United States District Court, E.D. Texas, Marshall Division
MEMORANDUM AND ORDER
PAYNE UNITED STATES MAGISTRATE JUDGE.
Inc. moves the Court to compel the production of certain
documents from Raytheon Company based on Raytheon's
purported waiver of attorney-client privilege. Cray's
Motion [Dkt. # 108]. After considering the parties'
briefing and arguments of counsel made during a February 2017
hearing, the Court DENIES the motion.
of its responses to Cray's discovery requests, Raytheon
produced three invention disclosure questionnaires for the
patents asserted in this litigation. Kohm Decl. [Dkt. #
108-1] ¶ 2. According to Cray, Raytheon's
intentional production of the questionnaires waived privilege
with respect to preparation and prosecution of the patents.
Thus, Cray asks the Court to order Raytheon to produce all
documents and provide all previously withheld testimony
concerning that subject matter.
support its position that these questionnaires were
privileged documents, Cray relies on testimony from three
witnesses. First, Gary Early, one of the inventors of the
asserted patents, testified that Raytheon employees complete
invention disclosure questionnaires for review by an
invention review committee that includes attorneys. Early
Depo. [Dkt. # 108-2] at 13:5-14:6; 20:18-22:21. Early
explained that if Raytheon proceeds with prosecution after
reviewing the questionnaires, the employees who submit such
disclosures communicate with in-house and outside counsel
during prosecution. Id. at 102:5- 11.
James Ballew, also an inventor, testified that he and other
Raytheon employees completed the questionnaires for
Raytheon's attorneys' use when preparing the patent
applications. Ballew Dep. [Dkt. # 108-4] at 170:24-171:6.
Ballew described meeting with Raytheon's outside counsel
to provide further information about the inventions.
Id. at 172:1 to 174:1.
Raytheon's former outside prosecution counsel, Travis
Thomas, testified it was typical for counsel to meet with
inventors and discuss the invention and prior art. Thomas
Dep. [Dkt. # 108-3] at 19:9-23; 22:22-23:10. Thomas also
testified he treated questionnaires as protected by
attorney-client privilege. Id. at 20:10-22.
responds that the questionnaires were never privileged, so
there is no waiver. According to Raytheon's policies, the
questionnaires are corporate forms reviewed by a
“decision-making body [including technical specialists]
which, as a primary function reviews and evaluates the
technical and economic (business) merits of an
invention and determines whether patent, trade secret or
other types of protection or courses of action should be
pursued.” Stringfield Decl. [Dkt. # 117-1] ¶¶
3, 8 (quoting RAYCRAY00220516) (emphasis added). An
“Invention Review Subcommittee” evaluates the
questionnaires based on “[w]hether an invention . . .
significantly benefits Ray-theon's competitive
advantage in one or more relevant markets or
furthers Raytheon's business interest by
presenting licensing or business partnership opportunities
with third parties.” Id. ¶ 6 (quoting
RAYCRAY00220519) (emphasis added). Then, if the Invention
Review Subcommittee “approves the invention on its
technical merit, the invention is submitted to [a]
Patent Evaluation Committee for a broader review with
increased focus on the business justification for filing a
patent application or protecting the invention as a trade
secret.” Id. ¶ 7 (quoting
RAYCRAY00220519-520) (emphasis added). If the relevant
Raytheon business-decision committees find a business
justification to pursue patent protection, Raytheon submits
the questionnaires to outside counsel for the purpose of
preparing a patent application. Id. ¶ 10
(citing White Tr. at 307:23-308:13).
attorney-client privilege is the client's right to refuse
to disclose “confidential communications between
attorney and client made for the purpose of obtaining legal
advice.” Genetech, Inc. v. U.S. Int'l Trade
Comm'n, 122 F.3d 1409, 1415 (Fed. Cir. 1997). It
protects only those communications that would not have been
made but for the privilege. See Fisher v. United
States, 425 U.S. 391, 403 (1976). In determining whether
the privilege applies in a given case, the ultimate question
is whether a “communication is one . . . made . . . for
the purpose of obtaining legal advice or services.”
In re Spalding Sports Worldwide, Inc., 203 F.3d 800,
805 (Fed. Cir. 2000).
heavily on In re Spalding, Cray argues the
questionnaires were privileged because (1) their purpose was
to enable Raytheon, through counsel, to decide whether a
potential invention is patentable, and (2) Raytheon's
outside counsel confirmed he treated such disclosures as
privileged. Cray's Motion [Dkt. # 108] at 4. In In re
Spalding, the inventors submitted the invention record
directly to Spalding's corporate legal department and the
communication was made only for the purpose of obtaining
legal advice. In re Spalding, 203 F.3d at 803.
unlike In re Spalding, Raytheon did not create the
documents to obtain legal advice. Rather, Raytheon employees
completed the questionnaires for business purposes. Only
after the proposed inventions satisfied multiple levels of
business and technical review did Raytheon provide the
questionnaires to outside patent counsel. That Thomas treated
the questionnaires as privileged doesn't alter their
underlying business purpose.