United States District Court, N.D. Illinois, Eastern Division
MOTOROLA SOLUTIONS, INC. Plaintiff,
HYTERA COMMUNICATIONS CORP, et al, Defendants.
MEMORANDUM OPINION AND ORDER
JEFFREY COLE MAGISTRATE JUDGE
the outset of this case, Hytera has contended that Motorola
waited too long to file suit. Thus, Hytera moved to dismiss
Motorola's Complaint, arguing that the statute of
limitations for the federal Defense of Trade Secrets Act (two
years) and the Illinois Trade Secrets Act (five years) barred
Motorola's trade secret, misappropriation claims, because
Motorola had (or should have) discovered its claims more than
five years before it filed suit on March 14, 2017. [Dkt.
#32]. Motorola's position is that it only discovered the
misappropriation shortly before it filed its Complaint and
that its former employees - now Hytera employees - secretly
downloaded the trade secret materials and concealed not only
their intent to take them to Hytera, but even that they were
going to work for Hytera. [Dkt. #49, at 7-8].
September 7, 2017, Judge Der-Yeghiayan (who has since
retired) concluded that “Motorola's claims appear
to be untimely based upon the representations made by
[Hytera], ” but he determined it was best to convert
Hytera's motion to dismiss to a motion for summary
judgment in order to resolve the statute of limitations issue
based on evidence rather than allegations and
representations, which, of course, would not suffice. [Dkt.
#58]. The court allowed the parties until October 6, 2017, to
conduct discovery on the statute of limitations issue. [Dkt.
the cooperativeness among counsel, and even though discovery
was limited to the statute of limitations issue, discovery
proceeded with perhaps even more than the usual difficulties,
thus validating Judge Posner's dreary (but unfortunately
realistic) view that discovery is the bane of modern
litigation. Rossetto v. Pabst Brewing Co., Inc., 217
F.3d 539, 542 (7th Cir. 2000). The October 6, 2017 discovery
deadline was extended twice for a total of more than five
months to February 2, 2017, and then extended twice more for
depositions. [Dkt ## 153, 169]. During that time, the parties
repeatedly required judicial intervention to resolve
disputes. [Dkt. ##67, 84, 110, 119, 121, 140, 173]. Along the
way, there have been nearly fifty discovery-related filings
amounting to about 3400 pages.
often occurs, claims of privilege have played an important
role in this case, with Motorola raising the privilege to the
turnover of over 700 documents, which were supported by a
plainly inadequate privilege log, which Motorola was forced
to redo to comply with basic requirements under the Federal
Rules of Civil Procedure. See Motorola Solutions, Inc. v.
Hytera Corp., 2018 WL 1281393 (N.D.Ill. 2018). [Dkt.
#128]. Motorola then slashed its privilege claims to cover
just over 100 documents, proving once again that
unfortunately excessive claims of privilege are commonplace
in modern litigation, and that they are often
indiscriminately and improperly used “on documents that
do not truly qualify for protection.” Towne Place
Condo. Ass'n v. Philadelphia Indem. Ins. Co., 284
F.Supp.3d 889 (N.D. Ill. 2018). See also Dietz &
Watson, Inc. v. Liberty Mut. Ins. Co., 2015 WL 2069280,
at *6 (E.D. Pa. 2015); Falin v. Condo. Ass'n of La
Mer Estates, Inc., 2012 WL 760831, at *1 (S.D.
Fla. 2012); Employer's Reinsurance Corp. v. Clarendon
Nat. Ins. Co., 213 F.R.D. 422, 430 (D. Kan. 2003). The
claims of privilege often dissipate when a party is required
to properly support them. That is what happened here. For
Hytera, the 100 or so purportedly privileged documents that
remained are still too many.
argues in addition that it isn't fair for Motorola to
claim that it did not discover the alleged misappropriation
that is the basis of its lawsuit until 2016 (Dkt. #141-1, at
111/101), and, at the same time, to raise a claim of
attorney-client privilege to production of otherwise
privileged documents that would or might show otherwise. Part
of the focus is on item 364 on Motorola's privilege log.
Item 364 is an email sent by a Motorola engineer to numerous
other Motorola engineers. No. lawyer was involved in the
communication either as sender or recipient, or even as a
person copied on the email. Legal advice was not sought, nor
is any such advice revealed. See United States ex rel.
Bibby v. Wells Fargo Bank, N.A., 165 F.Supp.3d 1319
(N.D.Ga. 2015)(the court held that an e-mail sent by and to
non-attorneys was not protected by attorney-client
Motorola none of this matters, because - its lawyers assure
us, with absolutely no evidentiary support - that the email
was the necessary first step in the obtaining legal advice.
But, “[u]nfortunately... saying so doesn't make it
so....” United States v. 5443 Suffield Terrace,
Skokie, Ill., 607 F.3d 504, 510 (7th Cir.2010).
“Lawyers' talk is no substitute for data.”
Phillips v. Allen, 668 F.3d 912, 916 (7th
Cir. 2012). Little wonder that the courts are unanimous in
requiring proof of assertions made in briefs. See
cases cited infra at 18.
this we are presented with the question of whether there has
been an implied waiver of the privilege by Motorola - what in
common parlance is the permissibility of a party injecting an
issue into the case. In varying contexts, courts have
consistently refused to allow a party to use the privilege
simultaneously as in an affirmative and defensive fashion -
what is commonly referred to as using the privilege both as a
“sword and as a shield.” See discussion
infra at 9. Hytera claims that by filing suit,
Motorola has impliedly waived the attorney-client privilege
as to the question of whether it knew or should have known by
virtue of statements from its lawyers that the applicable
limitations periods had run, but filed suit nonetheless.
Needless to say, Motorola has a very different view; it
contends that the mere filing of a suit does not impliedly
waive the attorney-client privilege and that the case law
supports its contention.
begin with a brief overview of the attorney-client privilege.
THE ATTORNEY-CLIENT PRIVILEGE
attorney-client privilege is the oldest of the recognized
privileges for confidential communications known to the
common law. United States v. Jicarilla Apache
Nation, 564 U.S. 162, (2011); Jaffee v.
Redmond, 518 U.S. 1, 11 (1996); Upjohn Co. v. United
States, 449 U.S. 383, 389 (1981). The privilege's
central concern-and its ultimate justification-is to
encourage full and frank communication between attorneys and
their clients and thereby promote broader public interests in
the observance of law and the administration of justice.
Without that frankness, sound legal advice is impossible, and
without informed advice, the ultimate goal of the
attorney-client privilege is unattainable. Jicarilla
Apache Nation, 564 U.S. at 169; Upjohn, 449
U.S. at 389.
privilege extends to confidential communications between
counsel and his or her client “[w]here legal advice of
any kind is sought ... from a professional legal advisor in
his capacity as such.” Rehling v. City of
Chicago, 207 F.3d 1009, 1019 (7th Cir.2000). See
also Shaffer v. Am. Med. Ass'n, 662 F.3d 439, 446
(7th Cir. 2011). The question is whether the
“primary” or “predominant purpose” of
the communication is to render or solicit legal advice.
See United States v. Bey, 772 F.3d 1099, 1101 (7th
Cir. 2014); E.E.O.C. v. BDO USA, L.L.P.,
876 F.3d 690, 695 (5th Cir. 2017); In re County of
Erie, 473 F.3d 413, 420 (2nd Cir. 2007); United
States v. Horvath, 731 F.2d 557, 562 (8th Cir. 1984);
Skyline Wesleyan Church v. California Dep't of
Managed Health Care, 322 F.R.D. 571, 584-85, 2017 WL
4227026, at *10 (S.D. Cal. 2017); Dansko Holdings, Inc.
v. Benefit Tr. Co., 2017 WL 5593321, at *7 (E.D. Pa.
2017); Koumoulis v. Independent Financial Marketing
Group, Inc., 295 F.R.D. 28, 45-46 (E.D.N.Y. 2013);
SmithKline Beecham Corp. v. Apotex Corp., 232 F.R.D.
467, 482 (E.D. Pa. 2005). It cannot be too often repeated or
too strongly emphasized that while a particular communication
may be privileged, the underlying facts are not. Upjohn
Co. v. U.S., 449 U.S. 383, 396 (1981).
the status of the drafter (or the recipient) of the
supposedly privileged document is not decisive on the
question of whether the document is protected. It is for that
reason that progress or status reports, investigation
summaries, and general updates are generally not privileged
merely because they were written by a lawyer to the client.
See Loguidice v. McTiernan, 2016 WL 4487779, at *16
(N.D.N.Y. 2016); Koumoulis, 295 F.R.D. at 45-46;
A & R Body Specialty & Collision Works, Inc. v.
Progressive Casualty Ins. Co., 2013 WL 6044342 at *3 (D.
Conn. 2013); Navarrete v. Gov't Employee Ins.
Co., 2010 WL 11558228, at *22 (S.D. Fla. 2010); Wolf
Creek Ski Corp. v. Leavell-McCombs Joint Venture, 2006
WL 1119031, at *2 (D. Colo. 2006); In Re Sealed
Case, 737 F.2d 94 (D.C.Cir.1984)(“The letter
summarizes statements made by third persons to the
partnership's attorney, and neither reveals any
confidences of the client (the partnership) nor suggests a
privileges in litigation are not favored.”
Herbert, 441 U.S. at 175. “Whatever their
origins, these exceptions to the demand for every man's
evidence are not lightly created nor expansively construed
for they are in derogation of the search for the
truth.” United States v. Nixon, 418 U.S. 683,
710 (1974). See also Pierce County, Wash. v.
Guillen, 537 U.S. 129, 144-145 (2003); University of
Pennsylvania v. EEOC, 493 U.S. 182, 189 (1990). The
privilege, like all testimonial privileges and all
exclusionary rules, comes at a significant price. Since it
makes the search for truth more difficult by preventing
disclosure of what is often exceedingly relevant information,
the privilege “contravene[s] the fundamental principle
that ‘the public ... has a right to every man's
evidence, '” and is therefore strictly construed.
University of Pennsylvania v. E.E.O.C., 493 U.S.
182, 189 (1990). See also Pierce County, Wash. v.
Guillen, 537 U.S. 129, 144-145 (2003); United States
v. Lawless, 709 F.2d 485, 487 (7th Cir.1983). The
privilege is limited to those instances where it is necessary
to achieve its purposes. Fisher v. United States,
425 U.S. 391, 403 (1976); Jenkins v. Bartlett, 487
F.3d 482, 490 (7th Cir. 2007).
the privilege exists is a fact intensive inquiry, In re
Grand Jury Proceedings, 220 F.3d 568, 571 (7th Cir.
2000), and cannot be solved by simply looking to the identity
of the sender or recipient of a communication. See In re:
Subpoena Upon Nejame Law PA, 2016 WL 3125055 at *3
(N.D.Ill. 2016). The burden of proof is on the party claiming
privilege. Shaffer v. AMA, 662 F.3d 439, 446 (7th
Cir. 2011); Comtide Holdings, LLC v. Booth Creek Mgmt.
Corp., 2010 WL 5014483, at *3 (S.D. Ohio 2010). Thus,
the lawyer-client relationship, itself, “does not
create ‘a cloak of protection which is draped around
all occurrences and conversations which have any bearing,
direct or indirect, upon the relationship of the attorney
with his client.'” In re Walsh, 623 F.2d
489, 494 (7th Cir.1980). See also Burden-Meeks v.
Welch, 319 F.3d 897, 899 (7th Cir.2003).
not all communications even between an attorney and client
are privileged. Merely communicating with a lawyer or copying
a lawyer on an otherwise non-privileged communication, will
not transform the non-privileged communication or attachment
into a privileged one, even if the otherwise non-privileged
communication was at the behest of the lawyer. See Bell
Microproducts, Inc. v. Relational Funding Corp., 2002 WL
31133195, at *1 (N.D.Ill.2002) (instruction from an attorney
to employees to ...