The opinion of the court was delivered by: John M. Facciola U.S. Magistrate Judge
This case was referred to me for resolution of several motions, including Merial Limited and Merial SAS' Omnibus Motion to Compel Plaintiff Intervet Inc. To Respond to Discovery ("Omnibus Mot.") [#127]. I resolved the majority of the issues in that motion in a Memorandum Opinion [#196] that I issued on September 3, 2008, but as to some matters I denied Merial's request without prejudice to Merial's renewing their motions at a later time. This is one of those motions.
Merial and Intervet are companies that create animal health products, including vaccinations. At issue in this litigation is a vaccine called Circumvent, which is designed to prevent Porcine Circovirus, a virus that causes post-weaning multisystemic waste in young pigs. Merial Limited holds a patent entitled Porcine Circovirus Vaccine and Diagnostic Reagents, U.S. Patent No. 6,368,601 ("'601 patent"). Merial Limited initially brought suit against Intervet in the Northern District of Georgia alleging that Intervet infringed Merial's '601 patent when it created and marketed Circumvent. Intervet moved to dismiss that action and filed this suit seeking a declaration that it did not infringe, and that Merial's patent was invalid and unenforceable.
Merial served various discovery requests on Intervet including interrogatories and deposition notices pursuant to Federal Rule of Civil Procedure 30(b)(6). At issue now are the requests that seek information about when and how Intervet became aware of the '601 patent. Specifically, Merial argues that Intervet's response to Interrogatory No. 6 is insufficient and also argues that Intervet should designate a witness or witnesses to testify on the company's behalf regarding that issue. Intervet argues that the request is overbroad, vague, unduly burdensome, irrelevant and privileged. Merial also argues that Intervet has improperly withheld discovery on the issue of willfulness, and Intervet responded that it intended to file a motion to bifurcate, but in any event, it had given all of its non-privileged information to Merial. The parties also disagree as to the sufficiency of Intervet's responses to Merial's 30(b)(6) notices.
Interrogatory No. 6 asks Intervet to "[i]dentify the date(s) on which Intervet first became aware of the '601 patent, identify the person(s) who became aware of the '601 patent, and explain the circumstances under which the '601 patent came to Intervet's attention." Exhibit 8 to Omnibus Mot. at 14. Intervet responded by saying that Marieke van Gent, a European patent attorney and employee of Intervet's parent company, had the most knowledge about the circumstances under which Intervet became aware of Merial's patent, as well as who and when. Intervet also said that the company was aware of the patent by August 2002. Anything else, it claimed, was protected by the attorney-client privilege.
I disagree that the interrogatory is overbroad and unduly burdensome because it clearly demands when and how Merial learned of the patent. To limit any possible overbreadth, I will narrow the identification of persons to those employees who became aware of the patent when Intervet first became aware of the 601 patent to alleviate any vagueness. Thus, the interrogatory would read, in pertinent part: "[I]dentify the person(s) who became aware of the patent when Intervet first became aware of the patent."
Next, Intervet argues that the interrogatory seeks information that is irrelevant and thus not discoverable. Information is relevant if it is likely to make a material fact more or less likely. Fed. R. Evid. 401. If Merial only claimed that Intervet infringed the patent, it would not necessarily matter if Intervet was aware of the patent because infringement is a strict liability offense. See BMC Res., Inc. v. Paymentech, LP, 498 F.3d 1373, 1381 (Fed. Cir. 2007). But, Merial alleges that Intervet willfully infringed the patent, and that Intervet induced others to infringe as well. These both require proof of intent to infringe, which necessarily requires that Intervet be familiar with the patent. Id. "To establish willful infringement, a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent . . . If this threshold objective standard is satisfied, the patentee must also demonstrate that this objectively-defined risk . . . was either known or so obvious that it should have been known to the accused infringer." In re Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007) (en banc), cert denied, 128 S.Ct. 1445 (2008). Everything hinges on when Intervet knew about Merial's patent rights and what it did after it found out. See Imonex Servs. Inc. v. W.H. Munzprufer Dietmar Trenner, 408 F.3d 1374, 1377 (Fed. Cir. 2005). "Actual notice of another's patent rights triggers an affirmative duty of due care." Id. (citing Rolls-Royce Ltd. v. GTE Valeron Corp., 800 F.2d 1101, 1109 (Fed. Cir. 1986)). Accordingly, information about how and when Intervet discovered Merial's patent, and what happened thereafter is highly relevant to the issues in this case.
Finally, Intervet argues that information responsive to the interrogatory request is covered by the attorney-client privilege. The attorney-client privilege protects confidential communications between a client and her lawyer that occur for the purpose of giving legal advice, but facts do not become privileged just because they are communicated to or by a lawyer. See Upjohn Co. v. United States, 449 U.S. 383, 395-96 (1981). When asserting privilege, the proponent cannot rely on blanket assertions, but must articulate facts from which the court can determine the existence of the privilege. In re Lindsey, 158 F.3d 1263, 1270-71 (D.C. Cir. 1998). Further, there is a distinction between communications made to and by attorneys. Cobell v. Norton, 377 F. Supp. 2d 4, 10 (D.D.C. 2005), vacated on other grounds, 455 F.3d 301 (2006), cert. denied, 549 U.S. 1317 (2007). "In the case of attorney-to-client communications, attorney-client privilege may only properly be invoked if the communications rest on confidential information obtained from the client." Id. (internal quotations omitted).
Intervet has only told Merial that the company became aware of the '601 patent by August 2002 and that van Gent is the most knowledgeable person on the circumstances. Intervet has not given any basis for its privilege claim other than van Gent is a patent attorney. Presumably Intervet obtained advice regarding the '601 patent and its own work with Porcine Circoviruses from van Gent and is now claiming that advice is privileged. However, Intervet fails to distinguish between the confidential communications between van Gent and Intervet, and the background facts about what was going on at Intervet during that crucial time period. Any advice sought from van Gent that would tend to reveal a confidential communication is properly withheld as privileged. What van Gent knew as an objective fact is not privileged merely because it happened that her legal advice was ultimately sought about that fact.
Also, I cannot see any reason why the identity of the person or group of people who first came across the '601 patent or the corresponding time frame can be withheld on the basis of privilege. If van Gent discovered the patent and notified Intervet, that discovery would not be a confidential piece of information obtained from the client. If another Intervet employee who was not an attorney discovered the patent, and that discovery lead Intervet to seek legal advice, the facts about the discovery are not in themselves protected by the attorney-client privilege merely because Intervet sought advice about the discovered fact. To hold otherwise would mean that an individual or corporation could hide discoverable information because she or it asked advice about that information. That is not the law; the focus of the privilege is the communication, in confidence, of a fact -- meaning the attorney and the client do not have to reveal to others what they discuss in the process of securing and rendering legal advice. Ascertaining from the client that the fact existed does not yield in itself any communication, let alone a confidential one, about that fact.
Thus, Intervet must, at a minimum, supplement Interrogatory No. 6 to state the name(s) of the person(s) who first discovered the '601 patent, and to give the dates when these discoveries were made. Intervet must also describe the circumstances under which the discovery was made, including, if applicable, that the patent was discovered by an attorney for Intervet. If there is information that is privileged under the principles explained in this Opinion, then Intervet must clearly state the basis for the privilege in a ...