2183

Case 5:05-cv-00334-RMW Document 2183 Filed 09/12/2008 Page 1 of 30
1 GREGORY P. STONE (#78329)

KEITH R. D. HAMILTON (#252115)
2 MUNGER, TOLLES & OLSON LLP
355 South Grand Avenue, 35th Floor
3 Los Angeles, CA 90071-1560
Telephone: (213) 683-9100; Facsimile: (213) 687-3702
4 E-mail: gregory.stone@mto.com; keith.hamilton@mto.com
5 BURTON A. GROSS (#166285)
CAROLYN HOECKER LUEDTKE (#207976)
6 MIRIAM KIM (#238230)
MUNGER, TOLLES & OLSON LLP
7 560 Mission Street, 27th Floor
San Francisco, CA 94105-2907
8 Telephone: (415) 512-4000; Facsimile: (415) 512-4077
E-mail: burton.gross@mto.com; carolyn.luedtke@mto.com;
9 miriam.kim@mto.com
10
Attorneys for Plaintiff RAMBUS INC.
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UNITED STATES DISTRICT COURT
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FOR THE NORTHERN DISTRICT OF CALIFORNIA, SAN JOSE DIVISION
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RAMBUS INC., CASE NO.: C 05-00334 RMW
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Plaintiff, RAMBUS INC.’S OPPOSITION TO
15 SAMSUNG’S MOTION IN LIMINE TO
v. EXCLUDE PRIVILEGED DOCUMENTS
16 PRODUCED PURSUANT TO THE
HYNIX SEMICONDUCTOR INC., et al., COURT’S IMPLIED WAIVER ORDER
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Defendants Date: September 16, 2008
18 Time: 2:00 p.m.
Location: Courtroom 5
19 Judge: Hon. Ronald M. Whyte
20 [PUBLIC REDACTED VERSION]
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5908918.1
RAMBUS INC.’S OPPOSITION TO SAMSUNG’S MOTION IN LIMINE TO EXCLUDE PRIVILEGED DOCUMENTS PRODUCED
PURSUANT TO THE COURT’S IMPLIED WAIVER ORDER; CASE NOS. 05-00334, 05-02298
2 RAMBUS INC., CASE NO.: C 05-02298 RMW
3 Plaintiff,
v.
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SAMSUNG ELECTRONICS CO., LTD.,
5 et al.,
Defendants
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5908918.1 -2-
1 TABLE OF CONTENTS
2 Page
3 I. INTRODUCTION .............................................................................................................. 1
4 II. BACKGROUND ................................................................................................................ 3
III. ARGUMENT ...................................................................................................................... 6
5
A. Samsung’s Steinberg-Related Claims and Defenses Remain In These Cases........ 6
6
B. Samsung Waived Any Attorney-Client Privilege Or Work Product Claims
7 Over These Documents ........................................................................................... 8
C. Samsung Has Not Established That These Documents Are Protected By
8
The Attorney-Client Privilege Or Work Product Doctrine ................................... 11
9 1. Meeting Minutes (Exhibits 9077/A, 9078/A, 9081/A, 9136, 9137,
9138) ......................................................................................................... 13
10
2. Jay Shim Memorandum To “All” (Exhibits 9061 & 9129) ...................... 17
11
3. Charles Donohoe Emails Summarizing Rambus Meetings (Exhibits
12 9079 & 9134) ............................................................................................ 18
13 4. Neil Steinberg Letter on NEC Matter (Exhibit 9128)............................... 21

5. Ik Cheol Kim Memorandum (Exhibit 9133)............................................. 21
14
6. “Rambus Again” Email (Exhibit 9139) .................................................... 22
15 7. “Anita Thinks” Email From Donohoe (Exhibit 9321).............................. 22
16 8. Donohoe/Healey/Park Email Chain (Exhibits 9334 & 9335) ................... 23
17 9. 2001 Memoranda Regarding Steinberg Calls (Exhibits 9336 &
9337) ......................................................................................................... 23
18
10. Exhibit 9351 .............................................................................................. 24
19 IV. CONCLUSION ................................................................................................................. 25
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5908918.1 -i-
1 TABLE OF AUTHORITIES
2 Page
3 FEDERAL CASES
4 Bittaker v. Woodford,
331 F.3d 715 (9th Cir. 2003)............................................................................................... 6, 10
5 Boston Scientific Corp. v. Cordis Corp.,
2008 WL 1766757 (N.D. Cal. Apr. 15, 2008) .......................................................................... 9
6
Brinton v. Dep’t of State,
7 636 F.2d 600 (Fed. Cir. 1980)................................................................................................. 18
Byrnes v. Empire Blue Cross Blue Shield,
8 1999 WL 1006312 (S.D. N.Y. Nov. 4, 1999) ................................................................... 12, 16
9 Clarke v. Am. Commerce Nat. Bank,
974 F.2d 127 (9th Cir. 1992)............................................................................................. 11, 17
10 Dawson v. New York Life Ins. Co.,
901 F.Supp. 1362 (N.D. Ill. 1995) .................................................................................... 18, 24
11
Diamond State Ins. Co. v. Rebel Oil Co., Inc.,
12 157 F.R.D. 691 (D. Nev. 1994)........................................................................................ passim
E.E.O.C. v. Safeway Store, Inc.,
13 2002 WL 31947153 (N.D. Cal. Sept. 16, 2002) ..................................................................... 20
14 Evans v. United Fire & Cas. Ins. Co.,
2007 WL 2323363 (E.D. La. Aug. 9, 2007) ........................................................................... 12
15 Genentech, Inc. v. United States Int’l. Trade Com'n,
122 F.3d 1409 (Fed. Cir. 1997)............................................................................................. 2, 8
16
Hearn v. Rhay,
17 68 F.R.D. 574 (E.D. Wash. 1975)............................................................................................. 9
Hercules, Inc. v. Exxon Corp.,
18 434 F.Supp. 136 (D. Del. 1977) .............................................................................................. 12
19 Home Indem. Co. v. Lane Powell Moss and Miller,
43 F.3d 1322 (9th Cir. 1995)..................................................................................................... 9
20 Hynix Semiconductor Inc. v. Rambus Inc.,
2008 WL 350641 (N.D. Cal. Feb. 2, 2008) ...................................................................... 10, 12
21
In re Bonanno,
22 344 F.2d 830 (2d Cir. 1965).................................................................................................... 11
In re CV Therapeutics, Inc. Sec. Litig.,
23 2006 WL 1699536 (N.D. Cal. June 16, 2006) ........................................................................ 15
24 In re G-I Holdings Inc.,
218 F.R.D. 428 (D. N.J. 2003) .................................................................................................. 8
25 Matter of Fischel,
557 F.2d 209 (9th Cir. 1977)................................................................................................... 20
26
North Pacifica, LLC v. City of Pacifica,
27 274 F.Supp. 2d 1118 (N.D. Cal. 2003) ............................................................................. 17, 18
28
5908918.1 -i-
1 TABLE OF AUTHORITIES
(continued)
2 Page
3 Rambus Inc. v. Samsung Electronics Co., Ltd.,
2007 WL 3444376 (N.D. Cal. Nov. 13, 2007)................................................................. passim
4 Regents of Univ. of Cal. v. Micro Therapeutics, Inc.,
2007 WL 2069946 (N.D. Cal. July 13, 2007)............................................................. 19, 21, 24
5
Starsight Telecast, Inc. v. Gemstar Dev. Corp.,
6 158 F.R.D. 650 (N.D. Cal. 1994) ...................................................................................... 11, 12
Tennison v. City & Cty. of San Francisco,
7 226 F.R.D. 615 (N.D. Cal. 2005) .............................................................................................. 9
8 United States v. Chevron Corp.,
1996 WL 264769 (N.D. Cal. Mar. 13 1996).................................................................... passim
9 United States v. Martin,
278 F.3d 988 (9th Cir. 2002)............................................................................................... 2, 11
10
United States v. Suarez,
11 820 F.2d 1158 (11th Cir. 1987)................................................................................................. 8
von Bulow by Auersperg v. von Bulow,
12 811 F.2d 136 (2d Cir. 1987).............................................................................................. 11, 21
13 STATUTES AND RULES
14 Civil Local Rule 7-2(c) ................................................................................................................... 3

Fed. R. Civ. P. 26(b)(3)........................................................................................................... 20, 23
15
OTHER AUTHORITIES
16
2 Paul R. Rice, Attorney-Client Privilege in the U.S. (2008).......................................................... 8
17 8 Wigmore, Evidence (McNaughton rev. 1961) ............................................................................. 8
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5908918.1 - ii -
1 I. INTRODUCTION
2 Samsung affirmatively waived its privilege with respect to certain communications related
3 to Neil Steinberg’s work for Samsung and Rambus. In November 2007, this Court affirmed the
4 Special Master’s finding of an implied waiver and gave Samsung the opportunity to elect to
5 proceed with its Steinberg-related claims and defenses and lose its privilege for certain
6 documents, or to drop its Steinberg-related claims and defenses and preserve its privilege. See
7 Rambus Inc. v. Samsung Electronics Co., Ltd., Nos. 05-0334-RMW, 05-02298-RMW, 2007 WL
8 3444376, at *3 (N.D. Cal. Nov. 13, 2007) (“November 2007 Waiver Order”). Samsung elected to
9 put its privileged communications at issue in this litigation and thus permanently and hereinafter
10 gave up its right to claim privilege for those communications. Nevertheless, Samsung now seeks
11 to reverse that decision and reclaim its privilege in light of this Court’s August 11, 2008 dismissal
12 of its counterclaims that were based on Mr. Steinberg’s work at Rambus. Specifically, Samsung
13 asks this Court to prevent Rambus from using certain documents produced after the November
14 2007 Waiver Order because Samsung once placed them on a privilege log. There is no basis for
15 Samsung’s effort to undo its affirmative use of its privileged communications now that the
16 calculated risk it took has not paid off. Moreover, Samsung offers no evidence that the
17 documents at issue in its motion in limine are actually privileged. Samsung’s motion is contrary
18 to law, unsupported by the facts, and must be denied.
19 First, this motion is based on a flawed premise that the Steinberg-related allegations are
20 no longer in the September 22, 2008 Trial (“September 2008 Trial”). 1 This is not true. Indeed,
21 Samsung concedes as much in its moving papers, noting that “Samsung alleges additional claims
22 and defenses related to the conduct of Mr. Steinberg: specifically, its Count X ... and its Sixth,
23 Seventh, and Eighth Affirmative Defenses.” Samsung’s Motion in Limine To Exclude Privileged
24 Documents Pursuant to the Court’s Implied Waiver Order (“Mot.”) at 2 n.2. There is no reason
25 the documents produced pursuant to the Court’s implied waiver orders cannot properly be before
26 1
At the September 11, 2008 pretrial conference, Samsung’s counsel stated that Samsung would
27 soon file a pleading with the Court dismissing all of Samsung’s claims and defenses related to
JEDEC, the RDRAM licenses, and Mr. Steinberg. As of the filing of this opposition, no such
28 notice of dismissal has been filed.
5908918.1 -1-
1 the Court in the September 2008 Trial where the Steinberg-related claims and defenses will be
2 resolved.
3 Second, even if the Steinberg-related claims and defenses were not in the September 2008
4 Trial, Samsung has no right to reclaim its privilege after voluntarily relinquishing it. Samsung’s
5 attempt to reassert its privilege claims over these 22 documents conflicts with the well-settled rule
6 that, “[o]nce the attorney client privilege has been waived, the privilege is generally lost for all
7 purposes and in all forums.” Genentech, Inc. v. United States Int’l. Trade Com'n, 122 F.3d 1409,
8 1416 (Fed. Cir. 1997). The Court affirmed the Special Master’s finding of waiver through claim
9 assertion in its November 2007 Waiver Order, noting therein that Samsung was entitled to
10 preserve the confidentiality of its documents, and thereby avoid waiver, by retracting the claims
11 implicating these materials. November 2007 Waiver Order, 2007 WL 3444376, at *6. Samsung
12 was therefore given a choice either to proceed with its Steinberg-related claims and waive its
13 attorney-client privilege or to withdraw those claims and preserve the privilege. Samsung chose
14 to proceed and voluntarily produced 556 documents for in camera inspection. Samsung has
15 therefore affirmatively waived its claims of attorney-client privilege and work product protection
16 for these documents. Because there is no legal basis for Samsung to reassert its privilege after
17 this waiver, Samsung’s motion should be denied.
18 Finally, there is no evidence that any of the documents at issue in Samsung’s motion are
19 even privileged. Samsung has failed to carry its burden of demonstrating that the attorney-client
20 privilege or work product doctrine applies to each of the 22 documents at issue. See United
21 States v. Martin, 278 F.3d 988, 999-1000 (9th Cir. 2002). This burden is not discharged by the
22 citations to a privilege log and the generalized assertions of privilege and work product immunity
23 that Samsung presents at pages 7 through 10 of its motion. Indeed, as demonstrated by the face
24 of the documents and related testimony, these purportedly privileged communications -- most of
25 which were prepared in the course of the parties’ license negotiations in 2000 and 2001 -- do not
26 transmit any legal advice at all. Accordingly, Samsung has not and cannot demonstrate under any
27 theory that these documents should be excluded from the September 2008 Trial.2
28 2
Samsung has not complied with the Civil Local Rule requiring submission of a proposed order
5908918.1 -2-
1 II. BACKGROUND
2 On September 26, 2007 the Special Master concluded that, as a result of Samsung’s
3 affirmative factual assertions related to Neil Steinberg, “Samsung has waived any attorney-client
4 privilege and work product claims it might have regarding: (1) Samsung’s knowledge of the work
5 Mr. Steinberg performed for Rambus; and (2) the work that Mr. Steinberg performed while at
6 Samsung that purportedly gave him access to the (largely unspecified) confidential information
7 that Samsung claims was taken and misused.” Order Granting Rambus Inc.’s Motion to Compel
8 Regarding Samsung’s Privilege Waiver by Claim Assertion, Docket 473, C-05-0334-RMW (RA),
9 at 17 (N.D. Cal. Oct. 1, 2007). Specifically, the Special Master found that “[a]llowing Samsung
10 to assert the attorney-client [privilege] would deny Rambus access to information vital to its
11 defense,” and that “fairness” required disclosure of Samsung’s privileged information concerning
12 these topics. See id. at 15-16. Samsung was therefore ordered to produce all documents related
13 to “(a) Mr. Steinberg’s work for Rambus; and (b) the work that Mr. Steinberg performed for
14 Samsung that purportedly gave him access to the information Samsung claims he later misused at
15 Rambus.” Id. at 17.
16 On November 13, 2007, in response to Samsung’s appeal of the Special Master’s order,
17 this Court concluded that “[t]he Special Master did not err in finding that Samsung had asserted
18 the privilege as a result of affirmatively pleading that it was entitled to tolling and that Steinberg
19 had taken confidential information.” November 2007 Waiver Order, 2007 WL 3444376, at *3.
20 However, noting the Ninth Circuit’s guidelines regarding the implied waiver doctrine, see id. at
21 *6, the Court reduced the scope of the categories of documents that would be subject to waiver
22 and gave Samsung the option to avoid disclosure of its documents by retracting those claims that
23 implicated waiver. See id. at *7 (“The Special Master should first give Samsung the option of
24 declining to proceed with its claims. If Samsung chooses to proceed, the Special Master should
25
with its motion in limine, nor has it requested an exemption from this Court. See Civil Local Rule
26 7-2(c) (“Unless excused by the Judge who will hear the motion, each motion must be
accompanied by a proposed order.”). Rambus’s opposition is therefore directed to the form of
27 relief requested on Samsung’s Notice of Motion, which seeks “an order barring Rambus from
introducing, discussing, or eliciting testimony regarding any privileged document produced by
28 Samsung pursuant to this Court’s implied waiver order.” Mot. (Notice) at 1.
5908918.1 -3-
1 conduct an in camera review of the documents affected by the implied waiver.”). In the event
2 that Samsung elected to proceed with its claims and waive its privilege claims, the Court required
3 the eventual production to be “closely tailored” such that “[o]nly documents vital to Rambus’
4 ability to fairly present its case should be produced.” Id. at *7.
5 On April 16, 2008, the Special Master issued his first in camera order requiring Samsung
6 to produce to Rambus all of the documents on Samsung’s privilege log that Samsung conceded
7 fall within the terms of the November 2007 Waiver Order, and to provide additional briefing
8 regarding any documents it elected to withhold. Order Re In Camera Review of Samsung
9 Documents (Amended), Docket No. 1683-2, C-05-0334-RMW (RA), at 18 (N.D. Cal. April 16,
10 2008). (“First In Camera Order”). 3 The Special Master specifically required Samsung to clarify
11 “the scope of the confidential Samsung information obtained by Steinberg that Samsung contends
12 Steinberg provided to Rambus.” Id. On April 28, 2008, Samsung produced 163 documents in
13 response to the Special Master’s order, including Exhibit 9128, and redacted versions of Exhibits
14 9078 and 9079. 4 Subsequently, Samsung submitted a corrected privilege log, supplemental
15 documentation and briefing regarding the documents withheld from its production to Rambus.
16 On June 30, 2008, the Special Master issued an order requiring Samsung to produce
17 further documents and portions of documents from its Steinberg-related privilege logs that
18 demonstrated Samsung’s knowledge of Mr. Steinberg’s work for Rambus. See Order Re In
19 Camera Review of Steinberg Documents, Docket No. 1929, C-05-0334-RMW, at 26 (N.D. Cal.
20 July 1, 2008) (“Second In Camera Order”). 5 Specifically, the Special Master ordered Samsung to
21 produced complete or redacted versions of 16 documents raised in Samsung’s motion, including
22 Exhibits 9061, 9077A, 9081, 9129, 9133, 9134, 9136, 9137, 9138, 9139, 9321, 9336, 9337, and
23 3
In issuing this order, the Special Master also expressed concern regarding the validity of
24 Samsung’s privilege claims and raised the suggestion that “Samsung is withholding documents
merely because they mention Steinberg.” First In Camera Order at 16.
25 4
Unless otherwise noted, all citations to “Exhibits” refer to exhibits included on the parties’
exhibit lists for the September 22, 2008 trial.
26 5
The Special Master also found that “Samsung’s responses to the April 14, 2008 order do not
27 comply with the April 14, 2008 order,” and that he was therefore unable to determine whether
Samsung produced all information related to Mr. Steinberg’s alleged use of Samsung confidential
28 information while employed by Rambus. Second In Camera Order at 24 (emphasis in original).
5908918.1 -4-
1 9351. See id. at 32-33 (identifying these exhibits by their “SSP” privilege log entries). 6 Samsung
2 objected to the disclosure of purported “mental impressions and opinions of Samsung’s counsel”
3 within four of these documents -- including Exhibits 9321, 9133, 9134, and 9138 -- and filed a
4 partial appeal with this Court on that limited ground. See Samsung Letter Brief, Docket No. 957,
5 C-05-0334-RMW, at 1 (N.D. Cal. July 9, 2008).
6 On July 16, 2008, this Court overruled each of Samsung’s individual objections related to
7 the disclosure of “attorney mental impressions” in Exhibits 9133, 9134, and 9138, finding that the
8 passages in question were “vital” to Rambus’s defense. 7 See Order Sustaining in Part and
9 Overruling in Part Samsung’s Objections to Implied Waiver Order, Docket No. 1964, C-05-
10 00334-RMW, at 6-7 (N.D. Cal. July 16, 2008) (referring to Exhibit 9133 as “SSP 1673,” to
11 Exhibit 9134 as “SSP 1718,” and to Exhibit 9138 as “SSP 1726”). With respect to Exhibit 9321,
12 the Court overruled all but one of Samsung’s objections. See id. at 6 (referring to Exhibit 9321 as
13 “SSP 1619”). Following the Court’s order, Samsung identified Exhibits 9334 and 9335, which
14 correspond to privilege log entry “SSP 2025,” as falling within the scope of the Special Master’s
15 Second In Camera Order, and produced this document to Rambus. See Order Amending June 30,
16 2008 Order Re: In Camera Review of Steinberg Documents, Docket No. 1999, C-05-0334 (N.D.
17 Cal. July 30, 2008).
18 On August 11, 2008, this Court granted Rambus’s motion for summary judgment on
19 Counts IV, V, and VI and partial summary judgment on Count VII of Samsung’s Second
20 Amended Counterclaims. See Order Granting Rambus’s Motion for Summary Judgment on
21 Counts IV-VII of Samsung’s Counterclaims, Docket No. 2059, C-05-00334-RMW (N.D. Cal.
22 Aug. 18, 2008) (“August 2008 Summary Judgment Order”). Thereafter, the Special Master
23 suspended his in camera review of Steinberg-related documents submitted by Samsung. See
24 6
The Second In Camera Order addressed Trial Exhibits 9077A and 9081 without reference to the
certified translations, which are listed separately in Samsung’s motion in limine as exhibits 9077
25 and 9081A, respectively. See Mot. at 3.
7
26 In ruling on Samsung’s objections, the Court specifically noted that it was not addressing
whether Samsung had carried its burden of establishing the privilege with respect to any of the
27 documents cited in Samsung’s appeal. See Order Sustaining in Part and Overruling in Part
Samsung’s Objections to Implied Waiver Order, Docket No. 1964, C 05-00334-RMW, at 7 (N.D.
28 Cal. July 16, 2008).
5908918.1 -5-
1 Third Order of the Special Master Re In Camera Review of Steinberg Documents, Docket No.
2 2118-2, C 05-00334-RMW, at 7 (N.D. Cal. Sept. 2, 2008) (“Third In Camera Order”).
3 Following the parties’ unsuccessful attempts to reach a stipulation of dismissal with
4 prejudice regarding Samsung’s remaining Steinberg-related claims and defenses -- including
5 Count X of Samsung’s counterclaims, and its Sixth, Seventh, and Eighth affirmative defenses --
6 Samsung filed a motion to dismiss these claims on September 2, 2008. See Samsung’s Motion to
7 Dismiss Certain Claims and Defenses Without Prejudice, Docket No. 2119, C 05-00334-RMW
8 (N.D. Cal. Sept. 2, 2008). Concluding that dismissal of these claims would be “enormously
9 prejudicial to Rambus,” the Court denied Samsung’s motion on September 5, 2008. Order
10 Granting Samsung’s Motion to Shorten Time and Denying Samsung’s Motion to Dismiss, Docket
11 No. 2139, C 05-00334-RMW, at 2 (N.D. Cal. Sept. 5, 2008). As a result, the Steinberg-related
12 declaratory judgment claim (Count X) and affirmative defenses are set for the September 22,
13 2008 Trial.
14 III. ARGUMENT
15 A. Samsung’s Steinberg-Related Claims and Defenses Remain In These Cases.
16 The entirety of Samsung’s motion proceeds from the faulty assumption that the claims and
17 defenses supporting the Court’s finding of implied waiver have disappeared from these cases.
18 They have not. Accordingly, because “parties in litigation may not abuse the privilege by
19 asserting claims the opposing party cannot adequately dispute unless it has access to the
20 privileged materials,” Bittaker v. Woodford, 331 F.3d 715, 719 (9th Cir. 2003), the reasoning
21 underlying the Court’s implied waiver order remains applicable and Samsung’s motion should be
22 denied.
23 The Court’s August 11, 2008 order granted Rambus’s motion for summary judgment on
24 Counts IV-VI of Samsung’s counterclaims, and partial summary judgment on Count VII to the
25 extent it relied on the acts alleged in Counts IV-VI. See August 2008 Summary Judgment Order
26 at 2, 14. Samsung argues that, because these claims will not be addressed in the September 2008
27 Trial, the continued use of Samsung’s purportedly privileged documents “is contrary to the
28 reasoning and intent of the Court’s implied waiver order.” Mot. at 4. Even if this were true (and
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1 it is not), Samsung argument ignores the fact that other Steinberg-related claims and defenses
2 were not part of Rambus’s motion for summary judgment. Count X of Samsung’s Second
3 Amended Complaint incorporates all of its Steinberg-related factual allegations, and seeks a
4 declaratory judgment of unenforceability under “the equitable doctrines of prosecution laches,
5 unclean hands, and estoppel.” Second Amended Answer to Complaint for Patent Infringement,
6 Docket No. 87, C 05-02298-RMW, at ¶¶ 275-80 (N.D. Cal. Jan. 24, 2007). Additionally,
7 Samsung describes its affirmative defenses of equitable estoppel, estoppel and implied license as
8 alleging misconduct by Mr. Steinberg. See Joint Case Management Conference Statement,
9 Docket No. 295, C 05-00334-RMW, at Attachment 4, 2-3 (N.D. Cal. July 31, 2007).
10 Samsung flatly concedes that there are “additional claims and defenses related to the
11 conduct of Mr. Steinberg,” but maintains that it “does not intend to pursue any of these remaining
12 Steinberg-related claims or defenses in the September 22 trial” and notes that it has filed a motion
13 to dismiss. See Mot. at 2 n.2. Samsung, of course, lost its motion to dismiss and has not elected
14 to dismiss these Steinberg-related claims and defenses with prejudice. Absent a binding
15 stipulation of dismissal with prejudice, Samsung’s purported intent not to pursue these claims is
16 an irrelevant, unsupported statement. See id. Insofar as these claims remain in these cases,
17 Samsung’s knowledge regarding Steinberg’s work for Rambus is “at issue” and the application of
18 the implied waiver doctrine to documents disclosing this knowledge remains in force.
19 In any event, Samsung’s attempt to segregate the presentation of evidence between
20 individual claims and defenses conflicts with prior statements by Samsung that such divisions
21 would be unfair. In a letter to the Court seeking to excuse Samsung from the January 29, 2008
22 trial, and again in its administrative motion for deconsolidation, Samsung stated that “Samsung’s
23 claims are based on a relationship and course of conduct unique to Samsung and Rambus,
24 including ... Rambus’s hiring of Samsung’s employees, ... the 2000 SDRAM/DDR license, ... and
25 Samsung’s Most Favored Licensee rights under the SDRAM/DDR license.” Declaration of Keith
26 R. D. Hamilton in Support of Rambus’s Opposition to Mot. (“Hamilton Decl.”), Exh. A (Letter
27 from Samsung’s Counsel to the Court, November 2, 2007); Motion for Administrative Relief to
28 Set a Case Management Conference, Docket No. 703, C 05-00334-RMW, at 4 (N.D. Cal. Nov.
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1 13, 2007). In these submissions to the Court, Samsung specifically emphasized that “[t]his fact
2 pattern is best presented and understood in a single trial that permits review of the entire
3 relationship and facts as a whole.” Id.; Hamilton Decl., Exh. A. Samsung’s counsel repeated this
4 argument to the Court, claiming that “having us break up our story and tuck in bits and pieces
5 here and there and not tell it coherently is very prejudicial.” Id., Exh. B (H’g Tr., Dec. 13, 2007,
6 at 71:2-4). Having persuaded the Court that the story of the parties’ “unique relationship” could
7 only be understood as a whole, Samsung now asks the Court to jettison much of that story from
8 the September 2008 Trial by precluding unfavorable evidence related to the parties’ licensing
9 negotiations. Samsung’s request is pure gamesmanship and should be denied.
10 B. Samsung Waived Any Attorney-Client Privilege Or Work Product Claims
Over These Documents.
11
Even if Samsung were to dismiss its remaining Steinberg-related claims and defenses with
12
prejudice, this does not allow Samsung to reclaim the privilege that it affirmatively waived.
13
Courts and treatises have widely affirmed the well-recognized rule that, once waived, the
14
attorney-client privilege cannot be restored. See Genentech, Inc., 122 F.3d at 1416 (“Once the
15
attorney client privilege has been waived, the privilege is generally lost for all purposes and in all
16
forums.”); United States v. Suarez, 820 F.2d 1158, 1160 (11th Cir. 1987) ("it has long been held
17
that once waived, the attorney-client privilege cannot be reasserted"); In re G-I Holdings Inc.,
18
218 F.R.D. 428, 432 (D. N.J. 2003) ("Once a party waives the attorney-client privilege, it
19
relinquishes the privilege for all purposes and circumstances thereafter."); 8 Wigmore, Evidence §
20
2328 at 638 (McNaughton rev. 1961) (“A waiver at one stage of a trial should be final for all
21
further stages”); 2 Paul R. Rice, Attorney-Client Privilege in the U.S. § 9:22 (2008) ("Once there
22
has been a waiver ... the privilege cannot be revived either in subsequent stages of the action in
23
which the waiver occurred or in future actions.").
24
An implied waiver occurs when, though an affirmative act, a party asserts the privilege in
25
a way that places the privileged information at issue. See Home Indem. Co. v. Lane Powell Moss
26
and Miller, 43 F.3d 1322, 1326 (9th Cir. 1995). Here, Samsung pled counterclaims and defenses
27
based on Mr. Steinberg’s alleged misuse of confidential information acquired while he was
28
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1 employed by Samsung, thereby injecting the issue of Mr. Steinberg’s access to such information
2 into these cases. Samsung also affirmatively pled that Samsung’s counsel did not know the scope
3 and nature of Mr. Steinberg’s work for Rambus when negotiating opposite Mr. Steinberg in 2000.
4 As the Court concluded, Samsung’s allegations affirmatively asserted the privilege and thereby
5 justified the Special Master’s findings regarding the existence of a waiver. See November 2007
6 Waiver Order, 2007 WL 3444376, at *3 (concluding that “the Special Master did not err in
7 finding that Samsung had asserted the privilege as a result of affirmatively pleading that it was
8 entitled to tolling and that Steinberg had taken confidential information”).
9 Not only did Samsung inject its privilege and work product into the litigation through its
10 pleadings, it consciously waived its privilege when it declined the Court’s invitation to withdraw
11 those allegations to preserve the privilege. In its November 2007 Waiver Order, the Court
12 directed the Special Master to “first give Samsung the option of declining to proceed with its
13 claims,” and to initiate in camera review of the documents only “[i]f Samsung chooses to
14 proceed.” Id. at *7. In response, counsel for Samsung did not withdraw its Steinberg-related
15 claims and defenses, but instead delivered 556 documents for the Special Master’s review. See
16 First In Camera Order at 13. Samsung’s decision to maintain its Steinberg-related claims and
17 submit these documents is definitive evidence of a conscious waiver. See Boston Scientific Corp.
18 v. Cordis Corp., C 02-1474-JW (RS), 2008 WL 1766757, at *2 (N.D. Cal. Apr. 15, 2008) ("By
19 definition, the waiver arises when [] affirmative reliance takes place."). Had Samsung intended to
20 preserve the confidentiality of its purportedly privileged documents, it needed to withdraw its
21 claims at that time. 8 Accordingly, Samsung’s delivery of these hundreds of documents to the
22 Special Master was not “compelled,” as Samsung suggests, but was the result of a strategic
23 decision to proceed with its Steinberg-related claims and inject its privileged communications and
24 work product into the case. See Bittaker, 331 F.3d at 720 (noting in relation to the implied
25
8
26 By the same logic, Samsung has also waived any attorney work product protection over the
documents subject to the Court’s November 2007 Waiver Order. See Tennison v. City & Cty. of
27 San Francisco, 226 F.R.D. 615, 622-24 (N.D. Cal. 2005) (concluding that plaintiff’s factual
allegations effected a limited waiver of his attorney’s factual work product under Hearn v. Rhay,
28 68 F.R.D. 574, 581 (E.D. Wash. 1975)).
5908918.1 -9-
1 waiver doctrine that “[e]ssentially, the court is striking a bargain with the holder of the privilege
2 by letting him know how much of the privilege he must waive in order to proceed with his
3 claim.”). Having cast its lot, Samsung should not be permitted to reassert the privilege in these
4 cases.
5 Samsung asks the Court to go against the weight of authority and find that Samsung’s
6 waiver was only for the purpose of Samsung’s Steinberg-related counterclaims. See Mot. at 4-5.
7 In support of its claim of a “limited purpose” waiver, Samsung cites a single habeas corpus case,
8 Bittaker v. Woodford, 331 F.3d 715 (9th Cir. 2003), in which the Ninth Circuit upheld the district
9 court’s protective order barring the use of attorney-client privileged communications for any
10 future purpose other than litigating the petitioner’s ineffective assistance of counsel claims. See
11 Mot. at 4-5; Bittaker, 331 F.3d at 723 (noting that forcing petitioner to choose between his
12 ineffective assistance claim and the loss of the privilege at a retrial would force a painful and
13 potentially unconstitutional choice). Nothing in Bittaker supports Samsung’s argument that
14 waived attorney-client communications may not be used in the same action in which they were
15 waived. 9 Seeking to extend Bittaker to this context would be particularly inappropriate here,
16 given that Samsung continues to maintain claims closely related to those that were dismissed and
17 has reserved its right to challenge the Court’s statute of limitations ruling on appeal. 10 Nor is
18 there any compelling reason for excusing Samsung from the consequences of its own decision to
19 place its knowledge of Mr. Steinberg’s conduct at issue in these cases. Indeed, a rule permitting a
20 party to reassert the privilege after certain claims implicating these privileged communications
21 9
Samsung specifically objects to the use of its documents “for purposes entirely unrelated to the
original implied waiver order,” and claims that “Rambus acknowledges as much in its June 25,
22 2008 [motion to strike].” Mot. at 6. Samsung’s analogy is inapposite. Rambus’s motion to strike
addressed the effect of a judicially compelled production, not the impact of a voluntary and
23 intentional surrender of the privilege done for the purpose of supporting a claim or defense.
Indeed this Court has already concluded that Rambus’s compelled production of privileged
24 documents pursuant to privilege-piercing orders did not effect a waiver. See Hynix
Semiconductor Inc. v. Rambus Inc., Nos. CV-00-20905, C-05-00334, C-06-0244 RMW, 2008
25 WL 350641, at *2 (N.D. Cal. Feb. 2, 2008) (“The Ninth Circuit’s rule in de la Jara requires
reasonable efforts, and those were taken in this court.”).
26 10
Because Samsung has not waived its right to appeal the Court’s August 11, 2008 summary
27 judgment order, Samsung’s knowledge of Mr. Steinberg’s work for Rambus would remain at
issue even if Samsung were to dismiss its other Steinberg-related claims and defenses with
28 prejudice.
5908918.1 - 10 -
1 are found to be time-barred is contrary to the principle of “fairness” that is “the touchstone of the
2 scope of the implied waiver doctrine." Id. at *6. Accord, Starsight Telecast, Inc. v. Gemstar
3 Dev. Corp., 158 F.R.D. 650, 653 (N.D. Cal. 1994).
4 C. Samsung Has Not Established That These Documents Are Protected By The
Attorney-Client Privilege Or Work Product Doctrine.
5
Samsung acknowledges that it bears the burden of demonstrating the elements of the
6
attorney-client privilege and work product doctrine for each of the documents at issue. See Mot.
7
at 7; Martin, 278 F.3d at 999-1000; see also Clarke v. Am. Commerce Nat. Bank, 974 F.2d 127,
8
129 (9th Cir. 1992) ("The privilege must ordinarily be raised as to each record sought to allow the
9
court to rule with specificity."). However, Samsung’s showing amounts to little more than
10
recitation of these elements followed by perfunctory statements that the documents reflect legal
11
advice and/or attorney mental impressions. See Mot. at 7-10. This falls far short of the threshold
12
required to establish an entitlement to the privilege or the work product doctrine. Diamond State
13
Ins. Co. v. Rebel Oil Co., Inc., 157 F.R.D. 691, 698 (D. Nev. 1994) ("A generalized, self-serving,
14
conclusory assertion of protection or privilege is without merit."); von Bulow by Auersperg v. von
15
Bulow, 811 F.2d 136, 146 (2d Cir. 1987) (stating that the burden of establishing the attorney-
16
client privilege is not discharged “by mere conclusory or ipse dixit assertions”) (quoting In re
17
Bonanno, 344 F.2d 830, 833 (2d Cir. 1965)). Notably, Samsung’s effort is miles away from the
18
“line by line justification” that it suggests in its opposition to Rambus’s August 27, 2008 motion
19
in limine. See Samsung’s Opposition to Rambus’s Motion in Limine to Bar Use of Privileged
20
Documents at September 22, 2008 Trial, Docket No. 2142, C 05-00334-RMW, at 26-27 (N.D.
21
Cal. Sept. 5, 2008) (“Opp’n to Rambus’s MIL”).
22
For most of the exhibits at issue, Samsung offers no evidence to support its assertions
23
regarding the existence of the attorney-client privilege or work product immunity. Indeed,
24
Samsung’s claims regarding nine of the twenty-two documents rely exclusively on citations to its
25
privilege log. 11 Because, a privilege log entry alone is insufficient to establish attorney-client
26
11
27 Samsung cites no testimony, affidavits, or declarations to support its claims of attorney client
privilege or work product immunity for Exhibits 9128, 9133, 9138, 9139, 9321, 9334, 9335,
28 9336, 9337, or 9351, relying instead on citations to its privilege logs. See Mot. at 8-10.
5908918.1 - 11 -
1 privilege or work product immunity, Samsung’s claims for these nine documents should be
2 rejected out-of-hand. Byrnes v. Empire Blue Cross Blue Shield, No. 98C-CIV-8520-BSJ (MHD),
3 1999 WL 1006312, at *3 n.1 (S.D. N.Y. Nov. 4, 1999) (concluding that mere quotation of
4 privilege log entry lacked foundation and was therefore “not competent evidence”); Evans v.
5 United Fire & Cas. Ins. Co., No. 06-6783, 2007 WL 2323363 (E.D. La. Aug. 9, 2007) (noting
6 that mere assertions in a privilege log are insufficient to carry the burden of establishing
7 entitlement to work product immunity); cf. Hynix Semiconductor Inc. v. Rambus Inc., Nos. C 00-
8 20905-RMW, C 05-00334-RMW, C-06-00244-RMW, 2008 WL 350641, at *3 (N.D. Cal. Feb. 2,
9 2008) (“2/2/08 Order”) (“A vague declaration that states only that the document ‘reflects’
10 attorney’s advice is insufficient to demonstrate that the document should be found privileged.”).
11 In addition, Samsung’s motion should be denied as to a great majority of the exhibits
12 because they do not communicate any legal advice or opinions, but simply summarize non-
13 privileged factual information discussed at meetings with Rambus. 12 Indeed, the content of these
14 documents, as addressed below, indicates that they are not privileged and that they were primarily
15 prepared for the purpose of rendering business advice. See United States v. Chevron Corp., No.
16 C-94-1885-SBA, 1996 WL 264769, at *3 (N.D. Cal. Mar. 13 1996) (“No privilege can attach to
17 any communication as to which a business purpose would have served as a sufficient cause, i.e.,
18 any communication that would have been made because of a business purpose”) (citation
19 omitted). See 2/2/08 Order, 2008 WL 350641, at *3 (“The attorney-client privilege only protects
20
12
21 Many exhibits at issue -- such as exhibits 9061, 9077/A, 9078/A, 9079, 9081/A, 9129, 9134,
9136, 9137, 9138, 9336, and 9337 -- merely summarize factual information related to meetings or
22 telephone calls with Rambus and other third-parties. Samsung’s assertions of privilege with
respect to these exhibits are difficult to reconcile with the inclusion of substantially similar
23 memoranda on the exhibit list provided by Samsung on August 27, 2008. See, e.g. Exhibit 4270
(notes from May 11, 2005 meeting); Exhibit 4272 (notes from May 24, 2005 meeting); Exhibit
24 4274 (notes from June 6, 2005). These memoranda were voluntarily produced by Samsung
despite the fact that these they also detail the substance of conversations between the parties in
25 the course of licensing negotiations. Unless Samsung can adequately explain why it withheld the
documents at issue on grounds of privilege but did not claim the same protections for other,
26 substantially similar documents such as Exhibits 4270, 4272, or 4274, its privilege claims for
these documents must fail. See Starsight Telecast, 158 F.R.D. at 653 (“A party cannot disclose
27 only those facts beneficial to its case and refuse to disclose, on the grounds of privilege, related
facts adverse to its position.”) (quoting Hercules, Inc. v. Exxon Corp., 434 F.Supp. 136, 156 (D.
28 Del. 1977)).
5908918.1 - 12 -
1 legal advice provided to a client.”). Because Samsung fails to carry its burden of establishing the
2 privilege or work product doctrine for the documents at issue, and because these documents are
3 plainly not entitled to protection, this Court should deny Samsung’s motion. 13
4 1. Meeting Minutes (Exhibits 9077/A, 9078/A, 9081/A, 9136, 9137, 9138)
5 Samsung asserts the attorney-client client privilege for the following series of meeting
6 minutes:
7 • Exhibit 9077/A (Korean and English translation of minutes from a September 19,
8 2000 meeting between Samsung and Rambus)
9 • Exhibit 9078/A (Korean and English translation of minutes from a September 19,
11 • Exhibit 9081/A (Korean and English translation of minutes from an October 2,
13 • Exhibits 9136 & 9137 (Korean and English translation of minutes from a June 10,
15 • Exhibit 9138 (meeting minutes from an August 16, 2000 meeting between
16 Samsung and Micron bearing the heading “re:Rambus”)
17 Samsung fails to offer evidence to support its assertion that these meeting minutes are privileged.
18 In fact, it cannot, because the evidence demonstrates that they are not privileged.
19 First, there is no evidence to support Samsung’s unsupported claim that Exhibits 9077/A
20 and 9078A were “prepared for the purpose of rendering legal advice.” Exhibits 9077/A and
21 9078/A are internal Samsung minutes that state what was said between Samsung and Rambus at a
22 September 19, 2000 license negotiation. The minutes were recorded by a non-lawyer, Han Yong
23
13
24 Samsung incorrectly states that “Rambus has never questioned that the documents produced
pursuant to the implied waiver order are, in fact, privileged.” Mot. at 7. In its letter brief to the
25 Court on July 14, 2008, Rambus’s counsel noted that, “[i]n more than one order, the Special
Master has raised serious doubts about the accuracy of Samsung’s privilege logs, privilege
26 claims, and other assertions made in support of its claims of privilege.” See Rambus Letter Brief,
Docket No. 1961, C 05-00334-RMW, at 5 (N.D. Cal. July 14, 2008) (citing the Special Master’s
27 First and Second In Camera Orders). Rambus therefore urged that “Samsung should not be
allowed to withhold any of the documents at issue here unless it has properly demonstrated that
28 the documents are actually privileged in the first instance.” Id. (emphasis added).
5908918.1 - 13 -
1 statements were sent by Mr. Donohoe to his secretary, it is unclear on the current record whether
2 they were made for the purpose of facilitating legal advice or just a non-privileged documentation
3 of a meeting that had occurred. Nevertheless, on the current record, Rambus and the Court can
4 only speculate, and speculation does not establish a protected privilege. The burden of
5 demonstrating the attorney-client privilege lies with Samsung and requires more than an ipse
6 dixit. See Clarke, 974 F.2d at 129; Diamond State Ins. Co. 157 F.R.D. at 698.
7 2. Jay Shim Memorandum To “All” (Exhibits 9061 & 9129)
8 There is no evidence that Exhibits 9061 and 9129 are privileged in their entirety. Exhibits
9 9061 and 9129 are identical copies of an August 18, 2000 memorandum recording license
10 negotiations with Rambus that was prepared by Jay Shim and sent to “All.” See Mot. at 7;
11 Exhibits 9061 & 9129. Samsung offers no evidence to support its claims that this memorandum
12 contains legal advice, that it was maintained in confidence or that it was even “sent to Samsung’s
13 Legal Department” as Samsung’s motion baldly claims. Mot. at 7. At his deposition, Charles
14 Donohoe described this document as REDACTED
15 See Hamilton Decl., Exh. D (Deposition of Charles
16 Donohoe, May 13, 2008, at 151:4-6). Additionally, the author of the memorandum testified that
17 this document was REDACTED
18 Id., Exh. G (Deposition of Jay Shim, June 9, 2008, at 114:24-115:1)
19 (emphasis added). Thus, there is no evidence that the memorandum was sent to “Samsung’s
20 Legal Department” as Samsung claims, nor is there evidence that it was intended to communicate
21 confidential, privileged legal advice.
22 Moreover, there is no evidence to support Samsung’s claim that this memorandum was
23 prepared “for the purpose of rendering legal advice.” Instead, a review of the face of the
24 document reveals that it merely records what was said at the parties’ business meeting. See North
25 Pacifica, LLC v. City of Pacifica, 274 F.Supp. 2d 1118, 1129 (N.D. Cal. 2003) ("To be privileged,
26 [] legal advice must predominate the communication"). For example, under the heading REDACTED
27
28
5908918.1 - 17 -
1 Exhibits 9061 & 9126. These factual passages and the general absence of any legal opinions
2 indicate that this memorandum is not privileged, and that the primary purpose of his
3 memorandum was to provide Samsung’s management with information to facilitate a business
4 decision regarding an SDR/DDR license. See, e.g. id. at 1 REDACTED
5 . “When an
6 attorney conveys to his client facts acquired from other persons or sources, those facts are not
7 privileged.” Brinton v. Dep’t of State, 636 F.2d 600, 604 (Fed. Cir. 1980).
8 The non-privileged nature of the communications in Exhibits 9061 and 9129 is further
9 supported by the fact that Rambus’s deposition questions related to the substance of the
10 memorandum did not elicit attorney-client privilege objections from Samsung’s counsel. See,
REDACTED
11 e.g. Hamilton Decl., Exh. D, (Deposition of Charles Donohoe, May 13, 2008, at 152: 5-7
12
13
14
15
16 In the end, Samsung’s vague statement that this document was prepared “for the purpose
17 of rendering legal advice” is insufficient to sustain a “clear showing” that Mr. Shim’s
18 communications were prepared in his professional legal capacity. See Chevron Corp., 1996 WL
19 264769, at *4 (“a corporation must make a clear showing that in-house counsel's advice was
20 given in a professional legal capacity”); see, e.g. Dawson v. New York Life Ins. Co., 901 F.Supp.
21 1362, 1367 (N.D. Ill. 1995) (concluding that communications between employees and attorneys
22 were not privileged because the attorneys acted “more as courier[s] of factual information, rather
23 than legal advisors”) (quotations omitted).
24 3. Charles Donohoe Emails Summarizing Rambus Meetings (Exhibits
9079 & 9134)
25
Exhibit 9079 is a September 25, 2000 email from Charles Donohoe to Jay Shim
26
summarizing the same September 19, 2000 licensing meeting that is recounted in Exhibits 9077A
27
and 9078. See Exhibit 9079; Hamilton Decl., Exh. G (Deposition of Jay Shim, June 9, 2008, at
28
5908918.1 - 18 -
1 192:23-193:6) REDACTED
2 Samsung has recently suggested that privilege claims for individual attorney
3 documents must be justified “on a line-by-line basis,” Opp’n to Rambus’s MIL at 27, but does not
4 even attempt to meet this standard in its blanket assertion that Exhibit 9079 “reflects mental
5 impressions and communicates legal advice.” Mot. at 8. Indeed, REDACTED
6
10
11 . 16 REDACTED
12 but
13 also lack substantive legal analysis or opinions. Because Mr. Donohoe’s email primarily conveys
14 factual information rather than legal advice, and because Samsung has not even attempted to
15 make “a clear showing” that Mr. Donohoe’s comments were delivered in a professional legal
16 capacity, Samsung has failed to demonstrate that Exhibit 9079 is privileged. See Chevron Corp.,
17 1996 WL 264769, at *4; Regents of Univ. of Cal. v. Micro Therapeutics, Inc., No. C 03 05669 JW
18 (RS), 2007 WL 2069946, at *2 (N.D. Cal. July 13, 2007) (“Even if the information gathered is
19 necessary to render legal advice, that information and its transmittal to a client is not
20 privileged.”).
21 Samsung also asserts attorney work product protection for Exhibit 9079, claiming that Mr.
22 Donohoe’s email “reflects attorney mental impressions.” Mot. at 8. Even if this were true, it is
23 insufficient to insulate this document from discovery. To qualify for work product immunity, a
24 document must be “prepared in anticipation of litigation or for trial.” Fed. R. Civ. P. 26(b)(3).
25 However, Samsung has submitted no evidence from Mr. Donohoe or others that this email was
26 16
As stated above, Samsung has failed to carry its burden of showing that any of its exhibits are
27 privileged or work product. However, if the Court concludes that Exhibit 9079 is partially
protected, Rambus will not object to the redaction of the last sentence of paragraph two REDACTED
28 or the next-to-last sentence in paragraph four REDACTED
5908918.1 - 19 -
1 Cal. 2007 WL 2069946, at *2.

2 4. Neil Steinberg Letter on NEC Matter (Exhibit 9128)
3 Exhibit 9128 is a January 7, 1997 letter from Neil Steinberg to Jun Park bearing the
4 subject heading “NEC Licensing Matter.” See Exh. 9128; Hamilton Decl., Exh H (Deposition of
5 Jun Park, July 16, 2008, at 81:5-7). Samsung cites nothing in support of its claim that that this
6 document “reflects attorney mental impressions and was communicated for the purpose of
7 rendering legal advice.” Mot. at 8. For this reason alone, Samsung’s assertion of privilege for
8 Exhibit 9128 should be dismissed. See von Bulow, 811 F.2d 136 at 146 (stating that the burden of
9 establishing the attorney-client privilege is not discharged “by mere conclusory or ipse dixit
10 assertions”). Additionally, REDACTED
11 but does not communicate any legal
12 advice or opinions. See Exhibit 9127. Because this document is limited to statements of fact, and
13 because Samsung has not even attempted to make a “clear showing” that this communication
14 from its in-house counsel concerns legal matters, Samsung’s assertion of attorney-client privilege
15 for Exhibit 9128 should be dismissed. See Chevron Corp., 1996 WL 264769, at *4; Regents of
16 Univ. of Cal. 2007 WL 2069946, at *2.
17 5. Ik Cheol Kim Memorandum (Exhibit 9133)
18 Exhibit 9133 is a February 1, 2001 memorandum was prepared by Ik Cheol Kim, an

19 associate general manager in Samsung’s licensing group. 18 See Exhibit 9133. Apart from its
20 own privilege log, Samsung again cites nothing in support of its claim that Exhibit 9133
21 “communicates attorney mental impressions and legal advice.” Mot. at 8. Nor does Samsung
22 explain how Mr. Kim’s statement that REDACTED
23 involves the provision of legal advice. Exhibit 9133. This appears on its
24 face to be a statement of fact about a task to be done, not a privileged communication. Indeed,
25 9128, 9133, 9138, 9321, 9336, 9337, and 9351. See Mot. at 8-10. Rambus therefore regards
Samsung’s work product doctrine objections to these exhibits as waived and does not address the
26 merits of any potential claims herein.
18
27 Samsung claims that this memorandum was addressed to Jay Shim, but the face of the exhibit
and related testimony from Jun Park indicate that REDACTED . See
28 Exhibit 9133; Hamilton Decl., Exh. F (Deposition of Jun Park, July 17, 2008, at 176:16-19).
5908918.1 - 21 -
1 there is no evidence before the Court that Mr. Kim, who Samsung identifies as a “Senior
2 Manager, Memory IP Group,” is even an attorney. In the absence of further foundation for this
3 document, Samsung claims rests solely on its own ipse dixit. Accordingly, Samsung has failed to
4 demonstrate that Exhibit 9133 is privileged. See Diamond State Ins. Co., 157 F.R.D. at 698 ("A
5 generalized, self-serving, conclusory assertion of protection or privilege is without merit.").
6 6. “Rambus Again” Email (Exhibit 9139)
7 Exhibit 9139 is a March 22, 2001 email with the subject heading “Rambus again.” See
8 Exhibit 9139. Samsung’s claims of attorney-client privilege and work product protection are yet
9 again based exclusively on its privilege log entry, in which Samsung indicates that this email was
10 sent by Charles Donohoe to “Samsung Legal,” Powers Decl., Exh. 7 at 101 (SSP 1695), and its
11 own assertion that this is a “confidential internal Samsung email.” Mot. at 9. Because Samsung
12 makes no effort to show who received this email, or whether it was maintained in confidence, and
13 merely refers to its own privilege log to establish essential elements of the privilege, Samsung has
14 failed to show that Exhibit 9139 should be protected. 19 Moreover, even if the Court were to
15 accept Samsung’s unsupported representation that Exhibit 9139 was sent by Mr. Donohoe,
16 Samsung has also failed to make a “clear showing” that it should be protected. Chevron Corp.,
17 1996 WL 264769, at *4.
18 7. “Anita Thinks” Email From Donohoe (Exhibit 9321)
19 Exhibit 9321 is a September 14, 2000 email from Charles Donohoe REDACTED
20 See Exhibit 9321. Samsung’s claim of attorney-
21 client privilege is again based only on its privilege log entry, in which Samsung indicates that this
22 email was sent by Mr. Donohoe to Jay Shim, Powers Decl., Exh. 7 at 95 (SSP 1619), and its own
23 assertion that this email “regarding the Rambus-FTC case .... communicates attorney mental
24 impressions and legal advice.” Mot. at 9. Samsung offers no evidence to support its contention
25 that this email even relates to ”the Rambus-FTC case” or that it contains legal advice.20 Absent
26 19
The sole Samsung witness to testify about Exhibit 9139 REDACTED
27 . See Hamilton Decl., Exh. I (Deposition of Jinseong Park, July 28, 2008, at 80:7-11).
20
Samsung did not produce Exhibit 9321 until late in discovery and after the deposition of most
28 Samsung witnesses, including Mr. Donohoe. The sole Samsung witness to testify about Exhibit
5908918.1 - 22 -
1 supporting evidence in the form of testimony, affidavits or declarations, such broad self-serving
2 assertions are insufficient to establish the privilege. Because Samsung has failed to supply any
3 foundation for this document, Samsung’s assertion of attorney-client privilege for Exhibit 9321
4 should be dismissed.
5 8. Donohoe/Healey/Park Email Chain (Exhibits 9334 & 9335)
6 Exhibits 9334 and 9335 are Korean and English versions of a January 18, 2001 email
7 from Jun Park to various Samsung employees that forwards an earlier message from Charles
8 Donohoe to David Healey. See Mot. at 9. Samsung’s claim of attorney-client privilege is based
9 on nothing but its privilege log entry, Powers Decl., Exh. 10 at 2 (SSP 2025), and its own
10 assertion that this email “communicates attorney mental impressions and legal advice.” Mot. at 9.
11 Samsung offers no evidence to support its contentions regarding the document’s foundation or
12 content. Absent supporting evidence in the form of testimony, affidavits or declarations,
13 Samsung’s broad self-serving assertions are insufficient to establish the privilege.
14 Samsung also asserts attorney work product protection for Exhibits 9334 and 9335,
15 claiming that this document “communicates attorney mental impressions.” Mot. at 9. Even if
16 this were true, it is insufficient to insulate this document from discovery. To qualify for work
17 product protection, a document must be “prepared in anticipation of litigation or for trial.” Fed.
18 R. Civ. P. 26(b)(3). Though the document on its face states that Samsung “anticipated” litigation
19 with Rambus at the time of this email, Samsung has subsequently denied that it anticipated
20 litigation when faced with Rambus’s allegations that Samsung spoliated evidence. If Samsung
21 anticipated litigation at the time of Exhibits 9334 and 9335 such that it is entitled to federal work
22 product protection, Samsung needs to make that showing in support of its motion. Since it has
23 not, the Exhibits cannot be withheld as protected attorney work product.
24 9. 2001 Memoranda Regarding Steinberg Calls (Exhibits 9336 & 9337)
25 Exhibits 9336 and 9337 are memoranda from Jay Shim to Charles Donohoe and Gwangho
26 Kim recording the substance of telephone conversations that Mr. Shim had with Neil Steinberg at
27
9321 REDACTED . See Hamilton Decl.,
28 Exh. J (Deposition of Jeong Woo Lee, July 24, 2008, at 51:3-14).
5908918.1 - 23 -
1 Rambus on June 1st, 4th, 12th, 2001. See Exhibits 9336 & 9337. Samsung’s claims of attorney-
2 client privilege for these documents are based on nothing but its privilege log entries, Powers
3 Decl., Exh. 7 at 104 (SSP 1729 & SSP 1730), which state that these documents “summariz[e]
4 confidential phone conversation[s] and attorney impressions for the purpose of facilitating
5 rendering legal advice.” Because Samsung provides no evidence to support broad and self-
6 serving assertions, the Court should reject Samsung’s privilege claims out-of-hand. See Diamond
7 State Ins. Co., 157 F.R.D. at 698.
8 Even if Samsung’s privilege log entries are correct, factual summaries of phone
9 conversations with Neil Steinberg -- who was employed by Rambus in June 2001 -- are not
10 privileged. See Regents of Univ. of Cal. 2007 WL 2069946, at *2 (“Even if the information
11 gathered is necessary to render legal advice, that information and its transmittal to a client is not
12 privileged.”). Moreover, the contents of the documents establish that Mr. Shim was simply
13 transcribing the contents of his conversations with Rambus. See, e.g. Exhibit 9336 REDACTED
14
15 ; Exhibit 9337 REDACTED

16
17 . Because Samsung has failed to make a “clear showing” that the primary
18 purpose of these memoranda was to render legal advice, Chevron Corp., 1996 WL 264769, at *4,
19 and because the documents indicate that Mr. Shim was merely serving as a courier of factual
20 information, the Court should conclude that Exhibits 9336 and 9337 are not privileged. See
21 Dawson v. New York Life Ins. Co., 901 F.Supp. 1362, 1367 (N.D. Ill. 1995) (concluding that
22 communications between employees and attorneys were not privileged because the attorneys
23 acted “more as courier[s] of factual information, rather than legal advisors”) (quotations omitted).
24 10. Exhibit 9351
25 Exhibit 9351 contains three emails, including a June 29, 2000 email from Julian Hawkins
26 to Tae Sung Jung bearing the subject heading “Rambus IP Issue: Activities Update.” See Exhibit
27 9351. Samsung inaccurately describes this exhibit as a July 19, 2000 email “from Tae Sung Jung
28 to Jay Shim regarding Rambus IP,” citing only its privilege log entry, Powers Decl., Exh. 7 at 94
5908918.1 - 24 -

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Case 5:05-cv-00334-RMW Document 2183 Filed 09/12/2008 Page 1 of 30

1 GREGORY P. STONE (#78329)

2 RAMBUS INC., CASE NO.: C 05-02298 RMW

13 4. Neil Steinberg Letter on NEC Matter (Exhibit 9128)............................... 21

14 Civil Local Rule 7-2(c) ................................................................................................................... 3

18 to law, unsupported by the facts, and must be denied.

15 A. Samsung’s Steinberg-Related Claims and Defenses Remain In These Cases.

1 Cal. 2007 WL 2069946, at *2.

18 Exhibit 9133 is a February 1, 2001 memorandum was prepared by Ik Cheol Kim, an

15 ; Exhibit 9337 REDACTED

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