Searching over 5,500,000 cases.

Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.


March 28, 2003


The opinion of the court was delivered by: Morton Denlow, United States Magistrate Judge



In April 1999, Vardon Golf Company, Inc. ("Vardon" or "Plaintiff") initiated this patent infringement action involving a golf club head against Karsten Manufacturing Corporation ("Karsten" or "Defendant"). Following a jury trial before Judge David H. Coar, the jury rendered a verdict in favor of Karsten. In addition, the jury found that Vardon's sole shareholder, Dillis V. Allen ("Allen"), engaged in inequitable conduct before the United States Patent Office by withholding prior art. Karsten then moved Judge Coar for a finding of inequitable conduct and to declare this case "exceptional" under 35 U.S.C. § 285 in order to recover its attorney's fees. Karsten requested leave to propound discovery on these issues against Vardon, Allen, and Vardon's counsel, Niro, Scavone, Haller & Niro, Ltd. ("Niro, Scavone"). Judge Coar granted the request.

Karsten initiated discovery regarding the issue of inequitable conduct by means of a document request served upon Vardon and Allen and a subpoena served upon Niro, Scavone. This case is before the Court on Karsten's motion to compel production of documents being withheld. The issues to be decided are: 1) whether Vardon waived the attorney-client privilege and work product doctrine protection when it discussed and quoted from certain attorney-client communications in a brief to the Seventh Circuit; and 2) whether the crime-fraud exception doctrine requires the documents be produced. For the reasons mentioned herein, Karsten's motion is granted in part and denied in part.


A. The Litigation

On February 16, 1999, Vardon entered into a Contingent Fee Agreement with Niro, Scavone. Def. Ex. E*fn1 at 3. Under the agreement, Niro, Scavone would negotiate licences and initiate litigation, if necessary, regarding golf club patents assigned to Vardon by Allen, the inventor and Vardon's sole shareholder. Id. Niro, Scavone was to be paid on a contingent fee basis. Id. Vardon initiated several lawsuits in order to protect its patent. Id. at 4. The present case was filed on April 27, 1999.

A jury trial was held in August of 2002, in which the jury found in favor of Karsten. In addition, the jury found that Allen had engaged in inequitable conduct before the Patent Office. Under patent law, a court may grant attorney's fees to the prevailing party in exceptional cases. 35 U.S.C. § 285. After the judgment was entered, Karsten filed a motion requesting Judge Coar to find that Allen's conduct before the Patent Office constituted an exceptional circumstance, thereby entitling Karsten to collect its fees from Vardon.

B. Niro, Scavone Seeks to Withdraw as Counsel

In the meantime, the relationship between Vardon and Niro, Scavone broke down. Niro, Scavone filed a motion to withdraw as counsel. On November 7, 2002, Judge Coar granted the motion to withdraw. Niro, Scavone also filed motions to withdraw in other pending Vardon patent cases in the Northern District of Illinois. Two of the other pending cases also involve the same defendant, Karsten. One is pending before Judge James B. Zagel ("99 C 6934"), and the other is pending before Chief Judge Charles P. Kocoras ("00 C 7721"). Upon receiving the motion to withdraw in case 99 C 6934, Judge Zagel asked Allen and Niro, Scavone to exchange letters to each other; Niro, Scavone was to explain the reasons for seeking withdrawal, and Allen was to explain the reasons he objected to the withdrawal. Niro, Scavone's letter is dated November 18, 2002 ("November 18th letter"), and Vardon's letter is dated November 19, 2002 ("November 19th letter"). A conference was later held with Judge Zagel in chambers at which time he was given copies of the two letters for his review. As of this time, Judge Zagel has not ruled upon the motion. Judge Kocoras granted the motion to withdraw in Case 00 C 7721 on November 21, 2002.

C. Mandamus Petition To Seventh Circuit

Vardon filed three substantially identical petitions for writ of mandamus ("the petition") with the Seventh Circuit asking the Seventh Circuit to direct Judges Coar, Zagel and Kocoras to deny Niro, Scavone's motions to withdraw. The disclosures within the petition give rise to the issue now before this Court. In the petition, Vardon offered to provide the November 18th and 19th letters to the court, "if the court pleases, under seal, to maintain attorney-client privilege." Def. Ex. E at 9. However, later in the petition, Vardon refers to the confidential communications and directly quotes from Niro, Scavone's letter. Def. Ex. E at 15, 20. For instance, Vardon states, "Niro, Scavone, told Judge Zagel that Dillis Allen has a pattern of not being candid with the Patent Office regarding prior art." Def. Ex. E at 15. In addition, the petition states that "Niro, Scavone accused its own client of failing to call to the attention of the Patent Office certain prior patents alleged to be relevant to the patents in the case before Judge Zagel. . . ." Id.

The petition also includes direct quotes from the November 18th letter. Id. at 20. It states, "Mr. Vogt also stated, `Your sole motivation seems to be that you and Mr. Mazza agreed to leave Niro, Scavone as the last man standing to foot your bill now in excess of $62,000 in unreimbursed expenses [Niro, Scavone] advanced on Vardon's behalf.'" Id. Further, the petition states, "Niro, Scavone also states `in the matter pending before Judge Kocoras, Vardon is attempting to force us to continue to enforce patent rights which we have concluded may well be invalid in light of the prior art cited by Karsten.'" Id.

Karsten contends that the disclosures made in the petition written by Allen cover the subject matter of information ordinarily protected by the attorney-client privilege. Specifically, the disclosed material covers communications in the November 18th and 19th letters exchanged between Niro, Scavone and Vardon. Karsten argues that the disclosure of the information in Vardon's petition waives the attorney-client privilege and work product protection covering these communications; thus, any communications regarding the same subject matter should be produced.

D. Motion To Compel

Judge Coar granted Karsten leave to propound discovery. Karsten propounded eleven document requests on Vardon. Def. Ex. A. Vardon and Niro, Scavone refused to produce any documents citing the attorney-client privilege and work product doctrines. Karsten responded with a motion to compel which has been referred to this Court. Vardon's response to the motion includes a privilege log describing each document responsive to Karsten's discovery requests. Niro, Scavone and Vardon submitted copies of each document for in camera review. Thirty-four documents were submitted and reviewed by the Court.


A. Attorney-Client Privilege

Karsten argues that Vardon has waived its attorney-client privilege by revealing privileged communications in its brief to the Seventh Circuit. This Court agrees. The only ...

Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.