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] bear the risk of involving [its patent attorney] in the pretrial preparation when [the attorney] was also the percipient witness to the prosecution of the patent." Bio-Rad Laboratories, supra, 130 F.R.D. at 125.
Plaintiff does not fundamentally disagree with this doctrine. Instead, plaintiff objects to the scope of defendant's "broad claim of waiver" (Item 51, p. 2). According to plaintiff, under the holdings in the Mushroom Associates and Vaughan Furniture cases, the waiver doctrine only applies to those documents which the expert considered or relied upon in formulating his or her expert opinion (Item 51, p. 2). To support this position, plaintiff has submitted Mr. Gastel's affidavit in which he states that in testifying as an expert witness at trial, he will not "rely upon or consider privileged communications of any sort, including the documents listed on Multiform's Privilege Schedule" (Item 62, P 7).
Plaintiff has filed Mr. Gastel's expert report made pursuant to Rule 26(a)(2)(B) of the Federal Rules of Civil Procedure (Item 71). In the report, Mr. Gastel states that he will provide expert testimony relating to defendant's infringement of plaintiff's patent, as well as "the inadequacy of the Stanhope defenses of noninfringement, offer for sale and inequitable conduct" (id., p. 3). The expert report provides a detailed breakdown of the areas of factual and expert testimony Mr. Gastel expects to provide with respect to these issues. It also addresses defendant's claim that prior offers for sale of dessicant bags to the Frigidaire Division of General Motors establish prior art under 35 U.S.C. § 102
(id., pp. 5-10). Mr. Gastel denies defendant's claim that plaintiff knew about this "alleged material prior art" but intentionally withheld this information from the Patent Office during prosecution of the patent-in-suit (id., pp. 11-12). Attached to Mr. Gastel's report are claim charts comparing the elements of the patent with the products sold by Stanhope, as well as correspondence and drawings.
The pertinent question raised by defendant's motion to compel, therefore, is whether the documents listed on plaintiff's amended privilege schedule are within the scope of the waiver of attorney-client privilege that occurred when plaintiff designated Mr. Gastel as its expert witness. The Mushroom Associates case is controlling, and supports defendant's position. In that case, the defendants asserted that the patent-in-suit was unenforceable due to the plaintiffs' alleged inequitable conduct in withholding material information from the Patent Office regarding a Spanish patent and other prior foreign patents. The defendants moved for summary judgment, and also moved to compel the production of all attorney-client communications pertaining to the prosecution of the patent. In opposition to the summary judgment motion, the plaintiffs submitted declarations of the inventor and the patent attorney who conducted the prosecution of the patent and related foreign patents, denying any knowledge of the materiality of the information withheld or any intent to deceive the Patent Office.
In ruling on the defendants' motion to compel, the court found that by submitting the declarations of the inventor and patent attorney on the issue of inequitable conduct, the plaintiffs had voluntarily waived the attorney-client privilege with respect to all communications relating to the subject matter of the declarations. According to the court:
When a party voluntarily waives the attorney-client privilege, the waiver extends to all communications pertaining to the subject matter of the communication. In this case, the subject matter of the waiver is the intent of the inventors and [the patent attorney] with respect to their representations before the [Patent] Office and whether they knew that the Spanish patent was material to the [patent-in-suit] application.