Eastern District of Texas Federal Court Practice

Capital habeas petitioner wins en banc hearing

Last month I noted that one of the lesser-publicized cases heard by the Fifth Circuit en banc last month was the habeas case brought by Texas death row inmate Eric Lynn Moore.  Late last week, the Fifth Circuit sitting en banc sided with Moore, as reported by John Council of Texas Lawyer here.

Ixnay on the Gamesmanship and Chicanery: Plaintiff's Motion for Leave to Amend Answer & Serve Invalidity Contentions Against Intervenor After Deadlines Denied

MASS Engineered Design, Inc. v. Ergotron, Inc., --- F.Supp.2d ----, 2008 WL 2223036(E.D.Tex. May 30, 2008) (NO. 2:06 CV 272)
Judge: Leonard Davis
Holding: Plaintiff's Motion for Leave to Amend Answer and Serve Invalidity Contentions Against Intervenor DENIED
Two "gamesmanship"s and a "chicanery" in an order is usually not a good sign.  Both were present here, with a couple of "will not tolerate"s thrown in, so you know it's going to be an interesting order.
In this case, Plaintiff sued defendants Dell and Ergotron.  Dell's indirect subsidiary, Dell Marketing L.P. (“DMLP”) was granted leave to intervene, and it asserted a counterclaim that Plaintiff infringed its patent.  Judge Davis set a date for Plaintiff to serve any invalidity contentions pursuant to P.R. 3-3 (June 6, 2007) and it did not serve any.  Following issuance of the Court's claim construction ruling on March 13, 2008, Plaintiff sought leave to amend its answer and to serve invalidity contentions (although these analyses are technically separate - FRCP 16 for one and P.R. 3-6 for the other, the order conflates them since the underlying analytical standard is the same).
MASS did not claim that it "could not" meet the Court's deadlines, Judge Davis noted (after noting that that's what the applicable "good cause" standard requires - never a good sign for the movant) "but simply that it chose not to meet the deadlines. MASS contends that invalidity arguments are costly; thus, MASS proposed constructions that focused solely on its non-infringement argument."  This argument was not persuasive to the Court.  "While invalidity arguments may prove to be a costly endeavor, this Court's rules oblige MASS to assert such a defense early in the litigation if it is going to assert the defense at all. MASS, as the original plaintiff, chose this forum and thus chose this forum's rules. It cannot pick and choose which rules and orders to follow and which to ignore. Choosing to avoid potential litigation expenses is not an adequate explanation for ignoring this Court's orders."
MASS also claimed that it did not anticipate the Court's “very broad constructions.”  This argument was similarly not persuasive.  "This is not a situation where the Court issued constructions that greatly differed from what the parties proposed. Rather, the Court adopted all of DMLP's proposed constructions, without major modification. Thus, MASS was on notice of the possibility of the Court's constructions from at least the time MASS proposed its constructions. MASS's “wait-and-see” approach to claim construction is antithetical to the Local Patent Rules. Allowing such an approach would completely abrogate the purpose of the Patent Rules, which is to effectuate an orderly and efficient pretrial process. STMicroelectronics, Inc. v. Motorola, Inc., 307 F.Supp.2d 845, 849 (E.D.Tex.2004) (Davis, J.). Such a policy would encourage future accused infringers to propose narrow constructions focused on non-infringement while sidelining potential invalidity defenses until the Court issues its claim construction opinion. Such gamesmanship is not tolerated in this Court, and the Court's rules are intended to avoid this type of chicanery. Accordingly, this factor heavily weighs against finding good cause."
Later in the order, Judge Davis returned to the theme of the purpose of the local patent rules, citing decisions by Judge Clark in the Eastern District of Texas as well as a Northern District of California case, writing that "the Court will not reward MASS for its gamesmanship. The Local Patent Rules “exist to further the goal of full, timely discovery and provide all parties with adequate notice and information with which to litigate their cases, not to create supposed loopholes through which parties may practice litigation by ambush.” Finsar Corp. v. DirectTV Group, Inc., 424 F.Supp.2d 896, 901 (quoting IXYS Corp. v. Advanced Power Tech., Inc., 2004 WL 1368860 * 3 (N.D.Cal. June 16, 2004)). Allowing MASS to serve its untimely invalidity contentions would open the floodgates for other accused infringers to circumvent the Local Patent Rules, thereby completely nullifying Patent Rule 3-3."
As you might guess, the motion for leave to amend to assert the invalidity defense was denied as moot, with the statement that "[t]he Court will not reward MASS for its dilatory tactics." (For some reason, West has it spelled "dillatory", perhaps as a reference to the plaintiff being in a pickle.  Ba-da-bing!)

Summary Judgment Granted for Defendant on Patent License Defense

Orion IP, LLC v. Mercedes-Benz USA, LLC, --- F.Supp.2d ----, 2008 WL 2222964(E.D.Tex. May 30, 2008) (NO. 6:07 CV 451)
Judge: Leonard Davis
Holding: Defendant's Motion for Judgment on the Pleadings or in the Alternative Motion for Summary Judgment GRANTED
One interesting issue I have seen come up more than once in local patent infringement litigation is what happens when a patent holding company settles claims against one defendant, and then a later case is filed either by a company related to the releasing plaintiff against the released defendant, or by the settling plaintiff against a company related to the released defendant.  (Got that?)
The latter situation arose when Orion sued DaimlerChrysler Corporation (“DCC”) for infringement of two patents in Orion IP, LLC v. Ford Motor Company, 2:04cv313. Orion had previously sued Mercedes-Benz USA, LLC ("MBUSA") for infringement of the patents in Orion IP LLC v. Mercedes-Benz USA LLC, 6:05cv322. On February 16, 2006, DCC and Orion entered into a “Patent License and Settlement Agreement” to resolve both litigations. DCC settled with Orion on behalf of itself and all “DCC Related Companies,” including MBUSA, and in the Settlement Agreement, Orion granted “DCC and the DCC Related Companies a nonexclusive, non-transferable ... royalty-free, fully paid-up, worldwide license ...” to both patents.
On August 3, 2007, the Daimler companies (including MBUSA) spilt from the Chrysler companies. Chrysler LLC is the successor to DCC and retained the benefits and obligations under the Settlement Agreement. MBUSA is no longer affiliated with Chrysler LLC.  On September 25, 2007, Orion filed suit against MBUSA alleging MBUSA “lost” its status as licensee of the patents when the Daimler-Chrysler split occurred and MBUSA infringes the patents. MBUSA denied infringement, and alleged that it has a license to practice the patents, and that it has a release of claims for any infringement.  Accordingly, it filed a motion for judgment on the pleadings or in the alternative for summary judgment against Orion's patent infringement claims, claiming it is still entitled to the benefits of the Settlement Agreement.
Judge Davis concluded that MBUSA was entitled to the benefits of the settlement agreement, even after the split.  "The Agreement is what it is as written", he wrote.  "The Court will not rewrite the Settlement Agreement to place limitations on the license. The language of the Agreement does not support Orion's proffered interpretation, and the Court rejects it."
In the order's final paragraph, Judge Davis noted that while MBUSA's counterclaims of invalidity and noninfringment are moot in light of his order, its counterclaim for breach of contract remains justiciable. But, MBUSA based its allegation of the Court's jurisdiction over its counterclaims on the Court's jurisdiction in patent cases.  Accordingly, "[i]f MBUSA wishes to continue to assert its breach of contract claim in this Court, the Court ORDERS MBUSA to replead its claim specifying the basis for jurisdiction within ten days of this Order or the Court will dismiss the claim without prejudice."

Defendants' Emergency Motion to Dismiss for Lack of Authority Denied; Motion to Strike Document Authenticity Expert Denied

Nord Service, Inc. v. Palter, --- F.Supp.2d ----, 2008 WL 620545(E.D.Tex. Mar 03, 2008) (NO. 2:06 CV 548)
Judge: Leonard Davis
Holding: Defendants' Emergency Motion to Dismiss for Lack of Authority DENIED; Motion to Strike Document Authenticity Expert DENIED
Plaintiffs asserted the defendants did lots of bad, bad things (not including patent infringement, so you patent lawyers can quit reading right now).  Defendants asserted, in essence, that Plaintiffs did not own the leg that their dog bit, assuming of course that there was actually a biting, which they deny (or maybe they admit the biting but deny that they own the dog - to borrow Jim Belushi's famous phrase from the underrated cinema classic About Last Night, "at this point, we don't know").  Judge Davis held a day and a half evidentiary hearing on the issue of whether the plaintiffs had authority to bring this action against the defendants, and concluded that the defendants' motion attacking the plaintiff's authority to bring the action should be denied.  Of interest was the related motion to strike the testimony of an expert regarding the authenticity (or lack thereof) of the various corporate documents at issue, which Judge Davis also denied.

Motion to Amend Complaint & Infringement Contentions Granted; Motion to Dismiss/Transfer Denied

Mass Engineered Design, Inc. v. Ergotron, Inc., 2008 WL 1930299(E.D.Tex. Apr 30, 2008) (NO. 206 CV 272)
Judge: Leonard Davis
Holding: Motion for Leave to File Cross-Claim for Patent Infringement & Amend Infringement Contentions GRANTED; Motion to Dismiss Third Party Complaint GRANTED IN PART
Interesting procedural situation here.  Following the Markman hearing Defendant CDW sought leave to bring in a dozen or so third party defendants (TPDs).  But despite the court's order that it be notified when these parties had answered (one filed a motion to dismiss the third party claim) so it could conduct a status conference, CDW did not do so.  Some time later, the plaintiff filed a motion for leave to assert a "crossclaim" against two of the TPDs.  (Judge Davis noted that this wasn't truly a crossclaim, and treated it simply as a motion for leave to amend its complaint).
The first issue was whether the plaintiff had to show "good cause" for the amendment, i.e. had the deadline to amend  run so the standard changed from easy, pleasy lemon squeezy (as my eight year would accurately term the standard of FRCP 15) to the more stringent "good cause" standard of FRCP 16.  Judge Davis held that because he'd granted leave to add the TPDs, and there wasn't yet a deadline for amending with respect to them, the easy standard applied.  But wait, the TPDs cried, the amendment would cause us prejudice because the court has already conducted the Markman, the case has been ongoing for over a year, deadlines are about to run, and we might actually have to pay money if we lose (okay, maybe not the last part).  Judge Davis held that any prejudice would be slight, since there was still plenty of time - trial was still six months away.  But there's more:

Finally, given the parties' gamesmanship in this matter, the Court is even more reluctant to find that Bretford and CSAV are more than slightly prejudiced by this ruling. CDW stated that before filing its third-party complaint, it had been negotiating with Bretford and CSAV for indemnification in the present suit. Bretford and CSAV certainly knew they would be brought in as third-parties and were on notice that MASS, under Rule 14, could potentially assert infringement claims directly against them at that time. Instead of seeking to join the present suit voluntarily before the Markman, Bretford and CSAV waited for CDW to file its third-party complaint, and then Bretford and CSAV filed two separate declaratory actions-which involve the same patent and products already in issue in this suit-against MASS in two separate forums.

MASS is equally as culpable as it knew Bretford and CSAV manufactured some of the accused products; thus, it also could have brought suit against those parties much earlier. However, granting MASS leave to amend its complaint serves the interest of justice and preserves judicial economy by providing one forum to resolve these related issues expeditiously. Dishong v. Peabody, 219 F.R.D. 382, 385 (E.D.Va.2003) (“The purpose of Rule 14 is to permit additional parties whose rights may be affected by the decision in the original action to be joined and brought in so as to expedite the final determination of the rights and liabilities of all the interested parties in one suit.”).

Thus Judge Davis granted the motion for leave to amend.
Next up was plaintiff's motion for leave to amend its infringement contentions under P.R. 3-6 to add new accused products.  One  defendant didn't object to the amendment, but one, Tech Data, did.  Judge Davis reviewed the factors, and the plasintiff's complaints that Tech Data had stonewalled it, and found all weighed in favor of allowing the amendments, noting that "[i]f Tech Data had properly answered the propounded interrogatory or granted earlier access to its website, then MASS would have known about the newly proposed products prior to the leave to amend deadline, and this entire motion practice might have been avoided." 
Finally, Tech Data (the bad boy of the previous paragraph) moved to dismiss the claim, or in the alternative, for a more definite statement, and moved to transfer, or in the alternative, to bifurcate the third-party claim.  (What, no stay?)  TD's motion to transfer relied essentially only on a forum selection clause in a distributor agreement, offering no substantive analysis of the various transfer factors.  Judge Davis, although noting that a forum selection clause is a significant factor in the 1404 analysis, noted the impending trial setting, the court's familiarity with the case (including the completed Markman proceedings) and the significantly increased delay and inconvenience a transfer of a portion of the dispute would cause.  He concluded that the factors outweighed the forum selection clause, and denied the motion to dismiss or transfer.

Defendant's Motion for Partial Judgment on the Pleadings in Patent Case Denied; Separate Contentions Not Required for Second Accused Product Where Claims Identical

Juxtacomm Technologies, Inc. v. Ascential Software Corp, --- F.Supp.2d ----, 2008 WL 1923005(E.D.Tex. May 02, 2008) (NO. 2:07CV359)
Judge: Leonard Davis
Holding: Defendant's Motion for Partial Judgment on the Pleadings DENIED
Judge Davis' opinion resolving this motion addressed a recurring issue in cases under the district's patent rules.  IBI moved for judgment because Juxtacomm did not provide separate infringement charts for both accused  products under Patent Rule 3-1(c).  Juxtacomm contended that separate charts were not necessary under the facts of its infringement allegations.
Patent Rule 3-1(c) requires a party asserting infringement to provide each defending party a “Disclosure of Asserted Claims and Infringement Contentions,” which must contain “a chart identifying specifically where each element of each asserted claim is found within each Accused Instrumentality.” P.R. 3-1(c). Although the Patent Rules require separate charts for each accused product, Judge Davis noted that he and Judge Clark had previously allowed plaintiffs to use a single chart applicable to multiple products where separate charts would be identical for each product. See ConnecTel, LLC v. Cisco Sys., Inc ., 391 F.Supp.2d 526, 528-29 (E.D.Tex.2005) (“[T]he Court ORDERS ConnecTel to designate exemplar accused infringing products and compare those products to each asserted patent on a claim by claim, element by element basis.”); cf. Computer Acceleration Corp. v. Microsoft Corp., 503 F.Supp.2d 819, 823 (E .D.Tex.2007) (Clark, J.) (striking plaintiff's infringement contentions against Vista because plaintiff had only charted the Windows XP product and it was undisputed that Vista and Windows XP are only seventy percent similar).
Juxtacomm contended iWay Service Manager infringes only to the extent that it utilizes iWay DataMigrator. Accordingly, Judge Davis held that Juxtacomm may use one chart to accuse both products. Use of one chart, however, he cautioned, precludes Juxtacomm from arguing that iWay Service Manager infringes in any manner differently from how iWay DataMigrator infringes. In order to argue a different infringement theory for iWay Service Manager, Juxtacomm will need to separately chart the iWay Service Manager product, which the Court noted "will require good cause to amend its infringement contentions."

Summary Judgment Granted in Part in Patent Case re: Situs of Infringement

Renhcol Inc. v. Don Best Sports, --- F.Supp.2d ----, 2008 WL 1885522(E.D.Tex. Apr 28, 2008) (NO. 2:06-CV-318)
Judge: Leonard Davis
Holding: Defendants' Motion for Summary Judgment GRANTED IN PART
I'm a little fuzzy on the technology in this patent case, but as best I can tell, it deals with a method and apparatus for facilitating transactions between prediction suppliers and prediction consumers.  Online Ouija boards, maybe?  Online bookies?  Anyway, the issue here was where the activity was taking place for purposes of determining infringement, and the case the Court kept citing was NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1313 (Fed.Cir.2005).  Defendants claimed they do not make, use, sell, or offer for sale the claimed invention within the United States and that they do not import the claimed invention into the United States, as the computer storage medium and computer code are allegedly located in Canada and the method steps are performed in Canada and Ireland, and moved for summary judgment of noninfringement on that basis.
Judge Davis held that the handicappers and prediction consumers control the execution of the code on the alleged computer storage medium and programmed computer and benefit from the code's execution. As some handicappers and prediction consumers access the accused websites from the United States (you think?), the situs of use of the allegedly infringing computer storage medium is the United States.  Judge Davis also identified a number of fact issues which precluded summary judgment, including the location of the allegedly infringing code. 
Judge Davis ended up granting (1) Defendants' motion as to whether they make, sell, or offer for sale within the United States the invention claimed in claims 23, 24, and 25 and whether Defendants import into the United States the invention claimed in claims 23, 24, and 25; and (2) Defendants' motion as to whether Defendants use within the United States the invention claimed in claim 25 and whether Defendants infringe claim 25 under 35 U.S.C. § 271(b) and (c).  Judge Davis denied, however, Defendants' motion as to whether Defendants use within the United States the invention claimed in claims 23 and 24 and whether Defendants infringe claims 23 and 24 under 35 U.S.C. § 271(b) and (c).
Interestingly, there is no word as to whether the online prediction apparatus predicted the outcome of this motion correctly. 

RFID claims construction opinion gets F.Supp.2d designation

RFID Tracker Ltd. v. Wal-Mart Stores Inc., --- F.Supp.2d ----, 2008 WL 382317, E.D.Tex., February 11, 2008 (NO. 6:06 CV 363)
Judge: Leonard Davis
Holding: Claims construction ruling.
I already posted on this order from February, but the opinion just received a F.Supp.2d designation. 
As part of Judge Davis' claim construction order in this case, he adopted Defendants’ definition of the term “interrogator/reader” and construed it to mean “an interrogator/reader that includes a field generator and a receiver, but not a transmitter”.  The Plaintiff subsequently stipulated to noninfringement as a result of the Court's claims construction ruling, and a final judgment was entered, followed by an appeal a little under two weeks ago.

Order on post-trial motions in Orion v. Hyundai

Orion IP v. Hyundai, No. 6:05 CV 322 (March 28, 2008)
Judge: Leonard Davis
Holding: Plaintiff's motion for enhanced damages, fees, injunction and for sanctions DENIED; Defendant's motion for remittitur DENIED; No finding of inequitable conduct
This was a patent case tried to a jury in Tyler last spring.  Plaintiff settled with all other Defendants prior to trial - the parties tried the claims against Hyundai and invalidity to a jury, and the jury found Hyundai infringed the '627 patent, Hyundai's infringement of that patent was willful, and that the '627 patent was not invalid.  The jury found that Hyundai did not infringe the '342 patent. The jury awarded Orion $34 million in damages for Hyundai's infringement of the '627 patent. The issue of inequitable conduct in prosecuting the patents was tried to the bench.  In this order last week Judge Davis resolved the outstanding post-trial motions and the inequitable conduct issue.
First of all, Judge Davis addressed the issue of remittitur under the Fifth Circuit's "maximum recovery" rule, and found that remittitur was not appropriate.  Hyundai's principal argument here was that the two percent royalty testified to by the plaintiff's expert was not appropriate, nor was the damages base correct.  But that was not its position at trial.  As Judge Davis noted "Hyundai's expert testified that the patent was only worth a one-time fee of $250,000 to $500,000 and offered no alternative running royalty rate. The jury listened to both Orion's and Hyundai's damages experts and ultimately rejected Hyundai's damages theory. Hyundai cannot wait until trial is over to claim Orion's royalty base was inaccurate. Once Orion presented its royalty base at trial, Hyundai then had an obligation to present evidence rebutting Orion's position." 
The issue of willfulness was somewhat simpler - the plaintiff won the finding at trial, but after the jury verdict, but before the Court's hearing on the post-verdict motions, the Federal Circuit issued In Re Seagate Tech., LLC, 497 F.3d 1360, 1374 (Fed. Cir. Aug. 20, 2007) (en banc) ("[I]n ordinary circumstances, willfulness will depend on an infringer's prelitigation conduct. . . . A patentee who does not attempt to stop an accused infringer's activities [through a preliminary injunction] should not be allowed to accrue enhanced damages based solely on the infringer's postfiling conduct."). In light of that opinion, Orion contended the Court's judgment should simply be silent as to willfulness, but Hyundai moved for judgment as a matter of law on willfulness. Judge Davis conceded that not granting Hyundai's motion for judgment on willfulness would allow the jury's verdict to remain standing in the public record, but not entering judgment on that aspect of the verdict will indicate to the public that the Court has not effectuated that finding. Accordingly, the Court denied the motion but did not enter judgment that Hyundai's infringement of the '627 patent was willful.
With respect to Orion's request for a permanent injunction, Judge Davis denied the request, stating:

Orion does not practice the patented invention, does not compete in the marketplace with Hyundai, nor does research or develop new technologies for which it requires licensing funds to finance its efforts. Orion is not a self-made inventor or a university research institution. (internal citation and quote omitted). Orion's sole purpose is to license existing patents. Accordingly, money damages is an adequate remedy to compensate for any ongoing infringement. Therefore, a permanent injunction is not appropriate. The Court denies the motion for permanent injunction.

In the alternative, Orion sought a post-verdict royalty.  Judge Davis observed that when a district court has determined that an injunction is not warranted, the court should allow the parties an opportunity to negotiate a license regarding future use of the patent invention before the court imposes an ongoing royalty. Paice LLC v. Toyota Motor Corp., 504 F.3d 1293, 1314-15 (Fed. Cir. 2007). A court may take additional evidence if necessary to account for any additional economic factors arising out of the imposition of an ongoing royalty, but there is no right to a jury trial on the determination of an ongoing royalty. Id. at 1315-16. Orion contended that the postverdict royalty should be four percent (not the two found by the jury at trial) because Orion is now an unwilling licensor and the patented method is critical to Hyundai.  Judge Davis rejected this argument and set the royalty rate at two percent.
On attorneys fees, while in light of Seagate, Orion withdrew its motion for enhanced damages based on willfulness, but continued to argue it was entitled to attorneys' fees based on Hyundai's litigation misconduct.  Judge Davis disagreed, noting that with one exception all the conduct claimed of was addressed previously either by motion or agreement.  As for the one remaining issue, certain of Hyundai's comments during closing argument, Judge Davis held that Orion had other means of addressing that issue, and denied fees based on that as well.
With respect to prejudgment interest, Judge Davis declined Orion's request to assess prejudgment interest from the date infringement began.  "Patent owners should not expect to be able to delay bringing suit and increase the damage award through prejudgment interest.  Accordingly, the Court grants Orion's motion in part and awards Orion prejudgment interest from the date Orion filed suit at the prime rate compounded annually."
Finally, Orion sought sanctions for Hyundai's alleged failure to negotiate in good faith at the post-trial Court-ordered mediation session. "Orion has not shown bad faith conduct that warrants the sanctions it seeks." Judge Davis wrote.  "Hyundai's representatives with settlement authority attended the mediation. However, they had a vastly different valuation of this case than Orion. Accordingly, the Court denies the motion."
Judge Davis next addressed the inequitable conduct allegations that were tried to the Court.  "Hyundai has not shown by clear and convincing evidence that Johnson committed inequitable conduct during prosecution of the '627 patent," he concluded.  "While there is some evidence that activities took place prior to November 13, 1988 that should have been disclosed, the highly controverted nature of the evidence prevents it from rising to the level of clear and convincing. Hyundai has not sufficiently proven that the facts that Hyundai claims should have been disclosed to the examiner actually occurred."
I think this is the last of the post-trial activity at the district court level for the patent cases tried in 2007.  I'll post soon )hopefully later today) summarizing the results of the 2007 patent trials - preliminarily it was eight wins for defendants and three for plaintiffs.  But I'll have more details soon.

Scope of Waiver of Privilege from Reissue Declaration

 Mass Engineered Design, Inc. v. Ergotron, Inc., 2008 WL 744705(E.D.Tex. Mar 19, 2008) (NO. 206 CV 272)
Judge: Leonard Davis
Holding: Ergotron's Motion to Compel Discovery and for an Order Concerning Plaintiff's Waiver of the Attorney-Client Privilege GRANTED
Last week I posted on the Markman ruling in this case, which disposed of the defendant's indefiniteness argument, here. This week, Judge Davis' opinion dealing with the scope of the plaintiff's waiver of the attorney-client privilege came out.
In this case plaintiff MASS conceded that inventor/co-plaintiff Moscovitch waived the attorney-client privilege as to certain subject matter disclosed in his reissue declaration filed with the Patent Office. MASS previously produced several redacted documents that related to the subject matter disclosed in the reissue application, and subsequently submitted the redacted documents for in camera review. Ergotron sought an order defining the scope of MASS's attorney-client privilege waiver and compelling MASS to produce the aforementioned documents without redaction.
With respect to subject matter, Judge Davis came down between the parties' position, holding that the waiver should be described as “issues relating to claim scope believed available” which is what the declaration dealt with, but not “issues relating to patentability.” On temporal scope, again, Judge Davis came down in between, holding that the proper temporal scope was attorney-client communications within the subject matter scope defined above that took place up to and including the date of issuance, December 5, 2000.