Friday, February 7, 2014, 11:44 AM

Court Does Not Require Internal Communications Of Outside Counsel To Be Listed On Privilege Log

Magistrate Judge Alan Baverman issued an order denying a counterclaimant's motion to compel a more complete privilege log, and granting-in-part a motion seeking access to four deposition transcripts filed under seal in a related case. In a patent infringement suit between patentee Catch Curve, Inc. and j2 Global Communications, Inc. (collectively, "j2") and Integrated Global Concepts, Inc. ("IGC"), IGC asserted a counterclaim of "sham litigation" (previously reported here), alleging that j2 knew that IGC's accused MaxEmail product did not and could not infringe the asserted patents.

In an earlier ruling, District Judge Totenberg ruled that at the present time IGC could only seek discovery on the objective prong of the "sham litigation" test set forth in Professional Real Estate Investors, Inc. v. Columbia Pictures Indus., Inc., 508 U.S. 49, 60 & n.5 (1993), which held that a lawsuit must be "objectively baseless in the sense that no reasonable litigant could realistically expect success on the merits."  Judge Totenberg restricted that discovery to whether j2 personnel had actual knowledge that the MaxEmail system could not possibly infringe the patents, as well as to the factual and legal bases for j2's infringement contentions.

j2 submitted a privilege log during discovery listing privileged communications between j2 personnel and its general counsel, and between j2's general counsel and j2's outside counsel, Sullivan and Cromwell.  IGC claimed that j2 should also be required to log internal communications between Sullivan and Cromwell attorneys because j2 was relying on its experienced patent counsel for the factual and legal bases of its infringement contentions.  Magistrate Judge Baverman pointed out that whatever Sullivan and Cromwell attorneys discussed or believed internally did not have any bearing on j2 personnel's actual knowledge or on the objective prong of the "sham litigation" test.  Further, the Court held that a litigation counsel privilege log was not reasonably calculated to lead to the discovery of admissible evidence, and that while they may be relevant to the subjective intent either j2 or its counsel possessed at the time of filing, establishment of the objective prong was a prerequisite to reaching discovery on the subjective prong.

The Court did partially grant IGC's motion for access to deposition transcripts filed under seal in a related j2 patent case.  The Court held that two of the four requested transcripts discussed the patents and technology at issue and thus could be viewed by IGC subject to the protective order.

Catch Curve, Inc. v. Integrated Global Concepts, Inc., 1:06-cv-2199-AT, Dkt. No. 224 (January 17, 2014).

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