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United States District Court, D. Massachusetts

December 1, 2017

ACQIS, LLC, Plaintiff,


          MARIANNE B. BOWLER United States Magistrate Judge.

         Pending before this court is a motion in the form of a letter filed by defendant EMC Corporation (“EMC”) to compel plaintiff ACQIS, LLC (“ACQIS”) to comply with a June 29, 2017 Order (Docket Entry # 303) with respect to production of documents withheld on the basis of the attorney-client privilege. (Docket Entry ## 317, 321).[1] After conducting a hearing on October 20, 2017, this court took the motion (Docket Entry # 321) under advisement.


         The letter depicts two categories of documents that EMC seeks under separate Roman numerals. The category of documents sought in Roman numeral I (Docket Entry # 321) is no longer at issue (Docket Entry # 333, n.1).

         In the remaining category (Roman numeral II), EMC seeks documents on the basis that the privilege log fails to identify an attorney as an author, a sender, a recipient, or a contributor to legal advice reflected in the documents.[2] (Docket Entry # 321, ¶ II) (Docket Entry # 322-1, pp. 5-6) (Docket Entry # 326, ¶ C). The dispute regarding these documents began in 2014 (Docket Entry # 322-5, p. 6)[3] and culminated in March 2017 when EMC filed a letter seeking to compel their production. (Docket Entry ## 200, 214). In the June 29, 2017 Order, the court was “unable to conclude based on the information in the privilege log that these documents manifest the essential elements of attorney-client privilege.” (Docket Entry # 303). Notably, the court rejected “ACQIS' conclusory assertions of ‘privileged legal advice'” as “insufficient.” (Docket Entry # 303, p. 5) (citing Safeco Inc. Co. of Am. v. M.E.S., Inc., 289 F.R.D. 41, 47 (E.D.N.Y. 2011)). In light of ACQIS' insufficient showing, the court ordered ACQIS to “provide further support for its assertion of attorney- client privilege beyond what is already included in the privilege log and beyond the seemingly speculative argument in its letter that the documents contain information that ‘could only have come from attorneys.'” (Docket Entry # 303, p. 5) (emphasis added). As a means to make a sufficient showing, the court suggested that ACQIS submit declarations, affidavits, “information showing a connection between the information in the communication and a particular attorney or law firm, or information showing that the disputed document contains information from another undisputed document that is privileged.” (Docket Entry # 303, p. 5).

         In response, ACQIS identified a number of privileged documents regarding ACQIS' engagement of certain law firms and connected such documents to a number of withheld documents purportedly involving communications with the particular law firm during the same time frame. (Docket Entry # 326). ACQIS also provided excerpts of deposition testimony by William W. Y. Chu (“Chu”), ACQIS' founder, and Douglas Gordon DeVivo (“DiVivo”), an investor and chairman of ACQIS' board of directors. (Docket Entry ## 200-30, 326-2, 326-3, 326-4, 326-5). Finally, ACQIS briefly described the withheld documents. (Docket Entry # 326) (Docket Entry # 322-1, pp. 5-6). EMC presently argues that ACQIS fails to comply with the Order by substantiating the assertion of the privilege with a declaration or other evidence. (Docket Entry ## 321, 333). ACQIS maintains that it complied with the Order by providing “information showing a connection between the information in the communications and the particular law firm.” (Docket Entry # 326, p. 3). ACQIS points out that it cross referenced privileged entries in the log to disputed entries and provided deposition testimony. (Docket Entry # 371, p. 12).


         The June 29, 2017 Order sets out the applicable law. As noted therein, federal common law applies “unless the U.S.

         Constitution, federal statute, or rules prescribed by the Supreme Court provides otherwise.” (Docket Entry # 303, p. 1); Fed.R.Evid. 501. As further stated in the Order, the:

Attorney-client privilege only protects: (1) communications that relate to (2) the seeking of legal advice of any kind (3) from a professional legal adviser in his capacity as such, and that (4) were made in confidence (5) by the client (6) with the expectation that they be protected from disclosure by himself or by the legal adviser, (7) except if the protection is waived. Cavallaro v. United States, 284 F.3d 236, 245 (1st Cir. 2002) (citing 8 J.H. Wigmore, Evidence § 2292, at 554 (McNaughton rev. 1961)). Attorney-client privilege is construed narrowly and “only to the extent necessary to achieve its underlying goal of ensuring effective representation through open communication between lawyer and client.” In re Grand Jury Subpoena, 274 F.3d 563, 571 (1st Cir. 2001).

(Docket Entry # 303, p. 4); accord Mississippi Public Employees' Retirement System v. Boston Scientific Corp., 649 F.3d 5, 30, n.23 (1st Cir. 2011) (summarizing similar requirements and citing Cavallaro, 284 F.3d at 245).

         Two aspects of the analysis are particularly relevant to the case at bar. First, the privilege applies only when the lawyer is acting as a lawyer rendering legal advice to a client as opposed to business advice to the client. See U.S. ex rel. Hamrick v. GlaxoSmithKline LLC, 814 F.3d 10, 17 (1st Cir. 2016) (applying federal common law). Moreover, “the line between legal advice” and business advice is often difficult to draw and can be “more abstract than concrete.” Id. At the hearing, EMC represented and ACQIS did not dispute that ACQIS became a patent licensing entity in 2004. (Docket Entry # 371, p. 4) (Docket Entry # 200-36, pp. 2, 6). EMC also represented that ACQIS' business therefore entails building a portfolio of patents and licensing and enforcing those patents. (Docket Entry # 371, p. 4). The nature of ACQIS' business therefore gives rise to doubt that the myriad of entries reflecting patent analysis uniformly depict legal advice. Contrary to EMC's position at the hearing (Docket Entry # 371, pp. 10-11), such doubt weighs in favor of conducting in camera review. See id. (affirming district court's decision not to conduct in camera review partly because circumstances, consisting of legal advice about removing employee from workplace, “present no particular reason to doubt that the lawyers were giving legal advice”).

         Second, legal advice is distinguishable from the underlying facts. See Upjohn Co. v. U.S., 449 U.S. 383, 395 (1981); cf. State of Maine v. U.S. Dept. of Interior, 298 F.3d 60, 71 (1st Cir. 2002) (privilege includes “‘facts communicated for the purpose of securing a legal opinion, legal services or assistance in legal proceedings'”) (quoting United States v. Bay State Ambulance and Hospital Rental Service, Inc., 874 F.2d 20, 27-28 (1st Cir. 1989)). The distinction between unprotected facts and protected legal advice “involves considering the source and nature of the information contained in the documents.” Lluberes v. Uncommon Productions, LLC, 663 F.3d 6, 24 (1st Cir. 2011) (applying federal common law to attorney-client privilege). “If the communication contains only client confidences made in pursuit of legal advice-or legal advice based on such client confidences-that communication, if intended to remain confidential, should be covered by the privilege, regardless of whether it came from the client, his attorney, or an agent of either one.” Id.; see State of Maine v. U.S. Dept. of Interior, 298 F.3d at 71 (“‘by the content of the letters, . . . they relate to facts communicated for the purpose of securing a legal opinion, legal services or assistance in a legal proceeding'”) (quoting Town of Norfolk v. United States Army Corps of Engineers, 968 F.2d 1438, 1458 (1st Cir. 1992)) (emphasis added). Facts that reveal the substance of a client confidence are thus protected. See Lluberes v. Uncommon Productions, LLC, 663 F.3d at 24 n.21; see, e.g., Prasad v. George Washington University, ___ F.R.D. ___, 2017 WL 4570771, at *8 (D.D.C. Oct. 12, 2017). Conversely, if “the transmitted information consists largely of facts acquired from non-client sources, those facts are not privileged.” Lluberes v. Uncommon Productions, LLC, 663 F.3d at 24-25. As explained in Upjohn, “The privilege only protects disclosure of communications; it does not protect disclosure of the underlying facts by those who communicated with the attorney.” Upjohn Co. v. U.S., 449 U.S. at 395.

         Turning to the subcategories of withheld documents (Docket Entry # 326, pp. 3-5), ACQIS states, albeit belatedly, that it is willing to provide a declaration for the documents in subcategories A and B. (Docket Entry # 326, pp. 3-4). ACQIS is therefore directed to provide a declaration that states for each withheld document in these subcategories the name of the attorney or the individual to whom Chu sent and/or copied each document or the name of the attorney or individual involved in the attorney-client communication or draft letters at issue. The declaration may also include any additional information to ...

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