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Google Engineer’s E-Mail Fails to Qualify for Attorney-Client Privilege, Must Be Disclosed in Oracle Patent Suit

February 6, 2012

An e-mail sent by one Google engineer to another, a company attorney, and an executive in charge of the accused Android platform is not a communication protected by the attorney-client privilege or the attorney-work product privilege because Google failed to make a “clear showing” that the e-mail was sent to the attorney in his capacity as counsel conducting a legal investigation, the U.S. Court of Appeals for the Federal Circuit ruled Feb. 6 (In re Google Inc., Fed. Cir., Misc. No. 106, 2/6/12).

In this nonprecedential ruling, the appellate court denied Google’s petition for a writ of mandamus and agreed with the lower court’s position that the e-mail had to be produced at trial in a patent infringement suit brought by Oracle America Inc.


E-Mail Related to Business, Not Legal, Advice.

At issue in this case is an e-mail sent by Google engineer Tim Lindholm to Andy Rubin, Google’s vice president in charge of the Android operating platform. Also addressed in the e-mail were another Google engineer, Dan Grove, and Google senior counsel Ben Lee. The e-mail, which also references Google founders Sergey Brin and Larry Page, read as follows:

Relying on In re Sealed Case, 737 F.2d 94 (D.C. Cir. 1984), the district court concluded that Google failed to make a “clear showing” that the e-mail was sent to Lee in his capacity as an attorney conducting a legal investigation. Thus, Google was ordered to produce the disputed documents.

In reviewing the district court’s refusal to treat the Lindholm e-mail as a protected communication, the Federal Circuit examined this non-patent question under the law of the regional circuit, the Ninth Circuit. Judge Kimberly Moore quoted authority stating that “[t]he party asserting the attorney-client privilege has the burden of establishing the relationship and the privileged nature of the communication.” Ralls v. United States, 52 F.3d 223 (9th Cir. 1995). The privilege “exists to protect not only the giving of professional advice to those who can act on it but also the giving of information to the lawyer to enable him to give sound and informed advice,” she continued, quoting the Supreme Court’s ruling in Upjohn Co. v. United States, 449 U.S. 383 (1981).

Google argued that the e-mail was made at Lee’s behest for purposes of investigating Oracle’s infringement allegations and should be protected under Upjohn.

The Federal Circuit rejected the argument, writing:

We agree with Oracle that the email casts sufficient doubt as to Google’s privilege claim. Lindholm states in the email that he was responding to a request from Google’s management, not Google’s attorneys. In addition, Lindholm directs the email to Rubin, the head of the smartphone division, rather than to Lee. The email explains its purpose: “What we’ve been asked to do (by Larry and Sergei) is to investigate what technical alternatives exist to Java for Android and Chrome. The email’s discussion is directed at a negotiation strategy as opposed to a license negotiation as a component or legal strategy. The email does not evince any sort of infringement or invalidity analysis. As noted by the trial court, “nothing in the content of the Email  indicates that  Lindholm prepared it in anticipation of litigation or to further the provision of legal advice.”

‘Clear Showing’ Requirement Not Limited to Narrow Set of Circumstances.

Nor was the court persuaded that the “clear showing” requirement is narrowly limited to circumstances like those in In re Sealed Case, where the in-house attorney acted both as the company attorney and vice president, and that its application here would dilute the privilege provided by Upjohn.  Saying that this argument had “no merit,” Moore found it beyond dispute that parties seeking the privilege are required to sufficiently establish that the communication at issue relates to professional legal services (as opposed to business considerations), regardless of whether the attorney had distinct non-legal responsibilities for the company. Before Upjohn was decided, no privilege attached where the attorney was asked for business (as opposed to legal) counsel, Moore noted. “Upjohn did not eliminate this distinction,” she said, quoting United States v. Rowe, 96 F.3d 1204 (9th Cir. 1996).

Finally, while Google pointed out that the e-mail was labeled “Google Confidential” and “Attorney Work Product,” the court said that Lindholm’s expectations as to confidentiality “do not demonstrate entitlement to the privilege in light of the remainder of the email.”

The district court’s ruling was affirmed.

The opinion was joined by Judges Alan D. Lourie and Sharon Prost.
Google was represented by Robert A. Van Nest of Keker & Van Nest, San Francisco.

Oracle was represented by William F. Norton Jr. of Boies, Schiller & Flexner, Oakland, Calif.

Read the In re Google ruling.


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