NimbeLink Corp. v. Digi International Inc.

U.S. District Court, District of Minnesota April 12, 2024

Trial Court Opinion

                 UNITED STATES DISTRICT COURT                            
                     DISTRICT OF MINNESOTA                               


NimbeLink Corp.,                      Case No. 22-cv-2345 (NEB/DJF)      

               Plaintiff,                                                

v.                                            ORDER                      

Digi International Inc.,                                                 

              Defendant.                                                 



    This matter is before the Court on Plaintiff NimbeLink Corp.’s (“NimbeLink”) Motion to 
Compel (“NimbeLink Motion”) (ECF No. 181) and Defendant Digi International Inc.’s (“Digi”) 
Motion to Compel (“Digi Motion”) (ECF No. 190).  The Court held a hearing on these motions on 
January 18, 2024 (ECF No. 207).  For the reasons given below, the Court denies the NimbeLink 
Motion and grants the Digi Motion in part and denies it in part.          
I.   The NimbeLink Motion                                                 
    The NimbeLink motion seeks: (1) financial information from Digi related to NimbeLink’s 
alleged damages; (2) additional Rule 30(b)(6) testimony from Digi regarding the accused products; 
and (3) documents and emails from former Digi head of sales, Matthew Lubeley, related to Digi’s 
alleged willful infringement of NimbeLink Patent Nos. 9,497,570 and 9,838,066 (collectively, the 
“Asserted Patents”) (see ECF No. 183).  In the time since NimbeLink filed its motion, the District 
Judge issued a claim construction order finding NimbeLink’s Asserted Patents invalid (ECF No. 
239), and the parties subsequently stipulated to dismissing NimbeLink’s infringement claims (ECF 
No. 245).1  NimbeLink has no remaining active claims in this action.      
    Federal  Rule  of  Civil  Procedure  26(b)(1)  limits  the  scope  of  discovery  to  “any 
nonprivileged matter that is relevant to any party’s claim or defense” and “proportional to the 

needs  of  the  case[.]”  NimbeLink  argues  the  information  it  seeks  is  relevant  to  prove  its 
infringement claims and establish damages on those claims (see ECF No. 183).  But none of the 
discovery it requests appears relevant to its defenses against the only claim remaining in this 
lawsuit, Digi’s inequitable conduct counterclaim.  Since the information NimbeLink seeks is no 
longer relevant to any active claim in this case, the Court denies the NimbeLink Motion.  
II.  The Digi Motion                                                      
    The Digi Motion seeks an order compelling NimbeLink and its patent attorney, John 
Fonder (“Fonder”), to produce: (1) documents related to legal advice concerning NimbeLink’s 
15/697,767  continuation  patent  application  (the  “’767  Continuation  Application”)  and  any 
potential applications related to the  ’767 Continuation Application (“Potential Applications”);2 

(2) documents and communications related to NimbeLink investor presentations; and (3) Fonder’s 
billing records related to his prosecution of NimbeLink’s Asserted Patents (ECF No. 193 at 15).    
    A.   Background                                                      
    Digi’s requests stem from NimbeLink’s purposeful waiver of the attorney-client privilege 
and work product protections for: “communications and documents that involve: (1) prosecution 
of the patent applications that resulted in U.S. Patent Nos. 9,497,570 and 9,838,066; and (2) the 


    1 NimbeLink has reserved the right to appeal the District Judge’s Claim Construction Order 
(ECF No. 245 at 2).                                                       
    2 Digi stated on the record at the hearing that the parties resolved Digi’s request for 
documents related to foreign patent applications.                         
preparation and filing of related provisional application No. 61/936,615.”  (ECF No. 160-4 at 2).  
NimbeLink produced documents in connection with its waiver on October 30, 2023—several 
hours after the District Judge concluded a hearing on claim construction and NimbeLink’s motion 
to dismiss Digi’s inequitable conduct counterclaim (“October 30 Productions”) (ECF Nos. 160 ¶ 

9; 160-8).  NimbeLink waived privilege and produced these documents to support its defense 
against Digi’s inequitable conduct claim.  (See ECF No. 175 at 14 n. 4, stating that NimbeLink 
“would not have had any reason to waive privilege absent an inequitable conduct claim by Digi.”.)   
    The October 30 Productions included: (1) 283 documents and audio recordings from 
Fonder; and (2) 25 documents from NimbeLink.  (ECF Nos. 160 ¶¶ 9–10; 194 ¶ 2.)  Digi contends 
the Fonder production, in particular, contained information critical to Digi’s inequitable conduct 
defense, including audio files of conversations between Fonder and the lead inventor of the 
Asserted  Patents  regarding  the  patents  and  prior  art,  as  well  as  documents  “confirming 
NimbeLink’s detailed knowledge of prior art” that Digi alleges NimbeLink withheld from the 
United States Patent and Trademark Office (“USPTO”) (ECF No. 192 at 10) (citing ECF Nos. 

161-4; 161-5).  NimbeLink and Fonder’s productions included: (1) documents discussing related 
continuation  applications,  including  whether  NimbeLink  should  file  a  continuation  patent 
application and the prosecution of a continuation patent application (ECF Nos. 195-1, 195-3); and 
(2)  investor  presentations  and  communications  underlying  such  presentations  related  to 
prosecution of the Asserted Patents.  (ECF Nos. 161-4 at 4:14-18; 161-5 at 3:18-23, 5:15-20; 195-
2.)                                                                       
    NimbeLink produced a privilege log in connection with these productions on November 3, 
2023 (ECF No. 200 ¶ 2).  Fonder produced his privilege log on November 8, 2023 (see ECF No. 
194-1 at 1).  On November 15, 2023, Digi’s counsel wrote to NimbeLink regarding alleged 
deficiencies in Fonder’s October 30 production and privilege log.  (Id.)  On December 6, 2023, 
Digi sent another letter to NimbeLink regarding alleged deficiencies in NimbeLink’s October 30 
production (ECF No. 194-2 at 1–6).                                        
    The parties met and conferred on December 15, 2023 to address, among other issues: (1) 

NimbeLink’s failure to produce documents and information as set forth in Digi’s December 6, 
2023 letter; and (2) NimbeLink and Fonder’s failure to produce documents and information as set 
forth in Digi’s November 15, 2023 letter (ECF No. 200-3 at 2–3).  As a result of this meeting, and 
through subsequent communications, the parties resolved all but one of the issues raised in Digi’s 
December 6, 2023 letter (see ECF No. 200 ¶ 4).  The sole remaining issue in dispute concerned 
documents related to NimbeLink’s design patent (D731,491), which the Digi Motion does not 
address.  (See  id.)    The  December  15,  2023  meeting  also  resulted  in  Fonder  producing  a 
supplemental privilege log, which addressed some, but not all, of the alleged deficiencies raised in 
Digi’s November 15, 2023 letter (see ECF No. 194-3).                      
    Though Digi states that “the parties conducted multiple meet-and-confers” on the issues 

raised in its motion (see ECF No. 192 at 12), the only such meeting actually documented in the 
record is the one that took place on December 15, 2023 (see ECF No. 194 ¶ 3).  NimbeLink denies 
that Digi ever attempted to meet and confer regarding the issues raised in the Digi Motion with 
respect to NimbeLink’s (as opposed to Fonder’s) production.  (See ECF No. 199 at 15; see also 
ECF No. 200 ¶¶ 4, 8.)                                                     
    B.   Legal Standard                                                  
    “The widely applied standard for determining the scope of a waiver of attorney-client 
privilege is that the waiver applies to all other communications relating to the same subject matter.” 
Fort James Corp. v. Solo Cup Co.,

412 F.3d 1340, 1349

 (Fed. Cir. 2005).  “The waiver extends 
beyond the document initially produced out of concern for fairness, so that a party is prevented 
from  disclosing  communications  that  support  its  position  while  simultaneously  concealing 
communications that do not.”

Id.

 (citing Weil v. Inv./ Indicators, Research & Mgmt., Inc.,

647 F.2d 18

, 24 (9th Cir. 1981)).  Rule 502(a) of the Federal Rules of Evidence provides:  

    When the disclosure is made in a Federal proceeding or to a Federal office or 
    agency and waives the attorney-client privilege or work-product protection, the 
    waiver extends to an undisclosed communication or information in a Federal or 
    State proceeding only if:                                            

         (1) the waiver is intentional;                                  

         (2) the disclosed and undisclosed communications or information concern  
         the same subject matter; and                                    

         (3) they ought in fairness to be considered together.           
    “There is no bright line test for determining what constitutes the subject matter of a waiver, 
rather courts weigh the circumstances of disclosure, the nature of the legal advice sought and the 
prejudice to the parties of permitting or prohibiting further disclosures.” Fort James Corp., 412 
F.3d at 1349–50 (citing In re Keeper of the Records XYZ Corp.,

348 F.3d 16, 23

(1st Cir. 2003)).
C. Analysis
1. NimbeLink Document Production
NimbeLink argues Digi failed to properly meet and confer regarding the issues raised in
the Digi Motion with respect to NimbeLink’s document production, as required by Local Rule 7.1
and the Court’s November 28, 2023 Scheduling Order (“November 28 Order”) (ECF No. 170 at
2). In its November 28 Order, the Court directed that:
[T]he parties must meet and confer in a sincere, good faith effort to resolve any
disputes related to nondispositive motions on or before December 28, 2023. The
meeting must take place in person and must be no less than 1 hour in length.
During the meet and confer, the parties must not seek to prevail on minor or
unimportant issues, but instead, must focus on advancing this litigation in the most
efficient manner possible.
(Id.)
The only support Digi provides for its claim that the “parties conducted multiple meet-and-
confers” on the issues contained in its motion is a citation to its counsel’s declaration, which asserts
only that a meeting took place on December 15, 2023 (see ECF No. 192 at 7) (citing ECF No. 194
¶ 3). At this meeting, Digi requested that the parties discuss, in relevant part: (1) NimbeLink’s
failure to produce documents as identified in Digi’s December 6, 2023 letter; and (2) NimbeLink
and John Fonder’s failure to produce documents and information as set forth in Digi’s November
15, 2023 letter (ECF No. 200-3 at 2). But the only unresolved issue set forth in Digi’s December
6, 2023 letter is not contested in the Digi Motion, and the November 15, 2023 letter does not assert

any deficiencies in NimbeLink’s document production. Rather, that letter focuses solely on
alleged deficiencies in Fonder’s document production and privilege log (see ECF No. 194-1).3
Because: (1) the record only supports a finding that a meet-and-confer took place on
December 15, 2023; (2) the agenda for that meeting did not include deficiencies in the NimbeLink
production at issue in Digi’s Motion; and (3) NimbeLink denies that any meet-and-confer with
respect to such issues ever took place, the Court finds Digi has not established that it properly met
and conferred with NimbeLink about these issues as the Local Rules and the Court’s November
29 Order require. For these reasons, the Court denies the Digi Motion to the extent that it
challenges NimbeLink’s document production.

3 The only reference in Digi’s November 15, 2023 letter to NimbeLink discovery is a
request that NimbeLink supplement its previous interrogatory responses in view of its privilege
waiver (ECF No. 194-1 at 7).
2. Fonder Document Production
a. ’767 Continuation Application and Potential Applications
The parties debate whether NimbeLink’s waiver of attorney-client privilege and work
product protections as to the Asserted Patents effected a subject-matter waiver extending to

communications regarding the ’767 Continuation Application and related Potential Applications
(Compare ECF No. 193 at 15–21, with ECF No. 199 at 19–21). On this issue the Court agrees
with Digi. NimbeLink’s discussions with its counsel about whether to disclose prior art to the
USPTO in a continuation application, even if abandoned, might potentially support a finding of
inequitable conduct with respect to the Asserted Patents. See Tristrata Tech., Inc. v. Neoteric
Cosms., Inc.,

35 F. Supp. 2d 370, 372

 (D. Del. 1998) (reasoning that “pending and abandoned 
applications may contain information or admissions that clarify, define or interpret the claims of 
the patent in suit”) (citing cases); Intellect Wireless, Inc. v. HTC Corp.,

732 F.3d 1339, 1345

 (Fed. 
Cir. 2013) (finding deceitful conduct as to related patents helped establish inequitable conduct with 
respect to asserted patents).  Moreover, the Court observes that NimbeLink and Fonder have 

already  produced  otherwise  privileged  documents  discussing  either  the  ’767  Continuation 
Application or related Potential Applications (see ECF Nos. 195-1; 195-3).  Because NimbeLink 
included otherwise privileged communications regarding the ’767 Continuation Application and 
related Potential Applications in its production, and because this information may be relevant to 
Digi’s  claims,  the  Court  finds  NimbeLink’s  waiver  of  privilege  extends  to  all  other 
communications regarding its prosecution of these applications.  See Thomas v. Marshall Pub. 
Sch., 21-cv-2581 (PJS/DJF), --- F.Supp.3d ----,

2023 WL 5743611

, at *11 (D. Minn. Sept. 6, 2023) 
(finding disclosure of meeting notes with an attorney resulted in subject-matter waiver with respect 
to topics discussed in the notes).  NimbeLink cannot fairly disclose parts of its conversations with 
Fonder about the prosecution of its Continuation Application and related Potential Applications as 
a defense to Digi’s inequitable conduct counterclaim, but then assert privilege as a shield to prevent 
Digi from discovering other privileged communications related to those same applications.  See 
Fort James Corp.,

412 F.3d at 1349

. The Court thus concludes that NimbeLink has indeed waived

any applicable attorney-client or work product protections with respect to the ’767 Continuation
Application and related Potential Applications.
The scope of NimbeLink’s waiver does not end the inquiry, however. That a given
document may no longer be privileged does not lead inexorably to the conclusion that it must be
produced. The Court is also mindful of the proportionality requirement. Fed. R. Civ. P. 26(b)(1).
In this instance, Digi seeks to compel further production from Fonder to advance its claim that
NimbeLink improperly failed to disclose prior art to the USPTO (see ECF No. 193 at 19–21). No
other compelling reason for the production of these documents appears to exist. To require the
production of every Fonder communication related to these applications would be disproportionate
to the needs of the case. The Court therefore orders NimbeLink to direct Fonder to produce any

withheld documents or communications concerning the ’767 Continuation Application and related
Potential Applications to the extent they might potentially relate or refer in any way to inequitable
conduct, prior art or possible prior art, or any decision to omit or disclose such prior art or possible
prior art to the USPTO.
b. Communications Regarding Investor Presentations
Digi seeks an order compelling NimbeLink to produce email exchanges identified on
Fonder’s privilege log as communications “for the purposes of seeking and providing legal advice
regarding investor presentations.” (ECF No. 192 at 22.) Digi argues that, because NimbeLink
disclosed certain documents containing legal advice related to investor presentations, NimbeLink
can no longer claim privilege with respect to any document concerning investor presentations.
(Id.)
The Court cannot conclude that all investor presentation communications per se are within
the subject matter of NimbeLink’s waiver. NimbeLink points out that it disclosed two of the

communications at issue before it even made the privilege waiver, and that these documents do
not actually request or contain legal advice. Digi points to an audio recording concerning investor
communications that does contain legal advice, but NimbeLink states it disclosed that recording
because it contained a discussion about the Asserted Patents, as to which the privilege waiver was
clear. (Id. at 31–32.) To suggest NimbeLink broadly waived privilege as to all communications
regarding investor communications simply because a few communications in that context fell
within the scope of its waiver as to the Asserted Patents is a bridge too far. This is not an instance
in which the communications “ought in fairness to be considered together.” See Fed. R. Evid.
Rule 502(a). The Court cannot infer from this record that NimbeLink is seeking to use some
investor communications as a sword against Digi’s inequitable conduct claim while withholding

similar communications that are less helpful to its defense. Rather, NimbeLink simply appears to
have recognized disclosure of the audio recording at issue was necessary because parts of the
recording fell within the scope of its waiver regarding the Asserted Patents. The Court declines
Digi’s invitation to bootstrap NimbeLink’s privilege waiver as to the Asserted Patents into a
broader waiver of privilege as to any overlapping topic addressed in the disclosed documents. The
Court therefore denies Digi’s motion to compel further production of investor presentation
documents.
c. Fonder Billing Records
Digi seeks an order compelling the production of Fonder’s billing records concerning the
prosecution of the Asserted Patents (ECF No. 193 at 25–27). It argues that: (1) Fonder’s billing
records with respect to the Asserted Patent fall within NimbeLink’s privilege waiver over the

Asserted Patents; and (2) NimbeLink waived privilege with respect to Fonder’s billing records
because it disclosed some, but not all, of its conversions with Fonder about fees related to
prosecuting the Asserted Patents. (Id.) NimbeLink responds that: (1) Digi has failed to establish
the relevance of Fonder’s billing records; and (2) the disclosed communications about fees did not
contain privileged information (ECF No. 199 at 32–37).
The Court agrees that NimbeLink’s disclosed communications with Fonder regarding the
fees required for particular work were not privileged. See Kutz v. NGI Capital Inc., 22-cv-1623
(NEB/ECW),

2023 WL 3790766

, at *12 (D. Minn. June 2, 2023) (finding the amount of attorney 
fees incurred was not protected by attorney-client privilege) (quoting Henne v. Great River 
Regional Library, 19-cv-2758 (WMW/LIB),

2021 WL 6804560

, at *2 (D. Minn. Jan. 4, 2021)); 

United States v. Leonard-Allen,

739 F.3d 948, 953

(7th Cir. 2013) (holding that fee arrangements
fall “outside the scope of privilege because fees are incidental to the substance of representation”).
The Court further finds, however, that—to the extent Fonder’s billing records contain otherwise
privileged information related to his prosecution of the Asserted Patents—the records fall within
NimbeLink’s waiver of privilege as to the Asserted Patents.
But the proportionality requirement applies here, too. The Court therefore orders
NimbeLink to direct Fonder to produce any billing records concerning the Asserted Patents, the
Continuation Application or related Potential Applications, but only to the extent such records
might potentially relate or refer in any way to inequitable conduct, prior art or possible prior art,
or any decision to omit or disclose such prior art or possible prior art to the USPTO. For purposes
of clarity, billing records for this work must be disclosed even if the records themselves do not
explicitly refer to prior art. The litmus test for production is whether the underlying work involved,
or—to the extent the records themselves are not entirely clear—may have involved, some analysis

or discussion related to prior art or possible prior art. In other words, NimbeLink should err on
the side of disclosure if the relevance of a particular billing entry to NimbeLink’s inequitable
conduct claim is not definitive.

ORDER

Based on the foregoing, and on all of the files, records, and proceedings herein, IT IS
HEREBY ORDERED THAT:
1. Plaintiff NimbeLink Corp.’s Motion to Compel (ECF No. [181]) is DENIED; and

2. Defendant Digi International Inc.’s Motion to Compel (ECF No. [190]) is
GRANTED IN PART and DENIED IN PART.
a. The Digi Motion is GRANTED as follows:
i. NimbeLink shall direct Fonder to produce documents concerning the
’767 Continuation Application and related Potential Applications, to the
extent they might potentially relate or refer in any way to inequitable
conduct, prior art or possible prior art, or any decision to omit or disclose
such prior art or possible prior art to the USPTO; and
ii. NimbeLink shall direct Fonder to produce billing records concerning

the Asserted Patents, the Continuation Application or related Potential
Applications, to the extent such records might potentially relate or refer
in any way to inequitable conduct, prior art or possible prior art, or any
decision to omit or disclose such prior art or possible prior art to the
USPTO.
b. The Digi Motion is DENIED in all other respects.

Dated: April 12, 2024 s/ Dulce J. Foster
Dulce J. Foster
United States Magistrate Judge