Caraway Home, Inc. v. Sensio Inc.
- P. Castel
- 1:23-cv-09756
- U.S. District Court · Southern District of New York
- 2
In Caraway Home v. Sensio, Judge Castel ordered Sensio to produce legal-advice documents after finding it waived attorney-client privilege.
Sensio must produce documents concerning legal advice about whether its redesigned product line infringed Caraway’s specified design patents; Caraway obtains that discovery.
What happened
Caraway Home, Inc. v. Sensio Inc. concerned Sensio’s redesigned product line and whether it infringed Caraway’s design patents. Sensio told the court that it had received legal advice about infringement and planned to rely on that advice in defending against a claim of willful infringement.
The court ruled that Sensio’s position waived attorney-client privilege for oral and written legal advice about whether the redesigned products infringed Caraway’s specified design patents. It ordered Sensio to produce the covered documents by June 4, 2024, and granted Caraway’s letter motion to that extent.
Judge P. Castel issued the order. The opinion addressed privilege and document production; it did not decide whether Sensio’s products actually infringed the patents.
The detailed version
- Caraway Home, Inc. v. Sensio Inc. · No. 1:23-cv-09756
- P. Castel
- May 22, 2024
Background
In response to an earlier court order, Sensio confirmed that it had received legal advice about whether its redesigned product line infringed Caraway’s “421, “226, and “647 design patents. Sensio also confirmed that it intended to rely on advice of counsel as part of a good-faith defense to Caraway’s claim of willful infringement.
Ruling
The court held that Sensio’s position waived attorney-client privilege—the protection generally covering confidential communications between a client and its lawyer—for all oral or written legal advice communicated to Sensio about whether the redesigned product line infringed Caraway’s specified design patents.
The court ordered Sensio, by June 4, 2024, to produce all documents in its possession or control, including documents held by any attorney Sensio retained or employed, that reflected, addressed, or discussed that legal advice. The court stated that Caraway’s letter motion was granted to the extent indicated in the order.
What the Order Did Not Decide
The opinion did not decide whether Sensio’s redesigned products infringed Caraway’s patents. It resolved the attorney-client privilege and document-production issue arising from Sensio’s planned reliance on legal advice.
Disposition
The order granted Caraway’s letter motion to the extent indicated above. Judge P. Castel issued the order on May 22, 2024.
Read the full 2-page opinion on CourtListener, the free public archive maintained by the Free Law Project.