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GREGORY P. STONE (#78329) KEITH R. D. HAMILTON (#252115) MUNGER, TOLLES & OLSON LLP 355 South Grand Avenue, 35th Floor Los Angeles, CA 90071-1560 Telephone: (213) 683-9100; Facsimile: (213) 687-3702 E-mail: [email protected]; [email protected] BURTON A. GROSS (#166285) CAROLYN HOECKER LUEDTKE (#207976) MIRIAM KIM (#238230) MUNGER, TOLLES & OLSON LLP 560 Mission Street, 27th Floor San Francisco, CA 94105-2907 Telephone: (415) 512-4000; Facsimile: (415) 512-4077 E-mail: [email protected]; [email protected]; [email protected]

10 Attorneys for Plaintiff RAMBUS INC. 11 12

UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA, SAN JOSE DIVISION

13 RAMBUS INC.,

CASE NO.: C 05-00334 RMW

14 Plaintiff, 15 v. 16 HYNIX SEMICONDUCTOR INC., et al.,

RAMBUS INC.’S OPPOSITION TO SAMSUNG’S MOTION IN LIMINE TO EXCLUDE PRIVILEGED DOCUMENTS PRODUCED PURSUANT TO THE COURT’S IMPLIED WAIVER ORDER

17 Defendants 19

Date: Time: Location: Judge:

20

[PUBLIC REDACTED VERSION]

18

September 16, 2008 2:00 p.m. Courtroom 5 Hon. Ronald M. Whyte

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RAMBUS INC.,

CASE NO.: C 05-02298 RMW Plaintiff,

3 v. 4 5

SAMSUNG ELECTRONICS CO., LTD., et al., Defendants

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TABLE OF CONTENTS

2

Page

3

I.

INTRODUCTION .............................................................................................................. 1

4

II.

BACKGROUND ................................................................................................................ 3

III.

ARGUMENT ...................................................................................................................... 6

5 6

A.

Samsung’s Steinberg-Related Claims and Defenses Remain In These Cases........ 6

B.

Samsung Waived Any Attorney-Client Privilege Or Work Product Claims Over These Documents ........................................................................................... 8

C.

Samsung Has Not Established That These Documents Are Protected By The Attorney-Client Privilege Or Work Product Doctrine ................................... 11

7 8 9

1.

Meeting Minutes (Exhibits 9077/A, 9078/A, 9081/A, 9136, 9137, 9138) ......................................................................................................... 13

2.

Jay Shim Memorandum To “All” (Exhibits 9061 & 9129) ...................... 17

3.

Charles Donohoe Emails Summarizing Rambus Meetings (Exhibits 9079 & 9134) ............................................................................................ 18

4.

Neil Steinberg Letter on NEC Matter (Exhibit 9128)............................... 21

5.

Ik Cheol Kim Memorandum (Exhibit 9133)............................................. 21

10 11 12 13 14

6.

“Rambus Again” Email (Exhibit 9139) .................................................... 22

15

7.

“Anita Thinks” Email From Donohoe (Exhibit 9321).............................. 22

16

8.

Donohoe/Healey/Park Email Chain (Exhibits 9334 & 9335) ................... 23

17

9.

2001 Memoranda Regarding Steinberg Calls (Exhibits 9336 & 9337) ......................................................................................................... 23

10.

Exhibit 9351 .............................................................................................. 24

18 19

IV.

CONCLUSION ................................................................................................................. 25

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TABLE OF AUTHORITIES

2

Page

3

FEDERAL CASES

4

Bittaker v. Woodford, 331 F.3d 715 (9th Cir. 2003)............................................................................................... 6, 10 Boston Scientific Corp. v. Cordis Corp., 2008 WL 1766757 (N.D. Cal. Apr. 15, 2008) .......................................................................... 9 Brinton v. Dep’t of State, 636 F.2d 600 (Fed. Cir. 1980)................................................................................................. 18 Byrnes v. Empire Blue Cross Blue Shield, 1999 WL 1006312 (S.D. N.Y. Nov. 4, 1999) ................................................................... 12, 16 Clarke v. Am. Commerce Nat. Bank, 974 F.2d 127 (9th Cir. 1992)............................................................................................. 11, 17 Dawson v. New York Life Ins. Co., 901 F.Supp. 1362 (N.D. Ill. 1995) .................................................................................... 18, 24 Diamond State Ins. Co. v. Rebel Oil Co., Inc., 157 F.R.D. 691 (D. Nev. 1994)........................................................................................ passim E.E.O.C. v. Safeway Store, Inc., 2002 WL 31947153 (N.D. Cal. Sept. 16, 2002) ..................................................................... 20 Evans v. United Fire & Cas. Ins. Co., 2007 WL 2323363 (E.D. La. Aug. 9, 2007) ........................................................................... 12 Genentech, Inc. v. United States Int’l. Trade Com'n, 122 F.3d 1409 (Fed. Cir. 1997)............................................................................................. 2, 8 Hearn v. Rhay, 68 F.R.D. 574 (E.D. Wash. 1975)............................................................................................. 9 Hercules, Inc. v. Exxon Corp., 434 F.Supp. 136 (D. Del. 1977) .............................................................................................. 12 Home Indem. Co. v. Lane Powell Moss and Miller, 43 F.3d 1322 (9th Cir. 1995)..................................................................................................... 9 Hynix Semiconductor Inc. v. Rambus Inc., 2008 WL 350641 (N.D. Cal. Feb. 2, 2008) ...................................................................... 10, 12 In re Bonanno, 344 F.2d 830 (2d Cir. 1965).................................................................................................... 11 In re CV Therapeutics, Inc. Sec. Litig., 2006 WL 1699536 (N.D. Cal. June 16, 2006) ........................................................................ 15 In re G-I Holdings Inc., 218 F.R.D. 428 (D. N.J. 2003) .................................................................................................. 8 Matter of Fischel, 557 F.2d 209 (9th Cir. 1977)................................................................................................... 20 North Pacifica, LLC v. City of Pacifica, 274 F.Supp. 2d 1118 (N.D. Cal. 2003) ............................................................................. 17, 18

5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

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TABLE OF AUTHORITIES (continued) Page Rambus Inc. v. Samsung Electronics Co., Ltd., 2007 WL 3444376 (N.D. Cal. Nov. 13, 2007)................................................................. passim Regents of Univ. of Cal. v. Micro Therapeutics, Inc., 2007 WL 2069946 (N.D. Cal. July 13, 2007)............................................................. 19, 21, 24 Starsight Telecast, Inc. v. Gemstar Dev. Corp., 158 F.R.D. 650 (N.D. Cal. 1994) ...................................................................................... 11, 12 Tennison v. City & Cty. of San Francisco, 226 F.R.D. 615 (N.D. Cal. 2005) .............................................................................................. 9 United States v. Chevron Corp., 1996 WL 264769 (N.D. Cal. Mar. 13 1996).................................................................... passim United States v. Martin, 278 F.3d 988 (9th Cir. 2002)............................................................................................... 2, 11 United States v. Suarez, 820 F.2d 1158 (11th Cir. 1987)................................................................................................. 8 von Bulow by Auersperg v. von Bulow, 811 F.2d 136 (2d Cir. 1987).............................................................................................. 11, 21 STATUTES AND RULES Civil Local Rule 7-2(c) ................................................................................................................... 3 Fed. R. Civ. P. 26(b)(3)........................................................................................................... 20, 23 OTHER AUTHORITIES

16 17

2 Paul R. Rice, Attorney-Client Privilege in the U.S. (2008).......................................................... 8 8 Wigmore, Evidence (McNaughton rev. 1961) ............................................................................. 8

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INTRODUCTION Samsung affirmatively waived its privilege with respect to certain communications related

2 3

to Neil Steinberg’s work for Samsung and Rambus. In November 2007, this Court affirmed the

4

Special Master’s finding of an implied waiver and gave Samsung the opportunity to elect to

5

proceed with its Steinberg-related claims and defenses and lose its privilege for certain

6

documents, or to drop its Steinberg-related claims and defenses and preserve its privilege. See

7

Rambus Inc. v. Samsung Electronics Co., Ltd., Nos. 05-0334-RMW, 05-02298-RMW, 2007 WL

8

3444376, at *3 (N.D. Cal. Nov. 13, 2007) (“November 2007 Waiver Order”). Samsung elected to

9

put its privileged communications at issue in this litigation and thus permanently and hereinafter

10

gave up its right to claim privilege for those communications. Nevertheless, Samsung now seeks

11

to reverse that decision and reclaim its privilege in light of this Court’s August 11, 2008 dismissal

12

of its counterclaims that were based on Mr. Steinberg’s work at Rambus. Specifically, Samsung

13

asks this Court to prevent Rambus from using certain documents produced after the November

14

2007 Waiver Order because Samsung once placed them on a privilege log. There is no basis for

15

Samsung’s effort to undo its affirmative use of its privileged communications now that the

16

calculated risk it took has not paid off. Moreover, Samsung offers no evidence that the

17

documents at issue in its motion in limine are actually privileged. Samsung’s motion is contrary

18

to law, unsupported by the facts, and must be denied.

19

First, this motion is based on a flawed premise that the Steinberg-related allegations are

20

no longer in the September 22, 2008 Trial (“September 2008 Trial”). 1 This is not true. Indeed,

21

Samsung concedes as much in its moving papers, noting that “Samsung alleges additional claims

22

and defenses related to the conduct of Mr. Steinberg: specifically, its Count X ... and its Sixth,

23

Seventh, and Eighth Affirmative Defenses.” Samsung’s Motion in Limine To Exclude Privileged

24

Documents Pursuant to the Court’s Implied Waiver Order (“Mot.”) at 2 n.2. There is no reason

25

the documents produced pursuant to the Court’s implied waiver orders cannot properly be before

26

1

27 28

At the September 11, 2008 pretrial conference, Samsung’s counsel stated that Samsung would soon file a pleading with the Court dismissing all of Samsung’s claims and defenses related to JEDEC, the RDRAM licenses, and Mr. Steinberg. As of the filing of this opposition, no such notice of dismissal has been filed.

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the Court in the September 2008 Trial where the Steinberg-related claims and defenses will be

2

resolved.

3

Second, even if the Steinberg-related claims and defenses were not in the September 2008

4

Trial, Samsung has no right to reclaim its privilege after voluntarily relinquishing it. Samsung’s

5

attempt to reassert its privilege claims over these 22 documents conflicts with the well-settled rule

6

that, “[o]nce the attorney client privilege has been waived, the privilege is generally lost for all

7

purposes and in all forums.” Genentech, Inc. v. United States Int’l. Trade Com'n, 122 F.3d 1409,

8

1416 (Fed. Cir. 1997). The Court affirmed the Special Master’s finding of waiver through claim

9

assertion in its November 2007 Waiver Order, noting therein that Samsung was entitled to

10

preserve the confidentiality of its documents, and thereby avoid waiver, by retracting the claims

11

implicating these materials. November 2007 Waiver Order, 2007 WL 3444376, at *6. Samsung

12

was therefore given a choice either to proceed with its Steinberg-related claims and waive its

13

attorney-client privilege or to withdraw those claims and preserve the privilege. Samsung chose

14

to proceed and voluntarily produced 556 documents for in camera inspection. Samsung has

15

therefore affirmatively waived its claims of attorney-client privilege and work product protection

16

for these documents. Because there is no legal basis for Samsung to reassert its privilege after

17

this waiver, Samsung’s motion should be denied.

18

Finally, there is no evidence that any of the documents at issue in Samsung’s motion are

19

even privileged. Samsung has failed to carry its burden of demonstrating that the attorney-client

20

privilege or work product doctrine applies to each of the 22 documents at issue. See United

21

States v. Martin, 278 F.3d 988, 999-1000 (9th Cir. 2002). This burden is not discharged by the

22

citations to a privilege log and the generalized assertions of privilege and work product immunity

23

that Samsung presents at pages 7 through 10 of its motion. Indeed, as demonstrated by the face

24

of the documents and related testimony, these purportedly privileged communications -- most of

25

which were prepared in the course of the parties’ license negotiations in 2000 and 2001 -- do not

26

transmit any legal advice at all. Accordingly, Samsung has not and cannot demonstrate under any

27

theory that these documents should be excluded from the September 2008 Trial.2

28

2

Samsung has not complied with the Civil Local Rule requiring submission of a proposed order -25908918.1 RAMBUS INC.’S OPPOSITION TO SAMSUNG’S MOTION IN LIMINE TO EXCLUDE PRIVILEGED DOCUMENTS PRODUCED PURSUANT TO THE COURT’S IMPLIED WAIVER ORDER; CASE NOS. 05-00334, 05-02298

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BACKGROUND On September 26, 2007 the Special Master concluded that, as a result of Samsung’s

3

affirmative factual assertions related to Neil Steinberg, “Samsung has waived any attorney-client

4

privilege and work product claims it might have regarding: (1) Samsung’s knowledge of the work

5

Mr. Steinberg performed for Rambus; and (2) the work that Mr. Steinberg performed while at

6

Samsung that purportedly gave him access to the (largely unspecified) confidential information

7

that Samsung claims was taken and misused.” Order Granting Rambus Inc.’s Motion to Compel

8

Regarding Samsung’s Privilege Waiver by Claim Assertion, Docket 473, C-05-0334-RMW (RA),

9

at 17 (N.D. Cal. Oct. 1, 2007). Specifically, the Special Master found that “[a]llowing Samsung

10

to assert the attorney-client [privilege] would deny Rambus access to information vital to its

11

defense,” and that “fairness” required disclosure of Samsung’s privileged information concerning

12

these topics. See id. at 15-16. Samsung was therefore ordered to produce all documents related

13

to “(a) Mr. Steinberg’s work for Rambus; and (b) the work that Mr. Steinberg performed for

14

Samsung that purportedly gave him access to the information Samsung claims he later misused at

15

Rambus.” Id. at 17.

16

On November 13, 2007, in response to Samsung’s appeal of the Special Master’s order,

17

this Court concluded that “[t]he Special Master did not err in finding that Samsung had asserted

18

the privilege as a result of affirmatively pleading that it was entitled to tolling and that Steinberg

19

had taken confidential information.” November 2007 Waiver Order, 2007 WL 3444376, at *3.

20

However, noting the Ninth Circuit’s guidelines regarding the implied waiver doctrine, see id. at

21

*6, the Court reduced the scope of the categories of documents that would be subject to waiver

22

and gave Samsung the option to avoid disclosure of its documents by retracting those claims that

23

implicated waiver. See id. at *7 (“The Special Master should first give Samsung the option of

24

declining to proceed with its claims. If Samsung chooses to proceed, the Special Master should

25 26 27 28

with its motion in limine, nor has it requested an exemption from this Court. See Civil Local Rule 7-2(c) (“Unless excused by the Judge who will hear the motion, each motion must be accompanied by a proposed order.”). Rambus’s opposition is therefore directed to the form of relief requested on Samsung’s Notice of Motion, which seeks “an order barring Rambus from introducing, discussing, or eliciting testimony regarding any privileged document produced by Samsung pursuant to this Court’s implied waiver order.” Mot. (Notice) at 1. -35908918.1 RAMBUS INC.’S OPPOSITION TO SAMSUNG’S MOTION IN LIMINE TO EXCLUDE PRIVILEGED DOCUMENTS PRODUCED PURSUANT TO THE COURT’S IMPLIED WAIVER ORDER; CASE NOS. 05-00334, 05-02298

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conduct an in camera review of the documents affected by the implied waiver.”). In the event

2

that Samsung elected to proceed with its claims and waive its privilege claims, the Court required

3

the eventual production to be “closely tailored” such that “[o]nly documents vital to Rambus’

4

ability to fairly present its case should be produced.” Id. at *7.

5

On April 16, 2008, the Special Master issued his first in camera order requiring Samsung

6

to produce to Rambus all of the documents on Samsung’s privilege log that Samsung conceded

7

fall within the terms of the November 2007 Waiver Order, and to provide additional briefing

8

regarding any documents it elected to withhold. Order Re In Camera Review of Samsung

9

Documents (Amended), Docket No. 1683-2, C-05-0334-RMW (RA), at 18 (N.D. Cal. April 16,

10

2008). (“First In Camera Order”). 3 The Special Master specifically required Samsung to clarify

11

“the scope of the confidential Samsung information obtained by Steinberg that Samsung contends

12

Steinberg provided to Rambus.” Id. On April 28, 2008, Samsung produced 163 documents in

13

response to the Special Master’s order, including Exhibit 9128, and redacted versions of Exhibits

14

9078 and 9079. 4 Subsequently, Samsung submitted a corrected privilege log, supplemental

15

documentation and briefing regarding the documents withheld from its production to Rambus.

16

On June 30, 2008, the Special Master issued an order requiring Samsung to produce

17

further documents and portions of documents from its Steinberg-related privilege logs that

18

demonstrated Samsung’s knowledge of Mr. Steinberg’s work for Rambus. See Order Re In

19

Camera Review of Steinberg Documents, Docket No. 1929, C-05-0334-RMW, at 26 (N.D. Cal.

20

July 1, 2008) (“Second In Camera Order”). 5 Specifically, the Special Master ordered Samsung to

21

produced complete or redacted versions of 16 documents raised in Samsung’s motion, including

22

Exhibits 9061, 9077A, 9081, 9129, 9133, 9134, 9136, 9137, 9138, 9139, 9321, 9336, 9337, and

23

3

24

In issuing this order, the Special Master also expressed concern regarding the validity of Samsung’s privilege claims and raised the suggestion that “Samsung is withholding documents merely because they mention Steinberg.” First In Camera Order at 16.

25

4

26 27 28

Unless otherwise noted, all citations to “Exhibits” refer to exhibits included on the parties’ exhibit lists for the September 22, 2008 trial. 5 The Special Master also found that “Samsung’s responses to the April 14, 2008 order do not comply with the April 14, 2008 order,” and that he was therefore unable to determine whether Samsung produced all information related to Mr. Steinberg’s alleged use of Samsung confidential information while employed by Rambus. Second In Camera Order at 24 (emphasis in original). -45908918.1 RAMBUS INC.’S OPPOSITION TO SAMSUNG’S MOTION IN LIMINE TO EXCLUDE PRIVILEGED DOCUMENTS PRODUCED PURSUANT TO THE COURT’S IMPLIED WAIVER ORDER; CASE NOS. 05-00334, 05-02298

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9351. See id. at 32-33 (identifying these exhibits by their “SSP” privilege log entries). 6 Samsung

2

objected to the disclosure of purported “mental impressions and opinions of Samsung’s counsel”

3

within four of these documents -- including Exhibits 9321, 9133, 9134, and 9138 -- and filed a

4

partial appeal with this Court on that limited ground. See Samsung Letter Brief, Docket No. 957,

5

C-05-0334-RMW, at 1 (N.D. Cal. July 9, 2008).

6

On July 16, 2008, this Court overruled each of Samsung’s individual objections related to

7

the disclosure of “attorney mental impressions” in Exhibits 9133, 9134, and 9138, finding that the

8

passages in question were “vital” to Rambus’s defense. 7 See Order Sustaining in Part and

9

Overruling in Part Samsung’s Objections to Implied Waiver Order, Docket No. 1964, C-05-

10

00334-RMW, at 6-7 (N.D. Cal. July 16, 2008) (referring to Exhibit 9133 as “SSP 1673,” to

11

Exhibit 9134 as “SSP 1718,” and to Exhibit 9138 as “SSP 1726”). With respect to Exhibit 9321,

12

the Court overruled all but one of Samsung’s objections. See id. at 6 (referring to Exhibit 9321 as

13

“SSP 1619”). Following the Court’s order, Samsung identified Exhibits 9334 and 9335, which

14

correspond to privilege log entry “SSP 2025,” as falling within the scope of the Special Master’s

15

Second In Camera Order, and produced this document to Rambus. See Order Amending June 30,

16

2008 Order Re: In Camera Review of Steinberg Documents, Docket No. 1999, C-05-0334 (N.D.

17

Cal. July 30, 2008).

18

On August 11, 2008, this Court granted Rambus’s motion for summary judgment on

19

Counts IV, V, and VI and partial summary judgment on Count VII of Samsung’s Second

20

Amended Counterclaims. See Order Granting Rambus’s Motion for Summary Judgment on

21

Counts IV-VII of Samsung’s Counterclaims, Docket No. 2059, C-05-00334-RMW (N.D. Cal.

22

Aug. 18, 2008) (“August 2008 Summary Judgment Order”). Thereafter, the Special Master

23

suspended his in camera review of Steinberg-related documents submitted by Samsung. See

24

6

25 26 27 28

The Second In Camera Order addressed Trial Exhibits 9077A and 9081 without reference to the certified translations, which are listed separately in Samsung’s motion in limine as exhibits 9077 and 9081A, respectively. See Mot. at 3. 7

In ruling on Samsung’s objections, the Court specifically noted that it was not addressing whether Samsung had carried its burden of establishing the privilege with respect to any of the documents cited in Samsung’s appeal. See Order Sustaining in Part and Overruling in Part Samsung’s Objections to Implied Waiver Order, Docket No. 1964, C 05-00334-RMW, at 7 (N.D. Cal. July 16, 2008).

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Third Order of the Special Master Re In Camera Review of Steinberg Documents, Docket No.

2

2118-2, C 05-00334-RMW, at 7 (N.D. Cal. Sept. 2, 2008) (“Third In Camera Order”).

3

Following the parties’ unsuccessful attempts to reach a stipulation of dismissal with

4

prejudice regarding Samsung’s remaining Steinberg-related claims and defenses -- including

5

Count X of Samsung’s counterclaims, and its Sixth, Seventh, and Eighth affirmative defenses --

6

Samsung filed a motion to dismiss these claims on September 2, 2008. See Samsung’s Motion to

7

Dismiss Certain Claims and Defenses Without Prejudice, Docket No. 2119, C 05-00334-RMW

8

(N.D. Cal. Sept. 2, 2008). Concluding that dismissal of these claims would be “enormously

9

prejudicial to Rambus,” the Court denied Samsung’s motion on September 5, 2008. Order

10

Granting Samsung’s Motion to Shorten Time and Denying Samsung’s Motion to Dismiss, Docket

11

No. 2139, C 05-00334-RMW, at 2 (N.D. Cal. Sept. 5, 2008). As a result, the Steinberg-related

12

declaratory judgment claim (Count X) and affirmative defenses are set for the September 22,

13

2008 Trial.

14

III.

ARGUMENT

15

A.

Samsung’s Steinberg-Related Claims and Defenses Remain In These Cases.

16

The entirety of Samsung’s motion proceeds from the faulty assumption that the claims and

17

defenses supporting the Court’s finding of implied waiver have disappeared from these cases.

18

They have not. Accordingly, because “parties in litigation may not abuse the privilege by

19

asserting claims the opposing party cannot adequately dispute unless it has access to the

20

privileged materials,” Bittaker v. Woodford, 331 F.3d 715, 719 (9th Cir. 2003), the reasoning

21

underlying the Court’s implied waiver order remains applicable and Samsung’s motion should be

22

denied.

23

The Court’s August 11, 2008 order granted Rambus’s motion for summary judgment on

24

Counts IV-VI of Samsung’s counterclaims, and partial summary judgment on Count VII to the

25

extent it relied on the acts alleged in Counts IV-VI. See August 2008 Summary Judgment Order

26

at 2, 14. Samsung argues that, because these claims will not be addressed in the September 2008

27

Trial, the continued use of Samsung’s purportedly privileged documents “is contrary to the

28

reasoning and intent of the Court’s implied waiver order.” Mot. at 4. Even if this were true (and -65908918.1 RAMBUS INC.’S OPPOSITION TO SAMSUNG’S MOTION IN LIMINE TO EXCLUDE PRIVILEGED DOCUMENTS PRODUCED PURSUANT TO THE COURT’S IMPLIED WAIVER ORDER; CASE NOS. 05-00334, 05-02298

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it is not), Samsung argument ignores the fact that other Steinberg-related claims and defenses

2

were not part of Rambus’s motion for summary judgment. Count X of Samsung’s Second

3

Amended Complaint incorporates all of its Steinberg-related factual allegations, and seeks a

4

declaratory judgment of unenforceability under “the equitable doctrines of prosecution laches,

5

unclean hands, and estoppel.” Second Amended Answer to Complaint for Patent Infringement,

6

Docket No. 87, C 05-02298-RMW, at ¶¶ 275-80 (N.D. Cal. Jan. 24, 2007). Additionally,

7

Samsung describes its affirmative defenses of equitable estoppel, estoppel and implied license as

8

alleging misconduct by Mr. Steinberg. See Joint Case Management Conference Statement,

9

Docket No. 295, C 05-00334-RMW, at Attachment 4, 2-3 (N.D. Cal. July 31, 2007).

10

Samsung flatly concedes that there are “additional claims and defenses related to the

11

conduct of Mr. Steinberg,” but maintains that it “does not intend to pursue any of these remaining

12

Steinberg-related claims or defenses in the September 22 trial” and notes that it has filed a motion

13

to dismiss. See Mot. at 2 n.2. Samsung, of course, lost its motion to dismiss and has not elected

14

to dismiss these Steinberg-related claims and defenses with prejudice. Absent a binding

15

stipulation of dismissal with prejudice, Samsung’s purported intent not to pursue these claims is

16

an irrelevant, unsupported statement. See id. Insofar as these claims remain in these cases,

17

Samsung’s knowledge regarding Steinberg’s work for Rambus is “at issue” and the application of

18

the implied waiver doctrine to documents disclosing this knowledge remains in force.

19

In any event, Samsung’s attempt to segregate the presentation of evidence between

20

individual claims and defenses conflicts with prior statements by Samsung that such divisions

21

would be unfair. In a letter to the Court seeking to excuse Samsung from the January 29, 2008

22

trial, and again in its administrative motion for deconsolidation, Samsung stated that “Samsung’s

23

claims are based on a relationship and course of conduct unique to Samsung and Rambus,

24

including ... Rambus’s hiring of Samsung’s employees, ... the 2000 SDRAM/DDR license, ... and

25

Samsung’s Most Favored Licensee rights under the SDRAM/DDR license.” Declaration of Keith

26

R. D. Hamilton in Support of Rambus’s Opposition to Mot. (“Hamilton Decl.”), Exh. A (Letter

27

from Samsung’s Counsel to the Court, November 2, 2007); Motion for Administrative Relief to

28

Set a Case Management Conference, Docket No. 703, C 05-00334-RMW, at 4 (N.D. Cal. Nov. -75908918.1 RAMBUS INC.’S OPPOSITION TO SAMSUNG’S MOTION IN LIMINE TO EXCLUDE PRIVILEGED DOCUMENTS PRODUCED PURSUANT TO THE COURT’S IMPLIED WAIVER ORDER; CASE NOS. 05-00334, 05-02298

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13, 2007). In these submissions to the Court, Samsung specifically emphasized that “[t]his fact

2

pattern is best presented and understood in a single trial that permits review of the entire

3

relationship and facts as a whole.” Id.; Hamilton Decl., Exh. A. Samsung’s counsel repeated this

4

argument to the Court, claiming that “having us break up our story and tuck in bits and pieces

5

here and there and not tell it coherently is very prejudicial.” Id., Exh. B (H’g Tr., Dec. 13, 2007,

6

at 71:2-4). Having persuaded the Court that the story of the parties’ “unique relationship” could

7

only be understood as a whole, Samsung now asks the Court to jettison much of that story from

8

the September 2008 Trial by precluding unfavorable evidence related to the parties’ licensing

9

negotiations. Samsung’s request is pure gamesmanship and should be denied.

10

B.

Samsung Waived Any Attorney-Client Privilege Or Work Product Claims Over These Documents.

11 Even if Samsung were to dismiss its remaining Steinberg-related claims and defenses with 12 prejudice, this does not allow Samsung to reclaim the privilege that it affirmatively waived. 13 Courts and treatises have widely affirmed the well-recognized rule that, once waived, the 14 attorney-client privilege cannot be restored. See Genentech, Inc., 122 F.3d at 1416 (“Once the 15 attorney client privilege has been waived, the privilege is generally lost for all purposes and in all 16 forums.”); United States v. Suarez, 820 F.2d 1158, 1160 (11th Cir. 1987) ("it has long been held 17 that once waived, the attorney-client privilege cannot be reasserted"); In re G-I Holdings Inc., 18 218 F.R.D. 428, 432 (D. N.J. 2003) ("Once a party waives the attorney-client privilege, it 19 relinquishes the privilege for all purposes and circumstances thereafter."); 8 Wigmore, Evidence § 20 2328 at 638 (McNaughton rev. 1961) (“A waiver at one stage of a trial should be final for all 21 further stages”); 2 Paul R. Rice, Attorney-Client Privilege in the U.S. § 9:22 (2008) ("Once there 22 has been a waiver ... the privilege cannot be revived either in subsequent stages of the action in 23 which the waiver occurred or in future actions."). 24 An implied waiver occurs when, though an affirmative act, a party asserts the privilege in 25 a way that places the privileged information at issue. See Home Indem. Co. v. Lane Powell Moss 26 and Miller, 43 F.3d 1322, 1326 (9th Cir. 1995). Here, Samsung pled counterclaims and defenses 27 based on Mr. Steinberg’s alleged misuse of confidential information acquired while he was 28 -85908918.1 RAMBUS INC.’S OPPOSITION TO SAMSUNG’S MOTION IN LIMINE TO EXCLUDE PRIVILEGED DOCUMENTS PRODUCED PURSUANT TO THE COURT’S IMPLIED WAIVER ORDER; CASE NOS. 05-00334, 05-02298

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employed by Samsung, thereby injecting the issue of Mr. Steinberg’s access to such information

2

into these cases. Samsung also affirmatively pled that Samsung’s counsel did not know the scope

3

and nature of Mr. Steinberg’s work for Rambus when negotiating opposite Mr. Steinberg in 2000.

4

As the Court concluded, Samsung’s allegations affirmatively asserted the privilege and thereby

5

justified the Special Master’s findings regarding the existence of a waiver. See November 2007

6

Waiver Order, 2007 WL 3444376, at *3 (concluding that “the Special Master did not err in

7

finding that Samsung had asserted the privilege as a result of affirmatively pleading that it was

8

entitled to tolling and that Steinberg had taken confidential information”).

9

Not only did Samsung inject its privilege and work product into the litigation through its

10

pleadings, it consciously waived its privilege when it declined the Court’s invitation to withdraw

11

those allegations to preserve the privilege. In its November 2007 Waiver Order, the Court

12

directed the Special Master to “first give Samsung the option of declining to proceed with its

13

claims,” and to initiate in camera review of the documents only “[i]f Samsung chooses to

14

proceed.” Id. at *7. In response, counsel for Samsung did not withdraw its Steinberg-related

15

claims and defenses, but instead delivered 556 documents for the Special Master’s review. See

16

First In Camera Order at 13. Samsung’s decision to maintain its Steinberg-related claims and

17

submit these documents is definitive evidence of a conscious waiver. See Boston Scientific Corp.

18

v. Cordis Corp., C 02-1474-JW (RS), 2008 WL 1766757, at *2 (N.D. Cal. Apr. 15, 2008) ("By

19

definition, the waiver arises when [] affirmative reliance takes place."). Had Samsung intended to

20

preserve the confidentiality of its purportedly privileged documents, it needed to withdraw its

21

claims at that time. 8 Accordingly, Samsung’s delivery of these hundreds of documents to the

22

Special Master was not “compelled,” as Samsung suggests, but was the result of a strategic

23

decision to proceed with its Steinberg-related claims and inject its privileged communications and

24

work product into the case. See Bittaker, 331 F.3d at 720 (noting in relation to the implied

25 26 27 28

8

By the same logic, Samsung has also waived any attorney work product protection over the documents subject to the Court’s November 2007 Waiver Order. See Tennison v. City & Cty. of San Francisco, 226 F.R.D. 615, 622-24 (N.D. Cal. 2005) (concluding that plaintiff’s factual allegations effected a limited waiver of his attorney’s factual work product under Hearn v. Rhay, 68 F.R.D. 574, 581 (E.D. Wash. 1975)). -95908918.1 RAMBUS INC.’S OPPOSITION TO SAMSUNG’S MOTION IN LIMINE TO EXCLUDE PRIVILEGED DOCUMENTS PRODUCED PURSUANT TO THE COURT’S IMPLIED WAIVER ORDER; CASE NOS. 05-00334, 05-02298

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waiver doctrine that “[e]ssentially, the court is striking a bargain with the holder of the privilege

2

by letting him know how much of the privilege he must waive in order to proceed with his

3

claim.”). Having cast its lot, Samsung should not be permitted to reassert the privilege in these

4

cases.

5

Samsung asks the Court to go against the weight of authority and find that Samsung’s

6

waiver was only for the purpose of Samsung’s Steinberg-related counterclaims. See Mot. at 4-5.

7

In support of its claim of a “limited purpose” waiver, Samsung cites a single habeas corpus case,

8

Bittaker v. Woodford, 331 F.3d 715 (9th Cir. 2003), in which the Ninth Circuit upheld the district

9

court’s protective order barring the use of attorney-client privileged communications for any

10

future purpose other than litigating the petitioner’s ineffective assistance of counsel claims. See

11

Mot. at 4-5; Bittaker, 331 F.3d at 723 (noting that forcing petitioner to choose between his

12

ineffective assistance claim and the loss of the privilege at a retrial would force a painful and

13

potentially unconstitutional choice). Nothing in Bittaker supports Samsung’s argument that

14

waived attorney-client communications may not be used in the same action in which they were

15

waived. 9 Seeking to extend Bittaker to this context would be particularly inappropriate here,

16

given that Samsung continues to maintain claims closely related to those that were dismissed and

17

has reserved its right to challenge the Court’s statute of limitations ruling on appeal. 10 Nor is

18

there any compelling reason for excusing Samsung from the consequences of its own decision to

19

place its knowledge of Mr. Steinberg’s conduct at issue in these cases. Indeed, a rule permitting a

20

party to reassert the privilege after certain claims implicating these privileged communications

21

9

22 23 24 25 26 27 28

Samsung specifically objects to the use of its documents “for purposes entirely unrelated to the original implied waiver order,” and claims that “Rambus acknowledges as much in its June 25, 2008 [motion to strike].” Mot. at 6. Samsung’s analogy is inapposite. Rambus’s motion to strike addressed the effect of a judicially compelled production, not the impact of a voluntary and intentional surrender of the privilege done for the purpose of supporting a claim or defense. Indeed this Court has already concluded that Rambus’s compelled production of privileged documents pursuant to privilege-piercing orders did not effect a waiver. See Hynix Semiconductor Inc. v. Rambus Inc., Nos. CV-00-20905, C-05-00334, C-06-0244 RMW, 2008 WL 350641, at *2 (N.D. Cal. Feb. 2, 2008) (“The Ninth Circuit’s rule in de la Jara requires reasonable efforts, and those were taken in this court.”). 10

Because Samsung has not waived its right to appeal the Court’s August 11, 2008 summary judgment order, Samsung’s knowledge of Mr. Steinberg’s work for Rambus would remain at issue even if Samsung were to dismiss its other Steinberg-related claims and defenses with prejudice.

- 10 5908918.1 RAMBUS INC.’S OPPOSITION TO SAMSUNG’S MOTION IN LIMINE TO EXCLUDE PRIVILEGED DOCUMENTS PRODUCED PURSUANT TO THE COURT’S IMPLIED WAIVER ORDER; CASE NOS. 05-00334, 05-02298

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are found to be time-barred is contrary to the principle of “fairness” that is “the touchstone of the

2

scope of the implied waiver doctrine." Id. at *6. Accord, Starsight Telecast, Inc. v. Gemstar

3

Dev. Corp., 158 F.R.D. 650, 653 (N.D. Cal. 1994). C.

4

Samsung Has Not Established That These Documents Are Protected By The Attorney-Client Privilege Or Work Product Doctrine.

5 Samsung acknowledges that it bears the burden of demonstrating the elements of the 6 attorney-client privilege and work product doctrine for each of the documents at issue. See Mot. 7 at 7; Martin, 278 F.3d at 999-1000; see also Clarke v. Am. Commerce Nat. Bank, 974 F.2d 127, 8 129 (9th Cir. 1992) ("The privilege must ordinarily be raised as to each record sought to allow the 9 court to rule with specificity."). However, Samsung’s showing amounts to little more than 10 recitation of these elements followed by perfunctory statements that the documents reflect legal 11 advice and/or attorney mental impressions. See Mot. at 7-10. This falls far short of the threshold 12 required to establish an entitlement to the privilege or the work product doctrine. Diamond State 13 Ins. Co. v. Rebel Oil Co., Inc., 157 F.R.D. 691, 698 (D. Nev. 1994) ("A generalized, self-serving, 14 conclusory assertion of protection or privilege is without merit."); von Bulow by Auersperg v. von 15 Bulow, 811 F.2d 136, 146 (2d Cir. 1987) (stating that the burden of establishing the attorney16 client privilege is not discharged “by mere conclusory or ipse dixit assertions”) (quoting In re 17 Bonanno, 344 F.2d 830, 833 (2d Cir. 1965)). Notably, Samsung’s effort is miles away from the 18 “line by line justification” that it suggests in its opposition to Rambus’s August 27, 2008 motion 19 in limine. See Samsung’s Opposition to Rambus’s Motion in Limine to Bar Use of Privileged 20 Documents at September 22, 2008 Trial, Docket No. 2142, C 05-00334-RMW, at 26-27 (N.D. 21 Cal. Sept. 5, 2008) (“Opp’n to Rambus’s MIL”). 22 For most of the exhibits at issue, Samsung offers no evidence to support its assertions 23 regarding the existence of the attorney-client privilege or work product immunity. Indeed, 24 Samsung’s claims regarding nine of the twenty-two documents rely exclusively on citations to its 25

privilege log. 11 Because, a privilege log entry alone is insufficient to establish attorney-client

26 27 28

11

Samsung cites no testimony, affidavits, or declarations to support its claims of attorney client privilege or work product immunity for Exhibits 9128, 9133, 9138, 9139, 9321, 9334, 9335, 9336, 9337, or 9351, relying instead on citations to its privilege logs. See Mot. at 8-10. - 11 5908918.1 RAMBUS INC.’S OPPOSITION TO SAMSUNG’S MOTION IN LIMINE TO EXCLUDE PRIVILEGED DOCUMENTS PRODUCED PURSUANT TO THE COURT’S IMPLIED WAIVER ORDER; CASE NOS. 05-00334, 05-02298

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privilege or work product immunity, Samsung’s claims for these nine documents should be

2

rejected out-of-hand. Byrnes v. Empire Blue Cross Blue Shield, No. 98C-CIV-8520-BSJ (MHD),

3

1999 WL 1006312, at *3 n.1 (S.D. N.Y. Nov. 4, 1999) (concluding that mere quotation of

4

privilege log entry lacked foundation and was therefore “not competent evidence”); Evans v.

5

United Fire & Cas. Ins. Co., No. 06-6783, 2007 WL 2323363 (E.D. La. Aug. 9, 2007) (noting

6

that mere assertions in a privilege log are insufficient to carry the burden of establishing

7

entitlement to work product immunity); cf. Hynix Semiconductor Inc. v. Rambus Inc., Nos. C 00-

8

20905-RMW, C 05-00334-RMW, C-06-00244-RMW, 2008 WL 350641, at *3 (N.D. Cal. Feb. 2,

9

2008) (“2/2/08 Order”) (“A vague declaration that states only that the document ‘reflects’

10

attorney’s advice is insufficient to demonstrate that the document should be found privileged.”).

11

In addition, Samsung’s motion should be denied as to a great majority of the exhibits

12

because they do not communicate any legal advice or opinions, but simply summarize non-

13

privileged factual information discussed at meetings with Rambus. 12 Indeed, the content of these

14

documents, as addressed below, indicates that they are not privileged and that they were primarily

15

prepared for the purpose of rendering business advice. See United States v. Chevron Corp., No.

16

C-94-1885-SBA, 1996 WL 264769, at *3 (N.D. Cal. Mar. 13 1996) (“No privilege can attach to

17

any communication as to which a business purpose would have served as a sufficient cause, i.e.,

18

any communication that would have been made because of a business purpose”) (citation

19

omitted). See 2/2/08 Order, 2008 WL 350641, at *3 (“The attorney-client privilege only protects

20 21 22 23 24 25 26 27 28

12

Many exhibits at issue -- such as exhibits 9061, 9077/A, 9078/A, 9079, 9081/A, 9129, 9134, 9136, 9137, 9138, 9336, and 9337 -- merely summarize factual information related to meetings or telephone calls with Rambus and other third-parties. Samsung’s assertions of privilege with respect to these exhibits are difficult to reconcile with the inclusion of substantially similar memoranda on the exhibit list provided by Samsung on August 27, 2008. See, e.g. Exhibit 4270 (notes from May 11, 2005 meeting); Exhibit 4272 (notes from May 24, 2005 meeting); Exhibit 4274 (notes from June 6, 2005). These memoranda were voluntarily produced by Samsung despite the fact that these they also detail the substance of conversations between the parties in the course of licensing negotiations. Unless Samsung can adequately explain why it withheld the documents at issue on grounds of privilege but did not claim the same protections for other, substantially similar documents such as Exhibits 4270, 4272, or 4274, its privilege claims for these documents must fail. See Starsight Telecast, 158 F.R.D. at 653 (“A party cannot disclose only those facts beneficial to its case and refuse to disclose, on the grounds of privilege, related facts adverse to its position.”) (quoting Hercules, Inc. v. Exxon Corp., 434 F.Supp. 136, 156 (D. Del. 1977)). - 12 5908918.1 RAMBUS INC.’S OPPOSITION TO SAMSUNG’S MOTION IN LIMINE TO EXCLUDE PRIVILEGED DOCUMENTS PRODUCED PURSUANT TO THE COURT’S IMPLIED WAIVER ORDER; CASE NOS. 05-00334, 05-02298

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legal advice provided to a client.”). Because Samsung fails to carry its burden of establishing the

2

privilege or work product doctrine for the documents at issue, and because these documents are

3

plainly not entitled to protection, this Court should deny Samsung’s motion. 13 1.

4 5 6

Meeting Minutes (Exhibits 9077/A, 9078/A, 9081/A, 9136, 9137, 9138)

Samsung asserts the attorney-client client privilege for the following series of meeting minutes: •

7 8

Exhibit 9077/A (Korean and English translation of minutes from a September 19, 2000 meeting between Samsung and Rambus)

•

9 10

Exhibit 9078/A (Korean and English translation of minutes from a September 19, 2000 meeting between Samsung and Rambus)

•

11 12

Exhibit 9081/A (Korean and English translation of minutes from an October 2, 2000 meeting between Samsung and Rambus)

•

13 14

Exhibits 9136 & 9137 (Korean and English translation of minutes from a June 10, 2001 meeting between Samsung and Rambus)

•

15 16

Exhibit 9138 (meeting minutes from an August 16, 2000 meeting between Samsung and Micron bearing the heading “re:Rambus”)

17

Samsung fails to offer evidence to support its assertion that these meeting minutes are privileged.

18

In fact, it cannot, because the evidence demonstrates that they are not privileged.

19

First, there is no evidence to support Samsung’s unsupported claim that Exhibits 9077/A

20

and 9078A were “prepared for the purpose of rendering legal advice.” Exhibits 9077/A and

21

9078/A are internal Samsung minutes that state what was said between Samsung and Rambus at a

22

September 19, 2000 license negotiation. The minutes were recorded by a non-lawyer, Han Yong

23 24 25 26 27 28

13

Samsung incorrectly states that “Rambus has never questioned that the documents produced pursuant to the implied waiver order are, in fact, privileged.” Mot. at 7. In its letter brief to the Court on July 14, 2008, Rambus’s counsel noted that, “[i]n more than one order, the Special Master has raised serious doubts about the accuracy of Samsung’s privilege logs, privilege claims, and other assertions made in support of its claims of privilege.” See Rambus Letter Brief, Docket No. 1961, C 05-00334-RMW, at 5 (N.D. Cal. July 14, 2008) (citing the Special Master’s First and Second In Camera Orders). Rambus therefore urged that “Samsung should not be allowed to withhold any of the documents at issue here unless it has properly demonstrated that the documents are actually privileged in the first instance.” Id. (emphasis added). - 13 5908918.1 RAMBUS INC.’S OPPOSITION TO SAMSUNG’S MOTION IN LIMINE TO EXCLUDE PRIVILEGED DOCUMENTS PRODUCED PURSUANT TO THE COURT’S IMPLIED WAIVER ORDER; CASE NOS. 05-00334, 05-02298

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statements were sent by Mr. Donohoe to his secretary, it is unclear on the current record whether

2

they were made for the purpose of facilitating legal advice or just a non-privileged documentation

3

of a meeting that had occurred. Nevertheless, on the current record, Rambus and the Court can

4

only speculate, and speculation does not establish a protected privilege. The burden of

5

demonstrating the attorney-client privilege lies with Samsung and requires more than an ipse

6

dixit. See Clarke, 974 F.2d at 129; Diamond State Ins. Co. 157 F.R.D. at 698.

7 8

2.

Jay Shim Memorandum To “All” (Exhibits 9061 & 9129)

There is no evidence that Exhibits 9061 and 9129 are privileged in their entirety. Exhibits

9

9061 and 9129 are identical copies of an August 18, 2000 memorandum recording license

10

negotiations with Rambus that was prepared by Jay Shim and sent to “All.” See Mot. at 7;

11

Exhibits 9061 & 9129. Samsung offers no evidence to support its claims that this memorandum

12

contains legal advice, that it was maintained in confidence or that it was even “sent to Samsung’s

13

Legal Department” as Samsung’s motion baldly claims. Mot. at 7. At his deposition, Charles

14

Donohoe described this document as

REDACTED

15

See Hamilton Decl., Exh. D (Deposition of Charles

16

Donohoe, May 13, 2008, at 151:4-6). Additionally, the author of the memorandum testified that

17

this document was

18

REDACTED Id., Exh. G (Deposition of Jay Shim, June 9, 2008, at 114:24-115:1)

19

(emphasis added). Thus, there is no evidence that the memorandum was sent to “Samsung’s

20

Legal Department” as Samsung claims, nor is there evidence that it was intended to communicate

21

confidential, privileged legal advice.

22

Moreover, there is no evidence to support Samsung’s claim that this memorandum was

23

prepared “for the purpose of rendering legal advice.” Instead, a review of the face of the

24

document reveals that it merely records what was said at the parties’ business meeting. See North

25

Pacifica, LLC v. City of Pacifica, 274 F.Supp. 2d 1118, 1129 (N.D. Cal. 2003) ("To be privileged,

26

[] legal advice must predominate the communication"). For example, under the heading REDACTED

27 28 - 17 5908918.1 RAMBUS INC.’S OPPOSITION TO SAMSUNG’S MOTION IN LIMINE TO EXCLUDE PRIVILEGED DOCUMENTS PRODUCED PURSUANT TO THE COURT’S IMPLIED WAIVER ORDER; CASE NOS. 05-00334, 05-02298

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Exhibits 9061 & 9126. These factual passages and the general absence of any legal opinions

2

indicate that this memorandum is not privileged, and that the primary purpose of his

3

memorandum was to provide Samsung’s management with information to facilitate a business

4

decision regarding an SDR/DDR license. See, e.g. id. at 1

REDACTED

5

. “When an

6

attorney conveys to his client facts acquired from other persons or sources, those facts are not

7

privileged.” Brinton v. Dep’t of State, 636 F.2d 600, 604 (Fed. Cir. 1980).

8 9

The non-privileged nature of the communications in Exhibits 9061 and 9129 is further supported by the fact that Rambus’s deposition questions related to the substance of the

10

memorandum did not elicit attorney-client privilege objections from Samsung’s counsel. See,

11

e.g. Hamilton Decl., Exh. D, (Deposition of Charles Donohoe, May 13, 2008, at 152: 5-7

REDACTED

12 13 14 15 16

In the end, Samsung’s vague statement that this document was prepared “for the purpose

17

of rendering legal advice” is insufficient to sustain a “clear showing” that Mr. Shim’s

18

communications were prepared in his professional legal capacity. See Chevron Corp., 1996 WL

19

264769, at *4 (“a corporation must make a clear showing that in-house counsel's advice was

20

given in a professional legal capacity”); see, e.g. Dawson v. New York Life Ins. Co., 901 F.Supp.

21

1362, 1367 (N.D. Ill. 1995) (concluding that communications between employees and attorneys

22

were not privileged because the attorneys acted “more as courier[s] of factual information, rather

23

than legal advisors”) (quotations omitted).

24

3.

Charles Donohoe Emails Summarizing Rambus Meetings (Exhibits 9079 & 9134)

25 Exhibit 9079 is a September 25, 2000 email from Charles Donohoe to Jay Shim 26 summarizing the same September 19, 2000 licensing meeting that is recounted in Exhibits 9077A 27 and 9078. See Exhibit 9079; Hamilton Decl., Exh. G (Deposition of Jay Shim, June 9, 2008, at 28 - 18 5908918.1 RAMBUS INC.’S OPPOSITION TO SAMSUNG’S MOTION IN LIMINE TO EXCLUDE PRIVILEGED DOCUMENTS PRODUCED PURSUANT TO THE COURT’S IMPLIED WAIVER ORDER; CASE NOS. 05-00334, 05-02298

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REDACTED

192:23-193:6)

2

Document 2183

Samsung has recently suggested that privilege claims for individual attorney

3

documents must be justified “on a line-by-line basis,” Opp’n to Rambus’s MIL at 27, but does not

4

even attempt to meet this standard in its blanket assertion that Exhibit 9079 “reflects mental

5

impressions and communicates legal advice.” Mot. at 8. Indeed,

REDACTED

6 7 8 9 10 . 16

11

REDACTED

12

but

13

also lack substantive legal analysis or opinions. Because Mr. Donohoe’s email primarily conveys

14

factual information rather than legal advice, and because Samsung has not even attempted to

15

make “a clear showing” that Mr. Donohoe’s comments were delivered in a professional legal

16

capacity, Samsung has failed to demonstrate that Exhibit 9079 is privileged. See Chevron Corp.,

17

1996 WL 264769, at *4; Regents of Univ. of Cal. v. Micro Therapeutics, Inc., No. C 03 05669 JW

18

(RS), 2007 WL 2069946, at *2 (N.D. Cal. July 13, 2007) (“Even if the information gathered is

19

necessary to render legal advice, that information and its transmittal to a client is not

20

privileged.”).

21

Samsung also asserts attorney work product protection for Exhibit 9079, claiming that Mr.

22

Donohoe’s email “reflects attorney mental impressions.” Mot. at 8. Even if this were true, it is

23

insufficient to insulate this document from discovery. To qualify for work product immunity, a

24

document must be “prepared in anticipation of litigation or for trial.” Fed. R. Civ. P. 26(b)(3).

25

However, Samsung has submitted no evidence from Mr. Donohoe or others that this email was

26

16

27 28

As stated above, Samsung has failed to carry its burden of showing that any of its exhibits are privileged or work product. However, if the Court concludes that Exhibit 9079 is partially protected, Rambus will not object to the redaction of the last sentence of paragraph two REDACTED or the next-to-last sentence in paragraph four REDACTED

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Cal. 2007 WL 2069946, at *2.

2

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Neil Steinberg Letter on NEC Matter (Exhibit 9128)

Exhibit 9128 is a January 7, 1997 letter from Neil Steinberg to Jun Park bearing the

4

subject heading “NEC Licensing Matter.” See Exh. 9128; Hamilton Decl., Exh H (Deposition of

5

Jun Park, July 16, 2008, at 81:5-7). Samsung cites nothing in support of its claim that that this

6

document “reflects attorney mental impressions and was communicated for the purpose of

7

rendering legal advice.” Mot. at 8. For this reason alone, Samsung’s assertion of privilege for

8

Exhibit 9128 should be dismissed. See von Bulow, 811 F.2d 136 at 146 (stating that the burden of

9

establishing the attorney-client privilege is not discharged “by mere conclusory or ipse dixit

10

assertions”). Additionally,

11

REDACTED but does not communicate any legal

12

advice or opinions. See Exhibit 9127. Because this document is limited to statements of fact, and

13

because Samsung has not even attempted to make a “clear showing” that this communication

14

from its in-house counsel concerns legal matters, Samsung’s assertion of attorney-client privilege

15

for Exhibit 9128 should be dismissed. See Chevron Corp., 1996 WL 264769, at *4; Regents of

16

Univ. of Cal. 2007 WL 2069946, at *2. 5.

17 18

Ik Cheol Kim Memorandum (Exhibit 9133)

Exhibit 9133 is a February 1, 2001 memorandum was prepared by Ik Cheol Kim, an

19

associate general manager in Samsung’s licensing group. 18 See Exhibit 9133. Apart from its

20

own privilege log, Samsung again cites nothing in support of its claim that Exhibit 9133

21

“communicates attorney mental impressions and legal advice.” Mot. at 8. Nor does Samsung

22

explain how Mr. Kim’s statement that

23

REDACTED

involves the provision of legal advice. Exhibit 9133. This appears on its

24

face to be a statement of fact about a task to be done, not a privileged communication. Indeed,

25

9128, 9133, 9138, 9321, 9336, 9337, and 9351. See Mot. at 8-10. Rambus therefore regards Samsung’s work product doctrine objections to these exhibits as waived and does not address the merits of any potential claims herein.

26 27 28

18

Samsung claims that this memorandum was addressed to Jay Shim, but the face of the exhibit and related testimony from Jun Park indicate that . See REDACTED Exhibit 9133; Hamilton Decl., Exh. F (Deposition of Jun Park, July 17, 2008, at 176:16-19). - 21 5908918.1 RAMBUS INC.’S OPPOSITION TO SAMSUNG’S MOTION IN LIMINE TO EXCLUDE PRIVILEGED DOCUMENTS PRODUCED PURSUANT TO THE COURT’S IMPLIED WAIVER ORDER; CASE NOS. 05-00334, 05-02298

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there is no evidence before the Court that Mr. Kim, who Samsung identifies as a “Senior

2

Manager, Memory IP Group,” is even an attorney. In the absence of further foundation for this

3

document, Samsung claims rests solely on its own ipse dixit. Accordingly, Samsung has failed to

4

demonstrate that Exhibit 9133 is privileged. See Diamond State Ins. Co., 157 F.R.D. at 698 ("A

5

generalized, self-serving, conclusory assertion of protection or privilege is without merit."). 6.

6 7

“Rambus Again” Email (Exhibit 9139)

Exhibit 9139 is a March 22, 2001 email with the subject heading “Rambus again.” See

8

Exhibit 9139. Samsung’s claims of attorney-client privilege and work product protection are yet

9

again based exclusively on its privilege log entry, in which Samsung indicates that this email was

10

sent by Charles Donohoe to “Samsung Legal,” Powers Decl., Exh. 7 at 101 (SSP 1695), and its

11

own assertion that this is a “confidential internal Samsung email.” Mot. at 9. Because Samsung

12

makes no effort to show who received this email, or whether it was maintained in confidence, and

13

merely refers to its own privilege log to establish essential elements of the privilege, Samsung has

14

failed to show that Exhibit 9139 should be protected. 19 Moreover, even if the Court were to

15

accept Samsung’s unsupported representation that Exhibit 9139 was sent by Mr. Donohoe,

16

Samsung has also failed to make a “clear showing” that it should be protected. Chevron Corp.,

17

1996 WL 264769, at *4. 7.

18

“Anita Thinks” Email From Donohoe (Exhibit 9321)

Exhibit 9321 is a September 14, 2000 email from Charles Donohoe REDACTED

19 20

See Exhibit 9321. Samsung’s claim of attorney-

21

client privilege is again based only on its privilege log entry, in which Samsung indicates that this

22

email was sent by Mr. Donohoe to Jay Shim, Powers Decl., Exh. 7 at 95 (SSP 1619), and its own

23

assertion that this email “regarding the Rambus-FTC case .... communicates attorney mental

24

impressions and legal advice.” Mot. at 9. Samsung offers no evidence to support its contention

25

that this email even relates to ”the Rambus-FTC case” or that it contains legal advice.20 Absent

26

19

27 28

The sole Samsung witness to testify about Exhibit 9139 REDACTED . See Hamilton Decl., Exh. I (Deposition of Jinseong Park, July 28, 2008, at 80:7-11). 20 Samsung did not produce Exhibit 9321 until late in discovery and after the deposition of most Samsung witnesses, including Mr. Donohoe. The sole Samsung witness to testify about Exhibit - 22 5908918.1 RAMBUS INC.’S OPPOSITION TO SAMSUNG’S MOTION IN LIMINE TO EXCLUDE PRIVILEGED DOCUMENTS PRODUCED PURSUANT TO THE COURT’S IMPLIED WAIVER ORDER; CASE NOS. 05-00334, 05-02298

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supporting evidence in the form of testimony, affidavits or declarations, such broad self-serving

2

assertions are insufficient to establish the privilege. Because Samsung has failed to supply any

3

foundation for this document, Samsung’s assertion of attorney-client privilege for Exhibit 9321

4

should be dismissed.

5

8.

Donohoe/Healey/Park Email Chain (Exhibits 9334 & 9335)

6

Exhibits 9334 and 9335 are Korean and English versions of a January 18, 2001 email

7

from Jun Park to various Samsung employees that forwards an earlier message from Charles

8

Donohoe to David Healey. See Mot. at 9. Samsung’s claim of attorney-client privilege is based

9

on nothing but its privilege log entry, Powers Decl., Exh. 10 at 2 (SSP 2025), and its own

10

assertion that this email “communicates attorney mental impressions and legal advice.” Mot. at 9.

11

Samsung offers no evidence to support its contentions regarding the document’s foundation or

12

content. Absent supporting evidence in the form of testimony, affidavits or declarations,

13

Samsung’s broad self-serving assertions are insufficient to establish the privilege.

14

Samsung also asserts attorney work product protection for Exhibits 9334 and 9335,

15

claiming that this document “communicates attorney mental impressions.” Mot. at 9. Even if

16

this were true, it is insufficient to insulate this document from discovery. To qualify for work

17

product protection, a document must be “prepared in anticipation of litigation or for trial.” Fed.

18

R. Civ. P. 26(b)(3). Though the document on its face states that Samsung “anticipated” litigation

19

with Rambus at the time of this email, Samsung has subsequently denied that it anticipated

20

litigation when faced with Rambus’s allegations that Samsung spoliated evidence. If Samsung

21

anticipated litigation at the time of Exhibits 9334 and 9335 such that it is entitled to federal work

22

product protection, Samsung needs to make that showing in support of its motion. Since it has

23

not, the Exhibits cannot be withheld as protected attorney work product.

24

9.

2001 Memoranda Regarding Steinberg Calls (Exhibits 9336 & 9337)

25

Exhibits 9336 and 9337 are memoranda from Jay Shim to Charles Donohoe and Gwangho

26

Kim recording the substance of telephone conversations that Mr. Shim had with Neil Steinberg at

27 28

9321 REDACTED Exh. J (Deposition of Jeong Woo Lee, July 24, 2008, at 51:3-14).

. See Hamilton Decl.,

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Rambus on June 1st, 4th, 12th, 2001. See Exhibits 9336 & 9337. Samsung’s claims of attorney-

2

client privilege for these documents are based on nothing but its privilege log entries, Powers

3

Decl., Exh. 7 at 104 (SSP 1729 & SSP 1730), which state that these documents “summariz[e]

4

confidential phone conversation[s] and attorney impressions for the purpose of facilitating

5

rendering legal advice.” Because Samsung provides no evidence to support broad and self-

6

serving assertions, the Court should reject Samsung’s privilege claims out-of-hand. See Diamond

7

State Ins. Co., 157 F.R.D. at 698.

8

Even if Samsung’s privilege log entries are correct, factual summaries of phone

9

conversations with Neil Steinberg -- who was employed by Rambus in June 2001 -- are not

10

privileged. See Regents of Univ. of Cal. 2007 WL 2069946, at *2 (“Even if the information

11

gathered is necessary to render legal advice, that information and its transmittal to a client is not

12

privileged.”). Moreover, the contents of the documents establish that Mr. Shim was simply

13

transcribing the contents of his conversations with Rambus. See, e.g. Exhibit 9336 REDACTED

14 15

; Exhibit 9337

REDACTED

16 17

. Because Samsung has failed to make a “clear showing” that the primary

18

purpose of these memoranda was to render legal advice, Chevron Corp., 1996 WL 264769, at *4,

19

and because the documents indicate that Mr. Shim was merely serving as a courier of factual

20

information, the Court should conclude that Exhibits 9336 and 9337 are not privileged. See

21

Dawson v. New York Life Ins. Co., 901 F.Supp. 1362, 1367 (N.D. Ill. 1995) (concluding that

22

communications between employees and attorneys were not privileged because the attorneys

23

acted “more as courier[s] of factual information, rather than legal advisors”) (quotations omitted).

24

10.

Exhibit 9351

25

Exhibit 9351 contains three emails, including a June 29, 2000 email from Julian Hawkins

26

to Tae Sung Jung bearing the subject heading “Rambus IP Issue: Activities Update.” See Exhibit

27

9351. Samsung inaccurately describes this exhibit as a July 19, 2000 email “from Tae Sung Jung

28

to Jay Shim regarding Rambus IP,” citing only its privilege log entry, Powers Decl., Exh. 7 at 94 - 24 5908918.1 RAMBUS INC.’S OPPOSITION TO SAMSUNG’S MOTION IN LIMINE TO EXCLUDE PRIVILEGED DOCUMENTS PRODUCED PURSUANT TO THE COURT’S IMPLIED WAIVER ORDER; CASE NOS. 05-00334, 05-02298

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