Powerweb Energy Inc. v. Hubbell Lighting Inc.
Although an inventor's request for information from a co-inventor, for purposes of seeking legal advice about patentability, can be protected by the attorney-client privilege, the co-inventor's response may not be protected by the attorney-client privilege. In May 2010, Eric Weber, who is the director of engineering at Hubbell Lighting Inc., began the process to submit an internal patent application for a wireless lighting system. Weber received an IDS, or invention disclosure statement, form, and he obtained input from his co-inventors and forwarded the disclosure statement to Hubbell's legal department. During this process, Weber exchanged e-mail correspondence with Terry Arbouw, a co-inventor who is Hubbell's director of business development. Weber asked Arbouw to provide answers to four questions posed by the disclosure statement. In one e-mail that Arbouw sent on July 19, 2010, the e-mail appeared blank, and Arbouw could not recall if he had provided answers to Weber's questions underneath each question. The defendants argued that the e-mail correspondence was privileged, because invention records sent to counsel for legal advice about patentability are protected by the attorney-client privilege. The plaintiff objected that the e-mail correspondence was not privileged, because the defendants did not prove that Arbouw sent the e-mail correspondence to obtain legal advice. A party that invokes the attorney-client privilege must establish: 1.) communication between attorney and client; 2.) that was intended to be and was kept confidential; and 3.) the communication was for the purpose of obtaining legal advice. No evidence existed that Arbouw's July 19 e-mail was for the purpose of obtaining legal advice. Arbouw apparently was unfamiliar with the term "IDS" and testified, "It reflects Eric [Weber] asking for a timeline. I'm not sure what IDS is, though, to be honest." The defendants failed to prove the attorney-client privilege could apply to the July 19 e-mail correspondence from Arbouw to Weber. On the other hand, "Given Weber's unilateral intent to obtain the information . . . for the purposes of seeking legal advice," wrote the court, "any further inquiry into the subject with Weber is privileged." The court granted in part the plaintiff's motion to compel.