MEMORANDUM OPINION AND ORDER
I. INTRODUCTION
In Aрril 1999, Vardon Golf Company, Inc. (“Vardon” or “Plaintiff’) initiated this patent infringement action involving a golf club head against Karsten Manufacturing Corporation (“Karsten” or “Defendant”). Following a jury trial before Judge David H. Coar, the jury rendered a verdict in favor of Karsten. In addition, the jury found that Vardon’s sole shareholder, Dillis V. Allen (“Allen”), engaged in inequitable conduct before the United States Patent Office by withholding prior art. Karsten then moved Judge Coar for a finding of inequitable conduct and to declare this case “exceptional” under 35 U.S.C. § 285 in order to recover its attorney’s fees. Kar-sten rеquested leave to propound discovery on these issues against Vardon, Allen, and Vardon’s counsel, Niro, Scavone, Haller & Niro, Ltd. (“Niro, Scavone”). Judge Coar granted the request.
Karsten initiated discovery regarding the issue of inequitable conduct by means of a document request served upon Vardon and Allen and a subpoena served upon Niro, Scavone. This case is before the Court on Karsten’s motion to compel production of documents being withheld. The issues to be decided are: 1) whether Vardon waived the attorney-client privilege and work prоduct doctrine protection when it discussed and quoted from certain attorney-client communications in a brief to the Seventh Circuit; and 2) whether the crime-fraud exception doctrine requires the documents be produced. For the reasons mentioned herein, Karsten’s motion is granted in part and denied in part.
II. BACKGROUND FACTS
A. The Litigation
On February 16,1999, Vardon entered into a Contingent Fee Agreement with Niro, Sea-
A jury trial was held in August of 2002, in which the jury found in favor of Karsten. In addition, the jury found that Allen had engaged in inequitable conduct before the Patent Office. Under patent law, a court may grant attorney’s fees to the prevailing party in exceptional cases. 35 U.S.C. § 285. After the judgment was entered, Karsten filed a motion requesting Judge Coar to find that Allen’s conduct before the Patent Office constituted an exceptional circumstance, thereby entitling Karsten to collect its fees from Var-don.
B. Niro, Scavone Seeks to Withdraw as Counsel
In the meantime, the relationship between Vardon and Niro, Scavone broke down. Niro, Scavone filed a motion to withdraw as counsel. On November 7, 2002, Judge Coar granted the motion to withdraw. Niro, Sca-vone also filed motions to withdraw in other pending Vardon patent eases in the Northern District of Illinois. Two of the other pending cases also involve the same defendant, Kar-sten. One is pending before Judge James B. Zagel (“99 C 6934”), and the other is pending before Chief Judge Charles P. Kocoras (“00 C 7721”). Upon receiving the motion to withdraw in case 99 C 6934, Judge Zagel asked Allen and Niro, Scavone to exchange letters to each other; Niro, Scavone was to explain the reasons for seeking withdrawal, and Allen was to explain the reasons he objected to the withdrawal. Niro, Scavone’s letter is dated November 18, 2002 (“November 18th letter”), and Vardon’s letter is dated November 19, 2002 (“November 19th letter”). A conference was later held with Judge Za-gel in chambers at which time he was given copies of the two letters for his review. As of this time, Judge Zagel has not ruled upon the motion. Judge Kocoras granted the motion to withdraw in Case 00 C 7721 on November 21, 2002.
C. Mandamus Petition To Seventh Circuit
Vardon filed three substantially identiсal petitions for writ of mandamus (“the petition”) with the Seventh Circuit asking the Seventh Circuit to direct Judges Coar, Zagel and Kocoras to deny Niro, Scavone’s motions to withdraw. The disclosures within the petition give rise to the issue now before this Court. In the petition, Vardon offered to provide the November 18th and 19th letters to the court, “if the court pleases, under seal, to maintain attorney-client privilege.” Def. Ex. E at 9. However, later in the petition, Vardon refers to the confidential communications and directly quotes from Niro, Sca-vone’s letter. Def. Ex. E at 15, 20. For instance, Vardоn states, “Niro, Scavone, told Judge Zagel that Dillis Allen has a pattern of not being candid with the Patent Office regarding prior art.” Def. Ex. E at 15. In addition, the petition states that “Niro, Sca-vone accused its own client of failing to call to the attention of the Patent Office certain prior patents alleged to be relevant to the patents in the case before Judge Zagel____” Id. '
The petition also includes direct quotes from the November 18th letter. Id. at 20. It states, “Mr. Vogt also stated, ‘Your sole motivation seems to be that you and Mr. Mazza agreed to leave Niro, Scаvone as the last man standing to foot your bill now in excess of $62,000 in unreimbursed expenses [Niro, Scavone] advanced on Vardon’s behalf.” ’ Id. Further, the petition states, “Niro, Scavone also states ‘in the matter pending before Judge Kocoras, Vardon is attempting to force us to continue to enforce patent rights which we have concluded may well be invalid in light of the prior art cited by Karsten.’ ” Id.
Karsten contends that the disclosures made in the petition written by Allen cover the subject matter of information ordinarily
D. Motion To Compel
Judge Coar granted Karsten leave to propound discovery. Karsten propounded eleven document requests on Vardon. Def. Ex. A. Vardon and Niro, Scavone refusеd to produce any documents citing the attorney-client privilege and work product doctrines. Kar-sten responded with a motion to compel which has been referred to this Court. Var-don’s response to the motion includes a privilege log describing each document responsive to Karsten’s discovery requests. Niro, Sca-vone and Vardon submitted copies of each document for in camera review. Thirty-four documents were submitted and reviewed by the Court.
III. DISCUSSION
A. Attorney-Client Privilege
Karsten argues that Vardon has waived its attorney-client privilege by revealing privileged communications in its brief to thе Seventh Circuit. This Court agrees. The only significant issue is the scope of the waiver.
1. Existence of the Privilege
To determine whether a document is protected by the attorney-client privilege, the Seventh Circuit has adopted the elements suggested by Dean Wigmore. McCook Metals, L.L.C. v. Alcoa, Inc.,
The purpose of the attorney-client privilege is “to encourage ‘full and frank communication between attorneys and their clients and thereby promote broader public interests in the observance of law and the administration of justice.’ ” Swidler & Berlin v. United States,
After an in camera review of the documents provided by both Vardon and Niro, Scavone, this Court finds that the following constitute attorney-client privileged communications.1
2. Waiver of the Attorney-Client Privilege.
The attorney-client privilege is based on a principle of confidentiality in order to enable attorneys to properly advise their clients. Eagle Compressors, Inc., v. HEC Liquidating Corp.,
The privilege is subject to waiver. Eagle Compressors,
The subject matter waiver doctrine embodies two principles: (1) only confidential matters should be protected by the attorney-client privilege, and (2) a party should not be permitted to “exploit selectivе disclosures for tactical advantage.” In re Consolidated Litig. Concerning Int’l Harvester’s Disposition of Wisconsin Steel,
[A] party cannot selectively divulge privileged information without impairing its attorney-client privilege as to the rest of that information concerning the same subject. ... In some instances, a tactical advantage of a limited disclosure may be readily apparent, and equity stridently counsels a finding that the privilege has been waived.
Id. (quoting B &J Mfg. Co. v. FMC Corp., 21 Fed. R. Serv.2d (Callaghan) 1119, 1119-20 (N.D.Ill.1975)).
Karsten argues that Vardon waived its attorney-client privilege protection when it revealed thе substance of those communications in its petition. Karsten further argues that Vardon waived its privilege to all other documents covering the same subject matter. This Court agrees that Vardon’s voluntary disclosure of portions of the privileged communications in the petition to the Seventh Circuit constituted a waiver of the attorney-client privilege.
Karsten first asserts that Vardon attached privileged documents to its public filing, the petition. This court was provided with a copy of the petition, but not with copies of attachments filed along with it. To the extent that Vardon attached privileged documents to his petition without placing them under seal for in camera inspection, this
Second, Karsten argues that Vardon’s reference to and quotation of the privileged communications waived the privilege. Var-don’s disclosure of privileged communications by quoting from and referring to the documents in the petition was a voluntary, as opposed to an inadvertent, disclosure. Allen is an attorney and cannot claim that his use of the communications in the petition was a mistake. Furthermore, although he did not disclose the entire communication, he selectively chose to reveal specific statements to the court and the public. Quoting from privileged documents was inconsistent with the confidential nature of the attorney-client relationship. Having selectively disclosed some of the communications, Allen waived Vardon’s attorney-client privilege protecting those communications.
The next issue is the scope of the waiver. Karsten argues that any confidential communication on the same subject matter of the disclosed communication should be produced in its entirety. While some courts may interpret subject matter waiver broadly, the scope of waiver in patent cases is generally construed narrowly. Graco Children’s Prodr nets, Inc. v. Dressier, Goldsmith, Shore & Milnamow, Ltd., No. 95 C 1303,
Courts in this circuit have held that production of some privileged documents waives the privilege as to all documents of the same subject matter. Chinnici D.C. v. Cent. Du-Page Hosp.,
After in camera review, this Court finds the following to constitute the subject matter for which the attorney-client privilege has been waived and for which Vardon and Niro, Scavone must produce portions of attorney-client communications which address these issues: 1) Niro, Seavone’s or Vardon’s identification of prior art references that Vardon or Allen knowingly and intentionally failed to bring to the attention of the U.S. Patent Office; 2) Niro, Scavone’s accusations that Vardon or Allen failed to call prior patents to the attention of the U.S. Patent Office; 3) Vardon’s attempts to force Niro, Scavone to continue to enforce patent rights which Niro, Scavone has concluded may be invalid in light of the prior art cited by Karsten and 4) that Niro, Scavone had full and complete knowledge of Vardon’s acts, conduct, and prior art since “late 1999” with regards to the patent applications before the U.S. Patent Office. This finding applies to all documents provided to the Court for in camera review. Vardon and Niro, Scavone are required to produce those portions of the documents which relate to the foregoing subjects.
This Court additionally finds that those portions of the attorney-client communications regarding Vardon’s fee dispute with Niro, Scavone are not relevant to Karsten’s motion for inequitable conduct and need not be produced.
B. Work Product Doctrine
\Karsten’s second argument is that Vardon waived the work product protection over these communications when it disclosed their contents in its petition. The attorney work product doctrine, first laid out in Hickman v. Taylor,
Subject to the provisions of subdivision (b)(4) of this rule, a party may obtain discovery of documents and tangible things otherwise discoverable under subdivision (b)(1) of this rule and prepared in anticipation of litigation or for trial by or for another party or by or for that other party’s representative ... only upon a showing that the party seeking discovery has substantial need of the materials in the preparation of the party’s case and that the party is unable without undue hardship to obtain the substantial equivalent of the materials by other means. In ordering discovery of such materials when the required showing has been made, the court shall protect against disclosure of the mental impressions, conclusions, opinions, or legal theories of an attorney or other representative of a party concerning the litigation.
Fed.R.Civ.P. 26(b)(3). This Court recently discussed the policies and principles which support the work product doctrine and incorporates that discussion by reference. Eagle Compressors,
After in camera review of all documents, this Court finds that the following documents are protected by the work product doctrine: (2) August 14th letter from Niro, Scavone to Vardon, (18) October 15th letter from McCarthy, Duffy to Vardon, (19) October 17th letter from Niro, Scavone to Vardon, and (28) November 18th letter frоm Niro, Scavone to Vardon. At the time these materials were prepared by Niro, Scavone and another attorney briefly representing Var-don; Vardon was in the throes of litigation. It had just lost the jury trial, it was contemplating an appeal, and was engaged in a dispute with its attorney over the firm’s continued representation of Vardon.
That these items fall under the protection of the work product doctrine does not end the inquiry, for just as a party may waive its attorney-client privilege protection, it may also waive work product protection. A waivеr occurs when the protected communications are disclosed “in a manner which ‘substantially increases the opportunity for potential adversaries to obtain the information.’ ” Blanchard,
Here, the protected material was disclosed in a public document to Karsten. Karsten accessed the confidential information by reading the publicly filed petition. Var-don’s voluntary disclosure of the November 18th letter waived the work product protection over the rеferences made in the petition. To the extent Niro, Scavone’s work product has not been shared with its client, it has not been waived. To the extent it was shared with its client and disclosed by Vardon in its petition for writ of mandamus to the Seventh Circuit, it has been waived-only to the extent disclosed. For purposes of this analysis, the extent of the waiver applies to those documents which Niro, Scavone disclosed to its client and which protection was waived by disclosure as discussed in Section III.A.2. above.
C. Crime-Fraud Exception.
Karsten argues that even if Vardon did not waive its attorney-client privilеge protection and work product doctrine protection by publicly disclosing the communication, the privileges are waived under the crime-fraud exception. It argues that the crime-fraud exception applies as a result of Vardon and
The crime-fraud exception provides that communications normally protected by the attorney-client privilege or by the work product doctrine are not protected if they relate to communications made in furtherance of a crime or fraud. Ventre v. Datronic Rental Corp., No. 92 C 3289,
The crime-fraud exception applies where the party attempting to circumvent the privilege can meet the following test: (1) a prima facie showing of fraud, and (2) the communications in question are in furtherance of the misconduct. Pandick, Inc. v. Rooney, No. 85 C 6779,
1. Prima Facie Showing of Fraud
In order to meet the first prong and to establish a prima facie case that would destroy the protection of attorney-client privilege and the work product doctrine, the party making the claim is required to establish the elements of common law fraud. Monon Corp. v. Stoughton Trailers, Inc.,
a. Fraud on the Patent Office
For a fraud on the Patent Office, the party must show: (1) a knowing, willful, and intentional act of misrepresentation or omission before the Patent Office, (2) materiality of the misrepresentation, or omission, and (3) actual relianсe by the Patent Office upon the misrepresentation or omission. Id. Although the prima facie evidence need not be enough to support a verdict in favor of the party making the claim, it is insufficient to merely advance allegations of fraud or to rely solely on a jury’s finding of inequitable conduct. Id. at 102.
Here, Karsten asserts that the jury’s finding in August 2002 that Allen engaged in inequitable conduct before the Patent Office establishes a prima facie showing of fraud. Inequitable conduct, however, is distinguishable as a lesser offense than common law fraud, and includes types of conduct less serious than “knowing and willful” fraud. Nobelpharma AB v. Implant Innovations, Inc.,
b. Litigation Misconduct as Fraud
Karsten also alleges that Allen is currently involved in litigation misconduct and argues that this establishes a prima facie showing of fraud to satisfy the crime-fraud exception. Some courts have held that a knowing pursuit of baseless litigation is sufficient to show the fraud element of the crime-fraud exception test. In Re Richard Roe, Inc.,
This Court’s in camera inspection of the documents produced fails to present any evidence that Niro, Scavone knowingly provided assistance to Allen in furtherance of litigation with “little or no legal or factual basis.”
2. Communication In Furtherance of the Fraud
Even if Karsten could establish the first element of the test by showing either fraud before the Patent Office or by pursuit of baseless litigation, the documents need not be produced unless Karsten can show that the communications in question were in furtherance of either the fraud against the Patent Office or litigation misconduct.
In making this determination, the Court must examine whether the work product sought has “some valid relationship” to the asserted prima facie fraud sufficient to warrant the waiver of the work product doctrine. Pandick,
Here, the documents requested are communications between Niro, Scavone and its client after the jury verdict in August of 2002. Niro, Scavone’s communications after the trial in late 2002 can not be in furtherance of the fraud on the Patent Office. Niro, Scavone was not representing Allen or Var-don in 1993 when Allen engaged in the misconduct before the Patent Office. Thus, there could have been no relationship between the current communications and a fraud that occurred nine years earlier.
Moreover, the in camera review indicates that the communications in question expressed mental impressions and legal strategies regarding Niro, Scavone’s future representation of Vardon and provided no advice or assistance in pursuit of alleged ongoing fraudulent litigatiоn.
For the above reasons, this Court holds that Karsten did not establish the first prong of the crime-fraud exception, a prima facie showing of fraud. Even if it could, Karsten did not meet the second prong because it failed to show that the communications in question were in furtherance of any crime or fraud. Thus, the crime-fraud exception doctrine does not apply.
D. Privilege Log Documents Not Addressed Above.
Some of the documents on Vardon’s privilege log were not addressed in the above discussion. The following are not protected under the above privileges, but need not be produced by Vardon because they аre not relevant to the discovery requests or the litigation: (3) August 14th letter from Niro, Scavone to Vardon, (9) September 3rd letter from Vinson & Elkins to Niro, Scavone, (10) September 6th letter from Niro, Scavone to Vinson & Elkins, (13) September 17th letter from Niro, Scavone to McCarthy, Duffy, (14) October 3rd letter from Niro, Scavone to Vardon, (17) October 14th letter from Niro, Scavone to Michael Mazza, (21) October 18th letter from Niro, Scavone to Vardon, (22) October 21st letter from Niro, Scavone to Vardon, (23) October 22nd letter from McCarthy, Duffy to Niro, Scavone, (27) November 8th letter from Niro, Scavone tо Vardon, (31) November 21st letter from Han-nafan & Associates to Judge Zagel, (32) December 18th letter from Niro, Scavone to Vardon, and Niro, Scavone’s document seven, the November 14th letter from Niro, Scavone to Vardon. In addition, the following documents need not be produced as the certificate of service on each one indicates that Vardon has already produced it to opposing counsel: (24) the October 30th letter to Judge Kocor-as, (25) the October 30th letter to Judge Coar, and (26) the October 30th letter to Judge Zagel.
IV. CONCLUSION
For the above mentiоned reasons, Vardon has waived the attorney client-privilege pro
Notes
. Defendant's exhibits are attached to Karsten's Motion To Compel.
. Both Niro, Scavone and Vardon filed documents under seal and privilege logs. Niro, Sca-vone's privilege log contains two documents not included by Vardon. References are to Vardon's privilege log unless otherwise noted. Vardon’s log is not numbered; references are made as if the list had been numbered and by the date and description of the item.