UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION
October 18, 2011
GENENTECH, INC., PLAINTIFF,
THE TRUSTEES OF THE UNIVERSITY OF PENNSYLVANIA,
The opinion of the court was delivered by: Paul S. Grewal United States Magistrate Judge
ORDER GRANTING-IN-PART PLAINTIFF'S MOTION TO COMPEL (Re: Docket No. 344)
United States District Court For the Northern District of California
Plaintiff Genentech, Inc. ("Genentech") moves to compel production of 17 email documents 17 reflecting communications between Mark Greene ("Greene") and Charles Blitzer ("Blitzer"). 18
Greene is a named inventor of the single patent-in-suit. Blitzer is President and Chief Executive 19 Officer of Fulcrum Pharmaceuticals, LLC, a licensee of the patent-in-suit. After producing the 20 21 emails to Genentech several months ago, Defendant and Counterclaim-Plaintiff The Trustees of the
University of Pennsylvania ("the University") demanded return or destruction of the email pursuant 23 to a "claw back" provision of the protective order. The University says it issued its claw back 24 demand after it discovered that, during the disputed communications, Blitzer was acting as a 25 lawyer dispensing legal advice to a client. Genentech complied with the University's demand by 26 sequestering the 17 documents, but nevertheless argues that the University has failed to meet its burden of establishing that the documents are entitled to the protections of the attorney-client 1 2 privilege. Earlier today the parties appeared for argument on Genentech's motion.
"The attorney-client privilege protects confidential disclosures made by a client to an attorney in order to obtain legal advice,"*fn1 as well as an attorney's advice in response to such 5 disclosures.*fn2 To prevent abuse and assure the availability of relevant evidence to the party seeking 6 discovery, the privilege is limited to "only those disclosures necessary to obtain informed legal 7 advice which might not have been made absent the privilege."*fn3 The party asserting the attorney-8 9 client privilege has the burden of proving that the privilege applies to a given set of documents or communications.*fn4 To meet this burden, a party must demonstrate that its documents adhere to the essential elements of the attorney-client privilege adopted by the Ninth Circuit.*fn5
While Genentech argues that the University cannot meet its burden, it alternatively requests that the court at least review the documents in camera before resolving the question. "To empower 14 the district court to review the disputed materials in camera, the party opposing the privilege need 15 only show a factual basis sufficient to support a reasonable, good faith belief that in camera 16 17 inspection may reveal evidence that information in the materials is not privileged. If the party makes such a showing, the decision whether to conduct the review rests within the discretion of the 19 district court."*fn6 Based on the information presented thus far, the court is satisfied that Genentech has made the necessary showing. Even if Greene was a "functional employee"*fn7 or someone 1 2 sharing a "common interest"*fn8 communicating with Blitzer in his legal capacity in order to obtain legal advice, and the University did not waive any privilege through inadvertent disclosure, there is 4 no dispute that Blitzer also served as a President and CEO dispensing non-legal directives at the 5 time of the communications. In fact, the University has produced other documents showing that 6 Blitzer acted in this capacity while communicating with Greene.*fn9 Under these circumstances, the 7 Court is further satisfied that a review of the documents would permit a more exacting assessment 8 9 of the University's claims.
No later than October 20, 2011 at 5:00 PM, the University shall lodge the disputed documents with the court to permit an in camera review.
IT IS SO ORDERED.