Disclosure of Communications With Prosecution Counsel During Sale of Patent Waives Privilege

Plaintiffs' motion to compel defendant to produce documents from the original patent owner's prosecution counsel was granted based on the patent purchase agreement between the original owner and defendant. "[The original owner] turned over ownership and control of all of those documents it transferred to [defendant]. . ., thereby waiving any attorney-client privilege as to those documents. Because [defendant] 'controls' the [patent] prosecution documents that [prosecution counsel] has in its possession, the documents must be produced under the existing protective order."

HTC Corp., et. al. v. IPCOM GmbH & Co. KG, 1-08-cv-01897 (DCD November 21, 2011, Order) (Collyer, J.)