United States District Court, S.D. Texas, Houston Division
NALCO CO., INC. Plaintiff,
BAKER HUGHES INC. AND BAKER PETROLITE CORP. Defendants.
MEMORANDUM AND ORDER
Hanovice Palermo United States Magistrate Judge
before the Court is Nalco Inc.'s (“Nalco”)
motion to compel Baker Hughes, Inc., and Baker Petrolite
Corp. (collectively “Baker”) to produce an email
and testimony that Baker claims is protected under the
attorney-client privilege. ECF No. 256. The Court held a
hearing on July 12, 2017, and ruled on one issue Nalco
raised, reserving ruling on two other issues. See
Order, ECF No. 268.
an antitrust case arising from Baker's allegedly
fraudulent conduct in obtaining a patent from the U.S. Patent
and Trademark Office (“PTO”). Nalco alleges Baker
fraudulently obtained the patent and then used it to
monopolize the relevant market, to mislead this Court in
obtaining a preliminary injunction, and to prevent Nalco from
competing in the market.
Parties are in a discovery dispute concerning the scope of
attorney-client privilege. Nalco filed a motion to compel
after the deposition of Dr. Jerry Weers, one of the inventors
of the Baker patent at issue in this litigation. Nalco asks
the Court to allow it to resume the deposition of Dr. Weers
so that it may continue its examination regarding issues
Baker's counsel instructed him not to answer on the basis
of attorney-client privilege. Nalco seeks to resume Dr.
Weers' deposition to question him about the March 30-31
email thread and his opinions concerning the strength or
weakness of the patent at issue.
privilege “exists ‘to encourage full and frank
communication between attorneys and their
clients.'” OneBeacon Ins. Co. v. T. Wade Welch
& Assocs., No. H-11-cv-3061, 2013 WL 6002166, at *2
(S.D. Tex. Nov. 12, 2013) (Miller, J.) (quoting United
States v. El Paso Co., 682 F.2d 530, 538 (5th Cir.
1982)). The elements of attorney-client privilege are:
“(1) a confidential communication; (2) made to a lawyer
or his subordinate; (3) for the primary purpose of securing
either a legal opinion, legal services, or assistance in a
legal proceeding.” SEC v. Microtune, Inc., 258
F.R.D. 310, 315 (N.D. Tex. 2009) (citing United States v.
Robinson, 121 F.3d 971, 974 (5th Cir. 1997)) (federal
common law governs privilege issue when the court has federal
question subject-matter jurisdiction). The party asserting
the privilege bears the burden to demonstrate how each
communication satisfies all the elements of the privilege.
Id. (citing Hodges, Grant & Kaufmann v.
United States, 768 F.2d 719, 721 (5th Cir. 1985)).
court narrowly construes the privilege to the bounds
necessary to protect these principles because the
“assertion of privileges inhibits the search for
truth.” Id. (quoting Navigant Consulting,
Inc. v. Wilkinson, 220 F.R.D. 467, 477 (N.D. Tex.
2004)). The privilege is limited to the disclosures made to
an attorney that are “necessary to obtain informed
legal advice which might not have been made absent the
privilege.” Id. (quoting Fisher v. United
States, 425 U.S. 391, 403 (1976)). Therefore, “the
privilege does not protect documents and other communications
simply because they result from an attorney-client
relationship.” Id. (citing Navigant
Consulting, 220 F.R.D. at 477) (emphasis added).
privilege applies in the corporate setting when an employee,
on instructions from a superior, communicates with counsel
that which is necessary to supply the basis for legal advice.
Upjohn v. United States, 449 U.S. 383, 394-95
(1981). Communications that reflect counsel's advice to
the corporation do not lose their privileged status when
shared among corporate employees who share responsibility for
the subject matter of the communication. Baptiste v.
Cushman & Wakefield, Inc., No. 3-cv-2102, 2004 WL
330235, at *2 (S.D.N.Y Feb. 20, 2004).“Management
personnel should be able to discuss the legal advice rendered
to them as agents of the corporation.” Weeks v.
Samsung Heavy Indus. Co., No. 93-cv-4899, 1996 WL
341537, at *4 (N.D. Ill. June 20, 1996).
privilege presumptively protects from discovery the
“specific communications between client and
counsel, not the relevant underlying facts, data or
information.” Advanced Cardiovascular Sys., Inc. v.
C.R. Bard, Inc., 144 F.R.D. 372, 374 (N.D. Cal. 1992)
(emphasis in original). The privilege does not protect a
client's knowledge of relevant facts, regardless of
whether he learned the facts from counsel. Baptiste,
2004 WL 330235, at *1.
The March 30-31 Email Chain Contains A Privileged
discovery, Baker produced a March 30-31, 2008, email chain
between two non-lawyer employees of Baker Petrolite,
consisting of four emails. The emails were between Dr. Weers,
one of the inventors of the patent at issue, and Ralph
Naverrete, the Business Coordinator. No lawyer was copied on
the email. Resp. Mot. Compel, Ex. 1, ECF. No. 264-3.
According to Baker, both Dr. Weers and Mr. Naverrete share
responsibility for the patent at issue. During Dr. Weers'
deposition, Nalco's counsel questioned him about this
email chain. Baker's counsel instructed him not to answer
certain questions about the email and ultimately clawed back
the email on the basis of attorney-client privilege.
claims that the attorney-client privilege protects the email
chain because the two employees were seeking legal advice and
sharing legal advice they had recently received. Resp. Mot.
Compel, p. 4-8, ECF No. 264. Baker has submitted a proposed
redacted version of the email chain. ECF No. 270. The Court
finds that the attorney-client privilege protects one of the
redacted sections of the email, but not the other two.
between employees may be privileged in two circumstances.
First, communications may be privileged when a corporate
client shares information with non-attorney employees
“to relay information requested by attorneys.”
OneBeacon Ins. Co., 2013 WL 6002166, at *3 (quoting
SmithKline Beecham Corp. v. Apotex Corp., 232 F.R.D.
467, 477 (E.D. Pa. 2005)); Adams v. Gateway, Inc.,
No. 2:02-CV-106, 2003 WL 23787856, at *11 (D. ...