Deering Milliken Research Corp. v. Tex-Elastic Corp.
| Decision Date | 14 December 1970 |
| Docket Number | 69-1096,70-493.,70-295,70-683,70-14,70-358,70-386,70-677,70-391,Civ. A. No. 70-622,70-385,70-628,68-705 |
| Citation | 320 F. Supp. 806 |
| Court | U.S. District Court — District of South Carolina |
| Parties | DEERING MILLIKEN RESEARCH CORPORATION, Plaintiff, v. TEX-ELASTIC CORPORATION, Defendant. DEERING MILLIKEN RESEARCH CORPORATION, Plaintiff, v. LAWRENCE TEXTURING CORPORATION, Defendant. DEERING MILLIKEN RESEARCH CORPORATION, Plaintiff, v. NATIONAL SPINNING COMPANY, Inc., Defendant. DEERING MILLIKEN RESEARCH CORPORATION, Plaintiff, v. UNITED MERCHANTS AND MANUFACTURERS, INC., Defendant. DEERING MILLIKEN RESEARCH CORPORATION, Plaintiff, v. TEXFI INDUSTRIES, INC., Defendant. DEERING MILLIKEN RESEARCH CORPORATION, Plaintiff, v. The DUPLAN CORPORATION and Burlington Industries, Inc., Defendants. DEERING MILLIKEN RESEARCH CORPORATION, Plaintiff, v. MADISON THROWING COMPANY, Defendant. DEERING MILLIKEN RESEARCH CORPORATION, Plaintiff, v. The SCHWARZENBACH-HUBER COMPANY, Defendant. DEERING MILLIKEN RESEARCH CORPORATION, Plaintiff, v. OLYMPIA MILLS, INC., Defendant. DEERING MILLIKEN RESEARCH CORPORATION, Plaintiff, v. JONATHAN LOGAN, INC., Defendant. DEERING MILLIKEN RESEARCH CORPORATION, Plaintiff, v. LEON-FERENBACH INCORPORATED, Defendant. DEERING MILLIKEN RESEARCH CORPORATION, Plaintiff, v. HEMMERICH INDUSTRIES, Defendant. DEERING MILLIKEN RESEARCH CORPORATION, Plaintiff, v. FRANK IX & SONS VIRGINIA CORPORATION, Defendant. |
Thomas A. Evins, Means, Evins, Browne & Hamilton, Spartanburg, S. C., and Simon H. Rifkind, Paul, Weiss, Goldberg, Rifkind, Wharton & Garrison, New York City, for plaintiff.
David Rabin, Greensboro, N. C., and E. P. Perrin, Spartanburg, S. C., for defendant Texfi Industries, Inc.
Fletcher Mann, Leatherwood, Walker, Todd & Mann, Greenville, S. C., Mark F. Hughes, New York City, Paul B. Bell, Parrott, Bell, Seltzer, Park & Gibson, Charles B. Park, III, Parrott, Bell, Seltzer, Park & Gibson, Charlotte, N. C., Anthony F. Phillips, Willkie Farr & Gallagher, New York City, for defendant Duplan Corporation.
John W. Malley, William K. West, Cushman, Darby & Cushman, Washington, D. C., O. G. Calhoun, Haynsworth, Perry, Bryant, Marion & Johnstone, Greenville, S. C., for defendant Burlington Industries, Inc.
O. G. Calhoun, Haynsworth, Perry, Bryant, Marion & Johnstone, Greenville, S. C., John W. Malley, William K. West, Cushman, Darby & Cushman, Washington, D. C., for defendant Madison Throwing Co.
Mark F. Hughes, New York City, Paul B. Bell, Charles B. Park, III, Charlotte, N. C., Anthony F. Phillips, New York City, Fletcher C. Mann, Greenville, S. C., for defendant Schwarzenbach-Huber Co.
Mark F. Hughes, Anthony F. Phillips, New York City, Paul B. Bell, Charles B. Park, III, Charlotte, N. C., Fletcher C. Mann, Greenville, S. C., for defendant Olympia Mills, Inc.
Mark F. Hughes, Anthony F. Phillips, New York City, Paul B. Bell, Charles B. Parks, III, Charlotte, N. C., and Fletcher C. Mann, Greenville, S. C., for defendant Jonathan Logan, Inc.
John W. Malley, William K. West, Washington, D. C., and O. G. Calhoun, Greenville, S. C., for defendant Leon-Ferenbach Incorporated.
David Rabin, Greensboro, N. C., and E. P. Perrin, Spartanburg, S. C., for defendant Hemmerich Industries.
Mark F. Hughes, Anthony F. Phillips, New York City, Paul B. Bell, Charles B. Park, III, Charlotte, N. C., and Fletcher C. Mann, Greenville, S. C., for defendant Frank Ix & Sons Virginia Corporation.
David Rabin, Greensboro, N. C., and E. P. Perrin, Spartanburg, S. C., for defendant Tex-Elastic Corporation.
Mark F. Hughes, Anthony F. Phillips, New York City, Paul B. Bell, Charles B. Park, III, Charlotte, N. C., for defendant Lawrence Texturing Corporation.
John W. Malley, William K. West, Washington, D. C., O. G. Calhoun, Greenville, S. C., for defendant National Spinning Co., Inc.
Mark F. Hughes, New York City, Paul B. Bell, Charles B. Park, III, Charlotte, N. C., for defendant United Merchants and Manufacturers, Inc.
These actions, which are combined for purposes of the motions hereafter disposed of, involve the right of the plaintiff Deering Milliken Research Corporation (hereafter referred to as DMRC) to recover payments allegedly due under certain sublicense agreements between it and a number of the defendants herein covering the use of certain patented processes or for infringement. In denying liability, the defendants have, inter alia, put in issue the validity of the patents embraced in the sublicense agreements and have charged anti-trust violations, on account of which recovery against the plaintiff is in turn sought.
The matter before me now involves the application of the plaintiff, DMRC, for a protective order under Rule 26(b) (4), relieving it from answering, either in whole or as presently phrased, certain interrogatories propounded by the defendants.
The first objection made by the plaintiff is directed at so much of Interrogatories 5 to 10, inclusive, 19(d) and 51 as would require information regarding opinions, reports or analyses prepared by counsel. It contends that, unless so limited, the interrogatories are violative of the attorney-client privilege or the work-product doctrine of Hickman v. Taylor (1947) 329 U.S. 495, 67 S.Ct. 385, 91 L. Ed. 451, as incorporated in revised Rule 26(b) (3). The defendants respond that, by their interrogatories in question, they do not demand the production of any opinions, "documents, or any tangible things" but seek merely an identification of the same; and they contend that any objections such as those now raised by DMRC are premature and should await the filing of a motion to produce. In any event, the defendants assert that the mere identification of the opinions, reports and memoranda would not infringe on the attorney-client privilege or the work-product doctrine.1 The defendants have, however, gone beyond this and have suggested that the attorney-client privilege and the work-product doctrine do not apply in either patent or anti-trust litigation and that these objections of DMRC are without merit. They assert, in addition, that many of the opinions and memoranda sought to be identified through the interrogatories were prepared by the plaintiff's "house counsel", who, they claim are not within the attorney-client privilege or the work-product doctrine; and finally, they charge that the plaintiff has waived, at least to some extent, its claim of privilege, incorporating in its brief certain letters that, in their judgment, represented disclosure of legal opinions to third parties and thus constitued waiver pro tanto of the privilege.
Of course, if the attorney-client privilege and the work-product doctrine are inapplicable to patent and antitrust suits, then the objections by the plaintiff are without merit. It seems clear to me, however, that there is no sound basis for this contention; and that, taking into consideration the peculiar features of these types of action, both the attorney-client privilege and the work-product doctrine are to be honored.2 On the other hand, the issue of what opinions, reports or memoranda are immune from discovery under either the attorney-client privilege or work-product doctrine may well present a difficult problem only to be resolved after hearing, fixing the rules to be applied in determining immunity, and after an in camera inspection by the Court of the several reports or memoranda themselves. However, that problem is not now properly before me. As the defendants argue, the only question presently posed is the extent to which the defendants may secure an identification of opinions, reports and analyses by way of a preliminary to a motion to produce. Manifestly, the defendants are entitled, without invading the attorney-client privilege, to secure sufficient identification of the material to support a motion to produce. On the other hand, the Court must be careful by its ruling not to broaden the identification by the plaintiff to such extent as to compromise or defeat the plaintiff's right to its privilege either under the attorney-client privilege or the work-product rule.3 Giving due consideration to the rights of all parties, I am convinced that, so far as reports, opinions or analyses of lawyers are concerned, the plaintiff need only give the names of the author, his legal qualifications, whether he is "outside" or "house" counsel, and the jurisdictions in which he is authorized to practice. Specifically, the contents of such opinions, reports or analyses need not be given until the discoverability of the same and the propriety of their production may be determined after hearing4 to resolve whether either the attorney-client privilege or the work-product doctrine applies to each such opinion or report.5 If a subsequent motion to produce is made in connection with these reports, opinions and analyses, it may well be that the plaintiff will be required to set forth in general terms its claim of privilege to each separate report and to prepare and file for the in camera use by the Court, "a document by document description" of the several opinions or reports claimed covered by the attorney-client privilege or the work-product doctrine. Cf., Stix Products, Inc. v. United Merchants & Mfgrs., Inc., supra, at pp. 339-340 (47 F.R.D.).
The plaintiff also objects to Interrogatory 14 which seeks the name and address of, and the nature of agreement with all licensees of the plaintiff. In their argument justifying this Interrogatory, the defendants state that the purpose of this Interrogatory is to ascertain whether any licensee has been given terms different from those extended the defendants in these suits. While I am sure the Interrogatory was not designed for this purpose, plaintiff fears that compliance with such Interrogatory would generate additional delinquencies by its other licensees. Since the defendants indicate that their only purpose in this...
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