Handgards, Inc. v. Johnson & Johnson

• Decision Date: 07 January 1976
• Docket Number: No. 49451 WHO.,49451 WHO.
• Citation: 413 F. Supp. 926
• Court: U.S. District Court — Northern District of California
• Parties: HANDGARDS, INC., a corporation, Plaintiff, v. JOHNSON & JOHNSON, a corporation, and Ethicon, Inc., a corporation, Defendants.

413 F. Supp. 926

HANDGARDS, INC., a corporation, Plaintiff, v. JOHNSON & JOHNSON, a corporation, and Ethicon, Inc., a corporation, Defendants.

No. 49451 WHO.

United States District Court, N. D. California.

January 7, 1976.

COPYRIGHT MATERIAL OMITTED

Maxwell M. Blecher, Blecher, Collins & Hoecker, Joel R. Bennett, Nancy Bennett, Kendrick, Netter, Orr & Bennett, Los Angeles, Cal., for plaintiff.

David F. Dobbins, Rogers & Wells, George S. Frazza, New York City, Robert M. Dunne, Dunne, Phelps & Mills, San Francisco, Cal., for defendants.

OPINION

ORRICK, District Judge.

In this antitrust action, plaintiff contends that defendants instituted a series of patent infringement suits against it in bad faith as part of a conspiracy to restrain trade and monopolize the disposable plastic glove industry. The gravamen of plaintiff's complaint is that defendants accumulated a number of patents in the disposable plastic glove field, in particular the Gerard and Orisini patents, knowing that these patents were invalid or of doubtful validity, and then proceeded to bring infringement actions against plaintiff with the knowledge that the patents sued upon were invalid. Plaintiff alleges that the patent infringement actions were brought for the purpose of eliminating competition and as part of an overall scheme to monopolize the market.

In September, 1975, plaintiff learned that defendants intended to call as witnesses in their behalf three lawyers who were primarily responsible for prosecuting the prior patent infringement suits, including Charles Laff and Sidney Neumann. The summaries of the expected testimony of these witnesses revealed that they would testify as to legal advice they rendered to the defendants in connection with the prosecution of the prior actions.

Plaintiff asserted that the testimony of these lawyers would constitute a waiver by defendants of any attorney-client privilege applying to documents bearing on the purpose of the lawsuits and on defendants' good faith in maintaining them, as well as defendants' good faith belief as to the validity of the patents in question. Plaintiff sought production of such documents.

At a pretrial conference held on October 6, 1975, I ruled that if Messrs. Laff and Neumann were going to be witnesses at the trial, as indicated by the defendants, then the attorney-client privilege was waived.

Plaintiff thereupon noticed the depositions of Messrs. Laff and Neumann and, in connection therewith, subpoenaed documents relating to the basis of their opinions as to the merits of the patent litigation and the validity of the patents at issue. The subpoena requested the production of a wide range of materials, including all relevant records, opinion letters, interviews of witnesses, internal files, memoranda, and notes. Plaintiff contended that production of this underlying documentation was essential to proper cross-examination or possible impeachment of the opinions expressed by these attorneys at trial.

Defendants resisted such discovery, asserting that any waiver of the attorney-client privilege extended only to the advice rendered by these counsel, not to their entire litigation files.

On December 5, 1975, I granted plaintiff's motion to compel production of the underlying work product of Messrs. Laff and Neumann.

Defendants now request that I reconsider my previous ruling directing production of the working files of their prior counsel. In the alternative, defendants seek leave to take an interlocutory appeal pursuant to 28 U.S.C. § 1292(b).

Having granted the motion to reconsider and having reconsidered, I now reaffirm my order of December 5, 1975, directing production of the sought-after files for the reasons hereinafter stated. However, I modify the prior ruling to the extent of now requiring the litigation files of these attorneys to be submitted to the Court for an in camera inspection in order to determine whether the documents contained therein are within the purview of plaintiff's motion. Furthermore, I deny defendants' request for leave to take an interlocutory appeal.

The Attorney-Client Privilege

The attorney-client privilege bestows upon a client a privilege to refuse to disclose and to prevent others from disclosing confidential communications made for the purpose of facilitating the rendition of professional legal services to the client. See McCormick, Evidence § 87 (2d ed. 1972); 8 Wigmore, Evidence § 2292 (McNaughton rev. 1961).¹

The deliberate injection of the advice of counsel into a case waives the attorney-client privilege as to communications and documents relating to the advice. Garfinkle v. Arcata National Corp., 64 F.R.D. 688 (S.D.N.Y.1974); Smith v. Bentley, 9 F.R.D. 489 (S.D.N.Y.1949); see also, 8 Wigmore, Evidence § 2327 (McNaughton rev. 1961).

An important consideration in assessing the issue of waiver is fairness. Bierman v. Marcus, 122 F.Supp. 250 (D.N.J. 1954). Thus, a party may not insist on the protection of the attorney-client privilege for damaging communications while disclosing other selected communications because they are self-serving. Voluntary disclosure of part of a privileged communication is a waiver as to the remainder of the privileged communication about the same subject. International Telephone and Telegraph Corp. v. United Telephone Company of Florida, 60 F.R.D. 177, 185-186 (M.D.Fla.1973).

By putting their lawyers on the witness stand in order to demonstrate that the prior lawsuits were pursued on the basis of competent legal advice and were, therefore, brought in good faith, defendants will waive the attorney-client privilege as to communications relating to the issue of the good-faith prosecution of the patent actions. Garfinkle v. Arcata National Corp., supra; 8 Wigmore, Evidence § 2327 (McNaughton rev. 1961).

Since the same rules of privilege govern the scope of discovery as generally govern the admissibility of evidence at trial, a party may obtain pretrial discovery of materials allegedly subject to the attorney-client privilege where the materials fall within some exception to the privilege or where the protection of the privilege will be waived at the trial. See International Telephone and Telegraph Corp. v. United Telephone Company of Florida, supra, at 180; 4 J. Moore, Federal Practice ¶ 26.601 (2d ed. 1975). Indeed, defendants here concede that their decision to call Messrs. Laff and Neumann at trial gives plaintiff the right to discover oral communications and written opinions rendered to them by such counsel.

The Work Product Doctrine

However, as defendants point out, the production of the underlying work product of the counsel who prosecuted the prior suits is another matter. The work product doctrine is an independent source of immunity from discovery, separate and distinct from the attorney-client privilege. Vilastor-Kent Theater Corp. v. Brandt, 19 F.R.D. 522, 524 (S.D.N.Y.1956). Therefore, defendants' waiver of the attorney-client privilege does not necessarily mean that the protection afforded by the work product doctrine is also breached.

The policies and purposes of the work product doctrine differ from those underlying the attorney-client privilege. The purpose of the attorney-client privilege is to encourage the complete disclosure of information between an attorney and his client. The privilege belongs to the client, and it is intended to secure a cloak of privacy for confidential communications made in the course of seeking or rendering legal advice. See Burlington Industries v. Exxon Corp., 65 F.R.D. 26, 32 (D.Md.1974); 8 Wigmore, Evidence § 2291 (McNaughton rev. 1961); McCormick, Evidence § 87 (2d ed. 1972).

The work product doctrine, on the other hand, is aimed at protecting the effectiveness of a lawyer's trial preparations by immunizing such materials from discovery. Kirkland v. Morton Salt Co., 46 F.R.D. 28 (N.D.Ga.1968); Note, Developments in the Law-Discovery, 74 Harv.L.Rev. 940, 1045 (1961). The doctrine assures an attorney that his private files shall remain free from intrusions of opposing counsel in the absence of special circumstances. Burlington Industries v. Exxon Corp., supra, at 33; see also Advisory Committee Note to the 1970 Amendments of Rule 26(b)(3), 48 F.R.D. 497, 499-503 (1970); F. Freund, Work Product, 45 F.R.D. 493 (1968).

The outlines and rationale of the work product doctrine were first enunciated in Hickman v. Taylor, 329 U.S. 495, 67 S.Ct. 385, 91 L.Ed. 451 (1947). There, Mr. Justice Murphy observed:

"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 and 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. This work is reflected, of course, in interviews, statements, memoranda, correspondence, briefs, mental impressions, personal beliefs, and countless other tangible and intangible ways—aptly though roughly termed by the Circuit Court of Appeals in this case as the `work product of the lawyer.'" Id. at 510, 511, 67 S.Ct. at 393, 91 L.Ed. at 462.

Mr. Justice Murphy went on to express his concern that:

"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, heretofore inviolate, would not be his own. Inefficiency, unfairness and sharp practices would inevitably develop in the giving of legal advice and in the

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