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Gen-Probe Incorporated v. Becton Dickinson and Company

July 18, 2012


The opinion of the court was delivered by: Hon. Roger T. Benitez United States District Judge


This is a patent infringement action. Plaintiff Gen-Probe Incorporated ("Gen-Probe") alleges that Defendant Becton Dickinson & Company ("BD") infringes its Automation Patents. Presently before the Court are Gen-Probe's objections to Magistrate Judge Stormes' May 30, 2012 Order resolving the parties' joint motion for resolution of a discovery dispute ("May 30, 2012 Order"). BD filed a response to the objections. Having considered the parties' arguments, and for the reasons set forth below, the Court OVERRULES Gen-Probe's objections to the May 30, 2012 Order.


As Judge Stormes' Order explains, Gen-Probe contracted with RELA, Inc. to develop an automated nucleic acid detection system in 1996. RELA hired Mark Toukan as an independent contractor to work on the project. Gen-Probe claims that everyone working on the project was required to assign their rights to anything resulting from the project to RELA, although a copy of Mr. Toukan's contact assigning his rights cannot be located. In 2002, one of Gen-Probe's outside patent attorney's, Richard Wydeven, contacted Mr. Toukan about his work on the project by email and phone. These communications are the subject of this discovery dispute.

This dispute was initially brought before the Magistrate Judge in the parties' fifteenth discovery dispute. Judge Stormes found that the communications were subject to the attorney-client privilege because Mr. Toukan was the equivalent of an employee. In reaching this conclusion, Judge Stormes accepted Gen-Probe's assertion in its privilege log that all the communications related to "patent application" and "patent matters" and Gen-Probe's assertion that Mr. Wydeven communicated with Mr. Toukan about matters of patentability.

The issue arose again during the deposition of Gen-Probe's Chief Intellectual Property Counsel. The witness was instructed not to answer numerous questions as protected by the attorney-client privilege. In response, the parties filed their twentieth discovery dispute in which BD sought to compel the production of communications between Mr. Wydeven and Mr. Toukan. On May 22, 2012, Judge Stormes ordered Gen-Probe to produce the Wyveden-Toukan communications for in camera review. After conducting an in-camera review, Judge Stormes found that the primary purpose of the communications was to obtain an assignment of rights from Mr. Toukan and ordered the documents produced. Gen-Probe objects to that order and seeks to re-establish the privilege over those communications.

Gen-Probe asserts that the communications concern only a patentability investigation conducted to provide legal advice to Gen-Probe and the communications are protected by the attorney-client privilege. BD claims that the communications were an attempt to obtain an assignment of Mr. Toukan's rights as an inventor and that Mr. Toukan is in fact an omitted inventor of a component of the Automation Patents, making the communications relevant to Gen-Probe's standing and BD's invalidity defense.


Federal Rule of Civil Procedure 72(a) provides that whenever a magistrate judge issues a written order deciding a non-dispositive pretrial matter, "[a] party may serve and file objections to the order within 14 days after being served with a copy." "The district judge in the case must consider timely objections and modify or set aside any part of the order that is clearly erroneous or is contrary to law." FED. R. CIV. P. 72(a) (emphasis added); see also 28 U.S.C. § 636(b)(1)(A). The magistrate judge's decision on non-dispositive matters is entitled to "great deference" by the district court. See United States v. Abonce-Barrera, 257 F.3d 959, 969 (9th Cir. 2001). To conclude that a magistrate judge's decision was clearly erroneous, the district court must arrive at a "'definite and firm conviction that a mistake has been committed.'" Folb v. Motion Picture Indus. Pension & Health Plans, 16 F. Supp. 2d 1164, 1168 (C.D. Cal. 1998) (citation omitted), aff'd,216 F.3d 1082 (9th Cir. 2000); see also Concrete Pipe & Products of Cal., Inc. v. Constr. Laborers Pension Trust for S. Cal., 508 U.S. 602, 622 (1993).


Gen-Probe objects to Judge Stormes' finding that the overall purpose of the communications between Mr. Wydeven and Mr. Toukan was to obtain an assignment of rights rather than to obtain legal services. In determining whether the attorney-client privilege applies, "the central inquiry is whether the communication is one that was made by a client to an attorney for the purpose of obtaining legal advice or services." In re Spalding Sports Worldwide, Inc., 203 F.3d 800, 805 (Fed. Cir. 2000). As Judge Stormes acknowledged, just the inclusion of the assignment of rights in a document does not destroy the privilege, if the overall tenor of the document indicates a request for legal advice or services. Id. at 806.

After reviewing the communications in camera, Judge Stormes determined that the communications were an effort by Gen-Probe to convince Mr. Toukan to assign his rights in the invention and as such, were not confidential communications for the purpose of securing legal advice. As Judge Stormes explained, the communications were about obtaining Mr. Toukan's assignment of his rights as an inventor. Gen-Probe's claim that Mr. Toukan would have already assigned his rights as part of his work for RELA does not change the substance of the communications. The communications focus almost entirely on obtaining an assignment of Mr. Toukan's rights as an inventor. The initial email seeks to confirm Mr. Toukan's contribution to the invention of the luminometer and every following communication seeks an assignment of Mr. Toukan's rights.

Having reviewed Gen-Probe's objections, the Court concludes that Judge Stormes' determination was neither "clearly ...

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