An In-House Counsel Learns the Hard Way About a Key Difference Between Common Interest Agreements and Joint Representations: Part II

February 1, 2017

Last week’s Privilege Point described an in-house counsel’s vigorous argument that she had represented her employer/client in a common interest agreement with a hospital in jointly prosecuting patents — rather than having jointly represented both her employer/client and the hospital. DePuy Orthopaedics, Inc. v. Orthopaedic Hospital, Cause No. 3:12-cv-299-JVB-MGG, 2016 U.S. Dist. LEXIS 166537 (N.D. Ind. Dec. 1, 2016).

After reciting facts that could have evidenced either a common interest agreement or a joint representation, the court explained why it agreed with the Hospital that there had been a joint representation: “[T]he evidence does not show that DePuy’s in-house counsel . . . provided any kind of disclaimer about representation when answering the Hospital’s questions with legal information or consequence regarding the patent prosecution.” Id. at *12-13 (emphasis added). The court then gave the punchline. Because DePuy’s in-house counsel had jointly represented DePuy and the Hospital, the former joint client Hospital could discover “DePuy’s internal communications related to the [patent] prosecution.” Id. at *13 (emphasis added). Thus, the Hospital’s understandable desire to discover these internal DePuy communications had led it to “vociferously contend[] that it believed that DePuy’s in-house counsel was acting on its behalf.” Id. at *12.

If common interest participants later become litigation adversaries, privilege protection evaporates for any communications they have shared, but remains for each participant’s internal communications with its own lawyer. In a joint representation, such later adversity normally allows any former joint client to discover all of their joint lawyer’s communications on that matter with any jointly represented clients. In-house and outside counsel should remember this key distinction, and explicitly define any relationship if there might be confusion – including providing socially awkward but legally significant disclaimers of a joint representation.