By Jason Rantanen
In re Google Inc. (Fed. Cir. 2012) (Nonprecedential Order) Download In re Google
Panel: Lourie, Prost, and Moore (author)
Earlier this week, the Federal Circuit denied a petition for a writ of mandamus sought by Google in a dispute with Oracle. The petition sought to prevent Oracle from using a juicy email on the ground that the email was privileged. The email was sent from a Google engineer to Google's VP in charge of its Android operating platform, as well as Google's senior counsel and another engineer. The email itself is reproduced in the court's opinion; it relates to an investigation of alternatives to Java that Google was considering. Google included the final version of the email on its privilege log, but produced "autosaves" of the email as it was being drafted. After Oracle referenced the substance of the email at a hearing, Google asked Oracle to return all versions of the email, citing privilege. Oracle complied, but moved to compel. The district court subsequently held that the email was not protected under the attorney-client privilege or the work-product doctrine.
Although the court's affirmance of the district court's refusal to protect this communication under the attorney-client privilege is fact-specific (and nonprecedential), the opinion nevertheless provides a useful short primer on attorney-client privilege issues in the context of activities performed at the behest of an in-house counsel.
The opinion also illuminates one of the consequences of the dump-and-recall approach that patent litigation is trending towards: if Google had carefully reviewed all of its document before they were produced, it likely would not have produced autosaves of this email. Instead, they would likely have ended up as a few lines among an untold number of nearly anonymous entries on a privilege log. Indeed, if even Google cannot avoid the inadvertent production of documents it intended to shield via its privilege log, it is questionable that anyone can – especially as document volumes continue to grow. (But perhaps search technologies will improve as well).
This consequence is not necessarily undesirable, however. Privilege logs can include documents of questionable privilege; often, the claims of privilege are not challenged (perhaps because parties on opposite sides are concerned about a possibility of mutually assured destruction). By their very nature, dump-and-recall opens the door to the possibility of more challenges to these types of questionable documents – which may lead to more greater disclosure of significant documents that otherwise would have languished in secret.
IS TO DECIDE WHAT’S HOT IS PRIVILEGED.
“if Google had carefully reviewed all of its document before they were produced, it likely would not have produced autosaves of this email. Instead, they would likely have ended up as a few lines among an untold number of nearly anonymous entries on a privilege log.”
HERE’S A FREE TIP: DO NOT DO THAT. INSTEAD, GET A REAL LAWYER. THE SUREST WAY TO GET HEAT
Still Malcolm, you are an ethical man. I would think you would complain that the ethics of Goldfarb here are questionable, especially as it appears that he relied on admittedly perjured affidavits in procuring his patents in the first place.
From the majority:
It is apparent that the dissent reaches its opposite conclusion by ignoring the applicable standard of review and giving insufficient weight to the jury’s verdict. By citing only to the limited facts that support Gore’s case and relying on a mistaken understanding of the invention at issue, the dissent fails to “disregard all evidence favorable to the moving party that the jury is not required to believe” and intentionally, but impermissibly, “substitute[s] its view of the evidence for that of the jury.” (Johnson, 251 F.3d at 1227 (internal citations and quota-tion marks omitted). We note that despite this substantial evidence, the dissent insists that Goldfarb “did not invent the effective graft materials.” Dissent at 16.
And around we go.
Check Newman’s dissent:
/media/docs/2012/06/10-1510.pdf
NEWMAN, Circuit Judge, dissenting.
The court today holds that a person who performs the requested test of a material that is provided to him for testing for a specified use, can then, when the test is successful, patent the material he was provided, for the use for which it was tested. My colleagues hold that Dr.David Goldfarb, who was provided with Gore-Tex® tubu-lar material for testing as a vascular graft in dogs, can patent as his own the Gore-Tex material that Gore em-ployees provided to him, and assert the exclusive right to the use for which the material was provided. My col-leagues hold that Dr. Goldfarb then can enforce this patent against the provider of the Gore-Tex material that he tested. My colleagues on this panel endorse and de-fend these errors and improprieties, and now rule that Gore is the willful infringer of this improperly obtained patent on Gore’s product and use. My colleagues find no blemish in this history of incorrect law, impropriety, questionable advocacy, and confessed perjury. I respect-fully dissent.
I’m here. I thought he meant “bequest.” Those corporate positions can be quite perilous, so every inhouse attorney should have a will in place.
Thanks – fixed.
Hilarious attorney error, Jason–
“behest”, not “bequest”!
That’s hilarious to me because I remember an insurance law exam in law school, where in one of the questions a toxic chemical was “disbursed” rather than “dispersed”.
Awesome.
Where is Weary Lexicographer, anyway?
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