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

Filing 388

ORDER RE: DISCOVERY (Illston, Susan) (Filed on 7/5/2017)

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1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 VERINATA HEALTH, INC., et al., Case No. 12-cv-05501-SI Plaintiffs, 8 v. ORDER RE: DISCOVERY 9 10 ARIOSA DIAGNOSTICS, INC, et al., Re: Dkt. No. 360, 366, 370, 377 Defendants. United States District Court Northern District of California 11 12 13 Illumina has provided the Court with a handful of purportedly privileged documents for in 14 camera review. See Dkt. No. 377. The Court has reviewed these documents and finds as follows: 15 The emails identified as Entries 611 and 616 are not privileged communications. 16 However, the invention disclosure forms attached to those emails are privileged and have properly 17 been withheld. See In re Spalding Sports Worldwide, Inc., 203 F.3d 800, 805-06 (Fed. Cir. 2000) 18 (finding invention record protected by attorney-client privilege); see also In re Queen’s Univ. at 19 Kingston, 820 F.3d 1287 (Fed. Cir. 2016) (extending privilege to non-attorney patent agents). 20 “The privilege ‘exists to protect not only the giving of professional advice to those who can act on 21 it, but also the giving of information to the lawyer to enable him to give sound and informed 22 advice.’” In re Spalding, 203 F.3d at 805 (citing Upjohn Co. v. United States, 449 U.S. 383, 396 23 (1981)). “It is enough that the overall tenor of the document indicates that it is a request for legal 24 advice or services.” Id. at 806. These disclosure forms were prepared to enable either in-house or 25 outside patent prosecution counsel to offer legal advice as to, e.g., patentability. Similarly, the 26 invention disclosure forms identified as Entries 634 and redacted portions of Entries 2820 and 27 2821 are also privileged and have properly been withheld. To the extent it has not already done 28 so, Illumina is hereby ordered to produce only the emails, Entries 611 and 616, but may withhold 1 the attached invention disclosure forms. 2 communications is hereby DENIED in all other respects. 3 4 5 6 Ariosa’s motion seeking production of privileged IT IS SO ORDERED. Dated: July 5, 2017 ______________________________________ SUSAN ILLSTON United States District Judge 7 8 9 10 United States District Court Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 2

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