Case 1:11-cv-00235-RGA Document 220 Filed 04/17/13 Page 1 of 3 PageID #: 8017

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE

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ROBOCAST, INC., Plaintiff, v. APPLE, INC., Defendant. C.A. No. 11-235-RGA

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ORDER This order is in regard to a discovery dispute. The issue is whether Robocast must produce its communications with a Canadian attorney, formerly under its employ, who Robocast asserts was practicing law without a license in the state ofNew York. The Canadian attorney in question is Michael Pozner, who is Robocast's former "Director of Business Development." (D.I. 176, Exh. G). Robocast argues that Mr. Pozner was employed as "General Counsel" and thus his communications are subject to the attorney-client privilege. Apple disagrees, arguing that Mr. Pozner's role with Robocast was in a business rather than legal capacity, and in any event he was not qualified to render legal advice under New York law. The Court agrees with Apple. This is a patent case, so the question of attorney-client privilege is governed by federal common law. Fed. R. Evid. 501. The attorney-client privilege protects the confidentiality of communications between attorney and client made for the purpose of obtaining legal advice. Genentech, Inc. v. US. Int'l Trade Comm'n, 122 F.3d 1409, 1415 (Fed. Cir. 1997). The party that seeks privilege bears the burden of showing its applicability.

International Paper Company v. Fibreboard Corp., 63 F.R.D. 88, 94 (D. Del. 1974). Robocast
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fails to make a showing that Mr. Pozner was an individual authorized to give legal advice. Mr. Pozner may be a member of the bar in Canada, but he has never been a member of the bar in New York, where he was employed by Robocast. New York has a licensing mechanism that allows a foreign attorney to render legal advice as a "legal consultant." N.Y. C.L.S. Ct. of App. 521.1. This would have allowed Mr. Pozner to enjoy "the rights and obligation of a member of the bar of [New York] with respect to ... attorney-client privilege, work-product privilege and similar professional privileges." !d. at 521.1 (b)(2). There is zero indication, however, that Mr. Pozner applied for or received the legal consultant license. Thus, any advice Mr. Pozner offered to Robocast was not legal advice as defined by the New York State Bar. It therefore cannot be assumed to be privileged. In fact, the very argument that Mr. Pozner offered legal advice to Robocast without the New York State Bar's approval necessarily asserts he was guilty of practicing law without a license, which is a criminal misdemeanor in New York. 1 N.Y. JUD. LAW 478,485. Robocast's reliance on Renfield v. E. Remy Martin & Co., 98 F.R.D. 442 (D. Del. 1982) is not persuasive. That case involved a district court's recognition that attorney-client privilege protected the legal work of French attorneys operating in accordance with French laws. !d. at 444. Here, Robocast asks the Court to apply the privilege to purported legal work done by a foreign attorney in the United States who would have been necessarily operating outside the legal bounds of state law. Renfield is thus inapplicable. Robocast also indicates that it should be protected by the attorney-client privilege because of a supposed "reasonable belief' that an

Mr. Pozner's employment title of"Director of Business Development" suggests his actual duties were on the business side. The Court has not conducted an in camera review of the disputed documents to determine the actual character of the work he performed. The Court in no way means to suggest that there is any factual basis to believe he committed a crime.

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attorney-client relationship existed. Although this is a tenable theory, Robocast falls far short of meetings its requirements, which are: (1) Pozner fraudulently held himself out to Robocast as authorized to practice law; (2) Robocast genuinely and reasonable believed that Pozner was so authorized; and (3) pursuant to this belief, Robocast made confidential communications. United States v. Boffa, 513 F. Supp. 517, 523 (D. Del. 1981), rev'd on other grounds by United States v. Boffa, 688 F.2d 919,939 (3d Cir. 1982). Robocast puts forth no evidence showing that Pozner misled Robocast, that it harbored any belief regarding Pozner' s credentials, or provide any explanation as to why its belief in this regard was reasonable. 2 There is no indication that Robocast even did a minimal background check into the status ofPozner's licensure. "It is not unduly burdensome to require a corporation to determine whether their general counsel, or other individuals in their employ, are licensed to perform the functions for which they have been hired." Fin. Technologies Int'l, Inc. v. Smith, 49 Fed. R. Serv. 3d 961 (S.D.N.Y. 2000). Even assuming that Pozner deceived Robocast and Robocast fell for the ruse, the complete absence of any suggestion of due diligence vitiates the purported reasonableness of Robocast' s belief. For these reasons, the Court denies Robocast's request that attorney-client privilege protects Mr. Pozner's communications to Robocast.

Entered this

11 ~ay of April, 2013.

The Court does not view the mere fact that Mr. Pozner was a licensed attorney in Canada as sufficient to instill a reasonable belief in Robocast that he was qualified to offer legal advice in the United States.

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