Case 2:23-cv-00083-RWS-RSP Document 75 Filed 07/08/24 Page 1 of 14 PageID #: 791
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT TEXAS
`MARSHALL DIVISION
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`Case No. 2-23-cv-00083-RWS-RSP
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`JURY TRIAL DEMANDED
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`SLYDE ANALYTICS LLC,
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`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.,
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`
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`Plaintiff,
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`v.
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`Defendants.
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`
`SAMSUNG’S MOTION TO COMPEL PRODUCTION OF
`UNREDACTED COPY OF SLYDE’S PATENT PURCHASE AGREEMENT
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`

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`Case 2:23-cv-00083-RWS-RSP Document 75 Filed 07/08/24 Page 2 of 14 PageID #: 792
`TABLE OF CONTENTS
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`Page
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`PROCEDURAL BACKGROUND .................................................................................... 1 
`LEGAL STANDARD ........................................................................................................ 2 
`ARGUMENT ..................................................................................................................... 2 
`A. 
`The Redacted Portions of the PPA Obfuscate Slyde’s Standing to Sue ................ 2 
`B. 
`Slyde Cannot Justify Its Redactions on the Basis of Privilege .............................. 4 
`The PPA Is Not Protected by Attorney Client
`1. 
`or Common Interest Privilege .................................................................... 4 
`The PPA Is Not Protected by Work Product Protection ............................ 6 
`Slyde Has Waived Privilege By Putting
`the PPA at Issue in the Case ...................................................................... 7 
`CONCLUSION .................................................................................................................. 7 
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`2. 
`3. 
`
`I. 
`II. 
`III. 
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`IV. 
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`- i -
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`Case 2:23-cv-00083-RWS-RSP Document 75 Filed 07/08/24 Page 3 of 14 PageID #: 793
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`TABLE OF AUTHORITIES
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`Page
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`CASES 
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`Cypress Lake Software, Inc. v. Samsung Elecs. Am., Inc.,
`No. 6:18-CV-30-JDK, 2019 WL 6699742 (E.D. Tex. June 26, 2019) ............................... 2, 4, 5
`
`Diamond Coating Techs., LLC v. Hyundai Motor Am.,
`823 F.3d 615 (Fed. Cir. 2016) .................................................................................................... 3
`
`Doe 1 v. Baylor Univ.,
`335 F.R.D. 476 (W.D. Tex. 2020) .............................................................................................. 2
`
`Ferko v. NASCAR,
`219 F.R.D. 396 (E.D. Tex. 2003) ............................................................................................... 6
`
`Grigson v. Farmers Grp., Inc.,
`No. 1:17-CV-00088-LY, 2019 WL 3781439 (W.D. Tex. Aug. 12, 2019) ................................. 7
`
`Headwater Rsch. LLC v. Samsung Elecs. Co.,
`No. 2:22-CV-00422-JRG-RSP, 2024 WL 1808601 (E.D. Tex. Apr. 25, 2024) ......................... 5
`
`Lone Star Silicon Innovations LLC v. Nanya Tech. Corp.,
`925 F.3d 1225 (Fed. Cir. 2019) .................................................................................................. 3
`
`Luraco Health & Beauty, LLC v. Tran,
`No. 4:19-cv-51-SDJ, 2020 WL 2747233 (E.D. Tex. May 27, 2020) ..................................... 2, 3
`
`Monco v. Zoltek Corp.,
`317 F. Supp. 3d 995 (N.D. Ill. 2018) ...................................................................................... 5, 6
`
`Mondis Tech., Ltd. v. LG Elecs., Inc.,
`No. 2:07-CV-565-TJW-CE, 2011 WL 1714304 (E.D. Tex. May 4, 2011) ................................ 5
`
`S.E.C. v. Microtune, Inc.,
`258 F.R.D. 310 (N.D. Tex. 2009) ............................................................................................... 6
`
`SB IP Holdings LLC v. Vivint Smart Home, Inc.,
`No. 4:20-CV-00886, 2022 WL 19977100 (E.D. Tex. Aug. 18, 2022) ................................... 2, 4
`
`U.S. ex rel. Mitchell v. CIT Bank, N.A.,
`No. 4:14-CV-00833, 2021 WL 3190556 (E.D. Tex. July 28, 2021) ...................................... 2, 6
`
`U.S. v. Bilzerian,
`926 F.2d 1285 (2d Cir. 1991) ..................................................................................................... 7
`
`U.S. v. El Paso Co.,
`682 F.2d 530 (5th Cir. 1982) ...................................................................................................... 6
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`-ii-
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`Case 2:23-cv-00083-RWS-RSP Document 75 Filed 07/08/24 Page 4 of 14 PageID #: 794
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`TABLE OF AUTHORITIES
`(Continued)
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`Page
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`Vicor Corp. v. Vigilant Ins. Co.,
`674 F.3d 1 (1st Cir. 2012) ........................................................................................................... 6
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`-iii-
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`Case 2:23-cv-00083-RWS-RSP Document 75 Filed 07/08/24 Page 5 of 14 PageID #: 795
`TABLE OF EXHIBITS
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`Ex
`1
`2
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`Document Description
`Patent Purchase Agreement (redacted by Slyde)
`Slyde’s Privilege Log
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`-iv-
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`Case 2:23-cv-00083-RWS-RSP Document 75 Filed 07/08/24 Page 6 of 14 PageID #: 796
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`In this lawsuit, Plaintiff Slyde is asserting four patents
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`produce the complete, unredacted PPA
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` Slyde has refused, however, to
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` Slyde has instead produced a redacted version of the PPA under the guise of
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`privilege, chiefly common interest privilege. But no such privilege could have existed between
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`Slyde and the patent sellers to shield the terms of the PPA itself. Rather, at least at and before the
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`time that they executed the PPA, Slyde and the sellers were, by definition, adverse counterparties
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`who had conflicting interests in negotiating that agreement.
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`—go to the
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`heart of a critical question in this case, namely whether Slyde has standing to bring the suit as the
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`sole plaintiff. Pursuant to Paragraph 6 of the Discovery Order (D.I. 29), Samsung respectfully
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`requests an order compelling Slyde to produce an unredacted copy of the PPA.
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`I.
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`PROCEDURAL BACKGROUND
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`Slyde sued Samsung for patent infringement on February 28, 2023 based on four patents.
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`
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` Slyde produced a copy of the PPA on May 14, 2024, but redacted multiple sections of
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`the agreement. After Samsung requested an unredacted copy, Slyde responded by unredacting a
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`couple of pages
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`Slyde refused, however, to unredact other sections of its PPA and exhibits attached to thereto. See
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`Ex. 1, PPA at 5-7, 16. In meet and confers and an accompanying privilege log, Slyde asserted that
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`the redacted provisions relate to
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`1 The PPA included another second seller, Myotest, whose patents are not at issue in this case.
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`1
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`Case 2:23-cv-00083-RWS-RSP Document 75 Filed 07/08/24 Page 7 of 14 PageID #: 797
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`
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`Log at 1-3
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`II.
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`LEGAL STANDARD
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` Ex. 2, Privilege
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`
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`Slyde bears the burden of proving that attorney-client or work product privilege applies to
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`the PPA. Cypress Lake Software, Inc. v. Samsung Elecs. Am., Inc., No. 6:18-CV-30-JDK, 2019
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`WL 6699742, at *1 (E.D. Tex. June 26, 2019). Disclosure of privileged communications to a
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`third-party waives privilege, unless the third party “has a common legal interest with respect to the
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`subject matter of the communication.” SB IP Holdings LLC v. Vivint Smart Home, Inc., No. 4:20-
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`CV-00886, 2022 WL 19977100, at *4 (E.D. Tex. Aug. 18, 2022).
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`Work product doctrine “insulates a lawyer’s research, analysis of legal theories, mental
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`impressions, notes, and memoranda of witnesses’ statements from an opposing counsel’s
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`inquiries.” U.S. ex rel. Mitchell v. CIT Bank, N.A., No. 4:14-CV-00833, 2021 WL 3190556, at *2
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`(E.D. Tex. July 28, 2021). It does not shield “the underlying facts relevant to the litigation.” Id.
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`at *5. Work product protection can be waived where a party places the protected material at issue
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`in the litigation or where the movant shows a substantial need for the withheld information. Id. at
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`*3; Doe 1 v. Baylor Univ., 335 F.R.D. 476, 487 (W.D. Tex. 2020).
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`III. ARGUMENT
`A.
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`The Redacted Portions of the PPA Obfuscate Slyde’s Standing to Sue
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`Slyde is the sole plaintiff in this patent litigation. To have standing to sue alone, Slyde
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`must have been conveyed “all substantial rights” in the asserted patents. Luraco Health & Beauty,
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`LLC v. Tran, No. 4:19-CV-51-SDJ, 2020 WL 2747233, at *4 (E.D. Tex. May 27, 2020). Whether
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`an agreement conveys such rights “does not depend upon the name by which it calls itself, but
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`upon the legal effect of its provisions.” Id. at *4. “Courts are to examine the ‘totality’ of the
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`agreement to determine whether a party . . . has established that it obtained all substantial rights.”
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`2
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`Case 2:23-cv-00083-RWS-RSP Document 75 Filed 07/08/24 Page 8 of 14 PageID #: 798
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`Id. (emphasis added). The two most salient rights in this analysis are “the exclusive right to make,
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`use, and sell the invention” and “the right to enforce and license the patent.” Id. at *6.
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`Slyde’s redactions prevent Samsung (and the Court) from examining the totality of the
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`PPA to determine whether Slyde has obtained all substantial rights to the patents-in-suit.
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`
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` “labels and titles do not control.” Luraco, 2020
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`WL 2747233, at *5. Rather, the “substance of what was granted…must be examined.” Id. Slyde’s
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`redactions, however, strategically obfuscate the two essential rights that must have been granted
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`for Slyde to sue alone,
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`
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`As to the right to enforce the patents, Slyde redacted multiple provisions of the PPA that
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`describe how
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` See
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`Ex. 1, PPA at 5-7; Ex. 2, Privilege Log at 1-3. But the right to control “litigation activities is
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`critical to demonstrating that the patent has not been effectively assigned.” Diamond Coating
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`Techs., LLC v. Hyundai Motor Am., 823 F.3d 615, 620 (Fed. Cir. 2016).
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`
`
` Slyde
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`likely does not have sole standing to sue. See, e.g., id.; Luraco, 2020 WL 2747233, at *7 (finding
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`that party lacks standing to sue where its “rights to enforce the patents at issue are not complete”).
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`Slyde’s redactions, therefore, conceals key provisions critical to the standing question.
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`As to the right to use the patents,
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` Ex. 1, PPA at 9.
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` Id.
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`
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`Tech. Corp., 925 F.3d 1225, 1231-32 (Fed. Cir. 2019) (finding “AMD did not fully transfer the
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` Lone Star Silicon Innovations LLC v. Nanya
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`3
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`Case 2:23-cv-00083-RWS-RSP Document 75 Filed 07/08/24 Page 9 of 14 PageID #: 799
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`right to enforce its patents” where it can grant “a sublicense [to certain entities] and negate
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`[assignee’s] lawsuit”).
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`The redacted portions of the PPA are crucial to an essential issue of Slyde’s standing to sue
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`alone. The unredacted agreement must be produced to permit evaluation of this issue.
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`B.
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`Slyde Cannot Justify Its Redactions on the Basis of Privilege
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`Alongside its redactions to the PPA, Slyde produced a privilege log claiming that the
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`attorney client, common interest, and work product privileges protected all sixteen of its
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`redactions. Ex. 2. For the reasons explained below, none of these privileges could apply to protect
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`sections of the PPA between Slyde and the patent sellers.
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`1.
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`The PPA Is Not Protected by Attorney Client or Common Interest
`Privilege
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`Slyde alleges that the redacted portions of the PPA are protected by attorney-client
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`privilege, which shields confidential communications. But the exchange of the PPA between
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`Slyde and the patent sellers waives privilege, unless Slyde can show that it shared a common legal
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`interest with the patent sellers at the time of the communication. Slyde cannot do so.
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`Before and at the time of the PPA’s execution, Slyde and Smart Communications were
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`adversaries with respect to the sale of patents. As the seller, Smart Communications wanted to
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`maximize the sale price and to minimize the rights and interests sold, while Slyde wanted the
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`opposite. As this District has held, parties seeking to obtain the best deal from each other as part
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`of a patent purchase or license agreement do not share common interest:
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` “[W]hen Skybell and Eyetalk negotiated the licensing agreement of the Carter Patent Family,
`they ‘did not have a common legal interest; rather, their interests were directly adverse.’” SB
`IP, 2022 WL 19977100, at *4.
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` “Mirai and Sitting Man/Morris had conflicting interests—namely, getting the best deal from
`the opposing party in the agreement negotiations.” Cypress Lake, 2019 WL 6699742, at *3.
`4
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`Case 2:23-cv-00083-RWS-RSP Document 75 Filed 07/08/24 Page 10 of 14 PageID #: 800
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` Holding that although plaintiff and patent seller shared an interest in patent validity, that
`interest does not extend to “negotiation for a potential adjustment to the contract price of the
`patent sale” Mondis Tech., Ltd. v. LG Elecs., Inc., No. 2:07-CV-565-TJW-CE, 2011 WL
`1714304, at *4 (E.D. Tex. May 4, 2011).
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`
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` they do not create privilege
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`because “titles are not determinative; substance is” in deciding whether a common interest exists.
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`Monco v. Zoltek Corp., 317 F. Supp. 3d 995, 1001 (N.D. Ill. 2018); see also Berkadia Real Est.
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`Advisors LLC v. Wadlund, No. CV-22-00049-TUC-CKJ, 2023 WL 5608443, at *4 (D. Ariz. Aug.
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`30, 2023) (holding that the existence of a “written ‘joint defense agreement,’ does not create the
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`privilege”). The complete PPA, therefore, must be produced in unredacted form. See Cypress
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`Lake, 2019 WL 6699742, at *2 (ordering production of documents relating to the “Patent Sale
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`Agreements dated on or before execution of the Patent Sale Agreement”) (emphasis added).
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`To be clear, this motion does not seek communications between Slyde and Smart
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`Communications. Rather, Samsung seeks only an unredacted copy of the PPA itself. While patent
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`buyers and sellers can, in some cases, have a common interest in patent “validity and
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`enforceability,” that interest only protects communications directed to those issues. Headwater
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`Rsch. LLC v. Samsung Elecs. Co., No. 2:22-CV-00422-JRG-RSP, 2024 WL 1808601, at *1 (E.D.
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`Tex. Apr. 25, 2024). The common interest does not extend to adversarial commercial negotiations
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`and agreements, such as the PPA. See Mondis, 2011 WL 1714304, at *4 (holding that while a
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`patent buyer and seller had a common interest in the validity of the sold patents, that common
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`interest does not extend to where “the parties were negotiating their rights and relationships with
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`each other, which is not covered by the common interest doctrine”).
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`5
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`Case 2:23-cv-00083-RWS-RSP Document 75 Filed 07/08/24 Page 11 of 14 PageID #: 801
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`2.
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`The PPA Is Not Protected by Work Product Protection
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`Slyde also cannot assert work product to shield the terms of the PPA. First, the redacted
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`provisions of the PPA are not legal impressions qualifying as work product. Like all evidentiary
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`privilege, “work product doctrine must be strictly construed.” SEC v. Microtune, Inc., 258 F.R.D.
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`310, 318 (N.D. Tex. 2009). “At its core, [it] shelters the mental processes of the attorney, providing
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`a privileged area within which he can analyze and prepare his client’s case.” U.S. v. El Paso Co.,
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`682 F.2d 530, 542 (5th Cir. 1982).
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`
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` Those rights do not
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`disclose any legal research or attorney impressions. See Mitchell, 2021 WL 3190556, at *3.
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` See id. at *5; see also Monco, 317 F. Supp. 3d at 1004 (the transfer of a patent
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`is “not a strategy” justifying work product protection).
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`Second, to qualify as work product, “the primary motivating purpose behind the creation”
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`of the PPA must be to aid in future litigation. Ferko v. NASCAR, 219 F.R.D. 396, 402 (E.D. Tex.
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`2003). Documents that would have been prepared “for business purposes, regardless of the
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`prospects of litigation” are not work product. Microtune, 258 F.R.D. at 319. Here, the primary
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`motivating purpose for the PPA is to facilitate the sale of patents to Slyde, a business need. El
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`Paso, 682 F.2d at 543 (document created to “anticipate, for financial reporting purposes, what the
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`impact of litigation might be on the company’s tax liability” is not work product). Slyde’s
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`redactions, concerning the patent seller’s rights and ability to sublicense the patents, are typical
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`provisions of a commercial sales agreement that would have been negotiated regardless of the
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`prospect of future litigation.
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`Third, work product protection is not absolute, but can be overcome if Samsung shows
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`“that it has substantial need for the materials to prepare its case and [it] cannot, without undue
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`Case 2:23-cv-00083-RWS-RSP Document 75 Filed 07/08/24 Page 12 of 14 PageID #: 802
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`hardship, obtain their substantial equivalent by other means.” Mitchell, 2021 WL 3190556, at *3.
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`The redacted terms of the PPA address the rights of Slyde and the patent sellers and is crucial to
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`the question of Slyde’s standing. Vicor Corp. v. Vigilant Ins. Co., 674 F.3d 1, 20 (1st Cir. 2012)
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`(“Given the fact that the precise nature of the Ericsson–Vicor settlement is crucial to a
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`determination of which of Ericsson’s claims are covered, the record supports the insurers’
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`substantial need for at least some of documents at issue”). There is no other means to obtain the
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`terms of the PPA itself—no deposition or interrogatory, even if offered—would provide Samsung
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`(and the Court) an equivalent of redacted provisions.
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`3.
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`Slyde Has Waived Privilege By Putting the PPA at Issue in the Case
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`Slyde has waived attorney-client and work product protection for the PPA by suing on
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`patents acquired through the PPA. Unlike typical cases, the disputed document is not an opinion
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`of counsel, but the terms of the PPA through which Slyde purchased the asserted patents. By suing
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`on those patents, Slyde must rely on the PPA to show that it has all substantial rights for standing.
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`It cannot, however, rely only on portions of the PPA favorable to Slyde, while redacting other
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`portions that likely undercuts its claim to standing. By putting portions of the PPA at issue, Slyde
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`has waived privilege as to the totality of the PPA. See, e.g., U.S. v. Bilzerian, 926 F.2d 1285, 1292
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`(2d Cir. 1991) (“privilege may implicitly be waived when defendant asserts a claim that in fairness
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`requires examination of protected communication”); Grigson v. Farmers Grp., Inc., No. 1:17-CV-
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`00088-LY, 2019 WL 3781439, at *2 (W.D. Tex. Aug. 12, 2019) (waiver occurs where the
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`“substance of the attorney’s work product has been directly placed at issue in the litigation”).
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`IV. CONCLUSION
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`For the foregoing reasons, Samsung respectfully requests that the Court compel Slyde to
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`produce an unredacted copy of the PPA.
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`7
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`Case 2:23-cv-00083-RWS-RSP Document 75 Filed 07/08/24 Page 13 of 14 PageID #: 803
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`Respectfully submitted,
`
`Dated: June 27, 2024
`
`
`Brad Berg (admitted pro hac vice)
`bmberg@omm.com
`O’MELVENY & MYERS LLP
`610 Newport Center Drive, 17 Floor
`Newport Beach, CA 92660
`Telephone: (949) 823-6900
`Facsimile: (949) 823-6994
`
`Melissa R. Smith (TX #24001351)
`melissa@gillamsmithlaw.com
`GILLAM & SMITH, LLP
`303 South Washington Avenue
`Marshall, Texas 75670
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
`
`Respectfully submitted,
`
`/s/ Ryan Yagura
`Ryan Yagura (TX #24075933)
`ryagura@omm.com
`Nicholas Whilt (admitted pro hac vice)
`nwhilt@omm.com
`Grace McFee (admitted pro hac vice)
`gmcfee@omm.com
`O’MELVENY & MYERS LLP
`400 South Hope Street, 18th Floor
`Los Angeles, CA 90071
`Telephone: (213) 430-6000
`Facsimile: (213) 430-6407
`
`Timothy Durst (TX #786924)
`tdurst@omm.com
`Jeffery Baxter (TX #24006816)
`jbaxter@omm.com
`O’MELVENY & MYERS LLP
`2501 North Harwood Street
`Dallas, TX 75201
`Telephone: (972) 360-1927
`Facsimile: (972) 360-1901
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`ATTORNEYS FOR DEFENDANTS
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA,
`INC.
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`8
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`Case 2:23-cv-00083-RWS-RSP Document 75 Filed 07/08/24 Page 14 of 14 PageID #: 804
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true and correct copy of the foregoing document
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`has been served on June 27, 2024 to all counsel of record who are deemed to have consented to
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`electronic service via the Court’s CM/ECF system.
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` /s/ Ryan Yagura
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`CERTIFICATE OF CONFERENCE
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`The undersigned hereby certifies that the conference required by Local Rule CV-7(h)
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`occurred via teleconference on June 27, 2024 between Vincent Rubino and other counsel for
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`Plaintiff, and Timothy Durst and other counsel for Defendant. The parties disagree about the
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`substance of the motion, thus discussions conclusively ended in an impasse, leaving an open
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`issue for the Court to resolve.
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` /s/ Ryan Yagura
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`9
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