Disclosure of Concerns Leading to Reissue Application Waives Privilege as to Such Concerns

The court granted defendants' "motion to compel a finding of waiver" of the attorney-client privilege as to plaintiffs' motivation for seeking a reissue patent. During a deposition, plaintiff's in-house counsel "expanded on the statements to the PTO, revealing that because of the issue of the different effective filing dates, there was a specific concern that the mixed subject matter claims were technically anticipated by [plaintiff's] publication of [another application]. [He] further indicated that communications between himself and other in-house and outside counsel led to this concern, or at least were the means by which the concern was expressed. The Court is persuaded that these conversations constituted confidential attorney-client communications concerning the reissue application, and that the deposition statements about the role of the PCT application therefore constitute a waiver of privilege."

Monsanto Company v. E.I. Dupont De Nemours and Company, et. al., 4-09-cv-00686 (MOED May 10, 2011, Order) (Webber, J.)