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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF DELAWARE
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`::
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`::
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`: C. A. No. 10-258-SLR/MPT
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`::
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`:
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`MOBILEMEDIA IDEAS LLC,
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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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`MEMORANDUM ORDER
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`Procedural Background
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`Presently before the court are discovery issues arising not only between the
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`parties, but also involving a third-party. Consistent with the court’s standard order
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`dealing with discovery matters, the parties and Nokia Corporation (“Nokia”) contacted
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`the court to schedule a telephonic conference. Thereafter, Apple, Inc. (“Apple”), the
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`moving party, filed its speaking motion against MobileMedia Ideas LLC (“MMI”) and
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`Nokia. MMI and Nokia timely filed their respective responses. A telephonic hearing
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`occurred on June 7, 2012 during which all parties to the disputes presented argument.
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`Certain issues were decided during the teleconference. Regarding the remaining
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`matters, the parties supplemented their previous submissions and provided documents
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`and affidavits addressing the common interest privilege.1
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`1 During the teleconference, the parties advised some of the documents under
`seal were exhibits to an unrelated motion before Judge Robinson. Other documents
`evidencing the common interest privilege had not been previously produced. Those
`documents were provided for in camera review. In any event, any documents filed
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`MMI and Nokia provided their supplemental submissions on June 15, 2012.
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`Apple provided its response on June 22, 2012. This is the court’s decision regarding
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`privilege under the common interest privilege and related issues.
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`During discovery, Apple served subpoenas on three separate Nokia entities:
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`Nokia Inc. on February 9, 2011, Nokia Capital, Inc. on June 1, 2011, and Nokia, the
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`entity involved in the present discovery dispute, on June 29, 2011.2 Each Nokia entity
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`timely responded to the subpoena raising objections based on various privileges,
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`including the common interest privilege. Specifically, Nokia initially objected in July
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`2011 and provided additional objections based on attorney-client privilege on August 23,
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`2011. Fact discovery closed on October 31, 2011.3 Expert discovery was to be
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`completed by March 23, 2012. At the time of the discovery teleconference, claim
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`construction and dispositive motion briefing was near completion.
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`Factual Background
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`MMI, a Delaware limited liability company, was formed by Nokia, Sony
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`Corporation (“Sony”) and another company, MPEG-LA (“MPEG”) in January 2010.
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`Before MMI’s formation, in the beginning of 2009, Sony and Nokia discussed the
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`formation of, and the potential patents to be transferred to an entity that would license
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`and enforce those patents, including through litigation if necessary.4 After an
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`under seal remain under seal for the purpose of the discovery issues addressed herein.
`2 Nokia represented each subpoena contained eighty-one document requests
`and approximately ten to fifteen deposition topics. See D.I. 338 at 1.
`3 Fact discovery originally was to close by September 1, 2011. By stipulation
`between the parties, it was extended to October 31, 2011, allowing for certain
`depositions to occur after the close of fact discovery, but before the deadline to depose
`any trial witnesses. See D.I. 17 & 135.
`4 See D.I. 353 at ¶ 4; D.I. 354 at ¶ 4.
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`2
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`exploratory phase, in April 2009, Nokia and Sony executed a non-disclosure agreement
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`to enable the sharing of confidential and privileged information.5 Subsequently, MPEG
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`became an additional participant.6 Previously, Sony and MPEG had entered into a non-
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`disclosure agreement. MPEG also executed a non-disclosure agreement with Nokia.7
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`Nokia, Sony and MPEG further determined and agreed in April 2009, they had a
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`common legal interest in venture formation issues which they memorialized in an
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`agreement in October 2009.8
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`Sony and Nokia, as the patent holders and licensors, each retained counsel who
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`provided legal analyses concerning patent infringement and validity and license contract
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`interpretation. Through their counsel and counsel for MPEG, the analyses were shared
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`to assess the legal merits of the patents under consideration to be contributed to the
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`proposed legal enforcement entity, MMI. The exchange of information was made
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`among Nokia, Sony and MPEG-LA in reliance on the non-disclosure agreements and
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`on the assumption they shared a common legal interest.9 In their discussions, these
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`parties shared information regarding legal aspects of litigation strategy, as well as other
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`legal information relating to venture formation, tax issues, competition law and licensing
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`opportunities. Because they planned to form an entity to acquire, develop, administer,
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`manage and possibly assert intellectual property, these entities also shared legal advice
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`and analysis in that regard.10 Accordingly, such information was only shared with the
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`5 See D.I. 353 at ¶ 5; D.I. 354 at ¶ 5.
`6 See D.I. 353 at ¶ 6; D.I. 354 at ¶ 6.
`7 Id.
`8 See D.I. 353 at ¶ 7; D.I. 354 at ¶ 7.
`9 D.I. 353 at ¶¶ 2, 8; D.I. 354 at ¶¶ 2,8.
`10 D.I. 353 at ¶¶ 9-11; D.I. 354 at ¶¶ 9-11.
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`3
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`expectation the material would remain privileged and confidential.11
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`In forming MMI, Nokia, Sony and MPEG entered into various agreements
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`memorializing their respective rights and obligations. Those agreements included the
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`Formation Agreement, the Operating Agreement and two Patent Purchase Agreements
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`(between MMI and Nokia Capital and MMI and SCA IPLA).12 Through these
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`agreements Nokia Capital, Inc. (an indirect wholly owned subsidiary of Nokia) and SCA
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`IPLA (an indirect wholly-owned subsidiary of Sony) contributed intellectual property13 in
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`exchange for each receiving a 24.9% equity interest in MMI. MPEG, through its wholly
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`owned subsidiary, Tagivan, agreed to provide services to MMI pursuant to a service
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`agreement, to enforce the patents. In return, Tagivan’s interest in MMI is 50%. As a
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`result, MMI owns a portfolio of patents from Nokia Capital, Inc. and SCA IPLA Holdings
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`Inc. relating to mobile devices, such as cellular phones.14
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`According to the Formation Agreement and the Operating Agreement, the
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`essential purpose of MMI is
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`to acquire, develop, administer and manage Intellectual Property rights
`relating to inventions which reflect certain features of, and application
`used by, mobile and other devices and to collect income in respect to such
`inventions reflected in such Intellectual property rights and its use in end
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`11 D.I. 353 at ¶ 12; D.I. 354 at ¶ 12.
`12 D.I. 358, Ex. A-D. The date of the Formation Agreement, the Operating
`Agreement and the two Patent Purchase Agreements is January 10, 2010. The
`privileged materials presently sought were in possession of Nokia and Sony, parent
`corporations of Nokia Capital and SCA IPLA, and were subsequently provided to Nokia
`Capital and SCA IPLA. Apple does not contend this original transfer operated as a
`waiver of privilege.
`13 Prior to any transfer of intellection property to MMI, SCA IPLA obtained the
`patents through assignments from Sony, while Nokia Capital acquired its patents from
`Nokia.
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`14 See D.I. 358 at ¶ 2.
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`4
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`user devices.15
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`To enable the enforcement of the patent rights and for exploitation of the patents
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`and consistent with the previously noted Agreements, Nokia Capital and SCA IPLA
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`transferred the prosecution history files to MMI.16 According to MMI, no privileged
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`documents were exchanged or provided before the close of the transaction. Moreover,
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`these documents were not provided for “commercial purposes such as to evaluate the
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`value of the respective portfolios or induce a party to enter into the agreement.”17
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`Parties’ Positions
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`Apple
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`Although Apple originally argued the common legal interest privilege did
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`not apply, it now agrees “MMI and Nokia demonstrated that Sony and Nokia are not
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`mere separate investors or shareholders . . . [but instead] acted together to develop the
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`litigation strategy . . . implemented after MMI’s formation, and have continued to
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`cooperate after formation to further that legal strategy, and assert their patents through
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`MMI.”18 In light of the declarations by Nokia and MMI, Apple confirmed it “no longer
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`contests that Nokia shares a common legal interest with Sony before formation, or that
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`MMI shares a common legal interest with Sony and Nokia after formation in at least
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`some communications.”19 What Apple does dispute is whether Nokia and MMI have
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`15 D.I. 358, Ex. A at first Whereas clause; Ex. B. at first Whereas clause.
`16 D.I. 356 at ¶ 6; D.I. 357 at ¶¶ 5, 7. See also D.I. 358, Exs. C & D at ¶ 4.1 (this
`paragraph of each of the Patent Purchase Agreements provides for Nokia Capital and
`SCA IPLA respectively to deliver to MMI the prosecution history files).
`17 D.I. 355 at 1.
`18 D.I. 370 at 1.
`19 Id.
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`5
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`shown that the common interest privilege applied to each of the communications at
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`issue, that is, whether the purpose for sharing the documents was for furthering a joint
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`legal strategy. Relying on King Drug Co of Florence, Inc. v. Cephalon, Inc.,20 it reasons
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`that court’s analysis applies “where there is a joint legal strategy, but the
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`communications at issue were not ‘designed to further that effort.’”21
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`Therefore, Apple demands production of certain documents exchanged before
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`MMI’s formation, specifically materials that discuss Sony’s and Nokia’s patent coverage
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`to develop a “valuable cluster” of patents or confirming value to licensees which
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`purportedly have been improperly withheld.22 Apple does not seek those
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`communications created for the purpose of developing a joint legal strategy.
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`As to the documents sought, Apple maintains Nokia failed to demonstrate the
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`documents were exchanged to further a joint legal strategy. Specifically, Apple argues
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`Nokia has not established a document-by-document analysis that an underlying
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`20 2011 WL 2623306, at *4 (E.D. Pa. July 5, 2011).
`21 Id.
`22 Apple’s motion included a production request of Sony documents through MMI
`under an Afros v. Krauss-Maffei, 113 F.R.D. 127 (D. Del. 1986) argument. Because
`Apple advised during the teleconference that Sony and Apple were still conferring on
`document production; Sony was absent from that discovery conference; and insufficient
`evidence of control by MMI over the Sony documents, the court denied Apple’s request
`during the hearing. That decision does not address whether Apple may obtain such
`documents directly from Sony, by agreement or through court order.
`The documents sought by Apple regarding patents selected to become part of
`this patent cluster concerned descriptions by Nokia and Sony to each other regarding
`patent coverage for their respective patents. See Trans. dated June 7, 2012
`(erroneously dated May 12, 2012) (“Trans.”) at 11:4-13:3. See also D.I. 337, Ex. 4; D.I.
`370.
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`Originally, Apple also sought drafts of the purchase agreements and formation
`agreements which were denied based on relevance. See Trans. at 41:18-42:20.
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`6
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`privilege exists.23 It further argues Nokia failed to demonstrate the disclosures were
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`made only for “‘securing, advancing, or supplying legal representation.’”24 Apple
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`emphasizes the present record shows the communications were made for evaluating
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`the business value of the portfolio, “regardless of any legal strategy.”25
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`Apple maintains there was no delay on its part to obtain the documents sought
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`because until the privilege logs were produced in December,26 it was unaware of the
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`purportedly broad categories of documents for which Nokia was claiming privilege.
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`Thereafter, Apple began meeting and conferring with MMI, Nokia and Sony to
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`understand the bases for their claims of privilege.27
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`Apple requests Nokia produce all documents as previously noted herein. It also
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`seeks an order requiring Nokia to produce a log of all communications that include non-
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`attorneys.
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`Regarding MMI, Apple disputes whether MMI has established the transfer of the
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`patent prosecution files and invention disclosure forms (“IDFs”) occurred to further a
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`joint legal strategy. It criticizes MMI’s evidence as only vaguely suggesting these
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`documents were provided to assist in its exploitation of the patents. Apple maintains
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`23 In this regard, Apple asserts additional concerns because the affidavits
`mention “other employees,” assumed to be non-attorneys sharing in the
`communications.
`24 D.I. 370 at 3.
`25 Id.
`26 As noted previously, MMI maintains its privilege log was produced in
`November 2011.
`27 See D.I. 337 n.4 listing the dates when correspondence or conferences
`occurred to address the present issues. The footnote indicates such discussions began
`with MMI on December 15, 2011, while discussions with Nokia began on January 17,
`2012.
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`7
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`these documents were delivered merely as part of the purported transfer of patents by
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`referencing sections in the patent purchase agreements which allow for disclosure of
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`other documents to assist in MMI’s enforcement of the transferred patents. Therefore,
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`Apple demands all patent prosecution files and IDFs be produced.
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`MMI/Nokia
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`Although MMI and Nokia provided separate submissions, their interests in the
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`present discovery matter are related.
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`Contrary to Apple’s arguments, Nokia contends Apple was aware of its position
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`as early as July 2011, when Nokia formally responded to the subpoena, specifically
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`objecting to the requested documents based on attorney-client privilege and the
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`common interest privilege.28 Nokia maintains it collected and produced relevant
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`documents, such as, agreements regarding any patent-in-suit invented by a Nokia
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`inventor and offered the inventors for deposition. Despite that five of the deposition
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`topics in Apple’s subpoena related to the formation of MMI and Nokia’s involvement with
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`MMI and its knowledge of Nokia’s objections, Apple never pursued any depositions of
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`Nokia personnel, nor moved to compel production of the documents until six months
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`after the cut-off date for fact discovery.29 Nokia further points out that after the
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`discovery cutoff date, it cooperated with Apple by providing additional information,
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`28 During the June 5 teleconference, Nokia cited its response to request 19 which
`asked for all documents and things relating to its involvement in the formation of MMI.
`Nokia’s objection claimed such documents were protected by attorney-client privilege,
`work-product doctrine and the common interest privilege.
`29 Nokia also contends that despite the deficiencies in Apple’s subpoena
`(attempting to serve a Finnish company in Finland through a subpoena issued from this
`court), it cooperated and produced numerous documents.
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`8
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`including communications between investors prior to when the common interest arose
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`and non-confidential communications after the common interest existed that were not
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`subject to privilege. It maintains, as a non-party, it should not be subject to further
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`discovery for Apple’s failure to raise its present arguments while discovery was opened.
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`Nokia also disputes whether the documents requested are relevant. It argues
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`Nokia’s patent coverage, which would include patents not at issue, is obviously
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`irrelevant.
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`MMI owns a portfolio of patents from Nokia and SCA IPLA as a result of several
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`agreements memorializing these entities respective rights and obligations. MMI
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`represents no privileged documents were exchanged before the transfer of ownership of
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`the patent portfolio. It further contends no documents were provided as part of this
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`process for commercial purposes, such as to evaluate the respective portfolios or
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`induce a party to enter into any agreement.30 As a result, only the post-closing
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`transferred files for use by MMI for enforcement of the patents are at issue. MMI claims
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`these documents are “‘files, documents and other materials that are in the possession
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`of the Prosecution Counsel, and relating to the prosecution, maintenance, filing,
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`issuance and/or [sic] of the Assigned Patents,’”31 and therefore, are inherently legal. At
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`the time of the agreements and the transfer of such information, both Nokia and SCA
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`IPLA anticipated litigation, and each obtained the legal right to distributions based on
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`royalties and damages through MMI’s successful enforcement of the patents.32 MMI
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`30 D.I. 356 at ¶ 6; D.I. 358 at ¶ 11.
`31 D.I. 358, Exs. C & D.
`32 D.I. 356 at ¶ 6; D.I. 357 at ¶ 5; D.I. 358, Ex. B § 8.2.
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`9
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`Case 1:10-cv-00258-SLR-MPT Document 447 Filed 09/10/12 Page 10 of 18 PageID #: 8529
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`claims both Nokia and SCA IPLA made disclosures as part of their ongoing legal
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`obligations, and maintained reversionary ownership rights under certain circumstances,
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`evidencing their continued legal interest in the validity and enforceability of the
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`patents.33 As a result, MMI argues the documents at issue clearly are protected under
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`the common interest doctrine.
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`MMI further asserts what Apple demands, without reference to its privilege log or
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`any specific document, is an open ended request for production of all the patent
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`prosecution files and IDFs in contradiction of the facts supporting that the transfer and
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`disclosure to MMI of such information was consistent with the common interest doctrine.
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`
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`MMI also claims Apple’s letter motion in June 2012 for such discovery, after fact
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`discovery closed on October 31, 2011, after the production of its privilege log in
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`November 2011, after completion of expert discovery, and while claim construction and
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`summary judgment briefing was ongoing, is untimely and too late.34
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`Standard and Applicable Law
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`Community of Interest or Common Interest Privilege
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`The community of interest privilege “allows attorneys representing different
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`clients with similar legal interests to share information without having to disclose it to
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`others.”35 The purpose is to protect communications between different individuals and
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`33 D.I. 356 at ¶¶ 8-10; D.I. 357 at ¶¶ 7-9; D.I. 358, Ex. A § 4.03.
`34 Since this discovery matter was initially raised and briefed, claim construction
`and summary judgment briefing has been completed and the Markman hearing and oral
`argument occurred in late July 2012.
`35 In re Teleglobe Communications Corp., 493 F.3d 345, 364 (3d Cir. 2007).
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`10
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`entities and their respective counsel when the communications are “‘part of an on-going
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`and joint effort to set up a common defense strategy.’”36 Thus, the members of the
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`community of interest “must share at least a substantially similar legal interest.”37 The
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`burden rests on the party asserting the privilege to establish its existence by showing
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`“‘(1) the communications were made in the course of a joint defense effort, (2) the
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`statements were designed to further the effort, and (3) the privilege has not been
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`waived.’”38 Moreover, to qualify for and to maintain the privilege, the communications
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`must be shared between counsel, and not just between the clients.39 Unlike the joint
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`client privilege where the same counsel represents more than one client, the legal
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`interests between or among the clients need not be identical, and the degree to which
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`the commonality of interests converge is relaxed.40 Further, the fact “there may be an
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`overlap of commercial and legal interests . . . does not negate the effect of the legal
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`interests in establishing a community of interest.”41 The standard is substantially similar
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`legal interest, that is not solely commercial.42 Thus, the privilege may apply although
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`the communications include discussions of various business matters as long as they are
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`“infused with legal concerns.”43 Actual litigation or a ongoing lawsuit is not required, as
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`36 In the Matter of Bevill, Bresler & Schulman Asset Mgmt. Corp., 805 F.2d 120,
`126 (3d Cir. 1986), quoting Eisenberg v. Gagnon, 766 F.2d 770, 787 (3d Cir. 1985).
`37 Teleglobe Communications, 493 F.3d at 365.
`38 In the Matter of Bevill, 805 F.2d at 126, citing In re Grand Jury Subpoena
`Duces Tecum dated November 16, 1974, 406 F. Supp. 381 (S.D.N.Y. 1975); see also
`Grand Jury Empanelled February 14, 1978, 608 F.2d 469, 474 (3d. Cir. 1979).
`39 Teleglobe Communications, 493 F.3d at 365.
`40 Id.
`41 Id.
`42 Id.
`43 SE. Pa. Transp. Auth. v. Caremarkpcs Health, L.P., 254 F.R.D. 253, 258 (E.D.
`Pa. 2008).
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`long as it is anticipated.44
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`Discussion
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`Apple does not dispute the common interest doctrine applies. It, however,
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`maintains for the documents sought, neither MMI or Nokia have provide sufficient
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`evidence that they fall within the privilege. In sum, it seeks from Nokia “documents that
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`discuss Sony’s or Nokia’s patent coverage or the patents in depth for the purpose of
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`creating a ‘valuable cluster’ of patents or confirming ‘value’ to licensees” relying on
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`paragraphs 1 through 3 of exhibit 4 to its original submission, an email which
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`discusses a possible agenda for a meeting between Nokia and Sony during the initial
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`stages to determine the patents to transfer to MMI.45 It seeks from MMI, all patent
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`prosecution files and IDFs transferred based on the purported absence of proof that
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`this exchange was for the purpose of a joint legal strategy.
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`Transfer of Patent Prosecution Documents and IDFs to MMI
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`Apple’s argument that the transfer of the patent prosecution files and IDFs to
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`MMI were not to further a joint legal strategy is refuted by the Formation and Operating
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`Agreements which provide the central purpose of MMI was “to acquire, develop,
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`administer and manage [i]ntellectual [p]roperty rights” related to the inventions obtained
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`from the Nokia and Sony entities. For contributing certain intellectual property, those
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`entities received equity interests MMI and will receive distributions of any future
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`royalties and damages collected by MMI. As shareholders, they continue to have a
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`direct interest in MMI’s business. Pursuant to the Operating Agreement, the governing
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`44 Teleglobe Communications, 493 F.3d at 365.
`45 See D.I. 337, Ex. 4.
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`12
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`Board of Representatives of MMI are comprised of seven individuals from the Sony,
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`Nokia and MPEG entities, and have all powers necessary to carry out the purposes and
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`business of MMI, that is, the enforcement of the patents. MMI cannot re-assign the
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`patents-in-suit without full Board approval, that is, the consent of the Nokia, Sony and
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`MPEG entities. In light of their Board seats, these corporations have essentially veto
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`power over such sales. Further, since the formation of MMI, Nokia, Sony and their
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`respective wholly owned subsidiaries have provided assistance and cooperation to
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`MMI’s outside attorneys, including details related to the prosecution history of the
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`patents-in-suit. Their obligation in this regard is evidenced in the Patent Purchase
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`Agreements under §§ 4.5-4.6 requiring them in any action involving infringement or
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`invalidity of the assigned patents to provide “reasonable access to [their inventor]
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`employees” for “[a] litigated patent” as well as relevant documents, including those
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`related to the “conception and reduction to practice.” They are further obligated to
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`“provide reasonable assistance by [their] personnel in connection with patent
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`prosecution or other necessary activities of [MMI].” Such language strongly indicates a
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`future cooperation with MMI in its core purpose, the successful enforcement of the
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`transferred patents. Such future cooperation, which may involve providing additional
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`materials, does not imply that the original transfer of the patent prosecution files and the
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`IDFs was merely to effectuate transfer of the patents.
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`Further, at the time the documents in question were provided to MMI, the Nokia
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`and Sony entities had reversionary rights allowing ownership of the patents to revert
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`13
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`back under certain conditions.46 Therefore, at the time of the transfer, the Nokia and
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`Sony entities had a direct continued legal interest in the validity and enforceability of the
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`patents.
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`The language, provisions and tenor of the Formation and Operating Agreements
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`and the two Purchase Agreements clearly indicate at the time of their execution, the
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`Nokia and Sony entities anticipated litigation for enforcement of the transferred patents.
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`As evidenced by the various agreements, the purpose of the transfer of the
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`patent prosecution files and the IDFs were part of the joint legal strategy involving the
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`Nokia and Sony entities that began before MMI’s formation and continued thereafter.
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`MMI and the Nokia and Sony entities have operated with the expectation that any
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`shared privilege communications would be confidential and protected from disclosure.
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`The Nokia and Sony entities, as licensees, clearly share a common legal interest in MMI
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`prevailing in this action. That as a result of the Formation Agreement, MMI is now the
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`owner of the patents does not eviscerate or prevent the sharing of a common legal
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`interest with Nokia and Sony.47 Therefore, Apple’s request for the patent prosecution
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`files and IDFs is denied.
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`Documents Sought from Nokia
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`In support of its demand, Apple primarily relies on exhibit 4 attached to its original
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`46 The reversionary interest under § 4.03 of the Formation Agreement was
`eliminated in early 2012. See D.I. 240 at 3 n.3.
`47 Apple acknowledges the development of a litigation strategy between Sony
`and Nokia predated MMI’s formation, and was implemented after MMI’s formation, and
`specifically notes such cooperation continued thereafter with each other and MMI “to
`further that legal strategy” for enforcement of the patents. See D.I. 370 at 1.
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`14
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`submission.48 In fact, its very general, non-specific and broad description of the
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`communications sought is a paraphrase of items 1 through 3 of that email. Its
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`paraphrase, however, is not an accurate description of the content of the email. Absent
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`the fact that the email merely contains suggestions of an agenda for a future meeting,
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`the topics proposed were an in depth legal analysis and presentation of that analysis by
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`Sony and Nokia regarding coverage under the patents being considered, including
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`mapping the extent of each patent’s coverage to help determine its value. Other
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`suggested topics in the email include the type of joint venture formation and the key
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`terms of a joint venture agreement. Nothing in the email suggests the proposed topics
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`were solely related to commercial purposes. As evidenced from the affidavits
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`submitted, any analysis shared allowed each party through their attorneys to assess the
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`legal merits, including validity, of the patents to be contributed to the enforcement entity,
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`MMI. Although part of that analysis may have considered the value of those patents in
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`relation to the extent of their coverage, as noted in Teleglobe Communications, the
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`mere overlap of commercial and legal interests “does not negate the effect of the legal
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`interests in establishing a community of interest.”49 Substantial, not sole, legal interest
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`is required. As evidenced by the declarations submitted and discussed previously
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`herein, the transferred information was not solely or primarily for commercial purposes.
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`The exchanges by Sony, Nokia and MPEG were made under non-disclosure
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`agreements with the understanding the parties shared a common legal interest. Those
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`non-disclosure agreements required the parties to keep all information received strictly
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`48 D.I. 337.
`49 493 F.3d at 365.
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`Case 1:10-cv-00258-SLR-MPT Document 447 Filed 09/10/12 Page 16 of 18 PageID #: 8535
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`confidential and not be disclosed to third parties. A common legal interest agreement,
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`having an effective date of April 1, 2009, was also executed. It “ensure[d] . . . such
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`sharing, exchanges and disclosures of Privileged Information among the parties . . . do
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`not (i) impair or in any way diminish the confidentiality of such information, and (ii) do
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`not constitute a waiver of any privilege . . . .”50 The agreement acknowledged litigation
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`was contemplated.51 Information shared involved various legal aspects of legal
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`strategy, venture formation, tax matters, competition law, licensing opportunities and
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`other similar issues. Thus, all shared privilege material occurred with the expectation
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`the communications would be kept confidential and protected from disclosure.52
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`Unlike in Leader Technologies v. Facebook, Apple does not dispute that a
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`common legal interest exists.53 Further, when comparing the affidavits relied upon by
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`Judge Stark in the Xerox matter with the declarations submitted in the instant matter,
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`they are similar in content for establishing a common interest privilege and similarly
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`demonstrate that the relationship of Sony, Nokia and MPEG was “sufficiently imbued
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`with common legal interests” plainly related to future litigation.54 Like IPValue in Xerox,
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`the Sony, Nokia and MPEG entities receive a percentage of the recovery from any
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`successful enforcement by MMI of the transferred patents confirming their common
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`interest in MMI prevailing in the present litigation.55
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`Apple’s argument that Sony and Nokia waited six months to execute a common
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`50 D.I. 352, Ex. 1 at 2.
`51 Id. at 1.
`52 Xerox Corp. v. Google, Inc., 801 F. Supp. 2d 293, 304 (D. Del. 2011).
`53 719 F. Supp. 2d 373, 376 (D. Del. 2010).
`54 801 F. Supp. 2d at 303.
`55 Id. at 304.
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`interest agreement also fails and ignores when the exchanges occurred, non-disclosure
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`agreements had been executed. As noted in Rembrandt Technolgies v. Harris Corp.,
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`“[a] confidentiality agreement underlying a common interest claim need not be in writing;
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`an ‘oral agreement . . . later memorialized in writing’ . . . can provide the platform upon
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`which the common interest can rest.”56 Further, in Xerox, no written common interest
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`agreement was executed between the parties:57 rather because the communications
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`involved parties and their attorneys allied in a common legal cause, the protection
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`existed because the exchange of privileged information would not have occurred except
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`to accomplish that objective.58
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`Finally, despite Apple’s protestations to the contrary, the request for further
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`discovery comes too late. Although Apple detailed the various “meet and confers” since
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`December 2011, that process began very late in the litigation, after the close of
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`discovery. The issue of Nokia’s production has been brewing as early as July 2011,
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`when objections to Apple’s discovery were lodged.59 As noted by Judge Robinson in
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`Stambler v. RSA Security, “[i]n every trial there comes a time when discovery must be
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`closed for the issues to be resolved through summary judgment or trial. In the case at
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`bar, that time has long since passed.”60
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`Therefore, Apple’s motion for further discovery from Nokia is denied.
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`56 C.A. No. 07C-09-059-JRS, 2009 WL 402332, at *7 (Del. Super. Feb. 12, 2009),
`quoting American Legacy Found. v. Lorrilard Tobacco Co., C.A. No. 19406-VC Lamb,
`2004 WL 2521289, at *3 (Del. Chan. Nov. 3, 2004).
`57 Xerox Corp. v. Google, Inc., C.A. No. 10-136-LPS, D.I. 216 n.1.
`58 Xerox, 801 F. Supp. 2d at 304.
`59 Apple does not refute the objections were filed; it argues it did not fully
`understand the reasoning for them.
`60 212 F.R.D. 470, 472 (D. Del. 2003).
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`Consistent with th