Swanson v. Alza Corporation

Filing 193

ORDER by Judge Kandis A. Westmore regarding 190 7/9/14 Discovery Letter Brief. (kawlc1, COURT STAFF) (Filed on 7/18/2014)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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JAMES M. SWANSON,

Case No. 12-cv-04579-PJH (KAW)

Plaintiff,
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ORDER REGARDING 7/9/14 JOINT
DISCOVERY LETTER

v.
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ALZA CORPORATION,
Dkt. No. 190

Defendant.

United States District Court
Northern District of California

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On July 9, 2014, the parties filed a supplemental joint letter regarding whether Plaintiff

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could properly withhold documents between him and the University of California under the

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community of interest doctrine. (7/9/14 Joint Letter, “Joint Letter,” Dkt. No. 190.)

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Upon review of the joint letter, the Court finds that Plaintiff did have a community of

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interest with the University of California, and may withhold those documents so designated in the

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privilege log. (Dkt. No. 190, Ex. A.)

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I.

DISCUSSION

Plaintiff James M. Swanson claims that he should be a named inventor of Concerta, an

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ADHD drug developed and patented by Defendant ALZA Corporation. Plaintiff was employed

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by the University of California (“UC”), and one condition of his employment was his “legal

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obligation to assign all rights to his invention to UC, and UC’s legal obligation to review those

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inventions.” (Joint Letter at 5.) The instant discovery dispute concerns whether the documents

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exchanged between Plaintiff and UC from November 11, 2011 through August 23, 2012, when

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Plaintiff may have been negotiating with UC for the assignment of patent rights, are privileged

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pursuant to the community of interest doctrine. (Joint Letter at 1, 5 n. 4.)

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The community of interest privilege “applies where (1) the communication is made by

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separate parties in the course of a matter of common [legal] interest; (2) the communication is

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designed to further that effort; and (3) the privilege has not been waived.” Nidec Corp. v. Victor

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Co. of Japan, 249 F.R.D. 575, 578 (N.D. Cal. July 5, 2007) (quoting United States v. Bergonzi,

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216 F.R.D. 487, 495-96 (N.D.Cal.2003)).
First, as a UC employee at the time of his alleged inventorship, Plaintiff and UC share a

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common legal interest in whether he should be a named inventor of Concerta. See In re Regents of

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Univ. of California, 101 F.3d 1386, 1390 (Fed. Cir. 1996)(community of interest exists between a

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licensee and UC, because they “shared the interest that UC would obtain valid and enforceable

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patents”). Despite Defendant’s contention to the contrary, this is similar to In re Regents, because
Dr. Swanson’s employment agreement creates a legal relationship where he assigned his

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United States District Court
Northern District of California

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intellectual property rights to UC. See id. at 1388-89. That Plaintiff had to obtain a reassignment

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of rights from UC to proceed with this lawsuit does not render those negotiations adversarial or

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mean that Plaintiff and UC did not share a common legal interest.
Second, these communications were obviously made in anticipation of litigation to protect

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Plaintiff’s and UC’s alleged intellectual property rights and to further a legal effort and strategy,

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namely whether Plaintiff could pursue this litigation or if UC would have to enforce the rights

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Plaintiff assigned to it as a UC employee. See Nidec Corp., 249 F.R.D. at 579; see also Hewlett-

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Packard Co. v. Bausch & Lomb, Inc., 115 F.R.D. 308, 310 (N.D. Cal. April 9, 1987) (finding an

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“identical issues of law and of fact” based on the validity and enforceability of the same patent).

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Lastly, there is no indication that the privilege has been waived by any third party.

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Accordingly, Plaintiff and UC shared a community of interest, which was not disrupted by

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the assignment discussions, rendering the documents privileged and not subject to disclosure.

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II.

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CONCLUSION

In light of the foregoing, the documents exchanged between Plaintiff and UC regarding the
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assignment of patent rights and the instant litigation are privileged and need not be produced.
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IT IS SO ORDERED.
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Dated: July 18, 2014
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______________________________________
KANDIS A. WESTMORE
United States Magistrate Judge

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United States District Court
Northern District of California

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