Be Careful What You Ask For

In yet another in the recent spate of clients suing their (former) lawyers, a new wrinkle has emerged – the Court has ordered the plaintiff to produce certain documents pertaining to communications with their subsequently retained counsel. (Landmark Screens, LLC v. Morgan, Lewis & Bockius LLP and Thomas D. Kohler) Yes, indeed, the Court ordered the production of privileged documents.

Landmark was alleging that Attorney Kohler, who had prosecuted a patent application for them, had failed to properly claim priority from a preceding application, as a result of which certain patent rights were lost. Landmark sued Kohler, and his firm – Morgan, Lewis & Bockius, claiming inter alia (a little Latin adds class to a blog) that Morgan, Lewis had fraudulently concealed certain facts relating to its notice of the defect.

After learning of the apparent loss of patent rights, Landmark commissioned two studies as to the patentability of the subject invention. In discovery, Morgan, Lewis sought production of these studies. Landmark objected, claiming that the studies were produced by Landmark attorneys, in anticipation of litigation, and were privileged.

The Court sided with Morgan, Lewis. Landmark was alleging fraud. Therefore, its “knowledge, intent and conduct,” after it learned of the loss, were at issue. Specifically, what might Landmark have done “but for” the alleged fraud. Having raised these issues, Landmark was obliged to produce the studies, which were relevant thereto.

THE LESSON TO BE LEARNED: Privilege is not absolute; be careful what issues you raise in your pleading.