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