Ojmar US, LLC v. Security People, Inc. et al

Filing 84

Discovery Order re Joint Letter Brief ('277 and '644 Patents). Signed by Judge Maria-Elena James on 6/13/2017. (mejlc3, COURT STAFF) (Filed on 6/13/2017) Modified on 6/13/2017 (mejlc3, COURT STAFF).

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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OJMAR US, LLC,
Plaintiff,

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v.

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DISCOVERY ORDER
Re: Dkt. Nos. 79-80

SECURITY PEOPLE, INC., et al.,
Defendants.

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United States District Court
Northern District of California

Case No. 16-cv-04948-HSG (MEJ)

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Pending before the Court are two matters: a Motion to File Under Seal (Dkt. No. 79) and a

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Joint Discovery Letter Brief (Dkt. No. 80). The undersigned summarized the background of the

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parties’ lawsuit and the law governing their dispute regarding the waiver of the attorney-client

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privilege and work-product protection in a separate order. See Order, Dkt. No. 83. This Order

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addresses the parties’ second Joint Letter Brief regarding the scope of Defendants’ waiver based

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on their assertion of the advice of counsel defense. Jt. Ltr. Br., Dkt. No. 80 (redacted), Dkt. No.

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79-4 (unredacted). The undersigned incorporates by reference its prior discussions regarding the

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factual background of the dispute and applicable law herein.

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A.

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Motion to Seal
As the undersigned previously found in reviewing information Digilock sought to have

sealed in connection with an earlier letter brief (see Order re Mot. to Seal, Dkt. No. 78), the
undersigned again finds Digilock has not established good cause exists for sealing the vast
majority of the information at issue in the present Motion (Dkt. No. 79). In addition, the
undersigned finds the request is not narrowly tailored. See Civ. L.R. 79-5(b). No later than June
16, 2017, Digilock may file a supplemental declaration consistent with the directions set out in the
Order re Mot. to Seal. If no supplemental declaration is filed, the undersigned shall deny the

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Motion to Seal.

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B.

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Scope of Waiver
Plaintiff requests that Defendants be compelled to produce documents relating to patents

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other than the ‘180 Patent. See Jt. Ltr. Br. at 1-3. Defendants rely on the advice of counsel

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defense only with respect to the ‘180 Patent, not with respect to the ‘277 or ‘644 Patents. See id.,

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Ex. 3 (Freiburger Dep.) at 53-54 (counsel confirming on record that Digilock is not relying on Mr.

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Freiburger’s advice of counsel in connection with lawsuits filed to enforce those patents). Plaintiff

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argues that documents relating to the two other patents may support its theory that Defendants

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engaged in a pattern of unlawful conduct. Jt. Ltr. Br. at 2. Plaintiff has not demonstrated that

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United States District Court
Northern District of California

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communications or work product pertaining to the ‘277 or ‘644 Patents fall within the subject
matter of Mr. Freiburger’s advice regarding the ‘180 Patent. Indeed, Plaintiff has identified no
case law suggesting the scope of the waiver extends that far. The Court cannot find that
Defendant’s waiver as to the ‘180 Patent extends to privileged communications or work product
regarding those other two patents. Plaintiff also has not demonstrated that obtaining discovery
regarding these other patents would be proportional to the needs of the case.
For these reasons, the Court denies Plaintiff’s request to compel the production of
privileged documents concerning the ‘277 or ‘644 Patents.
IT IS SO ORDERED.

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Dated: June 13, 2017
______________________________________
MARIA-ELENA JAMES
United States Magistrate Judge

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