Cadence Pharmaceuticals, Inc. et al v. Fresenius Kabi USA, LLC, No. 3:2013cv00139 - Document 163 (S.D. Cal. 2014)
Court Description: ORDER denying 145 Joint Motion for Determination of Discovery Dispute re: Assertion of Attorney-Client Privilege. For the reasons expressed in the attached Order, the Court finds that German privilege law applies in this instance and that, with a few exceptions based upon in camera review, Defendant properly has asserted privilege. Signed by Magistrate Judge Mitchell D. Dembin on 2/3/14. (Dembin, Mitchell)
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Cadence Pharmaceuticals, Inc. et al v. Fresenius Kabi USA, LLC Doc. 163 1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 CADENCE PHARMACEUTICALS, INC. and SCR PHARMATOP, 12 13 14 15 vs. Plaintiffs, CASE NO. 13-cv-00139 DMS (MDD) JOINT MOTION FOR DETERMINATION OF DISCOVERY DISPUTE [ECF NO. 145] FRESENIUS KABI USA, LLC, Defendant. 16 17 18 19 20 21 22 23 24 25 26 27 28 Before the Court is the Joint Motion of Cadence Pharmaceuticals, Inc. and SCR Pharmatop (Plaintiffs), and Fresenius Kabi USA, LLC (“Defendant” or “Fresenius”). (ECF No. 145). The dispute is over whether certain documents, referred to as “the Bichlmaier Documents,” are privileged. (Id. at 2). Fresenius produced the Bichlmaier Documents in discovery between August and September 2013. (Id.). Plaintiffs allegedly relied upon at least one of those documents to support a motion submitted to the District Court on October 15, 2013. (Id. at 3) (citing ECF Nos. 145–1 at 2, para. 3 and 99–2, Ex. D [redacted]). On October 17, 2013, Fresenius asserted that the documents were privileged and “clawed–back” the documents. (ECF No. 145–1, Ex. B [redacted]). Plaintiffs seek production of the Bichlmaier Documents and claim that Fresenius has not established that the documents are privileged or -1- 13cv139-DMS (MDD) Dockets.Justia.com 1 has waived any privilege. (ECF No. 145 at 2). To the extent that the 2 Court finds that the documents may be privileged, Plaintiffs request in 3 camera review of the documents. (Id.). Defendant contends that the 4 disputed documents are privileged, in camera review is not necessary, 5 and there has been no waiver of the privilege. (Id. at 7). 6 Factual Summary 7 The challenged Bichlmaier Documents are associated with a 8 Fresenius employee, Ingo Bichlmaier. (ECF No. 145 at 2; ECF No. 9 145–1, Ex. A [redacted]). The challenged documents are identified as 10 items 3–14 on the privilege log that Fresenius submitted as part of its 11 asserted claw–back demand. (Id.). 12 Fresenius asserts that Bichlmaier, one of the Fresenius personnel 13 listed on the challenged documents, was employed as a “patent 14 manager”1 in the Patent Department of Fresenius Medical Care AG & 15 Co. KGaA (“FMC AG”) at the time of the communications at issue. (Id. 16 at 8–9). Fresenius provides as evidence the Declaration of Stefan Weiss, 17 a European patent attorney and Director of Patents at FMC AG. (ECF 18 No. 146 at 2). In his Declaration, Weiss describes the role of the FMC 19 AG’s Patent Department (“Patent Department”) and Bichlmaier’s 20 functions during his employment with the company. (Id.). Weiss states 21 that the Patent Department is located in Germany, and that its primary 22 role within FMC AG is to “provide intellectual property related advice to 23 various Fresenius entities around the world.” (Id.). Weiss asserts that 24 Bichlmaier was employed by the Patent Department from April 1, 2008, 25 to December 31, 2010. (Id.). At that time, Bichlmaier was training to 26 27 1 On October 25, 2013, Fresenius claimed that the disputed documents were privileged because Bichlmaier was a European patent attorney. (ECF 28 No. 145–1, Ex. C [redacted]). On November 19, 2013, Fresenius asserted that Bichlmaier was a “patent manager” working under the direction of patent attorneys. (ECF No. 145 at 3–4). -2- 13cv139-DMS (MDD) 1 become a patent attorney. (Id.). Weiss asserts that at the time of the 2 communications at issue, Bichlmaier was a “patent manager” at the 3 Patent Department working under his direction, as well as under the 4 direction of other patent attorneys, to “assist in providing and obtaining 5 legal advice.”2 (Id. at 2). 6 Bichlmaier was named as an inventor on several patent 7 applications filed by Fresenius during Bichlmaier’s employment with the 8 Patent Department. (ECF No. 145–2 at 3). On October 7, 2009, 9 Bichlmaier e–mailed Alcheitener, one of the inventors of the patent at 10 issue in this case, and opined that he had made an “inventive 11 contribution” to the invention. (ECF No. 145–1, Ex. D [redacted]). 12 Bichlmaier requested Achleitner’s opinion about his “inventive 13 contribution” claim, and asked to “retain a symbolic contribution of 5% 14 share in the invention [] or less.” (Id.). 15 The communications over which Fresenius asserts attorney–client 16 privilege consist of a series of e–mails Fresenius identified on its October 17 28, 2013, privilege log. (See ECF No. 145–1 at 2; see also ECF No. 145–1, 18 Ex. A [redacted]). The e–mails were sent on January 12, 13, February 19 23, 25, April 20 and 21, 2009. (ECF No. 145–1, Ex A [redacted]). Seven 20 e–mails involved communications between Achleitner and several 21 Fresenius employees. (Id.). Bichlmaier was listed as one of the copy 22 recipients on those e–mails. (Id.). Five remaining e–mails involved 23 communications between Bichlmaier and Achleitner. (Id.). Fresenius 24 describes several e–mails on its privilege log as “reflecting legal advice 25 and analysis” by the Patent Department concerning a “patent search” 26 and “filing a patent application.” (Id.). The remaining e–mails are 27 28 2 It appears that the title “patent manager,” as used by Fresenius, is equivalent to “patent agent.” -3- 13cv139-DMS (MDD) 1 described as “reflecting” and “requesting” legal advice and analysis by 2 the Patent Department concerning the following: filing a patent 3 application, the results of a patent search, and the application of a 4 German statute. (Id.). 5 I. 6 Attorney–Client Privilege 7 A. Choice of Law: U.S. or Foreign 8 The challenged Bichlmaier Documents are foreign documents. 9 Consequently, the determination of the applicability of attorney–client 10 privilege to the challenged documents implicates foreign law issues. 11 12 Legal Standard3 Federal Rule of Evidence 501 provides that questions of privilege 13 in a federal question case are governed by the principles of common law. 14 Astra Aktiebolag v. Andrx Pharmaceuticals, Inc., 208 F.R.D. 92, 97 15 (S.D.N.Y. 2002). The “common law,” as applied under Rule 501, includes 16 “choice of law questions.” Id. 17 Most courts apply the “touch base” analysis in deciding choice of 18 law issues in cases where the alleged privileged communications 19 occurred in a foreign country or involved foreign attorneys or 20 proceedings. See Golden Trade, S.r.L. v. Lee Apparel Co., 143 F.R.D. 21 514, 522 (S.D.N.Y. 1992); Astra, 208 F.R.D. at 98; Gucci America, Inc. v. 22 Guess?, Inc., 271 F.R.D. 58, 64–65 (S.D.N.Y. 2010). Under this approach, 23 a court applies principles of comity in a traditional choice of law 24 25 3 A District court deciding issues in a patent case is required to apply the law of the circuit in which it sits with respect to nonpatent issues and 26 the law of the Federal Circuit to the issues of substantive patent law. Institut Pasteur v. Cambridge Biotech Corp., 186 F.3d 1356, 1368 (Fed.Cir. 27 1999). Questions of privilege, confidentiality and waiver in a patent suit are generally governed by regional circuit law, rather than the Federal 28 Circuit law. In re Pioneer Hi–Bred Int’l Inc., 238 F.3d 1370, 1374 (Fed.Cir. 2001). -4- 13cv139-DMS (MDD) 1 “contacts” analysis. See Golden Trade, 143 F.R.D. at 520–21. A court 2 first determines whether the communication involves or “touches base” 3 with the U.S. or foreign law, and then examines the applicable law for 4 privilege. Id. 5 Courts engaging in the “touch base” analysis defer to the law of the 6 country that has the “predominant” or “the most direct and compelling 7 interest” in whether the challenged communications should remain 8 confidential, unless that foreign law is contrary to the public policy of the 9 forum. Astra, 208 F.R.D. at 98 (citing Golden Trade, 143 F.R.D. at 522). 10 The country with the “predominant interest” is either “the place where 11 the allegedly privileged relationship was entered into” or “the place in 12 which that relationship was centered at the time communication was 13 sent.” Astra, 208 F.R.D. at 98. 14 The inquiry into whether communications “touch base” with the 15 United States or with a foreign jurisdiction is fact–specific and focuses 16 on whether the communications have a “more than incidental” 17 connection with the U.S. Gucci, 271 F.R.D. at 67. American law 18 typically applies to communications concerning “legal proceedings in the 19 United States” or “advice regarding American law,” whereas foreign 20 privilege law typically governs communications relating to “foreign legal 21 proceeding[s] or foreign law.” Id. at 65. 22 In the context of patent law, courts often look to the law of the 23 country where legal advice was rendered or where the patent application 24 is pending. See Golden Trade, 143 F.R.D. at 520–21. Communications 25 between a foreign client and a foreign patent agent “relating to 26 assistance in prosecuting patent applications in the United States” are 27 governed by the U.S. privilege law. Id. at 520. Communications 28 “relating to assistance in prosecuting” foreign patent applications or -5- 13cv139-DMS (MDD) 1 “rendering legal advice … on the patent law” of foreign country are, as a 2 matter of comity, governed by the privilege “law of the foreign country in 3 which the patent application is filed,” even if the client is a party to a 4 suit in the U.S. Id. (quotation omitted). 5 The party invoking a foreign privilege has the burden of proving 6 the applicability of the foreign law and must establish that the foreign 7 law protects the communication from discovery. See id. at 523–24 8 (finding that affidavits of German patent attorney sufficiently 9 established confidentiality of communications between Italian 10 corporation and German patent agents). The burden then shifts to the 11 opponent of the privilege to present evidence to contest the existence of 12 the privilege. See id. Privilege for foreign patent agent communications 13 should be “strictly construed,” and all “doubts should be resolved in favor 14 of disclosure.” See McCook Metals L.L.C. v. Alcoa Inc., 192 F.R.D. 242, 15 256 (N.D. Ill. 2000). 16 17 Discussion Plaintiffs seek production of the Bichlmaier Documents because 18 they assert that Fresenius has not established that the documents are 19 privileged. (ECF No. 145 at 2). Plaintiffs argue that the substantive law 20 of the United States applies to the challenged communications because 21 the U.S. has the “‘predominant’ or ‘the most direct and compelling 22 interest’ in whether those communications should remain confidential.” 23 (See id. at 4 n.3) (citing Astra, 208 F.R.D. at 98 (citations omitted)). 24 Fresenius asserts that attorney–client privilege protects the 25 Bichlmaier Documents from disclosure. (ECF No. 145–1, Ex. A 26 [redacted]). Fresenius also relies on Astra arguing that Germany has the 27 “predominant interest” in whether the communications are privileged. 28 (Id. at 8) (citing Astra, 208 F.R.D. at 98). Fresenius claims that German -6- 13cv139-DMS (MDD) 1 law applies because the communications and privileged relationship 2 were centered in Germany at the time of the communications, and the 3 disputed documents contain legal advice and information regarding 4 various European patents. (Id.) (emphasis in original). 5 The court in Astra was required to determine the law governing 6 claims of privilege. Astra, 208 F.R.D. at 98. Several of the challenged 7 documents included communications between the company’s Swedish 8 employees and its in-house counsel, forwarding copies of communications 9 with outside German counsel “requesting and rendering legal advice.” 10 Id. The court found that Germany had the “most compelling interest” in 11 whether the challenged documents were protected from disclosure, and 12 that the application of German law “would not seriously impinge on any 13 significant policy” of the forum. Id. at 98–100 (citation omitted). The 14 court found that several other documents “touched base” with the U.S. 15 because they involved communications with American counsel, or 16 concerned the prosecution of patent applications or litigation in the U.S. 17 Id. at 99. As to those documents, the court applied U.S. law. Id. 18 In Golden Trade, the documents in question were communications 19 between an Italian corporation and patent agents in Norway, Germany, 20 and Israel regarding the processing of patent applications in their 21 respective countries. Golden Trade, 143 F.R.D. at 520. The disputed 22 communications in Golden Trade did not “touch base” with the United 23 States because they related to matters solely involving foreign countries. 24 Id. at 522. The court concluded that foreign countries had the 25 “predominant interest” in whether the challenged communications 26 should remain confidential, and that “enforcement of their laws [in 27 American patent infringement suit] would not seriously impinge on any 28 significant policy [of the forum].” Id. -7- 13cv139-DMS (MDD) 1 Because FMC AG’s Legal Department is located in Germany, the 2 legal advice in this case was rendered in Germany to the company’s 3 European personnel. (See ECF No. 146 at 2; see also ECF No. 145–1, Ex. 4 A [redacted]). The challenged communications, as described on the 5 privilege log generated by Fresenius, concerned “legal advice and 6 analysis” regarding the prosecution of European patent applications, as 7 well as the application of a German statute. (See ECF No. 145–1, Ex. A 8 [redacted]; see also ECF No. 145 at 8). The principles of Golden Trade 9 and Astra thus suggest that the challenged communications “touch base” 10 with Germany. See Astra, 208 F.R.D. at 98; Golden Trade, 143 F.R.D. at 11 522. 12 The fact that patent litigation is currently pending in the U.S. is 13 not sufficient to establish a “more than incidental connection to the U.S.” 14 See Gucci, 271 F.R.D. at 67; see also Golden Trade, 143 F.R.D. at 520 15 (stating that communications “relating to assistance in prosecuting” 16 foreign patent applications or “rendering legal advice ... on the patent 17 law” of a foreign country are governed by privilege law of the foreign 18 country in which the patent application is filed, even if a client is a party 19 to a suit in the U.S.). Because the legal advice in this case was rendered 20 in Germany and related to the prosecution of European patent 21 applications, as well as the application of a German statute, the 22 connection to the U.S. is incidental. See id. The communications at 23 issue thus do not “touch base” with the U.S. 24 The factual record supports the view that the alleged privileged 25 relationship in this case was centered in Germany at the time of the 26 communications. Accordingly, it appears that Germany has 27 “predominant” or “the most direct and compelling” interest in whether 28 the Bichlmaier Documents should be treated as confidential. See Astra, -8- 13cv139-DMS (MDD) 1 208 F.R.D. at 98; Golden Trade, 143 F.R.D. at 522. Consequently, this 2 Court should, as a matter of comity, look to the law of Germany to 3 determine whether the disputed communications are privileged, unless 4 the applicable German law is clearly inconsistent with important policies 5 embodied in federal law. See Astra, 208 F.R.D. at 98. 6 U.S. policy interests contemplate liberal discovery in American 7 lawsuits. Golden Trade, 143 F.R.D. at 522. Privilege claims are to be 8 narrowly construed to minimize interference with the parties’ ability to 9 have their claims and defenses adjudicated on the merits. See id. 10 Courts have also recognized that the attorney–client privilege 11 encourages clients to be forthcoming and candid with their counsel, and 12 ensures that the counsel is sufficiently well–informed to provide sound 13 legal advice. Astra, 208 F.R.D. at 103; see also Golden Trade, 143 F.R.D. 14 at 522 (citing United States v. Zolin, 491 U.S. 554, 562 (1989) (quotation 15 omitted)). 16 In analyzing compelling U.S. policy interests governing privilege 17 claims in the context of communications with foreign patent agents, the 18 court in Golden Trade stated the following: 19 [F]oreign patent agents perform services akin to lawyers in their field of specialization. Thus, although most American 20 courts have noted that United States patent agents are not attorneys and hence have held them not to come directly within 21 the scope of the attorney–client privilege, the invocation of a comparable privilege for patent agents–whether domestic or 22 foreign–would not be dramatically inconsistent with the rationale underlying the attorney–client privilege, and indeed 23 [] a number of United States courts have in fact offered such a protection not only for foreign patent agents but for domestic 24 agents as well. See, e.g., Venitron Medical Prods., Inc. v. Baxter Lab., Inc., 186 U.S.P.Q. [324,] 325–26; In re Ampicillin Antitrust 25 Litig., 81 F.R.D. [377,] 393. [The holdings of the quoted cases] illustrate the point that recognizing foreign-law protection for 26 foreign patent agent’s communications with their foreign clients concerning the prosecution of foreign patents will not 27 undermine any compelling policy interest reflected in domestic law governing privilege claims. 28 -9- 13cv139-DMS (MDD) 1 Golden Trade, 143 F.R.D. at 522–23; see also SmithKline Beecham Corp. 2 v. Apotex Corp., No. 98 C 3952, 2000 WL 1310668, at *3 (N.D. Ill. Sep. 3 13, 2000) (stating that the principles of comity and predictability of the 4 attorney–client privilege are violated by the denial of the privilege to 5 foreign patent agents “without reference to either the function they serve 6 in their native system or the expectations created under their local 7 law.”). 8 Despite their title, German patent agents4 perform services similar 9 to patent attorneys in the U.S., receive confidential legal 10 communications from their clients and render legal advice. Because of 11 the attorney–like functions of German patent agents and because of 12 their clients’ expectation of confidentiality, U.S. policy interests will not 13 be violated by recognizing privilege protections under German law for 14 German patent agent’s communications with foreign clients concerning 15 the prosecution of European patents. See SmithKline, 2000 WL 16 1310667, at *3. 17 Fresenius has met its burden to establish the application of 18 German law. See Golden Trade, 143 F.R.D. at 522–23. Accordingly, the 19 Court should apply the privilege law of Germany to determine whether 20 the communications in the Bichlmaier Documents are in fact privileged. 21 B. Scope of German Privilege Law 22 The Court having determined that German law applies, the burden 23 remains on Fresenius, as the party invoking privilege, to prove that 24 German law protects the communications at issue from disclosure. See 25 26 27 4 The title “patent attorney” in Germany is equivalent to “patent agent,” and is awarded on the basis of a technical degree, legal training as 28 an apprentice to another patent agent, training at the Patent Office, and passage of an examination. Golden Trade, 143 F.R.D. at 524. - 10 - 13cv139-DMS (MDD) 1 id. at 523. In support of its privilege claim, Fresenius summarizes the 2 applicable German law as follows: 3 4 5 6 7 8 “German courts may not compel [] a patent attorney or agent to disclose of produce [] communications [with a client], whether written or oral.” ([Astra Aktiebolag v. Andrx Pharm., Inc., 208 F.R.D. 92, 99 (S.D.N.Y. 2002)]); see also Golden Trade v. Lee Apparel Co., 143 F.R.D. 514, 524 [(S.D.N.Y. 1992)] (“German courts may not compel a Patent Attorney to disclose such communications….”); Softview Computer Products Corp. v. Haworth, Inc., 2000 WL 351411, at *11 (S.D.N.Y. 2000) (“German law protects communications between a patent agent and his or her clients.”); McCook Metals L.L.C. v. Alcoa Inc., 192 F.R.D. 242, 257 (N.D. Ill. 2000) (same). 9 (ECF No. 145 at 8). Fresenius also provides as evidence the Declaration 10 of Stefan Weiss, a European patent attorney employed as a Director of 11 Patents at FMC AG. (See ECF No. 146). Weiss asserts that at the time 12 of the communications at issue, Bichlmaier was a “patent manager” at 13 the Patent Department working under his direction, as well as under the 14 direction of other patent attorneys, to “assist in providing and obtaining 15 legal advice.” (Id. at 2). Fresenius thus asserts that Bichlmaier’s 16 communications reflected “legal advice provided by the FMC AG Patent 17 Department.” (ECF No. 145 at 9). 18 19 Legal Standard In Germany, communications with patent agents are afforded 20 confidentiality, even though patent agents are not admitted to practice 21 law. See Willemijn Houdstermaatschaapij BV v. Appolo Computer Inc., 22 707 F. Supp. 1429, 1447 (D. Del. 1989); see also Softview Computer 23 Products Corp. v. Haworth, Inc., No. 97 Civ. 8815 (KMW)(HBP), 2000 24 WL 351411, at *11 (S.D.N.Y.Mar. 31, 2000) (stating that 25 communications with “German patent agents are protected by the 26 attorney–client privilege to the same extent as communications to [U.S.] 27 attorneys.”). Under German law, written and oral communications 28 between a patent attorney or agent and his clients are deemed - 11 - 13cv139-DMS (MDD) 1 confidential, and German courts may not compel disclosure or production 2 of such communications. Astra, 208 F.R.D. at 99; see also Softview, 2000 3 WL 351411, at *11 (stating that “German law protects communications 4 between a patent agent and his or her clients.”); Golden Trade, 143 5 F.R.D. at 524 (stating that “German courts may not compel a [p]atent 6 [a]ttorney to disclose confidential communications and a party may not 7 obtain copies of written communications by pre–trial discovery.” ). 8 Several courts have specifically required that the challenged 9 communications “occur in the rendition of legal services for the client,” in 10 order to afford confidentiality to the challenged communications under 11 German law. See McCook Metals L.L.C. v. Alcoa Inc., 192 F.R.D. 242, 12 257 (N.D. Ill. 2000) (quoting Santrade, Ltd. v. General Electric Co., 150 13 F.R.D. 539, 547 (E.D.N.C. 1993) (stating that German law protects “all 14 communications between a German patent attorney and his client which 15 occur in the rendition of legal services for the client ....”); see also Astra, 16 208 F.R.D. at 98–100 (affording confidentiality to communications 17 between a company’s employees and in-house counsel containing copies 18 of the outside counsel’s communications “providing legal opinions and 19 conveying legal advice.”). 20 Although other relevant decisions do not contain such specific 21 language, they appear to require some nexus to the rendition of legal 22 advice. For example, in Softview, the court refused to extend 23 confidentiality to communications that did not “reflect client 24 confidences,” such as status reports regarding defendant’s European 25 Patent Office (“EPO”) applications, instructions to German patent agent 26 not to obtain a translation of certain documents, counsel’s authorization 27 to German agents to proceed with drafting claims for submission to the 28 EPO, and discussions of expected costs of filing for patent protection in - 12 - 13cv139-DMS (MDD) 1 certain European countries. See Softview, 2000 WL 351411, at *11. In 2 another case, the court upheld the claim of privilege because the patent 3 inventors, the clients of a German patent agent, established that the 4 challenged communications related to the relevant patent applications, 5 that they expected the communications to be privileged, and relied on 6 this privilege in disclosing information to the agent. 2M Asset 7 Management, LLC v. Netmass, Inc., Civ. A. No. 2:06-CV-215, 2007 WL 8 666987, at *3 (E.D. Tex. Feb. 28, 2007). These cases suggest that 9 German law does not offer a blanket confidentiality protection for all 10 communications between patent agents and their clients, and requires 11 that communications relate to the rendition of legal services. 12 13 Discussion Fresenius asserts that “[a]ll of the disputed communications 14 facilitate the solicitation or provision of legal advice, and originate from, 15 or are directed to, Fresenius Patent Department members. The function 16 of the Patent Department is to provide legal advice and, as plainly 17 indicated by [the privilege] log, these documents concern such advice.” 18 (ECF No. 145 at 11). The communications over which Fresenius asserts 19 attorney–client privilege are a series of e–mails Fresenius identified on 20 its October 28, 2013, privilege log. (See ECF No. 145–1 at 2; see also 21 ECF No. 145–1, Ex. A [redacted]). Seven e–mails involved 22 communications between Achleitner and several Fresenius employees. 23 (ECF No. 145–1, Ex. A [redacted]). Bichlmaier was listed as one of the 24 copy recipients on those e–mails. (Id.). Five remaining e–mails involved 25 communications between Bichlmaier and Achleitner. (Id.). The 26 documents at issue thus reflected communications involving Bichlmaier, 27 a German patent manager, and other Fresenius employees, who were 28 the clients of the FMC AG’s Patent Department. (See id.). - 13 - 13cv139-DMS (MDD) 1 Fresenius’ privilege log describes the content of several of the 2 challenged communications as e–mails “reflecting legal advice and 3 analysis” by the Patent Department concerning a “patent search” and 4 “filing a patent application.” (Id.). Fresenius describes the content of 5 the remaining e–mails as “reflecting” and/or “requesting” legal advice 6 and analysis by the Patent Department concerning the following: filing a 7 patent application, the results of a patent search, and the application of 8 a German statute. (Id.). Pursuant to Fresenius’ descriptions on its 9 privilege log, the communications in this case occurred during the 10 rendition of legal services for the client. See McCook Metals L.L.C. v. 11 Alcoa Inc., 192 F.R.D. 242, 257 (N.D. Ill. 2000); Santrade, Ltd. v. General 12 Electric Co., 150 F.R.D. 539, 547 (E.D.N.C. 1993). Accordingly, the 13 Bichlmaier Documents reflected communications between Bichlmaier, a 14 patent manager acting on behalf of the FMC AG’s Patent Department, 15 and the Patent Department’s clients, and concerned the “rendition of 16 legal services.” See id. 17 Fresenius has cited key federal cases that analyze and apply 18 German attorney–client privilege law. (ECF No. 145 at 8). Fresenius 19 has thus provided adequate evidence on the substance of German law in 20 order to establish that it recognizes an evidentiary privilege for 21 communications with German patent agents. See Golden Trade, 143 22 F.R.D. at 523–24. Fresenius also provided Weiss Declaration 23 establishing that Bichlmaier’s functions and communications concerned 24 the rendition of legal services. (See ECF No. 146 at 2). Plaintiffs had an 25 opportunity to proffer their own version of applicable German law, and 26 have not made such a showing. The Court finds that German law may 27 protect the Bichlmaier documents. 28 - 14 - 13cv139-DMS (MDD) 1 Plaintiffs’ Objections 2 1. Bichlmaier Performed a Scientific Function 3 Plaintiffs point out that Bichlmaier was named as an inventor on 4 several Fresenius patent applications filed during his employment as a 5 “patent manager” of the FMC AG’s Patent Department. (ECF No. 145–2 6 at 3) (citing ECF No. 145–1, Exs. L–T, [redacted]). Plaintiffs thus argue 7 that Bichlmaier “performed a scientific function on the Fresenius 8 development team and at least some of his communication were 9 technical in nature.” (ECF No. 145–1 at 3). 10 It is not disputed that Bichlmaier claimed in his October 7, 2009, 11 e–mail to Achleitner, one of the inventors of the patent at issue in this 12 case, to have made an “inventive contribution” to the invention and 13 asked for a five percent share in the invention. (ECF No. 145–1, Ex. D, 14 [redacted]). Bichlmaier’s scientific function on the Fresenius 15 development team should not negate the legal function that he 16 contemporaneously performed. It is well recognized that patent 17 applications are among “the most difficult legal instruments to draw 18 with accuracy.” See Sperry v. Florida, 373 U.S. 379, 383 (1963) (citation 19 omitted). Bichlmaier used his expertise to navigate Fresenius through 20 highly technical scientific and legal aspects of the company’s European 21 patent applications, including the patent application at issue. 22 Consequently, Bichlmaier’s scientific input should not preclude the 23 finding of confidentiality of the communications in which Bichlmaier was 24 rendering legal advice on behalf of the FMC AG’s Patent Department. 25 2. Patent Attorneys are not Identified on Fresenius’ Privilege Log 26 Plaintiffs note Defendant’s assertion that Bichlmaier was a “non- 27 lawyer patent manager” purportedly working under the direction of 28 patent attorneys, but point out that “no patent attorneys are identified - 15 - 13cv139-DMS (MDD) 1 in the disputed communications or privilege log.” (ECF No. 145 at 3–4). 2 In cases where a patent agent is acting under the “instructions” and the 3 advice of an attorney, the communication, even if received or authored 4 by an agent, is protected because the agent is serving to assist the 5 attorney in providing legal services. Golden Trade, 143 F.R.D. at 523. 6 As Fresenius has demonstrated by way of Declaration of Stefan 7 Weiss, a European patent attorney, the primary role of the Patent 8 Department was to “provide intellectual property related advice to 9 various Fresenius entities around the world.” (ECF No. 146 at 2). 10 Bichlmaier “worked at the direction” of the Patent Department’s 11 members, including Weiss, “to assist in providing and obtaining legal 12 advice.” (Id.). Accordingly, the challenged communications were 13 generated on behalf of the Patent Department that included registered 14 patent attorneys, such as Weiss, who shared the responsibility for the 15 prosecution of the patent in question. See Golden Trade, 143 F.R.D. at 16 523. 17 Fresenius has carried its burden of establishing the preliminary 18 facts necessary to support the existence of the attorney–client privilege 19 under German law. See id. at 524. The disputed communications 20 involved Bichlmaier, a German patent manager acting on behalf of FMC 21 AG’s Patent Department, and the Patent Department’s clients. The 22 description of the disputed communications on the privilege log provided 23 by Fresenius suggests that the communications occurred during the 24 rendition of legal services for the clients of the Patent Department. See 25 McCook, 192 F.R.D. at 257. The next step is for the Court to review the 26 documents in camera to determine whether privilege has been properly 27 asserted as to each document. 28 - 16 - 13cv139-DMS (MDD) 1 II. 2 In Camera Review 3 Having reviewed the challenged documents in camera, the Court 4 finds as follows: 5 A. Documents 3 (FRAC0059076-FRAC0059080), 6 6 (FRAC0059089-FRAC0059093), 9 (FRAC0051118-FRAC0051120), 11 7 (FRAC0051141), 12 (FRAC0051155-FRAC0051156), 13 (FRAC00509448 FRAC0050945) and 14 (FRAC0059113-FRAC0059117) are privileged and 9 need not be disclosed. 10 B. Document 10 (FRAC0051170-FRAC0051172) is privileged 11 except for the communications concerning the filing of the opposition to 12 the Abbott patent. The privileged information may be redacted, and the 13 redacted document must be produced. 14 C. Documents 4 (FRAC0051033-FRAC0051035), 5 15 (FRAC0051067-FRAC0051068), 7 (FRAC0051183-FRAC0051184) and 8 16 (FRAC0051229-FRAC0051230) are privileged except for the discussions 17 regarding the scheduling of a project team meeting. The privileged 18 information may be redacted and the redacted documents must be 19 produced. 20 III. 21 Waiver of Privilege 22 Plaintiffs claim that to the extent privilege applies to the 23 Bichlmaier documents, Fresenius waived the privilege because it 24 asserted that it affirmatively designed its NDA Product around 25 Plaintiffs’ ’222 Patent. (ECF No. 145 at 6) (citation omitted). Fresenius 26 contends that it did not waive the privilege. (ECF No. 145 at 11). 27 Having read the positions of the parties, the Court agrees with the 28 position asserted by Fresenius and finds that there has been no waiver. - 17 - 13cv139-DMS (MDD) 1 IV. 2 Conclusion 3 For the foregoing reasons, Plaintiffs’ motion to compel, as 4 presented in the instant joint motion, is DENIED. The Court will not 5 entertain a motion for sanctions as the Court finds that the motion was 6 substantially justified. 7 8 9 IT IS SO ORDERED. DATED: February 3, 2014 10 11 Hon. Mitchell D. Dembin U.S. Magistrate Judge 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 - 18 - 13cv139-DMS (MDD)
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