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Oracle v. Google - Google Still Trying to Suppress the Lindholm Email
Thursday, September 15 2011 @ 01:00 PM EDT

Google is still working hard to suppress the Lindholm email. They believe the magistrate got it wrong, so they filed a motion for relief from the magistrate's order [408, PDF]. But Judge Alsup had the motion stricken because Google did not follow proper procedure under Rule 72 and request the court's permission to file the motion. [412, PDF]. Fortunately, the Judge also ruled that they would be considered to have made the précis request in a timely manner if they did so immediately.

So Google has now come back with that précis letter asking permission to file the motion for relief. [418, PDF]. Oracle opposed [429, PDF].

Yesterday the judge granted the précis request [430, PDF], and Google will get another shot at protecting the Lindholm emails.

Documents:

**************

408:

KEKER & VAN NEST LLP
ROBERT A. VAN NEST - #84065
[email]
CHRISTA M. ANDERSON - #184325
[email]
[address, phone, fax]

KING & SPALDING LLP
SCOTT T. WEINGAERTNER (Pro Hac Vice)
[email]
ROBERT F. PERRY
[email]
BRUCE W. BABER (Pro Hac Vice)
[email] [address, phone, fax]

KING & SPALDING LLP
DONALD F. ZIMMER, JR. - #112279
[email]
CHERYL A. SABNIS - #224323
[email]
[address, phone, fax]

IAN C. BALLON - #141819
[email]
HEATHER MEEKER - #172148
[email] GREENBERG TRAURIG, LLP

Attorneys for Defendant
GOOGLE INC.

_________________

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

ORACLE AMERICA, INC.,

Plaintiff,

v.

GOOGLE INC.,

Defendant.

____________________

Case No. 3:10-cv-03561-WHA

MOTION FOR RELIEF FROM
NONDISPOSITIVE PRETRIAL ORDER
OF MAGISTRATE JUDGE

Judge: Hon. William Alsup

Date Comp. Filed: October 27, 2010
Trial Date: October 31, 2011

MOTION AND ACTION REQUESTED

Google, Inc. (“Google”) moves for relief from the “Order re the Parties’ Joint Discovery Letter of August 5, 2011 [Docket No. 277]” (Doc. 361) (hereinafter, “the Order”).1 Google requests the Court to take the actions requested in the accompanying Proposed Order.

PORTIONS OF THE ORDER TO WHICH GOOGLE OBJECTS

“Google has failed to prove the first three prongs of the attorney-client privilege test,
namely that the Lindholm Email constitutes a communication related to the purpose of
obtaining legal advice from a legal advisor in his capacity as such.” Doc. 361 at 4:18-21.

Objection: clearly erroneous and contrary to law. The Magistrate speculated without any factual basis that the email was purely business-related, and she ignored all the uncontradicted evidence linking the email to Google’s legal investigation of Oracle’s claims. See below.

“[Former Google in-house counsel Ben] Lee . . . did not indicate that he reviewed the Email
and could competently represent that it was connected to work that he requested from
Lindholm as part of the provision of legal advice he describes in his declaration.” Doc. 361 at 5:9-11.

Objection: clearly erroneous and contrary to law. Mr. Lee’s declaration stated: “On or about August 6, 2010 I received an email from Mr. Lindholm regarding the investigation Mr. Walker and I had asked him to conduct.” Ex. A (Doc. 315) at ¶ 9 (emphasis added). The Magistrate appears to have concluded that Mr. Lee’s statement lacked foundation because he did not add: “I know what Mr. Lindholm’s email was about because I read it.” Surely that statement is too obvious to require a declarant to make when he has declared that he received the email in question and has described what it was about.

“Neither Lee nor Lindholm discusses whether . . . they were communicating with each other solely about the legal advice they each describe. . . . Lindholm may well have been communicating with Lee about other non-privileged matters, including the business of negotiating for a Java license.” Doc. 361 at 5:11-15.

Objection: clearly erroneous and contrary to law. Mr. Lee and Mr. Lindholm declared that they were communicating about the investigation that Google General Counsel Kent Walker had asked Mr. Lindholm to undertake, under Lee’s direction, in response to Oracle’s infringement claims and in anticipation of Oracle’s threatened lawsuit. Ex. A (Doc. 315) at ¶¶ 5-

1

10; Ex. B (Doc. 316) at ¶¶ 4-8, 14. One of Mr. Lindholm’s declarations specifically excluded the possibility that the email was about anything other than Google’s legal investigation, such as “general business advice” about Android. Ex. C (Doc. 331) at ¶¶ 7-8.

“[N]either Lee nor Lindholm states that Rubin, Page, and Brin were involved in the described efforts to formulate legal advice, nor do they attempt to explain why these individuals feature so prominently in the text of the Email.” Doc. 361 at 5:16-18.

Objection: clearly erroneous and contrary to law. There is no mystery as to why Google co-founders Larry Page and Sergey Brin and Android chief Andy Rubin “feature[ed] so prominently” in Mr. Lindholm’s email. As stated in Mr. Lee’s and Mr. Lindholm’s declarations, at that time, Google had recently learned that software giant Oracle was threatening to sue Google on a claim that Google’s Android platform infringed Oracle’s patents and copyrights. Oracle has claimed billions of dollars in damages.2 It is inconceivable that Google’s top management would not instruct the company’s lawyers to analyze and investigate a claim of such magnitude. Indeed, Mr. Lindholm’s declarations confirm that Google’s top management attended the July 30, 2010 meeting at which Google’s General Counsel tasked Mr. Lindholm and Mr. Grove with investigating facts relating to Oracle’s claims, and that the investigation was intended to develop and convey legal advice to Google’s executive management. Ex. B (Doc. 316) at ¶ 6; Ex C (Doc. 331), at ¶ 7.

Moreover, the Magistrate appears to have assumed that a legal investigation can be ordered and supervised either by top management, or by the company’s general counsel—but never by both. That assumption is baseless. Corporate attorney-client privilege cases regularly involve facts where both top management and corporate counsel order and supervise the investigation — e.g., where “senior management” instructs managers to give statements to the corporation’s counsel (see Admiral Ins. Co. v. United States Dist. Ct., 881 F.2d 1486, 1493 (9th Cir. 1989)) or a board chairman asks general counsel to investigate corporate conduct by interviewing lower-level employees (see Upjohn Co. v. United States, 449 U.S. 383, 387 (1981)).

2

“Nothing in the content of the Email indicates that Lindholm prepared it in anticipation of litigation or to further the provision of legal advice. The Email is not directed to [attorneys] Walker or Lee . . . [but rather,] . . . to Rubin, the Vice President of Android. It expressly states that Page and Brin (and not the lawyers) instructed Lindholm and Grove to undertake the technological research discussed in the Email.” Doc. 361 at 5:21-25.

Objection: clearly erroneous and contrary to law. First, the “content of the Email” does indicate that it was prepared in anticipation of litigation and to further the provision of legal advice because it includes the words “Attorney Work Product” and “Google Confidential,” was sent to the Google in-house lawyer assigned to supervise Lindholm’s investigation of Oracle’s claims, and concerned alternatives to the technology that Oracle then was claiming Google had infringed. Second, the email most assuredly is “directed to” Lee. It says so, right in the “To:” field. While the salutation is to Mr. Rubin, there is no legal rule that the attorney must be named in the salutation—especially when the communication says “Attorney Work Product” and “Google Confidential” at the top and is directly addressed to an attorney. While the fact that the communication is addressed to a lawyer may not be dispositive in and of itself, it cannot simply be ignored. See In re OM Sec. Litig., 226 F.R.D. 579, 587 (N.D. Ohio 2005). Third, the email does not “expressly stat[e] that Page and Brin (and not the lawyers)” instructed Lindholm to conduct the pre-litigation investigation. “[A]nd not the lawyers” is an inference that the Magistrate mistakenly drew after disregarding (a) the confidentiality statements at the top of the email, (b) the fact that the email is addressed to a lawyer, (c) the fact that the email discusses alternatives to using a technology just accused by Oracle (in a Fed. R. Civ. P. 408 communication) of infringing intellectual-property rights, and (d) the many statements in Lee’s and Lindholm’s declarations explaining that the email reported the results of a pre-litigation investigation launched in response to Oracle’s claims.

Moreover, the Lindholm declarations state that top management attended the July 30, 2010 meeting at which Kent Walker tasked Mr. Lindholm and Mr. Grove with investigating issues related to Oracle’s claim — i.e., with “undertak[ing] the technological research discussed in the Email.” Google’s general counsel ordered the investigation with the support and approval of Google’s top management. Yet the Magistrate once again assumes that the presence and involvement of top management renders any transaction presumptively non-legal.

3

“The Email text also never mentions legal advice, lawyers, litigation, Oracle, or patent infringement; rather, it focuses on technological aspects of Chrome and Android, and the need to negotiate a license for Java. . . . [T]he Email appears to be a strategy discussion intended to address business negotiations regarding a Java license . . . .” Doc. 361 at 6:3-5, 12-13.

Objection: clearly erroneous and contrary to law. The Magistrate held, in substance, that a communication cannot be related to a corporate legal investigation if it fails to refer to litigation or to request legal assistance. But it is not necessary to expressly request legal assistance; just keeping the attorney abreast of business developments may imply such a request. See In re Spalding Sports Worldwide, Inc., 203 F.3d 800, 806 (Fed. Cir. 2000); Hercules, Inc. v. Exxon Corp., 434 F. Supp. 136, 144 (D. Del. 1977). And it would undermine the privilege to hold that every communication generated by a corporate legal investigation must contain boilerplate assertions about the ongoing legal investigation in order to remain privileged.

The Magistrate’s conclusion that the Lindholm email “appears to be a strategy discussion” about licensing negotiations rather than anything litigation-related is not supported by any evidence and rests on illogical speculation. The Magistrate did not question the credibility of the declarations stating that Kent Walker asked in-house attorney Ben Lee to continue supervising Lindholm’s investigation of facts relating to Oracle’s claims. Ex. E at 11:15-21, 23:24-24:19. Ben Lee is just one of more than 200 in-house attorneys that Google employs world-wide—yet he was the only Google in-house attorney to whom Mr. Lindholm addressed an email discussing alternatives to Oracle’s allegedly infringed programming language, and he was the attorney initially tasked with leading the investigation of Oracle’s claims. That is no coincidence.

The Magistrate’s speculation likewise fails to address the timing of Mr. Lindholm’s email—sent just one week after the June 30, 2011 meeting with Google lawyers and top management, and less than three weeks after Oracle presented its infringement claims and threatened Google with litigation. Again, that is no coincidence.3

4

“Lee’s role as in-house counsel warrants heightened scrutiny. . . . [Google] ‘must make a “clear showing” that the “speaker” made the communication[] for the purpose of obtaining or providing legal advice.’” . . . Google has made no such showing.” Doc. 361 at 7:9-18.

Objection: clearly erroneous and contrary to law. The “clear showing” standard originated in the D.C. Circuit; but the Ninth Circuit (whose law governs here) holds that, “[i]n determining the existence of a privilege, no attempt is made to distinguish between ‘inside’ and ‘outside’ counsel.” United States v. Rowe, 96 F.3d 1294, 1296 (9th Cir. 1996). Google satisfied the “clear showing” standard anyway, since its declarations establish that Lee was tasked by Google’s general counsel with overseeing an investigation of facts relating to Oracle’s claims and threat of litigation—a quintessentially legal task calling upon Lee’s “‘knowledge and discretion in the law.’” Chen, 99 F.3d at 1502. Moreover, under the “clear showing” standard, Ben Lee’s status as a member of Google’s legal department leads to a presumption that he was giving legal advice. See Boca Investerings P’ship v. U.S., 31 F. Supp. 2d 9, 12 (D.D.C. 1998).

“The reactions of Google counsel when presented with [an incomplete draft of] the Lindholm Email in court reinforce the weaknesses of Google’s contention that the Email warrants attorney-client privilege. . . .” Doc. 361 at 6:15-7:2.

Objection: clearly erroneous and contrary to law. The surprised reaction of a lawyer confronted for the first time with excerpts from a draft document that has been “stripped” of some of its most telling intrinsic indicia of privilege (and was presented to the public in violation of a protective order) is utterly irrelevant in a case where millions of pages have been produced.

The Magistrate denied the Lindholm email work-product protection “[f]or the same reasons discussed” in its treatment of the attorney-client privilege. Doc. 361 at 8:16.

Objection: clearly erroneous and contrary to law for all the reasons stated above.

Dated: September 8, 2011

Respectfully submitted,

KEKER & VAN NEST LLP

By: s/ Robert A. Van Nest
ROBERT A. VAN NEST
Attorneys for Defendant
GOOGLE INC.

________________________

1 Google also objects to the Magistrate’s orders contained in Docs. 353, 354, 355, 356, and 360, all of which depend on the finding of non-privilege contained in Doc. 361.

2 Ex. D (Doc. 230) at 4.

3 Even if the Lindholm email relates solely to “business negotiations” (and it doesn’t), such communications can be privileged, too. See United States v. Chen, 99 F.3d 1495, 1501-02 (9th Cir. 1996) (emphasis added); In re Brand Names Prescription Drugs Litig., No. 94 C 897, 1995 WL 557412, at *2 (N.D. Ill. Sept. 19, 1995); OM Sec. Litig., 226 F.R.D. at 587. And there is no bright line between license negotiations and IP litigation because licenses are a typical component of settlements involving an IP dispute. See, e.g, Jacobs v. Nintendo of Am., Inc., 370 F.3d 1097, 1098-99 (Fed. Cir. 2004); Hemstreet v. Spiegel, Inc., 851 F.2d 348, 349 (Fed. Cir. 1988); Therasense, Inc. v. Becton, Dickinson & Co., C 04-02123 WHA, 2008 WL 2323856 (N.D. Cal. May 22, 2008).

5


412:

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA

_________________

ORACLE AMERICA, INC.,

Plaintiff,

v.

GOOGLE INC.,

Defendant.

___________________

No. C 10-03561-WHA

ORDER STRIKING
UNAUTHORIZED
RULE 72 MOTION

Pursuant to the order regarding motion practice, no motions may be filed in this action without prior written approval, except for discovery disputes (Dkt. No. 86). On September 8, 2011, Google Inc. filed a motion pursuant to FRCP 72 for relief from an order of Magistrate Judge Ryu (Dkt. No. 408). Google neither sought nor received permission to file such a motion. As such, the filing is improper. The clerk shall STRIKE defendant’s unauthorized Rule 72 motion. If defendant wishes to file a Rule 72 motion, then defendant should request permission to do so by way of the précis procedure. The date of Google’s unauthorized filing will, however, be used when evaluating the timeliness of any Rule 72 objection raised therein.

IT IS SO ORDERED.

Dated: September 9, 2011.

[signature]
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE


418:

[Keker & Van Nest LLP letterhead]

September 12, 2011

Honorable William Alsup
U. S. District Court
Northern District of California
Courtroom 9 - 19th Floor
450 Golden Gate Avenue
San Francisco, CA 94102

Re: Oracle America, Inc. v. Google Inc.
U. S. District Court Case No.: 3:10-cv-03561 WHA

Dear Judge Alsup:

Google respectfully requests permission to file a motion for relief from Magistrate Judge Ryu's nondispositive orders holding that attorney-client privilege does not protect the Lindholm email and drafts thereof. Dkt. Nos. 353, 354, 355, 356, 360, and 361 (hereinafter, "the Orders").

The Orders are clearly erroneous and contrary to law. As stated in the declarations that Google filed at the Magistrate's request, the final Lindholm email is a confidential communication from Google engineer Tim Lindholm to Google in-house counsel Ben Lee (among others), concerning an investigation that Lindholm conducted pursuant to directions from Google's General Counsel as part of the legal department's overall evaluation of the present lawsuit for the company's senior management. The drafts of the Lindholm email, as Magistrate Judge Ryu recognized, "form a sequence of automatically saved drafts of an email that was created during a four minute span before being sent." Dkt. No. 361 at p. 2 n.3. Thus, the final Lindholm email and all drafts thereof are protected from disclosure by the attorney-client privilege. See Upjohn Co. v. United States, 449 U.S. 383, 389 (1981) ("[Attorney-client

Honorable William Alsup
September 12, 2011
Page 2

privilege] protects not only the giving of professional advice to those who can act on it, but also the giving of information to the lawyer to enable him to give sound and informed advice."); Laethem Equip. Co. v. Deere & Co., 261 F.R.D. 127, 139-40 (E.D. Mich. 2009) (noting that "preliminary drafts of a document that is ultimately sent to counsel" are privileged).

The Orders ignore both intrinsic and extrinsic evidence that the Lindholm email is privileged. As to the intrinsic evidence, the Lindholm email (1) contains the phrases "Attorney Work Product" and "Google Confidential," (2) was sent to an attorney, (3) discusses the very technology that Oracle had accused Google of infringing just two weeks earlier. Yet the Magistrate found that "[njothing in the content of the Email indicates that Lindholm prepared it in anticipation of litigation or to further the provision of legal advice." Dkt. No. 361 at 5:21-22. As to the extrinsic evidence, Google submitted declarations from Mr. Lee and Mr. Lindholm establishing that (1) Mr. Lee and Google General Counsel Kent Walker asked Mr. Lindholm to investigate facts related to Oracle's infringement claims, (2) Mr. Lindholm conducted that investigation under Mr. Lee's supervision, and (3) Mr. Lindholm's August 6 email reports on that investigation and is not about general business matters. Dkt. Nos. 315 at ¶¶ 6-10; 316 at ¶¶ 4-8; 331 at ¶¶ 7-8. Yet the Magistrate found that Google had failed to establish that the email related to a request for legal (as opposed to business) advice. Dkt. No. 361 at 5:11-15. Although the Magistrate stated that she did not contest the truthfulness of Google's declarations, the Orders necessarily rely on counterfactual speculations that discount those declarations entirely.

The Magistrate also applied the wrong legal standard to Google's privilege claim. For example, the Magistrate incorrectly assumed that an investigation in response to threatened litigation is not privileged if top management orders the investigation. Dkt. No. 361 at 5:16-

Honorable William Alsup
September 12, 2011
Page 3

518. This is not the law. See, e.g., Admiral Ins. Co. v. United States Dist. Ct., 881 F. 2d 1486, 1493 (9th Cir. 1989) (holding that employees' statements to company's attorneys were privileged where "senior management" directed attorneys to gather information from employees in response to litigation). The Magistrate further held that, because Mr. Lee was an in-house attorney, Google "must make a 'clear showing'" that the Lindholm email was connected to a request for legal advice. Dkt. No. 361 at 7:9-18. This is not the law in the Ninth Circuit. See United States v. Rowe, 96 F.3d 1294, 1296 (9th Cir. 1996) ("In determining the existence of the privilege, no attempt is made to distinguish between 'inside' and 'outside' counsel."). And, in any case, the declarations clearly showed that the only reason Mr. Lindholm conducted the investigation at issue was as part of Google's preparation for and consideration of this lawsuit.

Google apologizes for any inconvenience to the Court caused by its failure to file this précis before filing the motion itself. Google was, however, required to file timely objections in order to preserve its rights on appeal, regardless of whether the Court granted permission for it to do so. Simpson v. Lear Astronics Corp., 11 F.3d 1170, 1174 (9th Cir. 1996) ("[A] party who fails to file timely objections to a magistrate judge's nondispositive order with the district judge to whom the case is assigned forfeits its rights to appellate review of that Order."); see also Fed. R. Civ. P. 72(a). Google sincerely regrets any inconvenience to the Court, and for all the foregoing reasons, respectfully requests permission to re-file its objections in order for the Court to address the issues Google raises therein on their merits.

Sincerely,

s/ Robert Van Nest
ROBERT A. VAN NEST


430:

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA

_________________

ORACLE AMERICA, INC.,

Plaintiff,

v.

GOOGLE INC.,

Defendant.

___________________

No. C 10-03561-WHA

ORDER GRANTING
REQUEST TO FILE
RULE 72 MOTION

Defendant “respectfully requests permission to file a motion for relief from Magistrate Judge Ryu’s nondispositive orders holding that attorney-client privilege does not protect the Lindholm email and drafts thereof” (Dkt. No. 418). Plaintiff opposes defendant’s request (Dkt. No. 429). Having considered the submissions from both sides, defendant’s request is GRANTED. The motion must be filed by SEPTEMBER 19, 2011. The opposition is due on SEPTEMBER 26, 2011, and the reply is due on SEPTEMBER 29, 2011. The opening and responsive memoranda may not exceed fifteen pages each, and the reply memorandum may not exceed ten pages. The motion will be heard at 8:00 A.M. ON OCTOBER 13, 2011.

IT IS SO ORDERED.

Dated: September 14, 2011.

[signature]
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE


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