United States District Court, D. Nebraska
THOMAS D. THALKEN, Magistrate Judge.
This matter is before the court on the defendant's, Briggs & Stratton Power Products Group, LLC (Briggs), Motion to Compel Production of Exmark's Patent Infringement Potentials List and Related Documents (Filing No. 255). Briggs filed a brief (Filing No. 256) and index of evidence (Filing No. 257) in support of the motion. The plaintiff, Exmark Manufacturing Company Inc. (Exmark), filed a brief (Filing No. 265) in response. Briggs filed a brief (Filing No. 269) and index of evidence (Filing No. 270) in reply.
This action pertains to the alleged infringement of United States Patent No. 5, 987, 863 (the '863 patent), which covers a lawn mower having flow control baffles. See Filing No. 14 - Amended Complaint p. 1-4. Exmark alleges the defendants are knowingly and actively engaging in the manufacture and sale of similar mowers that are covered by the '863 patent. Id. In Briggs' Answer, Briggs asserts a defense of laches. See Filing No. 29 - Answer ¶ 23. Briggs contends it has been making and selling mowers since 1999 that, under Exmark's theories of infringement, have substantially the same baffles, yet Exmark unreasonably waited until 2010 to file suit. See Filing No. 256 - Brief p. 4. In this motion, Briggs seeks to compel disclosure of a "Patent Infringements Potentials list" (the list) and related documents which, according to Briggs, evidences Exmark's knowledge of Briggs' accused mowers for purposes of establishing laches. See Filing No. 255 - Motion; Filing No. 256 - Brief.
Exmark gave its former Chief Engineer and current Engineering Services Manager, Rodney L. Benson (Benson), the responsibility of working with inside counsel on patent matters, including the defense of Exmark's patents. See Filing No. 191-1 - Benson Decl. ¶ 2; Filing No. 191-3 Ex. 1 - Benson Depo. p. 11:7 - 13:12. As part of this responsibility, Benson created and maintained a list of potential patent infringers in order to obtain legal advice regarding patent infringement. See Filing No. 191-1 - Benson Decl. ¶ 3; Filing No. 257-2 Ex. 1 - Interrogatories p. 35-36. Benson created the list in approximately 2001. See Filing No. 257-2 Ex. 1 - Interrogatories p. 31-32.
During this litigation, Briggs has sought to discover Exmark's bases for opposing Briggs' laches defense. See Filing No. 256 - Brief p. 6; Filing No. 257-2 Ex. 1 - Interrogatories. Specifically, Briggs requested Exmark provide "a detailed description of the factual and legal basis for Exmark's denial of Briggs' assertions underlying its defense of laches" including a description of "when Exmark first knew or reasonably should have known of any of Briggs' conduct or devices that would allegedly fall within the scope of any Asserted Claim[.]" See Filing No. 257-2 Ex. 1 - Interrogatories p. 21-26. Exmark answered, in part,
[O]ne of its employees reported seeing a Ferris mower having flow control baffling in the underside of the deck at the GIE show in November of 2001 that might potentially infringe the 863 patent, but Exmark has no knowledge or record of what mower that was, what the structure of the baffles was, whether it was within the scope of the 863 patent claims, and in what time period and quantities Ferris sold that mower or other mowers having such a baffle structure.
Id. at 33-34. Exmark states it has disclosed all factual information relating to its knowledge of Briggs' infringement. See Filing No. 265 - Reply p. 7, 19-20. Briggs, under the theory the list Benson created would contain a definitive answer, requested detailed information about the list. Id. at 31-32. Exmark asserted the list was privileged and answered, "Exmark uses this list to get legal advice on potential infringement of Exmark's intellectual property." Id. Exmark stated the list was saved in a restricted location, the R: drive, and only three people had access to the list, although on occasion, Benson shared the list with select Exmark employees. Id.; Filing No. 191-1 - Benson Decl. ¶ 4. Exmark explained Benson disclosed the list because,
In order to perform his job and effectively assist counsel and obtain legal advice, Mr. Benson sometimes shared the list with select persons in order to facilitate effective reporting of facts to Mr. Benson. In particular, engineers and management attending the GIE show had a need to know the information already on the list in order to effectively report facts about patent issues from the show.
See Filing No. 257-2 Ex. 1 - Interrogatories p. 35-36. In order to share the list with select Exmark employees, Benson saved a copy of the list on the S: drive. Id. The copy was set for automatic deletion after sixty days. Id. Approximately eleven Exmark employees had access to the list. See Filing No. 257-3 Ex. 2 - Interrogatories p. 8-9; see also Filing No. 257-5 Ex. 4 - Benson Depo. Periodically, Exmark engineers and management emailed Benson about the list and potentially infringing products. See Filing No. 257-4 Ex. 3; Filing No. 257-9 Ex. 8; Filing No. 257-10 Ex. 9 - Emails. Exmark produced some of these emails, but withheld other emails under the basis of attorneyclient privilege. Id.; Filing No. 265 - Response.
During Benson's deposition, Exmark's counsel asserted the attorney-client privilege and instructed Benson not to answer questions regarding the list's contents, including whether Briggs' subsidiary Ferris was listed as a potential infringer. See Filing No. 257-5 Ex. 4 - Benson Depo.; Filing No. 270-3 Ex. 2 - Benson Depo. Benson also did not know or did not recall answers to numerous questions related to Briggs' laches defense. Id.
On December 23, 2014, Briggs filed the instant motion seeking to compel disclosure of the list and related documents under two theories: 1) the list and related documents are not privileged and 2) if a privilege exists, Exmark waived its privilege. See Filing No. 255 - Motion; Filing No. 256 - Brief. The documents in question, as identified in Exmark's November 8, 2011, Privilege Log, are: 163, 164, 172, 173, 175, 205, and 206. See Filing No. 256 - Brief p. 11. Documents 163, 172, 173, and 175 are described as correspondence regarding potential patent infringement. See Filing No. 257-11 Ex. 10 - Privilege Log. Documents 164, 205, and 206 are identified as Benson's confidential notes. Id.
In the absence of a relevant federal rule, statute, or constitutional provision, federal common law governs questions of privilege in federal-question jurisdiction proceedings. See Fed.R.Evid. 501; Hollins v. Powell, 773 F.2d 191, 196 (8th Cir. 1985). "The attorney-client privilege is the oldest of the privileges for confidential communications known to the common law.'" United States v. Yielding, 657 F.3d 688, 707 (8th Cir. 2011) (quoting Upjohn Co. v. United States, 449 U.S. 383, 389 (1981)). The Supreme Court in Upjohn determined the communications of an employee of a corporation with the corporation's counsel made in order to secure legal advice concerning matters within the ...