Case 1:11-cv-00708-RGA Document 146 Filed 01/14/13 Page 1 of 3 PageID #: 3062

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE WATERS TECHNOLOGIES CORP., Plaintiff,
v.

Civil Action No. 11-708-RGA

AURORA SFC SYSTEMS INC., Defendant.

ORDER
At the Discovery Dispute Conference on December 11, 2012, the Court addressed a number of issues. One such issue was whether Waters' allegation in its Complaint that it performed pre-filing testing that showed infringement waived any work product protection over such testing, where the testing was not relied upon in any contentions and would not be relied upon at trial; whether Aurora was entitled to discovery of that testing; and the scope of any such waiver and discovery. (D.I. 132 at 14-28; D.I. 127, 128, 129, 130). After consideration ofthe papers submitted and argument, the Court permitted the parties to supplement with additional case law. (D.I. 132 at 26-28; D.I. 137, 142). The operative Complaine, dated August 11, 2011, alleges:
1

On November 1, 2012, Waters moved for leave to amend its complaint, and submitted a proposed Amended Complaint naming Agilent as an additional defendant and alleging: 29. On or about Apri/4, 2011, Waters acquired a sample Aurora SFC Fusion A5 product, conducted testing and analysis on the device, and determined that use of the product and/or the product itself meets all of the limitations of one or more claims in each ofthe '767 and '609 Patents. As inventor, Dr. Berger and others of the inventors at Aurora had, and still have, intimate knowledge of both the '767 and '609 Patents. Accordingly, Aurora had notice of both the '767 and '609 Patents from the moment the company was formed. 30. Upon information and belief, Agilent designs, manufactures, sells and services analytical technologies in the liquid chromatography field, including without limitation, SFC instrumentation. Agilent has incorporated Aurora's SFC

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26. On or about April4, 2011, Waters acquired a sample Aurora SFC Fusion AS product, conducted testing and analysis on the device, and determined that use of the product and/or the product itself meets all of the limitations of one or more claims in each of the '767 and '609 Patents. (D.I. 1). Aurora asked Waters about these allegations via its Interrogatory No. 1 on July 13, 2012. (D.I. 59, 128). Waters responded on September 12, 2012, identifying the date and a person with knowledge of the testing, stating it would produce "responsive, non-privileged, non-work product documents evidencing Waters' purchase of the Aurora SFC Fusion AS product" under Rule 33(d), and asserting "[t]he analysis performed by counsel is attorney work-product." (D.I. 89, 128). The parties agree that analysis of pre-suit testing is normally protected as attorney work product. Waters' preliminary infringement contentions did not rely on the testing, and Waters states it has no intention of relying on the testing to prove infringement. The parties also agree that Rule 11 touches pre-suit investigation. Waters asserts that there can be no waiver for complying with Rule 11's requirement of a good faith pre-suit investigation and other pleading requirements (D.I. 137), whereas Aurora asserts that under Rule 11(b)(3) and related case law, Waters pled its testing and asserted it had evidentiary support, about which Aurora is entitled to take discovery (D.I. 142). Aurora also asserts a broader waiver by disclosure of otherwise

Fusion AS product into Agilent' s SFC systems, including Agilent' s 1200RRLC System for SFC and Agilent's 1260 Infinity Analytical SFC System. Agilent has marketed these products, and possibly others, as containing Aurora's SFC Fusion AS module. Waters has also acquired an Agilent 1260 Infinity Analytical System and analyzed the SFC Fusion AS in conjunction with the Agilent system. (D.I. 110-1) (emphasis added). The Motion for Leave to Amend (D.I. 110) is still pending; this ruling is based on Waters' allegations of pre-suit testing in the original, operative Complaint.

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protected information. (D.I. 142). It seems clear to me that Waters should not allege facts in its Complaint unless the facts are something it intends to prove. Thus, while Waters' allegations about its testing go, unnecessarily, above and beyond the pleading requirements, they essentially state that Waters complied with Rule 11. Statements of compliance with Rule 11 do not waive work product underlying that compliance. Bristol-Myers Co. v. Sigma Chern. Co., 1988 WL 147409, *4 (D. Del. Jan. 20, 1988). Waters' allegations "discuss[] [Waters'] initial decision to investigate [Aurora] and the extent of that investigation. The Court fails to see how [these allegations] raise[] an issue that is essential or critical to the litigation of this action," particularly where Waters has not relied on the testing for proof and has stated it has no intention of doing so. See
id; D.I. 137 at 2. Even assuming the allegations were designed to bolster the Complaint in some

improper way, their practical effect "is limited to demonstrating that the plaintiff had a good faith basis under Federal Rule of Civil Procedure 11 for instituting this action, therefore, I do not find that a waiver of the [work product] privilege occurred from [these allegations] for such a limited purpose." Bristol-Myers, 1988 WL 147409, at *4. Thus, I will not direct Waters to further answer the disputed interrogatory. IT IS SO ORDERED this Jb.y of January 2013.