United States District Court, D. Delaware
before the Court is the motion to compel production of
non-privileged documents filed by Defendants Sprint
Corporation and Sprint Spectrum, L.P. (collectively
"Sprint"). (D.I. 161). I have considered the
parties' briefing. (D.I. 162, 172, 183).
TC Technology LLC ("TC Tech") is jointly owned by
cable companies Time Warner Cable LLC ("TWC") and
Cox Communications, Inc. ("Cox") and has no
separate employees. (D.I. 172 at 2). TC Tech filed this
action against Sprint alleging Infringement of U.S. Patent
No. 5, 815, 488 ("the '488 patent") on March
10, 2016. (D.I. 1). The relevant timeline, however, starts
well before TC Tech filed suit.
December of 2011, Sprint sued TWC and Cox, among others, for
infringement of Voice over Internet Protocol
("VoIP") patents. (D.I. 162 at 2). In early 2012,
TWC and Cox began to consider joint acquisition of the
'488 patent from CableLabs, a consortium of U.S. cable
companies. (D.I. 172 ¶ 10; D.I. 175 ¶ 7). On March
26, 2012, TWC and Cox formed TC Tech to acquire and monetize
the '488 patent. (D.I. 175, ex. A). On March 30, 2012, TC
Tech purchased the '488 patent from CableLabs.
(Id., ex. B). In the spring of 2013, TC Tech, TWC,
and Cox began to hear pitches from outside counsel for
potential litigation asserting the '488 patent. (D.I. 173
¶ 30; D.I. 175 ¶ 26). TWC and Cox met with Latham
& Watkins LLP in October of 2015, and all three entities
formally retained the firm in January of 2016. (D.I. 173
¶ 33; D.I. 175 ¶ 30). In March of 2017, after this
suit was filed, Sprint won a $140 million verdict against
TWC. (D.I. 162 at 3).Sprint settled its suit against Cox later
that year. (Id.).
brought this motion to compel the production of various
pre-2013 communications between TC Tech, TWC, and
The disputed documents can be sorted into two, overlapping
categories-(1) communications including third parties (D.I.
183 at 4 n.l, ex. A), and (2) communications alleged to be
likely to contain relevant business information (D.I. 162,
app. 2). In regard to the first category, the parties dispute
whether TC Tech can claim attorney-client privilege via the
common-interest exception to third-party
disclosures. (D.I. 183, ex. A; D.I. 162 at 8-15; D.I.
183 at 4-10). In regard to the second category, Sprint argues
that, even if the communications are privileged in part, TC
Tech should be required to produce the portions that contain
non-privileged business information. (D.I. 162 at 7-8; D.I.
183 at 1-4).
Common Interest Privilege
attorney-client privilege" is a common-law privilege
that "protects communications between attorneys and
clients from compelled disclosure." In re Teleglobe
Commc'ns Corp., 493 F.3d 345, 359 (3d Cir. 2007). In
order for the privilege to apply, there must be "(1) a
communication (2) made between privileged persons (3) in
confidence (4) for the purpose of obtaining or providing
legal assistance for the client." Id. (quoting
Restatement (Third) of the Law Governing Lawyers § 68
(Am. Law. Inst. 2000)). The party asserting the privilege
bears the burden of establishing the requisite elements.
In re Grand Jury, 705 F.3d 133, 160 (3d Cir. 2012).
A communication is only privileged if made in confidence.
Teleglobe, 493 F.3d at 361. If "persons other
than the client, its attorney, or their agents are present,
the communication is not made in confidence."
Id. Further, "if a client subsequently shares a
privileged communication with a third party, then it is no
longer confidential, and the privilege ceases to protect
common interest doctrine is an exception to the general rule
that voluntary disclosure to a third party of purportedly
privileged information waives the privilege. Acceleration
Bay LLC v. Activision Blizzard, 2018 WL 798731, at *4
(D. Del. Feb. 9, 2018); Leader Techs., Inc. v. Facebook,
Inc., 719 F.Supp.2d 373, 376 (D. Del. 2010). The
privilege protects "all communications shared within a
proper 'community of interest.'"
Teleglobe, 493 F.3d at 364 (citations omitted). The
interests "must be 'identical, not similar, and be
legal, not solely commercial.'" Leader
Techs., 719 F.Supp.2d at 376 (quoting In re Regents
of the Univ. of Cal, 101 F.3d 1386, 1390 (Fed. Cir.
1996)). Additionally, to show that the members of
the community are "allied in a common legal cause,"
the party asserting the privilege bears the burden of showing
"that the disclosures would not have been made but for
the sake of securing, advancing, or supplying legal
representation." In re Regents of the Univ. of
Cal, 101 F.3d at 1389 (quoting In re Grand Jury
Subpoena Duces Tecum, 406 F.Supp. 381, 386
(S.D.N.Y.1975)); see also In re Bevill, Bresler &
Schulman Asset Mgmt. Corp., 805 F.2d 120, 126 (3d Cir.
parties dispute whether the common interest doctrine also
requires communications be made through separate counsel. In
Teleglobe, the Third Circuit provided that "to
be eligible for continued protection, the communication must
be shared with the attorney of the member of the
community of interest," meaning that "separate
attorneys share information (and not the clients
themselves)." 493 F.3d at 364-65. TC Tech argues that
this language is dicta. (D.I. 172 at 11); see TD Bank,
N.A. v. Hill, 2014 WL 12617548, at *3 (D.N.J. Aug. 20,
2014). Although the Third Circuit does state that its common
interest opinion "may seem surplusage," it is not
clear that the opinion is dicta. Teleglobe, 493 F.3d
at 365 n.18 (noting that the district court erroneously found
a community of interest, and that existing caselaw was
confused, making it important to distinguish between the
common interest privilege and the joint-client privilege).
But, regardless, Teleglobe applied state law and is
thus not controlling authority. See Id. at 363-65.
Court has previously found that requiring separate counsel is
"too narrow" of an application of the common
interest doctrine. See Intellectual Ventures I LLC v.
Altera Corp., 2013 WL 12311005, at *5-6 (D. Del. July
25, 2013). "The Third Circuit has stated, '[t]he
presence of a third party will not vitiate the
attorney-client privilege, if the third party is the
attorney's or client's agent or possesses a
commonality of interest with the client.'"
Id. (quoting In re Grand Jury
Investigation, 918 F.2d 374, 386 (3d Cir. 1990)). In
Intellectual Ventures, the third party to whom the
privileged communications was disclosed was a non-attorney
consultant. Id. at *5. The defendants argued that
the common interest doctrine did not apply because, among
other things, "there is no evidence that [the third
party] was represented by an attorney." Id.
This Court rejected that argument and found a
"sufficient common interest" between the plaintiffs
and the third party. Id. at *6.
light of Intellectual Ventures and In re Grand
Jury Investigation, I find that the common interest
doctrine does not strictly require that communications be
between separate attorneys. It is sufficient to show that the
client and third parties shared an interest that is
"identical, not similar," and "legal, not
attorney-client privilege requires that a communication be
made "for the purpose of obtaining or providing legal
assistance for the client." Teleglobe, 493 F.3d
at 359. "Where a lawyer provides non-legal business
advice, the communication is not privileged."
Wachtel v. Health Net, Inc.,482 F.3d 225, 231 (3d
Cir. 2007). Courts have recognized that "business and
legal advice may often be inextricably interwoven."
Hercules, Inc. v. Exxon Corp.,434 F.Supp. 136, 147
(D. Del. 1977). For this reason, courts look to the
documents' primary purpose to determine whether ...