Before 2017

Attorney-Client Privilege, Common Interest Privilege, and Deposition Preparation Approaches at Center of NDGA Order

Wangs Alliance Corp. d/b/a WAC Lighting v. Lumien Enterprise, Inc., d/b/a Lumien Lighting, Civil Action No. 1:21-cv-05270-VMC (N.D. Ga., Nov. 22, 2022)

Judge Calvert continues to dig in on patent infringement cases, tackling substantive patent issues and related issues, this time is a dispute in which a Georgia-based light-fixture business is accused of breaching a settlement agreement and infringing several mechanical patents related to exterior light fixtures.

Last year, Wangs Alliance Corp. (“WAC”) filed a lawsuit in the Northern District of Georgia against Lumien for breach of contract and infringement of five mechanical patents—U.S. Patent Numbers 10,323,832 (“the ’832 Patent”); 10,465,888 (“the ’888 Patent”); 10,571,101 (“the ’101 Patent”); 10,920,971 (“the ’971 Patent”); and 10,598,358 (“the ’358 Patent”) (collectively, “Patents-in-Suit”). The Patents-in-Suit are generally directed to user-adjustable, waterproof landscape or exterior light fixtures with on-board dimming controls and beam-angle controls that remove the need for frequent installation and disassembly.

Over the summer, WAC deposed Lumien’s CEO, Operations Manager, and a former executive. Lumien conducted deposition prep-sessions before each deposition in this case. WAC moved to compel Lumien to disclose the contents of these discussions with Lumien’s personnel.

WAC made two arguments. First, they argued these communications were not protected by the attorney-client privilege because the former executive, Mr. Ma, was present during the communications. Second, WAC argued the CEO, Mr. Zhang, waived his privilege when he discussed the content of the disputed communications during his deposition. WAC argued these communications were essential to learning the Lumien personnel’s understanding of the settlement agreement’s terms. “Further clarification of these issues is essential to WAC’s case in light of Mr. Zhang recanting his interrogatory responses from earlier litigation regarding sales allegedly in violation of the settlement agreement.” See Br. Supp. Mot. At 4, Doc. 46-1.

After reviewing the deposition transcript and the circumstances of the case, Judge Calvert found that portions of Mr. Ma’s communications that were unrelated to his role at Lumien and unrelated to the claims in the case were not privileged. Judge Calvert also found that the common interest doctrine did not apply to those unprotected communications because “Lumien barely addresse[d] [that] issue at all in its response” to WAC’s motion to compel. See Resp. at 15-16, Doc. 58.

Judge Calvert continued, “[T]he attorney-client privilege may be waived where a litigant places information protected by it in issue through some affirmative act for his own benefit . . . and where the court finds that allowing the privilege to protect against disclosure of such information would be manifestly unfair to the opposing party.” Conkling v. Turner, 883 F.2d 431, 434 (5th Cir. 1989) (internal quotes omitted).

Judge Calvert reasoned that it was fair to allow WAC to obtain further deposition testimony on the communications since Mr. Zhang recanted his interrogatory responses in his deposition, creating conflict on issues that directly related to the Patents-in-Suit and settlement agreement. Judge Calvert granted WAC’s motion to compel further deposition testimony on the communications Lumien previously objected to based on the attorney-client privilege now that such privilege had been deemed waived.

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