Elan Microelectronics Corporation v. Apple, Inc.

Filing 306

Declaration of Derek C. Walter in Support of Apple's Reply to Elan's Opposition to Motion to Compel filed byApple, Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit I, # 10 Exhibit J, # 11 Exhibit K)(Mehta, Sonal) (Filed on 6/21/2011)

Exhibit A

Page 1

AT&T CORP., Plaintiffs, v. MICROSOFT CORP., Defendants.
No. 02-0164 MHP (JL)
UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF
CALIFORNIA
2003 U.S. Dist. LEXIS 8710

April 18, 2003, Decided
DISPOSITION: [*1] AT&T's motion to compel third
party DSP's production of documents DENIED; AT&T's
motion for in camera review of documents DENIED.

COUNSEL: For Richard Ringgold, Plaintiff: David R.
Donadio, Brayton & Purcell, Novato, CA.
For General Motors Corporation, DaimlerChrysler
Corporation, Defendants: Philip R. Cosgrove, Grace
Genson Cosgrove & Schirm, Los Angeles, CA.
For Ford Motor Company, Defendant: Eugene Brown,
Jr., Filice Brown Eassa & Mcleod, Oakland, CA.
JUDGES: James Larson, United States Magistrate Judge.
OPINION BY: JamesLarson
OPINION

ORDER DENYING AT&T'S MOTION TO
COMPEL PRODUCTION OF DOCUMENTS 82, 83,
92, AND 95 FROM THIRD PARTY DSP
Introduction
Plaintiff AT&T Corporation's motion to compel
production of documents from third party DSP Group,
Inc., came on for hearing on March 26, 2003. Appearing
for AT&T was Scott Devereaux Appearing for third party

DSP were Daphne Butler and Richard Kim.
Factual Background
AT&T Corp. ("AT&T") filed suit against Microsoft
Corp. ("Microsoft") for infringement of U.S. Patent No.
32,580 ("the '580 patent"). The '580 patent relates to
speech coding technology. Essentially, the invention is
[*2] a method that significantly reduces the size of a
sound file containing a speech recording. Smaller file size
allows for faster transfer times across a network, as well
as occupying less space on a storage device. The current
applications utilizing the smaller sound files are digital
cellular phones, computer software, audio video
conferencing, voice messaging, and Internet voice
communications.
Microsoft is accused of implementing an infringing
speech
coding
technology
known
as
TrueSpeech(R)CODEC (TrueSpeech) into Microsoft
products, such as Windows 95. TrueSpeech was
developed by DSP Group, Inc. ("DSP") and licensed to
Microsoft. DSP is a California corporation with offices in
Santa Clara, California. Under a 1993 licensing
agreement with Microsoft, DSP is obligated to indemnify
Microsoft in the case of an infringement suit. AT&T
claims that TrueSpeech infringes upon AT&T's own
speech compression technology. AT&T asserts that
Microsoft has infringed the '580 patent through sales of
the software containing TrueSpeech.
Procedural Background

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2003 U.S. Dist. LEXIS 8710, *2

On June 4, 2001, AT&T filed suit against Microsoft
in U.S. District Court for the Southern District of New
York. An amended complaint [*3] was filed on or about
February 19, 2002. AT&T served DSP with a subpoena
for production of documents and deposition testimony on
February 12, 2002. In a letter dated September 18, 2002,
plaintiff's counsel requested that DSP produce certain
documents originally designated as privileged. DSP
complied but did not produce all the requested
documents. Instead, DSP asserted privilege and work
product for the four documents not produced (82, 83, 92
and 95).
Two of the four documents in question (82 and 83)
are e-mails and two are technical memoranda (92 and 95)
that initially were only between employees of DSP.
These were later forwarded to in-house counsel. The
e-mails contain discussions between DSP employees
relating to the litigation between AT&T and Microsoft.
DSP was aware of the litigation and analyzed AT&T's
patent to determine the extent of plaintiff's rights under
the '580 patent.
On December 30, 2002, AT&T filed a motion to
compel production of the four "privileged" documents.
This case was assigned to Chief Judge Marilyn Hall Patel
and was referred to Judge Larson on January 2, 2003 for
disposition of this motion to compel.
Analysis
Plaintiff AT&T raises these questions: [*4] 1) Are
documents that do not contain confidential attorney-client
communications subject to the attorney-client privilege?
2) Do non-privileged documents become privileged when
they are sent to in-house counsel? 3) May DSP, a
nonparty to the underlying patent infringement litigation,
assert the work product doctrine in contravention of
Ninth Circuit Authority?
I. DSP's Burden to Prove Privilege and the Prima
Facie Case
Once the privilege is invoked, the party asserting it
must make a prima facie showing that the privilege
protects the documents in question. In re Grand Jury
Investigation, 974 F.2d 1068, 1070-71 (9th Cir.1992); see
also Federal Rule 26(b)(5) (requiring an express claim of
privilege, the grounds upon which it is based, and
disclosure of sufficient information to determine the
applicability of the privilege). A privilege log is "one

means by which a party can establish the [applicability of
a] privilege." In re Community Psychiatric Centers, 1993
WL 497253 at *4 (C.D. Cal.); see also, In re Grand Jury,
974 F.2d at 1071. The log itself must contain "at least the
following: (a) the attorney and client [*5] involved, (b)
the nature of the document, (c) all persons or entities
shown on the document to have received or sent the
document, (d) all persons or entities known to have been
furnished the document or informed of its substance, and
(e) the date the document was generated, prepared, or
dated." Community Psychiatric Centers, 1993 WL
497253 at *4 (C.D.Cal.). Additionally, specific
information is necessary to determine the sufficiency of
the log. Alexander Black, Annotation, What Corporate
Communications are Entitled to Attorney-Client
Privilege-Modern Cases, 27 A.L.R.5th 76 (1995).
Under Federal Rule 26(b)(5) the burden of proving
the attachment of privilege to each document is on DSP.
See Clarke v. Am. Commercial Nat'l Bank, 974 F.2d 127,
129 (9th Cir.1992). Considering DSP's log, it lists: (a)
sender: A. Berstein and recipients: Y. Cohen and attorney
A. Macpherson; (b) the type of document: e-mails; (c)
and (d) the identities of all parties who have received or
reviewed the documents; and (e) that the e-mails are
dated August 16 and 22, 1995. Additionally, DSP's log
has gone beyond the requirements of Dole and also
identifies [*6] the subject matter of the documents.
Therefore, DSP satisfies the prima facie showing required
under Dole and In re Grand Jury. See In re Grand Jury
Investigation, 974 F.2d 1068 (9th Cir.1992).
In addition to a privilege log, the party claiming
privilege should produce affidavits describing the
confidential nature of the documents. In re Grand Jury,
974 F.2d 1068 at 1071. DSP produced affidavits along
with its motion to compel. In their affidavits, Alberto
Berstein (Research Engineer) and Ze'ev Roth (Digital
Signal Processing Manager), attest to their review of
AT&T's patents and consultations with legal counsel.
These affidavits and the specificity of the descriptions in
the privilege log, at least with respect to documents 82,
83, and 92, answer any questions AT&T may have
concerning the content of the documents. See 974 F.2d at
1071. Therefore, DSP makes its prima facie case but still
must show that privilege applies to each document. See
Federal Rule 26(b)(5); see also, Clarke v. Am.
Commercial Nat'l Bank, 974 F.2d at 129.
II. Attorney-Client Privilege

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2003 U.S. Dist. LEXIS 8710, *6

The Ninth Circuit privilege test involves the nature,
[*7] the content, and the context in which documents
were prepared. See Bio-Rad Lab., Inc. v. Pharmacia, Inc.,
130 F.R.D. 116, 126 (N.D.Cal. 1990). Whether an
attorney-client privilege protects the documents in
question is a mixed question of law and fact and subject
to de novo review. See In re Grand Jury Investigation,
974 F.2d at 1070. The attorney-client privilege has eight
essential elements: "1) where legal advice of any kind is
sought; 2) from a legal adviser in his capacity as such; 3)
the communications relating to that purpose; 4) made in
confidence; 5) by the client; 6) are at his instance
permanently protected; 7) from disclosure by himself or
by the legal adviser; 8) unless the protection be waived."
In re Grand Jury, 974 F.2d at 1071 fn. 2; see also United
States v. Chevron Corp., 1996 U.S. Dist. LEXIS 4154,
1996 WL 264769 at *5 (N.D.Cal. 1996).
A. Application of Attorney-Client Privilege to DSP's
Documents
Communications between non-lawyer employees
about matters which the parties intend to seek legal
advice are likewise cloaked by attorney-client privilege.
U.S. v. Chevron Texaco Corp.; 241 F. Supp. 2d 1065,
2002 U.S. Dist. LEXIS 24970, *27-28 (N.D. Cal. Mar.
25, 2002). [*8] The only question to consider is whether
DSP intended to seek legal advice of any kind over the
subject matter contained in the memoranda? See Upjohn
v. United States, 449 U.S. 383, 396, 66 L. Ed. 2d 584,
101 S. Ct. 677 (1981); In re Grand Jury, 974 F.2d at
1071 fn. 2; see also United States v. Chevron Corp., 1996
U.S. Dist. LEXIS 4154, 1996 WL 264769 at *5
(N.D.Cal. 1996). Consequently, DSP must show an
intention to seek legal advice on the matters which Mr.
Berstein was asked to investigate.
Communications containing information compiled
by corporate employees for the purpose of seeking legal
advice and later communicated to counsel are protected
by attorney-client privilege. Upjohn at 394-95. As long as
the legal implications were understood at the beginning at
the inquiry and the communications were covered by a
veil of confidentiality, then the privilege attaches. See
Upjohn, at 394-95. In the instant case, documents 82 and
83 contain analysis and discussions of AT&T's patents:
matters upon which DSP intended to seek legal advice.
The documents were never produced to anyone outside of
DSP, except for outside counsel. Therefore, [*9]
although Mr. Berstein was acting at the direction of

corporate executives to investigate AT&T's patents,
documents 82 and 83 are still privileged because they
address matters upon which DSP intended to seek legal
advice. They were not produced merely for business
purposes.
Next, document 92 is a memorandum that was
created after Ze'ev Roth had met with corporate counsel
concerning AT&T's infringement allegations. Roth's
memorandum was written after a meeting with DSP's
corporate counsel to discuss AT&T's infringement claims
in January 2000. The memorandum compared the '580
patent to DSP's technology. The fact that Roth's memo
came after a meeting with corporate counsel strongly
suggests that it was prepared at the behest of corporate
counsel. Attorney-client privilege protection is available
to the same extent as it was in Larson v. Harrington. See
Larson v. Harrington, 11 F. Supp. 2d 1198, 1203 (E.D.
Cal.1998) [holding that attorney-client privilege protects
notes or memoranda created at the behest of counsel].
Moreover, Roth's memo contains technical analysis or
comparison of AT&T's patents to DSP's technology that
was later reviewed and likely relied upon by [*10]
counsel.
Consequently, document 92 is privileged.
"Communication between a client and its outside
counsel are presumed to be made for the purposes of
obtaining legal advice." U.S. v. Chevron Texaco Corp.,
241 F. Supp. 2d 1065, 1073 (N.D. Cal. 2002) [citing U.S.
v. Chen, 99 F.3d 1495 (9th Cir. 1996). Arguably, DSP's
employees (Berstein and Cohen) were seeking the advice
of counsel after investigating the technical aspects of
AT&T's patents. Berstein had contacted Mr. MacPherson,
DSP's patent counsel, shortly after Berstein and Cohen
completed their analysis. At this point, there was some
attempt by Berstein on behalf of DSP to obtain legal
advice from Mr. MacPherson. Mr. MacPherson is
described in DSP's papers as its outside counsel and
likely provides regular advice to DSP regarding
intellectual property issues. The communications between
Berstein and MacPherson were made in relation to DSP's
seeking a legal analysis of AT&T's patents.
Document 95 is a drawing or technical document
that was prepared by Mr. Roth to explain or supplement
document 92. In his declaration Mr. Roth's description of
Document 95 at best depicts it as an attachment to
document [*11] 92. See Roth's Declaration at 13. An
attachment must qualify on its own for attorney-client

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2003 U.S. Dist. LEXIS 8710, *11

privilege and "must be listed as a separate document on
the privilege log." O'Connor v. Boeing North American,
Inc. 185 F.R.D. 272, 280 (C.D.Cal. 1999). Therefore,
document 95 must qualify on its own to be protected by
attorney-client privilege.
Technical information "primarily concerned with
giving legal guidance" remains privileged. Jack Winter,
Inc. v. Koratron Co., 54 F.R.D. 44, 46 (N.D. Cal. 1971).
Where the technical documents meet the normal
requirements of attorney-client privilege, they are
protected. See Space Systems/Loral, Inc. v. Lockheed
Martin Corp., 1999 U.S. Dist. LEXIS 10602, 1999 WL
33268060 *2 (N.D. Cal. 1999) [citing with approval
Knogo Corp. v. U.S., 213 U.S.P.Q. 936, 1980 U.S. Ct. Cl.
LEXIS 1262, 1980 WL 39083, (Ct.Cl. Trial Div., 1980).
In addition to the normal requirements that the
communication are between an attorney and client, the
court in Knogo also considered the following factors: 1)
the communication relates to a fact of which the attorney
was informed: (a) by his client; (b) without the presence
of strangers; (c) [*12] for the purposes of securing
primarily: (1) an opinion of law; or (ii) legal services; or
(iii) assistance is some legal proceeding; and (d) not for
the purposes of committing a crime or tort; and (2) the
privilege has been claimed and not waived by the client.
See Space Systems/Loral, Inc. v. Lockheed Martin Corp.,
1999 WL 33268060 *2 (N.D. Cal. 1999) [citing Knogo,
213 U.S.P.Q. at 938].
In the instant case, document 95 is described as
relating to the facts that were discussed by Roth and
DSP's corporate counsel and were later incorporated into
document 92. Roth was seeking the legal opinion or
advice of attorneys Brun and Barkai and created
documents 92 and 95 at the behest of those attorneys.
Though document 95 is technical in nature, this does not
mean that Roth could not have sought legal advice about
its content. The drawing's connection to the subject
matter of document 92 implies that document 95
contained matters upon which DSP intended to seek legal
advice. Neither document 95 nor 92 was ever shown to
anyone outside of DSP except DSP's outside patent
counsel; thus, maintaining a veil of confidentiality.
Despite the conclusory nature of [*13] Roth's affidavit,
there is enough evidence suggesting that Roth intended to
seek legal advice upon the matters contained in document
95. Therefore, it too is privileged.
B. Confidentiality

Attachment of the attorney-client privilege also
depends on whether confidentiality was properly
maintained by the company and corporate counsel. U.S.
v. Chevron Texaco Corp., 241 F. Supp. at 1074. In the
case at bar, there is no evidence suggesting that DSP
made its analysis of AT&T's patents available to anyone
outside of the company or to Microsoft. Therefore, there
is no reason to believe the privilege has been waived or
compromised and documents 82, 83, 92, and 95 are
protected by attorney-client privilege.
III. DSP'S Work Product Assertion
Federal Rule 26(b)(1) allows discovery "regarding
any matter, not privileged, that is relevant to the claim or
defense of any party. . . ." However, Rule 26(b)(3) has
three requirements that must be met before work product
protection applies, "the material in question must be: 1) a
document or tangible thing, 2) which was prepared in
anticipation, and 3) was prepared by or for a party, or by
or for its representative." In re Community Psychiatric
Centers, 1993 WL 497253 *5 C.D.Cal. (Sept. 15, 1993).
[*14] Upon satisfaction of all three requirements, the
burden then shifts to the party seeking production to
show necessity of the documents under Rule 26(b)(3).
See U.S. v. Chevron Texaco, Corp., 241 F. Supp. 2d
1065, 2002 U.S. Dist. LEXIS 24970, *38 N.D.CA.
(March 25, 2002).
A. Document or Tangible Thing
The materials in dispute are documents, and there is
no issue as to whether this element is satisfied.
B. Prepared in Anticipation of Litigation
This element is satisfied "if in light of the nature of
the document and the factual situation in the particular
case, the document can fairly be said to have been
prepared or obtained because of the prospect of
litigation." Chevron Texaco, 241 F. Supp. 2d 1065, 2002
U.S. Dist. LEXIS 24970 at *41 [internal quotations
omitted]. Additionally, "except where a document would
have been generated in the normal course of business
even if no litigation was anticipated, the work product
doctrine can reach documents prepared because of
litigation even if they were prepared in connection with a
business transaction or also served a business purpose."
241 F. Supp. 2d 1065, Id. at *43 [internal [*15]
quotations omitted]. Therefore, this standard implies at
least three things, 1) that there must have been a

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2003 U.S. Dist. LEXIS 8710, *15

reasonable belief that litigation would arise; 2) that the
document was born out of or connected to the belief or
expectation that litigation would arise, as well as a
reasonable connection in time to the litigation or threat
thereof; and 3) documented legal or business analysis
connected to the litigation or expectation of litigation. See
241 F. Supp. 2d 1065, id. at *42-4.
In the instant case, DSP claims documents 92 and 95
are related to AT&T's patent suit against Microsoft.
According to the declaration of Ze'ev Roth, documents 92
and 95, the technical memoranda and drawing
respectively, were created in January 2000 after Roth had
met with corporate attorneys Brun and Barkai to discuss
AT&T's claims of infringement on the '580 patent. The
memorandum (document 92) comparing AT&T's speech
recognition program to DSP's was written by Roth and is
dated January 17, 2000.
AT&T's original complaint was filed sometime
between January 1999 and January 2000. The memo is
titled "AT&T vs. TrueSpeech 8.5 Patent Technical
Analysis." The title alone implies that the document
contains some formal analysis [*16] reasonably
connected to the litigation or imminent threat of litigation
based on the '580 patent. Therefore, this element is
satisfied.
At oral argument DSP's counsel, Ms. Butler,
explained with respect to document 95, that this technical
document was created to clarify Roth's memoranda.
Document 95 was created during the same time period as
document 92, or sometime after DSP was aware of
AT&T's infringement claims. There is no evidence that
document 95 was prepared for a reason other than
anticipation of the litigation. Consequently, document 95
also satisfies this element.
C. Party or Party Representative
Rule 26(b)(3) provides that material prepared "in
anticipation or for trial by or for another party or by or for
that other party's representative (including the other
party's attorney, consultant, surety, indemnitor, insurer, or
agent)" may be protected by work-product privilege.
Where a non-party "is in substance equally concerned
with the outcome" of litigation and documents are created
with an "eye toward litigation," then the attorney-work
product privilege applies. See Stanley Works v. Haeger
Potteries, Inc., 35 F.R.D. 551, 554 (N.D. Ill. 1964)
(holding [*17] that a non-party was entitled to the

protection of the attorney-work product doctrine by virtue
of a licensing agreement giving a non-party an interest in
the litigation equal to a party defendant). DSP is as
equally concerned as Microsoft with the outcome of this
litigation because the suit involves DSP's technology.
Other federal courts have held that "it is necessary
that the doctrine protect material prepared by agents for
the attorney as well as those prepared by the attorney
himself." Taylor v. Temple & Cutler, 192 F.R.D. 552,
556 (E.D. Mich. 1999). Where an attorney "must rely on
the assistance of investigators and other agents in the
compilation of materials in preparation for trial," the
privilege most assuredly lies. See 192 F.R.D. at 556. In
the case at bar, document 92 was created by a DSP
engineer after DSP learned of AT&T's allegations of
infringement. Mr. Roth in his memo (document 92)
analyzed DSP's technology against AT&T's patent and
was later reviewed by DSP's Israeli corporate counsel. A
strong inference exists that Roth's memo was relied upon
by DSP's counsel to formulate a legal position with
respect to AT&T's complaint. Therefore, [*18] under
Federal Rule 26(b)(3) and the case law cited above, the
work product doctrine applies to documents 92 and 95.
D. The Burden Shifts Back to AT&T to Demonstrate
Substantial Need for Documents 92 and 95.
Under Federal Rule 26(b)(3), once a party meets the
three requirements for work product protection, the
burden then shifts back to the party seeking discovery to
present a substantial need for the documents. There are
two requirements for the substantial needs test: 1) the
party has substantial need of the materials to prepare the
party's case, and 2) the party is unable without undue
hardship to obtain the substantial equivalent of the
materials by other means. See Federal Rule 26(b)(3); see
also, Taylor, 192 F.R.D. at 557. The analysis employed
by the Taylor case is instructive in this regard. Taylor
states that if the party seeking production could elicit the
same information through deposition, then the need for
the documents is diminished, unless there is undue
hardship. See 192 F.R.D. at 557-58 (citing In re
International Systems and Controls Corp., 693 F.2d 1235
(5th Cir. 1982). Undue hardship is demonstrable [*19] if
witnesses are unavailable or cannot recall the events in
question. See 192 F.R.D. at 558. Therefore, AT&T has
the burden of proving that the information sought is
undiscoverable other than by production of documents 92
and 95. AT&T has not met this burden.

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2003 U.S. Dist. LEXIS 8710, *19

The test is not only relevancy, but that there are no
other available means by which to secure the same
information. See 192 F.R.D. at 557-58. Therefore, failing
a showing by AT&T of a substantial need for documents
92 and 95 or that the same information is not obtainable
through some other means of discovery such as
depositions, the documents are privileged.
IV. Waiver of Attorney Client and Work Product
Privileges
AT&T asserts that DSP waived the attorney-client
privilege and work product immunity by acting on
"behalf" of Microsoft. AT&T's argument relies on the
contention that DSP is acting as Microsoft's attorney in
this litigation. However, this argument falls far short of
defeating any of DSP's attorney-client and work product
claims.
AT&T cites numerous published and unpublished
opinions holding that reliance upon the advice of counsel
defense results in the waiver of attorney-client and
attorney work products [*20] privileges. In each
instance, the party asserting the defense was the actual
party in the litigation. See generally, Electro Scientific
Idus. v. General Scanning, Inc., 175 F.R.D. 539 (N.D.
Cal. 1997); Handgards, Inc. v. Johnson & Johnson, 413
F. Supp. 926 (D.C. Cal. 1976); Dunhall Pharm., Inc. v.
Discus Dental, Inc., 994 F. Supp. 1202 (C.D. Cal. 1998).
Further, the waiver of the privilege only applied to the
party putting the advice of counsel defense into issue.
Handgards, 413 F. Supp. at 929; Dunhall, 994 F. Supp.
at 1204-06. AT&T does not cite and this court could not
locate any precedent that allows a party in the litigation to
waive the privilege claims of a third party through the
assertion of an advice of counsel defense.
Further, waiver only occurs when the party asserting
advice of counsel has made the defense an issue in the
case. Handgards, 413 F. Supp. at 929 (holding that the
"deliberate injection of the advice of counsel into a case
waives" the privileges relating to documents that are the
subject of the advice). DSP has not asserted the advice of
counsel defense. Microsoft [*21] may not unilaterally
waive DSP's privileges because it is not the holder of the
privilege. See In Re Auclair, 961 F.2d 65, 70-71 (5th Cir.
1992) (holding that a joint party's waiver of privilege
could not effect a waiver of the other joint party's
privilege).
Only the alleged infringer's actual reliance on advice

of counsel generates the defense and the accompanying
waiver of privilege. An assertion of the defense means
the alleged infringer intends to rely on attorney-client
communications to support the advice of counsel defense
and put it at issue. See Beneficial Franchise Co., Inc. v.
Bank One, 205 F.R.D. 212, 215 (N.D. Ill. 2001) [citing
with approval Rhone-Poulenc Rorer, Inc. v. Home
Indemnity Co., 32 F.3d 851 (3d. Cir. 1994)]. There was
no waiver because Microsoft did not know about DSP's
investigations or opinions formulated by DSP's counsel.
Microsoft did not rely upon the opinions of DSP's legal
counsel. Therefore, Microsoft could not have relied upon
documents and advice about which it had no knowledge.
Even if DSP had made the documents available to
Microsoft, this does not vitiate DSP's attorney-client or
work product [*22] privilege claims. Where parties have
a common interest or joint defense, the privilege is not
waived by the mere sharing of information. Transmirra
Products Corp., v. Monsanto Chemical Co., 26 F.R.D.
572, 577 (S.D.N.Y 1960); see also, Beneficial, 205
F.R.D. at 215-16 (N.D. Ill. 2001). Consequently, AT&T's
arguments regarding waiver are untenable.
V. DSP'S Rule 45(c)(3)(B) Claim
Rule 45(c)(3)(B) states that "trade secrets or other
confidential research, development, or commercial
information . . ." are protected from disclosure. A party
asserting a Rule 45 privilege must show that the
information is a trade secret or confidential and
demonstrate that its disclosure might be harmful. See R &
D Business Systems v. Xerox Corp., 152 F.R.D. 195,
196-97 (D.Colo., 1993). Once this has been established,
then the burden shifts to the party requesting production
to show the relevance and necessity of the documents to
the case. See Id. at 197.
AT&T shows neither that the information sought is
unobtainable through other means nor that DSP's
documents will yield information relevant or necessary to
its claims against [*23] Microsoft. For these reasons
DSP asserted attorney client and work product privilege.
Since DSP has established both attorney-client and work
product privilege, there is no need to further analyze the
merits of DSP's assertion under Rule 45(c)(3)(B).
VI. In Camera Review
Whether in camera review is appropriate is a mixed
question of law and fact and is reviewed de novo. See In

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2003 U.S. Dist. LEXIS 8710, *23

re Grand Jury Investigation, 974 F.2d at 1071. The
threshold requirement is that a party demonstrate "a
factual basis adequate to support a good faith belief by a
reasonable person, that in camera review of the materials
may reveal evidence to establish the claim. . .." 974 F.2d
at 1072. This threshold is purposely low to "prevent
abuse of privilege and to ensure that mere assertions of
the attorney-client privilege will not become sacrosanct."
974 F.2d at 1072 (citing Caldwell v. District Court, 644
P.2d 26, 33 (Colo. 1982). Even though the claim of
privilege is not compromised by in camera review this
does not mean that in camera review is automatic. 974
F.2d at 1072.
This court has discretion whether or not to order in
camera review. See Royal Surplus Lines Ins. Co. v.
Sofamor Danek Group, Inc., 190 F.R.D. 463, 486-87
(W.D. Tenn. 1998). [*24] The court is satisfied that
DSP's privilege log and affidavits sufficiently

demonstrate the basis for an assertion of privilege.
Therefore, there is no need to conduct in camera review.
Conclusion
For the above reasons, AT&T's motion to compel
third party DSP's production of documents 82, 83, 92 and
95 is DENIED. In addition, AT&T's motion for in
camera review of documents 82, 83, 92 and 95 is
DENIED.
IT IS SO ORDERED.
DATED: April 18, 2003
//s//
James Larson
United States Magistrate Judge