In a recent memorandum order, Judge Richard G. Andrews considered “various objections that have been made to decisions of the Special Master Collins J. Seitz, Jr., Esq.” Inventio AG v. Thyssenkrupp Elevator Americas Corporation, et al., C.A. No. 08-874-RGA (D. Del. Aug. 15, 2013). First, Judge Andrews considered plaintiff’s objections and motion to modify the Special Master’s ruling with respect to Defendants’ Challenges to Plaintiff’s Designations of Privilege or Work Product in its Third Amended Privilege Log, and granted that motion in part. See id. at 1-3. Judge Andrews adopted the Special Master’s decision with regard to what country’s privilege law applied and denied defendants’ argument that “under the ‘touch base’ test, Swiss law applies because Plaintiff is a Swiss company.” Id. at 2. As Judge Andrews noted, “[i]f Defendants were correct, the ‘touch base’ test would be pretty meaningless, since once citizenship was determined, that would be the end of the analysis.” Id. Judge Andrews then assessed whether various communications were protected by the attorney-client privilege. See id. 2-3. For example, Judge Andrews found that a “communication between two non-lawyers on which a lawyer [was] copied,” and for which there was no indication that it was “sent for the purpose of obtaining or providing legal advice,” was non-privileged. Id. at 2. Similarly, a communication between an employee of the SEC and a business person of plaintiff was found non-privileged. Id. On the other hand, Judge Andrews found privileged, inter alia, bills from plaintiff’s attorneys for legal services rendered. Id. at 3. Judge Andrews found it sufficient that “[t]he bills identif[ied] specific attorneys billing for legal work, the patents involved, the date of the work, and the general nature of the work.” Id.
Judge Andrews next considered defendants’ objections to and motion to modify the Special Master’s Report and Recommendation on Defendants’ Motion to Reclassify as Non-confidential Information Designated by Plaintiff as Highly Confidential and/or Limited Modification of the Protective Order. See id. at 4-5. Defendants’ motion was granted in part. Specifically, Judge Andrews addressed whether “four categories of deposition excerpts [were] properly marked as ‘highly confidential’” and whether the “Special Master’s discussion concerning modifying the protective order [should] be reviewed.” Id. at 4. First, Judge Andrews found that some excerpts contained publicly available technical information, as those excerpts were, for example, similar to descriptions presented during the Markman hearing or appeared in a publication. See id. As such, Judge Andrews determined that such excerpts should not be marked “highly confidential.” See id. On the other hand, Judge Andrews found that an expert’s analysis of whether certain elements are in the prior art and other non-public technical information were appropriately marked as “highly confidential.” See id. Second, Judge Andrews determined that “[t]he Special Master concluded after a thorough analysis that the protective order should not be modified,” and that the “present objections are without merit.” Id. at 5. Judge Andrews further noted that “[t]here is no reason” to vacate the Special Master’s discussion regarding what the “PTO will consider during reexamination,” as the “Special Master’s Report does not purport to tell any party what information to submit or to withhold from the PTO.” Id.
Judge Andrews additionally considered plaintiff’s objections to the Special Master’s rulings on plaintiff’s and defendants’ motions to compel. See id. at 6-7. First, plaintiff objected to be “being denied discovery on ‘new jobs.’” Id. at 6. Judge Andrews explained that “[e]ven assuming that it is not Plaintiff’s fault that it did not get the discovery before and that it is acting in good faith, the lack of actual prejudice to the Plaintiff and the inherent prejudice to the system of never-ending litigation means that on balance I do not think that discovery should be extended.” Id. at 7. Second, plaintiff “object[ed] to being ordered to produce the Transfer Pricing Analysis, stating that it should only have to produce the portion relating to the United States.” Id. at 6. Judge Andrews found, however, that the Transfer Pricing Analysis was relevant and ordered its production. Id. at 7.
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