Rockstar Consortium US LP et al v. Google Inc

Filing 186

REPLY to Response to Motion re 150 MOTION for Protective Order Regarding Privileged and Confidential Nortel Documents filed by Nortel Networks Inc. (Attachments: # 1 Exhibit A - Excerpt of Asset Sale Agreement)(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 REPLY BRIEF
IN SUPPORT OF ITS MOTION FOR A PROTECTIVE ORDER
Nortel Networks Inc. (“NNI”) is seeking the protection of this Court with respect to
privileged and confidential information that may remain on certain computers that Rockstar
Consortium US LP (“Rockstar”) acquired in connection with the purchase of Nortel patents by a
Rockstar affiliate. In its opposition, Google Inc. (“Google”) focuses more on its discovery
disputes with Rockstar than on NNI’s valid concern over the disclosure of sensitive information
that may have little or nothing to do with the issues in this case. However, Google’s alleged
difficulties obtaining documents from Rockstar do not justify trampling NNI’s legitimate
privilege and confidentiality interests.
I.

NNI Was Diligent in Seeking to Protect Its Privileged and Confidential Information,
and Bears No Responsibility for Any Alleged Discovery Delays by Rockstar
Notwithstanding Google’s repeated complaints about the evidentiary support for NNI’s

motion, the responses filed by Rockstar and Google confirm that the basic facts are undisputed:


In connection with Rockstar’s purchase of thousands of Nortel patents
(including the 7 patents-in-suit), Rockstar took possession of 26 personal
computers that were being used by Nortel employees who transitioned to

Rockstar as part of the transaction. Transition Services Agreement, Sched. 1,
Para. 7.1 (“TSA”).1 Nearly all of the transferred employees were attorneys or
other professionals who worked in Nortel’s Legal Department. See Email
from M. Supko to A. Roberts, 09/26/14 (associating names with transferred
computers) (Ex. Q to Opp’n Br.); Rockstar’s Initial Disclosures, 2-7
(providing titles of persons with knowledge) (Ex. H to Opp’n Br.); Email from
S. Blackburn to A. Roberts, 07/31/14 (providing titles of custodians) (Ex. I to
Opp’n Br.).


Rockstar had the option of keeping the computers, but it was not permitted to
“use any information, application or data (including software) loaded or
embedded in the PC if such item is not included in the Assets purchased under
the [Asset Sale Agreement] or licensed to the Purchaser ....” TSA at
Paragraph 4(i). Rockstar was also required to “delete all such non-transferred
items from any PCs purchased under a Work Order on which it is installed
....” Id.



In early August of 2014, Rockstar informed NNI that it planned to search the
computers it had acquired from Nortel for documents responsive to Google’s
discovery requests, and that some or all of those computers may still include
“non-transferred items.” Rockstar explained that it had not deleted any
information from the computers because of litigation hold concerns. Pls.’
Resp. to Mots. for Protective Order by Nortel Entities, 1 (Dkt. No. 176).



For the next several weeks, Rockstar and NNI attempted to negotiate a
procedure that would enable Rockstar to search the computers for relevant
documents properly within its possession, but without accessing or disclosing
any of Nortel’s privileged and confidential information that may still remain
on the computers. See id. When Rockstar ultimately informed NNI that it
could not negotiate any longer because of an impending production deadline,
NNI promptly moved this Court for a protective order.

This sequence of events confirms that, from the time less than two months ago that NNI
became aware of this issue, NNI has been diligent in seeking to protect its privileged and
confidential information. NNI cannot reasonably be held responsible for any alleged lack of
diligence or thoroughness by Rockstar in producing documents to Google, a subject to which
Google devotes the bulk of its opposition brief. See Opp’n Br. at 3-10.

1

Google filed a copy of the TSA under seal as Exhibit N to its Opposition Brief.

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II.

The Documents NNI Is Seeking to Protect Are By Definition Unrelated to the
Patents-in-Suit, and Thus Are Unlikely to Be Relevant to the Issues in this Case
Contrary to Google’s inflammatory and unfounded accusation, NNI is not seeking to stop

Rockstar from searching the computers at issue for any “transferred items,” i.e., documents that
fairly relate to the 7 patents-in-suit (or, for that matter, documents that relate to any of the
thousands of patents that Rockstar acquired from Nortel). Rather, NNI is merely asking this
Court to preclude Rockstar from accessing any “non-transferred items” on those computers. See
NNI’s Mot. for Protective Order, 6 (Dkt. No. 150). By definition, such documents do not relate
to the patents Rockstar purchased from Nortel. See TSA at Para. 4(i) (using term “such nontransferred items” to refer to items “not included in the Assets purchased under the ASA or
licensed to the Purchaser”) (emphasis added).2
NNI has not had access to the computers at issue since they were transitioned to Rockstar
more than 3 years ago, and thus NNI does not know what documents in fact reside on them.
However, given that the documents sought to be protected do not relate to the patents-in-suit, it is
very unlikely that those documents have any direct relevance to the infringement dispute
between Rockstar and Google. To the extent Google believes the computers may contain
relevant NNI documents unrelated to the patents purchased by Rockstar (Google suggests that
documents reflecting Nortel’s licensing policies are one possibility), such documents almost
surely are the subject of the extraordinarily voluminous third-party discovery requests that
Google served on NNI (and numerous former employees, legal advisors, and business advisors).

2

The “Assets purchased under the ASA” expressly included a comprehensive collection of
“Patent Related Documentation,” including but not limited to patent prosecution files, litigation
files, license agreements, infringement claim charts, the contents of an electronic “data room”
made available to bidders during the auction of the Nortel patent portfolio, and assignment
agreements. Excerpt from Asset Sale Agreement (Ex. A hereto).

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See Decl. of T. Ross, 09/18/14, ¶¶ 2-7 (Ex. C to NNI’s Notice of Filings in Bankruptcy
Proceeding (Dkt. No. 177-3)).
In an apparent effort to divert attention from NNI’s legitimate privilege and
confidentiality concerns, Google complains about NNI’s response to Google’s subpoena. See
Opp’n Br. at 12. Such complaints, however, are not ripe for consideration by this Court. Google
has not filed a motion to compel, and Google and NNI are continuing to negotiate the scope of
NNI’s document production in response to the subpoena.
Moreover, as NNI has informed the Court, NNI is seeking more global relief from the
Delaware Bankruptcy Court in view of the extraordinary burden and expense to which NNI is
being subjected by a raft of third-party discovery requests in various litigations involving patents
sold to Rockstar, including but not limited to sixteen subpoenas served by Google. See Debtor’s
Mot. for [Specified Relief] (Ex. B to NNI’s Notice of Filings in Bankruptcy Proceeding (Dkt.
No. 177-2)). The issues raised by that motion go well beyond those in this or any other single
litigation, and thus NNI believes the Delaware Bankruptcy Court is the most appropriate forum
to resolve those issues. Id. at 32-44 (citing authority).
III.

Google’s Contention that NNI Will Not Be Harmed by the Unauthorized Disclosure
of Its Privileged and Confidential Information Is Disingenuous
Adopting a strikingly cavalier attitude towards the attorney-client privilege and

contractual obligations, Google suggests that NNI’s concerns over the unauthorized disclosure of
its sensitive information should be discounted because NNI can simply “claw back” any
inadvertently disclosed documents.

Opp’n Br. at 14-15.

But this is far from a typical

“inadvertent disclosure” situation, where a producing party’s counsel might accidentally miss a
stray privileged document in a large production. To the contrary, Google is proposing that
NNI’s privileged and confidential information purposely be disclosed to Rockstar, in whose
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possession those documents currently reside, and then to Google. Google surely would not
countenance such casual treatment of its own privileged and confidential information.
IV.

Conclusion
For the reasons set forth above and in its opening papers, NNI respectfully requests that

the Court enter a protective order prohibiting Rockstar from accessing any “non-transferred
items” on the computers it acquired from Nortel. NNI has no interest in impeding Google’s
efforts to obtain the discovery from Rockstar to which it is entitled, but NNI’s legitimate
privilege and confidentiality interests in Nortel documents that Rockstar should not even have in
its possession cannot simply be brushed aside in the interest of expediency.
Respectfully submitted,
October 3, 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.

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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 3rd day of October, 2014.
/s/ Mark M. Supko
Mark M. Supko