United States District Court, D. Utah
THORNE RESEARCH, INC. and SOFTGELFORMULATORS, INC., Plaintiffs,
XYMOGEN, INC. Defendant.
MEMORANDUM DECISION AND ORDER GRANTING
PLAINTIFFS' MOTION TO DEDESIGNATE PRIVILEGED
Stewart United States District Judge
matter is before the Court on Plaintiffs' Motion to
Dedesignate Privileged Document. For the reasons discussed
below, the Court will grant the Motion.
discovery, Defendant produced XYOMGEN238-242. Defendant
raised attorney/client and work product claims of privilege
with respect to the document during the deposition of Mike
Mahoney. Defendant then “clawed back” the
sought to dedesignate the document. The Magistrate Judge denied
Plaintiffs' request and the Court overruled
Plaintiffs' objection to the Magistrate Judge's
again produced the document during trial preparations and
listed it as Exhibit BX on its exhibit list. Plaintiffs'
counsel alerted Defendant to this and Defendant withdrew
Exhibit BX as a trial exhibit. Plaintiffs now seek to
dedesignate the document, arguing that Defendant has waived
any privilege the document enjoyed.
Rule of Evidence 502(b) provides that disclosure does not
operate as a waiver if:
(1) the disclosure is inadvertent;
(2) the holder of the privilege or protection took reasonable
steps to prevent disclosure; and
(3) the holder promptly took reasonable steps to rectify the
error, including (if applicable) following Federal Rule of
Civil Procedure 26 (b)(5)(B).
addition, courts within this circuit, including this Court,
consider the following: (1) the reasonableness of the
precautions to prevent inadvertent disclosure; (2) the time
taken to rectify the error; (3) the scope of the discovery;
(4) the extent of the disclosure; and (5) the overreaching
issue of fairness. Considering these factors, the Court
concludes that the privilege has been waived.
the Court finds that Defendant failed to take reasonable
steps to prevent disclosure. Defendant asserts that the
document was disclosed when choosing which exhibits to
include on its exhibit list. Defendant states that one of its
counsel, Mr. Fields, made a notation that Defendant should
object to the introduction of this document should Plaintiffs
attempt to introduce it. This resulted in counsel's staff
including this exhibit as a trial exhibit. Defendant argues
that Mr. Fields did not realize that the document had already
been returned and, thus, had reason to believe that
Plaintiffs might attempt to introduce it at trial.
Court finds that this explanation fails to show that
Defendant took reasonable steps to prevent disclosure.
Defendant claims that counsel did not realize that Plaintiffs
no longer had possession of the document. This claim,
however, is belied by the record wherein Plaintiffs clearly
stated that they had “destroyed all copies of the
document at Xymogen's request.”Indeed, the Court
had to request Defendant produce the document for in
camera review because Plaintiffs could not provide a
copy with their motion. Thus, even a cursory review of the
docket would have informed counsel that Plaintiffs did not
have a copy of the document. Moreover, ...