124-29 comply with Federal Rule of Civil

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Procedure 36. Rule 36(a)(4) provides,

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If a matter is not admitted, the answer must specifically deny it or
state in detail why the answering party cannot truthfully admit or
deny it. A denial must fairly respond to the substance of the matter;
and when good faith requires that a party qualify an answer or deny
only a part of a matter, the answer must specify the part admitted
and qualify or deny the rest. The answering party may assert lack of
knowledge or information as a reason for failing to admit or deny
only if the party states that it has made reasonable inquiry and that
the information it knows or can readily obtain is insufficient to
enable it to admit or deny.
Fed. R. Civ. P. 36(a)(4).

Ariosa RFAs 124-29 aim to elicit responses tracking certain

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representations and warranties Illumina gave in connection with its 2011 preferred equity

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investment in Ariosa. Illumina responded to the RFAs subject to various objections. In its

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responses, Illumina either denied the RFAs or admitted them with added context – namely, “as set

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forth in the parties’ November 30, 2011 Stock Purchase Agreement with all of the qualifications

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contained therein.” See Ex. B, Corrected Supplemental Responses to RFAs.
Illumina’s responses are adequate under Rule 36. Ariosa is not entitled to different

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answers, nor does it need them. Ariosa has the Stock Purchase Agreement and the Sale and

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Supply Agreement on which it intends to base its license defense and contract counterclaims.

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Ariosa also has deposition testimony from Illumina’s former CEO that allegedly “admit[s] without

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qualification that each of Illumina’s representations in the Series B and Series C SPAs were

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United States District Court
Northern District of California

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truthful at the time they were made.” Joint Statement at 3. Given the volume of RFAs served in

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this case – “roughly 350” – the Court will not compel different responses to these six. Having

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reviewed the parties’ joint statement and Illumina’s responses to RFAs 124-29, the Court

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DENIES Ariosa’s request for an order compelling amended responses.

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II.

Privileged Documents

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The parties next dispute whether Illumina should be compelled to immediately produce

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certain purportedly privileged documents related to inventorship of U.S. Patent No. 7,955,794

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(the “’794 patent”). In essence, Illumina will argue that assignor estoppel bars Ariosa from

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asserting invalidity because Drs. Stuelpnagel and Oliphant, two of the seven named inventors on

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the ’794 patent, were at one point Ariosa senior executives. Ariosa seeks production of all

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documents – privileged or otherwise – concerning inventorship of the ’794 patent in order to try to

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show that Drs. Oliphant and Stuelpnagel were erroneously named as inventors. If Oliphant and

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Stuelpnagel were not inventors, Illumina’s assignor estoppel defense will fail. Ariosa argues that

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to the extent it seeks production of any privileged documents, Illumina has waived the privilege by

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asserting assignor estoppel.

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As an initial matter, and for the avoidance of doubt, Illumina may not itself rely on any

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privileged documents in this case that it does not produce to Ariosa. If Illumina intends to use any
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such documents, it must provide them to Ariosa. That being said, the Court is not convinced that

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Illumina’s assignor estoppel defense amounts to a waiver of the attorney-client privilege as to

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documents regarding inventorship. See Bittaker v. Woodford, 331 F.3d 715, 719-20 (9th Cir.

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2003). This is not the typical instance in which a party has placed the only relevant documents

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squarely at issue by asserting a claim or defense. Indeed, Ariosa has “direct access” to Drs.

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Stuelpnagel and Oliphant, former Ariosa employees, to gather information regarding their

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involvement in inventing the ’794 patent. Ariosa has already deposed two co-inventors, Drs.

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Kuhn and Shen, and was scheduled to depose another co-inventor, Dr. Fan, on April 11, 2017.1 In

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addition, Illumina has produced “laboratory notebooks and other non-privileged documents

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relating to the invention of the ’794 patent, and Ariosa has never suggested any deficiencies in this

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United States District Court
Northern District of California

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area of Illumina’s document production.” Joint Statement at 4. On this record, the Court finds no

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waiver.

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Ariosa further argues that certain documents listed on Illumina’s privilege log do not

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involve attorneys and therefore are not privileged at all. The party asserting privilege must

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establish the existence of privilege. United States v. Martin, 278 F.3d 988, 999-1000 (9th Cir.

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2002); Fed. R. Civ. P. 26(b)(5)(A).

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documents[ or] communications

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privileged or protected, will enable other parties to assess the claim.” Fed. R. Civ. P. 26(b)(5)(A);

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see Burlington N. & Santa Fe Ry. Co. v. U.S. Dist. Court for Dist. of Mont., 408 F.3d 1142, 1148

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(9th Cir. 2005). “[C]laims of privilege may pass muster despite an inadequate privilege log.”

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Apple Inc. v. Samsung Elecs. Co, Ltd., 306 F.R.D. 234, 237 (N.D. Cal. 2015) (citation omitted).

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“Briefs, declarations or other proof may establish the purpose of the communication or the specific

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role of the sender and each individual recipient.” Id.

The asserting party must “describe the nature of the

. . . in a manner that, without revealing information itself

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Here, the privilege log alone does not aid the Court in resolving the issue of privilege.

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Ariosa references specifically Entries 7-9, 17, 611, 613, 616, 622, 625, 633-35, 2820-22, and 2912

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on the privilege logs attached as Exhibits 1 and 2 to the parties’ joint statement, and states that

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If the parties continued Dr. Fan’s deposition as they allude to in their joint statement,
Ariosa will nevertheless depose Dr. Fan in short order.
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these entries as “do not involve attorneys.” Joint Statement at 2. Entries 622 and 625, however,

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clearly state that the privileged documents reflect the request for, or substance of, legal advice

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from a specific attorney: John Murphy. Most entries Ariosa identifies describe the privileged

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communication as something along the lines of “[e]mail and attachment(s) reflecting legal advice

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from Illumina legal department re: invention disclosure form.” See Entries 7-9, 17, 611, 613, 616,

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633-35, 2820-22, and 2912. The Court cannot discern from the privilege log which of these

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communications involve legal advice or otherwise contain privileged information.
In the interest of fairness, the Court hereby ORDERS Illumina to substantiate its claims of

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privilege only as to Entries 7-9, 17, 611, 613, 616, 633-35, 2820-22, and 2912. Within ten days

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of the date of this order, Illumina shall file “briefs, declarations or other proof . . . establish[ing]

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United States District Court
Northern District of California

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the purpose of the communication[s]” and “the specific role of the sender and each individual

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recipient.” The Court will then determine, to the extent it is capable, whether the documents

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Ariosa identifies are privileged.

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This order does not invite - or allow - additional privilege log challenges. Except for
previously scheduled depositions, fact discovery closed on April 3, 2017.

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This order resolves Dkt. Nos. 357, 360.

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IT IS SO ORDERED.
Dated: April 11, 2017
______________________________________
SUSAN ILLSTON
United States District Judge

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