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Gen-Probe Incorporated, A Delaware Corporation v. Becton

May 30, 2012


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



On March 20, 2012, 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, Mr. Wydeven, and a third party, Mr. Toukan. [Doc. No. 254.] On April 6, 2012, the Court issued an Order finding that the attorney-client privilege applied to communications because Mr. Toukan was the "functional employee" of Gen-Probe. [(the "Order"), Docket No. 273.] On April 24, 2012, BD filed Objections to the Order [Docket No. 304] and on May 4, 2012 Gen-Probe filed a response to the Objections. [Docket No. 312.]*fn1 On April 12, 2012, BD conducted a deposition of Gen-Probe pursuant to Rule 30(b)(6) with Charles Cappellari, Gen-Probe's in-house Chief Intellectual Property Counsel, as the witness for Gen-Probe. (Mot. at 1.) During the deposition, Gen-Probe's litigation counsel instructed the witness not to answer multiple questions, asserting that the answer to the questions would reveal privileged attorney-client communications. On May 18, 2012, the parties filed the twentieth discovery dispute, currently before the court. [Docket No. 320.] BD seeks to compel the answers to deposition questions, production of documents, and revisions to Gen-Probe's privilege logs. Gen-Probe argues that the witness properly refused to answer the question, that all relevant documents have been produced, and no revision to the privilege logs is necessary. On May 22, 2012, the Court ordered Gen-Probe to produce the Wyveden-Toukan communications for in camera review. On May 25, 2012 Gen-Probe timely complied with the Court's Order. The Court has now completed in camera review of the documents produced.

This Court has already held that Mr. Toukan was the functional equivalent of an employee of Gen-Probe and that confidential communications made for the purpose of seeking legal advice are covered by the attorney client privilege. The Court will not reconsider that ruling at this time. BD now argues that the factual record shows that at least some of the communications at issue were made by Gen-Probe for the purpose of seeking an assignment of intellectual property rights from Mr. Toukan. BD further argues that communications for the purpose of obtaining an assignment of rights are not covered by the attorney-client privilege. Gen-Probe counters that the discussion of an assignment is a routine part of a patentability investigation and does not vitiate the attorney-client privilege that covers documents exchanged primarily for the purpose of obtaining legal services in preparing a patent application. After reviewing the documents in question, the Court finds that the primary purpose of the communications was to obtain an assignment of rights and not to convey information Mr. Toukan possessed by virtue of his work as a functional employee of Gen-Probe. Accordingly, and for the following reasons, the Court Grants BD's request for an Order requiring production of the documents.


In 1996, Gen-Probe contracted with RELA, Inc. ("RELA") to help Gen-Probe develop an automated nucleic acid detection system. 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. RELA hired Mark Toukan as an independent contractor to work on this project, ("Project Ginny"). Everyone RELA assigned to work on Project Ginny was required to sign a standard form contractor agreement, requiring the worker to assign to RELA all rights to all property resulting from the agreement and refrain from divulging any confidential information. [Order at 2.] In 2002, one of Gen-Probe's outside patent attorneys, Richard Wydeven, contacted Mr. Toukan by email and phone. Mr. Wydeven stated that the communications were regarding a patentability investigation he was conducting. [Doc. No. 254-5, Wydeven Decl. ¶ 6.] Gen-Probe represented that none of their communications related to any of the Automation Patents asserted by Gen-Probe in this Id. at ¶ 8.]

BD disputes both that the communications were for the purpose of seeking legal advice and that the communications do not relate to the patents in suit. BD has asserted that Mr. Toukan was a true inventor of the subject matter of the asserted Automation patents and that Gen-Probe's omission of Mr. Toukan as an inventor invalidates the patents. Thus, BD argues, information as to whether Gen-Probe sought an assignment of intellectual property rights is relevant to the claims and defenses in this litigation.

Neither side has extensively addressed the relevance of the documents sought. The Court's own in camera review reveals that Mr. Wydeven was seeking information about an application that became Patent Number 7,396,509 "Instrument for detecting light emitted by the contents of a reaction receptacle" ("the Luminometer Patent"). Although the Luminometer Patent is not one of the patents in suit, it is related to provisional patent application 60/083,927 and non-provisional patent application 09/303,030. The patents in suit also stem from these patent applications. [Wydeven Decl. ¶ 5.] BD argues that the luminometer module performs the detecting step recited in each asserted patent and that any assignment of rights sought for the Luminometer Patent would also apply to the patents in suit. The Court finds this to be a sufficient basis to deem the information relevant to the claims and defense in this 3 09cv2319 BEN (NLS) litigation, and that the information sought is reasonably calculated to lead to the discovery of admissible evidence.


Discovery in civil actions in intentionally broad: Parties may obtain discovery regarding any non-privileged matter that is relevant to any party's claim or defense--including the existence, description, nature, custody, condition, and location of any documents or other tangible things and the identity and location of persons who know of any discoverable matter. For good cause, the court may order discovery of any matter relevant to the subject matter involved in the action. Relevant information need not be admissible at the trial if the discovery appears reasonably calculated to lead to the discovery of admissible evidence.

Fed. R. Civ. P. 26(b)(1).

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. 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. 1990).

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 ...

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