In a January 14, 2020, order, the Northern District of Illinois granted in part and denied in part, a plaintiff's motion to compel the production of documents withheld as privileged. The court found that an email between the defendant and its third-party distributor concerning litigation strategy was protected by both attorney-client privilege and the common interest doctrine. In contrast, the court found additional emails involving only business discussions to be unprotected from disclosure.

Plaintiff, Beijing Choice Electronic Technology Co., Ltd. ("Choice") sued Contec Medical Systems USA, Inc. and Contec Medical Systems Co., Ltd. (collectively, "Contec") for infringing Choice's patents related to fingertip pulse oximeters. After the complaint had been filed, an attorney for Choice sent cease-and-desist letters to six Contec distributors, including Veridian Healthcare LLC ("Veridian"). Veridian, in turn, sought advice via email from Contec regarding how best to respond to the cease-and-desist letter. Choice subpoenaed Veridian documents, including its emails and later moved to compel production after Veridian withheld the material on the basis of attorney-client privilege.

The court held that privilege attached to a single email—a filtered summary of an attorney's opinions regarding the litigation that was primarily legal in nature. The court also found the document implicated the common interest doctrine. Veridian purchased oximeters from Contec that were at the center of the litigation, and after receiving the cease-and-desist letter, Veridian reasonably understood it might face its own lawsuit for selling the allegedly infringing products. The document thus concerned coordination between Veridian and Contec, both of which had an actual legal interest in avoiding liability. Because the privileged status of communications falling within the common interest doctrine cannot be waived without the consent of all parties, the court found the document properly withheld as privileged.

The court held that the remaining documents were not protected by the attorney-client privilege or work product immunity. The court determined the documents did not reveal the substance of any client confidence or opinions of Contec's counsel. Instead, the documents involved business discussions. As such, the court ordered Veridian to produce them.

Beijing Choice Elec. Tech. Co. v. Contec Med. Sys. USA, Inc., No. 1:18-CV-825, D.I. 182 (N.D. Ill. Jan. 14, 2020)

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