59.2 BIFURCATION OF PATENT AND OTHER CASES
59.201 Introduction. In some cases, courts consider bifurcating a case to avoid dealing with privilege or work product issues that might be mooted by some preliminary rulings or a jury verdict. In essence, these courts stretch to protect a litigant's privilege or work product claim by deciding other issues first, thus possibly rendering irrelevant a litigant's protection claim.
59.202 Bifurcation of Patent Cases. Courts handling patent infringement cases have traditionally considered bifurcating the trial between the liability portion and the damages portion. 1 This bifurcation delays a defendant's decision whether to waive the attorney-client privilege and work product protections by relying on a lawyer's non-infringement opinion to avoid multiple damages. 2 Selecting a term reminiscent of the old Star Trek television series, some courts call this the "Quantum dilemma," naming it after the plaintiff in a case that discussed this issue. 3
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Absent bifurcation of these issues, a party accused of patent infringement must choose between waiving the attorney-client privilege by opting to disclose a favorable opinion letter from counsel (thus bolstering a claim that the infringement was not willful) or maintaining the privilege to the detriment of this factor in the defense.
One court 4 has confirmed that courts must still have to deal with the bifurcation issue even after Knorr-Bremse, 5 in which the Federal Circuit eliminated the ability of the adversary to argue an adverse inference because the alleged infringer does not produce a lawyer's exculpatory opinion in its defense. 6
59.203 Bifurcation of Non-Patent Cases. The issue of bifurcation might also arise in non-patent cases, such as those in which a party seeking to avoid certain damages might want to assert "advice of counsel" or some other similar position. 7 Some courts have bifurcated non-patent cases. 8 Other courts have declined to do so. 9
It makes sense for courts to avoid a one-size-fits all approach to this issue, and consider bifurcation in the right circumstances.
59.3 WHO SHOULD DECIDE PRIVILEGE/WORK PRODUCT ISSUES
59.301 Introduction. Judges handling a case normally deal with any attorney-client privilege or work product protection assertions, along with the case's other aspects. However, in some situations there is an issue about which judges should address such claims. Surprisingly, only a handful of courts have reached what seems like a common sense principle, which would call upon a judge other than the judge hearing a case to review potentially protected documents in camera and make privilege/work product rulings.
Courts frequently hand off protection issues to special masters or similar non-judges. Of course, in that situation judges normally retain the ultimate decision-making power.
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59.302 Which Judge Should Decide Protection Issues. Some courts have addressed which court or judge should decide privilege/work product claims.
First, two circuits have indicated that an Article II judge does not possess the power to order a production of protected documents. In 2011, the Fourth Circuit articulated this view.
We do not say that an ALJ does not have authority to rule on a claim of privilege. He can make such a ruling just as he could rule on any issue of evidence presented to him during the course of a hearing. But the ALJ has no power to require the production of documents for in camera review or for admission into evidence when a person or party refuses to produce them. That would require Article III power, which the ALJ does not have. 10
The Sixth Circuit took the same approach in an earlier decision. 11
Second, a few courts have recognized what one might think is a commonsense poin—the judge deciding a case, either with a jury or especially as a fact finder, should not review arguably protected documents in camera. Perhaps litigants fear to raise this issue with the presiding judge, but it makes sense to arrange for another judge's review of any documents in camera. Otherwise, the adversary might be tempted to push for a judicial in camera review by the judge who will be hearing the case, hoping to "poison the well" even if the adversary does not win the privilege/work product fight. Although the standard for conducting an in camera review provides some protection from such a tactic, a surer way to avoid any prejudice would be to arrange for another judge to conduct the in camera review.
In 2010, the Fourth Circuit remanded a criminal case for resentencing, and indicated that the remand should be to a judge who had not reviewed privileged communications between the criminal defendant and his lawyer. 12 The court explained that
Nicholson's [criminal defendant] privileged communications with Babineau [lawyer] could not be admitted in the remand proceedings. Because the original judge "cannot reasonably be expected to erase the earlier impressions from his mind"—or indeed, "may tend to lean over backwards or overreact in an effort to be fair and impartial—we are constrained to remand for resentencing by a different judge. 13
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Another tribunal has used the same reasoning in handing off the issue of privilege or work product protection and any appropriate in camera review. 14
Third, some courts recommend, but do not require, such a step. For instance, in 2010 a Florida appellate court "commended" the trial judge for having handed off the privilege/work product issues. 15 In an earlier case, the Ninth Circuit implicitly endorsed this approach. 16
Fourth, some courts have explicitly endorsed the trial judge's in camera review of protected documents, despite later acting as fact finder or presiding judge. 17 Of course, many cases implicitly endorse such a process, because they simply do not address it.
59.303 Special Masters or Referees. As explained throughout this book, it can be extremely difficult to properly analyze the attorney-client privilege and the work product doctrine protections. The law can be very murky, and even application of a clear legal principle can be extremely time-consuming in litigation where the litigants have withheld many arguably protected documents. For this reason, it should come as no surprise that many courts enlist the assistance of special masters or referees in reviewing documents and making preliminary privilege/work product decisions.
Many courts rely on such non-judges to help them. 18 In some situations, judges pick retired judges to act as special masters. 19 In other situations, courts turn
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to practicing lawyers. 20 Finally, some judges select academics to help with these issues. The court handling the Vioxx multidistrict litigation against Merck adopted almost entirely a report prepared by Special Master Paul Rice, an American University law professor. 21 Special Master Rice and a local lawyer hired to assist him as special counsel spent $400,000 reviewing a sample of 2,600 privileged documents—over $150 per document. 22 Critics of that opinion's narrow view of the attorney-client privilege in the corporate context might contend that the opinion reflects an academic rather than a practical approach to intracorporate communications in today's world.
To be sure some courts have explicitly declined to appoint special masters. For instance, in 2009 the Eastern District of New York refused to involve a special master, indicating that there was no evidence that any of the documents deserved privilege protection. 23 Also in 2009, the California Supreme Court held that principles of privilege and confidentiality in California were so strong that a court could not order disclosure of arguably protected documents to a special master. 24
59.4 IN CAMERA REVIEW
59.401 Introduction. The entire privilege assertion and review process represents an anomaly in the normally transparent adversarial system, because the party challenging a privilege or work product claim by definition does not have the chance to actually hear or see the communication or document at issue, unless it has been disclosed in another court, inadvertently disclosed, or stolen and made public in some way. The court's in camera review of the arguably protected communications or documents is part of this "shadow boxing" aspect of privilege and work product disputes.
Some courts refuse to review documents in camera, or do so only reluctantly. Many of these courts' justifications for such an approach make great sense. An in camera review simply cannot answer some questions about a protection's existence or preservation in the face of a waiver argument. The process consumes valuable time and judicial effort. Courts also sometimes see a litigant's request for an in camera review as shifting the burden of work to the court by a litigant who has not properly prepared a compliant privilege log or presented satisfactory evidentiary support for the asserted protection.
On the other hand, many courts conduct in camera reviews. A few have explicitly discussed their reason for doing so, while most courts simply note that they
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have reviewed the pertinent documents in camera before ruling on some protection claim.
Courts disagree about the standard for conducting an in camera review. Some courts always or nearly always require such a review before ordering withheld documents produced, while others seem far more reticent to conduct a review. Courts also disagree about the exact process of in camera reviews.
59.402 Courts Declining to Conduct an In Camera Review. Some courts decline to conduct an in camera review, or do so only reluctantly.
In 2012, the Eastern District of California held that a California evidence code section precluded an in camera review. 25
At least one court has worried that even an in camera review represents a disclosure of arguably protected communications or documents. On two occasions, the Colorado Supreme Court noted its...
