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Case 5:05-cv-00334-RMW
1
Document 2226
Filed 09/19/2008
Page 1 of 9
Attorney list on signature page
2 3 4
IN THE UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA – SAN JOSE DIVISION
5 6
RAMBUS, INC., Plaintiff.
7
v.
8
HYNIX SEMICONDUCTOR INC., HYNIX SEMICONDUCTOR AMERICA INC., HYNIX SEMICONDUCTOR MANUFACTURING AMERICA INC.,
9 10 11 12 13 14 15 16
SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG SEMICONDUCTOR, INC., SAMSUNG AUSTIN SEMICONDUCTOR, L.P., NANYA TECHNOLOGY CORPORATION, NANYA TECHNOLOGY CORPORATION U.S.A.,
17 18
21 22 23 24
SAMSUNG’S SUPPLEMENTAL BRIEF IN SUPPORT OF ITS MOTION IN LIMINE TO EXCLUDE PRIVILEGED DOCUMENTS PRODUCED PURSUANT TO THE COURT’S IMPLIED WAIVER ORDER [PUBLIC VERSION] Place: Judge:
Courtroom 6 Hon. Ronald M. Whyte
Defendants. RAMBUS, INC.,
19 20
Case No. C 05-00334 RMW
Plaintiff. v. SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG SEMICONDUCTOR, INC., SAMSUNG AUSTIN SEMICONDUCTOR, L.P.,
Case No. C 05-02298 RMW
Defendants.
25 26 27 28 SAMSUNG’S SUPPLEMENTAL BRIEF IN SUPPORT OF ITS MOTION IN LIMINE
CASE NO. C 05 00334 RMW CASE NO. C 05 02298 RMW
Case 5:05-cv-00334-RMW
Document 2226
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Filed 09/19/2008
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TABLE OF CONTENTS
2 TABLE OF AUTHORITIES .................................................................................................................. III 3 PRELIMINARY STATEMENT............................................................................................................... 1 4 ARGUMENT ...................................................................................................................................... 2 5 I.
CONFIDENTIAL COMMUNICATIONS THAT ARE MADE OR DIRECTED BY AN ATTORNEY TO A CLIENT IN FURTHERANCE OF LEGAL ADVICE ARE PRIVILEGED. ............... 2
II.
EACH EXHIBIT IS A DOCUMENT THAT WAS COMMUNICATED TO THE CLIENT IN CONFIDENCE AND FOR PURPOSES OF GIVING LEGAL ADVICE. ............................................. 3
6 7 8
CONCLUSION .................................................................................................................................... 5 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 SAMSUNG’S SUPPLEMENTAL BRIEF IN SUPPORT OF ITS MOTION IN LIMINE
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1 TABLE OF AUTHORITIES
2 3 4 5 6 7 8 9 10 11 12 13 14 15 16
Cases Clarke v. Am. Commerce Nat’l Bank, 974 F.2d 127 (9th Cir. 1992)........................................................................................................ 4 Fisher v. United States, 425 U.S. 391 (1976)..................................................................................................................... 3 Jack Winter, Inc. v. Koratron Co., 54 F.R.D. 44 (N.D. Cal. 1971)..................................................................................................... 3 Larson v. Harrington, 11 F. Supp. 2d 1198 (E.D. Cal. 1998).......................................................................................... 3 United States v. Chen, 99 F.3d 1495 (9th Cir. 1996)........................................................................................................ 2 United States v. DeFonte, 441 F.3d 92 (2d Cir. 2006)........................................................................................................... 3 United States v. Plache, 913 F.2d 1375 (9th Cir. 1990)...................................................................................................... 2 Walter v. Cincinnati Zoo & Botanical Garden, No. 1:05cv327, 2006 U.S. Dist. LEXIS 25841 (S.D. Ohio May 3, 2006)................................... 3
17 18 19
Treatises WIGMORE, EVIDENCE § 2292 (McNaughton Rev. 1961) ................................................................. 2
20 21 22 23 24 25 26 27 28 SAMSUNG’S SUPPLEMENTAL BRIEF IN SUPPORT OF ITS MOTION IN LIMINE
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1 PRELIMINARY STATEMENT
2
At the September 16, 2008 pretrial conference, this Court approved a process for resolving
3 4
Samsung’s Motion in Limine, by which Rambus would designate the particular exhibits and
5
deposition testimony that are subject to Samsung’s Motion in Limine that Rambus intends to use
6
at trial, the parties would then meet and confer, and Samsung would submit supplemental briefing
7
to the Court regarding the privileged nature of the particular documents. See 9/16/08 Tr. at 29-30,
8 35. The parties have satisfied their meet and confer obligations, and Samsung withdrew its claim 9 10
of privilege for several of the deposition excerpts. The parties continue to dispute, however, the
11
privileged nature of the documents addressed herein.
12
Samsung of the specific privileged documents that Rambus seeks to introduce at trial,1 Samsung
13
submits this supplemental brief to demonstrate the privileged nature of those documents.2 As
14
discussed below, these documents are protected by the attorney-client privilege, and thus should
15
Based on Rambus’s identification to
be protected from disclosure and use at trial. In particular, the supporting declarations confirm
16 that these documents are not, as Rambus has erroneously characterized them, merely scrivener17 18 19
type notes of business meetings. See, e.g., Rambus’s Opp. at 12. Rather, the documents are privileged because they represent confidential communications that were provided to the client
20 21 22 23 24 25 26 27
1
Rambus has identified the following documents (as designated on Rambus’s trial exhibit list) as the ones subject to Samsung’s Motion in Limine that Rambus wishes to use at trial: 9061 or 9129, 9077/9077A, 9078/9078A, 9079, 9081/9081A, 9126, 9128, 9134, 9136/9137, 9138, 9139, 9336, 9337, 10697, and 10698. The exhibits listed in a pairing with a “/” indicate a Korean and English translation version of the same document. Further, 9061 and 9129 are copies of the same document, only with different excerpts redacted.
2
Rambus also seeks to use various deposition-testimony excerpts, which Samsung contends are privileged because they discuss the privileged documents at issue. See Ex. 2 (listing the various deposition excerpts sought to be used at trial by Rambus). The privileged nature of these excerpts turns on the determination of privilege for the relevant privileged documents, and Samsung thus urges the Court to conclude that the deposition excerpts are privileged for the same reasons that the underlying documents themselves are privileged.
28 SAMSUNG’S SUPPLEMENTAL BRIEF IN SUPPORT OF ITS MOTION IN LIMINE
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1
for, inter alia, the purpose of rendering legal advice in ongoing licensing negotiations.3 Each
2
document at issue is privileged and Samsung’s motion in limine should be granted.
3 ARGUMENT
4 5
I.
6 7 8 9 10
13 14 15 16 17 18 19 20 21 22 23
ATTORNEY
As discussed in more detail herein and in the supporting declarations, the documents at issue were communicated in confidence to the client from counsel and advise the client regarding ongoing negotiations and discussions regarding licensing obligations and similar legal matters. The documents were prepared for the purpose of providing information to the client to facilitate the furtherance of legal advice, and as such, they are privileged.
11 12
CONFIDENTIAL COMMUNICATIONS THAT ARE MADE OR DIRECTED BY AN TO A CLIENT IN FURTHERANCE OF LEGAL ADVICE ARE PRIVILEGED.
The black-letter elements of privilege have been recognized time and again: “(1) Where legal advice of any kind is sought (2) from a professional legal adviser in his capacity as such, (3) the communications relating to that purpose (4) made in confidence (5) by the client, (6) are at his instance permanently protected (7) from disclosure by himself or by the legal advisor, (8) except the protection be waived.” 8 WIGMORE, EVIDENCE § 2292 (McNaughton Rev. 1961); see also, e.g., United States v. Plache, 913 F.2d 1375, 1379 n.1 (9th Cir. 1990) (reciting same). Rambus does not question that the documents were intended to remain confidential communications to the client. Rambus merely argues that the documents were not communicated to the client in furtherance of legal advice. See, e.g., Rambus’s Opp. at 12. It is clear that communications between corporate personnel and their in-house counsel made for the purpose of securing legal advice are protected by the privilege: “What matters is whether the lawyer was employed with or without ‘reference to his knowledge and discretion in the law,’ to give the advice.” United States v. Chen, 99 F.3d 1495, 1502 (9th Cir. 1996) (citation omitted); see also
24 3
25 26 27 28
Exhibit 9139 does not pertain to license negotiations, but is a confidential memorandum authored and transmitted by Charles Donohoe, then General Patent Counsel for Samsung, to Young Jo Lim, an attorney and member of Samsung’s IP legal department, regarding a subpoena for documents in the Micron litigation. See Donohoe Decl. at ¶ 7. The purpose of preparing and sending the memorandum was for in-house counsel to provide legal advice to the client—other attorneys at Samsung—of the pending subpoena, and to counsel the client about the course of action to be taken by Samsung to comply with its obligations under the subpoena as a third party to existing litigation. CASE NO. C 05 00334 RMW 2 SAMSUNG’S SUPPLEMENTAL BRIEF IN SUPPORT OF ITS MOTION IN LIMINE
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6 7 8 9 10 11 12
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attorney made in order to obtain legal assistance are privileged.”). The communications at issue were made in order to provide legal advice to Samsung. Indeed, summaries of negotiation positions and communications with licensors and other contracting parties are a practical reality and a necessary tool for an attorney to render legal advice to a multinational corporation. The attorney-client privilege protects documents which “involve either client communications intended to keep the attorney apprised of continuing business developments, with an implied request for legal advice based thereon, or self-initiated attorney communications intended to keep the client posted on legal developments and implications, including implications of client activity noticed by the attorney but with regard to which no written request for advice from the client has been found.” Jack Winter, Inc. v. Koratron Co., 54 F.R.D. 44, 46 (N.D. Cal. 1971).
13 14
Filed 09/19/2008
Fisher v. United States, 425 U.S. 391, 403 (1976) (“Confidential disclosures by a client to an
4 5
Document 2226
Courts have, of course, recognized the privileged nature of such communications. See, e.g., United States v. DeFonte, 441 F.3d 92, 95 (2d Cir. 2006) (explaining that notes prepared in order to facilitate attorney-client communication that are then communicated between counsel and client are protected by attorney-client privilege) (citing cases); Larson v. Harrington, 11 F. Supp. 2d 1198, 1203 (E.D. Cal. 1998) (regarding notes of meeting with third party that were taken at direction of attorney and later given to attorney as privileged); Walter v. Cincinnati Zoo & Botanical Garden, No. 1:05cv327, 2006 U.S. Dist. LEXIS 25841, at *6 (S.D. Ohio May 3, 2006) (recognizing that “[f]ederal courts have held that contemporaneous notes taken by an individual, and later given by the individual to an attorney, are privileged if the notes were taken with the intent of seeking legal advice.”). This Court should do the same.
23 24
EACH EXHIBIT IS A DOCUMENT THAT WAS COMMUNICATED CONFIDENCE AND FOR PURPOSES OF GIVING LEGAL ADVICE.
25
As set out in the supporting declarations, each document is a confidential document that
26
was communicated to the client for the purpose of rendering legal advice. See Donohoe Decl. at
II.
TO THE
CLIENT
IN
27 28 SAMSUNG’S SUPPLEMENTAL BRIEF IN SUPPORT OF ITS MOTION IN LIMINE
3
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in support of privilege for each document placed in issue by Rambus is presented in a chart attached to this brief. See Ex. 1 (identifying each exhibit, its author(s) and addressee(s), the relevant declaration, and the supporting privilege argument). Samsung’s supporting declarations directly rebut Rambus’s primary argument against the privileged nature of these documents, which was a call for additional substantiation of the privilege beyond the face of the documents.5 For example, with regard to memoranda and emails reviewing various negotiation meetings (Exhibits 9077/9077A, 9078/9078A, 9079, 9081/9081A, 9126, 9128, 9134, 9136/9137, 9138, 10697, and 10698), the supporting declarations confirm that those communications were prepared and communicated to the client in furtherance of the particular in-house counsel’s rendering of legal advice to Samsung regarding negotiation positions and potential legal obligations under proposed, and existing, license terms. See, e.g., Donohoe Decl. at ¶ 8 (attesting to fact that he directed legal department employee Han-Yong Uhm to prepare and transmit the set of meeting minutes summarizing a license-negotiation meeting with Rambus that Donohoe attended, Exhibit 9081, to the Samsung IP Legal Department to apprise the client of the status of the negotiations and enable him to continue ongoing discussions with the client about Samsung’s legal strategy in that regard); id. at ¶ 3 (explaining that email (Exhibit 9079) prepared and transmitted to Jay Shim, another attorney in Samsung’s IP legal department, summarized a licensing meeting with Rambus that he attended, included mental impressions and opinions on the subject, and was prepared and sent to apprise Shim in response to the client’s request that he be updated on the status of the negotiations and in order to provide legal analysis with respect to developments at the meeting).
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Filed 09/19/2008
¶¶ 3-8; Shim Decl. at ¶¶ 3-10.4 A summary of Samsung’s particular arguments and declaration
5 6
Document 2226
The supporting declarations similarly confirm that the 2001 memoranda prepared by Jay 4
With respect to Trial Exhibit 9128, over which Samsung also continues to assert privilege, Samsung was not able to obtain a declaration from the recipient of that document, who is in Korea, by the time of filing. Samsung expects to receive that declaration soon and will supplement this filing promptly when the declaration is received. 5 Rambus also repeatedly invokes a need for a line-by-line justification of privilege, but its contention is misplaced. See, e.g., Rambus’s Opp. at 19. That requirement pertains to privilege of legal bills, not any and every document for which a party asserts privilege. See, e.g., Clarke v. Am. Commerce Nat’l Bank, 974 F.2d 127, 129 (9th Cir. 1992). CASE NO. C 05 00334 RMW 4 SAMSUNG’S SUPPLEMENTAL BRIEF IN SUPPORT OF ITS MOTION IN LIMINE
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(Exhibits 9336 and 9337) are privileged. See Shim Decl. at ¶¶ 4, 5 (explaining that Exhibits 9336 and 9337 are memoranda that he prepared and transmitted to Donohoe and Gwang Ho Kim, both members of Samsung’s IP legal department who are also attorneys, summarizing two telephone conversations that he had with Neil Steinberg regarding the impact of the Infineon litigation on Samsung’s payment of royalties under the parties’ SDR/DDR License and conveying his mental impressions and opinions regarding the conversations, and that the purpose of preparing and sending the memoranda was to inform the recipients about Rambus’s positions and to provide legal analysis with respect to the significance of what was discussed). Mr. Shim’s supporting declaration also confirms that Mr. Shim’s memorandum to “All,” Exhibits 9061 and 9129, is a memorandum prepared and sent to Samsung’s IP legal department, which summarizes a license-negotiation meeting with Rambus that he attended. See Shim Decl. at ¶ 3. The memorandum includes Mr. Shim’s opinions regarding the meeting, and was prepared and communicated to the client to inform the IP Legal Department, in response to their request to be kept updated, of the status of the negotiations, and to provide legal analysis with respect to the significance of what transpired at the meeting. Id.
17 18
Filed 09/19/2008
Shim, Samsung in-house counsel, for discussions with the client and other in-house counsel
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Because the Samsung has submitted evidence and confirmation that the documents at issue are protected by the attorney-client privilege, they should remain privileged and Rambus should be precluded from introducing them or the related deposition testimony in the September Trial.
21 CONCLUSION
22 23 24
For these reasons, as well as those presented in Samsung’s original motion, the Court should grant Samsung’s motion in limine.
25 26 27 28 SAMSUNG’S SUPPLEMENTAL BRIEF IN SUPPORT OF ITS MOTION IN LIMINE
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Dated: September 18, 2008
2 WEIL, GOTSHAL & MANGES, LLP 3 4
By:
/s/ Matthew D. Powers Matthew D. Powers
5 MATTHEW D. POWERS (Bar No. 104795) Email: [email protected] EDWARD R. REINES (Bar No. 135930) Email: [email protected] WEIL, GOTSHAL & MANGES LLP 201 Redwood Shores Parkway Redwood Shores, CA 94065 Telephone: (650) 802-3000 Facsimile: (650) 802-3100
6 7 8 9 10
Attorneys for Defendants SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG SEMICONDUCTOR, INC., and SAMSUNG AUSTIN SEMICONDUCTOR, L.P.
11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 SAMSUNG’S SUPPLEMENTAL BRIEF IN SUPPORT OF ITS MOTION IN LIMINE
6
CASE NO. C 05 00334 RMW CASE NO. C 05 02298 RMW
1
Document 2226
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Attorney list on signature page
2 3 4
IN THE UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA – SAN JOSE DIVISION
5 6
RAMBUS, INC., Plaintiff.
7
v.
8
HYNIX SEMICONDUCTOR INC., HYNIX SEMICONDUCTOR AMERICA INC., HYNIX SEMICONDUCTOR MANUFACTURING AMERICA INC.,
9 10 11 12 13 14 15 16
SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG SEMICONDUCTOR, INC., SAMSUNG AUSTIN SEMICONDUCTOR, L.P., NANYA TECHNOLOGY CORPORATION, NANYA TECHNOLOGY CORPORATION U.S.A.,
17 18
21 22 23 24
SAMSUNG’S SUPPLEMENTAL BRIEF IN SUPPORT OF ITS MOTION IN LIMINE TO EXCLUDE PRIVILEGED DOCUMENTS PRODUCED PURSUANT TO THE COURT’S IMPLIED WAIVER ORDER [PUBLIC VERSION] Place: Judge:
Courtroom 6 Hon. Ronald M. Whyte
Defendants. RAMBUS, INC.,
19 20
Case No. C 05-00334 RMW
Plaintiff. v. SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG SEMICONDUCTOR, INC., SAMSUNG AUSTIN SEMICONDUCTOR, L.P.,
Case No. C 05-02298 RMW
Defendants.
25 26 27 28 SAMSUNG’S SUPPLEMENTAL BRIEF IN SUPPORT OF ITS MOTION IN LIMINE
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Case 5:05-cv-00334-RMW
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Filed 09/19/2008
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TABLE OF CONTENTS
2 TABLE OF AUTHORITIES .................................................................................................................. III 3 PRELIMINARY STATEMENT............................................................................................................... 1 4 ARGUMENT ...................................................................................................................................... 2 5 I.
CONFIDENTIAL COMMUNICATIONS THAT ARE MADE OR DIRECTED BY AN ATTORNEY TO A CLIENT IN FURTHERANCE OF LEGAL ADVICE ARE PRIVILEGED. ............... 2
II.
EACH EXHIBIT IS A DOCUMENT THAT WAS COMMUNICATED TO THE CLIENT IN CONFIDENCE AND FOR PURPOSES OF GIVING LEGAL ADVICE. ............................................. 3
6 7 8
CONCLUSION .................................................................................................................................... 5 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 SAMSUNG’S SUPPLEMENTAL BRIEF IN SUPPORT OF ITS MOTION IN LIMINE
ii
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1 TABLE OF AUTHORITIES
2 3 4 5 6 7 8 9 10 11 12 13 14 15 16
Cases Clarke v. Am. Commerce Nat’l Bank, 974 F.2d 127 (9th Cir. 1992)........................................................................................................ 4 Fisher v. United States, 425 U.S. 391 (1976)..................................................................................................................... 3 Jack Winter, Inc. v. Koratron Co., 54 F.R.D. 44 (N.D. Cal. 1971)..................................................................................................... 3 Larson v. Harrington, 11 F. Supp. 2d 1198 (E.D. Cal. 1998).......................................................................................... 3 United States v. Chen, 99 F.3d 1495 (9th Cir. 1996)........................................................................................................ 2 United States v. DeFonte, 441 F.3d 92 (2d Cir. 2006)........................................................................................................... 3 United States v. Plache, 913 F.2d 1375 (9th Cir. 1990)...................................................................................................... 2 Walter v. Cincinnati Zoo & Botanical Garden, No. 1:05cv327, 2006 U.S. Dist. LEXIS 25841 (S.D. Ohio May 3, 2006)................................... 3
17 18 19
Treatises WIGMORE, EVIDENCE § 2292 (McNaughton Rev. 1961) ................................................................. 2
20 21 22 23 24 25 26 27 28 SAMSUNG’S SUPPLEMENTAL BRIEF IN SUPPORT OF ITS MOTION IN LIMINE
iii
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1 PRELIMINARY STATEMENT
2
At the September 16, 2008 pretrial conference, this Court approved a process for resolving
3 4
Samsung’s Motion in Limine, by which Rambus would designate the particular exhibits and
5
deposition testimony that are subject to Samsung’s Motion in Limine that Rambus intends to use
6
at trial, the parties would then meet and confer, and Samsung would submit supplemental briefing
7
to the Court regarding the privileged nature of the particular documents. See 9/16/08 Tr. at 29-30,
8 35. The parties have satisfied their meet and confer obligations, and Samsung withdrew its claim 9 10
of privilege for several of the deposition excerpts. The parties continue to dispute, however, the
11
privileged nature of the documents addressed herein.
12
Samsung of the specific privileged documents that Rambus seeks to introduce at trial,1 Samsung
13
submits this supplemental brief to demonstrate the privileged nature of those documents.2 As
14
discussed below, these documents are protected by the attorney-client privilege, and thus should
15
Based on Rambus’s identification to
be protected from disclosure and use at trial. In particular, the supporting declarations confirm
16 that these documents are not, as Rambus has erroneously characterized them, merely scrivener17 18 19
type notes of business meetings. See, e.g., Rambus’s Opp. at 12. Rather, the documents are privileged because they represent confidential communications that were provided to the client
20 21 22 23 24 25 26 27
1
Rambus has identified the following documents (as designated on Rambus’s trial exhibit list) as the ones subject to Samsung’s Motion in Limine that Rambus wishes to use at trial: 9061 or 9129, 9077/9077A, 9078/9078A, 9079, 9081/9081A, 9126, 9128, 9134, 9136/9137, 9138, 9139, 9336, 9337, 10697, and 10698. The exhibits listed in a pairing with a “/” indicate a Korean and English translation version of the same document. Further, 9061 and 9129 are copies of the same document, only with different excerpts redacted.
2
Rambus also seeks to use various deposition-testimony excerpts, which Samsung contends are privileged because they discuss the privileged documents at issue. See Ex. 2 (listing the various deposition excerpts sought to be used at trial by Rambus). The privileged nature of these excerpts turns on the determination of privilege for the relevant privileged documents, and Samsung thus urges the Court to conclude that the deposition excerpts are privileged for the same reasons that the underlying documents themselves are privileged.
28 SAMSUNG’S SUPPLEMENTAL BRIEF IN SUPPORT OF ITS MOTION IN LIMINE
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1
for, inter alia, the purpose of rendering legal advice in ongoing licensing negotiations.3 Each
2
document at issue is privileged and Samsung’s motion in limine should be granted.
3 ARGUMENT
4 5
I.
6 7 8 9 10
13 14 15 16 17 18 19 20 21 22 23
ATTORNEY
As discussed in more detail herein and in the supporting declarations, the documents at issue were communicated in confidence to the client from counsel and advise the client regarding ongoing negotiations and discussions regarding licensing obligations and similar legal matters. The documents were prepared for the purpose of providing information to the client to facilitate the furtherance of legal advice, and as such, they are privileged.
11 12
CONFIDENTIAL COMMUNICATIONS THAT ARE MADE OR DIRECTED BY AN TO A CLIENT IN FURTHERANCE OF LEGAL ADVICE ARE PRIVILEGED.
The black-letter elements of privilege have been recognized time and again: “(1) Where legal advice of any kind is sought (2) from a professional legal adviser in his capacity as such, (3) the communications relating to that purpose (4) made in confidence (5) by the client, (6) are at his instance permanently protected (7) from disclosure by himself or by the legal advisor, (8) except the protection be waived.” 8 WIGMORE, EVIDENCE § 2292 (McNaughton Rev. 1961); see also, e.g., United States v. Plache, 913 F.2d 1375, 1379 n.1 (9th Cir. 1990) (reciting same). Rambus does not question that the documents were intended to remain confidential communications to the client. Rambus merely argues that the documents were not communicated to the client in furtherance of legal advice. See, e.g., Rambus’s Opp. at 12. It is clear that communications between corporate personnel and their in-house counsel made for the purpose of securing legal advice are protected by the privilege: “What matters is whether the lawyer was employed with or without ‘reference to his knowledge and discretion in the law,’ to give the advice.” United States v. Chen, 99 F.3d 1495, 1502 (9th Cir. 1996) (citation omitted); see also
24 3
25 26 27 28
Exhibit 9139 does not pertain to license negotiations, but is a confidential memorandum authored and transmitted by Charles Donohoe, then General Patent Counsel for Samsung, to Young Jo Lim, an attorney and member of Samsung’s IP legal department, regarding a subpoena for documents in the Micron litigation. See Donohoe Decl. at ¶ 7. The purpose of preparing and sending the memorandum was for in-house counsel to provide legal advice to the client—other attorneys at Samsung—of the pending subpoena, and to counsel the client about the course of action to be taken by Samsung to comply with its obligations under the subpoena as a third party to existing litigation. CASE NO. C 05 00334 RMW 2 SAMSUNG’S SUPPLEMENTAL BRIEF IN SUPPORT OF ITS MOTION IN LIMINE
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attorney made in order to obtain legal assistance are privileged.”). The communications at issue were made in order to provide legal advice to Samsung. Indeed, summaries of negotiation positions and communications with licensors and other contracting parties are a practical reality and a necessary tool for an attorney to render legal advice to a multinational corporation. The attorney-client privilege protects documents which “involve either client communications intended to keep the attorney apprised of continuing business developments, with an implied request for legal advice based thereon, or self-initiated attorney communications intended to keep the client posted on legal developments and implications, including implications of client activity noticed by the attorney but with regard to which no written request for advice from the client has been found.” Jack Winter, Inc. v. Koratron Co., 54 F.R.D. 44, 46 (N.D. Cal. 1971).
13 14
Filed 09/19/2008
Fisher v. United States, 425 U.S. 391, 403 (1976) (“Confidential disclosures by a client to an
4 5
Document 2226
Courts have, of course, recognized the privileged nature of such communications. See, e.g., United States v. DeFonte, 441 F.3d 92, 95 (2d Cir. 2006) (explaining that notes prepared in order to facilitate attorney-client communication that are then communicated between counsel and client are protected by attorney-client privilege) (citing cases); Larson v. Harrington, 11 F. Supp. 2d 1198, 1203 (E.D. Cal. 1998) (regarding notes of meeting with third party that were taken at direction of attorney and later given to attorney as privileged); Walter v. Cincinnati Zoo & Botanical Garden, No. 1:05cv327, 2006 U.S. Dist. LEXIS 25841, at *6 (S.D. Ohio May 3, 2006) (recognizing that “[f]ederal courts have held that contemporaneous notes taken by an individual, and later given by the individual to an attorney, are privileged if the notes were taken with the intent of seeking legal advice.”). This Court should do the same.
23 24
EACH EXHIBIT IS A DOCUMENT THAT WAS COMMUNICATED CONFIDENCE AND FOR PURPOSES OF GIVING LEGAL ADVICE.
25
As set out in the supporting declarations, each document is a confidential document that
26
was communicated to the client for the purpose of rendering legal advice. See Donohoe Decl. at
II.
TO THE
CLIENT
IN
27 28 SAMSUNG’S SUPPLEMENTAL BRIEF IN SUPPORT OF ITS MOTION IN LIMINE
3
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in support of privilege for each document placed in issue by Rambus is presented in a chart attached to this brief. See Ex. 1 (identifying each exhibit, its author(s) and addressee(s), the relevant declaration, and the supporting privilege argument). Samsung’s supporting declarations directly rebut Rambus’s primary argument against the privileged nature of these documents, which was a call for additional substantiation of the privilege beyond the face of the documents.5 For example, with regard to memoranda and emails reviewing various negotiation meetings (Exhibits 9077/9077A, 9078/9078A, 9079, 9081/9081A, 9126, 9128, 9134, 9136/9137, 9138, 10697, and 10698), the supporting declarations confirm that those communications were prepared and communicated to the client in furtherance of the particular in-house counsel’s rendering of legal advice to Samsung regarding negotiation positions and potential legal obligations under proposed, and existing, license terms. See, e.g., Donohoe Decl. at ¶ 8 (attesting to fact that he directed legal department employee Han-Yong Uhm to prepare and transmit the set of meeting minutes summarizing a license-negotiation meeting with Rambus that Donohoe attended, Exhibit 9081, to the Samsung IP Legal Department to apprise the client of the status of the negotiations and enable him to continue ongoing discussions with the client about Samsung’s legal strategy in that regard); id. at ¶ 3 (explaining that email (Exhibit 9079) prepared and transmitted to Jay Shim, another attorney in Samsung’s IP legal department, summarized a licensing meeting with Rambus that he attended, included mental impressions and opinions on the subject, and was prepared and sent to apprise Shim in response to the client’s request that he be updated on the status of the negotiations and in order to provide legal analysis with respect to developments at the meeting).
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¶¶ 3-8; Shim Decl. at ¶¶ 3-10.4 A summary of Samsung’s particular arguments and declaration
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The supporting declarations similarly confirm that the 2001 memoranda prepared by Jay 4
With respect to Trial Exhibit 9128, over which Samsung also continues to assert privilege, Samsung was not able to obtain a declaration from the recipient of that document, who is in Korea, by the time of filing. Samsung expects to receive that declaration soon and will supplement this filing promptly when the declaration is received. 5 Rambus also repeatedly invokes a need for a line-by-line justification of privilege, but its contention is misplaced. See, e.g., Rambus’s Opp. at 19. That requirement pertains to privilege of legal bills, not any and every document for which a party asserts privilege. See, e.g., Clarke v. Am. Commerce Nat’l Bank, 974 F.2d 127, 129 (9th Cir. 1992). CASE NO. C 05 00334 RMW 4 SAMSUNG’S SUPPLEMENTAL BRIEF IN SUPPORT OF ITS MOTION IN LIMINE
CASE NO. C 05 02298 RMW
Case 5:05-cv-00334-RMW
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(Exhibits 9336 and 9337) are privileged. See Shim Decl. at ¶¶ 4, 5 (explaining that Exhibits 9336 and 9337 are memoranda that he prepared and transmitted to Donohoe and Gwang Ho Kim, both members of Samsung’s IP legal department who are also attorneys, summarizing two telephone conversations that he had with Neil Steinberg regarding the impact of the Infineon litigation on Samsung’s payment of royalties under the parties’ SDR/DDR License and conveying his mental impressions and opinions regarding the conversations, and that the purpose of preparing and sending the memoranda was to inform the recipients about Rambus’s positions and to provide legal analysis with respect to the significance of what was discussed). Mr. Shim’s supporting declaration also confirms that Mr. Shim’s memorandum to “All,” Exhibits 9061 and 9129, is a memorandum prepared and sent to Samsung’s IP legal department, which summarizes a license-negotiation meeting with Rambus that he attended. See Shim Decl. at ¶ 3. The memorandum includes Mr. Shim’s opinions regarding the meeting, and was prepared and communicated to the client to inform the IP Legal Department, in response to their request to be kept updated, of the status of the negotiations, and to provide legal analysis with respect to the significance of what transpired at the meeting. Id.
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Shim, Samsung in-house counsel, for discussions with the client and other in-house counsel
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Because the Samsung has submitted evidence and confirmation that the documents at issue are protected by the attorney-client privilege, they should remain privileged and Rambus should be precluded from introducing them or the related deposition testimony in the September Trial.
21 CONCLUSION
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For these reasons, as well as those presented in Samsung’s original motion, the Court should grant Samsung’s motion in limine.
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CASE NO. C 05 00334 RMW CASE NO. C 05 02298 RMW
Case 5:05-cv-00334-RMW
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Dated: September 18, 2008
2 WEIL, GOTSHAL & MANGES, LLP 3 4
By:
/s/ Matthew D. Powers Matthew D. Powers
5 MATTHEW D. POWERS (Bar No. 104795) Email: [email protected] EDWARD R. REINES (Bar No. 135930) Email: [email protected] WEIL, GOTSHAL & MANGES LLP 201 Redwood Shores Parkway Redwood Shores, CA 94065 Telephone: (650) 802-3000 Facsimile: (650) 802-3100
6 7 8 9 10
Attorneys for Defendants SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG SEMICONDUCTOR, INC., and SAMSUNG AUSTIN SEMICONDUCTOR, L.P.
11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 SAMSUNG’S SUPPLEMENTAL BRIEF IN SUPPORT OF ITS MOTION IN LIMINE
6
CASE NO. C 05 00334 RMW CASE NO. C 05 02298 RMW
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