Wi-LAN, Inc. v. LG Electronics, Inc.
684 F.3d 1364
Fed. Cir.2012Background
- Kilpatrick Townsend appeals contempt sanctions tied to a subpoena for communications between Kilpatrick Townsend and Wi-LAN in a California case related to Wi-LAN’s patent rights and LG’s royalties dispute.
- Wi-LAN disclosed a confidential Townsend letter (Dec. 21, 2009) to LG; the letter analyzed Wi-LAN’s patents and argued LG owed royalties.
- LG subpoenaed Townsend’s Palo Alto office for documents/testimony; LG asserted waiver of Wi-LAN’s privilege due to disclosure.
- Kilpatrick Townsend argued the privilege waiver should be limited to the Townsend letter under fairness and Rule 502(a); district court rejected these arguments.
- District court held Kilpatrick Townsend in contempt and ordered production costs; magistrate and district court opinions were based on the district court’s handling of privilege and waiver.
- Ninth Circuit vacated the production order and contempt sanctions and remanded for further proceedings on the scope of waiver with fairness considerations.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether fairness balancing governs waiver scope after extrajudicial disclosure | LG argues broad waiver of privilege | Kilpatrick Townsend argues waiver should be narrow to Townsend letter | Fairness balancing required; remand for scope determination |
| Whether Rule 502(a) governs extrajudicial pre-litigation waivers | LG contends Rule 502(a) does not govern pre-litigation waiver scope | Kilpatrick Townsend argues Rule 502(a) should apply in context | Court would apply fairness approach; Rule 502(a) discussion deferred to remand |
| Whether contempt sanctions were properly imposed given privilege error | Kilpatrick Townsend contends error excuses noncompliance | LG supports sanctions | Contempt sanctions vacated; remand to consider proper remedy |
| What is the appropriate disposition on remand regarding waiver and sanctions | N/A (procedural posture on remand) | N/A | Orders vacated and remanded for new invocation of fairness analysis and potential reconsideration of contempt |
Key Cases Cited
- In re von Bulow, 828 F.2d 94 (2d Cir. 1987) (fairness inquiry in waiver cases; extrajudicial disclosures limited to what was revealed)
- Chevron Corp. v. Pennzoil Co., 974 F.2d 1156 (9th Cir. 1992) (limited scope of express waivers; fairness used for implied waivers)
- United States v. Mendelsohn, 896 F.2d 1183 (9th Cir. 1990) (extrajudicial disclosures with narrow, subject-matter waivers)
- Bittaker v. Woodford, 331 F.3d 715 (9th Cir. 2003) (en banc; endorses fairness considerations in waiver context)