Free Order - District Court of Delaware - Delaware

Case 1:04-cv-00901-JJF Document 382 Filed O2/22/2007 Page 1 of 3
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
AFFYMETRIX, INC., :
Plaintiff, E
v. i Civil Action No. O4-90l JJF
ILLUMINA, INC., ;
Defendant. E
MEMORANDUM ORDER
Pending before the Court is a letter request by Plaintiff
asking the Court to find a document protected by the attorney- i
client privilege (D.I. 339). For the reasons discussed, the
Court will grant Plaintiff's request. ,
I. BACKGROUND
The document in question is an e-mail chain between
Plaintiff's chief patent counsel, Phil McGarrigle, and other
employees of Plaintiff regarding one of Defendant's products.
Plaintiff first discovered that the document was inadvertently
produced at a deposition when Defendant sought to question the
deponent about the document. Plaintiff thereafter notified
Defendant of the inadvertent disclosure, asserted the document
was privileged, and requested that Defendant return or destroy
all copies of the document.1 Defendant complied with Plaintiff's
‘ With respect to Plaintiff's contention that the document
was inadvertently produced, Defendant does not appear to contend
that Plaintiff waived its privilege as a result of the
disclosure. Rather, both parties followed the procedures set
forth in the Protective Order (D.I. 57) regarding inadvertent
disclosure. Thus, the Court will not address whether the
privilege was waived by the disclosure.

Case 1:04-cv-00901-JJF Document 382 Filed O2/22/2007 Page 2 of 3
request but disputed Plaintiff's assertion of privilege. (D.I.
342). Pursuant to section 15.2 of the Protective Order (D.I.
57), Plaintiff brought the dispute to the Court. At the pretrial
conference held on February 8, 2007, the Court agreed to review
the document ip camera.
Plaintiff contends the document in question is protected by
the attorney—client privilege because it concerns patent
prosecution strategy discussions between its chief patent counsel 1
and other employees. In response, Defendant contends that the
document is discoverable because it does not seek or convey legal I
advice, but rather, concerns information about its products. h
(D.I. 342).
II. DISCUSSION
The attorney—client privilege protects communications made
by a client to his attorney in order to obtain legal advice or
services. In re Spalding Sports Worldwide, Inc., 203 F.3d 800,
805 (Fed. Cir. 2000).2 While courts have held that, generally,
the communication of technical information is non—privileged
where the attorney is acting as a mere “conduit” between the
client and the Patent and Trademark Office (“PTO”), the Federal
2 In In re Spalding, the Federal Circuit applied Federal
Circuit law to determine whether the attorney—client privilege
applied to a patentee's invention records because the court
determined that the question related to the substantive issue of
inequitable conduct. 203 F.3d at 802. As Defendant
acknowledges, the document in question here is relevant to the
issue of inequitable conduct, and therefore, the Court will apply
Federal Circuit law.
2

Case 1:04-cv-00901-JJF Document 382 Filed O2/22/2007 Page30f3
Circuit has recognized an exception where the technical
information was provided in order to obtain legal services. IQ.
at 805—806.
Upon review of the document, the Court concludes that it is
protected by the attorney—client privilege because it relates to
a request for legal services. Through the e—mail chain,
Plaintiff’s chief patent counsel sought information from
Plaintiff’s employees regarding one of Defendant’s products in
order to draft patent claims. The Court concludes that the
overall tone of the document concerns a provision of legal
services, and therefore, the attorney was not acting as a mere
“conduit” between the client and the PTO. See IQ. at 806.
Accordingly, the Court concludes that the document is privileged,
and therefore, the Court will grant Plaintiff’s request.]
l\.J2J§
NOW THEREFORE, IT IS HEREBY ORDERED that Plaintiff’s letter
request (D.I. 339) asking the Court to find the e—mail chain
(D.I. 368, sealed attachment) protected by the attorney-client
privilege is GRANTED.
February 22, 2007 \ QMQQ,
ED TATE DISTRICT JUDG
3 Defendant has represented to the Court that it complied
with the Court’s Protective Order and returned and/or destroyed
the document and any copies it had in its possession. Therefore,
further action by the Court on this issue is unnecessary.
3