July 2012 Vol. 9, No.2


Attorney-Client Privilege


Gen-Probe Incorporated v. Becton, Dickinson and Company (S.D.Cal. 2012) 2012 WL 1155709


In a patent dispute, did the attorney-client privilege cover communications between plaintiff-corporation’s outside patent counsel and an independent contractor-mechanical engineer who had been a member of a project team of a corporation with whom plaintiff-corporation had contracted where the communications concerned outside counsel’s investigation of the patentability of various aspects of the project?


Yes.  In United States v. Graf (9th Cir. 2010) 610 F.3d 1148, the Ninth Circuit held that a corporation’s attorney-client privilege covers communications with an outside consultant who acts as a “functional employee” of the corporation.  Under that rule, it was undisputed that the communications between plaintiff-corporation’s outside counsel and employees of the consulting corporation were covered by plaintiff-corporation’s attorney-client privilege.  The Court here held that the Graf rule extended to communications with independent contractors of an outside consulting corporation who acted as functional employees of the consulting corporation. 

A contrary ruling, observed the Court, would require plaintiff-corporation first to ask consulting corporation which of the project team members were “true employees” before communicating with any project team members.  (2012 WL 1155709, *4.)  Such an undue narrowing of the scope of those covered under a corporation’s attorney-client privilege would “lead to attorneys not being able to confer confidentially with nonemployees who, due to their relationship to the client, possess the very sort of information that the privilege envisions flowing most freely.”  (Ibid., internal quotation marks and citation omitted.)  The independent contractor-mechanical engineer had information related to a patentability investigation performed by plaintiff-corporation’s outside patent counsel.  “This information is precisely the type covered by the attorney-client privilege.”  (Ibid.)   


In a later ruling in the same case, Gen-Probe Incorporated v. Becton, Dickinson and Company (S.D. Cal. 2012) 2012 WL 1944834, the Court ruled that communications between outside counsel and the project team member reflecting counsel’s unsuccessful attempt to convince the team member to assign his rights in the invention sought to be patented were not covered by the attorney–client privilege.  Such communications may have been in connection with counsel’s investigation of the patentability of an aspect of the project, but they were not in aid of the investigation.  In fact, the team member had felt compelled to hire his own lawyer to review the plaintiff-corporation’s request for the assignment of the team member’s rights, further supporting the conclusion that the communications were not for the purpose of providing plaintiff-corporation with information about the project on which the team member had worked.  (2012 WL 1944834, *4.)

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