United States District Court, D. Kansas
MEMORANDUM AND ORDER
JOHN W. LUNGSTRUM, District Judge.
These consolidated cases brought by plaintiff Sprint Communications Company, L.P. ("Sprint") come before the Court on defendants' objections (Doc. # 245) to the Orders by which the Magistrate Judge denied defendants' motion to compel (Doc. # 153). For the reasons set forth below, the objections are sustained in part and overruled in part. The Court concludes that Sprint did waive the attorney-client privilege with respect to the subject of an outside law firm's legal advice concerning possible infringement by Vonage, and defendants' objections are sustained to that extent. The objections are otherwise denied.
In these actions, Sprint asserts claims of patent infringement against various defendants. In September 2007, the undersigned presided over a trial of Sprint's patent infringement claims against defendants Vonage Holdings Corp. and Vonage America, Inc. (collectively "Vonage"). The Vonage case involved some of the same patents, issued to inventor Joseph Christie, that are at issue in the present cases. During the Vonage trial, Sprint called two in-house attorneys, Michael Setter and Harley Ball, to testify about Mr. 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 also discussed those topics in opening statement and closing argument in
In the present cases, defendants propounded document requests to Sprint by which they sought documents with information relating to the following four topics (as characterized by defendants), which were the subjects of Sprint's disclosures during the Vonage trial (hereafter referred to as "Topic 1, " "Topic 2, " etc.): "(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 asserted objections based on attorney-client privilege and work-product immunity, and defendants moved to compel production of the documents. In their motion to compel, defendants argued that Sprint had waived the attorney-client privilege by its testimony and discussion of those topics during the Vonage trial.
On February 11, 2014, the Magistrate Judge issued an order (Doc. # 177) granting the motion in part and denying it in part. The Magistrate Judge upheld the assertion of the attorney-client privilege and denied the motion to compel with respect to Topic 3 and Topic 4. With respect to Topic 1 and Topic 2, however, the Magistrate Judge ruled that Sprint had not properly invoked-and thus had waived-the attorney-client privilege in responding to the document requests, and he therefore granted the motion to compel with respect to those topics. Sprint moved for reconsideration of the latter ruling, and on April 18, 2014, the Magistrate Judge issued a second order (Doc. # 228) granting the motion. Upon reconsideration, the Magistrate Judge concluded that Sprint had not waived the attorney-client privilege with respect to Topic 1 and Topic 2 under the specific circumstances of these cases, and he proceeded to uphold the assertion of the privilege. Thus, in the end, the Magistrate Judge denied the motion to compel in its entirety. Defendants now seek review of those orders by this Court.
II. Governing Standard of Review
With respect to a magistrate judge's order relating to nondispositive pretrial matters, the district court does not conduct a de novo review; rather, the court applies a more deferential standard by which the moving party must show that the magistrate judge's order is "clearly erroneous or contrary to law." See First Union Mortgage Corp. v. Smith, 229 F.3d 992, 995 (10th Cir. 2000) (quoting Ocelot Oil Corp. v. Sparrow Indus., 847 F.2d 1458, 1461-62 (10th Cir. 1988)); 28 U.S.C. § 636(b)(1)(A); Fed.R.Civ.P. 72(a). The clearly erroneous standard "requires that the reviewing court affirm unless it on the entire evidence is left with the definite and firm conviction that a mistake has been committed." See Ocelot Oil, 847 F.2d at 1464 (quoting United States v. United States Gypsum Co., 333 U.S. 364, 395 (1948)).
A. Work-Product Immunity
In his first order, the Magistrate Judge noted that, although the parties had set forth the standards for work-product protection and waiver in their briefs on the motion to compel, defendants had not made any specific arguments relating to whether Sprint waived work-product immunity by its use of work product during the Vonage trial, other than defendant's inclusion of a conclusory statement about work-product waiver in a footnote in their reply brief. Thus, the Magistrate Judge did not address the issue of work-product waiver.
In their initial brief in support of their objections to this Court, defendants did not make any arguments relating specifically to waiver of work-product immunity, nor did it take issue with the Magistrate Judge's refusal to address that objection by Sprint to the document requests. In its response brief to this Court, Sprint observed that, in light of that refusal by the Magistrate Judge, any objection to the production of a document based on the assertion of the work-product immunity would not be affected by any ruling that Sprint had waived the attorney-client privilege. Subsequently, in a footnote in their reply brief, defendants contended that they had argued work-product immunity in their motion to compel and thus had not forfeited any such argument, and that because the theory of implied waiver operates in the same way in both contexts of the attorney-client privilege and work-product immunity, "there is no need for a separate analysis of Defendants' work-product waiver claims."
The Court agrees with Sprint that defendants have waived any challenge to Sprint's work-product objections. The Magistrate Judge explicitly ruled that defendants had not sufficiently raised the work-product issue in their briefs, and if defendants wished to challenge that ruling, they were obliged to make that challenge in their initial objections to this Court. The Court will not consider an argument raised for the first time in a reply brief. See, e.g., U.S. Fire Ins. Co. v. Bunge N. Am., Inc., 2008 WL 3077074, at *9 n.7 (D. Kan. Aug. 4, 2008) (citing Minshall v. McGraw Hill Broadcasting Co., 323 F.3d 1273, 1288 (10th Cir. 2003)). Defendants thus waived any challenge to that ruling by the Magistrate Judge, which therefore still stands. The effect of that ruling is that defendants ...