Bombardier Recreational Products, Inc et al v. Arctic Cat, Inc et al

Filing 1030

MEMORANDUM AND OPINION AND ORDER ON PLAINTIFFS' REQUEST TO CLAWBACK OR EXCLUDE DOCUMENTS: Plaintiffs request to claw back documents is DENIED. Plaintiffs request to exclude documents is GRANTED IN PART and DENIED IN PART 1000 (Written Opinion). Signed by Chief Judge John R. Tunheim on 11/21/2017. (JMK)

UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
Civil No. 12-2706 (JRT/LIB)

BOMBARDIER RECREATIONAL
PRODUCTS, INC., and BRP U.S. INC.,
Plaintiffs,
v.

MEMORANDUM OPINION AND
ORDER ON PLAINTIFFS’ REQUEST
TO CLAWBACK OR EXCLUDE
DOCUMENTS

ARCTIC CAT INC., and ARCTIC CAT
SALES INC.,
Defendants.

Harry C. Marcus, LOCKE LORD LLP, Three World Financial Center,
New York, NY 10281, and Kevin D. Conneely and Ruth A. Rivard,
STINSON LEONARD STREET LLP, 50 South Sixth Street, Suite 2600,
Minneapolis, MN 55402, for plaintiffs.
Aaron A. Myers, Diane L. Peterson, and Niall A. MacLeod, KUTAK
ROCK LLP, 60 South Sixth Street, Suite 3400, Minneapolis, MN 55402,
for defendants.

Plaintiffs Bombardier Recreational Products, Inc. and BRP U.S. Inc. (collectively
“BRP”) brought this action against Arctic Cat Inc. and Arctic Cat Sales Inc. (collectively
“Arctic Cat”), alleging patent infringement. Before the Court is BRP’s request to claw
back 23 inadvertently disclosed privileged documents and/or to preclude their use at trial.
Because the Court finds that BRP was not diligent in preventing or remedying its
inadvertent disclosure of these documents, the Court will deny BRP’s request to claw
back the documents. Nevertheless, the Court will find that most of the documents are
inadmissible under the Federal Rules of Evidence.
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DISCUSSION
I.

CLAW BACK
Fed. R. Civ. P. 26(b)(5)(B) allows a party that has disclosed privileged materials

to “claw back” such materials under certain circumstances. The Court considers whether
a party is entitled to claw back its material under the Hydraflow test. See Starway v.
Independent School Dist. No. 625, 187 F.R.D. 595, 597 (D. Minn. 1999). Hydraflow
requires consideration of 5 factors:
(1) the reasonableness of the precautions taken to prevent
inadvertent disclosure in light of the extent of document
production, (2) the number of inadvertent disclosures, (3) the
extent of the disclosures, (4) the promptness of measures taken
to remedy the problem, and (5) whether justice is served by
relieving the party of its error.
Id. at 597 (citing Gray v. Bicknell, 86 F.3d 1472, 1484 (8th Cir. 1996)). The Eighth
Circuit has concluded that this test “strikes the appropriate balance between protecting
attorney-client privilege and allowing, in certain situations, the unintended release of
privileged documents to waive that privilege.” Gray, 86 F.3d at 1484.
The Court finds that BRP is not entitled to claw back its documents. The first
factor favors Arctic Cat, as BRP fails to meet its burden of showing that the precautions
taken to prevent inadvertent disclosure were reasonable. The second and third factors
slightly favor BRP, as the number and extent of inadvertent disclosures is relatively
small, although Arctic Cat notes that this is not the first time that BRP has inadvertently
disclosed documents. The fourth factor strongly favors Arctic Cat, because more than
three years have passed since BRP initially disclosed these documents. Additionally,
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BRP was on notice of a problem with its disclosure because it attempted to claw back
other allegedly privileged documents in August 2014 and October 2015. Yet BRP failed
to diligently review its disclosure. The fifth and final factor also favors Arctic Cat
because BRP waited more than three years to attempt to claw back these documents, thus
the interests of justice do not favor relieving BRP of its error. Because the Court finds
that BRP was not diligent in protecting or reviewing its production and waited more than
three years to attempt to claw back the documents, the Court will deny BRP’s request.

II.

ADMISSIBILITY
The Court finds that Federal Rule of Evidence 502(b) does not preclude admission

of the 23 documents. BRP failed to take reasonable steps to prevent disclosure and failed
to promptly take reasonable steps to rectify the error, as required by Rule 502(b). As
such, the documents are admissible under Rule 502(b).

Nevertheless, some of the

documents are inadmissible under other rules of evidence:
Document No.
27

Privilege Log No.
242

Admissibility

58

243

Inadmissible under Rule 402 as irrelevant.

69

221

Inadmissible under Rule 408 as evidence of
settlement. Inadmissible under Rule 403
because the potential for prejudice
substantially outweighs any probative value.

Admissible.

70, 72, 73, 77, 78, 222, 224, 225, 229, Inadmissible under Rule 403 because the
79, 80, 81, 82, 83, 230, 231, 232, 233, potential for prejudice substantially outweighs
234, 235, 236, 237 any probative value.
84, 85
71

223

Inadmissible under Rule 408 as evidence of
settlement. Inadmissible under Rule 403
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because the potential for prejudice
substantially outweighs any probative value.
74

226

Inadmissible under Rule 408 as evidence of
settlement.

75

227

Inadmissible under Rule 403 because the
potential for prejudice substantially outweighs
any probative value.

76

228

Inadmissible under Rule 403 because the
potential for prejudice substantially outweighs
any probative value.

86

238

Admissible.

101

239

Admissible.

489

240

Inadmissible under the Court’s prior ruling on
BRP’s Motion in Limine No. 10 (Docket No.
990).

490

241

Admissible.

ORDER
Based on the foregoing, and all the files, records, and proceedings herein, IT IS
HEREBY ORDERED that:
1.

Plaintiffs’ request to claw back documents is DENIED.

2.

Plaintiffs’ request to exclude documents is GRANTED IN PART and

DENIED IN PART as set forth in the foregoing table.

DATED: November 21, 2017
at Minneapolis, Minnesota.

_________s/John R. Tunheim_______
JOHN R. TUNHEIM
Chief Judge
United States District Court
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