CONCLUSION
For the foregoing reasons, we deny plaintiff's objection to Magistrate Judge Bobrick’s

November 13, 2002 order which denied plaintiffs motion to compel production of patent

documents.

(I. CK

Wayne R. Andersen
United States District Judge

Dated: ( Yura 3 2003


~

Cologne, 2000WL 189858 (N.D. Ill. Dec. 20, 2000). In this case, as Magistrate Judge Bobrick

noted:

There is no implied waiver of the attorney-client privilege in this case because the
communications will not find their way into the litigation. The defendant
Adjustable does not at all represent that it is going to use the communications
between it and his lawyer in these proceedings in any way, shape or form to
substantiate its affirmative defenses.

For these reasons, we find that the Magistrate Judge was correct in his finding that the

defendant has not impliedly waived its attorney-client privilege.

Moreover, there is no evidence to suggest that attorney Lockwood’s advice was business

advice rather than legal advice. Lockwood’s opinions are protected by the attorney-client

privilege. They provide legal advice based on his review and study of a legal document in

response to defendant’s request for that legal advice. Plaintiff has offered no evidence to the

contrary. While it is true that solely personal or business advice is not protected by the attomey-

client privilege, legal advice relating to business matters clearly is. As the Court stated in

Weeks v. Samsung Heavy Industries, Ltd., 1996 WL 288511 at * 2 (N.D. Ill. May 30, 1996):

The case law is clear that the attorney-client privilege is not vitiated simply
because the attorney has weighed business considerations in rendering legal
advice. Courts have utilized the following test to distinguish legal from nonlegal
advice: [A] matter committed to a professional legal adviser is prima facie so
committed for the sake of legal advice . . . and is therefore within the privilege
unless it appears to be lacking in aspects requiring legal advice.

For these reasons, we find that Magistrate Judge Bobrick’s ruling rejecting plaintiff's

“business advice” argument is correct.


Minute Orée,Forn (0697)

United States District Court, Northern District of Illinois

Name of Assigned Judy Ins e if Other
ov Magistrate Judge Wayne R. Andersen “than assigned Judge
CASE NUMBER 1C 6181 DATE 6/3/2003
CASE Frank Marusiak vs. Adjustable Clamp Company
TITLE

[In the following box (a) indicate the party filing the motion, ¢.g., plaintiff, defendant, 3rd party plaintiff, and (b) state briefly the nature

of the motion being presented.]

ay

a [For further detail see order attached to the original minute order.]

November 13, 2002 order which denied plaintiff's motion to compel production of patent documents.

MOTION:

DOCKET ENTRY:

() Oo Filed motion of [ use listing in “Motion” box above.]

(2) o Brief in support of motion due

(3) Oo Answer brief to motion due___. Reply to answer brief due.

(4) Oo Ruling/Hearing on set for at

(5) Oo Status hearing[held/continued to] [set for/re-set for] on set for at

(6) im Pretrial conference[held/continued to] [set for/re-set for] on setfor_ se at__

(7) Q Trial[set for/re-set for] on at

(8) a (Bench/Jury trial] [Hearing] held/continued to__at

(9) a This case is dismissed {with/without] prejudice and without costs[by/agreement/pursuant to]
CUFRCP4(m) OLoca! Rule 41.1 CFRCP41(a)(1) CO FRCP41(a)(2).

qo) of (Other docket entry] We deny plaintiff’s objection to Magistrate Judge Bobrick’s

No notices required, advised in open court.
No notices required,

Notices mailed by judge’s staff,

Notified counsel by telephone.

Docketing to mail notices.

Mail AO 450 form,

Copy to judge/magistrate judge.

courtroom
TSA deputy's

number of notices

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Me
IN THE UNITED STATES DISTRICT COURT HOCKETED
FOR THE NORTHERN DISTRICT OF ILLINOIS JUN 05 2003
EASTERN DIVISION
FRANK MARUSIAK, )
)
Plaintiff, )
) No. 01 C 6181
v. )
) Wayne R. Andersen
ADJUSTABLE CLAMP COMPANY, ) District Judge
)
Defendant. )

MEMORANDUM OPINION AND ORDER

This case is before the Court on plaintiff's objection to Magistrate Judge Bobrick’s
November 13, 2002 order which denied plaintiff's motion to compel production of patent
documents pursuant to Fed.R.Civ.P. 37(a). For the following reasons, plaintiffs objection is
denied.

BACKGROUND

Plaintiff filed a motion to compel production of patent documents pursuant to
Fed.R.Civ.P. 37(a) seeking to compel defendant to produce documents related to studies of the
validity of the ‘820 patent that had been performed by defendant’s patent attorney, Fred
Lockwood, in April and July 1998. Plaintiff based his motion on the doctrine of implied waiver
and the crime/fraud exception to the attorney-client privilege. Magistrate Judge Bobrick rejected
plaintiff's arguments and denied the motion.

Plaintiff has filed an objection to Magistrate Judge Bobrick’s order. In his objection,

plaintiff relies on the doctrine of implied waiver of the attorney-client privilege and on the

Ib


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contention that the legal opinions of defendant’s patent counsel, Fred Lockwood, constitute
business advice and are not entitled to the protection of the attorney-client privilege.
DISCUSSION

Magistrate Judge Bobrick’s order is reviewed by this Court under the “clearly erroneous”
or “contrary to law” standard. Fed.R.Civ.P. 72(a); 28 U.S.C. § 636(b)(1)(A). The Seventh
Circuit has explained the standard as follows:

The district court’s view of any discovery-related decisions made by the

magistrate judge is governed by Rule 72(a) of the Federal Rules of Civil

Procedure, which provides: ‘The district court to whom the case is assigned shall

consider such objections and shal! modify or set aside any portion of the

magistrate judge’s order found to be clearly erroneous or contrary to law.’
Fed.R.Civ.P. 72(a); see also 28 U.S.C. § 636(b)(1). The clear error standard means that the
district court can overturn the magistrate judge’s ruling only if the district court is left with the
definite and firm conviction that a mistake has been made. (Citations omitted).

In this case, whether plaintiff engaged in inequitable conduct before the U.S. Patent &
Trademark Office (“PTO”) depends on the truth and materiality of the representations which
plaintiff and his attorney made to the PTO during the prosecution of the ‘820 patent.
Defendant’s assertion that plaintiff committed intentional fraud on defendant by submitting
bogus drawings to defendant in lieu of the drawings which he actually filed with the PTO does
not waive, expressly or impliedly, defendant’s attorney-client privilege with respect to the legal
opinions prepared by defendant’s patent counsel.

For implied waiver to occur, “a party must affirmatively try to use the privileged

communication to defend itself or attack its opponent.” Trustmark Ins. Co. v. General &