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Gen-Probe Incorporated, A Delaware Corporation v. Becton

April 6, 2012

GEN-PROBE INCORPORATED, A DELAWARE CORPORATION,
PLAINTIFF,
v.
BECTON, DICKINSON AND COMPANY, A NEW JERSEY CORPORATION,
DEFENDANT. BECTON, DICKINSON AND COMPANY, A NEW JERSEY CORPORATION, COUNTERCLAIMANT,
GEN-PROBE INCORPORATED, A DELAWARE CORPORATION, COUNTERDEFENDANT.



The opinion of the court was delivered by: Hon. Nita L. Stormes U.S. Magistrate Judge

ORDER RESOLVING JOINT MOTION FOR DETERMINATION OF DISCOVERY DISPUTE NO. 15 [Doc. No. 254]

Plaintiff Gen-Probe Incorporated ("Gen-Probe") and Defendant Becton, Dickinson and Company ("BD") submitted a joint motion to resolve a discovery dispute as to whether the attorney-client privilege applies to communications between Gen-Probe's outside patent prosecution counsel and a third party, Mark Toukan. [Doc. No. 254.] The subject communications are identified in Gen-Probe's privilege logs of January 14, 2011 and December 19, 2011. For the following reasons, the court finds that the subject communications are protected by the attorney-client privilege.

I. Relevant Background

In 1996, Gen-Probe Inc. ("Gen-Probe") contracted with RELA, Inc. ("RELA") to help Gen-Probe develop an automated nucleic acid detection system. (Cappellari Decl. ¶ 2; Kling Decl. ¶ 1.) Gen-Probe required RELA to maintain the confidentiality of its work product, and to acquire all intellectual property rights from its employees and contractors and assign these rights to Gen-Probe. (Cappellari Decl. ¶¶ 2-3, Ex. A.) RELA hired Mark Toukan as an independent contractor to work on this project, ("Project Ginny"). (Kling Decl. ¶ 3; Cappellari Decl. ¶ 7, Exs. B-F.) While Mr. Toukan's contract with RELA cannot be found, RELA did not assign anyone to Project Ginny unless he or she first signed a standard form contractor agreement. (Kling Decl. ¶ 2.) This agreement provided, in pertinent part:

3. All properties resulting from this agreement, whether tangible or intellectual, including, but not limited to, trade secrets and inventions, copyrights, etc., whether or not patentable, are hereby assigned to RELA. The contractor agrees to sign any documents, (e.g., patent applications) which RELA may deem necessary to transfer ownership of said property, regardless of whether or not this agreement has been terminated. ...

6. It is understood that under this agreement and while working for RELA, the contractor may be given access to, or knowledge of, confidential information and trade secrets of RELA, its divisions and its clients. Such information may include, but is not limited to, hardware, software, technology, patents, concepts, ideas, discoveries, marketing strategies, purchasing policies, pricing and terms. Regardless of whether this agreement is still in force or has been terminated, and except as required by contractor's assigned duties, the contractor WILL NEVER directly or indirectly use, sell, discuss, disclose, convey, disseminate, lecture or publish articles or data relating to confidential information pertaining to RELA, its divisions, or its clients.

(Smith Decl. ¶¶ 3-4; Kling Decl. ¶ 4.)

In 2002, one of Gen-Probe's outside patent attorneys, Richard Wydeven, contacted Mr. Toukan by email and phone regarding a patentability investigation he was conducting. (Wydeven Decl. ¶ 6.) None of their communications related to any of the Automation Patents asserted by Gen-Probe in this case.*fn1 (Wydeven Decl. ¶ 8.) Becton, Dickinson & Co. ("BD") seeks to discover the contents of the discussions between Mr. Wydeven and Mr. Toukan.

II. Relevant Legal Principles

The attorney-client privilege protects disclosure of communications between a client and his attorney. United States v. Zolin, 491 U.S. 554, 562 (1989); Upjohn Co. v. United States, 449 U.S. 383, 389 (1981). Whether the attorney-client privilege applies should be determined on a case-by-case basis. See Upjohn Co.,449 U.S. at 396. The privilege "exists to protect not only the giving of professional advice to those who can act on it, but also the giving of information to the lawyer to enable him to give sound and informed advice." Id. at 390. "Because it impedes full and free discovery of the truth, the attorney-client privilege is strictly construed." Weil v. Inv./ Indicators, Research & Mgmt., Inc. 647 F.2d 18, 24 (9th Cir. 1981). The party asserting attorney-client privilege has the burden of establishing all of the elements of the privilege. See United States v. Plache, 913 F.2d 1375, 1379 n.1 (9th Cir.

An eight-part test determines whether information is covered by the attorney-client privilege:

(1) When legal advice of any kind is sought (2) from a professional legal adviser in his or her capacity as such, (3) the communications relating to that purpose, (4) 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 advisor (8) unless the protection be waived.

United States v. Martin, 278 F.3d 988, 999-1000 (9th Cir. 2002).

When, as here, a corporation is a party, a corporation privilege may apply. See Upjohn Co., 449 U.S. 390-94. In Upjohn, the Supreme Court held that a corporation's privilege extends to communications between corporate employees and corporate counsel as long as the communications are "made at the direction of corporate superiors in order to secure legal advice." United States v. Chen, 99 F.3d 1495, 1502 (9th Cir. 1996) (citing Upjohn, 449 U.S. at 390-94). Additionally, "communications between employees of a subsidiary corporation and counsel for the parent corporation . . . would be privileged if the employee possesses information critical to the representation of the parent ...


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