ROCKWELL AUTOMATION, INC. v. RADWELL INTERNATIONAL, INC.

Filing 387

MEMORANDUM OPINION AND ORDER the 50 documents designated for in camera review by defendant, plaintiffs privilege designations are SUSTAINED in part and DENIED in part. All of plaintiffs privilege designations are SUSTAINED except for Documents 36, 38, 52, 53 and 55. Plaintiffs privilege assertions for these five documents are OVERRULED, etc. Signed by Magistrate Judge Joel Schneider on 4/25/2019. (rtm, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEW JERSEY
CAMDEN VICINAGE
ROCKWELL AUTOMATION, INC.
Plaintiff,
v.

Civil No. 15-5246(RBK/JS)

RADWELL INTERNATIONAL, INC., et al.
Defendant.
MEMORANDUM OPINION AND ORDER
This

Opinion

and

Order

addresses

the

regarding plaintiff’s privilege designations. 1

parties’

dispute

The Court received

plaintiff’s March 14, 2019 letter brief (“LB”), defendant’s March
28, 2019 response, and heard oral argument.
number

of

plaintiff’s

privilege

Given the substantial

designations,

and

the

impracticability of reviewing all of plaintiff’s documents in
camera, the Court directed defendant to designate fifty (50)
representative documents to specifically challenge. 2
reviewed the designated documents in camera.
be

discussed,

the

Court

privilege assertions.

sustains

and

The Court

For the reasons to

overrules

plaintiff’s

As to the privilege assertions that are

sustained, the Court will not direct plaintiff to produce any

1

2

As used herein, the term privilege often encompasses the attorney-client privilege and work product doctrine.

Plaintiff produced a privilege log in excess of 1,000 pages listing approximately 11,000 documents. The Court
has not read all of plaintiff’s log. While at first blush it would seem plaintiff’s privilege assertions are excessive,
this is due to the fact plaintiff performed a prodigious investigation.
1

additional documents from these categories. 3

As to the privilege

assertions that are overruled, the Court directs plaintiff to
review its privilege log to produce the documents in the same
category as the documents the Court rules are not protected. 4
Background
Since the parties are obviously familiar with the background
of the case, a detailed summary will not be set forth.

The Court

incorporates by reference the discussion in its January 28, 2019
Oral Opinion denying and granting in part defendant’s request for
GPOS data.

See Transcript at 3:25 to 11:10, Doc. No. 370.

Plaintiff is the world’s largest company dedicated to industrial
automation.
authorized

Plaintiff’s products are sold to customers by its
distributors.

Defendant

also

sells

industrial

automation products, including plaintiff’s products, but is not an
authorized distributor. Plaintiff contends defendant’s sales of
its

products

violates

trademark

and

unfair

competition

laws.

Defendant is pursuing an antitrust counterclaim. The stay in the

3

Although it is possible not all documents in these categories are privileged, for the following reasons the Court
declines to review additional documents in camera, nor will the Court address new requests for documents in these
categories: (1) none of plaintiff’s objections to the designated documents in these categories were sustained, (2)
since defendants were prepared to go to trial in the ITC 1074 and 1105 proceedings without the alleged privileged
documents, their importance here is questionable, and (3) defendant has already conducted extensive discovery.
The effort to review defendant’s challenges to all of plaintiff’s 11,000 allegedly privileged documents is
disproportional to the likely minimal importance of the documents.
4

The Court respectfully declines to follow the September 18, 2019 decision of ALJ David P. Shaw which sustained
all of plaintiff’s privilege assertions in connection with ITC No. 1105. See Plaintiff’s LB, Exhibit F. Judge Shaw
did not review defendant’s documents in camera.
2

case was recently lifted after the parties’ International Trade
Commission (“ITC”) proceedings (1074 and 1105) were completed.
For background purposes the Court adds that plaintiff’s attorneyclient privilege and work-product assertions are supported by the
Declarations (“Decl.”) of John Miller, Esquire, Vice President and
Chief I.P. counsel, Kathleen Bentley, Director of Global Programs,
Rodney Michael, Director Global Market Access, and Kathleen S.
Donius, Esquire, Associate General Counsel.
Discussion
Defendant challenges plaintiff’s assertion of the attorneyclient

privilege

discovery
principals

and

plaintiff’s
to

apply,

work-product

doctrine

documents.

As

these

are

to

to

the

straightforward,

protect
general
largely

from
legal
non-

controversial, and have been set forth in numerous Opinions of the
Court.

See, e.g., In re Riddell Concussion Reduction Litigation,

C.A. No. 13-7585 (JBS/JS); 2016 WL 7108455 (D.N.J. Dec. 5, 2016);
Nanticoke Lenni-Lenape Tribal Nation v. Porrino, C.A. No. 15-5645
(RMB/JS), 2017 WL 4155368 (D.N.J. Sept. 19, 2017); TD Bank, N.A.
v. Hill, C.A. No. 12-7188 (RBK/JS), 2014 WL 12617548 (D.N.J. Aug.
20, 2014).

Since the parties are already familiar with these

general principles and in fact cite to the Court’s Opinions, the
Court will proceed to the crux of the parties’ dispute.
Plaintiff argues most of the documents at issue are protected
3

by the work-product doctrine.

A party seeking to invoke this

doctrine must prove two elements.

First, that a document was

prepared for reasonably anticipated litigation.

Second, that the

document was prepared because of the prospect of litigation.
Riddell, at *6.
After reviewing the entire record in detail, including the
documents at issue in camera, the Court finds that plaintiff
properly

asserted

documents. 5

the

work-product

doctrine

for

most

of

its

The record reflects that in 2014 plaintiff commenced

a targeted investigation of defendant and other potential “graymarket resellers” to prepare for litigation.
Bentley

Decl.

¶5;

Michael

Decl.

¶7.

See Miller Decl. ¶5;

Plaintiff

focused

its

investigative efforts on the sale of its products through sources
other than its authorized distributors.
Defendant argues plaintiff’s investigation was done for a
business

purpose

because

plaintiff

investigations going back as far as 2004.
this

does

plaintiff’s

not

detract

from

investigation

the

fact

specifically

conducted

gray-market

However, even if true,
that

starting

targeted

in

defendant

2014
and

others for litigation purposes. Further, given the declarants’
specific averments about targeting defendant, the Court rejects

5

The Court notes that plaintiff properly removed only the privileged pages from its Power Point documents. The
remainder of the presentations were produced.
4

defendant’s assertion that there was only a “remote possibility of
litigation” and that plaintiff did not show an “identifiable
specific claim of impending litigation.” 6
To repeat, the fact that defendant was specifically targeted
for a litigation related investigation is supported by plaintiff’s
Declarations.

Spurred

by

the

fact

that

plaintiff

learned

a

purported systems integrator, LEC, was supplying large amounts of
its products to defendant, Miller attested (¶¶5-7) that “[i]n 2014,
Rockwell

Automation

conducted

a

targeted

investigation

into

Radwell’s operation in the gray market for the specific purpose of
preparing for litigation against Radwell….”
review corroborated Miller’s statement.

The Court’s in camera

The Court does not credit

defendant’s argument that plaintiff’s serialization effort was
independent
litigation.

of

plaintiff’s

Miller

stated,

investigation
“[t]he

for

primary

anticipated

motivator

for

implementing serialization was to identify gray-market reseller
targets for enforcement action, including potential litigation.”
Id. ¶16.
To the extent defendant argues plaintiff waived the workproduct doctrine by sharing its documents with its employees and
distributors, the argument is rejected.

6

The waiver of the work-

Since the trigger for plaintiff’s work-product assertion occurred in mid-2014, plaintiff should review its privilege
log to assess whether earlier documents should be produced.
5

product doctrine is different than the waiver of the attorneyclient privilege.

“The predicate of the waiver inquiry in the

work-product context is not, as it is in the attorney-client
context, whether the material was disclosed, but whether the
material was disclosed to an adversary.”

Cooper Health System v.

Virtua Health, Inc., 259 F.R.D. 208, 215 (D.N.J. 2009)(citation
omitted).
product

The essential question with respect to waiver of workis

whether

adversaries.

Id.

the

material

has

been

kept

away

from

The party alleging that a waiver occurred has

the burden of proof on the waiver issue.

Id.

Plaintiff’s

employees and distributors were not plaintiff’s adversaries and
therefore no waiver occurred.

Further, since plaintiff shared a

common interest with these individuals, this prevents a waiver of
the work-product doctrine.

In O’Boyle v. Borough of Longport, 218

N.J. 168, 186 (2014), the Court noted the protections offered by
the attorney-client privilege and work-product doctrine are not
waived by disclosure to a third party if the “person to whom
disclosure

of

confidential

attorney-client

necessary to advance the representation.”

communications

is

Plaintiff’s employees

and distributors fit into this description.
The Court does not dispute the notion that many of plaintiff’s
documents reflect a joint legal and business purpose.
the

Court

concludes

the

“dominant
6

purpose”

in

However,

preparing

the

protected documents was the concern about objectively foreseeable
and

specifically

identifiable

litigation.

Riddell,

2016

WL

7109455, at *7. Contrary to defendant’s argument, the protected
documents were not prepared as part of plaintiff’s “ordinary course
of business.”

This distinguishes the protected documents from at

least two instances where the Court directed alleged privileged
documents to be produced because they were prepared as part of a
party’s regular business.

See, e.g., Robinson v. Winslow Twp.,

C.A. No. 11-530 (NLH/JS), 2012 WL 113643 (D.N.J. Jan. 13, 2012);
Littlejohn v. Vivant Solar, C.A. No. 16-9446 (NLH/JS), 2018 WL
6705673 (D.N.J. Dec. 20, 2018).
Defendant argues the work-product doctrine does not apply
because “Rockwell admits, its non-lawyer business people at all
times controlled and executed the ‘gray market’ strategy.”
5.

However, defendant ignores the fact Bentley states she worked

closely with Miller in connection with her work.
¶8.

LB at

Bentley Decl.

She also stated she “worked in consultation with the legal

department.”

Id. ¶4.

actions of Bentley.

Further, Miller states he directed the

Miller Decl. ¶3.

In addition, Bentley was

promoted, “in large part to bolster the efforts to monitor the
gray market so that Rockwell Automation could take legal action to
enforce its rights.”

Id. ¶8; see also id. ¶10 (“Ms. Bentley’s and

Mr. Michael’s investigative efforts were guided by near constant
7

direction from Rockwell Automation’s legal department…”).

The

fact that not all of the protected documents were prepared by
counsel is of no moment.

A document may be protected even if it

was prepared by an attorney’s agent.

Riddell, 2016 WL 7108455,

at *7.
Defendant argues, “Rockwell has made no effort to explain how
‘investigative documents’ created and distributed among Rockwell
business employees that almost never mention or involve attorneys
were possibly created for pending or anticipated litigation.”
at

12.

To

the

contrary,

the

averments

in

LB

plaintiff’s

Declarations, cited infra, aptly demonstrate that the work of
Bentley, Michael, etc. was done in anticipation of specifically
identifiable
defendant.

objectively

foreseeable

litigation

involving

Also, that the documents were prepared under the

direction of an attorney for the attorney’s benefit to use in the
anticipated

litigation.

As

the

Court

has

noted,

“documents

exchanged between [a party’s] employees may be work-product even
if they do not involve an attorney….

[D]ocuments are protected

if their primary purpose was to assist counsel to render legal
advice.”

Littlejohn, 2018 WL 6705673, at *2.

This occurred here.

Although the Court finds that most of the documents designated
by plaintiff are protected, five (5) documents are not protected.
These documents are addressed in ¶23 of Miller’s Declaration and
8

involve

plaintiff’s

protected.

claim

that

its

“training”

documents

are

Each of the non-protected documents will be separately

addressed. 7
Document
Manager

No.

Scenarios

36

(RAI-ITC-5867-5886)

Guide”

Internal Purposes Only.” 8

with

a

is

notation

titled,

“Channel

“Confidential

for

The document is described in paragraph

23 of Miller’s Declaration as “a document full of hypothetical
training scenarios created by counsel and designed to mitigate
risks

associated

with

daily

business

operations.”

Plaintiff

argues Document 36 is protected because its legal team prepared
the document to ensure compliance with the law and to mitigate
“legal risk.” See id.
As should be obvious, simply because an attorney prepared
Document 36 does not automatically protect the document.

“[T]he

attorney-client privilege does not apply just because a statement
was made by or to an attorney.”

Riddell, 2016 WL 7108455, at *3.

Further, “[t]he mere involvement of an attorney does not, in
itself, evidence that a document was prepared in anticipation of
litigation.”

Id. at *7.

As to the attorney-client privilege, the

7

The Court rejects plaintiff’s argument that it must accept the allegations in its Declarations that all of the
documents at issue are privileged. Insofar as Miller’s Declaration is concerned, the Court may disregard the parts
of it that are conclusory with few details to support the claim. Gables Condominium and Club Association, Inc. v.
Empire Indemnity Ins. Co., Case No. 18-23659, 2019 WL 1317824, at *6 (S.D. Fla. March 22, 2019) (collecting
cases).
8

At this time the Court takes no issue with plaintiff’s confidentiality designation. In addition to the fact defendant
did not challenge the designation, the Court is merely deciding whether Doc. No. 36 is privileged.
9

“privilege protects only those disclosures – necessary to obtain
informed legal advice – which might not have been made absent the
privilege.”

Westinghouse

Electric

Corp.

v.

Republic

of

the

Philippines, 951 F.2d 1414, 1423-24 (3d Cir. 1991).

The Court

finds Document 36 does not convey any legal advice.

Therefore,

the Court overrules plaintiff’s privilege assertion.

Rather than

relaying legal advice, Document 36 concerns the business training
of plaintiff’s Channel Managers.

Business training materials are

not protected simply because they were prepared by a lawyer.

When

Document 36 was prepared, plaintiff’s attorneys were not acting in
a legal role, but instead a business role.

“An attorney who is

not performing legal services or providing legal advice in some
form does not qualify as a ‘lawyer’ for purposes of the [attorneyclient] privilege.” Payton v. New Jersey Turnpike Authority, 148
N.J. 524, 550-51 (1997); Fredericks v. Atlantic City Board of
Education, C.A. No. 08-3082 (RBK/JS), 2010 WL 3429605, at *5 n.6
(D.N.J. Aug. 28, 2010). 9
Time and time again the Court has written that it is difficult
to apply the privilege analysis to in-house counsel because counsel
sometimes acts in a dual business and legal role.

9

Riddell, 2016

Document 36 contrasts with a situation where an employee asks in-house counsel for legal advice on how to avoid
legal liability regarding a specific factual scenario. Here, in contrast, Rockwell’s attorneys provided training on
how to mitigate risks. All training documents serve this purpose. The Court declines to rule that all training
materials prepared by a lawyer are privileged because the materials give general advice on how to mitigate risks.
10

WL 7108455, at *4.

To decide the privilege issue, the Court must

determine if a document was primarily prepared for the purpose of
rendering legal advice or assistance, rather than business advice.
Id. at *5.

Here, the Court rules Document 36 was primarily

prepared for a business purpose.

As such, the document is not

privileged.

that

Training

materials

are

not

predominantly

prepared for litigation and which do not convey legal advice are
not protected.

U.S. v. Louisiana, C.A. No. 11-470-JWD-RLB, 2015

WL 4619561, at *5 (M.D. La. July 31,2015); Bartram, LLC v. Landmark
American Ins. Co, No. 1:10-cv-28-SPM-GRJ, 2011 WL 284448, at *2-3
(N.D. Fla. Jan. 24, 2011)(finding the requested “presentations and
training programs” were not subject to the work product privilege
because they were created for the purpose of providing advice about
workers compensation and employment practices liability, and not
for any reason or use connected to the pending litigation).
In addition to finding Document 36 is not protected by the
attorney-client privilege, the Court also finds the document is
not protected by the work-product doctrine.

The Court does not

find that the “dominant purpose” of Document 36 was a concern about
specifically identifiable potential litigation.

Riddell, 2016 WL

7108455, at *7 (in order to qualify as work-product, a party must
show there existed an identifiable specific claim of impending
litigation when the document was prepared).
11

Indeed, Miller and

the other declarants do not even attempt to justify a work-product
assertion for plaintiff’s training documents.
Document

38

(Bates

RAI–ITC-5732-5791)

is

a

Power

Point

Presentation addressing “Appointing Distributors,” “Terminating
Distributors,” “Distribution Contract and Policy Overview,” “APR
Support

Policy,”

“Unauthorized

Reseller

Policy,”

Products Policy,” and “Ethics and Compliance.”

“Competitive

Having reviewed

these pages in detail, the Court rules Document 38 is not protected
for the same reasons Document 36 is not protected.
Document 52 (Bates RAI-ITC-61257-61270) is titled “Procedures
for

authorizing

resellers.”

sales

by

authorized

distributors

through

Paragraph 23 of Miller’s Declaration indicates this

is “an incomplete draft of a training manual expressly ‘Prepared
By’ Caitlin Barrah, Rockwell’s General Counsel for the Asia Pacific
region.”

For the same reasons Documents 36 and 38 are not

protected, this document is not protected. 10

Apart from the fact

the topics discussed reflect business rather than legal concerns,
the fact Document 38 is a business rather than a legal document is
reinforced by the following statement on page one (Bates No.
61257):

10

“[t]he

purpose

of

this

procedure

is

to

define

the

This draft, as well as the final version of the document, is relevant and shall be produced. Draft documents are not
off-limits to discovery if they contain relevant and non-privileged information. Cf. State National Ins. Co. v. County
of Camden, C.A. No. 08-5128(NLH/AMD), 2011 WL 13079217, at *4 (D.N.J. April 28, 2011); Zawadsky v.
Bankers Standard Ins. Co., C.A. No. 14-2293 (RBK/AMD), 2015 WL 10853517, at *7 (D.N.J. Dec. 30, 2015).
12

circumstances

in

which

the

company

may

permit

an

authorized

distributor to use a reseller to perform a non-value added sale.”
Document 53 (Bates RAI-ITC-72006-72007) concerns “gray market
training for Rockwell’s employees engaged in the RAAMP Program.”
Miller Decl. ¶23.

For the same reasons documents 36, 38, and 52

are not protected, this document is not protected.

This document

merely describes the “benefits of purchasing from an authorized
distributor.”

This is plainly a business document and not a legal

document.
Document 55 (Bates RAI-ITC-98135-98148) is a Power Point
presentation titled “’Gray Market’ (Unauthorized Reseller) CSM AMP
Training”).

For the same reasons Documents 36, 38, 52 and 53 are

not protected, Document 55 is not protected.
Conclusion
For all the foregoing reasons, the Court finds the fifty (50)
documents defendant designated for in camera review are privileged
except for Numbers 36, 38, 52, 53, and 55.
Accordingly, it is hereby ORDERED this 25th day of April,
2019, as follows:
1.

As to the 50 documents designated for in camera review

by defendant, plaintiff’s privilege designations are SUSTAINED in
part and DENIED in part.
2.

All of plaintiff’s privilege designations are SUSTAINED
13

except for Documents 36, 38, 52, 53 and 55.

Plaintiff’s privilege

assertions for these five documents are OVERRULED.

By May 9,

2019, plaintiff shall produce these documents to defendant as well
as the final version of Document 52.
3.

Plaintiff

shall

review

its

privilege

log

for

all

documents dated prior to mid-2014, to reassess its privilege
assertions.
9, 2019.

All non-privileged documents shall be produced by May

If plaintiff has a good faith question about whether a

document is privileged, plaintiff shall forward the documents to
the Court for its in camera review by May 9, 2019.
4.

Plaintiff shall review its privilege log for “training”

documents that fit into the same category as those described in
paragraph 23 of Miller’s Declaration.

Plaintiff shall produce

these documents to defendant by May 16, 2019.

If plaintiff has a

good faith question about whether a document should be produced,
plaintiff shall forward the document to the Court for its in camera
review by May 16, 2019.
5.

For the reasons stated in note 3, supra, apart from the

documents identified in paragraphs 2-4 herein, plaintiff does not
need to produce any additional documents from its privilege log to
defendant.
5.

Lead trial counsel for plaintiff whose appearance has

been entered in the case shall submit a Declaration pursuant to 28
14

U.S.C. §1746, stating that to the best of his or her belief
plaintiff

has

complied

with

the

terms

of

this

Order.

The

Declaration shall be served by May 16, 2019. 11

s/ Joel Schneider
JOEL SCHNEIDER
United States Magistrate Judge

Dated: April 25, 2019

11

The Court is not keeping a copy of the documents reviewed in camera.
15