District Court Grants Motion To Compel Documents That Were Clawed Back Finding That Defendant Waived Work Product Protection By Voluntarily Producing The Documents

• Jurisdiction: United States,Federal
• Law Firm: Jeffer Mangels Butler & Mitchell LLP
• Subject Matter: Intellectual Property, Patent, Trade Secrets
• Author: Mr Stanley Gibson
• Published date: 03 October 2023

The crux of this case revolves around a dispute over patent infringement, trade secret misappropriation, and unfair competition filed by Nielsen (or Plaintiff) against Hyphametrics (or Defendant). At the heart of the issue in this motion were specific documents - experimental reports. These reports were initially produced by Hyphametrics to Nielsen but were later retracted under the assertion of work product protection.

The Memorandum Order issued by the court dissected the arguments presented by both parties and presented the court's rationale for its ruling on Nielsen's motion to compel Hyphametrics to produce the disputed documents. The court began by addressing Hyphametrics' intentional production of certain reports to Nielsen. Despite Hyphametrics' claim that the documents were mistakenly believed to be unprotected by the work product doctrine, the court noted that the intentional release of these documents nullified any work product protection. The court emphasized that the mistaken belief in their protection status cannot serve as a valid basis for claiming inadvertent production.

The court explained that Defendant's prior counsel ("prior counsel") produced three reports at issue here to Plaintiff. "When prior counsel did so, it knew all of the facts one would need to know to understand that, under the law, those documents were protected by the work product doctrine. A document is protected by the work product doctrine if it is prepared in anticipation of litigation or trial by a party or its representative. Fed. R. Civ. P. 26(b)(3)(A). It is undisputed here that the reports fit this bill, and prior counsel knew this when they intentionally produced the reports." As a result, the court concluded that Defendant therefore waived any work product protection for the reports by intentionally producing them here.

The court also rejected Defendant's argument to the contrary, i.e., that no waiver occurred "because prior counsel mistakenly thought that the reports were not work product protected'in that prior counsel mistakenly thought that in order for the reports to be so protected, an attorney for Defendant must have requested that the...