Princeton Digital Image Corporation v. Office Depot Inc., 1:13-cv-00239

Princeton Digital Image Corporation (PDIC) sued multiple retailers for patent infringement; Adobe moved to compel discovery in related proceedings asserting PDIC waived privilege.
PDIC's corporate representative, Thomas Meagher, invoked attorney-client privilege and work-product protections during deposition on topics including pre-suit investigation, settlement algorithm, and a claim chart.
PDIC produced some communications (emails, spreadsheets, a claim chart, and interrogatory answers referencing expert consultation) that discussed pre-suit investigation and counsel involvement, and Meagher testified about counsel-assisted analyses.
PDIC nonetheless withheld other related materials (e.g., the settlement algorithm document) as privileged/work product, and refused to answer certain deposition questions.
Adobe argued PDIC waived privilege by (1) putting its state of mind and advice-of-counsel at issue to prove good-faith litigation, and (2) selectively disclosing privileged materials on the same subject matter.
The court granted Adobe’s motion to compel, finding PDIC’s combination of relying on privileged materials while selectively withholding related communications constituted a waiver requiring PDIC to produce witnesses and supplement discovery.

Issue	Plaintiff's Argument (PDIC)	Defendant's Argument (Adobe)	Held
Whether asserting good faith in filing suits alone waives privilege over attorney communications	PDIC: Putative good-faith assertion does not, by itself, waive privilege	Adobe: PDIC’s good-faith claim places counsel’s advice and related communications at issue	Court: Good-faith assertion alone insufficient, but waiver exists here because PDIC also relied on privileged communications to support that assertion
Whether selective disclosure of privileged materials waives privilege as to related communications (subject-matter waiver)	PDIC: Certain produced materials are not privileged; privilege claims over other related items remain valid	Adobe: Selective production of privileged communications and testimony waived privilege for same-subject materials; fairness requires disclosure	Court: PDIC’s selective use of privileged materials and testimony waived privilege as to related communications and documents
Whether PDIC must supplement production and provide a corporate witness to address topics Meagher refused to answer	PDIC: Privilege objections justified for those topics/documents	Adobe: PDIC must produce a witness and supplement interrogatories/documents on withheld topics	Court: Ordered PDIC to meet and confer and to comply with compelled production and supplementation by specified deadline

Rhone-Poulenc Rorer Inc. v. Home Indem. Co., 32 F.3d 851 (3d Cir. 1994) (advice-of-counsel placed in issue when client discloses or describes attorney communications to prove a claim or defense)
In re Intel Corp. Microprocessor Litig., 258 F.R.D. 280 (D. Del. 2008) (discussing fairness-based limits on extending waiver to undisclosed communications under FRE 502(a))
In re Grand Jury Subpoena Issued to Galasso, 913 A.2d 78 (N.J. Super. Ct. App. Div. 2006) (party cannot selectively disclose favorable privileged information while shielding unfavorable privileged communications)
Synalloy Corp. v. Gray, 142 F.R.D. 266 (D. Del. 1992) (fairness may require examination and disclosure of protected communications when privilege has been compromised)