LendingTree, LLC v. Zillow, Inc. et al

Filing 438

ORDER granting 426 Motion to Compel. Plaintiff LendingTree, LLC shall produce the requested documents on or before December 13, 2013. Signed by Magistrate Judge David Keesler on 12/5/2013. (tmg)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF NORTH CAROLINA
CHARLOTTE DIVISION
CIVIL ACTION NO. 3:10-CV-439-FDW-DCK
LENDINGTREE, LLC,
Plaintiff,
v.
ZILLOW, INC., NEXTAG, INC., and
ADCHEMY, INC.,
Defendants.

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ORDER

THIS MATTER IS BEFORE THE COURT on “Defendant NexTag, Inc.’s Motion To
Compel Production Of Documents Subject To Waiver Of Privilege” (Document No. 426). This
motion has been referred to the undersigned Magistrate Judge pursuant to 28 U.S.C. § 636(b),
and is ripe for disposition. Having carefully considered the motion, the record, and applicable
authority, as well as the arguments of counsel during a telephone conference on November 15,
2013, the undersigned will grant Defendant’s “…Motion To Compel.”
I. BACKGROUND
On November 14, 2013, counsel for Defendant NexTag, Inc. (“Defendant” or “NexTag”)
contacted the undersigned’s staff requesting assistance with a discovery dispute. Defendant’s
counsel asserted in an email that a discovery issue had arisen regarding a privilege log produced
by Plaintiff LendingTree, LLC (“Plaintiff” or “LendingTree”) following a search of backup tapes
for the term “NexTag.” Defendant requested that it be allowed leave to immediately file a
motion to compel.
The undersigned held a telephone conference on November 15, 2013, to hear from both
parties regarding the dispute and to determine the most efficient means of resolution. In the end,

the undersigned determined that a written motion was appropriate and set an expedited briefing
schedule.
NexTag’s pending “…Motion To Compel…” (Document No. 426) and “…Memorandum
In Support Of Its Motion To Compel …” (Document No. 430) were filed on November 18,
2013. NexTag’s motion specifically requests that
the Court compel LendingTree to produce documents showing: (i)
when did LendingTree’s inside counsel advise LendingTree
management or give LendingTree management reason to believe
that NexTag’s allegedly infringing product existed; (ii) whether
LendingTree employees supplied any information to
LendingTree’s inside counsel relevant to that determination; (iii)
the specifics of that information; and (iv) when it was supplied.
(Document No. 426, p.1). “LendingTree, LLC’s Memorandum In Opposition To NexTag Inc.’s
Motion To Compel Production Of Documents” (Document No. 436) was filed on November 22,
2013. As such, the pending motion is now ripe for disposition.
II. STANDARD OF REVIEW
Rule 26 of the Federal Rules of Civil Procedure provides that:
Parties may obtain discovery regarding any nonprivileged matter
that is relevant to any party’s claim or defense including the
existence, description, nature, custody, condition, and location of
any documents or other tangible things and the identity and
location of persons who know of any discoverable matter. For
good cause, the court may order discovery of any matter relevant
to the subject matter involved in the action. Relevant information
need not be admissible at the trial if the discovery appears
reasonably calculated to lead to the discovery of admissible
evidence.
Fed.R.Civ.P. 26(b)(1). The rules of discovery are to be accorded broad and liberal construction.
See Herbert v. Lando, 441 U.S. 153, 177 (1979); and Hickman v. Taylor, 329 U.S. 495, 507
(1947). However, a court may “issue an order to protect a party or person from annoyance,
embarrassment, oppression or undue burden or expense.” Fed.R.Civ.P. 26(c)(1).
2

Whether to grant or deny a motion to compel is generally left within a district court’s
broad discretion. See Lone Star Steakhouse & Saloon, Inc. v. Alpha of Va., Inc., 43 F.3d 922,
929 (4th Cir. 1995) (denial of motions to compel reviewed on appeal for abuse of discretion);
Erdmann v. Preferred Research Inc., 852 F.2d 788, 792 (4th Cir. 1988) (noting District Court’s
substantial discretion in resolving motions to compel); and LaRouche v. National Broadcasting
Co., 780 F.2d 1134, 1139 (4th Cir. 1986) (same).
If the motion is granted – or if the disclosure or requested
discovery is provided after the motion was filed – the court must,
after giving an opportunity to be heard, require the party or
deponent whose conduct necessitated the motion, the party or
attorney advising that conduct, or both to pay the movant’s
reasonable expenses incurred in making the motion, including
attorney’s fees.
Fed.R.Civ.P. 37(a)(5)(A). Likewise, if a motion is denied, the Court may award reasonable
expenses, including attorney’s fees, to the party opposing the motion. Fed.R.Civ.P. 37(a)(5)(B).
III. DISCUSSION
Defendant NexTag contends that “[l]aches is a complete bar to LendingTree’s suit
against NexTag.” (Document No. 430, p.11). By the instant motion, NexTag seeks to compel
the production of documents that it believes are relevant to its affirmative defense of laches.
(Document No. 430). In particular, NexTag seeks documents that might show that LendingTree
knew or should have known of NexTag’s allegedly infringing activity on or about September 8,
2004 – the “Laches Critical Date.” (Document No. 430, p.4). LendingTree asserts that it “first
became aware of the infringing NexTag system on or around October 6, 2004.” (Document
No. 436, p.5) (emphasis added). NexTag has previously explained the critical timing as follows:
LendingTree sued NexTag in this Court on September 8, 2010. A
presumption of laches arises where the defendant knew or should
have known of the infringement more than six years prior to the
filing of the suit. Consequently, if LendingTree knew that NexTag
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was in the mortgage lead generation business prior to September 8,
2004 (the “Critical Date”), a presumption of laches arises.
(Document No. 327, p.5).
To date, LendingTree has withheld certain documents which it contends are
communications and/or work product subject to attorney-client privilege. See (Document No.
430-13, pp.2-91). NexTag contends that LendingTree “has waived privilege to any and all
communications regarding when and how LendingTree and its General Counsel first became
aware of NexTag’s accused mortgage lead generation system,” by affirmatively relying on the
advice of its counsel to rebut NexTag’s laches defense. (Document No. 430, p.4). According to
NexTag, the “communications are critical to the case-dispositive issue of laches.” Id. NexTag
concludes that LendingTree is improperly wielding the attorney-client privilege as both a sword
and a shield. Id.
NexTag notes that its Interrogatory Nos. 7 and 9 targeted discovery regarding
LendingTree’s alleged delay in bringing suit. (Document No. 430, p.6). Interrogatory No. 7
reads as follows:
Describe the circumstances in which you first became aware of any
NexTag product, service, or instrumentality that LendingTree
contends infringes any patent asserted in this action, including the
date(s) on which you first became aware of that NexTag product,
service, or instrumentality, and identify all persons employed or
retained by you who have information concerning your first
awareness of that NexTag product, service, or instrumentality.
(Document No. 430-8, pp.3-4).
LendingTree then provided the following pertinent information in its First Supplemental
Response To Interrogatory No. 7:
LendingTree reiterates its objection to this Interrogatory on the
grounds that it calls for information protected from discovery by
the attorney–client privilege and/or attorney work product doctrine
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and/or any other applicable privilege or immunity. The existence
of NexTag’s infringing system was brought to the attention of
Douglas Lebda by counsel for LendingTree on or around
October 6, 2004. The communications with counsel related to
when NexTag first became aware of the infringing NexTag
system are protected by the attorney–client privilege and/or
attorney work product doctrine and/or any other applicable
privilege or immunity.
(Document No. 430-8, pp.4-5) (emphasis added).
Interrogatory No. 9 requested the following:
Describe in detail all facts that support, refute or otherwise relate to your
contention that LendingTree is not barred or limited from any recovery
under the doctrines of laches, license, estoppel, waiver, and/or unclean
hands. In answering this interrogatory, include the source and current
location of any information used to prepare your response, and the persons
most knowledgeable about your response to this interrogatory.
(Document No. 430-8, p.8).
LendingTree responded in most pertinent part as follows:
Laches requires, in part, that NexTag prove LendingTree delayed
filing suit for an unreasonable and inexcusable length of time from
the time LendingTree knew NexTag infringed its patent, and that
the delay operated to the material prejudice or injury of NexTag.
Gasser Chair Co., Inc. v. Infanti Chair Mfg. Corp., 60 F.3d 770,
773 (Fed. Cir. 1995). Laches cannot bar recovery for post-filing
infringement of a patent. NexTag has not presented sufficient
evidence to show that LendingTree delayed filing suit for an
unreasonable and inexcusable length of time after LendingTree
was aware of NexTag’s infringement. Ecolab, Inc. v. Envirochem,
Inc., 264 F.3d 1358, 1371 (Fed. Cir. 2001) (noting a six-year
presumption requirement for laches). Based on the six-year
presumption for laches, the critical date for LendingTree having
knowledge that NexTag’s product infringed its patents is
September 2004. LendingTree was not aware of NexTag’s
infringing product before this time. See LendingTree’s Response
to Interrogatory No. 7. NexTag has also failed to show that any
delay on LendingTree’s part materially prejudiced NexTag, and
NexTag’s conclusory, self-serving statements unsupported by
evidence in its interrogatory responses do not show prejudice.
Even if NexTag could show a delay of an unreasonable and
inexcusable length of time and material prejudice, which it cannot,
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the equities of the parties would not favor application of the laches
defense. NexTag should withdraw this frivolous defense, which
it has failed to support in discovery.
(Document No. 430-8, p.10) (emphasis added).
NexTag now argues that LendingTree has taken “the untenable position that it was ‘not
aware’ of NexTag’s accused system until LendingTree’s in-house counsel informed its CEO
about NexTag 28 days after the Laches Critical Date. At the same time, LendingTree asserts
privilege to withhold the documents showing how and when counsel learned of the NexTag
system.” (Document No. 430, p.7). NexTag further argues that the information it seeks is
now squarely in play, namely, any communications related to the
subject matter of LendingTree’s investigation into NexTag’s
alleged infringement. LendingTree cannot give the “good,” i.e.,
the date its CEO received the advice from its General Counsel, and
withhold the “bad,” i.e., other privileged communications tending
to show that LendingTree knew or should have known about
NexTag’s alleged infringement around and prior to the Laches
Critical Date.
Id.
NexTag also notes that when it deposed LendingTree’s founder and CEO, Doug Lebda
(“Lebda”), it specifically referred to Interrogatory No. 7, and questioned Lebda about “the
circumstances of when and how LendingTree first became aware of NexTag’s accused system.”
(Document No. 430, pp.7-8). According to NexTag, counsel for LendingTree instructed Lebda
not to answer on the basis of attorney-client privilege, and Lebda followed those instructions.
(Document No. 430, p.8).
NexTag now claims that LendingTree is avoiding the presumption of laches by relying
on its communication with counsel on or around October 6, 2004, and asserting privilege over
those same communication(s).

(Document No. 430, pp.11-13).

NexTag contends that

LendingTree has implicitly waived “privilege by putting protected information ‘at issue’ in
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litigation.” (Document No. 430, p.10) (citing Small v. Hunt, 152 F.R.D. 509, 511-12 (E.D.N.C.
1994)).
A number of courts have addressed the implied waiver of
the attorney-client privilege under the “at issue” doctrine and one
district court has developed a test for determining if the privilege
has been waived. A party is treated as having waived its privileges
if: (1) assertion of the privilege was a result of some affirmative
act, such as filing suit, by the asserting party; (2) through this
affirmative act, the asserting party put the protected information at
issue by making it relevant to the case; and (3) application of the
privilege would have denied the opposing party access to
information vital to his defense. Hearn v. Rhay, 68 F.R.D. 574,
581 (E.D.Wash. 1975). See also Remington Arms Company v.
Liberty Mutual Insurance Company, 142 F.R.D. 408 (D.Del. 1992)
(and cases cited therein).
The “at issue” doctrine is based on notions of fairness and
truth-seeking. Selective use of privileged information by one side
may “garble” the truth. United States v. St. Pierre, 132 F.2d 837,
840 (2nd Cir. 1942), cert. dismissed as moot, 319 U.S. 41, 63 S.Ct.
910, 87 L.Ed. 1199 (1943) (Learned Hand, referring to the Fifth
Amendment privilege). In addition, “[w]here a party injects part of
a communication as evidence, fairness demands that the opposing
party be allowed to examine the whole picture.” Remington Arms,
142 F.R.D. at 413. Dean Wigmore has stated that “waiver is to be
predicated ... when the conduct ... places the claimant in such a
position, with reference to the evidence, that it would be unfair and
inconsistent to permit the retention of the privilege.” 8 J.
Wigmore, Evidence § 2388, at 855 (McNaughton rev. 1961).
Small, 152 F.R.D. at 512.
NexTag specifically concludes that “[b]ecause LendingTree relied on communications
with counsel to rebut NexTag’s laches defense, LendingTree has waived privilege for any
documents involving (i) LendingTree’s knowledge or awareness of NexTag’s accused system,
and (ii) LendingTree’s reasons for its delay in bringing suit.” (Document No. 430, p.14).
NexTag contends that its pending motion to compel only seeks “a narrow subset of the 1,724
documents withheld as privileged.” Id.

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In opposition, LendingTree argues that its interrogatory responses “do not reveal any
attorney advice, let alone place any attorney advice ‘in issue,’ as the case law requires to find a
waiver.” (Document No. 436, p.5). LendingTree contends that “[t]o waive the attorney-client
privilege, a party must, at a minimum, divulge the contents of a privileged communication.” Id.
LendingTree asserts that its interrogatory responses are no more revealing than its privilege log.
Id. LendingTree also notes that NexTag did not claim at Lebda’s deposition, or after receipt of
the interrogatory responses, that attorney-client privilege had been waived. (Document No. 436,
p.7).
According to LendingTree, there are two general approaches “to determine whether a
client has impliedly waived the attorney-client privilege” and “NexTag cannot show waiver
under either approach because LendingTree has not put the substance of a confidential
communication at issue.” (Document No. 436, p.8). LendingTree acknowledges that “[t]he
Fourth Circuit has yet to expressly adopt either approach.” (Document No. 436, p.9).
For the first approach, purportedly favored by NexTag, LendingTree identifies the Hearn
v. Rhay, 68 F.R.D. 574 (E.D.Wash. 1975) decision. (Document No. 436, p.9). Hearn first
articulated the three criteria quoted above in Small v. Hunt:
A party is treated as having waived its privileges if: (1) assertion
of the privilege was a result of some affirmative act, such as filing
suit, by the asserting party; (2) through this affirmative act, the
asserting party put the protected information at issue by making it
relevant to the case; and (3) application of the privilege would
have denied the opposing party access to information vital to his
defense.
Small, 152 F.R.D. at 512 (quoting Hearn, 68 F.R.D. at 581). LendingTree contends that Hearn
has been criticized by many sources “on the grounds that it is vague and does not afford

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sufficient protection to the attorney-client privilege.” (Document No. 436, p.9) (quoting Elat v.
Emandopngoubene, 2013 WL 1146205, at *5 (D.Md. Mar. 18, 2013)).
An alternative approach is articulated by the Third Circuit in Rhone–Poulenc Rorer Inc.
v. Home Indem. Co., 32 F.3d 851, 864 (3d Cir. 1994). Id. In Rhone, the Third Circuit opined as
follows:
Courts have found that by placing the advice in issue, the client has
opened to examination facts relating to that advice. Advice is not
in issue merely because it is relevant, and does not necessarily
become in issue merely because the attorney's advice might affect
the client's state of mind in a relevant manner. The advice of
counsel is placed in issue where the client asserts a claim or
defense, and attempts to prove that claim or defense by
disclosing or describing an attorney client communication. . . .
Thus, in a patent suit, where an infringer is alleged to have
acted willfully, the advice of the infringer's lawyer may be relevant
to the question of whether the infringer acted with a willful state of
mind. However, the advice of the infringer's counsel is not placed
in issue, and the privilege is not waived, unless the infringer seeks
to limit its liability by describing that advice and by asserting that
he relied on that advice. When the advice of counsel is asserted as
a defense by the infringer, the patent owner may explore facts that
would make it more probable than not that the infringer did not
rely in good faith on that advice, including for example, what the
advice was, when it was given, whether the alleged infringer's
conduct suggests he had relied on the advice and whether he had
knowledge of facts that would have led him to believe it would not
be reasonable to rely on that advice.
Rhone, 32 F.3d at 863 (internal citations omitted) (emphasis added).
Although the Fourth Circuit has not expressly adopted either approach, LendingTree
identifies a recent unpublished decision it contends provides guidance. (Document No. 436, p.9)
(citing Shaheen v. WellPoint Cos., 490 Fed. Appx. 552 (4th Cir. 2012);

Elat v.

Emandopngoubene, 2013 WL 1146205 (D.Md. Mar. 18, 2013); and First South Bank v. Fifth
Third Bank, N.A., 2013 WL 1840089 (D.S.C. May 1, 2013)). LendingTree asserts that the

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“Shaheen case makes clear ‘that the central inquiry in determining whether a party has impliedly
waived the attorney-client privilege is whether the party affirmatively attempts to ‘rely’ on
advice of counsel.”” (Document No. 436, p.10) (quoting Elat, 2013 WL 1146205, at *6).
LendingTree argues that although its interrogatory responses “provided the date of the
communications (October 6, 2004), the people involved (Mr. Lebda and in-house counsel), and
the general subject matter (NexTag’s infringing system),” it “did not disclose the substance of
any privileged communications and has not, therefore, ‘taken the affirmative step in the litigation
to place the advice of the attorney in issue.’” (Document No. 436, p.10) (quoting Rhone, 32 F.3d
at 863). Relying on Rhone, LendingTree concludes that it has not placed its attorney advice in
issue because “[n]o attorney advice has been revealed at all.” (Document No. 436, p.11).
The undersigned notes that Rhone specifically states that “[t]he advice of counsel is
placed in issue where the client asserts a claim or defense, and attempts to prove that claim or
defense by disclosing or describing an attorney client communication.” Rhone, 32 F.3d at 863
(citing North River Insurance Company v. Philadelphia Reinsurance Corporation, 797 F.Supp.
363, 370 (D.N.J. 1992); Pittston Company v. Allianz Insurance Co., 143 F.R.D. 66, 71 (D.N.J.
1992)).
The court in North River Ins. Co. opined that
the “in issue” doctrine should be construed narrowly to create an
implied waiver of the attorney-client privilege only when a party
puts “in issue” the contents of an attorney-client communication.
Remington Arms, 142 F.R.D. at 415. This will occur only when
the party has asserted a claim or defense that he intends to prove
by disclosure of an attorney-client communication. Id. (“If the
information is actually required for a truthful resolution of the
issue ... which the party has raised ..., the party must either waive
the attorney-client privilege as to that information or it should be
prevented from using the privileged information to establish the
elements of the case”).

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North River Ins. Co., 797 F.Supp. at 370; see also, Pittston Co., 143 F.R.D. at 71 (“The ‘in
issue’ doctrine is operative when the party has asserted a claim or defense that he intends to
prove by use of the privileged materials.”).
In this lawsuit, Lending Tree asserts that NexTag’s laches defense is “frivolous” and
should be withdrawn, based on LendingTree’s position that it did not know about NexTag’s
infringing activity until on or around October 6, 2004, after the Laches Critical Date of
September 8, 2004. (Document No. 430-8, p.10). In support of its position that the laches
defense is inapplicable here, LendingTree has simply stated that
[t]he existence of NexTag’s infringing system was brought to the
attention of Douglas Lebda by counsel for LendingTree on or
around October 6, 2004. The communications with counsel
related to when NexTag first became aware of the infringing
NexTag system are protected by the attorney–client privilege
and/or attorney work product doctrine and/or any other applicable
privilege or immunity.
(Document No. 430-8, pp.4-5) (emphasis added).
LendingTree’s interrogatory responses cited above, as well as Lebda’s deposition
testimony, strongly suggest that critical evidence of when LendingTree became aware of
NexTag’s allegedly infringing activity is included in the privileged communication from
LendingTree’s counsel. Id. Moreover, LendingTree is essentially telling NexTag, and the Court,
that NexTag’s laches defense is “frivolous,” but you have to trust us, because exactly when and
how we found out about the alleged infringement is privileged.1 It appears that LendingTree is
relying on its attorney-client communication to rebut NexTag’s laches defense, while
withholding all details of such communication.

1

LendingTree has stated that it found out about the alleged infringement “on or around October 6, 2004.”
(Document No. 430-8, p.4). It is unclear how LendingTree defines “around October 6, 2004,” or whether “around”
might include dates before and/or after September 8, 2004.
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Although this case presents a close call, the undersigned is inclined to find that
LendingTree placed the advice of its attorney in issue – the advice that NexTag’s system was
infringing upon LendingTree’s patent. See (Document No. 430-8, pp.3-5). LendingTree asserts
that NexTag’s affirmative defense of laches is without merit, based primarily on its disclosure
and description of attorney-client communication that occurred “on or around October 6, 2004.”
See Rhone, 32 F.3d at 863. Thus, it appears that LendingTree placed that advice in issue. Id.
Based on LendingTree’s interrogatory responses, the only persons employed or retained by
LendingTree who have information about LendingTree’s first awareness of NexTag’s alleged
infringement are an unidentified “counsel for LendingTree” and Lebda. (Document No. 430-8,
pp.4-5). As noted above, Lebda has refused to elaborate on what and when he knew about
NexTag’s alleged infringement, asserting attorney-client privilege. (Document No. 430-9, p.4).
In addressing the issue of attorney-client privilege and waiver, this Court has previously
opined:
The attorney-client privilege is intended to encourage those
who find themselves in actual or potential legal disputes to be
candid with lawyers who advise them, and is one of the oldest
recognized privileges for confidential communications. . . . The
attorney-client privilege is intended to encourage “full and frank
communication between attorneys and their clients and thereby
promote broader public interests in the observance of law and the
administration of justice.” Upjohn, 449 U.S. at 389. . . .
When the privilege applies, it affords confidential
communications between lawyer and client complete protection
from disclosure. However, since it impedes the full and free
discovery of the truth, the attorney-client privilege is narrowly
construed. . . .
It is well-settled in the Fourth Circuit that “[t]he proponent
of the privilege must establish ... that the privilege was not
waived.” In re Grand Jury Subpoena, 204 F.3d at 522. Although
there is no published Fourth Circuit case law on whether a party
can waive the privilege by placing its attorney's knowledge of facts
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or communications in issue, three other circuits have concluded
that the privilege can be so waived. See Frontier Refining, Inc. v.
Gorman–Rupp Co., Inc., 136 F.3d 695, 699–700 (10th Cir. 1998)
(“litigant waives the attorney-client privilege if, and only if, the
litigant directly puts the attorney's advice at issue in the
litigation”); Rhone-Poulenc Rorer Inc. v. Home Indem. Co., 32
F.3d 851, 863–64 (3d Cir. 1994); and Chevron Corp. v. Pennzoil
Co., 974 F.2d 1156, 1162 (9th Cir. 1992) (privilege waived where
a party claimed that its tax position was reasonable because it was
based upon advice of counsel). However, these circuits are divided
as to the exact standard for the waiver of privilege. Rhone, 32 F.3d
at 864.
Cincinnati Ins. Co. v. Zurich Ins. Co., 198 F.R.D. 81, 87 (W.D.N.C. 2000) (internal citations
omitted).
LendingTree contends that “NexTag seeks privileged communications despite the fact
that LendingTree has not revealed any advice of counsel, let alone relied upon the advice of
counsel to rebut NexTag’s laches defense.” (Document No. 436, p.12). The undersigned
disagrees. LendingTree has clearly stated that the existence of the allegedly infringing system
was brought to its attention “by counsel” and that those communications are protected by “the
attorney client privilege.” (Document No. 430-8, pp.4-5). Without more information from
LendingTree, the undersigned finds LendingTree is relying on the “advice of counsel” to rebut
NexTag’s laches defense.
Assuming the relevant question is, as LendingTree suggests, “what facts the party knew
and when,” the answer to that question is completely shrouded by LendingTree’s assertion of
attorney-client privilege. See (Document No. 436, p.12) (quoting Arkwright Mut. Ins. Co. v.
National Union Fire Ins. Co., 1994 WL 510043, at *12 (S.D.N.Y. 1994) (citing Allen v. West
Point–Pepperell Inc., 848 F.Supp. 423, 431 (S.D.N.Y.1994))).
Arkwright goes on to opine as follows:

13

The undersigned notes that

Invasion of the attorney-client privilege is not necessary; rather,
the discovering party should simply inquire directly of the other
party as to its knowledge of relevant facts, which must be
disclosed. . . . Invasion of the privilege may, however, be
warranted where the specific content of legal advice received must
be shown to prove a claim or a defense.
Arkwright Mut. Ins. Co., 1994 WL 510043, at *12 (citing United States v. Bilzerian, 926 F.2d
1285, 1292 (2d Cir. 1991) (defendant waived attorney-client privilege where his good faith
defense in securities fraud prosecution placed his knowledge of the legality of transactions, and
accordingly his communications with counsel, directly at issue)).
Here, LendingTree’s rebuttal of the laches defense has placed its communications with
counsel directly at issue. The undersigned finds that NexTag has appropriately sought facts
regarding LendingTree’s knowledge of NexTag’s allegedly infringing behavior, rather than legal
opinions of LendingTree’s counsel. To date, LendingTree has declined to fully respond to
NexTag’s inquiries because it contends that it became aware of the alleged infringement through
counsel. (Document No. 430-8, pp.4-5; Document No. 430-9, pp.3-4). On this point, the Rhone
court emphasized that
Facts are discoverable, the legal conclusions regarding those facts
are not. A litigant cannot shield from discovery the knowledge it
possessed by claiming it has been communicated to a lawyer; nor
can a litigant refuse to disclose facts simply because that
information came from a lawyer.
Rhone, 42 F.3d at 864.
Based on the foregoing, the undersigned finds that LendingTree should be required to
produce the documents requested by the instant “… Motion To Compel…” (Document No. 426).
Consistent with Conkling v. Turner, 883 F.2d 431, 435 (5th Cir. 1989), it appears that NexTag
has presented a “cabined inquiry,” regarding when LendingTree knew of the existence of
NexTag’s allegedly infringing product, that will likely provide information relevant to NexTag’s
14

affirmative defense. To the extent responsive documents also contain privileged information that
is unrelated to information requested by the “… Motion To Compel…,” LendingTree may redact
as necessary.
IV. CONCLUSION
IT IS, THEREFORE, ORDERED that “Defendant NexTag, Inc.’s Motion To Compel
Production Of Documents Subject To Waiver Of Privilege” (Document No. 426) is GRANTED.
Plaintiff LendingTree, LLC shall produce the requested documents on or before December 13,
2013.
SO ORDERED.

Signed: December 5, 2013

SEALED DOCUMENT with access to All Parties/Defendants.

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