|
|
|
|
||
Re: GA Court Update - May 3 - Full Text of Order...IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF GEORGIA ATLANTA DIVISION TIVO, INC. Plaintiff, v. 1:05-cv-02799-WSD ECHOSTAR COMMUNICATIONS CORPORATION, ECHOSTAR DBS CORPORATION, ECHOSTAR TECHNOLOGIES CORPORATION, ECHOSTAR, LLC. Defendants. ORDER This matter is presently before the Court on Defendants’ (“Echostar”) Response [70] to this Court’s March 22, 2007 Order to Show Cause [68] (“March 22 Order”). In the March 22 Order, this Court required EchoStar to show cause why certain documents, produced in camera, should not be produced to the Plaintiff (“TiVo”).1 EchoStar’s Response to the March 22 Order acknowledges that, after two years of perpetuating the present discovery dispute, and multiple representations by 1 The March 22 Order also details the course of conduct that has required the Court to engage in these protracted proceedings. EchoStar that all documents had been produced, certain discoverable documents had not been produced. EchoStar represents that these documents have now been produced. As to the remaining documents, which the Court reviewed in camera, EchoStar contends that the majority of these documents are attorney work product not communicated to it from its attorneys (“Merchant & Gould,” “Morrison & Forrester,” or “Mr. Knearl”). Any documents representing attorney work product not communicated to EchoStar are not required to be produced. In re EchoStar, 448 F.3d 1294 (Fed. Cir. 2006). On review, however, the Court has discovered that some documents were communicated to EchoStar, and are required to be produced. Documents Concerning Litigation Topics Other Than Infringement Document MG PRIV 305, an invoice to EchoStar from Merchant & Gould, was produced to TiVo and the Court in redacted form. In the March 22 Order, the Court required EchoStar to submit for in camera review an unredacted copy of the invoice. EchoStar argues that its redactions were justified because Judge Folsom, who presides over the underlying patent litigation in the Eastern District of Texas, ordered EchoStar only to: -2 2 produce all documents created by the Merchant & Gould law firm that relate to any infringement or validity analysis of the ‘389 patent where said documents (1) were communicated to EchoStar or (2) reflect a communication to EchoStar (i.e. documents that reference and/or describe a communication between opinion counsel and EchoStar). EchoStar may redact any information that it considers unrelated to infringement or validity or that it considers primarily related to trial strategy. TiVo, Inc. V. EchoStar Comm. Corp., Case No. 2:04-cv-01 (E.D.Tex, May 19, 2006) (the “May 19 Folsom Order”). EchoStar argues that all of the redactions made to the invoice are to text “primarily related to trial strategy” or “unrelated to infringement or validity.” The Court has evaluated the unredacted invoices in light of the Federal Circuit decision in EchoStar and the May 19 Folsom Order.2 The Court finds that the invoices are non-opinion work product3 and were communicated to EchoStar. 2 EchoStar does not explicitly address whether the scope of subject-matter waiver exceeds the scope of the topics addressed in the specific opinion of counsel relied upon. Courts are split on this issue. Compare Intex Recreation Corp. v. Team Worldwide Corp., 439 F.Supp.2d 46 (D.D.C. 2006) (adopting a broad waiver) with Autobytel, Inc. V. Dealix Corp., 455 F.Supp.2d 569 (E.D.Tex. 2006) (adopting a narrow waiver). This Court defers to the May 19 Folsom Order, which limits the scope of the waiver to infringement and validity. 3 The Court makes this distinction in view of the Federal Circuit’s admonition to “balance the policies to prevent sword-and-shield litigation tactics with the policy to protect work product.” EchoStar, 448 F.3d at 1302. -3 3 Under the analytical framework set forth in EchoStar and the May 19 Folsom Order, the scope of the subject-matter waiver includes infringement and validity. The Court accordingly finds that the following documents only are within the scope of the waiver and must be produced: ECHO T1000-0090340, T1000-090353 (Entry for 4/07/05 only), T1000-090354, and T1000-090360.4 Documents the Evidence Shows Were Communicated to EchoStar TiVo argues, with respect to certain documents, that EchoStar’s representations are not sufficient to show that those documents were not communicated to it.5 In the March 22 Order, the Court requested EchoStar to show 4EchoStar argues that TiVo has “waived” the right to object to these redactions. Waiver “applies only where a party has acted with full knowledge of the facts.” Middlesex Mut. Ins. Co. v. Levine, 675 F.2d 1197, 1204 (11th Cir. 1982). In light of EchoStar’s efforts to conceal even the general nature of these entries, the Court will not deem TiVo to have sufficient knowledge to have waived any rights with respect to them. 5 TiVo first argues that EchoStar should have filed a sworn statement with respect to each document alleged not to have been communicated to it. The Court is not persuaded that a sworn statement is required, and will rely on the representations of EchoStar’s counsel in its Response, which, though unsworn, are made subject to sanction under Federal Rule of Civil Procedure 11. The authorities TiVo cites in support of its demand for sworn statements are inapposite–the Court is not seeking to establish whether the documents at issue are privileged or immune–those classifications are, in this case, evident on the face of the documents. The Court seeks only to determine which unproduced documents, claimed to be privileged or work product, were communicated to EchoStar. -4 4 cause why these documents, withheld for two years, should not be produced. Based on several equivocations by EchoStar in previous submissions, particularly regarding which documents had been communicated to EchoStar by its counsel, the Court required EchoStar to state categorically and unequivocally which documents had been communicated to it (and thus were potentially subject to waiver), and which had not. The March 22 Order specifically stated: “The Court will allow EchoStar, Knearl, and their counsel a final opportunity to meet their obligations. The Court expects clear, unequivocal, unqualified, and complete candor in their response to this Order.” (emphasis added). The effect of the March 22 Order was to emphasize EchoStar’s burden to make the unequivocal affirmative showings required by the Order. It has always been EchoStar’s burden to show that its withholding of documents is justified. See, In re Subpoena Duces Tecum Issued to Commodity Futures Trading Comm. WD Energy Servs., 439 F.3d 740, 751 (D.C. Cir. 2006) (“It is well established that the proponent of a privilege bears the burden of demonstrating facts sufficient to establish the privilege’s applicability.”) After reviewing the documents in camera and EchoStar’s Response to the Court’s March 22 Order, the Court accepts as true EchoStar’s unequivocal and -5 5 categorical representations, made with respect to many of the documents, that “[t]he document was never communicated to EchoStar (in this form or orally), and it does not reference, describe, or disclose any communication with EchoStar.”6 With respect to several documents, however, EchoStar declined to offer the categorical language noted above, opting instead to use less exact phrasing, apparently designed to allow the possibility that the information contained in the document might have been communicated to EchoStar (e.g., by excluding “in this form or orally”, or by carefully designating specific individuals who did not communicate the document to EchoStar, thereby implying that someone else could have communicated the document). EchoStar and Mr. Knearl’s repeated refusals, or at least reluctance, to give this Court sufficient, clear, and unqualified representations concerning which 6 TiVo notes some apparent discrepancies between the representations in EchoStar’s Response and the supporting affidavits. For example, with respect to document MG PRIV 27, the Response contains the unequivocal representation that “[t]he document was never communicated to EchoStar (in this form or orally), and it does not reference, describe, or disclose any communication with EchoStar.” The declaration cited in support, signed by Mr. Knearl, contains a significantly more limited statement: “I did not send or authorize anyone else to send [the document] . . . I do not believe that anyone ever sent EchoStar the [document].” The Court presumes that the Response’s broad claim is factually correct, and it is this broad claim on which the Court relies and for which EchoStar, Mr. Knearl, and their counsel will be held accountable. -6 6 documents were communicated to EchoStar required the Court to demand such representations in the March 22 Order. The Court required these unequivocal representations so that it could determine with finality whether EchoStar had met its burden to show an applicable, unwaived, privilege or immunity as to any of the documents still unproduced by EchoStar or Mr. Knearl after two years of discovery. EchoStar made unequivocal representations that many of the documents reviewed by the Court in camera had never been communicated to it by its attorneys, but failed to make similar unequivocal representations with respect to the following documents: MG PRIV 68, 179, and 180. For the reasons below, these documents are required to be produced. MG PRIV 68 is an advice of counsel letter on noninfringement, with multiple attachments. The credibility of EchoStar’s representation that this letter was not communicated to it in some form is undermined by the limited and guarded nature of the representation in its Response, which, unlike representations made with respect to other documents, declined to state unequivocally that this document had not been communicated to EchoStar in any form. The document is further addressed to an EchoStar employee, was signed by Merchant & Gould attorneys Mr. Knearl and Mr. Scull, and is labeled “attorney-client privileged” on -7 7 each page, a statement true only if the letter was communicated to EchoStar.7 This document and its attachments, although attorney work product, are “documents that embody a communication between the attorney and client concerning the subject matter of the case, such as a traditional opinion letter.” Echostar, 448 F.3d at 1302. MG PRIV 68 is thus required to be produced. MG PRIV 179 and MG PRIV 180 contain the results of patent and prior art searches conducted by an outside consultant hired by Merchant & Gould for the present litigation. In its Response to the March 22 Order, EchoStar declined to represent unequivocally, as it did for other documents, that these documents had never been communicated to it in any form. Instead, EchoStar carefully stated that these documents had never been communicated to it by the sender or recipient noted on the face of the document. This precise word-choice implies directly that the document was in fact communicated to EchoStar by someone other than the listed recipient or sender. EchoStar has failed to show that these documents were not communicated to it. These documents constitute opinion work-product, 7 If the document in question was the original, executed letter, Echostar’s claim that the letter had not been sent would have been more credible. -8 8 communicated to the client, and discussing validity, which lies within the scope of the subject-matter waiver.8 These documents are required to be produced. Accordingly, IT IS HEREBY ORDERED that EchoStar produce by May 16, 2007, in unredacted form, the following documents: MG PRIV 68, 179 (excepting the first two pages), and 180 (excepting the first two pages), and the following portions of MG PRIV 305: ECHO T1000-0090340, T1000-090353 (Entry for 4/07/05 only), T1000-090354, and T1000-090360. SO ORDERED this 3rd day of May, 2007. WILLIAM S. DUFFEY, JR. UNITED STATES DISTRICT JUDGE 8 The first two pages of each of these documents are cover emails from the prior art consultant to a Merchant & Gould attorney. These cover emails reveal the strategy used to choose the parameters of the prior art searches conducted. Although the contents of the prior art search were presumably communicated to EchoStar, it is unlikely that these cover emails, on their face addressed only to a Merchant & Gould attorney, were also shared. The first two pages of MG PRIV 179 and 180 are therefore not required to be produced. -9 9 |
return to message board, top of board |
Msg # | Subject | Author | Recs | Date Posted |
5813 | Re: GA Court Update - May 3 - Full Text of Order... | isthatajoke23 | 5 | 5/8/2007 8:03:49 PM |
5814 | Re: GA Court Update - May 3 - Full Text of Order... random thoughts | Roderick Random | 1 | 5/8/2007 8:23:49 PM |