Longitude Licensing Ltd. et al v. Apple Inc.

Filing 219

ORDER Granting Apple's Motion to Compel by Magistrate Judge Elizabeth D. Laporte: granting 135 Motion. (shyS, COURT STAFF) (Filed on 11/17/2015)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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LONGITUDE LICENSING LTD., et al.,

Case No. 14-cv-04275-EDL

United States District Court
Northern District of California

Plaintiffs,
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v.

ORDER GRANTING APPLE'S MOTION
TO COMPEL

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APPLE INC.,
Defendant.

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Introduction
On September 2, 2015, Apple filed a Motion to Compel documents in response to its

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Request for Production No. 15, seeking: “All documents that refer or relate to any testing, reverse

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engineering, or other analysis of any Apple products, including any Accused Products, related to

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the Patents-in-Suit, including all documents generated by or on behalf of Cochrane [sic]

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Consulting, Inc.” This Court subsequently stayed the case, but the parties agreed that this motion

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was ripe for resolution regardless of the stay and the Court held a hearing on November 3, 2015.

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During the hearing, the Court requested that Longitude submit documentation relating to its

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engagement of Cochran Consulting (“Cochran”) in camera but tentatively indicated that it would

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likely find that at least some of the reports prepared by Cochran were protected work product.

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However, after reviewing documents in camera as well as considering the arguments made in the

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parties’ briefs and during oral argument, although a close question, the Court hereby GRANTS

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Apple’s motion to compel production of the thirteen reports identified in Apple’s moving papers.

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Background
Bunsow, De Mory, Smith & Allison LLP (“BDSA”) has represented Longitude in its

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preparation for and litigation of the patents-in-suit since at least October 10, 2013. Li Decl. ¶ 2.

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Cochran is an engineering firm that performs patent analysis, equipment teardowns and reverse

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product engineering and prepares technical reports. Corbett Decl. Ex. 20. It serves as a retained

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consultant for Longitude in this litigation. Li Decl. ¶ 3. On or about October 17, 2013, BDSA

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requested from Cochran and Cochran provided an initial set of seven previously-prepared

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teardown reports showing various Apple products in disassembly and the internal parts of the
products. Id. ¶¶ 4-8. Though the parties disputed in their papers whether the seven initial reports

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United States District Court
Northern District of California

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should be produced, during oral argument Longitude agreed to produce the seven initial reports.

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Therefore, this Order does not further discuss the seven Cochran reports prepared before October

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2013.

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Longitude’s attorney declaration states that after October 17, 2013, BDSA requested and

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Cochran provided six additional reports of Apple’s products, including investigation of specific

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technical features in the Apple products to ascertain whether the products infringed the patents-in-

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suit. Li Decl. ¶ 5. According to Longitude’s attorney declaration, when it acquired the reports

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from Cochran after October 17, 2013, it anticipated litigation and obtained the reports for that

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purpose. Id. ¶ 6-7.

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According to the cover letter accompanying Longitude’s post-hearing submission, from

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October through December 2013, Cochran was operating under a verbal agreement to provide

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support for Longitude but there is no declaration to support this assertion and it is unclear who the

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parties were to any such verbal agreement. Thereafter, Cochran and third-party Conversant

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Intellectual Property Management (“Conversant”) entered into a series of Letters of Understanding

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(“LOA”) dated between February and June 2014 whereby Cochran agreed to perform analysis of

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various Apple products and prepare reports. Longitude produced copies of seven LOAs between

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Cochran and Conversant dated between February and June 2014 for in camera review. The three

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LOAs dated in February and March 2014 appear to relate to the reports at issue in this motion,
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while the LOAs dated in May and June 2014 post-date the reports in question and are thus

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irrelevant to the Court’s analysis. The LOAs refer to their purpose as “licensing” and make no

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mention of litigation. There is no evidence or documentation regarding the relationship between

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BDSA and Conversant, and the only mention of BDSA in the LOAs relates to payment. BDSA

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formally engaged Cochran as an expert in this case on January 29, 2015.

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On April 4, 2014, Apple received a letter from BDSA on behalf of Longitude identifying

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five patents that Longitude believed were infringed by Apple products. See Corbett Decl. Ex. 1.

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On April 29, 2014, Longitude provided Apple with claim charts detailing how it believed Apple’s

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products utilized its technology, including excerpts and screen shots of 13 reports prepared by
Cochran dating from February 2010 through March 2014. Id. Ex. 2-11. The parties’ discussions

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United States District Court
Northern District of California

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during this time were covered by a “Standstill Agreement.” Following the standstill period,

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Longitude filed suit against Apple on September 23, 2014. Dkt. No. 1.

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On December 4, 2014, Apple served Request for Production No. 15 seeking: “All

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documents that refer or relate to any testing, reverse engineering, or other analysis of any Apple

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products, including any Accused Products, related to the Patents-in-Suit, including all documents

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generated by or on behalf of Cochrane [sic] Consulting, Inc.” Longitude objected on a number of

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grounds, including relevance and work-product immunity, but responded that it would produce

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responsive documents not subject to a privilege within its possession, custody or control that it

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located after a reasonable search according to the obligations and deadlines imposed by the

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Scheduling Order, including the appropriate time for fact and expert discovery. Corbett Decl. Ex.

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12. Apple did not challenge Longitude’s objections until May 11, 2015, when Apple sought

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confirmation that Longitude would produce responsive documents after reviewing Longitude’s

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production to date. Id. Ex. 13.

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During the meet and confer process, Longitude took the position that all of the Cochran

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reports are protected by “the work product doctrine and the enhanced protections of consulting

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work product and opinions that the parties agree to in the Protective Order.” Id. Ex. 14. Apple

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argued that the reports are not protected because they were produced in the ordinary course of

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Longitude’s business (i.e., its patent licensing program), and alternatively that Longitude waived
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the privilege by including them in its infringement analysis provided to Apple. Id. Ex. 15-17.

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Thereafter, Longitude offered to produce some of the reports if Apple agreed not to use them as a

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basis for waiver or seek further discovery, including from Cochran, based on the reports. Id. Ex.

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18. Apple declined this proposal. Beynon Decl. Exs. B-D.

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Longitude refused to produce any reports prepared by Cochran or to prepare a privilege log

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for these documents until the hearing on this motion, when it agreed to produce the six Cochran

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reports dated before October 2013. Apple moves to compel production of the Cochran reports,

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arguing that they are not protected by work product immunity, or such protection has been waived

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due to Longitude’s partial disclosure.

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United States District Court
Northern District of California

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Legal Standard
“The work product doctrine is a ‘qualified privilege’ that protects ‘certain materials

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prepared by an attorney acting for his client in anticipation of litigation.” Hernandez v. Tannien,

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604 F.3d 1095, 1100 (9th Cir. 2010); Fed. R. Civ. P.26(b)(3). The work product doctrine applies

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to documents that are (1) prepared in anticipation of litigation or trial; and (2) prepared by or for

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another party or by or for that other party’s representative. In re Grand Jury Subpoena (Torf), 357

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F.3d 900, 907 (9th Cir. 2004). In cases where a document could have more than one purpose, a

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document should be deemed prepared “in anticipation of litigation” and thus eligible for work

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product protection under Rule 26(b)(3) if, “in light of the nature of the document and the factual

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situation in the particular case, the document can be fairly said to have been prepared or obtained

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because of the prospect of litigation.” Id. at 907-908 (quoting Charles Alan Wright, Arthur R.

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Miller, and Richard L. Marcus, 8 Federal Practice & Procedure § 2024 (2d ed. 1994)). “The

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‘because of’ standard does not consider whether litigation was a primary or secondary motive

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behind the creation of a document.” Id. Rather, “it considers the totality of the circumstances and

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affords protection when it can fairly be said that the ‘document was created because of anticipated

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litigation, and would not have been created in substantially similar form but for the prospect of

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that litigation[.]” Id. (emphasis added). Further, “work product protection cannot be decided

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simply by looking at one motive that contributed to a document’s preparation. The circumstances

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surrounding the document’s preparation must also be considered.” The work product doctrine
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contemplates that litigation counsel may employ experts and other agents to assist them in

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preparing a case for litigation, and the doctrine may extend to those individuals’ preparations as

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well. Id. (“[A]ttorneys often must rely on the assistance of investigators and other agents in the

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compilation of materials in preparation for trial. It is therefore necessary that the doctrine protect

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material prepared by agents for the attorney as well as those prepared by the attorney himself.”).

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“Where a party asserts work-product immunity over a piece of evidence, the proponent of
the privilege bears the burden of establishing its applicability to the present circumstances.”

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Skynet Elec. Co. Ltd. v. Flextronics Int’l Ltd., 2013 WL 6623874, at *2 (N.D. Cal. Dec. 16,

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2013); United States v. Ruehle, 583 F.3d 600, 607-08 (9th Cir. 2009). The proponent of the

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privilege also bears the burden of establishing that there has been no waiver of the privilege.

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Northern District of California

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Skynet Elec., 2013 WL 6623874 (N.D. Cal. Dec. 16, 2013) at *2. However, “[w]aiver of work-

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product immunity does not . . . destroy work-product immunity for other documents of the same

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character.” Id. at *10 (citing In re EchoStar Commc’ns Corp., 448 F.3d at 1302).

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Discussion

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In its moving papers, Apple argued that none of the Cochran reports constitute work-

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product because they were prepared in the ordinary course of Longitude’s primary business of

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licensing and litigating patents. As stated during oral argument, the Court rejects the position that

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Longitude forfeits any work product protection because of the nature of its business because

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licensing activities do not automatically involve litigation. See, e.g. Diagnostics Sys. Corp. v.

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Symantec Corp., 2008 WL 9396387, *5-6 (C.D.Cal. Aug. 12, 2008) (rejecting argument that

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“virtually all activities engaged in by a company premised entirely on licensing and/or enforcing

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patents via litigation would be classified as ‘in anticipation of litigation’ and would therefore be

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work product, distinguishing between documents relating to litigation/legal advice and those

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relating to primary business objectives of acquiring and licensing patents, and ordering production

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of pre-acquisition business analysis of patents); see also Phillips Elecs. North Am. Corp. v.

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Universal Elecs. Inc., 892 F. Supp. 108, 110 (D.Del. 1995) (courts must look to the factual context

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of documents in question to determine whether they were prepared or obtained because of the

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prospect of litigation regardless of business activities).
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The nature of the Cochran reports at issue – “tear down” analysis of Apple’s products –

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reflects potential uses for both business and litigation purposes. As stated above, for “dual use”

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documents such as these, the Court must evaluate whether, under the totality of the circumstances,

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“the document can be fairly said to have been prepared or obtained because of the prospect of

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litigation,” and “would not have been created in substantially similar form but for the prospect of

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that litigation,” regardless of the nature of Longitude’s business activities. In re Grand Jury

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Subpoena (Torf), 357 F.3d at 907-908. With respect to the six Cochran reports still at issue,

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though a close question, the Court concludes that Longitude has not met its burden of establishing

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that the reports would not have otherwise been created in similar form.

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For the two reports dated in November and December 2013, it appears that they were

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Northern District of California

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created pursuant to a verbal agreement between Cochran and an unknown party, but there is no

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evidence to this effect. Longitude’s attorney declaration is vague, and states that “Cochran

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Consulting is a retained consultant for Longitude in this litigation” (Li Decl. ¶ 3) without stating

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the date of retention, and that “[a]fter about October 17, 2013, BDIP counsel requested that

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Cochran Consulting provide additional reports of Apple’s products” (Li Decl. ¶5), again without a

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specific date. Longitude has not met its burden of establishing that these two reports were

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prepared “because of” litigation, or even at the request of an attorney.

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For the remaining four reports dated in February and March 2014, it appears that they were

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prepared pursuant to LOAs between Cochran and Conversant executed during the same

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timeframe. The only mention of BDSA in the LOAs relates to payment, and there is no evidence

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of the relationship between BDSA and either Cochran or Conversant during this period. The

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relevant LOAs refer only to licensing and do not mention litigation. Even if future litigation was

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contemplated, considered in the context of the licensing negotiations between the parties going on

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during this period, the LOAs reflect that the Cochran reports were prepared to aid in the licensing

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negotiations and would likely have been prepared in identical or substantially similar form

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regardless of the prospect of litigation. The fact that the only evidence that BDSA formally

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engaged Cochran for purposes of this litigation is the engagement letter dated January 29, 2015,

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which for the first time references litigation as the purpose, rather than licensing, further supports
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this conclusion.
IT IS SO ORDERED.
Dated: November 17, 2015

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________________________
ELIZABETH D. LAPORTE
United States Magistrate Judge

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United States District Court
Northern District of California

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