The opinion of the court was delivered by: Hon. Anthony J. Battaglia, U.S. Magistrate Judge
AND ALL RELATED COUNTER-CLAIMS.
Order Denying Motion to Compel [Doc. Nos. 63 and 64]
The parties contacted the Court regarding a discovery dispute concerning the redaction of documents produced to Plaintiff by the Defendant Mascon, Inc. The parties filed letters briefs on the issue and lodged the documents with the Court. The telephonic hearing set for September 30, 2009 before Judge Battaglia is hereby vacated as this motion is appropriate for submission on the papers and without oral argument pursuant to Civil Local Rule 7.1.d.1. Based upon the parties moving papers and for the reasons set forth below, the Plaintiff's motion to compel production of the unredacted emails is hereby DENIED as the Court finds the redacted portions to be protected by the work product doctrine and the disclosure of such information to Magcom employees to be covered by the common interest exception to waiver.
The redacted documents at issue are email communications between Alex Song, an employee of Defendant Mascon, Inc. ("Mascon") and Dennis Lee, an employee of Magnetic Communications ("Magcom"), a third party manufacturer that supplies alarm filters to Mascon. Mascon then sells the alarm filters under the name "DSL 500". It is these alarm filters that are accused of infringement in the instant case. The emails at issue are to and from Mr. Song, who Defendant contends was working with litigation counsel and were sent in the Fall of 2008, after initiation of the this litigation. The redacted content pertains to the DSL 500 filter and the current litigation. The email communications between Mr. Song and Mr. Lee were also received by three other employees of Mascon and two other employees of Magcom. The Defendant contends that the redacted material expressly refers to litigation counsel's thoughts or actions as conveyed to Mr. Song and therefore falls within the scope of materials prepared in anticipation of litigation or trial and are protected work product. Alternatively, the Plaintiff contends that any privilege associated with these communications was waived when they were disclosed to Magcom, a third party supplier that shares only a commercial relationship with the Defendant.
The instant discovery dispute raises two issues: 1) whether the redacted emails would qualify for protection under the work product doctrine, and 2) whether the common interest exception to waiver is applicable. Since the common interest doctrine is an anti-waiver exception, it comes into play only if the communications at issue are privileged in the first instance.
I. The Work Product Doctrine
The work product doctrine provides a qualified immunity for materials prepared in anticipation of litigation by a party, an attorney, or other representatives of the party. Hickman v. Taylor, 329 U.S. 495, 67 S.Ct. 385, 91 L.Ed. 451 (1947). In an effort to address the inconsistent opinions in federal courts Hickman, in 1970, the Supreme Court adopted Federal Rule of Civil Procedure 26(b)(3), which provides in relevant part:
[A] party may obtain discovery of documents and tangible things otherwise discoverable under subdivision (b)(1) of this rule and prepared in anticipation of litigation or for trial by or for another party or by or for that other party's representative (including the other party's attorney, consultant, surety, indemnitor, insurer, or agent) only upon a showing that the party seeking discovery has substantial need of the materials in the preparation of the party's case and that the party is unable without undue hardship to obtain the substantial equivalent of the materials by other means. Fed.R.Civ.P. 26(b)(3); see also 1997 Advisory Committee Notes, Rule 26(b)(3).
Pursuant to Fed.R.Civ.P. 26(b)(3), the following conditions must be satisfied by the proponent in order to establish work product protection: (1) the material must be a document or tangible thing; (2) it must be prepared in anticipation of litigation; and (3) it must be prepared by or for a party, or by or for its representative. See, e.g. Holmes v. Pension Plan of Bethlehem Steel Corp., 213 F.3d 124, 138 (3d.Cir.2000). "[T]here is no work product immunity for documents prepared in the ordinary course of business prior to the commencement of litigation." Tayler v. Travelers Ins. Co., 183 F.R.D. 67, 70 (N.D.N.Y.1998).
There are two types of work product recognized, ordinary work product and opinion work product. Generally, opinion work product, including the mental impressions, conclusions, opinions, or legal theories of an attorney, is entitled to nearly absolute protection. Holmgren v. State Farm Mutual Auto. Ins. Co., 976 F.2d 573, 577 (9th Cir.1992) (holding that opinion work product is entitled to nearly absolute protection with limited exceptions). Ordinary work product, by contrast, is subject to disclosure upon a showing by the party seeking discovery of substantial need and an inability to obtain the materials by other means. See Upjohn, 449 U.S. at 401, 101 S.Ct. 677 (declining to decide whether opinion work product is entitled to absolute protection but recognizing that ordinary work product is discoverable upon a showing of substantial need and inability to obtain materials without undue hardship). The burden of establishing protection of materials as work product is on the proponent, and it must be specifically raised and demonstrated rather than asserted in a blanket fashion. See Holmes, 213 F.3d at 138; Shiner v. Am. Stock Exch., 28 F.R.D. 34, 35 (S.D.N.Y.1961); Tayler, 183 F.R.D. at 69.
In the instant case, the Defendant, Mascon, contends that the redacted emails are protected work product. The Defendant argues that the emails were sent to and from Alex Song, a Mascon employee working with litigation counsel regarding the DSL 500 alarm filter that was developed and manufactured by Magcom and alleged to infringe by the Plaintiff in this case. The Defendant contends that the redacted portions of the emails refer directly to litigation counsel's thoughts and/or actions regarding the DSL 500 alarm filter, which were communicated to Mr. Song. As such, the communications would satisfy the requirements of Fed. R. Civ. P. 26(b)(3), to establish work product protection because: (1) the emails are a document or tangible thing; (2) the emails were prepared in ...