Sprint Communications Company L.P. v. Comcast Cable Communications, LLC et al

Filing 177

ORDER granting in part and denying in part 153 Motion to Compel. Signed by Magistrate Judge James P. O'Hara on 2/11/2014. (ah)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF KANSAS
SPRINT COMMUNICATIONS CO., L.P.,

)
)
Plaintiff,
)
)
v.
)
)
COMCAST CABLE COMMUNICATIONS, )
LLC, et al.,
)
)
Defendants.
)
______________________________________ )
)
)
Plaintiff,
)
)
v.
)
)
CABLE ONE, INC.,
)
)
Defendant.
)
______________________________________ )

CONSOLIDATED CASES

Case No. 11-2684-JWL

SPRINT COMMUNICATIONS CO., L.P.,

)
)
Plaintiff,
)
)
v.
)
)
TIME WARNER CABLE, INC., et al.,
)
)
Defendants.
)
______________________________________ )

Case No. 11-2685-JWL

SPRINT COMMUNICATIONS CO., L.P.,

ORDER

11-2684-JWL-153.wpd

Case No. 11-2686-JWL

These consolidated cases involve claims by Sprint Communications Company, L.P.
that defendants are infringing twelve patents related to broadband and packet-based
telephony products. Defendants have filed a motion to compel Sprint to produce documents
on four topics about which Sprint in-house attorneys testified in a separate patentinfringement lawsuit brought by Sprint against Vonage Holdings Corp. and Vonage America,
Inc. (collectively, “Vonage”) (ECF doc. 153). In response to defendants’ document requests
seeking these documents, Sprint objected on the grounds that the documents were protected
from disclosure by either the attorney-client privilege or the work-product doctrine.
Defendants argue that to the extent the documents were once privileged, Sprint waived that
privilege via the testimony in the Vonage trial. Because the undersigned U.S. Magistrate
Judge, James P. O’Hara, finds that Sprint’s response to the document requests waived any
objection Sprint had to producing documents on two of the topics, the motion is granted in
part. But because Sprint’s objections were proper as to two of the topics, the motion also is
denied in part.
I.

Background
In September 2007, U.S. District Judge John W. Lungstrum presided over a jury trial

in the case of Sprint Communications Company LP v. Vonage Holdings Corp.,1 involving
claims by Sprint that Vonage had infringed patents from two related families of patents
issued to named inventor Joseph Christie (the “Christie Patents”). During the Vonage trial,

1

Case No. 05-2433.

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Sprint called two in-house attorneys, Michael Setter and Harley Ball, to testify about
Christie’s inventions, Sprint’s evaluation of their patentability, Sprint’s patent applications,
and Sprint’s decision to sue Vonage for infringement. Sprint’s trial counsel, B. Trent Webb,
also discussed these topics in his opening statement and closing argument.
In these consolidated cases, seven Christie Patents are at issue, including five that
were at issue in Vonage.2 On May 10, 2013, defendants served their First Set of Common
Requests for Production to Sprint. A number of the specific requests sought documents
relating to the subject matter of Sprint’s disclosures during the Vonage trial.3 Defendants
accurately characterize these requests as seeking information related to the following four
topics: “(1) assessments by Sprint’s legal department of the patentability of Mr. Christie’s
purported inventions; (2) the preparation or prosecution of patent applications for such
inventions (including instructions and other communications of Sprint’s legal department
relating thereto); (3) communications and analysis of Sprint’s legal department concerning
its pre-suit investigation into whether Vonage infringed the patents concerning Mr. Christie’s
purported inventions; and (4) communications among Sprint’s legal department and its
executives regarding authorization to contact Vonage about alleged infringement of such

2

The five patents asserted both here and in Vonage are U.S. patent numbers 6,633,561,
6,463,052, 6,452,932, 6,473,429, and 6,298,064. The two additional Christie Patents asserted
here are U.S. patent numbers 6,343,084 and 7,286,561. Sprint also asserts infringement by
defendants of U.S. patent numbers 6,262,992, 6,330,224, 6,563,918, 6,697,340, and
6,639,912.
3

ECF doc. 155-3, Request Nos. 18–20, 23, 43, 45.

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patents and to sue Vonage for such alleged infringement.”4
Sprint responded to the document requests on June 13, 2013, asserting objections on
several grounds, including (as relevant here) that the information sought was “protected from
discovery by the attorney-client privilege, work product doctrine, and/or any other applicable
privilege or immunity.”5 But with respect to three requests which sought information on
topics one and two above, Sprint stated that it would produce non-privileged and responsive
documents “subject to and without waiving” its objections.6
Defendants now move the court to compel Sprint to produce documents related to the
four topics at issue, asserting that Sprint’s presentation in the Vonage trial waived any
attorney-client or work-product protection to which the documents were otherwise entitled.
II.

Waiver of Discovery Objections
Defendants’ document requests numbered 18–20 sought documents that relate to

Sprint’s meetings with Christie, Sprint’s assessment of the patentability (including the search
for and analysis of prior art) of purported inventions in the Sprint Patent Family, and Sprint’s
prosecution of patent applications for Christie’s inventions (i.e., topics one and two). As
noted above, Sprint objected to each of these requests on the basis that they sought privileged
information. Despite its objections, however, for each of these requests Sprint stated,

4

ECF doc. 154 at 6–7.

5

ECF doc. 155-6.

6

Id. at responses to Request Nos. 18–20.

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“Subject to and without waiver of the foregoing objections . . . Sprint will produce nonprivileged responsive documents within its custody and control after a reasonably diligent
search relating to the non-privileged facts discussed during the Sprint v. Vonage trial (if
any).”7 This purported reservation of rights by Sprint was improper and ultimately has the
effect of waiving Sprint’s objections to these specific document requests.
The court recognizes that it has become common practice among many practitioners
to respond to discovery requests by asserting objections and then answering “subject to” or
“without waiving” their objections. This practice, however, is manifestly confusing (at best)
and misleading (at worse), and has no basis at all in the Federal Rules of Civil Procedure.
The court joins a growing number of federal district courts in concluding that such
conditional answers are invalid and unsustainable.
In this district, U.S. Magistrate Judge David J. Waxse explained the confusing nature
of conditional answers. In Pro Fit Management, Inc. v. Lady of America Franchise Corp.,
the defendant asserted privilege objections to the plaintiff’s document requests, but then
stated, subject to its objections, it would produce responsive, non-privileged documents.8
The plaintiff filed a motion to compel, arguing that such conditional responses “obscure[]
potentially discoverable information” and leave the requesting party “with reason to believe
that important documents have not been produced without a mechanism to compel

7

Id.

8

No. 08-2662, 2011 WL 939226, at *7–9 (D. Kan. Feb. 25, 2011).

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production.”9 Judge Waxse agreed with the plaintiff, ruling that when a party responds that
it is producing documents “subject to and without waiving its objections,” the requesting
party “is left guessing as to whether [the producing party] has produced all documents, or
only produced some documents and withheld others on the basis of privilege.”10 Federal
district courts in Florida have reached the same conclusion. For example, in Consumer
Electronics Association v. Compras and Buys Magazine, Inc., the court held that objections
followed by an answer “preserve[] nothing and serve[] only to waste the time and resources
of both the Parties and the Court.”11 The court reasoned that “such practice leaves the
requesting Party uncertain as to whether the question has actually been fully answered or
whether only a portion of the question has been answered.”12
In addition to their failure to convey any information, conditional responses are not
permitted by the Federal Rules of Civil Procedure. Rule 34(b)(2) permits only three
responses to a request for production of documents: produce the documents as requested,

9

Id. at *8.

10

Id. at *9. See also Strasburg-Jarvis, Inc. v. Radiant Sys., Inc., No. 06-2552, 2009
WL 129361, at *5–6 (D. Kan. Jan. 20, 2009) (holding that an interrogatory response stating,
“subject to the foregoing objections,” the responding party “has or will produce the
documents in its possession,” was insufficient because “it is unclear whether [the producing
party] has fully complied with this interrogatory”).
11

No. 08-21085, 2008 WL 4327253, at *2 (S.D. Fla. Sept. 18, 2008); see also Mann
v. Island Resorts Dev., Inc., No. 3:08cv297/RS/EMT, 2009 WL 6409113, at *2–3 (N.D. Fla.
Feb. 21, 2009) (holding objection waived where party answered in spite of objection).
12

Consumer Elec. Ass’n, 2008 WL 4327253, at *2.

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“state an objection to the request” as a whole, or state an “objection to part of [the] request”
provided that the response specifies the part objected to and responds to the nonobjectionable portion.13 “Objecting but answering subject to the objection is not one of the
allowed choices under the Federal Rules.”14 Thus, no objections may be “reserved” under
the rules; “they are either raised or they are waived.”15
Finally, courts have recognized that conditional responses violate common sense. In
Haeger v. Goodyear Tire and Rubber Co., U.S. District Judge Roslyn O. Silver of the
District of Arizona concluded that if Rule 34 were read to allow parties to combine
objections with a partial response that does not specify whether other potentially responsive
material is being withheld, “discovery would break down in practically every case.”16 Judge
Silver explained,
A litigant with any viable objection to a discovery request would make that
objection and then produce whatever portion of otherwise responsive

13

Haeger v. Goodyear Tire & Rubber Co., 906 F. Supp. 2d 938, 976 (D. Ariz. 2012)
(quoting Fed. R. Civ. P. 34(b)(2)).
14

Tardif v. People for the Ethical Treatment of Animals, No. 2:09-cv-537-FtM-29SPC,
2011 WL 1627165, at *1 (M.D. Fla. April 29, 2011); see also C.T. v. Liberal Sch. Dist., Nos.
06-2093, 06-2360, 2008 WL 394217, at *5 (D. Kan. Feb. 11, 2008) (holding that response
listing various objections but stating that documents would be produced “without waiving
said objections” was improper because it “is neither an objection, nor an adequate
identification of the responsive document”); Haeger, 906 F. Supp. 2d at 976 (“What
Goodyear could not do, but what it did, was combine its objections with a partial response
without any indication that the response was, in fact, partial.”).
15

Tardif, 2011 WL 1627165, at *2.

16

906 F. Supp. 2d at 977.

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documents it wished to produce. Under this approach, a party would have no
obligation to indicate that its production was partial and the opposing party
would have no way of knowing the production was partial. Absent an
indication of what, exactly, the responding party was objecting to, courts
would have no way of assessing the propriety of the objections. Instead, courts
would be flooded with motions to compel by litigants seeking to confirm that
undisclosed responsive documents did not exist. And courts would then be
forced to ask counsel, over and over again, “Do other documents exist?”17
Similarly, though more succinctly, the Tardif court concluded, “answering subject to an
objection lacks any rational basis. There is either a sustainable objection to a question or
request or there is not.”18
For these reasons, the court follows its sister courts in holding, “whenever an answer
accompanies an objection, the objection is deemed waived and the answer, if responsive,
stands.”19 Applying this rule, Sprint’s conditional answers to defendants’ document requests
numbered 18–20 waived any objections Sprint had to those requests.20 Sprint’s objections
to the requests, accordingly, are overruled, and defendants’ motion to compel is granted to
the extent that it seeks responses to these requests. Sprint is ordered to produce information
related to (1) assessments by Sprint’s legal department of the patentability of the Christie
Inventions, and (2) the preparation or prosecution of patent applications for such inventions.

17

Id.

18

Tardif, 2011 WL 1627165, at *2.

19

Estridge v. Target Corp., No. 11-61490, 2012 WL 527051, at *2 (S.D. Fla. Feb. 16,
2012) (quoting Tardif, 2011 WL 1627165, at *2).
20

The same can be said of Sprint’s conditional response to Request No. 51, which
defendants assert also seeks information on the first two topics. See ECF doc. 154 at 11 n.8.
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III.

Applicability of the Attorney-Client Privilege and Work-Product Doctrine
Defendants’ motion to compel also asks the court to compel Sprint to produce

documents responsive to Request No. 43 to the extent that it seeks documents that relate to
communications and analysis by Sprint’s legal department concerning Sprint’s investigation
into whether Vonage infringed the Christie Patents (topic three); and documents responsive
to Request No. 45 to the extent that it seeks documents that relate to communications among
Sprint’s legal department and executives regarding authorization to contact Vonage about
alleged infringement of the Christie Patents and to sue Vonage for such alleged infringement
(topic four). As it did in response to document Request Nos. 18–20, Sprint objected to
Request Nos. 43 and 45 on the basis that the requests sought information protected from
discovery by the attorney-client privilege and/or the work-product doctrine. However, Sprint
did not waive its objections in Request Nos. 43 and 45 by conditionally answering this
discovery. The court therefore evaluates these objections on their merits.
A.

Legal Standards

Because this litigation arises out of a federal statutory scheme, federal law governs
the application of the attorney-client privilege and work-product doctrine.21 Moreover,
because these privilege issues are deemed “procedural matters that are not unique to patent
issues,” the law of the circuit in which this court sits (as opposed to Federal Circuit law)

21

Fed. R. Evid. 501; New Jersey v. Sprint Corp., 258 F.R.D. 421, 425 (D. Kan. 2009).

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applies.22
Under federal common law, the essential elements of the attorney-client privilege are:
(1) where legal advice of any kind is sought (2) from a professional legal advisor in his
capacity as such, (3) the communications relating to that purpose, (4) made in confidence (5)
by the client, (6) are at his instance permanently protected (7) from disclosure by himself or
by the legal advisor, (8) except if the protection is waived.23 The party asserting the privilege
bears the burden of establishing that the elements are met.24
Defendants argue that the eighth element, absence of waiver, has not been established
here. The burden of showing that the attorney-client privilege has not been waived remains
with Sprint, the party claiming the privilege.25 “Because confidentiality is key to the
privilege, ‘[t]he attorney-client privilege is lost if the client discloses the substance of an
otherwise privileged communication to a third party.’”26 However, revealing the general
topic of discussion between an attorney and client does not waive the privilege, unless the

22

In re Pioneer H-Bred Int’l, Inc., 238 F.3d 1370, 1374 (Fed. Cir. 2001).

23

New Jersey v. Sprint, 258 F.R.D. at 425.

24

Lewis v. UNUM Corp. Severance Plan, 203 F.R.D. 615, 618 (D. Kan. 2001).

25

New Jersey v. Sprint, 258 F.R.D. at 426; Lewis, 203 F.R.D. at 621.

26

In re Quest Commc’ns Int’l Inc., 450 F.3d 1179, 1186 (10th Cir. 2006) (quoting
United States v. Ryans, 903 F.2d 731, 741 n.13 (10th Cir.1990)).
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revelation also reveals the substance of a protected communication.27

Likewise,

“[u]nderlying facts are not protected by the privilege” and disclosing them does not waive
the privilege over protected communications.28
Like the attorney-client privilege, federal law governs the applicability of the workproduct doctrine in this case.29 For documents to be protected under this doctrine, the party
claiming the protection must demonstrate that “(1) the materials sought to be protected are
documents or tangible things; (2) they were prepared in anticipation of litigation or for trial;
and (3) they were prepared by or for a party or a representative of that party.”30
“The privilege derived from the work-product doctrine is not absolute,” however, and
may be waived.31 The Supreme Court has recognized that work-product protection is waived
at trial when a party elects to call an attorney or his agent as a witness and “attempts to make
a testimonial use” of work-product materials.32 In that instance, the party waives the

27

Williams v. Sprint/United Mgmt. Co., No, 03-2200, 2006 WL 1867478, at *10 (D.
Kan. July 1, 2006).
28

Id. (citing Upjohn Co. v. United States, 449 U.S. 383, 396 (1981)).

29

See Western Res., Inc. v. Union Pacific R.R. Co., No. 00-2043, 2002 WL 181494,
at *4 n.4 (D. Kan. Jan. 31, 2002) (citing Burton v. R.J. Reynolds Tobacco Co., 167 F.R.D.
134, 139 (D. Kan. 1996)).
30

U.S. Fire Ins. Co. v. Bunge N. Am., Inc., 247 F.R.D. 656, 657 (D. Kan. 2007) (citing
Johnson v. Gmeinder, 191 F.R.D. 638, 643 (D. Kan. 2000)).
31

United States v. Nobles, 422 U.S. 225, 239 (1975).

32

Id. at 240 n.14.

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privilege “with respect to matters covered in his testimony.”33 In contrast to the attorneyclient privilege, “the party asserting waiver of work product immunity, rather than the party
asserting the work product protection, [has] the burden to establish waiver.”34
In this case, defendants assert waiver of attorney-client privilege and work-product
protection not only as to the actual information disclosed by Sprint during the Vonage trial,
but also to undisclosed information on the same subject matters.35 When a subject-matter
waiver has occurred, the waiver extends to subsequent litigation, even if that subsequent
litigation involves a new adversary.36

33

Id. at 239.

34

Western Res., 2002 WL 181494, at *4; see also ICE Corp. v. Hamilton Sundstrand
Corp., No. 05-4135, 2007 WL 4239453, at *3 (D. Kan. Nov. 30, 2007).
35

See Fed. R. Evid. 502. Under Rule 502(a), subject-matter waiver is limited to
situations in which intentionally disclosed communication or information “ought in fairness
. . . be considered together” with undisclosed communication or information concerning the
same subject matter.
Congress enacted Rule 502 on September 19, 2008, and provided that “[t]he
amendments made by this Act shall apply in all proceedings commenced after the date of
enactment of this Act and, insofar as is just and practicable, in all proceedings pending on
such date of enactment.” Pub.L. No. 110-322 § 1(c). The Vonage trial occurred in 2007, but
all parties presume Rule 502’s application. Indeed, Congress noted that Rule 502(a) “does
not alter the substantive law regarding when a party’s strategic use in litigation of otherwise
privileged information obliges that party to waive the privilege regarding other information
concerning the same subject matter, so that the information being used can be fairly
considered in context.” Statement of Congressional Intent Regarding Rule 502 of the Federal
Rules of Evidence, 154 Cong. Rec. H7818-H7819 (Sept. 8, 2008).
36

See GFI, Inc. v. Franklin Corp., 265 F.3d 1268, 1273 (Fed. Cir. 2001) (holding that
when the plaintiff’s patent attorney testified in an earlier trial about “his state of mind,
knowledge of prior art, and communications with his client,” he waived the attorney-client
privilege with respect to “all communications pertaining to the subject matter of the
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B.

Analysis

Defendants argue that during the Vonage trial, Sprint selectively disclosed its internal
legal communications and analysis to impress upon the jury the merits of its claims that
Vonage was infringing Sprint’s patents. Defendants assert that by revealing its attorneys’
communications and analyses, Sprint waived privilege as to the subject matters it placed at
issue: Sprint’s investigation into whether Vonage infringed the Christie Patents (topic three)
and Sprint’s decision to contact and sue Vonage (topic four). Defendants argue that they
need access to information on these subject matters so that they may challenge the narratives
Sprint presented in Vonage and has indicated it will present in these cases. According to
defendants, all information related to these subject matters must in fairness be considered
together. The court will separately consider the disclosures Sprint made as to each of these
subject matters.
Information about Sprint’s Investigation of Vonage
Defendants take issue with the following testimony and statements of Sprint’s counsel
related to Sprint’s investigation of whether Vonage infringed the Christie Patents:
C

In his opening statement, Mr. Webb stated that Mr. Ball began an investigation into
Vonage and that the Sprint legal department “gathered all the material they could
fin[d] about Vonage and evaluated [it].” Mr. Webb stated that Sprint’s legal
department “looked at those 80 patents in view of what Vonage was doing and they

communications”); Info-Hold, Inc. v. Trusonic, Inc., No. 1:06cv543, 2008 WL 2949399, at
*5 (S.D. Ohio July 30, 2008) (finding subject-matter waiver where the plaintiff’s Fed. R. Civ.
P. 30(b) witness testified in an unrelated patent-infringement lawsuit about letters from
counsel).
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believed it infringed 43 patents” and an outside law firm “agreed.”
C

Mr. Ball testified that once he suspected Vonage of having voice over packet
technology, he began an investigation into whether Vonage was using Sprint’s
purported technology. Mr. Ball testified that this investigation led him to conclude
that Vonage was infringing “a number of Sprint’s patents.”

C

Mr. Ball testified that Sprint hired two law firms to research Vonage’s architecture.
Sprint’s legal team then “walked through” with the law firms “the Vonage
architectures that we believed were being used and the specific claims and particular
claims in looking at each element of those limitations of the claims based on what we
believed that Vonage was doing.”
Defendants argue that these disclosures “revealed substantive attorney

communications and analysis.”37 The court disagrees. Instead, the court finds that these
disclosures revealed facts, general topics of attorney-client discussions, and legal
conclusions.
First, Sprint’s revelations that (1) Sprint’s legal department investigated Vonage, (2)
gathered information about Vonage’s architecture, and (3) hired outside law firms to research
and evaluate Vonage’s architecture simply cannot be classified as anything other than facts.
As stated above, “Underlying facts are not protected by the privilege.”38 Similarly, neither
the acts or services performed by an attorney during the course of his representation, nor the
scope of representation, are within the attorney-client privilege because they are not

37

ECF doc. 154 at 26.

38

Williams, 2006 WL 1867478, at *10 (citing Upjohn, 449 U.S. at 396).

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“communications.”39
Second, Mr. Ball’s testimony that Sprint’s legal team “walked though” with outside
counsel Vonage’s architecture and Sprint’s claims reveals nothing more than the topic of
Sprint’s discussions with its attorneys. “Revealing the general topic of discussion between
an attorney and client does not waive the privilege, unless the revelation also reveals the
substance of a protected communication.”40 Mr. Ball never testified to any specific
communications that were exchanged nor any legal advice that Sprint might have been given.
The revelation of the general discussion topic between Sprint and its attorneys will not be
held to reveal protected communications.41
Third, legal conclusions by Mr. Ball and Sprint’s outside legal counsel that Vonage
was infringing Sprint’s patents cannot be deemed privileged. Defendants assert that

39

In re Universal Serv. Fund Tel. Billing Practices Litig., 232 F.R.D. 669, 675 (D.
Kan. 2005).
40

New Jersey v. Sprint, 258 F.R.D. at 426. See also United States v. Bernard, 877
F.2d 1463, 1465 (10th Cir. 1989) (holding that the attorney-client privilege is waived only
when the substance of a privileged communication is voluntarily disclosed to a third party);
Williams, 2006 WL 1867478, at *10 (holding that for testimony to constitute a waiver of the
attorney-client privilege, it must disclose the substance of privileged communications); In
re Universal Serv. Fund Tel. Billing Practices Litig., 232 F.R.D. at 675 (holding that the
subject matter of meetings with an attorney is not protected by the attorney-client privilege).
41

See Williams, 2006 WL 1867478, at *10 (holding that testimony about defendant’s
directive to counsel to “run the adverse impact at different levels” did not waive the attorneyclient privilege); New Jersey v. Sprint, 258 F.R.D. at 427–28 (holding that testimony stating
that legal counsel advised the defendant that it need not publicly disclose tax shelter issues
did not waive the attorney-client privilege because it did not disclose the substance of the
legal advice received).
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testimony about these conclusions reveal the substance of communications between Sprint
and its counsel: that Vonage infringed Sprint’s patents. But the court agrees with Sprint that
the “ultimate legal conclusions of a party are always implicated at a trial, because it is those
conclusions that lead parties to file and pursue lawsuits.”42 The court does not believe that
this is the type of substantive communication that privilege protects. Sprint did not reveal
its attorney’s reasoning and analysis behind these conclusions (which might be protected by
the attorney-client privilege or work-product doctrine).43 Defendants have cited no case
holding that disclosure of a legal conclusion at trial waives privilege as to specific
communications about the legal conclusions.
In addition to defendants’ waiver arguments based on Sprint’s alleged partial
disclosure of protected information, defendants argue that Sprint implicitly waived the
attorney-client privilege by placing privileged communications about its investigation into
Vonage “at issue.”44 Under the implied waiver doctrine recognized by this court, a party
waives the attorney-client privilege when the party places information protected by the
privilege “in issue,” and where allowing the privilege to protect against disclosure of the

42

ECF doc. 169 at 9.

43

See New Jersey v. Sprint, 258 F.R.D. at 427–28 (holding that testimony stating that
legal counsel advised the defendant that it need not publicly disclose tax shelter issues did
not waive the attorney-client privilege because it did not disclose the substance of the legal
advice received).
44

ECF doc. 154 at 26.

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information would be “manifestly unfair to the opposing party.”45 Waiver will not be
triggered unless a party indicates an intent to “assert the privilege in aid of” or “invoke the
privilege in furtherance of” a claim or defense in the case.46 Defendants argue that during
the Vonage trial, Sprint placed at issue its attorney communications and analysis about
possible infringement by Vonage.
The court finds this argument tenuous at this point in the instant litigation. First,
defendants have not demonstrated that implicit waiver could have been found in Vonage,
even if it had been asserted. Specifically, defendants have not demonstrated that Sprint relied
on the advice or communications of its counsel to prove a claim or justify certain conduct on
Sprint’s part,47 nor that if Sprint had so done, it was “manifestly unfair” to Vonage.48
Second, defendants have not presented any support for their inferred argument that implicit
waiver (in contrast to subject matter waiver based on explicit waiver) in one case can carry
over to a subsequent case.49 Given the fairness consideration at issue in implicit waiver

45

Williams v. Sprint/United Mgmt. Co., 464 F. Supp. 2d 1100, 1104–05 (D. Kan. 2006)
(quoting Hearn v. Rhay, 68 F.R.D. 574, 581 (E.D. Wash. 1975)); New Jersey v. Sprint, 258
F.R.D. at 430.
46

Williams, 464 F. Supp. 2d at 1107 (quoting Hearn, 68 F.R.D. at 581).

47

See New Jersey v. Sprint, 258 F.R.D. at 430 (“Further, the testimony of the witness
did not indicate that the defendant intended to use advice of counsel to justify any conduct
on its part.”)
48

See Williams, 464 F. Supp. 2d at 1114 (quoting Hearn, 68 F.R.D. at 581).

49

Indeed, defendants only assert that “[i]ntentional disclosures of privileged or
protected information generally results in a subject-matter waiver in subsequent litigation.”
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situations—i.e., manifest unfairness to the opposing party—the court is not persuaded that
implicit waiver automatically carries over to subsequent cases. Finally, defendants have not
demonstrated that Sprint plans to rely on the advice that counsel gave it with respect to
possible infringement by Vonage to prove a claim in this case. The court will follow the
approach taken in Williams and New Jersey v. Sprint by allowing defendants to revisit this
issue should Sprint “affirmatively and voluntarily inject the reliance on counsel issue at trial
or in subsequent briefing” in this action.50
The court concludes that the information Sprint disclosed during the Vonage trial
about its investigation of Vonage (topic 3) did not reveal any privileged communication.
Revealing non-privileged information, of course, does not waive protection accorded
privileged information. Thus, to the extent Sprint asserts a privilege objection to producing
information responsive to document Request No. 43, that objection is sustained.
Information about Sprint’s Decision to Contact and Sue Vonage
Defendants take issue with the following testimony and statements of Sprint’s counsel
related to Sprint’s decision to contact and sue Vonage:
C

Mr. Webb stated in his opening statement that Mr. Ball talked to Sprint executives
about his concern that Vonage infringed the Christie Patents to obtain authorization
to contact Vonage.

C

Mr. Ball testified that after he received the infringement analysis from the outside law
firms, he “began the process of talking with various members of [Sprint’s] senior

ECF doc. 154 at 17 (emphasis added).
50

Williams, 464 F. Supp. 2d at 1115 n.16; New Jersey v. Sprint, 258 F.R.D. at 433.

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management about the situation and discussing those issues with them and because,
. . . sending a letter to somebody else in the telecommunications industry in essence
alleging . . . that they are using your patents is considered a serious allegation within
Sprint and so it required a number of levels for [Sprint] to even clear that path to even
send out the first letter[,] so I started heading down that path and obtained approval.”
C

Sprint’s counsel introduced five letters sent from Sprint to Vonage alleging
infringement, eliciting testimony from Mr. Ball regarding their contents, his
authorization to send each letter, and his receipt of authorization to file the lawsuit.

C

In his closing argument, Mr. Webb noted that Sprint had never filed a patent case
before and stated, “It never would have filed this unless [it] believed it was a strong
case [and the] right thing to do[.] [B]efore it filed it went through a detailed thorough
investigat[ion] process twice with outside law firms and with internal people at
Sprint[.] [T]hey wanted to make sure they got it[] right.”
Defendants argue that these disclosures revealed “communications between Mr. Ball

and Sprint executives.”51 According to defendants, Mr. Ball’s testimony “not only revealed
that these meetings occurred, it also revealed the substance of these meetings—Mr. Ball’s
explanation of his understanding of Vonage’s infringement based on his analysis of the
information from outside law firms—and the culminating communications to Mr. Ball of
authorization to (1) send a letter to Vonage alleging that it was using Sprint’s Christie
Patents, and (2) file a lawsuit against Vonage.”52
Again, however, the court finds that defendants are over-stating the significance and
extent of what Sprint actually disclosed regarding its internal communications about its
decision to contact and sue Vonage. Sprint revealed nothing more than the subject matters

51

ECF doc. 154 at 27.

52

Id.

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of Mr. Ball’s discussions with Sprint executives—specifically, Vonage’s possible
infringement of Sprint’s patents and authorization to contact Vonage. Because Sprint did not
disclose the substance of the communications, Sprint did not waive attorney-client protection
over the communications.53 While it could again be said that the subject matter of the
communications necessarily reveals the legal conclusion reached by Mr. Ball and conveyed
to his client (i.e., that Vonage infringed Sprint patents), defendants have presented no
authority demonstrating that privilege is waived in this instance.54 Nor could the introduction
of Sprint’s letters to Vonage have waived the attorney-client privilege, as the letters were
never privileged.55
The court concludes that the information Sprint disclosed during the Vonage trial
about Mr. Ball’s communications with Sprint executives regarding authorization to contact
Vonage about alleged infringement and to sue Vonage for such alleged infringement (topic
four) did not reveal any privileged communication. As noted above, revealing non-privileged
information does not waive protection accorded privileged information. Thus, to the extent
Sprint asserts a privilege objection to producing information responsive to document Request
53

See, e.g., New Jersey v. Sprint Corp., 258 F.R.D. at 426–28 (holding that testimony
stating that company’s board of directors discussed legal advice of counsel about two specific
topics and then acted a certain way did not result in waiver of the attorney-client privilege
because it did not reveal the substance of the legal advice).
54

Indeed, the caselaw is to the contrary. See id.

55

In re Universal Serv. Fund Tel. Billing Practices Litig., 232 F.R.D. at 675 (holding
that documents prepared by counsel submitted to a third party outside the attorney-client
relationship “removes any cloak of privilege”).
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No. 45, that objection is sustained.
Finally, it bears mentioning that although both sides have set forth the standards for
work-product protection and waiver, defendants have not made any specific arguments to
show that Sprint made testimonial use of work-product materials during Vonage such that
it waived work-product protection over documents and documents related to the same subject
matter.56 Thus, the court need not further address the issue of work-product waiver.
IT IS THEREFORE ORDERED that defendants’ motion to compel is granted in
part and denied in part, as set forth herein.
Dated February 11, 2014, at Kansas City, Kansas.
s/ James P. O’Hara
James P. O’Hara
U.S. Magistrate Judge

56

Defendants simply make conclusory statements about work-product waiver in a
footnote of their reply brief. ECF doc. 173 at 18 n.8.
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