Posted by wolfpackvoltare 9/7/2007

Over the past two and a half years, neither TPL nor Charles Moore (collectively "TPL") has shown any interest in safeguarding the alleged confidentiality of the communications at issue in their motion - all but one of which have been publicly available throughout that time.' TPL's motion ignores this issue, which was central to the Court's Hotline conference. The "sealed" exhibits filed by TPL correspond exactly to the public documents as follows.
Exhibit D = NDCA PACER Case 5:04-cv-00618JF; Doc. 135-2 (pp. 20-21)
Exhibit F (pp. 1-5) = NDCA PACER Case 4:04-cv-00439-SBA; Doc. 44
Exhibit G (pp. 1-3) = NDCA PACER Case 5:04-cv-00618JF; Doc. 135-2 (pp. 4-6)
Exhibit H (pp. 1-1 0) = NDCA PACER Case 5:O4-cv-OO6l8JF; Doc. 135
' This response is not filed under seal because its exhibits concerning the disputed communications are available to the public as marked on the exhibits themselves. (See Exh. 1-4.) (Exhibits are attached to the accompanying Declaration of Michael Hawes.) In addition, these four "sealed" exhibits of TPLYs Motion correspond exactly to the following exhibits of the Willis Deposition: D-9; F+3; G-6; and H+14. Three of the four deposition exhibits that TPL seeks to strike are public documents. The fourth is within the scope of the waiver created by the public dissemination of the other three. Both Charles Moore and TPL were parties to case 5:04-cv-00618JF and both knew - in fact they were served with - papers containing several of the exhibits they now wish to strike. Knowing that those papers were made available on PACER (appropriately named Public Access to Court Electronic Records), neither Moore nor TPL has made any effort to this day to remove those documents from public view.2 Other materials were expunged from the court's records at the request of TPL. (See Exh. 7.) TPL and Moore, however, chose only to request the expungement of some materials - not the ones they seek to strike now. "The courts will grant no greater protection to those who assert the privilege than their own precautions warrant." United States v. Ryans, 903 F.2d 73 1, 741 n. 13 (10th Cir. 1990). TPL and Moore cannot knowingly allow materials to remain for years in the public eye and then belatedly decide that the disclosed communications are privileged. The Motion to Strike should be denied. It is clear that they know how to do so. Earlier in this case, Toshiba informed TPL that TPL had filed a motion containing Toshiba's confidential information. (See Exh. 5.) Within a day, TPL acted to remove that information fiom public access. (See Exh. 6 between docket nos. 277 and 278.) Comparing the timeliness of that action with the years that these communications have been in public view reflects the lack of importance to TPL and Moore of the allegedly privileged nature of the documents.
FACTS
A. TPL and Moore Had Notice That the Materials They Now Seek to Treat as Privileged Were Put in Public View on January 14,2005.
Charles Moore and TPL were the first two named defendants in Patriot Scientific Corp. v. Moore, et al., Civil Action No. 5:04-cv-00618-JF, filed in the District Court for the Northern District of California on February 13, 2004 ("'618 case"). (See Exh. 8). Patriot was also a party in Intel Corp. v. Patriot Scientific Corp., Civil Action No. 4:04-cv-00439-SBA, filed
in the District for the Northern District of California on February 2, 2004 ("'439 case"). (See Exh. 9.) The issues in these cases were handled together to a great extent, for example, Moore's motion for an extension was handled by an order in the '439 case. (See Exh.. 9, at docket item 54 and Exh. 10.) As a result, at least Moore was aware of the events in both cases. On April 20, 2004, Patriot filed a motion in the '439 case that included an affidavit in support by Willis Higgins. (See Exh. 2 and Exh. 9, at docket item 44.) That affidavit
is an exact copy of exhibit 3 of Willis Higgins' deposition. (Compare Exh. 2 with Exh. F of Motion to Strike.) Today, the affidavit remains available on PACER. (See Exh. 2.) On January 14, 2005, Patriot filed a Memorandum in Opposition in the '61 8 case that included an affidavit in support by Willis Higgins. (See Exh. 4 and Exh. 8, at docket item 135.) That affidavit is an exact copy of exhibit 14 of Willis Higgins' deposition. (Compare Exh. 4 with Exh. H of Motion to Strike.) The affidavit remains available on PACER. (See Exh. 4.) The affidavit attached a series of exhibits including an October 1, 1990 letter (See Exh. 3) and a September 12, 1992 memo (See Exh. 1). All of the affidavit exhibits are available on PACER. Several papers were filed under seal in the '618 case, including the details of TPL's attempts to seal various documents. (See Exh. 8, between docket items 146 and 147). The above-identified papers, however, were not sealed. (See Exh. 8, docket items 167 and 180). B. Plaintiffs Allowed Questioning Without Objection Concerning the Exhibits That They Now Seek to Strike. During the deposition of Willis Higgins on August 16, 2007, counsel for the parties had a Discovery Hotline call with the Court. As identified at the beginning of the call, counsel for both TPL and Moore attended Mr. Higgins' deposition. Both made privilege objections and instructions throughout the deposition. With regard to some questions, however, no such objections or instructions occurred and the witness answered the questions. As a result of the Hotline call, certain questions - regarding the accuracy of the statements made in the deposition exhibits - were allowed by the Court subject to the right for any party to file a motion
to request that "this information . . . is privileged." See Hotline call transcript at 10. The motion provided by the order was limited to striking testimony in response to the court-ordered questions. Instead, each request by TPL and Moore to strike portions of the deposition transcript includes both a portion prior to the Hotline call and a portion fiom after that call. The prior portions were not subject to any objection, instruction, or this Court's Hotline order.

ARGUMENT
A. TPL and Moore Ignore Their Failure to Safeguard the Confidentiality of the Communications That They Now Ask the Court to Treat as Privileged. TPL's entire argument appears to be stuck in 2005. TPL refuses to acknowledge, even though some of its "sealed" exhibits include PACER headers, that the subject matter in question has been left in public view for two or three years, depending on the communication. Instead, TPL confines its analysis to whether Fish's waiver destroyed Moore's privilege. This case, however, presents unique circumstances all of which occurred after Judge Fogel ruled on the disqualification question. None of TPL's authority addresses a situation where a party was made aware of the public filing of a communication, did nothing to remove that communication from public view while at the same time sealing other documents, and then years later seeks to treat that communication and its subject matter as privileged. TPL has no excuse for failing to address this
issue. The Court identified the filing of the affidavit with the California Court as a key issue during the Hotline call. See transcript at 10. TPL's fiduciary duty argument is a red herring - in this case Mr. Higgins was compelled to testify as a result of a subpoena. The deposition at issue here is fundamentally different from what occurred in California where Mr. Higgins appears to have voluntarily provided an affidavit. Whether or not Mr. Higgins can voluntarily provide testimony damaging to Mr. Moore's inventorship story is irrelevant to TPL's attempt to strike testimony offered under oath pursuant to a subpoena. There is a reason that some attorney communications are privileged, while others are merely confidential. TPL's theory would effectively erase the distinction between privileged and unprivileged, but confidential, material. For example, TPL's assertion of the Doe case illustrates why the fiduciary duty is inapplicable as a privilege to block discovery. In that case, the question is whether "a lawyer seeks to act adversely to his former client." See Doe v. A Corp., 709 F.2d 1043, 1046 (5th Cir. 1983) (emphasis added). TPL cannot extend Doe to cover situations where a lawyer is compelled to give factual testimony concerning communications, the privilege of which has been waived. TPL takes an untenable position that it can strike any testimony by Mr. Higgins that is contrary to its desired version of the facts based on the duty of loyalty. None of TPL's cases extend the bar on voluntary actions by a lawyer to create a privilege against testimony compelled by a subpoena.
B. TPL and Moore Have Waived Any Privilege of Moore's By Knowingly Failing to Safeguard the Confidentiality of the Communications. TPL and Moore have failed to address the three-year public dissemination of the subject matter that they now seek to suppress. The deposition questions at issue merely seek the accuracy of the public deposition exhibits. The assertion of a privilege requires, at minimum, a consistent intention to treat the communications as confidential. "The confidentiality of communications covered by the privilege must be jealously guarded by the holder of the privilege lest it be waived." United States v. Ryans, 903 F.2d 73 1, 741 n. 13 (10th Cir. 1990). Instead, TPL and Moore knowingly allowed the communications to reside in public until they surfaced in an ongoing dispute. Only at that point, do they seek to hide the communications. TPL relies solely on Moore's privilege in seeking to strike the deposition testimony and exhibits. See Motion to Strike, pp. 10-1 1. Moore, however, as a defendant in the '618 case and aware of the '439 case, did not act to safeguard the confidentiality of Higgins' communications. "When the nature of the privilege is understood, the nature of the waiver becomes equally clear. The attorney-client privilege can be waived by any actions of the client which are inconsistent with an intention to keep the communication, shielded by the privilege, confidential." In re Lorazepam h Clorazepate Antitrust Litigation, 2001 WL 1795665, at *2 (D.D.C. July 17, 2001). Both the communications and the waiver in this case took place in California. California law recognizes that conduct like Moore's results in a waiver of the privilege. See Cal. Evid. Code $ 912(a) (Waiver can be based on "other conduct of the holder of the privilege indicating consent to the disclosure"). In view of Moore's knowledge that the communications at issue in the Motion to Strike were made public, Moore's actions in the '618 litigation to seal other documents constitutes a waiver of any attorney-client privilege that Moore had. The only document at issue not posted on PACER, deposition exhibit 15, is described by TPL's Motion as communicating the same subject matter. In other words, it is within the scope of the waiver created by the other disclosures. Waiver extends to all other communications relating to the same subject matter. GFI, Inc. v. Franklin Corp., 265 F.3d 1268, 1273 (Fed. Cir. 2001) (applying fifth circuit law).
CONCLUSION
TPL and Moore's Motion to Strike the testimony of Mr. Higgins, offered pursuant to subpoena, should be denied because the exhibits at issue have been in the public domain with Moore's knowledge for years. The Motion to Strike should also be denied as to the portions of the testimony taken prior to the Hotline call, because neither counsel for TPL nor counsel for Moore objected to that testimony and that testimony is neither covered by the Hotline order nor properly subject to the Motion to Strike.

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