Case 5:05-cv-00334-RMW Document 2238 Filed 09/19/2008 Page 1 of 4

1 Attorney list on signature page

3
IN THE UNITED STATES DISTRICT COURT
4 NORTHERN DISTRICT OF CALIFORNIA – SAN JOSE DIVISION
5 RAMBUS, INC.,
6 Plaintiff.
v.
7
HYNIX SEMICONDUCTOR INC., HYNIX
8 SEMICONDUCTOR AMERICA INC.,
HYNIX Case No. C 05-00334 RMW
9 SEMICONDUCTOR MANUFACTURING
AMERICA INC., SAMSUNG’S REPLY IN SUPPORT OF
10 ITS MOTION IN LIMINE TO EXCLUDE
SAMSUNG ELECTRONICS CO., LTD., PRIVILEGED DOCUMENTS PRODUCED
11 SAMSUNG ELECTRONICS AMERICA, PURSUANT TO THE COURT’S
INC., IMPLIED WAIVER ORDER
12 SAMSUNG SEMICONDUCTOR, INC.,
SAMSUNG AUSTIN SEMICONDUCTOR, Location: Courtroom 6
13 L.P., Judge: Hon. Ronald M. Whyte
14 NANYA TECHNOLOGY CORPORATION,
NANYA TECHNOLOGY CORPORATION
15 U.S.A.,
16
Defendants.
17
RAMBUS, INC.,
18
Plaintiff.
19 v.
20 SAMSUNG ELECTRONICS CO., LTD., Case No. C 05-02298 RMW
SAMSUNG ELECTRONICS AMERICA,
21 INC.,
SAMSUNG SEMICONDUCTOR, INC.,
22 SAMSUNG AUSTIN SEMICONDUCTOR,
L.P.,
23
Defendants.
24

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27

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CASE NO. C 05 00334 RMW

SAMSUNG’S REPLY IN SUPPORT OF ITS CASE NO. C 05 02298 RMW
MOTION IN LIMINE
 Case 5:05-cv-00334-RMW Document 2238 Filed 09/19/2008 Page 2 of 4

1 Samsung respectfully submits this short Reply to point out a fundamental legal error in

2 Rambus’s Opposition to Samsung’s Supplemental Brief on its pending motion in limine regarding

3 certain privileged documents.

4 Rambus’s Opposition centers on the erroneous notion that communications that do not

5 contain explicit legal advice are incapable of being privileged. See Opp. at 2 (“the documents on

6 their face are devoid of legal advice”); id. at 3 (asserting that documents are not privileged

7 because of “the absence of any legal advice in these memoranda”) (emphasis in original).

8 Rambus’s contention that a document must itself contain legal advice to be protected by privilege

9 is simply incorrect; it is sufficient if the document functions to facilitate the provision of legal

10 advice. Jack Winter, Inc. v. Koratron Co., 54 F.R.D. 44, 46 (N.D. Cal. 1971).

11 Samsung is not arguing that the mere fact that these documents were created by attorneys

12 renders them privileged. Rather, Samsung has demonstrated that these documents are privileged

13 communications because, in each case, a request for legal advice is necessarily understood, taking

14 into account the facts surrounding the creation of the document and the communication of the

15 document to the client. These facts are attested to by Messrs. Donohoe, Shim, and Park in their

16 respective declarations submitted with Samsung’s Supplemental Brief. See Donohoe Decl. at ¶¶

17 3-8; Shim Decl. at ¶¶ 3-10; Park Decl. at ¶ 3.

18 Rambus has not offered any evidence to rebut the declarations submitted by Samsung,

19 which demonstrate that the subject documents were generated for the purpose of facilitating the

20 rendering of legal advice. Rambus does not dispute that the subject documents were either

21 prepared by Samsung in-house attorneys or, in a few instances, by their staff at their direction,

22 and were provided to the client. Nor does Rambus dispute that these documents were prepared in

23 connection with ongoing legal matters, such as license negotiations or Samsung’s participation in

24 litigation as a third party, for example. Indeed, Rambus concedes that Samsung’s in-house

25 attorneys acted “to facilitate Samsung’s decisions regarding licensing and licensing negotiations.”

26 Opp. at 3. Rambus seems to take the position that a license negotiation is not a legal matter and

27 would not call for the provision of legal advice. But it should go without saying that license

28 negotiations involve many legal issues and inherently call for the provision of legal advice and

CASE NO. C 05 00334 RMW

SAMSUNG’S REPLY IN SUPPORT OF ITS CASE NO. C 05 02298 RMW
MOTION IN LIMINE 1
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1 guidance. Indeed, the documents at issue include on their face legal advice and attorneys’

2 observations woven in among each of the communications, and the privileged nature of each

3 document is attested to in Samsung’s declarations and is also summarized for the convenience of

4 the Court in Exhibit 1 to Samsung’s Supplemental Brief.

5 The Ninth Circuit has repeatedly recognized that the attorney-client privilege “applies to

6 communications between lawyers and their clients when the lawyers act in a counseling and

7 planning role, as well as when lawyers represent their clients in litigation.” U.S. v. Chen, 99 F.3d

8 1495, 1501 (9th Cir. 1996). Moreover, that the lawyers were involved in “business analysis,” as

9 Rambus puts it, is irrelevant. Opp. at 3. What matters is “whether the lawyer was employed with

10 [ ] ‘reference to his knowledge and discretion in the law,’ to give the advice.” Chen, 99 F.3d at

11 1502 (citation omitted).1 Here, Samsung’s uncontroverted declarations establish that this is the

12 case. See Donohoe Decl. at ¶¶3-8; Shim Decl. at ¶¶ 3-10; Park Decl. at ¶ 3. See also In re CV

13 Therapeutics, Inc. Sec. Litig., 2006 U.S. Dist. LEXIS 41568 at *12, 15-16 (N.D. Cal. June 16,

14 2006) (court looks to the context and content of communication to determine whether a request

15 for legal advice is fairly implied, and privilege applies to “information [sent] to corporate counsel

16 in order to keep them apprised of ongoing business developments, with the expectation that the

17 attorney will respond in the event that the matter raises important legal issues”).

18 Simply put, it is well-established that the attorney-client privilege protects documents that

19 “involve either client communications intended to keep the attorney apprised of continuing

20 business developments, with an implied request for legal advice based thereon, or self-initiated

21 attorney communications intended to keep the client posted on legal developments and

22 implications, including implications of client activity noticed by the attorney but with regard to

23 which no written request for advice from the client has been found.” Jack Winter, Inc., 54 F.R.D.

24 at 46. Moreover, “the attorney’s counsel is vital to the conduct of business. The client therefore

25 1
Rambus overlooks Ninth Circuit authority on this point and relies instead on authority from the
26 Eastern District of New York. See Cuno, Inc. v. Pall Corp., 121 F.R.D. 198, 204 (E.D.N.Y.
1988), cited in Rambus Opp. at 3. But judges in that district have also noted that they “have
27 taken a broad view of legal advice in applying the privilege, in recognition of the unique role that
an attorney brings to bear in imparting advice that may incidentally also involve business advice.”
28 United States Postal Serv. v. Phelps Dodge Ref. Corp., 852 F. Supp. 156, 159 (E.D.N.Y. 1994)
(emphasis added).
SAMSUNG’S REPLY IN SUPPORT OF ITS CASE NO. C 05 00334 RMW
MOTION IN LIMINE
2 CASE NO. C 05 02298 RMW
 Case 5:05-cv-00334-RMW Document 2238 Filed 09/19/2008 Page 4 of 4

1 does have a right to expect that the confidentiality of interchange designed to promote the

2 exercise of this counsel will be preserved.” Id. at 47 (in conducting in camera review of

3 documents, noting that “doubts have been resolved in favor of the privilege”). Such is the case

4 here.

5 CONCLUSION
6 For these reasons, as well as those presented in Samsung’s original motion and in its

7 supplemental briefing, the Court should grant Samsung’s motion in limine.

9 Dated: September 19, 2008

10 WEIL, GOTSHAL & MANGES, LLP

11
By: /s/ Matthew D. Powers
12 Matthew D. Powers
13 MATTHEW D. POWERS (Bar No. 104795)
Email: matthew.powers@weil.com
14 EDWARD R. REINES (Bar No. 135930)
Email: edward.reines@weil.com
15 WEIL, GOTSHAL & MANGES LLP
201 Redwood Shores Parkway
16 Redwood Shores, CA 94065
Telephone: (650) 802-3000
17 Facsimile: (650) 802-3100
18 Attorneys for Defendants
SAMSUNG ELECTRONICS CO., LTD.,
19 SAMSUNG ELECTRONICS AMERICA, INC.,
SAMSUNG SEMICONDUCTOR, INC., and
20 SAMSUNG AUSTIN SEMICONDUCTOR, L.P.
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SAMSUNG’S REPLY IN SUPPORT OF ITS CASE NO. C 05 00334 RMW

MOTION IN LIMINE
3 CASE NO. C 05 02298 RMW