Illinois Official Reports 

Appellate Court

Motorola Solutions, Inc. v. Zurich Insurance Co., 2017 IL App (1st) 161465

Appellate Court 

Caption

MOTOROLA SOLUTIONS, INC., Plaintiff-Appellant, v. ZURICH 

INSURANCE COMPANY; ASSOCIATED INDEMNITY 

CORPORATION; CONTINENTAL CASUALTY COMPANY; 

NATIONAL FIRE INSURANCE COMPANY OF HARTFORD;

TRANSPORTATION INSURANCE COMPANY; AMERICAN 

CASUALTY INSURANCE COMPANY OF READING, 

PENNSYLVANIA; LIBERTY MUTUAL FIRE INSURANCE 

COMPANY; and LIBERTY INSURANCE COMPANY, Defendants

(Zurich Insurance Company and Associated Indemnity Corporation,

Defendants-Appellees).

District & No. First District, Fifth Division

Docket No. 1-16-1465

Opinion filed 

Rehearing denied

Modified opinion filed

June 30, 2017

July 26, 2017

August 4, 2017

Decision Under 

Review

Appeal from the Circuit Court of Cook County, No. 11-L-001902; the 

Hon. Margaret A. Brennan, Judge, presiding.

Judgment Reversed; contempt finding vacated.

Counsel on

Appeal

Jones Day, of Chicago (James A. White and Brian J. Murray, of 

counsel), and Jones Day, of Pittsburgh, Pennsylvania (Peter D. Laun 

and Matthew R. Divelbiss, of counsel), for appellant.
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Joshua G. Vincent, Michael M. Marick, and Karen M. Dixon, of 

Hinshaw & Culbertson LLP, of Chicago, for appellee Zurich 

Insurance Company.

No brief filed for other appellee.

Panel PRESIDING JUSTICE GORDON delivered the judgment of the 

court, with opinion.

Justice Hall concurred in the judgment and opinion. 

Justice Lampkin dissented, with opinion.

 OPINION 

¶ 1 The instant appeal arises from a discovery dispute between plaintiff Motorola Solutions, 

Inc., and defendants Zurich Insurance Company (Zurich) and Associated Indemnity 

Corporation (Associated) concerning the production of documents that plaintiff claims are 

privileged. The parties are engaged in insurance coverage litigation, stemming from several 

underlying personal injury actions in which claims were asserted against plaintiff. Plaintiff 

filed a motion for summary judgment with respect to Zurich’s duty to defend one of the actions 

and the trial court stayed briefing on the motion to permit limited discovery concerning a late 

notice defense asserted by defendants. As part of discovery, defendants sought the production 

of several documents that plaintiff claimed were privileged. The trial court ordered plaintiff to 

turn over the documents, and plaintiff refused. The trial court then held plaintiff in friendly 

civil contempt to permit plaintiff to appeal. For the reasons that follow, we reverse the trial 

court’s order requiring production of the documents and vacate the friendly contempt order. 

¶ 2 BACKGROUND 

¶ 3 We note that the parties’ briefs and portions of the record on appeal were permitted to be 

filed under seal. While we respect the parties’ wishes to keep confidential material private, our 

consideration of the issues on appeal necessarily requires us to discuss details of some of these 

documents. However, we include only those details necessary to our resolution of the issues on 

appeal. 

¶ 4 The instant appeal is the third time the parties have been before this court with respect to 

the insurance coverage litigation: we considered the scope of releases executed by the parties 

in Motorola Solutions, Inc. v. Zurich Insurance Co., 2015 IL App (1st) 131529, and considered 

underlying plaintiffs’ requests to intervene in Motorola Solutions, Inc. v. Continental Casualty 

Co., 2015 IL App (1st) 131724-U. To the extent that these earlier decisions discuss facts that 

are helpful to our understanding of the issues in the instant appeal, we repeat them here. 

¶ 5 On February 18, 2011, plaintiff filed a complaint for declaratory judgment and breach of 

contract against a number of insurance companies, including Zurich and Associated; the 

complaint was amended on July 1, 2011, and again on February 22, 2013. Plaintiff sought for 
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the insurers to provide it legal representation to defend plaintiff and/or coverage for defense 

costs under insurance policies issued by each of the insurers for four underlying personal 

injury actions in which claims were asserted against plaintiff.

¶ 6 The four underlying actions (the clean room cases) alleged that plaintiff was liable for 

injuries that children of plaintiff’s former employees and contractors allegedly sustained as a 

result of exposure to various chemicals in “clean rooms” in plaintiff’s manufacturing facilities. 

According to plaintiff’s complaint, from the 1960s through 2003, plaintiff operated facilities 

that manufactured, among other things, semiconductor products. These facilities included 

certain rooms that were designated as “clean rooms” in which the semiconductor products 

were manufactured, which “were designed to prevent dust and other similar materials from 

contacting semiconductor components during the manufacturing process.” The clean room 

cases all involved substantially similar allegations, in general alleging that hazardous or toxic 

materials were present in the “clean rooms” and that “either the father, the mother, or both 

worked in [plaintiff’s] clean room facility for some period of time before, and in a number of 

cases after, the [underlying] plaintiff child was born; often the period of employment [was] 

alleged to have continued through the in utero period. The [underlying] plaintiffs generally 

claim[ed] that the children were injured as a result of parents working in clean rooms” as a 

result of toxic exposure. 

¶ 7 Plaintiff’s complaint alleges that one or more of the insurer defendants had a duty to defend 

and/or pay defense costs in the clean room cases and that, by failing to do so, the insurers had 

breached their obligations to plaintiff under the insurance policies. 

¶ 8 Both of the defendants in the instant appeal filed answers and affirmative defenses and 

included counterclaims in which they alleged that plaintiff had released all of its claims for 

coverage for the clean room cases in settlement agreements and releases that the parties had 

executed in 2003. The parties then engaged in litigation concerning the scope of the releases, 

which culminated in a bench trial on the issue in December 2012 and defendants’ first appeal 

before this court in 2015, in which we affirmed the trial court’s finding that the releases did not 

encompass the claims in the clean room cases. See Motorola Solutions, Inc. v. Zurich 

Insurance Co., 2015 IL App (1st) 131529. During the pendency of the appeal, the trial court 

stayed all action in the coverage litigation. However, the underlying plaintiffs in one of the 

clean room cases sought to intervene in the coverage litigation in order to seek a modification 

of a protective order covering discovery that had been conducted concerning the scope of the 

releases. The trial court declined to assert jurisdiction on the motion to intervene in light of the 

order staying the proceedings, and the appeal of that order was the basis for our second 

decision in this matter. See Motorola Solutions, Inc. v. Continental Casualty Co., 2015 IL App 

(1st) 131724-U.

¶ 9 According to plaintiff’s brief, while the issue concerning the scope of the releases was 

being litigated, plaintiff was “effectively denied a defense” of the clean room cases “for several 

years.” During that time, the underlying clean room cases were proceeding, and on September 

3, 2015, plaintiff filed a motion for summary judgment against Zurich, seeking a declaratory 

judgment regarding Zurich’s duty to defend one of those underlying claims.1

 In response, 

Zurich filed a motion pursuant to Illinois Supreme Court Rule 191(b) (eff. Jan. 4, 2013), 

seeking leave to take discovery concerning the timeliness of plaintiff’s notice to Zurich prior to 

 

1According to the parties, the underlying claim has since been settled. 
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responding to plaintiff’s summary judgment motion. The trial court granted Zurich’s motion 

on November 12, 2015, but ordered the parties to meet and confer about the scope of discovery 

and the entry of a protective order. The parties negotiated an agreed protective order, which the 

trial court entered on January 12, 2016. 

¶ 10 The discovery sought by Zurich, later joined by Associated, included two categories of 

documents at issue on appeal. One consisted of documents pertaining to plaintiff’s clean room 

safety program (CRSP documents). In the 1990s, a number of lawsuits had been filed against 

IBM, a competitor of plaintiff’s, concerning alleged birth defects found in children whose 

parents worked in the manufacturing process in creating semiconductors in IBM’s clean room 

facilities. According to plaintiff, “[plaintiff], as a prudent company also operating in that 

manufacturing sector, engaged counsel and formed a working group to conduct an analysis of 

[plaintiff’s] practices in and risks arising from its clean rooms.” This was known as plaintiff’s 

“Clean Room Safety Program.” The efforts of the program resulted in the creation of the CRSP 

documents in 1996, reports prepared by, or at the direction of, plaintiff’s outside counsel. 

These CRSP documents had been sought by defendants since discovery began in the coverage 

litigation, with plaintiff withholding the documents on the basis of both the attorney-client 

privilege and the work product doctrine. Production of these documents has also previously 

been considered by this court on appeal, where we affirmed the trial court’s finding that the 

CRSP documents were not relevant to the issue of determining the scope of the releases in the 

first appeal. See Motorola Solutions, 2015 IL App (1st) 131529, ¶¶ 135-42. Documents 

concerning plaintiff’s knowledge of the clean room risks are also of great interest to the 

underlying clean room plaintiffs, who sought to intervene during the pendency of the first 

appeal in order to obtain access to documents covered by a protective order.2

 See Motorola 

Solutions, 2015 IL App (1st) 131724-U, ¶ 3. 

¶ 11 The second category of documents sought by defendants concerned plaintiff’s 2003 sale of 

its semiconductor manufacturing business to a new entity, Freescale Semiconductor, Inc. In 

the course of that sale, plaintiff was required to file a United States Securities and Exchange 

Commission Form S-1 Registration Statement (S-1 documents). The form contains a section 

entitled “Risk Factors,” which informs potential investors about “significant risk factors 

currently known and unique to” the seller of the securities. In this disclosure, plaintiff stated:

“In the last few years, there has been increased media scrutiny and associated reports 

focusing on a potential link between working in semiconductor manufacturing clean 

room environments and certain illnesses, primarily different types of cancers *** 

Because we utilize these clean rooms, we may become subject to liability claims.”

Defendants sought access to the documents related to the S-1 securities filing. 

¶ 12 In response to defendants’ discovery requests, plaintiff declined to produce the CRSP 

documents or the S-1 documents and, on January 20, 2016, defendants filed a motion to 

compel production of the documents. In the motion, defendants claimed that these documents 

were material evidence showing that plaintiff had been aware of the facts underlying the clean 

room actions since at least 1996 and that defendants intended to rely on this evidence to 

support their late notice defense. Defendants argued that under the Illinois Supreme Court case 

of Waste Management, Inc. v. International Surplus Lines Insurance Co., 144 Ill. 2d 178 

 

2According to plaintiff, the underlying clean room plaintiffs again sought to intervene shortly after 

the trial court granted the Rule 191(b) motion for discovery but were again unsuccessful. 
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(1991), the attorney-client privilege and work product doctrines did not apply to shield 

production of such documents from plaintiff’s insurers. In its response, plaintiff contended that 

the CRSP documents were not prepared in connection with the defense of the clean room 

actions and that plaintiff did not learn until December 2007 that any individuals were 

considering pursuing any action against plaintiff, information which plaintiff promptly 

forwarded to its insurers. 

¶ 13 On March 8, 2016, the trial court granted defendants’ motion to compel, ordering plaintiff 

to produce: 

“All documents comprising the CRSP Notebook, as identified on the privilege logs 

attached as Exhibits 2 and 17 to the Affidavit of Karen M. Dixon. 

All communications to or from [plaintiff’s] legal and/or risk management 

departments concerning the Clean Room Safety Program or any other assessments of 

[plaintiff’s] potential liability for bodily injury claims arising out of the Clean Rooms 

and/or the Clean Room Chemicals, Substances and Radiation. 

All documents in the possession of [plaintiff’s] Corporate Insurance Department 

(a/k/a risk management) that refer in any way to the Clean Rooms. 

All documents, including all communications with [plaintiff’s] risk management or 

legal department, concerning the disclosure of potential clean room related liabilities to 

investors in *** December 2003 (the SEC S-1 Filing). 

 All documents/communications that refer in any way to potential clean room 

related claims and/or liabilities that were received, sent, or created by [plaintiff’s] legal 

and/or risk management departments prior to [plaintiff’s] first notice to 

Associated/Zurich.”

¶ 14 On March 29, 2016, plaintiff filed a motion for reconsideration or, in the alternative, for a 

finding of friendly contempt in order for plaintiff to appeal. On May 4, 2016, the trial court 

denied plaintiff’s motion for reconsideration and found plaintiff in friendly contempt for 

refusing to comply with its discovery order, imposing a $100 penalty. This appeal follows.3

¶ 15 ANALYSIS 

¶ 16 The instant appeal was filed pursuant to Illinois Supreme Court Rule 304(b)(5) (eff. Mar. 8, 

2016), which permits an interlocutory appeal of “[a]n order finding a person or entity in 

contempt of court which imposes a monetary or other penalty.” Here, the trial court found 

plaintiff in contempt of court and imposed a monetary penalty. Accordingly, we have 

jurisdiction to consider plaintiff’s appeal. “Because discovery orders are not final orders, they 

are not ordinarily appealable.” Norskog v. Pfiel, 197 Ill. 2d 60, 69 (2001). “However, it is well 

settled that the correctness of a discovery order may be tested through contempt proceedings.” 

Norskog, 197 Ill. 2d at 69. “When [a party] appeals contempt sanctions imposed for violating, 

or threatening to violate, a pretrial discovery order, the discovery order is subject to review. 

[Citation.] Review of the contempt finding necessarily requires review of the order upon which 

it is based. [Citation.]” Norskog, 197 Ill. 2d at 69. 

 

3We note that Associated did not file a separate brief on appeal but joined in and adopted Zurich’s 

brief. 
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¶ 17 On appeal, plaintiff argues that the trial court erred in ordering it to produce the CRSP 

documents and the S-1 documents. We note that before the trial court, plaintiff argued that the 

documents were shielded by both the attorney-client privilege and the work product doctrine; 

however, on appeal, plaintiff focuses only on the attorney-client privilege, and accordingly, we 

will do the same. “Although a trial court’s discovery order is ordinarily reviewed for a manifest 

abuse of discretion [citation], the proper standard of review depends on the question that was 

answered in the trial court [citation].” Norskog, 197 Ill. 2d at 70. “If the facts are 

uncontroverted and the issue is the trial court’s application of the law to the facts, a court of 

review may determine the correctness of the ruling independently of the trial court’s 

judgment.” Norskog, 197 Ill. 2d at 70-71. In the case at bar, the facts are uncontroverted and we 

are considering whether the trial court properly applied the law concerning privilege between 

an insured and its insurer to the uncontroverted facts. Accordingly, this is an issue of law that 

we review de novo. De novo consideration means we perform the same analysis that a trial 

judge would perform. Khan v. BDO Seidman, LLP, 408 Ill. App. 3d 564, 578 (2011). 

¶ 18 I. Waste Management

¶ 19 As the parties recognize, the primary case concerning this issue is our supreme court’s 

decision in Waste Management. Accordingly, we must consider the case, and its holding, in 

considerable detail. In Waste Management, the insureds owned and operated a hazardous 

waste disposal site that was the subject of a lawsuit alleging that the insured was responsible 

for personal injury and property damage arising from the migration of toxic waste (the Miller 

litigation). Waste Management, 144 Ill. 2d at 186. During the pendency of the Miller litigation, 

the prior owners of the hazardous waste disposal site filed suit against the insureds and the 

insureds filed a counterclaim, alleging negligent design, construction, and operation of the site 

(the Nunn litigation). Waste Management, 144 Ill. 2d at 186. The insureds obtained a $10.675 

million judgment in their favor against the prior owners in the Nunn litigation and ultimately 

settled with some of them for $1.5 million. Waste Management, 144 Ill. 2d at 186. The 

insureds also retained counsel, defended, and settled the Miller lawsuit. Waste Management, 

144 Ill. 2d at 186. After doing so, pursuant to their insurance policy, the insureds sought 

indemnification from their insurers for $2.15 million in settlement costs and $850,000 in 

defense costs, but the insurers denied coverage. Waste Management, 144 Ill. 2d at 186. 

¶ 20 Both the insurers and the insureds filed declaratory judgment actions, seeking a 

determination of their respective rights and liabilities under the insurance policy. Waste 

Management, 144 Ill. 2d at 186. In their complaint, the insurers alleged that one reason for 

their denial of coverage for the Miller litigation was the insureds’ failure to advise them of the 

Nunn litigation, which the insurers alleged constituted a breach of the cooperation clause and 

other conditions of the insurance policy. Waste Management, 144 Ill. 2d at 187. The parties 

engaged in discovery and, during discovery, the insurers requested production of defense 

counsel’s files in the underlying Miller and Nunn litigations. Waste Management, 144 Ill. 2d at 

187. The insureds produced some of the requested documents from the Miller litigation but 

withheld others on the basis of the attorney-client privilege and work product doctrine; they 

did not produce any of the files from the Nunn litigation. Waste Management, 144 Ill. 2d at 

187. The trial court ordered the insureds to produce the files from the Miller litigation but 

denied the insurers’ request for production of the files from the Nunn litigation; the insureds 

refused to produce any additional documents, and the trial court found them in friendly civil 
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contempt. Waste Management, 144 Ill. 2d at 187. The appellate court affirmed in part and 

reversed in part, and the supreme court granted the insureds’ petition for leave to appeal. Waste 

Management, 144 Ill. 2d at 187. 

¶ 21 The supreme court found that “the attorney-client privilege has no application in this case.” 

Waste Management, 144 Ill. 2d at 191. The court found both of the insurers’ arguments to be 

equally significant and dispositive. Waste Management, 144 Ill. 2d at 191. The court first 

considered the insurers’ argument that the cooperation clause of the insurance policy rendered 

the attorney-client privilege unavailable. The court noted that “[t]he scope of the duties 

imposed upon an insurer and its insured are defined and controlled by the terms of the 

insurance contract. Any condition in the policy requiring cooperation on the part of the insured 

is one of great importance [citation], and its purpose should be observed [citation].” Waste 

Management, 144 Ill. 2d at 191. The court further noted that “[t]he basic purpose of a 

cooperation clause is to protect the insurer’s interests and to prevent collusion between the 

insured and the injured party.” (Emphasis in original.) Waste Management, 144 Ill. 2d at 191. 

¶ 22 The court looked to the cooperation clause contained in the insurance policy at issue, 

noting that “[t]he cooperation clause in this case imposes upon insureds the duty to assist 

insurers in the conduct of suits and in enforcing any right to contribution or indemnity against 

persons potentially liable to insureds. Further, the policy provides that insurers are entitled to 

conduct any claim, in the name of insureds, for indemnity or damages against persons, and that 

insureds ‘shall give all such information and assistance as the insurers may reasonably 

require.’ ”

4 Waste Management, 144 Ill. 2d at 192. The court found: 

“Here, the cooperation clause imposes a broad duty of cooperation and is without 

limitation or qualification. It represents the contractual obligations imposed upon and 

accepted by insureds at the time they entered into the agreement with insurers. In light 

of the plain language of the cooperation clause in particular, and language in the policy 

as a whole, it cannot seriously be contended that insureds would not be required to 

disclose contents of any communications they had with defense counsel representing 

them on a claim for which insurers had the ultimate duty to satisfy.” Waste 

Management, 144 Ill. 2d at 192. 

The court rejected the insureds’ argument that their duty to cooperate was rendered moot once 

the underlying lawsuit was terminated, finding that the “[i]nsureds’ duty to cooperate 

concerning matters covered by the insurance agreement did not end with the termination of the 

underlying lawsuit, but rather continues for as long as insureds seek to enforce its terms, and 

certainly to the point when insurers were requested to perform their end of the bargain. The fact 

that the parties are now adverse concerning the interpretation of such terms does not negate 

 

4We note that the dissent appears to take issue with our reliance on this aspect of the Waste 

Management analysis, given that the Waste Management insureds in their petition for rehearing 

claimed that the language of the policy at issue did not actually contain this language. See Waste 

Management, 144 Ill. 2d at 201-02. However, the insureds’ later arguments have no bearing on this 

portion of the court’s discussion, which remains good law. In its supplemental opinion, the court 

expressly makes no finding as to the merits of the insureds’ claims concerning the contractual language 

but finds that, assuming arguendo the insureds were correct, a duty to cooperate nevertheless “could 

reasonably be inferred based merely on principles of fairness and good faith.” Waste Management, 144 

Ill. 2d at 202. Thus, the Waste Management court merely finds an additional basis for its holding and 

does not in any way invalidate its earlier discussion concerning the language of the policy. 
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insureds’ contractual duty.” Waste Management, 144 Ill. 2d at 192. The court concluded that 

“[a] fair reading of the terms of the contract renders any expectation of attorney-client 

privilege, under these circumstances, unreasonable. We conclude that the element of 

confidentiality is wanting and, therefore, the attorney-client privilege does not apply to bar 

discovery of the communications in the underlying lawsuits.” Waste Management, 144 Ill. 2d 

at 192-93. 

¶ 23 The supreme court found the insurers’ second argument, that the attorney-client privilege 

is unavailable to insureds under the common interest doctrine, to be “equally compelling.” 

Waste Management, 144 Ill. 2d at 193. The court noted that “[e]vidence scholars have 

variously stated that under the common interest doctrine, when an attorney acts for two 

different parties who each have a common interest, communications by either party to the 

attorney are not necessarily privileged in a subsequent controversy between the two parties. 

[Citations.] This is especially so where an insured and his insurer initially have a common 

interest in defending an action against the former, and there is a possibility that those 

communications might play a role in a subsequent action between the insured and his insurer. 

[Citations.]” Waste Management, 144 Ill. 2d at 193-94. The court found that, “[c]learly, here 

both insurers and insureds had a common interest either in defeating or settling the claim 

against insureds in the Miller litigation. We believe that the communication by insureds with 

defense counsel is of a kind reasonably calculated to protect or to further those common 

interests.” Waste Management, 144 Ill. 2d at 194. 

¶ 24 The court rejected the insureds’ argument that the common interest doctrine did not apply 

because the insurers provided no defense in the underlying suits, finding that “we believe that 

the doctrine may properly be applied where the attorney, though neither retained by nor in 

direct communication with the insurer, acts for the mutual benefit of both the insured and the 

insurer. [Citations.] It is the commonality of interests which creates the exception, not the 

conduct of the litigation.” Waste Management, 144 Ill. 2d at 194. The court found: 

“On these facts, a less flexible application of the doctrine effectively defeats the 

purpose and intent of the parties’ agreement. Insureds and insurers share a special 

relationship; they are in privity of contract. In a limited sense, counsel for insureds did 

represent both insureds and insurers in both of the underlying litigations since insurers 

were ultimately liable for payment if the plaintiffs in the underlying action received 

either a favorable verdict or settlement. To deny discovery in this instance would be to 

disregard considerations of public policy which require encouragement of full 

disclosure by an insured to his insurer.” Waste Management, 144 Ill. 2d at 194-95.

The court also found that, despite the fact that the insureds were not seeking attorney fees or 

settlement costs in the Nunn lawsuit, the insurers were still entitled to the files in that suit 

because the insureds’ position “overlooks insurers’ interest in any potential recovery for 

contribution from the prior owners of the site. Moreover, insureds’ duty to cooperate with 

insurers is not limited solely to situations where insureds seek recovery of costs. We believe 

insurers and insureds shared a common interest in the conduct and outcome of the Nunn 

litigation as well as in the Miller litigation. Thus, insurers are entitled to the Nunn files.” Waste 

Management, 144 Ill. 2d at 195. 

¶ 25 The supreme court concluded: “In sum, insurers’ entitlement to production of the files 

arises out of the contractual obligations and the common interest doctrine. Their right to 

complete disclosure is not only necessary to proper resolution of the pending lawsuit, but exists 
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irrespective of the now adversarial nature of the parties’ relationship. The attorney-client 

privilege simply has no application in this case.” Waste Management, 144 Ill. 2d at 195. 

¶ 26 II. Cooperation Clause 

¶ 27 In the case at bar, we agree with plaintiff that Waste Management does not encompass the 

situation present in the instant case, as Waste Management involved a factual scenario in which 

the insurers were seeking documents from the litigation for which the insureds were seeking 

indemnification. By contrast, in the case at bar, defendants have not sought the files from the 

litigation in the underlying clean room cases; instead, they are seeking files that were created 

years prior to any litigation. The difference this distinction makes becomes apparent when 

examining the cooperation clause of the Zurich policy, which Zurich claims is “virtually 

identical” to the one at issue in Waste Management. The cooperation clause requires plaintiff 

to “cooperate with the company and, upon the company’s request, assist in making 

settlements, in the conduct of suits and in enforcing any right of contribution or indemnity 

against any person or organization who may be liable to the insured ***.” In Waste 

Management, this clause applied to the files the insurers sought, as they were files that 

concerned the conduct of the suits and the enforcement of rights of contribution or indemnity. 

By contrast, nothing in this cooperation clause touches on the disclosure of the contents of 

plaintiff’s CRSP documents, which were created by different attorneys over a decade before 

any lawsuit was filed. It is thus unclear how the reports created under the CRSP would assist 

defendants in “making settlements, in the conduct of suits, [or] in enforcing any right of 

contribution or indemnity against any person or organization who may be liable to the 

insured.” At most, such documents would help defeat plaintiff’s claims against defendants, 

which is not a subject included in the cooperation clause. The same is true of the S-1 

documents, which are even further removed from the defense of any litigation for which 

plaintiff seeks coverage, as they are related to securities filings.5

¶ 28 The language of the cooperation clause in the instant case further distinguishes the 

situation here from that present in Sharp v. Trans Union L.L.C., 364 Ill. App. 3d 64 (2006), a 

case that defendants rely on to expand the holding of Waste Management to encompass the 

present situation. In Sharp, after a number of lawsuits were filed against the insured based on 

allegations that the insured improperly sold consumer information to third parties in violation 

of the Fair Credit Reporting Act (FCRA) (15 U.S.C. § 1681 et seq. (2006)), the insurers filed a 

complaint for declaratory judgment, seeking a declaration that the lawsuits were not covered 

under the insurance policy. Sharp, 364 Ill. App. 3d at 69. Prior to the inception of the policy, 

the insured had been the subject of an administrative complaint filed by the Federal Trade 

Commission (FTC) based on alleged FCRA violations, and had also been the subject of several 

lawsuits containing similar allegations. Sharp, 364 Ill. App. 3d at 66-68. The insurers claimed 

that the new lawsuits were based on the same acts, errors, violations, and omissions that were 

known prior to the inception of the policy because they were based on the same allegations as 

the prepolicy suits. Sharp, 364 Ill. App. 3d at 69. During discovery, the insurers sought 

 

5

In their petition for rehearing, defendants point to additional language in the cooperation clause, 

which requires plaintiff to “assist in effecting settlements, securing and giving evidence, obtaining the 

attendance of witnesses and in the conduct of suits.” (Emphasis added.) However, we do not find that 

this language changes any of our analysis. 
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“pre-policy documents that reflect, potentially reflect, or pertain to [the insured’s] and/or its 

general counsel’s knowledge and/or analysis of the FCRA, the FTC litigation, and private 

litigation arising from the same allegations as the FTC litigation.” Sharp, 364 Ill. App. 3d at 

70. The trial court found that the policy’s cooperation clause required the insured to produce 

the documents, and the appellate court affirmed. 

¶ 29 The appellate court looked to Waste Management and noted that, while Sharp involved 

documents that were created prior to the inception of the policy, it nevertheless found the 

Waste Management court’s analysis “instructive” (Sharp, 364 Ill. App. 3d at 72) because 

“[t]he broad policies articulated by the supreme court in Waste Management are equally 

applicable to our interpretation of the insurance contract at issue here” (Sharp, 364 Ill. App. 3d 

at 72). The court found that “[o]ur application of principles of contract interpretation and the 

policies articulated in Waste Management reveals that the parties’ manuscripted insurance 

policy was negotiated and written to require the disclosure of [the insured’s] general counsel’s 

knowledge, work product, and communications regarding the pre-policy litigation.” Sharp, 

364 Ill. App. 3d at 72. 

¶ 30 The court pointed to exclusion (g) of the policy, which excluded “ ‘any Claim arising out of 

acts, errors, violations or omissions that took place prior to the effective date of this Insurance, 

if the [general counsel6] of the Named Assured on the effective date knew that such acts, 

errors, violations or omissions might be expected to be the basis of a Claim.’ ” Sharp, 364 Ill. 

App. 3d at 68. The court found that the policy protected the insurers from insuring a known 

loss and “effectively defines known losses in terms of the general counsel’s knowledge by 

excluding errors and omissions that [the insured’s] general counsel knew might be the basis of 

a future claim. The only way to determine whether [the insured’s] general counsel knew that a 

particular act might be the basis of a claim would be to look at the general counsel’s legal 

reasoning and analysis of that act.” Sharp, 364 Ill. App. 3d at 73. The court further pointed to 

the policy’s cooperation clause, which provided that “ ‘[t]he Assured shall co-operate with the 

[insurers] in all investigations, including investigations regarding the application and coverage 

under this Policy.’ ” Sharp, 364 Ill. App. 3d at 68. The court found that reading the specific 

language of the cooperation clause together with exclusion (g), the insured “agreed to share the 

legal reasoning and analysis of its general counsel regarding whether there might be future 

claims based on its sale of target marketing information.” Sharp, 364 Ill. App. 3d at 73. The 

court noted that, “[a]lthough such information may be privileged because it is legal advice 

given by the general counsel to the corporation about whether its actions could result in 

liability [citation], [the insured], in agreeing to a policy with such particular language, has 

agreed to share this information with [the insurers] under these circumstances.” Sharp, 364 Ill. 

App. 3d at 73. 

¶ 31 The court further found that its reading of the insurance contact was supported by Illinois 

public policy, which, as the Waste Management court had found, “encourag[ed] disclosure 

between insurer and insured, ‘with an eye toward ascertaining that truth which is essential to 

the proper disposition of a lawsuit.’ ” Sharp, 364 Ill. App. 3d at 73-74 (quoting Waste 

Management, 144 Ill. 2d at 190). Additionally, “[t]he supreme court has also emphasized that 

the purpose of an insurance contract is to protect the insured against loss, damage, or liability 

 

6The policy originally stated “Chief Financial Officer,” but the policy was amended to change the 

term to “General Counsel.” Sharp, 364 Ill. App. 3d at 68. 
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arising from an unknown or contingent event and is applicable only to some contingency or act 

to occur in [the] future.” (Emphases in original and internal quotation marks omitted.) Sharp, 

364 Ill. App. 3d at 74 (quoting Outboard Marine Corp. v. Liberty Mutual Insurance Co., 154 

Ill. 2d 90, 103 (1992)). “If the insured knows that a loss will occur, it is not a contingency and 

would not be covered under an insurance contract absent an express agreement to do so. 

[Citation.] Thus, public policy would favor requiring an insured to share information with its 

insurer that would reveal whether a risk was known. The provisions of the insurance contract 

between [the insurers] and [the insured] promote these policies by requiring [the insured] to 

share information regarding whether its general counsel knew of particular losses. 

Accordingly, public policy supports enforcing the policy as written.” Sharp, 364 Ill. App. 3d at 

74. 

¶ 32 In the case at bar, as noted, the insurance policy at issue is significantly different than that 

present in Sharp. The policy itself does not define a “known loss” in terms of plaintiff’s 

general counsel’s knowledge, nor does the cooperation clause expressly require plaintiff’s 

cooperation in investigations of coverage questions. Defendants do not even acknowledge the 

extremely different language of the policies in the two cases, despite the fact that the Sharp

court expressly relied on the policy’s language in finding that disclosure was required. 

Furthermore, as plaintiff notes, the coverage issue in Sharp was the “known loss” exclusion, 

while the issue in the instant case was whether there was a timely notice of occurrence. 

Accordingly, we find Sharp of limited usefulness to the instant case. 

¶ 33 As noted, in the case at bar, the factual situation is quite different from that present in 

Waste Management because, here, defendants are not seeking the files of the attorneys 

engaged in litigation of the underlying cases, as was the case in Waste Management. Instead, 

defendants are seeking documents created well before any litigation had commenced. While 

“[a]ny condition in the policy requiring cooperation on the part of the insured is one of great 

importance [citation], and its purpose should be observed [citation]” (Waste Management, 144 

Ill. 2d at 191), this duty is not boundless. It must remain tied to the language of the cooperation 

clause itself. Here, the cooperation clause requires plaintiff to “cooperate with the company 

and, upon the company’s request, assist in making settlements, in the conduct of suits and in 

enforcing any right of contribution or indemnity against any person or organization who may 

be liable to the insured.” Defendants have not explained how either the CRSP documents or the 

S-1 documents would “assist in making settlements, in the conduct of suits and in enforcing 

any right of contribution or indemnity against any person or organization who may be liable to 

the insured.” Instead, defendants are seeking the documents to determine whether they can 

defeat plaintiff’s request for coverage as a result of a late notice. Consequently, we cannot find 

that Waste Management encompasses the situation in the case at bar with respect to the 

cooperation clause contained in the insurance policy. 

¶ 34 We are unpersuaded by the arguments raised in the dissent and in defendants’ petition for 

rehearing concerning the applicability of a common law duty to cooperate. In its supplemental 

opinion upon denial of rehearing, the Waste Management court noted that the insureds claimed 

in their petition for rehearing that the language of the insurance policy at issue was different 

than that analyzed in the original opinion. Waste Management, 144 Ill. 2d at 202. The court 

noted that in the case of a “cooperate-and-assist” clause, as was present in Waste Management

and as is present in the case at bar, “the purpose of the provision is to require the insured to 
- 12 - 

cooperate in good faith with the insurer in its defense of a claim.” Waste Management, 144 Ill. 

2d at 203. 

¶ 35 The court further noted that, typically, the insurer has limited knowledge of the facts 

surrounding a claimed loss, while the insured has exclusive knowledge of such facts, meaning 

that “[t]he insurer is, therefore, dependent on its insured for fair and complete disclosure; 

hence, the duty to cooperate.” Waste Management, 144 Ill. 2d at 204. Thus, “[w]hile the 

insured has no obligation to assist the insurer in any effort to defeat recovery of a proper claim, 

the cooperation clause does obligate the insured to disclose all of the facts within his 

knowledge and otherwise to aid the insurer in its determination of coverage under the policy. 

[Citation.] The insurer is entitled, irrespective of whether its duty is to defend or to indemnify, 

to gain as much knowledge and information as may aid it in its investigation, or as may 

otherwise be significant to the insurer in determining its liability under the policy and in 

protecting against fraudulent claims. To hold otherwise effectively places the insurer at the 

mercy of the insured and severely handicaps it in contesting a claim.” Waste Management, 144 

Ill. 2d at 204. The court found: 

“Where the insurer provides the defense it is directly involved in the generation of 

the defense litigation files and, obviously, has access to the whole of them. Where the 

insurer is bound instead to indemnify for the cost of litigation, it plays a different but no 

less vulnerable role in the claims process. Thus we do not believe that the insurer, as 

indemnifier, is relegated to a less secure position with only limited rights to disclosure. 

The insurer-indemnifier is no less interested or entitled to protect its financial interests 

and to minimize unwarranted liability claims than if it were actually participating in or 

providing the defense. We conclude that while the insurance contract may not, as 

insureds assert, expressly state that insureds have a duty to provide all information and 

assistance, by our interpretation of the clause no less is required.” Waste Management, 

144 Ill. 2d at 204-05. 

¶ 36 Despite defendants’ and the dissent’s arguments otherwise, we cannot find that this 

language means that a common law duty to cooperate rendered the attorney-client privilege 

inapplicable in the instant case. As noted, the Waste Management analysis occurred in the 

context of the litigation of claims for which the insurers sought defense files. By contrast, in 

the case at bar, defendants are not seeking the defense files in the underlying litigation but are, 

instead, seeking to obtain documents that were prepared years prior to the commencement of 

the instant litigation. Contrary to the dissent’s statement otherwise, the instant case and Waste 

Management thus do not contain remotely “similar facts.” Neither the dissent nor defendants’ 

petition for rehearing cites any authority for the proposition that an insured must disclose 

documents that were prepared by separate counsel years prior to any litigation. Instead, both 

apply an expansive interpretation of Waste Management that strips it of the factual context in 

which that case was decided. Nothing in Waste Management suggests that it is intended to 

apply to situations in which an insurer is seeking prelitigation documents prepared by 

completely different counsel from the counsel involved in litigating the underlying claims, and 

we cannot interpret the case to stand for something it simply does not hold. 

¶ 37 III. Common Interest Doctrine 

¶ 38 We also find that the Waste Management court’s discussion of the common interest 

doctrine is inapplicable to the instant case. In Waste Management, as noted, the supreme court 
- 13 - 

found that “[c]learly, here both insurers and insureds had a common interest either in defeating 

or settling the claim against insureds in the Miller litigation. We believe that the 

communication by insureds with defense counsel is of a kind reasonably calculated to protect 

or to further those common interests.” Waste Management, 144 Ill. 2d at 194. The court further 

found that “[i]nsureds and insurers share a special relationship; they are in privity of contract. 

In a limited sense, counsel for insureds did represent both insureds and insurers in both of the 

underlying litigations since insurers were ultimately liable for payment if the plaintiffs in the 

underlying action received either a favorable verdict or settlement. To deny discovery in this 

instance would be to disregard considerations of public policy which require encouragement of 

full disclosure by an insured to his insurer.” Waste Management, 144 Ill. 2d at 194-95. 

¶ 39 In the case at bar, however, as noted, there was no “underlying litigation” from which 

defendants are seeking disclosure. Instead, they are seeking documents prepared years before 

the first lawsuit was filed. While an insurer would certainly have an interest in communications 

concerning ongoing litigation against its insured, it would be straining the Waste Management

court’s reasoning to stretch that commonality of interest to the situation that presents itself in 

the instant case. Consequently, we agree with plaintiff that Waste Management is inapplicable 

to the instant case. 

¶ 40 We note that our decision does not necessarily mean that all of the documents withheld by 

plaintiff are properly shielded by the attorney-client privilege. “[I]t is the privilege, not the 

duty to disclose, that is the exception. [Citation.] Therefore, the privilege ought to be strictly 

confined within its narrowest possible limits.” Waste Management, 144 Ill. 2d at 190. Any 

documents withheld by plaintiff will need to be evaluated to determine whether they are 

privileged, as would ordinarily be done. In other words, our decision only means that the 

attorney-client privilege may apply, not that it does apply to each document withheld by 

plaintiff. That is a question more properly considered by the trial court in the first instance, as 

the trial court should conduct an in camera examination of the documents. 

¶ 41 As a final matter, we must address the dissent’s confusion as to this aspect of our decision, 

as the dissent claims that it is incoherent and renders our opinion “what amounts to an advisory 

opinion.” The dissent seems to believe that our task was to determine whether plaintiff “failed 

to meet its burden to show that the withheld documents were covered by the attorney-client 

privilege.” Infra ¶ 71. However, this represents a fundamental misunderstanding of the issue 

on appeal. The sole issue concerning the attorney-client privilege that plaintiff raised on appeal 

concerns the interpretation of Waste Management and whether the attorney-client privilege is 

available at all in the context of an insurer-insured coverage dispute. See Waste Management, 

144 Ill. 2d at 191, 195 (“the attorney-client privilege has no application in this case,” and “The 

attorney-client privilege simply has no application in this case.”). Answering this question, our 

holding is that the attorney-client privilege is available because Waste Management does not 

encompass the factual circumstances present in the instant case. Neither party addresses the 

next question that will have to be answered, namely, “if the attorney-client privilege is 

available, does it apply to these documents?” Since it is not at issue on appeal and was not 

addressed by the parties, we likewise will not address it for the first time on appeal sua sponte

but will leave it to the parties to argue before the trial court. This in no way renders our opinion 

an “advisory opinion” but simply recognizes that the trial court should make this determination 

in the first instance. 
- 14 - 

¶ 42 The dissent’s misunderstanding of the issue on appeal is also evident by the fact that it 

places great significance on the idea that plaintiff has placed its compliance with the notice of 

occurrence provision at issue by filing a motion for summary judgment. “An implied waiver 

[of the attorney-client privilege] may be found when the client asserts claims or defenses that 

put his or her communications with the legal advisor at issue in the litigation.” Center 

Partners, Ltd. v. Growth Head GP, LLC, 2012 IL 113107, ¶ 66. However, again, this is the 

second step of the analysis—if the attorney-client privilege is available, does it apply to these 

documents?—that is not the question we are asked to consider on appeal. The “at issue” 

exception to the attorney-client privilege simply has no bearing on the question of whether the 

attorney-client privilege may be asserted in an insurer-insured coverage dispute. Indeed, in 

Waste Management, the court noted that the insurers argued that the documents sought were 

not privileged because they were at issue in the coverage litigation but quickly dismissed the 

argument, finding that “the attorney-client privilege has no application in this case. Therefore, 

it is of no moment that the files are relevant, and further analysis of the ‘at issue’ exception 

would only be superfluous.” Waste Management, 144 Ill. 2d at 190-91. In other words, if the 

attorney-client privilege cannot be asserted at all, it is irrelevant whether the documents are at 

issue. Here, we have determined that the attorney-client privilege may be asserted. It will be up 

to the trial court to determine whether the privilege actually applies, a determination that 

certainly may include consideration of whether plaintiff has put the documents at issue. 

However, the dissent’s discussion of this exception serves merely to muddy the waters of the 

question on appeal. 

¶ 43 IV. Peppers Doctrine 

¶ 44 Plaintiff also argues that the trial court’s order requiring it to produce the documents is 

especially inappropriate because defendants are attempting to litigate facts that overlap with 

the facts at issue in the underlying litigation in contravention of the “Peppers doctrine,” which 

was set forth by our supreme court in Maryland Casualty Co. v. Peppers, 64 Ill. 2d 187 (1976). 

Even though we have determined that the attorney-client privilege remains available to shield 

these documents, a discussion of plaintiff’s Peppers argument is nevertheless useful. 

¶ 45 “Under the Peppers doctrine, ‘it is generally inappropriate for a court considering a 

declaratory judgment action to decide issues of ultimate fact that could bind the parties to the 

underlying litigation.’ ” Landmark American Insurance Co. v. NIP Group, Inc., 2011 IL App 

(1st) 101155, ¶ 59 (quoting Allstate Insurance Co. v. Kovar, 363 Ill. App. 3d 493, 501 (2006)). 

“This proscription specifically precludes determination of any ultimate facts upon which 

liability or recovery might be predicated in the underlying case.” NIP Group, Inc., 2011 IL 

App (1st) 101155, ¶ 59. Thus, it is an abuse of discretion for a trial court in a declaratory 

judgment action to make such a determination. Peppers, 64 Ill. 2d at 196; Empire Fire & 

Marine Insurance Co. v. Clarendon Insurance Co., 267 Ill. App. 3d 1022, 1027 (1994). 

¶ 46 In the case at bar, we agree with defendants that the Peppers doctrine is inapplicable to the 

instant situation. The trial court is not being asked to “ ‘decide issues of ultimate fact that could 

bind the parties to the underlying litigation.’ ” NIP Group, Inc., 2011 IL App (1st) 101155, 

¶ 59 (quoting Kovar, 363 Ill. App. 3d at 501). Instead, the question before the trial court is 

simply whether defendants are permitted to view certain documents that plaintiff claims are 

privileged in order to oppose plaintiff’s motion for summary judgment. As defendants note, 

“ ‘[t]he purpose of summary judgment is not to try an issue of fact but *** to determine 
- 15 - 

whether a triable issue of fact exists.’ ” Schrager v. North Community Bank, 328 Ill. App. 3d 

696, 708 (2002) (quoting Luu v. Kim, 323 Ill. App. 3d 946, 952 (2001)). Thus, in deciding 

plaintiff’s motion for summary judgment, the trial court is asked only to determine whether 

there is a question of fact as to the issue of notice and is not asked to determine the issue of 

notice as a matter of law. We acknowledge that, in the future, the trial court may be asked to 

decide whether plaintiff provided a timely notice of occurrence. However, that is not the issue 

before this court today and, despite plaintiff’s urging to the contrary, we will not speculate as to 

whether the future issues that the trial court will be asked to determine violate the Peppers

doctrine. 

¶ 47 We also note that, in situations where the Peppers doctrine is at issue, a court will often 

order a stay of the coverage litigation pending the resolution of the underlying litigation. See, 

e.g., Sentry Insurance v. Continental Casualty Co., 2017 IL App (1st) 161785 (appeal of a trial 

court’s stay of insurance coverage litigation due to Peppers concerns). In the case at bar, 

however, neither party at oral argument indicated that it desired a stay. Furthermore, a stay 

would not seem to be in the parties’ best interest, as the resolution of the underlying litigation 

would have no effect on the late notice defense asserted by defendants, which concerns 

whether plaintiff timely provided notice of occurrence. 

¶ 48 CONCLUSION 

¶ 49 For the reasons set forth above, we find that the situation present in the case at bar is not 

encompassed by our supreme court’s holding in Waste Management. Accordingly, the 

attorney-client privilege is available to shield any appropriate documents from discovery. 

¶ 50 Reversed; contempt finding vacated. 

¶ 51 JUSTICE LAMPKIN, dissenting. 

¶ 52 I respectfully dissent. I would hold that the attorney-client privilege has no application to 

the discovery sought in this coverage dispute between the insured Motorola Solutions, Inc. 

(Motorola), and its insurers Zurich and Associated (the insurers). I disagree with the majority’s 

conclusion that “Waste Management does not encompass the situation present” in this case. 

Supra ¶ 27. I would conclude, consistent with the principles of Waste Management, that the 

trial court properly granted the insurers’ motion to compel the sought discovery based on (1) 

Motorola’s duty to cooperate in accordance with the insurance policy and the principles of 

fairness and good faith and (2) the common interest doctrine. Although I agree with the 

majority’s decision to vacate the contempt finding and the majority’s conclusion that the 

Peppers doctrine does not apply to the discovery issue before the court, I would affirm the trial 

court’s order that granted the insurers’ motion to compel the sought discovery.

¶ 53 The majority mischaracterizes the nature and relevance of the sought discovery as 

documents merely “related to securities filings” (supra ¶ 27) or useful only to determine 

whether the insurers’ late-notice affirmative defense can defeat Motorola’s coverage claim. To 

properly determine the issue on appeal, this court must consider the sought discovery within 

the procedural context of the challenged order granting the discovery, i.e., the insurers sought 

the discovery about Motorola’s knowledge of the risk of clean room litigation because the 

insurers must respond to Motorola’s summary judgment motion, which argues, inter alia, that 

Motorola has complied with the notice of occurrence provisions of the insurance contracts and, 
- 16 - 

thus, the insurers are obligated to pay Motorola’s defense costs in the underlying clean room 

litigation. 

¶ 54 Specifically, Motorola’s declaratory relief claim against the insurers for coverage had been 

stayed by the trial court while this court reviewed the insurers’ interlocutory appeal about the 

scope of settlement release agreements. Upon remand, Motorola moved the trial court to lift 

the stay and thereafter filed the motion for summary judgment against the insurers on their duty 

to pay Motorola’s defense costs in the underlying clean room litigation. At the hearing on the 

motion to lift the stay, Motorola argued that the coverage case should proceed on Motorola’s 

claim for defense costs but remain stayed on the insurers’ coverage defenses until the 

underlying clean room tort actions were resolved. Motorola asserted that the trial court should 

decide the issue of the insurers’ duty to pay defense costs now, based only on Motorola’s 

complaint and the insurance policies, and that the insurers should litigate the factual issues 

concerning their late-notice defense later. 

¶ 55 The insurers objected, arguing that the issue of Motorola’s timely notice to the insurers was 

a condition precedent to coverage, extrinsic facts about any Motorola clean room liability 

investigation were relevant to the issue of coverage, and the insurers’ late-notice issue in the 

coverage action overlapped with issues in the underlying clean room tort actions. The insurers 

asserted that it would be improper for the trial court to adjudicate any portion of the coverage 

issue prior to the resolution of the overlapping issues in the clean room tort actions. 

¶ 56 The trial court granted Motorola’s motion to lift the stay, noting that the first clean room 

tort action was scheduled to begin in six weeks and Motorola had moved for summary 

judgment against the insurers on the coverage claim. However, before the court would set a 

briefing schedule on Motorola’s summary judgment motion, the trial court allowed the 

insurers time to file an Illinois Supreme Court Rule 191(b) (eff. Jan. 4, 2013) motion to obtain 

necessary discovery to respond to the summary judgment motion. 

¶ 57 Thereafter, the insurers filed their Rule 191(b) motion and asked the court to stay the 

briefing and decision on Motorola’s summary judgment motion. The insurers argued that the 

Peppers doctrine, as set forth in Maryland Casualty Co. v. Peppers, 64 Ill. 2d 187 (1976), was 

not applicable because the court would not be adjudicating the merits of either party’s claims 

or defenses; rather, the court would determine merely whether the insurers would get 

discovery before responding to Motorola’s summary judgment motion. Motorola argued that 

the insurers must litigate their coverage defense later because they should not be allowed to 

prejudice Motorola by attempting to prove in the coverage action the exact same facts at issue 

in the underlying clean room tort actions. The trial court granted the insurers’ Rule 191(b) 

motion and instructed the parties to draft an appropriate protective order and narrow the 

discovery to what the insurers needed to respond to the summary judgment motion. 

¶ 58 After the trial court issued the parties’ stipulated protective order, Motorola refused to 

produce to the insurers certain information for their response to Motorola’s summary judgment 

motion. The insurers moved the court to compel Motorola’s production, arguing they were 

entitled to the sought discovery based on Motorola’s duty to cooperate and the common 

interest doctrine. The insurers also argued that Motorola failed to carry its burden to sustain its 

claim that the sought discovery was privileged and protected. 

¶ 59 Motorola objected, asserting that the CRSP documents were protected by the work product 

privilege and the S-1 documents were protected by an unspecified privilege. Motorola, 

however, did not provide a privilege log describing the nature of the S-1 documents that were 
- 17 - 

not being produced. Motorola argued that the insurers had all the facts they needed to respond 

to the summary judgment motion and the protective order would not eliminate the risk of the 

clean room plaintiffs obtaining the privileged information. Also, Motorola claimed the sought 

information was irrelevant to the insurers’ late notice defense because any clean room 

pre-litigation risk analysis by Motorola occurred dozens of years before Motorola received any 

notice of a clean room cause of action. Motorola asserted that if it had submitted the sought 

discovery for in camera judicial review, the trial court would agree with Motorola that the 

sought discovery was irrelevant to the insurers’ late notice defense.

¶ 60 On March 8, 2016, the trial court granted the insurers’ motion to compel because the case 

was “still in the discovery stage.” The court explained that it would not conduct an in camera

inspection of the documents because the stipulated protective order was in place and such an 

inspection would unduly burden the court’s limited resources. The court stated Motorola could 

not “have it both ways” by claiming that any 1996 clean room litigation risk analysis by 

Motorola was “in anticipation of litigation” and thus privileged, while simultaneously 

claiming that Motorola was not aware of any risk triggering the insurance notice-of-occurrence 

provisions until 2007, when the clean room plaintiffs began filing their tort lawsuits. 

¶ 61 Thereafter, Motorola moved the court to reconsider the order and require the insurers to 

respond to Motorola’s summary judgment motion, using the non-privileged documents 

available to them. The trial court denied the motion to reconsider but granted Motorola’s 

request for a finding of non-contumacious contempt so that Motorola could obtain appellate 

review of the March 8, 2016, order. 

¶ 62 The attorney-client privilege may be waived as to a communication put “at issue” by a 

party who is a holder of the privilege. Shapo v. Tires ’N Tracks, Inc., 336 Ill. App. 3d 387, 394 

(2002); Fischel & Kahn, Ltd. v. Van Straaten Gallery, Inc., 189 Ill. 2d 579, 585 (2000); Waste 

Management, 144 Ill. 2d at 190-91. In the present case, Motorola successfully moved, over the 

insurers’ objections, to lift the stay in the coverage dispute and then moved for summary 

judgment on the issue of the insurers’ duty to pay Motorola’s defense costs in the underlying 

clean room litigation. Motorola has placed at issue in the coverage dispute and waived as to its 

insurers the attorney-client privilege with respect to any 1996 clean room litigation risk 

analysis. By asking the court to find that there is no genuine issue of material fact concerning 

Motorola’s entitlement to payment of its clean room defense costs, Motorola asks the court to 

find that it has complied with the terms of the insurance contracts, including the notice of 

occurrence provisions, which are a condition precedent to coverage. Motorola’s 1996 clean 

room risk analysis is not merely relevant to the dispute; rather, Motorola’s compliance with the 

notice of occurrence provisions can only be fairly determined by disclosure of that risk 

analysis. See Western States Insurance Co. v. O’Hara, 357 Ill. App. 3d 509, 520-21 (2005). 

¶ 63 In Waste Management, 144 Ill. 2d at 193, the court held that the attorney-client privilege 

did not apply to bar discovery of communications or documents created in defense of two 

previously-settled lawsuits in a subsequent coverage dispute regarding one of the lawsuits. In 

so holding, the court looked at the insured’s contractual duty to cooperate with the insurer, 

which was designed to protect the insurer’s interests and prevent collusion between the insured 

and the injured party. Id. at 191-92, 202. The court also considered the duty to cooperate 

reasonably “inferred based merely on principles of fairness and good faith” (id. at 202), noting 

that the insurer typically has little or no knowledge of the facts surrounding a claimed loss and 

thus is dependent on its insured for fair and complete disclosure (id. at 204). 
- 18 - 

¶ 64 Furthermore, Waste Management held that the insurers’ entitlement to production of the 

files also arose out of the common interest doctrine, even though the case did not involve a 

situation where an attorney either provided joint or simultaneous representation to the parties 

or a situation where the attorney was either retained by or in direct communication with the 

insurer. Id. at 194. Although the insured and insurer were adverse to each other in the coverage 

litigation, they shared a common interest in defeating or settling the underlying litigation (id.), 

and the denial of discovery to the insurer in the coverage action would disregard public policy 

considerations “which require encouragement of full disclosure by an insured to [its] insurer” 

(id. at 195). 

¶ 65 Based on a straightforward application of Waste Management to the instant case, I would 

hold that Motorola’s duty to cooperate, which is based on both the broad language in the 

contractual cooperation clause and the principles of fairness and good faith, and the common 

interest doctrine render the attorney-client privilege inapplicable in the instant coverage 

dispute between Motorola and the insurers. I would affirm the trial court’s ruling that the 

insurers are entitled to the sought discovery to respond to Motorola’s motion for summary 

judgment. 

¶ 66 The majority’s attempt to distinguish Waste Management on its facts is unpersuasive. First, 

concerning the insured’s duty to cooperate with its insurer, the majority believes there is some 

significance to the fact that, here, the insurers seek information created by Motorola years 

before the underlying clean room tort actions had commenced, whereas the insurers in Waste 

Management sought the litigation files in underlying tort actions that had already commenced. 

This distinction hardly serves to minimize Motorola’s duty to cooperate with the insurers. 

Here, the issue of cooperation arises in the context of Motorola’s claim that it has complied 

with the insurance policies’ notice provisions and thus is entitled to summary judgment now on 

the issue of the insurers’ duty to pay Motorola’s defense costs in the underlying clean room 

litigation. Accordingly, Motorola has affirmatively placed at issue its alleged compliance with 

the notice of occurrence provisions, and any 1996 clean room litigation risk analysis conducted 

by Motorola is a relevant and necessary source of discovery for the insurers, who must respond 

to Motorola’s motion for summary judgment. The fact that no clean room tort lawsuit had been 

filed when Motorola conducted the 1996 risk analysis is completely irrelevant to the court’s 

analysis of Motorola’s duty to cooperate.

¶ 67 Second, as discussed above, the majority attempts to minimize the clear relevance of the 

sought discovery by mischaracterizing it as mere securities filings or support for the insurers’ 

affirmative defense to coverage. The majority then utilizes this mischaracterization to support 

its conclusion that such documents are not subjects included within the parties’ contractual 

cooperation clause, which the majority erroneously believes is narrower and drastically 

different from the cooperation clause at issue in Waste Management. Specifically, the majority 

cites the portion of Waste Management that discussed the cooperation clause requirement that 

the insured must assist the insurers in the conduct of suits and in enforcing any right to 

contribution or indemnity and “give all such information and assistance as the insurers may 

reasonably require.” (Internal quotation marks omitted.) Id. at 192. The majority then contrasts 

this board cooperation clause language with the provision in the instant case—which requires 

Motorola to cooperate with the insurers and, upon request, assist them in making settlements, 

in the conduct of suits, and in enforcing any right of contribution or indemnity—to conclude 

that Motorola’s contractual duty to cooperate does not even touch upon the sought discovery.
- 19 - 

¶ 68 The majority’s analysis, however, disregards Waste Management’s supplemental opinion 

upon denial of rehearing, which established that the existence of the insureds’ duty to 

cooperate with its insurers concerning the coverage dispute was not dependent upon the broad 

cooperation clause language cited by the majority. Id. at 202. Specifically, the insureds in 

Waste Management informed our supreme court that it had misapprehended the facts 

concerning the language of the cooperation clause, which did not include the “shall give all 

such information and assistance as the insurers may reasonably require” provision. (Internal 

quotation marks omitted.) Id. at 201-02. Rather, the applicable cooperation clause in Waste 

Management was essentially identical to the “insureds shall cooperate with the company” 

language of the cooperation clause at issue here. (Internal quotation marks omitted.) See id. at 

202. 

¶ 69 In its supplemental opinion, the court accepted as true the insureds’ version of the contract 

terms, but concluded that even if “the express words, ‘duty to cooperate,’ [were] omitted from 

the contract, such a duty could reasonably be inferred based merely on principles of fairness 

and good faith.” Id. In determining the scope of the duty, the court noted that an insurer is 

dependent on its insured for fair and complete disclosure because the insurer typically has little 

or no knowledge of the facts surrounding a claimed loss, whereas the insured has exclusive 

knowledge of such facts. Id. at 204. Accordingly, 

“[w]hile the insured has no obligation to assist the insurer in any effort to defeat 

recovery of a proper claim, the cooperation clause does obligate the insured to disclose 

all of the facts within his knowledge and otherwise to aid the insurer in its 

determination of coverage under the policy. [Citation.] The insurer is entitled, 

irrespective of whether its duty is to defend or to indemnify, to gain as much 

knowledge and information as may aid it in its investigation, or as may otherwise be 

significant to the insurer in determining its liability under the policy and in protecting 

against fraudulent claims. To hold otherwise effectively places the insurer at the mercy 

of the insured and severely handicaps it in contesting a claim. [Citation.]” Id.

The majority’s analysis of Motorola’s duty to cooperate is inconsistent with, and refuted by, 

Waste Management, which determined under similar facts and essentially identical 

cooperation clause language that the attorney-client privilege was not applicable to bar the 

disclosure to the insurer of defense litigation files about the underlying litigation. 

¶ 70 Third, concerning the common interest doctrine, the majority again erroneously attaches 

significance to the fact that the sought discovery involves Motorola’s litigation risk analysis, 

which occurred years before any clean room plaintiffs gave Motorola notice of their cause of 

action. As discussed above, this fact is completely irrelevant in this discovery dispute because 

Motorola has placed at issue its knowledge of the risk of clean room litigation by successfully 

moving the trial court, over the insurers’ objections, to lift the stay in the coverage litigation 

and by arguing that Motorola has complied with the insurance contract provisions and thus is 

entitled to summary judgment on the issue of the insurers’ duty to pay Motorola’s defense 

costs. Moreover, the majority’s vague analysis of the common interest issue in supra ¶¶ 38-40 

cites no support for the proposition that Waste Management’s common interest analysis is 

somehow limited to situations where the underlying litigation in a coverage dispute has 

commenced. Waste Management clearly states that in coverage disputes between insurers and 

their insureds, until there is a declaration to the contrary, the insurers continue to bear potential 

responsibility for settlement and litigation costs in the underlying action and thus the insurers 
- 20 - 

and insureds have a common interest in documents generated in anticipation of minimizing 

liability in the underlying defense litigation. Waste Management, 144 Ill. 2d at 194-95, 209. 

Although Motorola and the insurers are now adverse concerning the issue of coverage, no such 

adversity exists as to the underlying litigation. See id. at 209. 

¶ 71 Finally, after the majority concludes that Waste Management’s duty to cooperate and 

common interest doctrine analysis of attorney-client privileged documents does not apply to 

the documents withheld here, the majority incoherently states that its “decision does not 

necessarily mean that all of the documents withheld by [Motorola] are properly shielded by the 

attorney-client privilege” and that the trial court should conduct an in camera examination to 

determine if the attorney-client privilege even applies. Supra ¶ 40. If the majority thinks 

Motorola failed to meet its burden to show that the withheld documents were covered by the 

attorney-client privilege, then the majority should not have issued what amounts to an advisory 

opinion.