asd
ee
—
io

|

Husky described document P110 as an e-mail with attachment dated October 1, 1998,
from Hackenberg to Arnott and eleven other Husky employees. No information relating to the
attachment is included on Husky's privilege log. For that reason, the attachment must be

disclosed. The e-mail itself contains no privileged or protected information.

lac)
=
i
i

Husky described document P111 as an undated facsimile from Arnott to Whiffen. No
information relating to the faxed documents is included on Husky's privilege log. For that

reason, the faxed documents must be disclosed.

led
bat
—
Is

Husky described document P112 as a letter dated July 8, 1997, from Olaru to Whiffen,
Bouti, and Peter Hall, all Husky employees. This Court cannot tell from the content of the letter
or from Husky's description of the letter whether the redacted portion of the letter is protected
under the attorney-client privilege or work-product doctrine. Therefore, the letter must be

disclosed.

114
Husky described document P114 as an e-mail dated March 11, 1999, from Arnott to
Jenko. Included with the e-mail are attached messages and documents. Neither the attached

messages nor the attached documents are described at all on Husky's privilege log. For that

-19-


P87

Husky described document P87 as a letter dated February 28, 2001, from Jonathan
Fischer, a Mold-Masters employee, to Schad. Some handwritten notes have been redacted from
the letter. No information relating to the handwritten notes is included on Husky's privilege log.

For that reason, the handwritten notes must be disclosed.

Husky described document P89 as a letter dated February 23, 2001, from Alan Cantor,
Mold-Masters's lawyer, to Schad and Fischer. Some handwritten notes have been redacted from
the letter, No information relating to the handwritten notes is included on Husky's privilege log.

For that reason, the handwritten notes must be disclosed.

P91

Husky described document P91 as an e-mail dated March 3, 2001, from T.J. Dhillon, a
Husky employee, to Arnott and thirteen other Husky employees. This Court cannot tell from the
content of the e-mail or from Husky's description of the e-mail whether any part of the e-mail
contains information protected under the attorney-client privilege. The content of the e-mail
reveals that the information contained in the e-mail was prepared in the ordinary course of

business and not in anticipation of litigation; the e-mail merely conveys business information to

sales associates. Therefore, the e-mail must be disclosed.

-13-


P133

Husky described document P133 as a facsimile dated November 22, 1999, from Arnott to
Bachman. The content of the facsimile reveals that the redacted information contains a
confidential communication that was made for the purpose of obtaining legal advice, but the

information must be disclosed pursuant to the September 7 order because the information relates

to the validity of the 928 patent.

P136

Husky described document P136 as an e-mail dated November 16, 1999, from Arnott to
Ralph Gauss and five other Husky employees. Included with the e-mail are attached messages
that are not described at all on Husky's privilege log. For that reason, the attached messages must
be disclosed. The content of the e-mail itself does not reveal any confidential communication
that was made for the purpose of obtaining legal advice. This Court cannot tell from the content
of the e-mail or from Husky's description of the e-mail whether the redacted information

contained in the e-mail is protected under the work-product doctrine. Therefore, the e-mail must

be disclosed.

140
Husky described document P140 as an undated e-mail from Arnott to Gauss and three
other Husky employees. Included with the e-mail are attached messages that are not described at

all on Husky's privilege log. For that reason, the attached messages must be disclosed. The

content of the e-mail itself does not reveal any confidential communication that was made for the

-23-


doctrine states that "a party may obtain discovery of documents . . . otherwise discoverable . ..
and prepared in anticipation of litigation or for trial by or for another party or by or for that other
party's representative only upon a showing that the party seeking discovery has substantial need
of the materials in the preparation of the party's case and that the party is unable without undue
hardship to obtain the substantial equivalent of the materials by other means." Fed. R. Civ. P.
26(b)(3). The party asserting the work-product doctrine must establish all of its elements on a
document-by-document basis. Applied Telematics, Inc. v. Sprint Communications Co., Civ. A.
No. 94-4603, 1996 WL 539595, at *4 (ED. Pa. Sept. 18, 1996). The threshold determination in
any case is "whether, in light of the nature of the document and the factual situation in the
particular case, the document can fairly be said to have been prepared or obtained because of the
prospect of litigation." Binks Mfg. v. National Presto Indus., 709 F.2d 1109, 11 18-19 (7th Cir.
1983) (quoting 8 Charles Alan Wright et al., Federal Practice and Procedure § 2024, at 343 (2d
ed. 1994)).

As to any information withheld pursuant to the attorney-client privilege or work-product
doctrine, Rule 26(b)(5) requires that the withholding party make the claim of privilege or
protection expressly "and describe the nature of the documents, communications, or things not
produced or disclosed in a manner that, without revealing information itself privileged or
protected, will enable other parties to assess the applicability of the privilege or protection."
Fed, R. Civ. P. 26(b)(5). For each document, this description should include the date of the
document, all authors and recipients of the document along with their capacities, a statement of
the subject matter of the document, and an explanation of the basis for withholding the document

from discovery. SmithKline Beecham Corp. v. Apotex Corp., 193 F.R.D. 530, 533-34 (N_D. Ill.

-4-


Iv.
For the reasons stated, this Court grants Mold-Masters's motion in part and denies it in

part. Husky must produce documents to Mold-Masters as stated above.

ENTER ORDER:

rule. C

MARTIN C. ASHMAN
Dated: December 5, 2001. United States Magistrate Judge

-34-


reason, the attached messages and documents must be disclosed. ‘The content of the e-mail itself
reveals that the information contained up to the sentence beginning with "To file" is not protected
against disclosure under the attorney-client privilege. This Court cannot tell from the content of
the e-mail or from Husky's description of the e-mail whether the rest of the e-mail contains
information protected under the attorney-client privilege. The e-mail does contain information
that was prepared in anticipation of litigation in the paragraphs up to and including the paragraph
beginning with “In the meantime” as well as the sentence beginning with "Finally", but the
information must be disclosed pursuant to the September 7 order because the information relates
to the validity of the 928 patent. The remainder of the e-mail is not protected under the
work-product doctrine because the information was prepared in the ordinary course of business

and not in anticipation of litigation. Incidentally, P114 is identical to P7 5.

P15
Husky described document P115 as an April 28, 1997 report authored by Bouti. The
content of the report reveals that the information contained in the report is not protected under

the attorney-client privilege or work-product doctrine; the report merely contains information

relating to the design of a potential product. Therefore, the report must be disclosed.

116
Husky described document P116 as an e-mail dated August 6, 1997, from Olaru to Martin
Osterode and four other Husky employees. The content of the e-mail reveals that the redacted

information contained in the e-mail is not protected under the attorney-client privilege or

-20-


P147

Husky described document P147 as an e-mail dated January 18, 1999, from Bouti to
Arnott, Jenko, Von Buren, and Alex Teng, all Husky employees. The content of the redacted
portion of the e-mail does not contain a confidential communication that was made for the
purpose of obtaining legal advice. This Court cannot tell from the content of the e-mail or from

Husky's description of the e-mail whether the redacted information contained in the e-mail is

protected under the work-product doctrine. Therefore, the e-mail must be disclosed.

P148

Husky described document P148 as an e-mail dated November 11, 1998, from Jenko to
Arnott. Included with the e-mail is an attached message that is not described at all on Husky's
privilege log. For that reason, the attached message must be disclosed. The content of the e-mail
does not contain a confidential communication that was made for the purpose of obtaining legal
advice. The content of the e-mail reveals that the e-mail was prepared in the ordinary course of

business and not in anticipation of litigation; the e-mail pertains to the design of a potential

product. Therefore, the e-mail must be disclosed.

P152
Husky described document P152 as an e-mail dated May 22, 1997, from Whiffen to Bouti
and Olaru. Included with the e-mail is an attached message that is not described at all on Husky's

privilege log. For that reason, the attached message must be disclosed. The information

contained in the e-mail has already been disclosed so no additional rulings are necessary.

-26-


paragraph beginning with "The preliminary" relays legal advice unrelated to the validity of the
928 patent so the information need not be disclosed. This Court cannot tell from the content of
the letter or from Husky's description of the letter whether the redacted information contained in
the remaining paragraphs is protected under the attorney-client privilege. The content of the
letter reveals that the redacted information contained in the remaining paragraphs was prepared
in the ordinary course of business and not in anticipation of litigation; the information pertains to

the design of a potential product.

P129
Husky described document P129 as a facsimile with attachment dated October 16, 1998,
from Arnott to Whiffen. The attachments are not described at all on Husky's privilege log. For

that reason, the attachments must be disclosed. The facsimile cover sheet has already been

disclosed so no additional rulings are necessary.

130
Husky described document P130 as a May 12, 1997 report authored by Harold Godwin, a
Husky employee. The content of the report reveals that the information contained in the report is

not protected against disclosure under the attorney-client privilege or work-product doctrine; the

information pertains to the design of a potential product. Therefore, the report must be disclosed.

-22-


Copies have been mailed to:

DANIEL A. BOEHNEN, Esq.
CHRISTOPHER M. CAVAN, Esq.
JOSHUA R. RICH, Esq.

PAUL S. TULLY, Esq.

McDonnell Boehnen Hulbert & Berghoff
300 South Wacker Drive

Suite 3200

Chicago, IL 60606

Attorneys for Plaintiff

CONSTANTINE L. TRELA, JR., Esq.
LISA A. SCHNEIDER, Esq.

Sidley Austin Brown & Wood

10 South Dearborn Street

Chicago, IL 60603

BRUCE C. HAAS, Esq.

MARC J. PENSABENE, Esq.
Fitzpatrick Cella Harper & Scinto
30 Rockefeller Plaza

New York, NY 10112-3801

Attorneys for Defendant


106
Husky described document P106 as an e-mail dated December 8, 1999, from Arnott to
Jenko. Included with the e-mail are attached messages that are not described at all on Husky's

privilege log. For that reason, the attached messages must be disclosed. All of the information

contained in the e-mail itself has already been disclosed so no additional rulings are necessary.

lac
bat
i>
I

Husky described document P107 as an e-mail with attachment dated November 27, 1998,
from Arnott to Jenko and Von Buren. This Court cannot tell from the content of the e-mail or
from Husky's description of the e-mail whether the redacted information contained in the e-mail
is protected under the attorney-client privilege. The content of the e-mail reveals that the
redacted information was prepared in the ordinary course of business and not in anticipation of
litigation; the e-mail pertains to the design of a potential product. Therefore, the e-mail must be

disclosed.

P108

Husky described document P108 as an e-mail dated November 11, 1998, from Arnott to
Jenko and Von Buren. This Court cannot tell from the content of the e-mail or from Husky's
description of the e-mail whether the redacted information in the paragraphs beginning with "We
also" and "In summary" is protected under the attorney-client privilege. The content of the

redacted paragraph beginning with "Meanwhile" relays legal advice, but the information

contained in the paragraph must be disclosed pursuant to the September 7 order because the

-17-


contained in the e-mail must be disclosed pursuant to the September 7 order because the

information relates to the validity of the 928 patent.

P38

Husky described document P38 as a May 15, 2000 report authored by Arnott. This Court
cannot tell from the content of the report or from Husky's description of the report whether the
report contains information protected under the attorney-client privilege or work-product

doctrine. The report is a compilation of public information; its purpose is unknown. Therefore,

the report must be disclosed.

P50

Husky described document P50 as a November 25, 1999 report authored by Arnott. The
report is an earlier draft of P38. This Court cannot tell from the content of the report or from
Husky's description of the report whether the report contains information protected under the

attorney-client privilege or work-product doctrine. The report is a compilation of public

information; its purpose is unknown. Therefore, the report must be disclosed.

P64

Husky described document P64 as an e-mail dated March 19, 1999, from Ed Jenko, a
Husky employee, to Arnott, Charlie Hillman, David Whiffen, Martin Baumann, and David
Meyer, all Husky employees. Included with the e-mail is an attached message and a handwritten

note that are not described at all on Husky's privilege log. For that reason, the attached message

-9-


Husky's description of the report or handwritten notes whether any part of the report or
handwritten notes is protected under the attorney-client privilege or work-product doctrine.

Therefore, the report and handwritten notes must be disclosed.

P228

Husky described document P228 as undated handwritten notes from the file of Arnott.
This Court cannot tell from the content of the handwritten notes or from Husky's description of
the handwritten notes whether any part of the notes is protected under the attorney-client
privilege. The content of the handwritten notes reveals that the information contained in the

notes was prepared in anticipation of litigation; the information relates to the instant suit, but not

to the validity of the 928 patent.

P229

Husky described document P229 as handwritten notes dated February 28, 2001, from the
file of Arnott. This Court cannot tell from the content of the handwritten notes or from Husky's
description of the handwritten notes whether any part of the notes is protected under the
attorney-client privilege. The content of the handwritten notes reveals that the information

contained in the notes was prepared in anticipation of litigation; the information relates to the

instant suit, but not to the validity of the 928 patent.

-32-


Husky described document P161 as a January 7, 1999 report authored by Olaru. The
report contains handwritten notes that are not described at all on Husky's privilege log. For that
reason, the handwritten notes must be disclosed. The content of the report itself reveals that the
information contained in the report is not protected against disclosure under the attorney-client
privilege or work-product doctrine; the report merely provides an update on issues relating to

Husky's products or potential products. Therefore, the report must be disclosed.

170
Husky described document P170 as a facsimile from Arnott to Whiffen. Included with
the facsimile cover sheet are attached documents that are not described at all on Husky's privilege

log. For that reason, the attached documents must be disclosed. The information contained in

the facsimile has already been disclosed so no additional rulings are necessary.

Husky described document P216 as a design drawing and patent with handwritten notes
dated July 16, 1996, from the file of Jenko. No information pertaining to the handwritten notes
(e.g., who wrote the notes) is included on Husky's privilege log. For that reason, the handwritten
notes must be disclosed. This Court cannot tell from the content of the drawing or patent or from
Husky's description of the drawing or patent whether any part of the drawing or patent is
protected under the attorney-client privilege or work-product doctrine. Therefore, the drawing

and patent must be disclosed.

-29-


Lastly, we mention this Court’s September 7 order. Because Husky has relied on a legal
opinion regarding the validity of the 928 patent, the September order requires Husky to produce
to Mold-Masters “all documents or portions of documents that relate to the subject matter of the
opinion." (Order 9/7/01 at 2.) Thus, any document or portion of any document in Husky's
possession that concerns, pertains to, or refers to the validity of the 928 patent must be disclosed,

regardless of whether that document would otherwise be privileged or protected.

kOe OK

Against this backdrop, we turn to the documents submitted for in camera review” Each
document is analyzed separately by the document number provided by Husky. Because Husky's
objections to disclosure are based on the content of each document, we rely heavily on Husky's
Third Amended Privilege Document Log to assess Husky's assertion of the attorney-client
privilege and work-product doctrine. In this regard, Husky's descriptions of the documents are
quite unhelpful. The descriptions are general and conclusory, making it extremely difficult to
assess the applicability of Husky's assertions of the attorney-client privilege and work-product

doctrine? Nevertheless, to the extent this Court can discern from the content of the documents

_

2 As an initial matter, Husky has not submitted documents P48, P52, P79, P86, P92,
P118, P123, P124, P126, P128, P135, P153, P165, P166, P167, and P169 to this Court for in
camera review despite the fact that Mold-Masters raised objections to Husky's withholding of
these documents from discovery. We find that all of the documents must be disclosed, assuming
that the documents have not already been disclosed. Also, we note that Husky included a
document titled Husky's In Camera Explanation for Withholding Documents as Privileged within
each binder of documents submitted for in camera review. These ex parte communications have
not been considered by this Court.

3 Ror example, most document descriptions contain slight variations of the following
phrase: "confidential communication made for the purpose of providing legal advice in
anticipation of litigation, not regarding the 928 patent." (Def's ‘Third Am. Privilege Doc. Log at

(continued...)

-6-


2000); Weeks v. Samsung Heavy Indus., No. 93 C 4899, 1996 WL 341537, at *2 (N.D. Ill. June
20, 1996); Allendale Mut. Ins. Co. v. Bull Data Sys., Inc., 145 F.R.D. 84, 88 (N.D. Hil. 1992). If
the description falls below this standard and fails to provide sufficient information for the court
and the party seeking disclosure to assess the applicability of the attorney-client privilege or
work-product doctrine, then disclosure of the document is an appropriate sanction. SmithKline
Beecham Corp., 193 F.R.D. at 534; Christman v. Brauvin Realty Advisors, Inc., 185 F.R.D. 251,
257-58 (N.D. Ill. 1999); Conagra, Inc. v. Arkwright Mut. Ins. Co., 32 F. Supp. 2d 1015, 1017-18
(ND. Ill. 1999); Stern Walters Partners, Ine. v. Kaminky, No. 94 C 5705, 1996 WL 115290, at
*5-6 (ND. Ill. Mar. 13, 1996).

It should hardly come as a surprise that an attachment to a document must appear as a
separate entry on the privilege log. See O'Connor v. Boeing N. Am., Inc., 185 F.R.D. 272, 280
(C.D. Cal. 1999); Leonen v. Johns-Manville, 135 F.R.D. 94, 98 (D.N.J. 1990); Sneider v.
Kimberly-Clark Corp., 91 F.R.D. 1, 4 (ND. IIL. 1980). Courts provide protection against
disclosure pursuant to the attorney-client privilege and work-product doctrine on a
document-by-document basis. Since a document with an attachment constitutes two separate
documents, a party objecting to the disclosure of a document with an attachment must prove that
both the document and the attachment individually satisfy the requirements of the applicable
privilege or doctrine. Lawless, 709 F.2d at 487; Applied Telematics, Inc., 1996 WL 539595, at
*4. Merely attaching a document to a privileged or protected document does not make the
attached document privileged or protected. O'Connor, 185 F.R.D. at 280; Leonen, 135 F.R.D. at

98; Sneider, 91 F.R.D. at 4,


information relates to the validity of the 928 patent. The content of the redacted paragraph
beginning with "If we" relays legal advice that does not pertain to the validity of the 928 patent,
and therefore the information need not be disclosed. The content of the redacted paragraphs
beginning with "We also" and “In summary", except for the final sentence beginning with "Can",
reveals that the information contained in those paragraphs was prepared in anticipation of
litigation, but the information must be disclosed pursuant to the September 7 order because the
information relates to the validity of the 928 patent. The sentence beginning with "Can" is not
protected under the work-product doctrine because the information contained in that sentence
was prepared in the ordinary course of business and not in anticipation of litigation; the

information pertains to the manufacture of a potential product.

P109

Husky described document P109 as an e-mail dated October 1, 1998, from Arnott to
Whiffen, Olaru, Jenko, and Von Buren. This Court cannot tell from the content of the e-mail or
from Husky's description of the e-mail whether the redacted portion of the e-mail is protected
under the attorney-client privilege. The content of the redacted information contained in the
sentence beginning with "What" reveals that the information was prepared in anticipation of
litigation, but the information must be disclosed pursuant to the September 7 order because the
information relates to the validity of the 928 patent. The content of the redacted information
contained in the sentence beginning with "Please" reveals that the information was prepared in
the ordinary course of business and not in anticipation of litigation; the information pertains to

the design of a potential product. Therefore, the e-mail must be disclosed.

-18-


protected under the attorney-client privilege. The content of the e-mail reveals that the e-mail
was prepared in anticipation of litigation, but the information contained in the e-mail must be
disclosed pursuant to the September 7 order because the information relates to the validity of the

928 patent.

P26

Husky described document P26 as an e-mail dated May 18, 2000, from Arnott to Spencer.
Included with the e-mail is an attached message that is not described at all on Husky's privilege
log. For that reason, the attached message must be disclosed. The content of the e-mail itself
does not reveal a confidential communication that was made for the purpose of obtaining legal
advice. The content of the e-mail reveals that the e-mail was prepared in anticipation of

litigation, but the information contained in the e-mail must be disclosed pursuant to the

September 7 order because the information relates to the validity of the 928 patent.

P27

Husky described document P27 as an e-mail with handwritten notes dated May 18, 2000,
from Spencer to Arnott. Included with the e-mail are attached messages that are not described at
all on Husky's privilege log. Also, Husky failed to provide any information about the
handwritten notes on its privilege log. For that reason, the attached messages and handwritten
notes must be disclosed. The content of the e-mail itself does not reveal a confidential

communication that was made for the purpose of obtaining legal advice. The content of the

e-mail reveals that the e-mail was prepared in anticipation of litigation, but the information

-8-


purpose of obtaining legal advice. This Court cannot tell from the content of the e-mail or from
Husky's description of the e-mail whether the redacted information contained in the e-mail is

protected under the work-product doctrine. Therefore, the e-mail must be disclosed.

P142

Husky described document P142 asa letter dated October 22, 1999, from Bachman to
Arnott. Included with the letter are attachments that are not described at all on Husky's privilege
log. For that reason, the attachments must be disclosed. The content of the letter is not protected
against disclosure under the attorney-client privilege because the information contained in the
letter does not reveal a confidential communication that was made for the purpose of obtaining
legal advice. The content of the letter is protected against disclosure under the work-product
doctrine because the information was prepared in anticipation of litigation, but the information

must be disclosed pursuant to the September 7 order because the information relates to the

validity of the 928 patent.

pi44

Husky described document P144 asa letter dated October 18, 1999, from Arnott to Gauss
and two other Husky employees. Included with the letter are attachments that are not described
at all on Husky's privilege log. For that reason, the attachments must be disclosed. The redacted
information contained in the paragraphs beginning with "I have" and "Jf you" is not protected

under the attorney-client privilege because the information does not reveal a confidential

communication that was made for the purpose of obtaining legal advice. This Court cannot tell

-24-


——— i

Minute Order Fort (0697)

United States District Court, Northern District of Winois

Ni f Assigned Ji Ta i ;
a ieate Sua Suzanne B. Conlon Se ned Suaee Martin C. Ashman
CASE NUMBER 01 C 1576 DATE 12/5/2001
CASE Mold-Masters Limited vs. Husky Injection Molding Systems, Lt
TITLE _|

[Inthe following box (a) indicate the party filing the motion, ¢-8.» plaintiff, defendant, 3rd party plaintiff, and (b) state briefly thenature
of the motion being presented.

MOTION:

DOCKET ENTRY:

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

Q) a Brief in support of motion due

(3) o Answer brief to motion due__- Reply to answer brief due__

(4) Oo Ruling/Hearing on_ set for at

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

(6) a Pretrial conference[held/continued to] [set for/re-set for] on_ set for____at

(7) o Trialfset for/re-set for] on __ at_

(8) Oo (Bench/Jury trial] [Hearing] held/continued to at

(9) im} This case is dismissed [with/without] prejudice and without costs[by/agreement/pursuant to]

Orrcpam O General Rule21 FRCP4@(1) O FRCP41(a)(2)-

(10) a [Other docket entry] Enter memorandum opinion and order. Plaintiff's motion to compel
production of documents and things identified in Husky’s third amended privilege log {11 5-1] is granted
in part and denied in part.

(e35) ‘a [For further detail see order attached to the original minute order.}

No notices required, advised in open court.
4

No notices required. umber of notices

Y_| Notices mailed by judge’s staff DEC. 0 6 200:

Notified counsel by telephone. date docketed

Docketing to mail notices.

Mail AO 450 form.

|__| “3
7 | Copy to indge/mesistratemtge. ~
courtroom . iy
Is deputy’s wie 18
initials
Date/time received in
ate ee Office alg deputy il



prepared in anticipation of litigation, but the information must be disclosed pursuant to the

September 7 order because the information relates to the validity of the 928 patent.

PB

Husky described document P75 as an e-mail dated March 11, 1999, from Arnott to Jenko.
Included with the e-mail are attached messages that are not described at all on Husky's privilege
log. For that reason, the attached messages must be disclosed. The content of the e-mail itself
reveals that the information contained up to the sentence beginning with "To file" is not protected
against disclosure under the attorney-client privilege. This Court cannot tell from the content of
the e-mail or from Husky's description of the e-mail whether the rest of the e-mail contains
information protected under the attorney-client privilege. The e-mail does contain information
prepared in anticipation of litigation in the paragraphs up to and including the paragraph
beginning with "In the meantime" as well as the sentence beginning with "Finally", but the
information must be disclosed pursuant to the September 7 order because the information relates
to the validity of the 928 patent. The remainder of the e-mail is not protected under the

work-product doctrine because the information was prepared in the ordinary course of business

and not in anticipation of litigation.

Po
a
joo

Husky described document P78 as an undated e-mail from ‘Arnott to Jenko and Stefan
Von Buren, a Husky employee. Included with the e-mail is an attached message that is not

described at all on Husky's privilege log. For that reason, the attached message must be

-li-


and handwritten note must be disclosed. The content of the e-mail itself does not reveal a
confidential communication that was made for the purpose of obtaining legal advice. The
content of the e-mail in the paragraph beginning with “Robin" reveals that the information was
prepared in anticipation of litigation, but the information must be disclosed pursuant to the
September 7 order because the information relates to the validity of the 928 patent. This Court
cannot tell whether the rest of the e-mail is protected under the work-product doctrine; therefore,

the information must be disclosed.

P65

Husky described document P65 as an e-mail dated March 18, 1999, from Jenko to Arnott.
The content of the e-mail does not reveal a confidential communication that was made for the
purpose of obtaining legal advice. ‘The content of the e-mail reveals that the e-mail was prepared
in anticipation of litigation, but the information contained in the e-mail must be disclosed

pursuant to the September 7 order because the information relates to the validity of the 928

patent.

P72
Husky described document P72 as a letter dated November 20, 1998, from Robert
Stratton, Husky's lawyer, to Amott, and Rick Bauer, Husky's lawyer. The content of the letter

does not reveal a confidential communication that was made for the purpose of obtaining legal

advice. The content of the e-mail reveals that the information contained in the e-mail was

-10-


223
Husky described document P223 as an undated report authored by Arnott. The report
consists solely of approximately twenty-seven separate documents that are not described at all on

Husky's privilege log. For that reason, the entire document must be disclosed.

P224

Husky described document P224 as a June 3, 1997 report with handwritten notes from the
file of Olaru. This Court cannot tell from the content of the report or handwritten notes or from
Husky's description of the report or handwritten notes whether any part of the report or

handwritten notes is protected under the attorney-client privilege or work-product doctrine.

Therefore, the report and handwritten notes must be disclosed.

P225,

Husky described document P225 as a June 3, 1997 report with handwritten notes from the
file of Olaru. This Court cannot tell from the content of the report or handwritten notes or from
Husky's description of the report or handwritten notes whether any part of the report or

handwritten notes is protected under the attorney-client privilege or work-product doctrine.

Therefore, the report and handwritten notes must be disclosed.

P226

Husky described document P226 as a June 3, 1997 report with handwritten notes from the

file of Olaru. This Court cannot tell from the content of the report or handwritten notes or from

-31-


P218

Husky described document P218 as a February 28, 2001 report with handwritten notes
authored by Baumann. This Court cannot tell from the content of the report or handwritten notes
or from Husky's description of the report or handwritten notes whether any part of the report or

handwritten notes is protected under the attorney-client privilege or work-product doctrine.

Therefore, the report and handwritten notes must be disclosed.

P219
Husky described document P219 as a February 28, 2001 report authored by Baumann.
This Court cannot tell from the content of the report or from Husky's description of the report

whether any part of the report is protected under the attorney-client privilege or work-product

doctrine. Therefore, the report must be disclosed.

P220

Husky described document P220 as undated drawings with handwritten notes from the
file of Arnott. This Court cannot tell from the content of the drawings or handwritten notes or
from Husky's description of the drawings or handwritten notes whether any part of the drawings

or handwritten notes is protected under the attorney-client privilege or work-product doctrine.

Therefore, the drawings and handwritten notes must be disclosed.

-30-


and Husky's description of the documents that the attorney-client privilege or work-product
doctrine applies, such documents may be withheld. Yet documents that are not described at all
on Husky's privilege log must be disclosed. This Court has provided Husky with multiple
opportunities and sufficient time to comply with Rule 26(b)(5). At this stage of the game,
immediate production of any document not described at all on Husky's privilege log is the

necessary sanction.

Husky described document P3 asa letter with attachment dated February 21, 2001, from
Robert Bachman, Husky's lawyer, to Robin Arnott, a Husky employee. A handwritten note has
been redacted from the letter. The handwritten note must be disclosed because Husky failed to

provide any information describing the handwritten note on its privilege log.

24

Husky described document P21 as an e-mail dated August 23, 2000, from Arnott to Eric
Spencer and Mike Gould, Husky employees. The content of the e-mail preceding the sentence
beginning with "The reason" does not reveal a confidential communication that was made for the
purpose of obtaining legal advice. This Court cannot tell from the content of the e-mail or from
Husky's description of the e-mail whether the remainder of the e-mail contains information

_

3(,..continued)
1-19.) Husky's privilege Jog does not describe the subject matter of the documents, which,
especially in the case of untitled drawings, often leaves this Court guessing as to what the
documents pertain.

-7-


work-product doctrine; the information deals with a possible business arrangement between

Kona and Husky. Therefore, the e-mail must be disclosed.

P119
Husky described document P119 as a letter with attachment dated July 8, 1997, from
Olaru to Whiffen, Bouti, and Hall. This Court cannot tell from the content of the letter or from

Husky's description of the letter whether the redacted portion of the letter contains information

protected under the attorney-client privilege or work-product doctrine, P119 is identical to P112.

P121

Husky described document P121 asa March 21, 1997 report with attachment authored by
Bouti. Included with the report are two attached documents that are not described at all on
Husky's privilege log. For that reason, the attached documents must be disclosed. The content of
the report itself reveals that the information contained in the report is not protected against
disclosure under the attorney-client privilege or work-product doctrine; the report contains
business information regarding the design of a potential product. Therefore, the report must be

disclosed.

P125

Husky described document P125 asa letter dated February 24, 1997, from Olaru to

Whiffen and Rajan Puri, a Husky employee. The redacted information contained in the

-21-


P15s4

Husky described document P154 as an e-mail with attachment dated October 1, 1998,
from Arnott to Whiffen, Olaru, Jenko, and Von Buren. This Court cannot tell from the content
of the e-mail or from Husky's description of the e-mail whether the redacted portion of the e-mail
is protected under the attorney-client privilege. The content of the redacted information
contained in the sentence beginning with "What" reveals that the information was prepared in
anticipation of litigation, but the information must be disclosed pursuant to the September 7
order because the information relates to the validity of the 928 patent. The content of the
redacted information contained in the sentence beginning with "Please" reveals that the
information was prepared in the ordinary course of business and not in anticipation of litigation;

the information pertains to the design of a potential product. If this ruling sounds similar to

P109, that is because P154 is identical to P109.

P156

Husky described document P156 as an e-mail dated January 19, 1999, from Arnott to
Jenko, Von Buren, Bouti, and Olaru. Included with the e-mail is an attached message that is not
described at all on Husky's privilege log. For that reason, the attached message must be
disclosed. The redacted information contained in the paragraphs of the e-mail beginning with
"The situation" and "If Mold-Masters" relays legal advice, but the information must be disclosed
pursuant to the September 7 order because the information relates to the validity of the 928
patent. The redacted information contained in the paragraph beginning with "Based" is not

protected under the attorney-client privilege because of waiver; the information relays legal

-27-


Procedure 26(b)(5), and this Court's September 7 order. Then we apply these principles and rules
to the appropriate documents to resolve the instant dispute.

The attorney-client privilege protects confidential communications between a client and
his legal advisor. It developed as a consideration for the fostering of confidence and trust by the
client in his legal advisor so that the legal advisor could provide effective legal advice. Trammel
y. United States, 445 US. 40, 51 (1980); Prevue Pet Prods., Inc. v. Avian Adventures, Inc., 200
ERD. 413, 415 (N.D. I. 2001) (quoting Upjohn Co. v. United States, 449 US. 383, 389
(1981)). The general principle of the attorney-client privilege takes the following form: "Where
legal advice of any kind is sought from a professional legal adviser in his capacity as such, the
communications relating to that purpose, made in confidence by the client, are at his instance
permanently protected from disclosure by himself or by the legal adviser, except the protection
be waived." United States v. White, 950 F.2d 426, 430 (7th Cir. 1991) (quoting 8 Wigmore,
Evidence § 2292, at 554 (McNaughton rev. 1961)). Because the attorney-client privilege isin
derogation of the judicial search for truth, it is strictly construed. In re Walsh, 623 F.2d 489, 493
(7th Cir. 1980). The party asserting the attorney-client privilege bears the burden of establishing
all of its elements on a document-by-document basis. United States v. Lawless, 709 F.2d 485,
487 (7th Cir. 1983).

The work-product doctrine not only protects communications between a client and his
legal advisor, but also much that has its source outside of client communications. It developed as
a consideration for the maintenance ofa "certain degree of privacy" to protect the legal advisor's
work so as to promote balance and fairness in the adversarial system. Upjohn Co., 449 USS, at

397-402; Hickman v. Taylor, 329 USS. 495, 507-12 (1947). In codified form, the work-product

-3-


ied
R-}
jo

Husky described document P93 as an undated report authored by Bruce Haas, Husky's
lawyer. This Court cannot tell from the content of the report or from Husky's description of the
report whether the report contains redacted information that is protected under the attorney-client
privilege. The content of the report reveals that the redacted information contained in the report
was prepared in anticipation of litigation, but the redacted information contained in bullet points
two and three on page six of the report must be disclosed pursuant to the September 7 order
because the information relates to the validity of the 928 patent. The rest of the redacted
information contained in the report is protected against disclosure under the work-product
doctrine because the information was prepared in anticipation of litigation; the information does

not relate to the validity of the 928 patent.

pod
Husky described document P94 as a letter dated February 28, 2001, from Fischer to
Schad. Some handwritten notes have been redacted from the letter. No information relating to

the handwritten notes is included on Husky's privilege log. For that reason, the handwritten notes

must be disclosed.

ie
he
i

Husky described document P97 as undated handwritten notes authored by Derek Smith, a

Husky employee. This Court cannot tell from the content of the notes or from Husky's

-14-


work-product doctrine because the information was prepared in the ordinary course of business
and not in anticipation of litigation; the information pertains to the design of a potential product.

The second page of P104 is a copy of the first page of P104. The same analysis applies.

P105

Husky described document P105 as an e-mail with attachment dated March 11, 1999,
from Jenko to Arnott. Included with the e-mail are attached messages that are not described at
all on Husky's privilege log. (One of the attached messages is dated November 27, 1998, also
known as P107.) Also, no information relating to the attachment is included on Husky's
privilege log. Therefore, the attached messages and document must be disclosed.

This Court cannot tell from the content of the e-mail or from Husky's description of the
e-mail whether the redacted information contained in the e-mail is protected under the
attorney-client privilege. The e-mail does contain information prepared in anticipation of
litigation in the paragraph beginning with "In the meantime" and in the sentence beginning with
"Finally", but the information must be disclosed pursuant to the September 7 order because the
information relates to the validity of the 928 patent. The remainder of the redacted information
contained in the e-mail is not protected under the work-product doctrine because the information
was prepared in the ordinary course of business and not in anticipation of litigation. If this ruling
looks similar to P75, that is because P105 is identical to P75, except for the fact that parts
redacted from P75 were voluntarily disclosed by Husky in P105. Why Husky imposed on this

Court in this fashion is unexplained.

-16-


The point of contention between the parties that we confront now concerns two binders of
documents that Husky has withheld from discovery pursuant to the attorney-client privilege and
work-product doctrine. Based on Husky's description of these documents on its Third Amended
Privilege Document Log,' Mold-Masters claims that Husky's assertion of the attorney-client
privilege and work-product doctrine is improper. Based also on Husky's description of these
documents on its Third Amended Privilege Document Log, Mold-Masters claims that the
documents must be disclosed pursuant to this Court's September 7, 2001 order. The September 7
order related to legal opinions Husky had requested or received regarding any issue of validity,
infringement, enforceability, or liability with respect to the 928 patent, or which discussed the
scope of coverage or meaning of the claims of the 928 patent. The September order stated that if
Husky chose to rely on any such opinion for any purpose at any time in the litigation, Husky
would have to produce to Mold-Masters “all documents or portions of documents that relate to
the subject matter of the opinion." (Order 9/7/01 at 2.) After entry of the order, Husky did, in
fact, elect to rely ona legal opinion regarding the validity of the 928 patent.

At the suggestion of the parties, we have agreed to conduct an in camera review of the

documents in dispute. The pertinent issues have been fully briefed.

Il.
We begin our analysis with a brief discussion of the attorney-client privilege, the
work-product doctrine, the privilege log requirement contained in Federal Rule of Civil

ee

‘ Husky has amended its privilege log three times in part because of its failure to
sufficiently describe documents listed on the log.

-2-


from the content of the letter or from Husky's description of the letter whether the redacted
information contained in the paragraph beginning with "Our strategy" is protected under the
attorney-client privilege. The content of the letter reveals that the redacted information contained
in the paragraph beginning with "Our strategy" was prepared in anticipation of litigation, but the
information must be disclosed pursuant to the September 7 order because the information relates
to the validity of the 928 patent. The content of the letter also reveals that the redacted
information contained in the paragraphs beginning with "I have" and "If you plan" was prepared
in the ordinary course of business and not in anticipation of litigation; the information pertains to

the design and sale of a potential product.

P146

Husky described document P146 as an e-mail dated January 19, 1999, from Arnott to
Bouti, Von Buren, Jenko, and Olaru. The redacted information contained in the paragraphs
beginning with "The situation" and "If Mold-Masters" relays legal advice, but the information
must be disclosed pursuant to the September 7 order because the information relates to the
validity of the 928 patent. The redacted information contained in the paragraph beginning with
"Based" is not protected under the attorney-client privilege because of waiver, the information
relays legal advice contained in the e-mail that has already been disclosed. The redacted
information contained in the paragraph beginning with "Based" is not protected against
disclosure under the work-product doctrine because the information was prepared in the ordinary

course of business and not in anticipation of litigation; the information pertains to the design of a

potential product. Incidentally, P146 is identical to P81.

-25-


IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION
MOLD-MASTERS LIMITED, )
Plaintiff, } Case No. 01 C 1576
v. } Judge Suzanne B. Conlon
HUSKY INJECTION MOLDING } Magistrate Judge
SYSTEMS LTD., ) Martin C. Ashman
Defendant. }

MEMORANDUM OPINION AND ORDER

Mold-Masters Limited filed suit against Husky Injection Molding Systems Ltd. for
infringement of patent number 5,299,928 (the "928 patent"). Presently before this Court is
Mold-Masters's Motion to Compel Production of Documents and Things Identified in Husky's
Third Amended Privilege Log. For the following reasons, this Court grants Mold-Masters's

motion in part and denies it in part.

IL.
This infringement suit involving the 928 patent commenced on March 6, 2001, after
Husky refused to discontinue producing and selling a certain injection molding nozzle, the
purported infringing product, as per @ demand by Mold-Masters, which was made in a
February 23, 2001 letter. By way of history, Husky was aware of Mold-Masters's 928 patent
before the February 23 letter was sent. Husky had unsuccessfully opposed Mold-Masters's

European counterpart to the 928 patent in or around January 2001.

\w


P230

Husky described document P230 as a March 5, 2001 document authored by Arnott. This
Court cannot tell from the content of the document or from Husky's description of the document
whether any part of the document is protected under the attorney-client privilege. The content of
the document reveals that the information contained in the document was prepared in

anticipation of litigation; the information relates to the instant suit, but not to the validity of the

928 patent.

P234

Husky described document P234 as handwritten notes dated May 17, 1997, authored by
Godwin and Bouti. The content of the notes does not reveal a confidential communication that
was made for the purpose of obtaining legal advice. The content of the notes also reveals that the
information contained in the notes was prepared in the ordinary course of business and not in
anticipation of litigation; the information pertains to the design of a potential product. Therefore,

the notes must be disclosed.

Husky described document P236 as an undated draft application from the file of Bouti.
This Court cannot tell from the content of the application or from Husky's description of the
application whether any part of the application is protected under the attorney-client privilege.

Therefore, the draft application must be disclosed.

-33-


advice contained in the e-mail that has already been disclosed. The redacted information
contained in the paragraph beginning with "Based" is not protected against disclosure under the
work-product doctrine because the information was prepared in the ordinary course of business
and not in anticipation of litigation; the information pertains to the design of a potential product.

Incidentally, P156 is identical to P81.

P157

Husky described document P157 as an e-mail with attachment dated November 27, 1998,
from Arnott to Jenko and Von Buren. This Court cannot tell from the content of the e-mail or
from Husky's description of the e-mail whether the redacted portion of the e-mail is protected
under the attorney-client privilege. The content of the e-mail reveals that the redacted
information was prepared in the ordinary course of business and not in anticipation of litigation;

the information pertains to the design of a potential product. P157 is identical to P107.

P159

Husky described document P159 as a February 11, 1997 report authored by Olaru. This
Court cannot tell from the content of the report or from Husky's description of the report whether
the report is protected under the attorney-client privilege or work-product doctrine. Therefore,

the report must be disclosed.

acd
—_
nN
—

-28-


disclosed. Ali of the information contained in the e-mail itself has already been disclosed so no

additional rulings are necessary.

P81

Husky described document P81 as an e-mail dated January 19, 1999, from Arnott to
Abdeslam Bouti, George Olaru, Von Buren, and Jenko, all Husky employees. The redacted
information contained in the paragraphs beginning with "The situation" and "If Mold-Masters"
relays legal advice, but the information must be disclosed pursuant to the September 7 order
because the information relates to the validity of the 928 patent. The redacted information
contained in the paragraph beginning with "Based" is not protected under the attorney-client
privilege because of waiver; the information relays legal advice contained in the e-mail that has
already been disclosed. The redacted information contained in the paragraph beginning with
"Based" is not protected against disclosure under the work-product doctrine because the

information was prepared in the ordinary course of business and not in anticipation of litigation;

the information pertains to the design of a potential product.

Husky described document P85 as a letter dated March 6, 2001, from Daniel Boehnen,
Mold-Masters's lawyer, to Robert Schad, a Husky employee. Some handwritten notes have been
redacted from the letter. No information relating to the handwritten notes is included on Husky's

privilege log. For that reason, the handwritten notes must be disclosed.

-12-


description of the notes whether the notes contain information protected under the attorney-client

privilege or work-product doctrine. Consequently, the handwritten notes must be disclosed.

P103

Husky described document P103 as an e-mail dated January 14, 1999, from Sandra
Hackenberg, a Husky employee, to Arnott and sixteen other Husky employees. Included with the
e-mail is an attached document that is not described at all on Husky's privilege log. For that
reason, the attached document must be disclosed. The e-mail itself has already been disclosed so

no additional rulings are necessary.

P104

Husky described document P104 as an e-mail dated January 19, 1999, from Arnott to
Jenko, Von Buren, and Olaru. This document is identical to P81. Included with the e-mail is an
attached message that is not described at all on Husky's privilege log. For that reason, the
attached message must be disclosed. The attached message was disclosed in P81 anyway.

‘The redacted information contained in the paragraphs of the e-mail beginning with "The
situation" and "If Mold-Masters" relays legal advice, but the information must be disclosed
pursuant to the September 7 order because the information relates to the validity of the 928
patent. The redacted information contained in the paragraph beginning with "Based" is not
protected under the attorney-client privilege because of waiver; the information relays legal

advice contained in the e-mail that has already been disclosed. The redacted information

contained in the paragraph beginning with "Based" is not protected against disclosure under the

-15-