On October 7, 2013 Magistrate Judge Henry Pitman denied defendant AERO’s motion for reconsideration of his previous oral Order in which he overruled AERO’s privilege objections to deposition questions concerning a patent application, and directed AERO to produce inventors for an additional hour of deposition. The court addressed AERO’s privilege argument that inventors cannot be questioned on a patent application because a patent application is the product of consultation with counsel. The court found that attorney-client privilege only protects communications with counsel and does not extend to the underlying facts communicated to counsel. The court also held that the assertion that attorney-client privilege attaches to a patent application because it is the product of consultation with counsel is “simply wrong.” Finally, the court found that because inventors sign an oath, an application must be seen as an inventor’s own statement, not a privileged communication with counsel.

Case: American Broadcasting Cos., Inc., v. AERO, Inc., Nos. 12 Civ. 1540 (AJN)(HBP) and 12 Civ. 1543 (AJN)(HBP), 2013 BL 274338 (S.D.N.Y. October 7, 2013)