United States District Court, N.D. California
ORDER REGARDING DISCOVERY LETTER BRIEF RE: DKT. NO.
C. SPERO, CHIEF MAGISTRATE JUDGE.
accordance with the procedures set by this Court for raising
discovery disputes, Plaintiff Cave Consulting Group, Inc.
("CCGroup") and OptumInsight, Inc. have met and
conferred in person and filed a joint letter brief raising
six issues. See generally Joint Letter (dkt. 209).
The Court heard argument on November 3, 2017, and now
resolves those disputes as follows.
DISPUTE REGARDING THE PREVIOUS DISCOVERY ORDER
October 25, 2016, the Court issued an order granting in part
and denying in part CCGroup‘s motion to compel
documents based on waiver of the attorney-client privilege
and the work product doctrine. See generally Order
Re Mot. to Compel (dkt. 138). The Court held that
OptumInsight‘s predecessor Symmetry, Inc. waived
attorney-client privilege as to certain topics by offering in
a USPTO reexamination proceeding its attorney‘s
affidavit regarding the conception date of U.S. Patent No. 5,
835, 897 (the "‘897 patent") and whether
Symmetry‘s 1994 response to a request for proposal
("RFP") from Aetna constituted an invalidating
offer for sale. Id. at 16. The Court determined that
the waiver continued as to documents created and
communications occurring after the date of disclosure, and
that it applied to OptumInsight after its merger with
Symmetry in 2007, but set a cutoff date of April 28, 2014 to
allow OptumInsight to defend itself fairly and effectively in
the case at hand. Id. at 16, 18-19.
respect to work product protection, the Court relied on the
Federal Circuit‘s explanation of how waiver applies to
that doctrine: "'[W]ork product waiver is not a
broad waiver of all work product related to the same subject
matter like the attorney-client privilege. Instead,
work-product waiver only extends to "factual" or
"non-opinion" work product concerning the same
subject matter as the disclosed work product.‘"
Id. at 13 (quoting In re EchoStar Commc'ns
Corp., 448 F.3d 1294, 1302 (Fed. Cir. 2006)). Applying
that rule to the case at hand, the Court held as follows:
[Work product] protection is waived by Symmetry‘s
disclosure of the process by which [its counsel] Rosenbaum
reached his legal conclusion that the ‘897 patent was
not subject to a statutory bar as a result of the Aetna RFP
Response and "decided to file the information . . . in
the . . . Information Disclosure Statement."
See Brophy Decl. Ex. B (Rosenbaum Aff.) ¶¶
5-8. Where Symmetry presented its counsel‘s
investigation and legal conclusion as a sword to persuade the
USPTO to rule in its favor in the reexamination, it cannot
also rely on the work product doctrine as a shield to bar
discovery of documents prepared or gathered during that
investigation and that serve as a basis for that legal
conclusion, nor other material related to the same subject
matter. Cf. EchoStar, 448 F.3d at 1304 (discussing
waiver of work product protection where a client asserts an
advice of counsel defense). Such waiver is limited to the
same scope as the attorney-client privilege waiver discussed
above, including the cutoff date of April 28, 2014. Moreover,
work product protection is waived only as to
"'factual‘ or 'non-opinion‘ work
product"; there is no waiver as to counsel‘s
"mental impressions, conclusions, opinions, or legal
theories." See Id. at 1302 (citation omitted).
Id. at 18 (ellipses in original). The parties‘
present dispute focuses on the last sentence of the passage
above, addressing the distinction between "fact"
and "opinion" work product.
moved for reconsideration of that order, or in the
alternative for leave to file an interlocutory appeal. The
Court denied that motion as to reconsideration but granted
leave to appeal, and issued an amended order identical to the
first order on the motion to compel except for the addition
of a paragraph finding the matter suitable for interlocutory
appeal pursuant to 28 U.S.C. § 1292. See Order
Denying Leave to File Mot. for Reconsideration (dkt.
160); Am. Order Re Mot. to Compel (dkt.
at 22. The Federal Circuit disagreed with this Court‘s
conclusion that § 1292 applied and therefore dismissed
the appeal, but noted that its dismissal was without
prejudice to OptumInsight petitioning for mandamus. See
Cave Consulting Grp., Inc. v. OptumInsight, Inc., No.
2017-108 (Fed. Cir. Feb. 24, 2017) (unpublished, available in
the record of this case at dkt. 168). OptumInsight
subsequently petitioned for mandamus, arguing primarily that
this Court erred in applying Symmetry‘s waiver to
OptumInsight after the two companies merged, and although the
Federal Circuit held mandamus review to be appropriate, it
held that this Court did not abuse its discretion and
therefore declined to grant relief. In re OptumInsight,
Inc., No. 2017-116, 2017 U.S. App. LEXIS 13483 (Fed.
Cir. July 20, 2017) (available in the record of this case at
dkt. 200). The Federal Circuit‘s order does not address
the scope of waiver of work product protection separately
from waiver of attorney-client privilege, nor does it address
the distinction between "fact" and
"opinion" work product. See id.
joint letter now before the Court, CCGroup argues that
"OptumInsight contends that it is entitled to continue
withholding all post-merger attorney-client communications
because those documents constitute opinion work
product, " a position that CCGroup contends conflicts
with OptumInsight‘s prior representations regarding the
vast scope of documents affected by the Court‘s
previous order. Joint Letter at 1. Based on
EchoStar, CCGroup argues that OptumInsight should be
required to produce its attorneys‘ opinion letters and
similar documents so long as they were disclosed to the
client (OptumInsight), treating only documents maintained
internally by OptumInsight‘s counsel and not disclosed
to OptumInsight as "opinion" work product exempt
from the disclosure requirement. Id. at 1-2.
asserts that it in fact produced "approximately 1400
previously-privileged pages" before the Court issued its
order and "more than 500 additional pages" in
response to the Court‘s order-of a total production of
more than 1.4 million pages-and that CCGroup has not
challenged any specific privilege log entries for documents
that OptumInsight continues to withhold. Id. at 2.
OptumInsight contends that "the Court‘s citation
of Echostar [sic] [does not] overrule decades of
law establishing the lines between factual and opinion work
product, " and that "EchoStar does not
change . . . Ninth Circuit law." Id. at
Specifically, OptumInsight relies on the Ninth
Circuit‘s decision in Republic of Ecuador v.
Mackay, 742 F.3d 860 (9th Cir. 2014), where that court
stated that "'"[o]pinion work product"
represents the core types of work product protected under
Hickman, namely an attorney‘s mental
impressions, conclusions, opinions or legal theories
developed in anticipation of litigation‘" and that
such work product "'is virtually
undiscoverable.‘" Joint Letter at 2 (quoting
Republic of Ecuador, 742 F.3d at 869 n.3).
stated in the Court‘s previous order, waiver of work
product protection "occurs only 'where disclosure of
the otherwise [protected] documents is made to a third party,
and that disclosure enables an adversary to gain access to
the information.‘" Am. Order Re Mot. to Compel at
13 (quoting Nidec Corp. v. Victor Co. of Japan, 249
F.R.D. 575, 578 (N.D. Cal. 2007)). In such circumstances,
"'work-product waiver only extends to
"factual" or "non-opinion" work product
concerning the same subject matter as the disclosed work
product.‘" Id. (quoting
EchoStar, 448 F.3d at 1302).
distinction between "fact work product" and
"opinion work product" is perhaps most commonly
applied in the context of Rule 26(b)(3) of the Federal Rules
of Civil Procedure, which codifies work product protection
but allows for discovery of protected material on a showing
of substantial need, so long as the court "protect[s]
against disclosure of the mental impressions, conclusions,
opinions, or legal theories of a party‘s attorney or
other representative concerning the litigation."
Fed.R.Civ.P. 23(b)(3). The "virtually
undiscoverable" language on which OptumInsight now
relies from Republic of Ecuador derives from a case
considering that doctrine, and holding that opinion work
product is "virtually undiscoverable" based on a
showing of need. See Dir., Office of Thrift Supervision
v. Vinson & Elkins, LLP, 124 F.3d 1304, 1307 (D.C.
Cir. 1997) (citing Fed.R.Civ.P. 26(b)(3); Upjohn Co. v.
United States, 449 U.S. 383, 401-02 (1981)); see
also Upjohn, 449 U.S. at 401-02 (also considering the
types of documents that can be obtained based on a showing of
need); Republic of Ecuador, 742 F.3d at 869 n.3
(quoting United States v. Deloitte LLP, 610 F.3d
129, (D.C. Cir. 2010) (also considering the substantial need
test and in turn quoting Vinson &
Elkins)). It is not clear from Republic of
Ecuador and similar authorities that the same rule holds
true where a party has waived work product protection as to
certain subject matter.
divide between fact and opinion work product has also been
adopted in cases, like here, considering the scope of waiver.
EchoStar, cited and relied on by this Court‘s
previous order, was one such case, stating that
"work-product waiver only extends to 'factual‘
or 'non-opinion‘ work product concerning the same
subject matter as the disclosed work product."
See 448 F.3d at 1302. The ...