A recent Wisconsin district-court decision clarified and enforced limits on claims of attorney-client privilege and attorney-work-product privilege for corporate communications. Noting that "talking about talking to their lawyers" did not qualify as privileged communications, the U.S. District Court for the Western District of Wisconsin granted a motion to compel production of four emails sent between four nonattorney executives in two tightly intertwined companies. The court also directed the losing party to pay the reasonable costs of the prevailing party.

In Out RAGE, LLC v. New Archery Products Corp.,1 the district court examined four emails, which Out RAGE claimed were privileged from disclosure because they revealed a strategic discussion with a partner company about the best timing for asserting a patent-infringement claim against a manufacturer not involved in the current suit. Out RAGE maintained its claims of privilege, the court noted, even though "no attorney was involved in the discussion, no attorney had provided any input, and in fact, no attorney even had been contacted yet."

The court took a dim view of Out RAGE's "unyielding defense" of the four emails in motions practice, calling it "incorrect at every step." In analyzing Out RAGE's privilege claims on the basis of attorney-client communications, the court found that those claims failed to satisfy the basic test requiring communication between an attorney and a client for the purpose of obtaining legal advice. The court observed that "Out RAGE's position reflects a Pavlovian reaction that any communication in which the word 'lawyer' or 'attorney' is mentioned is the bell that causes the dog named Privilege to salivate. What is entitled to protection is really limited to the communication of confidences from client to lawyer . . . in a client-authored document or a lawyer-authored response."

Neither did the emails satisfy the requirements of the attorney-work-product privilege, the court found. "The work product doctrine is designed to serve dual purposes: (1) to protect an attorney's thought processes and mental impressions against disclosure; and (2) to limit the circumstances in which attorneys may piggyback on the fact-finding investigation of their more diligent counterparts." According to the court, nothing in the disputed emails qualified for protection under these standards, as they did not reflect the work or mental impressions of any attorney.

As a result of its analysis, the district court ordered production of the four emails and ordered Out RAGE to pay its opponent’s reasonable expenses incurred in filing and pursuing the motion.

Strategy and Conclusion

This short—but illustrative—decision highlights the importance of understanding the protections as well as the limitations of both the attorney-client privilege and the attorney-work-product immunity doctrine.

It serves as a good reminder for companies on either side of patent litigation to make sure executives and other employees recognize distinctions between seemingly similar communications and the differences in whether such communications are protected from discovery by the courts: Business discussions are not protected from discovery; legal strategy discussions without an attorney may not be protected from discovery in some instances; and legal strategy discussions involving an attorney may more likely be protected from discovery.

This case also serves as a good reminder of how litigation strategy can be made public through discovery in other, unrelated litigations when an attorney is not involved in the discussions.