Gen-Probe Incorporated v. Becton Dickinson and Company

Filing 408

ORDER Overruling Gen-Probe's Objections to May 30, 2012 Order Resolving Joint Motion for Resolution of Discovery Dispute (Do. No. 359 ). Signed by Judge Roger T. Benitez on 7/18/2012.(knb)

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UNITED STATES DISTRICT COURT

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SOUTHERN DISTRICT OF CALIFORNIA

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GEN-PROBE INCORPORATED,

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CASE NO. 09-cv-2319 – BEN (NLS)
Plaintiff,

ORDER OVERRULING GENPROBE’S OBJECTIONS TO MAY
30, 2012 ORDER RESOLVING
JOINT MOTION FOR
RESOLUTION OF DISCOVERY
DISPUTE (TWENTIETH
DISPUTE)

vs.

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BECTON DICKINSON AND COMPANY,
Defendant.

[Doc. No. 359]

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This is a patent infringement action. Plaintiff Gen-Probe Incorporated (“Gen-Probe”) alleges

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that Defendant Becton Dickinson & Company (“BD”) infringes its Automation Patents. Presently

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before the Court are Gen-Probe’s objections to Magistrate Judge Stormes’ May 30, 2012 Order

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resolving the parties’ joint motion for resolution of a discovery dispute (“May 30, 2012 Order”). BD

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filed a response to the objections. Having considered the parties’ arguments, and for the reasons set

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forth below, the Court OVERRULES Gen-Probe’s objections to the May 30, 2012 Order.

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BACKGROUND

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As Judge Stormes’ Order explains, Gen-Probe contracted with RELA, Inc. to develop an

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automated nucleic acid detection system in 1996. RELA hired Mark Toukan as an independent

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contractor to work on the project. Gen-Probe claims that everyone working on the project was

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required to assign their rights to anything resulting from the project to RELA, although a copy of Mr.

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Toukan’s contact assigning his rights cannot be located. In 2002, one of Gen-Probe’s outside patent

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attorney’s, Richard Wydeven, contacted Mr. Toukan about his work on the project by email and phone.

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These communications are the subject of this discovery dispute.

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This dispute was initially brought before the Magistrate Judge in the parties’ fifteenth discovery

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dispute. Judge Stormes found that the communications were subject to the attorney-client privilege

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because Mr. Toukan was the equivalent of an employee. In reaching this conclusion, Judge Stormes

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accepted Gen-Probe’s assertion in its privilege log that all the communications related to “patent

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application” and “patent matters” and Gen-Probe’s assertion that Mr. Wydeven communicated with

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Mr. Toukan about matters of patentability.

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The issue arose again during the deposition of Gen-Probe’s Chief Intellectual Property

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Counsel. The witness was instructed not to answer numerous questions as protected by the attorney-

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client privilege. In response, the parties filed their twentieth discovery dispute in which BD sought

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to compel the production of communications between Mr. Wydeven and Mr. Toukan. On May 22,

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2012, Judge Stormes ordered Gen-Probe to produce the Wyveden-Toukan communications for in

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camera review. After conducting an in-camera review, Judge Stormes found that the primary purpose

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of the communications was to obtain an assignment of rights from Mr. Toukan and ordered the

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documents produced. Gen-Probe objects to that order and seeks to reestablish the privilege over those

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communications.

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Gen-Probe asserts that the communications concern only a patentability investigation

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conducted to provide legal advice to Gen-Probe and the communications are protected by the attorney-

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client privilege. BD claims that the communications were an attempt to obtain an assignment of Mr.

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Toukan’s rights as an inventor and that Mr. Toukan is in fact an omitted inventor of a component of

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the Automation Patents, making the communications relevant to Gen-Probe’s standing and BD’s

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invalidity defense.

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LEGAL STANDARD

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Federal Rule of Civil Procedure 72(a) provides that whenever a magistrate judge issues a

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written order deciding a non-dispositive pretrial matter, “[a] party may serve and file objections to the

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order within 14 days after being served with a copy.” “The district judge in the case must consider
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timely objections and modify or set aside any part of the order that is clearly erroneous or is contrary

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to law.” FED. R. CIV. P. 72(a) (emphasis added); see also 28 U.S.C. § 636(b)(1)(A). The magistrate

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judge’s decision on non-dispositive matters is entitled to “great deference” by the district court. See

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United States v. Abonce-Barrera, 257 F.3d 959, 969 (9th Cir. 2001). To conclude that a magistrate

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judge’s decision was clearly erroneous, the district court must arrive at a “‘definite and firm conviction

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that a mistake has been committed.’” Folb v. Motion Picture Indus. Pension & Health Plans, 16 F.

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Supp. 2d 1164, 1168 (C.D. Cal. 1998) (citation omitted), aff’d, 216 F.3d 1082 (9th Cir. 2000); see also

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Concrete Pipe & Products of Cal., Inc. v. Constr. Laborers Pension Trust for S. Cal., 508 U.S. 602,

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622 (1993).

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DISCUSSION

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Gen-Probe objects to Judge Stormes’ finding that the overall purpose of the communications

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between Mr. Wydeven and Mr. Toukan was to obtain an assignment of rights rather than to obtain

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legal services. In determining whether the attorney-client privilege applies, “the central inquiry is

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whether the communication is one that was made by a client to an attorney for the purpose of obtaining

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legal advice or services.” In re Spalding Sports Worldwide, Inc., 203 F.3d 800, 805 (Fed. Cir. 2000).

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As Judge Stormes acknowledged, just the inclusion of the assignment of rights in a document does

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not destroy the privilege, if the overall tenor of the document indicates a request for legal advice or

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services. Id. at 806.

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After reviewing the communications in camera, Judge Stormes determined that the

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communications were an effort by Gen-Probe to convince Mr. Toukan to assign his rights in the

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invention and as such, were not confidential communications for the purpose of securing legal advice.

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As Judge Stormes explained, the communications were about obtaining Mr. Toukan’s assignment of

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his rights as an inventor. Gen-Probe’s claim that Mr. Toukan would have already assigned his rights

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as part of his work for RELA does not change the substance of the communications. The

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communications focus almost entirely on obtaining an assignment of Mr. Toukan’s rights as an

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inventor. The initial email seeks to confirm Mr. Toukan’s contribution to the invention of the

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luminometer and every following communication seeks an assignment of Mr. Toukan’s rights.

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Having reviewed Gen-Probe’s objections, the Court concludes that Judge Stormes’
determination was neither “clearly erroneous” nor “contrary to law.”

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CONCLUSION
For the foregoing reasons, Gen-Probe’s objections to the May 30, 2012 Order are
OVERRULED.
IT IS SO ORDERED.

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DATED: July 18, 2012

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Hon. Roger T. Benitez
United States District Judge

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