The opinion of the court was delivered by: JOHN W. DARRAH, District Judge
MEMORANDUM OPINION AND ORDER
Plaintiff, Irwin Industrial Tool Company ("Irwin"), filed suit
against Defendants, Stephen J, Orosz, Jr. and Charles F. Schroeder
(collectively "Orosz"), seeking a declaratory judgment that its Strait
Line Laser Level product did not infringe United States Patent
Number 5,836,081 ("the `081 patent"). Defendants then filed a counter
claim for infringement against plaintiff. Presently before the
Court is Defendants' motion to compel production of certain documents
from a third party law firm, Brinks Hofer Gilson & Lione
("Brinks Hofer"). For the following reasons, Defendants1 motion to compel
plaintiff and third party Brinks Hofer to produce documents is
The facts, for the purposes of this motion, are as follows. On or
around December 20, 2002, Defendants mailed a letter to plaintiff
accusing plaintiff of infringing the `081 patent by selling its Strait
Line Laser Level product, On or around December 23, 2002,
plaintiff sought the advice of an outside patent counsel, Michael Chu of
Thereafter, Chu allegedly communicated orally to plaintiff that the
Strait Line Laser Level did not infringe the `081 patent.
In February 2003, plaintiff asked Chu to formalize his written opinion
of non infringement. plaintiff then filed its declaratory action,
and Defendants filed its counterclaim that the plaintiff infringed the
`081 patent. Defendants also claimed that plaintiff's alleged
infringement was willful.
Plaintiff filed an answer to Defendants' counterclaim and then notified
Defendants that it would defend the willfulness charge by showing a good
faith reliance on the opinion of counsel. Thereafter, in response to two
document requests, plaintiff produced Gnu's written opinion letter, dated
March 25, 2003, Footnote one to this opinion states: "Previous opinions
of noninfringement [sic] and/or invalidity were conveyed to you relating
to the `081 patent on several dates, including January 2, 2003, March 3,
2003 and March 7, 2003." plaintiff and Brinks Hofer also produced other
documents relating to both its and Brinks Hofer's consideration of the'
However, Brinks Hofer did not disclose its internal work papers that
were not communicated to plaintiff or anyone else outside of Brinks
Hofer. Defendants seeks discovery of this material. Specifically,
Defendants seek production of: (1) all drafts of the Chu opinion letter;
(2) all documents and things related to the opinions referenced in
footnote one of the Chu opinion letter; (3) all documents and things,
including notes, memos, and e mails in Brinks Hofer's files
relating to the subjects in Chu's opinion letter, exchanged between Chu
and any other person or entity relating to the Chu opinion letter, this
lawsuit, and the Strait Line Laser
Level; and (4) all documents, things, and files at Brinks Hofer
relating to the Chu opinion lelter, this lawsuit, and the Strait
Line Laser Level.
"Parties may obtain discovery regarding any matter, not privileged,
that is relevant to the claim or defense of any party. . . . Relevant
information need not be admissible at trial if the discovery appears
reasonably calculated to lead to the discovery of admissible evidence."
Neither party disputes that once plaintiff relies on an advice
of counsel defense in response to a charge of willful
infringement, the attorney client and work product
immunity privileges arc waived for documents Brinks Hofer gave to
plaintiff which relate to the same subject matter as the advice
of counsel defense. E.g., Thermos Corp. v, Starbucks
Corp., No. 96 C 3833, 1998 WL 781120, at *1 (N.D. Ill. Nov. 3, 1998)
(Thermos). This waiver also applies to any orally communicated
opinions given by Brinks Hofer to plaintiff. See, e.g., Thermos,
1998 WL 781120, at *1.
However, the parties dispute whether the waiver of the work
product privilege also applies to documents Brinks Hofer created, but did
not communicate to plaintiff in any fashion, in forming Chu's opinion
letter, "Federal courts are split on the issue of whether non
communicated work product must be produced in these circumstances."
Thermos, 1998 WL 781120, at *3. In fact, courts within this
district have produced different opinions on this issue.
In Thermos, the court held that "work product not communicated
to the company is irrelevant to the company's state of mind."
Thermos, 1998 WL 781120, at *4. The reasoning focused on the
alleged infringer's state of mind to determine whether any infringement
willful. Thus, "[b]ecause Defendants' state of mind is the relevant
issue, we think plaintiffs are entitled only to work product communicated
to Defendants." Thermos, 1998 WL 781120, at *4; see also
Solomon v, Kimberly Clark Corp., No. 98 C 7598, 1999 WL
89570, at *3 (N, D. I Feb. 12, 1999) ("Because the appropriate focus is
on the relevance to the alleged infringer's state of mind, and not to
counsel's state of mind, the bright line distinction between what
is and what is not communicated to the alleged infringer is the optimal
On the other hand, in Beneficial Franchise Co, v. Bank One,
N.A., 205 F.R.D. 212, 218 (N.D. Ill. 2001) (Bank One), the
court extended the waiver of privilege "to documents that contradict or
cast doubt on the opinions that were revealed, irrespective of whether
the documents indicate on their face that they were conveyed to the
client." The Bank One court reasoned that materials which cast
doubt on a counsel's opinion letter may not be conveyed in written format
to the client. However, "if negative information was important enough to
reduce to a memorandum, there is a reasonable possibility that the
information was conveyed in some form or fashion to the client." Bank
One, 205 F.R.D. at 218; see also Lake wood Eng'g &
Mfg. Co. v. Lasko Prods., Inc., No. 01 C 7867, 2003 U.S. Dist. LEXIS
3867, at *30 (requiring defendant to produce its attorneys' thought
processes, notes, mental impressions, and materials that contradict or
cast doubt on the opinion letters, regardless of whether these opinions
were communicated to defendant); Clintec Nutrition Co. v. Baxa
Corp., No. 94 C 7050, 1996 U.S. Dist. LEXIS 4001, at *6 (N.D. Ill.
Apr, 1, 1996) (explaining that information which casts doubt on a
counsel's opinion letter is a consideration needed to determine whether
the work product doctrine is applicable).
Plaintiff, relying on Thermos, argues that under the advice
of counsel defense, all that matters is the accused
infringer's state of mind, and not the state of mind of its counsel.
See Mahurkar v. C.R. Bard, Inc., 19 F.3d 1572, 1579 (Fed. Cir.
1996). However, this argument relates more to the issue of admissibility
at trial of the material sought, not whether the privilege applies and
whether or not the material is discoverable. Once it is established that
the privilege should be waived, Defendants only need to show that the
material it seeks is relevant for purposes of discovery. This ...