Jennifer Milici, D.C. Bar No. 987096 

Daniel Matheson, D.C. Bar No. 502490 

J. Alexander Ansaldo, Va. Bar No. 75870 

Joseph R. Baker, D.C. Bar No. 490802 

Elizabeth A. Gillen, Cal. Bar No. 260667 

Federal Trade Commission 

600 Pennsylvania Avenue, N.W. 

Washington, D.C. 20580 

(202) 326-2912; (202) 326-3496 (fax) 

jmilici@ftc.gov

Attorneys for Plaintiff 

FEDERAL TRADE COMMISSION 

CRAVATH, SWAINE & MOORE LLP 

Gary A. Bornstein (pro hac vice) 

gbornstein@cravath.com 

Yonatan Even (pro hac vice) 

yeven@cravath.com 

825 Eighth Avenue 

New York, New York 10019-7475 

Telephone: (212) 474-1000 

Facsimile: (212) 474-3700 

KEKER, VAN NEST & PETERS LLP 

Robert A. Van Nest (SBN 84065) 

Asim M. Bhansali (SBN 194925) 

Eugene M. Paige (SBN 202849) 

633 Battery Street 

San Francisco, CA 94111-1809 

Telephone: (415) 391-5400 

Facsimile: (415) 397-7188 

Attorneys for Defendant 

QUALCOMM INCORPORATED 

Lin W. Kahn, Cal. Bar No. 261387 

Federal Trade Commission 

901 Market Street, Suite 570 

San Francisco, CA 94103 

(415) 848-5115; (415) 848-5184 (fax) 

lkahn@ftc.gov 

MORGAN, LEWIS & BOCKIUS LLP 

Richard S. Taffet (pro hac vice) 

richard.taffet@morganlewis.com 

Willard K. Tom (pro hac vice) 

willard.tom@morganlewis.com 

Donn P. Pickett (SBN 72257) 

donn.pickett@morganlewis.com 

Geoffrey T. Holtz (SBN 191370) 

geoffrey.holtz@morganlewis.com 

One Market, Spear Street Tower 

San Francisco, CA 94105-1596 

Telephone: (415) 442-1000 

Facsimile: (415) 442-1001 

UNITED STATES DISTRICT COURT 

NORTHERN DISTRICT OF CALIFORNIA 

SAN JOSE DIVISION 

FEDERAL TRADE COMMISSION

Plaintiff, 

v. 

QUALCOMM INCORPORATED, a Delaware 

corporation, 

Defendant. 

Case No. 5:17-CV-00220-LHK-NMC

DEFENDANT QUALCOMM 

INCORPORATED’S AND PLAINTIFF 

FEDERAL TRADE COMMISSION’S 

JOINT DISCOVERY STATEMENT 

Courtroom: 7, 4th Floor 

Judge: Hon. Nathanael M. Cousins 

Case 5:17-cv-00220-LHK Document 248 Filed 10/30/17 Page 1 of 9
1 

Plaintiff Federal Trade Commission (“FTC”) and Defendant Qualcomm Incorporated 

(“Qualcomm”) hereby submit this joint statement. The parties have met and conferred by telephone four times, but have been unable to reach agreement on the issues addressed herein. 

I. The FTC’s Position 

During the FTC’s pre-Complaint investigation, Qualcomm redacted 39,417 documents, 

and entirely withheld 91,093 documents, asserting attorney client privilege or work product 

protection. Qualcomm refuses to provide a privilege log for its redactions, and many of its log 

descriptions for entirely withheld documents fail to satisfy its burden of “establishing that the 

attorney-client privilege applies to the [communications] in question.” Clarke v. American 

Commerce Nat’l Bank, 974 F.2d 127, 129 (9th Cir. 1992); see also Nextdoor.com, Inc. v. Abhyanker, 2014 U.S. Dist. LEXIS 115517 at *3 (N.D. Cal. Aug. 18, 2014). 

As described below, the FTC has proposed a compromise whereby Qualcomm would 

provide a log for all redactions, but would only be required to revisit its existing log of withheld 

documents for communications involving certain Qualcomm attorney-executives who exercised 

significant business authority over licensing negotiations central to the FTC’s allegations. 

Qualcomm has withheld nearly 25,000 of these executives’ communications, but it is now 

apparent that Qualcomm failed to apply the controlling “primary purpose” standard to its claims. 

The Court should order Qualcomm to produce all such executives’ communications or to 

provide log entries adequately demonstrating that withheld communications were sent for the 

primary purpose of securing legal advice. See Apple Inc. v. Samsung Elecs. Co., 306 F.R.D. 234, 

241 at n. 38 (N.D. Cal. 2015) (“primary purpose” test applies to claims of attorney-client privilege), motion for relief from judgment denied, 2015 WL 3863249 (N.D. Cal. June 19, 2015). 

A. Qualcomm Must Provide Log Entries Satisfying the “Primary Purpose” Standard 

Qualcomm’s failure to apply the appropriate standard became apparent after the FTC 

sought, and Qualcomm provided, privilege log entries for a limited number of documents that 

Qualcomm had produced in redacted form during the FTC’s pre-Complaint investigation. On 

September 19, the FTC identified 82 redacted documents over which Qualcomm asserted 

privilege. After a delay of more than two weeks, Qualcomm withdrew its privilege claims 

entirely from 37 of these documents (~45%), and withdrew at least some privilege claims for an 

additional 31 documents (~37%). The newly revealed communications demonstrate that Qualcomm has inappropriately withheld from production numerous communications that deal exclusively or primarily with business matters of central relevance to the FTC’s allegations.1

 

Qualcomm’s 68 withdrawn claims conclusively establish that Qualcomm applied the 

wrong standard in its privilege review. Additionally, Qualcomm’s log entries are inadequate on 

their face, do not clearly disclose the primary purpose of each withheld communication, and thus 

do not satisfy its burden. Most of Qualcomm’s privilege claims involve in-house attorneys who 

perform business functions, either primarily or in addition to their legal functions. Courts in this 

Circuit require that, “[w]ith respect to internal communications involving in-house counsel, [the 

proponent of the privilege] must make a clear showing that the speaker made the communications for the purpose of obtaining or providing legal advice.” United States v. ChevronTexaco 

Corp., 241 F.Supp.2d 1065, 1076 (N.D. Cal. 2002) (internal citations omitted). See also In re 

1

 At the Court’s request, the FTC can promptly provide the 68 newly produced documents and highlight the material 

as to which Qualcomm has withdrawn its privilege claims. The FTC can also provide the court with inconsistently 

redacted versions of documents evidencing other untenable privilege claims made over attorney-executives’ 

business discussions, addressed in a related joint letter brief to be submitted to the Court shortly. 

Case 5:17-cv-00220-LHK Document 248 Filed 10/30/17 Page 2 of 9
2 

Vioxx Products Liability Litigation, 501 F.Supp.2d 789, 797 (E.D. La. 2007);2 id. at 809 (no 

presumption of privilege attaches to emails “addressed to both lawyers and non-lawyers for 

review, comment, and approval.”); Diagnostic Systems Corp. v. Symantec Corp., 2008 WL 

9396387 (C.D. Cal. Aug. 12, 2008) at *8 (rejecting privilege claim over communications involving in-house counsel to the extent in-house counsel acted “in the capacity of corporate executives 

to further the [plaintiff’s] business goals” with respect to patent licensing). In order to satisfy the 

primary purpose test, Qualcomm’s privilege log entries must demonstrate that attorneyexecutives’ input relates to their specialized training as attorneys, rather than economic and 

business considerations within the experience of any senior executive. For example, attorneyexecutives’ input regarding the economic or strategic implications of a licensing negotiation 

constitutes business advice, while their advice regarding the legal ramifications of contractual 

language might constitute appropriately redacted “legal advice.” 

A “clear showing” is especially important here. First, Qualcomm’s documents reveal that 

top executives have a practice of copying in-house counsel on emails for the express purpose of 

concealing business discussions beneath a veneer of “privilege,” and of instructing others to do 

the same.3

 Second, Qualcomm is in the business of licensing technology but has not provided 

sufficient information to distinguish business from legal activities.4 These circumstances exacerbate the ever-present concern that “the privilege stands in derogation of the public’s right to 

every man’s evidence’ and as ‘an obstacle to the investigation of the truth,’ [and] thus, ... ‘[i]t 

ought to be strictly confined within the narrowest possible limits consistent with the logic of its 

principle.’” United States v. Ruehle, 583 F.3d 600, 607 (9th Cir. 2009) (alterations in original); 

see also Waymo LLC v. Uber Techs., Inc., 2017 U.S. Dist. LEXIS 88411, at *13 (N.D. Cal. June 

8, 2017) (quoting United States v. Ruehle); In re Third Party Subpoenas Issued to Rambus, Inc., 

2014 U.S. Dist. LEXIS 164398 at *2 (N.D. Cal. Nov. 21, 2014) (privilege strictly construed). 

B. The FTC’s Proposal is a Reasonable Compromise 

The FTC’s proposed compromise provides two enormous concessions that address burden concerns. First, it does not require any privilege log for 51,670 responsive documents 

withheld during the investigation. During the investigation, the FTC accommodated Qualcomm’s 

request to defer logging documents that fall into certain categories, including communications 

with outside counsel. The FTC later agreed to extend this accommodation in this litigation. 

Second, of the 39,243 withheld documents that Qualcomm has logged, the FTC is seeking 

satisfactory descriptions only with respect to email chains involving five specific in-house 

counsel who performed significant business roles.5 In light of the FTC’s accommodations, 

Qualcomm’s burden complaints are meritless. Moreover, indulging claims of “burden” would be 

bad policy. If a Court were to hold that a pre-Complaint deferral of rights limits the FTC’s ability 

to obtain appropriate discovery in subsequent litigation, the FTC would likely cease granting 

2

 Courts in this Circuit have approvingly cited Vioxx’s “in-depth discussion of the attorney-client privilege.” 

Hulstedt v. City of Scottsdale, Ariz., No. CV-09-1258-PHX-GMS, 2011 WL 2836553, at *4 (D. Ariz. July 18, 2011). 3

 The FTC can provide examples of such documents to the Court promptly upon request. 

4

 Qualcomm has “set up its business in such a way to allow [it] to argue that many documents, including those 

central to [its] primary business, are privileged documents,” and therefore must demonstrate that such documents 

were created for a primarily legal, and not business, purposes. Diagnostics Sys. Corp., 2008 WL 9396387, at *2, *3. 5

 Mr. Derek Aberle is President of Qualcomm Incorporated, and former President of Qualcomm Technology 

Licensing (“QTL”). Mr. Steve Altman is the former President and Vice Chairman of Qualcomm Incorporated. Mr. 

Alex Rogers is the current President of QTL. (Note that the FTC seeks documents only for the period during which 

Mr. Rogers has served as President—March 2016 to the present). Mr. Eric Reifschneider is the former General 

Manager of QTL. Mr. Michael Hartogs is the former QTL Senior Vice President and Lead Counsel. 

Case 5:17-cv-00220-LHK Document 248 Filed 10/30/17 Page 3 of 9
3 

similar accommodations to the targets of investigations.6

 

Qualcomm argues that it does not need to provide a privilege log for its redactions. But 

redacted documents do not contain any statement of the basis for redaction, let alone the required 

clear showing that the communication is privileged. Qualcomm’s proposed process of responding to inquiries about specific documents flips the burden on its head and has proven unworkable. The FTC has now repeatedly identified to Qualcomm redactions that appear improper. Each 

time, Qualcomm has admitted error and withdrawn its claims. But whack-a-mole is no way to 

proceed – particularly when the FTC is wearing a blindfold. The FTC cannot readily identify 

improper claims except in rare cases of inconsistent redactions or clawbacks. And the FTC 

should not be forced to wait weeks for Qualcomm to withdraw claims it never should have 

asserted. 

The FTC has already established that Qualcomm has erroneously redacted important content from hundreds of documents. In addition to the numerous claims that Qualcomm has withdrawn since September 19, 2017 in response to FTC inquiries, Qualcomm itself identified 800 

(or at least 297) documents during its witness preparation in October 2016 that required corrected redactions. Additional untenable claims will surely come to light when Qualcomm revisits its 

redactions with the responsibility of substantiating its claims. 

Because any non-privileged documents should have been produced long ago, the Court 

should order Qualcomm to begin immediately providing an adequate privilege log on a rolling 

basis, accompanied by rolling productions of any documents with respect to which privilege 

claims are removed or withdrawn, to be completed by the November 28, 2017 deadline for 

substantial completion of Qualcomm’s ongoing document production. 

II. Qualcomm’s Position

Over a period of many months during the FTC’s pre-Complaint investigation, dozens of 

Qualcomm attorneys carefully reviewed more than 1,700,000 documents, applying partial 

redactions to 39,417 documents and preparing a detailed log containing nearly 40,000 entries. 

Nine months after receiving Qualcomm’s privilege log, the FTC sent a letter insisting that 

Qualcomm’s entire privilege review must be redone, and now requests—as a purported “compromise” position—that Qualcomm be ordered, on a dramatically accelerated schedule, to rereview and log (or re-log) tens of thousands of documents, despite the fact that such logging will 

provide the FTC with no additional material information. Specifically, the FTC’s “compromise” 

would require Qualcomm within one month to (1) re-review 24,163 withheld document families 

and “revisit” corresponding log entries on a privilege log the FTC received over a year ago; and 

(2) re-review and log 39,417 documents (comprising 312,451 pages) produced in redacted form 

during the investigation, even though these redacted documents reveal, on their face and in the 

accompanying metadata, more information than the FTC would be entitled to receive in any log, 

and even though Qualcomm agreed to provide (and has provided) additional information concerning any document specifically identified by the FTC. The Court should deny the FTC’s 

motion because Qualcomm met the proper review standard, and Qualcomm’s existing log, along 

with the redacted documents and their metadata, provide the FTC with all the information 

necessary to assess Qualcomm’s claims of privilege. 

A. Qualcomm Met the Correct Standard in Its Privilege Review. 

The FTC argues, without basis, that Qualcomm must re-do a great majority of its privi6

 When the FTC agreed to defer a privilege log for redacted documents during the pre-Complaint investigation, staff 

made it clear that they were likely to request full log entries for some or all redacted documents at a later date. 

Case 5:17-cv-00220-LHK Document 248 Filed 10/30/17 Page 4 of 9
4 

lege review because its log entries do not expressly state that Qualcomm has applied the “primary purpose” standard in making each privilege claim. But Qualcomm’s privilege review met this 

standard. During the months-long review involving more than 70 document reviewers evaluating millions of pages of documents, reviewers were instructed on the fundamental distinction 

between legal advice or discussion (privileged) and business advice or discussion (not privileged), and were instructed to mark communications as privileged only if they were made for the 

purpose of seeking or providing legal advice. Communications made for both legal and business 

purposes were produced, redacting only requests for legal advice and the legal advice itself. 

Reviewers were specifically instructed not to assert privilege over communications that were 

made for the purpose of business advice, even when lawyers were involved in those communications. And, contrary to the FTC’s suggestion, Qualcomm did not assert privilege over communications merely because in-house counsel were copied, nor did it fail to distinguish business 

advice from legal advice given by lawyers with dual business and legal roles. This is amply 

shown by the thousands of documents sent by or to lawyers that Qualcomm did produce.7

 

B. Qualcomm’s Privilege Log Is Proper. 

Neither the Federal Rules nor any authority cited by the FTC requires that each entry on a 

log specifically state “the primary purpose of each withheld communication”, as the FTC contends. The FTC’s authorities, such as United States v. ChevronTexaco Corp., 241 F. Supp. 2d 

1065 (N.D. Cal. 2002), discuss the substantive standard by which privilege determinations are 

assessed when subject to challenge. They do not establish a required formulation that must 

appear on a log. In fact, the law is clear that a privilege log is only one procedure (among many) 

that may be used to provide the information necessary for the other party to assess an assertion of 

privilege. See In re Grand Jury Investigation, 974 F.2d 1068, 1071 (9th Cir. 1992). Where, as 

here, tens of thousands of documents are identified as privileged, courts have accepted a log that 

broadly describes documents by category. In re Imperial Corp. of Am., 174 F.R.D. 475, 478-79 

(S.D. Cal. 1997); see also FRCP 26(b) advisory committee note (1993 amendment). The information in Qualcomm’s privilege log easily exceeds these standards because it identifies, among 

other things, the attorneys and other participants in the communications, the nature of the document and the subject-matter of the communication.8

 Qualcomm’s log also far exceeds the 

“model log” in leading practice manuals such as Schwarzer et al., Fed. Civ. Pro. Before Trial, 

Form 11:A (including only Bates number, date, identities and positions of individuals, description such as “Letter” and type of privilege). The FTC does not cite a single case requiring more, 

let alone a case supporting its demand that each log entry “demonstrate that attorney-executives’ 

input relates to their specialized training as attorneys”—nor does the FTC specify what additional information Qualcomm could reasonably and practicably provide in a log to “demonstrate” 

that fact (short of providing the privileged information itself). 

C. Logging Redacted Documents Would Be Burdensome and Serve No Purpose. 

During the pre-Complaint investigation, the FTC agreed that Qualcomm need not log the 

39,417 documents that it produced in redacted form. The FTC’s request that Qualcomm now log 

7

 The FTC suggests that Qualcomm’s privilege calls are suspect because of a purported “practice” of copying inhouse counsel “for the specific purpose of concealing business discussions”. But Qualcomm has produced these 

documents rather than “concealing” them. Their production helps illustrate the integrity of Qualcomm’s review. 8

 The log includes fields for (1) Date; (2) Custodian; (3) Author/Sender; (4) Addresses; (5) Copyees; (6) Blind 

Copyees; (7) Description (including document type, basis for the privilege claim and subject-matter of the document); (8) Attachment(s); (9) Privilege Claim; and (10) Litigation/Investigation (identifying which litigation or 

investigation is involved as to work product claims). 

Case 5:17-cv-00220-LHK Document 248 Filed 10/30/17 Page 5 of 9
5 

redacted documents to include a “statement” or “clear showing that the communication is 

privileged” suffers from the same infirmity as its argument that Qualcomm must re-do its privilege log, i.e., the FTC’s failure to specify what more information Qualcomm could reasonably 

provide for each of tens of thousands of documents, in addition to the meaningful unredacted 

content and accompanying metadata it already has.9 See Crescom Bank v. Terry, No. 2:12-cv00063, 2013 WL 3946222, at *2 (D.S.C. July 31, 2013). 

The FTC suggests that it has “established that Qualcomm has erroneously redacted important content from hundreds of documents”; that is not true. To date, the FTC identified 68 out 

of 39,417 documents in which certain redactions were modified.10 The FTC further contends 

that Qualcomm revised its redactions on 800 documents during the pre-Complaint investigation, 

but most of those (503 documents) were re-produced due to a technical imaging issue, not due to 

any error in redactions, and the rest (many of which included duplicate documents) were modified sua sponte (to add or remove certain redactions) due to Qualcomm’s own re-review of 

thousands of redacted documents as part of its general privilege review and in preparing for 

investigational hearings. But in any production of this size—especially one involving multiple 

lawyer custodians and thousands of privilege calls—errors will inevitably occur and some close 

calls may be resolved inconsistently. Qualcomm has always maintained that it would reevaluate 

any individual privilege call that the FTC reasonably questioned, and it has done so. The FTC’s 

ability to identify documents in which redactions were modified shows that the FTC already has 

the information it needs to assess Qualcomm’s claims of privilege. The FTC did not pick 

documents for re-review at random; it chose them for a reason, including that many appeared 

elsewhere in the production without redactions. These cherry-picked documents are not representative of Qualcomm’s overall privilege calls. Requiring Qualcomm to re-review 39,417 

documents, especially given the short time remaining in discovery and the immense burden of 

review Qualcomm already faces, is unnecessary. Courts routinely deny requests to create 

privilege logs when the burden of a log greatly outweighs any benefit to the party receiving it. 

See In re Imperial Corp. of Am., 174 F.R.D. at 478-79; S.E.C. v. Lines Overseas Mgmt., Ltd., No. 

04-302, 2007 WL 581909, at *1 n.5 (D.D.C. Feb. 21, 2007). 

D. The FTC’s Proposed “Compromise” Is Unduly Burdensome. 

As a purported compromise, the FTC proposes that Qualcomm re-review and re-log 

email chains involving five Qualcomm in-house attorneys. This “compromise” remains impractical and burdensome, requiring review of the documents underlying approximately 24,000 of the 

entries on Qualcomm’s privilege log (more than 60% of the 39,423 entries on Qualcomm’s log), 

in addition to the re-review and logging of all 39,417 redacted documents. As explained above, 

Qualcomm applied the appropriate standard; the FTC has sufficient information to assess Qualcomm’s privilege calls on both withheld and redacted documents alike (which it has demonstrated by raising questions about selected documents); and Qualcomm has agreed to provide (and 

has provided) additional information about specific documents upon request. Accordingly, the 

FTC’s requests should be denied. 

9

 The FTC already has more information than in a log. The metadata alone includes senders, recipients, custodians, 

date, subject line and parent and child information for attachments, as well as other information. And the unredacted 

portions of the documents obviously provide a wealth of context that a log could never convey. 

10 The FTC requested that Qualcomm review 82 redacted documents hand-picked by the FTC as containing

potentially improper redactions. Of those 82 documents, Qualcomm maintained its original redactions on 14 

documents. Of the remaining 68 documents, another 14 had previously been produced with no redactions, and 

many others appeared elsewhere in the production with fewer redactions. 

Case 5:17-cv-00220-LHK Document 248 Filed 10/30/17 Page 6 of 9
Respectfully submitted,

/s/ Yonatan Even

Yonatan Even

Gary A. Bornstein

Yonatan Even

CRAVATH, SWAINE & MOORE LLP

825 Eighth Avenue

New York, NY 10019

Tel: (212) 474-1000

Fax: (212) 474-3700

gbornstein@cravath.com

yeven@cravath.com

Robert A. Van Nest

Asim M. Bhansali

Eugene M. Paige

KEKER, VAN NEST & PETERS LLP

633 Battery Street

San Francisco, CA 94111-1809

Tel: (415) 676-2289

Fax: (415) 397-7188

rvannest@keker.com

abhansali@keker.com

epaige@keker.com

Richard S. Taffet

MORGAN, LEWIS & BOCKIUS LLP

101 Park Avenue

New York, NY 10178-0060

Tel: (212) 309-6000

Fax: (212) 309-6001

richard.taffet@morganlewis.com

Willard K. Tom

MORGAN, LEWIS & BOCKIUS LLP

1111 Pennsylvania Ave. NW

Washington, DC 20004-2541

Tel: (202) 739-3000

Fax: (202) 739 3001

willard.tom@morganlewis.com

Case 5:17-cv-00220-LHK Document 248 Filed 10/30/17 Page 7 of 9
Donn P. Pickett

Geoffrey T. Holtz

MORGAN, LEWIS & BOCKIUS LLP

One Market, Spear Street Tower

San Francisco, CA 94105-1126

Tel: (415) 442-1000

Fax: (415) 442-1001

donn.pickett@morganlewis.com

geoffrey.holtz@morganlewis.com

Attorneys for Qualcomm Incorporated

Jennifer Micili, D.C. Bar No. 987096

Daniel Matheson, D.C. Bar No. 502490

J. Alexander Ansaldo, Va. Bar No. 75870

Joseph R. Baker, D.C. Bar No. 490802

Elizabeth A. Gillen, Cal. Bar No. 260667

FEDERAL TRADE COMMISSION

600 Pennsylvania Avenue, N.W.

Washington, D.C. 20580

(202) 326-2912; (202) 326-3496 (fax)

jmilici@ftc.gov

dmatheson@ftc.gov

jansaldo@ftc.gov

jbaker1@ftc.gov

egillen@ftc.gov

Lin W. Kahn, Cal. Bar No. 261387

FEDERAL TRADE COMMISSION

901 Market Street, Suite 570

San Francisco, CA 94103

(415) 848-5115; (415) 848-5184 (fax)

lkahn@ftc.gov

Attorneys for the Federal Trade Commission

Case 5:17-cv-00220-LHK Document 248 Filed 10/30/17 Page 8 of 9
FILER’S ATTESTATION

I, Yonatan Even, am the ECF user whose identification and password are being 

used to file this Joint Discovery Submission. In compliance with Civil Local Rule 5-1(i)

(3), I hereby attest that the signatories of this document have concurred in this filing. 

/s/ Yonatan Even

Yonatan Even

Case 5:17-cv-00220-LHK Document 248 Filed 10/30/17 Page 9 of 9