Richards v. Kallish

Background

The parties reported two discovery disputes: Defendants’ assertion of attorney-client privilege over documents listed in response to Plaintiff’s requests for admissions and production, and Defendants’ motion for a protective order seeking a partial stay of discovery. Defendants argued that many requested documents were relevant only to damages claims that were the subject of a pending motion to dismiss. Plaintiff opposed a stay and argued that several requests were also relevant to Count 1, which was not subject to that motion.

Attorney-client privilege and privilege log

Plaintiff challenged five categories of entries in Defendants’ privilege log:

1. Communications with unidentified individuals and non-attorneys. Defendants argued that some involved paralegals, administrators, employees, or agents. The court directed Defendants, by July 25, 2023, to identify all unidentified individuals and non-attorneys and provide the specific role or position of people whose communications Defendants claimed were privileged. The revised log had to identify the entries changed in response to the order.

2. Attorney invoices. The parties appeared to agree that the invoices should be produced with redactions for legal strategy or legal advice revealed in the invoices. The court directed Defendants to produce the withheld invoices in redacted form by July 25, 2023, and ensure that the privilege log explained the basis for each redaction.

3. Business records, including a capitalization table, pitch deck, and private placement memorandum. The court stated that a privilege log could not be used to withhold documents based on a pending discovery-stay motion when no attorney-client privilege or protection for trial-preparation material was claimed. The court directed Defendants to remove such documents from the privilege log by July 25, 2023. Arguments about relevance were to be addressed in the motion for a protective order.

4. Entries that did not identify the subject matter or basis for the claimed privilege. The court directed Defendants to revise the log by July 25, 2023, so that it complied with Federal Rule of Civil Procedure 26(b)(5)(A) and Southern District of New York Local Rule 26.2 by identifying the subject matter and basis of each privilege claim.

5. Communications involving patent counsel. Plaintiff argued that she received some communications as a joint inventor jointly represented by patent counsel. Defendants argued that the privilege belonged to Everyone’s Earth, Inc., and that Plaintiff received the communications as its agent without waiving the privilege. The parties also disputed whether Plaintiff could seek broader discovery from the patent attorneys, including documents, communications, and depositions.

The court determined that formal briefing was needed on the attorney-client privilege issues involving patent counsel and on whether broader discovery of patent counsel was warranted. Defendants’ opening brief was due July 18, 2023; Plaintiff’s response was due July 25, 2023; and Defendants’ reply, if any, was due July 27, 2023. The parties could instead submit an agreed briefing schedule for the court’s approval by July 17, 2023.

Partial stay of discovery and conference

The court did not resolve Defendants’ motion for a partial stay of discovery in this order. It scheduled the motion for a telephone status conference on August 10, 2023, before Judge Victoria Reznik. The parties were directed to be prepared to discuss which of Plaintiff’s document requests, if any, related only to damages, as well as the types and volume of documents involved. The conference would also address any remaining issues identified in the parties’ joint pre-motion letter.