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AT&T CORP. v. MICROSOFT CORP.

April 18, 2003

AT&T CORP., PLAINTIFFS,
v.
MICROSOFT CORP., DEFENDANTS.



The opinion of the court was delivered by: James Larson, United States Magistrate Judge

ORDER DENYING AT&T'S MOTION TO COMPEL PRODUCTION OF DOCUMENTS 82, 83, 92, AND 95 FROM THIRD PARTY DSP
Introduction

Plaintiff AT&T Corporation's motion to compel production of documents from third party DSP Group, Inc., came on for hearing on March 26, 2003. Appearing for AT&T was Scott Devereaux Appearing for third party DSP were Daphne Butler and Richard Kim.

Factual Background

AT& T Corp. ("AT&T") filed suit against Microsoft Corp. ("Microsoft") for infringement of U.S. Patent No. 32,580 ("the `580 patent"). The `580 patent relates to speech coding technology. Essentially, the invention is a method that significantly reduces the size of a sound file containing a speech recording. Smaller file size allows for faster transfer times across a network, as well as occupying less space on a storage device. The current applications utilizing the smaller sound files are digital cellular phones, computer software, audio video conferencing, voice messaging, and Internet voice communications.

Microsoft is accused of implementing an infringing speech coding technology known as TrueSpeech®CODEC (TrueSpeech) into Microsoft products, such as Windows 95. TrueSpeech was developed by DSP Group, Inc. ("DSP") and licensed to Microsoft. DSP is a California corporation with offices in Santa Clara, California. Under a 1993 licensing agreement with Microsoft, DSP is obligated to indemnify Microsoft in the case of an infringement suit. AT&T claims that TrueSpeech infringes upon AT&T's own speech compression technology. AT&T asserts that Microsoft has infringed the `580 patent through sales of the software containing TrueSpeech.

Procedural Background

On June 4, 2001, AT&T filed suit against Microsoft in U.S. District Court for the Southern District of New York. An amended complaint was filed on or about February 19, 2002. AT&T served DSP with a subpoena for production of documents and deposition testimony on February 12, 2002. In a letter dated September 18, 2002, plaintiff's counsel requested that DSP produce certain documents originally designated as privileged. DSP complied but did not produce all the requested documents. Instead, DSP asserted privilege and work product for the four documents not produced (82,83,92 and 95).

Two of the four documents in question (82 and 83) are e-mails and two are technical memoranda (92 and 95) that initially were only between employees of DSP. These were later forwarded to in-house counsel. The e-mails contain discussions between DSP employees relating to the litigation between AT&T and Microsoft. DSP was aware of the litigation and analyzed AT&T's patent to determine the extent of plaintiff's rights under the `580 patent.

On December 30, 2002, AT&T filed a motion to compel production of the four "privileged" documents. This case was assigned to Chief Judge Marilyn Hall Patel and was referred to Judge Larson on January 2, 2003 for disposition of this motion to compel.

Analysis

Plaintiff AT&T raises these questions: 1) Are documents that do not contain confidential attorney-client communications subject to the attorney-client privilege? 2) Do non-privileged documents become privileged when they are sent to in-house counsel? 3) May DSP, a nonparty to the underlying patent infringement litigation, assert the work product doctrine in contravention of Ninth Circuit Authority?

I. DSP's Burden to Prove Privilege and the Prima Facie Case

Once the privilege is invoked, the party asserting it must make a prima facie showing that the privilege protects the documents in question. In re Grand Jury Investigation, 974 F.2d at 1068, 1070-71 (9th Cir. 1992); see also Federal Rule 26(b)(5) (requiring an express claim of privilege, the grounds upon which it is based, and disclosure of sufficient information to determine the applicability of the privilege). A privilege log is "one means by which a party can establish the [applicability of a] privilege." In re Community Psychiatric Centers, 1993 WL 497253 at *4 (C.D.Cal.); see also, In re Grand Jury, 974 F.2d at 1071. The log itself must contain "at least the following: (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." Community Psychiatric Centers, 1993 WL 497253 at *4 (C.D.Cal.). Additionally, specific information is necessary to determine the sufficiency of the log. Alexander Black, Annotation, What Corporate Communications are Entitled to Attorney-Client Privilege-Modern Cases, 27 A.L.R. 5th 76 (1995).

Under Federal Rule 26(b)(5) the burden of proving the attachment of privilege to each document is on DSP. See Clarke v. Am. Commercial Nat'l Bank, 974 F.2d 127, 129 (9th Cir. 1992). Considering DSP's log, it lists: (a) sender: A. Berstein and recipients: Y. Cohen and attorney A. Macpherson; (b) the type of document: e-mails; (c) and (d) the identities of all parties who have received or reviewed the documents; and (e) that the e-mails are dated August 16 and 22, 1995. Additionally, DSP's log has gone beyond the requirements of Dole and also identifies the subject matter of the documents. Therefore, DSP satisfies the prima facie showing required under Dole and In re Grand Jury. See In re Grand Jury Investigation, 974 F.2d 1068 (9th Cir. 1992).

In addition to a privilege log, the party claiming privilege should produce affidavits describing the confidential nature of the documents. In re Grand Jury, 974 F.2d 1071. DSP produced affidavits along with its motion to compel. In their affidavits, Alberto Berstein (Research Engineer) and Ze'ev Roth (Digital Signal Processing Manager), attest to their review of AT&T's patents and consultations with legal counsel. These affidavits and the specificity of the descriptions in the privilege log, at least with respect to documents 82, 83, and 92, answer any questions AT&T may have concerning the content of the documents. See Id. at 1071. Therefore, DSP makes its prima ...


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