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Mstg, Inc v. At&T Mobility LLC

January 20, 2011

MSTG, INC. , PLAINTIFF,
v.
AT&T MOBILITY LLC ,
DEFENDANT.



The opinion of the court was delivered by: Martin C. Ashman Magistrate Judge

Judge Edmond E. Chang

MEMORANDUM OPINION AND ORDER

Before the Court is Defendant AT&T Mobility LLC's ("AT&T") Motion to Compel Plaintiff MSTG, Inc. ("MSTG") to produce various documents that MSTG argues are protected by the attorney-client privilege and the work product doctrine, or are otherwise irrelevant to the issues at stake in this case. The Court rules on this motion under District Judge David H. Coar's referral for a decision pursuant to N.D. Ill. Rule 72.1.*fn1 Based on the parties' briefs and a hearing on the motion, the Court finds that AT&T's motion is granted in part and denied in part.

I. Background

MSTG is a South Korean corporation involved in developing and licensing property rights associated with wireless telecommunications networks. MSTG owns the rights, title, and interests in three patents that it alleges AT&T, as well as a number of other defendants who are not parties to this motion, have infringed under the patent laws of the United States, 35 U.S.C. § 1 et seq. These include United States Patent Nos. 5,920,551 ("the '551 patent"), 6,198,936 ("the '936 patent"), and 6,438,113 ("the '113 patent"). All three patents involve technologies that are used in third-generation mobile telecommunications. According to MSTG, the technologies and inventions covered by these patents were originally developed by the Electronics and Telecommunications Research Institute ("ETRI"), a government-funded research organization established by the Republic of Korea. At some point not specified by the Second Amended Complaint, MSTG acquired the rights to the '551 patent, the '936 patent, and the '113 patent and subsequently brought this patent-infringement suit against AT&T and other companies involved in mobile telecommunications. MSTG alleges that AT&T has infringed its patents through the types of services it offers over the AT&T networks and by selling a variety of handset devices.

On August 25, 2009, AT&T sent its first requests for production to MSTG. AT&T's discovery included a request for MSTG's "business plans, projections, forecasts, market and industry analyses" and other documents related to MSTG's business operations. (Def's. Mot., Ex. A at 7.) In response, MSTG produced a ninety-four page document that included two business plans, one arranged by months and the other by years ("the business plans"). The Court does not describe the plans in detail because MSTG filed them under seal and provided a copy to the Court for in camera review. Nevertheless, the business plans identify a number of other documents that AT&T determined upon review were responsive to its request but which MSTG did not produce. AT&T asked MSTG to provide copies of these additional documents but received in return a demand by MSTG to return the plans pursuant to the parties' protective order that included a clawback provision for inadvertently produced documents. AT&T returned the business plans but now seeks to compel their production.

AT&T also claims that MSTG produced license agreements between itself and a number of third parties concerning the licensing of the three patents at issue in this lawsuit. Neither party has specifically identified the agreements, but the Court's review of the exhibits attached to the parties' briefs shows at least three licenses: (1) an April 28, 2009 agreement with Nokia Corp., (2) a July 9, 2010 agreement with RPX Corp., and (3) an April 15, 2010 agreement with Motorola Corp. AT&T seeks the production of documents reflecting communications between the parties about these licenses, including settlement negotiations, claiming that they are relevant to calculating the value of a reasonable royalty in this matter.

II. Legal Standard

A party may file a motion to compel under Fed. R. Civ. P. 37 whenever another party fails to respond to a discovery request or when its response is insufficient. Fed. R. Civ. P. 37(a). Courts have broad discretion in resolving such disputes and do so by adopting a liberal interpretation of the discovery rules. Wilstein v. San Tropai Condo. Master Assoc., 189 F.R.D. 371, 375 (N.D. Ill. 1999). Federal Rule of Civil Procedure 26(b)(1) provides that the "[p]arties may obtain discovery regarding any non-privileged matter that is relevant to any party's claim or defense." Fed. R. Civ. P. 26(b)(1). Discoverable information is not limited to evidence admissible at trial. Instead, such information is relevant "if the discovery appears reasonably calculated to lead to the discovery of admissible evidence." Id.

The attorney-client privilege promotes open discussions between attorneys and their clients by preventing the disclosure of certain kinds of attorney-client communications. Upjohn v. United States, 449 U.S. 383, 389 (1981). The Seventh Circuit has adopted eight principles that define the existence and scope of the attorney-client privilege:

(1) Where legal advice of any kind is sought (2) from a professional legal adviser in his capacity as such, (3) the communications relating to that purpose, (4) made in confidence (5) by the client, (6) are at his instance permanently protected (7) from disclosure by himself or by the legal adviser, (8) except the protection be waived.

United States v. White, 950 F.2d 426, 430 (7th Cir. 1991) (internal quote and citation omitted). Only communications that are made for the purpose of obtaining legal advice are protected by the attorney-client privilege. Matter of Grand Jury Proceeding, Cherney, 898 F.2d 565, 567 (7th Cir. 1990). When the parties involve an organization with in-house counsel, communications between the general counsel and an organizational employee are protected only when the employee is seeking legal advice on behalf of the entity itself. See Upjohn, 449 U.S. at 394; Banks v. Office of Senate Sergeant-at-Arms, 241 F.R.D. 376, 382 (D.D.C. 2007).

The work product doctrine protects documents that an attorney or a representative of a party prepares in anticipation of litigation in order to prepare or analyze a client's case.

Fed. R. Civ. P. 26(b)(3); Sandra T.E. v. South Berwyn Sch Dist. 100, 600 F.3d 612, 618 (7th Cir. 2010). Its protection is "distinct from and broader than the attorney-client privilege." United States v. Nobles, 422 U.S. 225, 238 n.11 (1975) (citation omitted). A lawsuit need not be underway for the doctrine to apply "provided the prospect of litigation [is] not remote." Mattenson v. Baxter Healthcare Corp., 438 F.3d 763, 768 (7th Cir. 2006). This protection only prevents the disclosure of protected documents or communications, however, not the underlying facts. See Upjohn, 449 U.S. at 395-96. The party asserting either privilege has the burden of showing all of its elements. United States v. BDO Seidman, 337 F.3d 802, 811 (7th Cir. 2003).

III. Discussion

As noted, AT&T seeks the production of MSTG's business plans, which MSTG initially produced but then clawed back pursuant to a protective order between the parties. AT&T also asks that MSTG be required to produce a variety of documents mentioned in the business plans that it claims are relevant to the patents at issue in this case. Finally, AT&T wants MSTG to turn over documents reflecting communications between MSTG and the third parties with whom it has entered into license agreements that cover the patents-in-suit.

A. The Business Plans

MSTG's business plans comprise ninety-four pages that include weekly plans from February 13, 2008 through March 23, 2009, as well as yearly plans dated June 26 and 29, 2009. (Pl's. Resp. at Ex. A.) The weekly plans essentially list MSTG officers such as its Chief Executive Officer and Chief Financial Officer by name and briefly identify in summary form certain tasks to be accomplished in the week in question by each officer, as well as tasks poised for resolution the following week. These tasks include a variety of goals that range from the routine (e.g. "prepare conference call") to the technical (e.g. "analyze patent"). The yearly plans include the same material, this time arranged by months rather than by weeks. According to MSTG, the business plans are not discoverable because they are protected by the attorney-client privilege and the work product doctrine.

In support of this claim, MSTG first argues that both privileges apply to the business plans by virtue of the nature of MSTG's business itself. MSTG acquires patents and then enforces them through litigation, the company contends, and it therefore necessarily created the business plans as part of its ongoing litigation activity. "That is, everything MSTG has done since before the 'business plan' document was created has been done in anticipation of litigation or licensing efforts" and was "performed at the direction of legal counsel[.]" (Pl's. Resp. at 4.) This is an astonishing claim that contravenes the principles that guide the application of privileges. One of the effects of finding that the attorney-client privilege applies in a case is that relevant information is almost always withheld from the opposing party. See BDO Seidman, 337 F.3d at 810-11. As such, the Seventh Circuit has been very clear that it should be applied "only where necessary," id., and is "intended to be strictly confined within the narrowest possible limits consistent with the logic of its principle." United States v. Weger, 709 F.2d 1151, 1154 (7th Cir. 1983) (internal quote and citation omitted).

Under MSTG's scenario, however, the company would be protected from providing any business-related documents through discovery because, Midas-like, everything related to MSTG's operations would automatically be transformed into protected information. MSTG could go about its business of litigating patents free from the full burdens of discovery, all the while forcing the parties it sues to comply with the ordinary obligations imposed by the Federal Rules of Civil Procedure. The result would be a kind of discovery-related immunity under which the question of whether privileges apply to MSTG's business documents would rarely, if ever, arise in a meaningful way. Contrary to clearly-established law, MSTG would be able to assert broad claims of immunity like the one here without having to demonstrate how each specific document is protected by the attorney-client privilege or the work product doctrine. See Schachar v. Am. Acad. of Ophthalomology, Inc., 106 F.R.D. 187, 191 (N.D. Ill. 1985) ("The party claiming the privilege has the burden of showing the specific facts giving rise to the privilege; blanket claims of privilege are improper."). In the absence of any case authority by MSTG supporting such an expansion of the scope of privileges, the Court finds this argument unpersuasive.

Setting aside MSTG's initial claim, the Court turns to the business plans themselves. The plans contain approximately four thousand separate entries that briefly describe a task or job activity. MSTG has highlighted several hundred of these which it claims are privileged because they "clearly implicate the attorney-client privilege or the work product immunity." (Pl's. Resp. at 3.) This argument overlooks that even if the entries contained such self-evident signs of being privileged, MSTG still has the burden of demonstrating that they meet the standards required for the privileges it relies on. "[M]ere conclusory statements will not suffice to meet that burden." Allendale Mut. Ins. Co. v. Bull Data Sys., Inc., 152 F.R.D. 132, 139 (N.D. Ill. 1993).

MSTG, however, only specifically cites two of the business plans' entries in its response:

(1) "prepare claim chart per version" and (2) "small entity issue f[ollow]-u[p]." (MSTG000486 and MSTG000492.) The company presents no argument as to why these entries are protected by the attorney-client privilege or the work product doctrine, and the entries themselves give no indication that either privilege applies. On their face, the entries MSTG quotes do not identify a specific claim chart or the patent litigation related to the claim, nor do they link the "small entity issue" to any attorney-client communication. Moreover, the entries do not demonstrate, and MSTG does not argue, that legal advice was sought from an attorney, that these cites involve communications related ...


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