The opinion of the court was delivered by: Arpert, U.S.M.J.
MEMORANDUM OPINION AND ORDER
This matter comes before the Court on a Motion by Plaintiff V. Mane Fils, S.A. ("Plaintiff" or "Mane") to compel production of documents that it claims have become discoverable as a result of IFF's assertion of "advice of counsel" as a defense [dkt. entry no. 100]. Defendant International Flavors and Fragrances, Inc. ("Defendant" or "IFF"), opposed the Motion. The Court heard oral argument on May 18, 2009. For the reasons stated herein, Plaintiff's Motion is denied.
II. BACKGROUND AND PROCEDURAL HISTORY
This litigation arises from an alleged patent infringement involving U.S. Patent Nos. 5,725,865 and 5,843,466 ("Mane's patents") relating to the coolant composition monomenthyl succinate ("MMS"), which is used as an additive in foods, beverages and other products. On May 18, 2006 Mane filed this lawsuit alleging that IFF had willfully infringed Mane's patents. The instant Motion specifically addresses whether IFF can use privilege or work product claims to avoid production of internal documents (not involving outside trial counsel) relating to IFF's alleged ongoing infringement now that it has alleged advice of counsel as a defense.
Beginning in approximately 2000, IFF is alleged to have begun selling products that infringe Mane's patents. (Pl.'s Br. at 2.) Mane contends that despite IFF's claim that it had no "commercial interests" in MMS, IFF had been secretly marketing and selling its own infringing MMS pursuant to IFF's in-house counsel Joseph Leightner's instructions. Id. at 2-3. Mane further contends that to attract third parties to purchase IFF's allegedly infringing products, IFF disclosed opinion letters authored by outside counsel that questioned the validity of Mane's patents. Id. at 3. For the better part of the fact discovery period in this case, the majority of these documents have been withheld or redacted as privileged by IFF, thereby resulting in substantial motion practice. Id. at 4-5.
In November 2007, Mane moved to compel the production of all responsive communications and documents withheld as privileged that related to Mane's patents and IFF's pre-suit opinions of counsel based upon IFF's voluntary disclosure of its counsel's opinion letters to potential customers. See [dkt. entry. no. 24.] On March 3, 2008, the Court concluded that regardless of the fact that IFF had yet to determine whether to assert an advice of counsel defense, IFF's disclosures constituted a subject matter waiver of any privilege because attorney-client communications cannot be used as both a "sword and a shield." Id. at 5. On September 18, 2008, the Court issued a letter reiterating its March 3, 2008 determination, specifically stating that "there is no question that the waiver found by the Court in its March 3, 2008 Opinion cannot be selective but constitutes a full subject matter waiver requiring production of documents relating to not only whether the patents are valid but whether they are enforceable to being infringed." See Sept. 18, 2009 Letter from Judge Hughes to Counsel. On October 23, 2008, the Court entered an Order further affirming the March 3, 2008 decision, specifically stating that "IFF shall produce all documents previously ordered by the March 3, 3008 Memorandum Opinion and Order." See [dkt. entry no. 70.]
On January 8, 2009, IFF produced 235 previously withheld documents and announced that it intended to assert advice of counsel as a defense in this litigation. (Pl.'s Br. at 7.) In response, Mane objected to IFF's late assertion of the defense and insisted that IFF complete the production of unredacted copies of all the pre-suit documents still being withheld that are required by the defense. Id. On February 18, 2009, the Court conducted a teleconference, after which Judge Hughes set a deadline of April 24, 2009 for Mane to file a motion to compel any remaining discovery not voluntarily produced by IFF. Id. at 7-8. On March 4, 2009, Judge Bongiovanni entered an Order stipulating that "[t]he parties are not required to identify on a privilege log or produce responsive documents created after filing of the Complaint ([on] May 18, 2006) that are subject to claims of attorney-client privilege and/or work product protection." See id. at 8-9; see also [dkt. entry no. 93.] On April 9, 2009, the parties reached an agreement under which, IFF would be allowed to file an Amended Answer to include an advice of counsel defense in exchange for providing the requisite discovery to Mane. Id. at 9. However, the parties have been unable to reach agreement regarding the production of responsive post-suit documents being withheld that do not involve communications with and work-product of trial counsel. Id. Therefore, on April 24, 2009, Mane filed the instant Motion to compel production of documents it asserts have been made discoverable by IFF's assertion of advice of counsel as a defense.
A. Plaintiff's Arguments in Support of the Motion to Compel
Plaintiff sets forth two arguments in support of its Motion to compel. Specifically, Plaintiff argues that (1) IFF's waiver extends to post-suit documents communicated within IFF, but not to work product and communications of outside trial counsel; and (2) given the role of IFF's in-house counsel, fairness dictates that IFF cannot shield its post-suit in-house communications. Id. at 10, 12.
Plaintiff argues that IFF should not be permitted to shield post-suit documents from discovery after asserting advice of counsel as a defense. The Federal Circuit has stated that "[w]hen an alleged infringer asserts its advice-of-counsel defense regarding willful infringement of a particular patent, it waives its immunity for any document or opinion that embodies or discusses a communication to or from it concerning whether that patent is valid, enforceable, and infringed by the accused." See id. at 10 (quoting In re Echostar Communications Corp., 448 F.3d 1294, 1304 (Fed. Cir. 2006)). The Federal Circuit has further stated that "[t]his broad scope is grounded in principles of fairness and serves to prevent a party from simultaneously using the privilege as both a sword and a shield; that is, it prevents the inequitable result of a party disclosing favorable communications while asserting the privilege as to less favorable ones." See Pl.'s Br. at 11 (quoting In re Seagate Technology, LLC, 497 F.3d 1360, 1372 (Fed. Cir. 2007); Echostar, 448 F.3d at 1303). Upon this backdrop, Mane contends that "any responsive documents not involving work product or advice of outside trial counsel that were communicated to (or within) IFF relating to the subject matter of Mane's patents must be produced given IFF's election to assert advice of counsel as a defense." (Pl.'s Br. at 12.)
Mane argues that after this suit was filed, IFF's in-house counsel, Joseph Leightner, continued overseeing infringing sales, specifically through his involvement in scripting IFF's communications with customers regarding Mane's patents and IFF's MMS products. Id. Mane also argues that "[f]airness dictates that IFF cannot use the lawyer-status of its in-house counsel to shield responsive post-suit documents, when in fact that counsel is an integral member of IFF's sales force who for years has overseen all aspects of IFF's infringing activity, its efforts to hide that infringement, its misrepresentations to customers, and virtually all business decisions related to MMS."
Id. at 13. Mane further argues that the materials sought "are within the purview of a witness and active participant in ongoing infringement and tortious activity committed in IFF's course of business [sic] [and] do not constitute objective ...