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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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. 360, 366, 370, 377

Defendants.

United States District Court
Northern District of California

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Illumina has provided the Court with a handful of purportedly privileged documents for in

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camera review. See Dkt. No. 377. The Court has reviewed these documents and finds as follows:

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The emails identified as Entries 611 and 616 are not privileged communications.

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However, the invention disclosure forms attached to those emails are privileged and have properly

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been withheld. See In re Spalding Sports Worldwide, Inc., 203 F.3d 800, 805-06 (Fed. Cir. 2000)

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(finding invention record protected by attorney-client privilege); see also In re Queen’s Univ. at

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Kingston, 820 F.3d 1287 (Fed. Cir. 2016) (extending privilege to non-attorney patent agents).

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“The privilege ‘exists to protect not only the giving of professional advice to those who can act on

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it, but also the giving of information to the lawyer to enable him to give sound and informed

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advice.’” In re Spalding, 203 F.3d at 805 (citing Upjohn Co. v. United States, 449 U.S. 383, 396

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(1981)). “It is enough that the overall tenor of the document indicates that it is a request for legal

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advice or services.” Id. at 806. These disclosure forms were prepared to enable either in-house or

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outside patent prosecution counsel to offer legal advice as to, e.g., patentability. Similarly, the

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invention disclosure forms identified as Entries 634 and redacted portions of Entries 2820 and

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2821 are also privileged and have properly been withheld. To the extent it has not already done

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so, Illumina is hereby ordered to produce only the emails, Entries 611 and 616, but may withhold

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the attached invention disclosure forms.

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communications is hereby DENIED in all other respects.

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Ariosa’s motion seeking production of privileged

IT IS SO ORDERED.
Dated: July 5, 2017
______________________________________
SUSAN ILLSTON
United States District Judge

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United States District Court
Northern District of California

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