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APPLE’S SUPPLEMENTAL REPORT IN SUPPORT OF CLAWBACKS 

No. 17-cv-0220-LHK-NMC, No. 17-md-2773-LHK-NMC

BOIES SCHILLER FLEXNER LLP

William A. Isaacson (Pro Hac Vice App. to be 

filed) 

DC Bar No. 414788, wisaacson@bsfllp.com 

Karen L. Dunn (Pro Hac Vice App. to be 

filed) 

DC Bar No. 1002520, kdunn@bsfllp.com 

Amy J. Mauser (Pro Hac Vice App. to be 

filed) 

DC Bar No. 424065, amauser@bsfllp.com 

1401 New York Avenue, N.W. 

Washington, DC 20005 

Telephone: (202) 237-2727 

Facsimile: (202) 237-6131 

BOIES SCHILLER FLEXNER LLP 

Edward H. Takashima, SBN 270945 

etakashima@bsfllp.com 

401 Wilshire Blvd, Suite 850 

Santa Monica, CA 90401 

Telephone: (310) 752-2400 

Facsimile: (310) 752-2490 

Attorneys for Non-Party APPLE INC. 

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

NON-PARTY APPLE INC.’S 

SUPPLEMENTAL REPORT IN 

SUPPORT OF CLAWBACKS 

Courtroom: 7, 4th Floor 

Judge: Hon. Nathanael M. Cousins 

IN RE QUALCOMM ANTITRUST 

LITIGATION 

Case No. 5:17-md-02773-LHK-NMC 

Case 5:17-cv-00220-LHK Document 655 Filed 03/28/18 Page 1 of 8
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APPLE’S SUPPLEMENTAL REPORT IN SUPPORT OF CLAWBACKS 

No. 17-cv-0220-LHK-NMC, No. 17-md-2773-LHK-NMC

Pursuant to the Court’s March 26, 2018 order, Non-Party Apple Inc. (“Apple”) submits 

this supplemental report in support of its clawback of two substantively similar documents with 

the Bates numbers APL-QC-FTC_22482289-96 and AAPL-FTC-00004898-4906. As detailed in 

the declaration of Apple Vice President and Chief IP Counsel BJ Watrous, the clawed-back 

documents were prepared by Apple’s counsel as part of litigation and mediation efforts. (Watrous 

Decl. ¶ 6.) These documents, or substantially similar ones, were shared with a mediator, but not 

the party adverse to Apple. (Watrous Decl. ¶ 7; Selwyn Decl. ¶ 5.) Both documents were 

properly clawed back because they are subject to (1) work product protection and (2) the 

mediation privilege. 

I. Work Product Protection 

Qualcomm does not and cannot dispute that the documents at issue are attorney work 

product: they contain legal analysis, and were prepared by counsel for the purpose of litigation 

and potential settlement. (Watrous Decl. ¶¶ 5-6.) See United States v. Nobles, 422 U.S. 225, 

237–38 (1975) (“[T]he Court therefore recognized a qualified privilege for certain materials 

prepared by an attorney ‘acting for his client in anticipation of litigation.’” (quoting Hickman v. 

Taylor, 329 U.S. 495, 508 (1947)). Instead, Qualcomm offers two arguments. First, Qualcomm 

contends that Apple cannot invoke work product protection because Apple is a non-party in these 

actions. Second, Qualcomm claims Apple has waived work product protection. Neither 

argument has merit. 

A. Apple Is Entitled to Work Product Protection Under Rule 45, Rule 26(c), and 

Hickman v. Taylor. 

Because Apple is a non-party in these actions, the principal rule governing its discovery 

rights and obligations is Rule 45. Gonzales v. Google, Inc., 234 F.R.D. 674, 679 (N.D. Cal. 2006) 

(“Rule 45 of the Federal Rules of Civil Procedure governs discovery of nonparties by 

subpoena.”). Rule 45(d)(3)(A)(iii) provides that the court “must quash or modify a subpoena that 

. . . requires disclosure of privileged or other protected matter, if no exception or waiver applies.” 

Rule 45(e)(2)(A) provides that a “person withholding subpoenaed information under a claim that 

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APPLE’S SUPPLEMENTAL REPORT IN SUPPORT OF CLAWBACKS 

No. 17-cv-0220-LHK-NMC, No. 17-md-2773-LHK-NMC

it is privileged or subject to protection as trial-preparation material” must “expressly make the 

claim” and “describe the nature of the withheld documents . . . [to] enable the parties to assess the 

claim.”1 And Rule 45(e)(2)(B) provides for the clawback of “information produced in response to 

a subpoena [that] is subject to a claim of privilege or of protection as trial-preparation material.”

Applying the plain meaning of Rule 45, numerous courts have held that a subpoenaed 

nonparty is entitled to assert work product protection, and have protected such documents from 

disclosure. See Meyer v. Colavita, USA, Inc., No. SACV 11-00696-AG, 2011 WL 2457681, at *2 

(C.D. Cal. June 17, 2011) (“Although the plain language of Rule 26(b)(3) solely protects parties 

to litigation, work product protection may be extended to subpoenaed non-parties through Rule 

45(c)(3)(A)(iii) . . . .”)2; ASARCO, LLC v. Ams. Mining Corp., No. MS07-6289-EJL-MHW, 2007 

WL 3504774, at *5–6 (D. Idaho Nov. 15, 2007) (quashing subpoena in part because the 

“language [of Rule 45] protects against discovery of third-party work product in appropriate 

cases”); In re Student Fin. Corp, No. 02-11620 JBR, 2006 WL 3484387, at *12 (E.D. Pa. Nov. 

29, 2006) (explaining that Rule 45’s “language is broad enough to include protection against 

discovery of third-party work product in appropriate cases,” and that “[n]othing in Rule 45’s 

history or texts indicates that it was intended to incorporate Rule 26(b)(3)’s restriction of work 

product to parties”); see also Hobley v. Burge, 433 F.3d 946, 951 (7th Cir. 2006) (noting that a 

non-party’s claims of work-product privilege are properly addressed under Rule 45, not Rule 26). 

In re California Public Utilities Commission, 892 F.2d 778 (9th Cir. 1989) is not to the 

contrary. That case addresses only the scope of Rule 26(b)(3). See id. at 780-81 (“As the 

italicized language indicates [quoting Rule 26(b)(3)] to qualify for protection against discovery 

 1

 Both Rule 26(b)(3), which applies to parties, and Rule 45(e)(2)(A), which applies to nonparties, describe work product as “trial preparation materials.” 

2

 As part of the 2013 amendments to the Federal Rules of Civil Procedure, Rule 

45(c)(3)(A)(iii) became Rule 45(d)(3)(A)(iii). See Fed. R. Civ. P. 45, advisory committee’s note 

to 2013 amendment (“Subdivision (d) contains the provisions formerly in subdivision (c).”). 

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under this rule, documents must . . . be prepared ‘by or for another party or by or for that other 

party’s representative.’” (quoting Fed. R. Civ. P. 26(b)(3)); id. at 781 (“Westinghouse argues that 

Rule 26(b)(3) does not protect materials prepared by CPUC attorneys . . . [W]e conclude that the 

rule, on its face, limits its protection to one who is a party (or a party’s representative) to the 

litigation in which discovery is sought.”). The CPUC court did not consider the provisions of 

Rule 45 clarifying the application of work product protection to non-parties—nor could it have. 

The sections of Rule 45 addressing attorney work product were amended into the Federal Rules of 

Civil Procedure in 1991, two years after CPUC was decided. The advisory committee’s note 

explains that “Paragraph (d)(2) is new and . . . [i]ts purpose is to provide a party whose discovery 

is constrained by a claim of privilege or work product protection with information sufficient to 

evaluate such a claim and to resist if it seems unjustified.”3 It further explained that “[a] person 

served a subpoena that is too broad may be faced with a burdensome task to provide full 

information regarding all that person's claims to privilege or work product protection,” and 

“[s]uch a person is entitled to protection that may be secured through an objection” to the 

subpoena. See Fed. R. Civ. P. 45, advisory committee’s note to 1991 amendment. 

Even before those amendments, CPUC recognized that non-parties had recourse to protect 

work product material pursuant to Rule 26(c). CPUC, 892 F.2d at 781 (“To the extent that 

disclosure causes hardship to the CPUC, it is free to seek a protective order under Rule 26(c).”). 

Rule 26(c) authorizes the Court to issue a protective order forbidding disclosure to protect “any 

person from whom discovery is sought” from “annoyance, embarrassment, oppression, or undue 

burden or expense.” Fed. R. Civ. P. 26(c)(1). Courts have found this language “sufficiently 

sweeping to authorize a protective order preventing the undue burden of disclosing third-party 

work product in appropriate cases.” Student Finance, 2006 WL 3484387, at *11 (citing cases); 

 3

 With the 2013 amendment discussed supra note 2, subdivision (d)(2) of Rule 45 became 

subdivision (e)(2). 

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see also Wright, Miller & Kane, 8 Fed. Prac. & Proc. Civ. § 2024 at 356 (3d ed. 1994) (“To the 

extent that Rule 26(b)(3), literally read, seems to give insufficient protection to material prepared 

in connection with some other litigation, the court can vindicate the purposes of the work-product 

rule by the issuance of a protective order under Rule 26(c).”). Here, a protective order should 

issue to prevent Qualcomm, Apple’s adversary in related litigation in the Southern District of 

California, from obtaining Apple’s attorney work product. 

Finally, the Supreme Court’s decision in Hickman “itself provides authority to protect 

work product outside the terms of Rule 26(b)[(3)].” Student Finance, 2006 WL 3484387, at *11; 

see 8 Fed. Prac. & Proc. Civ. § 2024 (“[I]t must be remembered that protection may exist under 

Hickman v. Taylor itself, even if it is not provided also under [Rule 26(b)(3)], so long as the 

materials in question were prepared in anticipation of litigation by an attorney.”).4 Hickman

recognized that “it is essential that a lawyer work with a certain degree of privacy, free from 

unnecessary intrusion by opposing parties and their counsel,” and thus protected the “[w]ork 

product of the lawyer” from discovery. 329 U.S. at 510-11. The clawed-back documents reflect 

attorney mental processes, thoughts and strategies, and were created for the purposes of litigation. 

(Watrous Decl. ¶¶ 5-6.) Allowing Qualcomm, Apple’s adversary in litigation, to obtain those 

documents is a prime example of the type of disclosure that would have a chilling effect on 

lawyers’ ability to prepare their legal theories and strategies in connection with litigation. See 

Serrano v. Chesapeake Appalachia, LLC, 298 F.R.D. 271, 278 (W.D. Pa. 2014) (“Preventing 

discovery will have a salutary effect on attorneys maintaining confidence that their ability to 

formulate and record legal theories and prepare their cases will not be used to the detriment of 

their clients.”). 

 4

 The Ninth Circuit and other Circuit courts have concluded that the work-product doctrine 

established in Hickman was only partially codified in Rule 26(b)(3). See Republic of Ecuador v. 

Mackay, 742 F.3d 860, 868 & n.2 (9th Cir. 2014) (“The 1970 amendment added provisions 

allowing for discovery of information held by experts and partially codifying the work product 

doctrine.”); United States v. Deloitte LLP, 610 F.3d 129, 136 (D.C.Cir.2010) (“Rule 26(b)(3) only 

partially codifies the work-product doctrine announced in Hickman”). 

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Apple is entitled to assert work product protection over the clawed back documents under 

Rule 45, Rule 26(c), or Hickman. Accordingly, Apple’s clawbacks should be upheld. 

B. Apple Did Not Waive Work Product Protection 

Qualcomm argues that Apple waived work product protection over the clawed-back 

documents by providing them to a mediator, and speculates that the documents or their contents 

were shared with Apple’s litigation adversary and mediation counterparty. Neither argument 

passes muster. As explained in the March 16 joint status report, “waiver of attorney work-product 

protection requires more than the disclosure of confidential information, it requires an act 

inconsistent with the adversary system,” such as “‘disclosure [of] protected information to a third 

party who is not bound to maintain its confidence.” Great Am. Assur. Co. v. Liberty Surplus Ins. 

Corp., 669 F. Supp. 2d 1084, 1092 (N.D. Cal. 2009) (internal quotation omitted). Apple did not 

take any action inconsistent with the adversary system. As a result, there has been no waiver. 

Apple’s decision to share the documents with a mediator did not waive work product 

protection because “[b]y agreement, the document was to be maintained in confidence and not 

provided to [the other party in mediation].” (Watrous Decl. ¶ 7.) See In re Lake Lotawana Cmty. 

Improvement Dist., 563 B.R. 909, 922 (Bankr. W.D. Mo. 2016) (“[T]he District did not waive its 

work product privilege when it provided the Statement to the mediator” because “the District did 

not disclose the Statement with actual intent that the Movants see the Statement.”). 

Qualcomm has no basis to support its conjecture that “the content of the Document almost 

certainly was shared.” ECF No. 629-3 at 3. Watrous’ and Selwyn’s declarations make it clear 

that the clawed back documents were not shared with the party adverse to Apple. (Selwyn Decl. ¶ 

5 (“To the best of my knowledge, there was no disclosure of these documents (or substantially 

similar versions of them) outside of Apple other than to its counsel and to [the mediator].”); 

Watrous Decl. ¶ 7 (“the document was to be maintained in confidence”.) In any event, “there is 

no requirement, when determining whether the [work product] protection applies, that the 

attorney and client intend to maintain the material in confidence,” so long as the documents were 

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not disclosed to an adversary. United States v. Bergonzi, 216 F.R.D. 487, 494, 498 (N.D. Cal. 

2003). Because disclosure of the documents to the mediator did not “enable[] an adversary to 

gain access to the information,” Apple did not waive work product protection. Id. at 497. 

II. Mediation Privilege 

The clawed-back documents are separately protected under the federal mediation 

privilege. 

Although the Ninth Circuit has not yet addressed the existence of a federal mediation 

privilege, several district courts in this circuit have upheld a privilege for mediation 

communications. See Folb v. Motion Picture Industry Pension & Health Plans, 16 F.Supp.2d 

1164, 1180 (C.D. Cal. 1998), aff'd, 216 F.3d 1082 (9th Cir. 2000) (finding “communications to 

the mediator and communications between parties during the mediation” and “communications in 

preparation for and during the course of a mediation with a neutral” to be protected under F.R.E. 

501); Microsoft Corp. v. Suncrest Enterprise, No. C03-05424 JF, 2006 WL 929257, *2 (N.D. Cal. 

Jan.6, 2006) (“this court concludes that most of the deposition questions at issue seek information 

pertaining to the parties’ conversations with the mediator and are, therefore, protected”); City of 

Colton v. Am. Promotional Events, Inc., No. EDCV0901864PSGSSX, 2014 WL 12740639, at *3 

(C.D. Cal. June 24, 2014) (refusing to permit discovery of mediation-related information because 

“an agreement of secrecy and confidentiality forms the bedrock of the mediation process”). Like 

in Folb, where the court refused to compel a third party to produce a mediation brief used in a 

mediation with a another party in a different litigation, these clawed-back documents fall squarely 

within the mediation privilege and are thus shielded from discovery. 

Case 5:17-cv-00220-LHK Document 655 Filed 03/28/18 Page 7 of 8
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APPLE’S SUPPLEMENTAL REPORT IN SUPPORT OF CLAWBACKS 

No. 17-cv-0220-LHK-NMC, No. 17-md-2773-LHK-NMC

Dated: March 28, 2018 Respectfully submitted, 

By: /s/ Edward H. Takashima

William A. Isaacson 

wisaacson@bsfllp.com 

Karen L. Dunn 

kdunn@bsfllp.com 

Amy J. Mauser 

amauser@bsfllp.com 

BOIES SCHILLER FLEXNER LLP 

1401 New York Avenue, N.W. 

Washington, DC 20005 

Telephone: (202) 237-2727 

Facsimile: (202) 237-6131 

Edward H. Takashima 

etakashima@bsfllp.com 

BOIES SCHILLER FLEXNER LLP 

401 Wilshire Blvd, Suite 850 

Santa Monica, CA 90401 

Telephone: (310) 752-2400 

Facsimile: (310) 752-2490 

Attorneys for Non-Party APPLE INC. 

Case 5:17-cv-00220-LHK Document 655 Filed 03/28/18 Page 8 of 8