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`Case 1:14-cv-02396-PGG-MHD Document 180 Filed 10/11/19 Page 1 of 6
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`3 Embarcadero Center, 26th Floor, San Francisco, CA 94111 g p415 986-2800 g f415 986-2827
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`FILED VIA ECF
`
`October 11, 2019
`
`Hon. Paul Gardephe
`U.S. District Court, Southern District of New York
`40 Foley Square, Room 2204
`New York, New York 10007
`
`Re: Network-1 Technologies, Inc. v. Google LLC and YouTube, LLC, Case Nos. 14-cv-
`2396 & 14-cv-9558
`
`Dear Judge Gardephe:
`
`Pursuant to Local Civil Rule 37.2 and Paragraph 4(E) of the Court’s Individual Rules of Practice
`(Civil Cases), non-party Audible Magic Corporation (“Audible Magic”) submits this joint letter
`concerning a dispute with Plaintiff Network-1 Technologies, Inc. (“Network-1”). The parties met
`and conferred via teleconference on October 7, 2019. The attorneys involved were Kayvan
`Ghaffari and Josh Rychlinski on behalf of non- party Audible Magic, Paul Kroeger and Amy
`Hayden on behalf of Network-1, and Sumeet Dang on behalf of Defendants.
`1. Audible Magic’s Position
`
`Background: Audible Magic not a party to this litigation. It is in the business of content
`recognition. Audible Magic’s proprietary software is able to ingest media, such as music or
`video, generate fingerprints for such media, and compare those fingerprints to a database of
`fingerprints associated with known copyrighted works in order to identify the music or video.
`Defendants Google LLC and YouTube LLC (“Google”) are asserting Audible Magic’s prior art
`systems, including a product called “Clango,” as prior art to Network-1’s patents at issue. Both
`parties served subpoenas upon Audible Magic in May/June 2019. In response to those subpoenas
`Audible Magic produced roughly 2 million pages of documents regarding its prior art systems
`and technology. The production covered, inter alia: development of content similarity and
`recognition technology from 1993 onward, as well as the product launch of Clango in the
`summer of 2000, and the highly confidential source code underlying this product. In addition,
`Audible Magic produced two key witnesses for deposition: Mr. Erling Wold, Audible Magic’s
`chief scientist, and James B. Schrempp, co-founder of Audible Magic. Now, Network-1 has
`propounded additional duplicative document requests,1 served deposition and document
`subpoenas on Audible Magic’s patent prosecution attorneys, served a deposition subpoena to
`Audible Magic’s outside litigation counsel in this matter, and served a deposition subpoena to an
`Audible Magic witness it deposed one month ago.
`Argument: Network-1 is abusing Federal Rule of Civil Procedure Rule 45 by harassing non-
`party Audible Magic and its counsel with further discovery. Network-1 already propounded
`substantial discovery requests months ago regarding Audible Magic’s prior art systems.
`Concerned by Audible Magic’s prior art, Network-1 has resorted to the age old failed tactic of
`
`1 Audible Magic also objected to Network-1’s requests based on the attorney-client privilege.
`
`

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`Case 1:14-cv-02396-PGG-MHD Document 180 Filed 10/11/19 Page 2 of 6
`Hon. Paul Gardephe
`October 11, 2019
`Page 2
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`bullying. Courts must “quash or modify a subpoena if it … requires disclosure of privileged or
`other protected matter, if no exception or waiver applies … [or] subjects [the] person to undue
`burden.” Fed.R.Civ.P. 45(d)(3)(A)(iii)-(iv). Courts have broad discretion to determine whether a
`subpoena imposes an undue burden. See, e.g., In re Subpoena Issued to Dennis Friedman, 350
`F.3d 65, 68–70 (2d Cir.2003) (“judges may prevent [a] proposed deposition when the facts and
`circumstances are such that it creates an inappropriate burden.”). Courts are authorized to
`“impose upon the party or attorney in breach of [Rule 45] an appropriate sanction, which may
`include … reasonable attorney's fee.” See Fed.R.Civ.P. 45(d)(1); see Molefi v. Qppenheimer
`Trust, 2007 U.S. Dist. LEXIS 10554, at *6–8 (E.D.N.Y. Feb. 15, 2007) (awarding sanctions).
`Subpoenaing Attorneys Requires Disclosure of Privileged Communications and Imposes an
`Undue Burden: Because Audible Magic’s prior art may invalidate Network-1’s patents,
`Network-1 has now embarked on a campaign to intimidate and harass Audible Magic, apparently
`in the hope that this will somehow reduce the likelihood that damaging prior art evidence
`emerges in this case. Indeed, with no basis whatsoever, Network-1 has subpoenaed Audible
`Magic’s outside counsel responsible for prosecuting its patents over the past 20 years2 and its
`current outside counsel in this litigation. Depositions of counsel, including non-“trial” counsel,
`are disfavored. Gropper v. David Ellis Real Estate, L.P., 2014 WL 904483, at *1 (S.D.N.Y.
`Mar. 4, 2014). “[D]epositions of counsel, even if limited to relevant and non-privileged
`information, are likely to have a disruptive effect on the attorney-client relationship and on the
`litigation of the case.” United States Fidelity & Guaranty Co. v. Braspetro Oil Services Co.,
`2000 WL 1253262, at *2 (S.D.N.Y. Sept. 1, 2000).
`Network-1’s subpoenas would require disclosure of privileged communications, regardless of its
`conclusory statements that it does not seek any privileged communications. Network-1
`subpoenaed Mr. William Wilbar and Mr. Timothy Brisson. Wilbar and Brisson are attorneys
`retained by Audible Magic to prosecute its patents. Their confidential communications with
`Audible Magic are privileged. See Hydraflow, Inc. v. Enidine Inc., 145 F.R.D. 626, 631
`(W.D.N.Y. 1993) (confidential communications between client and patent attorney are protected
`by attorney-client privilege). Any relevant, non-privileged information about those prior art
`patents is available in the public patent and prosecution history itself. Network-1 argues it is
`entitled to depose Wilbar and Brisson because they were involved in Audible Magic’s patent
`prosecution 20 years ago. However, Wilbar and Brisson do not recall any information—
`privileged or otherwise—about the events that transpired nearly 20 years ago.3 Disregarding this,
`Network-1 is forcing counsel into a deposition concerning matters they do not recall. Moreover,
`any non-privileged information they could provide would be duplicative of the patent
`prosecution history that Audible Magic already produced (and is availably publicly). See id; see
`also Resqnet.Com, Inc. v. Lansa, Inc., 2004 WL 1627170, at *6 (S.D.N.Y. July 21, 2004)
`(quashing deposition subpoena of attorney as duplicative of other discovery and given “not
`
`2 In an attempt to invade the attorney-client privilege, Network-1 did not notify Audible Magic of the subpoenas.
`Indeed, Network-1’s counsel was surprised to learn Audible Magic was aware of them, mentioning that Network-1
`was not required to inform Audible Magic of the subpoenas. Audible Magic holds the privilege to confidential
`communications it had with its patent attorneys. In re von Bulow, 828 F.2d 94, 100 (2d Cir. 1987) (attorney-
`client privilege “belongs solely to the client”). It is unacceptable to avoid disclosing this subpoena to Audible
`Magic—the client—and removing the chance to protect against any disclosure of privileged information.
`3To avoid burdening non-party witnesses with unnecessary depositions, Audible Magic proposes having Wilbar and
`Brisson submit declarations stating they do not recall facts from the prosecution of certain patents 20 years ago.
`
`
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`

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`Case 1:14-cv-02396-PGG-MHD Document 180 Filed 10/11/19 Page 3 of 6
`Hon. Paul Gardephe
`October 11, 2019
`Page 3
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`negligible” issues of privilege and work product). The attempt to threaten Audible Magic’s
`privileged communications with its patent attorneys is irrelevant and harassment.
`Network-1 then subpoenaed Mr. Gabriel Ramsey, Audible Magic’s outside counsel in this
`litigation. In that capacity, Mr. Ramsey has rendered legal services to Audible Magic in
`responding to prior subpoenas in this action. A straightforward application of the attorney-client
`privilege and work product doctrine should preclude a deposition and protect communications
`sought under Network-1’s subpoena. Zubulake v. US Warburg LLC, 382 F. Supp. 2d 536, 549
`(S.D.N.Y. 2005) (quashing subpoena for attorney deposition due to “risk that privileged
`communications could be probed”). Network-1 argues without any proof there is some
`coordination between Mr. Ramsey and Google because “Audible Magic’s counsel has gone as
`far as insisting that Network-1 include defense counsel on all communications with them.” As a
`neutral non-party, Audible Magic has no reason to exclude any party to the litigation in
`discovery disputes.4 Indeed, Audible Magic considers it prudent to include all parties to facilitate
`streamlined discovery and avoid any confusion – something Network-1 is unfamiliar with. See
`supra at 2, fn. 2. There is nothing nefarious about including all parties on discovery disputes.
`Further, this sort of “coordination” is irrelevant to the pending litigation and does not warrant
`deposing an attorney. Second, and more importantly, Audible Magic’s and its counsel’s views on
`the validity of the Network-1 patent are irrelevant to this litigation. Discovery into these topics
`does not warrant deposing an attorney. See id; Fed.R.Civ.P. 45(d)(3)(iii).
`Subpoenaing Mr. Wold Imposes an Undue Burden Because Network-1 Deposed Mr. Wold
`Weeks Ago: Network-1 seeks additional testimony from Mr. Erling Wold, the same witness
`Network-1 deposed on September 4, 2019. Network-1 has not offered any basis to reopen Mr.
`Wold’s deposition—because there is none—one month later as Audible Magic has not produced
`a single document since Mr. Wold’s deposition and Network-1 had a full opportunity to explore
`Mr. Wold’s personal knowledge at his deposition.5 It chose not to. In other words, the factual
`scenario existing now is the same as when it completed its deposition of Mr. Wold roughly one
`month ago. Network-1’s opportunity to seek additional testimony from non-party Mr. Wold has
`come and gone. See Eisemann v. Greene, 1998 WL 164821 (S.D.N.Y. April 8, 1998) (quashing
`subpoena as burdensome “in light of the doubtful and tangential relevance … of anything that
`could reasonably be expected to emerge from the putative [non-party] deposition”).
`Conclusion: Network-1 has not advanced any theory of why it is entitled to privileged
`communication of a non-party or why it seeks duplicative discovery so late in litigation. Rather,
`it is clear that Network-1 did not like the damaging information Audible Magic produced. Now,
`Network-1 is threatening Audible Magic’s privileged relationships with counsel, imposing
`immense burden and otherwise punishing Audible Magic for providing a full and complete
`response to the subpoenas to date. This is a breathtaking abuse of Rule 45. The Court should put
`an end to Network-1’s blatant abuse and award Audible Magic attorney’s fees for this motion.
`
`
`4Audible Magic is perplexed by Network-1’s concern that all parties to the litigation be involved with the discovery
`dispute. It begs the question, why wouldn’t Network-1 want all parties involved? What are they afraid of?
`5While Network-1 noticed a corporate deposition, Network-1 learned during deposition that Mr. Wold was also
`appearing in his personal capacity.
`
`
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`

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`Case 1:14-cv-02396-PGG-MHD Document 180 Filed 10/11/19 Page 4 of 6
`Hon. Paul Gardephe
`October 11, 2019
`Page 4
`2. Network-1’s Position
`Audible Magic Lacks Standing to Move to Quash These Subpoenas. Non-party Audible Magic
`seeks to quash the deposition subpoenas of four non-party individuals. Audible Magic lacks
`standing to do so. See Chevron Corp. v. Donziger, 325 F. Supp. 3d 371, 386-87 (S.D.N.Y. 2018)
`(“In the absence of a claim of privilege a party usually does not have standing to object to a
`subpoena directed to a non-party witness. A party’s general desire to thwart disclosure of
`information by a non-party is simply not an interest sufficient to create standing.”). To the extent
`Audible Magic is asserting any privilege over the discovery Network-1 seeks, Network-1 has no
`intention of obtaining privileged communications and information. Each of these depositions is
`likely to unearth non-privileged information relevant to whether the alleged prior art system
`known as “Clango” is in fact prior art to the patents-in-suit.
`Subpoena to Mr. Wold. As Audible Magic’s “chief scientist,” Mr. Wold has intimate knowledge
`of Clango—he was instrumental in its development and is also the named inventor on patents
`related to it. On September 4, Audible Magic produced Mr. Wold to testify as its corporate
`designee in response to deposition subpoenas the parties served on Audile Magic. Network-1
`now seeks to depose Mr. Wold in his personal capacity, so that it can explore his personal
`knowledge of Clango. In particular, various technical and release details of multiple versions of
`Clango are critical to evaluating whether Clango is prior art. There is currently documentary and
`testimonial evidence about Clango that appears to be in conflict, and Network-1 needs additional
`discovery to investigate further. Given Mr. Wold’s integral role in developing the system, he
`likely has personal knowledge of information that would provide clarity.
`Audible Magic moves to quash in part because it alleges Mr. Wold testified both as its corporate
`representative and in his personal capacity at the prior deposition. But before Network-1 served
`the subpoena at issue, no party ever served a personal subpoena on Mr. Wold. See Soroff
`Trading Dev. Co. v. GE Fuel Cell Sys., LLC, No. 10-cv-1391, 2013 WL 1286078, at *4
`(S.D.N.Y. Mar. 28, 2013) (“To depose the corporate representative in his own capacity, the
`deposing party must notice the deposition of the corporate representative in his personal
`capacity.”). Moreover, because no notice was given of who the corporate designee would be (at
`least to Network-1), there was no opportunity prior to that deposition for Network-1 to serve a
`personal subpoena on Mr. Wold, or to otherwise prepare to depose him in his personal capacity.
`Subpoenas to Attorneys. Audible Magic makes much of the fact Messrs. Wilbar, Brisson,6 and
`Ramsey are attorneys. But the cases it cites in support of the notion that depositions of attorneys
`are disfavored are inapposite, or support that these depositions should proceed. Gropper,
`Resqnet, and Zubalake involve depositions of trial counsel of parties. And U.S. Fidelity involved
`attorneys who, like here, were not trial counsel. As in that case, these depositions should
`proceed because “none of the attorneys whom [Network-1] seeks to depose are trial counsel in
`this action” and “the information sought is non-privileged.” 2000 WL 1253262, at *2-4.
`Subpoena to Mr. Wilbar. Mr. Wilbar prosecuted at least one of the patents related to Clango,
`including a patent discussed at the Audible Magic deposition (U.S. Patent No. 6,968,337). Mr.
`Wilbar may recall facts relevant to Clango, including facts concerning different versions of
`Clango. See Hydraflow, 145 F.R.D. at 633 (“Although privilege is available to communications
`
`6 Audible Magic asserts that Messrs. Wilbar and Brisson “are attorneys retained by Audible Magic to prosecute its
`patents.” But neither of these attorneys have prosecuted any patents for Audible Magic for many years.
`
`
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`

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`Case 1:14-cv-02396-PGG-MHD Document 180 Filed 10/11/19 Page 5 of 6
`Hon. Paul Gardephe
`October 11, 2019
`Page 5
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`between client and patent counsel, it is also well established that the privilege does not prevent
`disclosure of the facts or information contained in the communication.”). This would help
`elucidate whether or not Clango is prior art to the patents-in-suit.
`Network-1 is surprised that Audible Magic is moving to quash this subpoena. Network-1’s
`counsel Amy Hayden was in contact with Mr. Wilbar, who indicated he would not be
`represented by counsel for the deposition. Ms. Hayden and Mr. Wilbar previously confirmed
`this deposition on a mutually agreeable date. When Ms. Hayden raised this with Audible
`Magic’s counsel Kayvan Ghaffari, he was completely unaware of these prior arrangements,
`despite insisting he had been in contact with Mr. Wilbar. Mr. Ghaffari also asserted Mr. Wilbar
`informed Ms. Hayden by phone that he had no recollection of the patent or technology at issue.
`Not so. Rather, when Ms. Hayden was in contact with him, Mr. Wilbar informed her he recalled
`prosecuting this patent when he worked at Sierra Patent Group.
`Subpoena to Mr. Brisson. Mr. Brisson is the attorney who originally filed the application that
`led to U.S. Patent No. 6,968,337. It appears Messrs. Wilbar and Brisson worked together on this
`application while both were employed at Sierra Patent Group. As with Mr. Wilbar, Mr. Brisson
`may recall certain facts that are relevant to the Clango system, including facts related to
`determining whether or not any version of the Clango system is prior art. See Hydraflow, 145
`F.R.D. at 633. During the meet and confer process, similar to his assertions concerning Mr.
`Wilbar, Mr. Ghaffari asserted Mr. Brisson had told Ms. Hayden by phone that he had no
`recollection of the patent prosecution or technology at issue. However, Ms. Hayden has never
`spoken with Mr. Brisson by phone; Mr. Brisson likewise made no such representation to her in
`any other form of communication. Rather, Mr. Brisson simply informed Ms. Hayden by email
`that someone from Crowell had reached out to him and they would be representing him.
`Subpoena to Mr. Ramsey. Mr. Ramsey, who works at the same firm as Mr. Ghaffari, represents
`Audible Magic in connection with the subpoenas served in this case. To be clear, Network-1
`does not seek his communications with his client or any other privileged information. However,
`there appears to be some level of coordination between Audible Magic and Defendants, as
`Audible Magic has knowledge of case happenings they realistically could only have learned
`from Defendants.7 Audible Magic’s counsel has gone as far as insisting that Network-1 include
`defense counsel on all communications with them, implying this is standard practice, even
`though they have not paid the same courtesy to Network-1. Why and to what extent Defendants
`are involved in this non-party discovery is unclear. Mr. Ramsey presumably has knowledge of
`Defendants’ involvement. In particular, whether Defendants and Audible Magic are
`coordinating case strategy, and whether Defendants are footing the bill for Audible Magic, is
`relevant to, for example, the reliability of the testimony of Audible Magic’s witnesses,
`particularly any that is in conflict with documentary evidence. Audible Magic may not be the
`“neutral non-party” it claims; rather, it may have a motivation to aid Defendants in this case. In
`fact, one of its witnesses testified that it may be interested in rekindling a prior business
`relationship with Defendants. Moreover, recognizing that deposing trial counsel is disfavored,
`rather than serving a subpoena on one of Defendants’ lawyers, Network-1 elected to depose non-
`party Audible Magic’s counsel to explore these issues.
`
`
`7 For example, when pressed to reveal how he had learned of the subpoenas to Messrs. Wilbar and Brisson, Mr.
`Ghaffari stated that he did not recall. But the only way he could have learned of them was from Defendants.
`
`
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`

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`Case 1:14-cv-02396-PGG-MHD Document 180 Filed 10/11/19 Page 6 of 6
`Hon. Paul Gardephe
`October 11, 2019
`Page 6
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`Respectfully submitted,
`
`CROWELL & MORING LLP
`
`RUSS, AUGUST & KABAT
`
`BY: Kayvan M. Ghaffari
`
`Kayvan M. Ghaffari
`3 Embarcadero Center, 26th Floor
`San Francisco, CA 94111
`Phone: 415.986.2800
`Fax: 415.986.2827
`KGhaffari@Crowell.com
`
`Attorney for Non-Party
`Audible Magic Corp.
`
`
`BY: Amy E. Hayden
`
`Marc A. Fenster (pro hac vice)
`Brian D. Ledahl (pro hac vice)
`Adam S. Hoffman (pro hac vice)
`Paul A. Kroeger (pro hac vice)
`Amy E. Hayden (pro hac vice)
`12424 Wilshire Blvd. 12th Floor
`Los Angeles, CA 90025
`Phone: 310.826.7474
`Fax: 310.826.6991
`MFenster@Raklaw.com
`BLedahl@Raklaw.com
`AHoffman@Raklaw.com
`PKroeger@Raklaw.com
`AHayden@Raklaw.com
`
`Charles R. Macedo
`Amster, Rothstein & Ebenstein LLP
`90 Park Avenue
`New York, NY 10016
`Phone: 212.336.8074
`Fax: 212.336.8001
`CMacedo@Arelaw.com
`
`Attorneys for Network-1 Technologies, Inc.
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