Summary
determining that "it is important that the attorney-client privilege not be downgraded in the interests of expedient results"
Summary of this case from Polaris, Inc. v. Polaris, Inc.Opinion
Proceeding to determine which of several documents were privileged and not subject to discovery in antitrust action involving patent and trademark claims. The District Court, William E. Doyle, J., held that factual information which was communicated so that attorney could disclose it in a patent or trademark application was nonprivileged and was subject to discovery, but documents which contained considerable technical factual information but were nonetheless primarily concerned with giving legal guidance to client were privileged and were not subject to discovery.
Order accordingly.
See also D.C., 329 F.Supp. 211.
Heller, Ehrman, White & McAuliffe by M. Laurence Popofsky, San Francisco, Cal., for Levi Strauss & Co.
Phelps, Hall & Keller by Glen E. Keller, Jr., Denver, Colo., Watson, Leavenworth, Kelton & Taggart by Thomas V. Heyman, New York City, for Bayly Manufacturing Co. and Henry I. Siegel Co., Inc.
Hunton, Williams, Gay, Powell & Gibson by Lewis T. Booker, Richmond, Va., for Dan River Mills, Inc.
Curtis, Morris & Safford by Robert D. Spille, New York City, for Deering Milliken, Inc.
Brobeck, Phleger & Harrison by Robert S. Daggett, San Francisco, Cal., Lyon & Lyon by James W. Geriak, Los Angeles, Cal., for Koratron Co., Inc. and Koracorp Industries, Inc.
Weltner, Kidd & Crumbley by Charles M. Kidd, Atlanta, Ga., for Oxford Industries, Inc.
MEMORANDUM OPINION RE PRIVILEGED DOCUMENTS
WILLIAM E. DOYLE, District Judge.
In this multidistrict litigation there has arisen a problem late in the proceedings having to do with numerous documents in the files of Koratron. In the course of discovery proceedings, just prior to the final closing, it appeared that these documents existed. We determined that there should be in camera inspection of these files and we have proceeded to do so.
A total of 415 documents were delivered, and an effort has been made to list and classify them and, finally, to carefully examine each and every one so as to avoid any group or mass ruling. Following the initial inspection, tentative distinctions were made and the documents were listed, described and submitted to counsel. Following this, briefs were filed by both sides addressed to these tentative drafts. Finally, oral arguments were carried out and we now submit our final rulings.
The effort has been to protect fully the confidentiality which a client would ordinarily anticipate in his dealings with his lawyer. At the same time, the relationships here are those of patentee and licensee and the issues involved range from patent validity and misuse to fraud on the Patent Office and alleged antitrust violations. Thus, rights of discovery have had to have been carefully weighed and considered.
One other complicating factor has been that during the period in question Koratron's counsel exercised a broad authority to transact business matters surrounding and relating to the obtaining of patents not only in the United States but also in foreign countries. The consequence of this was that much routine business flowed through the hands of the attorneys and this was seemingly carried out without any consideration of the fact that it was confidential. Nevertheless, in all of those instances in which the documents disclose legal analysis and conclusions on the part of the lawyers the privilege has been found to obtain whether the memorandum or letter was addressed to the client or to correspondent counsel or to patent agents in Great Britain. In numerous instances our tentative rulings have been changed and we have reclassified documents as confidential which had been tentatively classified as non-confidential.
The majority of the documents here classified as privileged are generally client requests for legal advice and attorney responses thereto. The remainder of the privileged documents involve either client communications intended to keep the attorney apprised of continuing business developments, with an implied request for legal advice based thereon, or self-initiated attorney communications intended to keep the client posted on legal developments and implications, including implications of client activity noticed by the attorney but with regard to which no written request for advice from the client has been found. This approach is agreeable to our earlier expressions in Winter, Inc. v. Koratron Co., 50 F.R.D. 225 (1970) and cases there cited.
A number of documents have been ruled to fall outside the boundaries of the attorney-client privilege. This has been done only after most careful consideration of the actual contents of each document. The determinations have been particularly difficult in instances of communications primarily factual in nature. Generally, when factual information was communicated so that the attorney could disclose it in a patent or trademark application, the communication was viewed as non-privileged. On the other hand, documents containing considerable technical factual information but which were nonetheless primarily concerned with giving legal guidance to the client were classified as privileged. In other words, doubts have been resolved in favor of the privilege.
As is not infrequently the case in patent matters, the problem of classification here was particularly troublesome as the attorneys for Koratron performed virtually every task incident to filing for and obtaining a patent or trademark registration. They were so closely associated with the activities of Koratron that picking out from the mass of documents presented to the court those which involved non-legal transactions not soliciting or offering legal advice, and the separating of these from documents which did involve the exercise of the attorney's art, became at times an arduous and complex exercise. Yet we have sought to not lose sight of the importance of the distinction, for it is important that the attorney-client privilege not be downgraded in the interests of expedient results. At the same time, corporate dealings are not made confidential merely by funnelling them routinely through an attorney.
Cf. Georgia-Pacific Plywood Co. v. United States Ply. Corp., 18 F.R.D. 463, 464 (S.D.N.Y.1956); Underwater Storage, Inc. v. United States Rubber Co., 314 F.Supp. 546 (D.C.D.C.1970).
Koratron San Francisco attorney
Thus, we have taken the view that many of the tasks performed for Koratron by White, such as determining the requirements for filing, the expense of filing, writing checks to cover filings and obtaining photostatic copies of certain current registrations, did not under any stretch of the imagination involve the attorney's art. But the court is also aware that in view of the current state of the law, especially in antitrust as it affects patent and trademark claims, the attorney's counsel is vital to the conduct of business. The client therefore does have a right to expect that the confidentiality of interchange designed to promote the exercise of this counsel will be preserved. See Chore-Time Equipment, Inc. v. Big Dutchman, Inc., 255 F.Supp. 1020, 1021 (W.D.Mich.1966); Baird v. Koerner, 279 F.2d 623, 629 (9th Cir. 1960).
Documents classified as non-privileged in the present case consist principally of the following:
(1) Client authorizations to file applications and take other steps necessary to obtain registration; (2) Papers submitted to the Patent Office; (3) Compendiums of filing fees and requirements in the United States and foreign countries for various types of applications; (4) Ré sumé s of applications filed and registrations obtained or rejected (including dates and file or registration numbers); (5) Technical information communicated to the attorney but not calling for a legal opinion or interpretation and meant primarily for aid in completing patent applications; (6) Business advice such as that related to product marketing; and (7) Communications whose confidentiality Koratron has waived.
On the other hand, documents written by or obtained from third parties, even though attached to communications seeking or giving legal advice, have been separated and classified as non-privileged. See Giordani v. Hoffman, 278 F.Supp. 886 (E.D.Pa.1968).
Matters that could be classed as attorney work product, such as preliminary drafts of legal documents, license agreements and/or assignments, have been classified as privileged.
Following oral argument and the submission of memoranda of law on the subject of privilege by both sides, the court has, as noted above, modified a number of the tentative rulings. In all instances, the changes involved transferring documents previously ruled non-privileged to the category of privileged. Arguments were advanced with respect to a number of specific documents, and the court paid particular attention to these in review, but the review has not been limited to documents specifically advanced by counsel; thus, there are several which were not mentioned in argument which have been re-classified. Not all documents argued were considered to be proved privileged by the argument, however, and those argued but not mentioned below have been left in the non-privileged category under the criteria mentioned above.
From ‘ Schedule A Non-Privileged’ the following documents have been removed and re-classified as privileged:
Number
A-1, 3
Mostly factual information but legal advice giventhereon.
A-9, 12, 13
Requests for legal advice.
A-21
Direct result of attorney-client interaction.
A-46, 47, 48
Irrelevant to present proceedings and having directlyto do with relations between attorney and formerclient.
A-64, 65, 66
The documents relating to the ‘ ConfidentialDisclosure Agreement.’ Upon consideration, thecourt feels that these documents are not sufficientlyclosely related to the Dan River Agreement to comeunder that waiver. However, if the third partycomplaint comes to trial, the issue of independentwaiver should be re-examined; the relation betweenKoratron and Dan River may indicate a waiver as betweenthose parties when none exists between Koratron and theadversaries.
Before discussing individual documents in the British proceedings, it seems appropriate to point out that communications between White, the Chicago patent firm, and the British patent agent have all been treated as though they were between attorney and client, and judgments have been made individually on the merits of each document. There would seem to be no real basis for any blanket treatment of these documents either way; just as with any document the privilege should be extended to them if but only if they meet, each individually, the required criteria.
Number
A-98
While this document does contain a great deal oftechnical information, it also contains legal advice,and the presentation of the technical information isclearly conditioned by the attorney's thoughtprocesses as formed by the legal problem facingKoratron and its counsel. It should be privileged.
A-100, 101
This document should be regarded (#100) as privilegedfor the reasons outlined above for #A-98; #A-101 shouldbe privileged because it is quite dependent upon #A-100and is interrelated therewith in such a manner as tomake the two essentially expressive of one legalexpression as a unit.
A-108
Again, the technical presentation is conditioned by theneed to respond to a legal problem.
A-109
Same as A-108.
A-114, 115, 116
These documents reflect the winding-up of the Britishproceedings, and seem to contain some legal opinions asto the effect of some of the actions taken in thecourse thereof. They should be protected.
As was pointed out in oral argument in November, counsel for Koratron identified the following documents incorrectly:
Number A-39 by Koratron's reckoning was Number II-55 by the court's identification; it is privileged.
Number A-44 by Koratron's reckoning is Number II-65 by the court's identification; it is privileged.
Number A-40 by Koratron's reckoning is Number A-39 by the court's identification; the arguments for privilege for this document are rejected, for the reason shown in the schedule.
Admittedly the judgments set forth above are imperfect, but they represent this court's best effort under all of the circumstances. The documents will be held intact until further notice. Counsel are requested to recommend a method of delivery. When we hear from liaison counsel we will forward them in accordance with counsel's suggestions.
PRIVILEGED SCHEDULE I
Number
Date
To
From
Description and Reasons
I-1
9/24/64
White1
Weil
Request for advice re how to answer letter in order toobtain rights in newly invented process
I-2
9/16/68
Thomson & Thomson Douglas
Olson
Request to commence trademark search
I-3
8/8/60
Singer
White
Bill for professional services
I-4
12/9/63
Koret
White
Bill for professional services
I-5
7/25/66
Greenberg
White
Advice re whether to file foreign applications on'915 patent
I-6
6/17/64
White
Minick
Solicitation of advice re indemnity agreement
I-7
8/23/68
Geriak
Daus
Solicitation of advice re interpretation of '432patent
I-8
8/1/68
Daus
Lyon & Lyon
Solicitation of advice re distinctions between existingpatents and Gerrard invention
I-9
12/26/62
Moncharsh
White
Legal advice re registration of KORATRON trademark
I-10
5/3/65
Hochstaedter
White
Interpretation of license provisions with view towardsenforcement against licensees
I-11
8/26/64
Weil
White
Advice re possibility of bringing infringement action
I-12
5/18/65
Hochstaedter
White
Interpretation of license provisions
I-13
1/22/69
Daus
Advice re additional provisions to power of attorney
I-14
1/17/69
Olson
Daus
Advice re proposed corrections to affidavit
I-15
1/9/69
Daus
Olson
Advice re Korvette suit and Koratron use of affidavit
I-16
8/26/64
Weil
White
Comments re Buck Patent in light of Warnock patent
I-17
6/10/63
Weil
White
Interpretation of requirements for filing foreignpatent and trademark applications
I-18
10/11/65
Greenberg
White
Antitrust advice
I-19
8/16/65
Weil
White
Advice re protection of trademark rights
I-20
8/16/65
Weil
White
Antitrust advice
I-21
8/11/65
West
White
Advice re use of trademark on goods
I-22
10/30/64
Weil
White
Advice re opposition claims in foreign trademarkregistrations
I-23
10/27/64
White
Weil
Advice re opposition claims in foreign trademarkregistrations
I-24
1/28/64
Hochstaedter
White
Advice re amending application
I-25
4/3/64
Hochstaedter
White
Advice re use of mark
I-26
7/25/63
Hochstaedter
White
Advice re use of mark
I-27
5/14/63
Weil
White
Advice re suitable classification in which to registermark
I-28
10/25/68 (7 documents of same date)
Daus
Geriak
Analysis of seven proposed trademarks based ontrademark search
I-29
1/14/65
Weil
White
Antitrust advice
I-30
12/22/64
White
Weil
Solicitation of advice re licensing agreement
I-31
12/21/64 (3 copies of same)
White
Weil
Solicitation of advice re license provision
I-32
12/21/64
White
Weil
Memo confirming redrafting of addenda to agreement
I-33
12/15/64 (3 copies of same)
Weil
White
Advice re license provision
I-34
12/15/64
Weil
White
Submission of addenda to agency agreement
I-35
12/21/64
White
Weil
Client request to prepare licenses
I-36
11/24/64
Hochstaedter
White
Interpretation of license agreement
I-37
11/17/64
Weil
White
Advice re composite application-polyesters
I-38
11/9/64
White
Weil
Solicitation of advice re license provision
I-39
10/23/64
White
Weil
Solicitation of advice re agency agreement
I-40
10/6/64
White
Weil
Advice re draft of letter to Sun Chemical
I-41
9/29/64
Weil
White
Advice re potential agreement with Agawam
I-42
9/30/64
Hochstaedter
White
Advice re license provision
I-43
9/29/64
White
Weil
Solicitation of advice re interpretation of agreementwith Thomas
I-44
9/4/64
White
Weil
Solicitation of advice re proposed agreement withtextile shops
I-45
8/11/64
White
Weil
Solicitation of advice re letter to licensees regardingscope of license
I-46
8/10/64
White
Weil
Solicitation of advice re agreement with GreenwoodMills
I-47
5/26/64
Hochstaedter
White
Advice re whether to file amendments to foreign patentapplications
I-48
4/27/64
Hochstaedter
White
Request for advice re whether to file amendments toforeign patent applications
I-49
4/15/64
Weil
White
Advice re proposed contract
I-50
3/25/64
White
Weil
Request for advice re shop-rights clause
I-51
12/6/63
Hochstaedter
White
Interpretation of Hurwitz patent
PRIVILEGED SCHEDULE II
Number
Date
To
From
Reason
II-1
9/11/63
Hochstaedter
White
Advice re whether to pursue litigation
II-2
11/7/63
Hochstaedter
White
Interpretation of J. D. Reid patent
II-3
8/5/63
White
Hochstaedter
Client's acknowledgment of agreement withattorney's advice concerning Stevens patent
II-4
10/16/56
Moncharsh
White
Attorney communication re patent office action on'432 patent
II-5
11/16/56
Moncharsh
White
Attorney's opinion re response to patent officestance on '432 patent
II-6
11/19/56
Warnock
Moncharsh
Attorney's analysis of other patents re possibleanticipation
II-7
11/8/65
Hochstaedter
White
Advice concerning businessmen's attempt to construewhat patent covers
II-8
7/18/66
White
Hochstaedter
Client's confirmation of advice received re royaltypayments under license and agreement
II-9
6/21/66
Greenberg
White
Advice re law of public domain of copyrighted material
II-10
4/8/66
White
Wilcox
Solicitation of antitrust advice
II-11
4/8/66
White
Greenberg
Communication about bill for professional services
II-12
4/66
Koratron
White
Bill for professional services
II-13
3/28/66
Hochstaedter
White
Advice re proposed instrument of assignment
II-14
2/24/66
Wilcox
White
Advice re use of mark
II-15
2/23/66
White
Wilcox
Request for advice re use of mark
II-16
2/3/66
Hochstaedter
White
Advice re compliance of manual with license provisions
II-17
2/2/66
Hochstaedter
White
Interpretation of agreement re acquisition of StahlUrban license by Kellwood
*II-18
2/2/66
White
Wilcox
Request for antitrust advice
II-19
2/2/66
Schoenwald
White
Interpretation of contract clause re subsidiaries oflicensees
*II-20
1/26/66
White
Wilcox
Request for advice re Canadian licenses
II-21
12/17/65
White
Schoenwald
Memo of meeting summarizing points discussed includingattorney's advice concerning license provision
II-22
8/16/65
Hochstaedter
White
Advice concerning protection of Koratron techniques andknow-how
*II-23
12/28/65
Barry
White
Advice concerning supplemental agreement—Knitwear
II-24
11/16/65
Barry
White
Advice re wording of notice in bulletin
II-25
11/65
Tomaselli
White
Advice concerning requirements for maintainingcopyright on printed material
II-26
10/28/65
Hochstaedter
White
Advice re proposed bulletin
II-27
10/26/65
Tomaselli
White
Advice re restrictions on content of manual in order toprotect trademark
II-28
10/22/65
Barry
White
Advice re copyrighting of printed materials
II-29
10/20/65
Hochstaedter
White
Advice re protection of patent as regards advertisingand publicity releases
II-30
10/65
Koratron
White
Bill for professional services
II-31
10/12/65
Barry
White
Interpretation of William-Dickie (Mizell) patent inrelation to Koratron patent
II-32
10/4/65
White
Barry
Request for advice re William-Dickie (Mizell) patent
*II-33
9/30/65
White
Barry
Solicitation of advice re proposed internationalagreements
II-34
9/8/65
Hochstaedter
White
Advice re content of publicity so as to protect patent
II-35
9/8/65
White
Hochstaedter
Request for advice re obtaining injunction
II-36
8/30/65
White
Barry
Request to register foreign patents if legally able todo so
II-37
8/17/65
White
Hochstaedter
Communication of facts with view towards litigation
II-38
8/16/65
Hochstaedter
White
Advice re protection of Koratron know-how
II-39
8/12/65
Hochstaedter
White
Interpretation of license provision
II-40
8/11/65
Hochstaedter
White
Interpretation of scope of patent
*II-41
8/11/65
West
White
Advice re protection of material by utilizing propercopyright notice
II-42
7/21/65
Hochstaedter
White
Advice re speech & conduct of employees with regard topending litigation
II-43
7/19/65
Weil
White
Advice re copyright of manual
II-44
7/7/65
White
Weil
Request for advice re copyright protection on foreignmanuals
*II-45
7/1/65
White
Weil
Client alerting attorney to possible litigation
II-46
6/23/65
Hochstaedter
White
Advice concerning audit of licensees compliance withlicense provisions
II-47
6/14/65
White
Hochstaedter
Solicitation of advice re patent situation with regardto prior art
*II-48
5/21/65
White
Weil
Solicitation of advice re proposed revised foreignagreement
II-49
4/15/65
Weil
White
Interpretation of foreign patent law
*II-50
4/14/65
Hochstaedter
White
Advice re possible applications on thermo-plasticresins
*II-51
4/14/65
Hochstaedter, Nirenberg
White
Advice concerning possible litigation
II-52
4/13/65
White
Hochstaedter
Memo re discussions concerning other patents as theyrelate to Koratron patents
II-53
3/24/65
Weil
White
Advice concerning choice of trademark and openness forregistration
*II-54
3/22/65
White
Weil
Request to investigate art surrounding William-Dickiepatent
*II-55
3/15/65
White
Hochstaedter
Solicitation of advice concerning possible applicationon thermo-plastic resins
II-56
3/11/65
White
Hochstaedter
Solicitation of advice concerning possible licensing ofbaking ovens in retail stores
*II-57
2/18/65
Weil
White
Interpretation of licenses with view towardsenforcement
II-58
12/6/62
Koret
White
Advice re necessity of entering new and supplementallicense agreements
II-59
6/6/63
Weil
White
Antitrust advice, and interpretation of rights underpatent
*II-60
2/4/65
White
Weil
Solicitation of advice re revised Thomas agreement
II-61
1/27/65
Weil
White
Interpretation of mill and cutter licenses
*II-62
1/26/65
Weil
White
Advice re proper parties to sign affidavits
II-63
1/20/65
Weil
White
Advice re keeping of files in connection withprotecting Canadian trademark
II-64
1/18/65
White
Weil
Solicitation of advice concerning contents of patentapplication
*II-65
1/15/65
White
Weil
Solicitation of advice re possible patent revocationproceedings
II-66
1/13/65
Weil
White
Advice re possible infringement action
II-67
1/13/65
Hochstaedter
White
Confidential communication about Canadian application
II-68
1/8/65
Hochstaedter
White
Interpretation of license provision
II-69
11/4/64
Weil
White
Advice re protection of British patent
II-70
3/7/66
Barry
White
Advice re geographical protection of Portuguese patent
II-71
11/15/66
White
Barry
Response re decision not to file patent application
II-72
5/10/60
White
Request for advice concerning legalities of filing forand obtaining British patent
II-73
5/19/60
White
Singer
Advice re effect on foreign patent application ofmaintaining or dropping U.S. product claims
II-74
8/1/60
Singer
White
Request for advice re whether & when to file certainforeign applications
II-75
8/3/60
White
Singer
Advice re whether and when to file foreign applicationswith respect to the timing of U.S. applications
II-76
4/10/61
White
Singer
Advice re limitation of claims in order to obtainBritish patent
II-77
4/20/61
Singer
White
Analysis of published material to ascertain whetherpublication of this information affects Britishapplication
II-78
4/21/61
White
Singer
Advice re amendment of application
II-79
5/18/61
White
Singer
Transmittal of information in regard to possibleamendment to application
II-80
9/1/61
White
Singer
Suggestions and advice concerning whether to argueBritish examiner's opinion
II-81
9/6/61
Singer
White
Authorization to obviate British examiner'sobjections
TWO DOCUMENTS ARE MISSING:
2/25/59
Warnock
White
Described as Draft paper 11 ‘ 432 patent
6/16/58
Warnock
White
Draft paper 9 ‘ 432 patent
SCHEDULE A NON-PRIVILEGED (REVISED)
Number
Date
To
From
Reason
A-1
7/31/63
Weil
White
Transferred to privilege
A-2
6/11/63
White
Weil
Information re name for process
A-3
2/8/66
Is Stavis
White
Transferred to privilege
A-4
10/17/66
White
Wilcox
Acknowledgment of receipt of registration certificate
A-5
10/13/66
Greenberg
White
Transmittal of certificate of registration
*A-6
10/5/66
White
Barry
Cover letter (enclosures not included to the Court). Nolegal advice
A-7
9/1/66
White
Barry
Request for certified copies of registration
A-8
5/24/66
Greenberg
White
Update on Patent Office action
A-9
5/11/66
White
Greenberg
Transferred to privilege
A-10
5/5/66
White
Barry
Direction to file applications in certain countries
A-11
5/3/66
White
Wilcox
Request to register trademark on certain items
A-12
3/21/66
White
Wilcox
Transferred to privilege
A-13
2/14/66
White
Barry
Transferred to privilege
A-14
2/11/66
White
Wilcox
Request for update on Canadian business
A-15
1/13/66
White
Barry
Notification of company's decision not to pursuecertain registrations
A-16
11/18/65
White
Hochstaedter
Quotations for conducting patent search
A-17
11/11/65
White
Barry
Request for price quotations on certain foreignregistrations
A-18
10/19/65
Greenberg
White
Transmittal of certified copy of final judgment
A-19
9/9/65
Delfosse
White
Transmittal of copies of certain patent applications
A-20
9/28/65
Tartikoff, Tomaselli
White
Re business procedures— keeping of files
A-21
9/24/65
Hochstaedter
Greenberg
Transferred to privilege
*A-22
9/20/65
White
Barry
Transmittal of copies of manual
A-23
8/31/65
White
Hochstaedter
Sets forth business information; request for legaladvice incidental
A-24
8/13/65
White
Delfosse
Re application numbers; not from firm management
A-25
8/27/65
Delfosse
White
Re business arrangements— filekeeping
A-26
7/20/65
White
Tartikoff
Request for catalogue of registration numbers
A-27
7/12/65
White
Weil
Relay of business information obtained from third party
A-28
7/12/65
White
Weil
Business information re re-billing
A-29
7/8/65
White
Weil
Update on arbitration information received from thirdparty
A-29A
6/24/65
Weil
White
Update on licensee's activities
*A-30
6/25/65
Weil
White
Transmittal of letter received from third party
A-31
6/24/65
White
Weil
Information for files— transmittal of magazineadvertisements
A-32
6/22/65
White
Weil
Transmittal of news release
A-33
6/4/65
White
Kohinoor
Not from attorney to client or between attorneys
A-34
6/9/65
Weil
White
Cover letter; transmittal of letter from third party
A-35
5/24/65
White
Weil
Direction to file applications in certain foreigncountries
A-35A
5/18/65
Weil
White
Business transactions re registering patent; pricequotations
A-36
4/14/65
Weil
White
Memorandum of discussion between White and third party;no legal advice included
A-37
4/13/65
White
Hochstaedter
Request for business information
A-38
4/7/65
Weil
White
Business advice re quality control; recordkeeping
A-39
3/15/65
White
Hochstaedter
Discussion of terminology company is consideringemploying in business transactions
A-40
3/1/65
White
Hochstaedter
Business matters re royalty payments
A-41
2/16/65
Delfosse
White
Transmittal of original copyright certificates
A-42
1/21/65
Weil
White
Business information re research at Department ofAgriculture
A-43
1/20/65
White
Weil
Transmittal of press clipping
A-44
1/15/65
White
Weil
Business information re letter to licensees
A-45
7/17/68
Daus
White
Lawyer to lawyer but no legal material interchanged;recordkeeping transaction
A-46
7/15/68
White
Daus
Transferred to privilege
A-47
7/10/68
White
Hochstaedter
Transferred to privilege
A-48
10/23/61
Moncharsh
White
Transferred to privilege
A-49
2/27/62
Koret
White
Transmittal of original Letters Patent
A-50
3/1/65
Delfosse
White
Notification of filing patent application
A-51
3/3/65
Delfosse
White
Transmittal of patent application
A-52
3/9/65
White
Delfosse
Acknowledgment of receipt of patent application
A-53
2/8/65
Delfosse
White
Transmittal of patent application
A-54
4/24/64
Hochstaedter
White
Notification of filing patent application
A-55
9/9/65
Delfosse
White
Transmittal of recorded assignment
A-56
9/11/64
White
Albertson
Acknowledgment of receipt of patent application
A-57
5/17/65
Delfosse
White
Notification of filing patent application
*A-58
1/15/68
Barry
White
Cover memo; matter referred to not given to Court
A-59
5/10/65
Delfosse
White
Notification of filing patent application
*A-60
7/8/65
Delfosse
White
Cover letter for patent application not given to Court
A-61
4/16/65
Delfosse
White
Notification of filing patent application
A-62
12/15/65
Hecklin
White
Notification of filing patent application
A-63
4/26/66
Greenberg
White
Request for copy of contract for files
A-64
6/14/65
White
Hochstaedter
Transferred to privilege
A-65
4/29/66
Greenberg
White
Transferred to privilege
A-66
5/10/66
Greenberg
White
Transferred to privilege
A-67
11/28/58
Singer
Transmittal of documents
A-68
1/30/59
Singer
Dehn
Request for instructions
A-69
3/26/59
White
Singer
Notification of Examiner's action
A-70
5/28/59
White
Singer
Request for instructions
A-71
7/31/59
White
Singer
Request for instructions
A-72
8/5/59
Singer
White
Update on progress of applications
A-73
7/1/59
Singer
Dehn
Request for instructions
A-74
2/8/60
Singer
Dehn
Request for instructions
A-75
3/17/60
White
Singer
Request for instructions
A-76
3/24/60
Singer
White
Update on progress of applications
A-77
4/4/60
Singer
White
Description of Koratron's process-must be disclosedto Patent Office
A-78
4/18/60
Dehn
Singer
Cover letter for technical information which must bedisclosed to Patent Office
A-79
6/29/60
Comptroller
Dehn
Reply to Patent Office
A-80
6/29/60
Singer
Dehn
Update on progress of patent application
A-81
8/8/60
White
Singer
Update on progress of patent application
A-82
8/9/60
Dehn
Singer
Informational update; recordkeeping matters
A-83
8/12/60
Singer
White
Request for cost quotations
A-84
8/15/60
White
Singer
Transmittal of cost quotations
A-85
8/15/60
Dehn
Singer
Direction re timing of application
A-86
8/18/60
Singer
Dehn
Update on progress of patent application
A-87
8/24/60
White
Singer
Update on progress of patent application
A-88
8/31/60
Singer
Dehn
Notification of Patent Office actions
A-89
9/22/60
White
Singer
Notification of Patent Office actions
A-90
10/28/60
Singer
White
Direction to comply with Examiner's requests;technical information that must be disclosed to PatentOffice
A-91
11/17/60
Dehn
Singer
Instructions re patent application amendments;information which must be disclosed to Examiner
A-92
12/1/60
Singer
Dehn
Request for technical information which must bedisclosed to Patent Office
A-93
12/5/60
Dehn
Singer
Transmittal of information which must be disclosed toPatent Office
A-94
12/29/60
Singer
Dehn
Acknowledgment of receipt of prior letter; transmittalof records
A-95
1/4/61
Dehn
Singer
Transmittal of records
A-96
1/10/61
Singer
Dehn
Update on progress of patent application
A-97
4/4/61
Singer
Dehn
Cover letter for correspondence from third party whichwas not given to Court
A-98
4/28/61
Singer
White
Transferred to privilege
A-99
5/2/61
White
Singer
Acknowledgment of prior correspondence; update onprogress of patent application
A-100
5/3/61
Dehn
Singer
Transferred to privilege
A-101
5/3/61
Singer
White
Transferred to privilege
A-102
5/9/61
Singer
Dehn
Update on progress of patent application
*A-103
5/12/61
Singer
Dehn
Transmittal of correspondence from third party whichwas not given to Court
A-104
5/12/61
White
Singer
Business matter re fixation of corporate seal
A-105
5/15/61
Singer
White
Business matter re fixation of corporate seal
A-106
5/16/61
Dehn
Singer
Transmittal of completed forms
A-107
5/23/61
Singer
Dehn
Acknowledgment of prior correspondence
A-108
5/28/61
Singer
White
Transferred to privilege
A-109
6/1/61
Dehn
Singer
Transferred to privilege
A-110
6/6/61
Tootal
Dehn
Letter to third party
A-111
6/6/61
Singer
Dehn
Acknowledgment of prior correspondence; update onprogress of patent application
A-112
6/13/61
White
Singer
Update on progress of patent application
A-113
6/20/61
Singer
White
Acknowledgment of prior letter
A-114
8/23/61
Singer
Dehn
Transferred to privilege
A-115
9/11/61
Dehn
Singer
Transferred to privilege privilege
A-116
9/14/61
Singer
Dehn
Transferred to privilege
A-117
9/21/61
White
Singer
Update on progress of patent application
*A-118
10/16/61
Singer
Dehn
Cover letter for Comptroller's Decision which wasnot sent to Court
*A-119
10/19/61
White
Singer
Cover letter for Comptroller's Decision which wasnot sent to Court
SCHEDULE B NON-PRIVILEGED
Number
Date
To
From
Reason
*B-1
7/5/66
Koratron
White
Transmittal of original of assignment filed in PatentOffice
*B-2
9/6/66
Koratron
White
Transmittal of original of Letters Patent
B-3
White
Rough draft in duplicate of ‘ 432 application:basically contains information that must be disclosedto Patent Office
B-4
9/18/64
Koratron
Quigley
Communication between businessmen
B-5
12/24/54
Moncharsh
White
Privilege waived— Pleetset
B-6
1/19/55
Moncharsh
White
Privilege waived— Pleetset
B-7
10/12/56
White
Patent Office
Patent examiner's decision
B-8
3/57
Patent Office
White
Traverse to patent examiner's finding
B-9
10/12/56
White
Patent Office
A copy of patent examiner's finding
B-10
Copies of douments on file with Patent Office
B-11
11/7/57
Taylor
McLennan
Housekeeping communication between non-lawyers rephotostats for files
B-12
7/31/68
Daus
Nunnally
Confirmation of conformance with client's requestto abandon application
B-13
Koratron
White
Schedules of filing fees in certain foreign countries
B-14
10/17/66
White
Wilcox
Acknowledgment of receipt of original Certificate ofRegistration
*B-15
10/13/66
Greenberg
White
Transmittal of original Certificate of Registration
*B-16
10/19/66
Greenberg
White
Transmittal of original instrument of assignmentrecorded in Patent Office
B-17
6/29/67
White
Leavitt
Business information; communication from non-controlgroup person
B-18
8/13/68
Geriak
Daus
Request to obtain information from FTC
B-19
9/9/68
Geriak
Daus
Transmittal of original of affidavit
B-20
8/30/68
Daus
Geriak
Transmittal of information obtained from FTC
B-21
FTC
Daus
Copy of affidavit sent to FTC
*B-22
9/16/68
Geriak
Daus
Office housekeeping: statement that numerous certifiedcopies of patent office registrations are on hand infiles
*B-23
9/25/68
Olson
Daus
Mostly factual information: re dates and numbers ofregistrations and filings in South America
B-24
7/17/68
Geriak
Daus
Request for copies of certain Belgian patents
B-25
6/26/63
White
Hochstaedter
Disclosure of date of first use of Koratrontrademark— should be public information
B-26
6/24/63
Weil
White
Acknowledgment of receipt of information that must beincluded in trademark application and request for moresuch information
B-27
10/29/62
Hochstaedter
White
Notification of client by attorney of Patent Officeaction on trademark (Koratron) application
B-28
11/30/65
Koratron
White
Schedule of filing costs in certain foreign countries
B-29
10/13/66
Greenberg
White
Transmittal of original Certificate of Registration
B-30
10/30/68
Owen
Daus
Request for certified copy of assignment of mark fromKoret to Koratron
*B-31
8/21/64
Hochstaedter
White
Transmittal of Powers of Attorney
B-32
2/5/64
Hochstaedter
White
Schedule of numbers and dates of filing in foreigncountries
B-33
2/11/64
Hochstaedter
White
Notification of client by attorney of Patent Officeaction
B-34
2/20/64
Hochstaedter
White
Schedule of filing costs in certain foreign countries
B-35
7/23/64
Hochstaedter
White
Schedule of filing costs in certain foreign countries
B-36
7/16/63
Weil
White
Notification of filing dates of applications in certainforeign countries
B-37
11/12/63
Hochstaedter
White
Notification of filing dates of applications in certainforeign countries
*B3-38
11/29/63
Weil
White
Transmittal of power of attorney
B-39
12/2/63
Hochstaedter
White
Schedule of filing costs in certain foreign countries
B-40
11/22/63
Hochstaedter
White
Transmittal of affidavit to be submitted to PatentOffice
B-41
12/30/63
Hochstaedter
White
Notification of client by attorney of Patent Officeaction on trademark affidavit
*B-42
11/21/63
White
Hochstaedter
Statement that company intends to renew Koraset mark
B-43
12/31/64
Tomaselli
White
Request for information that would eventually have tobe disclosed to Patent Office
B-44
12/8/64
Weil
White
Transmittal of copies of patents and information onfile with Patent Office
B-45
11/20/64
White
Hochstaedter
Secretary's acknowledgment of receipt of patentnumber
B-46
11/4/64
Weil
White
Transmittal of public information obtained fromDepartment of Agriculture
B-47
10/15/64
White
Koratron
Acknowledgment of receipt of Letters Patent
*B-48
10/14/64
Hochstaedter
White
Transmittal of instrument of assignment andnotification of its recordation in Patent Office
*B-49
10/14/64
Hochstaedter
White
Transmittal of instrument of assignment andnotification of its recordation in Patent Office
*B-50
10/5/64
White
Weil
Content unascertainable— enclosure missing
*B-51
9/15/64
White
Delfosse
Transmittal of letter written betweenbusinessmen— the letter is missing
*B-52
8/4/64
Hochstaedter
White
Transmittal of copies of application papers andprosecution rejections and responses— thesedocuments are missing
B-53
7/21/64
Hochstaedter
White
Transmittal of original instrument of assignmentrecorded in Patent Office
B-54
Koratron
White
Schedule of filing costs in certain foreign countries
*B-55
7/14/64
White
Delfosse
Transmittal of Powers of Attorney
*B-56
5/4/64
White
Moncharsh
Transmittal of original and duplicate of a number ofinstruments of assignment— these instruments aremissing
B-57
4/29/64
Hochstaedter
White
Information concerning procedures and costs forcontinually checking the issuance of new patents andfilings in foreign countries
B-58
4/15/64
Hochstaedter
White
Transmittal of dates and numbers of filing certainapplications in foreign countries
B-59
Koratron
White
Schedule of filing costs in certain foreign countries
*B-60
2/6/64
White
Hochstaedter
Acknowledgment of receipt of original certificate ofregistration
*B-61
2/4/64
Hochstaedter
White
Transmittal of original certificate of registration ofKoratron trademark
B-62
2/4/64
Hochstaedter
White
Schedule of filing costs in certain foreign countries
B-63
2/4/64
Hochstaedter
White
Listing of numbers and dates of certain foreign filings
* Enclosures not given to Court.
*B-64
9/4/63
White
Hochstaedter
Transmittal of letter written betweenbusinessmen— letter not enclosed
Koratron Los Angeles attorney
Koratron Chicago attorney
British patent agent