The opinion of the court was delivered by: PAUL FRIEDMAN, District Judge
MEMORANDUM OPINION AND ORDER
Both Minebea and Papst have filed objections to the Special
Master's Report and Recommendation No. 7. Report and
Recommendation No. 7 was issued in response to Minebea's motion
for an order deeming certain facts as established and precluding
Papst from introducing evidence on certain designated matters.
Minebea argued that preclusion was warranted because of Papst's
egregious conduct with respect to discovery in this matter. See
Report and Recommendation No. 7 ("R&R 7") at 3. Specifically,
Minebea criticized the testimony and conduct of Georg Papst,
Jerold Schnayer and Richard Smith and their alleged
"stonewalling" during depositions, see id., with respect to
(a) the witnesses' purportedly faulty recollections; (b) the
improper invocation of attorney-client privilege and work product
protections, and (c) conferences between counsel and witnesses
during depositions. See id.*fn1
The Special Master recommended that Minebea's motion be denied
with respect to the specific relief sought. Instead, he
recommended that the Court enter an Order:
1. Compelling Papst's lay witnesses and its counsel,
including Messrs. Jerold Schnayer and Richard Smith,
to respond to questions such as those set out in
Exhibits 6-11 to the motion.
2. Precluding Papst from relying on, and counsel from
tendering an argument to this Court based on, (a) any
specific information or fact as to which any Papst
counsel or lay witness has first-hand knowledge which
the witness has refused on grounds of privilege or
work product protection to reveal on deposition,
unless the specific information is available from
another competent and unrestricted source, and (b)
any of the subjects in (1), if henceforth counsel or
a lay witness refuses to testify as prescribed in
Section (1) or (3).
3. Permitting Minebea, if it so elects to re-examine
Messers. Georg Papst, Schnayer and Smith on any
subject as to which the witness has heretofore
refused to testify on privilege or work product
protection grounds. The witness shall respond to any
question set out in Exhibits 6-11 which the witness
has heretofore refused to answer on either or both of
See R&R 7 at 18-19.
Since the issuance of Report and Recommendation No. 7, the
parties have conducted further depositions. As a result, Minebea
filed a Supplementation Regarding its Objections to Report and
Recommendation No. 7 which alleged further bad behavior by Papst
during the depositions of attorneys Jeffrey Salmon and A. Sidney
Katz as well as the continued depositions of attorneys Jerold
Schnayer and Richard Smith. See Supplementation Regarding its
Objections to Report and Recommendation No. 7 ("Minebea
Supplementation") at 2. The Court heard oral argument on Papst's
motion to reject the Special Master's Report and Recommendation
No. 7 on October 18, 2004.
The Court agrees, for the reasons stated in Report and
Recommendation No. 7, with the Special Master's ruling refusing
to grant the specific relief requested by Minebea. Specifically,
the Special Master declined to deem as established the facts that
there are no exceptions to Papst's internal numbering system and
that Minebea's motors have no substantial commercially viable use
except in hard disk drives. The Court also agrees that Minebea's
request for an order precluding Papst from introducing evidence
on certain issues should be denied without prejudice. The Court
agrees that the extreme sanction of preclusion, particularly on
the broad range of topics suggested by Minebea, would be
premature.*fn2 The time to raise issues of preclusion is
after the close of discovery. The Court therefore will reject
Minebea's objections to Report and Recommendation No. 7.
Papst has raised a number of objections to the Special Master's
conclusions, which the Court will aggregate into several groups:
(a) Papst patent prosecutions and license negotiations were in
anticipation of litigation and counsel's past mental impressions
in connection with them therefore are protected; (b) current
mental impressions and "personal opinions" of counsel for Papst
are not discoverable; (c) overly broad questions should not be
answered if they might elicit privileged material; and (d) the
concerns related to Georg Papst's testimony were resolved in
A. Patent Prosecutions and License Negotiations
The Court notes that since its oral rulings involving privilege
and work product on October 19, 2004, Papst has produced over 90
percent of the documents it previously had withheld as
privileged. See Notice of Papst's Compliance with Order Dated
October 21, 2004. The parties are reminded that these same oral
rulings have equal force in connection with Papst's conduct
during depositions. As this Court already has ruled, the
privilege law as stated by the United States Court of Appeals for
the District of Columbia Circuit applies in this case. See
Transcript of October 19, 2004 Motions Hearing ("Oct. 19 Tr.") at
63. Papst is in the business of licensing patents, and license
negotiations are not, by definition, in anticipation of
litigation and are not, without more, protected by the work
product privilege. See id. at 68. Similarly, the prosecution
of patents is not generally protected by the work product
privilege. See id. The Court noted in its rulings that Mr.
Schnayer frequently wore a "businessman's hat" in this case and
"if a lawyer is wearing a businessman's hat, there's a
presumption that it's not privileged by attorney-client privilege
or by work product." See id. at 70.
Although it should not be necessary for the Court again to
address the issue of what does and does not qualify as "in
anticipation of litigation," the Court will reiterate here that
"[w]hile litigation need not be imminent or certain in order to
satisfy the anticipation-of-litigation prong of the test, this
circuit has held that `at the very least some articulable claim,
likely to lead to litigation, must have arisen,' such that
litigation was `fairly foreseeable at the time' the materials
were prepared." Hertzberg v. Veneman, 273 F. Supp. 2d 67, 75
(quoting Coastal States Gas Corp. v. Department of Energy,
617 F.2d 854, 865 (D.C. Cir. 1980).*fn3 Counsel is well aware of
what was and was not generated "in anticipation of litigation,"
and overly broad claims of privilege will not be tolerated.
Materials generated during the course of regular business and the
provision of business or technical advice are not protected.
See Hertzberg v. Veneman, 273 F. Supp. 2d at 78. Furthermore,
while protected work product can, sometimes, be generated by
non-attorneys, it cannot be created by a client, such as Mr.
Georg Papst. See Oct. 19 Tr. at 71. The Court expects that
counsel will rigorously adhere to the Court's previous rulings
and will exercise good, professional, lawyer-like judgment in all
future depositions and other discovery.
B. Mental Impressions and "Personal Opinions"
The parties are reminded that all witnesses have to testify as
to facts and understandings, regardless of the source from which
those facts were learned. See Oct. 19 Tr. at 71; Minebea Co.
v. Georg Papst, Civ. No. 97-590, February 4, 2005 Opinion at 4.
The Court does agree that it is not appropriate for Minebea to
ask Papst's counsel to provide their interpretation of a legal
term, for example, by asking "What is a field of use license?"
Likewise, counsel's current mental impressions of agreements,
etc. are formed in connection with the instant litigation and are
This is in clear contrast to mental impressions formed by
Papst's counsel during past license negotiations and patent
prosecutions, which are not work product. As the Special Master
noted, "Papst's lead trial counsel has often served as
negotiator, elucidator or interpreter
with third parties as to business matters, well beyond the
function of advising counsel in an attorney-client relationship."
R&R 7 at 14. Thus, the Special Master correctly concluded,
"Papst's trial counsel possesses relevant information as to
important contemporaneous activities relating to Papst's
agreements, the scope of Papst's patents, and the scope of
Minebea's rights under Papst's patents." Id. at 15. It is
wholly inappropriate for Papst's counsel to refuse to answer
questions based upon any of their past mental impressions that
were formed "in the ordinary course of business" or in the course
of negotiations. See Oct. 19 Tr. at 67. Past mental impressions
are protected only to the extent that they were formed in
anticipation of thenimminent litigation.*fn4 "Papst's
business is not anticipating litigation." Oct. 19 Tr. at 69.
Although it sometimes may be difficult for a witness to discern
between "past" and "current" mental impressions, the witness and
his counsel must make a good faith effort to do so and cannot use
this rationale to be evasive or disingenuous, as Papst and its
witnesses consistently have been. The argument that the prior
mental impressions of Mr. ...