Free Motion to Compel - District Court of Delaware - Delaware

Case 1:04-cv-00360-JJF

Document 92

Filed 02/21/2006

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE __________________________________________ ) TRILEGIANT LOYALTY SOLUTIONS, INC. ) ) Plaintiff, ) ) v. ) C.A. No. 04-360-JJF ) MARITZ, INC. ) ) Defendant. ) __________________________________________) PLAINTIFF'S SECOND MOTION TO COMPEL PRODUCTION OF DOCUMENTS Plaintiff Trilegiant Loyalty Solutions, Inc. ("TLS") moves, pursuant to the discovery disputes procedures set forth in the Scheduling Order governing this matter, for an order compelling defendant Maritz, Inc. ("Maritz") to produce (1) in unredacted form all documents that Maritz has produced in redacted form without logging the redacted information on a privilege log, and (2) certain documents withheld as privileged for which Maritz has provided cookie-cutter descriptions that do not meet the requirements of Fed. R. Civ. P. 26(b)(5) and do not enable TLS to assess Maritz's claims of privilege, particularly in light of Maritz's reliance on an advice-of-counsel defense. Alternatively, TLS requests that Maritz be ordered to submit these documents to the Court for an in camera review to assess Maritz's claims of privilege. TLS also requests that any costs associated with the re-deposition of witnesses that may be necessary after improperly withheld documents are produced be assessed against Maritz. Maritz has the burden to claim privilege "expressly" and to "describe the nature of the documents, communications, or things not produced or disclosed in a manner that, without revealing information itself privileged or protected, will enable other parties to assess the applicability of the privilege or protection." Fed. R. Civ. P. 26(b)(5). Maritz has refused TLS's

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repeated requests that it comply with Rule 26(b)(5). First, Maritz routinely produced documents in redacted form without logging the redacted portions on a privilege log. Some redacted documents were produced more than eight months ago. TLS twice asked Maritz to log these documents. Exs. 2 and 4. Having wholly and willfully ignored Rule 26(b)(5), Maritz now has waived its right to seek protection for unlogged redactions and should be ordered to produce all such documents in unredacted form. Get-AGrip, II, Inc. v. Hornell Brewing Co., 2000 U.S. Dist. LEXIS 11961, at *10 (E.D. Pa. Aug. 8, 2000); McGrath v. Cosco, Inc., 1999 U.S. Dist. LEXIS 5893, at *3-4 (E.D. Pa. Apr. 20, 1999). Second, Maritz has raised an advice-of-counsel defense to willful infringement but refuses to provide a privilege log with descriptions sufficient to enable TLS to assess its claim of privilege in light of this defense. Nearly one-half of the documents listed on Maritz's December 2, 2005 privilege log were described only as involving a communication between counsel and client "conveying legal advice regarding patent protection" or "conveying legal advice regarding obtaining patent protection."1 TLS asked Maritz to identify the patent or patent application discussed in the document so that TLS could be assured that it is not a patent in suit. Ex. 2. Maritz responded by producing 13 of the documents complained of,2 which revealed that Maritz in fact had been using these broad descriptions to withhold documents improperly, but refused to provide more specificity for the remaining documents. Maritz produced a revised log on January 23, 2006 that uses the same cookie-cutter description for even more documents.3 TLS repeated its request for more information, Ex. 4, to no avail. The fact that Maritz has used the same

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Ex. 1, documents 5-10, 13-17, 19-33, 43-49, 51-53, 55-75, 82, 83, 85, 87-91, 105-107, 117-119, 168 and 171. A similar problem attends to the descriptions of documents 1 and 54 (also highlighted in orange). Documents 13, 16, 19, 23, 25, 27, 28, 32, 33, 44, 61, 86 and 87. Ex. 3, documents 172, 187 and 188 (descriptions highlighted in orange). 2

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description for withheld documents as well as produced documents demonstrates that TLS cannot know from reading that description if that document is properly withheld as privileged. More than one-quarter of the documents were described as involving a communication between counsel and client regarding a "contractual agreement."4 TLS twice asked Maritz to identify the parties to the contract and the type of contract, so it can confirm that the contractual agreement being discussed does not relate to Maritz's possible licensing or purchase of the patents in suit from Netcentives, Inc. (from whom Trilegiant Corp. purchased the patents). TLS knows, from documents that Maritz produced pursuant to its advice-of-counsel defense and from the testimony of Maritz witnesses, that Maritz was involved in discussions about the patents with Netcentives. Maritz responded by producing 11 of the documents complained of,5 again proving that one cannot know from reading the description whether that document is properly withheld as privileged. TLS's request has otherwise fallen on deaf ears; Maritz's revised log still does not provide sufficient information to establish its claim of privilege. A large number of documents were described as involving a communication regarding a "business opportunity" or "potential business opportunity."6 TLS twice asked Maritz to identify the parties to, and a brief description of, the business opportunity so TLS can assure itself that the business opportunity does not relate to the patents in suit or Netcentives. TLS knows, from documents that Maritz produced pursuant to its advice-of-counsel defense and from the testimony of Maritz witnesses, that Maritz pursued business opportunities with Netcentives that

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Ex. 1, documents 18, 34-42, 76-80, 84, 121, 127-131, 133-142, 144-153, 155-158 and 167 (descriptions highlighted in yellow). Documents 40, 41, 131, 133, 146, 147, 149, 150, 151 and 157. Ex. 1, documents 2, 4, 50, 81, 97, 108, 109, 120, 143, 154, 159-165 and 170 (descriptions highlighted in green); Ex. 3, documents 176, 179 and 184. 3

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relate to the subject matter of the patents in suit. Maritz has produced three of these documents,7 but refuses to provide further information about documents it continues to withhold. TLS twice asked Maritz to provide similar information for documents described only as involving communications regarding "litigation," "programs," or "employee investments."8 TLS cannot tell from these bare-bones descriptions whether the withheld documents relate to Maritz's advice-of-counsel defense. Maritz has refused TLS's requests that it identify the parties to and the subject matter of the litigation, program or employee investment. Maritz produced one of these documents,9 but its revised log still does not support its claim of privilege. CONCLUSION Because Maritz has provided either no information as to the basis for its assertions of privilege (in the case of the redacted documents) or provided inadequate descriptions despite repeated requests for more information, TLS's motion to compel should be granted. MORRIS, NICHOLS, ARSHT & TUNNELL LLP /s/ Maryellen Noreika Maryellen Noreika (#3208) 1201 N. Market Street P.O. Box 1347 Wilmington, DE 19899 (302) 658-9200 ___________

OF COUNSEL: Steven Lieberman Sharon L. Davis Rothwell, Figg, Ernst & Manbeck, P.C. 1425 K Street, N.W. Suite 800 Washington, D.C. 20005 (202) 783-6040 February 21, 2006

Attorneys for Plaintiff Trilegiant Loyalty Solutions, Inc.

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Documents 109, 159 and 160. Ex. 1, documents 12, 100, 112, 122-126, 132 and 166 (descriptions highlighted in blue). Document 12. 4

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RULE 7.1.1 CERTIFICATE I hereby certify that the subject of the foregoing motion has been discussed with counsel for the defendant and that we have not been able to reach agreement.

/s/ Maryellen Noreika Maryellen Noreika (#3208)

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CERTIFICATE OF SERVICE The undersigned hereby certifies that on February 21, 2006 she electronically filed the Plaintiff's Second Motion To Compel Production of Documents with the Clerk of the Court using CM/ECF, which will send notification of such filing(s) to the following: Patricia Smink Rogowski Connolly, Bove, Lodge & Hutz I also certify that copies were caused to be served on February 13, 2006 upon the following in the manner indicated: BY HAND Patricia Smink Rogowski Connolly, Bove, Lodge & Hutz LLP The Nemours Building 1007 N. Orange Street Wilmington, DE 19801 BY EMAIL J. Bennett Clark Senniger Powers One Metropolitan Square St. Louis, MO 63102

/s/ Maryellen Noreika Maryellen Noreika (#3208) MORRIS, NICHOLS, ARSHT & TUNNELL LLP [email protected]