A trial lawyer defending a deponent in a deposition where the interrogating counsel asks questions relating to communications the deponent had with other legal counsel faces a tricky situation. Generally, foundational facts revealing whether the deponent had a confidential attorney-client communication with counsel are not privileged.1 Accordingly, the defending lawyer usually should permit the deponent to answer foundational questions about the existence of a communication. But, the attorney-client privilege protects the substance of any confidential communication the deponent had with counsel.2 Thus, questions attempting to make the deponent reveal the substance of a confidential communication with its counsel are objectionable, if the deponent has not previously waived the privilege. Should a deponent, in responding to probing questions on communications it had with legal counsel, reveal the substance of an otherwise protected attorney-client communication, a waiver of privilege could be found even if the deponent’s answer does not reveal the exact contents of the communication.3 Lawyers defending depositions, therefore, must exercise caution and timely object to any question that crosses the line from a permissible foundational question as to the existence of an attorney-client communication to an objectionable question that, in effect, seeks to have the deponent reveal the substance of a privileged communication.4

In patent litigation, defending lawyers often face this issue when an interrogating lawyer seeks to probe whether or not the deponent obtained an opinion-of-counsel regarding the asserted patent.5 For example, in Square D Co. v. E.I. Elecs., Inc., 2009 WL 3213638, *8-*9 (N.D. Ill. Sept. 30, 2009), a patentee, asserting eleven patents, conducted a 30(b)(6) deposition of the accused infringer. At the time of the deposition, the accused infringer had not determined if it would rely on any of its opinions of counsel to defend against the patentee’s claim of willful infringement.6 Accordingly, the accused infringer had not, at that time, waived its attorney-client privilege for its opinions of counsel.7 During the deposition, for each of the asserted patents, the patentee’s counsel separately asked the deponent whether the corporation had obtained an opinion of counsel regarding the specific patent in view of the accused product. The deponent affirmatively answered for each asserted patent. The patentee’s counsel then followed-up by asking whether the accused infringer changed its accused product in any way based on the opinion it had received. For some of these questions (i.e. for some of the asserted patents), the deponent responded that no changes had been made. For other questions (i.e., other asserted patents), counsel defending the deponent objected on privilege grounds and instructed the witness not to answer. The patentee, thereafter, moved to compel the deponent to fully respond to the questions for which it followed its counsel’s instruction not to answer the question.

In its motion to compel, the patentee argued that its question on whether the accused infringer had changed the design of its accused product after receiving the opinion of counsel did not implicate the attorney-client privilege. It also argued, alternatively, that if the question implicated the privilege, then the accused infringer had waived its privilege for all of the asserted patents in view of its answers to the patentee’s question on the design changes for some of the asserted patents. The district court disagreed with both contentions.

First, the district court ruled that the patentee’s questions regarding whether the accused infringer changed the design of its product after receiving the opinions of counsel were “objectionable because they attempt to ascertain, via the back door, what the infringement opinions said; they linked the issue of changes EI [the accused infringer] may have made to the opinions EI received from its lawyers. Those issues fall squarely within the privilege[.]” Id. at *8. The court noted that, at the current stage of the litigation where the accused infringer had not waived its attorney-client privilege, the patentee could have properly asked the accused infringer whether it had made any design changes to the product “without linking the issue to privileged communications.” Id. Because it had not done so, the patentee’s questions were improper.

As to waiver of the privilege, the court analyzed whether the deponent’s responses for those patents for which it did provide a response amounted to an inadvertent disclosure of privileged material that did not justify a waiver. Following FRE 502(a),8 the court instructed that “the disclosure of privileged communications operates as a waiver as to undisclosed communications only if the disclosure is intentional; if the disclosure is inadvertent, there is no waiver.” Id. at *8. Analyzing the accused infringer’s conduct during the deposition, the court concluded that the accused infringer “had no intent to disclose privilege communications; indeed, [the deponent] took great pains to ensure that he did not disclose any privilege communications, and counsel for EI made clear that it was trying its best to preserve the privilege to the fullest extent.” Id. Consequently, the court refused to find a waiver of privilege. Noting it had examined the opinions in camera,9 the court also ruled that the opinions were “privileged and that they need not be disclosed in any form at present-whether directly, or in response to backdoor deposition questions.” Id. at *9. The court noted that if the accused infringer later opted to rely on its opinions of counsel, at that point it will have waived its attorney-client privilege and will then have to disclose these privileged communications. Id. at *9.

Footnotes:

1. See generally, Robert A. Matthews, Jr., Annotated Patent Digest § 42:9 —Facts Regarding Existence of an Attorney-Client Relationship or Communication [hereinafer APD]

2. See generally, APD § 42:8 Protects Communications To and From a Lawyer.

3. See generally, APD § 42:82 Disclosing Only Conclusions or Substance Without Disclosing Specific Communication.

4. The Federal Rules of Civil Procedure restrict the circumstances in which a deponent may properly be instructed not to answer a question in a to three situations: (1) “when necessary to preserve a privilege”; (2) “to enforce a limitation on evidence directed by the court”; or (3) to present a motion to limit the scope and conduct of the deposition under 30(d)(3). FED. R. CIV. P 30(d)(1). See generally, APD § 41:83 Objections and Instructions to Deponent During Deposition.

5. See generally, APD § 42:61 Existence of Opinions of Counsel.

6. See generally, APD § 42:130 Compelling Accused Infringer to Identify if it Will Rely on Opinions of Counsel.

7. See generally, APD § 42:110 Injecting Advice of Counsel Via an Opinion of Counsel Waives Privilege.

8. See generally § 42:96 Protective Order Excusing Inadvertent Production (discussing FEE 502, which became effective on Sept. 19, 2008).

9. See generally, APD § 42:148 Evidentiary Burden to Obtain In Camera Review.