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`UNITED STATES DISTRICT COURT
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`SOUTHERN DISTRICT OF CALIFORNIA
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`TACTION TECHNOLOGY, INC.,
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`v.
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`APPLE INC.,
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`Plaintiff,
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`Defendant.
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`AND RELATED COUNTERCLAIMS.
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` Case No.: 21-cv-00812-TWR-JLB
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`PUBLIC
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`[REDACTED] ORDER GRANTING
`IN PART AND DENYING IN PART
`DEFENDANT’S MOTION TO
`COMPEL
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`[ECF No. 209]
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`Before the Court is a Motion to Compel filed by Defendant Apple, Inc.
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`(“Defendant”), seeking to compel discovery from Plaintiff Taction Technology, Inc.
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`(“Plaintiff”). (ECF No. 209.) Specifically, Defendant seeks ten documents Plaintiff
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`clawed back, one document Plaintiff withheld, and deposition testimony, all of which relate
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`to pre-suit analysis of Defendant’s Taptic Engine conducted by Plaintiff’s principals, Dr.
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`Silmon James Biggs and Mr. John Steinberg. (See ECF Nos. 209; 253; 255.) Plaintiff filed
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`an opposition (ECF No. 223), to which Defendant replied (ECF No. 227). For the reasons
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`stated below, Defendant’s Motion to Compel (ECF No. 209) is GRANTED in part and
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`DENIED in part.
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`Case 3:21-cv-00812-TWR-JLB Document 348 Filed 07/20/23 PageID.17369 Page 2 of 19
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`I.
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`BACKGROUND
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`Plaintiff filed the underlying action against Defendant on April 26, 2021, claiming
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`that it is the owner of two utility patents (collectively, the “Asserted Patents”) issued by
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`the U.S. Patent and Trademark Office upon which Defendant allegedly infringed with its
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`“Taptic Engine” haptic actuator used in certain models of Defendant’s iPhones and Apple
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`Watches. (ECF No. 1.) On June 17, 2021, Defendant filed an answer denying Plaintiff’s
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`infringement allegations, along with various affirmative defenses and counterclaims.
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`(ECF No. 17.) Plaintiff filed an answer to Defendant’s counterclaims on July 8, 2021.
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`(ECF No. 24.)
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`On January 4 and 31, 2023, Plaintiff clawed back nine of the documents at issue on
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`the basis of attorney-client and work-product privileges. (ECF No. 223 at 2, 6–11.)
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`On February 9 and 10, 2023, Defendant deposed Dr. Biggs, the inventor of the
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`Asserted Patents and Plaintiff’s Chief Technology Officer. (See ECF Nos. 223 at 3; 227
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`at 2.) During the deposition, Dr. Biggs testified about “his initial analysis of [Defendant’s]
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`Taptic Engine” which occurred on July 1, 2019.1 (ECF No. 223 at 3, 9. See generally
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`ECF Nos. 227-2; 227-3; 250-4; 253-1.) Dr. Biggs testified that this initial analysis was not
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`at the behest of or in consultation with an attorney. (ECF 227-2 at 7, 9.) Further, Dr. Biggs
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`testified that this analysis triggered his belief that Defendant was infringing on one of
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`Plaintiff’s patents—a belief that Dr. Biggs did not have prior to commencing his analysis.
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`(ECF No. 227-2 at 5–6, 8.) During the second day of the deposition, the parties raised a
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`dispute with the Court regarding Dr. Biggs’ assertions of privilege. (See ECF Nos. 178;
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`223 at 3.)
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`In the February 9, 2023, deposition, Dr. Biggs initially testified that his analysis had
`occurred in November 2019; however, Dr. Biggs subsequently amended his testimony after
`consulting with the withheld document. (See ECF No. 227-2 at 7, 9.) Plaintiff’s opposition
`states that “Dr. Biggs’ initial analysis [was] performed on July 1, 2019” (ECF No. 223
`at 9), which is in accord with the unredacted version of the deposition testimony (see, e.g.,
`ECF No. 253-1 at 18).
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`Case 3:21-cv-00812-TWR-JLB Document 348 Filed 07/20/23 PageID.17370 Page 3 of 19
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`The Court held a Status Conference on February 10, 2023, to facilitate informal
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`resolution of the dispute. (See ECF No. 178.) Later that day, Defendant filed an Ex Parte
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`Motion Regarding Discovery Dispute of Plaintiff’s Clawed-Back Documents
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`(ECF Nos. 182 (public); 250 (sealed)), to which Plaintiff filed a response (ECF Nos. 187
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`(public); 251 (sealed)). The Court construed Defendant’s ex parte motion as a request for
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`a discovery conference and briefing schedule, which the Court granted. (ECF No. 196.)
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`On February 14, 2023, the Court held a further Discovery Conference regarding the claw-
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`back documents, the withheld document Dr. Biggs consulted in preparation for the
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`resumption of his deposition, and Dr. Biggs’ related deposition testimony. (ECF No. 190.)
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`After the Discovery Conference, the Court issued a briefing schedule for the dispute.
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`(ECF No. 192.)
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`On February 21, 2023, Defendant filed the instant Motion to Compel Production and
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`Provide Testimony (“Motion”), seeking production of nine documents Plaintiff clawed
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`back and the one document Plaintiff withheld, all on the basis of attorney-client and work-
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`product privileges. (ECF Nos. 209 (public); 253 (sealed).) On March 7, 2023, Plaintiff
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`filed its opposition (ECF No. 223), and Defendant replied on March 14, 2023
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`(ECF No. 227). On April 10, 2023, the parties filed a Joint Motion to Amend Defendant’s
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`Motion to include an additional document that Plaintiff clawed back during the deposition
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`of Mr. Steinberg (ECF No. 255), which the Court granted (ECF No. 264). On April 21,
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`2023, the Court held a Status Hearing on the record regarding Defendant’s Motion.
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`(ECF No. 274.) Having provided the parties with an opportunity to object at the hearing
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`and with no objections made, the Court ordered Plaintiff to submit the documents at issue
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`for in camera review. (ECF No. 276.) Plaintiff lodged ten of the eleven documents at
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`issue with the Court on April 26, 2023.
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`On July 5, 2023, the Court held a Motion Hearing, addressing, inter alia, the date of
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`Dr. Biggs’ initial analysis and the withheld document that Plaintiff had previously failed
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`to lodge with the Court. (ECF No. 336.) After the hearing, Plaintiff lodged the missing
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`withheld document for in camera review.
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`Case 3:21-cv-00812-TWR-JLB Document 348 Filed 07/20/23 PageID.17371 Page 4 of 19
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`II. LEGAL STANDARD
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`“Parties may obtain discovery regarding any nonprivileged matter that is relevant to
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`any party’s claim or defense and proportional to the needs of the case.” Fed. R. Civ. P.
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`26(b)(1). Under Rule 30, a party may depose any person, including a party or entity, by
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`oral questions. Fed. R. Civ. P. 30(a)(1), (b)(6). “The notice to a party deponent may be
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`accompanied by a request under Rule 34 to produce documents and tangible things at the
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`deposition.” Fed. R. Civ. P. 30(b)(2). The propounding party may move to compel a
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`response if a party fails to produce documents requested under Rule 34. See Fed. R. Civ.
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`P. 37(a).
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`“The party seeking to compel discovery has the burden of establishing that its request
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`satisfies the relevancy requirements of Rule 26(b)(1).” Alves v. Riverside Cnty., 339 F.R.D.
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`556, 559 (C.D. Cal. 2021) (quoting Bryant v. Ochoa, No. 07-CV-00200-JM-PCL, 2009
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`WL 1390794, at *1 (S.D. Cal. May 14, 2009)). “District courts have broad discretion in
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`determining relevancy for discovery purposes.” Surfvivor Media, Inc. v. Survivor Prods.,
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`406 F.3d 625, 635 (9th Cir. 2005) (citing Hallett v. Morgan, 296 F.3d 732, 751 (9th Cir.
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`2002)). “Once the propounding party establishes that the request seeks relevant
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`information, ‘[t]he party who resists discovery has the burden to show discovery should
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`not be allowed, and has the burden of clarifying, explaining, and supporting its
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`objections.’” Goro v. Flowers Foods, Inc., 334 F.R.D. 275, 283 (S.D. Cal. 2018) (quoting
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`Superior Commc’ns v. Earhugger, Inc., 257 F.R.D. 215, 217 (C.D. Cal. 2009)); see also
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`Blankenship v. Hearst Corp., 519 F.2d 418, 429 (9th Cir. 1975) (noting those opposing
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`discovery are “required to carry a heavy burden of showing why discovery [should be]
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`denied”).
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`III. DISCUSSION
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`Generally, Defendant seeks to compel nine emails exchanged between Plaintiff’s
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`principals Dr. Biggs and Mr. Steinberg regarding their pre-suit analysis of Defendant’s
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`Taptic Engine, one set of draft slides Plaintiff presented in prospective client meetings with
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`law firms, a withheld document Dr. Biggs consulted in preparation for the resumption of
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`his deposition, and related testimony from Dr. Biggs. (ECF No. 209. See ECF Nos. 223
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`at 11; 255 at 2.) Plaintiff asserts Defendant’s Motion should be denied because it is
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`procedurally improper and seeks discovery protected both by attorney-client and work-
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`product privileges. (ECF No. 223.) In reply, Defendant argues neither privilege applies
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`or, alternatively, work-product privilege has been waived by Dr. Biggs’ selective
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`disclosures or overcome by Defendant’s showing of substantial need and undue hardship.
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`(ECF Nos. 209; 227.)
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`A. Defendant’s Motion Is Procedurally Proper.
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`As a threshold matter, Plaintiff challenges the propriety of Defendant’s Motion on
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`three grounds (see ECF No. 223 at 5–6), all of which Defendant opposes (ECF No. 227
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`at 6).
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`1.
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`Defendant’s Requested Relief
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`First, Plaintiff argues Defendant “unilaterally replaced its request” for the withheld
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`document with “a new, blanket request for another deposition of Dr. Biggs beyond the
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`narrow scope” of the Court’s briefing schedule.2 (ECF No. 223 at 5.) In opposition,
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`Defendant states that it made its intent to seek production of the withheld document and
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`further related deposition testimony clear at Dr. Biggs’ deposition and throughout the meet-
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`and-confer process. (ECF No. 227 at 6.)
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`The Court agrees with Defendant that the scope of this discovery dispute properly
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`extends to the request for additional deposition testimony on questions that relate to the
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`documents at issue that Dr. Biggs declined to answer based on privilege. Further, Plaintiff
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`was made aware of Defendant’s intent to seek additional deposition testimony, both in the
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`Discovery Conference on February 10, 2023, and during the parties’ meet and confer on
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`February 14, 2023 (ECF No. 223 at 3).
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`As addressed at the motion hearing, Plaintiff’s representation that Defendant’s
`request for additional deposition testimony was in place of—instead of in addition to—
`production of the withheld document, was based, at best, on a misunderstanding.
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`Case 3:21-cv-00812-TWR-JLB Document 348 Filed 07/20/23 PageID.17373 Page 6 of 19
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`Accordingly, the Court finds Defendant has not improperly expanded the dispute to
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`include further testimony from Dr. Biggs regarding any withheld or clawed-back
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`documents the Court determines must be produced.
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`2. Meet-and-Confer Requirements
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`Second, Plaintiff asserts Defendant’s Motion should be denied because during the
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`parties’ meet and confer regarding this discovery dispute, Defendant did not share all the
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`arguments it ultimately raised in its Motion. (ECF No. 223 at 5.) In reply, Defendant
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`represents that it met and conferred in good faith and nothing it could have said would have
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`resolved the dispute at that stage; however, “[n]othing requires a party to identify all
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`arguments” during a meet and confer. (ECF No. 227 at 6 n.1.)
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`“The Court will entertain no motion pursuant to Rules 26 through 37, Fed. R. Civ. P.,
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`unless counsel will have previously met and conferred concerning all disputed issues.”
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`CivLR 12.6(a). “Counsel must thoroughly meet and confer in person or by telephone and
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`shall make every effort in good faith to resolve all disputes without the Court’s
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`intervention.” J. Burkhardt Civ. Chambers R. § V.A.
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`Although the Court finds Defendant’s participation in the meet-and-confer process
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`could have been more fulsome, the Court does not find that there was any violation of the
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`Court’s meet-and-confer requirement that would support barring Defendant from making
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`the arguments made here.
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`3.
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`Reliance on Substance of Claw-Back Documents
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`Third, Plaintiff argues Defendant retained and relied upon the contents of the claw-
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`back documents to support its Motion. (ECF No. 223 at 5–6.) In fact, Plaintiff goes as far
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`as to assert Defendant “admits that it has retained the content of those claw[-]back
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`documents.” (Id. at 6 (emphasis in original).) Defendant counters that it complied with
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`the Protective Order and has not retained the documents or their contents. (ECF No. 227
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`at 6.) However, Defendant states it has a general awareness of their substance because
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`Defendant “had reviewed some of them in detail before the claw-back request,” which was
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`more than a year after production for some of the documents at issue. (Id.)
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`The Court accepts Defendant’s explanation. Furthermore, Defendant’s description
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`of its conduct comports with the requirements of the Protective Order. (See ECF
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`No. 37 ¶ 16(c) (“Nothing herein shall prevent the Receiving Party from preparing a record
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`for its own use containing the date, author, addresses, and topic of the inadvertently
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`produced Discovery Material and such other information as is reasonably necessary to
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`identify the Discovery Material and describe its nature to the Court in any motion to compel
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`production of the Discovery Material.”).) Moreover, Defendant confirms that, upon
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`receiving Plaintiff’s claw-back requests, it “commenced deletion” of the documents and
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`“no longer [had] access to them.” (ECF Nos. 227 at 6; 227-5 at 3; 227-6 at 2.)
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`Accordingly, the Court finds Defendant properly complied with the Protective Order in
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`disposing of the claw-back documents and bringing the instant Motion.
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`Having found Defendant’s Motion procedurally proper, the Court now turns to the
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`Motion’s substantive issues of attorney-client and work-product privileges.
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`B. Attorney-Client Privilege Applies to the Draft Presentation and the
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`Withheld Document.
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`1.
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`Parties’ Arguments
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`Plaintiff asserts that attorney-client privilege applies because ten of the documents
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`Defendant seeks are “internal Taction communications concerning how to present
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`information about potential infringement to the lawyers they intended to interview and the
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`[eleventh] document is the actual presentation they gave at the meetings with the lawyers.”
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`(ECF No. 223 at 11.) Defendant argues that attorney-client privilege does not apply
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`because the documents and testimony it seeks relate to Dr. Biggs’ and Mr. Steinberg’s
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`“independent analysis,” which consists of “facts created by non-attorneys as a part of their
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`business,” not “communications that reflect legal advice . . . .” (ECF No. 209 at 7
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`(emphasis in original).)
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`2.
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`Legal Standard
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`“The attorney-client privilege protects confidential communications between
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`attorneys and clients, which are made for the purpose of giving legal advice.” United States
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`v. Richey, 632 F.3d 559, 566 (9th Cir. 2011) (citing Upjohn Co. v. United States, 449 U.S.
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`383, 389 (1981)). “The party asserting the attorney-client privilege has the burden of
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`establishing the relationship and privileged nature of the communication.” Id. “Whether
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`information is covered by the attorney-client privilege is determined by an eight-part test:
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`(1) Where legal advice of any kind is sought (2) from a professional legal adviser in his
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`capacity as such, (3) the communications relating to that purpose, (4) made in confidence
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`(5) by the client, (6) are at his instance permanently protected (7) from disclosure by
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`himself or by the legal adviser, (8) unless the protection be waived.” United States v.
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`Sanmina Corp., 968 F.3d 1107, 1116 (9th Cir. 2020) (quoting United States v. Graf, 610
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`F.3d 1148, 1156 (9th Cir. 2010)). “Because the attorney-client privilege has the effect of
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`withholding relevant information from the factfinder, it is applied only when necessary to
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`achieve its limited purpose of encouraging full and frank disclosure by the client to his or
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`her attorney.” Clarke v. Am. Com. Nat. Bank, 974 F.2d 127, 129 (9th Cir. 1992).
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`3.
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`Analysis
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`At issue are nine emails exchanged between Plaintiff’s principals Dr. Biggs and
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`Mr. Steinberg regarding their pre-suit analysis of Defendant’s Taptic Engine, one set of
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`draft slides Plaintiff presented in prospective client meetings with law firms, and the
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`withheld document Dr. Biggs consulted in preparation for the resumption of his deposition.
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`(ECF Nos. 223 at 11; 255 at 2.)
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`Regarding the emails, Plaintiff relies on two cases for the proposition that “‘internal
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`communications that reflect matters about which the client intends to seek legal advice are
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`protected,’ even where they are comprised of ‘[m]aterials’ [] transmitted between
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`nonlawyers.’” (ECF No. 223 at 10–11 (quoting United States v. ChevronTexaco Corp.,
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`241 F. Supp. 2d 1065, 1077 (N.D. Cal. 2002); then citing Barton v. U.S. Dist. Ct. for Cent.
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`Dist. of Cal., 410 F.3d 1104 (9th Cir. 2005)).) The Court finds the facts of ChevronTexaco
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`and Barton distinguishable from the email communications between Dr. Biggs and Mr.
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`Steinberg. First, in Barton, the plaintiffs, though unrepresented at the time, were
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`communicating information directly to a law firm through a questionnaire. Barton, 410
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`F.3d at 1106–07. Here, Dr. Biggs and Mr. Steinberg were communicating information
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`between themselves prior to contacting any attorneys. Additionally, the Ninth Circuit in
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`Barton was applying California privilege law, not the federal common law, which applies
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`to the instant case. See Clarke, 974 F.2d at 129 (“Issues concerning application of the
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`attorney-client privilege in the adjudication of federal law are governed by federal common
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`law.”).
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`Furthermore, based on the Court’s in camera review, though Dr. Biggs and Mr.
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`Steinberg may have drafted the emails in anticipation of litigation, the documents do not
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`appear comparable to “notes which could serve as an agenda or set of reminders about
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`things to ask or tell counsel,” as none make such references. See ChevronTexaco Corp.,
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`241 F. Supp. 2d at 1077. Just because Dr. Biggs’ analysis might have triggered Plaintiff
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`to seek representation does not transmute the character of the emails into communications
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`seeking legal advice from legal advisors. See Larson v. Harrington, 11 F. Supp. 2d 1198,
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`1203 (E.D. Cal. 1998) (“These notes are not within the attorney-client privilege because
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`although they came into counsel’s possession they were not made as communications from
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`client to attorney.”).
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`However, the withheld document and the slides Plaintiff drafted and then presented
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`at meetings with attorneys are protected by attorney-client privilege. Unlike the emails,
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`the content of these documents constitute confidential communication between a
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`prospective client—Plaintiff—and attorneys for the purpose of seeking legal representation
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`4.
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`Conclusion
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`Accordingly, as
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`to
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`the presentation documents
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`identified by Bates Nos.
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`TACTION048718–048805 and the withheld document, Defendant’s Motion is DENIED.
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`21-cv-00812-TWR-JLB
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`Case 3:21-cv-00812-TWR-JLB Document 348 Filed 07/20/23 PageID.17377 Page 10 of 19
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`C. Work-Product Privilege Applies to Documents Created on or After July
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`1, 2019.
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`1.
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`Parties’ Arguments
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`Defendant argues that Dr. Biggs’ analysis was too remote to qualify as being in
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`anticipation of litigation because it was created three months before Plaintiff filed
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`applications for the patents-in-suit, thirteen months before the patents-in-suit were issued,
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`and eighteen months before Plaintiff actually filed suit. (ECF No. 209 at 7–8.) Further,
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`Defendant argues that the fact that no attorney was involved in the creation of the
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`documents at issue “weighs strongly against finding protectable work product.” (Id. at 9.)
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`In opposition, Plaintiff counters that the documents at issue were created “in near
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`proximity to the actual meetings [Plaintiff] had with prospective counsel for that express
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`purpose,” which occurred on July 18 and August 6, 2019. (ECF No. 223 at 4, 6–7.)
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`Additionally, Plaintiff argues that it is irrelevant that Dr. Biggs’ analysis related to an
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`unasserted patent and further argues that the lack of attorney involvement is not dispositive.
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`(Id. at 7–8.)
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`2.
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`Legal Standard
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`“The work-product doctrine is a ‘qualified’ privilege that protects ‘from discovery
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`documents and tangible things prepared by a party or his representative in anticipation of
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`litigation.’” Sanmina Corp., 968 F.3d at 1119 (quoting Admiral Ins. Co. v. U.S. Dist. Ct.
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`for Dist. of Arizona, 881 F.2d 1486, 1494 (9th Cir. 1989)). “To qualify for work-product
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`protection, documents must: (1) be prepared in anticipation of litigation or for trial and (2)
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`be prepared by or for [a] party or by or for that [] party’s representative.” Richey, 632 F.3d
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`at 567 (internal quotation marks and citation omitted); Fed. R. Civ. P. 26(b)(3)(A). “The
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`party asserting work[-]product protection has the burden to demonstrate it applies to the
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`information in question.” Greer v. Cnty. of San Diego, --- F. Supp. 3d ----, No. 19-cv-378-
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`JO-DEB, 2022 WL 6258319, at *4 (S.D. Cal. Oct. 7, 2022) (quoting McKenzie L. Firm,
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`P.A. v. Ruby Receptionists, Inc., 333 F.R.D. 638, 642 (D. Or. 2019)).
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`21-cv-00812-TWR-JLB
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`

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`Case 3:21-cv-00812-TWR-JLB Document 348 Filed 07/20/23 PageID.17378 Page 11 of 19
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`A document is prepared in anticipation of litigation where, based on the totality of
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`the circumstances, the Court determines the document “was created because of anticipated
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`litigation” and “would not have been created in substantially similar form but for the
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`prospect of litigation.” Richey, 632 F.3d at 568 (quoting In re Grand Jury Subpoena, Mark
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`Torf/Torf Envtl. Mgmt., 357 F.3d 900, 907 (9th Cir. 2004)); see also Fox v. Cal. Sierra Fin.
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`Servs., 120 F.R.D. 520, 524 (N.D. Cal. 1988) (“There is no requirement that the litigation
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`have already commenced in order for the work-product doctrine to be operative[;] however,
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`there must be more than a remote possibility of litigation.”).
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`3.
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`Analysis
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`As it is undisputed that all documents at issue were prepared by Plaintiff’s principals
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`Dr. Biggs and Mr. Steinberg, the Court turns to whether the documents at issue were
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`created “in anticipation of litigation.”
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`As the party asserting privilege, Plaintiff bears the burden of identifying the moment
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`that litigation was anticipated and work-product protections attached. Plaintiff takes the
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`position that privilege attached at some unspecified time after Dr. Biggs conducted his
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`analysis of Defendant’s Taptic Engine. (ECF No. 223 at 2 (“Dr. Biggs’ initial analysis of
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`the Taptic Engine triggered the anticipation for litigation . . . .”).) Through its briefing and
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`its oral argument at the motion hearing, Plaintiff failed to provide the Court with sufficient
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`evidence of the date on which Dr. Biggs conducted his initial analysis. Dr. Biggs’
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`testimony on the issue was equivocal, but he ultimately settled on July 1, 2019. (See, e.g.,
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`ECF Nos. 227-2 at 7, 9; 227-3 at 5; 250-4 at 13; 253-1 at 18.) Plaintiff took the unequivocal
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`position in its briefing that the initial analysis was performed on July 1, 2019, and that that
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`analysis is not protected by work-product privilege. (ECF No. 223 at 9.) Despite this, at
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`the motion hearing (see ECF No. 336), Plaintiff asserted that the privilege attached at some
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`unspecified date before July 1, 2019. None of this was sufficient to meet Plaintiff’s burden.
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`Nonetheless, the Court’s review of the withheld document—coupled with Dr. Biggs’
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`testimony and Plaintiff’s opposition—persuasively demonstrates to the Court that Plaintiff
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`formed the intent to pursue litigation and meet with counsel regarding the same starting no
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`21-cv-00812-TWR-JLB
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`Case 3:21-cv-00812-TWR-JLB Document 348 Filed 07/20/23 PageID.17379 Page 12 of 19
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`later than July 1, 2019. However, Plaintiff has failed to meet his burden to show that Dr.
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`Biggs conducted his analysis or that privilege attached earlier than July 1, 2019. Dr. Biggs
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`testified that prior to his analysis, he had no thoughts or beliefs regarding the possibility of
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`Defendant infringing on Plaintiff’s patents. (ECF No. 227-2 at 6, 8.) It was not until his
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`“holy cow” moment, that the idea entered his head. (Id.) In fact, Plaintiff expressly asserts
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`in its opposition that “neither [Plaintiff] nor [Defendant] is claiming that Dr. Biggs’ initial
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`analysis performed on July 1, 2019[,] is protected by work product.” (ECF No. 223 at 9.)
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`Because Plaintiff has not established that Dr. Biggs’ analysis occurred before July 1, 2019,
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`(and in fact took the position in their opposition that it had not), the Court determines that
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`the emails exchanged before July 1, 2019, were not “in anticipation of litigation.”
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`Accordingly, the documents produced at Bates Nos. TACTION056754–056755 and
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`TACTION056887 are not work product and must be produced.
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`However, the withheld document, the draft presentation slides, and the emails
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`exchanged on or after July 1, 2019, do, based on Dr. Biggs’ testimony and Plaintiff’s
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`representations, qualify as documents created in anticipation of litigation. (See, e.g., ECF
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`No. 253-1 at 7, 9, 17.) The lack of attorney involvement, though it may be a “strong signal
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`that [the documents] were not created because of the prospect of litigation,” is not
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`dispositive, as the totality of the circumstances must be considered. Largan Precision Co.
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`v. Genius Elec. Optical Co., No. 13-CV-02502-JD, 2015 WL 124557, at *6 (N.D. Cal. Jan.
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`8, 2015); see also Horton v. Maersk Line, Ltd., 294 F.R.D. 690, 700 (S.D. Ga. 2013) (“[A]
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`plaintiff who creates work-product material before hiring an attorney is still permitted to
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`take advantage of the work-product doctrine.”). In the instant case, Dr. Biggs testified
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`repeatedly that his analysis triggered a belief that Defendant’s product infringed and
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`Plaintiff should file suit. According to Plaintiff, this belief of infringement and litigious
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`intent were the purpose underlying Dr. Biggs’ and Mr. Steinberg’s communications leading
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`up to meetings with prospective counsel. Furthermore, the time between the creation of
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`these documents and the first meetings with potential counsel was only two to three weeks,
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`which supports the determination of the documents being created in anticipation of
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`21-cv-00812-TWR-JLB
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`Case 3:21-cv-00812-TWR-JLB Document 348 Filed 07/20/23 PageID.17380 Page 13 of 19
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`litigation. The Court rejects Defendant’s argument that these documents cannot constitute
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`work product because the initial analysis related to an unasserted patent. Plaintiff’s
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`subsequent strategic decision to pursue litigation of the Asserted Patents and not the
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`unasserted patents does not undermine Dr. Biggs’ and Mr. Steinberg’s intent when creating
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`the documents at issue.
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`4.
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`Conclusion
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`Accordingly, as to the pre-July 1, 2019, documents identified as Bates Nos.
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`TACTION056754–056755 and TACTION056887, Defendant’s Motion is GRANTED.
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`The remaining documents at issue qualify as work product and will be analyzed for
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`D. Dr. Biggs’ Deposition Testimony Selectively Waived Any Work-Product
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`Protections as to the July 1, 2019, Analysis.
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`1.
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`Parties’ Arguments
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`Defendant argues that, even if work-product privilege otherwise applies, by only
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`offering “self-serving testimony” regarding his analysis of Defendant’s product, Dr. Biggs
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`waived any work-product protection to the entire subject matter of his analysis under
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`Federal Rule of Evidence 502. (ECF No. 209 at 10–11.) Specifically, Defendant argues
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`Dr. Biggs cannot testify to analyzing Defendant’s product and concluding it infringes on
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`Plaintiff’s patents, without being required out of fairness to testify to the actual analysis
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`upon which his belief rests. (Id.)
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`Plaintiff argues “the mere presentation of Dr. Biggs for deposition does not waive
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`work[-]product protection and it is not controversial that parts of his testimony may be
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`protected by work product while others may not, depending on the questions posed.” (ECF
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`No. 223 at 9 n.8.) Additionally, Plaintiff contends that there are no fairness concerns at
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`issue because Defendant can conduct its own analysis of its Taptic Engine. (Id. at 9–10.)
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`Finally, Plaintiff argues that Dr. Biggs’ testimony was not being used as a “sword” because
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`it was Defendant who sought the testimony. (Id. at 10.)
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`21-cv-00812-TWR-JLB
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`Case 3:21-cv-00812-TWR-JLB Document 348 Filed 07/20/23 PageID.17381 Page 14 of 19
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`2.
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`Legal Standard
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`“The privilege derived from the work-product doctrine is not absolute. Like other
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`qualified privileges, it may be waived.” United States v. Nobles, 422 U.S. 225, 239 (1975).
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`“[A]n express waiver generally occurs by disclosure to an adversary, while an implied
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`waiver occurs by disclosure or conduct that is inconsistent with the maintenance of secrecy
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`against an adversary.” Sanmina Corp., 968 F.3d at 1123. “Thus, [the court] may find the
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`work-product immunity waived where the disclosing party’s conduct has reached a ‘certain
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`point of disclosure’ towards his adversary such that ‘fairness requires that his privilege
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`shall cease, whether he intended that result or not.’” Id. (quoting Weil v.
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`Investment/Indicators, Research & Management, Inc., 647 F.2d 18, 24 (9th Cir. 1981));
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`see also Bittaker v. Woodford, 331 F.3d 715, 719 (9th Cir. 2003) (noting the “fairness
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`principle . . . is often expressed in terms of preventing a party from using the privilege as
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`both a shield and a sword”). However, the “court must be careful to ‘impose a waiver no
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`broader than needed to ensure the fairness of the proceedings before it.’” Sanmina Corp.,
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`968 F.3d at 1122 (quoting Bittaker, 331 F.3d at 720); see also Fed. R. Evid. 502(a) (setting
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`the scope of subject matter waiver to “undisclosed communication or information” only
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`where “(1) the waiver is intentional; (2) the disclosed