The opinion of the court was delivered by: Hon. Nita L. Stormes U.S. Magistrate Judge United States District Court
ORDER RESOLVING JOINT MOTION
FOR RESOLUTION OF DISCOVERY DISPUTE NUMBER 21 AND DENYING
MOTION TO FILE DOCUMENTS UNDER SEAL [Docket Nos. 454, 453.]
INTRODUCTION AND BACKGROUND
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.] The factual background of the Wydeven-Toukan communication has been recounted in detail in the Court's prior orders and will not be repeated here. 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. [Docket No. 273, (the "First Toukan Order").] On April 24, 2012, BD filed Objections to the First Toukan Order [Docket No. 304] and on May 4, 2012 Gen-Probe filed a response to the Objections. [Docket No. 312.]
On May 18, 2012, the parties filed the twentieth discovery dispute. [Docket No. 320.] BD sought to compel: 1) answers to deposition questions; 2) production of documents; and 3) revisions to Gen-Probe's privilege logs; all in relation to the Wydeven-Toukan communications. On May 22, 2012, the Court ordered Gen-Probe to produce the Wydeven-Toukan communications for in camera review. [Docket No. 337.] On May 30, 2012, the Court granted BD's Motion to compel further production and ordered Gen-Probe to: 1) produce to BD the documents submitted for in camera review; 2) to identify all communications in its current privilege logs concerning the subject of an assignment of Mr. Toukan's rights in any patent, application, or invention; and 3) make in house counsel Mr. Cappellari available for further deposition to answer all questions about Gen-Probe's communications with Mr. Toukan that relate in any way to Gen-Probe's attempt to obtain an assignment of rights from Mr. Toukan. [Docket No. 346 at 7 (the "Order").] Gen-Probe timely produced documents and revisions to the privilege logs and timely produced Mr. Cappellari for deposition. On June 13, 2012, Gen-Probe filed objections to the Second Toukan Order. On July 18, 2012, the District Court overruled GenProbe's Objections to the Second Toukan Order. [Docket No. 408.]
On August 15, 2012, the parties filed the Twenty-First Joint Motion for Resolution of a Discovery Dispute, which is currently before the Court. [Docket No. 454.] BD now seeks to compel Gen-Probe to: 1) produce "draft" letters from Richard Wydeven to Mark Toukan concerning an assignment of Toukan's patent rights; 2) produce Richard Wydeven for deposition based on the alleged inability or refusal of Gen-Probe's 30(b)(6) designee, Charles Cappellari, to answer questions at his deposition; and 3) amend its privilege logs to identify communications concerning Mark Toukan. On August 21, 2012, the Court Ordered Gen-Probe to produce the draft letters for in camera review. On August 24, 2012, Gen-Probe timely lodged the documents with chambers. The Court has reviewed the documents and, for the following reasons, determines that the one of the drafts is not protected and the other two drafts are protected by the attorney-client privilege.
"The attorney-client privilege protects confidential communications between attorneys and clients, which are made for the purpose of giving legal advice." U.S. v. Richey, 632 F.3d 559, 556 (9th Cir. 2011), citing Upjohn Co. v. United States, 449 U.S. 383, 389, 101 S.Ct. 677 (1981).
The attorney-client privilege exists where: "(1) [ ] legal advice of any kind is sought (2) from a professional legal adviser in his capacity as such, (3) the communications relating to that purpose, (4) made in confidence (5) by the client, (6) are at his instance permanently protected (7) from disclosure by himself or by the legal adviser, (8) unless the protection be waived.
U.S. v. Richey, 632 F.3d 559, 566 (9th Cir. 2011)(citations omitted.) Drafts of a document that will ultimately be distributed in a manner that would waive privilege are not necessarily outside of the privilege. A party: may assert attorney-client privilege for undistributed documents, such as drafts of communications which were created with the intention of confidentiality, even where the final distribution of the draft might constitute a waiver of the privilege.
Helm v. Adlerwoods Group, Inc. 2010 WL 2951871 n2 at *2 (N.D. Cal July 27, 2010); see also Ideal Elec. Co v. Flowserve Corp, 230 F.R.D. 603, 607 (D. Nev. 2005)(drafts of affidavit to be submitted to court remain privileged); In re Grand Jury Subpoena Duces Tecum Dated Sept. 15, 1983, 731 F.2d 1032, 1037 (2nd Cir. 1984)(fact that certain information might be disclosed does not foreclose application of attorney client privilege so long as communications were intended to be confidential); Robbins & Myers, Inc. v. J.M. Huber Corp., 274 F.R.D. 63, 85 (W.D.N.Y. 2011) (a draft of a document intended for publication can be covered by the attorney-client privilege, "provided that the draft documents demonstrated an intent to seek confidential legal advice on their content.")
A. Certain Drafts of the Toukan Letter Are Privileged
BD first argues that the drafts cannot be protected by the attorney-client privilege because they are not "actual communications." (Mtn at 3.) This argument is not persuasive because the communication took place between Mr. Wydeven as attorney and Mr. Cappellari as client. The question is whether the communications were intended to be confidential. Gen-Probe has submitted the declaration of Mr. Wydeven declaring that his communications with Mr. Cappellari were for the purposes of securing legal advice and were intended to be kept confidential. [Docket No. 454-3 at ¶3.]
The Court has reviewed the drafts and finds no indication that the communications between Mr. Wydeven and Mr. Cappellari were ever intended to be disclosed. Accordingly, the communications ...