Duplan Corporation v. Deering Milliken, Inc., Civ. A. No. 71-306

CourtUnited States District Courts. 4th Circuit. United States District Court of South Carolina
Citation397 F. Supp. 1146
Docket Number70-391,70-14,70-683,Civ. A. No. 71-306,71-127 and 71-283.,70-628,69-777,70-358,71-87 to 71-102,70-250,70-385,71-126,68-705,71-115,70-968,70-386,70-189,70-295,70-622,70-677,70-493,69-1096
PartiesThe DUPLAN CORPORATION, Plaintiff, v. DEERING MILLIKEN, INC., et al., Defendants. DEERING MILLIKEN RESEARCH CORPORATION, Plaintiff, v. The DUPLAN CORPORATION and Burlington Industries, Inc., Defendants. The DUPLAN CORPORATION et al., Plaintiffs on the Counterclaim, v. DEERING MILLIKEN RESEARCH CORPORATION, Defendant on the Counterclaim, and Deering Milliken, Inc., et al., Additional Defendants on the Counterclaim.
Decision Date13 February 1975

397 F. Supp. 1146

The DUPLAN CORPORATION, Plaintiff,
v.
DEERING MILLIKEN, INC., et al., Defendants.

DEERING MILLIKEN RESEARCH CORPORATION, Plaintiff,
v.
The DUPLAN CORPORATION and Burlington Industries, Inc., Defendants.

The DUPLAN CORPORATION et al., Plaintiffs on the Counterclaim,
v.
DEERING MILLIKEN RESEARCH CORPORATION, Defendant on the Counterclaim,
and
Deering Milliken, Inc., et al., Additional Defendants on the Counterclaim.

Civ. A. Nos. 71-306, 70-968, 69-1096, 68-705, 69-777, 70-14, 70-189, 70-250, 70-295, 70-358, 70-385, 70-386, 70-391, 70-493, 70-622, 70-628, 70-677, 70-683, 71-87 to 71-102, 71-115, 71-126, 71-127 and 71-283.

United States District Court, D. South Carolina, Spartanburg Division.

May 30, 1974.

Supplemental Order December 19, 1974.

Reconsideration Denied February 13, 1975.


397 F. Supp. 1147
COPYRIGHT MATERIAL OMITTED
397 F. Supp. 1148
COPYRIGHT MATERIAL OMITTED
397 F. Supp. 1149
COPYRIGHT MATERIAL OMITTED
397 F. Supp. 1150
COPYRIGHT MATERIAL OMITTED
397 F. Supp. 1151
COPYRIGHT MATERIAL OMITTED
397 F. Supp. 1152
COPYRIGHT MATERIAL OMITTED
397 F. Supp. 1153
COPYRIGHT MATERIAL OMITTED
397 F. Supp. 1154
COPYRIGHT MATERIAL OMITTED
397 F. Supp. 1155
Leatherwood, Walker, Todd & Mann, Fletcher C. Mann, Greenville, S. C., Parrott, Bell, Seltzer, Park & Gibson, Charles B. Park, III, Charlotte, N. C., Willkie, Farr & Gallagher, David L. Foster, New York City, for The Duplan Corp., The Schwarzenbach-Huber Co., Jonathan Logan, Inc., Frank Ix & Sons Virginia Corp., Lawrence Texturing Corp., and United Merchants & Manufacturers, Inc

Haynsworth, Perry, Bryant, Marion & Johnstone, O. G. Calhoun, Greenville, S. C., Cushman, Darby & Cushman, William K. West, Jr., Washington, D. C., for Burlington Industries, Inc., Madison Throwing Co., Leon Ferenbach, Inc., and National Spinning Co., Inc.

Perrin, Perrin & Mann, Edward P. Perrin, Spartanburg, S. C., David Rabin, Smith, Moore, Smith, Schell & Hunter, McNeill Smith, Greensboro, N. C., for Texfi Industries, Inc., Blanchard Yarn Co., Reliable Silk Dyeing Co., Spring-Tex, Inc., Hemmerich Industries, Inc., Texelastic Corporation, Dixie Yarns, Inc., and Olympia Mills, Inc.

Butler, Means, Evins & Browne, Thomas A. Evins, Spartanburg, S. C., Burns, McDonald, Bradford, Erwin & Few, Howard L. Burns, Greenwood, S. C., Paul, Weiss, Rifkind, Wharton & Garrison, Jay Greenfield, New York City, Morgan, Finnegan, Durham & Pine, Granville M. Pine, New York City, for Deering Milliken Research Corp., Deering Milliken, Inc., Moulinage et Retorderie de Chavanoz.

Ward, Howell & Barnes, Rufus M. Ward, Spartanburg, S. C., Brumbaugh, Graves, Donohue & Raymond, Granville M. Brumbaugh, Sr., New York City, for Ateliers Roannais de Constructions Textiles.

Robinson, McFadden & Moore, T. T. Moore, Columbia, S. C., Cooke & Cooke, Arthur O. Cooke, Greensboro, N. C., for ARCT, Inc.

397 F. Supp. 1156

ORDER

ON MOTION FOR PRODUCTION OF DOCUMENTS UNDER FEDERAL RULES OF CIVIL PROCEDURE 34(a)(1) AND 26(b)(3).

HEMPHILL, District Judge.

This is one of several consolidated multi-district patent-antitrust lawsuits that has germinated as a result of the opening of Pandora's box in Lear, Inc. v. Adkins, 395 U.S. 653, 89 S.Ct. 1902, 23 L.Ed.2d 610 (1969), in which the Supreme Court abolished the 180 year old doctrine estopping patent licensees from challenging the validity of the licensed patent.

During the course of five years of continuous discovery, counsel have estimated that more than one million documents have been produced to and from the 22 parties involved in this litigation. The owner of the patents and its allied parties1 (hereinafter collectively referred to as plaintiff) have declined to produce approximately 4,500 documents for which claims of work product, attorney-client, trade secrets, and irrelevancy are asserted. The 17 former patent licensees (hereinafter referred to as the throwsters) have moved for production of all documents. This is the final roadblock facing this court before the two phases of the case, one involving alleged fraud, monopoly, restraint of trade and anti-trust issues, and the other, on which a jury trial has been requested, see General Tire & Rubber Co. v. Watkins, 331 F.2d 192 (4th Cir. 1964), cert. denied, 377 U.S. 952, 84 S.Ct. 1629, 12 L.Ed.2d 498 involving infringement, validity and other patent issues, can be scheduled to take place. At this time these issues, separated for management purposes are divided, and the sequence or schedule of trial is indefinite, awaiting appellate decisions on issues.

THE IN-CAMERA PROCEEDINGS

During the course of discovery, plaintiff has withheld production of approximately 4,500 documents. At times of resistance the court required briefs to be submitted and heard arguments concerning whether the claimed privilege should apply. The court then reserved judgment until discovery was completed and all contentions2 of the parties were submitted. This was done so that the court would have a clear view of the background against which to decide the applicability of the privileges claimed.

On August 3, 1973, this court ordered plaintiff to prepare a list of its privileged documents for the court and for opposing counsel. The order required identification by number, date, author, addressee, recipients of copies, and the nature of the document. Plaintiff complied in some respects but interpreted the term "nature of the document" to be limited to a notation as to whether the document was a letter, memo, etc. on which company stationery it was prepared. Alleging failure of compliance with the order, the throwsters moved for immediate production of all documents for which a claim of privilege was asserted on the grounds that plaintiff had failed to comply with the court's order

397 F. Supp. 1157
by insufficiently disclosing the nature of each document. Plaintiff countered that under its "interpretation" of the order and because of the privileges asserted, the information supplied was all that was required to satisfy the order, lest the privilege be turned into an empty right by disclosing too much

Partially because of the possible ambiguity engendered by the court's semantics but, more importantly, in order to focus on the issues raised for decision in this order, the court undertook a painstaking initial in-camera review of each of the 4,500 documents. This procedure was decided upon after consultation with various appellate and district judges as to a recommended course of conduct. In making the initial in-camera review, the court dictated approximately 130 dictabelts of its impressions on the nature of the documents.3 These were transcribed in rough form by the court's secretary into an index of 405 double-spaced, legal-size pages, which was made available to plaintiff, but not to the throwsters.

Thereafter, the court reviewed its index in-camera with assistant counsel for plaintiff. The attorney objected to certain disclosures of information and suggested editing of notes on other documents. Counsel for Chavanoz, DMRC, and ARCT-France agreed to produce approximately 50 documents after the court expressed misgivings about the applicability of the privilege. A record of the proceedings was turned over to the throwsters with the edited (but not the original) index. The court allowed counsel to have his way but expressed reservations at appropriate points for the record.4 This phase of the in-camera proceedings lasted ten days.

The court then prepared a proposed memorandum of the guidelines to be used in ruling upon the issues raised by the various documents initially reviewed. Thereafter, the court heard arguments from all parties on the proposed guidelines. These arguments were exhaustive and lasted ten hours over the course of two days.

In response to these observations, the court amended its guidelines. The final version is this order. Hereafter, after examining the edited index, the record of the in-camera proceedings with plaintiff's counsel, the arguments presented, and this order, the throwsters will submit three lists of documents. The throwsters will give up the chase for those documents in List A. List B will enumerate those documents to which the throwsters believe they are entitled but which they expect the court will disallow production. List C will cover those documents to which the throwsters believe they are entitled under this order. Plaintiff will simultaneously prepare, if it so desires, a List D of documents which it will surrender for production under this order without further contest of any privilege and without waiver of any other rights as to other documents. Oral arguments will thereafter be heard on the applicability of this order to each of the remaining contested documents in throwsters' List C. The court will then proceed to examine the remaining contested documents in throwsters' List C in a more carefully undertaken final in-camera review.

The reason for conducting such a long-drawn out procedure was to insure that the parties requesting production of the privileged documents had at least a realistic conception of what each document contained and were not foreclosed from an opportunity to argue intelligently before this court, and, if so advised, argue on appeal whether the court

397 F. Supp. 1158
abused its discretion where its decision called for the denial of production of documents claimed to be privileged. Of course, the court had to balance this consideration against the unwarranted disclosure of the truly privileged subject matter. See the order issued earlier in this case by District Judge (now Circuit Judge) Russell appearing at 320 F.Supp. 806 (D.S.C.1970)

In fairness to the party seeking production, the court finds that such a party, in the face of the work product and attorney-client privileges, is entitled to know at least what was the general subject of discussion. For example, if during the course of litigation, documents are generated and production is later...

To continue reading

Request your trial
165 practice notes
  • United States v. Bonnell, Civ. No. 4-78-190
    • United States
    • United States District Courts. 8th Circuit. United States District Court of Minnesota
    • December 27, 1979
    ...be remembered that respondents have the burden of establishing the attorney-client privilege, Duplan Corp. v. Deering Milliken, Inc., 397 F.Supp. 1146, 1161 (D.S.C.1975), and that the privilege, because it excludes truthful evidence, must be narrowly construed, Radiant Burners, Inc. v. Amer......
  • Zurich American Ins. Co. v. Superior Court, No. B194793.
    • United States
    • California Court of Appeals
    • October 11, 2007
    ...advice to the employees who will put into effect the client corporation's policy. See, e.g., Duplan Corp. v. Deering Milliken, Inc., 397 F.Supp. 1146, 1164 (D.S.C.1974) (`After the lawyer forms his or her opinion, it is of no immediate benefit to the Chairman of the Board or the President. ......
  • X-It Products v. Walter Kidde Portable Equipment, No. CIV. A. 2:00CV513.
    • United States
    • United States District Courts. 4th Circuit. United States District Court (Eastern District of Virginia)
    • July 9, 2001
    ...entitles its to trade secret protection under both the ITSA and the NCTSPA. See Duplan Corp. v. Deering Milliken Research Corp., 397 F.Supp. 1146, 1186 (D.S.C.1974) (stating that "presently pending patent applications in the United States Patent Office are trade secrets"). Although this Cou......
  • Floyd v. Floyd, No. 3997.
    • United States
    • United States State Supreme Court of South Carolina
    • June 13, 2005
    ...subject." Marshall v. Marshall, 282 S.C. 534, 538, 320 S.E.2d 44, 46-47 (Ct.App.1984) (citing Duplan Corp. v. Deering Milliken, Inc., 397 F.Supp. 1146 (D.S.C.1975); U.S. v. Jones, 696 F.2d 1069 (4th In Marshall, Mrs. Marshall inadvertently left a letter addressed to her from her attorney in......
  • Request a trial to view additional results
163 cases
  • United States v. Bonnell, Civ. No. 4-78-190
    • United States
    • United States District Courts. 8th Circuit. United States District Court of Minnesota
    • December 27, 1979
    ...be remembered that respondents have the burden of establishing the attorney-client privilege, Duplan Corp. v. Deering Milliken, Inc., 397 F.Supp. 1146, 1161 (D.S.C.1975), and that the privilege, because it excludes truthful evidence, must be narrowly construed, Radiant Burners, Inc. v. Amer......
  • Zurich American Ins. Co. v. Superior Court, No. B194793.
    • United States
    • California Court of Appeals
    • October 11, 2007
    ...advice to the employees who will put into effect the client corporation's policy. See, e.g., Duplan Corp. v. Deering Milliken, Inc., 397 F.Supp. 1146, 1164 (D.S.C.1974) (`After the lawyer forms his or her opinion, it is of no immediate benefit to the Chairman of the Board or the President. ......
  • X-It Products v. Walter Kidde Portable Equipment, No. CIV. A. 2:00CV513.
    • United States
    • United States District Courts. 4th Circuit. United States District Court (Eastern District of Virginia)
    • July 9, 2001
    ...entitles its to trade secret protection under both the ITSA and the NCTSPA. See Duplan Corp. v. Deering Milliken Research Corp., 397 F.Supp. 1146, 1186 (D.S.C.1974) (stating that "presently pending patent applications in the United States Patent Office are trade secrets"). Although this Cou......
  • Floyd v. Floyd, No. 3997.
    • United States
    • United States State Supreme Court of South Carolina
    • June 13, 2005
    ...subject." Marshall v. Marshall, 282 S.C. 534, 538, 320 S.E.2d 44, 46-47 (Ct.App.1984) (citing Duplan Corp. v. Deering Milliken, Inc., 397 F.Supp. 1146 (D.S.C.1975); U.S. v. Jones, 696 F.2d 1069 (4th In Marshall, Mrs. Marshall inadvertently left a letter addressed to her from her attorney in......
  • Request a trial to view additional results

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT