Case 5:18-md-02834-BLF Document 610 Filed 07/21/20 Page 1 of 18
`
`MICHAEL A. SHERMAN (SBN 94783)
`masherman@stubbsalderton.com
`JEFFREY F. GERSH (SBN 87124)
`jgersh@stubbsalderton.com
`SANDEEP SETH (SBN 195914)
`sseth@stubbsalderton.com
`WESLEY W. MONROE (SBN 149211)
`wmonroe@stubbsalderton.com
`STANLEY H. THOMPSON, JR. (SBN 198825)
`sthompson@stubbsalderton.com
`VIVIANA BOERO HEDRICK (SBN 239359)
`vhedrick@stubbsalderton.com
`STUBBS, ALDERTON & MARKILES, LLP
`15260 Ventura Blvd., 20th Floor
`Sherman Oaks, CA 91403
`Telephone:
`(818) 444-4500
`Facsimile:
`(818) 444-4520
`Attorneys for PersonalWeb Technologies, LLC
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN JOSE DIVISION
`CASE NO.: 5:18-md-02834-BLF
`IN RE PERSONAL WEB TECHNOLOGIES,
`LLC, ET AL., PATENT LITIGATION
`
`AMAZON.COM, INC. and AMAZON WEB
`SERVICES, INC.,
`Plaintiffs,
`
`v.
`
`PERSONALWEB TECHNOLOGIES, LLC,
`and LEVEL 3 COMMUNICATIONS, LLC,
`Defendants.
`
`PERSONALWEB TECHNOLOGIES, LLC
`and LEVEL 3 COMMUNICATIONS, LLC,
`Counterclaimants,
`
`v.
`AMAZON.COM, INC. and AMAZON WEB
`SERVICES, INC.,
`Counterdefendants.
`
`CASE NO.: 5:18-cv-00767-BLF
`CASE NO.: 5:18-cv-05619-BLF
`PLAINTIFF PERSONALWEB
`TECHNOLOGIES, LLC’S NOTICE OF
`MOTION AND MOTION FOR
`PROTECTIVE ORDER
`
`Date: November 5, 2020
`Time:
`9:00 a.m.
`Courtroom 3, 5th Floor
`Dept.:
`Judge: Hon. Beth Labson Freeman
`
`PLAINTIFF PERSONALWEB TECHNOLOGIES, LLC’S
`MOTION FOR PROTECTIVE ORDER
`
`CASE NO: 5:18-MD-02834-BLF
`CASE NO: 5:18-CV-00767-BLF
`CASE NO: 5:18-CV-05619-BLF
`
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`Case 5:18-md-02834-BLF Document 610 Filed 07/21/20 Page 2 of 18
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`PERSONALWEB TECHNOLOGIES, LLC, a
`Texas limited liability company, and
`LEVEL 3 COMMUNICATIONS, LLC, a
`Delaware limited liability company
`Plaintiffs,
`
`v.
`TWITCH INTERACTIVE, INC. a Delaware
`corporation,
`Defendant.
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`PLAINTIFF PERSONALWEB TECHNOLOGIES, LLC’S
`MOTION FOR PROTECTIVE ORDER
`
`CASE NO: 5:18-MD-02834-BLF
`CASE NO: 5:18-CV-00767-BLF
`CASE NO: 5:18-CV-05619-BLF
`
`

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`Case 5:18-md-02834-BLF Document 610 Filed 07/21/20 Page 3 of 18
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`B.
`
`B.
`
`C.
`
`TABLE OF CONTENTS
`INTRODUCTION ...............................................................................................................1
`FACTUAL BACKGROUND..............................................................................................2
`PersonalWeb’s Opposition to the Motion for Attorney Fees Waived
`A.
`Privilege/Protections as to Certain Matters..............................................................2
`Amazon and Twitch Have Initiated a Secondary Litigation Over the
`Opposition Declarations...........................................................................................3
`LEGAL BACKGROUND ...................................................................................................5
`A.
`The Court’s Intervention Is Needed to Curtail Amazon’s Satellite Litigation. .......5
`B.
`Seeking a Protective Order Is an Appropriate Step In These Circumstance. ..........5
`C.
`The Scope of an Intentional Waiver Is Not Unbounded..........................................6
`D.
`Not All Statements That Reference the Existence of a Communication With a
`Client Result in a Waiver.........................................................................................9
`THE DOCUMENTS PERSONALWEB HAS ALREADY PROVIDED
`ADEQUATELY ADDRESS THE FAIRNESS CONSIDERATIONS GOVERNING
`THE SCOPE OF ITS WAIVER ..........................................................................................9
`PersonalWeb’s Production of All its Pre-Filing Opinions by Its Attorneys and
`A.
`Experts Concerning the Preclusive Effect of the Texas Action and
`Infringement Strikes a Fair Balance. .......................................................................9
`PersonalWeb’s Production of Third Party Settlement Communications Strikes
`a Fair Balance. .......................................................................................................10
`There Has Been No Waiver Relating the Claim Construction Order in the
`Texas Action and in PersonalWeb v. IBM.............................................................11
`There Has Been No Waiver Relating to the Motivations for Dismissing the
`Texas Action. .........................................................................................................12
`Amazon and Twitch’s Requests Are an Unduly Burdensome Tail Wagging the
`Dog.........................................................................................................................12
`CONCLUSION..................................................................................................................13
`
`D.
`
`E.
`
`I.
`II.
`
`III.
`
`IV.
`
`V.
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`PLAINTIFF PERSONALWEB TECHNOLOGIES, LLC’S
`MOTION FOR PROTECTIVE ORDER
`
`CASE NO: 5:18-MD-02834-BLF
`CASE NO: 5:18-CV-00767-BLF
`CASE NO: 5:18-CV-05619-BLF
`
`

`

`Case 5:18-md-02834-BLF Document 610 Filed 07/21/20 Page 4 of 18
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`TABLE OF AUTHORITIES
`Buckhannon Bd. & Care Home, Inc. v. W. Virginia Dep’t of Health & Human,
`532 U.S. 598, 121 S. Ct. 1835, 149 L. Ed. 2d 855 (2001)............................................................5
`City of Burlington v. Dague,
`505 U.S. 557, 112 S.Ct. 2638, 120 L.Ed.2d 449 (1992)...............................................................5
`DealDash Oyj v. ContextLogic Inc.,
`2019 WL 1105317 (N.D. Cal. Mar. 11, 2019)....................................................................... 8, 10
`Fort James Corp. v. Solo Cup Co.,
`412 F.3d 1340 (Fed. Cir. 2005)..................................................................................................6, 7
`Hensley v. Eckerhart,
`461 U.S. 424, 103 S.Ct. 1933, 76 L.Ed.2d 40 (1983)....................................................................5
`In re EchoStar Commc'ns Corp.,
`448 F.3d 1294 (Fed. Cir. 2006)..............................................................................................6, 7, 9
`Motorola, Inc. v. Vosi Techs, Inc.,
`2002 WL 1917256 (N.D. Ill. Aug. 19, 2002) ............................................................................5, 6
`United States v. Nobles,
`422 U.S. 225 (1975).......................................................................................................................6
`United States v. One Star Class Sloop Sailboat built in 1930 with hull no. 721, named “Flash II,
`546 F.3d 26 (1st Cir. 2008)......................................................................................................5, 11
`Wi-LAN, Inc. v. Kilpatrick Townsend & Stockton LLP,
`684 F.3d 1364 (Fed. Cir. 2012)........................................................................................................6
`
`Rules
`Fed. R. Civ. P. 26(b) ............................................................................................................................. 7
`Fed. R. Civ. P. 26(c) ..........................................................................................................................1, 5
`Rule 26(c)(1)......................................................................................................................................2, 5
`Fed. R. Civ. P. 26(c)(1)(D) ............................................................................................................1, 2, 5
`Federal Rules of Evidence Rule 502..................................................................................................6, 7
`
`Other Authorities
`Civil L.R. 37 ......................................................................................................................................1, 4
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`PLAINTIFF PERSONALWEB TECHNOLOGIES, LLC’S
`MOTION FOR PROTECTIVE ORDER
`
`CASE NO: 5:18-MD-02834-BLF
`CASE NO: 5:18-CV-00767-BLF
`CASE NO: 5:18-CV-05619-BLF
`
`

`

`Case 5:18-md-02834-BLF Document 610 Filed 07/21/20 Page 5 of 18
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`2.
`
`NOTICE OF MOTION FOR PROTECTIVE ORDER
`TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD:
`PLEASE TAKE NOTICE that, on November 5, 2020 at 9:00 a.m., at the United States
`District Court for the Northern District of California, 280 South First Street, San Jose, California, in
`the courtroom of the Honorable Beth Labson Freeman, PersonalWeb Technologies, LLC
`(“PersonalWeb”) will and hereby do move the Court for a protective order under Rule 26(c) of the
`Federal Rules of Civil Procedure. The undersigned counsel for PersonalWeb certifies that the parties
`met and conferred under Civil. L.R. 37-1(a) about the subject matter of this motion on July 13, 2020.
`By this motion Personal Web seeks a protective order limiting discovery by Amazon.com, Inc.
`and Amazon Web Services, Inc. (collectively, “Amazon”) and Twitch Interactive, Inc. (“Twitch”) to:
`1.
`Communications containing any settlement offers or terms with third parties other than
`Amazon and Twitch concerning the at-issue technologies in this MDL;
`Opinions regarding claim preclusion and Kessler in any way concerning the cases in
`this MDL or in connection with the dismissal of the Texas Action; and
`Opinions regarding infringement of the at-issue technologies in this MDL.
`3.
`PersonalWeb further seeks an order closing any further discovery by Amazon and Twitch beyond this
`subject matter.
`PersonalWeb bases its motion on this notice, the accompanying memorandum of points and
`authorities and declaration filed concurrently, the pleadings and records on file, the argument of
`counsel, and any other such matters as may be presented to the Court.
`MEMORANDUM OF POINTS AND AUTHORITIES
`INTRODUCTION
`In opposition to the Motion for Attorney Fees and Costs (“Motion”) (Dkt. 593) filed by
`Amazon.com, Inc. and Amazon Web Services, Inc. (collectively, “Amazon”) and Twitch Interactive,
`Inc. (“Twitch”), PersonalWeb Technologies, LLC (“PersonalWeb”) had the opportunity to either point
`to the absence of evidence offered by Amazon and Twitch in support of the numerous false statements
`and assertions in the Motion, or it could waive the attorney-client privilege and work-product
`protections on certain limited topics and present evidence of what really happened. PersonalWeb opted
`
`I.
`
`PLAINTIFF PERSONALWEB TECHNOLOGIES, LLC’S
`MOTION FOR PROTECTIVE ORDER
`
`1
`
`CASE NO: 5:18-MD-02834-BLF
`CASE NO: 5:18-CV-00767-BLF
`CASE NO: 5:18-CV-05619-BLF
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`Case 5:18-md-02834-BLF Document 610 Filed 07/21/20 Page 6 of 18
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`for the latter, disclosing certain written opinions and limited attorney-client communications in support
`of its Opposition (Dkt. 608) to the Motion.
`Nearly two weeks after receipt of the Opposition, Amazon and Twitch demanded overbroad
`discovery into areas far beyond what PersonalWeb disclosed. PersonalWeb acknowledges that certain
`privilege was waived and that certain work product immunity was waived in its Opposition as to
`certain matters and acknowledges it cannot use the attorney-client privilege and work product
`protections as both “a sword and a shield.” Despite discovery being closed in this action, PersonalWeb
`has voluntarily disclosed additional documents relating to the specific subject matter for which
`privileges were waived in the Opposition. But that is not enough for Amazon and Twitch. They want
`to go on a fishing expedition in the hopes of finding an unspecified document to support baseless
`allegations in their Motion. The alternative they propose, and perhaps their true motivation, is for
`PersonalWeb to withdraw the portions of its supporting declarations that shine a light on the liberties
`that Amazon and Twitch take with the facts.
`For the reasons discussed below, good cause exists for granting this motion because
`PersonalWeb has already searched for and produced documents that fall fairly within the scope of its
`waiver. PersonalWeb requests that the Court use its authority under Rule 26(c)(1) of the Federal Rules
`of Civil Procedure to enter a Protective Order defining the scope of the waiver of its privileges so that
`Amazon and Twitch cannot use PersonalWeb’s reasonable refusal to respond to their overly broad
`requests as a basis for striking PersonalWeb’s supporting declarations filed with its Opposition.
`
`II.
`
`FACTUAL BACKGROUND
`A.
`PersonalWeb’s Opposition to the Motion for Attorney Fees Waived
`Privilege/Protections as to Certain Matters.
`This dispute arises out of PersonalWeb’s Opposition to the Motion for Attorney Fees, filed on
`June 18, 2020. (Dkt. 608.) PersonalWeb will not rehash the entirety of the substance of the Opposition,
`but a substantial portion thereof was directed to exposing the truth behind the many reckless and
`baseless allegations made by Amazon and Twitch in their Motion regarding PersonalWeb’s litigation
`conduct and pre-filing diligence, and steps PersonalWeb had taken that provided it with confidence as
`to the substantive merit of its claims.
`
`PLAINTIFF PERSONALWEB TECHNOLOGIES, LLC’S
`MOTION FOR PROTECTIVE ORDER
`
`2
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`CASE NO: 5:18-MD-02834-BLF
`CASE NO: 5:18-CV-00767-BLF
`CASE NO: 5:18-CV-05619-BLF
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`Case 5:18-md-02834-BLF Document 610 Filed 07/21/20 Page 7 of 18
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`PersonalWeb submitted declarations detailing its pre-filing investigation in this matter.
`PersonalWeb disclosed the written opinions of Dr. Samuel H. Russ, an expert who was retained to aid
`with evaluating infringement, and attached an exemplary claim chart that constituted part of his written
`opinion that the accused systems in this matter infringed the Patents-in-Suit. (Dkt. 608-11.)
`PersonalWeb also submitted declarations of attorneys who worked on the pre-filing investigation in
`which counsel detailed certain of their relevant activities and opinions. (Dkt. 608-3, 608-6, 608-15,
`608-16.)
`PersonalWeb’s supporting declarations also disclosed legal opinions it received regarding the
`scope of preclusive effects, if any, of the dismissal of the prior Texas Action between PersonalWeb
`and Amazon. (Dkt. 608-1, 608-6.)
`PersonalWeb’s supporting declarations also disclosed facts rebutting Amazon and Twitch’s
`unfounded accusations about PersonalWeb’s motivation for (a) dismissing the Texas Action—that
`PersonalWeb had purportedly “lost” the claim construction, and (b) pursuing the current actions—to
`ostensibly secure “nuisance” settlements. (Id.)
`B.
`Amazon and Twitch Have Initiated a Secondary Litigation Over the Opposition
`Declarations.
`
`On June 30, almost two weeks after PersonalWeb filed the Opposition, counsel for Amazon
`and Twitch sent what was, in substance, a request for production of documents, including at least 23
`requests. (Declaration of Michael A. Sherman (“Sherman Decl.”), ¶ 2 & Ex. 1.) Counsel for
`PersonalWeb responded briefly by e-mail that same day that a full review of the requests and a further
`response would be forthcoming. (Sherman Decl., ¶ 3.)
`Counsel for PersonalWeb later carefully reviewed the “requests” and determined that rather
`than being focused on the narrow subject matter that PersonalWeb waived, they were instead far
`ranging and overly broad demands for “all communications” and “all documents” on a plethora of
`subjects. (Sherman Decl., ¶¶ 3-4.) Responding to the requests would be a massive undertaking
`involving several individuals at PersonalWeb and at least four law firms. (Id.)
`Counsel for PersonalWeb responded on July 4, noting that the discovery period is closed and
`objecting to the requests as overly broad, burdensome, and far exceeding the scope of what Amazon
`
`PLAINTIFF PERSONALWEB TECHNOLOGIES, LLC’S
`MOTION FOR PROTECTIVE ORDER
`
`3
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`CASE NO: 5:18-MD-02834-BLF
`CASE NO: 5:18-CV-00767-BLF
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`Case 5:18-md-02834-BLF Document 610 Filed 07/21/20 Page 8 of 18
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`and Twitch might be entitled to under the limited waived privileges. (Sherman Decl., ¶ 4.)
`Nevertheless, in an effort to conserve party and judicial resources, PersonalWeb’s counsel identified
`documents that were fairly tied to the subject matter of the waivers that it would produce, to wit:
`documents relating to (1) counsel’s opinion regarding whether a dismissal in the Texas Action would
`bar later litigation against Amazon under preclusion theories; (2) settlement communications as
`requested by Amazon and Twitch’s in their June 30 letter; and (3) all pre-suit infringement opinions.
`(Id.) PersonalWeb’s counsel also asked Amazon and Twitch to meet and confer about the dispute.
`(Id.)
`
`Amazon and Twitch ignored PersonalWeb’s request to meet and confer, opting instead to send
`a letter on July 8 demanding that PersonalWeb either produce documents under the full scope of their
`vast requests, or disingenuously suggesting that PersonalWeb could alternatively withdraw all portions
`of its declarations that refer to or rely on privileged communications or work product. (Sherman Decl.,
`¶ 5.)
`
`Refusing to indulge Amazon and Twitch in their attempt to create satellite litigation on issues
`of privilege or pander to what appears to be the true motivation, i.e., to keep the Court from seeing
`how/why PersonalWeb and its counsel went above-and-beyond in pre-suit investigations and the
`reasonableness of litigation conduct, on July 10, counsel for PersonalWeb responded that it would be
`producing:
`1.
`
`Communications containing any settlement offers or terms with third parties other than
`Amazon and Twitch concerning the at-issue technologies in this MDL;
`Opinions regarding claim preclusion and Kessler in any way concerning the cases in
`this MDL or in connection with the dismissal of the Texas Action; and
`Opinions regarding infringement of the at-issue technologies in this MDL.
`3.
`(Sherman Decl., ¶ 6.) PersonalWeb produced these documents on Monday July 13, with the final
`remaining set of responsive documents produced on July 21, 2020.
`(Sherman Decl., ¶ 8.)
`PersonalWeb’s counsel certifies that he is not aware of any documents or communications
`contradicting the statements and opinions expressed in the documents disclosed to Amazon and
`Twitch. (Sherman Decl., ¶¶ 8-9.)
`
`2.
`
`PLAINTIFF PERSONALWEB TECHNOLOGIES, LLC’S
`MOTION FOR PROTECTIVE ORDER
`
`4
`
`CASE NO: 5:18-MD-02834-BLF
`CASE NO: 5:18-CV-00767-BLF
`CASE NO: 5:18-CV-05619-BLF
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`Case 5:18-md-02834-BLF Document 610 Filed 07/21/20 Page 9 of 18
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`Recognizing that the parties were at an impasse regarding whether the offered production of
`documents was adequate, counsel for PersonalWeb also informed Amazon and Twitch that it was
`seeking a protective order and requested to meet and confer as required by Civil L.R. 37-1(a).
`(Sherman Decl., ¶ 7.) Counsel for the parties conferred on July 13, 2020. (Id.) During that conference,
`counsel for Amazon and Twitch relayed that his clients were no longer seeking the disclosure of
`opinions relating to invalidity, but otherwise refused to withdraw any of their overbroad requests,
`despite PersonalWeb’s agreement to produce all documents related to the subject matter for which the
`privilege was waived. (Id.) As that was the full extent of Amazon and Twitch’s offer to resolve this
`dispute without court intervention, PersonalWeb had to seek court intervention via this motion.
`Subsequent to the parties’ July 13th telephone conference, PersonalWeb produced additional
`documents that complete production of all infringement opinions, all claim preclusion/Kessler
`opinions, and all settlement communications with third parties. (Sherman Decl., ¶¶8-9.)
`
`III.
`
`LEGAL BACKGROUND
`A.
`The Court’s Intervention Is Needed to Curtail Amazon’s Satellite Litigation.
`The Supreme Court has cautioned against allowing a request for attorney fees to spiral into
`protracted satellite litigation: “We have also stated that ‘[a] request for attorney’s fees should not result
`in a second major litigation,’ Hensley v. Eckerhart, 461 U.S. 424, 437, 103 S.Ct. 1933, 76 L.Ed.2d 40
`(1983), and have accordingly avoided an interpretation of the fee-shifting statutes that would have
`‘spawn[ed] a second litigation of significant dimension,’ Garland, supra, at 791, 109 S.Ct. 1486.”
`Buckhannon Bd. & Care Home, Inc. v. W. Virginia Dep’t of Health & Human Res., 532 U.S. 598, 609,
`121 S. Ct. 1835, 1843, 149 L. Ed. 2d 855 (2001). In other words, “ancillary litigation over fees should
`not be allowed to become the tail that wags the dog.” United States v. One Star Class Sloop Sailboat
`built in 1930 with hull no. 721, named “Flash II”, 546 F.3d 26, 42 (1st Cir. 2008) (citing City of
`Burlington v. Dague, 505 U.S. 557, 566, 112 S.Ct. 2638, 120 L.Ed.2d 449 (1992)).
`B.
`Seeking a Protective Order Is an Appropriate Step In These Circumstance.
`As a party to this action, PersonalWeb has standing to seek a protective order. Fed. R. Civ. P.
`26(c) (“A party or any person from whom discovery is sought may move for a protective order in the
`
`PLAINTIFF PERSONALWEB TECHNOLOGIES, LLC’S
`MOTION FOR PROTECTIVE ORDER
`
`5
`
`CASE NO: 5:18-MD-02834-BLF
`CASE NO: 5:18-CV-00767-BLF
`CASE NO: 5:18-CV-05619-BLF
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`Case 5:18-md-02834-BLF Document 610 Filed 07/21/20 Page 10 of 18
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`court where the action is pending … .”). Under Rule 26(c), this Court is authorized to issue a protective
`order upon a showing that good cause exists for protection from the discovery sought. Fed. R. Civ. P.
`26(c)(1). Good cause exists when justice requires the protection of a party or person from any
`annoyance, oppression, or undue burden or expense. Id. Upon a showing of good cause, this Court has
`the authority to issue an order limiting the discovery sought by Defendants. Fed. R. Civ. P. 26(c)(1)(D).
`Although the present circumstances of a party demanding discovery after the close of
`discovery, without requesting to reopen discovery, may be rare, novel, or in the case here even
`improper, in general it is proper to seek a protective order requesting a court to rule on the scope of an
`attorney-client privilege or work product waiver. In Motorola, Inc. v. Vosi Techs, Inc., No. 01 C 4182,
`2002 WL 1917256 (N.D. Ill. Aug. 19, 2002), the court wrote that it was an “appropriate procedure”
`for a defendant to seek clarity, in the form of a protective order, about the scope of the waiver that
`would result if it relied on an advice of counsel defense to willful patent infringement. Id. at *1.
`C.
`The Scope of an Intentional Waiver Is Not Unbounded.
`Waiving the attorney-client privilege and work product protections does not open the
`floodgates to unfettered discovery. Writing about scope of a work product waiver precipitated by a
`defendant’s reliance on an investigator’s testimony, the Supreme Court noted that the trial court
`“authorized no general ‘fishing expedition’ into the defense files or indeed even into the defense
`investigator’s report. … Rather, its considered ruling was quite limited in scope, opening to
`prosecution scrutiny only the portion of the report that related to the testimony the investigator would
`offer to discredit the witnesses’ identification testimony.” United States v. Nobles, 422 U.S. 225, 240
`(1975). “The attorney-client privilege and the work-product doctrine, though related, are two distinct
`concepts and waiver of one does not necessarily waive the other.” In re EchoStar Commc'ns Corp.,
`448 F.3d 1294, 1300 (Fed. Cir. 2006). Even when a party waives protection, that does not give the
`opposing party “unfettered discretion to rummage through all of their files and pillage all of their
`litigation strategies.” EchoStar, 448 F.3d at 1303. Notably, the waiver at issue in the EchoStar
`decision arose pre-trial/pre-judgment in the trial court on a pre-trial issue of willful infringement and
`advice of counsel – a different procedural posture than now arises in this post-judgment dispute in a
`
`PLAINTIFF PERSONALWEB TECHNOLOGIES, LLC’S
`MOTION FOR PROTECTIVE ORDER
`
`6
`
`CASE NO: 5:18-MD-02834-BLF
`CASE NO: 5:18-CV-00767-BLF
`CASE NO: 5:18-CV-05619-BLF
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`Case 5:18-md-02834-BLF Document 610 Filed 07/21/20 Page 11 of 18
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`motion seeking an award of attorney’s fees that the Supreme Court has specifically cautioned should
`be treated differently than pre-judgment proceedings.
`“There is no bright line test for determining what constitutes the subject matter of a waiver,
`rather courts weigh the circumstances of the disclosure, the nature of the legal advice sought and the
`prejudice to the parties of permitting or prohibiting further disclosures.” Fort James Corp. v. Solo Cup
`Co., 412 F.3d 1340, 1349–50 (Fed. Cir. 2005). The determination of the scope of a waiver must include
`a consideration of fairness balancing. See Wi-LAN, Inc. v. Kilpatrick Townsend & Stockton LLP, 684
`F.3d 1364, 1369–70 (Fed. Cir. 2012) (“We conclude that the Ninth Circuit would find fairness
`balancing to be required. That court has favorably recognized the strong precedent of fairness
`balancing in the last twenty-five years.”). As recognized by the Court in Wi-LAN, this concept of
`fairness is found in Rule 502 of the Federal Rules of Evidence:
`When the disclosure is made in a federal proceeding or to a federal office or
`agency and waives the attorney-client privilege or work-product protection, the
`waiver extends to an undisclosed communication or information in a federal or
`state proceeding only if:
`(1) the waiver is intentional;
`(2) the disclosed and undisclosed communications or information concern the
`same subject matter; and
`(3) they ought in fairness to be considered together.
`Fed. R. Evid. 502. One consideration that factors into the scope of a waiver is the purpose for which
`the waived documents or communications are being used. For example, in the context of the advice of
`counsel defense in a patent infringement case, the Federal Circuit wrote that “[w]ork-product waiver
`extends only so far as to inform the court of the infringer’s state of mind. Counsel’s opinion is not
`important for its legal correctness.” EchoStar, 448 F.3d at 1303 (original emphasis). “Thus, if a legal
`opinion or mental impression was never communicated to the client, then it provides little if any
`assistance to the court in determining whether the accused knew it was infringing, and any relative
`value is outweighed by the policies supporting the work-product doctrine.” Id. at 1304.
`
`PLAINTIFF PERSONALWEB TECHNOLOGIES, LLC’S
`MOTION FOR PROTECTIVE ORDER
`
`7
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`CASE NO: 5:18-MD-02834-BLF
`CASE NO: 5:18-CV-00767-BLF
`CASE NO: 5:18-CV-05619-BLF
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`Case 5:18-md-02834-BLF Document 610 Filed 07/21/20 Page 12 of 18
`
`Because the scope of the waiver carries within it a commensurate burden of producing
`documents within that scope, the resulting burden imposed must also be “proportional to the needs of
`the case,”, and discovery of privileged information requires relevancy to a claim or defense. See Fed.
`R. Civ. P. 26(b)(1); ProCom Heating, Inc. v. GHP Grp., Inc., No. 1:13CV-00163-GNS, 2016 WL
`3659137, at *5 (W.D. Ky. May 11, 2016) (entitlement to discovery of redacted subject matter depends
`on its relevancy).
`Waiver and sword/shield cases commonly reference the “concern for fairness, so that a party
`is prevented from disclosing communications that support its position while simultaneously
`concealing communications that do not.” Fort James, 412 F.3d at 1349. Here, especially given the
`satellite nature of this dispute, that judgment has already been entered and the substantive dispute has
`been concluded at the trial court, and that PersonalWeb’s counsel’s certification (Sherman Decl., ¶¶8-
`9) demonstrates an unawareness of any communications or documents that contradict PersonalWeb’s
`positions that (a) it received the subject opinions pre-suit, it relied on said opinions, there are no facts
`that made those opinions not genuine or bona-fide held at the time they were given, and (b)
`PersonalWeb never engaged in any activity in soliciting/negotiating nuisance value or below-market
`settlements, additional findings of greater waivers are improper either factually or legally. The precise
`issues raised by the Opposition papers are that multiple opinions on infringement and claim
`preclusion/Kessler were delivered and relied on, that the opinions were not some pretextual ruse – but
`rather were real, that a lot of real pre-suit filing work was done by many qualified individuals, and that
`litigation conduct was reasonable and never included settlement activities with third parties that
`consisted of the pursuit of nuisance-value settlements. Here, the burden “outweighs its likely benefit”
`(Fed.R.Civ.P. 26(b)(1)) and principles of disproportionality weigh heavily.
`There is no reason to construe the waivers nearly as broadly as Amazon asserts as the issues in
`dispute on this Motion do not implicate every different way/method by which reasonable legal counsel
`could have analyzed matters, do not implicate any particular settlement or settlement overture, and
`from the standpoint of proportionality, what has been produced and counsel’s certification
`demonstrating that nothing contrary is being withheld shows that permitting Amazon’s broad-ranging
`discovery now would go well beyond any waiver and permit a fishing expedition.
`
`PLAINTIFF PERSONALWEB TECHNOLOGIES, LLC’S
`MOTION FOR PROTECTIVE ORDER
`
`8
`
`CASE NO: 5:18-MD-02834-BLF
`CASE NO: 5:18-CV-00767-BLF
`CASE NO: 5:18-CV-05619-BLF
`
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`Case 5:18-md-02834-BLF Document 610 Filed 07/21/20 Page 13 of 18
`
`D.
`
`Not All Statements That Reference the Existence of a Communication With a
`Client Result in a Waiver.
`
`Waiving the attorney-client privilege is not an exercise in “gotcha.” This Court has recognized
`that the attorney-client privilege is not waived when a party discusses facts that arose out of an
`attorney-client communication. In DealDash Oyj v. ContextLogic Inc., No. 18-CV-02353, 2019 WL
`1105317 (N.D. Cal. Mar. 11, 2019), the Court considered whether an attorney’s statements in a
`declaration that his client’s general counsel had advised him about the timing of the client receiving a
`cease and desist letter and about the lack of importance of a trademark to the client constituted a waiver
`of the attorney-client privilege on those subjects. Id. at *1. Finding no waiver, the Court noted that
`there would have been no waiver if the attorney had stated the same exact same facts as attorney
`argument in a motion instead of in a declaration. Id. at *2. The Court also noted that the moving party
`did not explain “why the form in which counsel presented those facts—a declaration as compared to
`argument—changes the waiver analysis.” Id.
`IV.
`THE DOCUMENTS PERSONALWEB HAS ALREADY PROVIDED ADEQUATELY
`ADDRESS THE FAIRNESS CONSIDERATIONS GOVERNING THE SCOPE OF
`ITS WAIVER
`A.
`PersonalWeb’s Production of All its Pre-Filing Opinions by Its Attorneys and
`Experts Concerning the Preclusive Effect of the Texas Action and Infringement
`Strikes a Fair Balance.
`When the present dispute arose and PersonalWeb’s counsel proposed to meet and confer about
`the parties’ positions in an attempt to resolve the dispute, Amazon and Twitch’s counsel ignored the
`request. Only when informed that PersonalWeb would be moving for a protective order did Amazon
`and Twitch come to the table because they are required to do so by the Local Rules.
`As noted above, PersonalWeb has already turned over “opinions regarding claim preclusion
`and Kessler in any way concerning the cases in this MDL or in connection with the dismissal of the
`Texas Action” and “opinions regarding infringement of the at-issue technologies in this MDL,” and
`communications with PersonalWeb concerning this subject matter. This subject matter falls under
`Topics 2, 3, and 5 of Mr. Gregorian’s June 30 letter, and PersonalWeb produced these documents as
`it recognizes that fairness dictates that Amazon and Twitch be provided all of these materials in
`addition to the documents filed with its Opposition.
`
`PLAINTIFF PERSONALWEB TECHNOLOGIES, LLC’S
`MOTION FOR PROTECTIVE ORDER
`
`9
`
`CASE NO: 5:18-MD-02834-BLF
`CASE NO: 5:18-CV-00767-BLF
`CASE NO: 5:18-CV-05619-BLF
`
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`Case 5:18-md-02834