Mardiros v. City of Hope Case No. 2:19-cv-02196-MCS-MAA United States District Court, C.D. California Filed June 03, 2021 Counsel Guy Ruttenberg, Bassil George Madanat, Ruttenberg IP Law APCd, Los Angeles, CA, for Plaintiffs. Benjamin B. Au, Los Angeles, CA, Daralyn J. Durie, David McGowan, Joyce LI, Matthaeus Holger Martino-Weinhardt, Vera Ranieri, Durie Tangri LLP, San Francisco, CA, for Defendants. Scarsi, Mark C., United States District Judge Proceedings: (IN CHAMBERS) ORDER RE: PROFFERED MOTION FOR REVIEW OF SPECIAL MASTER'S ORDER (ECF No. 325) *1 Plaintiff Armen Mardiros proffers a motion for review of the Special Master's order on Mardiros's motion to compel inventorship documents from Defendant City of Hope (“COH”) (SM Order, ECF No. 312). (Mot., ECF No. 325.) The Court deems this matter appropriate for decision without oral argument. See Fed. R. Civ. P. 78; C.D. Cal. R. 7-15. Mardiros provides no authority permitting him to “proffer” a motion after the motion and discovery deadlines. As Mardiros acknowledges, (Mot. 1–2), the motion is untimely. The Court ordered discovery-related Rule 53(f) motions to be completed by May 10. (Order Re: Ex Parte Appl. 2, ECF No. 297.) See Fed. R. Civ. P. 53(f)(2) (allowing courts to depart from the rule's default 21-day period to object to a special master's orders). Even acknowledging that the Special Master issued the SM Order on the cutoff date, Mardiros did not seek relief from the deadline before its expiration, and he articulates no excusable neglect supporting relief now, weeks later. See Fed. Rs. Civ. P. 6(b)(1), 16(b)(4). Untimeliness alone justifies rejecting the proffer and denying the motion. Nonetheless, in the interests of justice and judicial economy, the Court examines the merits of Mardiros's cursory arguments in support of the proffered motion.[1] The Court reviews objections to the Special Master's findings of fact and conclusions of law de novo. Fed. R. Civ. P. 53(f)(3)–(4). The Court addresses Mardiros's overlapping challenges to the SM Order in the order he presents them. First, Mardiros argues the Special Master erred in concluding COH asserted and preserved attorney-client privilege and work-product protection for inventorship-related documents. (Mot. 2–3.) He contends COH expressly disavowed all privilege and protection over its counsel's inventorship analysis. (Id. (citing Def.'s Statement of Genuine Disputes ¶ 175, ECF No. 168-1).) On de novo review, the documents purportedly disclaiming these protections, in context, were not disclaimers at all. COH merely disputed on summary judgment Mardiros's factual assertion that COH had shielded Dr. Meiklejohn's assessments on the basis of privilege. (See Def.'s Statement of Genuine Disputes ¶ 175 (arguing “COH did not claim either privilege or work product protection over [Dr. Meiklejohn's] inventorship analysis”).) Dr. Meiklejohn's declaration, which COH offered in support of this fact dispute, does not reveal any privileged or protected information. (Meiklejohn Decl. ¶¶ 4–7, ECF No. 158-68.) Mardiros's argument that these documents broadly waive privilege and protection over inventorship-related documents is unpersuasive. *2 Contrary to Mardiros's characterization of the SM Order, (Mot. 3 (citing SM Order 13)), the Special Master did not render any conclusions on whether any documents predating August 8, 2016, are protected by attorney-client privilege. Instead, the Special Master invited COH to produce a privilege log for “[a]ny documents that would otherwise be produced ... but contain confidential attorney-client communications.” (SM Order 13.) Mardiros identifies no conclusions to this end the Court may review. To the extent the Special Master implicitly concluded that documents could be withheld because COH did not broadly waive attorney-client privilege, the Court agrees there was no waiver of privilege for the reasons discussed in this Order. Mardiros claims the Special Master erroneously drew a bright-line distinction between documents created before and after August 8, 2016, the date COH communicated the final determination of inventorship to Mardiros, for the purpose of evaluating work-product protection. (Mot. 3.) Mardiros does not support with any authority his newly presented argument that work-product protection should broadly apply to documents generated as part of patent prosecution, “regardless of the threat of litigation.” (Id.) The Federal Circuit has not adopted such an expansive position, see Waymo LLC v. Uber Techs., Inc., 870 F.3d 1350, 1362 (Fed. Cir. 2017) (applying the work-product doctrine to “materials that were prepared in anticipation of litigation”), and “[t]he current trend of the law denies the work-product immunity to documents, notes and other materials prepared during the ex parte prosecution of patent applications on the basis that no anticipated litigation exists.” 7 Robert A. Matthews, Jr., Annotated Patent Digest § 42:176 (collecting cases); see also, e.g., Pac. Gas & Elec. Co. v. United States, 69 Fed. Cl. 784, 794–95 (Fed. Cl. 2006) (reviewing cases evaluating whether work-product protection applies to patent prosecution documents); In re Gabapentin Patent Litig., 214 F.R.D. 178, 184 (D.N.J. 2003) (“Generally, work product performed by an attorney to prepare and prosecute a patent does not fall within the parameters of the work product protection ....” (quoting In re Mineaba Corp., 143 F.R.D. 494, 499 (S.D.N.Y. 1992))). The Court finds persuasive COH's position that work-product protection does not attach to documents Dr. Meiklejohn created predating communication of the inventorship determination to Mardiros because Dr. Meiklejohn generated those documents in the ordinary course of business and not in anticipation of litigation. (Def.'s Suppl. Br. 9–10, ECF No. 299 (citing, inter alia, Fed. R. Civ. P. 26(b)(3) and In re EchoStar Commc'ns Corp., 448 F.3d 1294, 1301 (Fed. Cir. 2006)).) Mardiros disputes that August 8, 2016, is the correct trigger date, but he neither proposes an alternative date when the prospect of litigation arose nor supports his dispute with any evidence. On de novo review of the record on the motion, the Court agrees with the Special Master that COH reasonably anticipated litigation after communicating its adverse inventorship decision to Mardiros. Second, Mardiros contends the Special Master improperly distinguished three cases discussing waiver of privilege due to reliance upon advice by counsel in litigation. (Mot. 3–4.) The three identified decisions are distinguishable from the facts here. All three involve a patent holder who disclosed a privileged communication to the United States Patent and Trademark Office (“PTO”) and relied on the communication in litigation in support of a claim or defense. See Winbond Elecs. Corp. v. Int'l Trade Comm'n, 262 F.3d 1363, 1375–76 (Fed. Cir.) (approving conclusion that party who relied on statement to obtain a certificate of correction from the PTO and used the certificate in petition for reconsideration of inventorship issue waived protections over statement by placing legal advice at issue), opinion corrected, 275 F.3d 1344 (Fed. Cir. 2001); Bd. of Trs. of Leland Stanford Jr. Univ. v. Roche Molecular Sys., 237 F.R.D. 618, 625 (N.D. Cal. 2006) (“Similar to the patentee in Winbond, Stanford relied on its declarations to the PTO to obtain a certificate of correction and is now attempting to use that certificate to enforce the '730 and '705 Patents in the context of its infringement dispute ....”); Hor v. Chu, No. 4:08-cv-3584, 2010 U.S. Dist. LEXIS 112777, at *13 (S.D. Tex. Oct. 22, 2010) (“By voluntarily disclosing this communication to third-parties—first the PTO, and now, this Court—the Court finds that Defendant waived the attorney-client privilege with respect to Cox's statement.”). Mardiros does not support his summary argument that the Court should expand the decisions' reasoning beyond their common facts to the situation here, where COH has not relied upon disclosed privileged communications in its defense. *3 Third, Mardiros challenges the Special Master's conclusion that COH did not waive privilege or protection by disclosing inventorship notes from counsel because those notes are neither protected nor privileged. (Mot. 4.) Invoking but not citing Supreme Court authority, Mardiros fails to explain his position on privilege.[2] Mardiros does not advance any argument on work-product protection independent of the waiver theory rejected above. The Court declines to entertain these underdeveloped arguments. See Indep. Towers of Wash. v. Washington, 350 F.3d 925, 929 (9th Cir. 2003) (declining to “manufacture arguments” for a party); Hibbs v. HDM Dep't of Human Res., 273 F.3d 844, 873 n.34 (9th Cir. 2001) (declining to address an “argument ... too undeveloped to be capable of assessment”). Fourth, Mardiros argues the Special Master failed to address the scope of any waiver of privilege or protection. (Mot. 4.) There is no need for the Court to decide the scope of any waiver because the Court has found no waiver. Fifth, Mardiros claims the Special Master improperly declined to consider his complaints about COH's privilege log. (Mot. 4–5.) On de novo review, the Court agrees with the Special Master that Mardiros has not presented the purported deficiencies in COH's privilege log with enough specificity for the Court to evaluate his argument. Mardiros devotes half a page in his supplemental brief to this discussion. (Pl.'s Suppl. Br. 10, ECF No. 300.) Mardiros does not list the purportedly inadequate entries in the privilege log, articulate why he lacks enough information to evaluate the applicability of the privilege, or argue how the log's defects warrant a finding of waiver. See Fed. R. Civ. P. 26(b)(5)(A). Neither the Court nor the Special Master is obliged to develop Mardiros's argument for him. See Indep. Towers of Wash., 350 F.3d at 929; Hibbs, 273 F.3d at 873 n.34. The sixth issue Mardiros presents, that COH appears to be withholding two additional documents in a privilege log produced after the SM Order, (Mot. 5), was not presented to the Special Master and is not subject to review under Rule 53(f).[3] *4 Finally, Mardiros objects to the Court's appointment of the Special Master nearly a year ago. (Mot. 5.)[4] To the extent Mardiros presents new objections the Court did not previously overrule, (see Order Regarding Appointment of Special Master 2–7, ECF No. 111 (addressing objections)), the objections are untimely, and the Court deems them waived. Burlington N. R.R. Co. v. Dep't of Revenue, 934 F.2d 1064, 1069 (9th Cir. 1991). The Special Master has been exceedingly generous with her time and attention to the parties' myriad discovery disputes. The Court gave the parties ample time to litigate the case and complete discovery—in fact, the Special Master issued her order almost exactly a year after the Court's original schedule was set to conclude. (See Order Setting Pre-Trial & Trial Dates, ECF No. 23 (setting May 12, 2020 trial).) The proffered motion is rejected and denied. The Final Pretrial Conference is imminent, and the Court will not entertain further untimely motions. IT IS SO ORDERED. Footnotes [1] Mardiros submits he “would argue” a motion based on “a supporting Memorandum of Points & Authorities,” which presumably would provide further detail to his arguments. (Mot. 2.) That hypothetical memorandum is not before the Court, and the Court has no obligation to make Mardiros's arguments for him. See Indep. Towers of Wash. v. Washington, 350 F.3d 925, 929 (9th Cir. 2003). [2] The Court also rejects the argument Mardiros presented in his supplemental brief. In a footnote supporting his argument that the attorney-client privilege should extend to COH's former employees, Mardiros improperly represents that the concurring Supreme Court opinion in Upjohn Co. v. United States, 449 U.S. 383 (1981), is controlling. (Pl.'s Suppl. Br. 4 n.1, ECF No. 300 (citing Upjohn, 449 U.S. at 403 (Burger, C.J., concurring)).) The Upjohn court expressly declined to decide whether the privilege extends to communications with former employees. Upjohn, 449 U.S. at 394 n.3. Although the Ninth Circuit has endorsed a former employee theory similar to Mardiros's, In re Coordinated Pretrial Procs. in Petroleum Prods. Antitrust Litig., 658 F.2d 1355, 1361 n.7 (9th Cir. 1981), the law of the Federal Circuit governs here, In re Queen's Univ. at Kingston, 820 F.3d 1287, 1290–91 (Fed. Cir. 2016), and there is a split in authority on the issue, see United States v. Philip Morris USA, Inc., No. 99-2496 (GK), 2005 U.S. Dist. LEXIS 64376, at *24–25 & *25 n.4 (D.D.C. Jan. 21, 2005) (collecting cases). The Court declines to apply the Ninth Circuit's broad rule in Petroleum here. [3] Mardiros indicates COH also has not complied with the production required by the SM Order. (Mot. 1–2.) Again, this issue is not appropriate for Rule 53(f) review. Mardiros's proper recourse was to seek relief from the discovery cutoff from the Court and present any nonproduction issue to the Special Master in the first instance. He has not done so. [4] Mardiros claims the Court “re-appointed” the Special Master after the case was transferred from Judge Carney. (Mot. 5.) Mardiros mischaracterizes the record. (See Text Only Entry, ECF No. 154 (“The Order Regarding Appointment of Special Master (ECF No. 111) remains in effect.”).)