Commercial Litigation and Arbitration

Mental-Impression Work Product Protection Afforded Attorney Notes of Interview with Witness

The plaintiffs in Mass Engineered Design, Inc. v. Ergotron, Inc., 2008 U.S. Dist. LEXIS 89151 (E.D. Tex. Oct. 31, 2008), had engaged a Canadian lawyer/U.S. patent agent named Waraksa but later became dissatisfied with his work. In this patent action, defense counsel interviewed Waraksa and sought to take his deposition. Plaintiffs’ counsel sought the interview notes, as to which defense counsel claimed work product protection.

As a preliminary matter, [plaintiff] Mass argues that the notes are discoverable work-product and are therefore discoverable in cases of "substantial need" and "undue hardship." [Defendant] Ergotron asserts that the notes reveal the mental impressions of its attorneys and are therefore never discoverable. The work product doctrine has been codified as Federal Rule of Civil Procedure 26(b)(3). Generally, materials prepared in anticipation of litigation by attorneys is discoverable only upon a showing of "substantial need" and "undue hardship." FED. R. CIV. PROC. 23(b)(3). However, "mental impressions, conclusions, opinions, or legal theories of an attorney" are absolutely privileged and are not discoverable. Nguyen v. Excel Corp., 197 F.3d 200, 210 (5th Cir. 1999) ("'An attorney's thoughts [are] inviolate . . . .' Even though an attorney's mental impressions and opinions fall outside of the attorney-client privilege, they also 'fall[ ] outside the arena of discovery [as their disclosure would] contravene[ ] the public policy underlying the orderly prosecution and defense of legal claims.'") (quoting Hickman v. Taylor, 329 U.S. 495, 510 (1947)).

Notes taken by an attorney of a third-party witness has elements of both discoverable work-product and non-discoverable work-product. The Supreme Court has held that documents prepared by an attorney from oral statements of a witness certainly require more than "substantial need" and "undue hardship" for production to be warranted. Upjohn v. U.S., 449 U.S. 383, 401 (1981). Neither the Court in Upjohn nor the Fifth Circuit has addressed the particular standard required for disclosure of attorney's witness notes. Id.

After reviewing the April 15th notes in camera, it is clear that they are not simply a word-for-word transcript of the meeting. The selection of information contained in the notes and certainly the hand-written notes commenting on Waraksa's oral statements constitute mental impressions. The notes are properly classified as non-discoverable work product.

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