Veolia Water Solutions & Technologies Support v. Siemens Industry, Inc.
ORDER regarding 274 , 279 Motion to Compel; 297 Motion to Strike Defendants' Amended Invalidity Contentions; and 320 Motion for Leave to Amend Invalidity Contentions - Plaintiff's motion to strike defendant's amended invalidity contentions (DE 297) is GRANTED IN PART and DENIED IN PART. In particular, plaintiff's motion to strike defendants' invalidity contentions based on parent applications is DENIED, whereas plaintiff's motion to strike defendan ts' invalidity contentions based upon the HSF 2100 and HSF 3100 disc filters, as specified herein, is GRANTED. Defendants' related motion to amend invalidity contentions (DE 320) is DENIED. In addition, Plaintiff's motion to compel pro duction of documents withheld as privileged (DE 274), is GRANTED IN PART and DENIED IN PART, as set forth herein. Defendants are DIRECTED to produce within 14 days of the date of this order those documents, or portions thereof, specified in Appendix A hereto. Further, defendants are DIRECTED to re review privilege designations and make further production on the basis of this order, within 14 days of the date of this order, and the parties are DIRECTED to submit a joint report on any remaining disputes over privilege designations, within 21 days of the date of this order. Signed by District Judge Louise Wood Flanagan on 11/25/2014. (Baker, C.)
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF NORTH CAROLINA
VEOLIA WATER SOLUTIONS &
SIEMENS INDUSTRY, INC., and
EVOQUA WATER TECHNOLOGIES
This matter is before the court on two sets of motions taken under advisement, in part, at
hearing held October 1, 2014: (1) plaintiff’s motion to compel production of documents withheld
as privileged (DE 274); and (2) plaintiff’s motion to strike defendant’s amended invalidity
contentions (DE 297) and defendants’ related motion to amend invalidity contentions (DE 320).
Defendants submitted for in camera review representative documents related to the motion to
compel. The parties filed additional briefing post-hearing related to the motion to strike and motion
to amend invalidity contentions. In this posture, the issues raised are ripe for ruling.
Plaintiff filed suit in June 2011 alleging patent infringement by defendant Siemens Industry,
Inc. (“Siemens”). Plaintiff seeks monetary damages and injunctive relief to prevent continuing
alleged infringement. Plaintiff claims that defendant Siemens markets a wastewater treatment filter
(the Forty-X disc filter) that infringes two patents owned by plaintiff (the ‘805 Patent and the ‘508
Patent). In December 2011, defendant Siemens filed answer and counterclaims, including assertions
that plaintiff’s patents are invalid. Defendant Siemens filed an amended answer and counterclaims
on May 18, 2012. The court dismissed and struck certain affirmative defenses and counterclaims
on August 22, 2012.
The parties filed their initial joint claim construction statement on July 20, 2012 (DE 57),
and an initial round of briefs on claim construction concluding December 31, 2012 (DE 119, 120,
135, 139). Subsequently, by order entered May 16, 2013, the court allowed defendant Siemens to
proceed with certain amended non-infringement and invalidity contentions, but not others, which
led to filing of another joint claim construction statement (DE 196) and round of supplemental
briefing concluding August 22, 2013. (DE 197-200).
The court held claim construction hearing on January 22 and 23, 2014. Evoqua Water
Technologies LLC (“Evoqua”) was added as a second defendant in this matter on January 22, 2014,
based on a business transfer involving defendant Siemens. With no objection, the court granted the
motion to add Evoqua as a defendant, and Evoqua filed an answer on February 12, 2014, which is
in material part the same as the answer of Siemens, and which responds to the allegations of the
complaint as if directed at Evoqua. The court entered its claim construction order May 5, 2014.
In its claim construction order, the court directed the parties to provide the court with a joint
statement regarding scheduling of remaining case activities and deadlines, including whether the
parties seek any departure from the deadlines set forth in the court’s prior case management orders
and in the local patent rules. On June 16, 2014, the court adopted the schedule proposed by the
parties, including a July 9, 2014, deadline for filing final non-infringement and invalidity
contentions; an October 17, 2014, deadline for close of fact discovery (except discovery raised in
expert reports); and a February 16, 2015, deadline close of expert discovery.
Beginning July 27, 2014, the parties filed a series of motions which all came before the court
for hearing on October 1, 2014. The court granted the parties’ joint motion to modify discovery
deadlines, setting December 31, 2014, as the new deadline for fact discovery (except discovery
raised in expert reports), and April 15, 2015, as the new deadline for expert discovery. As noted in
the court’s October 9, 2014, memorializing rulings at hearing, the court took under advisement in
part the instant motions: (1) plaintiff’s motion to compel discovery responses, related to documents
withheld as privileged (DE 274); and (2) plaintiff’s motion to strike defendant’s amended invalidity
contentions (DE 297) and defendants’ related motion to amend invalidity contentions (DE 320). The
court stayed briefing on defendants’ motion for summary judgment of invalidity (DE 281) pending
consideration of the motion to strike and motion to amend.
With respect to the motion to compel production of documents withheld as privileged,
defendants submitted to the court on October 15, 2014, for in camera review, a representative
portion of documents in dispute to assist the court’s analysis of defendants’ privilege claims.
On October 3, 2014, plaintiff moved to reopen argument on its motion to strike. The court
ordered additional briefing. In the meantime, on October 14, 2014, defendants filed a notice
concerning statements made by defendants at the October 1, 2014, hearing concerning discovery of
information regarding the HSF 2100 and HSF 3100 disc filters. On October 20, 2014, defendants
filed a notice withdrawing arguments made in opposition to the motion to strike, and in support of
the motion to amend, that were premised on the portion of Local Rule 303.7 that permits amendment
within thirty days of the discovery of new information relevant to the issues of invalidity.
Defendants maintained the balance of their arguments pertaining to these motions, however, and the
parties completed supplemental briefing November 10, 2014.
Motions Regarding Invalidity Contentions
Plaintiff moves to strike defendants’ amended invalidity contentions served July 9, 2014, on
the basis that they are untimely pursuant to the case schedule established by the Local Patent Rules.
The challenged invalidity contentions fall generally into two categories: (1) that parent applications
of the two patents-in-suit,1 alone or in combination with other prior art previously disclosed, render
the claims of the patents-in-suit invalid; and (2) that prior sales and manuals of the HSF 3100 and
HSF 2100 disc filters,2 in themselves or in combination with other prior art previously disclosed,
render the claims of the patents-in-suit invalid.3 The court will address each of these categories in
Defendants argue that the parent application invalidity contentions are based directly on the
court’s reasoning in its May 5, 2014, claim construction order. Defendants assert that they believed
in good faith that the court’s claim construction order requires the amendments, thus falling within
The parent applications at issue are the Swedish Patent Application No. 0300532-9, filed February 27, 2003, and the
PCT Application No. WO 2004/076026, filed Februarty 24, 2004 (DE 317-12 at 2).
In their amended invalidity contentions defendants refer collectively to the HSF 1300, 1700, and 2100 Hydrotech series
disc filters as the HSF 2100 disc filter.
Two additional categories of amended invalidity contentions originally described by plaintiff in the motion to strike
appear to have been resolved in the briefing. First, plaintiff claimed initially that defendants currently assert several
amended invalidity contentions which the court previously struck by this May 16, 2013, order. Defendants state that
this was a clerical error on their part, and agree to withdraw those contentions. (DE 315 at 6 n. 10). Second, plaintiff
initially claimed that defendants created new obviousness arguments, but defendants state that no new obviousness
combinations were disclosed. (DE 315 at 2 n. 2). To the extent any new obviousness contentions are included in the
HSF 2100 and HSF 3100 invalidity contentions, those are covered by the court’s ruling regarding the HSF 2100 and HSF
3100 invalidity contentions.
an exception for amendments under Local Patent Rule 303.6(b)(2). Plaintiff contends that
amendment on this basis is not warranted because the court’s claim construction ruling was not
Under Rule 303.6, a party’s preliminary invalidity contentions generally shall be deemed to
be that party’s final contentions, except as set forth in the rule. An exception is provided for
amendments to invalidity contentions made within 50 days of the court’s claim construction ruling,
where the amending party “believes in good faith that the Court’s Claim Construction Ruling so
Local Patent Rule 303.6(b)(2). In this case, where the court entered its claim
construction order on May 5, 2014, final invalidity contentions under this rule would have been due
June 16, 2014. By consent of the parties, however, the court extended the deadline for final
invalidity contentions to July 9, 2014, and defendant duly served its final invalidity contentions by
that date. (DE 317-12). Thus, the issue for decision is whether that timely served amendment met
the “good faith” exception set forth in Rule 303.6(b)(2).
This court has not interpreted previously the “good faith” exception. Plaintiff urges the court
to adopt the interpretation of an identical provision adhered to by courts in the Eastern District of
Texas and the Southern District of New York. Those courts have allowed amendment under this
provision only if the court’s claim construction ruling was “unexpected,” thus precluding “adequate
notice and information” of a potential claim construction ruling for a party to make invalidity
contentions earlier. Finisar Corp. v. DirecTV Group, Inc., 424 F.Supp.2d 896, 901 (E.D. Tex.
2006); Convolve, Inc. v. Compaq Computer Corp., No. 00 Civ. 5141, 2006 WL 2527773 *3
(S.D.N.Y. Aug. 31, 2006).
The court declines to adopt the interpretation of the “good faith” exception by the Eastern
District of Texas and the Southern District of New York. When faced with the interpretation of a
procedural rule, like the interpretation of any statute, the court’s analysis must begin with the plain
language of the text of the rule. See, e.g., Dodd v. United States, 545 U.S. 353, 359 (2005)
(“[W]hen the statute’s language is plain, the sole function of the courts—at least where the
disposition required by the text is not absurd—is to enforce it according to its terms.”). Here, the
rule states only that amendment may be allowed where the amending party “believes in good faith
that the Court’s Claim Construction Ruling . . . requires” amendment.
Local Patent Rule
303.6(b)(2). It does not require that the court’s claim construction ruling be “unexpected.”
Conditioning amendment on whether a ruling is “unexpected” interjects a different,
narrower, standard into Local Patent Rule 303.6(b)(2) that is not stated or even suggested in the text
of the Rule. In adopting this narrower standard, the court in Finisar further defined an “unexpected”
ruling as one “so surprising, or differ[ing] so greatly from the proposals made by the parties, that
it justifies admission of new prior art references.” 424 F.Supp.2d at 901. Analysis under this
standard, as the parties’ discussion in their briefs demonstrates, turns on an objective determination
of the extent to which the court’s claim construction ruling departs from the proposals of the parties.
A “good faith” belief, however, commonly is understood in the law to be a subjective
standard. See, e.g., Resorts of Pinehurst, Inc. v. Pinehurst Nat. Corp., 148 F.3d 417, 420 (4th Cir.
1998) (describing “a subjective belief” as one where the declarant “has an honestly held, good faith
belief”); United States v. Hirschfeld, 964 F.2d 318, 322 (4th Cir. 1992) (noting that “subjective good
faith [is] an honest belief” and a “person who acts on a belief or an opinion honestly held is not
punishable under the law merely because that honest belief turns out to be incorrect or wrong”); In
re Bose Corp., 580 F.3d 1240, 1244 (Fed. Cir. 2009) (considering a “declarant’s subjective, honestly
held, good faith belief”).
Thus, under a subjective standard, amendment to invalidity contentions should not be based
on whether this court finds that the claim construction order requires it, nor on whether plaintiff
agrees that the claim construction order requires it, but rather based only on whether defendants
subjectively believed the claim construction order requires it. This inquiry does not depend on the
correctness of defendants’ assessment, nor its reasonableness, but rather on whether defendants’
belief was honest.
While the court in Finisar suggested that policy considerations justify crafting a narrower
standard for amendment, the court’s role is not in this instance to improve upon the language of the
rule but rather to apply it as written. See Dodd, 545 U.S. at 359 (2005). In any event, the “good
faith” standard is one commonly applied in the law, and it affords the court adequate basis for
disallowing amendment where the record supports a finding that the amendment was made not
because of the court’s claim construction order but rather only to derail orderly progress of the case.
In this case, the record reflects that defendants added invalidity contentions based upon the
parent applications, in good faith belief that the court’s claim construction order required these
additions. This conclusion is supported not by the “unexpected” nature of the court’s claim
construction order, but rather by the fact that court’s claim construction order directly addressed the
impact of the parent applications on the claim construction analysis. (See, e.g., Claim Construction
Order, DE 264, at 20, 21, 40). Moreover, defendants stated at the claim construction hearing that
if the court did not limit the claims to reflect the language in the parent applications, then defendants
would come back and seek to invalidate the patents-in-suit based upon such parent applications.
(See Tr. at 288 (DE 252 at 92)). It is difficult to conceive of more direct evidence of a subjective
good faith belief than defendants’ assertions in open court, prior to the court’s claim construction
ruling and prior to making the amendments. The close relationship between the claim construction
order and defendants’ subsequent amendment to invalidity contentions supports, rather than detracts
from, a finding of good faith. It shows that defendants’ amendments are, in fact, related to the claim
construction ruling and not based on some other reason, completely divorced from the claim
In sum, plaintiff’s motion to strike invalidity contentions is denied in that part directed to
amendments based upon the parent applications. In so ruling, the court expresses no opinion on
whether the court’s claim construction requires judgment in favor of defendants on its amended
invalidity contentions based on the parent applications. It suffices that the amendments to invalidity
contentions are closely related to determinations made in the court’s claim construction order, thus
supporting a finding of a good faith belief on the part of the defendants that such amendments are
required by the order.
HSF 2100 and HSF 3100 disc filters
Defendants initially sought to amend invalidity contentions to add references to the HSF
2100 and HSF 3100 disc filters, on the basis that these followed discovery of new information
obtained less than 30 days prior to service of the amended contentions, pursuant to Local Patent Rule
303.7. Defendants now have withdrawn that argument, (DE 350) recognizing that “during the
pendency of this litigation, they had access to information about the structure of the HSF 2100 and
HSF 3100 disk filter systems.” (DE 347 ¶8). Defendants, however, continue to assert that leave to
amend should be granted for “good cause” under Local Rule 303.7. Plaintiff maintains, by contrast,
that the court should strike these amendments for lack of good cause.
Local Patent Rule 303.7 allows amendment to invalidity contentions only as provided in
Rule 303.6 or within 30 days of the discovery of new information relevant to invalidity. “Otherwise,
amendment or modification shall be made only by order of the court, which shall be entered only
upon a showing of good cause.” This court previously has interpreted the “good cause” provision
of Local Patent Rule 303.7 to require a showing of “diligence” and lack of prejudice to the nonamending party. (Order, May 16, 2013, at 5 (citing O2 Micro Int’l Ltd. v. Monolithic Power Sys.,
Inc., 467 F.3d 1355, 1363 (Fed. Cir. 2006)).
Defendants urge the court to consider additional factors in determining “good cause” for
amendment under Local Patent Rule 303.7, such as the importance of the information proposed in
the amendment, whether the movant made an honest mistake, and whether there is ample time left
in discovery. Defendants argue, for example, that they made an honest mistake in failing to
appreciate the evidence in their own document production. They also argue that the prior art that
is subject of the amended invalidity contentions “clearly has the potential to weigh heavily on the
Court’s invalidity analysis.” (DE 358 at 7).
The court need not decide in this instance whether the additional factors proposed by
defendants properly may be considered in determining “good cause” for an amendment. Even
considering the additional factors proposed by defendants, the court determines that defendants have
not demonstrated “good cause” for the amendments based on the HSF 2100 and HSF 3100 disc
filters. The court does not find credible defendants’ assertion that this prior art could be so clearly
material, but at the same time overlooked by honest mistake in its own production. Documents
offered at hearing, including (1) an email dated March 15, 2007, titled “Ace poker??!!” (DE 353);
(2) 2007 documents described in defendants’ October 14, 2014, notice (DE 347); (3) 2007
documents attached to plaintiff’s reply brief (DE 368); and (4) further historical documents subject
to the court’s privilege review; all demonstrate that defendants knew of sufficient information to
assert invalidity contentions based upon the HSF 2100 and HSF 3100 disc filters at the time of their
initial invalidity contentions.
In sum, defendants have not demonstrated good cause for amendments to invalidity
contentions based on the HSF 2100 and HSF 3100 disc filters. Defendant’s motion for leave to
amend invalidity contentions therefore must be denied. Plaintiff’s motion to strike these amendments
will be granted in this part.4
Motion to Compel
Plaintiff moves to compel production of certain documents withheld on the basis of attorney-
client privilege. The disputed documents, as described in privilege logs produced by defendants,
are comprised mainly of email communications, handwritten notes, and reports, created by nonattorneys, which defendants have withheld on the basis that they reflect the advice of counsel, or that
they were prepared for the purpose of facilitating legal advice. As noted in the court’s October 9,
2014, order memorializing rulings at hearing, the disputed documents are highlighted in a privilege
log appended to the court’s October 9, 2014, order.
In so ruling, the court notes plaintiff’s suggestion in passing that the court should consider whether defendants have
engaged in sanctionable conduct. Upon consideration of all the circumstances, including review of the parties’ briefs,
argument at hearing, as well as documents of record including those reviewed in camera for purposes of privilege review,
the court finds that defendants have not engaged in conduct warranting sanctions beyond striking the asserted invalidity
contentions based upon the HSF 2100 and HSF 3100 disc filters. The court’s determination is based on consideration
of a number of factors, including in this case defendant’s October 14, 2014, notice correcting statements made at hearing,
as well as defendant’s October 20, 2014, notice withdrawing argument.
At hearing, the court ordered defendants to produce to the court for in camera review
representative samples of disputed documents, divided generally into two categories: (1) documents
marked by plaintiff as “no legal individuals to/from” and (2) “Peter Petit Documents,” referring to
an individual closely involved with the creation of defendants’ accused product. The court has
reviewed the documents provided in camera in light of the applicable law.
Based on the court’s review, as set forth below, the court finds that defendants correctly have
withheld as privileged a majority of the documents provided for in camera review, and that the
descriptions provided in the privilege logs are accurate. The court notes, however, several
exceptions, and the court will direct production of those documents not privileged.
“The applicability of attorney-client privilege in a case such as this, in which subject matter
jurisdiction extends from the underlying presence of a federal patent law question, is determined by
federal common law.” Wi-LAN, Inc. v. Kilpatrick Townsend & Stockton LLP, 684 F.3d 1364, 1368
(Fed. Cir. 2012) (citing Fed. R. Evid. 501). In addition, “[w]here the issues concerned are not
unique to patent law, th[e] court applies the law of the regional circuit” of the district court. Id.
Accordingly, the court will apply Fourth Circuit case law to resolve the disputed privilege issues in
this case. “A party asserting privilege has the burden of demonstrating its applicability.” N.L.R.B.
v. Interbake Foods, LLC, 637 F.3d 492, 501 (4th Cir. 2011).
“The attorney-client privilege is the oldest of the privileges for confidential communications
known to the common law.” Upjohn Co. v. United States, 449 U.S. 383, 389 (1981). “Its purpose
is to encourage full and frank communication between attorneys and their clients and thereby
promote broader public interests in the observance of law and administration of justice.” Id. “[T]he
privilege exists to protect 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.” Id.
The traditional formulation of attorney-client privilege includes many elements, some of
which are not at issue in the present dispute. In particular, to establish attorney-client privilege, a
party must show that:
(1) the asserted holder of the privilege is or sought to become a client; (2) the person
to whom the communication was made (a) is a member of the bar of a court, or is his
subordinate and (b) in connection with this communication is acting as a lawyer; (3)
the communication relates to a fact of which the attorney was informed (a) by his
client (b) without the presence of strangers (c) for the purpose of securing primarily
either (i) an opinion on law or (ii) legal services or (iii) assistance in some legal
proceeding, and not (d) for the purpose of committing a crime or tort; and (4) the
privilege has been (a) claimed and (b) not waived by the client.
Interbake Foods, LLC, 637 F.3d at 501-02 (quotations omitted). In this case, the elements most at
issue are whether “the communication relates to a fact of which the attorney was informed . . . for
the purpose of securing primarily either (i) an opinion on law or (ii) legal services.” Id.
“[U]nder normal circumstances, an attorney’s advice provided to a client, and the
communications between attorney and client are protected by the attorney-client privilege.” In re
Grand Jury Proceedings, 102 F.3d 748, 750 (4th Cir. 1996). Protection “may . . . be extended to
protect communications by a lawyer to his client, agents or superiors, or to other lawyers in the case
of joint representation if those communications reveal confidential client communications.” United
States v. (Under Seal), 748 F.2d 871, 874 (4th Cir.1984). Generally, communications by a nonattorney are not privileged, such as where the non-attorney “was not hired by any attorney nor
worked for any attorney.”
In re Grand Jury Proceedings, 102 F.3d at 752.
communication by a non-attorney may in some instances reflect legal advice of an attorney.
This court has observed, for example, that “[a] document need not be authored or addressed
to an attorney in order to be properly withheld on attorney-client privilege grounds.” Santrade, Ltd.
v. Gen. Elec. Co., 150 F.R.D. 539, 545 (E.D.N.C. 1993). “[D]ocuments subject to the privilege may
be transmitted between non-attorneys (especially individuals involved in corporate decision-making)
so that the corporation may be properly informed of legal advice and act appropriately.” Id. In
addition, “documents subject to the privilege may be transmitted between non-attorneys to relay
information requested by attorneys.” Id.; see also Upjohn, 466 U.S. at 390 (stating that the privilege
extends to “giving of information to the lawyer to enable him to give sound and informed advice”).
Rohlik v. I-Flow Corp., 7:10-CV-173-FL, 2012 WL 1596732 *3 (E.D.N.C. May 7, 2012) (“The
communications retain their privileged status if the information is relayed from a non-lawyer
employee or officer to other employees or officers of the corporation on a need to know basis.”)
(quotation omitted); ePlus Inc. v. Lawson Software, Inc., 3:09CV620, 2012 WL 6562735 *7 (E.D.
Va. Dec. 14, 2012) (holding following in camera review that certain “communications between
non-attorneys reflecting legal advice” were privileged where attorneys were carbon copied on the
In the Fourth Circuit, “the attorney-client privilege does not apply to communications in
connection with a proposed public disclosure: if a client communicates information to his attorney
with the understanding that the information will be revealed to others, that information as well as
the details underlying the data which was to be published will not enjoy the privilege.” In re Grand
Jury Proceedings, Thursday Special Grand Jury Sept. Term, 1991, 33 F.3d 342, 354-55 (4th Cir.
1994) (internal quotations omitted). In this vein, this court has recognized that the following
classifications of documents generally are not protected by the attorney-client privilege:
Papers submitted to the Patent Office;
Technical information communicated to the attorney but not calling for a
legal opinion or interpretation and meant primarily for aid in completing
Business advice such as that related to product marketing; and
Patent disclosures, draft patent applications, technical non-legal material
related to the final patent, or studies of the prior art.
Burroughs Wellcome Co. v. Barr Labs., Inc., 143 F.R.D. 611, 615 (E.D.N.C. 1992); see Santrade,
150 F.R.D. at 544 (“Privilege does not extend to drafts of patent applications. . . . [or] [p]reliminary
drafts of published data, including attorney notes necessary to the preparation of the documents.”).
Nevertheless,“[t]he fact that much of the technical information in one form or another finds
its way into the patent application, to be made public when the patent issues, should not preclude
the assertion of the privilege over the communication in which the information was disclosed to the
attorney.” Burroughs Wellcome, 143 F.R.D. at 616. “[T]he court has extended the attorney-client
privilege to prior art searches and discussions and documents related to the prior art if they contain
or reflect communications made in connection with requests for legal advice or a legal opinion as
to patentability.” Id.
Generally, communications between a client and a non-attorney patent agent are privileged,
where a patent proceeding is pending before the Patent Office, and “where that patent agent is acting
at the direction or control of an attorney as the agent of the attorney.” Glaxo, Inc. v. Novopharm
Ltd., 148 F.R.D. 535, 538 (E.D.N.C. 1993) (internal quotations omitted); see Burroughs Wellcome,
143 F.R.D. at 617 (stating that where a “patent agent is engaged in the lawyering process, the
communication is privileged to the same extent as any communication between co-counsel”).
In light of these principles of law, the court makes the following determinations with respect
to the disputed documents. As noted above, the court finds that a large portion of the documents
submitted for in camera review are privileged. In particular, most of the withheld documents or
redacted portions thereof are privileged because they (1) contain communications describing the
nature or extent of legal advice provided or sought regarding particular matters; (2) contain
communications seeking legal advice from an attorney, or a patent agent engaged in provision of
legal advice for purposes of determining patentability; or (3) make statements that are identified as
legal advice from an attorney, or subject matter of ongoing work of an attorney, or information that
needs to be transmitted to an attorney for provision of legal advice. By contrast, only the following
documents or categories of documents, marked privilege in defendants’ privilege log, are not
Peter Petit Documents
For the reasons set forth below, the following documents noted in the privilege log captioned
“Peter Petit Documents” are not privileged:
SiemensPriv 0796-0029 through 0796-0052
Defendants describe several of these communications in this privilege log as containing
discussions of prior art or a competitor’s patent for purposes of obtaining legal advice. In particular,
SiemensPriv 0048.001, 0048.002, 0048.004, 0286.003, 0374.002, and 0559.002, comprise emails
between non-attorneys discussing the subject of prior art. These communications are not privileged
because no attorneys or patent agents are copied, and nothing in the communications themselves
specifies what legal advice or legal analysis was provided by an attorney or patent agent, nor what
information if any was transmitted for purposes of legal advice.
While references in these emails to “we” conceivably could suggest involvement of attorneys
in analysis of the same subject matter, where attorneys or patent agents are not participating or
referenced in the communication, and the identity of “we” is not specified in the communication,
privilege protection over that particular communication is not warranted. Although the nature of
the discussion may implicate legal issues, such discussion by non-attorneys of issues having
potential legal implications does not in itself transform the communication to attorney client
privileged communication. Further, the fact that a paralegal is copied on the communication in
SiemensPriv 0286.003, without some specific reference or direction to the paralegal, is not sufficient
in itself to establish privilege, given the absence of other indicia of attorney-client privileged
Similarly, the redacted portion of SiemensPriv 0759 is not privileged. While the description
states that the document was provided to “Siemens IP group primarily for the purposes of seeking
legal advice,” the document itself does not state this or suggest that legal advice is being sought, as
opposed to providing the document for other corporate or intellectual property management
purposes. Where the document is authored by Peter Petit, a non-attorney, the prior art study analysis
therein is not privileged, without more specific reference to legal consultation or provision of legal
advice regarding the same. (See SiemensPriv 0759-0002). For the same reason, other statements
in the document regarding steps to be taken, such as “[w]e should file a provisional patent
immediately,” (SiemensPriv 0759-0001), absent reference to provision or request for legal advice,
or other legal dispute, do not constitute attorney-client privileged communications.5 See In re Grand
Jury Proceedings, Thursday Special Grand Jury, 33 F.3d at 354-55; Burroughs Wellcome, 143
F.R.D. at 616; Santrade, 150 F.R.D. at 544.
In a similar vein, certain redacted portions of SiemensPriv 0796, which is a multiple-page
file that includes various parts of a “Capital Appropriation Request,” are not privileged, whereas
other parts of the same documents are marked correctly as privileged. Portions discussing the nature
of legal analysis and consultation are marked correctly as privileged. (See, e.g., SiemensPriv 07960020). By contrast, portions that, in themselves, do not reference legal consultation or provision of
legal advice, nor request for legal advice, are not privileged. (See SiemensPriv 0796-0029 through
0796-0052). Such non-privileged documents include prior art analysis prepared by non-attorneys,
as well as an invention disclosure noted as intended for public release. While description of the
nature and extent of legal analysis and consultation regarding information in the document is
privileged, the underlying technical information prepared by non-attorney engineers is not in itself
privileged. See In re Grand Jury Proceedings, Thursday Special Grand Jury, 33 F.3d at 354-55;
Burroughs Wellcome, 143 F.R.D. at 616; Santrade, 150 F.R.D. at 544.
The court notes that the date of the document specified in the privilege log is April 23, 2007, whereas the document
was executed by Peter Petit on April 23, 2006. In addition, the court notes one entry in the privilege log designated by
defendants for in camera review, SiemensPriv 0770.003 (“Peter Petit Documents”), is not in fact in the materials
provided for in camera review. Based on the description and date, however, it appears to be the same or similar
document as SiemensPriv 0759, warranting the same treatment as non-privileged.
Finally, SiemensPriv 0751 is not privileged, as the description in the privilege log
encompasses the entirety of the content of the document, thus waiving any privilege that may have
No Legal Individuals To/From Documents
For the reasons set forth below, the following documents noted in the privilege log captioned
“No Legal Individuals To/From” are not privileged:
SiemensPriv 0520-0003 (redacted portion on this page only)
SiemensPriv 0604.001 (except for the sentence following the words “Plan B”)
A number of these documents, or redactions portions thereof, are described in the privilege
log as emails containing discussions of the “Hydrotech patent” for purposes of conveying
information to facilitate legal advice. These comprise SiemensPriv 0025.004, 0025.005, 0520-0003,
0520.002, 0520.003, 0521.001, and 0522. With respect to these documents, no attorneys or patent
agents are copied on the emails, and the emails do not state what legal advice or legal analysis was
provided by an attorney or patent agent, nor the nature or extent of any information conveyed for
purposes of obtaining legal advice. While the emails suggest potential questions that could be posed
The privilege log entry for SiemensPriv 0025.004 references a redacted portion of the email. The corresponding
document provided for in camera review, however, does not contain any redaction markings. The court presumes that
the entire email was intended to be marked as privileged.
to legal counsel, or information that potentially could be provided, the emails themselves do not
reveal confidential communications protected by the attorney-client privilege.
Similarly, the court finds not privileged the bulk of SiemensPriv 0604.001, which is
described in the privilege log as an email “primarily for the purpose of communicating legal advice
in anticipation of litigation.” Although the privilege log refers to a “redacted portion” of the email,
there are no redactions delineated in the document provided for in camera review. The court finds
that only one sentence in the email is privileged and properly subject to redaction as privileged
communication. In particular, defendants should redact as privileged the sentence following the
words “Plan B” in the text of the email. All other text in the email is not privileged and should be
produced without redaction.
An email at SiemensPriv 0647.003 is not privileged for the same reason that the identical
email at SiemensPriv 0286.003, in the “Peter Petit Documents” privilege log, is not privileged.
In addition, handwritten notes at SiemensPriv 0755, described as “reflecting analysis of
Hydrotech infringement allegations drafted in anticipated of litigation,” are not privileged as no
attorneys or patent agents are referenced, and the document does not state what legal advice or legal
analysis was provided by an attorney or patent agent, nor the nature or extent of any information
conveyed for purposes of obtaining legal advice.
Finally, the prior art study at SiemensPriv 0758 is not privileged as it does not contain
references to legal advice or information provided for purposes of legal advice, regarding the prior
art study. See Burroughs Wellcome, 143 F.R.D. at 616.
The remaining documents in the “No Legal Individuals To/From” are correctly marked
privileged. The court notes, however, a few discrepancies between the privilege log and the
documents submitted in camera. In particular, the memorandum at SiemensPriv 0765 is privileged
only in that portion marked for redaction, even though the privilege log does not reference
redactions. The privilege log contains an entry for SiemensPriv 0790.002, but the documents
submitted in camera do not include this document. Instead, the documents in camera include
SiemensPriv 0790.001-006 (as the first page in a three-page email chain), Siemens Priv 0790.001006-0002 (as the second page), and SiemensPriv 079.001-006-0003 (as the third page). These
documents, in any event, are correctly marked privileged.
In sum, plaintiff’s motion to compel production of privileged documents will be granted in
part and denied in part. Of the documents submitted for in camera review, defendants need only
mark as not privileged and produce documents expressly referenced herein. All other documents
marked privileged in the “Peter Petit” and “No Legal Individuals To/From” privilege log should
To facilitate resolution of disputes regarding remaining documents subject to plaintiff’s
motion to compel, which were not submitted for in camera review, the court DIRECTS defendants
to re-review such disputed documents and to designate as not privileged any documents meeting the
description or criteria set forth herein for non-privileged documents. The parties shall then submit
a joint status report to the court on any additional documents remaining in dispute in light of the
Based on the foregoing, plaintiff’s motion to strike defendant’s amended invalidity
contentions (DE 297) is GRANTED IN PART and DENIED IN PART. In particular, plaintiff’s
For convenience of the parties, the court lists, in Appendix A to this order, the documents determined herein to be not
motion to strike defendants’ invalidity contentions based on parent applications is DENIED, whereas
plaintiff’s motion to strike defendants’ invalidity contentions based upon the HSF 2100 and HSF
3100 disc filters, as specified herein, is GRANTED. Defendants’ related motion to amend invalidity
contentions (DE 320) is DENIED.
In addition, Plaintiff’s motion to compel production of documents withheld as privileged (DE
274), is GRANTED IN PART and DENIED IN PART, as set forth herein. Defendants are
DIRECTED to produce within 14 days of the date of this order those documents, or portions thereof,
specified in Appendix A hereto. Further, defendants are DIRECTED to re-review privilege
designations and make further production on the basis of this order, within 14 days of the date of
this order, and the parties are DIRECTED to submit a joint report on any remaining disputes over
privilege designations, within 21 days of the date of this order.
SO ORDERED, this the 25th day of November, 2014.
LOUISE W. FLANAGAN
United States District Judge
Documents Not Privileged
SiemensPriv 0796-0029 through 0796-0052
SiemensPriv 0520-0003 (redacted portion on this page only)
SiemensPriv 0604.001 (except for the sentence following the words “Plan B”)
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