Miller UK Ltd. v. Caterpillar, Inc.
17 F. Supp. 3d 711
N.D. Ill.2014Background
- Caterpillar and Miller had a long-standing relationship with Miller sharing confidential information and trade secrets.
- In 2008 Caterpillar cut off the relationship and began producing a product Miller had previously supplied information for.
- Miller sued alleging misappropriation of trade secrets; Caterpillar challenged discovery related to Miller’s litigation funding.
- Miller obtained third-party litigation funding; Caterpillar seeks the funding contract and related documents.
- Disputes over relevance and privilege center on deal documents versus documents Miller shared with funders; Miller asserts privilege and waivers.
- Magistrate Judge conducted an in-camera review, determining which items are discoverable and which are privileged or irrelevant.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether deal documents are relevant for discovery | Miller argues deal documents are not relevant to claims/defenses | Caterpillar asserts deal documents relate to defense and real-party-in-interest issues | Deal documents are not discoverable as to substantive claims/defenses; limited relevance denied |
| Whether funding agreements violate champerty/maintenance statutes | Miller contends Illinois champerty/maintenance do not apply; agreements are lawful | Caterpillar argues funding contracts are champertous and unlawful | Deal documents are not relevant to champerty/maintenance defenses; no viable Illinois defense shown |
| Whether Miller’s funder is the real party in interest under Rule 17(a) | Funder should not assume party status; Miller remains real party | Funders could be real party in interest or subrogee | Funder is not real party in interest; Miller remains the proper plaintiff |
| Waiver of attorney-client/work-product privilege when disclosed to funders | Disclosures were necessary to obtain funding and do not waive privileges | Disclosure to third parties waives privilege unless protected by common-interest doctrine | Common-interest doctrine not applicable; work-product protections often waived for disclosures, but not uniformly; certain materials must be produced or remain protected; in camera review identifies specific items to produce or redact |
| Whether in-camera review supports disclosure scope | Documents primarily reflect funding process and do not aid Miller’s claims | Some funder-related materials may be relevant to issues (e.g., real party in interest) or waiver | Many items are non-discoverable; identified categories of documents must be produced or redacted accordingly |
Key Cases Cited
- Oppenheimer Fund, Inc. v. Sanders, 437 F.2d 340 (U.S. 1978) (relevance and scope limits in discovery; Rule 26(b)(1))
- Hickman v. Taylor, 329 U.S. 495 (U.S. 1947) (work product protection; secrecy of attorney's material)
- Upjohn Co. v. United States, 449 U.S. 383 (U.S. 1981) (attorney-client privilege applies to confidential communications)
- Adlman v. Federal National Mortgage Ass’n, 134 F.3d 1194 (2d Cir. 1998) (test for whether a document was prepared 'because of' litigation for work product)
- In re Teleglobe Communications Corp., 493 F.3d 345 (3d Cir. 2007) (common-interest doctrine requires a legal, not purely commercial, shared interest)
- BDO Seidman, LLP v. Hirsch, 492 F.3d 806 (7th Cir. 2007) (limits on common-interest doctrine and privilege)
- Adams v. Raintree Vacation Exchange, LLC, 702 F.3d 436 (7th Cir. 2012) (real-party-in-interest considerations under Rule 17(a))
- Tellabs Operations, Inc. v. Fujitsu Ltd., 283 F.R.D. 374 (N.D. Ill. 2012) (clarifies breadth and limits of discovery)