Case 1:14-cv-02396-PGG-SN Document 191-2 Filed 11/01/19 Page 1 of 4
`
`Exhibit B
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`Case 1:14-cv-02396-PGG-SN Document 191-2 Filed 11/01/19 Page 2 of 4
`
`
`
`!
`
`12424
`Wilshire Boulevard
`12th Floor
`Los Angeles
`California
`90025
`
`Tel 310.826.7474
`Fax 310.826.6991
`www.raklaw.com
`
`
`
`
`Jacob Buczko
`jbuczko@raklaw.com
`
`
`September 30, 2019
`
`
`Via Email
`
`Andrew Trask
`Williams & Connelly LLP
`725 Twelfth Street, N.W.
`Washington, DC 20005
`atrask@wc.com
`Re: Network-1 Techs., Inc. v. Google LLC et al., Case Nos. 14-cv-2396
`& 14-cv-9558 (S.D.N.Y.)
`
`
`
`Dear Andrew:
`I write in response to your September 12, 2019 letter and today’s email regarding Amster
`Rothstein & Ebenstein LLP’s privilege log.
`First, I want to reiterate ARE’s objections to Google’s overbroad subpoena and Google’s
`accompanying demand for a privilege log. ARE is, of course, a law firm and is trial counsel in
`this case. Requiring a privilege log based on overbroad document requests in these
`circumstances is unduly burdensome and not proportional to the needs of this case. See Local
`Civil Rule 26.2 (Committee Notes); Dkt. 3 at ¶ 2(D). I note that in your entire September 12
`letter, you did not once explain any purported relevance of documents sought by Google.
`Notwithstanding, to move forward and avoid burdening the Court with privilege log
`disputes, ARE served an Amended Privilege Log the previous business day. ARE also produced
`a number of documents it previously withheld as privileged. Every log entry Google raised in its
`letter were either produced or amended. The Amended Log includes the same reference
`numbers as the previous log, so Google should easily be able to discern how ARE addressed
`Google’s issues.
`To address Google’s issues:
`1. Communications regarding “marketing and sale:” We disagree with Google’s position
`that the topic of “marketing and sale” cannot include legal advice or be made in
`anticipation of litigation. See, e.g., Intellectual Ventures I LLC v. Altera Corp., No.
`CV 10-1065-LPS, 2013 WL 12322005, at *3 (D. Del. July 25, 2013) (“patent valuation,
`while in this instance tied to business decisions of patent acquisition, may be
`intertwined with legal analysis, including considerations of claim scope, validity, and
`licensing power”). We have reviewed again the specific entries identified by Google
`(fns. 1 and 2 of 9/12 letter). The Amended Privilege Log clarifies that Google’s listed
`entries involve legal advice and/or were made in anticipation of litigation. We note,
`e.g., Amended Log Ref IDs 2-8, 639, 1008-1009, 1037-1038, 1079-1080, and 1138-
`1139, which show continuous anticipation of litigation going back to 2006.
`
`
`

`

`Case 1:14-cv-02396-PGG-SN Document 191-2 Filed 11/01/19 Page 3 of 4
`
`!
`
`Andrew Trask
`September 30, 2019
`Page 2
`
`Regarding entries protected under the Common Interest doctrine, it is well established
`in the law that patent licensing and enforcement can be a basis for a common legal
`interest. See Intellectual Ventures, 2013 WL 12322005, at *5. It is clear from the
`common interest agreements already produced and the documents produced with the
`Amended Privilege Log that ARE, Dr. Cox, Intangible Edge/Mr. Lucier, and Network-
`1/Mssrs. Horowitz and Greene all shared a common interest in regard to enforcement
`of the portfolio, which includes licensing and litigation. In addition, the Common
`Interest doctrine also applies patent prosecution activities where the parties, like the
`parties here, all shared an interest in obtaining strong and enforceable patents. In re
`Regents of Univ. of California, 101 F.3d 1386, 1390 (Fed. Cir. 1996); Crane Sec.
`Techs., Inc. v. Rolling Optics, AB, 230 F. Supp. 3d 10, 20 (D. Mass. 2017)(the
`“[common] interest that potential licensees and patent owners have in successfully
`prosecuting patent applications” is “widely recognized in the law.”) That said, ARE is
`producing a number of documents previously withheld, including a few documents
`related to potential pursuits aside from litigation and licensing.
`2. Work product generally: You assert “we are aware of no basis for the assertion of the
`work-product doctrine at any point prior to sale of the Cox patent portfolio in February
`2013.” Described above, ARE and its client considered infringement and enforcement
`of the Cox portfolio as early as 2006 and continuously until this case was filed. For
`2013, and beyond, Mr. Halpern confirmed, for example, that in 2013, when ownership
`of the patents changed to Network-1, a conflict waiver contemplated “enforcement” of
`the portfolio, which includes litigation and licensing. See Halpern Tr. at 141:18-
`142:21. Your letter misunderstands Mr. Halpern’s testimony that at the time of the
`waiver, “the parties weren’t specifically contemplating litigation … with respect to the
`Cox patent portfolio.” Id. at 142:22-143:4. The conflicts waiver was an agreement
`amongst ARE’s clients, and Mr. Halpern confirmed that the parties to the waiver were
`not contemplating litigation with each other (hence the conflicts waiver). In any event,
`the Amended Log shows ARE was anticipating litigation regarding specific products
`and patents as early as 2006. Work going forward, as designated on the Amended Log,
`was with an eye towards litigation and constituted protected work product. See
`Application of Minebea Co., Ltd., 143 F.R.D. 494, 499 (S.D.N.Y. 1992)(“This rule does
`not, however, preclude application of the work-product protection to work performed
`to prosecute a patent application if it was also performed in anticipation of or
`concerning litigation.”)(patent prosecution work performed while litigation was
`anticipated protected by work product doctrine); Stix Prod., Inc. v. United Merchants
`& Mfrs., Inc., 47 F.R.D. 334, 337 (S.D.N.Y. 1969) (documents prepared with
`“litigation in mind” or “with an eye toward” or where “the prospect of litigation is
`identifiable” are protected work product.)
`3. Documents reviewed by ARE’s rule 30(b)(6) witness: Your request for privileged
`documents consulted by Mr. Halpern in preparation for ARE’s Rule 30(b)(6)
`deposition is baseless. Even the case you cite, In re Rivastigmine Patent Litig., 486 F.
`Supp. 2d 241, 243 (S.D.N.Y. 2007) confirms this. For example, the case explains
`Google’s argument that simply reviewing a document in preparation for deposition
`somehow waives privilege is “inconsistent with the advisory committee note indicating
`that Rule 612 does not bar the assertion of privilege with respect to documents used to
`refresh a witness' recollection.” Id. Accordingly, courts have required a separate waiver
`of privilege to warrant production of otherwise privileged documents reviewed by a
`
`

`

`Case 1:14-cv-02396-PGG-SN Document 191-2 Filed 11/01/19 Page 4 of 4
`
`!
`
`Andrew Trask
`September 30, 2019
`Page 3
`
`deponent. Suss v. MSX Int'l Eng'g Servs., Inc., 212 F.R.D. 159, 163–64 (S.D.N.Y.
`2002). Google has failed to argue there was any waiver by Network-1 or any holder of
`privilege, and for good reason, there was none. Therefore the privileged documents
`reviewed by Mr. Halpern need not be produced.
`4. “Vendor” entries 2422-2436: The Amended Log clarifies the descriptions for these
`documents to provide additional information for Google to assess the privileges.
`5. Other matters: The Amended Log provides additional detail for many, if not all, of the
`entries previously described as concerning “background materials for case” and “email
`regarding attorney work product.” In addition, ARE is producing entry 357.
`You will see that the additional documents produced by ARE have little to no relevance
`to the underlying case. What little relevance they may have is not proportional to the burden that
`has already been undertaken by ARE to locate nonprivileged documents in the law firm’s files.
`We trust there are no remaining disputes. We are happy to meet and confer, but it is not
`worthwhile to have general discussions about privilege issues without specific entries in mind.
`So please, in advance of any meeting, identify specific log entries Google still contends should
`be produced. Please also be prepared to explain any purported relevance of the identified entries.
`
`
`Best regards,
`Russ, August & Kabat
`
`/s/ Jacob Buczko
`
`Jacob Buczko
`
`