Harrier Technologies, Inc. v. CPA Global Limited et al
Filing
61
ORDER denying Non-Party Kenyon & Kenyon, LLP's 35 Motion to Quash, and granting in part and denying in part 35 Motion for Protective Order. The documents identified on the privilege log attached to the Motion to Quash as exhibit "B" shall be produced to the defendants within fourteen (14) days of this Order. Signed by Judge Holly B. Fitzsimmons on 12/14/12. (Katz, Samantha)
UNITED STATES DISTRICT COURT
DISTRICT OF CONNECTICUT
HARRIER TECHNOLOGIES, INC.
:
:
:
v.
:
:
CPA GLOBAL LIMITED and
:
CPA GLOBAL NORTH AMERICA, LLC :
CIV. NO. 3:12CV167 (WWE)
RULING REGARDING MOTION TO QUASH AND/OR FOR PROTECTIVE
ORDER [DOC. # 35]
Non-party Kenyon & Kenyon LLP, an intellectual property law
firm,
moves
for
an
order
quashing
the
subpoena
served
by
defendants CPA Global Limited and CPA Global North America, or,
in the alternative, moves for a protective order. [Doc. # 35].
Kenyon has provided the documents at issue for an in camera
review along with a privilege log describing the nature of the
documents. At issue are twelve documents, which Kenyon & Kenyon
LLP argues are protected by the attorney-client privilege and/or
the work product doctrine. For the reasons that follow, the
motion to quash is DENIED and the motion for protective order is
GRANTED IN PART AND DENIED IN PART.
Background
Plaintiff Harrier Technologies is a designer and developer
of
technology
used
in
the
oil
industry,
and
defendants
CPA
Global Limited and CPA Global North America, LLC are a worldwide
intellectual property management company that provides patent
1
renewal services.
Plaintiff alleges that defendants failed to
make timely annuity payments for a Harrier patent application
filed in Saudi Arabia, leading to the
patent rights in that country.
permanent loss
of the
Defendants deny any wrongdoing.
Non-party Kenyon & Kenyon LLP is an intellectual property law
firm that for some period handled plaintiff’s U.S. and foreign
patent filings.
Legal Standard
The
attorney-client
privilege
protects
confidential
communications between client and counsel made for the purpose
of obtaining or providing legal assistance. United States v.
Constr. Prods. Research, Inc., 73 F.3d 464, 473 (2d Cir. 1996).
The Court construes the privilege narrowly because it renders
relevant
information
undiscoverable;
we
apply
it
“only
where
necessary to achieve its purpose.” Fisher v. United States, 425
U.S. 391, 403 (1976); see In re Grand Jury Investigation, 399
F.3d 527, 531 (2d Cir. 2005). The burden of establishing the
applicability of the privilege rests with the party invoking it.
In re Grand Jury Proceedings, 219 F.3d 175, 182 (2d Cir. 2000);
United
States
v.
Int'l
Bhd.
of
Teamsters,
Chauffeurs,
Warehousemen and Helpers of Am., AFL-CIO, 119 F.3d 210, 214 (2d
Cir. 1997).
The Court uses a three-pronged standard for determining the
legitimacy
of
an
attorney-client
2
privilege
claim.
A
party
invoking
the
attorney-client
privilege
must
show
(1)
a
communication between client and counsel that (2) was intended
to be and was in fact kept confidential, and (3) was made for
the purpose of obtaining or providing legal advice. In re County
of
Erie,
473
F.3d
413,
419
(2d
Cir.
2007);
Constr.
Prods.
Research, Inc., 73 F.3d at 473.
Again, the party asserting the privilege must establish the
essential elements of the privilege.
Constr. Prods. Research,
Inc., 73 F.3d at 473 (citing United States v. Adlman, 68 F.3d
1495, 1499 (2d Cir. 1995)).
The work product protection, set forth in Federal Rule of
Civil
Procedure
26(b)(3)(A)
provides
that,
“[o]rdinarily,
a
party may not discover documents and tangible things that are
prepared in anticipation of litigation or for trial by or for
another party or its representative (including the other party's
attorney, consultant, surety, indemnitor, insurer, or agent).”
“The
work-product
rule
shields
from
disclosure
materials
prepared ‘in anticipation of litigation’ by a party, or the
party's representative, absent a showing of substantial need.”
Adlman, 68 F.3d at 1501 (citing Fed.R.Civ.P. 26(b)(3)). “The
purpose of the doctrine is to establish a zone of privacy for
strategic
litigation
planning
and
to
prevent
one
party
from
piggybacking on the adversary's preparation.” Id. (citing see
United States v. Nobles, 422 U.S. 225, 238, 95 S.Ct. 2160, 2170,
3
45 L.Ed.2d 141 (1975) (“At its core, the work-product doctrine
shelters
the
mental
processes
of
the
attorney,
providing
a
privileged area within which he can analyze and prepare his
client's case.”); Hickman v. Taylor, 329 U.S. 495, 516, 67 S.Ct.
385, 396, 91 L.Ed. 451 (1947) (Jackson, J., concurring) (work
product rule intended to insure that one side does not “perform
its
functions
...
on
wits
borrowed
from
the
adversary”);
Restatement of the Law Governing Lawyers, Chap. 5 at 1 (Tent.
Draft No. 6 1993) (“the doctrine seeks to preserve a zone of
privacy
in
which
a
lawyer
can
work
free
from
intrusion
by
opposing counsel”)).
As articulated in QBE Ins. Corp. v. Interstate Fire &
Safety Equip. Co., Inc., No. 3:07cv1883(SRU), 2011 WL 692982, at
*2
(D. Conn. Feb. 18, 2011),
In determining whether the work-product doctrine applies, a
court must undertake a two-step analysis. First, it must
decide whether the sought “documents and tangible things”
were “prepared in anticipation of litigation or for trial
by or for another party or its representative.”
Fed.R.Civ.P. 26(b)(3)(A). The party asserting work-product
protection bears the burden of proof on that step. If the
party asserting work-product protection meets its burden,
then the court moves to the second step of analysis, which
examines whether the evidence is nonetheless discoverable.
That requires the party seeking discovery to show that the
documents and other tangible things are otherwise
discoverable under Rule 26(b)(1) and that the party
“cannot, without undue hardship, obtain their substantial
equivalent by other means.” Id.
4
Discussion
Documents 8, 9, 10, 24, 25, 26
Kenyon
asserts
an
attorney-client
privilege
for
Harrier
with regard to documents marked 8, 9, 10, 24, 25, and 26. These
documents are communications between Lee Miller, an executive of
Harrier
Technologies,
addressing
concerns
and
by
attorneys
Harrier
that
from
Kenyon
annuity
&
payments
Kenyon
on
the
Saudi patents had not been made, and resolving what appear to be
payment disputes between Harrier and Kenyon. The Court finds
that these documents do not satisfy the third requirement of the
attorney-client test, in that they were not made for the purpose
of
obtaining
or
providing
legal
advice.
Rather,
Harrier
was
demanding a factual explanation of the alleged failure of Kenyon
to
perform
certain
business
functions
on
including filings and annuity payments.
behalf
of
Harrier,
See, e.g., Urban Box
Office Network, Inc. v. Interfase Managers, L.P., No. 01 Civ.
8854(LTS)(THK), 2006 WL 1004472, at *2 (S.D.N.Y. April 17, 2006)
(“[T]he
[attorney-client]
privilege
does
not
protect
the
client’s knowledge of relevant facts, whether or not they were
learned from his counsel, or facts learned by the attorney from
independent sources.”) (citing Baptiste v. Cushman & Wakefield,
Inc.,
No.
03
Civ.
2102(RCC)(THK),
2004
WL
330235,
at
*1
(S.D.N.Y. Feb. 20, 2004)). The motion to quash is DENIED with
regard to this category of documents.
5
Documents 298-300
Kenyon
privilege
asserts
for
an
an
attorney-client
internal
memorandum
and
work
circulated
product
among
Kenyon
employees, dated September 25, 2010. By and large, this internal
memorandum
does
not
satisfy
the
first
requirement
of
the
attorney-client privilege test that the communication be between
client and attorney. The references to information provided by
the client make it clear that the client communications were not
for the purposes of obtaining legal advice. The document is also
not shielded by work product protection, as it was not prepared
by
attorneys
in
representation.
the
This
course
internal
of
providing
memorandum
Harrier
reports
a
legal
series
of
events related to the failure to pay the 2006 annuity on the
Saudi
Arabia
patent;
it
does
not
convey
legal
analysis
or
opinions. See Itoba Ltd. v. LEP Group PLC, 930 F. Supp. 36, 43
(D.
Conn.
1996)
investigation
is
(“To
made
the
by
extent
that
management
an
internal
itself,
corporate
there
is
no
attorney-client privilege…and by the same token, no work product
protection.”) (citing In re Grand Jury Subpoena Dated Dec. 19,
1978, 599 F.2d 504, 510 (2d Cir. 1979)). As such, the document
is not shielded by the work product protection.
Document 301
Kenyon asserts work product protection with regard to this
internal memorandum, created sometime after August 25, 2009. The
6
document is a timeline of the work done by Kenyon on the Saudi
Arabia patent from 2004 to August 25, 2009, with an emphasis on
the time period in 2006 when Kenyon learned that the patent had
lapsed due to non-payment of the annuity. As with the previous
document, this memorandum was not prepared in the course of
providing Harrier with representation, but rather was prepared
as
part
of
Kenyon’s
internal
annuity had not been paid.
inquiry
to
determine
why
the
The author of this document is
identified elsewhere as the docket manager for Kenyon; she is
apparently not an attorney. This document is not shielded by the
work product protection.
Documents 302-308
Kenyon asserts work product protection for the documents
marked 301 through 308. This group of documents includes e-mails
circulated from August 21, 2006, through September 11, 2006,
between
Kenyon
employees
(all
but
one
identified
as
non-
attorneys) after learning that the Saudi patent had lapsed due
to non-payment of the annuity. Kenyon’s assertion of the work
product protection is misplaced. Kenyon is not a party to this
action, and the documents were not prepared as part of Kenyon’s
representation of Harrier in anticipation of litigation. Rather,
these
communications
inquiry
upon
learning
were
of
part
the
of
lapse
the
of
firm’s
the
own
internal
patent.
Indeed,
Kenyon did not convey these facts to Harrier, which remained
7
unaware of the patent lapse until 2009. Here, the Court finds
that Kenyon has not met its burden that the documents at issue
satisfy Fed.R.Civ.P. 26(b)(3)(A).
Finally, the Court partially accepts Kenyon’s argument that
the Notice of Deposition is overly broad and unduly burdensome
in that the requests extend beyond the Saudi Arabian patent at
issue in this case. As such, the motion for protective order is
GRANTED
IN
PART,
to
limit
the
subpoena
to
documents
and
communications related to the 107’ Application, as defined in
the
Notice
of
Deposition.
The
documents
identified
on
the
privilege log attached to the motion to quash as exhibit “B”
shall be produced to the defendants within fourteen (14) days of
this Order.
This is not a Recommended Ruling. This is a discovery
ruling or order which is reviewable pursuant to the “clearly
erroneous” statutory standard of review. 28 U.S.C. §
636(b)(1)(A); Fed.R.Civ.P. 72(a); and D. Conn. L. Civ. R. 72.2.
As such, it is an order of the Court unless reversed or modified
by the district judge upon motion timely made.
SO ORDERED at Bridgeport this 14th day of December 2012.
_______/s/________________
HOLLY B. FITZSIMMONS
UNITED STATES MAGISTRATE JUDGE
8
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?