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Lindholm Email Stays in the Case, as Judge Denies Google's Motion ~ pj
Friday, October 21 2011 @ 03:34 AM EDT

Judge William Alsup has denied Google's Motion for Relief from Non-Dispositive Pretrial Order of Magistrate Judge [PDF; text]: "The Lindholm email and drafts will not be treated as protected by attorney-client privilege or work-product immunity."

Here's the order [PDF]. The heart of the reasoning underpinning this ruling is found in a nutshell in Judge Alsup's analysis section:

ANALYSIS

The district judge in a case must consider timely objections to any non-dispositive pretrial order of a magistrate judge and must “modify or set aside any part of the order that is clearly erroneous or is contrary to law.” FRCP 72(a). Thus, “[a] non-dispositive order entered by a magistrate must be deferred to unless it is ‘clearly erroneous or contrary to law.’” Grimes v. City and County of San Francisco, 951 F.2d 236, 241 (9th Cir. 1991). In contrast to dispositive matters, orders of a magistrate judge on non-dispositive matters “are not subject to de novo determination,” and “[t]he reviewing court may not simply substitute its judgment for that of the deciding court.” Ibid. Google cites no binding authority for its argument that legal conclusions (as opposed to factual findings) in a non-dispositive pretrial order of a magistrate judge are reviewed de novo (Reply Br. 2–3).3 Google asserts that Magistrate Judge Ryu’s August 26 order was clearly erroneous and contrary to law. It was not.

In other words, this isn't a dispositive matter, meaning it doesn't end the case, and so there is, the judge believes, a very high bar for review. He can't substitute his own judgment for hers, unless there is clear error or some mistake of law, which he didn't find in the magistrate's order.

A real problem is that when the email showed up in a hearing, the objection of privilege was not immediately raised by Google on the spot. Remember when SCO's lawyers, also Boies Schiller & Flexner, now representing Oracle, read aloud in open court a confidential IBM email? IBM immediately objected, and it won that battle.

What I learned from all this is that it's hazardous to rely on electronic digital discovery. You do need a human, I think to catch things just like this, where there were no confidentiality or privilege headings on some of the drafts, so it was not obvious to anything not a human that this was what it turned out to be. I realize that won't happen. The clock never turns back when it comes to tech. So maybe after this experience, Google will write some legal software to fix discovery issues like this.

This isn't necessarily the end of the line, of course. Google can ask to appeal now to the appeals court, or it can wait until the end and appeal this issue then, depending on the outcome of trial. You can see in footnote 4 that Judge Alsup pretty much expects an appeal. And it's hard to believe Google would fight as hard as it has over this email only to drop the matter now.

They could also ask the judge to reconsider. Remember when SCO did that in the IBM litigation? It didn't work. But once when IBM asked the magistrate judge to reconsider one of her orders, she did.

And you also will see in footnote 4 a strong hint of what he thinks the explanation of the email really is. It seems he worked in a large corporate law firm prior to becoming a judge, and he saw some tricks being played there, like attaching a lawyer's name to emails so as to claim privilege even when it wasn't appropriate, in his eyes. That soured view toward corporate law firms, which we also saw in this same judge in the Psystar case, comes across pretty much from end to end in this ruling, giving it a Kafkaesque feel. On the other hand, with so much experience as this judge has, who am I to say he hasn't gotten it right in the end?

But notice what Google attorney Benjamin Lee told the court in a Declaration [PDF]:

5. On or about July 20, 2010, I attended a meeting with attorneys for Oracle at Google's office in Mountain View, California. At that meeting, Oracle claimed that Google was infringing on Oracle patents. Oracle threatened to sue Google over those patents.

6. After the July 20, 2010 meeting, I asked Mr. Lindholm to gather certain information related to Oracle's infringement claims. I asked Mr. Lindholm to do this to assist Google's legal analysis of those claims.

7. On or about July 30, 2010, Mr. Lindholm and I attended a meeting convened by Google General Counsel Kent Walker. The purpose of the meeting was to formulate a response to Oracle's infringement claims. Mr. Lindholm provided input on issues related to those claims at the meeting.

8. At the direction of Mr. Walker and myself, Mr. Lindholm continued after the July 30, 2010 meeting to work on issues related to Oracle's infringement claims. I supervised Mr. Lindholm's ongoing efforts and communicated with him several times in late July and early August 2010 to learn the results of those efforts.

Try to put that together with what the order says about the Lee declarations.

Another filing shows that Google has added a new lawyer, Truman H. Fenton, to the team. He's from Texas, where the patent flag flies high. At least that was my first thought when I saw he was from Texas. I thought, *East* Texas, perchance? But as it turns out, he is another King & Spalding attorney, from the Austin, Texas King & Spaldings, and he is indeed a patent attorney, according to the Patent Attorney Database, assuming there is only one lawyer named Truman H. Fenton in Texas. Here's his bio, which tells us that he's an IP lawyer, but before going to law school, he was a software engineer:

Truman Fenton is an associate in the Intellectual Property Practice Group. He provides legal services to clients in matters relating to patents, copyrights, trademarks, technology licensing, and litigation. Mr. Fenton's technical background in electrical and computer engineering spans software engineering; digital circuit design, simulation, and testing; computer networking; computer architecture; and systems benchmarking....

Prior to attending law school, Mr. Fenton worked for five years as a software developer, presales engineer, and product manager at Trilogy Software, Inc., in Austin, where he focused on enterprise and e-commerce software solutions for retail manufacturers and financial services companies. In each engagement, Mr. Fenton focused on aligning Trilogy’s technologies with existing systems, which required operational knowledge of the information technology infrastructure operated by Fortune 500 manufacturing and financial services companies. This existing infrastructure included mainframe systems, engineering resource planning (ERP) systems, and a variety of server and workstation technologies. In some of these engagements, Trilogy seamlessly integrated best-of-breed pricing and configuration capabilities into existing systems and workflow. Mr. Fenton has programmed on platforms including UNIX, Windows, UNICOS (Cray supercomputers), embedded systems, and IBM mainframes.

Impressive.

Google has also filed a Supplemental Motion in support of its Motion in Limine No. 3, which is about excluding portions of Oracle's expert Dr. Iain Cockburn's report on damages, and there is a declaration in support, as well as a Google motion to seal certain materials in support of the Supplemental Motion. In fact, the exhibits only say "FILED UNDER SEAL".

Here's the docket:

546 - Filed & Entered: 10/20/2011
Order on Motion for Miscellaneous Relief
Docket Text: ORDER DENYING MOTION FOR RELIEF FROM NON-DISPOSITIVE PRETRIAL ORDER OF MAGISTRATE JUDGE, Order by Hon. William Alsup denying [441] Motion for Relief from Non-Dispositive Pretrial Order of Magistrate Judge.(whalc1, COURT STAFF) (Filed on 10/20/2011)

547 - Filed & Entered: 10/20/2011
Motion for Pro Hac Vice
Docket Text: MOTION for leave to appear in Pro Hac Vice - Truman H. Fenton ( Filing fee $ 275, receipt number 34611066044) filed by Google Inc. (Attachments: # (1) Proposed Order)(wsn, COURT STAFF) (Filed on 10/20/2011)

548 - Filed & Entered: 10/20/2011
Administrative Motion to File Under Seal
Docket Text: Administrative Motion to File Under Seal filed by Google Inc.. (Attachments: # (1) Declaration, # (2) Proposed Order)(Purcell, Daniel) (Filed on 10/20/2011)

549 - Filed & Entered: 10/20/2011
Brief
Docket Text: Brief re [494] MOTION in Limine No. 3 [SUPPLEMENTAL] filed byGoogle Inc.. (Related document(s)[494]) (Van Nest, Robert) (Filed on 10/20/2011)

550 - Filed & Entered: 10/20/2011
Declaration in Support
Docket Text: Declaration of Daniel Purcell in Support of [549] Brief filed by Google Inc.. (Attachments: # (1) Exhibit Ex to DPurcell Decl ISO of Suppl Brief, # (2) Exhibit Ex to DPurcell Decl ISO of Suppl Brief, # (3) Exhibit Ex to DPurcell Decl ISO of Suppl Brief, # (4) Exhibit Ex to DPurcell Decl ISO of Suppl Brief, # (5) Exhibit Ex to DPurcell Decl ISO of Suppl Brief)(Related document(s)[549]) (Van Nest, Robert) (Filed on 10/20/2011)

And if you are wondering why I'm writing articles about this case, it's because Mark had to attend a conference. He'll be back on Monday, though. I'm like the substitute teacher for a couple of days.

Here's the Alsup order as text:

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

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA

__________________

ORACLE AMERICA, INC.,

Plaintiff,

v.

GOOGLE INC.,

Defendant.

________________

No. C 10-03561 WHA

ORDER DENYING MOTION
FOR RELIEF FROM
NON-DISPOSITIVE
PRETRIAL ORDER OF
MAGISTRATE JUDGE

____________________

INTRODUCTION

In this patent and copyright infringement action involving features of Java and Android, defendant moves for relief from a non-dispositive pretrial order of a magistrate judge. For the reasons stated below, the motion is DENIED.

STATEMENT

The facts of this action have been set forth in previous orders (see Dkt. Nos. 137, 230, 433). In the weeks before this action was filed, lawyers for Oracle America, Inc. communicated with lawyers for Google Inc. about the alleged infringement. On July 20, 2011, Google Senior Counsel Ben Lee met with Oracle lawyers to discuss Oracle's patent-infringement allegations (Lee Decl. ¶ 5). Ten days later, Google General Counsel Kent Walker convened a meeting to formulate a response to Oracle's infringement claims. Attorney Lee attended the meeting, as did Google software engineer Tim Lindholm (Lee Decl. ¶ 7). A week later, Mr. Lindholm wrote the email that is the subject of the instant motion.

The final version of the email was sent at 11:05 a.m. on August 6, 2010. In addition to the final version, nine different drafts were saved automatically by Mr. Lindholm's computer while he wrote the email between 11:01 and 11:05 that morning. The nine drafts saved during this four-minute period were stored by the computer without specific direction from Mr. Lindholm.

The "To:," "Cc:," and "Bcc:" fields of all the drafts were blank. The "To:" field of the final version listed Andy Rubin, who was the Google Vice President in charge of Android, and Attorney Lee. The "Cc:" field listed Dan Grove, who was another Google engineer, and Mr. Lindholm himself. The "Bcc:" field was blank. The final version of the email and the last draft also included two headings within the body of the email which were not present in any of the earlier drafts. These headings labeled the email as "Attorney Work Product" and "Google Confidential."1 The "Subject:" field of the final version and all drafts of the email read, "Context for discussion: what we're really trying to do." The full text of the body of the final email that actually was sent read as follows:

2

Attorney Work Product

Google Confidential

Hi Andy,

This is a short pre-read for the call at 12:30. In Dan's earlier email we didn't give you a lot of context, looking for the visceral reaction that we got.

What we've actually been asked to do (by Larry and Sergei) is to investigate what technical alternatives exist to Java for Android and Chrome. We've been over a bunch of these, and think they all suck. We conclude that we need to negotiate a license for Java under the terms we need.

That said, Alan Eustace said that the threat of moving off Java hit Safra Katz hard. We think there is value in the negotiation to put forward our most credible alternative, the goal being to get better terms and price for Java.

It looks to us that Obj-C provides the most credible alternative in this context, which should not be confused with us thinking we should make the change. What we're looking for from you is the reasons why you hate this idea, whether you think it's a nonstarter for negotiation purposes, and whether you think there's anything we've missed in our understanding of the option.

-- Tim and Dan

The nine sequential drafts show that Mr. Lindholm generally wrote the email from top to bottom, with the exception that the headings "Attorney Work Product" and "Google Confidential" were added in the last minute before the email was sent. There is no evidence that Attorney Lee -- the only attorney who received the email -- actually read it or responded to it, much less used it in constructing any legal advice.

Oracle filed this infringement action six days after Mr. Lindholm sent the email. During discovery, Google produced the first eight drafts of the email to Oracle. The ninth draft and the final version, however, were held back and listed on Google's privilege log. Google explains that its electronic scanning mechanisms "did not catch those drafts before production" because those drafts did not contain the confidentiality or privilege headings and did not contain any addressees. Google did, however, designate the eight drafts it produced as "HIGHLY CONFIDENTIAL -- ATTORNEYS' EYES ONLY" pursuant to the protective order, which required restraint and care for such designations (Br. 5; Dkt. No. 66 at 5).

3

On July 21, 2011, Oracle referenced one of the email drafts at two different hearings -- a discovery-dispute hearing before Magistrate Judge Ryu, and a Daubert hearing before the undersigned judge. Part of the email draft was read into the record at the latter hearing, and Google attorneys addressed its substance. They did not object to the email draft as privileged or confidential.

The night after those hearings, Google informed Oracle that the email draft constituted "Protected Material" under the protective order and requested that Oracle not make any further public disclosure of its content. The following evening, Google asserted that the email draft was "unintentionally produced privileged material" and clawed it back. A few hours later, Google notified Oracle that the reason the email draft had been clawed back was because it was "subject to the attorney-client privilege and/or work product doctrine." Google then clawed back the other produced drafts for the same reason.2

The parties proceeded to litigate the matter of the Lindholm email and drafts. The undersigned judge denied Google's request to file motions to seal and redact portions of the Daubert hearing transcript and Daubert order that referenced the email draft (Dkt. No. 255). After briefing, factual submissions, and a hearing, Magistrate Judge Ryu found that "Google has not demonstrated that the Lindholm Email falls within the ambit of attorney-client privilege or the work product doctrine." Based on that finding, she ordered Google to produce or re-produce the final version and all nine drafts of the Lindholm email and to tender Mr. Lindholm for deposition (Dkt. No. 361 at 8-9).

Google's instant motion challenges that order, which was issued on August 26, 2011. Contrary to the order, Google asserts that it did establish that the final version and all nine drafts of the Lindholm email were privileged. Google timely sought and received permission to file the instant motion for relief from Magistrate Judge Ryu's August 26 order. This order follows full expedited briefing and a hearing.

4

ANALYSIS

The district judge in a case must consider timely objections to any non-dispositive pretrial order of a magistrate judge and must "modify or set aside any part of the order that is clearly erroneous or is contrary to law." FRCP 72(a). Thus, "[a] non-dispositive order entered by a magistrate must be deferred to unless it is `clearly erroneous or contrary to law.'" Grimes v. City and County of San Francisco, 951 F.2d 236, 241 (9th Cir. 1991). In contrast to dispositive matters, orders of a magistrate judge on non-dispositive matters "are not subject to de novo determination," and "[t]he reviewing court may not simply substitute its judgment for that of the deciding court." Ibid. Google cites no binding authority for its argument that legal conclusions (as opposed to factual findings) in a non-dispositive pretrial order of a magistrate judge are reviewed de novo (Reply Br. 2-3).3

Google asserts that Magistrate Judge Ryu's August 26 order was clearly erroneous and contrary to law. It was not. The order set forth a detailed review of the email itself and the extrinsic evidence bearing on the question of privilege. Then, based on holistic consideration of all the intrinsic and extrinsic evidence, the order found that Google had failed "to meet its burden of demonstrating that the Lindholm Email constitutes a communication related to the purpose of obtaining legal advice from a legal advisor in his capacity as such." In light of this factual finding, the order then found that the email and its drafts were not protected by the attorney-client privilege or the work-product doctrine (Dkt. No. 361 at 7-8). Google raises seven categories of objections to the order. Each category is addressed in turn below.

1. CONTENT OF THE EMAIL.

Having considered the full text of the email, the challenged order found that "[n]othing 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). Google asserts that this finding and the specific findings on which it was based were clearly erroneous and contrary to law.

5

First, Google asserts that 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 facts related to Oracle's claims, and concerned alternatives to the technology that Oracle then was claiming Google had infringed" (Br. 11). The challenged order considered and rejected all of those points.

Simply labeling a document as privileged and confidential or sending it to a lawyer does not automatically confer privilege. See, e.g., In re Chase Bank USA, N.A. "Check Loan" Contract Litigation, No. 09-md-2032, 2011 WL 3268091, at *4 (N.D. Cal. July 28, 2011) (Corley, M.J.) ("Merely labeling a communication as an 'attorney-client privileged draft' . . . or adding an attorney as a recipient are insufficient to confer privilege when the communication is not otherwise for the purpose of facilitating legal advice or services."). Moreover, the technology mentioned in the email included both accused and non-accused products. The Google product Chrome was not mentioned at the meeting with Oracle's lawyers and has played no role in this litigation (Dkt. No. 361 at 6). The finding that these aspects of the email did not support Google's claim of privilege was not clearly erroneous or contrary to law.

Second, the challenged order noted that the email was "directed to Rubin, the Vice President of Android," and not "to Walker or Lee, or indeed to any lawyer." This statement analyzed the salutation of the email (Dkt. No. 361 at 5). Google argues that it was clearly erroneous because the email was "directed to" Attorney Lee in that Attorney Lee was listed in the "To:" field (Br. 11). Google's critique takes the "directed to" statement out of context. The challenged order acknowledged elsewhere that Attorney Lee was included in the "To:" field. The statement at hand made a separate point concerning the salutation as evidence of the writer's intent. The salutation of the final email addressed only a non-attorney. The attorney, at most, was a mere "To." There was no evidence that he actually read or responded to the email, much less used it in constructing any legal advice. Again, merely adding an attorney as a recipient does not automatically confer privilege. See In re Chase Bank, 2011 WL 3268091, at *4.

6

Third, the challenged order noted that the email "expressly states that Page and Brin (and not the lawyers) instructed Lindholm and Grove to undertake the technological research discussed in the Email" (Dkt. No. 361 at 5). Google complains that the email did not expressly state that the lawyers did not direct the research (Br. 11). Google misreads the order. The parenthetical statement "and not the lawyers" emphasized that the email did not identify the lawyers as directing the research, but rather it identified other individuals as directing the research. This was true. Contrary to Google, the parenthetical did not imply that the email affirmatively stated that the lawyers did not direct the research. Google's objection tortures the language.

The conclusion that "[n]othing in the content of the email indicates that Lindholm prepared it in anticipation of litigation or to further the provision of legal advice" was not clearly erroneous or contrary to law.

2. LACK OF REFERENCE TO LITIGATION AND FOCUS ON
NON-LITIGATION MATTERS.

The challenged order noted that the email text "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." This was true. After considering this observation in conjunction with other facts, the order found that "the Email appears to be a strategy discussion intended to address business negotiations regarding a Java license" (Dkt. No. 361 at 6). Google challenges these statements as clearly erroneous and contrary to law. They were not.

First, Google argues that the "conclusion that the Lindholm email 'appears to be a strategy discussion' about licensing negotiations rather than anything litigation-related is not supported by any factual evidence and rests on counterfactual speculation" (Br. 12). Not so. The challenged order cited copious record facts, including the text of the email itself, as suggesting that the email may have concerned a different matter. For example, the order noted that the email referenced Chrome, a Google product that was not mentioned at the meeting with Oracle's lawyers and which has played no role in this litigation (Dkt. No. 361 at 6).

7

Second, Google argues that the challenged order "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" (Br. 12). Again, not so. This interpretation grossly mischaracterizes the challenged order. No such requirement was articulated or implied. The lack of any reference to litigation was cited as only one of many factors contributing to the ultimate conclusion that the email was not privileged.

Neither the observation that the email lacked any reference to litigation nor the conclusion that it focused on non-litigation matters was clearly erroneous or contrary to law.

3. FIRST EVIDENTIARY GAP: LACK OF FOUNDATION FOR
LEE DECLARATION STATEMENTS.

The challenged order found that "there are many basic gaps in the factual record that Google failed to fill, despite having had ample opportunity to do so." It then cited three examples of such gaps. One example was that Attorney Lee, "who no longer works for Google, did not indicate [in his declaration] 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" (Dkt. No. 361 at 5).

Google argues that this observation was clearly erroneous and contrary to law because Attorney 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." According to Google, a foundational statement that Attorney Lee actually read the email "is too obvious to require when the declarant declares that he received the email in question and describes what it was about" (Br. 9).

Personal knowledge is a required foundation for any factual testimony. FRE 602. Google does not cite any authority for a "too obvious" exception to this rule. Attorney Lee's declaration did not state that he ever read the email or that he recalled the specific circumstances under which he received it (Dkt. No. 408-1). The finding that Attorney Lee's declaration lacked adequate foundation showing that he could competently represent that the email was connected to work that he requested from Lindholm as part of the provision of legal advice was not clearly erroneous or contrary to law.

8

4. SECOND EVIDENTIARY GAP: FAILURE TO FORECLOSE THE POSSIBILITY THAT
THE EMAIL CONCERNED A DIFFERENT, NON-PRIVILEGED MATTER.

The challenged order cited the following as a second example of a "basic gap[] in the factual record that Google failed to fill" (Dkt. No. 361 at 5):

Neither Lee nor Lindholm discusses whether, during the time period in question, they were communicating with each other solely about the legal advice they each describe. In other words, at that time, Lindholm may well have been communicating with Lee about other non-privileged matters, including the business of negotiating for a Java license. This is a simple and reasonable explanation for the Email that Google makes no effort to foreclose.
Google argues that this observation was clearly erroneous and contrary to law. Google identifies three bases for its objection.

First, Google asserts that "Mr. Lee and Mr. Lindholm expressly declared that Mr. Lindholm's August 6, 2010 email addresses the investigation that Mr. Lee and 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" (Br. 9). As to Attorney Lee, the challenged order found that his statements about the email lacked foundation. This order already has found that that finding was not clearly erroneous or contrary to law. As to Mr. Lindholm, the cited portions of his declaration do not specifically tie the email to the particular investigation described, because they do not describe the purpose for which the email was sent (Dkt. No. 408-2).

Second, Google argues that "[t]here is no basis in the record or elsewhere for the Magistrate's counterfactual speculation that Mr. Lindholm and Mr. Lee 'may well have been' communicating about something else" (Br. 9-10). Not so. As detailed throughout this order, the challenged order cited ample record support for the view that the email concerned some other, non-privileged matter.

Third, Google asserts that Mr. Lindholm's reply declaration "specifically excluded the possibility that the email was about anything else" (Br. 10). Again, Google stretches Mr. Lindholm's statements. The cited paragraph stated that the email was not intended "to give general business advice to anyone in connection with Android's ongoing business operations," but this statement did not foreclose the possibility that the email concerned something other than

9

an investigation for purposes of obtaining legal advice in preparation for this lawsuit (Dkt. No. 408-3 at ¶ 7).

In sum, the finding that Google failed to foreclose the reasonable possibility that the email concerned another, non-privileged matter was not clearly erroneous or contrary to law.

5. THIRD EVIDENTIARY GAP: FAILURE TO EXPLAIN PROMINENCE
OF NON-LAWYERS.

The challenged order cited the following as a third example of a "basic gap[] in the factual record that Google failed to fill" (Dkt. No. 361 at 5):

[N]either Lee nor Lindholm states that [Andy] Rubin, [Larry] Page, and [Sergei] 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. Lee and Lindholm easily could have supplied these basic foundational facts in their declarations without jeopardizing the asserted privilege."
The challenged order noted that the salutation in the body of the email addressed only Andy Rubin, who was not a lawyer. Similarly, it noted that the email reported on an investigation requested by Google executives Larry Page and Sergei Brin, who also were not lawyers. The "gap" identified above refers to Google's failure to explain why these individuals featured so prominently in an email supposedly sent for the purpose of obtaining legal advice.

Google asserts that this observation was clearly erroneous and contrary to law. Google is incorrect. First, Google argues that it is logical that Rubin, Page, and Brin would have been involved in an investigation of Oracle's infringement claims. Google, however, does not cite any declaration or other evidence showing that they were involved in directing technical research by Google engineers for the purpose of obtaining legal advice in preparation for this lawsuit (Br. 10). On the contrary, Google's declarations stated that the technical investigation of Oracle's infringement claims was directed by Attorneys Lee and Walker, whereas the email referred to an investigation directed by Messrs. Page and Brin. This discrepancy was not explained.

Second, Google argues that Magistrate Judge Ryu "appears to have assumed that a legal investigation can be ordered or supervised either by top management, or by the company's general counsel -- but never by both" (Br. 10≠11). The order, however, contained no such

10

statement and relied on no such logic. It merely observed that Google failed to address the discrepancy described above. That observation was not clearly erroneous or contrary to law.

6. ROLE OF ATTORNEY LEE AS IN-HOUSE COUNSEL.

The challenged order stated that Attorney Lee's "role as in-house counsel warrants heightened scrutiny," because in-house counsel may serve both business and legal functions. The order stated that a party attempting to demonstrate that an internal communication involving in-house counsel deserves privileged status must make a clear showing that the speaker made the communication for the purpose of obtaining or providing legal advice (Dkt. No. 361 at 7).

Google argues that this reasoning was clearly erroneous and contrary to law because the "clear showing" standard for in-house counsel has been rejected by our court of appeals. Not so. The challenged order cited a 2002 decision from this district court that applied the "clear showing" standard. Our court of appeals has yet to address that standard. It has been applied primarily by district courts following now-Justice Ginsburg's opinion in In re Sealed Case, 737 F.3d 94, 99 (D.C. Cir. 1984). See, e.g., United States v. ChevronTexaco Corporation, 241 F. Supp. 2d 1065, 1076 (N.D. Cal. 2002) (Chesney, J.) (adopting report and recommendation of Brazil, M.J.).4

Google cites a 1996 decision from our court of appeals, which stated that in "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 takes this language out of context. The Rowe decision did not address the "clear showing" standard or any other standard for establishing privilege. Rather, the cited portion of Rowe found that attorneys conducting an internal investigation at their own law firm "were, effectively, in-house counsel" and therefore in an attorney-client relationship with their employer. The decision did not address

11

the standard for determining whether the existence of an attorney-client privilege had been shown. Ibid. Requiring a clear showing of privilege in light of Attorney Lee's role as in-house counsel was not clearly erroneous or contrary to law.

Google also argues that "the Magistrate failed to mention an important corollary of the 'clear showing' doctrine" -- the existence of a rebuttable presumption that in-house counsel are "most often giving legal advice" (Br. 14). The challenged order, however, cited sufficient record evidence to rebut any such presumption in this instance. The fact that the challenged order did not explicitly reference this supposed presumption did not render it clearly erroneous or contrary to law.

7. REACTIONS OF GOOGLE LITIGATION COUNSEL.

The challenged order stated that "[t]he reactions of Google counsel when presented with the Lindholm Email in court reinforce the weaknesses of Google's contention that the Email warrants attorney-client privilege" (Dkt. No. 361 at 6). Google objects to this statement as clearly erroneous and contrary to law. Google argues that the "surprised reaction of a lawyer confronted for the first time with an incomplete draft of a document that has been stripped of its most conspicuous intrinsic indicia of privilege is utterly irrelevant, especially in a case where literally millions of pages of documents have been produced" (Br. 14).

Google cites no evidence that its lawyers were surprised or unable to identify the Lindholm email when confronted with it at the July 21 hearings. Moreover, the challenged order did not rely on their reactions to show that privilege had been waived or did not apply. It simply observed that the reactions of Google's lawyers were consistent with the interpretation of the email set forth in the order: "In other words, when stripped of the address header and boilerplate 'Work Product' text, even Google's lead counsel, who is intimately familiar with the facts of this case, believed that the Email concerned business negotiations and could not identify it as a privileged document" (Dkt. No. 361 at 6-7). The reaction of Google's lawyers was cited only as a further indication that the order's assessment of the email based on other evidence was reasonable. This observation was not clearly erroneous or contrary to law.

12

8. UPJOHN AND GOOGLE'S REPLY BRIEF.

In addition to Google's specific objections addressed above, Google argues that the result reached by the challenged order "guts Upjohn." Google argues that the supposed errors in the order eviscerate the principle that "[c]orporate counsel need to be able to communicate freely with low-level employees in order to gather information, develop legal advice, and relay that advice to corporate decision-makers." According to Google, "[t]hat is the premise of Upjohn Co. v. United States, 449 U.S. 383, 389 (1981)" (Reply Br. 3). Google, however, did not cite the Upjohn decision to Magistrate Judge Ryu.

This order already found that the challenged order was not clearly erroneous or contrary to law in any specific respect. Additionally, the challenged order as a whole did not run afoul of Upjohn and its progeny, including the Admiral decision counsel cited at the hearing. See Admiral Ins. Co. v. U.S. Dist. Ct. for the Dist. of Ariz., 881 F.2d 1486 (9th Cir. 1989). True, corporate counsel need to be able to communicate freely with low-level employees for purposes of providing legal advice. But the privilege protecting such communications must be shown to apply before it can be invoked as to a particular document. The challenged order held that Google failed to meet its burden of showing that the Lindholm email was generated in a privileged scenario, whether of the type described in Upjohn or otherwise. The order did not narrow the scope of scenarios which, if proven, would give rise to privilege. Upjohn and Admiral addressed the scope of the attorney-client privilege, not the standard for proving its applicability in a particular case.

Google's reply brief catalogues a number of supposed errors which, in its view, create conflict between the challenged order and Upjohn. Many of those supposed errors are simply fictions created by Google's mischaracterization of the order. For example, this order already explained that the challenged order did not hold "that a communication is not privileged unless it expressly discusses litigation or legal advice" (Reply Br. 4). To the extent the reply brief repeats supposed errors that were set forth in Google's opening brief, those issues already were addressed above. To the extent the reply brief identifies new supposed errors, those arguments are untimely

13

and need not be addressed. The parties' arguments concerning waiver of privilege -- which was not addressed in the challenged order -- also need not be addressed.

*

* * Google has failed to identify any aspect of the challenged order that was clearly erroneous or contrary to law. Accordingly, Google's motion for relief from the order is DENIED. The order by Magistrate Judge Ryu finding that Google failed to establish that the Lindholm email was protected by attorney-client privilege or work-product immunity was not clearly erroneous or contrary to law.

9. CONFIDENTIALITY.

In addition to disputing the privilege status of the Lindholm email and drafts, the parties also dispute the confidentiality status of those documents. Google designated the documents as "HIGHLY CONFIDENTIAL -- ATTORNEYS' EYES ONLY" under the stipulated protective order when it produced them to Oracle. Oracle then requested that Google re-designate the documents as only "CONFIDENTIAL," a category providing lesser protection under the protective order. Google has filed a motion to retain its more restrictive confidentiality designation (Dkt. No. 513).

This order makes no comment on the merits of that pending motion. The parties are reminded, however, that confidentiality designations governing the litigants' treatment of discovery materials do not entitle such materials to automatic protection when filed or used in court. The order adopting the stipulated protective order warned that filings will be sealed only by court order in accordance with the Ninth Circuit's strict caution against sealing records (Dkt. No. 68).

Having considered the full text of the Lindholm email quoted herein and all related declaration testimony, this order finds that the Lindholm email does not contain any truly sealable material. Accordingly, this order will be filed in the public docket. The pendency of Google's motion to retain its confidentiality designation is irrelevant to this determination.

14

CONCLUSION

For the reasons set forth above, defendant's motion for relief from the August 26 non-dispositive pretrial order of Magistrate Judge Ryu is DENIED. The Lindholm email and drafts will not be treated as protected by attorney-client privilege or work-product immunity.

IT IS SO ORDERED.

Dated: October 20, 2011.

[signature]
WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

__________________
1 The final version of the email and all nine drafts were reviewed in camera. "The proper procedure for asserting the attorney-client privilege as to particular documents" is "to submit them in camera for the court's inspection." In re Horn, 976 F.2d 1314, 1318 (9th Cir. 1992).

2 Google's post-hearing claims of confidentiality and privilege were chronicled, with reference to the documentary record, in the August 26 order by Magistrate Judge Ryu (Dkt. No. 361 at 3). That aspect of the order is not challenged.

3 The parties' briefs cite decisions by the United States Courts of Appeals for the Ninth Circuit and for the Federal Circuit, among other authorities. The Federal Circuit "applies the law of the regional circuit . . . with respect to questions of attorney-client privilege." Fort James Corp. v. Solo Cup Co., 412 F.3d 1340, 1346 (Fed. Cir. 2005). Thus, Ninth Circuit case law controls here.

4 In his prior career, the undersigned judge practiced in a large civil litigation firm for 25 years and had considerable experience with and exposure to the practice of company officers and employees routinely copying internal (and even external) counsel on all manner of business communications as an attempt to cloak a business message in privilege. Adding the name of a lawyer to a list of business recipients is exceedingly easy and is very often done without any intention that it be used to frame legal advice. For that reason, the rule adopted by now-Justice Ginsburg in In re Sealed Case makes considerable sense and addresses real-world practices. This experience is added for the benefit of the record and for any appellate review. It has not colored the outcome of this order save and except to reinforce the wisdom of the holding in In re Sealed Case.

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