Coercive Litigation Tactics - Playing Hardball in The Board of Trustees of the University of Illinois v. Micron Technology Inc.
By Hayes Hunt and Thomas M. O'Rourke
It is not uncommon for the parties to play hardball litigation to exert pressure on the other side to settle a case. But if your opposing party engages in tactics that you perceive to be coercive, should you immediately seek relief from the court? A recent decision illustrates some of the issues to consider before you ask a judge to solve your litigation problems.
In The Board of Trustees of the University of Illinois v. Micron Technology, Inc., a patent infringement suit, the University alleges that Micron sold semiconductors that were made using its patented process. Before the lawsuit, the parties had a collaborative relationship and Micron actively recruited the University’s engineering students to work in its facilities. The lawsuit brought this relationship to an end. An email from Micron’s Academic Program Manager to many of the University’s engineering professors in January 2013 read as follows:
Because Micron remains a defendant in a patent infringement lawsuit that [the University] filed against Micron . . . , effective immediately, Micron will no longer recruit [University] students for open positions at any of Micron’s world-wide facilities.
The University immediately demanded confirmation from Micron that it would not engage in any further communications of this kind. Micron requested a legal basis for the University’s demand, which apparently was never provided, and refused to confirm that it would cease its communications. The University then filed a motion with the court seeking “an injunction that prohibits Micron from sending similarly coercive correspondence to the University.”
By Hayes Hunt and Michael Zabel
2012). You probably read about the legal battle pitched last year between technology giants Google and Oracle. In February 2012, several months before a jury found that Google did not infringe on two of Oracle's patents, the U.S. Court of Appeals for the Federal Circuit ruled that an internal email by a Google engineer was not protected under Upjohn because nothing indicated that the engineer had prepared the email "in anticipation of litigation or to further the provision of legal advice."
The second case is Custom Designs & Manufacturing v. Sherwin-Williams, 39 A.3d 372, 374 (Pa. Super. Ct. 2012). Just as in the Google case, the court in this case rejected a corporation's privilege claim under Upjohn because the record did not indicate that the disputed communication was prepared at the request of counsel. In Custom Designs, the plaintiff was a cabinet company whose building caught fire and was significantly damaged. The day after the fire, a Sherwin-Williams employee visited the site of the fire and shortly thereafter prepared two memoranda addressed to Sherwin-Williams' in-house counsel. The cabinet company later sued Sherwin-Williams, alleging that Sherwin-Williams' products had caused the fire. In discovery, Sherwin-Williams claimed privilege with regard to its employee's two memoranda to its counsel.
In 2010, the Federal Rules of Civil Procedure were amended to address certain problems with prior expert discovery rules which were interpreted to allow discovery of virtually all communications between attorneys and their retained experts. To combat rising discovery costs and ensure that attorneys and experts could speak candidly, the Federal Rules struck a compromise. Rule 26(b)(4)(C) was added to extend work product protection to communications between attorneys and their retained experts, except to the extent the communications: (i) relate to the expert’s “compensation[;]” (ii) identify “facts or data” the expert considered; and (iii) identify “assumptions” that the expert relied upon in forming the opinion at issue. Outside of these exceptions, attorney-expert communications are generally off limits. 
By Hayes Hunt and Jillian Thornton
, nor does the user have a reasonable expectation of privacy in information shared with third parties. “There can be no reasonable expectation of privacy in a tweet sent around the world.” Id. at *3. The court concluded that “[s]o long as the third party is in possession of the materials, the court may issue an order for the materials from the third party when the materials are relevant and evidentiary.” Id. 