United States District Court, D. Kansas
JAMES P. O'HARA, Magistrate Judge.
These consolidated cases involve claims by Sprint Communications Company, L.P. that defendants are infringing twelve patents related to broadband and packet-based telephony products. Defendants have filed a motion to compel Sprint to produce documents on four topics about which Sprint in-house attorneys testified in a separate patent-infringement lawsuit brought by Sprint against Vonage Holdings Corp. and Vonage America, Inc. (collectively, "Vonage") (ECF doc. 153). In response to defendants' document requests seeking these documents, Sprint objected on the grounds that the documents were protected from disclosure by either the attorney-client privilege or the work-product doctrine. Defendants argue that to the extent the documents were once privileged, Sprint waived that privilege via the testimony in the Vonage trial. Because the undersigned U.S. Magistrate Judge, James P. O'Hara, finds that Sprint's response to the document requests waived any objection Sprint had to producing documents on two of the topics, the motion is granted in part. But because Sprint's objections were proper as to two of the topics, the motion also is denied in part.
In September 2007, U.S. District Judge John W. Lungstrum presided over a jury trial in the case of Sprint Communications Company LP v. Vonage Holdings Corp.,  involving claims by Sprint that Vonage had infringed patents from two related families of patents issued to named inventor Joseph Christie (the "Christie Patents"). During the Vonage trial, Sprint called two in-house attorneys, Michael Setter and Harley Ball, to testify about Christie's inventions, Sprint's evaluation of their patentability, Sprint's patent applications, and Sprint's decision to sue Vonage for infringement. Sprint's trial counsel, B. Trent Webb, also discussed these topics in his opening statement and closing argument.
In these consolidated cases, seven Christie Patents are at issue, including five that were at issue in Vonage.  On May 10, 2013, defendants served their First Set of Common Requests for Production to Sprint. A number of the specific requests sought documents relating to the subject matter of Sprint's disclosures during the Vonage trial. Defendants accurately characterize these requests as seeking information related to the following four topics: "(1) assessments by Sprint's legal department of the patentability of Mr. Christie's purported inventions; (2) the preparation or prosecution of patent applications for such inventions (including instructions and other communications of Sprint's legal department relating thereto); (3) communications and analysis of Sprint's legal department concerning its pre-suit investigation into whether Vonage infringed the patents concerning Mr. Christie's purported inventions; and (4) communications among Sprint's legal department and its executives regarding authorization to contact Vonage about alleged infringement of such patents and to sue Vonage for such alleged infringement."
Sprint responded to the document requests on June 13, 2013, asserting objections on several grounds, including (as relevant here) that the information sought was "protected from discovery by the attorney-client privilege, work product doctrine, and/or any other applicable privilege or immunity." But with respect to three requests which sought information on topics one and two above, Sprint stated that it would produce non-privileged and responsive documents "subject to and without waiving" its objections.
Defendants now move the court to compel Sprint to produce documents related to the four topics at issue, asserting that Sprint's presentation in the Vonage trial waived any attorney-client or work-product protection to which the documents were otherwise entitled.
II. Waiver of Discovery Objections
Defendants' document requests numbered 18-20 sought documents that relate to Sprint's meetings with Christie, Sprint's assessment of the patentability (including the search for and analysis of prior art) of purported inventions in the Sprint Patent Family, and Sprint's prosecution of patent applications for Christie's inventions (i.e., topics one and two). As noted above, Sprint objected to each of these requests on the basis that they sought privileged information. Despite its objections, however, for each of these requests Sprint stated, "Subject to and without waiver of the foregoing objections... Sprint will produce non-privileged responsive documents within its custody and control after a reasonably diligent search relating to the non-privileged facts discussed during the Sprint v. Vonage trial (if any)." This purported reservation of rights by Sprint was improper and ultimately has the effect of waiving Sprint's objections to these specific document requests.
The court recognizes that it has become common practice among many practitioners to respond to discovery requests by asserting objections and then answering "subject to" or "without waiving" their objections. This practice, however, is manifestly confusing (at best) and misleading (at worse), and has no basis at all in the Federal Rules of Civil Procedure. The court joins a growing number of federal district courts in concluding that such conditional answers are invalid and unsustainable.
In this district, U.S. Magistrate Judge David J. Waxse explained the confusing nature of conditional answers. In Pro Fit Management, Inc. v. Lady of America Franchise Corp., the defendant asserted privilege objections to the plaintiff's document requests, but then stated, subject to its objections, it would produce responsive, non-privileged documents. The plaintiff filed a motion to compel, arguing that such conditional responses "obscure potentially discoverable information" and leave the requesting party "with reason to believe that important documents have not been produced without a mechanism to compel production." Judge Waxse agreed with the plaintiff, ruling that when a party responds that it is producing documents "subject to and without waiving its objections, " the requesting party "is left guessing as to whether [the producing party] has produced all documents, or only produced some documents and withheld others on the basis of privilege." Federal district courts in Florida have reached the same conclusion. For example, in Consumer Electronics Association v. Compras and Buys Magazine, Inc., the court held that objections followed by an answer "preserve nothing and serve only to waste the time and resources of both the Parties and the Court." The court reasoned that "such practice leaves the requesting Party uncertain as to whether the question has actually been fully answered or whether only a portion of the question has been answered."
In addition to their failure to convey any information, conditional responses are not permitted by the Federal Rules of Civil Procedure. Rule 34(b)(2) permits only three responses to a request for production of documents: produce the documents as requested, "state an objection to the request" as a whole, or state an "objection to part of [the] request" provided that the response specifies the part objected to and responds to the non-objectionable portion. "Objecting but answering subject to the objection is not one of the allowed choices under the Federal Rules." Thus, no objections may be "reserved" under the rules; "they are either raised or they are waived."
Finally, courts have recognized that conditional responses violate common sense. In Haeger v. Goodyear Tire and Rubber Co., U.S. District Judge Roslyn O. Silver of the District of Arizona concluded that if Rule 34 were read to allow parties to combine objections with a partial response that does not specify whether other potentially responsive material is being withheld, "discovery would break down in practically every case." Judge Silver explained,
A litigant with any viable objection to a discovery request would make that objection and then produce whatever portion of otherwise responsive documents it wished to produce. Under this approach, a party would have no obligation to indicate that its production was partial and the opposing party would have no way of knowing the production was partial. Absent an indication of what, exactly, the responding party was objecting to, courts would have no way of assessing the propriety of the objections. Instead, courts would be flooded with motions to compel by litigants seeking to confirm ...