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Case1:O4-cv-00343-JJF Document 431-10 Filed O1/31/2007 Page1 0f4

Case 1:O4—cv-00343-JJF Document 431-10 Filed O1/31/2007 Page 2 of 4
Vtmtlavlt
940 F.2d 642 Page 1
940 F.2d 642
(Cite as: 940 F.2d 642)
P, being found to be willful infringer if liability is
Uulled States Cuuu Oli Appeals, found; trial courts, thus, should give serious
pedelslglleule consideration to separate trial on willfulness
QUANTUM CORPQRATION and plus whenever particular attorney—client communications,
Development Corporation, Plaintiffs-Appellees, cncc inopooroo by cclm in cilmcm YcVc¤l that
v_ defendant is indeed confronted with this dilemma.
TANDON CORPORATION, oerendenlaeeellnnl. *642 of Lyon and Lyon. Los
N0_gl,l2g6_ Angeles, Cal., for plaintiffs—appellees; Thomas J.
Morgan, of counsel.
July 31,1991.
John B. Pegram of Davis, Hoxie, Faithfull &
Patent infringement suit was filed. Alleged Hrrpgooor Now York Qityl for dofondnnt-nppolionr:
infringer moved for separate trials on issues of cfccunscl-
willfulness and to certify earlier order compelling
discovery of certain opinion letters of counsel. The ON MOTION
United States District Court for the Northern District
of C81ifOITl13, William n. olllell, ll., J., denied Boforo @E.L and @11.E, Cironirludgosl ono
motion. infringer appealed. Patent holder moved to Sonior Cironit Judeo
dismiss. The Court of Appeals, Michel, Circuit
Judge, held that orders refusing to defer trial on issue Cirooir Judgc-
of willfulness and refusing to certify earlier order
compelling discovery of attorney opinion letters were ORDER
not llnnledlnlely llppenleele tlndel eellnlelnl eldel Tandon Corporation Sooko to oppool rho April 19,
doctrinel 1991 order of the United States District Court for the
Northern District of Califomia, No. C89-1812,
Mellen to dismiss grunted denying its motion for separate trials on the issue of
willfulness and denying its motion to certify an
west Heuduetes earlier order compelling discovery of *643 certain
opinion letters of counsel. Quantum Corporation
Lupatmts @;;>324_2 moves to dismiss the appeal. Because the order
291k324.2 Mostcltcd Cases sought to be appealed is not yet final, we grant
Orders in patent infringement suit refusing to defer Quanmms motion and dlslmss the appeas
trial on issue of willfulness and refusing to certify
earlier order compelling discovery of attorney _ _ BACKGROUND _
opinion letters were not immediately appealable This mime? msgs fn-ml rho primal stages of a
under collateral order doctrine, even though orders mmm ‘PfYmg°m°m sun brought by Qonnrorn
placed alleged infringer in dilemma of choosing corporation mild Plus Dcvclopmcpt Corporation
between asserting attorney-client privilege and against Tandon corporation (Tandon) m
avoiding willfulness finding if infringement was th? United stares Dlsmct Cmnt for tho Northern
found, where orders were effectively reviewable on Dlsmct of Callfomm Io July’ 1990, Quantum
appeal from final judgment. 28 U.S.C.A.§ l292(b), movsd to oompéi Tandon}? prodooo dmumcms
{QQ). relating to prelltlgatlon oplnlon letters of counsel
regarding the patents in suit or, in the alternative, to
preclude all reference to or reliance upon such
ggéllggizn? E;-;:g:gl)CaS€S communications by Tandon. Tandon countermoved
Accugad pa 0uld HOL Without mal for separate trials onlthe issues of willfulness and
C()l1I'('S eelerel eeneldenlllen, be releed le elleene “"‘“l‘° .‘“‘“';°;‘“g. Tghml. if .“"’°°”“yi ‘*“"’” mg
between waiving nnelney-ellenl ellvllege in eldel to ;°“°d“;‘°“f’ fdfm °“ ‘a fmlly and damages: ?“
protect itself from willfulness finding, in which case Or B mia 9 lscoycry Q it atmmcy Opmlon
. . . . . . . . . . letters until after the trlal on llablllty and damages.
lt may rlsk preludlclng itself on question of llablllty,
and maintaining privilege, in which case it may risk
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Case 1:O4—cv-00343-JJF Document 431-10 Filed O1/31/2007 Page 3 of 4
940 F.2d 642 Page 2
940 F.2d 642
(Cite as: 940 F.2d 642)
At a July 1990 hearing, the district court considered disputed question, (2) resolve an important
the motions. It ruled from the bench that liability issue completely separate from the merits of
and damages would be tried together, but deferred the action, and (3) be effectively
ruling on whether willfulness would be tried unreviewable on appeal from a final
separately and whether, after in camera review, judgment. Gulfstream Aerospace Corp. v.
production of the documents would be compelled. Mayacamas C org., 485 U.S. 271, 276, 108
S.Ct. 1133, 1136-37, 99 L.Ed.2d 296 (1988).
After in camera review, on March 13, 1991, the
district court granted Quantum’s motion to compel 121 Proper resolution of the dilemma of an accused
Tandon to produce the attorney-client documents. infringer who must choose between the lawful
Tandon moved for "amendment" of the March 13 assertion of the attorney·client privilege and
order, requesting a ruling on the issue of a separate avoidance of a willfulness finding if infringement is
trial on willfulness, and for certification pursuant to found, is of great importance not only to the parties
28 U.S.C. § 12925bl, {cli 1) of the March 13 order but to the fundamental values sought to be preserved
and of any adverse ruling denying severance of the by the attorney—client privilege. An accused
willfulness issue. The issue of a separate trial on infringer, therefore, should *644 not, without the trial
intervening rights was not pursued after the March court's careful consideration, be forced to choose
1991 proceeding. between waiving the privilege in order to protect
itself from a willfulness finding, in which case it may
On April 18, 1991, the district court denied Tandon's risk prejudicing itself on the question of liability, and
motion to defer the trial on willfulness and denied maintaining the privilege, in which case it may risk
Tandon's motion for certification of the bifurcation being found to be a willful infringer if liability is
and document production issues. Tandon noticed an found. Trial courts thus should give serious
appeal. consideration to a separate trial on willfulness
whenever the particular attorney—client
Quantum moves to dismiss the appeal of Tandon and communications, once inspected by the court in
for attorney fees and costs. Tandon opposes the camera, reveal that the defendant is indeed
motions. Quantum moves for leave to file a reply, confronted with this dilemma. While our court has
with reply attached. Tandon responds with a recognized that refusal of a separate trial will not
surreply. require reversal in every case involving attorney
client communications bearing on willfulness, we
DISCUSSION have suggested the advisability of separate trials in
111 Quantum argues that Tandon's appeal must be appropriate cases. See Fromson v. Western Litho
dismissed as the orders appealed from are Plate & Sugplv Co., 853 F.2d 1568, 1572. 7 USP1)2d
interlocutory and hence not appealable. Tandon 1606, 1611 gFed.Cir.1988) ("That approach may be
argues, however, that this case is one ofasmall class useful in meeting the attomey~client privilege
of decisions too important to be denied review and problem.").
too independent of the cause itself to require that
appellate consideration be deferred until the whole However, we agree with Quantum that these two
case is adjudicated, and therefore that the Cohen orders, which involve immediate discovery and a
collateral order doctrine applies. Cohen 1/.B€lI€[`ICl(I[ refusal to defer the willfulness issue are not now
Industrial Loan Corp. 337 U.S. 541. 546, 69 S.Ct. appealable. They do not satisfy the third requirement
1221, 1225-26, 93 L.Ed. 1528 (1949). FN1 Tandon of the Cohen doctrine, because they are effectively
states that this case "presents an opportunity for this reviewable on appeal from a final judgment. Thus,
Court to show how the attorney—client privilege of an in Jeannette Sheet Glass Cort;. v. United States, 803
accused party can be, and should be, preserved in F.2d 1576. 1581 (Fed.Cir.l9861 our court
most patent cases, while also preserving the emphasized that the Cohen doctrine "is a 'narrow' one
patentee's right of pre—trial discovery relating to whose reach is limited to trial court orders affecting
alleged willful infringement and to reissue rights that will be irretrievably lost' in the absence of
intervening rights." Tandon's Response at 1. an immediate appeal" (quoting Richara'.son-Merrell.
Inc. v. Koller, 472 U.S. 424, 430-31. 105 S.Ct. 2757,
@ As the Supreme Court has recently 2760-61, 86 1..l5d.2d 340 (19851 (emphasis added)).
said, before an order may be considered lFN2| Additionally, the district court properly
final under the Cohen doctrine, the order declined to certify its orders under 28 U.S.C. §
must (1) conclusively determine the 1292110), gc); 1) because, while important, the
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Case 1:04-cv-00343-JJF Document 431-10 Filed 01/31/2007 Page 4 of 4
940 F.2d 642 Page? 3
940 F.2d 642
(Cite as: 940 F.2d 642)
questions of law involved may not be "controlling" dilemma noted above concerns a basic, time-honored
and in any event, their early appellate resolution privilege which surely warrants such careful
would not likely "materially advance the ultimate consideration.
termination of the litigation." FN3|
In sum, we hold that these two orders are not now
@2; Indeed, it is settled that discovery appealable, but determine that appellant had an
orders issued within the context of a primary arguable basis for suggesting otherwise.
proceeding are generally not appealable
orders. 9 Moore's Federal Practice ‘][ Accordingly,
1l0.l3[2]. In addition to not complying
with the third requirement of the Cohen IT IS ORDERED THAT:
doctrine, such discovery orders may present
issues not completely separate from the (l)Quantum's motion to dismiss is granted.
merits and thus the orders are not truly
collateral under the second requirement of *645 (2) Quantum's motion for Costs and fees is
the Cohen doctrine. Similarly, an order denied.
refusing to bifurcate a trial is a routine
discretionary decision of the district court (3) Quantum's motion for leave to tile a reply is
concerning trial management. If these orders granted.
were deemed final under Cohen, the
doctrine would be greatly expanded. But as (4) Leave is granted, sua sponte, to Tandon to file its
we have previously noted, the Supreme surreply.
Court has narrowly circumscribed
application of the collateral order doctrine. 940 F.2d 642
See Cabot Cory. v. United States, 788 F.2d
l539, l543 lFed.Cir.l986). Moreover, as END OF DOCUMENT
our court has recognized, Cohen itself
emphasized the "small class" of cases falling
within the doctrine. Badger-Pow/zatan v.
United States. 808 F.2d 823. 825
gFed.Cir.l986). Were such orders to be
appealable before trial, a flood of piecemeal
appeals would undoubtedly ensue. See QQ;}
v. United States, 480 F.2d 293, 298 (2d
Cir.l973l (in banc), cen. denied, 4l6 U.S.
980. 94 S.Ct. 2413, 40 L.Ed.2d 777 l I974).
@,L Section l292(b) permits a district court
to certify for immediate appeal an order "not
otherwise appealable" when such order
"involves a controlling question of law as to
which there is substantial ground for
difference of opinion and that an immediate
appeal from the order may materially
advance the ultimate termination of the
litigation."
As we do not have in the record before us in this
matter the attorney-client communications, we
intimate no view about and imply no criticism of the
substantive decisions of the district court here.
Procedurally, the court's inspecting the documents in
camera before ruling on the motions to compel
production and defer trial on willfulness was
certainly proper and deserves emulation. The
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