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 Cir. 2012) (Nonprecedential Order) Download In re Google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of the district court's refusal to protect this communication under the attorney-client privilege is fact-specific (and nonprecedential), the opinion nevertheless provides a useful short primer on attorney-client privilege issues in the context of activities performed at the behest of an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.