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MINEBEA CO., LTD. v. PAPST

May 13, 2005.

MINEBEA CO., LTD., et al., Plaintiffs,
v.
GEORG PAPST, et al., Defendants.



The opinion of the court was delivered by: PAUL FRIEDMAN, District Judge

ORDER

For the reasons stated in the Memorandum Opinion issued this same day, it is hereby

ORDERED that Papst shall produce any remaining documents which it is withholding under the work product privilege which do not satisfy this Court's previous rulings with respect to what constitutes protected attorney work product; it is

  FURTHER ORDERED that Papst shall immediately produce all documents withheld under the attorney-client privilege dealing with the same subject matter as attorney-client communications which have already been revealed to third parties; "same subject matter" does not extend to communications regarding different patents than those discussed in those communications which were revealed; it is

  FURTHER ORDERED that Papst shall immediately produce all documents withheld under the work product privilege which contain infringement analyses or other work product on the same subject matter as work product sent to adversaries; "same subject matter" does not extend to work product regarding different patents than those included in the work product which was revealed; it is

  FURTHER ORDERED that Papst will immediately produce all foreign language documents for which it originally failed to provide any translation to the Special Master; and it is

  FURTHER ORDERED that Minebea's motion for clarification [678] is GRANTED; Minebea need not produce documents for which it provided a summary or partial translation to the Special Master. Minebea is, however, instructed to make sure that all nonprivileged documents are released in accordance with this Court's previous orders.

  SO ORDERED. MEMORANDUM OPINION

  This matter is before the Court on Papst's remaining objections to the Special Master's Report and Recommendation No. 6 ("R&R 6"). The Court has reviewed R&R 6, Papst's objections, Minebea's opposition and Papst's reply, Minebea's request for clarification of the April 29, 2005 Order and Papst's comments thereto. The majority of Papst's objections to R&R 6 were already resolved in this Court's oral ruling of October 19, 2004. This Opinion addresses Papst's remaining objections to the Special Master's conclusions with respect to (a) waiver of privilege with respect to the subject matter of infringement analyses sent to third parties, (b) foreign language documents, and (c) Minebea's waiver of the joint defense privilege.

  A. Subject Matter Waiver

  The Special Master concluded that Papst's "deliberate and voluntary transmittal to potential licensees of infringement analyses, reflecting both technical and legal opinions, waived whatever privilege or work product protection" might otherwise have attached to such analyses as well as whatever privilege might otherwise have attached to communications between Papst and its counsel on the subject matter of the transmittal. See R&R 6 at 71. The Special Master further concluded that any privilege that might otherwise have attached to counsel's advice to Papst regarding infringement by Minebea was waived when Mr. Schnayer sent to Minebea a copy of Mr. Schnayer's November 10, 1993 "analysis of some of the Papst Licensing patents which we believe cover Minebea floppy disk drives." Id. The Special Master concluded that Papst should produce all documents relating to "any Papst consideration or analysis of Minebea's infringements whether actual, potential, or otherwise — considered by counsel for Papst and by Papst representatives." Id. at 72. The Special Master recommended that Papst be ordered to produce "each withheld document relating to the subject matter of any communication between Papst and a third party, including Minebea, in which a Papst analysis or opinion of any kind as to the scope or infringement of any Papst patent was disclosed or discussed." R&R 6 at 80.

  In general, the Court agrees with the Special Master's recommendation, but believes that clarification is warranted concerning the scope of any waiver. The Court has reviewed the documents submitted by Minebea in support of its argument and reviewed by the Special Master and has concluded that the waiver suggested by R&R 6 is overly broad.

  1. Attorney-Client Privilege

  "[I]f a client wishes to preserve the privilege, it must treat the confidentiality of attorney-client communications like jewels — if not crown jewels." In Re Sealed Case, 877 F.2d 976, 980 (D.C. Cir. 1989). Because of this principle, a waiver of the privilege in an attorney-client communication, even an inadvertent one, "extends to all other communications relating to the same subject matter." Id. at 980-81 (quotations omitted). Minebea has submitted to the Court two letters — one from Mr. Schnayer to Mr. Naka and one from Mr. Papst to Mr. Mizukami — which attached letters from Mr. Schnayer to Mr. Papst. Papst's decision to send Minebea copies of these otherwise privileged ...


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