United States District Court, D. Delaware
CHRISTOPHER J. BURKE UNITED STATES MAGISTRATE JUDGE
these patent infringement actions, Plaintiff Guardant Health,
Inc. ("Guardant") moves to compel (the
"Motion") Defendants Foundation Medicine, Inc.
("FMI") and Personal Genome Diagnostics, Inc.
("PGDx" and collectively with FMI,
"Defendants") to destroy a communication drafted by
Maya Skubatch of Wilson, Sonsini, Goodrich & Rosati,
P.C., counsel for Guardant (the "Skubatch
communication"); the communication was ultimately
transmitted to Guardant's current Chief Executive Officer
("CEO"), Dr. Helmy Eltoukhy, in 2012 while he was
employed by a third party, Illumina, Inc.
("Illumina"). (Civil Action No. 17-1616-LPS-CJB,
D.I. 203; Civil Action No. 17-1623-LPS-CJB, D.I.
For the reasons set forth below, the Court GRANTS
Eltoukhy was employed by Illumina from August 2008 until
January 2013. (D.I. 364 at ¶ 4) Dr. AmirAli Talasaz was
employed by Illumina from March 2009 until June 2012.
(Id. at ¶ 5) During the second half of 2012,
Dr. Eltoukhy and Dr. Talasaz co-founded Guardant.
(See D.I. 238 at ¶ 1) When Dr. Eltoukhy left
Illumina, he became CEO of Guardant. (D.I. 238 at 1; D.I. 353
connection with Guardant's Motion, Ms. Skubatch submitted
a declaration stating that the Skubatch communication is part
of correspondence that she had "with Guardant "
in the summer of 2012, when Guardant had engaged Ms.
Skubatch's law firm to provide legal services and advice.
(D.I. 353, ex. B at ¶ 3) The Skubatch communication,
dated August 8, 2012, includes a set of draft patent claims
with comments and questions directed (at least on their face)
to Dr. Talasaz. (Id., ex. A; id, ex. B at
¶ 4) Ms. Skubatch confirmed that she emailed a version
of the Skubatch communication "to Guardant" on
August 10, 2012, and that she intended the Skubatch
communication to remain in confidence. (Id., ex. B
at ¶¶ 3-4)
response to subpoenas served on Illumina by Defendants in
connection with these actions, Illumina conducted a search
for documents. In doing so, Illumina discovered the Skubatch
communication on Illumina's email system, in Dr.
Eltoukhy's Illumina email files. (D.I. 364 at
¶¶ 7-9) The Skubatch communication was attached to
an email from Dr. Eltoukhy's Illumina email address that
was sent on December 15, 2012; the email cover sheet does not
indicate to whom the communication was sent. (Id. at
¶¶ 8-9; D.I. 362, exs. 5-6)
29, 2019, Illumina produced to Defendants nearly 50, 000
pages of documents, including the Skubatch communication.
(D.I. 353 at 1; D.I. 364 at ¶¶ 7-9) On August 6,
2019, Illumina attempted to claw back the Skubatch
communication pursuant to Section 14 of the Protective Order
entered in these cases. (D.I. 353, ex. C) Guardant joined the
request the next day, asserting that the Skubatch
communication is protected by the attorney-client privilege.
(Id.) Defendants have not complied with
Guardant's claw back request and have not destroyed the
communication. (D.I. 353 at 1)
August 29, 2019, Guardant filed the instant Motion. (D.I.
349) The parties submitted letter briefs and related
materials, (D.I. 353; D.I. 362; D.I. 364; D.I. 366; D.I. 367;
D.I. 369), and the Court heard telephonic argument on the
Motion on September 16, 2019, (D.I. 396; hereinafter,
STANDARD OF REVIEW
United States Court of Appeals for the Third Circuit has held
that in order for the attorney-client privilege to protect a
communication, "it 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." In re Chevron Corp., 650 F.3d 276, 289
(3d Cir. 2011) (internal quotation marks and citations
omitted)). '"Privileged persons' include the
client, the attorney(s), and any of their agents that help
facilitate attorney-client communications or the legal
representation." In re Teleglobe Commc'ns
Corp., 493 F.3d 345, 359 (3d Cir. 2007) (citation
omitted). Because the privilege militates against the general
rule promoting full disclosure of information between parties
to a lawsuit, courts must construe it narrowly.
Westinghouse Elec. Corp. v. Republic of Philippines,
951 F.2d 1414, 1423 (3d Cir. 1991). In line with the narrow
construction that it receives, "[t]he privilege protects
only those disclosures-necessary to obtain informed
legal advice-which might not have been made absent the
privilege." Id. at 1423-24 (emphasis in
original) (internal quotation marks and citation omitted).
party asserting the privilege bears the burden of
establishing the requisite elements. See, e.g., TC Tech.
LLC v. Sprint Corp., No. 16-cv-153-RGA, 2018 WL 6584122,
at *2 (D. Del. Dec. 13, 2018). Generally, a party's
voluntary disclosure to a third party of information
purportedly protected by the attorney-client privilege
destroys the information's confidentiality, thus
obviating the privilege. Westinghouse Elec. Corp.,
951 F.2d at 1424.
the Skubatch communication was found on the servers of
third-party Illumina, within Dr. Eltoukhy's Illumina
email account, the main focus of Defendants' challenge to
Guardant's claim of privilege is whether Guardant has
established that the Skubatch communication was made "in
confidence." (D.I. 362 at 2; Tr. at 6, 20-26, 35) The
Court will first address this challenge, and will then turn
to Defendants' remaining arguments.
Was the Skubatch Communication Made "In
noted above, the attorney-client privilege applies only to
"confidential communication[s][, ]" with such
confidentiality having "both a subjective and objective
component; the communication must be given in confidence, and
the client must reasonably understand it to be so
given." In re Asia Global Crossing, Ltd., 322
B.R. 247, 255 (Bankr. S.D.N.Y. 2005) (emphasis in original).
For her part, Ms. Skubatch has declared that when she made
the communication at issue, she intended that it remain in
confidence. And Dr. Eltoukhy, in a declaration also submitted
by Plaintiff, has stated that he understood the communication
to be confidential and did not intend to disclose it to a
third party. (D.I. 366, ex. 1 at ¶ 3) So the key
question here is whether Dr. Eltoukhy's understanding
that the communication remained confidential is
reasonable, in light of the circumstances at issue
(including the fact that the communication resided on Dr.
Eltoukhy's work computer at Illumina, and ultimately
remained in Illumina's possession for years after Dr.
Eltoukhy left the company).
parties agree that in order to examine a question like
this-i.e., to measure an employee's reasonable
expectation of privacy in his computer files and e-mail-the
Court should consider at least the factors set out In re
Asia Global Crossing Ltd., 322 B.R. 247 (Bankr. S.D.N.Y.
2005) (the "Asia Global factors"). (D.I.
362 at 2; Tr. at 6, 16, 21) The Asia Global factors
are: "(1) does the corporation maintain a policy banning
personal or other objectionable use, (2) does the company
monitor the use of the employee's computer or email, (3)
do third parties have a right of access to the computer or
emails, and (4) did the corporation notify the employee, or
was the employee aware, of the use and monitoring
policies?" In re Asia, 322 B.R. at
257-58. Defendants contend that a balancing of
these factors demonstrates that Dr. Eltoukhy had no
reasonable expectation of privacy in his Illumina computer
and email, and that the Skubatch communication was therefore
one not made "in confidence." (D.I. 362 at 2) The
Court will assess this argument by addressing the Asia
Global factors in turn.
Did Illumina Maintain a Policy During the Relevant Time
Period Banning Personal or Other Objectionable Use of Email
Communications like the Skubatch Communication?
addressing the first Asia Global factor-whether
Illumina maintained a policy during the relevant time period
banning personal or other objectionable use of email
communications like the Skubatch communication-Defendants
point to two Illumina documents.
Defendants cite to a document entitled "Illumina Code of
Conduct[.]" (Id.) This document states that
"[c]ompany assets and information[J"-defined to
include "[information created, accessed, transmitted, or
stored using Company provided technology resources, such as
email messages" should "only be used for legitimate
business purposes of Illumina. (D.I. 362, ex. 1 at 18) The
problem for Defendants is that this document is dated 2016,
but the relevant time period (in which Ms. Skubatch sent the
communication and in which Dr. Eltoukhy received and stored
the communication) is actually many years earlier (2012).
(See Tr. at 7-8 (Plaintiffs counsel arguing that
"[w]e all know that these [Code of Conduct] policies
shift and we all know that they've gotten much stronger
over the last five [to] ten years[, ]" such that an
earlier-such policy may not be identical to a later-such
policy); id. at 27 (FMFs counsel acknowledging that
"we don't know ...