AVERY DENNISON CORPORATION, Plaintiff, v. UCB FILMS PLC, Defendant No. 95 C 6351 United States District Court, N.D. Illinois September 30, 1998 Keys, Arlander, United States Magistrate Judge MEMORANDUM OPINION AND ORDER *1 This matter comes before the Court on three of UCB FILMS PLC's motions to compel production of discovery documents and deposition testimony: Defendant's Motion to Compel Production of Withheld Evidence; Defendant's Motion to Compel Withheld Rule 30(b)(6) Testimony; and Defendant's Motion to Compel Production of Withheld Documents 943 and Reissue Application of Patent 4,888,075. For the reasons set forth below, each of Defendant's motions are granted in part, and denied in part. BACKGROUND Plaintiff, Avery Dennison Corporation (“Avery”), seeks to enforce several of its patents, among them United States Patent number 4,713,273, (“ '273”), in an infringement action against Defendant, UCB Films PLC (“UCB”). These patents pertain to the manufacture of certain types of plastic films used in adhesive labels and packaging. Prior to bringing the present lawsuit, Avery licensed two other companies to use these patents. During the negotiation of the first such licensing agreement, Avery's opponent, seeking leverage in the negotiations, notified Avery of the existence of a patent held by a third party, United States Patent number 3,515,626 (the “Duffield” patent).[1] Because the Duffield patent predated Avery's '273 patent, if it covered the same material, it could have invalidated Avery's patent claims.[2] Hence, during the negotiation of the first licensing agreement, Avery had its in-house and outside patent attorneys analyze the potential impact of the Duffield patent. Based on these legal studies, Avery elected to amend the '273 patent[3] to avoid an apparent overlap with the Duffield patent. Avery drafted, and signed, a reissue application for submission to the PTO.[4] However, shortly before the successful close of the licensing agreement negotiations, Avery changed its mind and decided not to file the reissue application.[5] UCB now seeks information with regard to Avery's preparation of the original patents (which Avery is enforcing in the present lawsuit against UCB), as well as materials on Avery's decision to draft, and subsequently withdraw, the reissue application prepared during the course of the licensing agreement negotiations. UCB's recent motions are only the latest in a protracted discovery dispute. A Special Master[6] has already reviewed, in camera, over 800 documents withheld by Avery on the grounds of attorney-client privilege and the work-product doctrine.[7] This Court will defer to the Special Master's determinations on the appropriateness of Avery's privilege claims and will not conduct an independent review of the withheld documents. DISCUSSION I. Defendant's Motion to Compel Production of Withheld Documents and Testimony Avery designated its in-house patent counsel, Arthur Moore, under Federal Rule of Civil Procedure 30(b)(6), to give testimony on behalf of Avery concerning its licensing of the '273 patent and its other efforts to enforce that patent. In eleven days of deposition testimony, spanning well over a year, Mr. Moore consistently refused to answer questions about Avery's decision to draft, and subsequently withdraw, the reissue application. During Mr. Moore's depositions, Avery's outside counsel invariably objected to these questions on the ground that such information was protected by the attorney-client privilege and work-product doctrine. Five months ago, however, in Mr. Moore's twelfth day of deposition testimony, Avery changed its mind, and allowed Mr. Moore to answer some of these questions. When asked about what facts Avery had possessed that led it to draft the reissue application, Mr. Moore referred to the (then ongoing) licensing agreement negotiations, and its notification of the existence of the Duffield patent during those negotiations. Responding to a question about what facts came to light prior to Avery's withdrawal of the drafted reissue application, Mr. Moore answered that Avery's outside patent counsel conducted a legal study of the Duffield patent. *2 UCB contends that Avery is relying upon the advice of its counsel to prove its good faith belief in the validity of the '273 patent, while shielding that advice from meaningful scrutiny under the attorney-client privilege and work-product doctrine. UCB alleges that it will be materially prejudiced if it is not allowed to test Avery's assertion of good faith. Further, UCB cites Makula v. Sanwa Business Credit Corp., Nos. 96 C 7138, 96 C 7695, 1997 U.S. Dist. LEXIS 11741, at *5 (N.D.Ill. Aug. 7, 1997), in arguing that Avery waived the protections of both the attorney-client privilege and work-product doctrine when it allowed Mr. Moore to testify regarding Avery's decision to draft, and then withdraw, the reissue application. Based upon this alleged waiver, UCB asks for an extremely wide range of evidence, both documentary and testimonial, relating to the reissue application. Avery counters that the Special Master has already determined the discoverability of its decisions to draft and withdraw the reissue application. Avery also maintains that UCB argues waiver solely because Mr. Moore, as a Rule 30(b)(6) designee, also happens to be an attorney.[8] However, that fact, without more, does not waive any privilege. Motley v. Marathon Oil Co., 71 F.3d 1547 (10th Cir.1995). A. Attorney–Client Privilege In addressing these arguments of privilege and waiver, this Court first notes that the scope of discovery should be broad in order to aid the search for truth. United States v. White, 950 F.2d 426 (7th Cir.1991); Ziemack v. Centel Corp., No. 92 C 3551, 1995 WL 314526, at *2 (N.D.Ill. May 19, 1995). Therefore, courts commonly look unfavorably upon anything that significantly restricts this scope. Allendale Mut. Ins. Co. v. Bull Data Sys. Inc., 152 F.R.D. 132, 135 (N.D.Ill.1993); Ziemack, 1995 WL 314526, at *2. Because the attorney-client privilege and work-product doctrine obscure the search for truth, both should be confined to their narrowest possible limits in order to minimize the impact upon the discovery process. White, 950 F.2d at 430; Ziemack, 1995 WL 314526, at *2. The Seventh Circuit has adopted Professor Wigmore's formulation of the essential elements of the attorney-client privilege: (1) where legal advice of any kind is sought; (2) from a professional legal advisor in his capacity as such; (3) the communications relating to that purpose; (4) made in confidence; (5) by the client; (6) are at his instance permanently protected; (7) from disclosure by himself or by the legal advisor; (8) except the protection be waived. 8 WIGMORE § 2292; White, 950 F.2d at 430 (adopting Wigmore's elements of the privilege); Ziemack, 1995 WL 314526, at *2. The party seeking to invoke the attorney-client privilege bears the burden of establishing all of the privilege's elements. White, 950 F.2d at 430; Ziemack, 1995 WL 314526, at *2. Additionally, the claim of privilege cannot be a blanket claim; it must be established on a document-by-document and question-by-question basis. Id. *3 Not every disclosure from a client to an attorney is entitled to protection from discovery. In re Air Crash Disaster at Sioux City, Iowa, 133 F.R.D. 515, 518 (N.D.Ill.1990); Ziemack, 1995 WL 314526, at *3. Furthermore, communications from attorney to client fall under the privilege only to the extent that they reveal confidential information provided by the client. Sioux City, 133 F.R.D. at 518; Ziemack, 1995 WL 314526, at *4. Thus, communications from the attorney to the client should be deemed privileged only if the statements do in fact reveal, directly or indirectly, the substance of a confidential communication by the client. Id. At one time there was authority rejecting the attorney-client privilege with respect to communications between a client and her patent attorney, on the theory that the patent attorney more closely resembled a technician than a legal advisor. Amsted Indus. Inc. v. National Castings, Inc., No. 88 C 0924, 1990 U.S. Dist. LEXIS 8699, at *3 (N.D.Ill. July 13, 1990). This view, however, has been generally rejected as “courts have consistently held that confidential communications between attorney and client for the purpose of securing legal advice concerning preparation or prosecution of a patent application are protected ....” Id. at *3(collecting cases); see also Natta v. Zletz, 418 F.2d 633 (7th Cir.1969)(holding that the duty of full disclosure mandated by the federal patent laws does not preclude the proper application of the attorney-client privilege and work-product doctrine). Under Wigmore's formulation, the privilege does not protect technical information, such as a description of an invention, communicated by a client to a patent attorney for the purpose of preparing a patent application where the communication does not request any legal interpretation. Amsted, 1990 U.S. Dist. LEXIS 8699, at *5 (citing Hercules, Inc. v. Exxon Corp., 434 F.Supp. 136, 147 (D.Del.1997)). Under this analysis, several courts have found that client communications describing prior art, which do not expressly request legal advice, are not privileged. C & F Packing Co ., Inc. v. IBP, Inc., No. 93 C 1601, 1997 U.S. Dist. LEXIS 15389, at *7 (N.D.Ill. Sept. 29, 1997)(citing Amsted, 1990 U.S. Dist. LEXIS 8699, at *2). According to the C & F Packing court, prior art is primarily technical, not legal, information. Id. (citing Sneider v. Kimberly–Clark, Corp., 91 F.R.D. 1, 5 (N.D.Ill.1980)). Communication that merely contains the study of prior art, unless legal issues predominate, is not privileged. Id. (citing Baxter Travenol Labs., Inc. v. Abbott Labs., No. 84 C 5103, 1987 U.S. Dist. LEXIS 10300, at *12 (N.D. Ill. June 19, 1987)). In the present case, the Special Master has already reviewed the documents which UCB seeks; those pertaining to Avery's decision to draft, and then withdraw, the reissue application. The Special Master has, thus, determined which ones merely convey technical information, and which ones expressly seek legal advice such that they fall within the attorney-client privilege. For the following reasons, this Court finds that Avery has waived the attorney-client privilege with respect to its legal analysis of the Duffield patent. *4 Disclosure of an otherwise confidential communication to a third party waives the attorney-client privilege. Sioux City, 133 F.R.D. at 518; Ziemack, 1995 WL 314526, at *2. Especially pertinent here, a party may not waive the privilege to some materials on a given subject and then withhold other materials on that same subject. Ziemack, 1995 WL 314526, at *2 (citing Nye v. Sage Prods. Inc., 98 F.R.D. 452 (N.D.Ill.1982)). However, to waive the privilege, a party must “do more than ‘merely disclose the subject which he had discussed with his attorney.” ’ Makula, 1997 U.S. Dist. LEXIS 11741, at *6 (quoting United States v. O'Malley, 786 F.2d 786, 794 (7th Cir.1986)). A party also waives the attorney-client privilege when it intends to show that it acted in good faith because it relied upon the advice of its counsel. Videojet Sys. Int'l Inc. v. Inkjet, Inc., No. 95 C 7016, 1997 WL 138008, at *2 (N.D.Ill. Mar.19, 1997). This usually occurs in patent infringement litigation when the defendant answers a charge of willful infringement. Negating the element of willfulness, the patent infringement defendant often asserts that it conferred with an attorney, who advised it that it was not infringing on any patents. Id. (collecting cases). Reliance upon counsel's opinions is a waiver of privilege because to hold otherwise would be inherently unfair; it would allow a party to use privileged material as a “sword” to attack the opposing party's allegations of bad faith, while hiding the basis of its good faith belief behind the “shield” of privilege. Id.; see also Pitney–Bowes, Inc. v. Mestre, 86 F.R.D. 444, 446 (S.D.Fla.1980)( “privilege ... was intended as a shield, not a sword.”); Duplan Corp. v. Deering Milliken, Inc., 397 F.Supp. 1146, 1162 (D.S.C.1974)(“[t]he reason behind the rule is one of basic fairness.”). Through Mr. Moore's deposition testimony, Avery has attempted to reveal nothing more than the fact that it conferred with in-house and outside patent counsel regarding the Duffield patent, both prior to drafting the reissue application, and also while deciding to withdraw the reissue application. Avery now argues that merely revealing the fact that those communications took place did not waive the attorney-client privilege. However, when placed within the full context of Mr. Moore's twelve days of deposition testimony, Avery's disclosures clearly go beyond the mere fact of communications regarding the Duffield patent, and instead implicitly reveal the legal conclusions of Avery's in-house and outside counsel. Avery testified (via Mr. Moore's deposition) that it was notified of the existence of the Duffield patent during the course of its earlier licensing agreement negotiations and that, after conferring with outside counsel, it determined that it should draft a reissue application. Since Avery drafted and executed (but did not file with the PTO) the reissue application, presumably this legal analysis concluded that the Duffield patent might materially impact the '273 patent. Nonetheless, Avery testified that it decided to withdraw the reissue application after conferring with in-house and outside patent counsel, and deciding that the Duffield patent did not materially impact the '273 patent. Together, these disclosures constitute a voluntary waiver of the attorney-client privilege with respect to Avery's legal analyses of the Duffield patent. However, the Court does not find a waiver of privilege regarding the remaining wide range of evidence that UCB has requested in this motion.[9] B. Work–Product Doctrine *5 Avery also argues that its communications regarding the decisions to draft, and then withdraw, the '273 reissue application are protected under the work-product doctrine. Though often erroneously invoked interchangeably, the work-product doctrine is distinct from, and broader than, the attorney-client privilege. In re Stern Walters Partners, Inc. v. Kaminky, No. 94 C 5705, 1996 WL 115290, at *4 (N.D.Ill. Mar.13, 1996)(citing United States v. Nobles, 422 U.S. 225, 238 n. 11, 95 S.Ct. 2160, 45 L.Ed.2d 141 (1975)). Like the attorney-client privilege, the work-product doctrine significantly limits the scope of discovery, and therefore must be narrowly construed in order to aid in the search for the truth. Ziemack, 1995 WL 314526, at *2. “The work-product doctrine prevents either party from gaining an unfair advantage by learning the other party's, or their counsel's, legal strategies and theories.” Stern Walters, 1996 WL 115290, at *4 (citing Allendale, 152 F.R.D. at 135). Under the work-product doctrine, the Court must initially determine whether the documents at issue were, in fact, prepared in anticipation of litigation. FED. R. CIV. P. 26(b)(3); Hickman v. Taylor, 329 U.S. 495, 67 S.Ct. 385, 91 L.Ed. 451 (1947). The mere fact that litigation eventually ensues does not, alone, protect all documents related to the subject matter of the litigation. Ziemack, 1995 WL 314526, at *6 (citing Binks Mfg. Co. v. National Presto Indus. Inc., 709 F.2d 1109, 1118–19 (7th Cir.1983)). The “ ‘test’ for work-product protection is ‘whether, in light of the nature of the document and the factual situation in the particular case, the document can fairly be said to have been prepared or obtained because of the prospect of litigation.” ’ Id. (quoting Binks, 709 F.2d at 1118–19). Additionally, a document is only considered work-product if it is primarily concerned with legal assistance. Id. (citing Loctite Corp. v. Fel–Pro, Inc., 667 F.2d 577, 582 (7th Cir.1981)). Like the attorney-client privilege, the burden is on the party opposing discovery to show that the work-product doctrine applies. Id. (citing Allendale, 152 F.R.D. at 137.) It appears uncontested that the reissue application, drafted during the licensing agreement negotiations, was prepared in anticipation of litigation that Avery might have brought if those negotiations fell through. Oak Indus., 687 F.Supp. at 374 (citing Electronic Memories and Magnetics Corp. v. Control Data Corp., 20 F.R.Serv.2d (Callaghan) 700 (N.D.Ill.1975)). However, this Court notes that the Special Master has already inspected all of Avery's withheld documents. The Special Master, in reviewing Avery's withheld documents in camera, evaluated Avery's work-product claims on a document-by-document basis. Therefore, aside from the following discussion of the waiver of work-product protections, the Court will defer to the Special Master's recommendations. Avery has met the threshold burden required to preserve work-product doctrine protections through its unrefuted argument that the materials that UCB seeks were prepared in anticipation of litigation. UCB argues, however, that Avery waived the protections of the work-product doctrine through the same testimony of Mr. Moore that this Court has already determined waived the attorney-client privilege.[10] The Court agrees that Mr. Moore's 30(b)(6) deposition testimony revealed the legal conclusions drawn by Avery's in-house and outside counsel with regard to their investigations of the Duffield patent. By exposing the legal theories of counsel that the work-product doctrine is designed to protect, Avery has waived those protections.[11] II. Defendant's Motion to Compel Production of Rule 30(b)(6) Testimony *6 Avery designated two of its attorneys, under Rule 30(b)(6), to give deposition testimony regarding the original preparation of the patents now being enforced against UCB.[12] During its testimony, Avery repeatedly refused to answer questions on the grounds that the questions asked for evidence protected by the attorney-client privilege and the work-product doctrine. These unanswered questions cover roughly four subject areas: Avery's understanding of, and reasons for using, certain specifications in the '273 patent; other technical information pertaining to the '273 patent; Avery's investigations of prior art; and Avery's decision to change its outside patent counsel. UCB argues that Avery's assertions of privilege are improper and, therefore, requests production of deposition testimony pertaining to these categories. Regarding the attorney-client privilege, the Court again notes that the Seventh Circuit applies Wigmore's formulation. 8 WIGMORE 2292; White, 950 F.2d at 430. As the party opposing discovery, Avery must show that Wigmore's elements properly apply to its assertions of privilege. Ziemack, 1995 WL 314526, at *2. Furthermore, the privilege protects confidential communications between the attorney and the client, not non-confidential facts contained in those communications. Id. As previously noted, the work-product doctrine protects confidential materials prepared by an attorney in anticipation of litigation from discovery. FED. R. CIV. P. 26(b)(3). Rule 26, in codifying the work-product doctrine, allows the Court to compel production of work-product upon a showing of “undue hardship” by the party seeking production. FED. R. CIV. P. 26(b)(3). Even upon a showing of undue hardship, however, work-product evidence concerning the legal conclusions and litigation strategies of counsel are not subject to production. Id.; Nye, 98 F.R.D. at 454. A. Avery's Reasons for Using Certain Specifications In giving its deposition testimony, Avery refused to answer questions about why it used specific terms[13] in its original patent application.[14] Such questions clearly request the substance of Avery's conversations with its patent counsel; conversations seeking advice on the legal effect of specific terms in the patent application. Avery alleges that it made these communications in confidence and that this confidence has been maintained. UCB has not shown otherwise. “[C]onfidential communications between attorney and client for the purpose of securing legal advice concerning preparation or prosecution of a patent application are protected [by the attorney-client privilege] ....” Amsted, 1990 U.S. Dist. LEXIS 8699, at *3. Application of the work-product doctrine to these materials, however, is more difficult. Avery has not shown that the decision regarding which specifications to include in the patent application was made in anticipation of litigation. FED. R. CIV. P. 26(b)(3); Oak Indus., 687 F.Supp. at 374 (finding preparation of patent application was not done in anticipation of litigation). As such, any arguments that these materials should be protected because they reveal the thoughts and legal theories of Avery's counsel are groundless. *7 Though the work-product doctrine does not attach to evidence of Avery's decisions to use certain terms in its original patent applications, because it is protected under the attorney-client privilege, UCB is not entitled to production. B. Technical Information Several courts have concluded that communications of technical data from a client to an attorney for the purpose of preparing a patent application are not privileged. C & F Packing, 1997 U.S. Dist. LEXIS 15389, at *5; Amsted, 1990 U.S. Dist. LEXIS 8699, at *5. This conclusion is consistent with Wigmore's formulation of the attorney-client privilege, as technical information typically does not call for legal advice when transmitted to patent counsel for preparation of a patent application. Technical information is also not protected because it is not confidential if intended to be included in a public patent filing. Avery has failed to show either that the technical information requested by UCB called for legal interpretation by Avery's counsel, or that it was intended to remain confidential by not being included in the patent application. Therefore the attorney-client privilege does not apply. Similarly, Avery has not shown that technical information pertaining to the preparation of the patent application was reproduced or gathered in contemplation of litigation. FED. R. CIV. P. 26(b)(3). Accordingly, Avery shall produce deposition testimony on this information to the extent that it is unable to show that it was transmitted to obtain legal interpretation, or in anticipation of litigation. C. Prior Art Like technical information, prior art used to prepare a patent application is not protected from discovery under the attorney-client privilege unless legal issues predominate the communication from client to attorney. C & F Packing, 1997 U.S. Dist. LEXIS 15389, at *5; Amsted, 1990 U.S. Dist. LEXIS 8699, at *5. Avery has not met its threshold burden of showing that transmissions of prior art to its patent counsel were made for the purpose of requesting legal advice, or that it did not intend the prior art to be incorporated into the patent application. The attorney-client privilege does not cover prior art that Avery communicated to counsel where those communications do not request legal advice. Avery has also failed to demonstrate that any communications of prior art pertaining to the original patent application were made in anticipation of litigation, as required for work-product protection. FED. R. CIV. P. 26(b)(3). Avery must produce deposition testimony regarding prior art, except where it is able to show that communications of this information sought legal advice or expressly contemplate litigation. D. Avery's Decision to Change its Outside Patent Counsel In the middle of its earlier negotiations to license the patents it is now enforcing against UCB, Avery fired the law firm that it had retained as outside patent counsel and hired a new firm. UCB contends that this was an ordinary business decision that should not be afforded work-product protection. *8 This Court can find no meaningful contradiction of Avery's assertion that its decision to change its outside patent counsel (immediately after drafting the reissue application, and in the middle of licensing agreement negotiations) was made in contemplation of litigation. Disclosure of the basis of Avery's decision to change patent counsel would clearly reveal the type of litigation strategies that the work-product doctrine was designed to protect. FED. R. CIV. P. 26(b)(3); Nye, 98 F.R.D. at 454. Therefore, Avery will not have to produce deposition testimony on its decision to change patent counsel. III. Defendant's Motion to Compel Production of Withheld Documents 943 and Draft Reissue Application 4,888,075 A. Withheld Document 943 Avery's withheld document number 943 is clearly only the first page of a longer memorandum (“the 943 memorandum”). While this first page discloses no confidential matters, it states that the rest of the memorandum regards the '273 reissue application. Avery has already produced the first page of the 943 memorandum, and UCB now requests the subsequent pages. Avery counters that document 943 was, in fact, an erroneously made copy of the first page of another confidential (as determined by the Special Master) document—document 1000. Avery must initially produce the first page of withheld document 1000 so that this Court can compare it with document 943. If document 943 is identical to the first page of withheld document 1000, then Avery will not be required to produce the 943 memorandum in its entirety. The production of document 943 did not waive either the attorney-client privilege or work-product doctrine as to any confidences contained in document 1000. If document 943 does not match withheld document 1000, then Avery must produce all of the 943 memorandum for this Court's review. If necessary, the Court will determine whether privilege attaches, at such time. B. Draft Reissue Application for Patent 4,888,075 UCB has been pursuing the draft reissue application for patent number 4,888,075 (“ '075”) for quite some time.[15] Avery's initial response to a UCB interrogatory requesting the signed reissue application for Avery's '075 patent indicated that such a document did not exist. After UCB demonstrated that Avery had, in fact, sent this very document to its outside patent counsel, Avery agreed to waive privilege and produce the signed reissue application. Avery's only excuse as to why the signed '075 patent reissue application has not been turned over in the five months (since it agreed to so do) is that Avery has not yet located the document. The Court can find no reason why Avery should still be unable to produce the signed '075 patent reissue application after five months of good faith searching. Therefore, Avery is ordered to produce this document. CONCLUSION Consistent with the foregoing Opinion, the Court grants in part, and denies in part, each of the three motions to compel made by UCB. *9 IT IS THEREFORE ORDERED that Avery shall produce by October 23, 1998: Documentary and testimonial evidence of its legal investigations of the Duffield patent (both the investigation that initially led Avery to draft the reissue application, as well as the investigation that convinced Avery to withdraw the reissue application); Rule 30(b)(6) deposition testimony covering technical information and prior art gathered or prepared in the preparation of the original patent applications, to the extent that Avery cannot affirmatively demonstrate that such materials are privileged; The first page of withheld document 1000 (if this first page of document 1000 is not identical to document 943, Avery must produce, in its entirety, the 943 memorandum for the Court's in camera inspection); and The signed '075 patent reissue application. Footnotes [1] A patent granted by the U.S. Patent and Trademark Office (“PTO”) is a public document. In preparing patent applications, patent attorneys are expected to conduct a search of the PTO for earlier patents. [2] Under the United States Code's requirement of “novelty,” a patent is invalid if “the invention was known or used by others in this country, or patented ..., before the invention thereof by the applicant for patent.” 35 U.S.C. 102(a). “Prior art... [i]n patent law, includes any relevant knowledge, acts, descriptions and patents which pertain to, but predate, the invention in question .” BLACK'S LAW DICTIONARY 1193 (6th ed.1990). [3] At this point, Avery apparently also decided to amend other patents. Unless otherwise noted, however, this Opinion's references to “the reissue application” pertain only to the '273 patent. [4] Because of the requirement of novelty, upon discovering evidence of prior art, a patent holder may amend its patent to be sure that it does not cover the same material as the prior art. 35 U .S.C. 252. To amend, the patent holder surrenders the original patent to the PTO and asks the PTO to reissue the patent, modified to eliminate any overlap with the prior art. Id. [5] Avery has since alleged that the decision to withdraw the reissue application was based on a renewed study of the Duffield patent by its in-house and outside counsel. Presumably this second set of studies concluded that the Duffield patent did not, in fact, cover the same material as Avery's '273 patent. [6] Former District Court Judge Nicholas Bua was appointed Special Master, with the agreement of the parties. [7] Especially pertinent to UCB's present motions, the Special Master found the drafted reissue application itself not protected from discovery, and it has already been produced. [8] Despite Avery's assertions, this does not appear to be the basis of UCB's argument. Avery also refers to an out of context statement that “this court,” presumably referring to the United States District Court for the Northern District of Illinois, has refused to uphold waivers, and further argues that UCB's motion violates Local Rule 12(k) and Federal Rule of Civil Procedure 37(a)(2) concerning pre-motion conferences. These meritless arguments do not warrant further discussion. [9] In light of the conclusion that Avery waived the attorney-client privilege by disclosing confidential information, the Court need not further examine whether Avery also separately waived the attorney-client privilege by using its reliance upon opinions of counsel as evidence of its good faith. [10] See supra at 10. Mr. Moore's 30(b)(6)deposition testimony revealed that Avery's in-house and outside counsel conducted a legal study of the Duffield patent which concluded that the Duffield patent materially impacted Avery's '273 patent, and prompted Avery to draft and sign the reissue application. Mr. Moore's testimony also disclosed that Avery later conducted another legal study of the Duffield patent which reached the opposite conclusion and led Avery to withdraw the reissue application. [11] Avery's waiver covers both its initial legal investigation concluding that the Duffield patent might invalidate the '273 patent (which led it to draft the reissue application) and its subsequent legal investigation concluding that the Duffield patent could not invalidate the '273 patent (which led it to withdraw the reissue application). [12] UCB has already deposed the inventors of the patented devices and processes. [13] For example, UCB asked Avery's attorneys why Avery chose the word “film” over “tape” to describe the material produced. Word choices can impact the validity of a patent because, in a specific patent context, the words used to describe an invention may have acquired special meanings based on prior art. [14] The Court assumes that these questions pertained to the '273 patent. [15] It is not exactly clear as to what Avery's '075 patent pertains.