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.