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Are law firm emails protected in patent litigation?

April May 2024 Cantor Colburn IP Newsletter

Are law firm emails protected in patent litigation?

Intraoffice emails can come back to haunt you if you end up in court — and not just in the case the emails are a part of. The plaintiff in an Ohio patent infringement case had a rude awakening when an email with material it deemed confidential was made public, potentially providing a roadmap to competitors on how to avoid infringing its patents.

Plaintiff tries to delete message

Woodstream Corporation sued Nature’s Way Bird Products LLC for infringement of two patents related to hummingbird feeders. In September 2023, it filed a stipulated motion (meaning the defendant didn’t oppose it) for a protective order to limit access to certain materials relevant to the case.

The same day, Nature’s Way asked to file a brief in the case under seal. It explained that the brief would refer to a document Woodstream had designated as “confidential” in the pending protective order.

The document was an email between a senior engineer at Woodstream and other product and engineering employees within the company. In it, the senior engineer discussed three Woodstream patents, including the two at issue in the case. He gave opinions of the patents’ claim interpretations and whether the company could make valid infringement claims on the patents. Woodstream filed a motion seeking the opportunity to explain why the emails should be under seal, which the court granted.

Court delivers hard lesson

Parties that want to seal records generally must show:

However, in civil litigation, only trade secrets, information covered by a recognized privilege and statutorily protected information are typically enough to overcome the presumption of access.

Woodstream contended that the email contained trade secrets. Specifically, it claimed that the email provided a “roadmap to potentially avoid [patent] infringement on narrow technical margins.”

Under Ohio law, a trade secret must derive “independent economic value” from not being generally known to other parties who could obtain economic value from its disclosure or use. It also must be the subject of efforts to maintain its secrecy.

The court found that the email didn’t contain trade secrets. Woodstream, it said, didn’t establish that the engineer’s opinions derived economic value from not being known. Woodstream also didn’t describe any steps it took to keep the email secret, efforts to develop the opinions, or how the opinions relate to the company’s business strategy, development or sales.

Moreover, both parties submitted public, redacted briefs that referred to the email, making it part of the court record. The court concluded that the public’s interest in the evidence and records the court would rely on in its decision outweighed Woodstream’s secrecy interests.

Message received

The case serves as a cautionary tale about the limited protection intraoffice emails — even those with information considered confidential internally — might receive in litigation. It’s also worth noting that, once information becomes part of the court record, the presumption of access is tough to overcome.

© 2024

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