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.