ORDER RE: MOTIONS TO COMPEL (Re: Docket Nos. 3212, 3213)
PAUL S. GREWAL, Magistrate Judge.
Day 1,449 in this case.
Following remand by the district judge on two issues arising out of the undersigned's January 29, 2014 sanctions order, Plaintiff Apple Inc., Defendants Samsung Electronics Co., Ltd. et al. and non-party Nokia Corporation dispute whether Samsung may withhold as privileged 279 tabbed documents submitted for in camera review. Through a combination of its privilege log, briefs, declarations and this court's in camera review, Samsung succeeds in showing the documents it submitted were, as a whole, privileged. But by placing the contents of the documents at issue, distributing them and disclosing what they say and do not say in the sanctions proceedings, Samsung waived that privilege. The result is that the court GRANTS Apple's and GRANTS-IN-PART Nokia's motions to compel, as explained below.
I.
The Ninth Circuit describes elements of the attorney-client privilege this way: "(1) [w]hen legal advice of any kind is sought (2) from a professional legal adviser in his or her capacity as such, (3) the communications relating to that purpose, (4) made in confidence (5) by the client, (6) are, at the client's instance, permanently protected (7) from disclosure by the client or by the legal adviser (8) unless the protection be waived."1 "Because it impedes full and free discovery of the truth, the attorney-client privilege is strictly construed."2 Claims of privilege must be particularized.3
The party asserting the privilege bears the burden of establishing all necessary elements.4 In particular, a party asserting privilege must "describe the nature of the documents . . . in a manner that, without revealing information itself privileged or protected, will enable other parties to assess the claim."5 The most common way to do this is with a privilege log. In the Ninth Circuit, a privilege log must identify "(a) the attorney and client involved, (b) the nature of the document, (c) all persons or entities shown on the document to have received or sent the document, (d) all persons or entities known to have been furnished the document or informed of its substance, and (e) the date the document was generated, prepared, or dated."6 The failure to substantiate privilege in a log also may waive the privilege.7 But claims of privilege may pass muster despite an inadequate privilege log.8 Briefs, declarations or other proof may establish the purpose of the communication or the specific role of the sender and each individual recipient.9 In camera review, often a court's last resort, also may enlighten the court's assessment of the privilege of the documents.10
This court previously held that Samsung and its attorneys violated the protective order by repeatedly distributing unredacted copies of an expert report from Dr. David Teece.11 As part of its evaluation, the court conducted an exhaustive in camera review of voluminous documents claimed by Samsung as privileged. The result was an order to Samsung to show cause why sanctions were not warranted, and why privilege was claimed as to 11 particular documents.12 Not satisfied with Samsung's response on sanctions, and because the Teece report plainly disclosed information confidential to both Apple and Nokia, the court awarded both Apple and Nokia their fees and costs.13
After the sanctions order issued, both Samsung and Nokia moved for relief. Samsung's motion made a narrow request: that the court reconsider whether Samsung had waived the attorney-client privilege as to seven particular documents addressed in the order.14 In granting Samsung's motion, the district judge agreed with Samsung that its prior offer to produce the documents did not waive privilege.15 But rather than simply decide whether Samsung had waived privilege on alternative grounds or whether Samsung is not entitled to assert privilege over the documents for other reasons, the district judge remanded the matter for further consideration.16 The district judge denied Samsung's additional motion for relief from the award of fees and costs.17 In granting-in-part Nokia's motion for relief for access to documents submitted by Samsung in camera,18 the district judge again remanded the matter, so that the undersigned could consider further whether the privilege shielded the in camera documents. If the documents are indeed privileged, then the undersigned must consider whether due process requires that Nokia receive access.19
Back on this end of the fourth floor, Apple and Nokia filed new motions to compel.20 Apple's motion seeks only the seven offered documents,21 while Nokia seeks all documents reviewed in camera to which privilege does not attach. Apple and Nokia raise three principle arguments. First, Samsung failed adequately to substantiate its assertions of privilege. In particular, Samsung did not meet its burden to show privilege because Samsung's claims are too sweeping and generic. Second, Samsung waived any privilege by putting at issue what the documents do or do not disclose and by making selective and partial disclosures including to numerous people with no apparent connection to this litigation. Third, Nokia should receive access to the documents, even if they are privileged, to fairly evaluate the court's conclusions regarding protective order violations and sanctions.22
II.
The district court has jurisdiction under 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331, 1338 and 1367. The matter was referred to the undersigned pursuant to Fed. R. Civ. P. 72(a).
III.
The Ninth Circuit is clear: a party cannot withhold documents as privileged if it fails to substantiate its privilege assertions.23 A privilege log might serve to substantiate privilege assertions; so too might briefs, declarations and other proof or in camera review.24 A party further cannot withhold privileged documents when the party raises a claim or defense that put the privileged communication at issue, discloses the documents to unrelated parties or discloses portions of privileged documents.25 Though Samsung shows that privilege attaches, its waiver of that privilege warrants production of a subset of those documents.
First, before turning to the fundamental issues in dispute, the court must make one observation. While Apple's request for seven documents is narrow, Nokia's request for all of the in camera documents is overly broad, especially for a non-party.26 Nokia's previous requests for documents were limited to those that related to the scope of Samsung's use of Nokia's confidential business information.27 Only in its motion for reconsideration did Nokia demand production of all of the documents.28 But many of the privileged documents at issue do not even relate to Nokia,29 and instead involve Apple's licenses with Sharp, Philips and Ericsson.30 Nokia barely endeavors to explain why it is entitled to any of these.
Second, there is no doubt that Samsung's privilege log and declarations have problems. But on balance, the court's review of Samsung's privilege log, briefs, declarations and the in camera documents reveals that Samsung managed to meet its initial burden to show that privilege attaches to the documents.
Samsung's privilege log provides only generic statements such as "email reflecting legal advice regarding licensing, prepared at the direction of counsel in anticipation of litigation."31 "A vague declaration that states only that the document `reflects' an attorney's advice is insufficient to demonstrate that the document should be found privileged."32 Also unclear in the log is why Samsung produced some documents listed on the privilege log in redacted form—albeit with little more revealed than what was provided by the log—while entirely withholding others that include information that need not be redacted.33 For some documents, the privilege log does not make clear an attorney was involved.34 Even as to communications involving individuals who may be lawyers, "[t]he fact that a person is a lawyer does not make all communications with that person privileged."35 "[A] single email of a `legal nature' does not privilege the entire email thread."36 It was in light of complaints from both Apple and Nokia about the sufficiency of these statements and Samsung's urging that the legal purpose of the documents was "facially obvious"37 that the court granted in camera review.
A look at the documents shows privilege attaches. As to 11 of the documents, in its show cause order, the court noted that "many if not all of [the 11 documents cited in footnotes 10-15] do not appear aimed at or in furtherance of legal counsel, but rather a simple business purpose would have served as cause for the communication."38 "No privilege can attach to any communication as to which a business purpose would have served as a sufficient cause, i.e., any communication that would have been made because of a business purpose, even if there had been no perceived additional interest in securing legal advice."39 The court gave Samsung one more chance to show privilege as to these documents, and Samsung responded with further briefs and declarations.40 As the court indicated in a footnote in its sanctions order noting that only cited portions were not privileged, Samsung succeeded in showing privilege attached to each document as a whole.41 The in camera review served its purpose.
Third, although Samsung has met its initial burden to show privilege, Samsung ultimately waived it as to a subset of the documents. This is not an offer-based waiver of the type previously addressed both by the undersigned and the district judge.42 Rather, Samsung placed the documents at issue,43 partially disclosed privileged documents44 and distributed privileged documents to unrelated parties.
The principle purpose of the doctrine of waiver is "to protect against the unfairness that would result from a privilege holder selectively disclosing privileged communications to an adversary, revealing those that support the cause while claiming the shelter of the privilege to avoid disclosing those that are less favorable."45 Even where there is no disclosure, fairness requires a waiver when the privilege holder raises a claim or defense that puts privileged communications at issue.46 "The principle is often expressed in terms of preventing a party from using the privilege as both a shield and a sword. . . . In practical terms, this means that parties in litigation may not abuse the privilege by asserting claims the opposing party cannot adequately dispute unless it has access to the privileged materials. The party asserting the claim is said to have implicitly waived the privilege."47 Even in a Rule 11 proceeding, parties are not obligated to disclose privileged information; they have the opportunity to decide whether to make such a disclosure, and once privileged information is affirmatively relied on, any privilege that may attach is impliedly waived.48
While "privileged communications do not become discoverable simply because they are related to issues raised in the litigation,"49 "[w]here a party raises a claim which in fairness requires disclosure of the protected communication, the privilege may be implicitly waived."50 A party may avoid waiver by not voluntarily disclosing privileged information.51
Samsung put the disputed documents at issue by raising affirmative defenses about inadvertence and whether Nokia's confidential information actually was used.52 Samsung's affirmative defenses extended beyond mere denial, because neither Apple nor Nokia alleged the disclosures were intentional, and proof of violation of the protective order did not rely on use. For example, Samsung referenced privileged communications to argue there is "no evidence that anyone deliberately, with a purpose of sharing information that should not be shared at any time disclosed that information. We are talking about inadvertent disclosures."53 Samsung also used privileged communications to justify its argument that although there was disclosure, no recipient used Nokia's confidential business information: "And the uncontroverted evidence shows that the incomplete redaction was inadvertent and that Samsung never used the alleged confidential information."54
Samsung protests that it relied on only non-privileged information,55 but the record proves otherwise.56 Improperly invoking privilege as a shield and a sword, Samsung's use placed the privileged information at issue while improperly limiting Apple and Nokia's ability to assess or challenge these assertions.57 This waived privilege.58
While the at-issue doctrine applies to all documents related to an entire claim or defense,59 Samsung argues that where a court finds an implied waiver, this finding does not require "disclosure of the materials categorically; rather, the court directs the party holding the privilege to produce the privileged materials if it wishes to go forward with its claims implicating them."60 Samsung maintains it has never been informed by the court that pursuing its defenses would lead to a waiver and thus has never had any opportunity to consider whether to alter those defenses. But the Ninth Circuit has never required prior notice from a court of a potential waiver, and Samsung has been on notice from Apple and Nokia that it risked waiver of its claims of privilege for nearly a year and a half.61
As to selective, partial disclosures, "[o]nce a litigant decides to affirmatively rely on privileged information thereby placing said information into issue . . . any privilege that may attach is impliedly waived."62 This rule aims "to protect against the unfairness that would result from a privilege holder selectively disclosing privileged communications to an adversary, revealing those that support the cause while claiming the shelter of the privilege to avoid disclosing those that are less favorable."63
Samsung may have acted reasonably in disclosing certain information about the withheld or redacted documents, such as the identities of senders and recipients. But Samsung went further by also disclosing information contained in withheld or redacted documents. For example, Samsung disclosed details about Tabs 19, 20 and 272 when explaining that a request for the Teece report had to do with another case unrelated to Apple licensing information.64 Further, in pursuit of Samsung's affirmative defense that it took corrective action following the protective order violation, Samsung selectively disclosed information it had deemed privileged. The so-called "corrective action" still was not fully redacted according to the protective order's constraints.65
Samsung's statements to the effect of "does not contain confidential license information"; "does not discuss Dr. Teece's report"; "contains no information derived from materials produced pursuant to the protective order" and "I did not instruct others to use, and I am not aware of anyone from Samsung using, for any reason, information about the terms of any Apple license agreement with Nokia or any other company obtained from any version of the Teece report that I received or distributed" may not facially appear to reveal confidential information. In the context of defenses aimed to mitigate Samsung's admitted disclosure of confidential information contrary to the protective order, however, these arguments go beyond "mere denials"66 and are more than just "related to issues raised in the litigation."67 They go the merits. A party may neither disclose nor dispute contents of documents while simultaneously concealing other portions under a claim of privilege, when the truth of the party's statements "can only be assessed by examination of the privileged communication."68
Samsung further fails to explain why it disclosed documents associated with the Teece report to many individuals with no apparent connection to this litigation.69 To be sure, the privilege may attach where "employees discuss or transmit legal advice given by counsel."70 But as an example, Tab 215 shows "pervasive distribution of . . . [sensitive business information] to Samsung employees who were not authorized to have access to it."71 "Because in-house counsel may operate in a purely or primarily business capacity in connection with many corporate endeavors, the presumption that attaches to communications with outside counsel does not extend to communications with in-house counsel."72 Samsung offers nothing to establish that the in-house counsel identified were not acting in a purely or primarily business capacity. Samsung's declarations address only Tab 6, and they claim only that the Teece declaration was relevant to "aspects of the global Apple litigations" rather than this specific case, contrary to the requirements of the protective order.73 Nor do the declarations show that each recipient was "directly concerned with" or had "primary responsibility for the subject matter of the communication."74 And while Samsung complains that Apple and Nokia offer "no basis" for disputing Samsung's description of the emails as having sent to each recipient for providing Samsung with legal advice, what Samsung ignores is that the burden lies of proof here lies with Samsung, and Samsun has failed even the most generous read of its threshold burden.75
IV.
The court is satisfied that Samsung has waived privilege as to the 92 documents relevant to Nokia's confidential business information,76 which comprise the tabs cited by the court in its sanctions order as well as Apple's requested seven documents. In the case of implied waiver, the court "must impose a waiver no broader than needed to ensure the fairness of the proceedings before it."77 Access only to those documents is fair because Samsung's deficiencies do not warrant the harsh sanction of an order of complete production78 when Nokia's broad requests for waiver and access are not sufficiently substantiated. While Samsung bears the burden of showing privilege, Nokia does not describe how each of the 279 documents are relevant to Nokia as a non-party, and Nokia does not specifically explain why it should have access to each document.79 While the court is—to put it mildly—skeptical about the benefit in prolonging this dispute any longer, on balance, Nokia and Apple are entitled to relief. No later than April 10, 2015, Samsung shall produce unredacted copies of those documents—the 92 documents referencing Nokia to Nokia, the seven offered documents to Apple.
SO ORDERED.