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

Filing 228

ORDER granting 192 motion for partial reconsideration of the February 11, 2014 order (ECF doc. 177); denying 153 motion to compel. Signed by Magistrate Judge James P. O'Hara on 4/18/2014. (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-192.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 filed a motion to compel Sprint to produce documents
responsive to defendants’ first set of common document requests (ECF doc. 153). On
February 11, 2014, the undersigned U.S. Magistrate Judge, James P. O’Hara, issued an order
which held, in part, that Sprint waived its objections to certain document requests by
conditionally answering the requests, i.e., by objecting to the requests but then answering
“subject to and without waiving” its objections.1

Sprint has filed a motion for

reconsideration of that portion of the order (ECF doc. 192). The court remains unpersuaded
that conditional discovery responses are ever appropriate. But the court will grant Sprint’s
motion for reconsideration in the unusual circumstances presented here. Having reviewed
the substantive merits of Sprint’s objections, the court finds them proper and denies
defendants’ motion to compel.
I.

Relevant Background
As discussed in the February 11, 2014 order (to which the reader is referred for the

full background of this dispute), defendants’ first set of common document requests to Sprint
included requests seeking documents relating to the subject matter of Sprint’s disclosures
during a separate patent-infringement lawsuit brought by Sprint against Vonage Holdings
Corp. and Vonage America, Inc. (collectively, “Vonage”). In Sprint Communications

1

ECF doc. 177 at 4–8. Reported at 2014 WL 545544.

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Company LP v. Vonage Holdings Corp.,2 Sprint claimed that Vonage had infringed patents
from two related families of patents issued to named inventor Joseph Christie (the “Christie
Patents”). During the 2007 trial in Vonage, Sprint called two in-house attorneys, Michael
Setter and Harley Ball, to testify about Mr. 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. A number of defendants’ document requests sought documents
relating to the subject matter of Sprint’s disclosures during the Vonage trial. 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

Case No. 05-2433.

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patents and to sue Vonage for such alleged infringement.”3
In Sprint’s responses to the document requests, Sprint asserted objections on several
grounds, including that the information sought was “protected from discovery by the
attorney-client privilege, work product doctrine, and/or any other applicable privilege or
immunity.”4 But in response to requests numbered 18–20, which sought information on
topics one and two, Sprint went on to state that it would produce non-privileged and
responsive documents “subject to and without waiving” its objections.5 Defendants filed a
motion to compel Sprint to produce documents responsive to their document requests,
asserting that Sprint’s presentation in the Vonage trial waived any attorney-client or workproduct protection to which the documents were otherwise entitled.6
To the extent defendants’ motion asked the court to compel Sprint to produce
documents related to topics three and four, the court evaluated Sprint’s objections on their
merits and sustained them.7 However, to the extent the motion asked the court to compel
Sprint to produce documents related to topics one and two, the court concluded that Sprint’s
conditional responses to requests numbered 18–20 were improper and had the effect of

3

ECF doc. 154 at 6–7.

4

ECF doc. 155-6.

5

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

6

ECF doc. 153.

7

ECF doc. 177 at 13–21.

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waiving any objection Sprint had to producing documents.8 Thus, without reaching the
substantive merits of Sprint’s objections to these requests, the court ordered Sprint 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.”9
Sprint’s motion asks the court to reconsider the portion of the February 11, 2014 order
which held that Sprint waived its objections to document requests numbered 18–20 by
conditionally answering the requests. Defendants state in their response that they agree with
Sprint that the holding, as applied, is “problematic.”10 Defendants submit that the finding of
waiver based on Sprint’s conditional responses “should be withdrawn and the issue of waiver
as to these two subject areas reconsidered in view of the arguments presented by Defendants
in support of the underlying motion to compel.”11
II.

Reconsideration of the Waiver Holding
D. Kan. Rule 7.3(b) allows a party to seek reconsideration of a non-dispositive order

“based on: (1) an intervening change in controlling law, (2) the availability of new evidence,
or (3) the need to correct clear error or prevent manifest injustice.” The decision whether to

8

Id. at 4–8.

9

Id. at 8.

10

ECF doc. 195 at 2.

11

Id.

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grant or deny a motion for reconsideration is committed to the court’s discretion.12
In its February 11, 2014 order, the court explained why the practice of responding to
discovery requests by asserting objections and then answering “subject to” or “without
waiving” the objections is confusing, unproductive, and in violation of federal discovery
rules. The undersigned magistrate judge has reviewed the analysis and sources leading him
to reach that conclusion, and remains convinced it’s correct.
Further, the court also has come to believe that conditional responses violate Fed. R.
Civ. P. 26(g). Rule 26(g)(1) requires attorneys and pro se parties to certify that discovery
responses are consistent with the Federal Rules of Civil Procedure, “not imposed for any
improper purpose,” and “neither unreasonable nor unduly burdensome.” The 1983 advisory
committee comments to Rule 26(g) elaborate that the rule “imposes an affirmative duty to
engage in pretrial discovery in a responsible manner that is consistent with the spirit and
purposes of Rules 26 through 37.”13 Rule 26(g)(3) requires courts to impose sanctions when
the rule is violated without substantial justification.
Nevertheless, the unusual set of facts presented here warrant relief. That is, Sprint has
persuaded the undersigned, that if he had known all the facts underlying Sprint’s discovery
12

Wright ex rel. Trust Co. of Kan. v. Abbott Labs., Inc., 259 F.3d 1226, 1235–36 (10th
Cir. 2001).
13

See also Tomlinson v. Combined Underwriters Life Ins., Co., No. 08-259, 2008 WL
4601578, at *1 (N.D. Okla. Oct. 16, 2008) (holding that discovery responses provided
“subject to” boilerplate objections “come close to violating the requirement of Fed. R. Civ.
P. 26(g)(1)(B) that every objection is warranted by existing law or a nonfrivolous legal
argument and not interposed for delay”).
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responses—the undersigned acknowledges that he reached his ruling without asking the
parties to brief this issue—he would have found that no party in this case was confused or
put out by Sprint’s responses.
Each of Sprint’s responses to requests numbered 18–20 contained a number of
boilerplate objections (e.g., vague, overbroad, unduly burdensome, privileged) but concluded
with the statement, “[s]ubject to and without waiver of the foregoing objections . . . Sprint
will produce non-privileged responsive documents within its custody and control.” This
statement, without context, leads the reader wondering whether Sprint planned to withhold
certain documents based on its objections. Significantly, Sprint did not state that it would
produce all non-privileged documents—a specification which, if included, might support
Sprint’s argument that it complied with Fed. R. Civ. P. 34(b)(2)(C) by objecting to a
specified part of the request (i.e., only the part seeking privileged information) and producing
documents requested in the rest of the request.14
But Sprint informs the court in its motion for reconsideration that no party was left
guessing as to what documents it was withholding because it produced a privilege log
reflecting each withheld document. Defendants do not dispute this contention in their
response brief. Indeed, defendants imply that Sprint followed the pattern of practice that had
developed between the parties in this case. Defendants join Sprint in asking that the court

14

Fed. R. Civ. P. 34(b)(2)(C) states: “An objection to part of a request must specify
the part and permit inspection of the rest.”
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reconsider its holding that Sprint waived privilege via its conditional responses.
Based on this new information and on the agreement of the parties that the relief
awarded by the court (i.e., ordering the production of documents withheld for privilege)
would be manifestly unjust in these circumstances, the court grants Sprint’s motion for
reconsideration of its holding that Sprint waived its objections through conditional responses.
Although in this particular case the court’s waiver holding is withdrawn at the request of both
parties to avoid a draconian result, practitioners before this court should not view this as a
retreat from the court’s ruling that when a party objects to discovery but nonetheless answers
“subject to” the objection, the objection will be deemed waived. The court therefore will
proceed to address defendants’ arguments that Sprint instead waived privilege protection by
disclosing its attorneys’ communications and analyses during the Vonage trial.
III.

Decision on the Substantive Merits of the Objections
As recounted in the February 11, 2014 order, the attorney-client privilege “protects

confidential communications by a client to an attorney made in order to obtain legal
assistance from the attorney in his capacity as a legal advisor.”15 The privilege also protects
legal advice given by an attorney in the course of representing a client.16 The privilege,
however, “is to be extended no more broadly than necessary to effectuate its purpose.”17
15

Tilley v. Equifax Info. Servs. LLC, No. 06-2304, 2007 WL 3120447, at *2 (D. Kan.
Oct. 24, 2007) (internal quotations and citations omitted).
16

Id.

17

New Jersey v. Sprint, 258 F.R.D. 421, 425 (D. Kan. 2009) (citation omitted).

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Sprint, as the party asserting the attorney-client privilege, bears the burden of showing
that the privilege has not been waived.18 “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.’”19 However, 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.20 Likewise, “[u]nderlying facts are
not protected by the privilege” and disclosing them does not waive the privilege over
protected communications.21 In this case, defendants assert waiver of attorney-client
privilege not only as to the actual information disclosed by Sprint during the Vonage trial,
but also to undisclosed information on the same subject matters.22
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

18

Id. at 426; Lewis v. UNUM Corp. Severance Plan, 203 F.R.D. 615, 621 (D. Kan.

2001).
19

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)).
20

Williams v. Sprint/United Mgmt. Co., No. 03-2200, 2006 WL 1867478, at *10 (D.
Kan. July 1, 2006).
21

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

22

See Fed. R. Evid. 502.

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issue: assessments by Sprint’s legal department of the patentability of Christie’s purported
inventions (topic one), and Sprint’s preparation and prosecution of patent applications for
such inventions (topic two). 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 these two subject matters.
Assessments by Sprint’s Legal Department Regarding Patentability
Defendants take issue with the following testimony and statements of Sprint’s counsel
related to the patentability of Mr. Christie’s inventions:
C

In his opening statement, Mr. Webb stated that, upon hearing of Mr. Christie’s ideas,
“Sprint reacted swiftly and in an unprecedented manner.” He stated that “within
days,” Sprint met with Mr. Christie and “assigned a patent agent to be Joe Christie’s
shadow. Never happened before, hasn’t happened since.”

C

Mr. Setter testified about an October 15, 1993 meeting between Mr. Christie and
members of Sprint’s legal department. Mr. Setter stated that the purpose of the
meeting was for Mr. Christie to “teach the law department . . . his technology.” Sprint
introduced into evidence, through Mr. Setter, a document that Mr. Christie brought
to the meeting explaining his inventions. Mr. Setter also testified about his basic
understanding of what Mr. Christie’s ideas were.

C

Mr. Webb discussed Sprint’s search for prior art during his opening statement. He
stated that Sprint “had professional search groups scour the entire country looking for
prior art, other patents, other literature,” and “also had professional search firms
overseas looking throughout the entire world to find prior art.” He stated that Sprint
“got all this stuff back and looked at it and found out exactly what [it] suspected, that
this really was a patentable invention.”

C

Mr. Setter testified about Sprint’s legal department’s search for, and analysis of, prior

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art. He stated, for example, “We would do prior art searches and compare the prior
art which is the preexisting technology that’s in other patents and white papers and
things like that, collect that[,] analyze that[,] compare it to [Mr. Christie’s] ideas and,
you know, assess are there new things here or are [Mr. Christie’s] ideas in . . . the
prior patents.” Mr. Setter also testified that after he reviewed the prior art, “a decision
was made at that point to prepare [a] patent application on [Mr. Christie’s]
technology.”
C

Mr. Ball similarly testified that Sprint commissioned searches for prior art and, based
on the results of the searches, “proceeded to draft patent applications” because “we
were then confident with respect to what we thought was new and unique with respect
to [Mr. Christie’s] inventions.”
Defendants argue that by making these intentional disclosures, Sprint waived any

“protection with respect to its assessment of patentability.”23 The court disagrees. Instead,
the court finds that these disclosures revealed facts, topics of discussion, and general legal
conclusions—none of which were protected from disclosure in the first instance.
First, Mr. Webb’s statements about Sprint acting quickly in response to, and assigning
a patent agent to learn about, Mr. Christie’s ideas cannot be classified as anything other than
a revelation of facts. As stated above, “Underlying facts are not protected by the privilege.”24
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 “communications.”25

23

ECF doc. 154 at 22.

24

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

25

In re Universal Serv. Fund Tel. Billing Practices Litig., 232 F.R.D. 669, 675 (D.
Kan. 2005).
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Second, Mr. Setter’s testimony about the meeting between Mr. Christie and Sprint’s
legal team cannot be deemed to reveal privileged information. It simply revealed the topic
of discussion between attorneys and a third party.26 Moreover, the document prepared by Mr.
Christie to explain his inventions was not privileged—it was neither prepared by an attorney
nor prepared by a client for the purpose of seeking legal advice. Defendants’ state that the
document included Mr. Setter’s hand-written notes, but defendants have not argued that the
notes contained Mr. Setter’s legal work product, nor have defendants submitted a copy of the
document. In addition, Mr. Setter’s testimony about his understanding of Mr. Christie’s idea
did not contain any legal substance. Rather, it simply related the factual aspects of the idea:
“[t]he technology was based on using a control system to control a broadband network to
interface with the public telephone network.”27
Third, information relayed about Sprint’s prior art search did not reveal privileged
communications. Statements and testimony about how Sprint conducted its search for prior
art simply disclosed acts performed by counsel, not communications.28 Likewise, Mr.
Setter’s testimony regarding Sprint’s legal department assessing prior art by comparing it to
Mr. Christie’s ideas disclosed unprotected acts by counsel and not privileged
26

See id. (holding that the subject matter of meetings with an attorney is not protected
by the attorney-client privilege), see also Williams, 2006 WL 1867478, at *10 (ruling that
revealing the general topic of discussion between an attorney and client does not waive the
attorney-client privilege).
27

ECF doc. 155-2 at 8.

28

See In re Universal Serv. Fund Tel. Billing Practices Litig., 232 F.R.D. at 675.

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communications. Finally, information that Sprint’s review of prior art led it to conclude that
it had a patentable invention revealed only Sprint’s counsel’s ultimate legal conclusion, not
any substantive communication or attorney analysis behind the conclusion.29
The court concludes that the information Sprint disclosed during the Vonage trial
about its assessment of the patentability of Mr. Christie’s ideas (topic 1) 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 Nos. 18 and 19, that
objection is sustained.
Sprint’s Preparation and Prosecution of Patent Applications
Defendants next take issue with testimony and statements of Sprint’s counsel related
to Sprint’s preparation and prosecution of the Christie Patent applications. Specifically:
C

Mr. Webb stated in his opening statement that Sprint’s patent applications included
“every piece of prior art that they found,” “because they knew some day they might
be in a courtroom just like this defending these patents against others.”

C

Both Mr. Setter and Mr. Ball testified about instructions given from Mr. Ball to Mr.
Setter to “leave no stone unturned” and to be as thorough as possible in preparing and
prosecuting the patent applications because the patents were extremely important and
valuable to Sprint.

Defendants argue that these “characterizations of communications within Sprint’s legal

29

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); Feb. 11, 2014 Order, ECF doc. 177 at 15–16.
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department . . . waived any purported attorney-client privilege with respect to the preparation
and prosecution of patent applications for the Christie Inventions.”30
Mr. Webb’s opening comments (while perhaps objectionable on another basis) cannot
be found to have revealed confidential attorney communications. That the applications
included “every piece of prior art” is an unprotected statement of fact. Boasting that Sprint
(or its attorneys) knew that the patent applications might be legally challenged—the
implication being that the applications were prepared in a way to stand up to a challenge—is
simply too vague and tenuous to be deemed a substantive disclosure of internal attorney
communications.
The court reaches a similar conclusion with respect to the testimony that Mr. Ball
instructed Mr. Setter to carefully prepare and prosecute the patent applications. These
discussions, amounting to a general directive from a boss to “do a good job,” reveal nothing
of the substantive legal work done or discussed by Sprint’s legal department. Rather, the
testimony only reveals a general topic of conversation.31 Accordingly, Sprint did not disclose

30

ECF doc. 154 at 24.

31

See Williams, 2006 WL 1867478, at *10 (holding that testimony about counsel’s
“general directive to run the adverse impact at different levels” revealed only the general
topic of privileged communications, rather then the substance of protective communications,
and as such did not waive the attorney-client privilege); see also 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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protected information when it elicited such testimony during the Vonage trial.32
The undersigned concludes that the information Sprint disclosed during the Vonage
trial about Sprint’s preparation and prosecution of patent applications (topic two) did not
reveal 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 No. 20, that
objection is sustained.
IT IS THEREFORE ORDERED:
1.

Sprint’s motion for partial reconsideration (ECF doc. 192) is granted.

2.

Defendants’ motion to compel (ECF doc. 153) is denied in all respects. The

portions of the February 11, 2014 order not specifically addressed herein remain unchanged
and in effect.
Dated April 18, 2014, at Kansas City, Kansas.
s/ James P. O’Hara
James P. O’Hara
U.S. Magistrate Judge

32

Defendants state that during Mr. Ball’s testimony on this topic, counsel for Vonage
requested a sidebar and raised the issue of the possible waiver of attorney-client privilege.
Sprint’s counsel took the position that the communications were not privileged because the
client was not present. Judge Lungstrum was not asked to make a ruling on this issue. The
undersigned finds that the communications were not privileged, but obviously for a different
reason than that asserted during the sidebar.
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