Elan Microelectronics Corporation v. Apple, Inc.

Filing 421

Response re 406 Objection APPLE INC.'S RESPONSE TO ELAN MICROELECTRONICS CORPORATION'S OBJECTIONS TO NON-DISPOSITIVE RULING OF MAGISTRATE JUDGE byApple, Inc.. (Greenblatt, Nathan) (Filed on 9/9/2011)

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MATTHEW D. POWERS (Bar No. 104795)
[e-mail]
TENSEGRITY LAW GROUP LLP
201 Redwood Shores Parkway, Suite 401
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: [phone]
JARED BOBROW (Bar No. 133712)
[e-mail]
SONAL N. MEHTA (Bar No. 222086)
[e-mail]
DEREK C. WALTER (Bar. No. 246322)
[e-mail]
NATHAN GREENBLATT (Bar No. 262279)
[e-mail]
WEIL, GOTSHAL & MANGES LLP
Silicon Valley Office
201 Redwood Shores Parkway
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: [phone]

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Attorneys for Defendant and Counterclaim Plaintiff
Apple Inc.

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN FRANCISCO DIVISION

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ELAN MICROELECTRONICS
CORPORATION,

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Plaintiff and Counterclaim
Defendant,

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v.
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Case No. C-09-01531 RS (PSG)
APPLE INC.’S RESPONSE TO ELAN
MICROELECTRONICS
CORPORATION'S OBJECTIONS TO
NON-DISPOSITIVE RULING OF
MAGISTRATE JUDGE
(DOCKET NO. 406)

APPLE INC.,
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Defendant and Counterclaim
Plaintiff.

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APPLE INC.’S RESPONSE TO ELAN'S OBJECTIONS TO
NON-DISPOSITIVE RULING OF MAGISTRATE JUDGE

Case No. C-09-01531 RS (PSG)

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I.

INTRODUCTION

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Magistrate Judge Grewal acted well within his discretion in finding Elan’s privilege

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claims waived for Elan’s internal communications with its in-house IPR Department comprised

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of non-lawyers. As Magistrate Judge Grewal noted, Elan’s privilege logs did not indicate any

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involvement of any U.S. counsel for the communications at issue until after Apple filed its motion

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to compel. Order Granting-in-Part Defendant Apple Inc.’s Motions to Compel (Dkt No. 382)

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(“Order”) at 9. Only after briefing on Apple’s motion to compel was complete and on the eve of

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the hearing on that motion did Elan suddenly, conveniently assert that “all communications

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involving the in-house IPR department previously withheld on the basis of privilege also included

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an unnamed U.S. counsel.” Id.

Accordingly, on Friday evening before the July 4th holiday

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(with a hearing on Apple’s motion to compel scheduled for 10 am on July 5th), Elan served

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“second revisions” to its privilege logs withdrawing or changing privilege assertions on hundreds

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of documents. In some cases, Elan had originally described documents as privileged (e.g.,

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“prepared at direction of Elan legal department and/or counsel in anticipation of litigation and/or

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for purposes of seeking/providing legal advice”) only to unceremoniously drop its privilege

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assertions and agree to produce the documents. In other cases, Elan simply changed descriptions

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to “[i]rrelevant and non-responsive.” In yet other cases, Elan provided revised descriptions,

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including identifying for the first time the alleged involvement of U.S. counsel. All told, these

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revisions reduced the total number of documents originally withheld on the basis of privilege

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from 1273 to 377. Given that Elan waited until nearly a year after the Rule 34 timeline to make

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these drastic changes to its logs, the Magistrate Judge Grewal did not clearly err in finding the

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revised logs untimely. Id. at 9-10.

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Moreover, despite their untimeliness, Magistrate Judge Grewal nevertheless evaluated

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Elan’s revised privilege logs, holding that the “logs are deficient because they do not permit

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Apple or the court to adequately assess the claim of privilege,” as they “fail to identify by name

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even a single attorney who was involved in or that requested any of the disputed communications

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that Elan continues to withhold.” Id. This holding is not clearly erroneous, particularly in light of

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Elan’s last-minute, wholesale revisions to its privilege logs and Elan’s pattern of asserting
APPLE INC.’S RESPONSE TO ELAN'S OBJECTIONS TO
NON-DISPOSITIVE RULING OF MAGISTRATE JUDGE

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Case No. C-09-01531 RS (PSG)

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admittedly-baseless privilege claims in this case. Id. at 6-10. Furthermore, having already

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evaluated one set of newly revised logs, Magistrate Judge Grewal was under no obligation to

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conduct an in camera review or to evaluate yet another set of revised logs after the hearing.

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While Elan attempts to blame Apple (for allegedly filing a motion to compel three business days

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after raising the issue), the legal issues themselves (for allegedly being “especially difficult”), and

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Magistrate Judge Grewal (for not accepting a third revised privilege log) for the allegedly “harsh”

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result here, the record does not support Elan’s assertions. Not only did Apple raise the specific

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issue with Elan’s privilege logs last year, only to be rebuffed with the statement that “[w]e do not

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believe that any continued discussions of the issue would be productive,” but the waiver ruling

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cannot be considered unduly harsh considering the effort and expense Apple and the Court have

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been forced to incur in repeatedly exposing privilege claims which have fallen “far short of the

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mark.” Id. at 7.

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II.

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MAGISTRATE JUDGE GREWAL DID NOT CLEARLY ERR IN REJECTING
ELAN’S UNTIMELY, INSUFFICIENT PRIVILEGE ASSSERTIONS

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To obtain relief from Magistrate Judge Grewal’s Order, Elan bears the burden of proving

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that the Order constitutes clear error or is contrary to law. See Fed. R. Civ. P. 72(a) (the district

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judge may modify or set aside part of a nondispositive ruling of a magistrate judge if the ruling

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“is clearly erroneous or is contrary to law”); Declaration of Nathan Greenblatt In Support of

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Apple Inc.’s Response to Elan Microelectronics Corporation’s Objectives to Non-Dispositive

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Ruling of Magistrate Judge (“Greenblatt Decl.”), Exh. A (Coleman v. Schwarzenegger, 2008 WL

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4415324, *1 (N.D. Cal. Sept. 25, 2008)) ( “A finding is ‘clearly erroneous’ when although there

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is evidence to support it, the reviewing court on the entire evidence is left with the definite and

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firm conviction that a mistake has been committed.”) (quoting United States v. U.S. Gypsum Co.,

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333 U.S. 364, 395 (1948)). The Ninth Circuit’s decision in Burlington Northern governs when a

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district court may find waiver based on an inadequate privilege log, and therefore governs

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whether Magistrate Judge Grewal’s Order is erroneous in this case. In Burlington Northern, the

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Ninth Circuit upheld the district court’s finding of a waiver based on five grounds: (1) the

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applicable privilege log was filed five months after Rule 34 time limit, (2) the plaintiff was a
APPLE INC.’S RESPONSE TO ELAN'S OBJECTIONS
TO NON-DISPOSITIVE RULING OF MAGISTRATE
JUDGE

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Case No. C-09-01531 RS (PSG)

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sophisticated corporate litigant, (3) many of the same documents were previously produced in a

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prior lawsuit, (4) even the untimely assertion of privileges by the plaintiff were insufficient, and

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(5) “even after producing the privilege log, [plaintiff] made substantive changes to that log,

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removing ‘documents which, upon additional review, were not responsive,’” which the district

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court was permitted to view as gamesmanship. See Burlington Northern & Santa Fe Ry. v.

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United States Dist. Court, 408 F.3d 1142, 1149-50 (9th Cir. 2005). As set forth below, at least

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four out of five of these considerations support a finding of waiver here, thereby confirming that

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Magistrate Judge Grewal’s Order is not clearly erroneous or contrary to law.

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A.

Elan’s July 1, 2011 Privilege Logs Are Untimely

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In an attempt to excuse its failure to timely provide adequate privilege logs, Elan contends

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that “Apple first raised questions regarding the documents at issue here on May 25, 2011.” Mot.

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at 2. Of course, as Magistrate Judge Grewal noted, Elan’s complaint “misapprehends the burden

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[of] claiming privilege in a timely manner.” Order at 9. “A log that sufficiently justifies a claim

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of privilege should be served when the claim is made, not only after a motion to the court is

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threatened.” Id. In any event, as noted in Apple’s motion to compel, Elan had ample notice of

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the deficiencies in its privilege logs with respect to communications with employees of Elan’s in-

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house IPR department. Apple raised the issue regarding the nature and scope of Elan’s privilege

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assertions with respect to Elan in-house employees as early as October 2010, and again on

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December 3, 2010, following the admission of the head of Elan’s IPR department that the

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department does not employ any attorneys. See Apple Mot. to Compel at 18-19 n.6 & Exhs. 3,

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35; Order at 9. After several follow-up meet and confer efforts by Apple, Elan brusquely

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responded that “[w]e do not believe that any continued discussions of the issue would be

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productive.” See Apple Mot. to Compel, Exh. 35.

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In fact, Elan did nothing to attempt to remedy the deficiencies Apple had identified in

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Elan’s privilege logs until Apple embarked on motion practice. Even then, Elan waited over a

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month, until the eve of the hearing and after all briefing was complete, before submitting “second

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revisions” to its privilege logs on July 1, 2011. In these revisions, Elan asserted for the first time

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that “all communications involving the in-house IPR department previously withheld on the basis
APPLE INC.’S RESPONSE TO ELAN'S OBJECTIONS
TO NON-DISPOSITIVE RULING OF MAGISTRATE
JUDGE

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Case No. C-09-01531 RS (PSG)

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of privilege also included an unnamed U.S. counsel.” Order at 9. Elan had not made this claim

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before either in its privilege logs or in the meet and confer with Apple. Given that Elan originally

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served its privilege logs in 2010 and had notice of the deficiencies Apple had identified in late

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2010, Magistrate Judge Grewal had ample justification for finding that Elan’s revised logs were

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untimely.

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[Magistrate Judge Grewal’s] ruling from reversal[.]” See 408 F.3d at 1149.

Order at 9-10. Under Burlington Northern, “this fact alone would immunize

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B.

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Magistrate Judge Grewal did not clearly err in finding that “[e]ven if the revised logs were

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timely, which they are not, the court agrees that Elan’s logs are deficient because they do not

Elan’s July 1, 2011 Privilege Logs Are Insufficient

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permit Apple or the court to adequately assess the claim of privilege.”

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Magistrate Judge Grewal explained, “[t]he individual entries on Elan’s privilege logs fail even to

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name the U.S. counsel who was involved or directed the specific communications for which

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privilege is claimed.” Id. To the contrary, Elan’s July 1, 2011 revised privilege logs represent a

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wholesale reclassification of communications with its IPR department as communications made

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for the purpose of seeking legal advice from unnamed U.S. counsel. Order at 9. Yet, beyond the

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assertion that that the communications relay or seek advice from U.S. counsel, Elan’s revised

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privilege logs fall far short of providing adequate information regarding the role, if any, of U.S.

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counsel in the particular communications at issue, the nature of the communications, or the

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expectation, if any, of confidence associated with those communications. See Greenblatt Decl.,

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Exh. B (E.E.O.C. v. Safeway Store, Inc., 2002 WL31947153, *4) (N.D. Cal. Sept. 16, 2002)

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(quoting United States v. Martin, 278 F.3d 988, 999 (9th Cir. 2002)); Bu Decl., Exhs. F-H. In

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these circumstances, and where Elan’s sudden and all-too-convenient revised privilege assertions

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call for particular scrutiny, Magistrate Judge Grewal did not clearly err in finding that Elan’s

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revised logs are insufficient for Apple or the Court to adequately assess Elan’s claims of

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privilege. Under Burlington Northern, the insufficiency of Elan’s revised logs further supports a

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finding of waiver. See 408 F.3d at 1150.

Order at 10.

As

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C.

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As the Ninth Circuit recognized in Burlington Northern, the fact that “even after

Elan’s Shifting Privilege Assertions Support A Finding Of Waiver

APPLE INC.’S RESPONSE TO ELAN'S OBJECTIONS
TO NON-DISPOSITIVE RULING OF MAGISTRATE
JUDGE

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Case No. C-09-01531 RS (PSG)

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producing the privilege log, [a party] made substantive changes to that log, removing ‘documents

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which, upon additional review, were not responsive’” also supports a finding of waiver. Id.

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Here, after producing its privilege logs, Elan made extensive changes including agreeing to

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produce hundreds of documents previously withheld on the basis of privilege and reclassifying

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dozens more as “[i]rrelevant and non-responsive” without explanation. Such practices belie

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Elan’s claims that “any issues with Elan’s privilege logs” amount to “[m]inor procedural

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violations” that “militate against finding waiver.” Mot. at 1. To the contrary, Elan’s wholesale

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revisions to its logs on the eve of the hearing, after Elan previously indicated that it did “not

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believe that any continued discussions of the issue would be productive,” is much more justifiably

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viewed as “evidence of footdragging or a cavalier attitude towards following court orders and the

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discovery rules [that] supports finding waiver.” See Greenblatt Decl., Exh. B (E.E.O.C., 2002

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WL31947153 at *2 (quoting Ritacca v. Abbott Labs., 203 F.R.D. 332, 335 (N.D. Ill. 2001));

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Burlington, 408 F.3d at 1150.

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D.

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Elan complains that Magistrate Judge Grewal’s ruling is an “unduly harsh sanction,” and

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that “[h]ad the Magistrate applied the Burlington Northern factors, there could be no order

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finding waiver.” Mot. at 5. Because at least four out of five Burlington Northern factors favor a

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finding of waiver here, Magistrate Judge Grewal committed no clear error. That the judge

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considered the relevant issues without expressly citing Burlington Northern is of no moment.

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See, e.g., Greenblatt Decl., Exh. A (Coleman, 2008 WL 4415324, *4) (a magistrate judge’s ruling

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“does not merit reversal simply because it fails to extensively detail its reasoning.”). Moreover,

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under the circumstances Elan cannot fault Magistrate Judge Grewal for electing not to conduct an

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in camera review of the documents, which “rests in the sound discretion of the district court.”

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U.S. v. Zolin, 491 U.S. 554, 572 (1989); U.S. v. Reese, 145 F.3d 1343, *1 (9th Cir. 1998).

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III.

Magistrate Judge Grewal’s Ruling Is Not Unduly Harsh

CONCLUSION

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Elan has put Apple and the Court to great effort and expense in repeatedly addressing

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baseless privilege claims and has already had ample opportunity to fix any such mistakes in

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revised privilege logs. As such, a finding of waiver is not clearly erroneous or contrary to law.
APPLE INC.’S RESPONSE TO ELAN'S OBJECTIONS
TO NON-DISPOSITIVE RULING OF MAGISTRATE
JUDGE

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Case No. C-09-01531 RS (PSG)

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Dated: September 9, 2011

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TENSEGRITY LAW GROUP LLP
WEIL, GOTSHAL & MANGES LLP

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By:

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/s/ Jared Bobrow
Jared Bobrow
Attorneys for Defendant and
Counterclaim Plaintiff Apple Inc.

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APPLE INC.’S RESPONSE TO ELAN'S OBJECTIONS
TO NON-DISPOSITIVE RULING OF MAGISTRATE
JUDGE

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Case No. C-09-01531 RS (PSG)