
    JACK WINTER, INC., a corporation, Plaintiff, v. KORATRON COMPANY, INC., a corporation, Defendant. KORATRON COMPANY, INC., a corporation, Counterclaimant, v. JACK WINTER, INC., a corporation, Counterclaim Defendant, And All Cases Consolidated for Pretrial Purposes
    Civ. A. Nos. 49392, 47273, 49671, 50063, 50854, 51301, 51653, 51691, 49558, 49913, 50827, 51281, 51650, 51654, C-701252 and C-701443.
    United States District Court, N. D. California.
    Nov. 22, 1971.
    See also D.C., 329 F.Supp. 211.
    
      Heller, Ehrman, White & McAuliffe by M. Laurence Popofsky, San Francisco, Cal., for Levi Strauss & Co.
    Phelps, Hall & Keller by Glen E. Keller, Jr., Denver, Colo., Watson, Leavenworth, Kelton & Taggart by Thomas Y. Heyman, New York City, for Bayly Manufacturing Co. and Henry I. Siegel Co., Inc.
    Hunton, Williams, Gay, Powell & Gibson by Lewis T. Booker, Richmond, Va., for Dan River Mills, Inc.
    Curtis, Morris & Safford by Robert D. Spille, New York City, for Deering Milliken, Inc.
    Brobeck, Phleger & Harrison by Robert S. Daggett, San Francisco, Cal., Lyon & Lyon by James W. Geriak, Los Angeles, Cal., for Koratron Co., Inc. and Koraeorp Industries, Inc.
    Weltner, Kidd & Crumbley by Charles M. Kidd, Atlanta, Ga., for Oxford Industries, Inc.
   MEMORANDUM OPINION RE PRIVILEGED DOCUMENTS

WILLIAM E. DOYLE, District Judge.

In this multidistrict litigation there has arisen a problem late in the proceedings having to do with numerous documents in the files of Koratron. In the course of discovery proceedings, just pri- or to the final closing, it appeared that these documents existed. We determined that there should be in camera inspection of these files and we have proceeded to do so.

A total of 415 documents were delivered, and an effort has been made to list and classify them and, finally, to carefully examine each and every one so as to avoid any group or mass ruling. Following the initial inspection, tentative distinctions were made and the documents were listed, described and submitted to counsel. Following this, briefs were filed by both sides addressed to these tentative drafts. Finally, oral arguments were carried out and we now submit our final rulings.

The effort has been to protect fully the confidentiality which a client would ordinarily anticipate in his dealings with his lawyer. At the same time, the relationships here are those of patentee and licensee and the issues involved range from patent validity and misuse to fraud on the Patent Office and alleged antitrust violations. Thus, rights of discovery have had to have been carefully weighed and considered.

One other complicating factor has been that during the period in question Koratron’s counsel exercised a broad authority to transact business matters surrounding and relating to the obtaining of patents not only in the United States but also in foreign countries. The consequence of this was that much routine business flowed through the hands of the attorneys and this was seemingly carried out without any consideration of the fact that it was confidential. Nevertheless, in all of those instances in which the documents disclose legal analysis and conclusions on the part of the lawyers the privilege has been found to obtain whether the memorandum or letter was addressed to the client or to correspondent counsel or to patent agents in Great Britain. In numerous instances our tentative rulings have been changed and we have reclassified documents as confidential which had been tentatively classified as non-confidential.

The majority of the documents here classified as privileged are generally client requests for legal advice and attorney responses thereto. The remainder of the privileged documents involve either client communications intended to keep the attorney apprised of continuing business developments, with an implied request for legal advice based thereon, or self-initiated attorney communications intended to keep the client posted on legal developments and implications, including implications of client activity noticed by the attorney but with regard to which no written request for advice from the client has been found. This approach is agreeable to our earlier expressions in Winter, Inc. v. Koratron Co., 50 F.R.D. 225 (1970). and cases there cited.

A number of documents have been ruled to fall outside the boundaries of the attorney-client privilege. This has been done only after most careful consideration of the actual contents of each document. The determinations have been particularly difficult in instances of communications primarily factual in nature. Generally, when factual information was communicated so that the attorney could disclose it in a patent or trademark application, the communication was viewed as non-privileged. On the other hand, documents containing considerable technical factual information but which were nonetheless primarily concerned with giving legal guidance to the client were classified as privileged. In other words, doubts have been resolved in favor of the privilege.

As is not infrequently the case in patent matters, the problem of classification here was particularly troublesome as the attorneys for Koratron performed virtually every task incident to filing for and obtaining a patent or trademark registration. They were so closely associated with the activities of Koratron that picking out from the mass of documents presented to the court those which involved non-legal transactions not soliciting or offering legal advice, and the separating of these from documents which did involve the exercise of the attorney's art, became at times an arduous and complex exercise. Yet we have sought to not lose sight of the importance of the distinction, for it is important that the attorney-client privilege not be downgraded in the interests of expedient results. At the same time, corporate dealings are not made confidential merely by funnelling them routinely through an attorney.

Thus, we have taken the view that many of the tasks performed for Koratron by White, such as determining the requirements for filing, the expense of filing, writing checks to cover filings and obtaining photostatic copies of certain current registrations, did not under any stretch of the imagination involve the attorney’s art. But the court is also aware that in view of the current state of the law, especially in antitrust as it affects patent and trademark claims, the attorney’s counsel is vital to the conduct of business. The client therefore does have a right to expect that the confidentiality of interchange designed to promote the exercise of this counsel will be preserved. See Chore-Time Equipment, Inc. v. Big Dutchman, Inc., 255 F.Supp. 1020, 1021 (W.D.Mich.1966); Baird v. Koerner, 279 F.2d 623, 629 (9th Cir. 1960).

Documents classified as non-privileged in the present case consist principally of the following:

(1) Client authorizations to file applications and take other steps necessary to obtain registration;

(2) Papers submitted to the Patent Office;

(3) Compendiums of filing fees and requirements in the United States and foreign countries for various types of applications ;

(4) Résumés of applications filed and registrations obtained or rejected (including dates and file or registration numbers);

(5) Technical information communicated to the attorney but not calling for a legal opinion or interpretation and meant primarily for aid in completing patent applications;

(6) Business advice such as that related to product marketing; and

(7) Communications whose confidentiality Koratron has waived.

On the other hand, documents written by or obtained from third parties, even though attached to communications seeking or giving legal advice, have been separated and classified as non-privileged. See Giordani v. Hoffman, 278 F.Supp. 886 (E.D.Pa.1968).

Matters that could be classed as attorney work product, such as preliminary drafts of legal documents, license agreements and/or assignments, have been classified as privileged.

Following oral argument and the submission of memoranda of law on the subject of privilege by both sides, the court has, as noted above, modified a number of the tentative rulings. In all instances, the changes involved transferring documents previously ruled non-privileged to the category of privileged. Arguments were advanced with respect to a number of specific documents, and the court paid particular attention to these in review, but the review has not been limited to documents specifically advanced by counsel; thus, there are several which were not mentioned in argument which have been re-classified. Not all documents argued were considered to be proved privileged by the argument, however, and those argued but not mentioned below have been left in the non-privileged category under the criteria mentioned above.

From “Schedule A Non-Privileged” the following documents have been removed and re-classified as privileged:

Number
Mostly factual information but legal advice given thereon. A—1, 3
Requests for legal advice. A—9, 12, 13
Direct result of attorney-client Interaction. A—21
Irrelevant to present proceedings and having directly to do with relations between attorney and former client. A—46, 47, 48
The documents relating to the "Confidential Disclosure Agreement." Upon consideration, the court feels that these documents are not sufficiently closely related to the Dan River Agreement to come under that waiver. However, If the third party complaint comes to trial, the Issue of Independent waiver should be re-examined; the relation between Koratron and Dan River may Indicate a waiver as between those parties when none exists between Koratron and the adversaries. A-64, 65, 66

Before discussing individual documents in the British proceedings, it seems appropriate to point out that communications between White, the Chicago patent firm, and the British patent agent have all been treated as though they were between attorney and client, and judgments have been made individually on the merits of each document. There would seem to be no real basis for any blanket treatment of these documents either way; just as with any document the privilege should be extended to them if but only if they meet, each individually, the required criteria.

Number
While this document does contain a great deal of technical Information, it also contains legal advice, and the presentation of the technical Information Is clearly conditioned by the attorney's thought processes as formed by the legal problem facing Koratron and Its counsel. It should be privileged. A—98
This document should be regarded (#100) as privileged for the reasons outlined above for #A—98; #A-101 should be privileged because It Is quite dependent upon #A-100 and Is Interrelated therewith in such a manner as to make the two essentially expressive of one legal expression as a unit. A-100, 101
Again, the technical presentation is conditioned by the need to respond to a legal problem. A-108
Same as A-108. A—109
These documents reflect the winding-up of the British proceedings, and seem to contain some legal opinions as to the effect of some of the actions taken In the course thereof. They should be protected. A—114, 115, 116

As was pointed out in oral argument in November, counsel for Koratron identified the following documents incorrectly:

Number A-39 by Koratron’s reckoning was Number 11-55 by the court’s identification; it is privileged.
Number A-44 by Koratron’s reckoning is Number 11-65 by the court’s identification; it is privileged.
Number A-40 by Koratron’s reckoning is Number A-39 by the court’s identification; the arguments for privilege for this document are rejected, for the reason shown in the schedule.

Admittedly the judgments set forth above are imperfect, but they represent this court’s best effort under all of the circumstances. The documents will be held intact until further notice. Counsel are requested to recommend a method of delivery. When we hear from liaison counsel we will forward them in accordance with counsel’s suggestions. 
      
      . Cf. Georgia-Pacific Plywood Co. v. United States Ply. Corp., 18 F.R.D. 463, 464 (S.D.N.Y.1956); Underwater Storage, Inc. v. United States Rubber Co., 314 F.Supp. 546 (D.C.D.C.1970).
     