Motion to Compel Granted Based on "At Issue" Waiver of Attorney-Client Privilege

Mohawk Industries, Inc. & Shaw Industries, Inc. v. Interface, Inc., Case No. 4:07-cv-0212 (N.D. Ga. Sept. 29, 2008) (Murphy, J.)*

Plaintiffs Mohawk and Shaw claim that Defendant Interface falsely marked certain of its carpet tile products as being covered by U.S. Patent No. 6,908,656. Defendant asserts that its marking of non-covered products was the result of mistake. During discovery, Defendant produced an email from an employee, Jones, with instructions to other employees regarding which products to mark with the ‘656 patent number. Plaintiffs’ counsel deposed Jones about the email and inquired as to his understanding of what products were covered by the patent. Jones indicated that, at some point, his understanding came from a conversation with Defendant’s in-house counsel. When Plaintiffs’ counsel asked about this conversation, Defendant’s counsel objected on the grounds of attorney-client privilege. Plaintiffs filed this Motion to Compel, arguing that Defendant had waived the attorney client privilege and must disclose all communications between in-house counsel and Defendant’s employees regarding the decision of which products to mark.

“At Issue” Waiver of Attorney Client Privilege: The Court found that Jones had revealed the substance of his conversation with in-house counsel and, as a result, Defendant waived the attorney client privilege as to that particular conversation. Further, the Court held that Defendant had waived the attorney client privilege as to all communications between Jones and in-house counsel prior to Jones’ sending of the email because Defendant had “inject[ed] a new factual issue into the case that, in fairness, requires disclosure of the privileged materials.” Specifically, the Court found that by contending that the decision to mark its tiles was based on Jones’ mistake regarding which tiles were covered by the patent, Defendant injected into the case the question of what Jones knew about which products were covered and when he knew this information. Although the Defendant had not raised an affirmative defense that it relied on the advice of counsel in its decision to mark, the Court held that injecting these factual issues into the case was sufficient to waive the privilege and, in fairness, require disclosure of the communications to the Plaintiffs.

The Court therefore granted Plaintiffs’ Motion to Compel and ordered that discovery be opened on the topic of Jones’ conversation with in-house counsel and that discovery be had relating to any communications between Jones and in-house counsel prior to the sending of Jones’ email.

*Disclosure: My firm, Alston & Bird, represents Plaintiff Mohawk in this case.