BladeRoom Group Limited et al v. Facebook, Inc.

Filing 785

ORDER AFTER JURY TRIAL (DAY 11). Plaintiffs' request to find a waiver of the attorney-client privilege is DENIED. Signed by Judge Edward J. Davila on 4/26/2018. (ejdlc1S, COURT STAFF) (Filed on 4/26/2018)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

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BLADEROOM GROUP LIMITED, et al.,

Case No. 5:15-cv-01370-EJD

Plaintiffs,
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ORDER AFTER JURY TRIAL (DAY 11)

v.
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EMERSON ELECTRIC CO., et al.,

United States District Court
Northern District of California

Defendants.
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I.

OBJECTIONS TO EVIDENCE
Plaintiffs objected to Emerson’s use of images from the current version of Roeslein’s

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website during the examination of Eric Wilcox. Plaintiffs also objected to Emerson’s proposed

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introduction of a spreadsheet during Wilcox’s testimony. Emerson did not proceed with this

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evidence, however. Accordingly, the court declines to rule on these objections since, as of now,

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they are moot.

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II.

WAIVER OF ATTORNEY-CLIENT PRIVILEGE
Plaintiffs argue that Emerson implicitly waived the attorney-client privilege during

Wilcox’s testimony on April 24, 2018.
The testimony relevant to this issue is as follows:
Mr. Holthouser:

What, in your experience with Emerson, is the
respect component of Emerson culture with
respect to intellectual property?

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Mr. Reese:

Your Honor, lacks foundation.

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The Court:

Is the question - I’m not sure -

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Mr. Holthouser:

The question is based upon his experience at

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Case No.: 5:15-cv-01370-EJD
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the time with Emerson and his culture at
Emerson and how they respect other people’s
intellectual property.

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Mr. Wilcox:

That’s different than that question. Do you
understand this question.
I do.

The Court:

You can answer that question.

Mr. Holthouser:

I apologize for not being clear. Do you
understand the question?

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Mr. Wilcox:

I do.

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Mr. Holthouser:

And can you answer that?

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Mr. Wilcox:

I think there’s a heightened awareness and a
good solid legal team, which is kind of funny
for an engineer to say, but there’s a lot of
focus on making sure that we’re a very ethical
company.

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The Court:

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Northern District of California

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That’s something that I experienced when I
was a customer of Emerson as well at my
career at Dell.

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It was one of the things, I think, that is
associated with the Emerson culture.

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Mr. Holthouser:

So when you receive information that relates
to competitors, is that something that happens
quite often in your experience?

Mr. Wilcox:

We - there’s mention of competitors. I don’t
know about “quite often.” That’s qualitative.

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I’m working on a project right now for a cable
landing station. I know who my competitor
is. The customer often talks about that and
says kind of as an enticement to make sure
that you’re performing well and you know
you’re not the only person who is going to be
bidding on this job.

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However, if something that is shared that I
wouldn’t want shared of my company, we
certainly take action with that and share it
with legal and ask for instruction, and if
brought up in a meeting, we would direct it at
the time that it’s inappropriate to share.

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Tr., Vol. 10, at 2150:4-2151:17.

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Plaintiffs contend this portion of Wilcox’s “protect and respect” testimony “injects” into

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the minds of the jurors certain logic about Wilcox’s conduct with respect to his exposure to

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Plaintiffs’ confidential information: that if Wilcox did not share anything about Plaintiffs with the

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Emerson legal team, then Wilcox must not have been exposed to Plaintiffs’ confidential

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information. And based on that contention, Plaintiffs argue that Wilcox’s communications with

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counsel, or the lack of those communications, have been placed at issue and permit Plaintiffs

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access to documents withheld by Emerson on privilege grounds in order to confirm or deny

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whether the implication is true.

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Issues concerning the attorney-client privilege in a diversity case like this one are governed
by state law. KL Grp. v. Case, Kay & Lynch, 829 F.2d 909, 918 (9th Cir. 1987) (citing Fed. R.

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United States District Court
Northern District of California

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Evid. 501). Generally, “[t]he privilege authorizes a client to refuse to disclose, and to prevent

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others from disclosing, confidential communications between attorney and client.” Mitchell v.

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Super. Ct., 37 Cal. 3d 591, 599 (1985). Its purpose “is to safeguard the confidential relationship

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between clients and their attorneys so as to promote full open discussion of the facts and tactics

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surrounding individual legal matters.” Chicago Title Ins. Co. v. Super. Ct., 174 Cal App. 3d 1142,

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1149 (1986).

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But “[t]he privilege which protects attorney-client communications may not be used both

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as a sword and a shield.” Chevron Corp. v. Pennzoil Co., 974 F.2d 1156, 1162 (9th Cir. 1992).

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Consequently, an implied waiver of the attorney-client privilege “occurs where the plaintiff has

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placed in issue a communication which goes to the heart of the claim in controversy.” Chicago

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Title Ins. Co., 174 Cal. App 3d at 1149; accord Chevron Corp., 974 F.2d at 1162 (“Where a party

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raises a claim which in fairness requires disclosure of the protected communication, the privilege

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may be implicitly waived.”); Rockwell Int’l Corp. v. Super. Ct., 26 Cal. App. 4th 1255, 1268

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(1994) (“The in issue doctrine creates an implied waiver of the privilege only when the client

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tenders an issue involving the substance or content of a protected communication, not where the

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privileged communication simply represents one of several forms of indirect evidence in a

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particular case.”).

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Wilcox’s testimony did not place in issue a legal communication, or the absence of a legal
communication, going to the “heart” of any claim. This case is about whether or not Emerson

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misappropriated Plaintiffs’ trade secrets or improperly disclosed Plaintiffs’ confidential

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information. Counsel’s questions and Wilcox’s responses made no reference to Plaintiffs.

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Instead, counsel asked Wilcox about general practices at Emerson - termed the “Emerson culture”

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by Wilcox - and his experience working there. If anything, Wilcox’s testimony simply provides

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introductory information about Emerson and his impressions as an employee. This case is not

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about those peripheral issues, even if they have some relevance to Plaintiffs’ claims or to

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Emerson’s defense. See United States v. Amlani, 169 F.3d 1189, 1195 (9th Cir. 1999) (holding

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that privileged communications do not become discoverable simply because they are related to

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United States District Court
Northern District of California

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issues in litigation).

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Moreover, the court is not persuaded that Wilcox’s testimony left the jury with the

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impression Plaintiffs described. The questions and responses as recited above represent a very

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small part of a witness examination that took place over two full court days, covering several

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topics. Emerson did not follow-up on the general-practice testimony by asking Wilcox, for

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example, whether or not he ever approached the Emerson legal team with information about

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Plaintiffs. Under these circumstances, it is unlikely this or any jury would unduly emphasize the

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non-specific testimony about company practice over testimony directed at the claims asserted in

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this case. It would be improper, and indeed contrary to the governing law, to find an implicit

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waiver based on an argument composed entirely of speculation.

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In sum, “fairness” does not require the disclosure of protected communications here (see

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Chevron Corp., 974 F.2d at 1162), and the cases cited by Plaintiffs during argument, all of which

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involve parties placing attorney-client communications directly at issue as part of a claim or

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defense, are distinguishable. They do not compel a different conclusion.

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Plaintiffs’ request to find a waiver of the attorney-client privilege is DENIED. Since this

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issue has been resolved against waiver, there is no need for Wilcox to testify further given

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Plaintiffs’ representations at the close of proceedings on April 25, 2018. Wilcox is therefore

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released as a trial witness.

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IT IS SO ORDERED.
Dated: April 26, 2018
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EDWARD J. DAVILA
United States District Judge

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United States District Court
Northern District of California

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