Rembrandt Patent Innovations, LLC et al v. Apple, Inc.

Filing 156

ORDER DENYING PLAINTIFFS MOTION FOR LEAVE TO FILE A MOTION FOR RECONSIDERATION by Hon. William Alsup denying 154 Motion for Leave to File.(whalc1, COURT STAFF) (Filed on 2/12/2016)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA
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For the Northern District of California

United States District Court

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REMBRANDT PATENT
INNOVATIONS, LLC, and
REMBRANDT SECURE COMPUTING,
LP,
Plaintiffs,

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No. C 14-05094 WHA (Lead)
No. C 14-05093 WHA (Consolidated)

v.

ORDER DENYING
PLAINTIFFS’ MOTION
FOR LEAVE TO FILE
A MOTION FOR
RECONSIDERATION

APPLE INC,
Defendant.

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An order granted in part and denied in part defendant Apple Inc.’s motion to compel the

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production of certain documents that plaintiffs Rembrandt Patent Innovations, LLC, and

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Rembrandt Secure Computing, LP, (collectively “Rembrandt”) asserted were protected by

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work-product immunity (Dkt. No. 153). That order held that Rembrandt waived any work-

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product immunity by disclosing the documents to the inventors of the patent at issue in this

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action before the parties shared a common legal interest, which disclosures occurred before

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Rembrandt acquired an exclusive option to purchase the patent. Those disclosures were

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referred to as Category 3A, in reference to a diagram provided to the parties at the hearing (id.

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at 4).

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Rembrandt argues that reconsideration is appropriate because the order on Apple’s
motion to compel conflated the standard for waiver of work-product immunity with that for
waiver of attorney-client privilege and contends that constituted “[a] manifest failure by the

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Court to consider . . . dispositive legal arguments which were presented to the Court . . . ” Civil

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L.R. 7-9(b)(3). Rembrandt cites, as it had in its opposition to Apple’s motion, the undersigned

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judge’s decision in Skynet Electronics Co. v. Flextronics International, Ltd., No. 12-6317, 2013

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WL 6623874, at *3 (N.D. Cal. Dec. 16, 2013), for the position that waiver of work-product

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immunity only occurs when the disclosure at issue “substantially increased the opportunity for

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the adverse party to obtain the information.” Rembrandt points to several other decisions cited

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in its opposition to Apple’s motion to compel that applied a similar standard. See Ellis v. J.P.

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Morgan & Chase Co., No. 12-3897, 2014 WL 1510884, at *5 (N.D. Cal. Apr. 1, 2014) (Judge

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Joseph C. Spero); Pecover v. Elec. Arts Inc., No. 08-2820, 2011 WL 6020412, at *2 (N.D. Cal.
Dec. 2, 2011) (Judge Bernard Zimmerman); Nidec Corp. v. Victor Co., 249 F.R.D. 575, 580

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For the Northern District of California

United States District Court

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(N.D. Cal. 2007) (Judge Edward M. Chen).

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Rembrandt particularly notes that Pecover, 2011 WL 6020412, at *2, clarified that work

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product disclosed pursuant to a common interest remains subject to work-product immunity

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even if the common interest lacks a legal component. There, the defendant in an antitrust action

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disclosed its work product to an alleged co-conspirator because the action sought to enjoin a

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licensing agreement among the conspirators. Although the co-conspirator had not been named

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as a defendant, the defendant’s commercial relationship with the co-conspirator constituted a

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common interest sufficient to preserve work-product immunity.

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Our court of appeals has not addressed the proper standard for waiver of work-product

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immunity. Whether or not Rembrandt is correct that any common interest suffices to preserve

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work-product immunity — rather than a common legal interest — Rembrandt nevertheless

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waived work-product immunity as to materials covered by Category 3A. As the order on

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Apple’s motion to compel noted, “considerable adversity existed” between Rembrandt and the

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named inventors as they negotiated at arm’s length (Dkt. No. 153 at 14). At that time,

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Rembrandt and the named inventors lacked a common interest, legal or otherwise. Rembrandt

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and the named inventors did ultimately enter into a business relationship, after which their

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interests aligned, but they remained adversaries until Rembrandt acquired an exclusive option to

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purchase the patent. Rembrandt’s disclosure of its attorney work product to the named
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inventors while their interests remained adverse waived work-product immunity as to those

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materials. Accordingly, Rembrandt’s motion for leave to file a motion for reconsideration is

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DENIED.

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In its brief opposing the instant motion, Apple asked the Court to clarify whether

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Rembrandt must produce communications sent from the named inventors to Rembrandt, which

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Apple describes as Category 2A. Apple has again failed to specify whether it is referring to

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communications that reflected or included materials disclosed by Rembrandt to the named

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inventors or protected materials disclosed by the named inventors to Rembrandt. Apple simply
notes that referred to communications “between” Rembrandt and the named inventors

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For the Northern District of California

United States District Court

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generally, rather than specifying the sender or the recipient of any such communications. For

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the reasons discussed above, Rembrandt may not assert work-product immunity over

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communications that included or reflected materials that it disclosed to the named inventors

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prior to when it acquired an exclusive option to purchase the patent, regardless of the sender of

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the particular communication. Apple has not made any argument regarding materials that the

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named inventors first disclosed to Rembrandt, so this order does not address that issue.

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Rembrandt shall complete production consistent with this order no later than FRIDAY,
FEBRUARY 19 AT NOON.

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IT IS SO ORDERED.

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Dated: February 12, 2016.

WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

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