Brief for the Respondent in Opposition — Duplan Corp. v. Moulinage et Retorderie de Chavanoz

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SENT

INDEX

Preliminary Statement. ..n.............::::cscsccssssssossssssesssseessesveres

Rule Involved and Decisions Below ....................0:0005

I Mr ocak ou cr scons cuschessaihdsealvacnvchrebrenronesnenns

Statement of the Case ooo....ccccccccccccccccsccesscecseensccsceesseees

I—This case does not justify a departure from

the usual rule against review of interlocutory

OFers ON COTHOTATE 2... eect teeteteeeeees

II—The court of appeals decision is correct, and

not in conflict with any decision of any other

Re pecan sstecens case sa icetuasdgsedovisisocdsCocbcorsnsanehdipriaabnsste

III—The decision below may be supported on an

independent ground 0.....00........c:cccceeeceeseteteeees

LOIN TS STE IAT DS, ROIS PE AAR ODO NENE

CITATIONS

American Construction Co. v. Jacksonville, T. &

K.W.R. Co., 148 U.S. 372 (1893) oo... eee

Clower v. Walters, 51 F.R.D. 288 (S.D. Ala. 1970) ......

Cricker v. United States, 51 F.R.D. 155 (N.D. Miss.

IN cos cad whathiel Asian sadtencuianessaisbeaoashancpiaditassse

Dandridge v. Williams, 397 U.S. 471 (1970) .000000000.....

Duplan Corp. v. Deermg Milliken, Inc., 61 F.R.D. 127

ERR, MI a eres cat dacs rssepesnetavins Conse aah csosenattrinctidasadnsies

Duplan Corp. v. Moulinage et Retorderie de Chavanoz,

487 F.2d 480 (4th Cir. 1973) ooo. cccceccccceseseeeeeees

ee 2 Meas RMS VOI OOS OD he Aes

II

PAGE

Firemen v. Bangor & A. R. Co., 389 U.S. 327 (1967) ... 7

Goldstein v. Cox, 396 U.S. 471 (1970) ooo. 7

Hamilton Shoe Co. v. Wolf Brothers, 240 U.S. 251

(___ RRRDIS ets pena ce ean eenh Cres Ee inode yesh? Gone Ren 7

Harper & Row Publishers, Inc. v. Decker, 423 F.2d

487 (7th Cir. 1970), aff’d by an equally divided

:

4

k

‘a

5

4

4 Court, 400 U.S. 848 (1971) oooccccccccsssssssssssssssssssssessesee 10

3 Hickman v. Taylor, 329 U.S. 495 (1947) oe. 8,9

; Kennedy v. Senyo, 52 F.R.D. 34 (W.D. Pa. 1971) ........ 10

McCullough Tool Co. v. Pan Geo Atlas Corp., 40

b F.R.D. 490 (S.D. Tex. 1966) oo..cccccccccccecccssssereceeee 10

| The Monrosa v. Carbon Black, Inc., 359 U.S. 180

EE er er eee re 13

q Smedley v. Travelers Ins. Co., 53 F.R.D. 591 (D.N.H.

t Eiencealan Paiste ada el An kein teint i I ke OE 10

Swarb v. Lennoz, 405 U.S. 191 (1972) 00000. 13

_ United States v. Brown, 478 F.2d 1038 (7th Cir. 1973) 10

Walling v. General Industries Co., 330 U.S. 545 (1947) 13

Xerox Corp. v. International Business Machines Corp.,

64 F.B.D. 367 (S.D.N.Y. 1974) ou... cecseseseseseseeeees 10

ad Wh le, Be NY isi ices passim

teen mein eo ete RP, “

IN THE

Susreme Court of the United States

October Term, 1974

No. 74-946

Tue Duptan CorporaTIoN, ET AL.,

Petitioners,

Vv.

4

Mov tixace ET ReToRDERIE DE CHAVANOZ,

Respondent.

On Petition for a Writ of Certiorari to the

United States Court of Appeals for the Fourth Circuit

BRIEF FOR RESPONDENT IN OPPOSITION

Preliminary Statement

Petitioners seek review of an interlocutory order deny-

ing them discovery of 21 documents and ordering further

consideration of those documents by the district court.

The principal effect of such review would be substantial

delay in the trial of 37 consolidated patent-antitrust cases,

some of which have been pending for more than six years.

The court of appeals held that the district court had

failed, in ordering production of the 21 documents, to

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2

‘‘protect against disclosure of the mental impressions, con-

clusions, opinions, or legal theories of an attorney or other

representative of a party concerning the litigation’’ as re-

quired by Rule 26(b)(3) of the Federal Rules of Civil

Procedure. In so holding, the court of appeals adopted

an interpretation of this language that is compelled by the

text of the Rule itself, and is consistent with every reported

court of appeals and district court decision since the Rule

was enacted in 1970. The holding of the court of appeals—

that Rule 26(b)(3) confers unqualified immunity from dis-

covery upon the mental impressions, conclusions, opinions,

and legal theories of counsel and others—is not sufficiently

doubtful or disputed to warrant review by this Court.

Even if this Court were disposed to consider whether

the protection afforded by the second sentence of Rule

26(b)(3) is unqualified, this case is not an appropriate

vehicle for such consideration, because the decision below

may be supported on an independent ground.

Rule Involved and Decisions Below

Fed. R. Civ. P. 26(b)(3) is set forth at page 3 of the

petition. The decisions below are annexed to the petition

as an appendix.

Question Presented

Did the court of appeals err in holding that the district

court’s interlocutory order directing discovery of 21 docu-

ments failed to ‘‘protect against disclosure of the mental

impressions, conclusions, opinions, or legal theories’’ of

3

attorneys and other parties’ representatives concerning

litigation, as required, by Fed. R. Civ. P. 26(b)(3), and in

remanding the case to the district court for further con-

sideration as to whether redacted or abstracted versions of

the documents should be produced?

Statement of the Case

Respondent, Moulinage et Retorderie de Chavanoz

(**Chavanoz’’), is the owner of several United States

patents on apparatus and processes for texturing yarns by

the false twist method. Chavanoz has licensed Deering

Milliken Research Corporation (‘‘DMRC’’) to sublicense

the use of the patented inventions in the United States.

Petitioners entered into patent license agreements with

DMRC at various times. Beginning in 1968, petitioners

stopped paying the agreed royalties. DMRC then com-

menced actions for breach of the license agreements and

for patent infringement. Chavanoz was made a party by

petitioners and has subsequently joined DMRC as a plain-

tiff. In answers and counterclaims, and in independent

actions of their own, petitioners allege that DMRC, Chava-

noz, and others have violated the antitrust laws, and that

the patents in suit have been misused, are invalid, and are

not infringed. In all, 37 actions involving Chavanoz were

brought in four district courts: those originating else-

where were transferred to the United States District Court

for the District of South Carolina pursuant to 28 U.S.C.

§1404, where the actions were consolidated."

1. The first complaint was filed on August 8, 1968, and the most

recent on March 29, 1971.

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4

Extensive—indeed, seemingly endless—discovery and

other pretrial proceedings have taken place. There have

been 122 days of depositions, involving 78 witnesses, dur-

ing which more than 2,000 pretrial exhibits were marked;

over 1,000,000 documents have been produced; 16 sets of

interrogatories and requests for admissions containing

more than 350 separate questions or propositions have been

served and responded to.

This petition arises from petitioners’ attempt to obtain

21 more documents—all of which, it is undisputed, were

prepared in anticipation of litigation or for trial and con-

tain mental impressions, conclusions, opinions, or legal

theories of attorneys or other representatives of Chavanoz.*

The documents in dispute, which include legal memoran-

dums, drafts of briefs, and the like were prepared for

Chavanoz in connection with prior patent litigations in the

United States and Europe.

The discovery dispute which petitioners seek to bring to

this Court has a complex history of its own, beginning al-

most two years ago.

In an order filed May 9, 1973, the district court granted

petitioners discovery of certain trial preparation materials,

without regard to need or hardship; the district court held

that the protection afforded by Fed. R. Civ. P. 26(b) (3)

disappears when the litigation for which the materials were

prepared is ended. Duplan Corp. v. Deering Milliken, Inc.,

61 F.R.D. 127 (D.S.C. 1973). On interlocutory appeal, this

ruling by the district court was reversed by the Court of

2. The order below skowid control the district court’s rulings on

additional work product documents that are now under consideration.

5

Appeals for the Fourth Circuit, which remanded the matter

to the district court for further consideration of whether

petitioners had made the showing of substantial need and

undue hardship specified in Rule 26(h) (3). Duplan Corp.

y. Moulinage et Retorderie de Chavanoz, 487 F.2d 480 (4th

Cir. 1973).

Petitioners sought and obtained an extension of 60 days

within which to file a petition for certiorari seeking to

review the court of appeals’ 1973 decision. See No. A-684,

Jan. 17, 1974. However, they never filed the petition.

On remand, the district court ordered production of

some of the documents, and denied discovery of others in

decisions dated December 21, 1973 and February 5, 1974."

However, in ordering production of some of these trial

preparation materials the district court did not—and did

not purport to—‘‘protect against disclosure of the mental

impressions, conclusions, opinions, or legal theories of an

attorney or other representative of a party concerning

the litigation.’? The district court held that the Rule’s

protection of mental impressions, conclusions, opinions, and

legal theories (‘‘opinion work product,’’ for short) does not

apply to materials prepared for prior litigations, and that

discovery of such matter is available in a subsequent action

upon the same showing that will permit discovery of

ordinary work product that does not contain opinion.

On a second interlocutory appeal, this ruling was re-

versed by the court of appeals in the order of which peti-

3. Neither decision has been reported. A portion of the February

5. 1974 decision, which includes the district court’s rationale with

respect to the issue now in dispute, is reproduced in the Petition for

Certiorari, at A14-A66.

6

tioners now seek review. Petition for Certiorari, at A1-

Al2. The court of appeals held that the immunity

accorded to opinion work product by Rule 26(b)(3) is

unqualified, and does not end as soon as the litigation for

which the materials are prepared is over. The court of

appeals again remanded the matter to the district court,

directing it to produce discoverable material, if any, to the

petitioners, but to protect against disclosure of mental im-

pressions, conclusions, opinions, and legal theories. Re-

dacting and abstracting the documents were suggested as

possibilities. Thus, the court of appeals’ order is not only

non-final in the sense that it did not terminate the litigation ;

it did not even finally decide the discovery dispute.

Argument

Certiorari should be denied. Petitioners seek review

of an interlocutory order which is clearly correct and is

not in conflict with the decisions of this or any other court.

There can be little doubt that opinion work product is im-

mune from discovery under Rule 26(b)(3); but in any

event, this is not the right case for this Court to consider

this issue. The court of appeals decision can be sustained

on the alternative ground that no circumstances here exist

that even arguably justify discovery of opinion work

product.

1.6 DP PRET Kas Sc eo A OI i ON ae et no MOR Dig E BEND Re TED it PEE

This case does not justify a departure from the

usual rule against review of interlocutory orders on

This Court does not grant certiorari to review inter-

locutory orders, absent extraordinary circumstances. Fire-

men v. Bangor & A. R. Co., 389 U.S. 327, 328 (1967) :

‘Petitioners seek certiorari to review the adverse

rulings made by the Court of Appeals. However, be-

cause the Court of Appeals remanded the case, it is

not yet ripe for review by this Court. The petition

for a writ of certiorari is denied. See Hamilton Shoe

Co. v. Wolf Brothers, 240 U.S. 251, 257-258 (1916).’’

See Goldstein v. Cox, 369 U.S. 471, 487 (1970); American

Construction Co. v. Jacksonville, T. d K.W.R. Co., 148 US.

372, 384 (1893).

No extraordinary circumstances exist here. On the

contrary, the already long delay in reaching trial, and the

absence of a final ruling even on the discovery of materials

contained in the 21 documents in issue, weigh heavily

against granting this petition. To grant certiorari would

impede progress of the litigation for many months, in order

to consider a ruling whose impact on this litigation is still

unresolved: that impact depends on what the district court

does in response to the court of appeals’ direction that it

consider partial production, or the making of abstracts, of

some of the documents, so that discoverable material, if any,

will be produced to the petitioners.‘

4. In addition to the 21 documents remanded to it for further

consideration by the court of appeals, the district court still has before

it a number of documents for which claims of privilege have been made

and upon which it has not yet ruled.

Seoie

Prdaranieancae PAST

The court of appeals decision is correct, and not in

conflict with any decision of any other court.

Fed. B. Civ. P. 26(b) (3), promulgated in 1970, dis-

tinguishes between trial preparation materials that consist

of opinion work product and those that do not. In the

first sentence of the Rule, materials that do not contain

opinion work product—for example, reports of witness in-

terviews made in anticipation of litigation—are given qual-

ified immunity, but wili be discoverable

‘*upon a showing that the party seeking discovery has

substantial need of the materials in the preparation

of his case and that he is unable without undue hard-

ship to obtain the substantial equivalent of the ma-

terials by other means.’’

In the second sentence, opinion work product is given

unqualified immunity. Such work product is not discov-

erable even where substantial need and undue hardship

have been shown:

‘‘In ordering discovery of such materials when the

required showing has been made, the court shall pro-

tect against disclosure of the mental impressions, con-

clusions, opinions, or legal theories of an attorney or

other representative of a party concerning the litiga-

tion.’’ (Emphasis added.)

A like distinction between opinion work product and

other kinds of work product (e.g., statements made by wit-

nesses) is found in Hickman v. Taylor, 329 U.S. 495 (1947).

9

In Hickman, with respect to non-opinion work product, the

Court wrote: .

‘‘We do not mean to say that all written materials

obtained or prepared by an adversary’s counsel with

an eye toward litigation are necessarily free from dis-

covery in all cases. Where relevant and non-privileged

facts : main hidden in an attorney’s file and where

production of those facts is essential to the preparation

of one’s .case,. discovery may’ properly be had.’’ 329

U.S., at 511 (emphasis added).

On the other hand, the Court said that if the discovery rules

were read to permit access to opinion work product,

“An attorney’s thoughts, heretofore inviolate, would

not be his own. Inefficiency, unfairness and sharp

practices would inevitably develop in the giving of

legal advice and in the preparation of cases for trial.

The effect on the legal profession would be demoraliz-

ing. And the interests of the clients and the cause of

justice would be poorly served.’’ 329 U.S., at 511

(emphasis added).

It is clear from Hickman, and still clearer from Rule

26(b)(3), that opinion work product must remain ‘‘in-

violate.’

In this case, the court of apepals, in a well reasoned

opinion, did no more than to apply the distinction made in

Hickwix and in Rule 26(b)(3). Specifically, the court of

appeals held that under Rule 26(b)(3), ‘‘no showing of

relevance, substantial need or undue hardship should just-

ify compelled disclosure of an attorney’s mental impres-

sions, conclusions, opinions or legal theories. This is made

clear by the Rule’s use of the term ‘shall’ as opposed to

‘may.’ ’’ Petition for Certiorari, at A6. |

10

As the court of appeals noted (Petition for Certiorari,

at A8-A9), no case decided under Rule 26(b)(3) has

‘reached a contrary conclusion. In ‘accord with the court of

appeals’ decision are Smedley v. Travelers Ins. Co., 53

F.R.D. 591, 593 (D.N.H. 1971) ; Kennedy v. Senyo, 52 F.R.D.

34, 37 (W.D. Pa. 1971) ; Clower v. Walters, 51 F.R.D. 288,

289 (S.D. Ala. 1970); Crocker v. United States, 51 F.R.D.

155, 156 (N.D. Miss. 1970). The court of appéals cited (Pe-

tition for Certiorari, at A8-A9) a number of pre-1970 cases

which seemed to take a contrary view, but pointed out that

most of the cases are distinguishable, and all are of doubt-

ful authority, since they antedated Rule 26(b)(3). Indeed,

a reading of the pre-1970 cases shows that only one, Mc-

Cullough Tool Co. v. Pan Geo Atlas Corp., 40 F.R.D. 490

(S.D. Tex. 1966), permitted discovery by an adversary of

mental impressions concerning litigation.

The post-Rule 26(b)(3) cases relied on by petitioners

are inapposite. United States v. Brown, 478 F. 2d 1035

(7th Cir. 1973), cited in the petition (at 13-14) for the

proposition that there is a conflict in circuits, dealt with

memorandums prepared to discuss the tax consequences of

a contemplated business transaction. 478 F. 2d, at 1039.

Since the memorandums were not prepared in anticipation

of litigation or for trial, Rule 26(b)(3) was inapplicable to

them. Harper & Row Publishers, Inc. v. Decker, 423 F.

2d 487 (7th Cir. 1970), aff’d by an equally divided Court,

400 U.S. 348 (1971), and Xerox Corp. v. International Bus-

iness Machines Corp., 64 F.R.D. 367 (S.D.N.Y. 1974), dealt

with memorandums of witness interviews, the type of or-

dinary, non-opinion work product that is discoverable un-

der Rule 26(b)(3) upon the required showing of substan-

ae oo eaten.

1l

tial need and undue hardship. 423 F. 2d, at 492; 64 F.R.D.,

at 375.

For the reasons stated in the court of appeals decision,

opinion work product is immune from discovery under

Rule 26(b)(3), and the cases uniformly so hold. This

proposition is not sufficiently doubtful or disputed to war-

rant review by this Court.

The decision below may be supported on an inde-

pendent ground.

The decision below is supported by an independent

ground, not reached by the court of appeals, that precludes

this Court from considering the issues posed by petitioners.

This ground is that the second sentence of Rule 26(b) (3)

expressly affords protection to opinion work product that

is not afforded +o non-opinion work product; and neither

court below found or had a basis for finding any facts that

would enable petitioners to overcome that protection.

The district court did not find that petitioners had

made any showing beyond the ‘‘substantial need’’ and

‘‘yndue hardship’’ that would permit discovery of non-

opinion work product—transcripts of interviews with wit-

nesses, for example. The district court thouzht that no

greater showing was required for discovery of the draft

briefs and other opinion work product at issue here be-

cause, in the district court’s view, the distinction between

opinion and non-opinion work product was erased by the

termination of the prior litigations for which the documents

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12

in dispute were prepared. In other words, the district court

held that opinion work product is relegated to the status

of non-opinion work product when a litigation ends. This

holding ignores the difference between the first and second

sentences of Rule 26(b)(3); it appears to be without sup-

port in the authorities; it was rejected by the court of

appeals; and petitioners do not attempt to defend it here.®

Assuming, arguendo, that the second senicnee of Rule

26(b) (3) does not mean what it says, and allows production

of opinion work product upon a certain showing, such a

showing must require more than what is necessary for the

production of non-opinion work product under the first sen-

tence of the Rule. Neither court below found that such a

showing had been made; the petitioners do not claim to

have made such a showing; and none can be found in the

record.®

5. Petitioners have previously chosen not to argue in this Court

that all work product immunity ends with the end of the litigation for

which documents were prepared. This issue was resolved by the

court of appeals in its prior decision (Petition for Certiorari, at A67-

A75), from which petitioners did not seek certiorari.

Moreover, petitioners were clearly correct in concluding that the

issue raised in the prior appeal was unworthy of a petiiiuii for cer-

tiorari. The rationale underlying the work product doctrine is that

no attorney or other representative of a party can perform his function

in the adversary system if he fears that everything he puts in writing

may be disclosed to present or future opponents. As the court of

appeals held on the prior appeal, “the rationale is scarcely less ap-

plicable to a case which has been closed than to one which is still being

contested.” Petition for Certiorari, at A72.

6. In place of the required showing, petitioners advance the theory

that the opinion work product at issue here consists of “operative

facts.” This theory ignores the distinction between the two sentences

of Rule 26(b) (3) and would, as the court of appeals pointed out, re-

quire discovery of opinion work product merely upon a claim that

opinions are relevant.

eb Ray 6a we Oe MII Aa a ABs AM CO BIN An. ota hs

9

ot

Therefore, affirmance of the order below would be re-

quired whether or not this Court agrees with the court of

appeals’ view of the law. E.g., Dandridge v. Williams, 397

U.S. 471, 475-476 & n.6 (1970); Walling v. General Indus-

tries Co., 330 U.S. 545, 547 & n.5 (1947) ; Swarb v. Lennoz,

405 U.S. 191, 202 (1972) (Wurre, J., concurring). The

existence of an independent ground for affirmance requires

denial of the petition for certiorari. Cf. The Monrosa v.

Carbon Blaci:, Inc., 359 U.S. 180, 183-184 (1959).

Conclusion

For the reasons stated, the petition for a writ of cer-

tiorari should be denied.

Respectfully submitted.

Jay GREENFIELD,

Counsel for Respondent.

Rosert 8. Samira,

Steven FIne.,

Of Cownsel.

March 5, 1975