DNA GENOTEK INC., a Canadian Corporation, Plaintiff, v. SPECTRUM SOLUTIONS L.L.C., a Utah Limited Liability Company, Defendant Case No.: 21-cv-516-RSH-DDL United States District Court, S.D. California Filed February 28, 2023 Counsel Brian M. Kramer, Candice F. Heinze, Drew Alan Hillier, John R. Lanham, Morrison & Foerster LLP, San Diego, CA, David D. Cross, Pro Hac Vice, Morrison & Foerster LLP, Washington, DC, for Plaintiff. Benjamin B. Anger, Knobbe Martens, San Diego, CA, Brandon Geoffrey Smith, Stephen W. Larson, Joseph F. Jennings, Nicholas M. Zovko, Ali S. Razai, Knobbe Martens Olson and Bear LLP, Irvine, CA, for Defendant. Leshner, David D., United States Magistrate Judge ORDER GRANTING IN PART AND DENYING IN PART MOTION TO COMPEL *1 Before the Court is Defendant Spectrum Solutions, L.L.C.'s (“Spectrum”) Motion to Compel Further Testimony of Dr. Adele Jackson and Compel Production of Withheld Documents (the “Motion”). Dkt. No. 200. Having considered the parties' briefs, the applicable law and the arguments of counsel on February 22, 2023, and for the reasons stated below, the Court GRANTS IN PART and DENIES IN PART the Motion. I. INTRODUCTION Spectrum moves to compel responses to deposition questions posed to Dr. Adele Jackson, who testified as plaintiff DNA Genotek Inc.'s (“Genotek”) designee pursuant to Federal Rule of Civil Procedure 30(b)(6). Spectrum contends that Genotek's counsel improperly instructed Dr. Jackson not to answer numerous questions during the Rule 30(b)(6) deposition based on counsel's assertion that the information sought was protected from disclosure by the attorney-client privilege and work product doctrines. Spectrum also moves to compel Genotek to produce “transmittal letters and emails” exchanged between Genotek and its Canadian counsel at the Osler firm. Finally, Spectrum contends that Dr. Jackson was not adequately prepared for the deposition. II. DISCUSSION A. Choice of Law In analyzing Genotek's privilege assertions, a threshold issue is whether United States law or Canadian law applies to the attorney-client privilege analysis. Genotek contends that the communications at issue between Dr. Jackson and the Osler law firm “touch base” with Canada and that Canadian law governs the privilege analysis.[1] Spectrum asserts that United States federal privilege law applies. “Most courts apply the ‘touch base’ analysis in deciding choice of law issues in cases where the alleged privileged communications occurred in a foreign country or involved foreign attorneys or proceedings.” Cadence Pharms., Inc. v. Fresenius Kabi USA, LLC, 996 F. Supp. 2d 1015, 1019 (S.D. Cal. 2014). “A court first determines whether the communication involves or ‘touches base’ with the U.S. or foreign law, and then examines the applicable law for privilege.” Id. The Court must first determine which country has the “predominant interest” in determining whether the communications should remain confidential, and then apply the law of that country unless it is contrary to the forum's public policy. Id. *2 Genotek points out that the communications at issue were between Dr. Jackson, a resident of Canada working for a Canadian company, and Osler, a Canadian law firm, regarding communications “with various foreign counsel prosecuting Genotek patents abroad.” Dkt. No. 213 at 8. None of the communications pertained to the prosecution of patents in the United States. On these facts Canada would have the “predominant interest” in determining whether the communications between Dr. Jackson and Osler were privileged. According to Genotek, “Canadian law offers broader privilege protections” than United States law. Id. at 9. Genotek does not offer an analysis from a Canadian lawyer or other expert in Canadian law, instead relying on its U.S. counsel's reading of two Canadian cases. Spectrum's reply brief provides a third Canadian appellate decision regarding the scope of the privilege. See Dkt. No. 218 at 5. In the Ninth Circuit, “[a]n eight-part test determines whether information is covered by the attorney-client privilege: (1) Where legal advice of any kind is sought (2) from a professional legal adviser 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 adviser, (8) unless the protection be waived.” United States v. Graf, 610 F.3d 1148, 1156 (9th Cir. 2010) (citation omitted). “The party asserting the privilege bears the burden of proving each essential element.” Id. (citation omitted). “Because it impedes the full and free discovery of the truth, the attorney-client privilege is strictly construed.” United States v. Martin, 278 F.3d 988, 999 (9th Cir. 2002) (citation omitted). Canadian privilege law similarly applies to confidential communications between attorney and client: “for the privilege to exist there must be: i) a communication between solicitor and client; ii) which entails the seeking or giving of legal advice; and iii) which is intended to be confidential by the parties.” Bartech Sys. Int'l, Inc. v. Mobile Simple Sols., Inc., No. 215CV02422MMDNJK, 2018 WL 834589, at *8 (D. Nev. Feb. 12, 2018); see also Samson Indian Nation and Band v. Canada, [1995] 2 F.C. 762, ¶ 8 (“The legal advice privilege protects all communications, written or oral, between a solicitor and a client that are directly related to the seeking, formulating or giving of legal advice ... it is not confined to telling the client the law and it includes advice as to what should be done in the relevant legal context.”). The privilege “is not to be interfered with except to the extent absolutely necessary, and any conflict should be resolved in favour of protecting confidentiality.” Id. at ¶ 11. Genotek further asserts that the Supreme Court of Canada “has rejected the fact/communication distinctions Spectrum has relied upon to distinguish privileged and non-privileged material.” Dkt. No. 213 at 10. But the case cited by Genotek does not appear to create the black letter distinction that Genotek advocates. In Canada (A.G.) v. Chambre des notaires du Québec, [2016] 1. S.C.R. 336, the court explained that: “it is not appropriate to establish a strict demarcation between communications that are protected by professional secrecy and facts that are not so protected. This line between facts and communications may be difficult to draw ... This is why there must be a rebuttable presumption to the effect that all communications between client and lawyer and the information they shared would be considered prima facie confidential in nature.” *3 Id. at ¶ 40 (citations omitted); see also DuPont Canada Inc. v. Emballage St. Jean-Itée, [2000] F.C.J. No. 2130, ¶ 22 (finding that attorney-client privilege under Canadian law does not “afford[ ] a privilege against the discovery of facts that are or may be relevant to the determination of the facts in issue”). The foregoing authorities demonstrate that, as a general matter, confidential communications between attorney and client pertaining to legal advice fall within the attorney-client privilege under both Canadian and United States law. See Graf, 610 F.3d at 1156; Samson Indian Nation and Band, 2 F.C. 762 at ¶ 8. The Court concludes that application of either Canadian or United States law would not affect the analysis of counsel's privilege objections to the questions posed of Dr. Jackson. With respect to its objections on work product grounds, Genotek provides no argument or legal authorities regarding the work product doctrine under Canadian law and has not carried its burden to establish that Canadian law applies. Cadence Pharms., Inc., 996 F. Supp. 2d at 1019. As such, the Court analyzes Genotek's work product objections under United States law. B. Spectrum's Three Areas of Inquiry Spectrum contends Genotek improperly instructed Dr. Jackson not to answer questions in three areas of inquiry. The Court uses those same headings for ease of reference. 1. “Fact Based Questions About Jackson's Role” Spectrum asserts that Genotek instructed Dr. Jackson not to answer questions seeking “foundational non-privileged facts about [her] knowledge of the specific prosecution matters at the heart of this case.” Dkt. No. 200-1 at 8. However, the questions cited by Spectrum appear to seek information regarding Dr. Jackson's communications with Genotek's attorneys at the Osler firm. See, e.g., Transcript of Deposition of Dr. Adele Jackson, Dkt. No. 202-1, (hereafter “Depo. Tr.”) at 327:11-13 (“Did you receive draft responses of the office action responses that were filed in prosecution of this application?”); 328:9-11 (“Dr. Jackson, did you receive communications with Osler related to the prosecution of this patent?”); 329:9-10 (“Did you receive from counsel the IDSs that were filed during prosecution of this patent?”); 611:18-21 (“Okay, so I just want to confirm, Dr. Jackson, did you receive a draft of this office action response before it was filed with the European patent office?”).[2],[3] Spectrum contends these questions seek “foundational” information and are proper under I-Flow Corp. v. Apex Med. Techs., Inc., No. 07CV1200-DMS (NLS), 2009 WL 106744722 (S.D. Cal. Apr. 3, 2009). The Court finds Spectrum's reliance on that case misplaced. At issue in I-Flow were questions that were “merely foundational to establish the attorney client privilege.” Id. at *2. Here, on the other hand, Spectrum's questions seek the substance of communications between Dr. Jackson and counsel, pertaining to the patent prosecutions in foreign countries. Spectrum's motion to compel further responses to this line of inquiry is DENIED. 2. “Questions About Genotek's Public Statements” *4 Spectrum contends that Dr. Jackson was instructed not to answer questions “[a]bout Genotek's [p]ublic [s]tatements” to foreign patent offices, specifically regarding Genotek's ‘187 patent. See Dkt. No. 200-1 at 9. The questions at issue relate to public statements, drafted by Genotek's patent counsel at Osler, and submitted to foreign patent offices. Genotek instructed Dr. Jackson not to answer questions about the public statements drafted by counsel on the ground that the questions “ask[ed] for the lawyer's mental impressions.” Depo. Tr. 564:13-14. See also id. at 564:18-565:1 (“I'll let you ask [Dr. Jackson] what are the words here, but I'm not going to let you ask her what – how to characterize them. You are asking for what you think counsel meant by this. That's counsel's work product.”); 572:12-14 (“I instruct the witness not to reveal any viewpoint of what counsel is doing.”); 573:9-15 (“Counsel, you are still asking [Dr. Jackson] to characterize what the lawyer said here. I'll let her acknowledge what the lawyer said, but not to characterize what the lawyer did, because you are getting into the lawyer's mental impressions.”). Genotek contends that “[t]hese questions undoubtedly seek Genotek's underlying privileged communications with counsel,” (Dkt. No. 213 at 10), but Genotek did not object to these questions on the ground that the questions sought communications between Dr. Jackson and counsel, and the questions do not appear to necessarily require Dr. Jackson to divulge privileged communications. Rather, Genotek asserted the work product privilege in instructing Dr. Jackson not to answer the questions. “Ordinarily, a party may not discover documents and tangible things that are prepared in anticipation of litigation or for trial by or for another party or its representative (including the other party's attorney, consultant, surety, indemnitor, insurer, or agent).” Fed. R. Civ. P. 26(b)(3)(A). To qualify for work product protection, the information must: (1) be “prepared in anticipation of litigation or for trial” and (2) be prepared “by or for another party or by or for that other party's representative.” United States v. Richey, 632 F.3d 559, 567 (9th Cir. 2011) (citation omitted). The Court concludes that Genotek has not met its burden to establish that the work product privilege applies to all questions regarding its public statements to the foreign patent offices. First, Genotek cites no authority for the proposition that attorney work product objections can be asserted by a non-attorney such as Dr. Jackson. Compare In re Insogna, No. 3:19-CV-1589-LAB-AHG, 2020 WL 85487, at *8 (S.D. Cal. Jan. 3, 2020) (granting motion to quash subpoena for attorney deposition where propounding party sought attorney's “testimony regarding the meaning of certain arguments and amendments made during [patent] prosecution”). Second, Genotek does not explain how the questions sought information that was “prepared in anticipation of litigation or for trial.” Richey, 632 F.3d at 567; Mardiros v. City of Hope, No. 219CV02196MCSMAA, 2021 WL 3126987, at *2 (C.D. Cal. June 3, 2021) (“The 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.”) (citing 7 Robert A. Matthews, Jr., Annotated Patent Digest § 42:176). Third, even if Genotek's objections could be recast as based on the attorney-client privilege, the proper course would have been to instruct Dr. Jackson not to reveal any confidential communications with counsel rather than refusing to allow her to answer the question at all. *5 Genotek has not established that this area of inquiry seeks information protected by the attorney-client privilege or work product privilege. As such, the Court GRANTS Spectrum's motion to compel on this line of inquiry. Genotek may assert appropriate privilege objections to specific questions, but its broad-stroke work product objections to questions about the public documents are not well-taken. 3. “Questions About The Experimental Evidence Disclosed In The Responses” Genotek instructed Dr. Jackson not to answer the cited questions on the grounds that the answers would “[r]eflect[ ] counsel's mental impressions.” Depo. Tr. 595:17-18. For the reasons set forth above, Genotek has not met its burden to establish that the work product privilege applies, and the Court GRANTS Spectrum's motion to compel on this area of inquiry subject to Genotek asserting appropriate attorney-client privilege objections on a queston-by-question basis. C. Genotek's Privilege Log Spectrum moves to compel Genotek to produce “transmittal letters and emails” between Dr. Jackson and Genotek's counsel. Specifically, Spectrum contends that Genotek improperly asserts the attorney-client privilege as to these documents and that Genotek's privilege log “lacks an indication of the nature of the documents withheld.” Dkt. No. 200-1 at 14. The Court agrees with Genotek that this dispute was not timely raised. Spectrum received Genotek's privilege log on November 16, 2022, and Spectrum was required to raise any issue regarding the log's sufficiency with the Court within 30 days. Spectrum did not do so, and the motion to compel further production is DENIED. D. Dr. Jackson's Deposition Preparation On the present record, the Court declines to find that Dr. Jackson was not properly prepared for the Rule 30(b)(6) deposition. It appears that Dr. Jackson did not review certain voluminous exhibits marked by Spectrum as deposition exhibits. But the fact that Dr. Jackson did not review specific documents does not mean she was unprepared to testify on the topics in the Rule 30(b)(6) notice, and Spectrum has not shown that Dr. Jackson was unable to offer testimony on Topic No. 9. The motion to compel on this ground is DENIED. III. CONCLUSION For the reasons stated above, Spectrum's Motion to Compel [Dkt. No. 200] is GRANTED IN PART and DENIED IN PART. Spectrum may depose Genotek's Rule 30(b)(6) designee consistent with the terms of this order for no more than 2 hours. The deposition shall be completed on or before March 31, 2023. IT IS SO ORDERED. Footnotes [1] Genotek says Spectrum “ignores” the choice of law analysis (Dkt. No. 213 at 8), but it appears that Genotek never raised its contention that Canadian law applies prior to filing its opposition brief. Genotek's response to the Rule 30(b)(6) deposition notice generally objected to deposition topics that sought information “privileged or protected from discovery under state or federal law or applicable court order.” Dkt. No. 200-3 at 16. At the discovery conference with the Court in during Dr. Jackson's deposition on December 16, 2022, and during a subsequent conference with the Court on December 30, 2022, Genotek never mentioned that its privilege objections were based on Canadian law. As such, Genotek's assertion that Spectrum “ignored” the issue is not well-taken. [2] Deposition citations are to the page numbers in the top right corner, which are the same citations used by Spectrum. [3] The deposition transcript was filed under seal. Dkt. No. 202. The Court will address Spectrum's motion to seal in a separate order, but finds that counsel's questions are not subject to sealing and has not redacted them herein.