MasterObjects, Inc. v. Amazon.com, Inc.

Background

Amazon sought terminating sanctions against MasterObjects based on alleged unclean hands. To defend against that request, MasterObjects voluntarily waived attorney-client and work-product protections and produced documents that it had previously withheld from discovery. Amazon argued that the waiver covered additional documents and challenged redactions in documents MasterObjects had produced.

Judge William Alsup referred the dispute to Special Master Harold J. McElhinny. The parties narrowed the dispute to five issues: two documents withheld in full, two redacted documents, and Amazon’s request for two additional hours of deposition testimony from MasterObjects’ named inventor, Mark Smit. The special master applied Federal Rule of Evidence 502(a), which provides that an intentional waiver extends to communications concerning the same subject matter that fairness requires to be considered together.

Rulings

The special master ordered MasterObjects to produce two attachments identified as Privilege Log entries 5504 and 5506. He concluded that they concerned the same subject as the previously disclosed email chain—efforts to obtain more valuable patent claims—and therefore fell within the scope of the waiver.

For document MO_065803, an email from Mark Smit to Martin Fliesler dated July 4, 2011, the special master found the redactions appropriate and did not order additional disclosure. For document MO_065759, an email chain ending with an August 30, 2011 email from Smit to Fliesler, he found that the last five redacted words could remain withheld but ordered the rest of the redacted material disclosed.

The special master also ordered MasterObjects to make Smit available for two additional hours of deposition by May 6, 2022, at a time and place the parties would agree on. The deposition was limited to the contents of documents MasterObjects produced after discovery closed. He noted that MasterObjects had a reasonable argument that the deposition request exceeded the referral’s scope, but allowed it for efficiency and stated that, if he had exceeded his authority, the ruling was offered as a recommendation to the District Court.

Effect and disposition

The order required the document production by April 27, 2022, and the additional deposition. It did not state that Amazon’s motion for terminating sanctions was granted or denied. The order also stated that matters involving privilege and jurisdiction could be appealed to the District Court. The opinion was signed by Special Master Harold J. McElhinny, following Judge Alsup’s referral.