Cequent Performance Products, Inc. v. Hopkins Manufacturing Corporation et al
ORDER Granting in Part and Denying in Part Plaintiff's 68 and 70 Motion to Compel. Signed by District Judge Matthew F. Leitman. (HMon)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
Case No. 13-cv-15293
Hon. Matthew F. Leitman
CORPORATION et al..,
ORDER GRANTING IN PART AND DENYING IN PART
PLAINTIFF’S MOTION TO COMPEL (ECF ## 68, 70)
On March 3, 2017, Plaintiff Cequent Performance Products, Inc. filed a
motion to compel the production of unredacted documents that Defendant Hopkins
Manufacturing Corporation had previously produced in redacted form. (See ECF
## 68, 70.)1 As set forth below, the Court GRANTS the motion in part and DENIES
the motion part.
During discovery, Hopkins produced certain documents to Cequent that
contained redactions. Hopkins identified twelve such documents on a supplemental
privilege log dated January 27, 2017. (See ECF #70-1.) In that log, Hopkins claimed
Cequent filed two identical versions of its motion. ECF #68 is unsealed and
contains limited redactions. ECF #80 is sealed and contains no redactions.
that the redacted portions of the listed documents were protected from disclosure
because they reflect “attorney-client patent advice sought or received from [outside
patent counsel] Tom Luebbering.” (Id. at Pg. ID 2280-81.)
In the motion to compel, Cequent sought the production of unredacted copies
of eleven of the twelve documents listed on the supplemental privilege log.2 (See
ECF #70.) Cequent asked the Court “to review the withheld documents in camera
to determine whether they are privileged and, if not, then order Hopkins to produce
them.” (Id. at Pg. ID 2272.)
Hopkins opposed both an in camera review and any required production of
the unredacted documents. (See ECF #74.) Hopkins insisted that “[t]he information
withheld from production and described in [the] Supplemental Privilege Log” did
not need to be produced because it “consist[ed] of communications between
Hopkins’ corporate representatives relating directly to legal advice of patent counsel
that was sought and/or received to aid Hopkins in its pursuit of developing the
Agility [brake controller].” (Id. at Pg. ID 2340.)
On March 22, 2017, the Court entered a written Order in which it required
Hopkins to produce unredacted copies of the eleven documents at issue to the Court
for an in camera review. (See ECF #74.) The Court then received the documents
The supplemental privilege log identifies twelve documents numbered 1-12. (See
ECF #70-1.) In the motion to compel, Cequent seeks production of the documents
and reviewed them in light of the representations Hopkins made on the supplemental
privilege log and in its response to Cequent’s motion to compel.
Following the Court’s in camera review of the documents, it held a telephonic
hearing on the motion to compel. (See ECF #92.) During that hearing, the Court
agreed with Hopkins that, in theory, the redactions at issue could potentially be
protected by the attorney-client privilege if they were created for the purpose of
receiving legal advice and/or reflect legal advice received from counsel. See, e.g.,
Williams v. Sprint/United Management Co., 238 F.R.D. 633, 638-39 (D. Kan. 2006)
(citing cases and noting that “the attorney-client privilege extends to
communications made within a corporation if those communications are made for
the purpose of securing legal advice”). However, the Court told Hopkins that it had
concerns that there was not sufficient evidence in the record specifically tying the
redactions here to legal advice that Hopkins sought or received. The Court then
provided Hopkins one final opportunity to produce additional evidence of privilege
through the submission of declarations from the authors of the redacted documents.
The Court also allowed Cequent to depose these declarants and, after those
depositions, to file a reply brief in further support of its motion to compel.
On April 27, 2017, Hopkins filed the declarations of Gary Kamisnki and
Daniel Scheller, the identified authors of ten of the eleven documents at issue.3 (See
ECF ## 98, 99.) Kamisnki and Scheller both stated in their declarations that the
redacted portions of the documents “reflect legal advice to be sought from counsel,
Mr. Tom Luebbering” or reflect advice “received” from Luebbering. (Kaminski
Decl. at ¶¶ 6-7, ECF #98 at Pg. ID 3852-53; see also Scheller Decl. at ¶8, ECF #99
at Pg. ID 3855-56.) Hopkins then took the depositions of both Scheller and
Kamisnki. (See Deposition Transcripts, ECF ## 102-1, 102-3.) It also filed a reply
brief in further support of the motion to compel. (See ECF #102.) On May 19, 2017,
Hopkins filed a motion for leave to file a sur-reply in further opposition to the motion
to compel (see ECF #103), and the Court granted such leave on May 22, 2017. (See
“The purpose of the attorney-client privilege is to encourage clients to
communicate freely with their attorneys.” In re Grand Jury Proceedings Oct. 12,
1995, 78 F.3d 251, 254 (6th Cir. 1996) (citing Upjohn Co. v. United States, 449 U.S.
383, 389 (1981)).4 “But because the privilege operates to reduce the amount of
The remaining document at issue was drafted by Jon Gray. (See ECF #70-1.) Gray
has not filed a declaration with respect to the motion to compel.
While this is a patent infringement action, the Federal Circuit “applies the law of
the regional circuit, here the [Sixth] Circuit, with respect to questions of attorneyclient privilege and waiver of attorney-client privilege.” Fort James Corp. v. Solo
information discoverable during the course of a lawsuit, it is narrowly construed.”
Id.; see also In re Columbia/HC Healthcare Corp. Billing Practices Litigation, 293
F.3d 289, 294 (6th Cir. 2002) (“The privilege applies only where necessary to
achieve its purpose and protects only those communications necessary to obtain
legal advice”) (internal quotation marks omitted). “The burden of establishing the
existence of the privilege rests with the person asserting it.” United States v. Dakota,
197 F.3d 821, 825 (6th Cir. 1999).
The Scheller Documents
Hopkins has not carried its burden to establish that the redactions on
documents identified on the supplemental privilege log as authored by Dan Scheller
(HOPKINS0043808), and ten (HOPKINS0046161-78) (the “Scheller Documents”)
– are protected by the attorney-client privilege. At his deposition, in stark contrast
to his declaration, Scheller testified that he “d[id] not know” whether the redactions
included on the Scheller Documents “reflect[ed] either advice that was sought from
Cup Co., 412 F.3d 1340, 1346 (Fed. Cir. 2005); see also In re Regents of University
of California, 101 F.3d 1386, 1390 n.2 (Fed. Cir. 1996) (applying Seventh Circuit
law to attorney-client privilege issue and noting that “[f]or procedural matters that
are not unique to patent issues, [the Federal Circuit] appl[ies] the perceived law of
the regional circuit”).
counsel or advice that was received” from counsel, and he agreed that he “[did not]
have any basis to say that the redacted portions of any of [the Scheller Documents]
actually do reflect advice to or from counsel.” (Scheller Dep. at 15, ECF #102-1 at
Pg. ID 3884.) For example, when Cequent showed Scheller document ten at his
deposition, which are pages from his personal notebook that reflect notes he took
during meetings, Scheller testified that he “ha[d] no idea” whether the redacted
portions of that document “reflect[ed] advice that was either sought or received from
counsel.” (Id. at 18, ECF #102-1 at Pg. ID 3887.) Moreover, Scheller testified that
he never communicated with an attorney and that he also had “no idea” what
documents may have been shared with counsel or that counsel may have reviewed
for Hopkins. (Id. at 10-13, 19-20, ECF #102-1 at Pg. ID 3879-81, 3888-89; see also
id. at 14, ECF #102-1 at Pg. ID 3883 in which Scheller testified that he “[did] not
know” exactly what documents were shared with counsel or when they may have
been shared.) Simply put, Scheller could not say that any of the redactions on the
Scheller Documents reflect advice that was either sought or received from counsel,
and Hopkins has not presented any other evidence that the documents are privileged.
In Hopkins’ sur-reply, it argues that the redactions on the Scheller Documents
are privileged because Scheller “regularly communicated” with Kaminski and knew
that Kaminski “communicated with Tom Luebbering regarding the design and
development of Hopkins’s Agility controllers.” (ECF #103-1 at 6, pg. ID 4063.) But
these facts say nothing about whether the specific redactions from the Scheller
Documents relate in any way to Kaminski’s consultations with counsel. And
Hopkins has not presented any evidence from Kaminski that the redactions on the
Scheller Documents reflect legal advice he (Kaminski) sought or received.
Accordingly, Hopkins has not met its burden to establish that the redactions on
Scheller Documents are privileged and it must produce unreacted copies of those
documents to Cequent.
The Gray Document
Hopkins has carried its burden to establish that the redactions of handwritten
notes on the document identified on the supplemental privilege log as authored by
Jon Gray – document seven (bates number HOPKINS0044571) (the “Gray
Document”) – are privileged. First, Hopkins produced Kaminski’s declaration in
which Kaminski swore under oath that “the information reflected in the redacted
portion” of the Gray Document “constitutes legal advice sought or received from
patent counsel, Mr. Tom Luebbering, that flowed between me and [Luebbering]….”
(Kaminski Declaration at ¶7, ECF #98 at Pg. ID 3853.) Second, at Kaminski’s
deposition, he confirmed that his statement in the declaration about the Gray
Document was “correct,” “accurate,” and was not “incomplete,” and he affirmed that
the redactions on that document “related to subjects [he] consulted with Mr.
Luebbering on.” (Kaminski Dep. at 239, 242, ECF #102-3 at Pg. ID 3966, 3969; see
also id. at 243, ECF #102-3 at Pg. ID 3970.) Hopkins has therefore produced
sufficient evidence to carry its burden to establish that the redactions on the Gray
Document are privileged and need not be produced to Cequent.
The Kaminski Documents
The privilege log identified the remaining seven documents at issue as
authored in whole or in part by Kaminski (the “Kaminski Documents”).5 Document
one on the supplemental privilege log (bates number HOPKINS0043673) consists
of handwritten notes Kaminski drafted. Documents two (HOPKINS0043778), five
(HOPKINS0044050), six (HOPKINS0044051), eight (HOPKINS0044967), nine
(HOPKINS0045204), and eleven (HOPKINS0047457) are nearly identical copies
of what are called “Project Spec Sheets” with nearly identical redactions.
Hopkins has established that the redaction on document two, Kaminski’s
handwritten notes, is privileged and need not be produced. Kaminski testified at his
deposition that the redacted portion of those notes was “a reminder for [him] to talk
to [his] patent attorney [Luebbering].” (Kaminski Dep. at 231, ECF #102-3 at Pg.
While the supplemental privilege log identifies Kaminski as the “author” of the
Kaminski Documents (see ECF #70-1), Kaminski testified at his deposition that he
did not author the documents and he did not know who did. (See Kaminski Dep. at
271-72, ECF #102-3 a Pg. ID 3998-99.)
ID 3958.) And while Kaminski could not specifically remember when he spoke with
Luebbering about that “reminder” (see id. at 233-35, ECF #102-3 at Pg. ID 396062), he testified that he believed it “would be in the span of one month or less” from
when he drafted the note. (Id. at 237, ECF #102-3 at Pg. ID 3964.) Based on
Kaminski’s sworn deposition testimony, Hopkins has provided a factual basis under
which the Court can conclude that the redacted text was created for the purpose of
securing legal advice. See Williams, supra; see also Graff v. Haverhill North Coke
Co., 2012 WL 5495514, at *7 (S.D. Ohio. Nov. 13, 2012) (citing cases, including
Williams, and noting that “[c]ourts have extended the protection outlined in Upjohn
to communications between non-attorney corporate employees where the
communications were made for purposes of securing legal advice from counsel”).
That text is therefore protected by the attorney-client privilege and Hopkins does not
have to produce an unredacted copy of this document to Cequent.
Hopkins has also met its burden to produce evidence that the redactions on
the remaining six Kaminski Documents – the Project Spec Sheets – were created for
the purpose of obtaining legal advice and that the redactions are therefore privileged.
In his declaration, Kaminski swore under oath that “all” of the information from the
redacted portions of the Project Spec Sheets “constitutes legal advice sought or
received from patent counsel, Mr. Tom Luebbering, that flowed between me and
Tom Luebbering….” (Kaminski Decl. at ¶7, ECF #98 at Pg. ID 3853.) And at his
deposition, Kaminski confirmed, again and again, that the redacted portion of these
documents reflect advice he sought or received from Luebbering:
Q: And do you see in paragraph 7 that you state, “Further
based on my knowledge and participation in the
development process of the Agility, I recall all the
information reflected in the redacted portions of [the
Project Spec Sheets] constitutes legal advice sought or
received from patent counsel.” Do you see that?
Q: Is that a correct statement from you?
Q: And is it complete or is there any information that you
believe should be included in this paragraph to make it
A: I believe the statement is accurate and that there’s
nothing eliminated from it that I would consider to make
Q: Out of those  documents you identified, which of
those identify redacted portions where they constitute
legal advice you sought from Mr. Luebbering?
A: All of the redacted portions of those documents related
to subjects I consulted with Mr. Lueberring on.
Q: Okay. Which of these documents that you identify
here in paragraph 7 [of Kaminski’s declaration] include
redacted portions where you are seeking legal advice from
A: I believe all of them contain information where Tom
and I had multiple conversations receiving and seeking
information. I can’t put specifics to any one.
Q: Do you know if legal advice was actually sought for
any of these statements that are being redacted in Exhibit
263 [one of the Project Spec Sheets]?
A: Yes, I do.
A: It was sought and received numerous times, but I can’t
provide specific dates.
A: I had broad discussions with Tom Luebbering related
to the potential patent issues involved here.
Q: When did that occur?
A: Most likely over a period of years.
Q: I’m not asking generally, I’m asking specifically. […]
[W]hen did that occur?
A: I don’t know.
Q: Okay. So it’s possible it did not occur?
A: No, it is not.
Q: Do all of the portions that have been redacted, whether
or not you remember when you communicated with Mr.
Luebbering, reflect either advice that was to be sought or
received from Mr. Luebbering?
(Kaminski Dep. at 239, 242-43, 253-54, 276, 290 ECF #102-3 at Pg. ID 3966, 396970, 3980-81, 4003, 4017.)
Cequent argues that despite this testimony from Kaminski, the redactions on
the Project Spec Sheets are not protected by the attorney-client privilege because
Kamisnki also testified that it was “possible” that the redactions related to patent
research that he conducted on his own. (See, e.g., id. at 263, 267, 278-85, ECF #1023 at Pg. ID 3990, 3994, 4005-12.) Cequent interprets this testimony as a concession
from Kaminski that he simply could not say whether the redactions contained
privileged information. The Court disagrees.
The most reasonable interpretation of Kaminski’s testimony, considered in its
entirety, is that to the best of his knowledge the redactions on the Project Spec Sheet
do reflect advice sought or received from counsel.
The fact that Kaminski
acknowledged the mere possibility that the redacted information may have come
from his own independent research does not negate his repeated testimony that he
did believe and did claim that the redacted information did reflect legal advice to be
sought or already obtained. Kaminski’s testimony, when read as a whole, satisfies
Hopkins’ burden to establish that the redactions on the Project Spec Sheets are
privileged. Hopkins therefore need not produce unredacted copies of the Project
Spec Sheets to Cequent.
For the reasons stated above, Cequent’s motion to compel (ECF ## 68, 70) is
GRANTED IN PART AND DENIED IN PART as follows: Hopkins shall produce
unredacted copies to Cequent of the documents identified as documents 3, 4, and 10,
on Hopkins’ January 27, 2017, supplemental privilege log within ten (10) days of
this Order. Hopkins need not produce unredacted copies of any other document on
the supplemental privilege log.
IT IS SO ORDERED.
s/Matthew F. Leitman
MATTHEW F. LEITMAN
UNITED STATES DISTRICT JUDGE
Dated: May 24, 2017
I hereby certify that a copy of the foregoing document was served upon the
parties and/or counsel of record on May 24, 2017, by electronic means and/or
s/Holly A. Monda
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