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HILLERICH & BRADSBY CO. v. MACKAY

October 29, 1998

HILLERICH & BRADSBY CO., Plaintiff,
v.
JACK W. MacKAY, et al., Defendants.



The opinion of the court was delivered by: URBINA

MEMORANDUM ORDER

 Denying Plaintiff's Motion to Quash Subpoena Duces Tecum

 I. Introduction

 This matter comes before the court upon the plaintiff's motion to quash a subpoena duces tecum served upon its attorney, Harvey B. Jacobson, Jr., Esq., by the defendants. The discovery dispute centers on whether the defendants had an attorney-client relationship with Mr. Jacobson, who also represented the plaintiff. The defendants' subpoena duces tecum requested documents relating to a patent application Mr. Jacobson prepared, which listed the defendants as co-inventors. *fn1"

 The plaintiff, Hillerich & Bradsby Co. ("H&B"), based its motion to quash the subpoena duces tecum on two grounds: (1) the attorney-client privilege makes the documents privileged, and (2) the documents deserve trade secret protection. Two of the seven defendants, Kaye MacKay and J.W. ("Tripp") MacKay, III (the "MacKays"), filed an opposition to the motion to quash.

 After considering the parties' submissions and the relevant law, the court concludes the MacKays and H&B became joint clients of Mr. Jacobson with respect to the pending patent application. As joint clients the MacKays are entitled to Mr. Jacobson's files and have demonstrated a need for their attorney's files. Furthermore, the protective order entered in the Texas case will safeguard the confidentiality of the information in Mr. Jacobson's files. Accordingly, the court denies H&B's motion to quash the subpoena duces tecum.

 II. Background

 In 1990 H&B, a manufacturer of sporting goods and equipment, hired inventor Jack MacKay, Jr. to act as a consultant. *fn2" (Pl.'s Mem. in Supp. of Mot. to Quash at 1.) Jack MacKay's work for H&B included research and development of new equipment. (Pl.'s Mem. in Supp. of Mot. to Quash at 1.) Pursuant to a consulting agreement, any invention, patent application, or patent developed by Jack MacKay, individually or with others, became the sole property of H&B. (Pl.'s Mem. in Supp. of Mot. to Quash at 1.) The consulting agreement required that all such patent applications and patents be assigned to H&B. (Pl.'s Mem. in Supp. of Mot. to Quash at 1.) The consulting agreement further directed Jack MacKay to make patent applications through H&B's counsel. Mr. Jacobson. (Pl.'s Mem. in Supp. of Mot. to Quash at 1-2.)

 In July 1993, Jack MacKay contacted Mr. Jacobson to prepare and file a patent application directed to a unique, full barrel aluminum bat and cap he had invented. (Defs.' Resp. Ex. 2 at p. 1.) Mr. Jacobson rendered legal advice concerning the patent matter to Jack MacKay. (Defs.' Resp. Ex. 2 at p. 1.) Also, at Jack MacKay's instruction, Mr. Jacobson subsequently prepared and filed a patent application, which ultimately issued, and several applications to register trademarks in the United States and foreign patent offices. (Defs.' Resp. Ex. 2 at p. 1.) In the United States Patent Commission patent application, the Declaration and Power of Attorney form listed Mr. Jacobson as the attorney for Jack MacKay and the MacKays, who also shared credit as inventors. (Defs.' Resp. Ex. 1.) Mr. Jacobson invoiced H&B for these services. (Id. at p. 2.)

 In the Eastern District of Texas suit, H&B seeks a declaratory judgment that the MacKays possess no ownership rights in a pending patent application. (Defs.' Resp. at 1.) The MacKays issued a subpoena in this court seeking to compel the production of documents and things in the possession of Mr. Jacobson "comprising, referring or relating to the actual or potential prosecution of any patent which names Kaye MacKay and/or Jack W. (Tripp) MacKay, III as inventor(s)," as well as "all billing statements prepared for or sent to Hillerich & Bradsby Company ("H&B") concerning services rendered in connection with the actual or potential prosecution of any patent which names Kaye MacKay and/or Jack W. (Tripp) MacKay, III as inventor(s)," and "documents sufficient to evidence any payments by H&B of such billing statements." (Pl.'s Mem. in Supp. of Mot. to Quash. at 2; Pl.'s Mem. in Supp. of Mot. to Quash. Ex. 6 at p. 4.) H&B, in this district, filed a motion to quash.

 Additionally, in the Texas proceeding the MacKays requested Mr. Jacobson give a deposition, and H&B filed a motion to quash the deposition before the District Court for Eastern District of Texas. (Defs.' Supp. Resp. at 2.) A magistrate judge heard the motion and, on September 23, 1998, denied H&B's motion to quash. (Id.) The magistrate judge, however, limited the deposition to "patent ownership issues in the litigation." (Defs.' Supp. Resp. Ex. 1.)

 III. Discussion

 A. Attorney-Client Relationship

 Courts have long recognized the existence of the attorney-client relationship among clients and attorneys allied in a common legal cause. In re Regents of the Univ. of Cal., 101 F.3d 1386 (Fed. Cir. 1996). Typically, parties jointly developing a patent with an attorney have a "common legal interest" in obtaining the greatest protection and in exploiting the patents. Id. at 1389. The parties thereby develop a "community of interest," which establishes a joint attorney-client relationship among them and the attorney. See id.; see also SCM Corp. v. Xerox Corp., 70 F.R.D. 508, 514 (D. Conn. 1976) (finding the existence of the attorney-client privilege regardless of whether the legal advice focused on pending litigation or on developing a patent program that ...


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