East Coast Sheet Metal Fabricating Corp. v. Autodesk, Inc.

Filing 108

ORDER denying 86 Motion for In Camera Review and Order Permitting Use of Document; granting 87 Motion to File its Motion for In Camera Review and Order Permitting Use of Document Under Seal ; granting 102 Motion to Seal Document. So Ordered by District Judge Landya B. McCafferty.(gla)

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEW HAMPSHIRE

East Coast Sheet Metal
Fabricating Corp., d/b/a
East Coast CAD/CAM
v.

Civil No. 12-cv-517-LM
Opinion No. 2014 DNH 193

Autodesk, Inc.

O R D E R
In this patent case, a dispute has arisen as a result of
the unintentional production of an allegedly privileged
document.

Specifically, among a set of documents produced to

Autodesk, Inc. (“Autodesk”) by East Coast Sheet Metal
Fabricating Corp (“EastCoast”), Autodesk located an e-mail
between EastCoast and an attorney.

Before the court is

Autodesk’s motion (doc. no. 86) seeking the court’s permission
to use the e-mail.
Background
The parties are litigating claims involving patent
infringement, breach of fiduciary duty, fraud, and unjust
enrichment.

At the start of litigation, the parties agreed to

be bound by a confidentiality agreement.

The court then entered

that agreement as a protective order, which states in relevant
part:

If documents . . . subject to a claim of attorneyclient privilege . . . [are] inadvertently or
unintentionally produced, such production shall in no
way prejudice or otherwise constitute a waiver of, or
estoppel as to, any such privilege . . . .
Doc. no. 42 at ¶ 10.

The protective order contains no

language requiring a party to take reasonable measures to
avoid inadvertent disclosure.
On June 22, 2014, Autodesk discovered an e-mail among
documents that EastCoast produced during discovery that appeared
to relate to the representation of EastCoast.

The e-mail was

between EastCoast and a lawyer, discussing information the
lawyer required in order to decide whether to represent
EastCoast.

EastCoast did not retain that lawyer as counsel.

Autodesk’s use of that e-mail is at issue here.
Autodesk claims that the e-mail is not privileged because
it is a communication between a lawyer and a potential client,
or in the alternative, that EastCoast has waived its privilege
by inadvertently disclosing it.

EastCoast objects, claiming

that the document is protected by attorney-client privilege.
EastCoast further claims that it did not waive that privilege
because discovery in this case is governed by the protective
order, which prevents a waiver when a privileged document is
inadvertently disclosed.

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Discussion
I.

Applicable Law
Because jurisdiction over EastCoast’s patent infringement

claim is based upon 28 U.S.C. § 1338, federal common law of
privilege applies to this case. Fed. R. Evid. 501. Further, “[a]
federal privilege applies even if a federal civil action
combines state and federal law claims and the asserted privilege
is relevant to both claims.”

Hughes v. S. N.H. Servs., Inc.,

11-CV-516-SM, 2012 WL 5303298, *4 (D.N.H. Oct. 25, 2012)
(quoting Shea v. McGovern, 08-12148-MLW, 2011 WL 322652, at *5
(D. Mass. Jan. 31, 2011)).

Thus, even though EastCoast asserts

state law claims in addition to its patent infringement claim,
the federal common law of privilege governs all claims asserted
in this case.
II.

Attorney-Client Privilege
Under federal law, the party claiming a privilege bears the

burden of showing that a document is privileged and that the
privilege has not been waived.

Hughes, 2012 WL 5303298, at *2

(quoting In re Grand Jury Subpoena (Mr. S.), 662 F.3d 65, 71
(1st Cir. 2011)).

To meet that burden, the party must make four

showings:
1) that he was or sought to be a client of the
attorney; 2) that such attorney, in connection with

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the document, acted as a lawyer; 3) that the document
relates to facts communicated for the purpose of
securing a legal opinion, legal services or assistance
in a legal proceeding; and 4) that the privilege has
not been waived.
Pacamor Bearings, Inc. v. Minebea Co., 918 F. Supp. 491, 510
(D.N.H. 1996); see also Mr. S., 662 F.3d at 71; United States v.
Wilson, 798 F.2d 509, 512 (1st Cir. 1986).

EastCoast has met

its burden by showing that the e-mail was a confidential
communication sent by EastCoast for the purpose of seeking the
recipient lawyer’s legal advice.
III. Waiver
Next, the court must determine whether EastCoast has waived
the attorney-client privilege.

“A federal court may order that

the privilege or protection is not waived by disclosure
connected with the litigation pending before the court.” Fed. R.
Evid. 502(d).

Here, the court did just that.

In paragraph 10

of the protective order, the court ordered that a party does not
waive attorney-client privilege by inadvertently disclosing a
privileged document during discovery.
Despite the protection against waiver provided by the
protective order, Autodesk implies that because EastCoast did
not take reasonable measures to prevent inadvertent disclosure
of privileged documents, EastCoast has waived the privilege.

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Borrowing the reasonableness language that appears in Rule
502(b), many courts have read a reasonableness requirement into
Rule 502(d).

See Paul W. Grimm, Lisa Yurwit Bergstrom, Matthew

P. Kraeuter, Federal Rule of Evidence 502: Has It Lived Up to
Its Potential?, 17 Rich. J.L. & Tech. 8, 78-83 (2011)(collecting
and discussing cases).

However, this court declines to do so.

Federal Rule of Evidence 502(d) was adopted for the express
purpose of allowing parties to limit the costs associated with
screening documents produced during discovery for privileged
material.

See Fed. R. Evid. 502 advisory committee’s note.

To

accomplish this, Rule 502
seeks to provide a predictable, uniform set of
standards under which parties can determine the
consequences of a disclosure of a communication or
information covered by the attorney-client privilege
or work-product protection. Parties to litigation
need to know, for example, that if they exchange
privileged information pursuant to a confidentiality
order, the court's order will be enforceable.
Id.

Inserting a reasonableness requirement into Rule 502(d)

would thwart this purpose.

See Grimm et al., supra, at 91.

Accordingly, the protective order entered in this case
controls the question presented here.

That order provides that

no waiver occurs as a result of inadvertently-produced
privileged documents, without regard to the measures a party
takes to prevent disclosure.

It is undisputed that EastCoast’s

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production of the privileged document was unintentional.
Therefore, as the protective order provides, EastCoast did not
waive its privilege.
Conclusion
Autodesk’s motion for In Camera Review and Order Permitting
Use of Document (doc. no. 86) is denied.

The two related

motions to seal (doc. nos. 87 and 102) are granted.
SO ORDERED.

__________________________
Landya McCafferty
United States District Judge
September 16, 2014
cc:

Thomas Tracy Aquilla, Esq.
Kenneth C. Bartholomew, Esq.
Robert F. Callahan, Jr., Esq.
Joel M. Freed, Esq.
Kyle L. Harvey, Esq.
Damian R. Laplaca, Esq.
Michael S. Lewis, Esq.
Richard C. Nelson, Esq.
Alexander P. Ott, Esq.
Steven R. Pedersen, Esq.
Donald J. Perreault, Esq.
Rolf O. Stadheim, Esq.
George C. Summerfield, Esq.

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