Willis Electric Co., Ltd. v. Polygroup Limited
- Joan Ericksen
- 0:15-cv-03443
- U.S. District Court · District of Minnesota
- 8
In Willis Electric v. Polygroup, Judge Menendez granted Polygroup’s discovery motion in part, finding a limited attorney-client privilege waiver and ordering further steps.
Willis Electric, Polygroup, and the third parties John Fonder and Christensen, Fonder, Dardi & Herbert, PLLC; the order directly required further action by Willis and Polygroup and stated that its privilege ruling should guide the law firm’s response to Polygroup’s subpoena.
What happened
In Willis Electric Co., Ltd. v. Polygroup Macao Limited and related defendants, Polygroup asked the court to compel discovery about when inventions in Willis’s patents were conceived. The request concerned Willis’s reliance on a patent attorney’s statement in earlier patent proceedings about an invention date.
The court held that Willis waived attorney-client privilege by relying on the attorney’s opinion, which was based on privileged communications. The waiver covers communications about the conception of the inventions in the ‘186 patent family that occurred before the September 2010 provisional patent application, including communications that might undermine Willis’s position. The court granted Polygroup’s motion to compel in part.
Judge Menendez held the remaining discovery issues in abeyance and ordered the parties to meet and confer. If they could not resolve those issues, Polygroup and Willis had to submit short supplemental letter briefs so the court could decide what further action was needed.
The detailed version
- Willis Electric Co., Ltd. v. Polygroup Limited · No. 0:15-cv-03443
- Joan Ericksen
- Apr. 22, 2020
Background
Polygroup moved to compel Willis and third parties John Fonder and Christensen, Fonder, Dardi & Herbert, PLLC, to provide discovery about the invention dates for patents involved in the case. The motion concerned the ‘186 patent family—the ‘186, ‘187, ‘379, and ‘072 patents—as well as discovery concerning the ‘617 and ‘056 patents.
During earlier patent-review proceedings, Willis asserted that the invention in the ‘186 patent family had been conceived no later than May 18, 2010. Willis supported that position with a declaration from patent-prosecution attorney John Fonder. Fonder stated that he had reviewed privileged communications concerning the invention and that those communications indicated an invention date at least as early as May 18, 2010. Willis executive Johnny Chen, identified as the inventor of the ‘186 patent family, also stated that he contacted Fonder shortly after developing the idea and making initial designs.
Attorney-Client Privilege Waiver
Attorney-client privilege generally protects confidential communications between a client and lawyer for purposes of obtaining legal advice. The court held that a party waives that protection when it relies on privileged communications to establish a claim or defense while denying the opposing party access to the communications.
The court found that Willis waived attorney-client privilege by relying on Fonder’s statement to establish an earlier invention date. Fonder did not merely identify when he communicated with Chen. He stated that the substance of privileged communications supported his conclusion about the invention date. The court concluded that it would be unfair to permit Willis to rely on that conclusion while preventing Polygroup from examining the materials on which Fonder based it.
Scope of the Waiver
The court rejected Polygroup’s proposed scope as too broad and Willis’s proposed scope as too narrow. The waiver covers communications between Willis and its patent-prosecution counsel concerning conception of the invention claimed in the ‘186 patent family. It includes communications supporting Willis’s proposed May 2010 date and communications that could undermine that account. The court stated that the May 18, 2010 email identified on the privilege log falls within the waiver, but the waiver is not limited to that email. Fonder’s own recollections of meetings with Chen are also implicated to the extent they concern conception of the invention.
The court did not extend the waiver to all communications concerning reduction to practice. Reduction to practice is the process of turning an invention into a working or otherwise legally sufficient embodiment. The court found that Fonder’s declaration did not refer to diligence or reduction to practice. The court also limited the waiver to privileged communications made before Willis filed the provisional patent application in September 2010.
Disposition and Remaining Discovery
The court granted in part Polygroup’s motion to compel invention discovery, to the extent described in the order. The court held the remaining issues in abeyance because Willis had recently agreed to produce a video and photographs and appeared likely to supplement its document-request and interrogatory responses. The court stated that it was unclear whether those materials resolved the remaining disputes.
The court ordered the parties to meet and confer before May 1, 2020 about the remaining issues, excluding the privilege-waiver issues resolved in the order. If the parties agreed that no issues remained, they had to file a stipulation or joint letter. If they disagreed, Polygroup had to file any supplemental letter brief by May 4, 2020, and Willis had to respond by May 8, 2020. Judge Katherine Menendez would then decide whether to rule on the written submissions, hold a telephone conference, or take another approach.
Read the full 8-page opinion on CourtListener, the free public archive maintained by the Free Law Project.