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

Filing 831

MEMORANDUM AND ORDER - Plaintiff's 724 Objections to the Magistrate Judge's Order of April 16, 2015, are hereby overruled. Signed by District Judge John W. Lungstrum on 06/19/2015. (mg)

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

)
)
)
Plaintiff,
)
)
v.
)
)
COMCAST CABLE COMMUNICATIONS
)
LLC, et al.,
)
)
Defendants.
)
_______________________________________)

Case No. 11-2684-JWL

MEMORANDUM AND ORDER
This case comes before the Court on plaintiff’s objections (Doc. # 724) to the
Order of April 16, 2015, in which the Magistrate Judge denied plaintiff’s motion to
compel production of certain documents with respect to which defendants had asserted
the attorney-client privilege. For the reasons set forth below, the objections are
overruled.
With respect to a magistrate judge’s order relating to nondispositive pretrial
matters, the district court does not conduct a de novo review; rather, the court applies a
more deferential standard by which the moving party must show that the magistrate
judge’s order is “clearly erroneous or contrary to law.” See First Union Mortgage Corp.
v. Smith, 229 F.3d 992, 995 (10th Cir. 2000) (quoting Ocelot Oil Corp. v. Sparrow
Indus., 847 F.2d 1458, 1461-62 (10th Cir. 1988)); 28 U.S.C. § 636(b)(1)(A); Fed. R. Civ.
P. 72(a). The clearly erroneous standard “requires that the reviewing court affirm unless

it on the entire evidence is left with the definite and firm conviction that a mistake has
been committed.” See Ocelot Oil, 847 F.2d at 1464 (quoting United States v. United
States Gypsum Co., 333 U.S. 364, 395 (1948)).
In its motion to compel, plaintiff argued that defendants waived the attorneyclient privilege with respect to certain documents by placing the protected information
“at issue”. Defendants have asserted equitable estoppel and other defenses, by which
defendants contend that they reasonably relied on plaintiff’s conduct to believe that
plaintiff did not intend to enforce its patents against them. Plaintiff argued that
defendants thereby put at issue their state of mind with respect to their true motivation
and reliance in proceeding with their allegedly infringing activities. Plaintiff sought to
compel the production of (a) documents reflecting attorney advice to defendants
concerning issues of validity and infringement; and (b) documents reflecting attorney
advice concerning certain agreements and proposals on which defendants purportedly
relied in believing that plaintiff would not pursue enforcement. With respect to the
former category of documents, plaintiff argued that David Marcus, defendants’ chief
patent counsel and Rule 30(b)(6) designee, placed the privileged information at issue by
testifying about defendants’ reliance and motivations and by making a PowerPoint
presentation to certain executives concerning outside counsel’s patent opinions. With
respect to the latter category of documents, plaintiff argued that Phil Miller placed the
privileged information at issue by testifying about his and defendants’ attorneys’
understanding that the agreements and proposals made suit by plaintiff unlikely. The
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Magistrate Judge concluded that no “at issue” waiver had occurred with respect to either
category of documents, and he therefore denied the motion to compel with respect to that
issue.
The parties have agreed, both before the Magistrate Judge and before the
undersigned, that this issue is governed by the Hearn test. See Hearn v. Rhay, 68 F.R.D.
574, 581 (E.D. Wash. 1975); see also Frontier Ref., Inc. v. Gorman-Rupp Co., 136 F.3d
699-702 (10th Cir. 1998) (applying Hearn test). Because the Court concludes that the
Magistrate Judge did not clearly err in concluding that the third prong of the Hearn test
was not satisfied in this case, the Court need not consider the first two prongs of the test.
By its third prong, the Hearn test for at-issue waiver requires a finding that
“application of the privilege would have denied the opposing party access to information
vital to its [opposition to the affirmative defense].” See Frontier Ref., 136 F.3d at 701
(quoting Hearn, 68 F.R.D. at 581). Mere relevance is not sufficient; instead, “the
information must also be ‘vital,’ which necessarily implies the information is available
from no other source.” See id.1

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Plaintiff notes that in Frontier Refining, in stating this definition of “vital”, the
Tenth Circuit cited Greater Newburyport Clamshell Alliance v. Public Service Co. of
New Hampshire, 838 F.2d 13 (1st Cir. 1988), see Frontier Ref., 136 F.3d at 701 (citing
Greater Newburyport, 838 F.2d at 20), and plaintiff asks the Court to follow certain
standards stated by the First Circuit, including one that would allow for a mere showing
that redundant evidence would be helpful to the case. See Greater Newburyport, 838
F.2d at 22. The First Circuit did not state that those standards applied to the “vitality”
prong of the Hearn test, however, and the Tenth Circuit in Frontier Refining did not cite
to that portion of Greater Newburyport. Accordingly, the Court will apply the Tenth
(continued...)
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With respect to the documents sought pursuant to Mr. Marcus’s testimony, the
Magistrate Judge concluded that information concerning defendants’ motivations and
state of mind was available from fact witnesses, including defendants’ employees, and
the Magistrate Judge did not clearly err in so concluding. Plaintiff argues that the
privileged information—the advice of the outside attorneys—is not available elsewhere,
but the Tenth Circuit applied the “vitality” prong in a different manner in Frontier
Refining. In that case, the Tenth Circuit did not merely consider whether the privileged
information was available elsewhere; rather, in finding that this prong was not satisfied,
the court concluded that other sources were available for evidence of the party’s
motivations generally. See id. at 701-02. Accordingly, the Court rejects this argument
that the Magistrate Judge clearly erred.
With respect to documents sought pursuant to Mr. Miller’s testimony, the
Magistrate Judge noted plaintiff’s argument that evidence of an opinion by counsel that
the agreements and proposals made enforcement unlikely would undercut any contention
by defendants that they actually relied on later conduct by plaintiff. The Magistrate
Judge rejected that argument, on the basis that the desired “undercutting” with respect
to reliance on later conduct was already achieved by defendants’ contention that they
relied on the agreements and proposals. For that reason, the Magistrate Judge found that
the third prong of the Hearn test had not been satisfied. In its objections to this Court,

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Circuit’s requirement of a finding that the information is available from no other source.
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plaintiff has not even addressed this reasoning by the Magistrate Judge. Thus, this Court
concludes that the Magistrate Judge did not clearly err in rejecting plaintiff’s claim of
“at issue” waiver with respect to these documents.
The Court rejects plaintiff’s additional arguments as well. Plaintiff argues that
the Magistrate Judge rejected an argument for the automatic waiver standard that
plaintiff did not make; the Court does not agree, however, that the Magistrate Judge
mischaracterized plaintiff’s arguments, and at any rate that rejection by the Magistrate
Judge did not affect his ultimate application of the third prong of the Hearn test. Nor did
the Magistrate Judge improperly apply a standard stricter than Hearn in applying that
test’s first two prongs, and, again, that analysis by the Magistrate Judge did not relate to
his application of the third prong. The Magistrate Judge did not clearly err in rejecting
plaintiff’s undeveloped argument for express waiver, particularly in light of the
testimony that Mr. Miller could not recall any communications with attorneys. Finally,
plaintiff has not shown that an in camera review is warranted here, and thus the
Magistrate Judge did not clearly err in denying that request.
For these reasons, the Court overrules plaintiff’s objections.

IT IS THEREFORE ORDERED BY THE COURT THAT plaintiff’s objections
(Doc. # 724) to the Magistrate Judge’s Order of April 16, 2015, are hereby overruled.

IT IS SO ORDERED.

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Dated this 19th day of June, 2015, in Kansas City, Kansas.

__s/ John W. Lungstrum____
John W. Lungstrum
United States District Judge

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