Milwaukee Electric Tool Corporation v. Snap-On Incorporated, 2:14-cv-01296

Two related patent-infringement actions; defendants (Snap-On and Chervon) moved to compel production of documents Plaintiffs withheld as attorney-client privileged.
METCO’s counsel Edward Lawson filed a declaration in PTAB IPR proceedings asserting earlier conception and reduction-to-practice dates to defeat the Fohr prior-art challenge.
Lawson’s declaration quoted firm invoices, time records, meeting minutes, and attached two invention-disclosure forms (one undated, which Lawson dated Nov. 21, 2002) and described work on provisional patent applications filed Jan. 17, 2003.
Defendants argued Lawson disclosed privileged communications and thereby waived privilege over all communications on the same subject matter (communications with METCO inventors, Nov. 21, 2002–Jan. 17, 2003, relating to preparation of the patent applications).
Plaintiffs argued the declaration only established timing (dates) and thus any waiver should be limited to timing of conception.
The court found Lawson’s declaration went beyond mere dates to link communications and documents to the legal conclusions of conception and diligent reduction to practice, resulting in a subject-matter waiver and ordered production of communications meeting the temporal and subject criteria within seven days.

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether Lawson’s IPR declaration waived attorney-client privilege	Lawson only dated meetings/documents; waiver limited to timing of conception	Declaration disclosed privileged content and legal conclusions, so waiver extends to related communications about preparation of the patent apps between 11/21/2002–1/17/2003	Waiver found: production ordered for communications with METCO (including inventors) between those dates relating to preparation of the patent applications
Scope of subject-matter waiver	Narrow: only dates/timing	Broad enough to include communications underlying Lawson’s legal conclusions about conception and reduction to practice	Scope tied to disclosure; court adopts defendants’ proposed narrow temporal scope but covers substantive communications that support Lawson’s conclusions
Whether invention disclosure forms are privileged	Forms may be privileged	Defendants: forms are privileged but disclosure waived privilege	Court: forms are privileged, but their disclosure in the declaration worked to waive privilege for related communications
Whether selective disclosure can be used for tactical advantage	Plaintiffs: disclosure was limited and collateral	Defendants: selective disclosure for advantage, so fairness requires broader disclosure	Court: fairness requires preventing selective disclosure; waiver applies to communications supporting the disclosed legal opinions

Upjohn Co. v. United States, 449 U.S. 383 (attorney-client privilege protects confidential communications for legal advice)
In re Continental Ill. Sec. Litig., 732 F.2d 1302 (subject-matter waiver may extend beyond disclosed communications)
Fort James Corp. v. Solo Cup Co., 412 F.3d 1340 (unfair to rely on favorable legal opinions while protecting underlying communications)
In re Spalding Sports Worldwide, Inc., 203 F.3d 800 (invention-disclosure forms can be privileged)
Vardon Golf Co. v. Karsten Mfg. Co., 213 F.R.D. 528 (scope of waiver in patent cases should be narrow but informed by fairness)