In a patent-infringement action, the question arose whether the attorney–client privilege protected documents discussing legal advice of the defendant’s Swedish predecessor. And then a second, threshold question arose: whether Swedish or U.S. law governed the privilege issue.
In a break from other federal courts, the Court for the ND ILL, “as a matter of comity,” applied a “functional approach” and determined that Swedish privilege law governed the discovery dispute. And applying Swedish privilege law, the Court found the documents unprotected. Baxter Int’l, Inc. v. Becton, Dickinson & Co., 2019 WL 6258490 (ND Ill. Nov. 22, 2019). You may read the opinion here.
U.S. or Swedish Law?
Becton Dickinson (BD) acquired Carmel Pharma, a Swedish company, in 2011. In its patent-infringement lawsuit against BD, Baxter International moved to compel documents “that purportedly reflect legal advice provided to Carmel Pharma … or its employees about patent-related issues.”
BD refused, arguing that, under the so-called “touch base” approach, U.S. privilege law applied. And that under In re Queen’s Univ. at Kingston, 820 F.3d 1287, 1295 (Fed. Cir. 2016), the attorney–client privilege covers a company’s communications with a foreign patent agent. For more information on this issue, read my post, Federal Circuit Adopts Patent–Agent Privilege.
The Touch Base Approach
The “touch base” approach is a choice-of-law doctrine. Under this doctrine, courts apply the privilege law of the country with the