ORDER GRANTING IN PART AND DENYING IN PART PLAINTIFF'S MOTION TO COMPEL PRODUCTION OF NON-PRIVILEGED DOCUMENTS AND FURTHER RESPONSES TO INTERROGATORIES (Docket No. 320)
Plaintiff Collaboration Properties, Inc. ("CPI") has filed suit against Defendant Polycom, Inc., claiming that certain Polycom products infringe various CPI patents. Currently pending before the Court is CPI's motion to compel production of documents and further responses to interrogatories. Having considered the parties' briefs and accompanying submissions, as well as the oral argument of counsel, and good cause appearing therefor, the Court hereby GRANTS in part and DENIES in part CPI's motion. The Court also orders a further meet and confer as provided below.
A. Interrogatories Nos. 33-49
Defendant Polycom, Inc. refuses to answer Interrogatories Nos. 33-49 on the basis that, through its previous interrogatories, CPI has already exceeded the 50-interrogatory limit imposed by Judge White. According to Polycom, because most of the previous interrogatories asked for information about all of the accused Polycom products (totaling 26 different products), each interrogatory had 26 discrete subparts.*fn1
In its motion to compel, CPI argues that its previous interrogatories did not contain discrete subparts even though they asked about all of the accused Polycom products. However, CPI does not cite any authority to support this argument and the only reasoning it provides is that, "if Polycom's contention were correct, CPI would have only been allowed to ask two interrogatories total about each of the Accused Polycom products, despite those questions being the same for each product." Mot. at 7. This reasoning is not persuasive. Moore's treatise notes that "a party cannot avoid the numerical limits by asking questions about distinct subjects, but numbering the questions as subparts." 7-33 Moore's Fed. Prac. -- Civ. § 33.30 (emphasis added); see also Safeco of Am. v. Rawstron, 181 F.R.D. 441, 445 (C.D. Cal. 1998) (stating that interrogatory subparts are to be counted as one interrogatory if they are logically or factually subsumed within and necessarily related to the primary question).
The Court therefore denies CPI's motion to compel responses to Interrogatories Nos. 33-49. The Court does not address whether or not CPI would be entitled to exceed the 50-interrogatory limit because CPI made no such motion pursuant to Federal Rule of Civil Procedure 33(a). See Fed. R. Civ. P. 33(a) ("Leave to serve additional interrogatories shall be granted to the extent consistent with the principles of Rule 26(b)(2)."). However, given that the Court previously gave CPI leave to serve four additional interrogatories addressing aspects of Polycom's invalidity contentions, see Docket No. 313 (order of 9/13/04), and given that at least one of those interrogatories encompasses the matters at issue, the Court orders the parties to meet and confer to determine if the parties can reach an agreement on the substantive issues raised herein. This meet and confer shall be in person and shall take place prior to the hearing on Polycom's motion for a protective order regarding CPI's fourth set of interrogatories (i.e., before October 14, 2004).
B. Documents Exchanged Between Polycom's Engineers and Former Litigation Counsel
According to Polycom, documents exchanged between its engineers, Avi Bachar and/or Zigi Gavish, and its former litigation counsel are protected by the attorney-client privilege.*fn2 See Hamm Decl., Ex. K (Polycom's privilege log). CPI contends that there has been a waiver of the privilege because Polycom has asserted the advice-of-counsel defense with respect to CPI's charge of willful infringement. See Mushroom Assocs. v. Monterey Mushrooms, Inc., No. C-91-1092 TEH (PJH), 1992 WL 442892, at *3 (N.D. Cal. May 19, 1992) ("'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.'") (quoting Handgards, Inc. v. Johnson & Johnson, 413 F. Supp. 926, 929 (N.D. Cal. 1976)). There is no dispute that Polycom has asserted this defense.
The Court finds first that the documents at issue do fall within the attorney-client privilege. At the hearing on the motion to compel, Polycom represented to the Court that the documents were created either by or at the behest of its former litigation counsel. The privilege log for the documents supports this representation -- e.g., the dates for the documents indicate that they were prepared either at or after the time the lawsuit was filed by CPI, the documents were exchanged between Polycom's engineers and its former litigation counsel, and the subject matter appears to relate to the issues litigated herein.
Having found that the documents are in the first instance privileged, the Court must now address whether this privilege has been waived. According to CPI, there has been a waiver because Polycom sent the documents to its willfulness opinion counsel, Hoyt Fleming, who considered the documents in formulating his opinion. In response, Polycom argues that there has not been a waiver because, even though the documents were sent to Mr. Fleming, he never actually looked at the documents -- precisely because the documents might contain privileged information. In particular, Polycom points out that Mr. Fleming states he did not open the e-mail attachment containing the documents in question and thus never saw them. CPI argues that Mr. Fleming must have looked at the documents because there was no way he could have determined that the documents involved potentially privileged communications with counsel without viewing the documents. However, as pointed out by Polycom, it was reasonable for Mr. Fleming to surmise that the documents might contain privileged information since it would be unusual for the engineers to comment on the patents of which Polycom was accused of infringing unless asked to do so by Polycom's attorneys. In short, CPI has not presented sufficient evidence to rebut Polycom's evidence that Mr. Fleming did not look at the documents.
CPI argues, however, that, even if Mr. Fleming did not see the documents, the privilege has still been waived because they are relevant to the state of mind of Polycom as the alleged infringer. See Dunhall Pharm. v. Discus Dental, Inc., 994 F. Supp. 1202, 1204 (C.D. Cal. 1998) ("[I]n a willful infringement analysis, the issue is the state of mind of the alleged infringer."). Even if documents informing Polycom's state of mind were deemed waived by virtue of assertion of reliance on advice of counsel, the problem here is that CPI has not provided any evidence that the state of mind of the engineers who authored or received the documents can be imputed to Polycom. CPI has not, for example, offered any evidence indicating that the engineers are high-level officers whose statements may be imputed to Polycom.*fn3 Cf. Fed. R. Civ. P. 30(b)(6) (stating that an organization may designate an officer, director, or managing agent, or other persons who consent to testify on its behalf). Nor has CPI presented any evidence, circumstantial or otherwise, suggesting that the knowledge of the engineers in question were transmitted to Polycom's management.
Even if such evidence had been presented, the Court would not find a the waiver extended to these documents. There are substantial policy considerations that weigh against waiver even though Polycom's state of mind may be at issue. The documents at issue are communications between Polycom and its former litigation counsel; such communications lie at the core of what is protected by the attorney-client privilege. In considering the temporal scope of privilege waivers resulting from an advice-of-counsel defense in patent litigation, courts have held that, generally, any such waiver does not extend to litigation-related communications after the complaint is filed. In Dunhall, the court observed:
This temporal limitation follows from the enhanced interest in protecting against disclosure of trial strategy and planning. Following the filing of the lawsuit, defense counsel is engaged in critical trial preparation, often including analysis of the weaknesses of their client's case. Such analysis, while likely related to the subject matter of the asserted defense, is fundamentally different from a similar prelitigation analysis. In comparison to ...