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

SMRH:485630961.3 NON-PARTY SAMSUNG ELECTRONICS CO., LTD.’S STATEMENT REGARDING

COMMON INTEREST AGREEMENT

SHEPPARD, MULLIN, RICHTER & HAMPTON LLP

A Limited Liability Partnership 

Including Professional Corporations 

GARY L. HALLING, Cal. Bar No. 66087 

MICHAEL W. SCARBOROUGH, Cal. Bar No. 203524 

Four Embarcadero Center, 17th Floor 

San Francisco, CA 94111 

Telephone: 415.434.9100 

Facsimile: 415.434.3947 

E-mail: ghalling@sheppardmullin.com 

 mscarborough@sheppardmullin.com 

LEO D. CASERIA, Cal. Bar No. 240323 

333 South Hope Street, 43rd Floor 

Los Angeles, California 90071-1422 

Telephone: 213.620.1780 

Facsimile: 213.620.1398 

E-mail: lcaseria@sheppardmullin.com 

Attorneys for Non-Party Samsung Electronics 

Co., Ltd. 

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 SAMSUNG 

ELECTRONICS CO., LTD.’S 

STATEMENT REGARDING 

COMMON INTEREST AGREEMENT 

Date: March 7, 2018 

Time: 2:00 p.m. 

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 604 Filed 03/06/18 Page 1 of 10
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 -1- Case No. 5:17-CV-00220-LHK-NMC

SMRH:485630961.3 NON-PARTY SAMSUNG ELECTRONICS CO., LTD.’S STATEMENT REGARDING

COMMON INTEREST AGREEMENT

Non-party Samsung Electronics co., Ltd. (“Samsung”) submits this statement in response 

to the Court’s March 2, 2018 Order Requiring Further Briefing Regarding Purported Common 

Interest Agreement (“Order”). The Order required Samsung, non-party Apple, Inc. (“Apple”), and 

defendant Qualcomm Incorporated (“Qualcomm”) to each submit a brief addressing three topics 

relating to the June 23, 2016 Common Interest Agreement between SEC and Apple (“Common 

Interest Agreement”). Samsung’s positions on those three topics are set forth below. 

Samsung objects to the production of the Common Interest Agreement because (1) it is not 

relevant to the antitrust claims against Qualcomm in this case; (2) it is attorney work product 

protected by the common interest doctrine, and Qualcomm cannot demonstrate substantial need to 

overcome the work product doctrine; and (3) the Common Interest Agreement itself shows that 

Samsung and Apple had a shared legal interest in ensuring that standard essential patent holders 

complied with their FRAND obligations and antitrust law. 

Requiring Samsung or Apple to produce the Common Interest Agreement to Qualcomm is 

bad public policy. It would be a strong disincentive to parties entering into written common 

interest agreements in the future. 

I. The Common Interest Agreement Is Not Relevant To The Issues In The Case. 

The Common Interest Agreement between non-parties Apple and Samsung is not relevant 

or potentially relevant to any issues in dispute between Qualcomm and the N.D. Cal. plaintiffs, nor 

is Samsung aware of any valid document request from Qualcomm that seeks production of the 

Common Interest Agreement in the N.D. Cal. cases. It has no bearing on the claims or defenses in 

these antitrust cases. The Common Interest Agreement, which the Court has reviewed in camera, 

does not does not even refer to Qualcomm. 

Only relevant materials are discoverable. See Fed. R. Civ. Proc. 26(b)(1) (parties may 

obtain discovery of matters that are “relevant to any party’s claim or defense and proportional to 

the needs of the case.”). These cases concern Qualcomm’s alleged antitrust violations in 

connection with its licensing of standard essential patents and its chipset sales practices. The cases 

do not concern an agreement between two non-parties regarding their common interest privilege. 

The Common Interest Agreement between non-parties Samsung and Apple will not help prove or 

Case 5:17-cv-00220-LHK Document 604 Filed 03/06/18 Page 2 of 10
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 -2- Case No. 5:17-CV-00220-LHK-NMC

SMRH:485630961.3 NON-PARTY SAMSUNG ELECTRONICS CO., LTD.’S STATEMENT REGARDING

COMMON INTEREST AGREEMENT

disprove any claim or defense or fact of consequence in these cases. It merely describes a 

common legal interest between Apple and Samsung and sets forth some terms relating to 

cooperation in furtherance of that interest. 

Under similar circumstances, courts routinely refuse to compel production of common 

interest agreements on the grounds that they are not relevant or responsive. See, e.g., Castaneda v. 

Burger King Corp., 259 F.R.D. 194, 200 (N.D. Cal. 2009) (Burger King did not produce a joint 

defense agreement and did not include it on its privilege log, which the court noted was “probably 

legitimate if Plaintiffs didn't make a formal discovery request for it.”); In re Takata Airbag Prods. 

Liab. Litig., 2017 U.S. Dist. LEXIS 76100, *105-112 (S.D. Fla. Mar. 7, 2017) (denying motion to 

compel production of joint defense agreement because its content was “not relevant to any claim 

or defense in this matter”) (collecting cases); Ellis v. J.P. Morgan Chase & Co., 2014 U.S. Dist. 

LEXIS 45681, *9-10 (N.D. Cal. Apr. 1, 2014) (letter and attached joint defense agreement not 

relevant because it did not contain “any information that is relevant to the underlying claims.”); 

Warren Distrib. Co. v. InBev USA L.L.C., 2008 U.S. Dist. LEXIS 71320, *9 (D.N.J. Sept. 18, 

2008) (joint defense agreement not relevant and not discoverable because it "merely contains 

language that parties typically include in joint defense agreements to protect from discovery 

privileged information revealed to a third party."). 

For instance, in Takata, plaintiffs sought to compel production of a joint defense 

agreement between defendants Honda and TK Holdings in a product liability case based on 

allegedly defective airbags used in automobiles. Like the Common Interest Agreement between 

Apple and Samsung, the Honda-TK agreement was formed in connection with a government 

investigation. See In re Takata Airbag Prods. Liab. Litig., 2017 U.S. Dist. LEXIS 76100, *106-

107 (S.D. Fla. Mar. 7, 2017). Following an in camera review, the court held that the Honda-TK 

agreement merely contained “standard” language found in most joint defense agreements, and did 

not “contain any substantive information, factual details or other case-specific information that is 

relevant to the Plaintiff’s claims and defenses.” Id. at *109-110. The Court held that the HondaTK agreement was “therefore irrelevant under Rule 26(b)(1).” Id. Indeed, the Court even went so 

far as to note that the Honda-TK joint defense agreement was “not relevant to any claim or 

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 -3- Case No. 5:17-CV-00220-LHK-NMC

SMRH:485630961.3 NON-PARTY SAMSUNG ELECTRONICS CO., LTD.’S STATEMENT REGARDING

COMMON INTEREST AGREEMENT

defense in this matter, even under the extremely broad discovery standards set forth in Rule 26.” 

Id. at 108. Likewise, the Common Interest Agreement between Samsung and Apple contains no 

information bearing on any matter of consequence in these cases. 

In addition to being irrelevant with respect to the merits of the issues in these cases, the 

Common Interest Agreement is also not relevant to determining whether documents listed on 

Apple’s privilege log are actually privileged or work product. The common interest doctrine is a 

non-waiver rule, and, as a result, only applies to documents or communications that are protected 

by the attorney-client privilege or attorney work product doctrine to begin with. A similar 

relevance argument was rejected by the court in Warren Distrib. Co. v. InBev USA L.L.C., 2008 

U.S. Dist. LEXIS 71320, *13 (D.N.J. Sept. 18, 2008), where the court explained:

“Plaintiffs contend they must review the actual Agreement in order to assess the 

‘merits of the [defendants'] privilege claim.’ Brief at 4. Plaintiffs are mistaken. 

Plaintiffs are already in possession of the information they need to determine the 

merits of defendants' privilege claims. As noted by A-B, ‘the joint defense privilege 

was not used to confer privilege upon an otherwise unprivileged document.... 

Rather, it was used only to ensure that an otherwise privileged communication was 

not waived simply because it was shared between Anheuser-Busch and InBev.’ Id. 

Further, if the Court accepts plaintiffs' argument that they must review the 

Agreement in order for them to evaluate the merits of defendants' privilege claim, 

then joint defense agreements would be routinely produced in discovery. This 

position is contrary to the applicable case law.” 

II. The Common Interest Agreement Is Protected From Disclosure By The 

 Attorney Work Product Doctrine And/Or The Attorney Client Privilege 

As noted above and in the Court’s Order, a document or communication must be protected 

by the attorney-client privilege or attorney work product doctrine to begin with in order for the 

common interest doctrine to apply. This is because the common interest doctrine is a principle of 

non-waiver. It “is an exception to ordinary waiver rules designed to allow attorneys for different 

clients pursuing a common legal strategy to communicate with each other.” In re Pac. Pictures 

Corp., 679 F.3d 1121, 1129 (9th Cir. 2012). 

The Common Interest Agreement between Samsung and Apple qualifies as attorney work 

product. The attorney work-product doctrine protects from discovery in litigation “mental 

impressions, conclusions, opinions, or legal theories of a party's attorney” that were “prepared in 

Case 5:17-cv-00220-LHK Document 604 Filed 03/06/18 Page 4 of 10
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 -4- Case No. 5:17-CV-00220-LHK-NMC

SMRH:485630961.3 NON-PARTY SAMSUNG ELECTRONICS CO., LTD.’S STATEMENT REGARDING

COMMON INTEREST AGREEMENT

anticipation of litigation or for trial.” Fed. R. Civ. P. 26(b)(3). The Common Interest Agreement 

is a document prepared and signed by outside counsel for both Apple and Samsung, describing 

certain legal impressions, theories and opinions, and containing a legal plan for cooperating in 

response to government requests for information in connection with antitrust investigations into 

standard essential patents. 

In addition, only six months after the Common Interest Agreement was signed, Apple filed 

its own antitrust lawsuit against Qualcomm in S.D. Cal. in January 2017, shortly after the FTC 

filed its Complaint in these matters. While the parties may have desired to avoid litigation, it was 

likely foreseeable by June 2016 when the Common Interest Agreement was signed that there was 

a reasonable probability of litigation. Under similar circumstances, other courts have found that 

joint defense or common interest agreements qualify as work product. See, e.g., In re Takata 

Airbag Prods. Liab. Litig., 2017 U.S. Dist. LEXIS 76100, *112-116 (S.D. Fla. Mar. 7, 2017) 

(denying motion to compel production of joint defense agreement, holding that the agreement was 

“protected by the work product privilege, as it applies through the joint defense or common 

interest doctrines.”) (collecting cases); Ellis v. J.P. Morgan Chase & Co., 2014 U.S. Dist. LEXIS 

45681, *12-16 (N.D. Cal. Apr. 1, 2014) (letter and attached joint defense agreement to third 

parties that received subpoenas qualified as work product because it was prepared by counsel in 

connection with litigation and contained a “plan” regarding the subpoenas); R.F.M.A.S., 2008 U.S. 

Dist. LEXIS 14969, *3 (S.D.N.Y. Feb. 15, 2008) (noting that “most courts” have held that joint 

defense agreements are protected by the work product doctrine).

In Takata, the Court held that a Honda-TK joint defense agreement executed in connection 

with a government investigation prior to the litigation was protected attorney work product. The 

litigation involved product liability claims relating to defective airbags, and the joint defense 

agreement was signed years earlier, just before the National Highway Traffic Safety 

Administration closed its own investigation. In re Takata Airbag Prods. Liab. Litig., 2017 U.S. 

Dist. LEXIS 76100, *106-107 (S.D. Fla. Mar. 7, 2017). The Court noted that the joint defense 

agreement was “executed by the parties’ respective attorneys,” was prepared in anticipation of 

litigation, and reflected opinion work product in the form of “collective legal opinions and 

Case 5:17-cv-00220-LHK Document 604 Filed 03/06/18 Page 5 of 10
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 -5- Case No. 5:17-CV-00220-LHK-NMC

SMRH:485630961.3 NON-PARTY SAMSUNG ELECTRONICS CO., LTD.’S STATEMENT REGARDING

COMMON INTEREST AGREEMENT

conclusions regarding the manner and method by which privileged information should be 

exchanged, and the conditions and limitations that should govern the parties' use of such 

information.” Id. at 114. These circumstances are very similar to the circumstances surrounding 

the Apple-Samsung Common Interest Agreement, which was also executed by the parties’ 

attorneys, in connection with a government antitrust investigation that in fact led to litigation, and 

reflects the opinions of attorneys regarding the manner and method by which privileged 

information will be exchanged and used. Accordingly, the Common Interest Agreement is 

protected as work product. 

In order to overcome the protections afforded by the attorney work product doctrine, 

Qualcomm must show a “substantial need” with respect to non-opinion work product and an even 

greater showing for opinion work product. See Fed. R. Civ. Proc. 26(b)(3)(A)(ii); Upjohn Co. v. 

United States, 449 U.S. 383, 400 (1981); Holmgren v. State Farm Mutual Automobile Insurance 

Co., 976 F.2d 573, 577 (9th Cir. 1992). As noted by the Court in Takata, a joint defense 

agreement like the Apple-Samsung Common Interest Agreement constitutes opinion work 

product. It is therefore subject to a showing “beyond” substantial need. Holmgren, 976 F.2d at 

577. 

Regardless, Qualcomm cannot establish even a substantial need for the Common Interest 

Agreement that overcomes its work product protection, much less a showing beyond substantial 

need. As Qualcomm’s arguments in the February 16, 2018 Joint Statement establish, Qualcomm 

is only interested in the Common Interest Agreement because it wants to determine whether other 

Apple-Samsung communications listed on Apple’s privilege log are actually privileged. (See Dkt. 

575 at 3). Qualcomm does not need the Common Interest Agreement to do this. 

As already explained above, the common interest doctrine is a non-waiver principle that 

only applies to materials that are privileged or work product in the first place. See supra at 3. The 

Common Interest Agreement can therefore shed no light on whether any particular document was 

initially privileged or work product. See Warren Distrib. Co. v. InBev USA L.L.C., 2008 U.S. 

Dist. LEXIS 71320, *13 (D.N.J. Sept. 18, 2008) (common interest agreement has no bearing on 

this question). Qualcomm also cannot establish a substantial need for production of the Common 

Case 5:17-cv-00220-LHK Document 604 Filed 03/06/18 Page 6 of 10
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 -6- Case No. 5:17-CV-00220-LHK-NMC

SMRH:485630961.3 NON-PARTY SAMSUNG ELECTRONICS CO., LTD.’S STATEMENT REGARDING

COMMON INTEREST AGREEMENT

Interest Agreement to determine whether the common interest doctrine applies to prevent waiver 

of the attorney client privilege or attorney work product protection. That is because the existence 

of a common interest agreement can be established without a written agreement. See, e.g., United 

States v. Gonzalez, 669 F.3d 974 (9th Cir. 2012) (“[I]t is clear that no written agreement is 

required, and that a JDA may be implied from conduct and situation, such as attorneys exchanging 

confidential communications from clients who are or potentially may be codefendants or have 

common interests in litigation.”). Qualcomm therefore has other ways to determine the extent to 

which the common interest doctrine applies to Samsung-Apple communications, primarily by 

examining the underlying communications themselves and the circumstances surrounding them. 

Indeed, even assuming the Apple-Samsung Common Interest Agreement is produced, it would not 

obviate the need for this type of analysis. 

Qualcomm also no substantial need for the Common Interest Agreement with respect to 

the actual claims and defenses at issue in this case. Again, this is an antitrust case against 

Qualcomm, not a case about whether Apple and Samsung have a common legal interest. The 

parties have a multitude of other and better ways to establish the claims and defenses in this case, 

including through documents, data and testimony that actually relate to the claims at issue. There 

has been a substantial amount of discovery in this case regarding relevant matters, including 

millions of documents as well as deposition testimony, and under these circumstances there is no 

substantial need for production of an irrelevant Common Interest Agreement. See R.F.M.A.S., 

2008 U.S. Dist. LEXIS 14969, *3 (S.D.N.Y. Feb. 15, 2008) (“Plaintiff has been provided the 

pertinent corporate documents except for the joint-defense agreement . . . . Based on our in camera 

review of the agreement, it contains nothing else that would materially add to or change the 

plaintiff's case for imposing responsibility on [defendant], and hence plaintiff has not shown the 

requisite compelling need for the document that would justify overriding the normal work-product 

immunity associated with a joint-defense agreement.”). 

Finally, Samsung notes that several courts have also rejected efforts to compel disclosure 

of joint defense or common interest agreements on the grounds that they are privileged. See, e.g., 

Heartland Surgical Specialty Hosp., LLC v. Midwest Div., Inc., 2007 U.S. Dist. LEXIS 22090, 

Case 5:17-cv-00220-LHK Document 604 Filed 03/06/18 Page 7 of 10
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 -7- Case No. 5:17-CV-00220-LHK-NMC

SMRH:485630961.3 NON-PARTY SAMSUNG ELECTRONICS CO., LTD.’S STATEMENT REGARDING

COMMON INTEREST AGREEMENT

*30 (D. Kan. Mar. 26, 2007) (denying motion to compel production of joint defense agreement in 

antitrust case, holding that “the applicability of the privilege is clear to the Court.”); McNally 

Tunneling Corp. v. City of Evanston, 2001 U.S. Dist. LEXIS 17090, *10-14 (N.D. Ill. Oct. 16, 

2001) (denying motion to compel production of joint defense agreement because it was protected 

by attorney client privilege and attorney work product doctrine); A.I. Credit Corp. v. Providence

Washington Insurance Co., 1997 U.S. Dist. LEXIS 6223, *12 (S.D.N.Y. 1997) (“joint defense 

agreements are generally considered privileged”). 

III. Samsung And Apple Had A Common Legal Interest

Samsung and Apple described their common legal interest in the Common Interest 

Agreement itself, which was signed by counsel for both parties. As reflected in the Common 

Interest Agreement, Samsung and Apple had a common legal interest in the government’s antitrust 

investigations into standard essential patents. Specifically, Samsung and Apple had a common 

legal interest in ensuring that standard essential patent holders lived up to their FRAND licensing 

obligations as well as the antitrust laws. This common legal interest arose out of the fact that 

Samsung and Apple are more frequently licensees of standard essential patents (often the exact 

same patents) rather than licensors of standard essential patents, and also because the government 

was requesting information from both Samsung and Apple in connection with its antitrust 

investigations into standard essential patent licensing. By cooperating and coordinating with 

Apple pursuant to the Common Interest Agreement, Samsung hoped to reduce or avoid litigation 

by ensuring that standard essential patent holders lived up to their FRAND obligations and 

antitrust law. 

Courts have recognized that parties can have common legal interests in patent licensing 

issues that trigger the common interest doctrine, particularly when those efforts may help to 

reduce or avoid litigation. See, e.g., In re Regents of the Univ. of Cal., 101 F.3d 1386 (Fed. Cir. 

1996) (holding that common legal interest existed between Eli Lilly and the University of 

California because they shared an interest in “valid and enforceable patents.”); Rembrandt Patent 

Innovations, LLC v. Apple, Inc., 2016 U.S. Dist. LEXIS 13749, *17 (N.D. Cal. Feb. 4, 2016) 

(holding that common legal interest existed where separate parties shared a “joint interest in 

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 -8- Case No. 5:17-CV-00220-LHK-NMC

SMRH:485630961.3 NON-PARTY SAMSUNG ELECTRONICS CO., LTD.’S STATEMENT REGARDING

COMMON INTEREST AGREEMENT

generating revenue through licensing and litigation and maintaining the strength and validity of 

the patent” which “inherently relied on the joint pursuit of legal objectives.”) (emphasis in 

original); Morvil Tech., LLC v. Ablation Frontiers, Inc., 2012 U.S. Dist. LEXIS 30815 (S.D. Cal. 

Mar. 8, 2012) (holding that common legal interest existed between AFI and Medtronic, which was 

interested in acquiring AFI, because the parties wanted to make sure that AFI’s patents did not 

infringe other parents). 

The Court suggests in its Order that Samsung and Apple had a joint commercial interest 

and not a joint legal interest. (See Dkt. 600 at 2). The two are not mutually exclusive; Samsung 

and Apple may have had a commercial interest in avoiding non-FRAND “holdup” licensing terms 

for standard essential patents, but they also had a legal interest in ensuring that standard essential 

patent holders complied with their FRAND obligations and avoiding litigation regarding those 

issues. See, e.g., In re Regents of the Univ. of Cal., 101 F.3d 1386, 1391 (Fed. Cir. 1996) 

(common interest doctrine applies to documents that “address either anticipated litigation or a joint 

effort to avoid litigation.”); Morvil Tech., LLC v. Ablation Frontiers, Inc., 2012 U.S. Dist. LEXIS 

30815 (S.D. Cal. Mar. 8, 2012) (“There may indeed have been an overlap of commercial and legal 

interests given the purpose of the disclosure, namely wholesale purchase of AFI by Medtronic. 

But this overlap does not negate the effect of the legal interest in establishing a community of 

interest.”); Duplan Corp. v. Deering Milliken, Inc., 397 F. Supp. 1146, 1172 (D.S.C. 1974) (“The 

fact that there may be an overlap of a commercial and a legal interest for a third party does not 

negate the effect of the legal interest in establishing a community of interest.”), cited in In re 

Regents of the Univ. of Cal., 101 F.3d at 1390. 

IV. Conclusion 

For the foregoing reasons, Samsung respectfully requests that the Court deny Qualcomm’s 

request for an order compelling production of the Common Interest Agreement. The Court has 

already reviewed the agreement in camera and can determine whether other items listed on 

Apple’s privilege log are privileged or not without requiring production of the Common Interest 

Agreement. There is no sound legal basis for ordering Samsung to produce the Common Interest 

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 -9- Case No. 5:17-CV-00220-LHK-NMC

SMRH:485630961.3 NON-PARTY SAMSUNG ELECTRONICS CO., LTD.’S STATEMENT REGARDING

COMMON INTEREST AGREEMENT

Agreement and such production would have a chilling effect and make parties reluctant to enter 

into written common interest agreements in the first place. 

 

Dated: March 6, 2018 

 SHEPPARD, MULLIN, RICHTER & HAMPTON LLP

 

By /s/ Leo D. Caseria

 LEO D. CASERIA 

Attorneys for Samsung Electronics Co., Ltd. 

Case 5:17-cv-00220-LHK Document 604 Filed 03/06/18 Page 10 of 10