1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

QUALCOMM'S BRIEF REGARDING IN CAMERA REVIEW 

Case Nos. 17-cv-0220-LHK-NMC & 17-md-2773-LHK-NMC

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 

Additional counsel in the signature block. 

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 BRIEF 

REGARDING IN CAMERA REVIEW 

PURSUANT TO MAGISTRATE JUDGE’S 

FEBRUARY 24, 2018 ORDER 

Courtroom: 8, 4th Floor 

Judge: Hon. Lucy H. Koh 

Date: March 5, 2018 

 

IN RE QUALCOMM ANTITRUST 

LITIGATION 

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

Case 5:17-cv-00220-LHK Document 603 Filed 03/05/18 Page 1 of 11
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

QUALCOMM’S BRIEF REGARDING IN CAMERA REVIEW 

Case Nos. 17-cv-0220-LHK-NMC & 17-md-2773-LHK-NMC

Pursuant to the Court’s February 24, 2018 Order (ECF No. 591) (“February 24 

Order”), Qualcomm has re-reviewed 5,250 privilege log entries: 4,250 entries described on the 

log as “regarding QC business plans”; 500 entries selected by Plaintiffs in connection with the 

deposition of Michael Hartogs; and 500 entries selected by Plaintiffs in connection with the 

deposition of Fabian Gonell.1 In compliance with the February 24 Order, by March 2, 

Qualcomm produced documents to Plaintiffs that, as a result of its re-review, Qualcomm 

concluded were not privileged, either in whole or in part (if the latter, Qualcomm produced the 

document in redacted form).2 Today, pursuant to the February 24 Order, Qualcomm provides to 

the Court for in camera review the documents that were re-reviewed and remain withheld as 

privileged, as well as the corresponding privilege log entries. In the February 24 Order, the 

Court permitted the parties to submit briefs on the legal framework that should guide the Court’s 

in camera review. To assist the Court, we set forth below the basic legal framework, as well as 

information about some of the specific lawyers and issues that appear in the privileged 

documents submitted for in camera review. 

I. Qualcomm’s Re-Review 

To comply with the February 24 Order, between February 25 and March 2, a team 

of thirteen Qualcomm lawyers re-reviewed over 8,500 individual documents (including 

attachments). The Qualcomm lawyers who conducted the re-review are among the most 

experienced on Qualcomm’s review team, both in terms of their general experience and in terms 

of their experience in reviewing Qualcomm documents and addressing the unique issues they 

 1

 To date, Qualcomm has re-reviewed more than 10,000 privilege log entries (and many 

more documents), and continues to re-review even more, upon reasonable requests by Plaintiffs. 

For example, on March 1, Plaintiffs sent a list of 1,504 log entries for Qualcomm to re-review in 

advance of the deposition of Steve Altman, and Qualcomm is in the process of re-reviewing 

those documents and will endeavor to provide Plaintiffs with the results of that re-review ahead 

of that deposition. 

2

 Qualcomm produced the de-prived documents from among the 500 entries related to the 

Hartogs deposition on February 26, so that Plaintiffs would have those documents prior to that 

deposition. 

Case 5:17-cv-00220-LHK Document 603 Filed 03/05/18 Page 2 of 11
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

2 

QUALCOMM'S BRIEF REGARDING IN CAMERA REVIEW 

Case Nos. 17-cv-0220-LHK-NMC & 17-md-2773-LHK-NMC 

raise. Accordingly, these attorneys are better equipped than other reviewers to make the 

difficult, close calls often necessary to distinguish between legal advice and business advice in 

the context of Qualcomm’s documents. These reviewers include eight Cravath, Swaine & 

Moore LLP Discovery Attorneys, two of the best contract reviewers who work with them, and 

three Norton Rose Fulbright attorneys. 

Because of the compressed time for the re-review, Qualcomm did not have an 

opportunity to examine how much of the content over which privilege claims were withdrawn 

had already been produced to Plaintiffs in whole or in part in other documents in the production. 

Such examination was undertaken, at least partially, with respect to prior re-reviews, and has 

consistently shown that incidence to be significant (e.g., in a prior re-review of 1,520 log entries 

ordered by the Court, the content of over 45% of the documents that fell off the log and were 

produced without redactions had been previously produced in whole or in part). Qualcomm 

expects that this would be true for this re-review as well; because Qualcomm agreed to search 

the files of many custodians from its licensing arm, most documents in the production appear in 

multiple iterations, and different iterations often were analyzed differently for privilege purposes. 

These inconsistencies in how similar or identical documents are treated for privilege across the 

production are the result primarily of three features of Qualcomm’s very large document review: 

the number of review attorneys (several hundreds) required to complete the review; a deduplication process that, while consistent with industry standards, does not perfectly eliminate all 

substantively duplicative and overlapping documents from review; and above all, the difficulty 

involved in making the privilege calls on many of these documents. At the end of the day, many 

privilege determinations are close calls, on which reasonable minds can disagree. Here, many 

such reasonable minds were reviewing thousands of similar documents, often leading to slightly 

different outcomes.3

 3

 In the process of the re-reviews, Qualcomm’s reviewers have identified many documents 

where some on the team felt that certain information that should have been redacted was 

nonetheless disclosed, either in partially redacted documents subject to re-review or in other 

versions of the re-reviewed documents that had been previously produced without or with lesser 

Case 5:17-cv-00220-LHK Document 603 Filed 03/05/18 Page 3 of 11
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

3 

QUALCOMM'S BRIEF REGARDING IN CAMERA REVIEW 

Case Nos. 17-cv-0220-LHK-NMC & 17-md-2773-LHK-NMC 

II. Qualcomm Attorneys Commonly Appearing on Privileged Documents 

To assist the Court, below we describe some of the key attorneys who commonly 

appear in Qualcomm’s privileged documents. Some of these attorneys have (or had) primarily or 

exclusively a legal role. Notably, however, some have dual business and legal roles. Indeed, 

several Qualcomm business executives are or were attorneys; several served as outside counsel, 

including to Qualcomm, before joining the company; and practically all of them continued to 

provide legal advice to the company after assuming a business executive role. 

Attorneys appearing commonly in privileged documents whose job positions at 

Qualcomm are purely legal, and whose work involved little or no business advice, include (in 

alphabetical order): 

 “DMO”: Discovery Management Organization (DMO) is the group within 

Qualcomm that manages the discovery process for litigation. 

 Roy Hoffinger: Vice President, Legal Counsel, through 2015, since joining 

Qualcomm from private law practice in 2006. Mr. Hoffinger was responsible for 

advising the company on antitrust and competition law matters. 

 Carol Lam: Senior Vice President and Deputy General Counsel since 2008. Ms. 

Lam joined Qualcomm as Legal Counsel in 2007, after having served as the U.S. 

Attorney for the Southern District of California (2002-2007). 

 Don Rosenberg: Executive Vice President, General Counsel, and Corporate 

Secretary of Qualcomm since 2007. In his role as chief legal officer, he is 

responsible for overseeing Qualcomm's worldwide legal affairs including litigation, 

intellectual property and corporate matters. 

 Mark Snyder: Senior Vice President and Head of Litigation, formerly Vice 

President and Patent Counsel. Mr. Snyder joined Qualcomm in 2008 after practicing 

 

redactions. Qualcomm has typically avoided clawing back such documents except where the 

error was particularly egregious or could give rise to a claim of subject matter waiver going 

beyond the specific document. 

Case 5:17-cv-00220-LHK Document 603 Filed 03/05/18 Page 4 of 11
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

4 

QUALCOMM'S BRIEF REGARDING IN CAMERA REVIEW 

Case Nos. 17-cv-0220-LHK-NMC & 17-md-2773-LHK-NMC 

both in-house and in private practice. 

 David Zuckerman: Vice President and Legal Counsel. Mr. Zuckerman joined 

Qualcomm in 2012. He is the primary legal contact for Qualcomm’s securities 

matters, managing the legal aspects of SEC reporting, and he is the primary legal 

interface to the Qualcomm finance organization for SEC and NASDAQ filings. 

Attorneys appearing commonly in privileged documents who have given business advice in 

addition to legal advice include (in alphabetical order): 

 Derek Aberle: Prior to joining Qualcomm in 2000, Mr. Aberle represented the 

company as outside counsel for several years at the law firms of Pillsbury Madison & 

Sutro and Heller Ehrman. At Qualcomm, he had a succession of purely legal job 

positions: Legal Counsel; Legal Counsel, Senior; and Vice President and Legal 

Counsel. In June of 2005, Mr. Aberle became Senior Vice President and General 

Manager of CDMA Licensing. As Mr. Aberle testified, while in that position, he 

continued to provide legal advice to the company. (Aberle Oct. 6, 2016 IH Tr. at 

8:22-8:25.) Mr. Aberle left the company in 2017, after having served also as 

President of Qualcomm’s Technology Licensing (QTL) division (2008-2011), Group 

President of Qualcomm (2011-2014), and President of Qualcomm (2014-2017). He 

became an inactive member of the California bar on June 30, 2013. 

 Steve Altman: Prior to joining Qualcomm in 1989, Mr. Altman was in private

practice. At Qualcomm, he began as Corporate Counsel, with responsibility for 

licensing and contracts. He became General Counsel in 1992, and held that position 

through 2000. Since 1992, Mr. Altman also held several business positions, including 

General Manager of QTL (1992-1995), President of QTL (1995-2005), and President 

of Qualcomm (2005-2011). He has been a Strategic Consultant to Qualcomm since 

2013. Mr. Altman became an inactive member of the California bar on October 12, 

2006. 

 Yunhui Chae-Banks: Vice President, Business Development at QTL. Before taking 

Case 5:17-cv-00220-LHK Document 603 Filed 03/05/18 Page 5 of 11
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

5 

QUALCOMM'S BRIEF REGARDING IN CAMERA REVIEW 

Case Nos. 17-cv-0220-LHK-NMC & 17-md-2773-LHK-NMC 

this position in July 2016, Ms. Chae-Banks was Vice President and Legal Counsel. 

She had been Legal Counsel since 2003, supporting the complete range of QTL’s 

day-to-day legal operations, including handling, as lead lawyer, drafting and legal 

counseling with respect to outbound licensing. 

 Victoria Chen: Senior Vice President and Legal Counsel at Qualcomm’s CDMA 

Technology division (QCT), Qualcomm’s business unit responsible for the 

development and sale of semiconductors and software. Ms. Chen has been Legal 

Counsel since 2004, and was also Legal Counsel at Qualcomm from 1998 to 2000. 

Ms. Chen’s primary responsibilities are drafting contracts, negotiating contracts, and 

advising business teams on legal issues. 

 Deborah Dwight: Vice President and Division Counsel for QTL, since May 2017. 

Prior to becoming Division Counsel, she was Senior Legal Counsel, QTL Legal. Ms. 

Dwight joined Qualcomm in 2001. Ms. Dwight has supported the complete range of 

QTL’s day-to-day legal operations. She has drafted and negotiated a broad set of 

license agreements and amendments, and she has taken a leading role in completing 

patent and licensing registration processes in India, negotiating license agreements in 

China, and resolving many licensee audits. 

 Fabian Gonell: Senior Vice President, Licensing Strategy and Legal Counsel at 

QTL. Prior to his current position, Mr. Gonell was Vice President and Division 

Counsel for QTL, where his responsibilities included managing the division’s legal 

department and overseeing the company’s compliance with the rules of standards 

organizations. Prior to joining Qualcomm, Mr. Gonell was a litigator at Cravath, 

Swaine & Moore LLP, and in that role represented Qualcomm (among others). 

 Michael Hartogs: Senior Vice President and Division Counsel for QTL, until his 

retirement in 2012. Mr. Hartogs joined Qualcomm in 1999, and was the lead lawyer 

for Qualcomm’s patent licensing business. Mr. Hartogs provided legal advice and 

headed the legal team involved in Qualcomm’s 3G and 4G licensing activities. 

Case 5:17-cv-00220-LHK Document 603 Filed 03/05/18 Page 6 of 11
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

6 

QUALCOMM'S BRIEF REGARDING IN CAMERA REVIEW 

Case Nos. 17-cv-0220-LHK-NMC & 17-md-2773-LHK-NMC 

 Lou Lupin: General Counsel from 2000 to 2007. Mr. Lupin joined Qualcomm from 

private practice in 1995, holding a number of positions, including Senior Legal 

Counsel (1995-1996), and Proprietary Rights Counsel (1996-2000). He was a legal 

consultant to Qualcomm from 2008 to 2014. 

 Roger Martin: Senior Vice President and Chief IP Strategist, until retiring in early 

2018. Mr. Martin led the department that has overall responsibility for the 

development of Qualcomm’s IP portfolio. 

 Eric Reifschneider: Prior to joining Qualcomm in 2012, Mr. Reifschneider was 

outside counsel to Qualcomm, while practicing at Cooley Godward Kronish LLP and 

at Dewey & LeBouef. He was Senior Vice President and General Manager of QTL 

from 2012 to 2016, when he left Qualcomm. While he was at Qualcomm, Mr. 

Reifschneider continued to provide legal advice – in addition to business advice – to 

the company. 

 Tom Rouse: Vice President, QTL Patent Counsel. Prior to joining Qualcomm in 

1998, Mr. Rouse was a patent attorney in private practice. His positions at 

Qualcomm have included Associate Patent Counsel, Patent Counsel, Patent Counsel 

and Patent Portfolio Manager, and Chief Patent Counsel. 

III. Legal Standard and Common Issues 

The attorney-client privilege “protects communications between an attorney and 

her client made in confidence for the purpose of securing legal advice from the lawyer”. U.S. v. 

ChevronTexaco Corp., 241 F. Supp.2d 1065, 1069 (N.D. Cal. 2002) (citing U.S v. Chen, 99 F.3d 

1495, 1501 (9th Cir. 1996). Other communications protected by the privilege include “a 

communication between nonlegal employees in which the employees discuss or transmit legal 

advice given by counsel”, ChevronTexaco, 241 F. Supp.2d at 1077, “a communication between 

nonlegal employees in which an employee discusses her intent to seek legal advice about a 

particular issue”, id., and “communications between employees [that] were for the purpose of 

transmitting information to counsel for advice”. Kintera, Inc. v. Convio, Inc., 219 F.R.D. 503, 

Case 5:17-cv-00220-LHK Document 603 Filed 03/05/18 Page 7 of 11
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

7 

QUALCOMM'S BRIEF REGARDING IN CAMERA REVIEW 

Case Nos. 17-cv-0220-LHK-NMC & 17-md-2773-LHK-NMC 

514 (S.D. Cal. 2003). 

As applied to Qualcomm’s documents, the issue is often how to distinguish 

between legal advice and business advice. Courts in this District have recognized that where 

“the purported privileged communications involve attorneys who apparently performed the dual 

role of legal and business advisor, assessing whether a particular communication was made for 

the purpose of securing legal advice (as opposed to business advice) becomes a difficult task”. 

ChevronTexaco, 241 F. Supp.2d at 1069. In that regard, Qualcomm has applied to its review 

(and its re-review) the standards set forth in the Declaration of Gerald A. Ford, dated November 

13, 2017 (ECF No. 299) (“Ford Declaration”). The Ford Declaration was a basis of the Court’s 

Supplemental Discovery Order Approving Qualcomm’s Privilege Log (ECF No. 316) and the 

standard described therein is not in dispute.4 

The work product doctrine protects documents prepared “in anticipation of 

litigation” by or for a party or its representatives. ChevronTexaco, 241 F. Supp.2d at 1081.5 “As 

stated in Rule 26, the doctrine extends not only to work by the attorney but also to litigation 

preparation work by the party or its representatives”. Id. Notably, “except where a document 

would have been generated in the normal course of business even if no litigation was anticipated, 

the work product doctrine can reach documents prepared ‘because of litigation’ even if they were 

prepared in connection with a business transaction or also served a business purpose”. Id. at 

1082. 

 4

 FTC has acknowledged that the Ford Declaration describes a “careful process”. (12/20/17 

Tr. at 7.) MDL Plaintiffs have stated: “The Ford Declaration sets forth an excellent approach to 

privilege review to which Plaintiffs have no objection”. (12/12/17 Email from R. Pierce to A. 

Bhansali, G. Bornstein, D. Rizk, and A. Dryer.) 

5

 “Litigation” includes government investigations. See, e.g., In re Int’l Sys. & Controls 

Corp. Sec. Litig., 693 F.2d 1235 (5th Cir. 1982). Accordingly, the FTC itself includes “Attorney 

Work Product” claims for documents withheld on its December 19, 2017 Privilege Log that were 

prepared in the course of its (pre-litigation) investigation of Qualcomm. 

Case 5:17-cv-00220-LHK Document 603 Filed 03/05/18 Page 8 of 11
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

8 

QUALCOMM'S BRIEF REGARDING IN CAMERA REVIEW 

Case Nos. 17-cv-0220-LHK-NMC & 17-md-2773-LHK-NMC 

To assist the Court, we describe below some of the privilege/work product issues 

– often very difficult issues – that appear in Qualcomm’s documents and that Qualcomm has 

been endeavoring to address: 

 Legal advice regarding licensing and contractual issues. “[A]dvice on 

transactional matters” is “just the sort of lawyerly thing one would expect of an inhouse lawyer”. Exxon Mobil Corp. v. Hill, 751 F.3d 379, 382 (5th Cir. 2014).6

 

Qualcomm attorneys routinely provide legal advice regarding transactional matters, 

including the drafting of license and other agreements, and legal issues concerning 

proposed and existing commercial relationships. However, many of these lawyers, as 

noted above, also hold business roles and provide – often in the very same document 

– business advice. Distinguishing between the two is a judgment call that is hard to 

make in many cases, especially without engaging in a factual investigation that is 

simply impossible given the volume of documents involved. Where the documents 

contain both legal and business advice, reviewers are instructed to redact legal advice, 

and produce business advice. 

 Legal advice regarding intellectual property. Qualcomm attorneys regularly 

provide legal advice on IP issues. Communications to or from lawyers regarding 

legal advice on patent and patentability issues are privileged. See In re Spalding 

Sports Worldwide, Inc., 203 F.3d 800, 805 (Fed. Cir. 2000); Games2U, Inc., v. Game 

Truck Lic., LLC, 2013 WL 4046655, *3 (D. Ariz. Aug. 9, 2013). Privilege 

determinations with respect to Qualcomm IP issues are often difficult, as business 

discussions often also involve or are informed by complicated legal issues, such as 

patent exhaustion and numerous contractual issues. 

 6 See, e.g., In re Bard IVC Filters Prods. Liability Litig., 2016 WL 3970338, at *9 (D. Ariz. 

2016) (“Log 3, Control 1694 is an email from outside counsel attaching a draft letter to opposing 

counsel relating to contract negotiations. The email requests feedback on the letter, and a 

response provides feedback. The communications are privileged.”). 

Case 5:17-cv-00220-LHK Document 603 Filed 03/05/18 Page 9 of 11
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

9 

QUALCOMM'S BRIEF REGARDING IN CAMERA REVIEW 

Case Nos. 17-cv-0220-LHK-NMC & 17-md-2773-LHK-NMC 

 Legal advice and/or work product regarding government investigations: 

Qualcomm lawyers and others at the company have been involved in defending the 

company in investigations brought in several non-U.S. jurisdictions. The fact that the 

company has been subject to such investigations complicates matters from the 

perspective of attorney-client privilege and work product, because the company 

operates in what is a heavily regulated and litigious environment, and much of the 

company’s business advice is commingled with legal and compliance advice. 

IV. Conclusion 

If the Court has any factual or legal questions about documents subject to in 

camera review that it would like to discuss with Qualcomm, we are available at the Court’s 

convenience. 

Dated: March 5, 2018 Respectfully submitted, 

/s/ Yonatan Even 

Gary A. Bornstein 

Yonatan Even 

CRAVATH, SWAINE & MOORE LLP 

Worldwide Plaza 

825 Eighth Avenue 

New York, NY 10019-7475 

Tel: (212) 474-1000 

Fax: (212) 474-3700 

gbornstein@cravath.com 

yeven@cravath.com 

Case 5:17-cv-00220-LHK Document 603 Filed 03/05/18 Page 10 of 11
1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

10 

QUALCOMM'S BRIEF REGARDING IN CAMERA REVIEW 

Case Nos. 17-cv-0220-LHK-NMC & 17-md-2773-LHK-NMC 

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 

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

Case 5:17-cv-00220-LHK Document 603 Filed 03/05/18 Page 11 of 11