In Prowess, Inc. v. Raysearch Laboratories AB, No. 11-1357 (D. Md. Feb. 11, 2013), the District Court of Maryland held that the owner of patents could not assert attorney-client privilege over communications with the patent inventors where there was no evidence that an attorney was involved in the communications or that the communications occurred at the request of counsel. In this patent infringement case, defendants deposed the third party inventors and the CEO of the plaintiff. Asserting attorney-client privilege, work product protection, and the common interest privilege, plaintiff’s counsel broadly instructed the witnesses not to answer questions relating to communications between the inventors and plaintiff or among the inventors, or to plaintiff’s and the inventor’s investigations of and opinions relating to validity and infringement. The court rejected plaintiff’s assertions of privilege. The court found that plaintiff failed to establish the key elements of privilege: plaintiff failed to establish that counsel was involved in the communications, or at the very least that the communications were conducted for the purpose of providing information to counsel. In fact, plaintiff failed to provide any evidence that the conversations were ever transmitted to counsel. Plaintiff also failed to demonstrate that the communications with the inventors were needed to facilitate communications between plaintiff and its attorneys. The inventors, therefore, could not be pulled into the privileged circle as agents of counsel or as agents of the plaintiff for the purposes of the attorney-client privilege. Plaintiff’s argument that the common interest doctrine protected the communications also failed. A common interest agreement was not signed until after the communications occurred, and the agreement apparently did not state when the common interest arrangement began. Plaintiff also failed to demonstrate that the inventors and plaintiff had common legal, rather than business, interests.