Case 6:12-cv-00799-JRG Document 207 Filed 08/07/14 Page 1 of 5 PageID #: 6036
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`C.A. No. 6:12-cv-799-LED
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`JURY TRIAL DEMANDED
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`INVENSYS SYSTEMS, INC.,
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`Plaintiff,
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`v.
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`EMERSON ELECTRIC CO. and
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`MICRO MOTION INC., USA,
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`Defendants.
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`and
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`MICRO MOTION INC., USA,
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`Counterclaim-Plaintiff,
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`v.
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`INVENSYS SYSTEMS, INC.,
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`Counterclaim-Defendant. §
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`INVENSYS SYSTEMS, INC.’S SUR-REPLY TO DEFENDANTS’ MOTION TO
`COMPEL THE PRODUCTION OF THE DICKSON PRESENTATION AND ALL
`OTHER DOCUMENTS RELATING TO INVENSYS LICENSE REVENUE
`PROJECTIONS
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`EAST\79356530.2
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`Case 6:12-cv-00799-JRG Document 207 Filed 08/07/14 Page 2 of 5 PageID #: 6037
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`I.
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`Invensys Has Never Claimed That Publicly Available Court Records Are Privileged.
`Invensys does not claim that the publicly available state court records in the Shore Chan
`Lawsuit are privileged.1 Of course, Defendants did not need to file a motion to compel to obtain
`publicly available court records that they obviously already possess. Thus, to the extent
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`Defendants’ motion is directed to the pleadings in the Shore Chan Lawsuit, it is moot. See Defs.’
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`Reply in Support of Their Mot. to Compel the Produc. of the Dickson Presentation and All Other
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`Docs. Relating to Invensys’s License Revenue Projections at 4-5, ECF No. 196 (“Defs.’ Reply”).
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`II.
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`Invensys Did Not Waive Privilege to the Dickson Presentation.
`Defendants now appear to concede that Invensys did not waive its attorney-client
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`privilege by suing Shore Chan. See id. at 2. Defendants also appear to concede that Invensys’s
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`former prospective counsel could not waive Invensys’s privilege. See id. Instead, Defendants
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`now appear to argue that Invensys somehow put the Dickson presentation at issue by requesting
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`(in the alternative) an accounting of Shore Chan’s alleged fees and seeking initial disclosures
`under Texas Rule of Civil Procedure 194.2 See id. at 3.
`First, Invensys’s alternative request for an accounting did not put the Dickson
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`presentation at issue in the Shore Chan Lawsuit. Shore Chan did not prepare the Dickson
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`presentation, and even if it had, Invensys’s request for an accounting would not have required
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`any factual inquiry into its contents. Cf. Laughner v. United States, 373 F.2d 326, 327 (5th Cir.
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`1967) (finding waiver because the petitioner “demanded and obtained a factual judicial inquiry”
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`into the privileged subject matter).
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`Second, Invensys’s request for discovery about Shore Chan’s counterclaims could not
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`have waived privilege as to third parties. Defendants cite no authority for the proposition that a
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`client’s request for discovery about his former attorney’s claims constitutes a waiver. Indeed,
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`1 Whether the statements Shore Chan made in the state court litigation are relevant or admissible
`in this suit is not presently before the Court and is more properly addressed at trial.
`2 As the Court is likely aware, unlike the federal courts in which initial disclosures are made
`automatically without the need for a request, litigants in Texas state courts must specifically
`serve a request for initial disclosures. See TEX. R. CIV. P. 194.1.
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`Case 6:12-cv-00799-JRG Document 207 Filed 08/07/14 Page 3 of 5 PageID #: 6038
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`requiring a client in a fee dispute to choose between taking discovery or preserving his attorney-
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`client privilege as to third parties would be manifestly unreasonable. Moreover, discovery
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`requests do not require any public disclosure of information. Shore Chan chose to reveal
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`information about the Dickson presentation in its pleadings for its own reasons and for its own
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`benefit, without Invensys’s permission.
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`Finally, Defendants incorrectly assert that Invensys waived privilege by failing to timely
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`object to Shore Chan’s pleadings. The passage from McCormick on which Defendants rely
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`relates to the timely assertion of objections to a witness’s testimony at a deposition or trial, not to
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`statements in pleadings. In fact, the passage Defendants quote specifically states that an
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`objection must be made to disclosures by the client “or another witness.” MCCORMICK ON
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`EVIDENCE § 93 (7th ed. 2013) (emphasis added). Likewise, all the cases McCormick cites
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`involved deposition or trial testimony, not statements in pleadings. See Nguyen v. Excel Corp.,
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`197 F.3d 200, 206-07 & n.17 (5th Cir. 1999); Steen v. First Nat’l Bank of Sarcoxie, Mo., 298 F.
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`36, 40-41 (8th Cir. 1924); Hurley v. McMillan, 268 S.W.2d 229, 231-32 (Tex. Civ. App—
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`Galveston 1954, writ ref’d n.r.e.). While objections to testimony at a trial or deposition allow an
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`immediate ruling by the court or an instruction to the witness not to answer, there is no similar
`procedure for pleadings.3 In addition, in all of those cases the testimony that resulted in the
`waiver came from the client, not the attorney. Ultimately, Defendants have not cited any
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`authority suggesting that a party waives privilege by failing to “object” to statements in an
`opposing party’s pleadings.4
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`3 Unlike objecting to a question at a deposition or trial, sealing court documents is a
`cumbersome and time consuming procedure in Texas state courts. A motion to seal requires a
`public hearing that must be noticed at least fourteen days in advance. See TEX. R. CIV. P.
`76a(4). Temporary sealing orders must be verified and require an exacting factual showing.
`See id. at 76a(5) (“A temporary sealing order may issue upon . . . a showing of compelling
`need from specific facts shown by affidavit or by verified petition that immediate and
`irreparable injury will result to a specific interest of the applicant before notice can be posted
`and a hearing held . . . .”).
`4 As to the scope of any waiver, Defendants’ “fairness” argument is misplaced. See Defs.’
`Reply at 4-5. Invensys has no intention of relying on the Dickson presentation or the
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`Case 6:12-cv-00799-JRG Document 207 Filed 08/07/14 Page 4 of 5 PageID #: 6039
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`CONCLUSION
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`For the foregoing reasons and the reasons set forth in Invensys’s response brief,
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`Defendants’ Motion to Compel Production of the Dickson Presentation and All Other
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`Documents Relating to Invensys’s License Revenue Projections should be denied.
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`Dated: August 7, 2014
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`Respectfully submitted,
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`/s/ Claudia Wilson Frost
`Claudia Wilson Frost
`State Bar No. 21671300
`Jeffrey L. Johnson
`State Bar No. 24029638
`Dawn M. Jenkins
`State Bar No. 24074484
`DLA PIPER LLP
`1000 Louisiana, Suite 2800
`Houston, TX 77002
`Telephone: 713.425.8400
`Facsimile: 713.425.8401
`Claudia.Frost@dlapiper.com
`Jeffrey.Johnson@dlapiper.com
`Dawn.Jenkins@dlapiper.com
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`Nicholas G. Papastavros
`Daniel Rosenfeld
`DLA PIPER LLP
`33 Arch Street, 26th Floor
`Boston, MA 02110
`Telephone: 617.406.6000
`Facsimile: 617.406.6100
`Nick.Papastavros@dlapiper.com
`Daniel.Rosenfeld@dlapiper.com
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`Todd S. Patterson
`DLA PIPER LLP
`401 Congress Ave., Suite 2500
`Austin, TX 78701-3799
`Telephone: 512.457.7017
`Facsimile: 512.721.2217
`todd.patterson@dlapiper.com
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`ATTORNEYS FOR PLAINTIFF
`INVENSYS SYSTEMS, INC.
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`pleadings in the Shore Chan Lawsuit. Thus, there would be nothing unfair about limiting any
`waiver to the specific statements set forth in Shore Chan’s state court pleadings.
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`Case 6:12-cv-00799-JRG Document 207 Filed 08/07/14 Page 5 of 5 PageID #: 6040
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that on August 7, 2014, all counsel of record who are deemed
`to have consented to electronic service are being served with a copy of this document via the
`Court’s CM/ECF system per Local Rule CV-5(a)(3). Any other counsel of record will be served
`by facsimile transmission and/or first class mail.
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`/s/ Claudia Wilson Frost
`Claudia Wilson Frost
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`EAST\79960393.3
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