Spalding Sports Worldwide, Inc. sued Wilson Sporting Goods Company for infringement of U.S. Patent 5,310,178 pertaining to its basketball with a polyurethane cover. During discovery, Wilson asked Spalding to produce its invention record. Invention records are standard forms used by corporations as a means for inventors to disclose to the corporation’s patent attorneys that an invention has been made and to initiate patent action. They usually contain such information as the names of the inventors, descriptions and scope of the invention, closest prior art, first date of conception, and disclosure to others and dates of publications. Spalding refused to produce its invention record, asserting that the record was protected by the attorney–client privilege because it was prepared for the purpose of securing legal advice concerning the patentability of the invention and served as an aid in completing the patent application. Wilson argues that even if the invention record was submitted to Spalding’s patent committee, there was no evidence that the committee “acted as a lawyer” by rendering legal advice, as opposed to making business decisions. Wilson also contends that even if a portion of the invention record was submitted for the purpose of obtaining legal advice, the portion that contains technical information and does not ask for legal advice is not protected by the attorney–client privilege and should be produced.
a. Should Spalding be forced to produce the invention record or part of it? Explain your reasoning. Would your answer be different if the invention record was the only record that contained the technical information at issue in the case?
b. Wilson also argues that Spalding committed “fraud on the patent office” by making a material misrepresentation to the office and that as a result, the attorney–client privilege was abrogated by the crime-fraud exception. Under the crime-fraud exception, the attorney–client privilege will be waived if the party made a communication “in furtherance of” a crime or fraud. Wilson has alleged that Spalding made a material misrepresentation but has submitted no evidence in support of this claim. Should the court find that the crime-fraud exception applies here and that Spalding has waived the attorney–client privilege? If not, what evidence would Wilson have to present to substantiate its claim that the crime-fraud exception applies in this case?