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Pacing Technologies, LLC v. Garmin International, Inc.

United States District Court, Ninth Circuit

September 5, 2013

PACING TECHNOLOGIES, LLC, Plaintiff,
v.
GARMIN INTERNATIONAL, INC. AND GARMIN, USA, INC., Defendants.

ORDER: (1) GRANTING IN PART AND DENYING IN PART DEFENDANT'S MOTION TO COMPEL; and (2) GRANTING MOTIONS TO SEAL [ECF Nos. 106, 107, 115 and 121.]

WILLIAM McCURINE, Jr., Magistrate Judge.

I. INTRODUCTION AND FACTUAL BACKGROUND

On July 10, 2013, Defendant Garmin International, Inc. ("Garmin") filed a motion to compel documents withheld from production by Plaintiff Pacing Technologies on the basis of the attorney-client privilege. [ECF No. 107.] On July 22, 2013, Plaintiff filed its opposition brief. [ECF No. 111.] On July 30, 2013, Defendant filed its reply in support of the motion to compel. [ECF No. 112.] The Court also allowed supplemental briefing from both parties. [ECF Nos. 117, 123.] After careful consideration of the parties' briefing and supporting exhibits, the Court GRANTS Defendant's motion to compel for the reasons detailed herein.

A. Plaintiff's Voluntary Production of Privileged Documents

On June 14, 2013, Pacing produced copies of six draft patent applications prepared by the inventor of the 843 patent, William Turner, and his law firm, Blank Rome, as well as copies of privileged communications between Mr. Turner and Blank Rome concerning Mr. Turner's review of the various draft patent applications. The draft applications disclosed by Pacing are versions of what was ultimately filed with the United States Patent and Trademark Office ("USPTO").

The attorney-client communications also disclosed by Pacing reveal Mr. Turner's detailed commentary and questions about the draft patent application and include his attorney's answers and advice in response to Mr. Turner's observations. The attorney-client communications also discuss filing requirements of the USPTO. Specifically, the communications Pacing voluntarily disclosed include: (1) August 5, 2005 draft patent application; (2) August 23, 2005 list of questions and comments regarding the draft application prepared by Mr. Turner; (3) August 30, 2005 email from Mr. Turner with an edited version of the draft application; (4) August 31, 2005 responses to Mr. Turner's questions and comments; (5) September 26, 2005 draft patent application; (6) October 6, 2005 as-filed patent application; and (7) October 6, 2006 email to Mr. Turner regarding patent application fees and requirements. See Pacing's Confidential Third Supplemental Response to Defendant's Interrogatory No. 2, dated June 18, 2013 attached as Exh. 7 to Wu Declaration in support of Garmin's Motion to Compel.

Pacing asserts it voluntarily produced these documents in order to demonstrate Mr. Turner exercised reasonable diligence from August 4, 2005 until October 6, 2005, which is the time period Pacing contends its invention was conceived and constructively reduced to practice until the filing of a patent application with the USPTO in October of 2005.

B. The Withheld Documents at Issue

The documents withheld on grounds of attorney-client privilege which Garmin seeks to compel are as follows:

• PacingPriv1116-1124 (December 21, 2004) and Pacing Priv837-857, 858-878 (July 1, 2005). These two communications consist of an 8-page PowerPoint presentation and a 40-page PowerPoint presentation from Mr. Tuner to Blank Rome concerning the Invention. Specifically, PacingPriv1116-1124 (December 21, 2004) is described in Pacing's privilege log as "PowerPoint [p]resentation requesting legal advice regarding invention." Pacing Priv837-857, 858-878 (July 1, 2005) is described in the privilege log as "PowerPoint [p]resentation prepared for atty. and discussed for purpose of seeking legal advice regarding invention."
• PacingPriv1649-1650 (January 10, 2005) and PacingPriv 464-469 (January 19, 2005). These two documents consist of correspondence between Mr. Turner and Mr. Higgins and between Mr. Turner and Mr. Wigman regarding the invention. In Pacing's privilege log, the PacingPriv1649-1650 (January 10, 2005) document is described as "[e]mail discussing invention." PacingPriv 464-469 (January 19, 2005) is described as "[l]etter reflecting legal advice regarding invention."
• Pacing Priv1648 (April 6, 2005). This document is an email from Mr. Higgins to Mr. Wigman regarding a search report about the invention. Specifically, Pacing Priv1648 (April 6, 2005) is described in Pacing's privilege log as "[e]mail discussing search report."
• PacingPriv831-836 (July 3, 2005) and PacingPriv32-35, 35-36 (July 10, 2005). These two documents consist of an invention description from Mr. Turner to Mr. Higgins and an email to Mr. Wigman attaching an invention disclosure form. In Pacing's privilege log, the PacingPriv831-836 (July 3, 2005) document is described as "[i]nvention description shared to obtain legal advice." PacingPriv32-35, 35-36 (July 10, 2005) is described as "[e]mail seeking legal advice concerning and attaching invention disclosure for patent application."
• PacingPriv980-1026 (undated) and PacingPriv103-106 (July 26, 2005). These documents consist of communications between Mr. Turner and his law firm, Blank Rome which discuss business strategy and third party websites. Specifically, PacingPriv980-1026 is described in Pacing's privilege log as "[h]andwritten notes on patent application copy and third party websites regarding invention shared with Atty. for purposes of seeking legal advice." PacingPriv103-106 (July ...

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