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Knauf Insulation, LLC v. Johns Manville Corporation

United States District Court, S.D. Indiana, Indianapolis Division

October 1, 2019

KNAUF INSULATION, LLC, KNAUF INSULATION GmbH, KNAUF INSULATION SPRL, Plaintiffs,
v.
JOHNS MANVILLE CORPORATION, JOHNS MANVILLE, INC., Defendants.

          ORDER ON DEFENDANTS’ MOTION TO COMPEL PRODUCTION OF CERTAIN DOCUMENTS RELATING TO COMMUNICATIONS WITH FOREIGN PATENT AGENT GUY FARMER

          MARK J. DINSMORE JUDGE

         This matter is before the Court on Defendants’ Motion to Compel Production of Certain Documents Relating to Communications with Foreign Patent Agent Guy Farmer [Dkt. 427]. For the reasons set forth below, the Court DENIES the motion.

         I. Background

         The Plaintiffs in this case (hereinafter referred to as “Knauf”) allege that certain insulation products manufactured and sold by the Defendants (hereinafter referred to as “JM”) infringe upon certain patents held by Knauf. Specifically, as relevant to the instant motion, Knauf alleges that JM’s products infringe U.S. Design Patent Number D631, 670 (the “D’670 Patent”), which patents the appearance of certain insulation.

         At issue in the instant motion is Knauf’s claim of privilege over certain communications between Knauf and Guy Farmer, who is a licensed patent attorney in the United Kingdom. Farmer provided Knauf with legal advice related to Knauf’s application for the D’670 patent as well as other patent-related issues. In response to a subpoena from JM, Farmer produced to Knauf’s counsel approximately 32, 000 documents. Knauf has withheld thousands of those documents as privileged; at issue in the instant motion are a subset of those withheld documents (hereinafter referred to as “the Farmer Documents”).[1]

         II. Discussion

         The issue before the Court is whether and to what extent the Farmer Documents are privileged. JM argues that existing law unambiguously dictates a finding that no privilege applies. Specifically, JM argues that the “only appropriate test” for the Court to apply is the “touch base test, ” [Dkt. 499 at 8], and that “[a] straightforward application of the touch base test compels a ruling in JM’s favor because Knauf’s communications with Farmer are not privileged under U.S. law.” [Dkt. 499 at 5.] The Court will assume, without deciding, for the purposes of this ruling that the touch base test is the appropriate test.[2] The Court also will assume, without deciding, that all of the Farmer Documents actually “touch base” with the United States for the purposes of applying that test. The question, then, is whether, given those assumptions, JM is correct that none of the Farmer documents are privileged. For the reasons set forth below, the Court finds that JM’s position is untenable.

         A. The Touch Base Test

         The touch base test is a choice-of-law test used to determine which country’s law applies to questions of privilege relating to communications with foreign legal professionals such as Farmer.

Under the “touch base” doctrine, where privileged communications took place in a foreign country or involved foreign attorneys or proceedings, courts defer to the law of the country that has the “predominant” or “the most direct and compelling interest” in whether those communications should remain confidential, unless that foreign law is contrary to the public policy of this forum. The jurisdiction with the “predominant interest” is either the place where the allegedly privileged relationship was entered into or the place in which that relationship was centered at the time the communication was sent.

In re China Med. Techs., Inc., 539 B.R. 643, 652 (S.D.N.Y. 2015) (citations and internal quotation marks omitted).

         JM’s argument is premised on the following assertion:

Farmer is a “patent agent” in the United Kingdom, but he is not a lawyer. Farmer does not have a law degree; he is not an attorney, barrister, or solicitor in the United Kingdom or in any other country. Farmer is not barred to practice law before any U.S. state or federal court. And Farmer is not a licensed patent agent before the U.S. Patent & Trademark Office and is thus prohibited from representing clients in any matters-including patent prosecutions-pending before that Office. See 35 U.S.C. § 2(b)(2)(D); 37 C.F.R. § 11.5 (describing practice before the U.S. Patent Office); 37 C.F.R. § 11.6 (entitled “Registration of attorneys and agents”); 37 C.F.R. Part 11, Subpart D, §§ 11.100-11.901 (U.S. Patent Office rules of professional conduct).

[Dkt. 428 at 10-11 (footnotes omitted).] JM argues:

Farmer may refer to himself as a “patent attorney, ” but-with no law degree or license to practice law-his status is commeasure [sic] with that of a “patent agent” in this country. See In re Certain Intraoral Scanners & Related Hardware & Software, U.S. ITC Inv. No. 337-TA-1090, Order No. 24, 2018 WL 4241924, at *2 (Aug. 3, 2018) (noting “a European Patent attorney” who had ...

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