Non-Lawyer Communications Between Patent Buyer and Seller Concerning Strength and Enforceability of Patents Protected by Common Interest Doctrine

The court denied defendant's motion to compel the production of communications between plaintiff and the prior owner of the patents-in-suit that plaintiffs withheld as privileged and rejected defendant's interpretation of the common interest doctrine. "[A]s long as the communications between buyer and seller concern the strength and enforceability of the patents, they are primarily for a legal purpose and are protected under the common-interest doctrine. . . . Many of the communications . . . are between non-attorneys. [Defendant] . . . argues that the common-interest doctrine only applies to communications between attorneys who are sharing information, while acknowledging, however, that 'there is a split in authority' on this point. As a fallback, [defendant] argues that even where clients with a common legal interest are discussing privileged advice among themselves, the discussion must be directly and explicitly 'at the direction of counsel' in order to be privileged. [Defendant] disregards the realities of communications between attorneys and clients and between non-lawyers who share a common legal interest. . . . [T]he proposed rule is simply unworkable in a case like the present one, where multiple attorneys and executives are working together, with the help of assistants who gather or communicate information for them."

Crane Security Technologies, Inc. et al v. Rolling Optics AB, 1-14-cv-12428 (MAD February 3, 2017, Order) (Kelley, MJ)