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

Filing 362

ORDER re 330 Sealed Request for In Camera Review of Non-Privileged Documents on Wi-Lan's Privilege Log. Wi-Lan is ORDERED to conduct a full and thorough review of the documents withheld, in light of the current order. Wi-Lan is then ORDERED to produce the documents it deems not privileged by 3-18-2013 at noon. Wi-Lan is also ORDERED to submit, by 3-18-2013 at noon, an amended privilege log to Defendant HTC and to the Court. Thereafter, HTC may make a second selection of 25 documents on Plaintiff's privilege log for in camera review by 3-19-2013 at noon. Wi-Lan is then ORDERED to submit the documents selected by HTC for in camera review by 3-20-2013 at 10:00 A.M., with a copy of the specific assertions of privilege. Signed by Judge Leonard Davis on 03/14/13. cc:attys 3-15-13(mll, )

IN 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.

CASE NO. 6:10-CV-521-LED
JURY TRIAL DEMANDED

ORDER
Before the Court is HTC’s Request for In Camera Review of Non-Privileged Documents
on Wi-Lan’s Privilege Log (Dkt. No. 330). The Court has examined the documents submitted for
in camera review. Plaintiff is ORDERED to conduct a full and thorough review, in light of this
order, of the documents previously withheld as privileged. Plaintiff is then ORDERED to
produce the documents it deems non-privileged by March 18, 2013 at noon. Plaintiff is also
ORDERED to submit an amended privilege log to Defendant HTC and to the Court by March
18, 2013 at noon. Thereafter, Defendant HTC may make a second selection of twenty-five (25)
documents on Plaintiff’s privilege log for in camera review by March 19, 2013 at noon. Wi-Lan
is then ORDERED to submit the documents selected by Defendants for in camera review by
March 20, 2013 at 10:00 A.M. with a copy of the specific assertions of privilege.
BACKGROUND
On October 2010, Plaintiff Wi-Lan Inc. (“Wi-Lan”) filed suit against HTC Corporation,
HTC America, Inc., Exedea, Inc. (collectively, “HTC”), and eight other defendants for patent
infringement. Wi-Lan served its Original Privilege Log on January 6, 2012. On May 22, 2012,

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HTC informed Wi-Lan of deficiencies in the log, regarding assertions of attorney-client
privilege. On August 1, 2012, Wi-Lan provided an updated Cumulative Amended Privilege Log
that claimed privilege over 13,762 communications and documents. On October 26, 2012, HTC
filed a motion to compel documents withheld as privileged (Dkt. No. 240).
HTC moved to compel production of documents Wi-Lan improperly withheld under the
assertion of attorney-client privilege. HTC contends that, to avoid production, Wi-Lan simply
attached the term “legal advice” to anything related to licensing negotiations. HTC argues that
many of the communications are between Wi-Lan’s executives or non-attorney employees, with
in-house counsel simply copied as a secondary recipient. Thus, HTC contends most of the
communications likely relate to Wi-lan’s core business function, licensing, and do not qualify as
legal advice. HTC also contends that Wi-Lan’s privilege log is deficient because the entries fail
to make a prima facie showing of privilege. Wi-Lan responds that it has not asserted a blanket
attorney-client privilege for all communications and documents involving in-house counsel. WiLan argues that while in-house counsel are involved in Wi-Lan’s business activities, their
primary role is to provide advice to Wi-Lan in a legal capacity.
Following a hearing on the motion to compel, the Court ordered HTC to choose eighty
(80) documents from Wi-Lan’s Cumulative Amended Privilege Log for in camera review. On
February 28, 2013, HTC submitted notice with its selection of documents and on March 4, 2013,
Wi-Lan submitted all but twelve of the selected documents. In its submission to the Court, WiLan stated that it had already produced eight of those twelve documents to HTC, but had
inadvertently left the corresponding entries in its Cumulative Amended Privilege Log. Wi-Lan
also asserted that of the remaining four documents, one had already been produced in alternate
form and two were merely non-substantive transmittal copies of already-produced documents.
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Wi-Lan withdrew its claim of privilege as to the remaining document.
APPLICABLE LAW
Under Federal Rule of Civil Procedure 26(b)(5), a party claiming privilege must: (1)
expressly claim privilege; and (2) sufficiently describe the nature of documents or
communications, without revealing the protected information, such that the opposing party is
able “to assess the claim.” FED. R. CIV. P. 26(b)(5)(A). The purpose of the attorney-client
privilege is to “encourage full and frank communication between lawyers and their clients.” U.S.
v. Robinson, 121 F.3d 971, 974 (5th Cir. 1997) (internal citations omitted). However, because
the assertion of privilege inhibits the search for the truth, and is subject to abuse, “it applies only
where necessary to achieve its purpose.” Id. (quoting Fisher v. United States, 425 U.S. 391, 403
(1976)). Confidential communications made to a lawyer, or his subordinate, for the primary
purpose of obtaining legal advice or services are privileged. Id. However, the privilege “only
protects disclosure of confidential communications between the client and the attorney; it does
not protect the disclosure of underlying facts.” Upjohn Co. v. United States, 449 U.S. 383, 395–
96, 101 S.Ct. 677 (1981).
The attorney-client privilege applies in a corporate setting; however, the increased level
of participation by in-house counsel in the day-to-day operations of the corporation makes it
more difficult to define the scope of the privilege when a communication is made to in-house
counsel. See Upjohn Co., 449 U.S. at 389, 101 S.Ct. 677. Thus, in such a setting, the attorneyclient privilege attaches only to communications made for the purpose of giving or obtaining
legal advice, not business advice, technical advice, or management decisions. Navigant
Consulting, Inc. v. Wilkinson, 220 F.R.D. 467, 474 (N.D. Tex. 2004); See also In re Google Inc.,
462 Fed. Appx. 975, 978 (Fed. Cir. 2012); Stoffels v. SBC Communications, Inc., 263 F.R.D.
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406, 411 (W.D. Tex. 2009). The party asserting the privilege has the burden of proving its
applicability. See U.S. v. Harrelson, 754 F.2d 1153, 1167 (5th Cir. 1985). Furthermore, a
privilege log should provide facts that “would suffice to establish each element of the privilege
or immunity that is claimed.” Taylor Energy Co., L.L.C. v. Underwriters at Lloyd’s London
Subscribing to Insur. Coverage Evidence by Policy No. HJ109303, 2010 WL 3952208, at *1
(E.D. La. Oct. 7, 2010) (internal citation omitted); see FED. R. CIV. P. 26(b)(5)(A).
ANALYSIS
The Court has reviewed the documents submitted by Wi-Lan. There are three categories
of documents submitted: 1) fully privileged documents; 2) documents that do not contain
privileged communications; and 3) e-mail strings that contain a combination of privileged and
non-privileged e-mail messages.
Even using a broad scope of privilege, several documents are not privileged. For
example, Document 3283 is an e-mail from Wi-Lan Executive Officer Christian Dubuc to Vice
President Andrew Parolin, and Wi-Lan in-house counsel William Middleton and Curt Dodd. The
e-mail is part of an e-mail string regarding licensing negotiations with ZTE Corporation
(“ZTE”). HTC produced the underlying e-mail from ZTE but withheld the subsequent internal email exchange, asserting privilege because it “occurred in the context of a discussion of strategic
legal issues concerning ZTE Corporation.” This internal exchange centered on whether there is a
“‘yes’ on the $$ just yet.” Although the communication involves Middleton and Dodd, Wi-Lan’s
in-house counsel, this is not a communication made for the purpose of giving or obtaining legal
advice. See In re Google Inc, 462 Fed. Appx. at 978. Instead, the parties involved in the e-mail
exchange were acting in their management capacities related to Wi-Lan’s business.
The only advice given or sought throughout the document is to “[not] offer them a free
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pen to sign the deal. They might need more info on that as well.” Such advice is purely of a
business, not legal, nature. The attorney-client privilege is narrowly construed. Trammel v.
United States, 445 U.S. 40, 50, 100 S. Ct. 906 (1980). Even if the parties to this e-mail exchange
were contemporaneously discussing legal issues related to ZTE, this e-mail string was not
concerning legal advice, thus it is not privileged.
Document 9412 is an example of an e-mail string that contains a combination of
privileged and non-privileged e-mail messages.1 The email string consists of five e-mails.
Chronologically, the first two emails are privileged because they concern a request from in-house
counsel, Curt Dodd, for information to allow him to provide legal advice. The subsequent
messages, however, contain an exchange between Executive Officer Christian Dubuc and Vice
President Andrew Parolin, discussing who should be in charge of certain projects. These later emails relate to Mr. Dodd’s request marginally, at best. Rather than being in furtherance of
obtaining legal advice, they are a management discussion about how to better conduct business.
Therefore, they are not privileged.
The documents produced for in camera review include several similar e-mail exchanges

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There is no real consensus in the case law on how to treat e-mail strings that contain both privileged and nonprivileged communications. See Baxter Healthcare Corp. v. Fresenius Med. Care Holding, Inc., 2008 WL 4547190,
at *1 (N.D. Cal. 2008) (“Each e-mail is a separate communication, for which a privilege may or may not be
applicable. Defendants cannot justify aggregating authors and recipients for all e-mails in a string and then claiming
privilege for the aggregated e-mails.”); Universal Service Fund Telephone Billing Practices Litigation, 232 F.R.D.
669, 674 (D. Kan. 2005) (in the preparation of privilege logs, “list each email within a strand as a separate entry.”);
Chemtech Royalty Assoc., L.P. v. United States, Nos. 05-cv-944, 06-cv-258, 07-cv-405 (M.D. La. Mar. 30, 2009)
(“Asserting privilege for an entire email thread in the privilege log, but only describing the last message in the
thread is deficient.”); Rhoads Industries v. Building Materials Corp. of America., 254 F.R.D. 238 (E.D. Pa. 2008)
(“[I]f the email messages are part of routine business affairs, an not for the purpose of securing legal advice, then the
underlying emails would be discoverable . . . because they are eventually sent to the attorney, the messages become
privileged.”; Muro v. Target Copr., 250 F.R.D. 350, 363 (N.D. Ill. 2007) (even though one email is not privileged, a
subsequent and privileged email, will allow the privilege to attach to the entire email chain, including the prior email
message.); Barton v. Zimmer, 2008 WL 80647 (N.D.Ind. 2008) (“[E]ven though one email is not privileged, a
second email forwarding the prior email to counsel might be privileged in its entirety.”); Paul R. Rice, Attorney
Client Privilege in the United States § 11:6.1 (2d ed. 2008) (“[E]ach email message should be separately described
in the privilege log, and each separate message must stand on its own.”).

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that contain some privileged legal communication but also turn to business discussions between
Wi-Lan’s executives. Thought courts accross districts go different ways, this District has a policy
of liberal and open discovery. Accordingly, the business communications that are not privileged
must be produced. However, any privileged communications in the underlying messages can be
redacted in the produced e-mail string.
As a further matter, Wi-Lan did not submit twelve of the documents identified by HTC
for in camera review. A party claiming privilege must sufficiently describe, in their privilege
log, the nature of documents or communications withheld under a privilege. Wi-Lan states that it
already produced eight of the omitted documents but inadvertently left them on the privilege log.
Wi-Lan also withdrew its claim of privilege as to one of the identified documents. By its own
admission, Wi-Lan’s privilege log is deficient for the opposing party to properly assess Wi-Lan’s
assertion of privilege. The Court expects Wi-Lan to thoroughly review and update its privilege
log. In addition, to comply with its duty to sufficiently describe the nature of the documents
withheld under a privilege, Wi-Lan must identify the documents that contain a combination of
privileged and non-privileged communications. Specifically, the e-mail strings that contain
unprivileged business discussions and privileged communications seeking legal advice must be
accompanied by a detailed description of each subpart in the privilege log. The privileged
messages should be redacted and the unpriviliged materials must be produced.
CONCLUSION
The Court expects and encourages the parties to conduct a diligent review of all
documents requested in discovery. It is apparent that Wi-Lan has not conducted a thorough and
fair review of the documents requested, and has asserted the attorney-client privilege too
broadly. Therefore, Wi-Lan is ORDERED to conduct a full and thorough review of the
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documents withheld, in light of the current order. Wi-Lan is then ORDERED to produce the
documents it deems not privileged by March 18, 2013 at noon. Wi-Lan is also ORDERED to
submit, by March 18, 2013 at noon, an amended privilege log to Defendant HTC and to the
Court. Thereafter, HTC may make a second selection of twenty-five (25) documents on
Plaintiff’s privilege log for in camera review by March 19, 2013 at noon2. Wi-Lan is then
ORDERED to submit the documents selected by HTC for in camera review by March 20, 2013
at 10:00 A.M., with a copy of the specific assertions of privilege. If the Court finds that Plaintiff
continues to improperly withhold documents, the Court will appoint a special master and
Plaintiff may be subject to loss of its trial setting and sanctions.
So ORDERED and SIGNED this 14th day of March, 2013.

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LEONARD DAVIS
UNITED STATES DISTRICT JUDGE

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HTC’s selection of documents may include documents previously selected in HTC’s
February 28, 2013 selection of documents for in camera review and not produced by Wi-Lan.
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