Rockstar Consortium US LP et al v. Google Inc

Filing 150

MOTION for Protective Order Regarding Privileged and Confidential Nortel Documents by Nortel Networks Inc. (Attachments: # 1 Text of Proposed Order)(Supko, Mark)

UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
Marshall Division
ROCKSTAR CONSORTIUM US LP and
NETSTAR TECHNOLOGIES LLC,
Plaintiffs,
Case No. 2:13-cv-00893-JRG-RSP
v.
GOOGLE INC.,
Defendant.
NON-PARTY NORTEL NETWORKS INC.’S MOTION FOR A PROTECTIVE ORDER
REGARDING PRIVILEGED AND CONFIDENTIAL NORTEL DOCUMENTS
Pursuant to Rules 26(c) and 45(d) of the Federal Rules of Civil Procedure, non-party
Nortel Networks Inc. (“NNI”) hereby moves for a protective order to prevent Rockstar
Consortium US LP (“Rockstar”) from accessing, reviewing, disclosing, or otherwise using
highly confidential and/or privileged documents residing on computers that Rockstar acquired in
connection with its purchase of patents and related assets from various Nortel entities in 2011,
which documents Rockstar was contractually obligated to delete years ago. Rockstar did not
acquire the rights to many of the documents residing on these computers. Nevertheless, Rockstar
has informed NNI that it believes it has an obligation under the Discovery Order to search the
contents of the computers for documents that might be relevant to the issues in this case.
Most of the computers at issue were used by lawyers or other professionals working in
Nortel’s IP Legal Department. Permitting Rockstar to view the Nortel documents on these
computers, let alone produce them to Google, risks waiving NNI’s attorney-client privilege and
work product interests, as well as those of other Nortel entities. Likewise, permitting such
documents to be accessed by Rockstar or produced to Google absent a court order risks a breach

of Nortel’s contractual nondisclosure obligations to various third-parties. NNI therefore seeks
the protection of this Court to prevent these serious harms.
I.

Background Facts
In June of 2011, in connection with a still-pending bankruptcy proceeding, Nortel

corporate entities in the U.S., Canada and Europe jointly sold thousands of patents and related
assets to Rockstar following an auction in which Google was an unsuccessful bidder.1 In
connection with that transaction, Rockstar acquired certain computers formerly used by Nortel
employees, but that acquisition was subject to an obligation to delete from the computers any
documents or information that was not included among the assets acquired by Rockstar (i.e.,
“non-transferred items”).
In early August 2014, Rockstar notified NNI’s outside counsel that it retained possession
of certain computers acquired from Nortel and that, due to concerns over litigation-related
document preservation obligations, it had not deleted “non-transferred” items.

The parties

thereafter conferred about the appropriate method for handling such documents, but Rockstar
informed NNI that it believed it was required to search the computers acquired from Nortel and
produce non-privileged documents responsive to Google’s discovery requests.
On August 29, 2014, Google identified eleven (11) former Nortel employees whose
computers are now in Rockstar’s possession, and for each one Google provided Rockstar with a
list of broad search terms that it wants run against the email of those custodians. The majority of
these former Nortel employees were lawyers or other legal professionals, some of whom were
involved in Nortel’s efforts to develop and analyze strategies for enforcing or otherwise
1

The present motion is without prejudice to NNI’s right to seek appropriate relief from the
United States Bankruptcy Court for the District of Delaware regarding third-party and other
discovery requests relating to Nortel and/or its documents.

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monetizing its patent portfolio, culminating in the sale to Rockstar.

Following receipt of

Google’s proposed email search terms, NNI and Rockstar continued to confer regarding the
appropriate method of handling the review and production of potentially responsive documents
on the computers but have thus far been unable to reach agreement. Based on Rockstar’s stated
concerns over an impending document production deadline, NNI feels compelled to now seek
relief from the Court.
Based on the positions of the former Nortel employees identified by Google, it is highly
likely that information on their computers is subject to claims of attorney-client privilege and/or
work product immunity. Other information likely relates to patents and business assets that the
Nortel companies sold to purchasers of their various business lines, to whom Nortel owes
contractual duties of confidentiality and nondisclosure. Still other information likely relates to
intellectual property licenses that Nortel granted to third-party licensees, to whom Nortel owes
confidentiality obligations. It would appear that any tangential relevance that such documents
might have to the issues in this case pales in comparison to the risks that Nortel faces from
permitting Rockstar to review and produce the documents in response to Google’s discovery
requests.
II.

Rockstar’s Proposed Treatment of Nortel Documents in Response to Google’s
Discovery Requests Presents an Unacceptable Risk of Harm to Nortel
A.

Nortel Has a Protectable Interest in this Matter

Under the Federal Rules of Civil Procedure, “[a]ny person from whom discovery is
sought may move for a protective order in the court where the action is pending.” Fed. R. Civ. P.
26(c)(1). Here, because information on the computers Rockstar proposes to search belongs to
Nortel, not Rockstar, NNI should be considered a “person from whom discovery is sought.” In
addition, Google has served a third-party subpoena on NNI in this case, seeking production of a
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broad range of documents – set forth in one hundred and seventeen (117) separate requests –
many of which overlap with the keyword searches Google has asked Rockstar to run against the
computers acquired from Nortel. Accordingly, Nortel has sufficient interest in this matter to
justify seeking the protection of this Court.
Under Rule 26(c), a court “may, for good cause, issue an order to protect a party or
person from annoyance, embarrassment, oppression, or undue burden or expense[,]” including
by “forbidding the disclosure or discovery … [and] requiring that a trade secret or other
confidential research, development, or commercial information not be revealed ….” Fed. R. Civ.
P. 26(c)(1). This Court has broad discretion to grant such relief. See Avance v. Kerr-McGee
Chem. LLC, No. 5:04-CV-209, 2005 WL 5315658, at *2 (E.D. Tex. July 1, 2005); accord Harris
v. Amoco Prod. Co., 768 F.2d 669, 684 (5th Cir. 1985) (upon a showing of good cause, “the
district court can exercise its sound discretion to restrict what materials are obtainable, how they
can be obtained, and what use can be made of them once obtained”).
It is well-settled that preventing the unauthorized disclosure of privileged information
constitutes good cause for entry of a protective order. See, e.g., United States Equal Emp’t
Opportunity Comm’n v. TIC-The Indus. Co., No. Civ. A. 01-1776, 2002 WL 31654977, at *3
(E.D. La. Nov. 21, 2002) (“[T]he burden of showing good cause for a protective order under Fed.
R. Civ. P. 26(c) is satisfied [if the movant] is entitled to invoke the attorney-client privilege.
That privilege, if applicable, provides good cause for a protective order without any other
showing[.]”); Ferko v. Nat’l Ass’n for Stock Car Auto Racing, Inc., 218 F.R.D. 125, 141, 144
(E.D. Tex. 2003) (granting protective order preventing the disclosure of documents and
communications protected by the attorney-client privilege). Similarly, Rule 26(c) “grants the
Court the power to enter a protective order to restrict access to a trade secret or other confidential

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information.” Round Rock Research, LLC v. Dell Inc., No. 4:11–CV–332, 2012 WL 1848672, at
*2 (E.D. Tex. Apr. 11, 2012).
B.

Nortel’s Privileged and Confidential Information Should Be Protected

In view of the privilege and confidentiality concerns discussed above, NNI seeks a
protective order barring Rockstar from accessing, reviewing, disclosing or otherwise using any
document on the computers at issue except those that are readily identifiable as relating to the
patent assets that Rockstar acquired from Nortel (i.e., only the documents that are properly in
Rockstar’s possession).

See Fed. R. Civ. P. 26(c)(1)(A).

Any other documents on those

computers will either be unrelated to the issues in this case or duplicative of the documents that
Google is seeking directly from NNI through its expansive third-party subpoena.
The bankruptcy laws provide an additional reason for shielding these Nortel documents
from discovery in this matter. The non-transferred items on the computers in question constitute
“property of the estate” that is subject to the exclusive jurisdiction of the Bankruptcy Court in
Delaware. See 28 U.S.C. § 1334(e)(1) (establishing that the bankruptcy court has “exclusive
jurisdiction of all of the property, wherever located, of [Nortel] as of the commencement of [the]
case, and of property of the estate ...”). The Bankruptcy Code broadly defines “property of the
estate” to include all legal or equitable interests of Nortel in property as of the commencement of
the bankruptcy case, wherever it is located and by whomever it is held. See 11 U.S.C. § 541(a).
If the Court determines that, notwithstanding the foregoing considerations, it is necessary
to search the computers at issue for responsive, non-privileged documents to be produced to
Google, then NNI requests that the Court order Rockstar and Google to consult in good faith

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with NNI to agree upon a reasonable procedure and schedule for review and production that
adequately protects Nortel’s privilege and confidentiality interests.2
III.

Conclusion
For the reasons set forth above, NNI respectfully requests that the Court enter a

protective order prohibiting Rockstar from accessing any “non-transferred items” on the various
computers it acquired from Nortel. In the alternative, NNI requests that the Court order the
parties to consult in good faith with NNI to establish a reasonable procedure and schedule for
discovery as to the computers at issue such that Nortel’s privilege and confidentiality interests
are adequately protected. A proposed order is filed herewith.
Respectfully submitted,
September 12, 2014

/s/ Mark M. Supko
Mark M. Supko
Crowell & Moring LLP
1001 Pennsylvania Avenue, NW
Washington, DC 20004
202.624.2500 (phone)
202.628.5116 (fax)
[e-mail]
Attorneys for Nortel Networks Inc.

2

Notwithstanding this suggestion, Nortel reserves the right to seek reimbursement from Rockstar
for any attorneys’ fees and expenses Nortel incurs in connection with this issue, including but not
limited to fees and expenses incurred in connection with the present motion.

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CERTIFICATE OF SERVICE
The undersigned hereby certifies that all counsel of record who have consented to
electronic service are being served with a copy of this document via the Court’s CM/ECF system
per Local Rule CV-5(a)(3) on this 12th day of September, 2014.
/s/ Mark M. Supko
Mark M. Supko

CERTIFICATE OF CONFERENCE
The undersigned hereby certifies that counsel for Nortel has complied with the meet and
confer requirement of Local Rule CV-7(h) and Federal Rule of Civil Procedure 26(c)(1). The
personal conferences required by Local Rule CV-7(h) were conducted by the undersigned
counsel on September 12, 2014 via telephone conferences with Amanda Bonn of Susman
Godfrey L.L.P. for Rockstar and Netstar, and with David Perlson of Quinn Emanuel Urquhart &
Sullivan, LLP for Google. Rockstar and NetStar do not oppose the relief requested herein, but
no agreement was reached between Nortel and Google because the parties disagree on the merits.
Discussions have conclusively ended in an impasse, leaving an open issue for the Court to
resolve.
/s/ Mark M. Supko
Mark M. Supko

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