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Sprint Communications Co., L.P. v. Comcast Cable Communications, LLC

United States District Court, D. Kansas

February 23, 2017



          James P. O'Hara U.S. Magistrate Judge

         Sprint Communications Company, L.P., brings patent-infringement claims against Comcast Cable Communications, LLC, Comcast IP Phone, LLC, and Comcast Phone of Kansas, LLC (collectively, “Comcast”). Comcast has asserted, among other things, the defense of implied license by equitable estoppel. In support of this defense, Comcast alleges Sprint misled it into believing Sprint would not sue to enforce Sprint's patents, and that Comcast did not become aware that litigation might be imminent until January 2010. Sprint has filed a motion to compel Comcast to produce to the court for in camera review documents Sprint contends will refute Comcast's equitable position (ECF No. 1082). Because the court finds Comcast waived privilege over documents referencing Comcast's patent-acquisition strategy and over documents referencing Comcast's anticipated litigation by Sprint, the motion is granted, at least to the extent that it seeks the production of documents. The court finds no reason or basis, however, to review such documents in camera before they are produced.

         I. Background

         The instant motion stems from Comcast's recent production of 28 documents in a related patent-infringement case pending between the parties in the Eastern District of Pennsylvania.[1] In a January 9, 2017 pretrial order, the Pennsylvania court ruled that should Comcast present trial testimony regarding its patent-acquisition policy, it must do so through a non-lawyer who first must sit for a deposition and produce all documents related to such a policy. Comcast designated Jim Finnegan, its Vice President of Strategic Intellectual Property, as its witness in this regard.

         Finnegan searched his documents as required by the pretrial order and identified some documents Comcast had not previously produced or logged as privileged. In addition, Comcast's Pennsylvania counsel determined other documents had been incorrectly designated as privileged and should be produced. On January 18, 2017, Comcast produced 28 documents, a few related to Comcast's patent-acquisition strategy and the remainder related to Comcast's June 2010 acquisition of a patent from Nokia Mobile Phones, Ltd.[2]

         Sprint's motion notes one document in particular: a document dated November 5, 2007, which, under the heading “IP Efforts: Necessary Resources, ” includes the words: “Licensing and Litigation • Prep for Verizon, Sprint, AT&T.”[3] The document appears to have been prepared by Finnegan and presented to Comcast's General Counsel and Comcast's Chief Technology Officer.

         On January 20, 2017, Sprint deposed Finnegan in the Pennsylvania case. Finnegan answered questions regarding Comcast's patent-acquisition strategy. Specifically, Finnegan testified that “Comcast has bought patents to counter-assert in litigations, ” and that Comcast purchased patents from Nokia “as part of [Comcast's] general patent-acquisition strategy which was to acquire high-quality, litigation-grade patents primarily defensively.”[4] The questions that evoked this testimony had been asked during Finnegan's December 12, 2014 deposition in this case, and at that time Finnegan declined to answer (upon advice of Comcast counsel) on attorney-client privilege grounds; Finnegan said he could not explain Comcast's reasons for purchasing patents without revealing communications with counsel.

         Following the recent additional discovery in the Pennsylvania case, counsel for the parties in this case met and conferred, and participated in two status conferences with the undersigned U.S. Magistrate Judge, James P. O'Hara, about what additional documents, if any, Comcast should produce in this case. At Sprint's request, Comcast re-reviewed 118 documents listed on its privilege logs that Sprint had identified as possibly subject to production “under Comcast's new [privilege] position” on the subjects of “(1) Comcast's acquisition of patents from 2007-2010 for purposes of enforcing them against Sprint, and (2) Comcast's preparation for litigation with Sprint.”[5] In addition, Comcast (1) confirmed all documents in Finnegan's possession relating to Comcast's patent-acquisition strategy had been collected, (2) conducted a search of Comcast's in-house patent counsel's documents concerning Comcast's patent-acquisition strategy and acquisition of patents from HP and Nokia, (3) reviewed previously collected documents to identify any that are potentially related to Comcast's patent-acquisition strategy, and (4) reviewed all documents that had not previously been produced in full from the 2007-2010 time period (or that lacked a date designation) that were collected from the files of Finnegan, or sent to or from Finnegan. As a result of these steps, on February 6, 2017, Comcast produced 15 additional documents (some with portions redacted), [6] a redaction log with five entries, [7] and a privilege log with nine entries.[8]

         II. Analysis

         Sprint moves the court to order Comcast to produce for in camera review all documents (1) that mention Sprint and concern “Comcast's patent acquisition[s], ” and (2) that reflect “the timing and nature of any Comcast employee's belief that Comcast was preparing for or otherwise anticipated litigation with Sprint.”[9] Sprint contends the production it now requests-months after discovery has closed-is justified by the fact that Comcast did not previously disclose the existence of such documents and/or did assert privilege over the information they contained. Sprint argues any privilege protection that previously may have insulated information on these two topics was waived when Comcast produced the 28 documents on January 18, 2017, and/or when Comcast permitted Finnegan to testify on the topics on January 20, 2017.[10] Sprint also supports its motion by noting that less than half of the 28 documents produced in January were identified on Comcast's earlier privilege logs. A party waives the attorney-client privilege if it discloses the substance of an otherwise-privileged communication.[11] Comcast makes no serious argument that it did not waive privilege by its January 2017 production or by allowing Finnegan's recent testimony. Comcast does note that the judge in the Pennsylvania case affirmatively determined that he need not-and did not-decide the question of waiver, but that fact has no bearing on the waiver question which has now come before this court.[12]

         Although unclear, Comcast's brief could be read to argue that Comcast's recent production did not reveal privileged information that could be waived. To the extent Comcast makes this argument, the court rejects it. As discussed in an earlier order, the attorney-client privilege protects communications, made in confidence, between a client and a professional legal advisor, relating to legal advice sought by the client.[13] Sprint asserts, “the 28 new documents clearly reflect privileged information. Indeed, many state on their face that they are work-product-protected and privileged. All of them deal with preparation for suit with various companies and Comcast's patent acquisition policies-issues that are indisputably privileged.”[14] Comcast does not attempt to refute this statement, leading the court to accept it as uncontroverted. Indeed, the November 5, 2007 document presented by Finnegan to Comcast's General Counsel and Chief Technology Officer revealed the substance of attorney-client communications, specifically, that in 2007 Comcast presented information to its attorney about preparing for potential litigation by Sprint.[15]

         Sprint also argues Finnegan's recent deposition testimony concerning Comcast's due diligence in acquiring defensive patents revealed attorney-client communications. Comcast (again) does not address this assertion in its response brief. The court agrees with Sprint. As noted above, Finnegan previously had declined to answer questions on this topic on the ground that explaining Comcast's reasons for purchasing patents would necessarily reveal privileged communications with counsel. Thus, when Finnegan later discussed Comcast's patent-acquisition strategy, he necessarily must have revealed privileged communications with counsel.

         The court has little trouble concluding Comcast's recent disclosure of information in the Pennsylvania case waived the attorney-client privilege. Perhaps the more significant question, however, is the scope of the waiver. Sprint asserts the disclosures waive privilege for all “information concerning the same subject matter.”[16] Specifically, Sprint argues Comcast must produce all documents it possesses that (1) mention Sprint and concern “Comcast's patent acquisition[s], ” or (2) reflect “the timing and nature of any Comcast employee's belief that Comcast was preparing for or otherwise anticipated litigation with Sprint.”[17]

         The presiding U.S. District Judge, John W. Lungstrum, addressed the applicable standards for subject-matter waiver in ...

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