United States District Court

For the Northern District of California

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1 After the instant motion was filed, Mformation withdrew its privilege claims

as to a number of documents on its privilege log. And, RIM has withdrawn its motion as to

privilege log entries 4-6, 83, 100, 110, 136, 218, 219, 222, 226, 236-239, 324, 325, 329, 500-

501, 581, 586-587, 660, 669, 788-797, 817, 841, 862-864, 1023, 1027-1030, 1083, 1283,

1305, 1408-1409, 1411-1412, 1414-1415, 1423-1424, 1497, 1503, 1505, 1516, 1578, 1600,

1635, 1636, 1637, 1639, 1641, 1643, 1669, 1676, and 1692. (See Docket No. 207, Reply at

2).

NOT FOR CITATION

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF CALIFORNIA

SAN JOSE DIVISION

MFORMATION TECHNOLOGIES, INC.,

Plaintiff,

 v.

RESEARCH IN MOTION LIMITED and

RESEARCH IN MOTION CORPORATION,

Defendants. /

No. C08-04990 JW (HRL)

ORDER GRANTING IN PART AND

DENYING IN PART DEFENDANTS’

MOTION TO COMPEL WITHDRAWAL

OF PRIVILEGE CLAIMS

[Re: Docket No. 165]

Defendants Research in Motion Limited and Research in Motion Corporation

(collectively, RIM) move for an order compelling plaintiff Mformation Technologies, Inc.

(Mformation) to withdraw allegedly improper claims of privilege.1

 Mformation opposes the

motion. Upon consideration of the moving and responding papers, as well as the arguments of

counsel, this court issues the following order:

A. Mformation’s Procedural Objection

Preliminarily, Mformation argues that the instant motion should be denied because RIM

failed to properly meet-and-confer. See CIV. L.R. 37-1(a). The record presented indicates that

*E-FILED 08-09-2010*

Case 3:08-cv-04990-EMC Document 274 Filed 08/09/10 Page 1 of 4
United States District Court

For the Northern District of California

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the parties exchanged a number of written communications and held at least two telephone

conferences. Accordingly, this court declines to deny RIM’s motion on this basis.

B. Common Interest Doctrine

RIM’s motion sought withdrawal of privilege claims as to documents that Mformation

reportedly withheld on the basis of the common interest doctrine. These documents apparently

included those shared with current and potential investors, as well as certain financial

institutions. At the motion hearing, Mformation confirmed that it is not asserting the common

interest doctrine as to any documents. Mformation also stated that it will not object to

deposition questions on the basis of the common interest doctrine. Based on plaintiff’s

representations to the court, RIM agrees that this portion of its motion is moot.

C. Attachments to Emails Sent to Third Parties (Privilege Log Entries 918, 945, 965)

At oral argument, Mformation confirmed that these entries have been withdrawn from

its privilege log. RIM noted that it has not yet been able to review plaintiff’s document

production, but stated that it will accept Mformation’s representation to the court. The parties

shall meet-and-confer to resolve discrepancies, if any, in Mformation’s document production. 

RIM’s motion as to these privilege log entries is denied as moot.

D. Privilege Log Entries that Do Not Identify a Legal Source

With respect to privilege log entries 26, 38, 499, 510, and 1375, Mformation agrees to

amend them to identify the legal source of the information in question. Accordingly, RIM’s

motion is granted as follows: Mformation shall amend these privilege log entries to clearly

identify the legal person or entity involved. Mformation’s amended privilege log shall be

served within 14 days from the date of this order.

E. Documents Recalled in April 2010

On February 17, 2010, RIM sent Mformation a notice specifically identifying nine

Mformation documents that appeared to be privileged. That letter also generally noted that

other privileged documents may have been produced. Two days later, Mformation recalled the

nine identified documents. Then, after having initiated another search on April 7, 2010,

Mformation recalled an additional 55 documents that it claimed were privileged and had been

Case 3:08-cv-04990-EMC Document 274 Filed 08/09/10 Page 2 of 4
United States District Court

For the Northern District of California

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inadvertently produced. RIM contends that (a) Mformation simply took too long to initiate a

search for privileged documents in its production, (b) plaintiff’s second recall therefore is

untimely, and (c) the privilege, consequently, has been waived.

A disclosure of privileged materials does not operate as a waiver if the disclosure is

inadvertent; the holder of the privilege took reasonable steps to prevent disclosure; and the

holder promptly took reasonable steps to rectify the error. FED. R. EVID. 502(b). Additionally,

pursuant to the parties’ stipulated protective order, an inadvertent production of privileged

materials will not constitute a waiver “provided that the Producing Party notifies the Receiving

Party in writing within ten (10) calendar days after discovery of such inadvertent production or

disclosure.” (Docket No. 51, ¶ 5.7).

Here, defendant argues that documents are electronically stored and any privileged

documents could have been readily identified by plaintiff. For its part, Mformation says that it

took pains to review (a) its entire document production (comprising, this court is told, some 3.6

million pages) to identify any privileged materials that were inadvertently produced, as well as

(b) its entire production process to help ensure that privileged materials would not be disclosed

on a going-forward basis. Mformation says that the additional 55 documents were recalled

within 9 days after it discovered that they had been inadvertently produced. (Thakur Decl. ¶ 7). 

Although Mformation was perhaps not as diligent as defendant would have liked, on the record

presented, this court declines to find that Mformation waived the claimed privilege as to those

55 documents. Accordingly, RIM’s motion on this issue is denied.

SO ORDERED.

Dated:

 

HOWARD R. LLOYD

UNITED STATES MAGISTRATE JUDGE

August 7, 2010

Case 3:08-cv-04990-EMC Document 274 Filed 08/09/10 Page 3 of 4
United States District Court

For the Northern District of California

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5:08-cv-04990-JW Notice has been electronically mailed to:

Aaron D. Charfoos acharfoos@kirkland.com

Amardeep Lal Thakur athakur@foley.com, dgrimes@foley.com

Bradford John Black bradford.black@kirkland.com

Carl John Blickle carl.blickle@kirkland.com

Eugene Goryunov egoryunov@kirkland.com

Gina Ann Bibby gbibby@foley.com, cphillips@foley.com, mlagdameo@foley.com

Justin E. Gray jegray@foley.com, dgrimes@foley.com

Linda S. DeBruin ldebruin@kirkland.com, bridgett.ofosu@kirkland.com,

kathleen.cawley@kirkland.com, margaret.burke@kirkland.com

Marc Howard Cohen marc.cohen@kirkland.com, frank.carlow@kirkland.com,

julie.bueno@kirkland.com

Maria A. Maras maria.maras@kirkland.com

Meredith Zinanni meredith.zinanni@kirkland.com, cassandra.milleville@kirkland.com,

kimberly.davenport@kirkland.com

Michael Anthony Parks mparks@kirkland.com

Shawn Edward McDonald SEMcDonald@foley.com

Counsel are responsible for distributing copies of this document to co-counsel who have not

registered for e-filing under the court’s CM/ECF program.

Case 3:08-cv-04990-EMC Document 274 Filed 08/09/10 Page 4 of 4