SmartPhone Technologies LLC v. Research In Motion Corporation et al
MEMORANDUM OPINION AND ORDER granting 629 SEALED MOTION Apple Inc.'s REBUTTAL MOTION for Immediate Compliance with SmartPhone's Discovery Obligations AND Apple Inc.'s OPPOSITION to Plaintiff's Emergency Motion for Clarificati on of Order on Motion to Compel filed by Apple, Inc., and denying 624 Opposed MOTION Emergency Motion for Clarification of Order on Motion to Compel re 604 Order on Sealed Patent Motion filed by SmartPhone Technologies LLC. In addition, Smart Phone is ordered to pay Apple's reasonable expenses and attorneys' fees incurred in association with Apple's original Motion to Compel SmartPhone to Produce Documents in Accordance with its Discovery Obligations 462 and Apple's Motion for Compliance 629 , pursuant to Fed. R. Civ. P. 37(a) and (b). Signed by Magistrate Judge John D. Love on 3/1/13. (mjc, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
APPLE, INC., et al.,
NO. 6:10cv74 LED-JDL
MEMORANDUM OPINION AND ORDER
Before the Court is Plaintiff SmartPhone Technologies, LLC’s (“SmartPhone”)
Emergency Motion for Clarification of Order on Motion to Compel (Doc. No. 624) (“MTN FOR
CLARIFICATION”). Defendant Apple, Inc. (“Apple”) has filed a response (Doc. No. 628), in
which co-Defendants LG Electronics Inc. and LG Electronics U.S.A., Inc. (“collectively, “LG”)
join (Doc. No. 633).
Apple’s response also serves as a rebuttal Motion for Immediate
Compliance with SmartPhone’s Discovery Obligations (Doc. No. 629). Upon consideration of
the parties’ arguments, SmartPhone’s Motion for Clarification (Doc. No. 624) is DENIED, and
further, Apple’s Motion for Compliance (Doc. No. 629) is GRANTED.
SmartPhone is ORDERED to pay Apple’s reasonable expenses and attorneys’ fees incurred in
association with Apple’s original Motion to Compel SmartPhone to Produce Documents in
Accordance with its Discovery Obligations (Doc. No. 462) (“MTN
COMPEL”) and Apple’s
Motion for Compliance (Doc. No. 629), pursuant to Fed. R. Civ. P. 37(a) and (b).
On December 4, 2012, Apple filed a motion to compel, requesting the Court to order
SmartPhone to produce licensing, settlement and patent evaluation documents. MTN TO COMPEL
SmartPhone maintained that such documents were either protected by various privileges or
were not within SmartPhone’s possession or control. COMPEL RESPONSE AT 1 (Doc. No. 493).
In particular, SmartPhone represented that many of the documents were in the possession of
ACCESS Co. Ltd. (“ACCESS”), who licensed the patents-at-issue to SmartPhone.
Moreover, SmartPhone maintained that the documents Apple seeks are protected by the attorneyclient privilege, work product doctrine, and common interest privilege. Id. SmartPhone argued
that the documents in ACCESS’ possession were privileged pursuant to the common interest
privilege. Id. at 14.
The Court heard argument on February 13, 2013. At the hearing, the parties represented
that they had not exchanged privilege logs, despite their obligation to do so pursuant to the
Docket Control Order.1 See DOCKET CONTROL ORDER
49:23-25, EX. 3,
7 (Doc. No. 141); TRANSCRIPT
RESPONSE. The Court ordered the parties to produce, within
seven days, privilege logs for the documents for which privilege is claimed, and further, to
produce all privileged documents to the Court for in camera review. TRANSCRIPT AT 50:4-15.
On February 14, 2013, the Court issued an order memorializing the rulings from the bench at the
hearing the day before. In the Order, the Court granted as instructed Apple’s Motion to Compel.
FEB. 14, 2013 ORDER (Doc. No. 604).
In the alternative, the parties were to notify the Court that there were no disputes as to claims of privileged
documents. DOCKET CONTROL ORDER AT 7. On May 20, 2011, the parties moved to extend the deadline to
exchange privilege logs regarding claim construction issues until May 31, 2011. The Court granted the motion on
May 23, 2011 (Doc. No. 263). The Court received no other notice regarding privilege logs or privileged materials.
On February 20, 2013, SmartPhone moved for clarification of the Court’s February 13th
and 14th Orders (Doc. No. 624). By that time, SmartPhone had produced a privilege log to
Defendants “identifying the documents between SmartPhone and ACCESS that SmartPhone
contends are covered by the common interest privilege.”
However, SmartPhone sought to clarify that it was under no obligation to submit a general
privilege log that included documents other than those privileged between ACCESS and
In response, Apple filed its Motion for Immediate Compliance with SmartPhone’s
Discovery Obligations (“MTN
Apple seeks to compel SmartPhone to
provide a privilege log for all documents responsive to Apple’s original Motion to Compel; in
other words, Apple requests that SmartPhone produce all documents related to licensing
negotiations, settlement negotiations, and valuation of the patents-in-suit or provide a privilege
log that includes documents for all privileges claimed. MTN
further requests that SmartPhone produce to the Court for in camera review all documents for
which privilege is claimed. Id. at 14. In addition, Apple challenges SmartPhone’s privilege log
because it (1) only lists documents for which the common interest privilege is claimed; (2)
includes boilerplate descriptions that do not enable Apple to challenge the asserted privilege; (3)
insufficiently identifies recipients and senders, failing to include employers, job titles, etc.; (4)
uses “et al.” to indicate additional recipients of a communication; and (5) includes documents
dated prior to the inception of this litigation. Id. at 5-6.
Under Federal Rule of Civil Procedure 26(b)(5), a party claiming privilege must (1)
expressly claim privilege and (2) sufficiently describe the nature of documents or
communications, without revealing the protected information, such that the opposing party is
able “to assess the claim.” FED. R. CIV. P. 26(b)(5)(A). However, because the assertion of
privilege is subject to abuse, “it applies only where necessary to achieve its purpose.” Cf. U.S. v.
Robinson, 121 F.3d 971, 974 (5th Cir. 1997) (quoting Fisher v. United States, 425 U.S. 391, 403
(1976)) (discussing the attorney-client privilege).
Reasonable Expenses and Attorneys’ Fees
If a motion to compel is granted, the Federal Rules dictate that the court “order the party
whose conduct necessitated the motion . . . to pay the movant’s reasonable expenses incurred in
making the motion, including attorneys’ fees.” FED. R. CIV. P. 37(a)(5)(A). The court may not
award fees and expenses if the opposing party’s nondisclosure was “substantially justified.” Id.
Moreover, the court is entitled to award fees and expenses for a party’s failure to comply with a
court order under Rule 26(f) or 37(a). FED. R. CIV. P. 37(b).
Federal Rule of Civil Procedure 26(f)(3)(D) dictates that the parties are to discuss
discovery plans, including “any issues about claims of privilege or of protection as trialpreparation materials, including—if the parties agree on a procedure to assert these claims after
production—whether to ask the court to include their agreement in an order.” The parties’
Discovery and Docket Control Orders required that the parties meet and confer on the issue of
privilege. Yet, it became apparent at the hearing on February 13, 2013 that the parties had not
exchanged privilege logs. While neither party sought to compel a log, such a course of conduct
disregarded an explicit obligation set out in the parties’ Docket Control and Discovery Orders.
See DOCKET CONTROL ORDER
7; DISCOVERY ORDER
¶ 7 (Doc. No. 140). Per those
Orders, privilege logs should have been exchanged long ago, as far back as 2011.
Now, SmartPhone inexplicably claims privilege over certain documents despite having
never provided Apple with a privilege log until February 20, 2013, at the Court’s direction.
Moreover, SmartPhone continues to claim privilege for documents that have not been logged,
despite the fact the Court has ordered it to do so. The Court, in no uncertain terms, explained at
the February 13th hearing:
that these documents to which privilege is claimed, in order for me to do anything
with them, I need to see the documents specifically and I need a privilege log. . . .
[W]hen a Court is presented with these types of issues, these documents ought to
be specifically identified and a specific privilege claimed and an in camera
inspection is what [sic] needs to happen.
44:17-45:1 (emphasis added). It seems that SmartPhone, despite claiming a
variety of privileges, e.g., attorney-client, work product, and common interest, chose to log only
the documents exchanged between SmartPhone and ACCESS for which the common interest
privilege is claimed. This, in spite of the Court’s comments that SmartPhone is eligible for
protections under the attorney-client and work product privileges if they provide documents for
in camera review, as well as some context for the privilege. See id. at 47:13-21.
The Court made a “ruling on those documents to which SmartPhone is claiming
privilege.” Id. at 49:18-19. SmartPhone was to produce a log to Defendants within seven days
of the hearing “that’s got these documents in it that we’ve been talking about today.” Id. at 50:46. The Court further ordered SmartPhone to produce the log to the Court, in addition to all the
documents contained therein. Id. at 50:6-9. To date, SmartPhone has not provided a log or
privileged documents to the Court.
In addition, SmartPhone’s privilege log is deficient. SmartPhone has the burden of
showing the existence of privilege.
See FED. R. CIV. P. 26(b)(5)(A).
The Federal Rules
essentially dictate that when a party claims privilege, it must provide a log that provides facts
that “would suffice to establish each element of the privilege or immunity that is claimed.”
Taylor Energy Co., L.L.C. v. Underwriters at Lloyd’s London Subscribing to Insur. Coverage
Evidence by Policy No. HJ109303, 2010 WL 3952208, at *1 (E.D. La. Oct. 7, 2010) (internal
citation omitted). However, SmartPhone’s privilege log does not identify facts that “will enable
other parties to assess the claim [of privilege].”
FED. R. CIV. P. 26(b)(5)(A).
SmartPhone does not identify the positions of the senders or recipients of documents such that
one can deduce a common interest. Without a description of a person’s occupation or job title,
Apple cannot determine whether the claim of privilege is justified. Moreover, SmartPhone uses
“et al.” to indicate further dissemination of the documents. Such broad use of “et al.” to indicate
further communication to other parties is not helpful. One may simply assume that an “et. al”
dissemination implies waiver of the privilege due to communication to third parties. Thus,
SmartPhone should avoid the use of “et al.” and specifically identify all recipients. Further,
SmartPhone uses boilerplate language, i.e., “discussion re anticipated litigation and strategy.”
Such a description is insufficient to permit a receiving party to challenge the assertion of
privilege. Put simply, more detail is required.2
As stated above, the Court’s February 13th and 14th orders were directed to all documents
for which SmartPhone claims privilege, and were not limited to the documents exchanged
To the extent SmartPhone claims that documents generated after the filing of this lawsuit are privileged due to a
common interest, such documents should also be logged.
between SmartPhone and ACCESS.
Therefore, SmartPhone’s Emergency Motion for
Clarification (Doc. No. 624) is DENIED. It is clear from the hearing transcript that SmartPhone
was to provide to the Court (1) the requested documents for in camera review and (2) a privilege
log for all documents responsive to Apple’s original Motion to Compel where SmartPhone is
asserting privilege. Therefore, Apple’s Motion for Compliance (Doc. No. 629) is GRANTED.
SmartPhone shall produce documents relating to the valuation, licensing negotiations, and
settlement negotiations of the patents-in-suit to Defendants Apple, AT&T, the LG Defendants,
and the HTC Defendants3 by March 8, 2013. If SmartPhone continues to claim privilege for
these documents, SmartPhone shall provide to Defendants, and to the Court, a privilege log
addressing all privileges claimed; the log shall not be limited to only the common interest
privilege or documents exchanged between SmartPhone and ACCESS. The privilege log should
list all documents for which privilege is claimed; identify the particular privilege claimed;
identify the date of the document, as well as the senders and recipients of such documents,
including any job titles, occupations, etc.; omit the use of “et al”; and include sufficient factual
description so as to enable Defendants to assess the claim of privilege. Any such log must be
forwarded to the Court and served on the Defendants by March 8, 2013. In addition, any
documents listed on the privilege log shall be produced to the Court for in camera review by the
same deadline. SmartPhone is once again encouraged to closely examine the documents at issue
and claim privilege out of necessity only. The Court will review the logged documents and order
production for any of those determined not to be privileged. Should SmartPhone fail to provide
an adequate privilege log, the Court will order all responsive documents produced. Moreover,
Apple and LG shall also provide any necessary privilege logs by March 8, 2013. If Apple and
The Court’s February 14, 2013 ruling extended production of documents and privilege logs to all Defendants in
Action Nos. 6:10cv74 and 6:10cv580.
LG fail to do so, the Court will assume these parties do not assert privilege with regard to any
In addition, due to (1) SmartPhone’s failure to produce a privilege log; (2) SmartPhone’s
failure to comply with the Court’s orders associated with Apple’s Motion to Compel; and (3)
deficiencies in SmartPhone’s privilege log, the Court ORDERS SmartPhone to pay the
reasonable expenses and fees associated with both Apple’s original Motion to Compel and its
Rebuttal Motion for Immediate Compliance.
SIGNED this 19th day of December, 2011.
So ORDERED and SIGNED this 1st day of March, 2013.