Walker Digital, LLC v. MySpace Inc et al

Filing 2

Brief/Memorandum in Support filed by Google, Inc. re #1 Miscellaneous Case Initiating Documents [Motion to Compel] (Arnett, J)

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF TEXAS
DALLAS DIVISION
WALKER DIGITAL, LLC,
Plaintiff,
v.
CASE NO. ____________________
MYSPACE, INC.,
NEWS CORP.,
FRIENDSTER, INC.,
LINKEDIN CORP.,
BUCKAROO ACQUISITION CORP.,
CRITERION CAPITAL PARTNERS LP,
GOOGLE INC.,
TAGGED, INC., and
FACEBOOK, INC.,

C.A. No. 1:11-cv-00318-LPS
Pending in the United States District
Court for the District of Delaware

Defendants.

MEMORANDUM IN SUPPORT OF GOOGLE INC.’S
MOTION TO COMPEL PRODUCTION OF DOCUMENTS FROM
SUBPOENA RESPONDENT IP NAVIGATION GROUP, LLC

TABLE OF CONTENTS
TABLE OF AUTHORITIES .................................................................................................ii
SUMMARY ...........................................................................................................................1
FACTUAL BACKGROUND ................................................................................................2
ARGUMENT .........................................................................................................................6
I.

IP Nav’s Blanket Assertion Of The Common Interest Privilege To Insulate All
Documents Exchanged Between Two Business Entities From Discovery Is
Unsupported by Fifth Circuit Law. ............................................................................6

II.

Relevant Settlement Documents Are Not Shielded From Discovery Under Any
Privilege or Pursuant to Fed. R. Evid. 408. ...............................................................9

III.

IP Nav Has Not Offered Any Facts To Substantiate Any Alleged Undue Burden. ..11

CONCLUSION ......................................................................................................................12

i

TABLE OF AUTHORITIES
CASES
Clear with Computers, LLC v. Bergdorf Goodman,
753 F. Supp.2d 662 (E.D. Tex. 2010) ....................................................................................... 10
Hodges, Grant & Kaufmann v. United States,
768 F.2d 719 (5th Cir. 1985) ...................................................................................................... 7
In re MSTG, Inc.,
674 F.3d 1337 (Fed. Cir.), reh’g en banc denied (2012) .......................................................... 10
In re Royce Homes, LP,
449 B.R. 709 (Bankr. S.D. Tex. 2011) ....................................................................................... 8
In re Santa Fe Intern. Corp.,
272 F.3d 705 (5th Cir. 2001) .......................................................................................... 6, 7, 8, 9
Navigant Consulting, Inc. v. Wilkinson,
220 F.R.D. 467 (N.D. Tex. 2004) ............................................................................................... 8
Ohio Valley Envtl. Coal., Inc. v. U.S. Army Corps of Engineers,
2012 U.S. Dist. LEXIS 4123 (D. Md. Jan. 12, 2012) ............................................................... 12
Phoenix Solutions, Inc. v. Wells Fargo Bank, N.A.,
254 F.R.D. 568 (N.D. Cal. 2008) .............................................................................................. 11
Rimkus Consulting Group, Inc. v. Cammarata,
688 F. Supp. 2d 598 (S.D. Tex. 2010) ........................................................................................ 7
SEC v. Microtune, Inc.,
258 F.R.D. 310 (N.D. Tex. 2009) ............................................................................................... 7
Software Rights Archive, LLC v. Google Inc.,
2009 WL 1438249, at *1 (D. Del. May 21, 2009) .................................................................... 11
Wiwa v. Royal Dutch Petroleum Co.,
392 F.3d 812 (5th Cir. 2004) .................................................................................................... 11
Xerox Corp. v. Google Inc.,
801 F. Supp. 2d 293 (D. Del. 2011) ............................................................................................ 6

ii

RULES
Fed. R. Civ. P. 26(a)(1) ................................................................................................................... 9
Fed. R. Civ. P. 26(b)(3)................................................................................................................... 7
Fed. R. Evid. 408 ............................................................................................................................ 9
Tex. R. Evid. 503(b) ....................................................................................................................... 8

iii

SUMMARY
On June 13, 2012, Google Inc. (“Google”) served a subpoena duces tecum from the
Northern District of Texas upon IP Navigation Group, LLC (“IP Nav”) seeking documents
relevant to the underlying patent litigation in Delaware filed by Walker Digital, LLC (“Walker
Digital”), a business partner of IP Nav. IP Nav’s own public statements establish that it has
played a key role in the attempted monetization of the patents-in-suit and that it has possession of
relevant information, such as analyses of the patents-in-suit and communications with third-party
licensees. Despite extensive meet and confer discussions, IP Nav has failed to comply with the
subpoena, producing fewer than two dozen documents which even include two copies of the
complaint filed by Walker Digital in the underlying litigation.
IP Nav does not dispute that it has possession, custody, or control of the requested
documents. IP Nav also has no genuine basis to contend that it would be unduly burdensome to
produce approximately 1200 pages of clearly relevant documents. IP Nav’s sole basis for
refusing to comply with the subpoena is that the requested documents are subject to a common
interest privilege or protected from disclosure as settlement discussions. IP Nav’s position is
predicated on a faulty interpretation of the common interest privilege and Rule 408 of the
Federal Rules of Evidence. As set forth more fully below, the common interest privilege is only
applicable to documents that are otherwise subject to attorney-client privilege or the work
product doctrine which are shared between companies that share a common legal interest over
the subject matter of the underlying privileged document. The common interest privilege does
not indiscriminately shield all documents and communications shared between two companies
merely because the companies share a common interest, particularly when the documents
themselves do not contain any confidential legal advice or attorney work product. Documents
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relating to settlement discussions, which are clearly relevant and discoverable based on
established case authority, also cannot be shielded from discovery.
Therefore, for the reasons set forth herein, Google respectfully requests that the Court
order IP Nav to comply with the subpoena and immediately produce all responsive documents
and to provide an adequate privilege log as to any documents being withheld on the grounds of a
valid privilege.
FACTUAL BACKGROUND
IP Nav is a patent monetization firm headquartered in Dallas, Texas. See
www.ipnav.com/about-us [App. 0001]. Plaintiff Walker Digital, LLC touts itself as a “research
and development lab” and claims ownership of approximately 400 patents. Id.; see also
http://www.walkerdigital.com/ about-us_the-company.html [App. 0005-0006]. In January 2011,
Walker Digital retained IP Nav after it had “made limited progress” in its previous attempts to
assert its patents, including a failed attempt to auction its portfolio. See
http://www.ipnav.com/client-categories/customer-case-studies1/walker-digital [App. 0007]. IP
Nav “promptly designed a monetization campaign,” and at some point, “sourced experts,
prosecution counsel, licensing counsel, legal counsel, and other key vendors.” Id. On April 11,
2011, Walker Digital filed the underlying case in Delaware against Google and a host of other
defendants, alleging that the “social networking products” of the defendants infringe two patents
from its portfolio: U.S. Patent No. 5,884,270 (“Method and System for Facilitating and
Employment Search Incorporating User-Controlled Anonymous Communications”) and U.S.
Patent No. 5,884,272 (“Method and System for Establishing and Maintaining User-Controlled

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Anonymous Communications”).1 See Compl. [App. 0008-0079]. On April 12, 2011, Walker
Digital issued a press release identifying IP Nav as its “intellectual property advisor.” See
Subpoena Attachment C [App. 0321-0323]. This press release quotes Erich Spangenberg, CEO
of IP Nav, stating that IP Nav had “contacted these companies and urged them to come to the
table ….” Id. Walker Digital has since settled with most of the originally named defendants in
the underlying litigation.2
During discovery, Google served discovery requests to Walker Digital seeking, among
other things, documents relating to any attempts to monetize the patents-in-suit, including
documents relating to licensing and settlement negotiations, the basis for any claimed reasonable
royalty, and any documents relating to any efforts to enforce the patents-in-suit against any party.
See Google’s 1st Set of Requests at Nos. 3-4, 8- 9, 33-36, 52-58, 64; Google’s 2nd Set of
Requests at Nos. 75-77, 83 [App. 0083-0107; 0302-0306]. Google also served discovery
requests to Walker Digital specifically seeking documents related to IP Nav. See Google’s 2nd
Set of Requests at No. 83 [App. 0304]. In the process of meeting and conferring with Walker
Digital, Google learned that IP Nav is the entity that communicates with licensees and potential
licensees of Walker Digital’s patents. See Letter from Google to Walker Digital of July 9, 2012
at 2 (“Your representation that Walker Digital does not communicate directly with its licensees,
including the former Defendants in this action, is separate from whether Walker Digital has such
Following an unconsummated sale of its patent portfolio through auction with ICAP
Ocean Tomo in 2010, Walker Digital filed a series of patent infringement actions against over a
hundred companies. See Founder of Priceline Spoiling for a Fight Over Tech Patents, Wall
Street J., Aug. 22, 2011 [App. 0080-0082].
1

In response to document requests propounded to Walker Digital, Walker Digital has
pointed to IP Nav as the responsible entity for licensing and settlement communications. Among
the documents sought by the subpoena are licensing and settlement negotiations documents
exchanged with the former defendants, including infringement contentions, claim charts, and any
prior art. See Request Nos. 2-3, 5-6, 10-11 [App. 0310-0311].
2

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additional licensing related documents in its possession, custody, or control.”) [App. 0326-0328];
see also email from Walker Digital to Google of July 11, 2012 (“with respect to settlement
negotiations, Walker Digital is still investigating what non-privileged, relevant and responsive
documents exist. Any identified, non-privileged, relevant and responsive documents will be
produced as soon as possible…. [W]ith respect to documents related to IP Navigation, Walker
Digital will consider the proposal to limit the request to documents related to the patents-insuit.”) [App. 0329].
On June 13, 2012, Google served a subpoena duces tecum upon IP Nav, seeking
production of documents relating to the patents-in-suit, including agreements and
communications between IP Nav and Walker Digital, communications with any of the
defendants regarding the patents-in-suit, and any documents relating to licensing or settlement
negotiations. See Subpoena [App. 0307-0325]. After requesting an extension of time to respond
to the subpoena, IP Nav produced fewer than two dozen documents, consisting of two copies of
Walker Digital’s complaint in the underlying litigation, copies of several other Walker Digital
complaints, a series of identical form letters sent to the defendants, and a single draft
presentation to Google. See Letter from Google to Walker Digital of Aug. 3, 2012 [App. 03470348]. Among other deficiencies, IP Nav had failed to produce a single communication with any
of the defendants after the filing of the complaint by Walker Digital who had subsequently
become licensees of the patents-in-suit. In response to Google’s inquiry regarding the lack of
responsive documents in its production, IP Nav contended that the remaining documents were
privileged. See Letter from IP Nav to Google of Aug. 10, 2012 [App. 0349-0350].
During the parties’ meet and confer regarding IP Nav’s refusal to comply with the
subpoena, IP Nav conceded that communications with licensees and former defendants are not

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privileged and would be produced. See Letter from Google to IP Nav of Aug. 28, 2012 [App.
0351-0352]. Google advised that to the extent IP Nav continued to fail to produce all responsive
documents and a proper privilege log by September 7, 2012, Google would have no choice but to
seek judicial assistance to obtain compliance with the June 13, 2012 subpoena.3 Id. On
September 7, 2012, IP Nav produced one additional document, a single page organizational chart
showing nothing more than the names and titles of six individuals working at IP Nav, and
advised that the remaining requested documents are either privileged, should be sought from
Walker Digital, or constitute third party confidential information. See Letter from IP Nav to
Google of Sept. 7, 2012 [App. 0353-0354]. IP Nav’s privilege log not only includes documents
provided to or received from third parties (based on its unsupported position that settlement
discussions can be protected from discovery under Fed. R. Evid. 408) but also fails to indicate
whether any of the authors or recipients are attorneys or even who the purported “client” is in the
withheld communications. See IP Nav Privilege Log Ex. A [App. 0358-0368].

During the meet and confer, counsel for IP Nav advised that many of the requested
documents may no longer exist because document custodians had not been preserving hard
copies or electronic copies of documents on their hard drives. See Letter from Google to IP Nav
of Aug. 28, 2012 [App. 0351-0352]. To the extent documents had not been destroyed or deleted,
IP Nav did not even begin document retention until June 20, 2012 even though it has claimed
work product protection to withhold documents going back to January 2011. See Letter from IP
Nav to Google of Sept. 7, 2012 (“IPNav issued a document hold memorandum to its custodians
on June 20, 2012, instructing them to preserve all related documents.”) [App. 0353-0354]. To
exacerbate matters, the custodians themselves collected documents in response to Google’s
subpoena. See Letter from Google to IP Nav of Aug. 28, 2012 [App. 0351-0352].
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ARGUMENT
I.

IP Nav’s Blanket Assertion Of The Common Interest Privilege To Insulate All
Documents Exchanged Between Two Business Entities From Discovery Is
Unsupported by Fifth Circuit Law.
IP Nav cannot refuse to produce all documents shared between IP Nav and Walker

Digital based on an unsupported allegation of the existence of a common interest.4 See Letter
from IP Nav to Google of Sept. 7, 2012 at 2 [App. 0354]. In the Fifth Circuit, there are only two
types of communications protected under a “common legal interest” or joint defense privilege:
“(1) communications between co-defendants in actual litigation and their counsel; and (2)
communications between potential co-defendants and their counsel.” See In re Santa Fe Intern.
Corp., 272 F.3d 705, 710 (5th Cir. 2001) (“because the privilege is ‘an obstacle to truthseeking,’
it must ‘be construed narrowly to effectuate necessary consultation between legal advisors and
clients’”).
None of the documents listed on IP Nav’s privilege log demonstrate that they are
“communications made among persons ‘who consult an attorney together as a group with
common interests seeking common representation’” or “communications made in the face of
imminent litigation involving multiple potential clients ….” In re Santa Fe, 272 F.3d at 711
(rejecting claim of common interest over document circulated for purposes of ensuring
compliance with antitrust laws and minimize potential risk). Furthermore, to be eligible for

Even the Delaware case on which IP Nav relies to support its position on common legal
interest is unavailing. In Xerox Corp. v. Google Inc., 801 F. Supp. 2d 293 (D. Del. 2011), the
court found that the claim of common legal interest privilege between Xerox and IPValue was
supported by several factors, including the terms of the agreement between the two entities,
which had been produced. Id. at 3 (“Xerox represents that it has produced-- and is not asserting
a common interest privilege with respect to-- communications between Xerox and IPValue that
did not relate to confidential legal advice.”). Unlike the circumstances in Xerox, IP Nav is
refusing to produce all documents and communications that were shared with or involve Walker
Digital in any way.
4

6

protection under the “common legal interest” doctrine in the Fifth Circuit, IP Nav must show that
there was a “palpable threat of litigation at the time of the communication.”5 In re Santa Fe
Intern. Corp., 272 F.3d at 711 (“mere awareness that one’s … conduct might some day result in
litigation” does not qualify for protection of communications between two companies).
The “common legal interest” doctrine is not an independent privilege. Rather, it extends
the protection of the attorney-client privilege and work product doctrine to prevent waiver of
otherwise privileged information. See Hodges, Grant & Kaufmann v. United States, 768 F.2d
719, 721 (5th Cir. 1985) (disclosure of privileged information to third party constitutes waiver
unless the “privileged communication is shared with a third person who has a common legal
interest with respect to the subject matter of the communication”). In other words, nonprivileged documents do not become shielded from discovery simply by virtue of being shared
between two parties who have a common legal interest. Thus, even assuming that IP Nav had
properly proven the existence of a “common legal interest,” which it has not, IP Nav is
improperly applying the privilege to withhold all shared documents and communications. See
SEC v. Microtune, Inc., 258 F.R.D. 310, 316 (N.D. Tex. 2009) (rejecting “categorical approach”
that all documents made by or sent to outside counsel are privileged).
IP Nav’s conclusory contention that its relationship with Walker Digital is “not a purely
commercial relationship” is insufficient to confer attorney-client and work product protection

Similarly, for any of the documents listed in IP Nav’s privilege log to qualify for
protection under the attorney work product doctrine, IP Nav must show that the documents were
prepared “in anticipation of litigation or for trial.” Fed. R. Civ. P. 26(b)(3). IP Nav did not issue
a litigation hold memorandum until June 20, 2012, over a year-and-a-half after it entered into a
business relationship with Walker Digital. Thus, either IP Nav did not anticipate litigation or it
failed to comply with its obligation to preserve relevant evidence. See Rimkus Consulting
Group, Inc. v. Cammarata, 688 F. Supp. 2d 598, 612 (S.D. Tex. 2010) (duty to preserve arises
when party “should have known that the evidence may be relevant to future litigation”).
5

7

over all documents and communications exchanged between them. See In re Royce Homes, LP,
449 B.R. 709 (Bankr. S.D. Tex. 2011) (rejecting proposed application of common legal interest
doctrine where no evidence was presented and no common defense agreement was produced).
Indeed, according to IP Nav, its patent portfolio monetization approach is “[b]usiness driven, not
litigation driven.” See http://www.ipnav.com/about-us/our-philosophy [App. 0002]. Moreover,
even though the “common legal interest” doctrine protects only communications between
“potential co-defendants and their counsel,” In re Santa Fe Intern. Corp., 272 F.3d at 710, IP
Nav appears to be withholding even communications between non-lawyers. See Letter from IP
Nav to Google of Sept. 7, 2012 at 2 (“Any relevant documents involving Jay Walker [named
inventor and non-lawyer] have been included in the attached Privilege Log.”) [App. 0354]. IP
Nav’s privilege log does not identify the role or job titles of any of the listed individuals, or even
which entity employs the listed individuals, making it difficult if not impossible to identify how
many of the purportedly privileged communications involve non-lawyers, clients, or even third
parties. Cf. Navigant Consulting, Inc. v. Wilkinson, 220 F.R.D. 467, 474 (N.D. Tex. 2004) (“A
proper claim of privilege requires a specific designation and description of the documents within
its scope as well as precise and certain reasons for preserving their confidentiality.”); see also
Tex. R. Evid. 503(b).
IP Nav’s privilege log demonstrates that IP Nav has not met its burden to support any
claim of attorney-client privilege with respect to the documents that IP Nav has managed not to
destroy despite its failure to preserve documents until June 20, 2012. See IP Nav’s Privilege Log
Ex. A (e.g., claiming common interest, attorney-client privilege, and work product over an
“Advisory Services Agreement;” withholding communication between Walker Digital and
Facebook; failing to identify any attorneys or the companies for any listed author or recipient)

8

[App. 0358-0368]. Thus, IP Nav should be ordered to produce all of the documents identified in
its privilege log for which it has failed to demonstrate the existence of a valid privilege as
required by In re Santa Fe and Navigant.
II.

Relevant Settlement Documents Are Not Shielded From Discovery Under Any
Privilege or Pursuant to Fed. R. Evid. 408.
IP Nav has refused to produce numerous documents responsive to the subpoena based on

a “408 privilege,” which IP Nav has designated as “Settlement Confidential,” encompassing
documents sent to other parties such as Facebook, Tagged, MySpace, Friendster, and even
Google. See IP Nav’s Privilege Log Ex. A at 1-8 [App. 0359-0366]. Nothing in Fed. R. Evid.
408 allows a party to withhold documents from disclosure in discovery. Settlement information
is not only discoverable, it may be admissible for purposes other than proving liability or the
amount of a claim. See Fed. R. Evid. 408 (compromise offers and negotiations inadmissible “to
prove or disprove the validity or amount of a disputed claim or to impeach by a prior inconsistent
statement or a contradiction”). Rule 408 only excludes from admissibility evidence of
“furnishing, promising or offering…a valuable consideration in compromising or attempting to
compromise the claim” and “conduct or a statement made during compromise negotiations about
the claim.”6 The scope of discovery is governed by Fed. R. Civ. P. 26(a)(1), which provides that
“[r]elevant information need not be admissible at the trial if the discovery appears reasonably
calculated to lead to the discovery of admissible evidence.”
Indeed, the Federal Circuit has expressly rejected IP Nav’s position: “In enacting Rule
408, Congress did not take the additional step of protecting settlement negotiations from
6

Many of the documents included on IP Nav’s privilege log as being withheld under the
“408 privilege” are also alleged to be subject to attorney-client privilege and work product
doctrine. See, e.g., IPNAV000264 - IPNAV000472 [App. 0359]. If evidence is inadmissible
under Fed. R. Evid. 408, it would necessarily have been “furnish[ed], promis[ed], or offer[ed]” to
a third party, meaning that any attorney client or work product protection is thereby waived.
9

discovery. Adopting a settlement privilege would require us to go further than Congress thought
necessary ….” In re MSTG, Inc., 674 F.3d 1337, 1344 (Fed. Cir.) (holding that district court did
not abuse discretion by ordering production of negotiation documents underlying settlement
agreements), reh’g en banc denied (2012). In addition, because the settlement agreements are
currently the only licenses of the patents-in-suit to entities unaffiliated with Walker Digital, the
underlying negotiation documents sought from IP Nav are particularly relevant and necessary to
determine at least why different defendants may have settled for different amounts, the influence
of any secondary agreements on the value of settlement (such as patent purchase agreements),
the relationship of the patents-in-suit to the overall settlement value, the effect of each party’s
infringement or invalidity contentions on the final settlement agreement, as well as the basis for
the plaintiff’s reasonable royalty claim. See, e.g., Clear with Computers, LLC v. Bergdorf
Goodman, 753 F. Supp. 2d 662, 664 (E.D. Tex. 2010) (compelling discovery of settlement
negotiations where settlement agreements will “likely be the only licenses of the patents-in-suit”
and therefore have “increase relevance”).
According to IP Nav, “[m]anaging an effective patent monetization campaign requires …
compiling, tagging, and mining data on patent claims and commercial products,” “analyzing
each of [the] claims to assess the business case,” “retaining, consulting and coordinating with the
inventors,” and “[a]ssembling and retaining a prosecution team.” See http://www.ipnav.com/
what-we-do/ [App. 0003-0004]. Google’s subpoena seeks IP Nav’s assessment of Walker
Digital’s “business case,” including documents relating to the patents-in-suit, the named
inventors, and the accused products. Any analysis of the value, invalidity, or infringement of the
patents-in-suit, whether conducted by IP Nav or third parties, is highly relevant to Google’s own
defenses. See, e.g., Phoenix Solutions, Inc. v. Wells Fargo Bank, N.A., 254 F.R.D. 568, 582-583

10

(N.D. Cal. 2008) (compelling production of documents related to third party infringement and
finding that “licensing and infringement positions may be taken and discarded or otherwise
changed over time based on a myriad of extrinsic factors that could well be relevant to another
party accused of infringement.”). In view of the lack of any valid privilege and the relevance of
such documents, IP Nav should be ordered to produce all documents identified in its privilege
log as being protected by “408.”
III.

IP Nav Has Not Offered Any Facts To Substantiate Any Alleged Undue Burden.
IP Nav’s sole basis for claiming undue burden is its contention that “any relevant, non-

privileged agreements, communications, and other information” exchanged between Walker
Digital and IP Nav or between Walker Digital and third parties “should be sought from Walker
Digital.”7 See Letter from IP Nav to Google of Sept. 7, 2012 at 1 [App. 0353]. IP Navigation
has presented no other reason or any facts to support its contention that producing the requested
documents over which it has failed to show the existence of any valid privilege (which consist of
approximately 1200 pages) would be unduly burdensome.
To determine whether a subpoena presents an undue burden, the Fifth Circuit considers
the following factors: “(1) relevance of the information requested; (2) the need of the party for
the documents; (3) the breadth of the document request; (4) the time period covered by the
request; (5) the particularity with which the party describes the requested documents; and (6) the
burden imposed.” See Wiwa v. Royal Dutch Petroleum Co., 392 F.3d 812, 818 (5th Cir. 2004)
The fact that Google is also attempting to resolve the issues with Walker Digital in the
underlying litigation in Delaware cannot be the basis for IP Nav’s refusal to comply with a valid
subpoena from the Northern District of Texas. See, e.g., Software Rights Archive, LLC v. Google
Inc., 2009 WL 1438249, at *2 (D. Del. May 21, 2009) (no absolute rule prohibiting party seeking
to obtain same documents from non-party as can be obtained from a party; furthermore, “where a
party requests documents from a non-party that are likely to be in the possession of an opposing
party, production of documents is appropriate where those documents constitute a non-welldefined set whose completeness is not readily verifiable”).
7

11

(reversing quashing of subpoena and denial of motion to compel); accord Ohio Valley Envtl.
Coal., Inc. v. U.S. Army Corps of Engineers, 2010 U.S. Dist. LEXIS 4123, at *8-10 (D. Md. Jan.
12, 2012) (refusing to quash subpoena where respondent put forth only “broad assertions” of
undue burden). The limited time period, scope, and even the quantity of the documents at issue
is clear from the requests in the subpoena and IP Nav’s improper privilege log. In view of the
circumstances set forth above, including the fact that Walker Digital identified IP Nav as the
entity responsible for settlement negotiations with defendants and potential licensees and the fact
that Walker Digital has yet to produce any such documents in discovery, such as prior art,
infringement contentions, claim charts, the need and relevance of these documents is evident. IP
Nav’s vague, unsubstantiated “undue burden” objection should therefore be overruled.
CONCLUSION
For the foregoing reasons, Google respectfully requests that the Court issue an order
compelling IP Nav to fully comply with the June 13, 2012 Subpoena Duces Tecum and produce
all responsive documents in its possession, custody, or control and to provide an adequate
privilege log for any documents properly withheld on the grounds of attorney-client privilege or
work product doctrine.
Dated: September 17, 2012

Respectfully submitted,
/s/ J. Robert Arnett II
_______
E. Leon Carter (Texas Bar No. 03914300)
[e-mail]
J. Robert Arnett II (Texas Bar No. 01332900)
[e-mail]
CARTER STAFFORD ARNETT HAMADA
& MOCKLER, PLLC
8150 N. Central Expressway, Suite 1950
Dallas, Texas 75206
Telephone: [phone]
ATTORNEYS FOR GOOGLE INC.
12

CERTIFICATE OF SERVICE
I hereby certify that a true and correct copy of the foregoing document was served on the
following counsel on September 17, 2012 via first class mail and electronic mail.
Amy E. LaValle
SKIERMONT PUCKETT, LLP
2200 Ross Ave, Suite 4301
Dallas, TX 75201
[e-mail]
Attorneys for IP Navigation Group
Richard D. Kirk
Stephen B. Brauerman
Vanessa Ribeiro Tiradenes
BAYARD, P.A.
222 Delaware Avenue, Suite 900
Wilmington, DE 19899
[e-mail]
[e-mail]
[e-mail]

Mark A. Fenster
Alexander C. Giza
Bruce D. Kuyper
Benjamin T. Wang
Andrew D. Weiss
RUSS, AUGUST & KABAT
12424 Wilshire Boulevard, 12th Floor
Los Angeles, CA 90025
Attorneys for Walker Digital, LLC

Attorneys for Walker Digital, LLC
Nicholas A. Brown
Sarah E. Barrows
Dana K. Powers
Stephen M. Ullmer
GREENBERG TRAURIG, LLP
Four Embarcadero Center
Suite 3000
San Francisco, CA 94111
[e-mail]

Daralyn J. Durie
Ryan M. Kent
Eugene Novikov
Durie Tangri LLP
217 Leidesdorff Street
San Francisco, CA 94111
[e-mail]
[e-mail]
[e-mail]

Attorneys for Defendant LinkedIn
Corporation

Attorneys for Defendant LinkedIn Corporation

/s/ J. Robert Arnett II
J. Robert Arnett II

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