On November 29, 2011, ALJ Robert K. Rogers, Jr. issued Order No. 23 in Certain Muzzle-Loading Firearms and Components Thereof (Inv. No. 337-TA-777).  The Order granted-in-part and denied-in-part a motion filed by Respondents Blackpowder Products Inc. and Dikar Sociedad Cooperativa Limitada (collectively, “BPI”) to compel Complainants Smith & Wesson Corp. and Thompson/Center Arms Company, Inc. (collectively, “Thompson”) to produce certain documents listed on their amended privilege log. 

BPI sought production of two categories of documents for which it argued are not privileged: (i) documents authored by or shared with unrelated third parties, and (ii) documents considered by Thompson’s technical expert.  Thompson argued that the category (i) documents were properly claimed as attorney-client and work product because they were part of the pre-filing investigation and analysis conducted in anticipation of litigation; and that there is no foundation in the record that the technical expert relied on the category (ii) documents.  Regarding the category (i) documents, the Office of Unfair Import Investigations (“OUII”) supported the motion to compel because BPI made clear that documents authored or received by third parties are not privileged simply because they are attached to an opinion by counsel.  With respect to the category (ii) documents, OUII noted that although facts and data considered by an expert in forming an opinion must be disclosed, BPI’s request was premature because Thompson’s technical expert had not yet issued an expert report.

ALJ Rogers described the category (i) documents as either authored or sent by a third party, or shared with a third party that did not share a common legal interest with Thompson.  For example, documents were identified as having “Field & Stream” as the author and sender.  ALJ Rogers noted that absent a common legal interest, disclosure of a privileged communication to a third party normally waives any such privilege and should be produced.  Certain documents were further identified as work product “exhibits to opinion-article” and “exhibits to opinion-webpage,” but ALJ Rogers ordered their production because such non-privileged documents were not entitled to protection simply by virtue of their attachment to a privileged, pre-investigation opinion written by Thompson’s counsel.  Some documents were also described as having “attorney notes.”  To the extent these documents contained notes reflecting the mental impressions, conclusions, opinions or legal theories of Thompson’s counsel developed during pre-filing investigation of claims against BPI, ALJ Rogers ordered the documents to be produced, but allowed such information to be redacted.       

Concerning the category (ii) documents, ALJ Rogers noted that Thompson’s identified expert is also the named inventor of one of the asserted patents and Thompson’s Director of Research and Development, who testified in deposition that he would rely on his past experience in prosecuting the asserted patent and his pre-filing investigation for Thompson when he offers his expert opinion in the case.  Based on this testimony and because certain documents on the privilege log were authored or received by the expert and described as “Draft of patent application,” “Schematic-information provided for patent app” and “Exhibit to Opinion-Application; patent,” ALJ Rogers found it difficult to imagine that these documents would not relate to the subject matter of the expert’s expected testimony and opinion.  Moreover, ALJ Rogers found that Thompson waived any privilege that may have attached to the documents shared with the expert when they made the decision to designate him as their testifying expert, and ordered the relevant documents to be produced.         

ALJ Rogers also addressed Thompson’s claim of privilege to certain documents communicated to and from the U.S. Patent and Trademark Office (“USPTO”).  By way of example, Thompson’s privilege log described documents in which the USPTO was identified as the author and sender of “Draft Maintenance Form with Notes” and “Attorney copy of US Patent 159170 with notes.”  ALJ Rogers noted that documents from the patent office or the patent examiner are not privileged unless they now contain or reflect the mental impressions, conclusions, opinions or legal theories of Thompson’s counsel regarding its claims against BPI in the current investigation.  Absent such a showing, ALJ Rogers ordered the USPTO documents to be produced in their entirety; to the extent the documents contained notes reflecting the mental impressions, conclusions, opinions or legal theories of Thompson’s counsel regarding its claims against BPI in the investigation, ALJ Rogers allowed such information to be redacted.

Finally, ALJ Rogers addressed BPI’s complaint that Thompson did not comply with Ground Rule 4.10.1, which requires each privileged document to be separately and specifically identified on the privilege log.  ALJ Rogers found that, with respect to certain documents, Thompson failed to comply with the ground rule because it did not specify the name of the sender or recipient and their respective positions, or the document date for certain entries.  However, contrary to BPI’s assertion, ALJ Rogers did not find that Thompson’s failure to comply waived privilege.  ALJ Rogers provided Thompson with one opportunity to produce a revised privilege log that fully complies with Ground Rule 4.10.1, or the documents in question would have to be produced.