Documents Created in Contemplation of Litigation Are Not Always Protected by the Work-Product Doctrine

Welcome to the latest issue of the Section 337 Update. This newsletter is designed to provide you with practical updates and developments on Section 337 proceedings before the US International Trade Commission.

One of the US International Trade Commission’s (“Commission") Administrative Law Judges (“ALJ”) recently issued an order confirming that a document created by a non-lawyer at the direction of non-lawyers, even if created in contemplation of litigation, is not shielded from discovery under the work-product doctrine. 

In Collaborative System Products and Components (II), Inv. No. 337-TA-728, complainant eInstruction Corporation (“eInstruction”) hired a non-lawyer to review publicly available information and consultant-provided data to identify competitors who were potentially infringing on eInstruction’s patent. As a result of this review, the non-lawyer prepared a document entitled “Collaborative Patent Market Review.” This document was forwarded to eInstruction’s CEO and CFO, who shared the document with two law firms to see if these firms would bring an infringement action on eInstruction’s behalf. In the resulting Section 337 action, respondents Promethean Inc., Promethean Limited, and Promethean Technology Shezhen Ltd. (collectively, “Promethean”) moved to compel eInstruction to produce this document, and eInstruction opposed the motion on the ground that it was protected by the work-product doctrine. 

eInstruction argued that the document was prepared in anticipation of litigation and, in fact, “formed part of the basis on which [the] law firms decided whether to pursue actions to enforce the ‘673 patent and to identify the companies against which such actions would be brought.” Promethean, on the other hand, argued that “the document in question is a memorandum written by a non-lawyer, attached to an email between non-lawyers, that was prepared with the intent to distribute to eInstruction’s board of directors and used to shop around to contingency lawyers the idea of bringing an action for patent infringement.”

ALJ Charneski held that, given the above facts, the work-product doctrine did not apply. He noted that, under eInstruction’s own version of events, the subject document was prepared by non-lawyers at the direction of non-lawyers, with the possible intent of providing it to eInstruction’s board of directors. Furthermore, the ALJ noted that while eInstruction claimed that the document was prepared in anticipation of litigation, it was actually several months after the document was created that it was shown to any law firms. Finally, ALJ Charneski cited Certain Network Interface Cards and Access Points for Use in Direct Sequence Spread Spectrum Wireless Local Area Networks and Products Containing Same, Inv. No. 337-TA-455, for its holding that “the work-product doctrine does not apply to communications between non-attorney employees, who were not acting as agents of the party’s counsel, even though they may have been drafted in anticipation of litigation.” Thus, the ALJ granted Promethean’s motion to compel production, and eInstruction was ordered to produce the subject document no later than three days after the order was issued. The order is available online.

Practice Tip: Parties should ensure that, when investigating potential infringements of their patents, such investigations are conducted under the close supervision and direction of either in-house or outside counsel. Furthermore, any documents prepared as a result of such an investigation should be clearly labeled as “confidential” and “protected by attorney-client/work-product privilege.” By doing so, a party minimizes any chance that such documents may be later discovered in litigation.

Below please find examples of work-product doctrine decisions issued in other Section 337 proceedings:

• Inv. No. 337-TA-455, Certain Network Interface Cards and Access Points for Use in Direct Sequence Spread Spectrum Wireless Local Area Networks and Products Containing Same – The ALJ ordered complainant to produce merger agreements and patent application drafts, finding that the work-product doctrine does not apply to communications between non-attorney employees who are not acting as agents of the party’s counsel, even where the documents are prepared in anticipation of litigation. The ALJ clarified that an internal corporate investigation conducted by a company’s management is not protected by work-product privilege. The ALJ’s order is available online. 
  
  
• Inv. No. 337-TA-578, Certain Mobile Telephone Handsets Wireless Communication Devices, and Components Thereof – After determining that field and laboratory testing was not performed at the direction of counsel, the ALJ ruled that tests were not work product, and thus ordered their production. The ALJ’s order is available online.
  
  
• Inv. No. 337-TA-686, Certain Bulk Welding Wire Containers and Components Thereof and Welding Wire – The presiding ALJ found that the deposition of company’s in-house counsel is protected under work-product privilege as part of a party’s pre-filing investigation. The ALJ’s order is available online.

We will periodically provide you updates on developments relating to Section 337 litigation. If you have any questions or for further information, please feel free to contact Charles Schill at 202.429.8162; Alice Kipel at 202.429.6743; or Steve Barber at 202.429.6430. (Special thanks to Jeanne Cook and Henry Smith for their assistance in preparing this newsletter.)