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United States District Court, S.D. New York

April 26, 2004.

A&E PRODUCTS GROUP, L.P., Plaintiff, — against — MAINETTI USA INC., et al., Defendants

The opinion of the court was delivered by: ROBERT PATTERSON, Senior District Judge


Defendants have made a motion for reconsideration of the Court's determination that Plaintiff's actions before the patent office did not constitute inequitable conduct and the Court's ruling that Plaintiff need not disclose documents bates-stamped P01900-01, P01903-05 and P01888-89. Plaintiff has claimed lawyer-client privilege with respect to documents P01900-01, P01903-05 and P01888-89. Defendants contend that the testimony of the Patentee, Mr. Zuckerman, waived lawyer-client privilege with respect to some or all of those documents.

In September 2003, the Court held a hearing on the limited area relating to Plaintiff's filing of an Information Disclosure Statement (IDS) on December l3, 1993 with the Patent and Trademark Office. The IDS placed before the Patent and Trademark Office the so-called Combinations Hanger conceding it was prior art for purposes of this application only. The Patentee, Mr. Zuckerman, testified at the hearing on September 24, 2003 on the inequitable conduct issue. When questioned about statements contained in the IDS, Patentee testified as follows:

Q: You made the determination to put this information in and not the other information.
A: My lawyers drafted this document and they made the determination of what to put in there and what not to after speaking with me, so they sent it to me, I would look at it, I would have a communication with Mr. George, we would agree and I would authorize them to send it in.
Q: You didn't have any participation in making determinations of what did or dir not go into the Patent Office?
A: No, I relied on my attorneys to tell me what was required.
(Tr. Hr'g. Sept. 24, 2003 at 470.) Defendants maintain that the IDS contains statements not relevant to the claims in the patent application then pending. Additionally, Defendants assert that a misleading drawing of the Combinations Patent was also submitted to the Patent and Trademark Office by the Patentee so that the examiner would not find that the Combinations Hanger with side sizer clip anticipated Plaintiff's invention the application for which was pending.

  Since the Patentee has testified that he relied on his attorneys to tell him what information was required to be stated in the IDS and since Defendants' inquiry at the hearing was stymied as to why certain language was used in the IDS by the Patentee, the Court finds that the Patentee has forfeited the lawyer-client privilege by his testimony. Cf. John Doe Co. v. United States, 350 F.3d 299, 302 (2d Cir. 2003) ("In some circumstances, courts have ruled that it would be unfair for a party asserting contentions to an adjudicating authority to then rely on its privileges to deprive its adversary of access to material that might disprove or undermine the party's contentions."); Rhone-Poulenc Rorer, Inc. v. Home Indem. Co., 32 F.3d 851, 863 (3d Cir. 1994)("Finding a waiver of the attorney client privilege when the client puts the attorney's advice in issue is consistent with the essential elements of the privilege."); Sanofi-Synthelabo v. Apotex Inc., 299 F. Supp.2d 303, 308 (S.D.N.Y. 2004) (quoting John Doe Co. and holding that when a partial explanation protected by attorney client privilege is provided, then attorney client privilege is forfeited with respect to the full explanation).

  Here, P01900-01 and P01888-89 may undermine Plaintiff's contentions. Accordingly, Plaintiff is ordered to disclose these two documents by April 27, 2004. Document P01903-05 shall remain sealed.



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