By Memorandum Order entered by The Honorable Richard G. Andrews in Dasso International, Inc. et al. v. Moso North America, Inc. et al., Civil Action No. 17-01574 –RGA (D.Del. September 6, 2019), the Court found that any claim of privilege asserted by Plaintiffs over emails between Plaintiffs, Plaintiffs’ counsel and individuals at HDT, the exclusive licensee of the Chinese counterpart to Plaintiffs’ U.S. Patent No. 8,709,578 (“the ‘578 Patent”), were waived and did not fall within the “common interest doctrine.” In so ruling, the Court found that, in the litigation, Plaintiffs consistently denied any official corporate relationship with HDT, emphasized that HDT was not a party to the litigation, and failed to show that Plaintiffs and HDT share an identical legal interest. Id. at *1-3. Thus, given the undisputed disclosure of the subject emails to HDT, any claim of privilege over those emails was waived. Id. at *3.

The Court also rejected Plaintiffs claim that HDT was acting as a consulting expert pursuant to Federal Rule of Civil Procedure 26(b)(4)(D). Id. at *3-4. The Court noted that, during the discovery conference, Plaintiffs’ counsel represented that communicating with HDT was the only means he had of getting factual information about Plaintiffs’ product. Id. at *4. The Court determined that such a representation indicates that HDT must be treated as an ordinary witness rather than an expert in the case. Id. Also, Plaintiffs failed to produce any evidence showing that they employed HDT as an expert in the case. Id. Accordingly, the subject emails were found to be subject to discovery. Id.

A copy of the Memorandum Order is attached.

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