KANEKA CORPORATION v. COCRYSTAL TECHNOLOGY JIAXING CO LTD SHANGHAI COCRYSTAL PHARMACEUTICAL TECHNOLOGY CO LTD COCRYSTAL HEALTH INDUSTRY ZHEJIANG CO LTD (2025)

MEMORANDUM & ORDER

Defendants Cocrystal Technology (Jiaxing) Co., Ltd. and Cocrystal Health Industry (Zhejiang) Co., Ltd. (collectively, “Cocrystal”), move the Court for an order finding that Plaintiff Kaneka Corporation (“Kaneka”) waived confidentiality and its right to claw back inadvertently produced documents containing attorney-client communications. The Court held a hearing on the motion on August 22, 2025. (Minute Entry dated Aug. 25, 2025). For the reasons described below, the Court finds Kaneka did not waive privilege nor its right to claw back the documents and denies Cocrystal's motion.

BACKGROUND

Kaneka, a Japanese chemical manufacturing company, brought this action alleging that Cocrystal, a Chinese chemical technology syndicate, infringed on Kaneka's patent titled “Stabilization Method of Reduced Coenzyme Q10,” U.S. patent number 7,829,080 (the “ ‘080 Patent”). (See Amended Complaint (“Compl.”), Dkt. No. 5 ¶¶ 1–6). The ‘080 Patent, issued to Kaneka by the U.S. Patent and Trademark Office (“U.S.P.T.O.”) in November 2010, describes a method to produce coenzyme Q10, an antioxidant that promotes cell growth and maintenance. (See Compl. ¶ 10). The production method defined under the ‘080 Patent yields a form of coenzyme Q10 that does not oxidize and thus is better suited for Kaneka and Cocrystal's nutritional and pharmaceutical products. (See Compl. ¶¶ 12, 14). This action commenced in October 2023, and the parties began exchanging discovery in spring of 2024.

1. The Protective Order

On April 24, 2024, the parties submitted for the Court's approval a Proposed Stipulated Protective Order to govern discovery throughout the litigation. (Minute Entry dated Apr. 24, 2024). The Protective Order designates certain types of information disclosed during discovery as Protected Material and sets out the terms whereby that material shall be produced “to adequately protect information the Parties are entitled to keep confidential.” (Proposed Stipulated Protective Order (the “Protective Order”), Dkt. No. 26, 2).

Privileged information is not included in the definition of Protected Material, and the parties explicitly agree that “in this lawsuit, they do not intend to disclose privileged information.” (Id. 21). Still, as is typical in civil litigation, the Protective Order establishes a framework to govern circumstances in which a party may inadvertently produce privileged information. Section 12, titled “Inadvertent Production of Privileged or Otherwise Protected Materials,” reads:

“Pursuant to Federal Rule of Evidence 502(d) and 28 U.S. Code § 1738, any disclosure of privileged information (‘Disclosed Privileged Information’) shall not constitute in this or any other action a waiver or forfeiture of any privilege otherwise attaching to the Disclosed Privileged Information and its subject matter.

Nothing in this Order overrides any attorney's ethical responsibilities to refrain from examining or disclosing materials that the attorney knows or reasonably should know to be privileged and to inform the Disclosing Party that such materials have been produced.

Any party receiving materials that reasonably appear to be privileged information shall not copy, distribute, or otherwise use such materials in any manner and shall provide prompt notice to the Producing Party to afford an opportunity to request return of the materials.

․

Within five (5) business days of receiving such a request, a Receiving Party shall return to the Producing Party, or certify the destruction of, all Disclosure or Discovery Material identified by the Producing Party as being protected by a privilege and/or immunity and inadvertently produced. A Receiving Party shall not utilize or disseminate the information contained in the inadvertently produced Disclosure or Discovery Material for any purpose, except for contesting the claimed privilege or immunity.”

(Protective Order 21–22 (the “Clawback Provision”)). The Court adopted the parties’ proposed agreement on April 26, 2024. (Dkt. No. 28).

2. The February 13, 2025 Production of Privileged Documents

On February 13, 2025, Kaneka made a production of 150 documents consisting of approximately 300 total pages, which Kaneka intended to be the public file regarding the ‘080 Patent. (See Plaintiff's Opposition, Dkt. No. 59 (“Pltf.’s Opp.”), 3; Aug. 22 Hearing Transcript (“Hrg. Tr.”), Dkt. No. 72, 5:16–6:12). That production included around 32 documents made up of communications between Kaneka and its counsel regarding prosecution of the ‘080 Patent. (See Defendant's Motion, (“Def.’s Mot.”), Dkt. No. 57, 1; Hrg. Tr. 8:24–9:12). The documents were on law firm letterhead. (See Def.’s Mot. Exs. 1–2). None of these documents were included on Kaneka's privilege log, which Kaneka had shared with Cocrystal in January 2025. (See Def.’s Mot. Ex. 10). The parties agree that these documents contain information protected by the attorney-client privilege. (See Hrg. Tr. 7:16–8:25).

3. Cocrystal References the Bates Numbering of the Disputed Documents

On March 12, 2025, Cocrystal served Kaneka with supplemental Invalidity Contentions ¹ (See Def.’s Mot. Ex. 5). That supplemental disclosure was “basically verbatim” to Cocrystal's original submission with a few additions. (Hrg. Tr. 9:23–10:6). Two of those additions cited to the Bates numbers assigned to the two of the privileged documents from Kaneka's February 13, 2025 production (the “Disputed Documents”). (See Def.’s Mot. Ex. 5, 22, 25–26). A few days later, the parties met and conferred to address what Kaneka viewed as “new theories” in Cocrystal's supplemental Invalidity Contentions, which Kaneka threatened to move to strike. (Def. Mot. 3; Hrg. Tr. 11:22–12:12). The Disputed Documents were not specifically addressed during the discussion, and neither side mentioned the attorney-client protected information in the Disputed Documents. (See Hrg. Tr. 12:1–15).

4. Cocrystal Introduces the Documents at the Ueda Deposition

On April 18, 2025, 25 days later, Cocrystal deposed Takahiro Ueda, Kaneka's corporate representative for prosecution of the ‘080 Patent. (See Def.’s Mot. Ex. 6, Ueda Deposition Transcript (“Ueda Tr.”), Dkt. No. 57-6). The deposition was one of several that took place over a one-week period in Guam.² During that deposition, Cocrystal introduced one of the Disputed Documents as Exhibit 16. (Ueda Tr. 135:24–136:3). After Exhibit 16 was introduced, Kaneka's counsel said:

“MR. TRIVIGNO [Kaneka's Counsel]: I'm going to just note for the record this appears to be—it may be privileged, and so to the extent it is, I'm going to reserve our rights to claw it back and any questions you may ask about it. You can ask them now since you have the document, but I just wanted to make a note on the record.

MR. HNATH [Cocrystal's Counsel]: I don't see how it could be, given the positions you've taken in terms of these documents, but you can reserve your rights however you want.”

(Id. 135:15–24). Cocrystal's counsel then asked Mr. Ueda what Exhibit 16 was, if one page was a fax, who it was from, and when it was dated. (Id. 136:25–138:6). Kaneka's counsel “reiterate[d] [his] objections to these questions.” (Id. 137:10–11). Cocrystal's counsel then said, “I have many more questions, but we're short of time so I'm going to move on to the next exhibit” and introduced another document as Exhibit 17. (Id. 138:7–13). Kaneka's counsel made no objections nor reserved any rights regarding Exhibit 17, which was not a Disputed Document. (Id.) Kaneka's counsel did not object. (Id. 138:15–139:11). Then, Cocrystal's counsel introduced the second Disputed Document as Exhibit 18, which Mr. Ueda identified as an office action from the U.S.P.T.O. (Id. 139:15–17). Kaneka's counsel then “ma[de] the same objection to this as [he] did to Exhibit 16.” (Id. 139:18–19). Cocrystal's counsel asked no more questions about Exhibit 18 and returned to questioning about Exhibit 17. (Id. 139:24–140:23).

5. Kaneka's Clawback Attempt & the Privilege Dispute

On June 2, 2025, 45 days after the Ueda deposition, Cocrystal served Kaneka with their expert report regarding the invalidity of Patent ‘080. (See Expert Report of Douglas Cameron, Ph. D. (the “Cameron Report”), Def.’s Mot. Ex. 7). The Cameron Report thoroughly presented Cocrystal's invalidity arguments, relying heavily on the Disputed Documents to do so. (See generally id.). On June 5, 2025, three days later, Kaneka sent an email to Cocrystal asserting attorney-client privilege over the Disputed Documents, claiming they were inadvertently produced, and invoking the right to claw them back under the Clawback Provision. (See Def.’s Mot. 1). Cocrystal disagreed.

DISCUSSION

“The attorney-client privilege protects confidential communications between client and counsel made for the purpose of obtaining or providing legal assistance.” In re Cnty. of Erie, 473 F.3d 413, 418 (2d Cir. 2007). The privilege “exists for the purpose of encouraging full and truthful communications between an attorney and his client and ‘recognizes that sound legal advice or advocacy serves public ends and that such advice or advocacy depends upon the lawyer's being fully informed by the client.’ ” In re von Bulow, 828 F.2d 94, 100 (2d Cir. 1987) (quoting Upjohn Co. v. United States, 449 U.S. 383, 389 (1981)). “The privilege belongs solely to the client and may only be waived by him.” In re von Bulow, 828 F.2d at 100.

If a party fails to maintain the confidential nature of attorney-client communications, the privilege may be waived. See id. at 100–01. The party invoking the attorney-client privilege bears the burden of establishing it has not been waived. See, e.g., Wultz v. Bank of China Ltd., 304 F.R.D. 384, 391 (S.D.N.Y. 2015). A party satisfies this burden when it “demonstrate[s] that there was (1) a communication between client and counsel, which was (2) intended to be and was in fact kept confidential, and (3) made for the purpose of obtaining or providing legal advice.” United States v. Constr. Prods. Rsch., Inc., 73 F.3d 464, 473 (2d Cir. 1996).

Here, the parties agree that the contents of the Disputed Documents contain privileged attorney-client communications. (See Hrg. Tr. 7:16–8:25). Cocrystal argues that Kaneka's production of these documents was intended to waive confidentiality or, if not, was so reckless as to waive confidentiality. (See Def.’s Mot 1). Cocrystal also argues that, even if the production was inadvertent, Kaneka failed to timely assert its rights under the Clawback Provision, waiving them. (See id. 3–4; Defendant's Reply (“Def.’s Rply.”), Dkt. No. 62, 2–3). Kaneka responds that its production of the documents was inadvertent, and, thus, the Clawback Provision protects the confidentiality of the documents. (See Pltf.’s Opp 1–3). Kaneka notes that it immediately asserted its rights under the Clawback Provision at the Ueda deposition, as soon as it discovered the Disputed Documents had been produced. (See id. 2)

The Court addresses each question separately—first, whether Kaneka's production of the Disputed Documents was inadvertent and, second, whether Kaneka waived its rights under the Clawback Provision.

1. Kaneka's Production of the Disputed Documents was Inadvertent

Kaneka asserts it inadvertently produced the Disputed Documents because it thought it was producing the public file histories of the ‘080 Patent’s foreign counterparts, which did not contain privileged materials. (See Pltf.’s Opp. 3; Hrg. Tr. 6:24–7:6). As detailed below, the circumstances support Kaneka's contention of inadvertent production.

“As a general rule, the voluntary production of a privileged document waives any claim of privilege with respect to that document.” United States v. Rigas, 281 F. Supp. 2d 733, 737 (S.D.N.Y. 2003); see also Schaeffler v. United States, 806 F.3d 34, 40 (2d Cir. 2015) (“the privilege is generally waived by voluntary disclosure of the communication to another party”). When disclosure is involuntary or inadvertent, an appropriately worded protective order with a clawback agreement may prevent waiver due to disclosure. See, e.g., In re Actos Antitrust Litig., 685 F. Supp. 3d 153, 156 (S.D.N.Y. 2023); cf. Fed. R. Evid. 502(b). But even “[w]here parties enter into a protective order providing that inadvertent production of otherwise privileged materials shall not constitute a waiver of privilege, courts may still find waiver if a party is ‘completely reckless’ in producing the privileged material.” GMO Gamecenter USA, Inc. v. Whinstone US, Corp., No. 22-cv-5974, 2025 WL 2267751, at *2 (S.D.N.Y. Aug. 8, 2025).

“For a production to be considered ‘completely reckless,’ the producing party must have shown no regard for preserving the confidentiality of the privileged documents.” Prescient Partners, L.P. v. Fieldcrest Cannon, Inc., No. 96-cv-7590, 1997 WL 736726, at *4 (S.D.N.Y. Nov. 26, 1997); see also U.S. Comm. Futures Trading Comm'n v. Parnon Energy, No. 11-cv-3543, 2014 WL 2116147, at *4 (S.D.N.Y. May 14, 2014) (finding recklessness when party “handed over hundreds of thousands of documents without first scanning them for privileged information”). In making this evaluation, courts look to factors such as the reasonableness of the precautions taken by the producing party; the volume of discovery versus the extent of the specific disclosure; the length of time taken by the producing party to rectify the disclosure; and overarching fairness concerns. See, e.g., Atronic Int'l, GmbH v. SAI Semispecialists of Am., Inc., 232 F.R.D. 160, 163 (E.D.N.Y. Mar. 14, 2005). Waiver is more likely when the extent of the privileged material inadvertently produced is significant in relation to the total number of documents produced. See, e.g., United States v. Wells Fargo Bank, N.A., No. 12-cv-7527, 2015 WL 5051679, at *3 (S.D.N.Y. Aug. 26, 2015) (no waiver when 1,000 inadvertently produced documents made up less than one-tenth of one percent of the party's total production volume); HSH Nordbank AG New York Branch v. Swerdlow, 259 F.R.D. 64, 75 (S.D.N.Y. 2009) (no waiver when inadvertently disclosed documents “represent[ed] less than one-hundredth of one percent of those reviewed”); Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 104 F.R.D. 103, 105 (S.D.N.Y. 1985) (no waiver when party had produced twenty-two privileged documents in total production of over 16,000 documents).

Here, the circumstances and size of Kaneka's production support a finding that the production was inadvertent. Kaneka has produced over 22,600 total documents in this litigation consisting of 151,000 pages. (Pltf.’s Opp. 2). Two-thirds of those documents—approximately 17,000—were produced in February 2025. (Id. at 3; Hrg. Tr. 6:6–7). Rolling productions were occurring “on a daily basis throughout February and March.” (Hrg. Tr. 6:3–5). Whether or not the extent of privileged material includes only the Disputed Documents or the other thirty-odd documents included in the February 13, 2025 production, those numbers are relatively small in comparison to Kaneka's entire production universe. Even if one focuses only on the size of the 300-page production in which the Disputed Documents were produced, the dozen privileged pages among 300 pages of documents is an error that might occur in any modern civil litigation. See, e.g., GMO Gamecenter USA, Inc. v. Whinstone US, Corp., No. 22-cv-5974, 2025 WL 2267751 at *2 (S.D.N.Y. Aug. 8, 2025) (“A production involving ‘a large number of documents,’ alone, is insufficient to show the producing party was completely reckless, since in document production, ‘errors—even those involving multiple documents—are inevitable.’ ”) (quoting Parnon Energy, 2014 WL 2116147, at *4); Dorce v. City of New York, No. 19-cv-2216, 2024 WL 139546, at *8 (S.D.N.Y. Jan. 12, 2024) (“The fact that the [defendants’] privilege review failed to catch a dozen or so copies of [a privileged document] in a voluminous, rolling document production was at most a negligent oversight, and does not reflect the complete recklessness required for a finding of waiver.”); United States v. Gangi, 1 F. Supp. 2d 256, 264 (S.D.N.Y. 1998) (recognizing “mistakes will be made given ‘the realities of the discovery process in complex litigation’ ”) (quoting Asian Vegetable Rsch. & Dev. Ctr. v. Inst. of Int'l Educ., No. 94-cv-6551, 1995 WL 491491, at *7 (S.D.N.Y. Aug. 17, 1995)).

Cocrystal points to the Disputed Documents’ absence from Kaneka's privilege log as evidence that Kaneka “set forth no claim at all as to privilege over the category of prosecution history communications generally.” (Def.’s Rply. 3; see also Hrg. Tr. 6:13–7:15, 15:15–16:8). But Kaneka's failure to identify these documents on their privilege log or discuss them in a meet-and-confer supports Kaneka's contention that it was not aware of the Disputed Documents’ production until the Udea deposition. (See Pltf.’s Opp. 2–3). Indeed, these are the exact “slip-up[s]” and “technical error[s]” that occur in every classic inadvertent production scenario. Parnon Energy, 2014 WL 2116147, at *5.

Cocrystal also points to testimony from a separate litigation to which Kaneka is a party, arguing the testimony suggests that Kaneka also produced the Disputed Documents in that litigation. (See Def.’s Mot. 1; Hrg. Tr. 4:6–25). Specifically, Cocrystal notes that Kaneka's witness testified that he reviewed “correspondence between Kaneka's IP patent office department and foreign patent law firm” in preparing for his deposition. (Hrg. Tr. 45:21–46:3). However, Kaneka argues that Cocrystal misreads that testimony. Kaneka represents that it only produced public documents, not the Disputed Documents, in the other litigation. (See Hrg. Tr. 31:9–25). Keneka also points out that its production in this case includes an exact copy of “all the documents produced in the [other] case as they were produced” in that litigation, and the Disputed Documents were not among them. (Hrg. Tr. 31:9–20). The Court therefore credits Kaneka's representation that it did not produce the Disputed Documents in the separate litigation, which further supports a finding that Kaneka only produced the Disputed Documents in this case by mistake. (See Hrg. Tr. 31:21–32:16).

Another factor impacting the reasonableness of the inadvertent production is Kaneka's timing in correcting the error. Kaneka argues it promptly addressed the matter by claiming privilege when it learned of the inadvertent production during the Ueda deposition. (See Pltf.’s Opp. 2). Cocrystal argues that it took 85 days for Kaneka to rectify the inadvertent production because they should have discovered their mistake earlier, at the very latest when Cocrystal cited the Disputed Documents in its supplemental Invalidity Contentions. (See Def.’s Rply. 3).

Based on the record, the Court finds that Kaneka was unaware of its inadvertent production until the Ueda deposition and immediately noted the mistake. The Disputed Documents are only briefly cited on two pages of Cocrystal's supplemental Invalidity Contentions. (See Def.’s Mot. Ex. 5, 22, 25–26). On their face, there is no indication the cited documents might include privileged attorney-client communications. Rather, the references could readily be understood to indicate the public patent file that Kaneka believed it produced.

Although Kaneka could and arguably should have been more diligent in their production, the facts do not support a finding that it was completely reckless. Therefore, after conducting the reasonable analysis, the Court finds that production of the Disputed Documents was inadvertent.

2. Kaneka's Conduct After Discovery of its Inadvertent Production Did not Waive Privilege

Having determined that production of these materials was inadvertent, the Court now addresses whether Kaneka sufficiently invoked its rights under the Clawback Provision after it discovered the inadvertent production of the Disputed Documents.

“[W]hile an appropriately worded protective order may prevent waiver due to a producing party's disclosure of privileged information, that party's subsequent failure to timely and specifically object to the use of that information—during a deposition, for example—can waive any applicable privilege.” Certain Underwriters at Lloyd's, London v. Nat'l R.R. Passenger Corp., 218 F. Supp. 3d 197, 201 (E.D.N.Y. 2016); see also United States v. Wells Fargo Bank, N.A., No. 12-cv-7527, 2015 WL 5051679, at *4 (S.D.N.Y. Aug. 26, 2015) (acknowledging non-waiver provision of protective order “provide[d] that disclosure [did] not waive any applicable privileges” but concluding the provision “sa[id] nothing about whether the failure to object to use of a document[ ] constitute[d] waiver.”) “Inordinate delay in claiming the privilege can prejudice the adversary and may be deemed a waiver.” Bank Brussels Lambert v. Credit Lyonnais (Suisse) S.A., 160 F.R.D. 437, 445 (S.D.N.Y. 1995). The delay is measured from the time the producing party learns of the disclosure, not the time of the disclosure itself. United States Fid. & Guar. Co. v. Braspetro Oil Servs. Co., No. 97-cv-6124 2000 WL 744369, at *6 (S.D.N.Y. June 8, 2000).

The relevant analysis begins when Kaneka became aware it had inadvertently disclosed privileged material. See, e.g., Aramony v. United Way of Am., 969 F. Supp. 226, 237 (S.D.N.Y. 1997) (“The period after the producing party realizes that privileged information has been disclosed is the relevant period for measuring whether the privilege has been waived.”) (emphasis added). In this case, that was the Ueda deposition. At that deposition, Kaneka immediately put Cocrystal on notice that the documents may be privileged and, importantly, that Kaneka “reserve[d] [their] rights to claw [them] back.” (Ueda Tr. 136:17–18).

Cocrystal argues that a generic reservation of Kaneka's rights because the documents “may be” privileged was insufficient. (Ueda Tr. 136:16). In support of its argument, Cocrystal cites to Certain Underwriters at Lloyd's, London v. National Railroad Passenger Corporation, where the court held that defendant's counsel made “generalized objections ․ [which were] insufficient to preserve a claim of privilege.” 218 F. Supp. 3d at 202. However, unlike in Certain Underwriters, Kaneka's counsel specifically asserted an apparent privilege, and, importantly, directly invoked Kaneka's clawback rights. (See Ueda Tr. 135:15–24). These actions were sufficient to put Cocrystal on notice of the privileged content of the documents and preserve Kaneka's rights.

Cocrystal maintains that Kaneka's subsequent 45-day delay in making a formal, written demand to claw back the documents, ending only after Cocrystal disclosed an expert report relying on the Disputed Documents, unfairly prejudices Cocrystal and, therefore, constitutes inordinate delay. (See Def.’s Rply. 4); cf. Dover v. Brit. Airways, PLC (UK), No.12-cv-5567, 2014 WL 4065084, at *3–4 (E.D.N.Y. Aug. 15, 2014) (considering whether “overriding issues of fairness which underlie all determinations regarding waiver or forfeiture of protection of privileged documents” required finding that privilege had been waived, even after already concluding that party seeking to claw back a privileged document had not been “completely reckless”).

Cocrystal's concern is valid.³ There will certainly be some unfairness to Cocrystal in requiring them to return the Disputed Documents and refrain from using them in the litigation after it invested time and resources in an expert who relied on the Documents’ contents. But “[t]he prejudice factor focuses only on whether the act of restoring immunity to an inadvertently disclosed document would be unfair, not whether the privilege itself deprives parties of pertinent information.” Bank Brussels Lambert, 160 F.R.D. at 446.

Further, in the fairness context, Cocrystal's own passive approach to providing requisite notice is noteworthy. Under the terms of the Protective Order, Cocrystal agreed to notify Kaneka if it became aware of inadvertent production of privileged material. (Protective Order 21–22). Rather than explicitly providing the requisite notice, Cocrystal relied only on a brief reference to the Disputed Documents’ Bates stamp numbers to provide notice of its possession of these documents. (See Def.’s Mot. Ex. 5, 22, 25–26). Then, Cocrystal relied only on its vague questioning at the Ueda deposition—which predominantly focused on authentication—to provide notice of its forthcoming reliance of the documents. (See Ueda Tr. 135:24–139:11). Under these circumstances, the expert report may well have been the first time Kaneka was on explicit notice of the extent to which Cocrystal intended to rely on these documents. Additionally, Cocrystal's attorney stated at the Ueda deposition that Kaneka “[could] reserve [its] rights however [it liked].” (Ueda Tr. at 135:15–24). Cocrystal's counsel did not demand a formal written assertion of privilege in response to the objection, as is typical when a party seeks to argue waiver. See e.g., Lava Trading, Inc. v. Hartford Fire Ins. Co., No. 03-cv-7037, 2005 WL 66892, at *3 (S.D.N.Y. Jan 11, 2005). Nor did Cocrystal expressly disclose its intent to rely on the Disputed Documents in the expert report if Kaneka did not act. These circumstances could fairly be understood by Kaneka's counsel as an acknowledgement that Kaneka sufficiently invoked its rights under the agreement. For these reasons, the fairness analysis weighs in Kaneka's favor.

Kaneka has established its burden to show it promptly invoked its rights over the privileged information at the Ueda deposition and is entitled to claw them back under the parties’ agreement.

CONCLUSION

Kaneka could have avoided this entire dispute with greater diligence and care. Similarly, Cocrystal may have prevailed had it directly communicated its possession and intended use of Kaneka's privileged information. Ultimately, however, Kaneka meets its burden to establish that it took sufficient steps to preserve the critical protection of the attorney-client privilege and promptly preserved its right to claw back the Disputed Documents when it learned of its inadvertent production. Therefore, Cocrystal's motion for a determination that Kaneka waived privilege or its right to claw back privileged documents is DENIED.

SO ORDERED.

FOOTNOTES

1.   Invalidity Contentions are formal disclosures required in patent litigation in which the party opposing a patent infringement claim identifies all grounds to support their argument that a patent is invalid. See Local Patent Rule 7.

2.   Because Japanese law does not allow for compelled testimony in foreign legal matters, Kaneka undertook “a great amount of effort and scheduling” to get all its Japanese witnesses to U.S. territory to testify in this case. (Hrg. Tr. at 34:12–35:7).

3.   Cocrystal also argues that allowing Kaneka to claw back the Disputed Documents is unfair because Kaneka has not made a demand to claw back similar documents that are arguably privileged. (See Def.’s Mot. 2). Cocrystal is correct that such a selective invocation of privilege is improper because it could allow the privilege to be “used as a shield and a sword.” United States v. Bilzerian, 926 F.2d 1285, 1292 (2d Cir. 1991). In response, however, Kaneka's counsel represented that it would claw these other documents back and, in any event, does not intend to use them. (Hrg. Tr. 50:1–53:5). Based on that representation, there is no selective invocation of privilege. If Kaneka attempted to use these documents, they would be precluded from doing so.

SETH D. EICHENHOLTZ United States Magistrate Judge Eastern District of New York