Wednesday, March 21, 2018

Internal Invention Disclosure Document Protected by Attorney-Client Privilege

The court denied plaintiff's motion to compel the production of a clawed back deposition exhibit and found the document was privileged. "⁠[Senior in-house counsel] confirmed that [the exhibit] is consistent with the format required for submission of an invention disclosure to [defendant's Patent Review Committee] through the Portal. . . . Although [the exhibit] does not expressly state that it is a request for legal advice, the request is implied. . . . The fact that attorneys on the PRC required engineers or technical experts to assist them in evaluating the invention for purposes of determining whether to pursue a patent does not disqualify [the exhibit] from being covered by the attorney client privilege. . . . [Counsel's] declaration describes PRC’s function as making 'individual patenting decisions on specific intentions that have been submitted to the PRC.' The PRC attorneys 'assess whether the invention was novel and patentable.'"

The California Institute of Technology v. Broadcom Limited et al, 2-16-cv-03714 (CACD March 19, 2018, Order) (Rosenberg, MJ)

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