A federal magistrate judge in Massachusetts has issued a divided ruling on whether, in a patent dispute with Fitbit, Philips North America must turn over emails sent and received by a foreign patent attorney who is not registered as an attorney-at-law.
Philips, which researches and develops technologies such as wearable fitness trackers, filed a lawsuit in U.S. District Court in Massachusetts against Fitbit, a wristwatch marketed as a tool to help improve health, in July 2019.
Philips argued that Fitbit infringed and continues to infringe on three of its U.S. patents—claims which Fitbit denies and to which the company has answered with counterclaims for declaratory judgment on noninfringement and invalidity, according to the case’s background as outlined in the judge’s Jan. 27 opinion.
Most recently, the parties disagreed with regard to emails sent and received by Arie Tol, principal licensing counsel for the intellectual property and standards organization of Philip’s parent company in the Netherlands, Koninklijke Philips N.V. Tol is a registered Dutch patent attorney and has been registered as a European patent attorney, but he is not an attorney-at-law and is not admitted to the bar for Dutch attorneys-at-law, according to the opinion.
During the course of discovery, Philips performed a search of Tol’s email communications and produced 685 documents to Fitbit. Philips also produced a privilege log, which included more than 500 emails that had been written or received by Tol, but claimed that they were withheld based on the attorney-client privilege or the work product doctrine, according to the opinion.
Fitbit filed a motion to compel approximately 100 email communications sent and received by Tol. The defendant argued, according to the opinion, that there is no basis in either U.S. or Dutch law to apply an attorney-client or patent-agent privilege to “communications exclusively between Dutch patent agents and other non-attorney employees who are not acting at the direction and control of a licensed attorney.”
Additionally, the opinion said, Fitbit claimed that Philips improperly invoked attorney-client privilege for communications relating to the potential licensing of Philips’ patents. Fitbit further argued that Philips failed to support its claims of work product privilege for communications dating as far back as 2015.
On Jan. 27, U.S. Magistrate Judge Judith Gail Dein of the District of Massachusetts said the differing roles between foreign patent attorneys and attorneys-at-law raise the issue of whether the attorney-client privilege should apply. Against that backdrop, Dein allowed in part and denied in part Fitbit’s motion to compel the production of Tol’s emails.
“Specifically, Philips cannot assert the attorney-client privilege over Mr. Tol’s communications so Fitbit’s motion to compel is allowed to the extent Philips claims that the communications are privileged,” Dein wrote. “However, Philips has appropriately claimed work product protection with respect to Mr. Tol’s emails so Fitbit’s motion to compel is denied with respect to the communications over which Philips has asserted work product claims.”
In order to determine if U.S. or foreign privilege law applies in this case, Dein relied on the “touching base test,” as laid out by the U.S. District Court for the Southern District of New York in the 1992 case Golden Trade, S.r.L. v. Lee Apparel, as well VLT v. Unitrode.
“As a general matter, ‘communications relating to the legal proceedings in the United States, or that reflect the provision of advice regarding American law, “touch base” with the United States and, therefore, are governed by American law, even though the communication may involve foreign attorneys or a foreign proceeding,’” Dein said, citing the Southern District of New York’s 2010 ruling in Gucci Am. v. Guess?. Dein further noted that courts have concluded that the country with the “predominate interest is either the place where the allegedly privileged relationship was entered into or the place which that relationship was centered at the time the communication was sent.”
Dein determined that five of the disputed emails on Philips’ privilege log must be governed by Dutch law “because they have no more than an incidental connection, if any, to the United States,” she wrote.
“[E]ach of these five emails consists of correspondence between Mr. Tol and one or more Dutch Patent Attorneys (as well as, in one instance, a Philips research engineer) and reflects an analysis or discussion of certain of Philips’ patents. … None of the patents discussed in the emails are U.S. patents and none of the patents are at issue in any of the litigation that Philips has brought against Fitbit and Garmin in the United States or elsewhere,” Dein wrote. “Therefore, the question whether these documents are privileged must be determined by the law of the foreign nation, which in this case is the Netherlands where Mr. Tol and the other parties to have the communications are located and where the relationship between Philips and its Dutch Patent Attorneys was entered.”
Fitbit further claimed that because Tol and other individuals in the emails are Dutch patent agents or nonattorney employees, the communications are unrelated to representation before a patent office. Additionally, Fitbit argued that there is no evidence that the individuals were acting under the direction of licensed attorneys at the time of the communications.
Dein noted that, under the U.S. Court of Appeals for the Federal Circuit’s 2016 ruling in In re Queen’s Univ. at Kingston, patent agents in the U.S. are not attorneys but are authorized by Congress to engage in the practice of law before the U.S. Patent and Trademark Office.
However, Dein added, “[t]he case law applying the patent-agent privilege recognized in Queen’s to foreign patent agents is sparse.”
“The parties have not cited any cases since Queen’s, and this court has found none, in which the Federal Circuit or another Circuit Court of Appeals has had an opportunity to consider the scope of the patent-agent privilege when applied to foreign patent agents,” Dein wrote.
Dein found that Philips had not met its burden of proving that Dutch law establishes a patent-attorney privilege that would extend to the disputed emails, and, therefore, its claims of privilege under Dutch law must be denied.
“Based on the record before this court, it does not appear that Dutch law recognizes a privilege for Patent Attorneys engaged in matters beyond proceedings before the Dutch Patent Office. To date, the Supreme Court of the Netherlands has explicitly awarded a general right of privilege only to four professions, including physicians, priests, civil law notaries and lawyers admitted to the bar as attorneys-at-law, but has not expressly addressed whether such a privilege should apply to Dutch Patent Attorneys as well,” Dein wrote. “Therefore Philips has not shown that it is entitled to withhold any of Mr. Tol’s emails from production under the law of the Netherlands.”
The remaining emails Philips claimed were privileged should be governed by U.S. law, the magistrate judge said. These communications pertain to Philips’ presuit investigation and analysis of the U.S. patents asserted against Fitbit in the instant litigation; advice relating to the preparation of Philips’ 2016 notice letter to Fitbit, sent to offices in the U.S.; legal advice and feedback from Philips’ U.S. attorneys on issues relating to the enforcement of U.S. patents, amendments to a patent purchase agreement between Philips and an American inventor; and a contract dispute arising under U.S. law.
“The evidence is sufficient to show that the emails in question were prepared in anticipation of litigation as part of a strategy to enforce Philips’ patent rights against Fitbit and Garmin in court and to aid in possible future litigation. Therefore, it supports Philips’ claims of work product protection,” Dein wrote, denying Fitbit’s request for an in camera review of the documents or an order compelling their production.
Messages seeking comment were not immediately returned from Philips’ lead attorney, Eley O. Thompson of Foley & Lardner, nor from Ameet Modi of Desmarais on behalf of Fitbit.