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 

rvannest@keker.com 

633 Battery Street 

San Francisco, CA 94111-1809 

Telephone: (415) 676-2289 

Facsimile: (415) 397-7188 

MORGAN, LEWIS & BOCKIUS LLP 

Richard S. Taffet (pro hac vice)

richard.taffet@morganlewis.com 

101 Park Avenue 

New York, NY 10178-0060 

Telephone: (212) 309-6000 

Facsimile: (212) 309-6001 

Attorneys for Defendant 

QUALCOMM INCORPORATED 

BOIES SCHILLER FLEXNER LLP 

William A. Isaacson, DC Bar No. 414788 

wisaacson@bsfllp.com 

Karen L. Dunn, DC Bar No. 1002520 

kdunn@bsfllp.com 

Amy J. Mauser, 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 

etakashima@bsfllp.com 

401 Wilshire Blvd, Suite 850 

Santa Monica, CA 90401 

Telephone: (310) 752-2408 

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 

REDACTED 

DEFENDANT QUALCOMM 

INCORPORATED’S AND NON-PARTY APPLE 

INC.’S JOINT DISCOVERY STATEMENT 

REGARDING PRODUCTION OF A COMMON 

INTEREST AGREEMENT 

Courtroom: 7, 4th Floor; Hon. Nathanael M. Cousins 

IN RE QUALCOMM ANTITRUST 

LITIGATION Case No. 5:17-MD-02773-LHK-NMC 

Case 5:17-cv-00220-LHK Document 536-3 Filed 02/05/18 Page 1 of 7
Defendant Qualcomm Incorporated (“Qualcomm”) and Non-Party Apple Inc. (“Apple”) 

submit this joint discovery statement regarding the production of a common interest agreement 

between Apple and Samsung Electronics Company (“Samsung”). 

I. Qualcomm’s Position 

Qualcomm seeks an Order from the Court compelling Apple to produce its purported 

common interest agreement with Samsung, which according to Apple dates from Summer 2016,

approximately six months before the Complaint in this action was filed. As the Court is aware, 

Apple has asserted that it has common interest agreements with the plaintiffs in these Actions—

both the FTC and counsel for the putative class—as well as with Samsung, Intel Corporation, 

MediaTek Inc., Compal Electronics Company, FIH Mobile Limited, Hon Hai Precision 

Company, Pegatron Corporation and Wistron Corporation. (ECF No. 404.) On August 15, 

2017, Qualcomm served a subpoena on Apple expressly calling for production of the purported 

common interest agreements with these entities. (ECF Nos. 209-10, 209-11.)1

No entity has objected to Apple’s production of the purported common interest 

agreements except for Samsung. Notably, in its responses and objections to Qualcomm’s 

subpoena, Apple did not state a specific objection to the relevance of the agreements, including 

the Samsung agreement, or assert that it was unduly burdensome to produce any of the 

agreements. Indeed, Apple actually produced the Samsung agreement to Qualcomm, but then on 

January 9, 2018 sent a letter requesting to claw it back on the ground that it (and other 

documents not at issue here) “are or may be” subject to “third party claims of attorney-client 

privilege or work product protection”. (See 1/9/2018 Letter from E. Takashima to G. Bornstein.) 

Then, on January 11, Apple informed Qualcomm that Samsung objected to Apple’s production 

of the agreement and that Apple intended to withhold the agreement from production on that 

basis. 

The agreement should be produced. As an initial matter, Apple cannot withhold a 

document from production merely because a third party, which has not come before the Court, 

has expressed an objection to Apple. See Dataquill Limited v. High Tech Computer Corp., No. 

08cv543-IEG (BGS), 2011 WL 13100732, at *2 (S.D. Cal. Sept. 1, 2011). Samsung is a 

frequent litigant in this Court—and even filed an amicus brief in this litigation—so if Samsung 

wished to assert an objection, it could and should have filed a motion for a protective order. 

Samsung’s objection is also substantively flawed. Contrary to Samsung’s arguments, the 

agreement is relevant and it is not protected from discovery by the attorney-client privilege or the 

work product doctrine. 

First, the agreement between Apple and Samsung is relevant to evaluating the basis and 

scope of any purported common legal interest between the two entities. Apple and Samsung 

may have a business interest in lowering what they pay for the rights to practice Qualcomm’s 

intellectual property, but the validity of a common interest agreement turns on whether there is a 

common legal interest. See Elan Microelectronics Corp. v. Apple Inc., No. C-09-1531 RS 

(PSG), 2011 WL 3443923, at *2 (N.D. Cal. Aug. 8, 2011); Nidec Corp. v. Victor Co. of Japan,

1

 Samsung’s assertion below that it is not “aware of any valid document request from 

Qualcomm that seeks production of the Common Interest Agreement in the N.D. Cal. cases” is 

mistaken. As Apple acknowledges below, Qualcomm requested “Documents Concerning any 

Common Interest Agreement [Apple has] entered into with any Person Concerning Qualcomm”. 

Samsung’s reliance on Castaneda v. Burger King Corp., 259 F.R.D. 194, 200 (N.D. Cal. 2009), 

in which there was no such request, is therefore misplaced. 

Case 5:17-cv-00220-LHK Document 536-3 Filed 02/05/18 Page 2 of 7
249 F.R.D. 575, 578 (N.D. Cal. 2007). Because the agreement between Apple and Samsung was 

entered several months before any of the present actions were filed, and Samsung is not even a 

party to any pending case, there is strong reason to doubt Apple’s reliance on a common interest 

privilege to justify withholding the hundreds of communications with Samsung that appear on 

Apple’s privilege log.2 (See, e.g., 12/20/2017 Hrg. Tr. 29:3-11 (“THE COURT: . . . I am 

skeptical about the scope of the common-interest privilege that’s been asserted . . . .”).) The 

terms of the agreement are relevant to assessing whether the asserted common interest privilege 

should be upheld.3

Second, the agreement is not protected from discovery by “the common interest 

doctrine”. Samsung asserts below that it and Apple had “common interests with respect to the 

government’s antitrust investigations into standard essential patents”. Whether this is a valid 

common legal interest that could justify the withholding of communications between Apple and 

Samsung (as opposed to a shared commercial goal, which would not justify withholding the 

communications) is a matter in dispute. Therefore, Samsung’s assertion that production of the 

agreement would have a “chilling effect” on communications between Apple and Samsung puts 

the cart before the horse. If there is no valid common legal interest, then those communications 

do not merit protection from discovery. Nor would production of the agreement itself—which is 

the only document at issue in this motion—chill the underlying substantive communications. 

Indeed, R.F.M.A.S. v. So, 2008 U.S. Dist. LEXIS 14969 (S.D.N.Y. Feb. 15, 2008), on which 

Samsung relies, affirmatively rejects Samsung’s argument that joint defense and common 

interest agreements necessarily incorporate the mental processes of attorneys; such agreements 

instead establish the framework for future communications. 

Further, the common interest doctrine is not an independent basis for withholding a 

document from discovery. As Samsung admits, it is “an exception to ordinary waiver rules”, 

meaning that before it applies, there must be an underlying attorney-client privilege or work 

product protection. Here, the document at issue is an executed agreement between two 

sophisticated parties negotiated at arms’ length, and it therefore does not constitute a privileged 

communication between an attorney and his or her client. As for the work product protection, 

Samsung has not established that the agreement itself is work product. Moreover, work product 

protection is conditional and can be overcome by a showing of substantial need. See, e.g., In re 

Takata Airbag Prods. Liab. Litig., 2017 U.S. Dist. LEXIS 76100 (S.D. Fla. Mar. 7, 2017); 

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

2001). Here, Qualcomm has a substantial need for production of the agreement between Apple 

and Samsung to evaluate (i) the validity of the asserted common legal interest, and (ii) the 

appropriateness of Apple’s decision to withhold hundreds of communications with Samsung on 

that basis. Qualcomm has no other means to discover the terms of the agreement. 

Qualcomm therefore respectfully requests that this Court order Apple to produce the 

purported common interest agreement between Apple and Samsung, which Apple has withheld 

solely on the basis of Samsung’s objection. 

2

 Indeed, Apple’s privilege logs identify numerous withheld communications between Apple 

and Samsung that predate the purported common interest agreement in Summer 2016. 

3

 For this reason, Samsung’s reliance on cases declining to order production of joint defense 

agreements on relevance grounds are distinguishable. The validity of the common legal interest 

in those cases was not questioned. 

Case 5:17-cv-00220-LHK Document 536-3 Filed 02/05/18 Page 3 of 7
Compromise Position: While Qualcomm believes that the agreement should be produced 

for the reasons stated above (and that Samsung’s objection is not procedurally proper), 

Qualcomm is willing to have the agreement submitted for the Court to review in camera and 

determine whether the document should be produced. 

II. Apple’s Position 

In response to Qualcomm’s subpoenas, Apple agreed to produce “Common Interest 

Agreements which it is invoking or relying upon in this litigation, consistent with the 

confidentiality obligations Apple may owe to third parties . . . .” (Apple Responses and 

Objections to Qualcomm Supp. Req. No. 1.) In doing so, Apple did not agree that such 

documents are relevant to any party’s claims or defenses in this case. Rather, Apple hoped to 

avoid unnecessary motion practice concerning Qualcomm’s sweeping request for “All 

Documents Concerning any Common Interest Agreement you have entered into with any Person 

Concerning Qualcomm, and any Communications relating thereto.” 

As Qualcomm notes, Apple has produced other written common interest agreements. 

However, 

 and Samsung has objected to production of the agreement on relevance, privilege and 

work product grounds. Samsung’s objections, as Samsung has communicated them to Apple, are 

summarized below. Apple proposes that the Court review the agreement in camera to evaluate 

Samsung’s privilege and work product claims.4

A. Samsung’s Position

Samsung objects to the production of the common interest agreement between Apple and 

Samsung on the grounds that it is not relevant, and also because it is protected by the attorneyclient privilege and attorney work product doctrine, both of which apply to the common interest 

agreement as a result of the common interest doctrine. 

First, 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.5 The N.D. Cal. 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. 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 

4

 Qualcomm’s statement erroneously suggests that a written common interest agreement is 

dispositive of whether a common interest exists, and that a common interest is limited to the 

scope of a written common interest agreement. To the contrary, “it is clear that no written 

agreement is required, and that a JDA may be implied from conduct and situation.” United 

States v. Gonzalez, 669 F.3d 974 (9th Cir. 2012). Qualcomm’s statement also fails to note that 

the common interest agreement between Apple and Samsung was inadvertently produced on 

January 8, 2018, before it was clawed back the next day. 

5

 Footnote 1 in Qualcomm’s position statement refers to a request for common interest 

agreements “Concerning Qualcomm,” but the Common Interest Agreement at issue does not 

concern Qualcomm and never once refers to Qualcomm. 

Case 5:17-cv-00220-LHK Document 536-3 Filed 02/05/18 Page 4 of 7
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); 

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."). 

Second, the common interest doctrine protects the common interest agreement between 

Apple and Samsung from discovery. The common interest doctrine “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). 

Apple and Samsung have common legal interests with respect to the government’s antitrust 

investigations into standard essential patents. Thus, even if the common interest agreement were 

relevant, which it isn’t, the document is protected by the common interest doctrine, which 

extends the attorney-client privilege and attorney work product protections to the agreement 

itself. 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, *15 (N.D. Cal. Apr. 1, 2014) (common interest privilege 

applied to document created and sent “in the course of a matter of common interest” which “was 

intended to initiate collaboration on this matter”); 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); Heartland Surgical Specialty Hosp., LLC v. Midwest 

Div., Inc., 2007 U.S. Dist. LEXIS 22090, *39 (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). 

Specifically as to the work product doctrine, like the joint defense agreement in In re 

Takata, the common interest agreement between Apple and Samsung reflects Apple’s and 

Samsung’s attorneys’ “collective legal opinions and 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,” in connection with the parties’ common 

legal positions on active government antitrust investigations involving standard essential patents, 

which by 2016 the parties anticipated could lead to litigation. In re Takata Airbag Prods. Liab. 

Litig., 2017 U.S. Dist. LEXIS 76100, *114 (S.D. Fla. Mar. 7, 2017). As Qualcomm notes in its 

position statement, the common interest agreement was signed only six months before the FTC 

filed its complaint against Qualcomm. In addition, Apple has filed its own antitrust lawsuit 

against Qualcomm in the Southern District of California, which overlaps to some extent with the 

N.D. Cal. cases. 

Third, to the extent that the Court needs to review the common interest agreement to 

resolve Qualcomm’s motion or to determine whether a common interest privilege existed 

between Apple and Samsung, Samsung consents to an in camera review of the common interest 

Case 5:17-cv-00220-LHK Document 536-3 Filed 02/05/18 Page 5 of 7
agreement by the Court. Notably, all parties here, including Qualcomm, are willing to proceed 

with an in camera review. Indeed, courts routinely conduct in camera review, and parties 

routinely propose in camera review, to resolve such issues. See, e.g., Castaneda v. Burger King 

Corp., 259 F.R.D. 194, 200 (N.D. Cal. 2009); In re Takata Airbag Prods. Liab. Litig., 2017 U.S. 

Dist. LEXIS 76100, *113-114 (S.D. Fla. Mar. 7, 2017); Warren Distrib. Co. v. InBev USA 

L.L.C., 2008 U.S. Dist. LEXIS 71320, *2 (D.N.J. Sept. 18, 2008); McNally Tunneling Corp. v. 

City of Evanston, 2001 U.S. Dist. LEXIS 17090, *1 (N.D. Ill. Oct. 16, 2001). 

As the Ninth Circuit has recognized, an in camera review by a judge “mitigates any 

chilling effect” that would otherwise result from the disclosure of privileged communications. 

United States v. Zolin, 842 F.2d 1135, 1137 (9th Cir. 1988). Any broader disclosure of the 

common interest agreement, particularly when the document is irrelevant to the claims and 

defenses in the N.D. Cal. cases, would have a chilling effect on joint defense or common interest 

discussions not only between Samsung and Apple, but between other parties in other matters as 

well. This is contrary to the purpose of the attorney client privilege, which is to "encourage full 

and frank communication between attorneys and their clients and thereby promote broader public 

interests in the observance of law and administration of justice." Upjohn Co. v. United States,

449 U.S. 383, 389 (1981). If similarly situated parties with common legal positions cannot 

coordinate on legal strategy with the confidence that their communications are privileged, those 

discussions may not happen at all. The common interest agreement itself is fundamental to any 

such coordination or communication. 

Case 5:17-cv-00220-LHK Document 536-3 Filed 02/05/18 Page 6 of 7
FILER’S ATTESTATION 

I, Edward H. Takashima, 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. 

DATED: February 5, 2018 /s/ Edward H. Takashima_________ 

 Edward H. Takashima 

Case 5:17-cv-00220-LHK Document 536-3 Filed 02/05/18 Page 7 of 7