Judge Hall Holds an Answer Waived Privilege by Selectively Pleading Protected Communications

On September 19, 2019, U.S. District Judge LaShann DeArcy Hall denied an appeal by the defendant in a litigation to correct the inventorship of patents of rulings by Magistrate Judges Gary R. Brown and Peggy Kuo that the defendant had waived the attorney-client privilege as to certain disputed communications.

Plaintiff NYU Winthrop Hospital alleges that three patents-in-suit belonging to defendant Microbion should be corrected to identify a former employee of both plaintiff and defendant as a joint inventor.  In its Answer, defendant stated that patent applications originally drafted by the purported inventor were subsequently revised before being filed in the PTO.  Based on that statement, plaintiff moved to compel the production of the draft invention-disclosure forms and related documents withheld by defendant as privileged.  The Magistrate Judges granted the motion, and the defendant appealed that ruling to Judge Hall.

Judge Hall affirmed.  Under the “fairness” doctrine, a party implicitly waives privilege when it asserts a claim that requires examination of protected communications.  By alleging in its Answer that the patent applications initially drafted by the purported inventor were revised prior to being filed, defendant had selectively disclosed the substance of certain protected attorney-client communications, which waived privilege as to its related underlying communications.

The opinion goes on to further affirm rulings by Magistrate Judge Brown ordering the production of other information that had been wrongly withheld on the basis of attorney-client privilege.

NYU Winthrop Hospital v. Microbion Corp., No. 17-CV-6114 (LDH) (PK) (E.D.N.Y. Sept. 19, 2019)