Dual-Purpose, Patent Analysis Documents Found Immune from Discovery under Work Product Doctrine

April 8, 2019

Reading Time : 3 min

In this case, Micron sought production of several documents related to the evaluation and acquisition of certain patents—documents Micron characterized as being created for a business purpose. However, Limestone refused to produce the documents on the bases of attorney-client privilege and work product immunity, and a motion to compel followed.

Micron argued that Limestone lacked standing to withhold the documents that Limestone’s parent company created before it acquired the patents-in-suit, some of which were created before Limestone existed as a corporation. According to Micron, Limestone could not anticipate litigation before it existed. Micron also argued the documents were not entitled to privilege or work product protections because they were created for a business purpose, i.e., evaluating the patents for potential acquisition, not for litigation. More specifically, Micron argued that, under Griffith v. Davis, 161 F.R.D. 687, 698 (C.D. Cal. 1995), the documents could not qualify as attorney work product because they were “dual-purpose”—having been created for a business purpose, even if they also touched on legal issues—and would have been created even if the complaint had never been filed.

Limestone countered that for documents providing business and legal advice that is “inseparably interrelated,” the Torf standard supplanted the “primary purpose” standard, and as a result, its documents should be protected. According to Limestone, under United States v. Torf (In re Grand Jury Subpoena), 357 F.3d 900, 907 (9th Cir. 2004), “the test for [such] work-product protection is not whether litigation was a primary or secondary motive behind the creation of a document, but rather whether, under the totality of the circumstances, it can fairly be said that the document was created because of anticipated litigation.” Limestone further reasoned, “[c]learly, there is no reason to exercise an option on a patent if there is a legal decision not to assert such a patent.”

Notably, neither party distinguished the legal standards to be applied to documents withheld as work product versus documents withheld on the basis of attorney-client privilege. In its decision, the Discovery Master clarified these standards, emphasizing that for privilege to apply, a communication must be made for the purpose of securing or providing legal advice. And when the communication involves in-house counsel with business responsibilities, the “primary purpose” of the communication must have been to obtain or provide legal advice. In contrast, work product is an immunity that protects documents if they are “prepared or obtained because of the prospect of litigation,” regardless of “whether litigation was a primary or secondary motive” in their creation. And this is true even if the documents are created prior to acquisition of the asserted patents because one consideration for acquisition could be possible litigation strategy.

Applying these standards, the Discovery Master found several of Limestone’s documents qualified for work product protection because “the business and legal elements of counsel’s advice [in them were] inextricably intertwined.” The “business analysis was permeated by a concurrent legal purpose, namely evaluating the legal strength and enforceability of the asserted patents.” The Discovery Master reasoned that Limestone’s parent company intended to enforce the asserted patents and created the withheld documents concurrently with the preparation of the complaint, which was filed soon after the patents were acquired.

The Discovery Master also held several of Limestone’s documents protected by the attorney-client privilege because “despite the fact that a business evaluation of the patents-in-suit and the Non-Acquired Patents may have been occurring simultaneously through parallel channels and in some instances involving outside counsel, each of the specific communications [] was generated primarily for the purpose of obtaining legal advice.” In other words, the documents would not have been generated if Limestone and its parent were merely engaged in their regular business of evaluating and purchasing patents.

On the other hand, the Discovery Master ordered Limestone to produce some of the documents on its privilege log, including email chains and attachments, because based solely on their contents, he could not determine whether they should be privileged or constitute work-product. The Discovery Master noted that Limestone had not provided sufficient evidence to conclude that they should, highlighting that it had not provided declarations by any of the persons who authored or received the documents.

Practice Tip: Parties involved in discovery of pre-suit documents should consider whether such documents were created with litigation in mind. If so, those documents may be protected by work-product immunity or as privileged, but those labels should be applied thoughtfully based on the applicable legal standards. Parties desiring to protect documents that have concurrent business and legal purposes may have the best chance of excluding them from discovery if they explicitly state their legal purpose in the documents themselves. And, if it is not clear from the four corners of the documents, supplemental evidence, such as declarations from those persons involved in their creation or communication, may support a claim that protection should apply.

Limestone Memory Systems LLC v. Micron Technology, Inc. et al, 8-15-cv-00278 (CACD 2019-02-19, Order) (Roy Silva)

Share This Insight

Previous Entries

IP Newsflash

August 11, 2025

In considering a motion to dismiss infringement claims for two related patents, the District of Massachusetts recently held that pre-suit knowledge of a “parent” patent, without more, is insufficient to establish pre-suit knowledge of the “child” patent for purposes of indirect and willful infringement.

...

Read More

IP Newsflash

August 8, 2025

Following a jury verdict finding trade secret misappropriation, the District Court for the District of Massachusetts granted-in-part a plaintiff’s motion for a permanent injunction to prohibit defendants from using plaintiff’s trade secrets. The district court further required defendants to reassign to plaintiff patents and patent applications that disclosed or were derived from plaintiff’s trade secrets as part of its equitable relief.

...

Read More

IP Newsflash

August 6, 2025

In ruling on a recent motion to strike, a judge in the Eastern District of Texas permitted a damages expert to rely on a damages theory based on defendant’s “avoided costs,” holding that this theory did not run afoul of the “entire market value rule.”

...

Read More

IP Newsflash

August 5, 2025

The Federal Circuit recently vacated a decision by the Patent Trial and Appeal Board after concluding that the board’s analysis of licensing evidence offered as a secondary consideration of nonobviousness constituted legal error and was not supported by substantial evidence. According to the court, the board applied a more exacting and improperly heightened nexus standard than is required by law for license evidence.

...

Read More

IP Newsflash

August 5, 2025

A Northern District of California judge recently granted a motion to reconsider his summary judgment ruling that defendant was barred from raising certain “device art” due to IPR estoppel under 35 U.S.C. § 315(e)(2). In the original ruling, the judge adopted the broader rule that IPR estoppel applies to device art that is “materially identical” to patents or printed publications that petitioners raised, or could have raised, in an IPR. Following that ruling, however, the Federal Circuit issued its Ingenico decision adopting the narrower view that IPR estoppel applies only to “grounds” based on patents and printed publications and not to device-based grounds. Citing Ingenico as a “change of law,” defendant moved for reconsideration of the court’s ruling, and the court granted the motion.

...

Read More

IP Newsflash

August 5, 2025

In a recent decision designated as Informative, the USPTO Director determined that the Patent Trial and Appeal Board abused its discretion by instituting two inter partes review proceedings challenging the same patent, based on petitions advancing different constructions of the same claim term. The Director expressed concerns that permitting multiple petitions based on alternative claim constructions effectively circumvents word count limitations, strains board resources, and undermines procedural efficiency.

...

Read More

IP Newsflash

July 25, 2025

Earlier this year, the Federal Circuit’s decision in Qualcomm Inc. v. Apple Inc. (Qualcomm II) raised questions about the extent to which petitioners can rely on applicant admitted prior art (“AAPA”) in inter partes review proceedings.  The Federal Circuit’s recent decision in Shockwave Medical, Inc. v. Cardiovascular Sys., Inc. largely cabins the Qualcomm II decision to its particular facts and makes clear that AAPA can be used as evidence of background knowledge as part of an obviousness argument.

...

Read More

IP Newsflash

July 11, 2025

The Federal Circuit recently reversed a PTAB determination on remand that a patent was obvious over applicant admitted prior art (“AAPA”) in combination with prior art patents, holding that expressly designating AAPA as a “basis” for a ground is improper under 35 U.S.C. § 311(b). In doing so, the Court rejected the PTAB’s “blanket rule” that “AAPA used in combination with prior art patents or printed publications under § 311(b) is ipso facto not the basis or part of the basis of a ground.” Ultimately, while the case clarifies that expressly listing AAPA in an IPR ground is improper, the precise line between proper and improper uses of AAPA in other instances remains unclear.

...

Read More

© 2025 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.