United States District Court, D. Massachusetts
MEMORANDUM AND ORDER
PATTI B. SARIS, Chief District Judge.
Plaintiff Trustees of Boston University (BU) objects to the magistrate judge's order declining to compel Defendant Epistar Corporation (Epistar) to produce documents and communications relating to legal opinions sought and obtained from the Finnegan law firm. (Docket Nos. 823, 843). BU argues that the magistrate judge clearly erred when it found that Epistar did not waive its attorney-client privilege and work product immunity during a deposition of Meng-Chun Kuo, Epistar's Director of Intellectual Property. For the following reasons, the Court SUSTAINS BU's objection (Docket No. 843) and ALLOWS IN PART BU's motion to compel (Docket No. 717).
I. FACTUAL AND PROCEDURAL BACKGROUND
BU accuses Defendants Epistar, Everlight Electronics Co. (Everlight), and Lite-On, Inc. (Lite-On) of infringing U.S. Patent No. 5, 686, 738 (the 738 patent), which describes a type of gallium nitride film commonly found in light-emitting diodes (LEDs). Shortly after initiating this lawsuit, BU deposed Meng-Chun Kuo, Director of Intellectual Property at Epistar. Kuo was designated as a witness for "All opinions EPISTAR has received regarding validity, and infringement (including willful infringement) of the 738 patent." At the deposition, Kuo was represented by an attorney from the Finnegan law firm.
During her deposition, Kuo testified that Epistar was specifically relying on an opinion from counsel to avoid a finding of willful infringement. She then asked to speak to her attorney in private to determine "whether this is about privileged information or not." After speaking with counsel, Kuo admitted that Epistar sought an opinion from Finnegan in 2007 after co-defendant Everlight warned them that Epistar products may be infringing the 738 patent. According to Kuo, Epistar prepared an analysis report of its Venus-series of nitride products, which it gave to Finnegan. Finnegan then told Epistar in an oral opinion that its products did not infringe the 738 patent.
Following these admissions, BU's attorney clarified with Kuo, "And when you say no infringement, ' you're talking no infringement by the Venus products of the 738 patent, based upon the analysis that Epistar provided the attorneys?" Kuo responded, "Yes." Later on during the deposition, Kuo also confirmed that the analysis sent to Finnegan in 2007 still exists, although she is not sure where that file is currently stored.
BU moved to compel Epistar to produce all documents and communications relating to any infringement or invalidity opinions rendered orally or in writing by Finnegan to Epistar concerning the 738 patent. (Docket No. 717). The magistrate judge denied the motion, finding that Kuo's statements during the deposition did not constitute a waiver of the attorney-client privilege. (Docket No. 823). BU now objects to this ruling, which Epistar opposes. (Docket Nos. 843, 861).
Importantly, the magistrate judge also ordered Epistar to choose whether it will assert an advice of counsel defense in response to BU's claim of willful infringement. (Docket No. 1001). In a reversal from Kuo's deposition, Epistar now indicates that it will not be relying on Finnegan's opinion or any other advice of counsel as a defense. (Docket No. 1188).
II. LEGAL STANDARDS
A district judge may reconsider a pretrial ruling of a magistrate judge only "where it has been shown that the magistrate judge's order is clearly erroneous or contrary to law." 28 U.S.C. § 636(b)(1)(A); see also Fed R. Civ. P. 72(a). Under the "clearly erroneous" standard, the Court will accept the magistrate judge's findings of fact and conclusions drawn therefrom unless "after scrutinizing the entire record, we form a strong, unyielding belief that a mistake has been made." Phinney v. Wentworth Douglas Hosp., 199 F.3d 1, 4 (1st Cir. 1999) (quotation marks omitted). Under the "contrary to law" standard, the district court's review is plenary. See PowerShare, Inc. v. Syntel, Inc., 597 F.3d 10, 15 (1st Cir. 2010) ("[F]or questions of law, there is no practical difference between review under Rule 72(a)'s contrary to law' standard and review under Rule 72(b)'s de novo standard.").
The Federal Circuit will generally apply the law of the regional circuit with respect to questions involving attorneyclient privilege. Fort James Corp. v. Solo Cup Co., 412 F.3d 1340, 1346 (Fed. Cir. 2005); see also Centocor Ortho Biotech, Inc. v. Abbott Labs., 636 F.3d 1341, 1347 (Fed. Cir. 2011) ("For issues not unique to patent law, we apply the law of the regional circuit in which the appeal would otherwise lie."). The Federal Circuit will apply its own law, however, when dealing with questions regarding a party's waiver of attorney-client privilege in light of an assertion of the advice-of-counsel defense in response to a charge of willful infringement. In re EchoStar Comm'cns Corp., 448 F.3d 1294, 1298 (Fed. Cir. 2006).
A. Whether Epistar Waived Attorney-Client Privilege
The Court must first determine whether Epistar waived attorney-client privilege during the deposition of Meng-Chun Kuo. The magistrate judge found that Kuo merely revealed the existence of Finnegan's opinion regarding infringement, which is consistent with the requirements of a privilege log. The magistrate judge also did not find a waiver when Kuo disclosed Finnegan's ultimate legal conclusion, explaining that Epistar did not reveal the "content" of any attorney-client communications. For example, the magistrate ...