Chief Judge Patti Saris of the District of Massachusetts has issued a significant opinion on privilege waivers in theTrustees of Boston University v. Everlight Electronicscase. The opinion concerned a deposition in the case where the deposition witness apparently disclosed a little too much.
The issue arose out of a line of questioning common in depositions in intellectual property cases. Defendant Epistar’s representative was asked questions regarding any non-infringement or invalidity opinions obtained by Epistar as to the patent in suit. After conferring with her counsel as to whether the question implicated privileged information, Epistar’s representative admitted that Epistar had prepared an analysis of its products, forwarded that analysis to their attorneys at the Finnegan law firm, and received an oral opinion from them that the products did not infringe. Believing that Epistar had thereby waived privilege as to that opinion and its grounds, BU moved to compel Epistar to produce all documents and communications regarding infringement and invalidity opinions issued by Finnegan.
The Court, in a well thought out opinion, took a careful look at First Circuit law on the issue, and found little authority within the Circuit governing partial disclosures of attorney-client communications. After surveying case law from other circuits, the Court determined that Epistar’s admissions constituted a waiver. In the Court’s view, by describing what materials were communicated to Finnegan, Epistar had gone beyond disclosing a bare conclusion about infringement, instead disclosing the substance and content of its request for legal advice.
In reaching this conclusion, the Court found the circumstances of the disclosure significant – Epistar made the admission in the presence of an attorney, and after speaking with the attorney about how much could be disclosed. Because Epistar was not asserting advice of counsel as a defense, however, the Court declined to find that subject matter waiver applied, compelling only the production of the materials Epistar provided to Finnegan so that Finnegan could prepare its opinion.
Attorneys and clients alike who regularly deal with depositions or other discovery matters should take note of this opinion. It provides a helpful guide on the limits of what information may be disclosed before putting their attorney-client privilege at risk.
The case is Trustees of Boston University v. Everlight Electronics Co., Ltd., et al., No. 12-11935-PBS, in the District of Massachusetts is available here.