The opinion of the court was delivered by: HECKMAN
This case has been referred to the undersigned for pretrial matters, in accordance with 28 U.S.C. § 636(b)(1)(A). Defendant has moved to compel the production of documents and deposition testimony as to which plaintiff has asserted the attorney-client privilege (Item 38). For the following reasons, defendant's motion is granted.
The factual background of the case has been set forth in this court's previous orders, and will not be restated here except as necessary to the determination of the pending motion. The motion was filed by defendant on October 6, 1995, seeking to compel the production of documents as to which plaintiff has asserted attorney-client privilege. The motion also sought to compel plaintiff's patent attorney Joseph P. Gastel, Esq., and corporate officer Christopher Nigon, to answer certain deposition questions (see Items 38 & 39). By separate motion, defendant sought an order striking plaintiff's belated designation of an additional expert witness (Item 37).
On November 20, 1995, a pretrial conference was held before the undersigned at which the issues raised by these motions were significantly narrowed. On December 12, 1995, plaintiff's counsel filed an affidavit asserting that several of the documents identified by plaintiff in its original privilege schedule have been produced pursuant to agreement between counsel (Item 53, P 11). With respect to the remaining documents, plaintiff has submitted an amended privilege schedule (Item 53, Ex. A) identifying 24 documents claimed to be attorney-client privileged. The documents at issue have been filed under seal as Item 75.
After further briefing, oral argument of the motions took place on January 4, 1996. By order dated January 10, 1996 (Item 57), this court denied defendant's motion to strike plaintiff's designation of an additional expert witness for the reasons stated in open court. As to defendant's motion to compel, the court directed plaintiff to provide expert witness reports in accordance with the Federal Rules, and directed defendant to file supplemental materials in light of this report. Those materials have now been filed (Items 64, 68), and further argument was heard on July 2, 1996.
Meanwhile, on February 22, 1996, plaintiff moved to disqualify Regan J. Fay, Esq., and the law firm of Jones, Day, Reavis & Pogue, from representing defendant in this action (Items 60, 61).
What follows is this court's ruling on defendant's motion to compel.
In its original motion papers filed on October 6, 1995, defendant requested that the court order plaintiff to produce all documents related to the subject matter on which Mr. Gastel will testify at trial as both a fact witness and as plaintiff's designated expert witness. In support of this request, defendant argued that the court should conduct an in camera review of the documents as to which plaintiff has asserted attorney-client privilege protection to determine "whether the client intends the communication to be confidential and therefore privileged or whether, if there is an intent to disclose the communication to others (or if the client permits or directs the attorney to do so), there can be no confidentiality." Hydraflow, Inc. v. Enidine, Inc., 145 F.R.D. 626, 633-34 (W.D.N.Y. 1993)(Foschio, M.J.). Defendant also argued that, even if the documents contained or reflected privileged communications between Mr. Gastel and his client, plaintiff has waived the privilege by designating Mr. Gastel as its expert witness to testify at trial on the issues of validity, enforceability and infringement of the patent-in-suit.
The documents submitted for in camera review are 24 in number, many of which are duplicates. Most of the documents are letters from Mr. Gastel to plaintiff prepared while Mr. Gastel was prosecuting the patent before the patent office. In literally all of the documents, legal strategies are discussed for prosecuting the patent and presenting the claims, and options are outlined for the client to consider. Clearly, these documents contain confidential communications between attorney and client, and would normally be the proper subject of a claim of attorney-client privilege.
In this case, the real issue is whether plaintiff's designation of its patent attorney as an expert witness results in a waiver of the attorney-client privilege as to documents pertaining to the subject matter of his proposed testimony.
The doctrine of waiver arises out of the general principle that the deliberate injection of the advice of counsel into a case waives the attorney-client privilege as to communications and documents relating to the advice. Handgards, Inc. v. Johnson & Johnson, 413 F. Supp. 926, 929 (N.D.Cal. 1976)(citing Garfinkle v. Arcata National Corp., 64 F.R.D. 688 (S.D.N.Y. 1974); Smith v. Bentley, 9 F.R.D. 489 (S.D.N.Y. 1949); 8 Wigmore, Evidence § 2327 (1961)). Thus, the attorney-client privilege "may implicitly be waived when [a party] asserts a claim that in fairness requires examination of protected communications." United States v. Bilzerian, 926 F.2d 1285, 1292 (2d Cir.), cert. denied, 502 U.S. 813, 116 L. Ed. 2d 39, 112 S. Ct. 63 (1991). In short, "the attorney-client privilege cannot at once be used as a shield and a sword." Id.; see also In re von Bulow, 828 F.2d 94, 103 (2d Cir. 1987).
In the context of patent litigation, several cases have held that where a party suing for infringement or defending against a claim of invalidity of its patent designates the attorney who prosecuted the patent as its expert witness to testify at trial, the party has waived any attorney-client privilege or work product protection from disclosure of information pertaining to the subject matter of the expert's opinion. See, e.g., Vaughan Furniture Co., Inc. v. Featureline Mfg., Inc., 156 F.R.D. 123, 127-28 (M.D.N.C. 1994); Mushroom Associates v. Monterey Mushrooms, Inc., 1992 U.S. Dist. LEXIS 20640, 1992 WL 442914, at *2-*3 (N.D.Cal. 1992); Bio-Rad Laboratories, Inc. v. Pharmacia, Inc., 130 F.R.D. 116, 123-125 (N.D.Cal. 1990). As explained in the Bio-Rad Laboratories case, "fundamental fairness requires that [the patent holder] ...