International Business Machines Corp. v. United States, No. 363

CourtU.S. Court of Appeals — Second Circuit
Writing for the CourtMOORE, MULLIGAN and TIMBERS, Circuit
Citation471 F.2d 507
PartiesINTERNATIONAL BUSINESS MACHINES CORPORATION, Petitioner-Appellant, v. UNITED STATES of America, Respondent-Appellee. INTERNATIONAL BUSINESS MACHINES CORPORATION, Petitioner-Appellant, v. Hon. David N. EDELSTEIN, Chief Judge of the United States District Court for the Southern District of New York, and United States of America, Respondents-Appellees.
Decision Date19 December 1972
Docket Number364,72-2107.,No. 363,Dockets 72-2106

471 F.2d 507 (1972)

INTERNATIONAL BUSINESS MACHINES CORPORATION, Petitioner-Appellant,
v.
UNITED STATES of America, Respondent-Appellee.

INTERNATIONAL BUSINESS MACHINES CORPORATION, Petitioner-Appellant,
v.
Hon. David N. EDELSTEIN, Chief Judge of the United States District Court for the Southern District of New York, and United States of America, Respondents-Appellees.

Nos. 363, 364, Dockets 72-2106, 72-2107.

United States Court of Appeals, Second Circuit.

Argued October 26, 1972.

Decided December 19, 1972.

Rehearing Granted February 14, 1973.


471 F.2d 508

Frederick A. O. Schwarz, Jr., New York City (Cravath, Swaine & Moore, New York City, of counsel), for petitioner-appellant.

Howard E. Shapiro, Attorney, Department of Justice, Washington, D.C. (Thomas E. Kauper, Asst. Atty. Gen., Department of Justice, Washington, D.C., of counsel), for respondents-appellees.

Before MOORE, MULLIGAN and TIMBERS, Circuit Judges.

Rehearing En Banc Granted February 14, 1973.

MOORE, Circuit Judge:

International Business Machines Corporation (IBM) is the defendant in an antitrust1 action brought by the United States of America (the Government) in the United States District Court for the Southern District of New York (the New York action). Also pending against IBM are a number of private antitrust actions which have been consolidated in the United States District Court for the District of Minnesota before Judge Phillip Neville. These actions may be referred to as Control Data Corp. v. International Business Machines Corp.2 or, for brevity, the CDC action. The Government is not a party to the actions in Minnesota but has attended various depositions and has received the cooperation of counsel there. In short, it is not a complete stranger to those proceedings.

The present appeal and Petition for Extraordinary Writ (28 U.S.C. § 1651; Fed.R.App.P. 21) are addressed to an order in the New York action (Pretrial Order No. 5) made by Chief Judge Edelstein on September 26, 1972, wherein he, after a preamble reciting that IBM "in furnishing to plaintiff, United States of America, microfilm copies of documents in the course of pretrial proceedings * * * excised from the microfilm prior to delivering it to plaintiff copies of documents reproduced on said microfilm which constituted or contained allegedly privileged material, as to which excised documents IBM made the claim that such documents had been delivered to a third party, Control Data Corporation, through inadvertence on its part;" and that the Government "filed a motion in this Court dated April 7, 1972, calling for the production of the materials thus withheld and excised by IBM, plaintiff's ground being that the production of said documents to Control Data Corporation constitutes a waiver of all claims of privilege by IBM as to said documents", entered an order directing that "IBM immediately deliver to plaintiff, in the form provided to Control Data Corporation, a copy of each document withheld and excised by it from the said microfilm, all such documents purportedly being identified and described by Charles M. Waygood, attorney for defendant, in a letter addressed to plaintiff's counsel, dated April 4, 1972, a copy of said letter being attached to and made a part of this order."

IBM requests that this Court vacate Pretrial Order No. 5 on the ground that, in producing the documents to Control Data under compulsion of discovery orders issued by the Minnesota district court, which orders expressly protected the right of privilege in the documents, IBM cannot, as the Government argued in its motion below, be held to have waived privilege in the documents in the New York action.

I.

The issues presented in this appeal derive from a decision made by the Government, in effect, to abandon its own, independent discovery program in the New York action and instead to participate in the documentary discovery program already underway between IBM and Control Data in the Minnesota action. Recognizing that "the parties in the Minnesota private suit were substantially ahead of us" and that participation

471 F.2d 509
in the discovery there would be "of tremendous help to the Government in trying to reach a point of knowledge of its case where it can move ahead as rapidly as we think that it should be moved ahead,"3 the Government elected to terminate its review of IBM documents and to accept copies of the documents IBM supplied to Control Data. Two alternatives for obtaining microfilm copies of the documents delivered to Control Data were proposed
1. under the first alternative, "IBM would deliver all the documents selected by CDC Control Data Corporation (whether or not privileged) and the Government would stipulate that IBM had not waived any privilege claims as to any of the documents";
2. under the second alternative, "IBM would first edit from the CDC microfilm already delivered to CDC documents for which privilege was claimed, and then supply the Government with a list showing the author, addressee, nature of privilege, date, file source and copyee for every document removed from the microfilm."4

The parties agreed on the second proposal, an agreement which the Government subsequently challenged on the ground that IBM was acting in bad faith by editing from the microfilm it had delivered to CDC an unreasonable quantity of material before turning it over to the Government. The Government therefore moved Judge Edelstein on April 7, 1972, to order IBM to produce the materials excised and withheld by IBM, arguing that the production of the documents to CDC constituted waiver of all claims of privilege in those documents, and that, because they were now "in the public domain", the documents should be made available to the Government. The granting of the Government's motion is embodied in Pretrial Order No. 5.

Since no specific document is before us, we must assume that the contents of the some 1,200 documents in question fall within the attorney-client privilege — a privilege which the courts throughout the centuries have zealously protected.5 Therefore, if the order in the New York action merely directed IBM in substance to produce all letters between IBM and its attorneys with the explanation that the Court did not believe in the attorney-client privilege and, therefore, chose not to honor it, we might well have before us a situation in which this Court should intervene at this stage to prevent irreparable injury. But this is a hypothesis which, having raised it, we can ignore because undoubtedly Judge Edelstein never would have issued such an order and did not. The practical effect of Pretrial Order No. 5, however, is just as surely to deprive IBM of the right to assert the attorney-client and work-product privileges in the New York action, or to assert the non-waiver thereof. Because Judge Edelstein did not write an opinion to accompany the order, nor make any findings of fact, the rationale underlying his discovery order is not evident.

Although the Government is not a party in the Minnesota action, Pretrial Order No. 5 is inextricably tied into that action because the documents in question are indisputably part of "documents which had been delivered to a third party, Control Data Corporation, through inadvertence on IBM's part" and the order provides that "IBM immediately

471 F.2d 510
deliver to the Government, in the form provided to Control Data Corporation, a copy of each document withheld and excised by it from said microfilm, * * *." The Government does not dispute that the Minnesota district court regulated every facet of IBM's document production to Control Data, including the volume and speed of production (IBM and CDC were placed on an accelerated schedule of document production), the mechanics of IBM's review for privileged documents, and the limitations imposed on Control Data's use of the IBM documents. As already noted, the Government saw many advantages to abandoning its own documentary discovery and to binding itself to the IBM-CDC discovery program, not the least of which was the accelerated schedule imposed by Judge Neville, a schedule which would both facilitate the progress of the New York action as well as avoid duplicative effort and expense

By order of October 19, 1970, Judge Neville accelerated even further the already massive IBM-CDC document inspection program. The magnitude of the program may be evidenced from the fact that IBM itself copied or microfilmed some 80 million CDC documents and that CDC sent a staff of some 61 persons to IBM offices to inspect and copy documents. The strenuous schedule imposed by Judge Neville caused inevitable problems. IBM discovered that, despite its careful pre-examination of documents for privilege, due to the greatly accelerated schedule ordered by Judge Neville, certain privileged documents were inadvertently falling into Control Data's possession. To effect a further screening process, IBM placed a lawyer at the document storage room where CDC was microfilming to make a final inspection of the documents selected by CDC for copying and to withdraw any privileged document before CDC copied same. Control Data in turn complained that this "interceptor", as he was called, seriously impeded the inspection schedule and asked the court to remove him. In the interest of expedition, Judge Neville did remove the interceptor, but on the express condition that he "would thereafter brook no argument that the privilege had been waived by IBM merely because the document had been seen by CDC and perhaps copied."6 Throughout the IBM-CDC discovery program both parties argued that the other side had waived privilege in certain documents, and both alternatively requested of Judge Neville rulings on the question of waiver. The Judge held several hearings and made several rulings, the last of which occurred on April 18, 1972. On that date an order entitled "Order Re Claimed Waiver of Privilege" was entered in the Minnesota...

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  • U.S. ex rel. Pogue v. Diabetes Treatment, No. 04-6130.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (6th Circuit)
    • April 11, 2006
    ...in its Page 477 ability to avoid any such old-fashioned and semi-barbaric procedure." International Bus. Machs. Corp. v. United States, 471 F.2d 507, 511 (2d Cir.1972), vacated on other grounds, 480 F.2d 293 (2d Cir.1973). See also United States v. Philip Morris, Inc., 314 F.3d 612, 620 (D.......
  • Kaufman v. Edelstein, Nos. 934
    • United States
    • United States Courts of Appeals. United States Court of Appeals (2nd Circuit)
    • April 20, 1976
    ...departing from the established rule is the discussion in the majority opinion in International Business Machines Corp. v. United States, 471 F.2d 507, 511-16 (2 Cir. 1972), a case which concerned an order requiring the production of documents by a party, and which, on the merits, turned on ......
  • Boraas v. Village of Belle Terre, No. 372
    • United States
    • U.S. Court of Appeals — Second Circuit
    • February 27, 1973
    ...1111 (2 Cir. 1973) (en banc denied, 4-4), (May 4, 1973). But compare International Business Machines Corp. v. United States and Edelstein, 471 F.2d 507 (2 Cir. 1972) (en banc granted, 5-0, on February 14, 1973). It should be noted that in IBM, since three of the active judges were disqualif......
  • International Business Machines Corp. v. United States, No. 1133 to 1136
    • United States
    • United States Courts of Appeals. United States Court of Appeals (2nd Circuit)
    • December 17, 1973
    ...599, 608, 27 S. Ct. 313, 51 L.Ed. 641 (1907). See also Mulligan, J., dissenting in International Business Machines Corp. v. United States, 471 F.2d 507, 519 n.3 (2d Cir.1972) (panel decision reversed en banc).For The United States In Opposition to Application for Stay, at 16, filed in the S......
  • Request a trial to view additional results
15 cases
  • U.S. ex rel. Pogue v. Diabetes Treatment, No. 04-6130.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (6th Circuit)
    • April 11, 2006
    ...in its Page 477 ability to avoid any such old-fashioned and semi-barbaric procedure." International Bus. Machs. Corp. v. United States, 471 F.2d 507, 511 (2d Cir.1972), vacated on other grounds, 480 F.2d 293 (2d Cir.1973). See also United States v. Philip Morris, Inc., 314 F.3d 612, 620 (D.......
  • Kaufman v. Edelstein, Nos. 934
    • United States
    • United States Courts of Appeals. United States Court of Appeals (2nd Circuit)
    • April 20, 1976
    ...departing from the established rule is the discussion in the majority opinion in International Business Machines Corp. v. United States, 471 F.2d 507, 511-16 (2 Cir. 1972), a case which concerned an order requiring the production of documents by a party, and which, on the merits, turned on ......
  • Boraas v. Village of Belle Terre, No. 372
    • United States
    • U.S. Court of Appeals — Second Circuit
    • February 27, 1973
    ...1111 (2 Cir. 1973) (en banc denied, 4-4), (May 4, 1973). But compare International Business Machines Corp. v. United States and Edelstein, 471 F.2d 507 (2 Cir. 1972) (en banc granted, 5-0, on February 14, 1973). It should be noted that in IBM, since three of the active judges were disqualif......
  • International Business Machines Corp. v. United States, No. 1133 to 1136
    • United States
    • United States Courts of Appeals. United States Court of Appeals (2nd Circuit)
    • December 17, 1973
    ...599, 608, 27 S. Ct. 313, 51 L.Ed. 641 (1907). See also Mulligan, J., dissenting in International Business Machines Corp. v. United States, 471 F.2d 507, 519 n.3 (2d Cir.1972) (panel decision reversed en banc).For The United States In Opposition to Application for Stay, at 16, filed in the S......
  • Request a trial to view additional results

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