Elan Microelectronics Corporation v. Apple, Inc.

Filing 225

Declaration of Derek Walter In Support of Apple Inc.'s Motion to Compel (1) Discovery Relating to US Sales; (2) Documents Improperly Withheld on the Basis of Privilege; and (3) Inventor Depositions filed byApple, Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 3, # 3 Exhibit 5, # 4 Exhibit 6, # 5 Exhibit 7, # 6 Exhibit 9, # 7 Exhibit 10, # 8 Exhibit 15, # 9 Exhibit 22, # 10 Exhibit 24, # 11 Exhibit 28, # 12 Exhibit 29, # 13 Exhibit 30, # 14 Exhibit 31, # 15 Exhibit 32, # 16 Exhibit 33, # 17 Exhibit 36)(Greenblatt, Nathan) (Filed on 5/31/2011)

EXHIBIT 22

ALSTON&BIRD LLP
275 Middlefield Road, Suite 150
Menlo Park, CA 94025-4004
650-838-2000
Fax:[phone]
www .alston.com

Jane Bu

Direct Dial : 650-838-2019

E-mail: [e-mail]

September 17,2010
VIA E-MAIL

Nathan Greenblatt, Esq.
201 Redwood Shores Parkway
Redwood Shores, CA 94065
Dear Nathan:
I write in response to your September 9,2010 email to Sean DeBruine regarding
Elan's Privilege Logs dated July 1,2010 and September 1,2010. I will address in detail
below each point raised in your email. However, please be mindful that Apple's own
privilege logs dated July 1, 2010 and July 9, 2010 also contain many incomplete entries.
In the second part of my letter, I address these deficiencies and request that Apple correct
these deficiencies within ten days from the receipt of this letter.
Response to Apple's comments
Entries identified by Apple in which an author or recipient appears to be a third
party

As indicated in Elan's privilege logs, many documents (including entry Nos. 262,
263,274-276,280-281,287-288,289,297 and 389-395) were authored by Elan's agents
(e.g. Sinbo) and/or third party contractors (e.g. Chipworks, Inc.). Particularly, many
entries on Elan' s logs refer to Sinbo employees who were in charge of ccrtain markets for
Elan. As functional employees of Elan, these individuals also have Elan email addresses.
As a result, certain entries (e.g. No. 557) contain two email addresses for the same
individual. These individuals were heavily involved in all facets of Elan's operations, as
such, the attorney -client privilege and work product protection apply to privileged
communications with these individuals. See United States v. Graj, 610 F.3d 1148, 115859 (9th Cir. 2010) (when a non-employee is the functional equivalent of an employee, or
an advisor/agent of the company, the company's attorney-client privilege reaches to that
person) . In addition, the communications and documents exchanged between Elan's
agents/contractors and Elan were prepared either under the direction or request of Elan's
counsel, in anticipation of litigation and/or for purposes of seeking or providing legal
advice. !d. Accordingly, these documents and communications are subject to the
protection of attorney-client privilege and/or the work product doctrine.

Atlanta ' Charlotte ' Dallas' Los Angeles' New York' Research Triangle ' Silicon Valley· Ventura County' Washington, D.C.

Nathan Greenblatt, Esq.
September 17, 2010
Page 2

In other instances , the communications from certain entries Apple identified were
not with third parties as characterized by Apple. For example , Fumiaki Karasawa (No.
671) was, in fact, an Elantech employee.
Finally, certain third party communication entries referenced in your email are
subject to the common interest doctrine. These entries reflect Elan attorney-client
privileged information and work product disclosed to the third parties having a common
legal interest with Elan. See Pulse Eng'g, Inc. v. Mascon, Inc., 2009 U.S. Dist. LEXIS
92971, *8 (S.D. Cal. Oct. 1,2009); Britesmile, Inc. v. Discus Dental, Inc. , 2004 U.S.
Dist. LEXIS 20023, *9-10 (N.D. Cal. Aug. 10,2004); Hewlett-Packard Co. v. Bausch &
Lomb, Inc., 115 F.R.D. 308, 309 (N.D. Cal. 1987). Accordingly, these documents and
communications are subject to the common interest / joint privilege protection. However,
to provide further clarification, we will ensure that all of the entries in our privilege log
where we claim the common interest doctrine are clearly stated.
37 sets of redacted documents
Contrary to the allegation in your email, these documents were not improperly
redacted. Most of these documents , authored by Mr. Wayne Chang, the general counsel
of Elan, were standalone work product contained in Elan custodian's files. They were
not email attachments to any third parties. After a reasonable investigation, it appears
that only a few of these documents were attachments to emails. Therefore, Elan will
make the appropriate edits to the corresponding privilege log entries, including
identifying the recipient(s) of the email and the original email. To the extent if any of
these documents were distributed to third parties, as already adequately described in
Elan's logs, the redacted portions are subject to the common interest doctrine because
they were "prepared by Elan for third parties having a common legal interest with Elan,
containing communications with counsel regarding patent analysis in anticipation of
litigation and/or for purposes of seeking/providing legal advice." See !d. Accordingly,
the redacted documents and Elan's privilege logs are in accordance with the relevant laws
governing the common interested doctrine.
Insufficient information regarding author or recipient in the entries

We will look into the entries and make any appropriate adjustment to the privilege
log to the extent that the complete author and/or recipient data can be retrieved within
reasonable efforts.
Opinions concern ing infringement related to Apple patents provided by Elan to
third parties

Similar to the discussion responding to subsections (l) and (2) from your email,
the infringement opinions referenced by you and any otherwise Elan privileged
documents and work product provided to limited recipients from third parties with a

Nathan Greenblatt, Esq.
September 17, 2010
Page 3

common legal interest with Elan are subject to the common interest doctrine. Therefore,
Elan will not produce these opinions. See Pulse Eng'g, Inc., 2009 U.S. Dist. LEXIS
92971, *11 (S.D. Cal. Oct. 1,2009) ("where the disclosing party and the third party share
a common interest, there is no waiver of the work product privilege").
While thisletter set forth Elan's basis of privilege assertion for the identified
documents from subsections (1) to (4) in your email, as a courtesy, we will a) make the
appropriate clarifications and edits discussed above and b) correct any inadvertent errors
if there are any on the privilege logs and the corresponding document's production
designation if necessary.
Finally, as Elan's document production is still ongoing, additional privilege logs
will be produced accordingly.
Deficiencies in Apple's Privilege Logs dated July 1,2010 and July 9, 2010
Entries lacking information regarding author and/or recipient

For the following representative entries, Apple failed to provide information with
respect to author and/or recipient:

No. 111, July 1 Privilege
Log
No. 349, No. 524, 535 of
Apple's July 1 Privilege
Log
No. 197,292 - No. 323,
534 of Apple's July 1
Privilege Log;
No.7 - No. 17 of Apple's
July 9 Privilege Log

No author
No author, no recipient

No recipient

For these and all other entries lacking this information, please provide us the
author and/or recipient information or other data sufficient to support Apple's privilege
assertions.
Entries with insufficient information to reflect whether Apple's legal counsel is
involved

There are many entries contain no Apple legal and/or outside counsel as the
author and/or recipient such that there is insufficient information for Elan to evaluate
Apple's privilege assertion. Representative entries include: Nos. 15, 16,24,25,56,223228,330-334,340-346,348,349,360-380,393,513,523 of Apple's July 1 Privilege

Nathan Greenblatt, Esq.
September 17, 2010
Page 4

Log; Entry Nos. 6-17, 58, 59, 62, 208-215, 224-228. For example, without further
information regarding recipient of the document or the audience of the referenced
keynote presentation in Entry No. 94 of Apple's July 1 Log, Elan simply cannot ascertain
if Apple is entitled to maintain the privilege assertion of this document. Please provide
us additional information to support Apple's privilege assertion for all such entries or
produce these documents accordingly.
Entries claiming only a portion of the document as being privileged, but no redacted
version was produced
Many entries on Apple's privilege logs claim only a portion of the document as
being privileged. Representative entries include Nos . 28-30, 104-105, 197,223-224,523,
534-538 of Apple's July 1 Log and Nos . 6-17, 57-58, 62, 64, 212-215 of Apple's July 9
Log. We request that you produce the redacted versions of these documents immediately
or identify the production number of these documents if they were already produced.
Very truly yours,

Jane Bu
JB:whm

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