WI-LAN Inc. v. Alcatel-Lucent USA Inc. et al

Filing 282

SUR-REPLY to Reply to Response to Motion re 240 SEALED PATENT MOTION TO COMPEL PRODUCTION OF INTERNAL COMMUNICATIONS AND DOCUMENTS WITHHELD BY WI-LAN, INC. ON THE GROUND OF ATTORNEY-CLIENT PRIVILEGE filed by WI-LAN Inc.. (Pai, Ajeet)

THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
WI-LAN INC.,

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Plaintiff,
v.
ALCATEL-LUCENT USA INC.; et al.
Defendants.

Civil Action No. 6:10-cv-521-LED
JURY TRIAL DEMANDED

WI-LAN INC.’S SUR-REPLY TO HTC’S MOTION TO COMPEL PRODUCTION
OF INTERNAL DOCUMENTS WITHHELD BY WI-LAN INC. ON THE GROUND OF
ATTORNEY-CLIENT PRIVILEGE
HTC has known for nearly a year that Wi-LAN takes the unsurprising position that
communications with in-house counsel concerning legal matters are privileged. The time for
HTC to seek discovery, if it disagreed, has long since passed. For the reasons set forth below, as
well as those in Wi-LAN’s Response (Dkt. No. 262), HTC’s Motion should be denied.
I. HTC’s Motion Should Be Denied As Untimely.
HTC’s Reply (Dkt. No. 279) in support of its Motion (Dkt. No. 240) fails to dispute—
because it cannot—that HTC has been in possession of Wi-LAN’s original privilege log since
January 6, 2012, and Wi-LAN’s amended privilege log since August 1, 2012.

The types of

documents it challenges were undisputedly apparent on Wi-LAN’s original privilege log in
January 2012, yet HTC delayed filing a motion to compel until no possibility existed for the
matter to be resolved before the close of fact discovery. As a result, HTC now belatedly asks the

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Court to review in camera some 1,600 documents1 or appoint a special master to do so more
than a month after the close of fact discovery.
The request HTC makes for the first time in its Reply—that the Court take the
extraordinary step of appointing a special master long after discovery has closed—would
unfairly prejudice Wi-LAN by distracting from trial preparation in the months immediately
before trial. Notably, HTC makes no effort to ameliorate this prejudice or demonstrate that
appointment of a special master at this point in the case and under these circumstances is
consistent with Fed. R. Civ. P. 53(a)(1). HTC also fails to justify the expense and accompanying
delay that appointing a discovery master in these final pretrial stages poses to Wi-LAN’s interest
in seeing this case decided on the merits, as scheduled, and without unnecessary expense. See
Fed. R. Civ. P. 53(a)(3).
More importantly, appointing a special master at this late date would unduly burden the
Court by requiring selection of a master, completion of the special master’s review, issuance of a
report and recommendation by the master, time for party objections to the report and
recommendation, and then review by the Court of any report and recommendation and party
objections regarding 1,600 documents, all shortly before trial and long outside of the time
contemplated by the Court’s Discovery Order. This process risks backing up the Court’s trial
docket, all because HTC chose to delay raising privilege issues.
Finally, HTC makes its request despite there being no new facts, and no new
circumstances, that would have prevented it from making such a request months ago. This case
has been pending for over two years and trial is set for April 8, 2013, only four months away.
Because granting the Motion at this late hour would “disrupt the Court’s schedule, and

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HTC failed to identify these documents in its Motion, instead identifying them
specifically for the first time in its Reply after the close of fact discovery.
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communicate the unintended message to others that the Court’s deadlines are not reliable,” WiLAN respectfully requests that the Court deny HTC’s Motion as untimely. Taylor v. Turner
Industries Group, LLC, No. 2:11-cv-57-JRG, slip op. at 3 (E.D. Tex. Sept. 17, 2012).
II. HTC’s Motion Remains Wrong On the Merits.
Should the Court choose to consider HTC’s Motion, it should be denied on the merits.
The primary argument made in its Motion—that a company that engages in patent licensing
cannot claim attorney-client privilege over any legal advice provided by in-house counsel—is
unsupported, and HTC’s Reply fails to direct the Court to controlling precedent for that
proposition. (See Wi-LAN’s Response (Dkt. No. 262) at 6–7.) Nor does HTC attempt to
distinguish CEATS, Inc. v. Continental Airlines, Inc., No. 6:10-cv-120-MHS, slip op. at 9-10
(E.D. Tex. Jan. 27, 2012), where the Court squarely rejected a similar argument regarding work
product immunity.
Instead, HTC simply reiterates its contention that because Wi-LAN’s in-house counsel
(like in-house counsel at many small companies) sometimes carry out business duties in addition
to their legal roles, Wi-LAN’s assertions of privilege over internal communications reflecting
legal advice are per se improper.

But Wi-LAN has not asserted a blanket privilege over

documents and communications involving its in-house counsel. (See Response at 2, 8–10.)
Rather, Wi-LAN has provided extensive document discovery, and extensive deposition
testimony, concerning non-privileged matters—including production of settlement and licensing
communications with third parties—while withholding internal communications reflecting the
provision of legal advice. (Id.) HTC’s suggestion that such legal advice is not privileged merely
because it comes from in-house counsel or in support of licensing activities is without merit.

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CONCLUSION
HTC’s untimely motion seeks documents and communications reflecting privileged
information. Accordingly, for the reasons stated above, as well as the reasons in Wi-LAN’s
Response (Dkt. No. 262), Wi-LAN respectfully requests that the Court deny HTC’s Motion to
Compel.

Dated: December 20, 2012

Respectfully submitted,

By:
Local Counsel
Johnny Ward (TX Bar No. 00794818)
Wesley Hill (TX Bar No. 24032294)
WARD & SMITH LAW FIRM
P.O. Box 1231
1127 Judson Rd., Ste. 220
Longview, TX 75606-1231
Tel: [phone]
Fax: [phone]
[e-mail]
[e-mail]

/s/ Ajeet P. Pai
David B. Weaver (TX Bar No. 00798576)
Lead Attorney
Avelyn M. Ross (TX Bar No. 24027817)
Ajeet P. Pai (TX Bar No. 24060376)
Syed K. Fareed (TX Bar No. 24065216)
Jeffrey T. Han (TX Bar No. 24069870)
Seth A. Lindner (TX Bar No. 24078862)
Janice Ta (TX Bar No. 24075138)
VINSON & ELKINS LLP
2801 Via Fortuna, Suite 100
Austin, TX 78746
Tel: [phone]
Fax: [phone]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
[e-mail]
Steve R. Borgman (TX Bar No. 2670300)
VINSON & ELKINS LLP
1001 Fannin Street, Suite 2500
Houston, TX 77002-6760
Tel: [phone]
Fax: [phone]
[e-mail]

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Chuck P. Ebertin
California Bar No. 161374
VINSON & ELKINS LLP
525 University Avenue, Suite 410
Palo Alto, CA 94301-1918
Tel: [phone]
Fax: [phone]
[e-mail]
Attorneys for Plaintiff, Wi-LAN Inc.

CERTIFICATE OF SERVICE
The undersigned certifies that the foregoing document was filed electronically in
compliance with Local Rule CV-5(a) on this the 20th day of December, 2012. As such, this
document was served on all counsel who are deemed to have consented to electronic service.
Local Rule CV-5(a)(3)(A). All other counsel of record were served by e-mail on this day.
By:
US1698666

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/s/ Ajeet P. Pai