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Lambeth Magnetic Structures, LLC v. Seagate Tech. (US) Holdings, Inc.

United States District Court for the Western District of Pennsylvania

December 19, 2017, Decided; January 18, 2018, Filed

Civil Action No. 16-538; Civil Action No. 16-541

Opinion

MEMORANDUM ORDER

For the reasons stated below, Defendants' Motions to Compel Documents Withheld as Privileged by Plaintiff (Civil Action No. 16-538, Doc. 87; Civil Action No. 16-541, Doc. 98) will be DENIED.

This Order concerns discovery in two consolidated patent infringement cases in which Plaintiff Lambeth Magnetic Structures, LLC ("LMS") alleges, in civil action numbers 16-538 and 16-541 respectively, that Seagate Technology (US) Holdings and Seagate Technology, LLC (collectively, the "Seagate Defendants" or "Seagate"); and Western Digital Corporation, Western Digital Technologies, Inc., Western Digital (Fremont), LLC, Western Digital (Thailand) Company Limited, Western Digital (Malaysia) SDN.BHD and HGST, Inc. (collectively the "Western Digital Defendants" or "Western Digital") infringe Plaintiff's [*3]  patent, United States Patent No. 7,128,988 (the "'988 patent").

On November 14, 2017, after receiving the parties' Position Statements and Responses regarding the instant discovery dispute, the Court ordered briefing on Defendants' requested access to documents withheld as privileged by Plaintiff (Civil Action No. 16-538, Doc. 82; Civil Action No. 16-541, Doc. 91). Pursuant to that Order, Defendants timely filed their respective Motions to Compel with supportive briefing (Civil Action No. 16-538, Docs. 87-89; Civil Action No. 16-541, Docs. 98-101). Plaintiff timely opposed (Civil Action No. 16-538, Docs. 95-96; Civil Action No. 16-541, Docs. 107-108). Defendants' Motions to Compel are now ripe for this Court's consideration.

Summary

Defendants seek access to three categories1 of documents: (1) Dr. David N. Lambeth's ("Lambeth's") communications with his academic colleagues concerning reverse engineering of Defendants' products, (2) LMS's communications with [TEXT REDACTED BY THE COURT], a company hired to perform reverse engineering tests for the purpose of establishing Lambeth's patent infringement case, and (3) LMS's communications with litigation-funding organizations, including LMS's agreement with one of those organizations. [*4]  For each category of documents, Plaintiff has withheld production on the grounds that the documents are subject to attorney-client privilege, the work product privilege or both. Plaintiff contends that these documents were prepared for litigation concerning the '988 patent or were prepared pursuant to communications with attorneys. As to Plaintiff's communications with his colleagues on reverse engineering, Defendants counter that many of these documents are communications between non-attorneys and they were not prepared in anticipation of litigation. As to the [TEXT REDACTED BY THE COURT] testingdocuments, they argue that Plaintiff has waived any claim to privilege by citing them in Plaintiff's infringement contentions and selectively relying on them to show infringement. And, Defendants argue that Plaintiff's communications with litigation funding companies are not privileged due to the lack of a common legal interest between Plaintiff and these firms.

Upon consideration of the parties' arguments, and for the reasons stated below, the Court finds that the materials sought are privileged under the work product doctrine. Because the Court finds that the work product doctrine shields [*5]  these documents from discovery, it need not address the parties' arguments concerning the availability of attorney-client privilege.

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2017 U.S. Dist. LEXIS 215773 *

LAMBETH MAGNETIC STRUCTURES, LLC, Plaintiff, v. SEAGATE TECHNOLOGY (US) HOLDINGS, INC., et al., Defendants.LAMBETH MAGNETIC STRUCTURES, LLC, Plaintiff, v. WESTERN DIGITIAL CORPORATION, et al., Defendants.

Prior History: Lambeth Magnetic Structures, LLC v. Seagate Tech. (US) Holdings, Inc., 2017 U.S. Dist. LEXIS 172186 (W.D. Pa., Oct. 18, 2017)

CORE TERMS

patent, infringement, documents, communications, civil action, waived, work product privilege, disclosure, products, testing, discovery, anticipation of litigation, instant litigation, declarations, consultant, privileged, prepare, consulting agreement, attorney-client, Technology, colleagues, asserting, cases