Duplan Corp. v. Moulinage et Retorderie de Chavanoz

• Decision Date: 24 March 1975
• Docket Number: No. 74--1221,74--1221
• Citation: 509 F.2d 730
• Parties: 1974-2 Trade Cases 75,297 The DUPLAN CORPORATION, Appellee, v. MOULINAGE et RETORDERIE de CHAVANOZ, Appellant, Deering Milliken, Inc., et al., Defendants.
• Court: U.S. Court of Appeals — Fourth Circuit

Page 730

509 F.2d 730

1974-2 Trade Cases 75,297

The DUPLAN CORPORATION, Appellee, v. MOULINAGE et RETORDERIE de CHAVANOZ, Appellant Deering Milliken, Inc., et al., Defendants.

No. 74--1221.

United States Court of Appeals Fourth Circuit.

Argued April 14, 1974.

Decided Oct. 18, 1974.

As Amended on Denial of Rehearing

Dec. 20, 1974.

Certiorari Granted March 24, 1975.

See 95 S.Ct. 1438.

Jay H. Topkis, New York City (Butler, Means, Evins & Browne, Spartanburg, S.C., and Paul, Weiss, Rifkind, Wharton & Garrison, New York City, on brief), for appellant Chavanoz.

Fletcher C. Mann, Greenville, S.C. (Allan Trumbull, New York City, O. G. Calhoun, Jr., Greenville, S.C., John J. Barnhardt, III, Charlotte, N.C., Michael R. Abel, Greensboro. N.C., and Lawrence A. Hymo, Washington, D.C., on brief), for appellee Duplan Corp.

Before ADAMS, ^* FIELD and WIDENER, Circuit Judges.

WIDENER, Circuit Judge:

This case presents the question whether an attorney's opinion work product material developed in prior terminated litigation may properly become the subject of discovery in connection with subsequent litigation. The issue involves the work product doctrine of Hickman v. Taylor, 329 U.S. 495, 67 S.Ct. 385, 91 L.Ed. 451 (1947), and the scope of the protection afforded a lawyer's 'mental impressions, conclusions, opinions, or legal theories' by Rule 26(b)(3) of the Federal Rules of Civil Procedure. ¹

We hold that such opinion work product material, as distinguished from material not containing mental impressions, conclusions, opinions, or legal theories, is immune from discovery although the litigation in which it was developed has been terminated. Thus, for reasons which follow, we vacate the judgment of the district court and remand.

This patent-antitrust litigation presently consists of 37 cases which have been consolidated in the district court. Duplan Corporation (the throwsters) brought this suit charging Moulinage et Retourderie de Chavanoz (Chavanoz) and others with violating Sections 1 and 2 of the Sherman Act by denying the throwsters a free and open market for the purchase of unlicensed royalty-free false twist machines. Claiming patent misuse and inequitable conduct on the part of Chavanoz in dealing with the United States Patent Office, the throwsters also seek a declaratory judgment that 21 patents owned by Chavanoz are invalid, unenforceable, and not infringed.

In this context, the throwsters seek discovery of work product material developed by Chavanoz's attorneys and others relating to 1964 settlement agreements with Leesona Corporation, ² and also relating to knowledge by Chavanoz of the state of the prior art involved in its patented process. ³

In an earlier appeal, Duplan Corp. v. Moulinage et Retourderie de Chavanoz, 487 F.2d 480 (4th Cir. 1973), we held, 'upon the narrow question whether upon the termination of litigation the work product documents prepared incident thereto lose the qualified immunity extended to them under Rule 26(b)(3), Federal Rules of Civil Procedure,' they do not automatically 'become freely discoverable in subsequent and unrelated litigation.' ⁴ Because we were not then confronted with any claim relating to opinion work product, we dealt solely with the first sentence of Rule 26(b)(3) as applied to factual materials contained in an attorney's files.

Upon remand, the district court separately reviewed the documents in question, and in an order dated December 21, 1973 directed Chavanoz to produce 105 of them. Fifty-eight of these 105 documents have been produced; the remaining 47 were the subject of a motion for reconsideration by Chavanoz. As to these, Chavanoz claimed they were protected from discovery under Rule 26(b)(3) since they contained mental impressions, conclusions, opinions, and legal theories of attorneys and other representatives of Chavanoz prepared in anticipation of litigation or for trial. Nevertheless, on February 5, 1974, the district court ordered production of 22 of the 47 documents, finding that as to each of these the throwsters had demonstrated 'substantial need' and 'undue hardship.' And although it acknowledged that Rule 26(b)(3) accords an absolute privilege during pending litigation to opinion work product materials prepared incident thereto, the court held that immunity ceases and the protection becomes only 'qualified' once the litigation for which they were prepared terminates.

Certainly, the most controversial problem in the discovery area is the extent to which a party may require divulgence of facts, legal contentions, or trial tactics gathered or devised by his adversary in preparation for litigation. ⁵ The Supreme Court in Hickman v. Taylor, 329 U.S. 495, 67 S.Ct. 385, 91 L.Ed. 451 (1947), granted certain of these materials a qualified immunity. There the defendant's counsel had personally secured oral and written statements from witnesses in preparation for pending litigation. The plaintiff's counsel, in order to prepare for his own examination of these witnesses, sought copies of these signed written statements and detailed resumes of the oral statements. Characterizing these materials as the 'work product' of the lawyer, the court held that without a showing of special need they were privileged from discovery.

In the federal courts from 1946 to 1970, the scope of Hickman and the work product doctrine was left to adjudication on a case by case basis. The decisions were often conflicting, and we have previously quoted one court's remark that Hickman v. Taylor had opened a Pandora's Box. ⁶ After numerous abortive attempts to reconcile the Rules with Hickman, the Advisory Committee on Civil Rules finally agreed upon a draft of Rule 26(b)(3) of the Federal Rules of Civil Procedure. As adopted by the Supreme Court in 1970, Rule 26(b) (3) contains these special provisions for trial preparation materials:

'Subject to the provisions of subdivision (b)(4) of this rule, a party may obtain discovery of documents and tangible things otherwise discoverable under subdivision (b)(1) of this rule and prepared in anticipation of litigation or for trial by or for another party or by or for that other party's representative (including his attorney, consultant, surety, indemnitor, insurer, or agent) only upon a showing that the party seeking discovery has substantial need of the materials in the preparation of his case and that he is unable without undue hardship to obtain the substantial equivalent of the materials by other means. In ordering discovery of such materials when the required showing has been made, the court shall protect against disclosure of the mental impressions, conclusions, opinions, or legal theories of an attorney or other representative of a party concerning the litigation.'

The first sentence grants a qualified immunity to 'documents and tangible things . . . prepared in anticipation of litigation.' The second sentence, however, provides '(i)n ordering discovery of such materials . . . the court shall protect against disclosure of the mental impressions. . . .' (Emphasis added) By their terms, the two sentences are complementary. Thus, it is apparent that the clear command of the second sentence to 'protect against disclosure' applies to all the materials referred to in the first sentence. In our view, no showing of relevance, substantial need or undue hardship should justify compelled disclosure of an attorney's mental impressions, conclusions, opinions or legal theories. This is made clear by the Rule's use of the term 'shall' as opposed to 'may.'

The district court, however, reasoned that what was a mental impression, opinion, conclusion, or legal theory, although absolutely protected during the pendency of a lawsuit, may change to an 'operative fact' in a subsequent case once the earlier lawsuit is terminated. And should this happen, upon a proper showing of substantial need and undue hardship, the district court held that it might in its discretion order the production of opinions and conclusions where the denial of such production would frustrate the demands of justice and result in suffocation of the truth.

The district court then devised an operative fact exception to the otherwise absolute immunity accorded opinion work product by Rule 26(b)(3). ⁷ In our view, this construction fails to comport with the policies underlying Hickman v. Taylor and Rule 26(b)(3).

It seems clear from the whole tenor of the Hickman opinion that the court was concerned with protecting the thought processes of lawyers and thus the very adversary system. As Justice Murphy stated in this now classic passage from Hickman:

'Historically, a lawyer is an officer of the court and is bound to work for the advancement of justice while faithfully protecting the rightful interests of his clients. In performing his various duties, however, it is essential that a lawyer work with a certain degree of privacy, free from unnecessary intrusion by opposing parties and their counsel. Proper preparation of a client's case demands that he assemble information, sift what he considers to be the relevant from the irrelevant facts, prepare his legal theories and plan his strategy without undue needless interference. That is the historical and the necessary way in which lawyers act within the framework of our system of jurisprudence to promote justice and to protect their clients' interests.' 329 U.S. at 510--511, 67 S.Ct. at 393.

Should an advocate's thoughts, theories, opinions, and impressions, collected and developed during pending litigation, become discoverable in connection with later litigation because they are thought to be relevant, our adversary system would clearly suffer. Its foundation would be undermined. And in our view, the fears articulated by the Hickman court should apply here with equal force:

'Were such materials open to opposing counsel on mere demand, much of what is now put down in writing would remain unwritten. An attorney's thoughts,...