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ODONE v. CRODA INT'L PLC

January 15, 1997

AUGUSTO ODONE, Plaintiff,
v.
CRODA INTERNATIONAL PLC., Defendant.



The opinion of the court was delivered by: ATTRIDGE

 Background

 Pending before the Court in the above-captioned patient infringement action is a motion [ # 31] filed on September 25, 1996, pursuant to Fed. R. Civ. P 37(a), by the plaintiff, Mr. Augusto Odone, to compel the defendant, Croda International, to release documents exchanged between the defendant and its British patent agent, C.P. Wain *fn1" , "evidencing communications between [Mr. Wain] and Defendant relating to the issue of whether to name Mr. Odone as an inventor in the original [British] patent application filings". [Pl's mot. at 2; Def's opp. at 3]. The plaintiff asserts that these correspondence are the subject of plaintiff's interrogatory no. 8, served October 27, 1995:

 
All documents and things regarding any application or registration by or on behalf of Defendant to patent, in any jurisdiction, any method for using any compound or composition comprising LCFAs.

 [Pl's mot., exh. A at 10 & cert. of serv.], to which the defendant responded on June 5, 1996:

 
If reasonably limited as to time, defendant will produce such documents where they are maintained.

 [Pl's reply, exh. A at 5 & cert. of serv.]. The plaintiff argues that during the September 23, 1996, deposition the patent agent inappropriately asserted attorney-client privilege and "stated that documents evidencing communications between he and Defendant relating to the issue of whether to name Mr. Odone as an inventor in the original patent application filings exist but that they had been purged from the files which were produced to Plaintiff." [Pl's mot. at 2]. The defendant, in its October 10, 1996, opposition to the motion, asserts that the communications are indeed privileged, though not based on the federal common law attorney-client privilege, but rather pursuant to section 280 of the British Copyright, Designs and Patents Act of 1988, which accords attorney-client privileges to communications between patent agents and their clients. *fn2" [Def's opp. at 3 & exh. B at 1]. The defendant argues that, in the interest of comity and because the communications do not "touch base" with the United States, the British patent agent "attorney client" privilege should be honored with regard to communications between the deponent and the defendant. [Def's opp. at 5]. The plaintiff, in a reply filed October 22, 1996, disputes the defendant's assertion that the communications do not touch base in this country and asserts that the defendant "has made no showing as to the substance of the communications", thus failing to satisfy its burden of production. [Pl's reply at 3].

 Analysis

 Attorney-client privilege "is an exception...to the fundamental principle that discovery should be liberal and broad in furtherance of the search for truth." Western Trails, Inc. v. Camp Coast to Coast, Inc., 139 F.R.D. 4, 8 (D.D.C. 1991). "While the [attorney-client] privilege serves a very important purpose...it may nevertheless be an obstacle to the investigation of the truth [and therefore]...ought to be 'strictly confined within the narrowest possible limits consistent with the logic of its principle.'" In re Ampicillin Antitrust Litigation, 81 F.R.D. 377, 384 (D.D.C. 1978)(quoting 8 Wigmore, Evidence § 2291 (McNaughton rev. 1961); accord John Labatt Ltd. v. Molson Breweries, 898 F. Supp. 471, 473 (E.D. Mich. 1995). The party asserting attorney-client privilege bears the burden of proving the applicability of the privilege by way of affidavits or other competent evidence. Saxholm As v. Dynal, Inc., 164 F.R.D. 331, 333 (E.D.N.Y. 1996)(citing, e.g., Stryker Corp. v. Intermedics Orthopedics, Inc., 145 F.R.D. 298, 301 (E.D.N.Y. 1992)); John Labatt Ltd, 898 F. Supp. at 473. "The proponent must offer more than conclusory statements." John Labatt Ltd., 898 F. Supp. at 477 (citing Western Trails, 139 F.R.D. at 11).

 "International comity refers to the spirit of cooperation in which a domestic tribunal decides cases touching on the interests of other sovereign states... 'Comity,' in the legal sense, is neither a matter of absolute obligation, on the one hand, nor of mere courtesy and good will, upon the other. But it is the recognition which one nation allows within its territory to the legislative, executive or judicial acts of another nation, having due regard both to international duty and convenience, and to the rights of its own citizens or of other persons who are under the protection of its laws." In re Honda Am. Motor Co., Inc., 168 F.R.D. 535, 535 (D. Md. 1996)(quoting Hilton v. Guyot, 159 U.S. 113, 163-64, 40 L. Ed. 95, 16 S. Ct. 139 (1895)). "Where the American federal district court has in personam jurisdiction over a foreign national, corporate entity or an individual, it is not required...to defer to international comity... The court can, and should, mandate compliance by a foreign party with Rules 26, 33, 34 and 36 of the Federal Rules of Civil Procedure for the giving of oral depositions, answering interrogatories, the producing of documents and records, and responding to requests for admissions." Work v. Bier, 106 F.R.D. 45, 55-56 (D.D.C. 1985).

 Federal courts, in certain circumstances, have given deference to foreign statutes and applied the principle of comity if the foreign law is not contrary to the public policy of the forum. Duplan Corp. v. Deering Milliken, Inc., 397 F. Supp. 1146, 1169 (D.S.C. 1974). For example, in In re Ampicillin Antitrust Litigation, this Court extended the attorney-client privilege pursuant to British Civil Evidence Act of 1968 to a British patent agent's communications that related solely to patent activities outside the United States. 81 F.R.D. at 391; see Detection Sys., Inc. v. Pittway Corp., 96 F.R.D. 152, 155-156 (W.D.N.Y. 1982). "A similar approach concerning British and French patent agent communications 'relating to matters solely involving France or Great Britain' was adopted by the court in Duplan Corp.... and as a result, these matters were not subject to discovery in the United States. Detection Sys., 96 F.R.D. at 155-156 (quoting Duplan Corp., 397 F. Supp. at 1169-11 70) (emphasis added). The common denominator of the cases in which federal courts afford comity to foreign statutes governing the privileges of patent agents is that the communications related solely to activities outside the United States. Chubb Integrated Sys. Ltd. v. National Bank of Wash., 103 F.R.D. 52, 65 (D.D.C. 1984)(citing Duplan Corp., 397 F. Supp. at 1169 and In re Ampicillin Antitrust Litigation, 81 F.R.D. at 391). But where the patent application involves persons and activities related to the United States, that is "where the patent agent's communications 'touch base' with the United States, U.S. law applies." Chubb Integrated Sys. Ltd., 103 F.R.D. at 65; Stryker Corp., 145 F.R.D. at 305. The distinction also is noted in Willemijn Houdstermaatschaapij Bv v. Apollo Computer Inc., 707 F. Supp. 1429, 1444-1445 (D. Del. 1989) in its discussion of Chubb Integrated Sys.:

 
While [the patent agent's activities] may have involved interaction with citizens of other European countries, it appears that these duties never touched base with the United States. Thus, even though [the patent agent's] activities did not relate solely to his native (British) patent office, there is no apparent justification for applying United States privilege law to the withheld documents relating to those activities, since those documents have not relation to this country at all.

 Willemijn Houdstermaatschaapij Bv, 707 F. Supp. at 1445 (citing Chubb Integrated Sys., 103 F.R.D. at 65.).

 It is incumbent on this Court, therefore, to determine whether the withheld communications related to the prosecution of the original patent in Great Britain "touch base" in the United States. The defendant, which has the burden of establishing that the privilege applies in the instant action, relies entirely on conclusory assertions that the British statute is applicable. The defendant argues that "there is no dispute that what Plaintiff is seeking goes to the very heart of the privilege enjoyed by Defendant in the United Kingdom as well as in the United States - free and open discussion with their paatent [sic] agent without fear of disclosure to others." [Def's opp. at 4] The defendant also asserts that the "plaintiff is only seeking communications in connection with the foreign filed applications which do not "touch base" with the United States." [Def's opp. at 5](emphasis in original). Further, the defendant has submitted no affidavits or other competent evidence establishing the applicability of the patent agent privilege; the defendant simply asserts "that the documents here ...


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