MEMORANDUM OPINION AND ORDER
Plaintiff, Beneficial Franchise Company, Inc. (“Beneficial”), has brought this action alleging that each of the defendants is willfully infringing three United States patents owned by Beneficial relating to the systems, methods and implementation of two tax products, which are known as refund anticipation loans (“RALs”) and refund anticipation checks (“RACs”). The patents in suit are U.S. Patent Nos. 4,890,228, issued on December 26, 1989 (“the ’228 patent”); U.S. Patent No. 5,193,057, issued on March 9, 1993 (“the ’057 patent”); and U.S. Patent No. 5,963,921, issued on October 5, 1999 (“the ’921 patent”). Defendants have asserted a variety of defenses, including the defense that Beneficial’s claims are barred by equitable estoppel. Under the scheduling order set by the district judge on October 19, 2000, the defendants are required to disclose by July 31, 2001 whether they also will be asserting reliance on the advice of counsel as a defense to the assertion that any infringement was willful.
Presently pending before the Court are two motions related to disputes аrising from the defendants’ assertion of privilege in response to certain of Beneficial’s discovery requests.
The first dispute involves the scope of production that defendant Bank One must make as a result of its decision to produce otherwise privileged materials from the files of an attorney, Donald Huff. Mr. Huffs file contains opinions concerning the validity and enforceability of the ’228 patent in 1989 and related materials. Beneficial claims that because Bank One has indicated that the Huff opinions formed a basis for its equitable es-toppel defense, Bank One has waived the attorney-client and work product privileges as to all documents relevant to the equitable estoppel defense, irrespective of when they were created or whether they were created by Bank One’s trial counsel. Bank One disagrees with the scope of waiver asserted by Beneficial. Bank One concedes thаt it is required to produce all otherwise privileged documents relating to the subject matter of the Huff opinions that predate January 7, 2000. However, Bank One asserts that it should not be required to produce any documents generated on or after January 7, 2000, which is the date that Beneficial sent Bank One a letter offering a license on the ’057 and ’921 patents (Defs.Resp., Ex. 7). Implicit in Bank One’s position is the proposition that equitable estoppel based on Beneficial’s alleged failure to enforce would not be asserted for actions occurring after that date, because any subsequent reliance on Beneficial’s failure to enforce its rights would be unreasonable in light of the license offer. But, Bank One has not squarely stated that it will not assert equitable estoppel for actions on or after January 7, 2000. As a result of this dispute, Beneficial has filed a motion to compel production of documents (doс. # 104).
The second dispute initially arose between Beneficial and Bank One, but now involves all parties in the case. This dispute involves documents relating to what are known as “cross-collection agreements.” Under a
For the reasons set forth below, each of Beneficial’s motions (doc. ## 104, 106) is granted in part and deniеd in part. The Court begins with a discussion of the governing legal principles. We will then turn to an analysis of each of the motions.
I.
The attorney-client privilege serves the important policy of fostering “full and frank communication between attorneys and their clients and thereby promote[s] broader public interest in the observance of law and administration of justice.” Upjohn Co. v. United States,
The work-product doctrine, like the attorney-client privilege, provides an exception to the otherwise liberal discovery rules. A fundamental purpose of the work product doctrine is to “avoid deterring a lawyer’s committing his thoughts to paper.” Frederick,
Both the attorney-client and work-product privileges may be waived. Perhaps the most common instance of waiver is where an otherwise privileged communication is disclosed to a third party outside the scope of the privilege. In re Air Crash Disaster at Sioux City, Iowa,
Where two or more persons jointly consult an attorney concerning a mutual concern,*216 “their confidential communications with the attorney, although known to each other, will of course be privileged in the controversy of either or both of the clients with the outside world....” (citations omitted). Moreover, the joint defense privilege cannot be waived without the consent of all parties to the defense, except in the situation where one of the joint defendants becomes an adverse party in a litigation. (Citation omitted).
Ohio-Sealy Mattress Manufacturing Co. v. Kaplan,
Another instance in which the privilege may be waived is “when the client asserts claims or defenses that put his attorneys’ advice at issue in the litigation.” Garcia v. Zenith Electronics Corp.,
In determining when the attorney’s advice is put at issue, the Court adopts the approach set forth in Rhone-Poulenc Rorer, Inc. v. Home Indemnity Co.,
Rhone-Poulenc reflects an effort to strike a balance between the principle that waivers of the attorney-client privilege are to be narrowly construed, see, e.g., Katz v. AT & T,
On the other hand, the fairness equation tips in the other dirеction when a party chooses to utilize privileged information to advance a claim or defense. That is the rule adopted by Rhone-Poulenc, which the Seventh Circuit has cited with approval. Garcia,
When the privilege is waived, the question as to the scope of the waiver invariably arises. Certainly, the waiver extends beyond the particular opinions or communications that the party chooses to disclose. Having opened the door to certain privileged information in an effort to advance its cause, as a matter of fairness a party must disclose other privileged materials involving the subject matter of the disclosed communications. That rule prohibits a party from “disclosing] opinions which support its position, and simultaneously concealing] those [opiniоns] which are adverse.” Thermos Co. v. Starbucks Corp., 96 C 3833,
In this case, there is also a dispute concerning the time scope of any waiver. Beneficial argues that the waiver extends to all communications concerning the subject matter of the Huff opinions, including privileged communications with trial counsel generated after April 21, 2000, the date on which this suit was filed. For its part, Bank One asserts that the waiver is limited in time scope to those documents generated prior to January 7, 2000, which is the date that Beneficial offered a license on two of the patents in suit. The Court does not agree with either position.
In Dunhall Pharmaceuticals, Inc. v. Discus Dental, Inc.,
Although the Court recognizes plaintiffs valid interest in discovering all work-product related to the subject matter of the asserted defense, that interest must be balanced with defendants’ countervailing interest in protecting their work product. Although defendants have waived work-*218 product protection by asserting the advice of counsel defense, that waiver is not absolute ... [flollowing the filing of the lawsuit, defense counsel is engaged in critical trial preparation, often including analysis of the weakness of their client’s case. Such analysis, while likely related to the subject matter of the asserted defense, is fundamentally different from a similar pre-litigation analysis. In comparison to work product produced prior to the filing of the lawsuit, litigation-related work product deserves greater protection.
Based on this observation, the court in Dun-hall thus held that “[o]nce the lawsuit is filed, the waiver of work-product protection ends.”
The Court believes that the approach in Starbucks Corp. is preferable to the “bright line” cutoff used in Dunhall based on the date that suit was filed. The overriding principle is one of fairness. When a party chooses to inject into the case attorney opinions, fairness is served by allowing the opposing party to have access to documents casting doubt or contradicting those opinions — even if prepared by trial counsel after suit was commenced. Moreover, we believe that that is consistent with what a party’s expectation should be if he or she chooses to inject attorney advice into the case — a party cannot fairly expect to offer only the privileged informаtion which he or she deems helpful, and to withhold the rest.
Thus, we will apply the Starbucks Corp. approach to documents and communications by trial counsel after suit was commenced, with one revision. In Starbucks Corp., the Court limited the disclosure to conclusions that contradict or cast doubt on the disclosed opinions, but only if they were communicated to the defendants. In Dunhall, the Court persuasively explained why such materials should be disclosed even if there is nothing in the attorney files indicating that they were communicated to the client:
“[Cjertainly it would not be rational to assume that everything in counsel’s files reached the client, or that counsel communicated to the client all of what he or she really thought, but it would be comparably irrational to assume that there could be no relationship between what counsel really thought (as reflected in her private papers) and what she in fact communicated to her client. In this important sense, evidence about what really was in the lawyer’s mind could be quite relevant to the issue of what was really in the client’s mind.”
II.
In light of these principles, we turn first to Beneficial’s motion to compel production of documents related to the Huff opinions. There are three categories of documents at issue in this motion, which we address in turn.
First, although there appears to be no dispute that the documents from Mr. Huffs file that predate January 7, 2000 have been produced, Beneficial complains that
Second, Beneficial argues that it is entitled to documents from the Huff files or Bank One’s files, generated on or after January 7, 2000, but before the filing of the lawsuit on April 21, 2000. The Court agrees. The Court finds no principled basis to exclude from the scope of the waiver documents created on or after January 7, 2000. The implicit premise of Bank One’s proposed cutoff at that date is that there would not be an equitable estoppel defense for its conduct after that date, in light of the letter by Beneficial indicating that it would permit use of the ’921 and ’057 patents only upon a license. See, e.g., 1/7/00 letter from Peck to Galvin (Def.’s Resp. Ex. 7). However, Bank One has not squarely abandoned the equitable estoppel defense for conduct on or after January 7, 2000. And even if Bank One made such a representation, documents generated on or after January 7, 2000 relating to the subject matter discussed in the Huff opinions still could shed light on what role, if any, the Huff opinion had in Bank One’s conduct. Those documents, no less than documents generated prior to January 7, 2000, would be “helpful in determining whether [Bank One] relied on [Beneficial] or rather on its own patent lawyers’ advice” and are within the scope of the waiver. Southwire,
Third, Beneficial argues that it is also entitled to documents generated after the filing of this lawsuit that relate to the subject matter of the Huff opinions, even if they were generated by trial counsel. On this point, the Court agrees with Beneficial in part. As for any documents created by lawyers other than trial counsel, the Court finds no reason not to require their production as within the scope of the waiver, without limitation. With respect to such documents that have been prepared by trial counsel, for the reasons described above, the Court finds that those documents must be produced only to the extent that they contradict or cast doubt on the Huff opinions. For the reasons stаted above, such documents must be produced irrespective of whether, on their face, they indicate that they were transmitted to Bank One.
III.
Beneficial’s motion in connection with the cross-collection agreements is based on the defendants’ responses to two interrogatories, the text of which we set forth in full below:
INTERROGATORY NO. 13: Identify the date, time, place and participants in (including attorneys) all conversations among the defendants and/or their attorneys concerning any collection agreement(s) entered into by any of the defendants with Beneficial Household Bank, f.s.b., and/or Beneficial National Bank. INTERROGATORY NO. 14: Describe in detail the substance of the conversations referred to in the previous interrogatory.
On February 21, 2001, the Court ordered each of the defendants to supplement their responses to these interrogatories, and to provide a privilege log for documents or con
A.
One category of conversations logged by the defendants involves discussions between representatives of the various defendants outside the presence of trial counsel, and documents pertaining to those conversations. These conversations took place on June 30, 2000, October 11 or 12, 2000 and on February 2001. The June 2000 conversation involved a representative of Bank One discussing with representatives of Santa Barbara and Republic settlement discussions that Bank One had with Beneficial. The October 2000 conversation involved a representative of Bank One reporting to a representative of Santa Barbara the substance of settlement discussions with Beneficial. The February 2001 conversation involved representatives of Republic in Santa Barbara concerning litigation strategy. Defendants acknowledge that in each of these conversations, the subject of cross-collection agreements between various of the defendants and Household was addressed. Beneficial asserts that none of these conversations is privileged, because (1) defendants have failed to establish that there is a joint defense agreement among them; (2) even if there is a joint defense agreement, the conversations at issue do not fall within the parameters of a joint defense privilege; and (3) in all events, discussions about settlement are not privileged.
With respect to existence of a joint defense agreement, the parties needlessly debate the significance of the defendants’ failure to produce the written joint defense agreement they say exists. Beneficial asks that a “negative inference” be drawn from the failure to produce the written joint defense agreement (Pl.’s CCA Motion at 10), without explaining what that inference should be. The defendants, for their part, say that they did not produce the joint defense agreement to Beneficial “in part” because Beneficial asserted that disclosure might constitute a broad waiver of privilege (Defs.’ CCA Joint Response, at 13 n. 3). Rather than indulge in speculation, the Court has asked for and received the Joint Defense Agreement for an in camera inspection. That document confirms what defendants have asserted, and what one would expect from reviewing plaintiffs allegations and the defenses each of the defendants has raised: that there exists a common interest among the defendants in the defense of the infringement claims asserted by Beneficial, such thаt the common interest privilege can apply to the defendants in this case.
However, the fact that the defendants have a common interest in the defense of this case does not automatically render every communication between them subject to the common interest privilege. As this Court explained in IBJ Whitehall, the common interest rule covers communications between non-lawyers of multiple parties with a common interest, but only if (1) one party is seeking confidential information from the other on behalf of an attorney; (2) one party is relaying confidential information to the other on behalf of an attorney; and (3) the parties are communicating work-product that is related to the litigation. IBJ Whitehall Bank & Trust v. Cory & Assocs.,
On the other hand, the description of the February 2001 conversation set forth in defendants’ brief (Defs.’ Joint Response at 10) on its face indicates that the discussions between business people from Republic and Santa Barbara conveyed confidential communications from them respective attorneys, and would fall within the common interest privilege. The Republic interrogatory response sets forth this information, but the
Although the June and October 2000 conversations do not qualify for the common interest privilege, there remains the question of what information from those discussions must be produced. It appears from the description of those conversations, and from the documents relating to the June 2000 conversation, that the principle topic of discussion was settlement, with the cross-collection agreements being raised in connection with those conversations. The Court finds that defendants need not disclose more about the details of those conversations for the following reasons.
First, as a threshold matter, we reject plaintiffs assertion that discussions about settlement are distinct from any common litigation interest (Pl.’s Mot. at 12). The cases cited by plaintiff do not make this distinction. See, e.g., Schachar v. American Academy of Ophthalmology, Inc.,
Further, the Court agrees with the authorities that generally find it unwise to allow one party to obtain discovery about the private settlement positions of opposing parties in ongoing litigation. See, e.g., Mars Steel Corp. v. Continental Illinois National Bank and Trust Company of Chicago,
Second, even if the Court were inclined to allow discovery of settlement discussions, the particular interrogatories in question do not seek that information. Those interrogatories ask for conversations concerning cross-collection agreements. And while plaintiff suggested otherwise in its motion (Pl.’s Cross-Collection Motion, at 5-6), in its reply plaintiff admits that its discovery requests seek information “concerning the cross-collection agreements, not settlement” (Pl.’s Cross-Collection Reply, at 7). The fact that the subject of cross-collection agreements arose during these conversations does not entitle plaintiff to have access to the discussions concerning settlement positions.
Third, in assessing discoverability, the Court considers whether the requested information is relevant to a claim or defense in the case. In this case, plaintiff asserts that the cross-collection agreements are relevant because they form a fundamental basis of the equitable estoppel defenses alleged by each of the defendants (Pl.’s Cross-Collection Motion, at 2). The Court agrees. However, upon reviewing carefully the briefs and the arguments presented, the Court concludes that plaintiff stretches the point too far by arguing that this means that all materials relating to the cross-collection agreements, even those created up to present day, are discoverable. The Court’s review of the descriptions of the June and October 2000 conversations, and the notes concerning the June 2000 conversation, do not indicate any discussions concerning the cross-collection agreements with Household that bear on defendants’ assertion of those agreements as a basis for the equitable estoppel defense. Thus, for all of these reasons, the Court believes that neither the documents, nor any further description of those conversations, need be produced at this time.
B.
A number of the conversations logged in Response Interrogatory No. 13 took place between trial counsel for the various defendants. Beneficial raises essentially two arguments in an effort to require disclosure of the substance of those conversations, neither of which the Court finds persuasive.
First, Beneficial argues thаt these defendants have not established a basis for the common interest doctrine to apply. For the reasons explained above, the Court disagrees. The nature of the claims raised by Beneficial against all defendants, the common interest these defendants have in addressing those claims, the absence of any identified conflict among the defendants in their positions with respect to the case, and the fact that their pursuit of a common defense is memorialized in a written joint defense agreement, all show that the common interest doctrine certainly may apply here.
Second, Beneficial argues that the defendants have failed to sufficiently substantiate
October 9, 2000: The amended responses to Interrogatory No. 13 indicate that counsel for Bank One and Santa Barbara discussed cross-collection agreements on that date. The interrogatory responses do not indicate what work-produet was discussed, but defendants’ brief expands on that description by indicating that the discussions “were in the context of coordinating trial and discovery scheduling,” and any discussion of cross-collection agreements was concerning past agreements as they “may impact available defenses” (Defs.’ Cross-Collection Joint Mem. at 11). This kind of conversation between attorneys representing defendants with a common interest is protected. However, the Court will require Santa Barbara and Bank One to amend their respective interrogatory responsеs to provide, on oath, the level of detail set forth in the brief.
October 31, 2000: The interrogatory answers from all defendants indicate that a conversation took place on this date among trial counsel representing all defendants. The interrogatory responses for Republic and River City state that the conversation involved “the litigation and joint defense litigation strategy” in the case, and that cross-collection agreements also were discussed; Bank One’s and Santa Barbara’s interrogatory responses do not provide this level of detail. But in their joint brief, the defendants elaborate that this meeting took place in the courthouse cafeteria, and involved the discussion of the case in general terms, and that cross-collection agreements were discussed only for the purpose of distinguishing them from other types of agreements in the industry, and that “neither specific terms of any past or future agreements, nor any future course of action, were discussed” (Defs.’ Cross-Collection Joint Mem., at 11). Once again, the information provided in the interrogatory answers and the brief satisfy the Court that these conversations fall within the common interest rule; however, the Court will require all defendants to amend then-respective interrogatory responses to include the level of detail set forth in the brief concerning the October 31 conversation.
Late January 2001: Santa Barbara’s interrogatory response indicates that sometime during the last week of January 2001, Santa Barbara’s trial counsel had a conversation with Bank One’s trial counsel (although Bank One’s interrogatory response does not list this conversation). The interrogatory response by Santa Barbara does not specifically state that trial strategy or preparation was discussed (although the interrogatory says that the conversation was of the same type as in October 2000, which in the brief the defendants say involved scheduling trial strategy and legal defenses). Accordingly, the Court will require Santa Barbara to amend this interrogatory response to provide a statement, on oath, that the conversation involved discussion of scheduling, trial strategy and legal defenses.
February 7 and 21, 2001: The defendants indicate that on February 7 and February 21, 2001, after court appearances, discussions took place among trial counsel for all defendants, in which cross-collection agreements were discussed. The Republic and River City interrogatory responses specifically state that the discussion concerned the litigation and joint defense strategy; the Santa Barbara and Bank One interrogatory responses do not so state. But in their joint brief, the defendants state that in the conversations following these court hearings, the defendants discussed matters of common litigation interest, such as the invalidity of patents. The Court will require all dеfendants to amend their interrogatories, to provide specific statements that trial strategy or trial preparation was discussed at these meetings, and to conform with the level of detail provided in the brief.
Other Conversations in February 2001: Defense counsel all indicate that there were other conversations among all or some of them during February 2001. Republic and
As is clear from the forеgoing discussion, the Court will require the defendants to amend their interrogatory responses to provide, on oath, a statement that the discussions at issue involved trial preparation, trial strategy or other work product that falls within the common interest rule. But the Court will not accept plaintiffs invitation to go much farther, and to require each trial counsel to provide an affidavit setting forth a detailed explanation of the substance of the conversations (Pl.’s Cross-Collection Motion, at 11 n. 4). Certainly, the plaintiff is not entitled to see that detailed explanation, since to do so would result in eviscerating any privilege in order to verify the one that exists. And while it is the Court’s province and responsibility to determine questions of privilege, the Court believes it prudent to proceed with caution in requiring trial counsel to prepare memoranda of their conversations, for the purpose of logging them and submitting them for Court reviеw. Typically, the Court should not be privy to a party’s private trial strategy, any more than should the adverse party. Here, the Court does not find a sufficient basis to believe it appropriate to require the trial counsel for the defendants to tell the Court, in chapter and verse, the nature of their joint defense discussions concerning cross-collection agreements. Moreover, to adopt plaintiffs proposal would lead to a never ending cycle requiring logging and affidavits of all discussion among defense counsel or among the respective defendants. The Court declines to pursue such a wasteful, intrusive and unnecessary path.
C.
Finally, the Court addresses the remaining arguments made by Beneficial on the cross-collection agreements.
First, Beneficial says that the defendants improperly failed to log discussions concerning cross-collection agreements that may exist between and among thе various defendants (Pl.’s Cross-Collection Motion, at 13). Whether that information is discoverable the Court need not consider at this time, because plaintiffs interrogatory does not ask for it. The interrogatory specifically asks for information concerning conversations concerning cross-collection agreements between any of the defendants and Beneficial — not collection agreements between the defendants. It is not surprising that the request was framed in terms of the conversations concerning collection agreements between defendants and Beneficial, because it is those cross-collection agreements (and not any such agreements between various defendants) that are asserted as a basis of the defendants’ equitable estoppel defenses. The Court will not rewrite the interrogatory to seek information that is not requested by its plain terms.
Second, plaintiff argues that the defendants hаve not logged conversations if they did not “specifically relate” to discussions concerning cross-collection agreements with Beneficial-related entities (Pl.’s Cross-Collection Motion, at 13). The defendants’ description of the conversations they have logged, however, is inconsistent with that argument. According to the defendants, they have logged conversations about cross-collection agreements, even if they came up peripherally in discussions concerning other matters. Plaintiff has provided no reason why the Court should doubt those descriptions.
Third, plaintiff argues that certain defendants have not logged conversations that took place after the filing of this lawsuit (Pl.’s Cross-Collection Motion, at 13). Once again, both the interrogatory responses, which log conversations that took place exclusively af
CONCLUSION
Fоr the foregoing reasons, plaintiffs motion to compel (doc. # 104-1) is granted in part and denied in part. The documents to be produced pursuant to this ruling on the motion to compel shall be produced on or before May 21,2001.
Plaintiffs motion to compel discovery relating to cross-collection (doc. # 106-1) is granted in part, to the extent that the Court will require further supplementation to Interrogatory No. 13. The supplemental responses shall be served on or before May 21, 2001. In all other respects, the motion to compel discovery relating to cross-collection is denied.
Notes
. The Court notes that in the lead case in this district on the waiver of privilege in connection with the assertion of an equitable estoppel case, Southwire, the district court did not hold that the mere assertion of the estoppel defense created a waiver: rather, the Court held that the assertion of that defense, "coupled with [defеndant's] use of its patent counsel's opinions to prove reliance in connection with another issue in the case, has waived the attorney-client privilege and put those opinions and the question of its actual reliance in issue.”
. The authorities cited by plаintiff in support of its position that settlement materials are generally discoverable are inapposite. In Starbucks, the settlement documents plaintiff sought from the defendant already had been provided by the defendant to plaintiff during settlement negotiations.
. We note that plaintiff has the identity of the individuals who were involved in the conversations, and this order does not foreclose plaintiff's counsel from asking those individuals during deposition about non-privileged conversations they had concerning cross-collection agreements with Household, and what reliance they placed on those agreements in establishing or continuing to operate their own RAL or RAC programs.
. Plaintiff contends that the defendants were required to log or produce "materials generated by counsel in responding to the interrogatories” (Pl.'s Cross-Collection Motion, at 13-14). The Court disagrees.