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 J

Page 1

PULSE ENGINEERING, INC., a Delaware corporation, Plaintiff, v. MASCON,
INC., a Massachusetts corporation dba ATW SECURITY, Defendants. AND ALL
RELATED COUNTER-CLAIMS.
Civil No. 08cv0595 JM (AJB)
UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF
CALIFORNIA
2009 U.S. Dist. LEXIS 92971

October 1, 2009, Decided
October 2, 2009, Filed
PRIOR HISTORY: Pulse Eng'g, Inc. v. Mascon, Inc.,
2009 U.S. Dist. LEXIS 26885 (S.D. Cal., Mar. 9, 2009)

OPINION BY: Anthony J. Battaglia
OPINION

COUNSEL: [*1] For Pulse Engineering Inc, a Delaware
corporation, Plaintiff, Counter Defendant: David E
Sipiora, Kristopher L Reed, LEAD ATTORNEYS,
Townsend and Townsend and Crew LLP, Denver, CO;
Iris Sockel Mitrakos, LEAD ATTORNEY, Townsend
and Townsend and Crew, San Diego, CA.
For Mascon Inc, a Massachusetts corporation, doing
business as ATW Security, Defendant: Kristopher L
Reed, LEAD ATTORNEY, Townsend and Townsend
and Crew LLP, Denver, CO; Martin J. O'Donnell,
Michael Eric Attaya, Thomas C. O'Konski, PRO HAC
VICE, Cesari and McKenna LLP, Boston, MA; Nelson P.
Lovins, PRO HAC VICE, Lovins & Metcalf, Woburn,
MA; Thomas W Ferrell, Higgs, Fletcher & Mack LLP,
San Diego, CA.
For Mascon Inc, a Massachusetts corporation, Counter
Claimant: Martin J. O'Donnell, Michael Eric Attaya,
Thomas C. O'Konski, PRO HAC VICE, Cesari and
McKenna LLP, Boston, MA; Nelson P. Lovins, PRO
HAC VICE, Lovins & Metcalf, Woburn, MA; Thomas W
Ferrell, Higgs, Fletcher & Mack LLP, San Diego, CA.
JUDGES: Hon. Anthony J. Battaglia, United States
District Court Magistrate Judge.

Order Denying Motion to Compel
The parties contacted the Court regarding a
discovery dispute concerning the redaction of documents
produced to [*2] Plaintiff by the Defendant Mascon, Inc.
The parties filed letters briefs on the issue and lodged the
documents with the Court. The telephonic hearing set for
September 30, 2009 before Judge Battaglia is hereby
vacated as this motion is appropriate for submission on
the papers and without oral argument pursuant to Civil
Local Rule 7.1.d.1. Based upon the parties moving papers
and for the reasons set forth below, the Plaintiff's motion
to compel production of the unredacted emails is hereby
DENIED as the Court finds the redacted portions to be
protected by the work product doctrine and the disclosure
of such information to Magcom employees to be covered
by the common interest exception to waiver.
Background
The redacted documents at issue are email
communications between Alex Song, an employee of
Defendant Mascon, Inc. ("Mascon") and Dennis Lee, an
employee of Magnetic Communications ("Magcom"), a
third party manufacturer that supplies alarm filters to

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2009 U.S. Dist. LEXIS 92971, *2

Mascon. Mascon then sells the alarm filters under the
name "DSL 500". It is these alarm filters that are accused
of infringement in the instant case. The emails at issue
are to and from Mr. Song, who Defendant contends was
working with litigation [*3] counsel and were sent in the
Fall of 2008, after initiation of the this litigation. The
redacted content pertains to the DSL 500 filter and the
current litigation. The email communications between
Mr. Song and Mr. Lee were also received by three other
employees of Mascon and two other employees of
Magcom. The Defendant contends that the redacted
material expressly refers to litigation counsel's thoughts
or actions as conveyed to Mr. Song and therefore falls
within the scope of materials prepared in anticipation of
litigation or trial and are protected work product.
Alternatively, the Plaintiff contends that any privilege
associated with these communications was waived when
they were disclosed to Magcom, a third party supplier
that shares only a commercial relationship with the
Defendant.
Discussion
The instant discovery dispute raises two issues: 1)
whether the redacted emails would qualify for protection
under the work product doctrine, and 2) whether the
common interest exception to waiver is applicable. Since
the common interest doctrine is an anti-waiver exception,
it comes into play only if the communications at issue are
privileged in the first instance.
I. [*4] The Work Product Doctrine
The work product doctrine provides a qualified
immunity for materials prepared in anticipation of
litigation by a party, an attorney, or other representatives
of the party. Hickman v. Taylor, 329 U.S. 495, 67 S.Ct.
385, 91 L.Ed. 451 (1947). In an effort to address the
inconsistent opinions in federal courts after Hickman, in
1970, the Supreme Court adopted Federal Rule of Civil
Procedure 26(b)(3), which provides in relevant part:
[A] party may obtain discovery of
documents and tangible things otherwise
discoverable under subdivision (b)(1) of
this rule and prepared in anticipation of
litigation 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) only upon a showing that

the party seeking discovery has substantial
need of the materials in the preparation of
the party's case and that the party is unable
without undue hardship to obtain the
substantial equivalent of the materials by
other means. Fed.R.Civ.P. 26(b)(3); see
also 1997 Advisory Committee Notes,
Rule 26(b)(3).

Pursuant to Fed.R.Civ.P. 26(b)(3), the following
conditions must be satisfied [*5] by the proponent in
order to establish work product protection: (1) the
material must be a document or tangible thing; (2) it must
be prepared in anticipation of litigation; and (3) it must be
prepared by or for a party, or by or for its representative.
See, e.g. Holmes v. Pension Plan of Bethlehem Steel
Corp., 213 F.3d 124, 138 (3d.Cir.2000). "[T]here is no
work product immunity for documents prepared in the
ordinary course of business prior to the commencement
of litigation." Tayler v. Travelers Ins. Co., 183 F.R.D. 67,
70 (N.D.N.Y.1998).
There are two types of work product recognized,
ordinary work product and opinion work product.
Generally, opinion work product, including the mental
impressions, conclusions, opinions, or legal theories of an
attorney, is entitled to nearly absolute protection.
Holmgren v. State Farm Mutual Auto. Ins. Co., 976 F.2d
573, 577 (9th Cir.1992) (holding that opinion work
product is entitled to nearly absolute protection with
limited exceptions). Ordinary work product, by contrast,
is subject to disclosure upon a showing by the party
seeking discovery of substantial need and an inability to
obtain the materials by other means. See Upjohn, 449
U.S. at 401, 101 S.Ct. 677 [*6] (declining to decide
whether opinion work product is entitled to absolute
protection but recognizing that ordinary work product is
discoverable upon a showing of substantial need and
inability to obtain materials without undue hardship). The
burden of establishing protection of materials as work
product is on the proponent, and it must be specifically
raised and demonstrated rather than asserted in a blanket
fashion. See Holmes, 213 F.3d at 138; Shiner v. Am.
Stock Exch., 28 F.R.D. 34, 35 (S.D.N.Y.1961); Tayler,
183 F.R.D. at 69.
In the instant case, the Defendant, Mascon, contends
that the redacted emails are protected work product. The
Defendant argues that the emails were sent to and from

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2009 U.S. Dist. LEXIS 92971, *6

Alex Song, a Mascon employee working with litigation
counsel regarding the DSL 500 alarm filter that was
developed and manufactured by Magcom and alleged to
infringe by the Plaintiff in this case. The Defendant
contends that the redacted portions of the emails refer
directly to litigation counsel's thoughts and/or actions
regarding the DSL 500 alarm filter, which were
communicated to Mr. Song. As such, the
communications would satisfy the requirements of Fed.
R. Civ. P. 26(b)(3), to establish work [*7] product
protection because: (1) the emails are a document or
tangible thing; (2) the emails were prepared in
anticipation of litigation; and (3) the emails were
prepared by or for a party, or by or for its representative.
See, e.g. Holmes v. Pension Plan of Bethlehem Steel
Corp., 213 F.3d 124, 138 (3d.Cir.2000).

on waiver where communications are disclosed to third
parties. See United States v. Bergonzi, 216 F.R.D. 487,
495-96 (N.D.Cal.2003) (discussing "the common interest
exception to waiver of the attorney-client/work product
privilege"). "The common interest privilege ... applies
where (1) the communication is made by separate parties
in the course of a matter of common [legal] interest; (2)
the communication is designed to further that effort; and
(3) the privilege has not been waived." 2

II. Waiver and the Common Interest Doctrine

The Plaintiff's contention that the common interest
exception should not apply in the instant case because the
commercial nature of the communications predominates
and any concern about litigation is ancillary is not
supported by the documents lodged with this Court. The
Court has reviewed the parties arguments and the
unredacted emails lodged with chambers and while the
Court agrees with Plaintiff that there is a commercial
interest that exists between the Mascon and Magcom, the
inquiry does not end there. The existence of a commercial
interest does not preclude the exist on a common legal
interest sufficient to invoke the common interest
exception to waiver. Review of the emails indicates
action and various tests being conducted by Magcom at
the request of Mascon litigation counsel due to the
pending litigation. Furthermore, the common interest
doctrine protects communications made when a nonparty
sharing the client's interests is present at a confidential
communication between attorney and client and this is
precisely [*10] what happened in one of the emails at
issue which references a conference call between
Mascon's employees and litigation counsel and Magcom
employees discussing the infringing device. See United
States v. Zolin, 809 F.2d 1411, 1417 (9th Cir.1987)
overruled on other grounds by United States v. Jose, 131
F.3d 1325 (9th Cir.1997).

The second issue raised in the parties' letter briefs is
whether or not there was a waiver of the work product
doctrine by the Defendant as a result of the
communication of the information to a third party. The
Defendant contends that the common interest exception
to the rule on waiver applies because: 1) the emails were
sent after the initiation of the instant litigation alleging
infringement by the alarm filters; and 2) the Defendant
Mascon and the third party Magcom share a common
legal interest in the DSL 500 alarm filter that is alleged to
infringe by the Plaintiff, because it was developed and
manufactured by Magcom and purchased by Defendant
Mascon.
Alternatively, the Plaintiff argues that the common
interest doctrine does not apply because: 1) the
relationship between Defendant Mascon and third party
Magcon is purely commercial [*8] in nature; 2) the
Defendant Mascon previously characterized its
relationship with Magcom as supplier-customer in
response to the Plaintiff's request to depose individuals at
Magcom and to allow the Defendant to now change this
characterization of the relationship would unfairly
prejudice the Plaintiff; and 3) that the overriding purpose
of the communications was the re-design of a commercial
product, not the present litigation and such joint business
strategies that happen to include as one of its elements a
concern about litigation is not sufficient to invoke the
exception.
The common interest doctrine1 is not a privilege in
and of itself, rather, it constitutes an exception to the rule

2 Id. at 495; Burroughs v. DeNardi, 167 F.R.D.
680, 685 (S.D. Cal.1996); [*9] In re Grand Jury
Subpoenas, 902 F.2d 244, 249 (4th Cir.1990);
Killebrew v. City of Greenwood, 1997 WL
208140, at *2, 1997 U.S. Dist. Lexis 10065, at *5
(N.D. MS 1997).

Furthermore, "[t]he work product privilege should
not be deemed waived unless disclosure is inconsistent
with maintaining secrecy from possible adversaries." Stix
Prods. v. United Merchants & Mfrs., 47 F.R.D. 334, 338
(S.D.N.Y.1969). "The work product privilege is not
automatically waived by any disclosure to third persons.

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2009 U.S. Dist. LEXIS 92971, *10

Rather, the courts generally find a waiver of the work
product privilege only if the disclosure 'substantially
increases the opportunity for potential adversaries to
obtain the information.'" In re Pfizer Inc. Sec. Litig., No.
90 Civ. 1260, 1993 U.S. Dist. LEXIS 18215, 1993 WL
561125, at *6 (S.D.N.Y. Dec.23, 1993) (quoting In re
Grand Jury, 561 F. Supp. 1247, 1257 (E.D.N.Y.1982))
(internal citation omitted). Implicit in this analysis is the
question of whether the third party itself can or should be
considered an adversary. Accordingly, courts have
generally held that [*11] where the disclosing party and
the third party share a common interest, there is no
waiver of the work product privilege. E.g., id.
("Disclosure of work product to a party sharing common
interests is not inconsistent with the policy of privacy
protection underlying the doctrine."); see also In re
Copper Mkt. Antitrust Litig., 200 F.R.D. 213, 221 n. 6
(S.D.N.Y.2001) (same).

patent infringement litigation, the parties common legal
interest predominates. First Pacific Networks, Inc. v.
Atlantic Mut. Ins. Co., 163 F.R.D. 574, 581 (N.D. Cal.,
1995).
Conclusion
Based upon the foregoing and for the reasons set
forth herein, Plaintiff's motion to compel production of
the unredacted emails is hereby DENIED as the Court
finds the redacted portions to be protected by the work
product doctrine and the disclosure [*12] of such
information to Magcom employees to be covered by the
common interest exception to waiver.
IT IS SO ORDERED.
DATED: October 1, 2009
/s/ Anthony J. Battaglia

It is clear from the record that Mascon and Magcom
share a common interest with regard to the alleged
infringing device, and Magcom's close relationship to the
Defendant and the suit at bar must be recognized. Stanley
Works v. Haeger Potteries, Inc., 35 F.R.D. 551 (N.D. Ill.,
1964). In this setting of joint analysis of the accused
device by the customer and manufacturer in the midst of

Hon. Anthony J. Battaglia
U.S. Magistrate Judge
United States District Court