Crime-Fraud Exception Precludes Privilege as to Communications Between Litigation and Prosecution Counsel

In connection with defendant's motion for attorneys' fees under 35 U.S.C. § 285 and 28 U.S.C. § 1927, the court granted defendant's motion to compel the production of communications between plaintiff's litigation counsel and plaintiff's prosecution counsel, because the crime-fraud exception deprived plaintiff of any privilege as to the documents. "This court has found, and the Federal Circuit has affirmed, a series of false representations of material fact relating to invention, demonstration, actual reduction to practice, and diligence. . . . [Defendant] has obtained by subpoena from [prosecution counsel] an e-mail exchange between [plaintiff's owner/inventor] and [prosecution counsel] [7 years ago]. The communications clearly reveal [plaintiff's owner's] awareness of false content in a filed declaration and instruct [prosecution counsel] to confer with [litigation counsel] about the matter. This exchange alone warrants the document discovery sought and deprives [plaintiff] of any attorney-client privilege. The fact that [litigation counsel] now state that they were unaware of the [7 year old] communications between [plaintiff's owner] and [prosecution counsel] and contend that [prosecution counsel] did not communicate with them about the false declaration filed with the PTO is not relevant to the question of whether [plaintiff] has an attorney-client privilege. The loss of the privilege depends upon the wrongdoing of the party, not the conduct or knowledge of the lawyers."

Intellect Wireless, Inc. v. HTC Corporation, et al, 1-09-cv-02945 (ILND May 6, 2014, Order) (Hart, J.)