A blog about patent, copyright and trademark law in the U.S. District Court
for the Southern District of New York

Court Finds Pre-Suit Product Testing Covered by Work Product Privilege

In an October 22, 2015 ruling, Judge Jed S. Rakoff found that the work product privilege applies "to documents regarding plaintiffs' testing of defendant's accused products" before the plaintiffs filed this patent infringement action.  The defendant argued that the test results comprised mere data that could not be protected as work product.  The Court rejected this argument, finding that "'[b]oth facts and opinions are protected by the work product privilege.'"

Judge Rakoff also ordered the plaintiffs to produce a privilege log despite their argument "that doing so 'would disclose counsel's pre-filing investigation, mental processes, and work-product, and would identify potential non-testifying expert consultants in violation of Rule 26.'"  Judge Rakoff wrote:
Thus, plaintiffs' novel argument is that the privilege log itself would be privileged.  This borders on the frivolous.  Rule 26(b)(5) does not end with the caveat, "if the party feels like it."  It is in no way optional.  Nor does it matter that plaintiffs feel the creation of a privilege loge would be "burdensome and wasteful."
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