Dynetix Design Solutions, Inc. v. Synopsys, Inc.

Filing 451

ORDER DENYING MOTION TO COMPEL PATENT PROSECUTION DOCUMENTS by Judge Paul S. Grewal denying 399 Motion to Compel (psglc1, COURT STAFF) (Filed on 7/11/2013)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

United States District Court
For the Northern District of California

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SAN JOSE DIVISION

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DYNETIX DESIGN SOLUTIONS INC., a
California corporation,

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Plaintiff,
v.

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SYNOPSYS INC., a Delaware corporation,
Defendant.

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Case No.: CV 11-05973 PSG
ORDER DENYING DEFENDANT’S
MOTION TO COMPEL PATENT
PROSECUTION DOCUMENTS
(Re: Docket No. 399)

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At issue in this patent infringement suit are various documents regarding the prosecution of

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United States Patent No. 6,466,898 (“the '898 Patent”). The documents are identified on the

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privilege log of Plaintiff Dynetix Design Solutions Inc. (“Dynetix”). Put bluntly, Dynetix has

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them, and Defendant Synopsys Inc. (“Synopsys”) wants them.

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After multiple hearings and various rounds of briefing, the dispute is down to two specific
documents. They are: a fax from Terence Chan, the named inventor of the ‘898 Patent, to Dr. C.P.

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Chang, and a document from Mr. Chan commenting about prior art references.1 According to
Synopsys, Dynetix has not carried its burden of establishing that either the attorney-client privilege
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See Docket No. 370-2 ¶ 4, Ref. Nos. 34, 45.

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Case No.: C 11-05973 PSG
ORDER DENYING DEFENDANT’S MOTION TO COMPEL PATENT PROSECUTION
DOCUMENTS

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or the attorney work product doctrine protect discovery of the documents. Regarding work product

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protection, Synopsys says that Dynetix sets forth no evidence that the ’898 Patent prosecution

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documents were created with an eye towards litigation, choosing instead to rely on the legally

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incorrect argument that all patent prosecution documents are necessarily made in anticipation of

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litigation. As for the attorney-client privilege, Synopsys says that Dynetix waived the privilege by

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voluntarily producing two other draft patent applications.

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The court quickly dispenses with Dynetix's claim of work product. This court has

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previously held that the work product protection does not apply in ex parte proceedings before the

United States District Court
For the Northern District of California

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Patent Office where the primary concern is with claims raised in the prosecution process.2 Because

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Dynetix offers no evidence showing that the disputed documents were created in anticipation of

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litigation, Dynetix cannot rely upon the attorney work product doctrine as a basis to withhold those

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documents.

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Turning to the issue of attorney-client privilege, Dynetix contends that the draft
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applications it produced were not privileged because they are close to the final, public version of

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the application and thus contain no confidential information. “The applicability of attorney-client

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privilege in a case such as this, in which subject matter jurisdiction extends from the underlying

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See Conner Peripherals, Inc. v. Western Digital Corp., Case No. C93-20117 RMW/EAI, 1993
WL 726815, at *4 (N.D. Cal. June 18, 1993) (“the work product immunity does not apply if the
primary concern is with claims raised in the ex parte patent application prosecution”) (citation
omitted); TeKnowledge Corp. v. Akamai Techs., Inc., Case No. C 02-5741 S1, 2004 WL 2480705,
at *2 (N.D. Cal. Aug. 10, 2004) (“the work product doctrine does not apply to an attorney’s
activities in preparing and prosecuting a patent application, but only to activities performed in
anticipation of litigation”) (citing In re Gabapentin Patent Litig., 214 F.R.D. 178, 184 (D.N.J.
2003)).
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Case No.: C 11-05973 PSG
ORDER DENYING DEFENDANT’S MOTION TO COMPEL PATENT PROSECUTION
DOCUMENTS

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presence of a federal patent law question, is determined by federal common law.”3 Applying this
common law, this court has previously rejected Dynetix's argument.4
Alternatively, Dynetix claims not to rely on anything in the draft applications, undermining

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any prejudice to Synopsys from seeing less than the complete set of its documents regarding the

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'898 Patent prosecution. As Dynetix's production of the drafts took place in this litigation, the

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operative rule here is supplied by Fed. R. Evid. 502. Rule 502 provides that:

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When the disclosure is made in a federal proceeding or to a federal office or agency and
waives the attorney-client privilege or work-product protection, the waiver extends to an
undisclosed communication or information in a federal or state proceeding only if:
(1) the waiver is intentional;
(2) the disclosed and undisclosed communications or information concern the same
subject matter; and
(3) they ought in fairness to be considered together.

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United States District Court
For the Northern District of California

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The present dispute focuses on the third factor: fairness. Synopsys cries selective waiver,
contending that it should not be limited to the communications that Dynetix chose to produce.
Dynetix responds that it disavowal of any reliance on the draft applications effectively avoids any

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unfairness to Synopys at all, ending the inquiry.
Before turning to the issue of fairness, the court must first observe that the Advisory

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Committee’s Note to Rule 502(a) draws a parallel between “intentional” waiver and “voluntary

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disclosure” that constitutes a waiver, such that Dynetix may not take refuge in the fact that it never

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intended to waive the protection by its production of the drafts. The result is that if Dynetix meant

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to disclose the drafts, even if it did not then intend to waive the privilege or protection, the
disclosure meets the “waiver is intentional” requirement of Rule 502(a).

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Wi-LAN, Inc. v. Kilpatrick Townsend & Stockton LLP, 684 F.3d 1364, 1368 (Fed. Cir. 2012).

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See Phoenix Solutions v. Wells Fargo Bank, N.A., 254 F.R.D. 568, 577 (N.D. Cal. 2008) (“[t]he
court knows of no authority supporting [plaintiff’s] proposition made during the September 11
telephonic conference that drafts of patent applications become part of the public record when a
patent application is filed.”).
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Case No.: C 11-05973 PSG
ORDER DENYING DEFENDANT’S MOTION TO COMPEL PATENT PROSECUTION
DOCUMENTS

As to the fairness of allowing Synopsys access to the disputed materials so that they can be

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considered in fairness together with the drafts, Dynetix in the end has the better of the argument.

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Whatever its motivations in producing the drafts (the court itself finds no evidence of sharp

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practice or attempted undue advantage), Dynetix has now made it clear that it will not rely on the

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drafts in any way, shape or form. In light of this broad disavowal, the court cannot say that

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Synopsys still requires access to documents that remain outside its gaze.5 To the extent Synopsys

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fears others, it and Dynetix both should understand that the court will not tolerate any effort by
Dynetix to renege on its pledge.
Synopys's motion to compel is DENIED.

United States District Court
For the Northern District of California

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IT IS SO ORDERED.
Dated: July 11, 2013

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_________________________________
PAUL S. GREWAL
United States Magistrate Judge

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Cf. Wi-LAN, Inc., 684 F.3d at 1371 (citing Chevron Corp. v. Pennzoil Co., 974 F.2d 1156, 1162
(9th Cir. 1992)) (holding that in fairness, a party may not use the privilege as “both as a sword and
a shield”).
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Case No.: C 11-05973 PSG
ORDER DENYING DEFENDANT’S MOTION TO COMPEL PATENT PROSECUTION
DOCUMENTS