Federal Circuit disposition — 2012-m106-2-6-12-1-pdf

# NOTE: This order is nonprecedential. United States Court of Appeals for the Federal Circuit

IN RE GOOGLE INC.,
Petitioner.

Miscellaneous Docket No. 106

On Petition for Writ of Mandamus to the United States
District Court for the Northern District of California in
case no. 10-CV-3561, Judge William H. Alsup.

ON PETITION

Before LOURIE, PROST and MOORE, Circuit Judges.
MOORE, Circuit Judge.

## ORDER

Google Inc.'s petition for a writ of mandamus seeks to
prevent Oracle America, Inc. from using certain email
communications from one of Google's engineers at trial.
Because we agree with the United States District Court
for the Northern District of California that those docu-
ments are not privileged, we deny the petition. .

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## BACKGROUND

On July 20, 2010, approximately three weeks before
this suit was filed, Google's Senior Counsel Ben Lee sat
through a presentation by Oracle's attorneys. During the
presentation, Oracle's attorneys asserted Google's An-
droid smartphone platform infringed Oracle's patents.

On July 30, 2010, Lee met with Google's General
Counsel and Google's engineer Tim Lindholm to formu-
late a response to Oracle's infringement claims.

At 11:05 a.m. on August 6, 2010, Lindholm sent an
email to the attention of Andy Rubin, Google's Vice Presi-
dent in charge of its Android operating platform. Lind-
holm also included Lee, himself, and another Google
engineer, Dan Grove, on the email. The body of the email
provided as follows:

\-

Attorney Work Product

Google Confidential

Hi Andy,

This is a short pre-read for the call at 12:30. In
Dan's earlier email we didn't give you a lot of
context, looking for the visceral reaction that
we got.

What we've actually been asked to do (by Larry
and Sergei) is to investigate what technical al-
ternatives exist to Java for Android and
Chrome. We've been over a bunch of these,
and think they all suck. We conclude that we
need to negotiate a license for Java under the
terms we need.

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That said, Alan Eustace said that the threat of
moving off Java hit Safra Katz hard. We think
there is a value in the negotiation to put for-
ward our most credible alternative, the goal be-
ing to get better terms and price for Java.

It looks to us that Obj-C provides the most
credible alternative in this context, which
should not be confused with us thinking we
should make the change. What we're looking
for from you is the reasons why you hate this
idea, whether you think there's anything we've
missed in our understanding of the option.

-- Tim and Dan

Oracle filed suit on August 12, 2010. During discov-
ery, Google listed the final version of this email on its
privilege log, but produced "autosaves" or periodic snap-
shots of the email as it was being drafted.

On June 22, 2011, Oracle referenced the substance of
the email without objection by Google at a hearing before
the Magistrate Judge regarding a motion to compel
Lindholm's deposition and then again before the district
court later that same day.

The following day, however, Google asked Oracle to
return all versions of the email, asserting they were
protected material because Mr. Lindholm had prepared
the email at the behest of Google's lawyers as part of an
investigation into the Oracle infringement lawsuit.
Google further requested that Oracle not continue to
publicly reference the email.

Oracle agreed to temporarily comply with those re-
quests and then filed a motion to compel disclosure of
those emails. Oracle's motion asserted that the communi-

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cation was not protected under either the attorney-client
privilege or the attorney-work product privilege, arguing
the email itself suggests the Lindholm email was directed
to a non-lawyer (Rubin) at the direction of a non-lawyer
(Google's co-founders, Larry and Sergei) and does not
indicate any legal advice or work product.

After allowing the parties to file declarations and
brief the matter and after examining the material in
camera, the Magistrate held that the email was not
privileged. Citing In re Sealed Case, 737 F.2d 94, 99 (D.C.
Cir. 1984), the Magistrate concluded that Google had
failed to make a "clear showing" that the email was sent
to Lee in his capacity as an attorney conducting a legal
investigation. Finding that no "clear showing" was made
here, the Magistrate ordered Google to produce the docu-
ments.

On October 20, 2011, the district court denied
Google's motion for relief from that order, concluding that
"[r]equiring a clear showing of privilege in light of Attor-
ney Lee's role as in-house counsel was not clearly errone-
ous or contrary to law."

## DISCUSSION

Pursuant to the All Writs Act, 28 U.S.C. § 1651(a),
this court has the authority to issue the requested writ as
"necessary or appropriate in aid of' our jurisdiction. Miss.
Chem. Corp. v. Swift Agric. Chems. Corp., 717 F.2d 1374,
1379 (Fed. Cir. 1983). The use of mandamus is limited to
exceptional circumstances to correct a "clear abuse of
discretion or 'usurpation of judicial power' by the trial
court." Bankers Life & Cas. Co. v. Holland, 346 U.S. 379,
382 (1953).

The district court's refusal to protect the communica-
tions at issue here under the attorney-client privilege

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does not raise an issue unique to patent law. In review-
ing that issue, we therefore look to the decisions of the
regional circuit, here the Ninth Circuit, to ascertain
whether the district court improperly granted Oracle's
motion to compel. GFI, Inc. v. Franklin Corp., 265 F.3d
1268, 1272 (Fed. Cir. 2001).

"The party asserting the attorney-client privilege has
the burden of establishing the relationship and the privi-
leged nature of the communication." Ralls v. United
States, 52 F.3d 223, 225 (9th Cir. 1995). Whether that
burden has been met is reviewed de novo. Id. Under
Ninth Circuit law, we also review the district court's
rulings on the scope of the attorney-client privilege de
novo. United States v. Blackman, 72 F.3d 1418, 1423 (9th
Cir. 1995). We review the district court's conclusion that
Lindholm's email is not protected by the attorney-client
privilege as "a mixed question of law and fact which this
court reviews independently and without deference to the
district court." United States v. Gray, 876 F.2d 1411,
1415 (9th Cir. 1989).

In discussing the issue of attorney-client privilege in
the context of an internal investigation performed by an
in-house counsel, the Supreme Court in Upjohn Co. v.
United States, 449 U.S. 391, 383 (1981) stated that the
privilege "exists to protect not only the giving of profes-
sional advice to those who can act on it but also the giving
of information to the lawyer to enable him to give sound
and informed advice."

Google argues that Lindholm's email was made at the
behest of Lee for purposes of investigating Oracle's in-
fringement allegations and should therefore be protected
under Upjohn. In support of this argument, Google
submits a declaration from Lindholm stating that
Google's in-house counsel Lee asked Lindholm to "gather

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information for Google's lawyers and management to
consider in evaluating technology issues related to Ora-
cle's infringement claims," and that the email in question
"concern[ed] certain topics that [Google's General Coun-
sel] Mr. Walker and Mr. Lee had asked [him] ... to inves-
tigate." Google further submits a declaration from Lee
attesting to the fact that the email "addresses some of the
Oracle-related topics that Walker and I asked him to
investigate."

Oracle responds that the email itself refutes Google's
privilege claim. Oracle argues that the content of the
email suggests that Lindholm had been asked by Google's
management to look into technical alternatives to using
the subject matter of Oracle's patent to "bring value in the
negotiation" with Oracle for a license with the "goal being
to get better terms and price for [a] Java [license]."
Oracle therefore argues that contrary to Google's claim,
Lindholm's email was directed to Google's pursuit of a
license to the patents on their best terms as opposed to
assisting Lee in his investigation into the infringement
suit.

We agree with Oracle that the email casts sufficient
doubt as to Google's privilege claim. Lindholm states in
the email that he was responding to a request from
Google's management, not Google's attorneys. In addi-
tion, Lindholm directs the email to Rubin, the head of the
smartphone division, rather than to Lee. The email
explains its purpose: "What we've actually been asked to
do (by Larry and Sergei) is to investigate what technical
alternatives exist to Java for Android and Chrome." The
email's discussion is directed at a negotiation strategy as
opposed to a license negotiation as a component or legal
strategy. The email does not evidence any sort of in-
fringement or invalidity analysis. As noted by the trial
court, "[n]othing in the content of the Email indicates that

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Lindholm prepared it in anticipation of litigation or to
further the provision of legal advice."

Google also argues that the "clear showing" require-
ment is limited to circumstances like those in the Sealed
Case where the in-house attorney in question acted as
both the company's attorney and vice president. Because
Google contends that there is no evidence Lee had any
responsibilities outside the lawyer's sphere, it argues the
Magistrate Judge adopted a "radically broadened version"
of the Sealed Case standard thereby in effect using Lee's
status as an in-house counsel to "dilute" the privilege
provided for in Upjohn.

We see no merit to this contention. It is beyond
dispute that parties seeking to establish the privilege are
required to sufficiently establish the communication at
issue relates to professional legal services (as opposed to
business considerations), regardless of whether the attor-
ney had distinct non-legal responsibilities for the com-
pany. See United States v. Rowe, 96 F.3d 1294, 1297 (9th
Cir. 1996) ("Prior to Upjohn ... [w]here the attorney was
asked for business (as opposed to legal) counsel, no privi-
lege attached. ... Upjohn did not eliminate this distinc-
tion.").

Google raises additional arguments why its petition
should nonetheless be granted. We find none of those
arguments persuasive. Google contends that courts have
recognized a rebuttable presumption that a lawyer in a
legal department or working for a general counsel is most
often giving legal advice. This argument misses the
point. It is not that Lee was acting outside the role of an
attorney but that Google failed to demonstrate the pur-
pose of the communication was to further his investiga-
tion into the infringement suit. In any event, we agree

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with the district court that even assuming a presumption
applies, the evidence overcomes that presumption.

Google also briefly raises the argument that the email
should be protected under the attorney work-product
doctrine. In rejecting this argument below, the court
explained "Google did little to advance an argument that
the Email constitutes attorney work-product devoting
only two sentences to the issue." The court further ex-
plained that even to the extent the issue should be con-
sidered, the same "evidentiary gaps and logical
inconsistencies that pervade its attorney-client privilege
argument fatally impugn Google's claim for work-product
protection." For the same reasons, we reject Google's
argument in its petition.

Finally, Google notes that the email contained the
words "Google Confidential" and "Attorney Work Prod-
uct." Lindholm's expectations regarding confidentiality,
however, do not demonstrate entitlement to the privilege
in light of the remainder of the email.

Accordingly,

IT IS ORDERED THAT:

(1) The petition for a writ of mandamus is denied.

(2) The motion for oral argument is denied.

FOR THE COURT

FEB 06 2012

/s/ Jan Horbaly

Date

Jan Horbaly Clerk

FILED
U.S. COURT OF APPEALS FOR
THE FEDERAL CIRCUIT
FEB 06 2012

JAN HORBALY
CLERK

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cc: Robert A. Van Nest, Esq.
William F. Norton, Jr., Esq.
Clerk, United States District Court for the Northern
District Of California
$19