UrthTech LLC v. Gojo Industries, Inc.
- P. Castel
- 1:22-cv-06727
- U.S. District Court · Southern District of New York
- 14
In UrthTech LLC v. GOJO Industries, Judge Parker denied motions to compel privileged materials and partly granted GOJO’s sealing motion.
UrthTech LLC’s efforts to obtain GOJO’s and Calfee, Halter & Griswold LLP’s documents were unsuccessful; GOJO’s Exhibits B and C remained sealed, while Exhibit A was unsealed.
What happened
UrthTech LLC sued GOJO Industries, Inc., alleging that GOJO misused confidential information and failed to recognize Dr. Aziz Awad as an inventor on certain patent applications. The dispute involved agreements governing confidential information, patent licenses, and later inventions.
UrthTech asked the court to require GOJO and its lawyers at Calfee, Halter & Griswold LLP to produce documents underlying a legal memorandum about inventorship. GOJO argued that attorney-client privilege and protection for materials prepared for expected litigation covered the requested documents. The court concluded that sharing the memorandum before the lawsuit caused, at most, a narrow waiver covering the memorandum itself, not the broader category of documents UrthTech sought.
Judge Katharine H. Parker denied UrthTech’s motions to compel and declined to award fees because neither side requested them. The court also granted in part and denied in part GOJO’s motion to keep exhibits under seal: Exhibits B and C remained sealed, while Exhibit A was to be unsealed.
The detailed version
- UrthTech LLC v. Gojo Industries, Inc. · No. 1:22-cv-06727
- P. Castel
- Aug. 26, 2024
Background
UrthTech LLC brought claims against GOJO Industries, Inc. for alleged breach of a License Agreement and Nondisclosure Agreement, trade-secret misappropriation under the federal Defend Trade Secrets Act, and correction of inventorship under federal patent law. UrthTech alleged that GOJO used information provided by UrthTech, filed patent applications that omitted UrthTech founder Dr. Aziz Awad as an inventor, and failed to comply with contractual notice and inventorship obligations.
During pre-lawsuit discussions about the dispute, GOJO sent UrthTech a February 28, 2020 memorandum prepared by GOJO’s outside lawyers at Calfee, Halter & Griswold LLP. The memorandum stated GOJO’s legal and factual position that there was no basis to list Dr. Awad as a joint inventor. UrthTech later requested documents and communications that GOJO’s lawyers had considered or relied on in preparing the memorandum, including attorney notes and work product. GOJO objected based on attorney-client privilege and the work-product doctrine. UrthTech separately subpoenaed the law firm for the same information.
Court’s analysis
The court applied federal privilege law because the requested materials were relevant to UrthTech’s federal claims. Attorney-client privilege generally protects confidential communications between a client and a lawyer made to obtain or provide legal advice. The work-product doctrine generally protects materials prepared in anticipation of litigation, with heightened protection for a lawyer’s opinions and legal theories.
The court explained that disclosure of protected material can waive protection. For an extrajudicial disclosure—that is, a disclosure outside the litigation—the waiver is generally limited to the communication or subject matter actually disclosed. Here, the court found that the February 28 memorandum was prepared to state GOJO’s position about inventorship and was disclosed outside the lawsuit during pre-litigation discussions. GOJO had not asserted that the memorandum was privileged and was not relying on it in the litigation as a defense or claim.
The court therefore concluded that, even assuming the memorandum could have been privileged, the disclosure resulted only in a narrow waiver covering the memorandum itself. The court did not find a broader waiver requiring production of all documents concerning whether Dr. Awad had a valid inventorship claim. The opinion also states that GOJO represented it had disclosed or would disclose the underlying factual information supporting factual statements in the memorandum.
Disposition
The court denied UrthTech’s motion to compel production from GOJO and denied the related motion to compel a response to the subpoena served on Calfee, Halter & Griswold LLP. The court did not award attorneys’ fees or costs because neither side had requested them.
The court separately ruled on GOJO’s request to keep exhibits sealed. It granted in part and denied in part that motion: Exhibits B and C to GOJO’s opposition could remain sealed, but Exhibit A did not contain settlement-related or confidential information and was ordered unsealed. The order resolved the motions at Docket Nos. 74 and 77 in the main case and Docket No. 1 in the related miscellaneous matter.
Read the full 14-page opinion on CourtListener, the free public archive maintained by the Free Law Project.