The California Institute of Technology v. Broadcom Limited et al

REPLY in support of MOTION to Strike Sealed Declaration in SupportDeclaration, 500 , Sealed Declaration in SupportDeclaration,, 378 , Sealed Declaration in SupportDeclaration,,, 310 , Sealed Declaration in SupportDeclaration, 473 , Sealed Document, 445 , Seal 530

C.D. Cal.July 2, 2018

DEFENDANTS’ REPLY ISO MOTION TO STRIKE EXHIBIT 341 TESTIMONY CASE NO. 2:16-CV-3714-GW-AGRX 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 MARK D. SELWYN (SBN 244180) mark.selwyn@wilmerhale.com WILMER CUTLER PICKERING HALE AND DORR LLP 950 Page Mill Road Palo Alto, California 94304 Tel: (650) 858-6000 Fax: (650) 858-6100 JAMES M. DOWD (SBN 259578) james.dowd@wilmerhale.com AARON THOMPSON (SBN 272391) aaron.thompson@wilmerhale.com WILMER CUTLER PICKERING HALE AND DORR LLP 350 South Grand Avenue, Suite 2100 Los Angeles, CA 90071 Tel: (213) 443-5300 Fax: (213) 443-5400 Attorneys for Defendants and Counter- Claim Plaintiffs Broadcom Limited, Broadcom Corporation, Avago Technologies Limited, Apple Inc., and Cypress Semiconductor Corporation UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA THE CALIFORNIA INSTITUTE OF TECHNOLOGY, Plaintiff, vs. BROADCOM LIMITED, BROADCOM CORPORATION, AVAGO TECHNOLOGIES LIMITED, APPLE INC., AND CYPRESS SEMICONDUCTOR CORPORATION, Defendants. CASE NO. 2:16-cv-3714-GW(AGRx) DEFENDANTS’ REPLY IN SUPPORT OF MOTION TO STRIKE TESTIMONY AND BRIEFING DISCLOSING PRIVILEGED INFORMATION FROM EXHIBIT 341 FILED UNDER SEAL Hon. George H. Wu United States District Court Judge Hearing Date: July 16, 2018 Time: 8:30 AM Place: Courtroom 9D REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:16-cv-03714-GW-AGR Document 541 Filed 07/02/18 Page 1 of 17 Page ID #:21986 DEFENDANTS’ REPLY ISO MOTION TO STRIKE EXHIBIT 341 TESTIMONY CASE NO. 2:16-CV-3714-GW-AGRX 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BROADCOM LIMITED, BROADCOM CORPORATION, AVAGO TECHNOLOGIES LIMITED, APPLE INC., AND CYPRESS SEMICONDUCTOR CORPORATION, Counterclaim- Plaintiffs, vs. THE CALIFORNIA INSTITUTE OF TECHNOLOGY, Counterclaim- Defendant. REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:16-cv-03714-GW-AGR Document 541 Filed 07/02/18 Page 2 of 17 Page ID #:21987 -i- DEFENDANTS’ REPLY ISO MOTION TO STRIKE EXHIBIT 341 TESTIMONY CASE NO. 2:16-CV-3714-GW-AGRX 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 TABLE OF CONTENTS PAGE I. INTRODUCTION ........................................................................................... 1 II. ARGUMENT .................................................................................................. 3 A. Caltech Violated The Protective Order And Continues To Violate The Protective Order By Its Reliance On Broadcom’s Privileged Information .......................................................................... 3 B. The Court Should Reject Caltech’s Excuses For Its Violation Of The Protective Order ........................................................................ 4 1. Dr. Blanksby Did Not Make Any Of The Statements That Caltech Asserts Are Technical Facts .................................. 4 2. Mr. Briggs’s Recitation Of Exhibit 341 Repeats Dr. Blanksby’s Privileged Communication Seeking Legal Advice ......................................................................................... 5 3. Broadcom Invoked The Protective Order Immediately And The Issue Of Whether Exhibit 341 Is Privileged Has Only Recently Been Resolved .................................................... 7 4. Defendants Did Not Use The Privileged Content Of Exhibit 341 To Make A Claim Against Caltech ........................ 9 5. Caltech’s Repeated Propagation Of The Information In Exhibit 341 Throughout The Record Does Not Require Undue Burden To Rectify ......................................................... 12 III. CONCLUSION ............................................................................................. 12 REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:16-cv-03714-GW-AGR Document 541 Filed 07/02/18 Page 3 of 17 Page ID #:21988 -ii- DEFENDANTS’ REPLY ISO MOTION TO STRIKE EXHIBIT 341 TESTIMONY CASE NO. 2:16-CV-3714-GW-AGRX 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 TABLE OF AUTHORITIES Page(s) CASES Chevron Corp. v. Pennzoil Co., 974 F.2d 1156 (9th Cir. 1992) .............................. 11 Lopes v. Vieira, 688 F. Supp. 2d 1050 (E.D. Cal.) ..................................................... 6 Shared Med. Res., LLC V. Histologics, LLC, No. SACV 12-0612 DOC, 2012 WL 5570213 (C.D. Cal. Nov. 14, 2012) ................................... 11 Tierno v. Rite Aid Corp., No. C 05-02520 TEH, 2008 WL 2705089 (N.D. Cal. July 8, 2008) ................................................................................. 10 Upjohn Co. v. United States, 449 U.S. 383 (1981) ............................................ 1, 5, 6 Weil v. Inv./Indicators, Research & Mgmt., Inc., 647 F.2d 18 (9th Cir. 1981) ............................................................................................................... 11 STATUTES, RULES, AND REGULATIONS Fed. R. Civ. Pro. 26(b)(5)(A) ............................................................................. 10, 11 REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:16-cv-03714-GW-AGR Document 541 Filed 07/02/18 Page 4 of 17 Page ID #:21989 -1- DEFENDANTS’ REPLY ISO MOTION TO STRIKE EXHIBIT 341 TESTIMONY CASE NO. 2:16-CV-3714-GW-AGRX 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 I. INTRODUCTION Caltech has persistently and knowingly violated this Court’s Protective Order by using information that Broadcom promptly clawed-back and that both Magistrate Judge Rosenberg and this Court have determined to be privileged. Indeed, Caltech has violated the Protective Order yet again in its opposition to the present motion by relying on the very same privileged information that Broadcom has moved to strike. The Protective Order is unambiguous: when a party inadvertently produces Discovery Material, the party receiving the material may not use the “contents of that information” for “any purpose.” (Dkt. 101 at ¶ 16(d).) Further, the Protective Order stipulates that the “contents of that information cannot be used” even in a “challenge to the assertion of immunity or privilege.” (Id. (emphasis added).) Therefore, once Broadcom invoked the claw-back provision, Caltech could not use the contents of Exhibit 341, including Dr. Blanksby’s deposition testimony about it (“Blanksby Deposition”), for any purpose. Caltech’s attempts to excuse its disregard of this language in the Protective Order all fail. First, Caltech misleadingly quotes the Blanksby Deposition to suggest that Dr. Blanksby made certain privileged statements during the deposition, and that therefore Caltech is somehow justified in relying on them. It is not. This Court has repeatedly found that Broadcom promptly and properly clawed back Exhibit 341, and therefore Dr. Blanksby’s testimony about Exhibit 341 should be stricken. (Dkt. Nos. 451; 510.) Moreover, the transcript shows that it was counsel for Caltech, and not Dr. Blanksby, who read those three statements from Exhibit 341. (Dkt. 317-02 at 227:12-228:1, 228:8-228:22.) Second, Caltech is incorrect to suggest that those statements – made by counsel for Caltech and not Dr. Blanksby – are facts that can be discovered under the principles described in Upjohn Co. v. United States, 449 U.S. 383 (1981). REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:16-cv-03714-GW-AGR Document 541 Filed 07/02/18 Page 5 of 17 Page ID #:21990 -2- DEFENDANTS’ REPLY ISO MOTION TO STRIKE EXHIBIT 341 TESTIMONY CASE NO. 2:16-CV-3714-GW-AGRX 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Under Upjohn, a communication of facts to an attorney for the purposes of seeking legal advice is never discoverable; such facts may only be obtained from independent sources (consistent with the other rules of discovery). Here, the privileged information in the Blanksby Deposition comes directly from privileged Exhibit 341. Third, Caltech wrongly suggests that Broadcom did not take “any” steps to prevent the disclosure of these statements. Caltech ignores – as Magistrate Judge Rosenberg and this Court have found – that Broadcom immediately clawed-back Exhibit 341 and in the next breath moved to strike the portion of the Blanksby Deposition now at issue. Finally, Caltech erroneously asserts that Broadcom waived privilege by relying on the Blanksby Deposition in opposing Caltech’s motion to compel. In fact, the two instances of “reliance” that Caltech identifies in its opposition merely identify the authors of Exhibit 341, date of the communication, title of the document, and high-level nature of the document; they do not reveal any privileged content from Exhibit 341. Accordingly, Defendants respectfully request that the Court strike the portions of the Blanksby Deposition that include privileged information that counsel for Caltech read from Exhibit 341 and that counsel for Caltech elicited from Dr. Blanksby about Exhibit 341. Defendants also request the Court strike the portions of Caltech’s briefs that disclose the contents of Exhibit 341. In addition, despite this Court’s order at Dkt. 451 holding Exhibit 451 privileged in its entirety and refusing to “dissect [Exhibit 451] separately to evaluate each of its components” (id. at 4 (internal quotation and citation omitted).), Caltech has continued to use Broadcom’s privileged information improperly. Indeed, since Defendants filed this motion, Caltech has caused its expert Dr. Shoemake also to violate the Protective Order by including portions of the REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:16-cv-03714-GW-AGR Document 541 Filed 07/02/18 Page 6 of 17 Page ID #:21991 -3- DEFENDANTS’ REPLY ISO MOTION TO STRIKE EXHIBIT 341 TESTIMONY CASE NO. 2:16-CV-3714-GW-AGRX 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Blanksby Deposition discussing Exhibit 341 in his expert report. Accordingly, Defendants further request the Court strike the paragraph in Dr. Shoemake’s expert report about the Blanksby Deposition and Exhibit 341,1 and order Caltech and Dr. Shoemake to refrain from using any information derived from Exhibit 341. II. ARGUMENT A. Caltech Violated The Protective Order And Continues To Violate The Protective Order By Its Reliance On Broadcom’s Privileged Information. The Protective Order explains that when a party inadvertently produces Discovery Material, the party receiving the material shall not use the “contents of that information” for “any purpose” once clawed back by the producing party. (Dkt. 101 ¶ 16(d).) Accordingly, a party subject to a claw-back request must not only destroy the material, but also must not use any information obtained from the contents of that material. (Id.) During Dr. Blanksby’s deposition, Mr. Briggs, counsel for Caltech, marked Exhibit 341 and proceeded to read from the document and ask Dr. Blanksby questions such as whether Dr. Blanksby wrote certain statements from the document or made the statements in the document. After the third such question, Dr. Blanksby indicated that the document may be privileged, Defendants’ counsel broke off questioning to ascertain the nature of the document, and upon resuming the deposition immediately clawed the document back and moved to strike all testimony about it. (Dkt. 317-2, at 230:8-231:13 (“[I]t has just become apparent that [Exhibit 341] was prepared to seek legal advice . . . . [W]e’re clawing it back and invoking the provisions of paragraph 16, including 16[(c)] which requires any inadvertently produced discovery material under this provision to be destroyed and not used for any further purpose . . . [a]nd we also move to strike all the testimony relating to this document which is Exhibit 341.”).) 1 Dr. Shoemake’s June 21, 2018 Expert Report vol. 3 at ¶ 296. REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:16-cv-03714-GW-AGR Document 541 Filed 07/02/18 Page 7 of 17 Page ID #:21992 -4- DEFENDANTS’ REPLY ISO MOTION TO STRIKE EXHIBIT 341 TESTIMONY CASE NO. 2:16-CV-3714-GW-AGRX 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Accordingly, once Broadcom invoked the claw-back procedure in the Protective Order, Caltech could not use the content of the information in Exhibit 341, including the quotes Mr. Briggs read from Exhibit 341, for any purpose. Ignoring those prohibitions, however, Caltech has since repeatedly used Mr. Briggs’s recitation of the contents of clawed-back Exhibit 341 in its motion to compel. (Dkt. 310-1 at 5; Dkt. 367-1 at 7; Dkt. 378-1 at 1, 4-5; Dkt. 445 at 7, 12; Dkt. 473-1 at 2-3, 9-11; Dkt. 500-1 at 1, 4, 8-10.) Caltech then violated the Protective Order at least twice more after the Court confirmed that the entire content of Exhibit 341 is privileged. Specifically, in its opposition to this motion, Caltech again copied and relied on the information that Mr. Briggs recited at the deposition from privileged Exhibit 341. (Dkt. 539 at 1.) In addition, Caltech then provided the same privileged information to its infringement expert, Dr. Matthew Shoemake, who relied on it in his expert report. B. The Court Should Reject Caltech’s Excuses For Its Violation Of The Protective Order. 1. Dr. Blanksby Did Not Make Any Of The Statements That Caltech Asserts Are Technical Facts. Caltech argues that the Court should not strike the portion deposition transcripts identified by Broadcom, because it contains technical statements of fact made by Dr. Blanksby. (Dkt. 539 at 1.) But Caltech has misrepresented the deposition transcript. Dr. Blanksby never made any of the three statements identified by Caltech. Instead, the three statements that Caltech includes in its opposition are actually quotes of Mr. Briggs reading verbatim from Exhibit 341. For example, for the first statement identified by Caltech, Mr. Briggs says: “I wanted to turn your attention to the first paragraph [of Exhibit 341]. It states. . . [reads first statement from Exhibit 341].” (Dkt. 317-02 at 227:12-18.) Similarly, the second and third statements are quotes from Mr. Briggs—not Dr. Blanksby. (Dkt. 317-02 at 228:18-228:22 (“Q [Mr. Briggs]. . . . The sentence states, [reads REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:16-cv-03714-GW-AGR Document 541 Filed 07/02/18 Page 8 of 17 Page ID #:21993 -5- DEFENDANTS’ REPLY ISO MOTION TO STRIKE EXHIBIT 341 TESTIMONY CASE NO. 2:16-CV-3714-GW-AGRX 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 second statement].”); 230:8-11 (“Q [Mr. Briggs]. . . . The next section . . . states [reads third statement].”). Thus, the quotes that Caltech attributes to Dr. Blanksby are actually statements by Mr. Briggs reading the content of Exhibit 341—Dr. Blanksby never made those statements during the deposition, nor does Dr. Blanksby ever agree that those statement are accurate. Because those three statements are verbatim readings from Exhibit 341, they should be stricken because the Court already determined that the entirety of Exhibit 341 is privileged. 2. Mr. Briggs’s Recitation Of Exhibit 341 Repeats Dr. Blanksby’s Privileged Communication Seeking Legal Advice. Caltech argues that the three statements during the deposition (which Dr. Blanksby never made) are not privileged because Upjohn Co. v. United States, 449 U.S. 383 (1981), permits the discovery of underlying facts. But as Judge Rosenberg explained, Caltech is confused about the holding in Upjohn: REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:16-cv-03714-GW-AGR Document 541 Filed 07/02/18 Page 9 of 17 Page ID #:21994 -6- DEFENDANTS’ REPLY ISO MOTION TO STRIKE EXHIBIT 341 TESTIMONY CASE NO. 2:16-CV-3714-GW-AGRX 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 (Hr’g Tr. 9:11-12:6, Jan. 26, 2018.) Judge Rosenberg’s reference to “a U.S. Supreme Court decision” was a reference to Upjohn, which explained that, while the mere communication of a fact to an attorney does not make the fact privileged, the communication itself, if communicated for the purposes of legal advice, is privileged. Upjohn, 449 U.S. at 395–96 (“A fact is one thing and a communication concerning that fact is an entirely different thing. The client cannot be compelled to answer the question, ‘What did you say or write to the attorney?”) (internal citations omitted). Upjohn thus stands for the unremarkable proposition that independent facts are not made undiscoverable by virtue of a person’s communication of that fact to his attorney. But Upjohn does not mean that a party can obtain a communication seeking legal advice from an attorney simply because the client’s communication included a fact. To the contrary, the discovery of such facts must come from sources independent of the privileged communication. See, e.g., Lopes v. Vieira, 688 F. Supp. 2d 1050, 1059 (E.D. Cal.), aff’d, 719 F. Supp. 2d 1199 (E.D. Cal. 2010) (“Opposing parties may question corporate employees and officers to ascertain facts relevant to the pending litigation even if the particular fact was disclosed to counsel in a communication protected by the attorney-client privilege. But opposing parties may not simplify the discovery process by demanding copies of attorney-client communications in which the facts are included.”) (emphasis added) (internal citation removed). To the extent relevant “technical facts” exist (if at all), Caltech may only obtain discovery about those facts independently of Exhibit 341. Caltech therefore cannot rely on verbatim readings from a privileged document to establish such REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:16-cv-03714-GW-AGR Document 541 Filed 07/02/18 Page 10 of 17 Page ID #:21995 -7- DEFENDANTS’ REPLY ISO MOTION TO STRIKE EXHIBIT 341 TESTIMONY CASE NO. 2:16-CV-3714-GW-AGRX 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 “facts.” Here, the three statements identified by Caltech are merely what Mr. Briggs read from Exhibit 341. The Court has already confirmed that Exhibit 341 is privileged in its entirety. Under Upjohn, Mr. Briggs’ recitation of the content of Exhibit 341 cannot be used by Caltech since it merely reads from a confidential communication seeking legal advice. 3. Broadcom Invoked The Protective Order Immediately And The Issue Of Whether Exhibit 341 Is Privileged Has Only Recently Been Resolved. Caltech is incorrect that Broadcom did not take “any steps” to protect the privileged information from Exhibit 341. As this Court found, upon learning of the privileged nature of Exhibit 341, Broadcom immediately invoked the Protective Order by clawing-back Exhibit 341 and moving to strike the privileged testimony. (Dkt. 451 at 5 (“Broadcom has . . . shown that it clawed back Exhibit 341 ‘promptly’ after Broadcom learned of its inadvertent production. . . . [C]ounsel called for a break to investigate the statue of the document about 50 seconds after Dr. Blanksby disclosed that Exhibit 341 went to the internal IP committee.”); Dkt. 510 (denying Caltech’s motion to review Dkt. 451); see also Dkt. 317-2 at 230:22- 231:13 (“[I]t has just become apparent that [Exhibit 341] was prepared to seek legal advice . . . . [W]e’re clawing it back and invoking the provisions of paragraph 16, including 16[(c)] which requires any inadvertently produced discovery material under this provision to be destroyed and not used for any further purpose . . . [a]nd we also move to strike all the testimony relating to this document which is Exhibit 341.”).) Caltech also incorrectly argues Broadcom was somehow required to specifically address “Dr. Blanksby’s deposition testimony” in a letter that Broadcom sent to Caltech following up on the verbal claw-back request during the deposition. (Dkt. 539 at 7.) But there is no requirement that Broadcom issue a REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:16-cv-03714-GW-AGR Document 541 Filed 07/02/18 Page 11 of 17 Page ID #:21996 -8- DEFENDANTS’ REPLY ISO MOTION TO STRIKE EXHIBIT 341 TESTIMONY CASE NO. 2:16-CV-3714-GW-AGRX 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 written request to invoke the Protective Order; counsel’s claw-back of Exhibit 341 and oral motion to strike was immediate and sufficient. Moreover, it is clear from Dr. Blanksby’s transcript that the three statements identified by Caltech are verbatim from Exhibit 341 and therefore the claw-back of Exhibit 341 also triggered Caltech’s requirement to refrain from using privileged content of Exhibit 341 that Mr. Briggs repeated during the deposition. Broadcom was not required to bring new motions to strike each time Caltech improperly relied on Exhibit 341 and the privileged information in the deposition transcript, in violation of its obligations under the Protective Order. Caltech also wrongly suggests that Caltech’s inclusion of Dr. Blanksby’s deposition transcript in its briefing is excusable simply because Broadcom did not immediately seek to strike the transcript. (Dkt. 539 at 8.) But again, under the Protective Order, upon notification that Exhibit 341 was privileged and once counsel moved to strike the transcript during the deposition itself, Caltech had the responsibility to refrain from any use of the content of Exhibit 341 or the corresponding portions of Dr. Blanksby’s transcript. (Dkt. 101 at 29-30.) Caltech ignored that responsibility and included the content of Exhibit 341 in its attempt to compel production of Exhibit 341, which is explicitly prohibited under the Protective Order. In any event, waiver does not apply here because the predicate question of whether Exhibit 341 is privileged was pending during the past eight months as Caltech first moved to compel Exhibit 341 then sought reconsideration of Judge Rosenberg’s decision denying Caltech’s motion. Once the Court affirmed that decision, Defendants promptly renewed their motion to strike the relevant portions of the Blanksby Deposition. REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:16-cv-03714-GW-AGR Document 541 Filed 07/02/18 Page 12 of 17 Page ID #:21997 -9- DEFENDANTS’ REPLY ISO MOTION TO STRIKE EXHIBIT 341 TESTIMONY CASE NO. 2:16-CV-3714-GW-AGRX 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 4. Defendants Did Not Use The Privileged Content Of Exhibit 341 To Make A Claim Against Caltech. Caltech appears to invoke the sword and shield doctrine to argue that Broadcom waived the privilege over Exhibit 341. (Dkt. 539 at 5.) Caltech argues that Defendants’ reliance on portions of Dr. Blanksby’s deposition transcript in opposing Caltech’s efforts to compel production of Exhibit 341 somehow waived Broadcom’s privilege. But the citations that Caltech identifies merely include the type of information a party needs to identify to properly claim privilege; those citations do not rely on the privileged content itself. In particular, Caltech points to two sentences from various briefs and papers related to Caltech’s motion to compel: (1) a sentence from Defendants’ opposition to Caltech’s motion to compel that included a set of citations, and (2) a sentence made in support of sealing Dr. Blanksby’s deposition transcript that Caltech improperly submitted in its briefing. (Dkt. 539 at 4-6.) Neither supports Caltech’s argument. The first sentence describes the nature of Exhibit 341 at a very high level, without revealing any of its privileged content, in the nature of what would appear on a privilege log. (See Dkt. 496 at 2; (“‘Exhibit 341 is an invention disclosure authored by David Garrett—a member of Broadcom’s PRC at the time—and Dr. Andrew Blanksby—a Broadcom Distinguished Engineer whose work includes developing LDPC encoders—which was marked as an exhibit at Dr. Blanksby’s deposition.’ (Dkt. 451 at 2-4; see also Dkt. 310-2 (Ex. A, Blanksby Dep. Tr.) at 227:5-227:11, 228:14-228:16.)”).) That sentence does not come from the Blanksby Deposition, and merely identifies the authors of Exhibit 341, their roles at Broadcom, and that the document is an invention disclosure. Caltech also appears focused on the “see also” citation to Dkt. 310-2 at 227:5-227:11 and 228:14-228:16 following that sentence. Dkt. 310-2 is the portion REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:16-cv-03714-GW-AGR Document 541 Filed 07/02/18 Page 13 of 17 Page ID #:21998 -10- DEFENDANTS’ REPLY ISO MOTION TO STRIKE EXHIBIT 341 TESTIMONY CASE NO. 2:16-CV-3714-GW-AGRX 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 of Dr. Blanksby’s deposition transcript discussing Exhibit 341 that Caltech impermissibly submitted with its motion to compel briefing in violation of the Protective Order. However, the two portions of the transcript identified in that “see also” citation are nothing more than Mr. Briggs marking Exhibit 341, identifying the name of the exhibit, providing the Bates number, identifying a date on the exhibit, and identifying Dr. Blanksby and David Garrett as authors: BY MR. BRIGGS: All right. I’m going to hand you what's been marked as Exhibit 341. It’s got Bates Numbers BCMCAL 00756677 through 6681. And it’s listed -- it has your name, David Garrett, and Andrew Blanksby on it. And it’s dated December 4, 2012. (Dkt. 310-2 at 227:5-227:11.) BY MR. BRIGGS: Okay. But you're listed as an author of this document. Correct? (Dkt. 310-2 at 228:14-228:16.) None of the privileged content of Exhibit 341 appears in these cited passages. Accordingly, all information in the sentence that Caltech quotes from Defendants’ opposition to Caltech’s motion to compel is the exact type of information that would appear on a privilege log. See Tierno v. Rite Aid Corp., No. C 05-02520 TEH, 2008 WL 2705089, at *3 (N.D. Cal. July 8, 2008) (“A privilege log must include information sufficient to “enable other parties to assess” the claim of privilege . . . . this entails disclosing the nature of the document, the identity of its author, and other identifying information.); Fed. R. Civ. Pro. 26(b)(5)(A) (noting that a party must “describe the nature of the documents, communications, or tangible things not produced or disclosed” in order to “enable other parties to assess the claim”). Defendants’ use of that information in their opposition to Caltech’s Motion For Review and in support of their argument that Exhibit 341 is privileged does not give rise to any waiver; it merely justifies the privilege assertion. The second statement identified by Caltech is Defendants’ statement that REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:16-cv-03714-GW-AGR Document 541 Filed 07/02/18 Page 14 of 17 Page ID #:21999 -11- DEFENDANTS’ REPLY ISO MOTION TO STRIKE EXHIBIT 341 TESTIMONY CASE NO. 2:16-CV-3714-GW-AGRX 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 “Exhibit A contains detailed testimony from Mr. Blanksby regarding the design and function of Broadcom’s products and internal marketing strategies that is not available to Broadcom’s competitors.” (Dkt. 536-1 at 4). Like the first sentence, this is merely states the same type of high-level description that one would provide to justify a claim of privilege. Because those citations merely provide the type of information Federal Rule 26(b)(5)(A) requires to support a privilege claim, the cases Caltech identifies are inapposite. Shared Med. Res., LLC V. Histologics, LLC does not aid Caltech. In that case, a party defending itself against a motion for sanctions submitted certain privileged documents to the court in camera. No. SACV 12-0612 DOC, 2012 WL 5570213, at *4 (C.D. Cal. Nov. 14, 2012). The court declined to find that the plaintiff waived its privilege because there was no actual voluntary disclosure. Weil v. Inv./Indicators, Research & Mgmt., Inc. is also inapposite. There, the Ninth Circuit found that a party waived its privilege by disclosing communications about “the substance of . . . counsel’s advice regarding registration of Fund shares.” 647 F.2d 18, 25 (9th Cir. 1981) (emphasis added). Defendants have not disclosed “the substance” of Exhibit 341 in the portions identified by Caltech. Here none of the citations identified by Caltech as Defendants’ “reliance” amount to a voluntary disclosure of the substance of the privileged material, since none of the citations reveals the substance of the privileged content in Exhibit 341. Chevron Corp. v. Pennzoil Co., 974 F.2d 1156, 1162–63 (9th Cir. 1992) is also readily distinguished. There, the Ninth Circuit explained that “[w]here a party raises a claim which in fairness requires disclosure of the protected communication, the privilege may be implicitly waived.” But Caltech identifies no claim that Defendants raised that required disclosure of the contents of Exhibit 341. To the extent that Caltech means to suggest that Defendants “affirmatively relied on Dr. REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:16-cv-03714-GW-AGR Document 541 Filed 07/02/18 Page 15 of 17 Page ID #:22000 -12- DEFENDANTS’ REPLY ISO MOTION TO STRIKE EXHIBIT 341 TESTIMONY CASE NO. 2:16-CV-3714-GW-AGRX 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Blanksby’s factual statements,” that is simply not true as shown above. Defendants did not utilize any of the content of the privileged communication to make a claim against Caltech. Instead, Defendants defended against Caltech’s motion to compel by identifying information about authorship and the general nature of the communication. 5. Caltech’s Repeated Propagation Of The Information In Exhibit 341 Throughout The Record Does Not Require Undue Burden To Rectify. Broadcom’s request to the Court is simple: order Caltech to stop using Exhibit 341 or information derived from Exhibit 341, including the portions of the Blanksby Deposition that include privileged information. This does not require “pour[ing] over . . . the record.” 2 (Dkt. 539 at 11.) It merely requires that Caltech stop violating the Protective Order, and this Court’s Order Denying Plaintiff’s Motion To Compel Production Of Exhibit 341. That means that Caltech stop using the statements it keeps repeating in its briefing, and remove all content derived from Exhibit 341 (including the portions Mr. Briggs read during Dr. Blanksby’s deposition) both from its own files and those of any experts or others to whom (contrary to the Protective Order) it has been sent. III. CONCLUSION Defendants respectfully request that the Court strike (1) the portions of Dr. Blanksby’s deposition transcript that include privileged information that counsel for Caltech read from Exhibit 341 and elicited from Dr. Blanksby about Exhibit 341 2 Caltech also seeks to excuse its violation of the Protective Order because it claims to have only included “non-privileged facts” in its briefing. (Dkt. 539 at 1-3.) But under the Protective Order, it is not up to Caltech to determine what is privileged or not. The Protective Order is unequivocal in that “the Receving Party may not use the contents of [the] information for any purpose, including . . . in asserting a challenge to the assertion of immunity or privilege.” (Dkt. 101 ¶ 16(d) (emphasis added).) REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:16-cv-03714-GW-AGR Document 541 Filed 07/02/18 Page 16 of 17 Page ID #:22001 -13- DEFENDANTS’ REPLY ISO MOTION TO STRIKE EXHIBIT 341 TESTIMONY CASE NO. 2:16-CV-3714-GW-AGRX 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 (specifically, page 227, line 5 to page 230, line 12); (2) the portions of Caltech’s briefs that disclose the contents of Exhibit 341; and (3) the portions Dr. Shoemake’s June 21, 2018 expert report that refer to Exhibit 341 or the Blanksby Deposition (specifically, Volume 3, paragraph 296),3 and order Caltech and Dr. Shoemake to stop using the portions of Dr. Blanksby’s transcript subject to this motion. Respectfully submitted, DATED: July 2, 2018 By: /s/ James M. Dowd JAMES M. DOWD (SBN 259578) james.dowd@wilmerhale.com AARON THOMPSON (SBN 272391) aaron.thompson@wilmerhale.com WILMER CUTLER PICKERING HALE AND DORR LLP 350 South Grand Avenue, Suite 200 Los Angeles, California 90071 Tel: (213) 443-5300 Fax: (213) 443-5400 MARK D. SELWYN (SBN 244180) mark.selwyn@wilmerhale.com WILMER CUTLER PICKERING HALE AND DORR LLP 950 Page Mill Road Palo Alto, California 94304 Tel: (650) 858-6000 Fax: (650) 858-6100 Attorneys for Defendants Broadcom Limited, Broadcom Corporation, Avago Technologies Limited, Apple Inc., and Cypress Semiconductor Corporation 3 Because new violations of the Protective Order have occurred after the filing of this motion, Defendants are submitting an amended proposed order currently with this reply. REDACTED VERSION OF DOCUMENT PROPOSED TO BE FILED UNDER SEALCase 2:16-cv-03714-GW-AGR Document 541 Filed 07/02/18 Page 17 of 17 Page ID #:22002