Case 1:14-cv-02396-PGG-SN Document 191 Filed 11/01/19 Page 1 of 6
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`Andrew Trask
`202-434-5023
`atrask@wc com 
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`Filed Via ECF
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`Hon. Paul G. Gardephe
`United States District Court
`Southern District of New York
`40 Foley Square, Room 2204
`New York, New York 10007
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`Re:
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`November 1, 2019
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`Network-1 Technologies, LLC v. Google LLC, et al., Nos. 1:14-cv-2396-PGG-SN
`& 1:14-cv-9558-PGG-SN (S.D.N.Y.)
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`Dear Judge Gardephe:
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`Pursuant to Local Civil Rule 37.2 and Paragraph 4(E) of the Court’s Individual Rules of Practice
`(Civil Cases), the parties respectfully submit this joint letter concerning a dispute between
`Defendants Google LLC and YouTube, LLC (together, “Google”) and third party Amster
`Rothstein & Ebenstein LLP (“ARE”) regarding documents ARE is withholding as privileged.
`The parties exchanged letters and met and conferred regarding this matter for approximately 45
`minutes on Friday, October 4, 2019. The attorneys involved were Andrew Trask and Melissa
`Collins for Google and Jacob Buczko and Amy Hayden for Network-1 and ARE.
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`I. Google’s Position: ARE Should Produce Documents That Are Not Privileged or Work
`Product Because They Are Business Communications Involving Third Parties.
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`Pursuant to Federal Rule of Civil Procedure 37, Google moves to compel the production of
`ARE’s non-privileged communications with Network-1 and Mr. Marc Lucier—two entities in
`commercial negotiations with ARE’s client. Throughout the negotiation and sale of the patents
`asserted in this litigation, ARE represented Dr. Ingemar Cox, the named inventor of the patents-
`in-suit. ARE did not represent Network-1, the purchaser of the patents, at that time. ARE also
`did not represent Mr. Lucier, a non-attorney assisting in the sale of the portfolio. Only after the
`sale of the patents did Network-1 hire ARE, which today is co-counsel for Network-1 and is
`represented by the same law firm as Network-1 in this subpoena dispute. Nevertheless, ARE has
`resisted the production of pre-sale communications at every turn—and has repeatedly shifted its
`rationale for doing so. ARE failed to produce a single document in its initial response to
`Google’s subpoena, and it refused to provide a privilege log until Google indicated that it would
`raise the issue to this Court. That original log, moreover, claimed that every single pre-sale
`communication with Network-1 and Mr. Lucier—regardless of subject matter—was privileged
`and protected from disclosure under the common interest doctrine. Only in response to Google’s
`repeated objections and the prospect of Court intervention did ARE produce any of its
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`Case 1:14-cv-02396-PGG-SN Document 191 Filed 11/01/19 Page 2 of 6
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`communications with Network-1 and Mr. Lucier—communications which, as described below,
`confirm that ARE has been applying legally incorrect notions of privilege for months.
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`ARE continues to withhold 305 pre-sale communications with Network-1, Network-1’s counsel,
`and/or Mr. Lucier, claiming that they need not be disclosed because all parties had a common
`interest in enforcing the patents. See Ex. A (challenged log entries); Ex. B at 2.1 ARE also
`claims that, even absent a common legal interest, all but seven of the communications are
`protected as “work product,” applying this argument to 198 documents that were not designated
`work product in ARE’s original log. ARE’s claim is dubious: the relevant parties were not
`jointly litigating or otherwise enforcing Dr. Cox’s patents—they were negotiating a sale, a
`quintessential business activity. Communications in the course of that sale may bear on relevant
`issues including the value and validity of the patents.
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`The common interest doctrine is not a privilege in and of itself, but rather a narrow exception to
`the general rule that disclosing otherwise-privileged communications to third parties waives the
`attorney-client privilege. See Bank of Am., N.A. v. Terra Nova Ins. Co., 211 F. Supp. 2d 493,
`496 (S.D.N.Y. 2002). Parties claiming protection under the doctrine must show (1) that the
`parties share an identical legal interest, see id.; and (2) that the specific communications at issue
`“were made in the course of formulating a common legal strategy,” Microsoft Corp. v. Acacia
`Research Corp., 2014 WL 6450254, at *1 (S.D.N.Y. Nov. 17, 2014). The prospective purchaser
`of a patent does not have an identical legal interest to its seller, and the parties are not
`formulating a common legal strategy when negotiating a sale. See id. (no common interest
`between patent seller and purchaser). The doctrine “does not apply where the third party’s
`interest does not appear to be that of a potential co-[party] in a possible ... action ... but rather [is]
`that of an adverse [party], negotiating at arm’s length a business transaction.” Net2Phone, Inc. v.
`Ebay, Inc., 2008 WL 8183817, at *7 (D.N.J. June 26, 2008) (all but first alteration in original)
`(quotation marks omitted); see also Nidec Corp. v. Victor Co. of Japan, 249 F.R.D. 575, 580
`(N.D. Cal. 2007); RKF Retail Holdings, LLC v. Tropicana Las Vegas, Inc., 2017 WL 2292818,
`at *3 (D. Nev. May 25, 2017). Similar commercial interests are not sufficient. See Microsoft,
`2014 WL 6450254, at *2 (royalty “entitlements are commercial in nature and do not constitute a
`legal interest”); Net2Phone, 2008 WL 8183817, at *8 (a shared “interest in commercial success .
`. . is not a legal interest”).2
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`None of ARE’s pre-sale communications with Network-1 and Mr. Lucier qualify for protection
`under the common interest doctrine because ARE and Network-1 did not have identical interests
`and were not formulating a common legal strategy. The relevant communications occurred
`while Dr. Cox and Network-1 were on opposite sides of a negotiation over the sale of the
`portfolio. Instead of sharing an identical legal interest in enforcement, the parties were
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`1 Throughout this dispute, Google has made clear that it is challenging ARE’s decision to
`withhold any of its pre-sale communications with Network-1 and/or Mr. Lucier; communications
`about the deal’s commercial terms were one example subset of such documents.
`2 The primary case on which ARE relies, In re Regents of University of California, says no
`different. The privilege in that out-of-Circuit case was limited to patent prosecution
`communications between a licensor and licensee, not wide-ranging communications with an
`arms-length prospective purchaser having no legal interest in the patents at the time of the
`communications. See 101 F.3d 1386, 1390 (Fed. Cir. 1996).
`2
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`Case 1:14-cv-02396-PGG-SN Document 191 Filed 11/01/19 Page 3 of 6
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`negotiating to transfer an interest from Dr. Cox to Network-1. See Microsoft, 2014 WL
`6450254, at *2. And Mr. Lucier has never had a legal interest in enforcing the patents, only a
`commercial interest in selling and licensing them.3
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`Nor does the work product doctrine justify ARE’s withholding. The doctrine protects only
`documents prepared because of litigation; it does not protect “documents that are prepared in the
`ordinary course of business or that would have been created in essentially similar form
`irrespective of the litigation.” United States v. Adlman, 134 F.3d 1194, 1202 (2d Cir. 1998).
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`ARE’s corporate designee testified that he was not aware of any litigation contemplated by
`Network-1 and Dr. Cox prior to the sale. Ex. C at 142:22-143:4. Consistent with this, none of
`the documents at issue was described in the original log as involving or anticipating litigation;
`indeed, ARE did not initially claim that 198 of them were work product at all. ARE added the
`“work product” and “litigation” descriptors to these documents only after Google challenged the
`grounds for withholding them, yet ARE’s log still acknowledges that the documents are about
`the “sale of patents.” Ex. A. Even if, contrary to ARE’s testimony, Dr. Cox or Network-1
`contemplated potential future litigation at the time of their negotiations, ARE’s withholding
`appears vastly overbroad. ARE is claiming work product protection over 305 emails involving
`third parties, including 94 composed by non-attorneys. All of those emails were sent at least a
`year prior to filing this lawsuit; 198 of them were not initially identified by ARE as “work
`product”; and even now, ARE’s log identifies the supposed litigation underlying the work
`product claim for only 63 of them. Even after two amendments, the log’s generic descriptions
`suggest at most that the patents were sold while the parties allegedly anticipated litigation; they
`provide no basis to infer that a particular communication was prepared because of litigation and
`would not have been created otherwise—i.e., the characteristics of a proper work product claim.
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`The documents that ARE eventually did produce confirm ARE’s persistent misunderstanding of
`the common interest and work product doctrines. For example, ARE twice withheld commercial
`negotiations (e.g., Ex. D), ministerial communications (e.g., Ex. E), and duplicates of documents
`properly produced (e.g., Ex. F). In withholding those documents, ARE improperly described
`them as about or made in anticipation of “litigation”—i.e., the same descriptions it uses to shield
`the hundreds of communications described above. Google respectfully requests that the Court
`order ARE to produce all logged communications with Network-1 and/or Mr. Lucier, or, in the
`alternative, conduct an in camera review to determine to what extent, if any, the withheld
`communications are protected by attorney-client privilege or as work product.4
`II. ARE’s Position: Google’s Letter is Moot Because ARE Produced the Negotiation
`Documents Identified by Google as Relevant and, in Any Event, Google’s Additional
`Challenged Documents Are Privileged and Protected Work Product.
`Google presents moot issues to the Court. During the meet and confer process, which
`limited Google’s overbroad subpoena on ARE, Google identified only negotiations regarding
`transfer of the patents-in-suit as purportedly relevant nonprivileged documents that ARE should
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`3 The non-disclosure agreements on which ARE relies make clear that the purported common
`interest was not a legal one, but rather entailed “exploring business opportunities.” Ex. G; Ex. H.
`4 Upon production, Google seeks testimony about their contents from ARE and the primary
`authors and recipients: Dr. Cox, Mr. Charles Macedo, and Mr. Lucier.
`3
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`Case 1:14-cv-02396-PGG-SN Document 191 Filed 11/01/19 Page 4 of 6
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`produce. To resolve this dispute, ARE produced these documents. Google now shifts its position
`to contend it is also entitled to every document on ARE’s privilege log claiming “common
`interest” protection. But Google never proffered any relevance, let alone proportionality, to
`discovery of these documents, which are privileged and are also protected from discovery by the
`work product doctrine. The Court should decline to hear Google’s vague, non-specific and, in
`any event, moot motion to compel. The Court should similarly decline to undertake Google’s
`requested vast and burdensome in camera review.
`ARE, a non-party and counsel of record to Network-1 in this litigation, objected to the
`undue burden posed by Google’s overbroad subpoena.5 Ex. I. In the months to follow, as the
`parties exchanged letters, ARE continued to seek a proffer of relevance and proportionality from
`Google. Google ignored ARE’s objections and, instead, demanded a voluminous privilege log
`from ARE—a law firm—and threatened to involve the Court if ARE did not comply. To avoid
`burdening the Court with a dispute, ARE served a privilege log with over 3000 entries. Google
`thereafter challenged ARE’s privilege log entries that claimed “common interest” protection.
`ARE responded and reiterated ARE’s objections of overbreadth and undue burden (that Google
`failed to ever address) and addressed Google’s positions regarding privilege. Ex. B at 1. ARE
`made clear, to avoid wasteful academic discussions of privilege, it needed a proffer of relevance
`first if Google had remaining issues regarding privilege. Ex. B at 3.
`On October 4, the parties met and conferred. Google informed ARE for the first time that
`it contends negotiations between Cox and Network-1 for transfer of a patent portfolio (that
`included the patents-in-suit) were relevant to damages and, in Google’s view, not privileged.
`Google did not explain how these negotiations were purportedly relevant to damages, let alone
`proportional discovery. But in another effort to avoid burdening the Court, ARE produced all
`documents that can fairly be characterized as negotiations between Cox and Network-1. This
`production totaled over 160 documents and included emails concerning terms and draft contracts
`and term sheets. Aside from the negotiation documents, Google, even to this day, has provided
`no other identification of the other purportedly relevant documents it seeks.
`But Google refuses to drop its dispute and now improperly expands the scope of its
`demands after ARE satisfied its prior demands. Google now seeks every single document on
`ARE’s privilege log that claims protection under the common interest doctrine. These documents
`mostly concern legal strategy related to this litigation and many do not copy Network-1 at all.
`They involve identically shared legal interests under the common interest doctrine and, in any
`event, are protected by the work product doctrine.
`First, ARE properly asserts privilege under the common interest doctrine for these
`documents. Google’s only argument that the common interest doctrine should not apply is to
`note that Dr. Cox and Network-1 negotiated some commercial terms related to transfer of title to
`patents-in-suit. But explained above, ARE already produced negotiations of contract terms. The
`remaining documents Google now seeks relate to identically shared legal interests such as
`strategy for this litigation (including drafting claims), clearing title to the patents-in-suit in
`advance of litigation, and/or are confidential attorney-client communications not involving
`Network-1. Dr. Cox (with his retained consultant Mr. Lucier) and Network-1 partnered from the
`outset to cooperate in asserting the patents-in-suit against Google/YouTube. Dr. Cox (the
`inventor of the patents-in-suit) identified Google/YouTube as a litigation target as early as 2010.
`See, e.g., Ex. J at Entry 639. To help pursue a partner in enforcement, Dr. Cox, counseled and
`guided by ARE, hired Mr. Lucier as a consultant in June/July 2011. Mr. Lucier signed a common
`interest agreement with Dr. Cox in June 2011. Then, shortly thereafter, Dr. Cox, through Mr.
`Lucier, reached out to Network-1 to partner in asserting Dr. Cox’s patents against
`Google/YouTube. Dr. Cox, Mr. Lucier and Network-1 signed a collective common interest
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`5 Google’s portion of this letter incorrectly states that ARE initially produced no documents.
`ARE provided documents to Network-1, which it produced, and ARE informed Google of this.
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`Case 1:14-cv-02396-PGG-SN Document 191 Filed 11/01/19 Page 5 of 6
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`agreement in July 2011. In October 2011, Dr. Cox and Network-1 signed a term sheet regarding
`assignment of the patents-in-suit, which required Dr. Cox to assist Network-1 in infringement
`investigations and patent prosecution going forward. (See Ex. K, binding “Cooperation” clause.)
`Dr. Cox continues to be a consultant for Network-1 to this day and owns shares in Network-1.
`(See, e.g., Ex. D, point 3 re: “assist[ing] with the assertion, litigation…”) Network-1 even paid
`Dr. Cox’s ARE legal bills and Dr. Cox, Network-1 and Mr. Lucier all hold a financial interest in
`the outcome of this lawsuit . These circumstances all confirm that the legal interests noted above
`are identical among the three parties. Thus, application of the common interest doctrine is
`proper. In re Regents of Univ. of California, 101 F.3d 1386, 1390 (Fed. Cir. 1996)(exclusive
`licensee/optionee and patent holder share a common legal interest in patent prosecution and
`prospective litigation); SCM Corp. v. Xerox Corp., 70 F.R.D. 508, 514 (D. Conn. 1976)
`(common interest exists where “legal advice was focused on pending litigation or on developing
`a patent program that would afford maximum protection”); Intellectual Ventures I LLC v. Altera
`Corp., No. CV 10-1065-LPS, 2013 WL 12322005, at *3-5 (D. Del. July 25, 2013); Crane Sec.
`Techs., Inc. v. Rolling Optics, AB, 230 F. Supp. 3d 10, 20 (D. Mass. 2017).
`Google principally relies on the Microsoft case to argue the common interest doctrine
`should not apply. But in Microsoft, the documents at issue were the buyer’s due diligence it
`performed on its own to assess its option to purchase a patent, which it later shared. Here, the
`documents that purportedly remain at issue include litigation/prosecution strategy performed
`with Dr. Cox (or noted above were never shared with Network-1). Google’s attempt to
`distinguish the more closely analogous In re Regents of Univ. of California case fails. In that
`case the Federal Circuit held, relying on precedent in this Circuit, that a mere optionee-licensee
`held a common interest with a patent owner to procure strong patent rights and address potential
`litigation. An actual purchaser, as opposed to an optionee, would have an even stronger identity
`of interest with a patent holder/inventor, particularly here where both parties agreed
`prospectively to work together.
`In any event, the documents Google now seeks are all separately protected by the work
`product doctrine. These documents were prepared by, in conjunction with, or at the direction of
`counsel “in anticipation of litigation” and “with an eye toward litigation” and thus are protected
`from discovery. Stix Prod., Inc. v. United Merchants & Mfrs., Inc., 47 F.R.D. 334, 337 (S.D.N.Y.
`1969); Application of Minebea Co., Ltd., 143 F.R.D. 494, 499 (S.D.N.Y. 1992). Noted above and
`on ARE’s privilege log, the parties were anticipating litigation with YouTube (and others) since
`at least 2010/2011.6 Google relies on the US v. Adlam case, which holds that a “document
`created because of anticipated litigation” that “would not have been prepared in a substantially
`similar form but for the prospect of litigation” is protected work product, even in the context of a
`commercial transaction. 134 F.3d at 1195. Here, the entire purpose of the relationship between
`Dr. Cox, Mr. Lucier and Network-1 was to enforce and assert Dr. Cox’s patents in litigation. The
`documents would have never been created if not for that (ultimately realized) prospect of
`litigation. Google’s cited case thus confirms work product protection for all challenged
`documents7. Moreover, Dr. Cox and Mr. Lucier were retained consultants, providing advice
`anticipating and culminating in this litigation against Google/YouTube. See Exhibit D, point 3
`re: “assist[ing] with the assertion, litigation…”; Ex. K. Such work in anticipation of litigation
`involving consultants is protected not only by caselaw, but also expressly by Fed. R. Civ. Pro.
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`6 Google argues a deposition excerpt suggests the parties were not anticipating litigation. But the
`ARE attorney (who is on only a handful of the 305 challenged entries) never stated there was no
`prospect of litigation with Google/YouTube. He was testifying about a conflicts waiver between
`Network-1 and Dr. Cox and confirmed there was no “specifically contemplat[ed] litigation”
`between Network-1 and Dr. Cox at that time (hence the conflicts waiver). Ex. C at 143:5-10.
`7 Google does not argue work product waiver (which differs from attorney-client privilege
`waiver), Waiver of work product protection occurs only when “disclosure is inconsistent with
`maintaining secrecy from possible adversaries.” Stix Prod., 47 F.R.D. at 338. 
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`Case 1:14-cv-02396-PGG-SN Document 191 Filed 11/01/19 Page 6 of 6
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`26(b)(3)(A). (“[A] party may not discover documents and tangible things that are prepared in
`anticipation of litigation or for trial by or for another party or its representative (including the
`other party's attorney, consultant…”).
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`Dated: November 1, 2019
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`Respectfully submitted,
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`RUSS, AUGUST & KABAT
`BY: s/ Marc A. Fenster
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`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)
`Jacob R. Buczko (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
`jbuczko@raklaw.com
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`Attorneys for Amster Rothstein &
`Ebenstein, LLP
`
`WILLIAMS & CONNOLLY LLP
`BY: s/ Andrew V. Trask
`
`Samuel Bryant Davidoff
`Andrew V. Trask
`Melissa B. Collins (pro hac vice)
`650 Fifth Avenue, Suite 1500
`New York, NY 10022
`212-688-9224
`sdavidoff@wc.com
`atrask@wc.com
`mcollins@wc.com
`
`Kevin Hardy (pro hac vice)
`Graham W. Safty (pro hac vice)
`Sumeet P. Dang (pro hac vice)
`725 Twelfth St., N.W.
`Washington, D.C. 20005
`Phone: (202) 434-5000
`Fax: (202) 434-5029
`khardy@wc.com
`gsafty@wc.com
`sdang@wc.com
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`Attorneys for Google LLC and
`YouTube, LLC
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