Network-1 Technologies, Inc. v. Google, L.L.C.
- Paul Gardephe
- 1:14-cv-02396
- U.S. District Court · Southern District of New York
- 13
In Network-1 v. Google, Judge Netburn granted in part and denied in part Google’s motion to obtain documents withheld under privilege claims.
The ruling affected Google LLC and YouTube LLC’s request for documents, ARE’s privilege claims, and Network-1 Technologies, Inc.’s and Dr. Ingemar Cox’s withheld communications concerning the patents and their sale.
What happened
Network-1 Technologies, Inc. v. Google, L.L.C. involved Google and YouTube’s request for documents withheld by Amster Rothstein & Ebenstein, the patent inventor’s former counsel and Network-1’s co-counsel. The documents involved communications with Network-1 and Mark Lucier, a consultant assisting with the patent sale.
The court found that the common-interest protection did not cover communications between the patent inventor’s lawyer and Network-1 or Lucier because their legal interests were not identical and many communications concerned business negotiations. Some documents, however, were protected because they reflected legal work prepared for expected patent litigation.
Judge Sarah Netburn granted in part and denied in part the document request, ordered production of the documents identified as unprotected within fourteen days, and required a further review of the privilege log.
The detailed version
- Network-1 Technologies, Inc. v. Google, L.L.C. · No. 1:14-cv-02396
- Paul Gardephe
- Dec. 9, 2019
Background
Google LLC and YouTube LLC sought documents that Amster Rothstein & Ebenstein LLP (ARE) withheld based on the attorney-client privilege, the common-interest privilege, or the work-product doctrine. ARE had represented Dr. Ingemar Cox, the inventor of the patents at issue, during the relevant period and was then serving as Network-1’s co-counsel. The disputed communications involved ARE, Network-1, and Mark Lucier, a consultant hired by Cox to assist with selling the patents.
Each side submitted fifteen documents for private judicial review. Because one document was submitted by both sides, the court reviewed twenty-nine documents in total.
Legal standards
The attorney-client privilege protects confidential communications between a client and lawyer made to obtain or provide legal assistance. The presence of a third party generally destroys that protection. The common-interest privilege is a limited extension of attorney-client protection that can preserve confidentiality when parties and their lawyers share an identical legal interest and communicate to further that shared legal purpose. The court emphasized that this protection must be extended cautiously and does not cover a shared commercial or business strategy alone.
The work-product doctrine protects documents prepared because of expected litigation or for trial. Documents created in the ordinary course of business, or that would have been created in substantially the same form without litigation, are not protected.
Court’s analysis
The court rejected ARE’s argument that the common-interest privilege applied to communications involving Network-1 and Lucier. Although Network-1 had an interest in obtaining strong and enforceable patents, Cox was seeking to sell rather than license his patent interest. The court therefore found that Cox’s and Network-1’s legal interests were not identical during the sale negotiations. Cox’s consulting relationship with Network-1 and Network-1’s payment of Cox’s legal fees showed a shared financial interest, but did not establish the required identical legal interest.
The court also distinguished legal work from business and negotiation communications. Communications about the patent sale, nondisclosure agreements, term sheets, purchase-agreement terms, business information, and similar subjects generally were not protected by attorney-client or common-interest privilege and were not work product. The court also found that sharing certain billing statements with Network-1 waived any attorney-client protection that might otherwise have applied.
Document-by-document conclusions
The court found the following materials not privileged and not protected as work product: Ref. I.D. Nos. 829, 841, 859, 899, 1019, 1061, 1070, 1075, 1077, 1094, 1514, 1567, 1646, 1680, 1813, 1878, 1968, and 2008. Ref. I.D. Nos. 919 and 1719 were also not protected by attorney-client or common-interest privilege; ARE did not claim work-product protection for those documents. For Ref. I.D. No. 1527, the first email was protected work product, while the later email was neither protected work product nor protected by attorney-client or common-interest privilege.
The court found the following materials protected by the work-product doctrine: Ref. I.D. Nos. 1218, 1356, 1533, 1535, 1555, 1912, 1914, and 1977. These documents reflected legal analysis, proposed patent claims, potential infringement theories, or other work prepared because of expected patent litigation.
Ruling and effect
Judge Sarah Netburn granted in part and denied in part Google and YouTube’s request. The court ruled that the common-interest privilege did not apply to communications between ARE and Network-1 or between ARE and Lucier. ARE was ordered, within fourteen days, to produce the communications identified as non-privileged and not protected by the work-product doctrine and to review its privilege log for additional documents subject to the same ruling. The clerk was asked to terminate the motion at ECF No. 191 in 14-CV-02396.
Read the full 13-page opinion on CourtListener, the free public archive maintained by the Free Law Project.