The opinion of the court was delivered by: Hon. Dana M. Sabraw United States District Judge
AND ALL RELATED COUNTERCLAIMS.
ORDER RE OBJECTIONS TO MAGISTRATE JUDGE'S ORDER GRANTING IN PART AND DENYING IN PART PLAINTIFF'S MOTION TO COMPEL PRODUCTION OF DOCUMENTS
This matter comes before the Court on the parties' objections to Magistrate Judge Nita L. Stormes' Order granting in part and denying in part Plaintiff's motion to compel production of documents withheld by Kreg Tool on attorney-client privilege grounds. (Docs. 79, 86, 92.)
Plaintiff's motion to compel sought production of four groups of documents. Group 1 documents consist of communications between employees of Kreg Tool. Group 2 documents were split into three subsets: Group 2(a) comprises communications between patent agent Shawn Dempster and Kreg Tool; 2(b) comprises communications about patent matters that do not include a patent agent or attorney; and 2(c) comprises communications between Shawn Dempster, Kreg Tool, and attorney Frank Farrel. Group 3 documents consist of communications between Shawn Dempster and Kreg Tool with copies of the same to an attorney. Group 4 documents consist of communications between a patent attorney and client regarding ex parte patent prosecution matters.
In chambers on July 17, 2009, the Magistrate Judge denied Plaintiff's motion to compel as to Groups 1 and 4, but reserved on Groups 2 and 3. (Doc. 79.) On July 31, 2009, the Magistrate Judge granted the motion to compel as to Groups 2(a) and 2(b), but reserved on 2(c) and 3 pending a declaration from Defendant's attorney that the communications were made for the purpose of obtaining legal advice. (Doc. 86.) At that time, the Magistrate Judge also clarified her ruling on Group 1 and 4 documents. On August 7, 2009, defense counsel submitted a declaration regarding Groups 2(c) and 3. (Doc. 87.) On August 17, 2009, the Magistrate Judge ruled that those documents are privileged and denied the remainder of Plaintiff's motion to compel. (Doc. 92.)
On August 10, 2009, prior to the Magistrate Judge's rulings on Groups 2(c) and 3, Defendant filed objections to the Magistrate Judge's July 31 order. (Doc. 88.) Plaintiff did not respond to the objections and Defendant filed a reply on August 21, 2009. (Doc. 94.) On August 24, 2009, Plaintiff filed its own objections to the Magistrate Judge's rulings and responded to Defendant's objections. (Doc. 95.) Defendant responded to Plaintiff's objections on August 31, 2009, and Plaintiff replied on September 8, 2009. (Docs. 97 & 98.) Given the complicated procedural history involved, the Court will review all the objections, despite questions regarding the timeliness of Defendant's original objections and Plaintiff's opposition to those objections. The Court, however, declines to review objections raised for the first time in a reply brief.
A magistrate judge's decision on a non-dispositive issue is reviewed by the district court under the "clearly erroneous or contrary to law" standard. 28 U.S.C. § 636(b)(1)(A); United States v. Raddatz, 447 U.S. 667, 673 (1980). "A finding is 'clearly erroneous' when although there is evidence to support it, the reviewing court on the entire record is left with the definite and firm conviction that a mistake has been committed." United States v. United States Gypsum Co., 333 U.S. 364, 395 (1948).
In contrast, the "contrary to law" standard permits independent review of purely legal determinations by a magistrate judge. See, e.g., Medical Imaging Centers of America, Inc. v. Lichtenstein, 917 F. Supp. 717, 719 (S.D. Cal. 1996). Thus, the district court should exercise its independent judgment with respect to a magistrate judge's legal conclusions. Gandee v. Glaser, 785 F.Supp. 684, 686 (S.D. Ohio 1992).
The issues before the Court involve application of the attorney-client privilege. The attorney-client privilege exists when: (1) legal advice of any kind is sought, (2) from a professional legal adviser in his or her capacity as such, (3) the communications relate to that purpose, (4) are made in confidence, (5) by the client, (6) are, at the client's instance, permanently protected, (7) from disclosure by the client or by the legal adviser, (8) unless the protection is waived. United States v. Martin, 278 F.3d 988, 1000 (9th Cir. 2002) (citing 8 Wigmore, Evidence § 2292, at 554 (McNaughton rev. 1961)). Confidentiality is not lost if a third party is privy to the communication, provided the third-party is the client's agent or representative and is present for the purpose of facilitating communications with the attorney. See e.g., Upjohn Co. v. United States, 449 U.S. 383, 394 (1981).
A. Defendant's Objections
Defendant raises two objections to Judge Stormes' order. First, Defendant argues that case law and USPTO regulations recognize a patent agent-client privilege. Second, Defendant argues that ...