TC Tech. LLC v. Sprint Corp.

• Decision Date: 03 February 2020
• Docket Number: Civil Action No. 16-153-WCB
• Parties: TC TECHNOLOGY LLC, Plaintiff, v. SPRINT CORPORATION and SPRINT SPECTRUM, L.P., Defendants.
• Court: U.S. District Court — District of Delaware

TC TECHNOLOGY LLC, Plaintiff, v. SPRINT CORPORATION and SPRINT SPECTRUM, L.P., Defendants.

Civil Action No. 16-153-WCB

UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE

February 3, 2020

FILED UNDER SEAL

MEMORANDUM OPINION AND ORDER

Before the Court is a submission from defendants Sprint Corporation and Sprint Spectrum, L.P. (collectively, "Sprint") styled Sprint's Bench Memorandum on Sword-and-Shield Privilege Waiver Concerning TC Tech's Impressions of the '488 Patent, Dkt. No. 474. Plaintiff TC Technology LLC ("TC Tech") has filed an opposition, Dkt. No. 485, and Sprint has filed a reply, Dkt. No. 492. Treating Sprint's "Bench Memorandum" as a motion, the Court DENIES Sprint's request for relief.

BACKGROUND

1. During discovery, TC Tech designated Andy Block as its corporate witness for various topics served by Sprint. See Fed. R. Civ. P. 30(b)(6). Two of those topics were "Time Warner, Cox Communications, and/or TC Technology's reason(s) for purchasing the '488 patent," and "Valuations of the '488 Patent and documents used to formulate those valuations." During Mr. Block's Rule 30(b)(6) deposition, TC Tech's counsel advised Mr. Block, an attorney, not to answer a number of questions directed to those topics based on the attorney-client privilege.

Although Sprint now complains that Mr. Block took an unduly broad view of what was protected by the attorney-client privilege, Sprint did not at the time, and has not now, formally challenged Mr. Block's assertion of the attorney-client privilege in response to Sprint's counsel's questions at the deposition. Instead, the issue before me arose in the following manner:

Shortly before trial was scheduled to begin before Judge Andrews, the parties exchanged deposition designations. After Sprint served its designations on TC Tech, TC Tech served counter-designations on Sprint, which included several excerpts from the testimony given by Mr. Block at his deposition relating to TC Tech's acquisition of the '488 patent. Sprint now objects that TC Tech should not be permitted to introduce those excerpts from Mr. Block's testimony, because Mr. Block invoked the attorney-client privilege with respect to a number of other questions relating to the same subject matter. In Sprint's view, it would be unfair to permit TC Tech to introduce Mr. Block's responses to questions that he answered, without Sprint having the benefit of the answers to the questions that Mr. Block refused to answer based on the attorney-client privilege. According to Sprint, admitting Mr. Block's testimony on those issues on which he invoked the attorney-client privilege in response to some questions would impermissibly permit TC Tech to use the privilege as both "a sword and a shield."

2. This issue arose when Sprint's counsel asked Mr. Block, "[D]id the '488 patent stand out to you among the other patents [in an attachment containing a group of patents]?" Dkt. No. 493-1, Exh. D, at 108:11-13. Mr. Block answered, "I remember the '488 patent standing out. I don't remember comparing it to the other patents in here." Id. at 108:14-16. Counsel then asked, "What made the '488 patent stand out to you?" Id. at 108:17-18.

At that point, counsel for TC Tech interjected and said that the question raised an attorney-client privilege issue; he explained that "there is a privileged issue . . . but I think there is a non-privileged portion which he can give so I will allow him to give the non-privileged portion." Id. at 110:13-18. Mr. Block then answered the question as follows: "So just a lay person's reading of—or someone who has some background in physics or communication makes clear that this relates to the ability to efficiently communicate upstream in a communication network. Just based on that, it would have stood out." Id. at 110:19-111:2. Sprint's counsel asked, "Why is that?" to which the witness replied, "Well, you have my long answer before as to why upstream communications was going to be important in the future. Because of that. And potentially used in other industries and for that reason it would have stood out." Id. at 111:4-10. Sprint's counsel then asked, "So it would have stood out because of your understanding that upstream communication was important in the cable industry?" Id. at 111:11-14. The witness replied, "Yes. Not just the cable industry but—and not just based on what I just said in terms of, you know, the parent subject matter but a deeper understanding that would require me to divulge privileged information which I have been instructed not to do." Id. at 111:17-24.

Sprint's counsel continued, "Did the inclusion of OFDM in the title of this patent cause that patent to stand out to you?" Id. at 112:5-7. Mr. Block answered, "I mean, it was the whole thing that stood out. It wasn't just the title." Id. at 111:8-9. In response to the question, "Do you recall OFDM technology having any special significance to you in 2012 as far as the value it might add to a patent?" Mr. Block responded, "Yes. I am not sure that answer—I don't—I am not sure I understand the question. What do you mean?" Sprint's counsel followed up by asking, "Was it your understanding at that time that OFDM was being used in wireless telephony standards?" TC Tech's counsel then instructed the witness not to answer the question on the ground that it called for privileged information. Id. at 112:19-25. TC Tech's counsel later explained that because Mr. Block is a patent attorney, any response that was the product of his own legal analysis that hewould have conveyed to his client, or analysis that was conveyed to him from other attorneys would be privileged. Id. at 115:10-116:2. After a further exchange with Sprint's counsel, TC Tech's counsel said that if the question was seeking to have Mr. Block divulge his legal analysis of what the patent covered after reading it, he would not be permitted to answer the question because that information would have been conveyed to his client. Id. at 117:2-20.

When Sprint's counsel asked whether reading the '488 patent caused Mr. Block "to draw any connection between the '488 patent and LTE technology," counsel for TC Tech objected that the question appeared to ask for privileged information, because it asked Mr. Block "to divulge . . . his legal analysis of what the patent covered after reading it." Id. at 118:13-119:16. Sprint's counsel then asked if there was "anything else unprivileged you can tell me about what drew you to the '488 patent as opposed to some other patent before buying it." Id. at 120:2-6. TC Tech's counsel advised the witness he could respond to the question if he could do so without revealing any privileged information. The witness replied, "I think . . . that could be applicable to lots of different communication systems, for example, you said it was just cable TV. I said, no, it is not just cable TV, it could be wired, wireless, so based on that we would have recognized or I would have said—I would have paid attention to it in terms of its potential import." Id. at 120:2-23.

Later in the deposition, TC Tech's counsel invoked the attorney-client privilege with respect to questions whether there were any claim charts created for the '488 patent before TC Tech purchased it, id. at 193:22-194:6; whether Mr. Block had analyzed the applicability of the '488 patent to Spirit before TC Tech purchased it, id. at 194:7-195:9; whether Mr. Block had analyzed the potential damages against Sprint in a lawsuit under the '488 patent before TC Tech purchased it, id. at 195:10-17; whether Mr. Block was aware of any prior art search conducted for the '488 patent before TC Tech purchased it, id. at 195:18-197:14; when the first privilegedvaluations of the '488 patent occurred, id. 241:3-242:4; and when TC Tech first became aware that Sprint was making, using, selling, and/or offering to sell the accused services, id. at 248:25-249:24.

Immediately before trial before Judge Andrews was set to begin, and after the parties had exchanged their deposition designations, Sprint filed the present motion seeking to bar TC Tech from introducing evidence, in the form of its counter-designations, regarding what Sprint refers to as "favorable impressions" of the '488 patent. Sprint identified examples of those counter designations that indicated Mr. Block's belief that the use of orthogonal functions in interactive services with upstream communications for purposes such as video on demand was important to the future of interactive communications. See id. at 102:5-24, 103:12-106:20, 214:6-215:16. Sprint argues in its motion that it is unfair for TC Tech to introduce evidence regarding the value of the '488 patent after having blocked some of Sprint's counsel's questions at the deposition on the basis of the attorney-client privilege.

DISCUSSION

At the outset, I infer from the briefs that the parties have not identified the entire text of the deposition counter-designations in dispute. From the excerpts that have been provided, however, it seems that the evidence relates to whether anything about the '488 patent stood out to Mr. Block, a witness who was involved in the purchase of the patent and who may testify through deposition at trial.¹

The question before me now is whether TC Tech should be barred from using certain portions of Mr. Block's deposition testimony as to which the attorney-client privilege was not invoked, because TC Tech asserted the privilege with regard to other related matters. Sprint draws on cases holding that a party's selective waiver of the privilege can result in unfairness to the opposing party, and that in such a situation, the privilege will be deemed waived as to all matters related to the issue on which the party made a selective waiver. That is a familiar and well-settled rule. See Paul R. Rice, Attorney-Client Privilege in the United States § 9:30 (2019). The problem is that this case does not present an issue falling within that rule.

Sprint did not challenge TC...