Trustees of Boston University v. Everlight Electronics Co., Ltd. et al

Filing 1245

Chief Judge Patti B. Saris: MEMORANDUM AND ORDER entered. The Court SUSTAINS BU's objection Docket No. 843 and ALLOWS IN PART BUs motion to compel 717 . Epistar is hereby compelled to produce all attorney-client communications relating to thenon-infringement opinion provided by Finnegan in 2007. In all other respects, BU's objection to the magistrate judges order is OVERRULED.(Geraldino-Karasek, Clarilde)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
)
)
)
) Consolidated Civil Action No.
v.
) 12-11935-PBS
)
EVERLIGHT ELECTRONICS CO., LTD.,)
et al.,
)
Defendants.
)
)
)
TRUSTEES OF BOSTON UNIVERSITY, )
Plaintiff,
)
) Civil Action No. 12-12326-PBS
v.
)
)
EPISTAR CORPORATION, et al.,
)
Defendants.
)
)
)
TRUSTEES OF BOSTON UNIVERSITY, )
Plaintiff,
)
) Civil Action No. 12-12330-PBS
v.
)
)
LITE-ON INC., et al.,
)
Defendants.
)
)
TRUSTEES OF BOSTON UNIVERSITY,
Plaintiff,

May 27, 2015
Saris, Chief Judge.
MEMORANDUM AND ORDER
Plaintiff Trustees of Boston University (BU) objects to the
magistrate judge’s order declining to compel Defendant Epistar
Corporation (Epistar) to produce documents and communications
relating to legal opinions sought and obtained from the Finnegan

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law firm.1 (Docket Nos. 823, 843). BU argues that the magistrate
judge clearly erred when it found that Epistar did not waive its
attorney-client privilege and work product immunity during a
deposition of Meng-Chun Kuo, Epistar’s Director of Intellectual
Property. For the following reasons, the Court SUSTAINS BU’s
objection (Docket No. 843) and ALLOWS IN PART BU’s motion to
compel (Docket No. 717).
I. FACTUAL AND PROCEDURAL BACKGROUND
BU accuses Defendants Epistar, Everlight Electronics Co.
(Everlight), and Lite-On, Inc. (Lite-On) of infringing U.S.
Patent No. 5,686,738 (the ‘738 patent), which describes a type of
gallium nitride film commonly found in light-emitting diodes
(LEDs). Shortly after initiating this lawsuit, BU deposed MengChun Kuo, Director of Intellectual Property at Epistar. Kuo was
designated as a witness for “All opinions EPISTAR has received
regarding validity, and infringement (including willful
infringement) of the ‘738 patent.” At the deposition, Kuo was
represented by an attorney from the Finnegan law firm.
During her deposition, Kuo testified that Epistar was
specifically relying on an opinion from counsel to avoid a
finding of willful infringement. She then asked to speak to her
attorney in private to determine “whether this is about
privileged information or not.” After speaking with counsel, Kuo
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Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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admitted that Epistar sought an opinion from Finnegan in 2007
after co-defendant Everlight warned them that Epistar products
may be infringing the ‘738 patent. According to Kuo, Epistar
prepared an analysis report of its Venus-series of nitride
products, which it gave to Finnegan. Finnegan then told Epistar
in an oral opinion that its products did not infringe the ‘738
patent.
Following these admissions, BU’s attorney clarified with
Kuo, “And when you say ‘no infringement,’ you’re talking no
infringement by the Venus products of the ‘738 patent, based upon
the analysis that Epistar provided the attorneys?” Kuo responded,
“Yes.” Later on during the deposition, Kuo also confirmed that
the analysis sent to Finnegan in 2007 still exists, although she
is not sure where that file is currently stored.
BU moved to compel Epistar to produce all documents and
communications relating to any infringement or invalidity
opinions rendered orally or in writing by Finnegan to Epistar
concerning the ‘738 patent. (Docket No. 717). The magistrate
judge denied the motion, finding that Kuo’s statements during the
deposition did not constitute a waiver of the attorney-client
privilege. (Docket No. 823). BU now objects to this ruling, which
Epistar opposes. (Docket Nos. 843, 861).
Importantly, the magistrate judge also ordered Epistar to
choose whether it will assert an advice of counsel defense in

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response to BU’s claim of willful infringement. (Docket No.
1001). In a reversal from Kuo’s deposition, Epistar now indicates
that it will not be relying on Finnegan’s opinion or any other
advice of counsel as a defense. (Docket No. 1188).
II. LEGAL STANDARDS
A district judge may reconsider a pretrial ruling of a
magistrate judge only “where it has been shown that the
magistrate judge’s order is clearly erroneous or contrary to
law.” 28 U.S.C. § 636(b)(1)(A); see also Fed R. Civ. P. 72(a).
Under the “clearly erroneous” standard, the Court will accept the
magistrate judge’s findings of fact and conclusions drawn
therefrom unless “after scrutinizing the entire record, we form a
strong, unyielding belief that a mistake has been made.” Phinney
v. Wentworth Douglas Hosp., 199 F.3d 1, 4 (1st Cir. 1999)
(quotation marks omitted). Under the “contrary to law” standard,
the district court’s review is plenary. See PowerShare, Inc. v.
Syntel, Inc., 597 F.3d 10, 15 (1st Cir. 2010) (“[F]or questions
of law, there is no practical difference between review under
Rule 72(a)’s ‘contrary to law’ standard and review under Rule
72(b)’s de novo standard.”).
The Federal Circuit will generally apply the law of the
regional circuit with respect to questions involving attorneyclient privilege. Fort James Corp. v. Solo Cup Co., 412 F.3d
1340, 1346 (Fed. Cir. 2005); see also Centocor Ortho Biotech,

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Inc. v. Abbott Labs., 636 F.3d 1341, 1347 (Fed. Cir. 2011) (“For
issues not unique to patent law, we apply the law of the regional
circuit in which the appeal would otherwise lie.”). The Federal
Circuit will apply its own law, however, when dealing with
questions regarding a party’s waiver of attorney-client privilege
in light of an assertion of the advice-of-counsel defense in
response to a charge of willful infringement. In re EchoStar
Comm’cns Corp., 448 F.3d 1294, 1298 (Fed. Cir. 2006).
III. DISCUSSION
A. Whether Epistar Waived Attorney-Client Privilege
The Court must first determine whether Epistar waived
attorney-client privilege during the deposition of Meng-Chun Kuo.
The magistrate judge found that Kuo merely revealed the existence
of Finnegan’s opinion regarding infringement, which is consistent
with the requirements of a privilege log. The magistrate judge
also did not find a waiver when Kuo disclosed Finnegan’s ultimate
legal conclusion, explaining that Epistar did not reveal the
“content” of any attorney-client communications. For example, the
magistrate judge did not believe that Kuo revealed what Epistar
told its attorneys or disclosed the reasoning behind Finnegan’s
legal conclusion.
The First Circuit has approved Wigmore’s recitation of the
essential elements of the attorney-client privilege: (1) where
legal advice of any kind is sought (2) from a professional legal
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adviser 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 adviser, (8) except the protection be
waived. United States v. MIT, 129 F.3d 681, 684 (1st Cir. 1997)
(quoting 8 J. Wigmore, Evidence § 2292, at 554 (McNaughton rev.
1961)). “The privilege protects not only the giving of
professional advice to those who can act on it but also the
giving of information to the lawyer to enable him to give sound
and informed advice.” Texaco P.R., Inc. v. Dep’t of Consumer
Affairs, 60 F.3d 867, 883 (1st Cir. 1995) (quoting Upjohn Co. v.
United States, 449 U.S. 383, 390 (1981)). “The rationale for the
privilege is that safeguarding communications between attorney
and client encourages disclosures by the client to the lawyer
that facilitate the client’s compliance with the law and better
enable the client to present legitimate arguments should
litigation arise.” Cavallaro v. United States, 284 F.3d 236, 245
(1st Cir. 2002).
The First Circuit has also recognized that the attorneyclient privilege may be waived. “Ordinarily, deliberate
disclosure of a privileged communication, where no privilege
protects this further disclosure, waives a communication
privilege.” United States v. Rakes, 136 F.3d 1, 5 (1st Cir.
1998). This is because disclosure to third parties “destroys the

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confidentiality upon which the privilege is premised.” Lluberes
v. Uncommon Prods., LLC, 663 F.3d 6, 24 (1st Cir. 2011)
(quotation marks omitted)). The First Circuit has also recognized
that “conduct can serve to waive the attorney-client privilege by
implication.” In re Keeper of Records (Grand Jury Subpoena
Addressed to XYZ Corp.), 348 F.3d 16, 22-23 (1st Cir. 2003). For
example, there may be an implied waiver where a party (1) places
the attorney-client relationship itself at issue; or (2) asserts
reliance on an attorney’s advice as an element of a claim or
defense. See id. at 24 (citing Sedco Int’l, S. A. v. Cory, 683
F.2d 1201, 1206 (8th Cir. 1982)). Federal Circuit law adheres to
identical principles. See In re Seagate Tech., LLC, 497 F.3d
1360, 1372 (Fed. Cir. 2007) (“The attorney-client privilege
belongs to the client, who alone may waive it.”); Echostar, 448
F.3d at 1301 (“The client can waive the attorney-client privilege
when, for instance, it uses the advice to establish a defense.”).
With respect to partial disclosures of an attorney-client
communication, however, First Circuit law is less developed. “It
is crystal clear that any previously privileged information
actually revealed . . . los[es] any veneer of privilege.” In re
Keeper of Records, 348 F.3d at 23. But the First Circuit has not
ruled on when a partial disclosure of an attorney-client
communication results in a waiver of the rest of the
communication. Here, for example, Epistar disclosed the ultimate

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legal conclusion reached by Finnegan but did not reveal the legal
reasoning supporting the attorney’s conclusion. Courts have
handled these types of partial disclosures differently.
For starters, courts generally agree that “[n]ot every
passing reference to counsel . . . will trigger a waiver of the
privilege.” United States v. Gorski, 36 F. Supp. 3d 256, 268 (D.
Mass. 2014). For example, “indicating the fact or topic of a
confidential communication” does not waive attorney-client
privilege. Chicago Bd. Options Exch., Inc. v. Int’l Sec. Exch.,
2008 WL 3285751, at *3-4 (N.D. Ill. Aug. 8, 2008); see also
United States v. White, 887 F.2d 267, 271 (D.C. Cir. 1989) (“An
averment that lawyers have looked into a matter does not imply an
intent to reveal the substance of the lawyers’ advice.”). But
courts disagree about whether a waiver occurs once a client
begins to disclose the substance of attorney-client
communications, such as the attorney’s conclusions or
recommendations.
Some courts hold that “[f]urther inquiry into the substance
of the client’s and attorney’s discussions does implicate the
privilege and an assertion is required to preserve it.” GFI, Inc.
v. Franklin Corp., 265 F.3d 1268, 1273 (Fed. Cir. 2001) (citing
Nguyen v. Excel Corp., 197 F.3d 200, 206 (5th Cir. 1999)); see
also United States v. Smith, 454 F.3d 707, 713 (7th Cir. 2006)
(client who began his answer with “what the lawyer told

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me–certainly indicates a willingness to waive the privilege”).
Even when a party discloses just part of an attorney-client
communication or merely gives the conclusion, it is typically
enough to waive the privilege for the communication disclosed.
See In re Grand Jury Subpoena (Zerendow), 925 F. Supp. 849, 855
(D. Mass. 1995) (“A client may waive the privilege by testifying
as to part of a privileged communication.” (citing In re Grand
Jury Investigation (Tinari), 631 F.2d 17, 19 n.1 (3d Cir. 1980));
United States v. Jacobs, 117 F.3d 82, 91 (2d Cir. 1997) abrogated
on other grounds by Loughrin v. United States, 134 S. Ct. 2384,
2388 n.2 (2014) (holding that disclosure of an inaccurate summary
of letters from legal counsel was “as effective a waiver as a
direct quotation” with respect to the letters); United States v.
Mendelsohn, 896 F.2d 1183, 1189 (9th Cir. 1990) (holding that a
waiver may occur even when a client misstates what his attorney
told him); Electro Sci. Indus., Inc. v. Gen. Scanning, Inc., 175
F.R.D. 539, 543 (N.D. Cal. 1997) (“[I]t makes no sense to hold
that no waiver occurs when what is disclosed is the most
important part of the privileged communication, but not the
details.”); 1 McCormick on Evidence § 93 (7th ed. 2013) (“Waiver
may be found . . . from conduct such as partial disclosure which
would make it unfair for the client to invoke the privilege

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thereafter.”).2
Meanwhile, other courts have recognized an exception to the
waiver rule when a client merely discloses a summary or
conclusion of the attorney’s legal opinions. See Zenith Elec.
Corp. v. Exzec, Inc., 1997 WL 798908, at *4 (N.D. Ill. Dec. 24,
1997) (holding that “mere restatements of an attorney’s
conclusion do not disclose a particular attorney-client
communication and therefore does not constitute a waiver.”);
Furminator, Inc. v. Kim Laube & Co., 2009 WL 5176562, at *2 (E.D.
Mo. Dec. 21, 2009) (“Several courts have determined that
disclosing a general summary of a legal opinion does not amount
to a waiver of privilege.”). In Zenith, a party sent two opinion
letters drafted by attorneys to a research institute. 1997 WL
798908, at *4. The opinion letters contained a list of prior art,
the name of an article given to the attorney, a list of
previously considered patents, and a brief description of the
party’s product. Id. As a result, the Court found that the
defendant had waived attorney-client privilege over the opinion
letters. Id. But the Court also stated that a mere “paraphrase”
or “restate[ment]” of an attorney’s ultimate conclusions would

2

BU also cites to In re Target Tech. Co., 208 F. App’x 825
(Fed. Cir. 2006) where the Court found waiver based on an
“extrajudicial disclosure that revealed the attorney’s
conclusion, but did not reveal the details of the privileged
communication.” Id. at 826-27. The Court observes that this case
is unpublished and nonprecedential. See Fed. Cir. R. 32.1(c).
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not be a waiver. Id. Accordingly, disclosure of an attorney’s
ultimate conclusion, without more, may not be sufficient to waive
the privilege. See Elan Microelectronics Corp. v. Pixcir
Microelectronics Co., 2013 WL 4499006, at *8 (D. Nev. Aug 14,
2013) (holding that a powerpoint presentation referring to legal
opinions from counsel did not waive the privilege).
With these principles in mind, the magistrate judge’s ruling
was clearly erroneous or contrary to law in at least two ways:
First, Epistar waived the attorney-client privilege by
disclosing the substance and content of its request for legal
advice from Finnegan. The magistrate judge focused on whether
merely disclosing Finnegan’s bare conclusion about infringement
constituted a waiver. As mentioned above, courts are split on how
to handle that question. But Epistar’s disclosures here went
further than any of those cases. Kuo stated during her deposition
that Epistar contacted Finnegan after Everlight informed them of
infringement concerns regarding the ‘738 patent in 2007. More to
the point, Kuo also stated that Epistar prepared an analysis of
the Venus-series of products, which was transmitted to Finnegan
for purposes of obtaining a legal opinion regarding potential
infringement of the ‘738 patent. Indeed, the attorney for BU
clarified with Kuo, “And when you say ‘no infringement,’ you’re
talking no infringement by the Venus products of the ‘738 patent,
based upon the analysis that Epistar provided the attorneys?”

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(emphasis added). Kuo responded, “Yes.” At the very least,
Epistar waived its privilege over the analysis report that it
prepared and gave to Finnegan, which was the basis of the legal
opinion. See Upjohn, 449 U.S. at 396 (explaining that attorneyclient privilege shields against the question: “What did you say
or write to the attorney?”); Chicago Bd. Options Exch., 2008 WL
3285751, at *3 (“There is a significant difference between
indicating the fact or topic of a confidential communication with
an attorney and revealing its content.”).
Second, the circumstances surrounding Kuo’s disclosures
indicate that she was deliberately waiving any confidentiality in
communications between Epistar and Finnegan relating to the 2007
non-infringement opinion. In the context of judicial proceedings,
Epistar made Kuo available to be deposed on the topic of “All
opinions EPISTAR has received regarding validity, and
infringement (including willful infringement) of the ‘738
patent.” Shortly after questions on this topic began, Kuo also
asked to speak to a Finnegan attorney to determine “whether this
is about privileged information or not.” Following a brief break,
Kuo agreed to answer the questions, and at no time did Kuo or her
Finnegan attorney assert attorney-client privilege. See 8 Wright,
Miller, et al., Federal Practice & Procedure § 2016.1 (3d ed.)
(“In the deposition context, as at trial, the objection should
ordinarily be asserted when a question seeking privileged

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material is asked, and the questioner may explore the propriety
of the objection with questions going to availability of the
privilege.”). In short, Kuo chose to disclose information about
Epistar’s communications with Finnegan (1) in a deposition (2) in
the presence of a Finnegan attorney (3) after speaking to a
Finnegan attorney about whether the questions implicated
privilege. All of these circumstances indicate that Epistar did
not intend to keep these communications private. See In re Sealed
Case, 877 F.2d 976, 980 (D.C. Cir. 1980) (“[I]f a client wishes
to preserve the privilege, it must treat the confidentiality of
attorney-client communications like jewels–if not crown
jewels.”). For these reasons, logic and fairness dictate that
Epistar waived its attorney-client privilege.
B. Scope of the Waiver
The next question is how to define the scope of the waiver.
BU has suggested that Kuo’s disclosures are an implied waiver of
privilege for every other attorney-client communication on the
same subject-matter, including any other opinions provided by
Finnegan relating to infringement or invalidity of the ‘738
patent. But this suggestion is contrary to First Circuit
precedent.
The First Circuit has instructed that the scope of implied
waiver is “almost invariably premised on fairness concerns.” In
re Keeper of Records, 348 F.3d at 24. For example, implied

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waivers over an entire subject matter have been found where “the
party asserting the privilege placed protected information in
issue for personal benefit through some affirmative act, and the
court found that to allow the privilege to protect against
disclosure of that information would have been unfair to the
opposing party.” Id. (quotation marks omitted); see also Rakes,
136 F.3d 1, 5 (explaining that waiver is “directed against
selective disclosures”). In these circumstances, a subject-matter
waiver discourages a party who might otherwise try to
“selectively disclose fragments helpful to its cause, entomb
other (unhelpful) fragments, and in that way kidnap the truthseeking process.” In re Keeper of Records, 348 F.3d at 24.
The fairness concerns that might require an implied subjectmatter waiver over all communications between Finnegan and
Epistar relating to invalidity or infringement of the ‘738 patent
are not present her. In particular, Epistar has recently decided
not to make communications with Finnegan an issue in this case.
Nor is it trying to benefit from the disclosure by, for example,
using it as part of an advice-of-counsel defense. Id. (“Where a
party has not thrust a partial disclosure into ongoing
litigation, fairness concerns neither require nor permit massive
breaching of the attorney-client privilege.”). Granted, Epistar
referred to Finnegan’s non-infringement opinion as a reason not
to allow BU’s motion to add a willful infringement claim to its

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complaint. But Epistar has now decided that it will not be
raising an advice-of-counsel defense at summary judgment or at
trial. (Docket No. 1188). As a result, at this time the Court
does not compel the production of all attorney-client
communications between Epistar and Finnegan regarding the ‘738
patent. Instead, the Court merely compels Epistar to disclose all
attorney-client communications relating to the non-infringement
opinion provided by Finnegan in 2007. In all other respects, BU’s
objection to the magistrate judge’s order is overruled.3
ORDER
The Court SUSTAINS BU’s objection (Docket No. 843) and
ALLOWS IN PART BU’s motion to compel. Epistar is hereby compelled
to produce all attorney-client communications relating to the
non-infringement opinion provided by Finnegan in 2007. In all
other respects, BU’s objection to the magistrate judge’s order is
OVERRULED.

/s/ PATTI B. SARIS
Patti B. Saris

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In particular, BU also argues that Epistar waived any work
product immunity with respect to Finnegan’s non-infringement
opinion. The Court finds that BU has insufficiently briefed this
issue and declines to overrule the magistrate judge’s ruling on
this point. See United States v. Zannino, 895 F.2d 1, 17 (1st
Cir. 1990) (“It is not enough merely to mention a possible
argument in the most skeletal way, leaving the court to do
counsel’s work, create the ossature for the argument, and put
flesh on its bones.”).
15

Chief United States District Judge

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