United States District Court, E.D. New York
October 27, 2004.
In re: APPLICATION FOR SUBPOENA TO MICHAEL I. KROLL. KAI USA LTD., d/b/a Kershaw Knives Plaintiff,
CAMILLUS CUTLERY COMPANY, Defendant.
The opinion of the court was delivered by: ARTHUR SPATT, District Judge
MEMORANDUM OF DECISION AND ORDER
The present motion to quash is before this Court on the
miscellaneous docket, and arises in the context of a patent
infringement suit brought in the District Court for the Western
District of Oregon by plaintiff Kai USA Ltd., d/b/a Kershaw
Knives ("Kershaw" or the Plaintiff), and against the defendant
Camillus Cutlery Company ("Camillus" or the Defendant). Michael
A. Kroll, Esq. ("Kroll"), a non-party patent attorney, moves this
Court under Rule 45(c) of the Federal Rules of Civil Procedure to
quash the subpoena duces tecum dated July 12, 2004, and served on
Kroll by the Defendant in the underlying infringement action.
Kroll asserts that the documents requested are privileged. For
the following reasons, the motion is denied.
The underlying action pending in the District of Oregon
involves an allegation that the Defendant infringed on U.S.
Patent No. 6,145,202 (the "'202 patent"), purportedly invented
by one Kenneth Onion and now owned by the Plaintiff. Initially,
the application for the 202 patent was rejected by the U.S.
Patent and Trademark Office due to the existence of an earlier
application, U.S. Patent No. 5,802,722 (the "'722 patent"),
which was filed by Kroll on behalf of named inventors Michael
Maxey and Helga Maxey.
After the 202 patent application was rejected, Plaintiff
obtained an assignment of the 722 patent from the Maxeys and
filed a formal request for the named inventor to be changed to
Kenneth Onion, which was granted by the U.S. Patent and Trademark
Office. Subsequently, the '202 patent was issued because Onion
was now the named inventor of both the '722 and '202 patents, and
thus, the '722 patent was no longer considered prior art.
The '722 patent is not alleged to be infringed by the Plaintiff
in the underlying action, nor is its validity or inventorship at
issue. Instead, Camillus seeks to defend the underlying action by
obtaining evidence regarding the '722 patent that Kroll prepared
and filed. On July 12, 2004, Defendant issued a subpoena duces
tecum on Kroll seeking, among other things, "[a]ll documents and
things referencing, evidencing, or otherwise relating to the
prosecution of the application issuing as the '722 patent," and
"[a]ll documents evidencing or referencing the date on which
Michael and/or Helga Maxey first contacted you." (Kroll's Mem. of
Law Ex. A). Plaintiff served the subpoena despite Kroll's prior
written objection that the documents sought were protected by the
On July 22, 2004, Kroll filed this motion to quash the subpoena
claiming that the documents and date are protected by the
attorney-client privileged. On the other hand, the Defendant
seeks an order in this Court compelling the production of: (1)
any responsive documents not protected by the attorney-client
privilege; and (2) a privilege log identifying and describing all
responsive documents to which Kroll believes a privilege applies.
The Defendant also requests that all privileged documents be
turned over under the theory that the communications were in
furtherance of the commission of a fraud.
Rule 45 of the Federal Rules of Civil Procedure protects
non-parties subject to a subpoena by vesting the court in which
the subpoena was issued with the power to "quash or modify the
subpoena if it . . . requires disclosure of privileged or other
protected matter and no exception or waiver applies."
Fed.R.Civ. P. 45. The party claiming the privilege has the burden of
establishing the essential elements of the privilege. United
States v. Construction Prods. Research, 73 F.3d 464, 473 (2d
Cir., 1996); von Bulow v. von Bulow, 811 F.2d 136, 144 (2d Cir.
1987). Furthermore, Rule 45 requires that the party claiming a
privilege prepare a privilege log detailing "the nature of the
documents, communications, or things not produced that is
sufficient to enable the demanding party to contest the claim."
Fed.R. Civ. P. 45(d)(2). Failure to submit a privilege log may
be deemed a waiver of the underlying privilege claim. Dorf &
Stanton Communications, Inc. v. Molson Breweries, 100 F.3d 919,
923 (Fed. Cir. 1996); see also In re Grand Jury Subpoena,
274 F.3d 563, 576 (1st Cir. 2001); GFL Advantage Fund, Ltd. v.
Colkitt, 216 F.R.D. 189 (D.D.C. 2003).
In this case Kroll did not prepare a privilege log in response
to the subpoena as required by Rule 45. Instead, Kroll brought
this motion, claiming that the preparation of a log would reveal
the date upon which Kroll first met with the Maxeys. Kroll
submits that the date is protected by the privilege because its
disclosure may shed light on his clients' date of invention, if
one were to infer that the date of invention would come before
the commencement of the attorney-client relationship. Thus the
Court must examine whether the date when an attorney-client
relationship is formed is protected by the attorney-client
Fed.R. Evid. 501 requires that federal law govern the analysis
of the attorney-client privilege in any action arising out of
federal law. See United States v. Goldberger & Dubin, P.C.,
935 F.2d 501, 505 (2d Cir. 1991); von Bulow v. von Bulow,
811 F.2d 136, 141 (2d Cir. 1987). Generally, a court looks to Federal
Circuit law when deciding issues unique to patent law. In re
Spalding Sports Worldwide, Inc., 203 F.3d 800, 803 (applying
Federal Circuit law in reviewing whether an invention record was
a communication to an attorney). However, a court applies the law
of the circuit in which the district court sits on non-patent
issues. Dorf & Stanton, 100 F.3d at 922 (applying Second
Circuit law in reviewing whether attorney-client privilege
applied to an order compelling discovery). The key inquiry is
whether the issue implicates or is essentially related to patent
law. In re Spalding, 203 F.3d at 803. It has been held that
"[a]n order quashing a subpoena is not unique to patent law."
Truswal Systems Corp. v. Hydro-Air Engineering, Inc.,
813 F.2d 1207, 1209 (Fed. Cir. 1987). Here, the existence of a patent is
irrelevant to the issue of whether the date of the commencement
of an attorney-client relationship should be privilege.
Therefore, this Court looks to the Second Circuit, rather than
the Federal Circuit, in deciding whether the privilege is
applicable under these circumstances.
It is well settled that the attorney-client privilege only
protects confidential communications between client and counsel
that are made for the purpose of obtaining or providing legal
advice. Fisher v. United States, 425 U.S. 391, 403,
96 S. Ct. 1569, 48 L. Ed. 2d 39 (1976); United States v. Construction
Prods. Research, 73 F.3d 464, 473 (2d Cir. 1996); United States
v. Adlman, 68 F.3d 1495, 1499 (2d Cir. 1995). The law in the
Second Circuit is clear that the privilege does not extend to the
structure and framework of the attorney client relationship.
"[T]he identity of a client, or the fact that a given individual
has become a client are matters which an attorney normally may
not refuse to disclose. . . ." Colton v. United States,
306 F.2d 633, 637 (2d Cir. 1962); see, e.g., Codon v. Petacque,
90 F.R.D. 53, 54 (N.D. Ill. 1981) (declining to extend the
attorney-client to "the dates upon which services are rendered").
"While consultation with an attorney, and payment of a fee, may
be necessary to obtain legal advice, their disclosure does not
inhibit the ordinary communication necessary for an attorney to
act effectively. . . ." In re Grand Jury Subpoena Served Upon
Doe, 781 F.2d 238, 247-248 (2d Cir 1985).
Mere disclosure of a meeting does not necessarily reveal the
client's purpose in seeking consultation. Vingelli v. DEA,
992 F.2d 449, 453 (2d Cir. 1993). The client may be meeting with the
attorney regarding a legal question or for numerous other
reasons. Id. As such, the substance of the meeting may be
privileged, but the fact of the meeting itself is not because it
does not reveal any confidential communications. Id. "This
result follows from defining the privilege to encompass only
those confidential communications necessary to obtain informed
legal advice." In re Shargel, 742 F.2d 61, 62 (2d Cir. 1984).
The attorney-client privilege protects confidential
communications, not information that may have an adverse affect
on the client. As such, the identification of clients or meetings
therewith, does not disclose nor imply a confidential
communication. See id. at 63-64. In light of these
principles, Kroll's reason for his refusal to submit a privilege
log is without merit. Kroll's claim that the Defendant may obtain
information about the date Kroll's client conceived the invention
a fact that may be privileged by discovering the date Kroll
first met with his clients is insufficient to establish the
attorney-client privilege. Moreover, the Court does not agree
that the date of invention must necessarily be prior to the
formation of the attorney-client relationship. Kroll's argument
requires one to assume that the Maxeys never consulted an
attorney for any reason before allegedly conceiving the
Kroll is correct in asserting that the subpoena appears to seek
confidential information, namely, the invention record.
Generally, an invention record constitutes a privileged
communication if it is provided to an attorney for the purpose of
securing legal advice. In re Spalding, 203 F.3d at 805.
However, "[w]hether the attorney client privilege applies should
be determined on a case-by-case basis." Id. (citing Upjohn Co.
v. United States, 449 U.S. 383, 396, 101 S. Ct. 677, L. Ed. 2d
584 (1981)). The court in Spalding held that the district court
properly ruled the invention record was privileged, noting that
the district court had a full opportunity to review the
In this case, Kroll's refusal to prepare and reveal a privilege
log as required under Fed.R. Civ. P. 45(d)(2) effectively
deprived the Court of the ability to determine whether the
documents requested in the subpoena are protected by a privilege.
Kroll's blanket statement that all 12 requests in the subpoena
seek privileged information is insufficient to prove the
essential elements of the attorney-client privilege. Accordingly,
Kroll's motion to quash the subpoena is denied and Kroll is
directed to comply with the subpoena. If Kroll withholds
information on a claim that it is privileged, "the claim shall be
made expressly and shall be supported by a description of the
nature of the documents, communications, or things not produced"
in accordance with Fed.R. Civ. P. 45(d)(2). The Court recommends
that any dispute arising out of such privilege log be resolved by
the District Court of Oregon, which is familiar with the
Because the Court was unable to determine whether a privilege
applies to any request under the subpoena, the issue of whether
to pierce the attorney-client privilege under the crime-fraud
exception is need not be decided.
Based on the foregoing, it is hereby
ORDERED that the motion to quash the subpoena duces tecum by
Kroll is DENIED; and it is further
ORDERED that Kroll is to prepare a privilege log identifying
and describing all responsive documents to which a privilege may
apply as required by Rule 45(d)(2) of the Federal Rules of Civil
Procedure; and it is further
ORDERED that Kroll is to produce responsive documents not
protected by the attorney-client privilege as commanded by the
subpoena duces tecum.
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