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, Ca. Bar No. 260667

Federal Trade Commission

600 Pennsylvania Avenue, N.W.

Washington, D.C. 20580

Tel: (202) 326-2912; Fax (202) 326-3496

jmilici@ftc.gov

Lin W. Kahn, Ca. Bar No. 261387

Federal Trade Commission

901 Market Street, Suite 570

San Francisco, CA 94103

Tel: (415) 848-5115; Fax: (415) 848-5184

lkahn@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, NY 10019-7475

Telephone: (212) 474-1000

Facsimile: (212) 474-3700

 KEKER VAN NEST & PETERS LLP

 Robert A. Van Nest

 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) 309-0060 Facsimile: (212) 309-6001

 MORGAN, LEWIS & BOCKIUS LLP

 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

 Attorneys for Defendant

 QUALCOMM INCORPORATED

 

 Additional Counsel listed on the Signature Page

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

JOINT DISCOVERY STATEMENT 

REGARDING CONFIDENTIALITY 

DESIGNATIONS OF FTC’s EXPERT 

REPORTS

(EXPEDITED DECISION REQUESTED 

BY QUALCOMM)

Magistrate Judge: 

Hon. Nathaniel M. Cousins

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

Commission (“FTC”) submit this joint statement concerning interpretation of the Protective 

Order. The parties have met and conferred, but have been unable to reach agreement on the 

issues addressed herein.

Case 5:17-cv-00220-LHK Document 765 Filed 06/09/18 Page 1 of 8
1

I. Qualcomm’s Position 

On May 24, 2018, the FTC served four expert reports; three designated in their entirety 

“Highly Confidential-Outside Attorneys’ Eyes Only,” (“HC-AEO”) and one designated 

“Confidential.” Qualcomm’s counsel needs to be able to discuss these reports with Qualcomm. 

After meeting and conferring, the parties disagree on the scope of redactions involving two 

categories of information — (a) information already known to Qualcomm or the public, and (b) 

the identities of witnesses. Resolving this matter is time-sensitive because Qualcomm’s own 

expert reports are due on June 28, and the FTC’s position is prejudicing Qualcomm’s ability to 

consult with knowledgeable people at the company. 

The FTC’s attempts to conceal non-confidential information are contrary to the letter of 

the Protective Order (“P.O.”), governing legal authority, and Qualcomm’s due process right to be 

informed of the evidence and witnesses. The Court should confirm that Qualcomm personnel 

may review information in the expert reports that is public or already known to Qualcomm, as 

well as names of witnesses on whose testimony the FTC relies for such information, so that the

preparation of rebuttal expert reports and the defense of this case is not impeded.

Background

The P.O. prohibits “mass, indiscriminate, or routinized designations” and imposes on the 

designating party the obligation to “take care to limit any such designation to specific material 

that qualifies under the appropriate standard.” (ECF 81, § 5.1). Faced with an expedited 

schedule to prepare its own expert reports, upon receipt of the FTC’s reports with blanket HCAEO designations, Qualcomm’s counsel immediately proposed redactions of information that 

could even arguably be “Confidential” or HC-AEO (i.e. “Protected Material”) according to the 

definitions in the P.O. Qualcomm’s counsel provided proposed redactions to the FTC’s reports 

on May 29, the Tuesday after Memorial Day. The parties met and conferred, with the FTC 

providing additional redactions on June 4, ten days after serving its expert reports.

The parties further conferred but disagree as to the propriety of additional redactions 

involving information already known to Qualcomm or the public, and of nearly every witness 

name on whose testimony its experts have relied. The FTC’s claim that Qualcomm “refused” to 

discuss the matter is incorrect; the parties discussed but do not agree. The FTC cites no authority 

for concealing public information in its reports, or for concealing the identity of witnesses in a 

district court case. Qualcomm needs to know that information so the relevant personnel can help 

prepare a rebuttal. Qualcomm continues to be prejudiced in its ability to rebut the FTC’s experts, 

including the ability to receive input from knowledgeable people within Qualcomm.

FTC’s Redactions of Information Known to Qualcomm or the Public Are Improper

Qualcomm does not dispute that certain information in the expert reports may properly be 

redacted at this stage of the proceedings, as reflected in Qualcomm’s own proposed redactions of 

the FTC’s reports. For example, Qualcomm’s proposed redactions include third party 

information such as: (a) specific business plans of chip competitors or chip customers, 

(b) specific provisions of license agreements to which Qualcomm is not a party, and (c) language 

quoted from third party documents or depositions, which the third party designated as 

“Confidential” or HC-AEO. None of that is at issue here. Instead, the issue is the FTC's 

insistence on redacting information that is expressly excluded from the coverage of the P.O.

The P.O., following this District’s model orders, is expressly limited in scope and 

“extends only to the limited information or items that are entitled to confidential treatment under 

the applicable legal principles.” (ECF 81, §1). It also provides that certain categories of 

information are not covered by the Order, including “(a) any information that is in the public 

domain at the time of disclosure to a Receiving Party or becomes part of the public domain” and 

“(b) any information known to the Receiving Party prior to the disclosure or obtained by the 

Case 5:17-cv-00220-LHK Document 765 Filed 06/09/18 Page 2 of 8
2

Receiving Party after the disclosure . . .” (ECF 81, §3).

The FTC agrees. See n.5. Nevertheless, the FTC has redacted certain publicly available 

information and information already known to Qualcomm. The FTC agrees that such 

information should not be redacted, but only if it is clear from the face of the document that the 

information is either part of the public domain or known to Qualcomm. Otherwise, the FTC 

asserts, Qualcomm must seek to have the designating party de-designate the information.

The FTC is wrong. If information the FTC included in its reports is public or known to 

Qualcomm, the P.O. expressly states that such information is not Protected Material. (ECF 81, 

§§1, 3). There is nothing in the P.O. that requires Qualcomm to “prove” to the FTC’s 

satisfaction that such material is, in fact, already public or known to Qualcomm. The FTC 

asserts that “neither the FTC nor Qualcomm is entitled to disclose information that a third party, 

in reliance on the P.O., has designated as Protected Material.” But a third party cannot turn 

public information into “Protected Material” merely by designating it Confidential. Public 

information (and information already known to Qualcomm) expressly falls outside the P.O. 

The FTC itself has left unredacted numerous statements sourced from depositions designated as

HC-AEO, like the passages quoted below. The FTC’s insistence that Qualcomm engage in 

satellite litigation with the FTC over whether or not certain information is public would override 

the plain language of the P.O. and impose additional burdens not contained in the P.O. on a 

redaction-by-redaction basis. And as the FTC is well aware, adopting the FTC’s position is 

unworkable, because it would practically deny Qualcomm the opportunity to review the 

information at issue in time for use in its rebuttal reports. Nor would it have been practical, as 

the FTC suggests, for Qualcomm to have challenged every blanket designation of confidential 

information prior to knowing what small fraction of the enormous discovery record would be 

cited in the FTC’s reports. The January 2018 discussions the FTC notes simply involved timing; 

the FTC proposed that redactions be made within 48 hours, but here the FTC took ten days to 

propose any redactions. Finally, Qualcomm does not seek to “resort to self-help.” Given the 

parties’ disagreement, Qualcomm seeks the Court’s assistance, as the case on which the FTC 

relies states is the proper course. Visto Corp. v. Seven Networks, Inc., No. 2:03-CV-333-TJW, 

2006 WL 3741891, at *8 (E.D. Tex. Dec. 19, 2006).

FTC’s Redactions of Witness Names Are Improper

There is no basis for the FTC’s refusal to reveal the names of witnesses who provided 

non-confidential information. A civil litigant has a due process right to see the evidence against 

it and to confront and cross-examine adverse witnesses. See Goldberg v. Kelly, 397 U.S. 254, 

269 (1970). Absent national security concerns, not at issue here, a party always has the right to 

know the identities of the witnesses providing evidence at trial. See Abourezk v. Reagan, 785 

F.2d 1043, 1060-61 (D.C. Cir. 1986); 26A Wright & Graham, Federal Practice & Procedure, § 

5710 (2001) (“the government cannot assert the privilege to refuse to disclose the witnesses it 

will call at trial”). At trial and in motions, even the public has a presumptive right to view all 

evidence. Ctr. for Auto Safety v. Chrysler Grp., LLC, 809 F.3d 1092, 1096 (9th Cir. 2016). 

By redacting the name of nearly every witness on whose testimony its experts rely, the 

FTC seeks to withhold information that is not Protected Material. For example, the FTC seeks to 

redact the names of the witnesses cited as sources for the following:

• “Qualcomm continues to execute contracts with chip makers that it believes 

will not exhaust its patents.”

• “OEM executives have testified that Qualcomm’s policy is unique.”

• “OEMs are also better able to fairly negotiate license terms when litigation is 

a possibility.”

Case 5:17-cv-00220-LHK Document 765 Filed 06/09/18 Page 3 of 8
3

The FTC has sought to justify its blanket withholding of nearly every mention of the 

name of a third party by reference to § 3 of the P.O., which extends the protections and 

obligations of the P.O. to “all copies, excerpts, summaries, or compilations of Protected 

Material.” The FTC constructs a strawman in asserting if “Customer X testified that a particular 

chipset feature is highly valued” Qualcomm should not be told that witness’ name. But such 

information would not be public or already known and so falls outside of the instant request.

Qualcomm does not seek here to disclose any information that it “concedes is not public,” and 

Qualcomm has been unable to identify the “actual example” the FTC claims it is using. But the 

problem is the FTC’s position has a far broader reach. It argues that if a third party designated a 

deposition transcript as confidential under the P.O., then any portion of an expert report 

providing “Witness X testified that....” is a “summary” that must not be shared with Qualcomm 

personnel—even when the substance of the testimony cited by the expert is public or already 

known to Qualcomm, but important to explore and rebut, such as the statements quoted above. 

Such information is not Protected Material, even if it is “controversial,” so a summary of it is 

likewise not Protected Material. Nor has the identity of any witness per se been designated as 

confidential, and there would be no proper basis to do so.

The due process considerations and the express limitations of the P.O. are strongly 

applicable here because the FTC’s expert reports focus directly on the merits of the case it will 

present at trial. The information now sought by Qualcomm to be unshielded in the reports the 

FTC has heavily redacted will no doubt be offered not only for the purported opinions, but also 

to bring to the attention of the Court purported evidence and the names of those who provided it, 

that the FTC now seeks to keep secret. As such, the Court should affirm that Qualcomm may 

unredact in the FTC’s expert reports information that is public or already known to Qualcomm, 

and the names of the witnesses who provided it, so that relevant Qualcomm personnel can see 

the relevant information and assist in the preparation of the company’s defense.

II. FTC’s Position 

The parties disagree about the interpretation of the Protective Order (“P.O.”), but the 

following facts cannot be disputed:

• On January 9, 2018, the FTC proposed to Qualcomm a process for redacting from the 

expert reports third parties’ Highly Confidential (“HCI”) and Confidential information.

1

The FTC offered to provide a redacted version of its expert reports within 48 hours of 

service.

2 Qualcomm refused the FTC’s offer, and refused to discuss any alternative. As 

such, complaints about the urgency of an entirely predictable situation are not well taken. 

Moreover, Qualcomm’s experts and outside counsel are authorized to view HCI and have 

access to wholly unredacted reports.

• Prior to receiving the FTC’s expert reports, Qualcomm volunteered to prepare versions 

redacting HCI and Confidential information for sharing with business personnel.

3

 1 The P.O. does not require line-by-line designations in the first instance. Qualcomm has itself 

designated HCI on a per-document basis: that is, designated as HCI any document that contains

HCI, even if the document also contains non-confidential public information.

2 D. Matheson email to B. Byars, et. al. (Jan. 9, 2018) (proposing “the parties could agree that 48 

hours after service of discovery responses and expert reports, the party serving the material will 

provide a redacted version of the response/report. If desired, the FTC will redact only HCI of 

third parties.”). 

3 Qualcomm’s suggestion it “immediately” prepared redactions “upon receipt” of the reports 

should not create the mistaken impression that the parties failed to agree on a process in advance. 

Prior to service of the reports the parties agreed on the process and timing.

Case 5:17-cv-00220-LHK Document 765 Filed 06/09/18 Page 4 of 8
4

• Qualcomm’s proposed redactions were inadequate, and would have allowed Qualcomm’s 

business personnel to view information designated Highly Confidential by third parties, 

including sales figures, margins, and testimony revealing business strategies. 

• In response to Qualcomm’s inadequate redactions, on June 4 the FTC provided properly 

redacted versions of each of the FTC’s expert reports. The parties met and conferred 

regarding these redactions. While the FTC has offered to reconsider specific redactions

with which Qualcomm disagrees, Qualcomm has not identified any and has refused to 

discuss the issue further. See G. Holtz email to A. Ansaldo, et. al. (June 7, 2018). 

The parties’ basic dispute is whether the P.O. permits Qualcomm to disclose to its employees 

Protected Material that third parties have designated as Confidential or HCI without first 

conferring with the Designating Party as required by the Order. See ECF 81 ¶ 6. The 

disagreement manifests in three ways.

(1) Qualcomm seeks to conduct its own analysis of the sensitivity of Protected Material

The FTC has redacted from its expert reports only Protected Material.

4 Qualcomm claims 

the right to disclose this third-party Protected Material if, in the judgment of Qualcomm’s 

outside counsel, the material is not commercially important enough to justify Highly 

Confidential treatment. But neither the FTC nor Qualcomm are entitled to disclose information 

that a third party, in reliance on the P.O., has designated as Protected Material. Nor may 

Qualcomm (or the FTC) ignore a third party’s HCI designation, and treat the information as 

merely Confidential. Based on its proposed redactions to the FTC’s expert reports, Qualcomm 

claims the right to ignore an HCI designation and downgrade the protection to Confidential, 

without informing the Designating Party, but has provided no basis for its position. 

Qualcomm’s approach must be rejected. Even under its own reading of the P.O., 

information must be treated in accordance with its original designation.5 Qualcomm’s claim that 

it can unilaterally downgrade third party’s designations confirms that Qualcomm’s outside 

counsel views itself as the final arbiter of what information deserves protection and what can be 

shared freely with business executives. Qualcomm’s reading of the Order would eviscerate 

protections upon which third parties have relied and deny those third parties the fair opportunity 

to defend their designations, or to even know that information that they have designated HCI is 

being shared with the Qualcomm executives with whom they do business.

(2) Qualcomm claims the FTC has redacted information already known to the company

Paragraph 3 of the P.O. excepts already-known information, including “(a) any 

information that is in the public domain . . . ” and “(b) any information known to the Receiving 

Party prior to the disclosure . . .” ECF No. 81 ¶ 3. The FTC acknowledges Qualcomm is allowed 

to disclose such “already-known” information. For every such redaction that Qualcomm has 

identified, the FTC has agreed to lift the redaction if the already-known status of the information 

is apparent. And the FTC is willing to consider removing any further redactions that fall within 

the already-known exception to the Protective Order, but Qualcomm refuses to discuss the issue. 

Instead, Qualcomm seeks blanket authorization from the Court that its outside counsel may 

exercise their personal judgment in assessing what facts are already-known without (a) 

conferring with the third party who designated the material HCI or Confidential or (b) providing 

corroboration that Qualcomm business personnel already know the information. The FTC does 

not agree that Qualcomm is so-authorized. In any event, the FTC is not in a position to waive the 

 4 Protected Material includes any Discovery Material third parties designate as Confidential or 

Highly Confidential, as well as “(1) any information copied or extracted from Protected Material; 

(2) all copies, excerpts, summaries, or compilations of Protected Material . . .”. ECF No. 81 ¶ 3.

5 Unless it falls within the “already-known” exception in Paragraphs 3 (a) and (b). See supra. 

Case 5:17-cv-00220-LHK Document 765 Filed 06/09/18 Page 5 of 8
5

designations made by third parties without notice to those parties. At the very least, if Qualcomm 

sets aside a third party’s designation, Qualcomm should provide notice to the third party. 

(3) Qualcomm seeks to reveal the content of third-party witnesses’ testimony

The FTC agrees that the mere identity of witnesses that testified at deposition is, generally, 

not protected material. For this reason the FTC agrees not to redact from its experts’ reports the 

names of witnesses upon whose testimony the experts relied in forming their opinions. But the 

FTC disagrees that the content of those depositions can be disclosed if the third party has 

designated it under the P.O. Qualcomm’s claim that it is entitled to inform its business 

executives which of their commercial counterparties provided specific testimony would deny the 

designating party a fair opportunity to protect such information. Qualcomm cites general case 

law discussing disclosure of information to litigating parties, but it already knows the identities 

of parties that have provided information in the litigation and that the FTC believes it is likely to 

call at trial. Those cases are inapposite.

Qualcomm also makes the perplexing assertion that it suffers prejudice because it cannot 

inform its business executives of the identity of witnesses who testified to facts that are publicly 

known. But even if a particular fact may be publicly known, it is not publicly known that a 

particular witness testified to that fact. Moreover, why does Qualcomm need to tell its business 

personnel which witnesses testified to non-controversial public facts? 

Aside from the examples that Qualcomm has chosen to highlight, Qualcomm’s approach 

would also permit it to disclose the identity of witnesses that testified to controversial facts if, in 

the discretion of Qualcomm counsel, the controversial fact is already-known to Qualcomm – thus 

allowing it to reveal to business executives even further information extracted from Protected 

Material. For example, Qualcomm’s interpretation allows it to disclose to its business executives 

that a specific employee of Customer X testified that a particular chipset feature is highly valued 

(or not valued) if Qualcomm’s executives generally know what customers value. But the specific 

knowledge of which customers testified to the proposition provides Qualcomm’s business 

personnel with information they should not have, as it could be used in future negotiations.

Qualcomm calls this a “strawman.” Not so. It is an actual example drawn from Qualcomm’s 

inadequately redacted versions of the FTC’s expert reports, which Qualcomm proposed to 

provide to its business executives. This would have revealed to competitive decision-makers

information designated HCI that Qualcomm concedes is not public. Any such over-disclosure 

(even if inadvertent) risks harming Qualcomm’s rivals and counterparties. Access to HCI in this 

litigation is extremely sensitive, as recognized by Paragraph 8 of the Order, which states that 

“any individual who receives access to “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES 

ONLY” Information or Items shall not be involved in competitive decision-making.”

Conclusion

This dispute is about who gets to make the determination of what information may be 

disclosed, whether third parties are entitled to receive notice and an opportunity to object prior to 

Protected Material being disclosed, and what procedures are required by the P.O. prior to making 

such disclosures. Qualcomm’s position is that it should be empowered to make such 

determinations on its own rather than confer with third parties about the designations. But “a

lawyer operating under the terms of a Protective Order ... has no right to resort to self-help when 

he or she views the provisions of that order to be burdensome or onerous.” Visto Corp. v. Seven 

Networks, Inc., No. 2:03-CV-333-TJW, 2006 WL 3741891, at *8 (E.D. Tex. Dec. 19, 2006).

Qualcomm’s request for blanket authorization to act as its own monitor and provide business 

executives with whatever information it sees fit should be denied. Instead, Qualcomm should be 

required to raise its disagreements with the Designating Parties so that they have a fair 

opportunity to protect information that they view as Confidential or Highly Confidential. 

Case 5:17-cv-00220-LHK Document 765 Filed 06/09/18 Page 6 of 8
6

 Respectfully submitted,

 /s/ Jennifer Milici

Jennifer Milici, D.C. Bar No. 987096

jmilici@ftc.gov

Daniel Matheson, D.C. Bar No. 502490

dmatheson@ftc.gov

J. Alexander Ansaldo, Va. Bar No. 75870

jansaldo@ftc.gov

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

jbaker@ftc.gov

Elizabeth A. Gillen, Ca. Bar No. 260667

egillen@ftc.gov

Federal Trade Commission

600 Pennsylvania Avenue, N.W.

Washington, D.C. 20580

Tel: (202) 326-2912; Fax (202) 326-3496

Lin W. Kahn, Ca. Bar No. 261387

lkahn@ftc.gov

Federal Trade Commission

901 Market Street, Suite 570

San Francisco, CA 94103

Tel: (415) 848-5115; Fax: (415) 848-5184

Attorneys for Plaintiff

FEDERAL TRADE COMMISSION

 /s/ Gary A. Bornstein_________________ 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, NY 10019-7475

Telephone: (212) 474-1000

Facsimile: (212) 474-3700

KEKER VAN NEST & PETERS LLP

Robert A. Van Nest

rvannest@keker.com

Eugene M. Paige

epaige@keker.com

633 Battery Street

San Francisco, CA 94111-1809

Telephone: (415) 676-2289

Facsimile: (415) 397-7188

Case 5:17-cv-00220-LHK Document 765 Filed 06/09/18 Page 7 of 8
7

MORGAN, LEWIS & BOCKIUS LLP

Richard S. Taffet (pro hac vice)

richard.taffet@morganlewis.com

101 Park Avenue

New York, NY 10178-0060

Telephone: (212) 309-0060

Facsimile: (212) 309-6001

MORGAN, LEWIS & BOCKIUS LLP

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

MORGAN, LEWIS & BOCKIUS LLP

Willard K. Tom

willard.tom@morganlewis.com

1111 Pennsylvania Avenue, N.W.

Washington, D.C. 20004-2541

Telephone: (202) 739-3000

Facsimile: (202) 739-3001

Attorneys for Defendant

QUALCOMM INCORPORATED

Pursuant to Civil Local Rule 5-1(i), I hereby attest that I have obtained concurrence in the filing 

of this document from all other signatories.

Case 5:17-cv-00220-LHK Document 765 Filed 06/09/18 Page 8 of 8