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United States District Court for the Eastern District of Pennsylvania
September 16, 2003, Decided ; September 16, 2003, Filed
CIVIL ACTION NO. 02-CV-9023
[*363] MEMORANDUM AND ORDER
September 16, 2003
Plaintiff Joseph Murray brings suit against Defendants Gemplus Corporation, Gemplus International, S.A. (collectively "Gemplus") and Hesta Corporation ("Hesta") for, inter alia, misappropriation of trade secrets and fraud. Plaintiff claims that Gemplus, his former employer, has attempted to patent several of Plaintiff's inventions without naming Plaintiff as an inventor. Gemplus argues that the inventions are its own intellectual property. Presently before the Court is Plaintiff's Motion to Compel 1 the production of evidence as to which Gemplus asserts attorney-client privilege.
[**3] I. BACKGROUND
Plaintiff's Amended Complaint asserts claims against Gemplus and various attorneys, alleging that these Defendants engaged in a common scheme to misappropriate Plaintiff's intellectual property. Although Plaintiff has settled his claim with regard to some of the lawyers whose conduct is at issue in this case, a large portion of Plaintiff's allegations continue to relate to the actions of--and communications between--Gemplus and its attorneys. Consequently, Gemplus has asserted the attorney-client privilege throughout the discovery process as to many documents sought by Plaintiff.
On April 30, 2003, in response to a document request made by Plaintiff, Gemplus produced approximately 415 pages of documents, including at least six internal communications among in-house counsel for Gemplus. 2 These documents relate to the [*364] negotiations between Gemplus and Plaintiff's previous employer, Hesta, regarding an intellectual-property assignment that Gemplus sought to obtain from Hesta for the inventions that are the subject of this lawsuit. These documents show that Gemplus's in-house counsel desired the assignment so that Gemplus would be "'squeeky' clean" with regard [**4] to the ownership of this intellectual property. (Discovery Doc. GP15777.) On May 30, 2003, without objection from Gemplus, Plaintiff introduced the documents and marked them as exhibits in the deposition of one of Gemplus's in-house attorneys. 3 On August 11, 2003, Plaintiff raised the issue of waiver of privilege in a letter to the Court. On August 19, 2003, Gemplus, for the first time, requested that the privileged documents be returned.
Plaintiff asserts that these documents were intentionally disclosed by Gemplus in an attempt to cast Gemplus in a positive light [**5] as being concerned with properly obtaining intellectual property rights to its products. Plaintiff argues that Gemplus has waived its privilege via this intentional disclosure not only with regard to the disclosed documents but also as to all other communications relating to Gemplus's efforts to obtain an intellectual property assignment from Hesta. Gemplus responds that the production of these documents was entirely accidental--a side-effect of outside counsel's pregnancy-related medical leave--and as such, the production cannot constitute a waiver of attorney-client privilege. Accordingly, Gemplus requests that Plaintiff return to Gemplus all copies of privileged documents. In the alternative, Gemplus argues that if a waiver did occur, it is limited to documents created from January to May of 2000.
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217 F.R.D. 362 *; 2003 U.S. Dist. LEXIS 16169 **; 56 Fed. R. Serv. 3d (Callaghan) 856
JOSEPH MURRAY, Plaintiff, v. GEMPLUS INTERNATIONAL, S.A., et al., Defendants.
Prior History: Murray v. Gemplus Int'l, S.A., 2003 U.S. Dist. LEXIS 6876 (E.D. Pa., Apr. 23, 2003)
Disposition: Plaintiff's motion to compel was granted in part and denied in part.
documents, disclosure, attorney-client, communications, waived, privileged document, cases, inadvertent, subject-matter, motion to compel, negotiations, deposition, five-factor, production of evidence, disclosing party, constitutes, argues, courts
Civil Procedure, Federal & State Interrelationships, Choice of Law, General Overview, Discovery, Privileged Communications, Evidence, Privileges, Attorney-Client Privilege, Waiver, Methods of Discovery, Preliminary Considerations, Federal Common Law