United States District Court, E.D. Texas, Tyler Division
NICOLE MITCHELL, UNITED STATES MAGISTRATE JUDGE
the Court is Plaintiff SCVNGR, Inc. d/b/a LevelUp's
(“LevelUp”) Motion to Compel Discovery and for
Sanctions. Doc. No. 140. Defendant DailyGobble, Inc. d/b/a
Relevant (“Relevant”) filed a response. Doc. No.
143. Then, LevelUp filed a Reply, Doc. No. 144, and Relevant
filed a Sur-Reply, Doc. No. 151. For the reasons below, the
Motion is GRANTED IN PART and DENIED IN
26, 2015, Plaintiff filed suit against Relevant for
infringement of U.S. Patent No. 8, 639, 619 (“the
'619 Patent”). On January 14, 2016, LevelUp
accepted a Rule 68 Offer of Judgment, which provided that
Claims 1-2, 4-10, and 12-14 of the '619 Patent were
infringed by Relevant and included a cease and desist
preventing Relevant from continuing to infringe the '619
Patent. LevelUp now alleges that Relevant is violating this
injunction and Relevant continues to infringe the '619
Patent in violation of the Court's Order. The Court
ordered discovery to determine LevelUp's post-judgment
the Federal Rules of Civil Procedure, “[p]arties may
obtain discovery regarding any nonprivileged matter that is
relevant to any party's claim or defense. . . .”
Fed.R.Civ.P. 26(b)(1). “Relevant information need not
be admissible at the trial if the discovery appears
reasonably calculated to lead to the discovery of admissible
evidence.” Id. “Courts construe
discovery rules liberally to serve the purposes of discovery:
providing the parties with information essential to the
proper litigation of all relevant facts, eliminating
surprise, and promoting settlement.” Ferko v.
Nat'l Ass'n for Stock Car Auto Racing, Inc., 218
F.R.D. 125, 132 (E.D. Tex. 2003) (citing Oppenheimer
Fund, Inc. v. Sanders, 437 U.S. 340, 351 (1978)).
filed a motion to compel and for sanctions regarding
Relevant's failure to produce a group of emails. Relevant
responds that it has properly withheld the emails. Therefore,
Relevant argues the motion to compel and for sanctions should
be denied. The Court will address the motion to compel and
the motion for sanctions below.
seeks the production of twenty-four emails between Relevant,
Relevant's counsel, and Le Pain Quotidien, Inc.
(“LPQ”). Relevant contends that these emails are
protected by attorney-client privilege because the privilege
extends to third party communications under the common
interest exception. Doc. No. 143. Level Up responds that the
common interest exception does not apply to this case because
LPQ and Relevant are not potential co-defendants.
asserting attorney-client privilege must prove:
(1) the asserted holder of the privilege is or sought to
become a client; (2) the person to whom the communication was
made is (a) a member of a bar of a court, or his subordinate,
and (b) in connection with this communication is acting as a
lawyer; (3) the communication related to a fact of which the
attorney was informed (a) by his client (b) without the
presence of strangers (c) for the purpose of securing
primarily either (i) an opinion on law or (ii) legal services
(iii) or assistance in some legal proceeding, and (d) not for
the purpose of committing a crime or tort; and (4) the
privilege has been (a) claimed and (b) not waived by the
Ferko, 218 F.R.D. at 133-34. However,
“[d]isclosure of privileged information by an attorney
to actual or potential co-defendants, or to their counsel, in
the course of a joint defense does not constitute a waiver of
the attorney-client privilege.” In re Santa
Fe, 272 F.3d 705, 712 (5th Cir. 2001) (citing In re
LTC Securities Litigation, 89 F.R.D. 595 (N.D. Tex.
1981)); accord Aiken v. Tex. Farm Bureau Mut. Ins.
Co., 151 F.R.D. 621, 624-25 (E.D. Tex. 1993) (the common
interest exception is also known as the joint defense
privilege and protects communication that is intended to
“facilitate representation” or “the
rendition of legal services.”); Autobytek, Inc. v.
Dealix, Corp., 455 F.Supp. 569 (E.D. Tex. 2006)
(privilege extends to third party communications
“regarding common legal issues that were intended to
facilitate representation in possible subsequent patent
infringement litigation.”). A potential co-defendant
means that “there is a palpable threat of litigation at
the time of the communication, rather than a mere awareness
that one's questionable conduct might someday result in
conducting an in camera review, the emails were not
made in the course of a joint defense, to facilitate joint
representation, or to discuss a common legal interest.
See In re Santa Fe, 272 F.3d at 712; Aiken,
151 F.R.D. at 624-25. The emails focus on the status of the
underlying proceeding, rather than preparation of a joint
defense or to facilitate representation. Additionally, while
LPQ may have hoped Relevant would prevail because a loss for
Relevant could impact LPQ's business, “[a] shared
rooting interest in the ‘successful outcome of ...