Protecting Work Product in the Age of Electronic Discovery
April 29, 2016
Court Issues Doomsday Sanctions, Finds Counsel Lacking eDiscovery Competence
June 17, 2016

Oracle America v. Google and The Strategic Importance of Privilege Reviews

A high-profile trial involving technology titans Oracle and Google taking place in San Francisco this month spotlights the strategic importance of privilege reviews for litigation attorneys. As detailed in a recent article published by Big Law Business, arguably the most important piece of evidence in Oracle America v. Google is an internal company email that Google originally claimed as privileged. Despite that privilege assertion, Google inadvertently produced corresponding drafts of the message possibly due to flaws with its privilege review. Having a more robust workflow might have identified the drafts, prevented the ensuing motion practice, and ultimately deprived Oracle of a “smoking gun” that has already been spotlighted in opening statements.

The Lawsuit

The litigation between Oracle and Google involves claims of copyright infringement with respect to features of Java and Android. Oracle alleged that Google misappropriated its Java technology to bolster its widely popular Android operating system. As part of the effort to establish its claims, Oracle presented a draft that Google had produced in discovery of the privileged email. Shortly thereafter, Google notified Oracle that the draft was also privileged and demanded its return, along with all of the other drafts of the email that were mistakenly produced. Oracle disputed the privilege claim, arguing instead that the email was not privileged and went to the heart of its infringement allegations.

The Email

The email at issue originated from Tim Lindholm, a Google software engineer. It was prepared shortly before Oracle filed its infringement lawsuit and while the parties were engaging in negotiations to stave off litigation. Lindholm sent the message to Andy Rubin, a Google Vice President in charge of Android, as well as Ben Lee, a Google Senior Counsel, and included another Google engineer, Dan Grove, in the “cc” field. In the message’s salutation, Lindholm specifically directed the email only to Rubin. Lindholm explained that he and Grove had been asked by Google founders Larry Page and Sergei Brin to “investigate what technical alternatives exist to Java for Android.” The investigation had proven unsuccessful, with Lindholm ultimately concluding that the alternatives to Java “all suck.” Lindholm suggested that Google should “negotiate a license for Java under the terms we need.”

Before the email was sent to its recipients, Google’s internal email system saved nine drafts of the message. Those drafts were sequentially created, showing the gradual development of the message. It was not until the final draft that Lindholm included the headings “Attorney Work Product” and “Google Confidential.” Moreover, the names of the email recipients were not found in any of the saved drafts.

Inadvertent Production of the Email

In discovery, Google withheld the email, along with the ninth and final draft, on privilege grounds. Google represented in its privilege log that the email and corresponding draft reflected a privileged communication with its in-house counsel, Lee. Google nonetheless produced the other eight drafts of the email because its “electronic scanning mechanisms” did not flag the drafts before they were disclosed. This apparently happened because the draft messages “did not contain . . . confidentiality or privilege headings . . . [or] any addressees.”

Privilege Objection Overruled

Three courts – including the Federal Circuit – determined that the email was not privileged. According to the courts, the plain language of the email belied any assertion that the message was privileged. The message’s salutation was directed to Rubin, a lay executive, and not to Lee, the company lawyer. In addition, Lindholm explained in the message that his research was performed at the direction of Google’s lay founders and not at the direction of counsel. Finally, labeling a document “Work Product” or “Confidential” could not protect an otherwise non-privileged communication from discovery.

Developing a Proper Privilege Review

Setting aside the merits of Google’s privilege claim, the Oracle America demonstrates that a lawsuit can turn on the mistaken production of a document claimed as privileged. As a result, getting the privilege process right is an essential component of a successful litigation strategy. One way to build a more robust privilege review is to make use of analytical tools. Folding technologies such as near duplicate identification and email threading into a workflow increases the likelihood that elusive drafts or related communications are identified and then withheld from production.

Despite the usefulness of these tools, they are not a cure-all. The problematic drafts in Oracle America were produced despite the use of “electronic scanning mechanisms.” Instead of placing complete reliance on technological tools, counsel should develop and integrate a complementary privilege review process. That process could involve multiple review passes, incorporate audits, and implement other quality control checks to help prevent privileged material from slipping through the proverbial cracks.

Taking these and other steps will ultimately help lawyers bolster their privilege reviews and avoid the potential vulnerabilities in litigation associated with mistaken productions of privileged information.

Philip Favro
Philip Favro
Philip Favro acts as a trusted advisor to organizations and law firms on issues surrounding discovery and information governance. Phil provides guidance on data preservation practices, litigation holds, data collection strategies, and ESI search methodologies. In addition, he offers direction to organizations on records retention policies and the need to manage dynamic sources of information found on smartphones, cloud applications, and social networks. Phil is available to serve as a special master on issues related to electronic discovery. Phil is a nationally recognized thought leader and legal scholar on issues relating to the discovery process. His articles have been published in leading industry publications and academic journals and he is frequently in demand as a speaker for eDiscovery education programs. Phil is a member of the Utah and California bars. He actively contributes to Working Group 1 of The Sedona Conference where he leads drafting teams and serves as the Steering Committee project manager. Prior to joining Driven, Phil practiced law in Northern California where he advised a variety of clients regarding business disputes and complex discovery issues. He also served as a Judge Pro Tempore for the Santa Clara County Superior Court based in Santa Clara, California.