United States District Court, D. Kansas
JAMES P. O'HARA, Magistrate Judge.
In these consolidated cases, Sprint Communications Company, L.P. has brought 11-2684-JWL-749.wpd patent-infringement claims against various defendants who provide Voice over Internet Protocol ("VoIP") services to local cable companies. Sprint alleges that defendants' VoIP technology infringes twelve of its patents. In this motion to compel, Sprint seeks all documents and testimony bearing on the reasonableness of a claim by Time Warner Cable, Inc. ("TWC") that contracts with Sprint permitted TWC to "go it alone" free of patent suit, and all documents and testimony bearing on whether TWC believed Sprint's patents could successfully be asserted against TWC (ECF doc. 749). For the reasons stated below, Sprint's motion is denied.
TWC has claimed the requested documents are protected by attorney-client privilege. In its motion, Sprint argues that TWC waived the privilege by allegedly putting their attorneys' advice at issue through equitable estoppel defenses and the requisite element of reliance.
Sprint previously filed a motion to compel TWC to produce the same documents at issue in the present motion. The court denied that motion without prejudice because Sprint failed to comply with the letter and spirit of the meet-and-confer requirements of Fed.R.Civ.P. 37(a)(1) and D. Kan. Rule 37.2. However, the court noted:
Should the parties be unable to resolve the disputes raised in Sprint's motion after an honest, good-faith effort, and should Sprint re-file the motion (the timeliness of which the court will not decide today), Sprint should address why its arguments are not precluded by the court's April 16, 2015 order in Sprint v. Comcast, Case No. 11-2684 (ECF doc. 698).
The court's April 16, 2015 order denied Sprint's motion to compel against Comcast Cable Communications, LLC, Comcast IP Phone, LLC, and Comcast Phone of Kansas, LLC, (together, "Comcast"). In that motion, Sprint set forth an argument against Comcast that is nearly identical to the one it asserts here and in its prior motion. Specifically, Sprint sought documents that Comcast claimed were privileged, arguing that Comcast waived the privilege by allegedly putting their attorneys' advice at issue through their equitable estoppel defense and reliance. The court denied Sprint's motion, rejecting Sprint's underlying contention that pleading a claim or defense that has "reasonableness" or "reliance" as a necessary element places the advice of counsel "at issue." Although the court found Comcast did not place its counsel's opinions at issue merely by asserting reasonable reliance on Sprint's conduct, the court warned Comcast that if it affirmatively and voluntarily injected the reliance-on-counsel issue at trial or in subsequent briefing to the court that the court would revisit the issue.
In this renewed motion to compel, Sprint claims the parties engaged in additional meet-and-confer efforts but are at an impasse. Sprint asks the court to find that TWC's defenses resulted in an at-issue waiver, and order TWC to produce the documents at issue. Alternatively, Sprint argues that even if the at-issue waiver has not occurred, TWC should still be required to produce the documents because TWC failed to substantiate its privilege claims with a proper privilege log. Sprint also asks for an in camera review of the documents, or an order barring TWC from putting on evidence of reliance, as it should not be allowed to argue an equitable claim while allegedly suppressing harmful facts it put at issue.
Timeliness of Sprint's Motion
In the order denying Sprint's initial motion to compel for failure to confer, the court noted that it would address whether a future motion would be timely at the time of re-filing. Sprint claims that its motion is timely because its arguments are renewed by TWC's continued tardy privilege logs and because of a strong judicial preference to resolve issues on the merits. Sprint points out that its original motion was timely, and that this court invited it to re-file its motion after additional meet and confer efforts. Sprint does recognize, however, that the court stated that it would examine the timeliness of any subsequent motion once filed. Sprint argues that its motion is timely because TWC did not produce the privilege log of its head patent counsel - Andy Block - until March 27, 2015, after the close of discovery and on the due date for Sprint's reply brief on its original motion to compel. Sprint argues that this court thus must resolve the arguments as to the log at issue, and that there is no prejudice to TWC if the court extends that decision to entries in previous logs.
TWC argues Sprint's motion is untimely. TWC claims Sprint has been aware of the bases for TWC's equitable defenses since at least March 29, 2014 and that it has been left in limbo for several months due to Sprint's delay.
Although a close call, the court tends to agree that the motion is untimely. It was Sprint's own failure to comply with the meet-and-confer requirements that caused its initial motion to be dismissed. However, due to the complex nature of this case and the substantial briefing involved, this court will nevertheless address the merits of Sprint's motion.
Sprint's Motion is Precluded By This Court's Prior Comcast Ruling
In the order denying Sprint's previous motion to compel against TWC, the court ordered Sprint to address why its arguments are not precluded by the April 16, 2015 order in Sprint v. Comcast, Case No. 11-2684 (ECF doc. 698). By way of background, on the same day Sprint moved to compel against TWC, Sprint also brought a substantively identical motion to compel against Comcast. Similar to Sprint's argument with respect to TWC in the motion before this court, Sprint argued Comcast waived privilege protection as to certain documents by putting its communications with counsel "at issue" and sought in camera review of the documents.
As noted earlier, the court denied Sprint's motion against Comcast, and held Comcast had not waived privilege. The court rejected Sprint's argument that Comcast put its counsel's advice at issue by pleading a necessary element of its estoppel defense. Although Comcast's state of mind, beliefs, and knowledge" were deemed relevant to Comcast's affirmative defenses, it simply was not inextricably merged with the elements of Sprint's case and Comcast's affirmative defense. As such, the court held Comcast could establish the element of reasonable reliance with evidence other than its counsel advice and further noted that Comcast had affirmatively stated it would not ...