NPE Plaintiff’s Communications With Inventors Prior to Acquiring Patent Rights Not Subject to Common Interest Privilege

The court granted defendant's motion to compel communications between an NPE plaintiff and its counsel that plaintiff disclosed to the named inventors before plaintiff acquired the exclusive option to purchase the patent-in-suit and rejected plaintiff's work product argument. "Before [plaintiff] acquired an exclusive option to purchase the patent, it lacked a common legal interest with the named inventors. At that point, [plaintiff's] interest was in pitching the value of a business partnership to the named inventors and possibly in highlighting concerns about invalidity and title in order to drive down the price. Any discussion of litigation at that stage remained hypothetical and incidental to the arms length evaluation of the prospect of a business relationship. . . . The presence of a non-disclosure agreement covering these disclosures weighs in favor of finding a common legal interest, but it is not conclusive. [Plaintiff] may not extend the scope of work-product immunity by asserting that a common legal interest existed according to a contract where one does not otherwise exist under the law."

Rembrandt Patent Innovations, LLC et al v. Apple, Inc., 3-14-cv-05094 (CAND February 4, 2016, Order) (Alsup, J.)