`ELM 3DS INNOVATIONS, LLC,
`
`
`Plaintiff,
`
`
`
`
`
`
`
`
`C.A. No. 14-1430-LPS-JLH
`
`
`Case 1:14-cv-01430-LPS Document 442 Filed 10/15/21 Page 1 of 13 PageID #: 26599
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG SEMICONDUCTOR, INC.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`and SAMSUNG AUSTIN SEMICONDUCTOR,
`LLC,
`
`
`Defendants.
`
`
`
`MEMORANDUM ORDER
`
`Pending before the Court is Defendants’ request to compel the production of certain
`
`documents listed on Plaintiff’s privilege log. (D.I. 433.) Defendants’ request is GRANTED-IN-
`
`PART and DENIED-IN-PART.
`
`I.
`
`BACKGROUND
`
`On February 5, 2020, the Court referred all discovery disputes in this patent infringement
`
`action to me. (D.I. 246.) Since that time, I have heard (and resolved) numerous discovery disputes.
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`(See, e.g., D.I. 249; D.I. 273; D.I. 320; D.I. 341; D.I. 365; D.I. 420; D.I. 433; D.I. 436.) The current
`
`dispute before the Court pertains to certain documents on Plaintiff’s privilege log, which is 167
`
`pages long and contains over 2,700 documents. (D.I. 433; see also D.I. 420; D.I. 423; D.I. 427;
`
`D.I. 429.) I heard oral argument on July 21, 2021 and provided some guidance on the issues in
`
`dispute. I instructed the parties to meet and confer to see if they could resolve the remaining issues
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`without further Court intervention.
`
`On September 17, 2021, the parties filed a joint status report regarding the issues still in
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`dispute. (D.I. 433.) The parties have significantly narrowed the issues in dispute, but Defendants
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`

`

`Case 1:14-cv-01430-LPS Document 442 Filed 10/15/21 Page 2 of 13 PageID #: 26600
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`still have concerns regarding certain documents on Plaintiff’s privilege log. (Id.) I ordered that
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`the remaining documents in question be produced to the Court for in camera review. (D.I. 434;
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`D.I. 440.) Plaintiff submitted 186 documents to the Court. I have reviewed the documents and
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`find that Plaintiff must produce some of them, as set forth below.
`
`II.
`
`LEGAL STANDARDS
`
`
`
`“In patent cases, regional circuit law governs disputes relating to the applicability of the
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`attorney-client privilege and related privileges/doctrines, to the extent that those issues are not
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`unique to patent law.” INVISTA N. Am. S.à.r.l. v. M&G USA Corp., No. 11-1007-SLR-CJB, 2013
`
`WL 12171721, at *4 n.4 (D. Del. June 25, 2013). Neither side has argued that Federal Circuit law
`
`applies, nor has anyone suggested that the outcome of the current dispute turns on whether Federal
`
`Circuit law or Third Circuit law applies. Both sides cited cases from the Third Circuit (as well as
`
`other jurisdictions). (See, e.g., D.I. 423 at 3; D.I. 427 at 4; D.I. 433.) Accordingly, I will assume
`
`that Third Circuit law applies.
`
`
`
`The attorney-client privilege applies to a communication if it is “(1) a communication (2)
`
`made between privileged persons (3) in confidence (4) for the purpose of obtaining or providing
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`legal assistance for the client.”1 In re Grand Jury, 705 F.3d 133, 160 (3d Cir. 2012) (internal
`
`
`1 In long form: “Under U.S. privilege law, in order to prevail on a claim of attorney-client
`privilege, Defendants must show that each document meets the following the standard:
`The privilege applies only if (1) the asserted holder of the privilege
`is or sought to become a client; (2) the person to whom the
`communication was made (a) is a member of the bar of a court, or
`his subordinate and (b) in connection with this communication is
`acting as a lawyer; (3) the communication relates to a fact of which
`the attorney was informed (a) by his client (b) without the presence
`of strangers (c) for the purpose of securing primarily either (i) an
`opinion on law or (ii) legal services or (iii) assistance in some legal
`proceeding, and not (d) for the purpose of committing a crime or
`tort; and (4) the privilege has been (a) claimed and (b) not waived
`by the client.
`
`2
`
`
`

`

`Case 1:14-cv-01430-LPS Document 442 Filed 10/15/21 Page 3 of 13 PageID #: 26601
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`quotations omitted); Onyx Therapeutics, Inc. v. Cipla Ltd., No. 16-988-LPS, 2019 WL 668846, at
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`*1 (D. Del. Feb. 15, 2019). However, “[w]hen the communication between an attorney and non-
`
`legal personnel primarily relates to business concerns”—as opposed to legal advice—“the
`
`communication is not within the scope of attorney-client privilege.” Immersion Corp. v. HTC
`
`Corp., No. 12-259-RGA, 2014 WL 3948021, at *1 (D. Del. Aug. 7, 2014). Whether a
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`communication is made for a business purpose or a legal purpose can be difficult to determine,
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`particularly in the patent context. See Hercules, Inc. v. Exxon Corp., 434 F. Supp. 136, 143 (D.
`
`Del. 1977) (“As with any claim of privilege made in connection with patent matters, the problem
`
`of classification into protected and non-protected communications is troublesome.”). Courts in
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`this district have looked to a communication’s “primary purpose” to determine whether the
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`privilege applies. Onyx, 2019 WL 668846, at *1; Hercules, 434 F. Supp. at 147; Immersion, 2014
`
`WL 3948021, at *1.
`
`Federal Rule of Civil Procedure 26(c)(3)(A) protects work product from discovery. It
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`provides that, “[o]rdinarily, a party may not discover documents and tangible things that are
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`prepared in anticipation of litigation or for trial by or for another party or its representative
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`(including the other party’s attorney, consultant, surety, indemnitor, insurer, or agent).” Fed. R.
`
`Civ. P. 26(c)(3)(A). To determine whether a document was prepared in anticipation of litigation
`
`or trial, “the test should be whether in light of the nature of the document and the factual situation
`
`in the particular case, the document can fairly be said to have been prepared or obtained because
`
`
`Reckitt Benckiser Pharms. Inc v. Dr. Reddy’s Lab’ys SA, No. 14-1451-RGA, 2016 WL 11694169,
`at *1 (D. Del. Nov. 4, 2016) (quoting Hercules, Inc. v. Exxon Corp., 434 F. Supp. 136, 144 (D.
`Del. 1977)).
`
`
`
`3
`
`
`

`

`Case 1:14-cv-01430-LPS Document 442 Filed 10/15/21 Page 4 of 13 PageID #: 26602
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`of the prospect of litigation.” Martin v. Bally’s Park Place Hotel & Casino, 983 F.2d 1252, 1260
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`(3d Cir. 1993).
`
`The party asserting the attorney-client privilege or claiming work product protection has
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`the burden of demonstrating that they apply. Magnetar Techs. Corp. v. Six Flags Theme Park Inc.,
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`886 F. Supp. 2d 466, 477-78 (D. Del. 2012) (attorney-client privilege), aff’d, No. 07-127-LPS-
`
`MPT, 2014 WL 545440 (D. Del. Feb. 7, 2014); Immersion, 2014 WL 3948021, at *1 (work
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`product).
`
`III. DISCUSSION
`
`
`
`Defendants have sorted their remaining objections to Plaintiff’s privilege/work-product
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`claims into four categories: (1) documents for which the privilege log description is alleged to be
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`insufficient; (2) certain communications between Glenn Leedy, Ron Epstein, and/or other
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`Epicenter employees; (3) certain communications between Glenn Leedy and Michael Ure; and (4)
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`Plaintiff’s redactions to a Contingent Fee Engagement Letter. (See D.I. 433 at 1-12, Ex. L.)
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`Plaintiff has the burden of demonstrating that the documents are protected from discovery.
`
`
`
`
`
`A.
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`Entries lacking information
`
`The first category contains 12 documents. Defendants say that these documents should be
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`produced because Plaintiff has not provided (on the privilege log or otherwise) sufficient
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`information to establish that they are privileged and/or protected by the work product doctrine.
`
`Plaintiff responds that it has provided all of the information it can and that, “[f]or some documents,
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`while it cannot be definitively determined which lawyer created or sent the document, it is apparent
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`from the face of the document that a lawyer was involved in the creation of the document.” (D.I.
`
`433 at 5.)
`
`4
`
`
`

`

`Case 1:14-cv-01430-LPS Document 442 Filed 10/15/21 Page 5 of 13 PageID #: 26603
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`Having laid eyes on the documents in question, I do not agree that a lawyer must have been
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`involved in their creation, or even that it is more likely than not. Plaintiff bears the burden to
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`establish privilege and work product protection. There is insufficient information (either intrinsic
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`to the document itself or extrinsic) about who created the documents, why they were created, and
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`whether they were communicated to anyone (an attorney or a third party). I find that Plaintiff has
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`not met its burden to establish that any of them were made in confidence for the purpose of seeking
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`legal advice or were created in anticipation of litigation.2
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`For example, the document marked ElmPriv_0040 is listed on Plaintiff’s privilege log as
`
`follows:
`
`PrivLog ID
`
`From
`
`ElmPriv_0040
`
`
`
`To
`
`
`
`Privilege
`Basis
`Draft agreement regarding potential licensing of 3DS
`ACP
`technology
`WP
`I have reviewed the document in question, and it appears to be an unsigned license agreement. As
`
`CC
`
`Date
`
`
`
`12/27/1999
`
`Privilege Description
`
`far as I can tell, it is not marked up. With respect to Plaintiff’s claim that the document is
`
`privileged, I find that there is little evidence intrinsic to the document that would suggest that the
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`document itself constitutes a communication between privileged people. I do not know who
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`prepared it and, given that Plaintiff is engaged in the business of licensing patents, it might well
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`have been prepared by a non-attorney. There is also no intrinsic or extrinsic evidence to suggest
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`that the document was created or edited by Elm or its counsel as opposed to the third party that
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`Elm was seeking to provide a license to (and even if it was created by Elm, I don’t know if it was
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`kept internally in confidence or shared with the third party). With respect to Plaintiff’s work
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`product claim, there is insufficient evidence to establish that the document was created in
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`anticipation of litigation.
`
`
`2 I acknowledge that Plaintiff may lack some of this information because Mr. Leedy, the
`non-attorney custodian of many of the documents, is now deceased. (See D.I. 433 at 5.)
`
`
`5
`
`
`

`

`Case 1:14-cv-01430-LPS Document 442 Filed 10/15/21 Page 6 of 13 PageID #: 26604
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`
`
`As another example, ElmPriv_0315 is listed on Plaintiff’s privilege log as follows:
`
`PrivLog ID
`
`From
`
`To
`
`CC
`
`Date
`
`Privilege Description
`
`ElmPriv_0315
`
`
`
`
`
`
`
`10/20/2003
`
`Portion of draft claim chart relating claim pending patent
`application to different semiconductor manufacturers
`This document is a one-page claim chart. Its metadata indicates that Mr. Leedy (a non-attorney)
`
`Privilege
`Basis
`ACP
`
`was the custodian of the document. (D.I. 433 at 2.) Plaintiff does not know who prepared the
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`document and, given the nature of Plaintiff’s business and the fact that it was located in the custody
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`of a non-attorney, it might well have been prepared by a non-attorney. Here, again, I find that
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`there is insufficient evidence to find that the document constitutes a communication between
`
`privileged persons.3
`
`Another example is ElmPriv_0323, which is listed on Plaintiff’s log as follows:
`
`PrivLog ID
`
`From
`
`To
`
`CC
`
`Date
`
`Privilege
`Basis
`12/10/2003 WP
`
`Privilege Description
`
`ElmPriv_0323
`
`
`
`
`
`
`
`Evaluation of revenues, profits, and potential damages from
`various possible defendants in potential infringement suit;
`document prepared in anticipation of litigation
`There is no evidence regarding who prepared this document and why. Having reviewed the
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`document, and in light of the nature of Plaintiff’s business, I cannot (without any additional
`
`information) conclude that Plaintiff has met its burden to show that the document was prepared in
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`anticipation of litigation (as opposed to for business reasons).
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`
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`Documents marked ElmPriv_0464-0467, 0472 are logged as follows:
`
`PrivLog ID
`
`From
`
`To
`
`CC
`
`Date
`
`Privilege Description
`
`ElmPriv_0464
`
`ElmPriv_0465
`
`
`
`
`
`
`
`
`
`
`
`
`
`2/20/2008
`
`Privilege
`Basis
`ACP
`WP
`
`2/20/2008
`
`ACP
`WP
`
`Revenue and damages analysis of potential infringers of Elm's
`patents prepared at the direction of counsel and in anticipation
`of litigation; sets forth reasonable royalty analysis for potential
`infringement litigation
`Revenue and damages analysis of potential infringers of Elm's
`patents prepared at the direction of counsel and in anticipation
`of litigation
`
`
`3 According to Plaintiff, it is a “fair inference that a lawyer was involved” because “counsel
`for Elm is not aware of any circumstance in which Mr. Leedy drafted a claim chart without
`assistance or input from counsel.” (D.I. 433 at 5.) I agree that one reasonable inference is that an
`attorney was involved in the preparation of the document. Given the nature of Elm’s business,
`however, it’s not necessarily the most reasonable inference. Without additional information about
`who prepared this document and why, Plaintiff has not met its burden to demonstrate that it is
`privileged.
`
`6
`
`
`

`

`Case 1:14-cv-01430-LPS Document 442 Filed 10/15/21 Page 7 of 13 PageID #: 26605
`
`ElmPriv_0466
`
`ElmPriv_0467
`
`ElmPriv_0472
`
`
`
`
`
`
`
`Analysis of potential targets for infringement claims; includes
`tabs estimating damages and reasonably royalties and a tab
`showing die thickness measurements of different potential
`infringers
`Analysis of potential targets for infringement claims; includes
`tabs estimating damages and reasonably royalties and a tab
`showing die thickness measurements of different potential
`infringers
`Analysis of potential targets for infringement claims; includes
`tabs estimating damages and reasonably royalties and a tab
`showing die thickness measurements of different potential
`infringers
`These documents are all spreadsheets. We don’t know who prepared them or who allegedly
`
`
`
`
`
`
`
`
`
`
`
`
`
`2/21/2008
`
`ACP
`WP
`
`2/22/2008
`
`WP
`
`3/31/2008
`
`ACP
`WP
`
`directed that they be prepared. I have examined them and I cannot find that they were prepared in
`
`anticipation of litigation, at the direction of counsel, or to facilitate the provision of legal advice.
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`They might well have been. But, given the nature of Plaintiff’s business, another reasonable
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`inference is that they were prepared by a non-attorney to determine which companies to reach out
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`to regarding a licensing deal. See, e.g., Immersion Corp. v. HTC Corp., No. 12-259-RGA, 2014
`
`WL 3948021, at *1 (D. Del. Aug. 7, 2014) (finding “document to be primarily for business
`
`purposes as it provides factual information about licensing/royalty rates, the primary purpose of
`
`the Plaintiff’s business”). On this record, I find that Plaintiff has not met its burden to establish
`
`that either the attorney-client privilege or work product doctrine applies.
`
`
`
`Documents marked ElmPriv_0405 and ElmPriv_0413 are logged as follows:
`
`PrivLog ID
`
`From
`
`To
`
`CC
`
`Date
`
`Privilege Description
`
`ElmPriv_0405
`
`ElmPriv_0413
`
`
`
`
`
`
`
`
`
`
`
`
`
`Draft report re thin film stress measurements prepared in
`anticipation of patent infringement litigation; analysis of
`technical results of TAEUS report
`Draft report from Ilan Blech titled "Report of Stress
`Measurements of films deposited on thin dice"; prepared in
`anticipation of litigation
`These documents contain stress measurements. But there is nothing on the face of the document
`
`Privilege
`Basis
`WP
`
`2/21/2006
`
`5/3/2006
`
`WP
`
`or any extrinsic evidence that suggests that they were prepared in anticipation of litigation. While
`
`it is certainly possible that they were, it is also possible that the documents were prepared as part
`
`of an investigation conducted for business purposes or that they were created by a third party for
`
`purposes unrelated to Plaintiff’s legal or business interests. We do not know anything about the
`
`author of 0405 or why it was created. Although we do know that ElmPriv_0413 was created by
`
`7
`
`
`

`

`Case 1:14-cv-01430-LPS Document 442 Filed 10/15/21 Page 8 of 13 PageID #: 26606
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`Ilan Blech in 2006, I do not know who Ilan Blech is (was he an employee or consultant of Elm or
`
`a third party), what litigations, if any, were ongoing or imminent in 2006, or the purpose for which
`
`the document was created. There are simply too many unknowns to conclude that these documents
`
`must have been, or were even more likely than not, created in anticipation of litigation.
`
`
`
`The same concerns also apply to the rest of the documents in this category. All 12
`
`documents in this category must be produced.
`
`
`
`
`
`B.
`
`Communications between Leedy and Epstein
`
`There are 150 documents in this category, which contains communications between Mr.
`
`Leedy and Mr. Epstein (and/or other employees at Epstein’s company, Epicenter IP, LLC). Mr.
`
`Epstein is an attorney, but Plaintiff acknowledges that Mr. Epstein was not always acting as an
`
`attorney for Elm. Defendants contend that these communications are not privileged because they
`
`primarily relate to business matters. Plaintiff argues that the disputed communications are
`
`privileged because they primarily relate to issues on which Mr. Epstein and his colleagues provided
`
`legal advice.
`
`I have reviewed the documents at issue, and I agree with Plaintiff on the majority of the
`
`documents in this category. Some of the documents are clearly privileged. I conclude that others
`
`are primarily directed to legal (as opposed to business) advice. None of those privileged
`
`documents need to be produced and I will not discuss them further.
`
`I do have some concerns about Plaintiff’s privilege claims with respect to the following
`
`three groups of documents. The first group consists of documents that Plaintiff withheld in their
`
`entirety but that should be redacted in part and produced.4 Most, if not all of the documents in this
`
`
`4 The following documents belong to this group and should be appropriately redacted and
`produced: ElmPriv_1118; ElmPriv_1149; ElmPriv_1150; ElmPriv_1172.
`8
`
`
`

`

`Case 1:14-cv-01430-LPS Document 442 Filed 10/15/21 Page 9 of 13 PageID #: 26607
`
`group are email “chains” where some links on the chain consist of communications with third
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`parties. Communications with third parties are obviously not protected by the attorney-client
`
`privilege. The documents should be appropriately redacted and produced. For example,
`
`ElmPriv_1050 contains communications between Elm’s counsel and representatives from third
`
`party SK Hynix. Those communications are not privileged. The top communication is protected
`
`by the attorney-client privilege and may be redacted. Similarly, ElmPriv_1118 contains
`
`communications between Plaintiff’s counsel and a representative from third party IBM. Again,
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`those communications are not privileged and should be produced. The top two communications
`
`appear to contain attorney-client privileged information, however, and may be redacted before
`
`production.
`
`
`
`The next group of documents consist of emails that attach what appear to be non-privileged
`
`documents.5 For example, ElmPriv_1162 is an email from Leedy to Epstein and another Epicenter
`
`
`I also note that ElmPriv_1050 is identical to ElmPriv_1047 which has been appropriately
`redacted. ElmPriv_1050 should be given redactions consistent with those found on ElmPriv_1047
`and produced with those redactions. Several other related documents that were treated differently
`are: ElmPriv_1053 and ElmPriv_1056; ElmPriv_1100 and ElmPriv_1106; ElmPriv_1126 and
`ElmPriv_1133. Those documents should be reviewed, and the redactions should be made
`consistent. The documents that were previously withheld in their entirety should be produced with
`the appropriate redactions.
`
` This group includes the following: ElmPriv_1061 and ElmPriv_1062; ElmPriv_1113 and
`ElmPriv_1114; ElmPriv_1162 and ElmPriv_1163; ElmPriv_1211 and ElmPriv_1212;
`ElmPriv_1215 and ElmPriv_1216; ElmPriv_1225 and ElmPriv-1226; ElmPriv_1231,
`ElmPriv_1232 and ElmPriv_1233; ElmPriv_1243 and ElmPriv_1244; ElmPriv_1246,
`ElmPriv_1247 and ElmPriv_1248; ElmPriv_1249 and ElmPriv_1250; ElmPriv_1263,
`ElmPriv_1264 and ElmPriv_1265; ElmPriv_1275, ElmPriv_1276 and ElmPriv_1277;
`ElmPriv_1283 and ElmPriv_1284; ElmPriv_1286 and ElmPriv_1287; ElmPriv_1294 and
`ElmPric_1295; ElmPriv_1328 and ElmPriv_1329; ElmPriv_1392 and ElmPriv_1393;
`ElmPriv_1588, ElmPriv_1589 and ElmPriv_1590; ElmPriv_1061 and ElmPriv_1062;
`ElmPriv_1708 and ElmPriv_1709; ElmPriv_1869 and ElmPriv_1877.
`
`
` 5
`
`9
`
`
`

`

`Case 1:14-cv-01430-LPS Document 442 Filed 10/15/21 Page 10 of 13 PageID #: 26608
`
`employee. The email attaches an article (ElmPriv_1163) that appears to be publicly available and
`
`would clearly not be privileged standing alone.
`
`
`
`Courts have taken varying approaches regarding the privilege claims over email
`
`attachments. Compare, e.g., Willis Elec. Co. v. Polygroup Trading Ltd., No. 15-3443-WMW-
`
`KMM, 2021 WL 568454, at *7 (D. Minn. Feb. 16, 2021) with Doe v. Intermountain Health Care,
`
`Inc., No. 18-807-RJS-JCB, 2021 WL 425117, at *6 (D. Utah Feb. 8, 2021). I don’t need to get
`
`into the weeds on all the ways that attachments might be privileged because, in this case, I only
`
`need to decide how to handle emails between privileged persons that attach articles that are clearly
`
`not privileged standing alone.
`
`Here is how I see it. The emails themselves demonstrate that the client sender (or client
`
`recipient) had the non-privileged article in their possession because at one point they sent (or
`
`received) it. The client cannot immunize discovery of those articles merely because they were
`
`sent to (or received from) their lawyer. Nor can the client conceal the fact that they were and are
`
`in possession of those articles. On the other hand, I am sensitive to the possibility that the fact that
`
`a client sent (or received) a particular article to (or from) his attorney on a certain date can implicate
`
`privilege concerns.6 See Willis Elec., 2021 WL 568454, at *7.
`
`In view of the foregoing, this is how the parties should proceed with respect to this group.7
`
`Plaintiff must either (1) produce the non-privileged attachments8 or (2) if Plaintiff contends that
`
`
`6 Having reviewed the attachments at issue here, I’m skeptical that they are relevant to any
`claims or defenses in this case. However, I imagine there could be a situation where an individual’s
`possession of a non-privileged article might be relevant in a patent case.
`
` 7
`
` See n.5, supra.
`
` 8
`
` The parties should meet and confer if there is a dispute regarding how these documents
`should be produced. The parties should be able to figure out a way do to this consistent with the
`principles outlined above.
`
`
`10
`
`
`

`

`Case 1:14-cv-01430-LPS Document 442 Filed 10/15/21 Page 11 of 13 PageID #: 26609
`
`the act of sending a particular attachment is privileged, confirm that the attachment has already
`
`been produced in discovery under circumstances that demonstrate which custodians had
`
`possession of it.9
`
`
`
`The final group of documents I will require to be produced are those where the
`
`communication is setting up a call. The redacted portions of ElmPriv_1624 solely relate to setting
`
`up a call. No legal advice is requested or provided; the participants are engaged in scheduling.
`
`Such communications are not privileged and should be produced. The following documents are
`
`part of the same email chain and should also be produced without redactions: ElmPriv_1625;
`
`ElmPriv_1626; ElmPriv_1627; and ElmPriv_1628. I do not know of what use those documents
`
`will be to Defendants, but they are not privileged.
`
`
`
`
`
`C.
`
`Communications between Leedy and Ure
`
`The next category of documents concerns communications between Mr. Leedy and
`
`Michael Ure, an attorney, who “provided wide-ranging services . . . including patent prosecution,
`
`business advice, and licensing strategy.” (D.I. 433 at 4.) Like the Leedy-Epstein communications,
`
`Defendants argue that the documents in this category are directed primarily towards business
`
`purposes. Plaintiff contends that although some communications between Leedy and Ure were for
`
`business purposes, those currently being withheld primarily involve the provision of legal advice.
`
`
`9 Alternatively, Plaintiff may choose to simply produce the emails with the attachments.
`Plaintiff’s choice to take that option shall not be deemed to operate as a broad subject matter
`waiver.
`
`
`11
`
`
`

`

`Case 1:14-cv-01430-LPS Document 442 Filed 10/15/21 Page 12 of 13 PageID #: 26610
`
`
`
`Based on the documents before me and the representations that Plaintiff has made in its
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`privilege log, I cannot find that these emails were more likely seeking business as opposed to legal
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`advice.10 Accordingly, they need not be produced.
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`However, ElmPriv_0023 and ElmPriv_0024 are email attachments that appear to be
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`publicly available articles. They are subject to the same ruling on email attachments set forth
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`above.
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`D.
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`Contingent Fee Engagement Letter
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`The last document is a Contingent Fee Engagement Letter between Glenn Leedy and
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`Epicenter Law, P.C. Plaintiff has produced this document with redactions. Defendants argue that
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`the redactions are inappropriate. I agree with Defendants.
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`Plaintiff has designated Mr. Epstein as its sole Rule 30(b)(6) witness. The Contingent Fee
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`Engagement Letter discusses the compensation to be paid to Epstein. Having previously
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`concluded that the Contingent Fee Engagement Letter has some potential relevance to bias, I
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`ordered that it be produced. I also stated that relevance redactions were inappropriate but that the
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`document may be redacted to the extent it contained some privileged information. I have reviewed
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`the provisions that are currently being redacted by Plaintiff and they do not constitute privileged
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`information. They are contract terms. The agreement should be produced in unredacted form.
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`NOW, THEREFORE, IT IS HEREBY ORDERED THAT:
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`1.
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`Plaintiff shall produce additional documents, as set forth above.
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`10 I made this finding in acknowledgment that there are often overlapping business and
`legal concerns when it comes to patents.
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`12
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`Case 1:14-cv-01430-LPS Document 442 Filed 10/15/21 Page 13 of 13 PageID #: 26611
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`2.
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`Plaintiff has met its burden to show that the remaining disputed documents are
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`protected by the attorney-client privilege, work product doctrine, or both and thus need not be
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`produced.
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`Dated: October 15, 2021
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`___________________________________
`Jennifer L. Hall
`UNITED STATES MAGISTRATE JUDGE
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`13
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