Preview
FILED: NEW YORK COUNTY CLERK 01/17/2023 05:48 PM INDEX NO. 656312/2022
NYSCEF DOC. NO. 44 RECEIVED NYSCEF: 01/17/2023
Exhibit 1
(January 17, 2023 Letter)
FILED: NEW YORK COUNTY CLERK 01/17/2023 05:48 PM INDEX NO. 656312/2022
NYSCEF DOC. NO. 44 RECEIVED NYSCEF: 01/17/2023
Kusmin, Ben
From: Owen Roberts
Sent: Tuesday, January 17, 2023 4:15 PM
To: Kusmin, Ben; Samuel Donohue; Rebecca Arno; Kevin Hardy; Michael Carlinsky
Cc: Taylor, Philip M.; Murphy, Craig P.; Holden, John; Vandever, Delton
Subject: RE: Samsung v. MPEG LA - Samsung's Assertions of Privilege
Ben,
Your demand for a response to an issue you are raising for the first time in less than five hours is not appropriate,
and we are not in a position to fully respond to your points below or meet and confer on them this afternoon. We
would have been happy to do so at any prior point, including during our meet and confer on January 4, 2023
when you did not mention any of these issues. We do not believe you have complied with Justice Crane’s Rule
8(a) requirement that parties “must attempt to resolve discovery disputes through meaningful good faith efforts
(i.e., to meet and confer)” before raising any issues under Rule 14.
Nor do we believe you have any good cause for waiting until the day after the scheduled deadline to bring Rule 14
issues before the Court to first broach this subject. As your email notes, you have had our document‐by‐document
privilege logs for the three categories you selected for document‐by‐document logging since December 19, 2022.
You claim that your prejudicially late raising of this issue is due to needing to “review the documents de‐logged
from Categories 44, 52, and 104,” but your email does not reference a single one of these documents, or explain
why any of them should cause Samsung to revisit its privilege determinations on other documents, logged in
other categories, from other time periods, senders, or recipients. Instead, the only argument contained in your
email is about the topics contained in Samsung’s categorical privilege log—information that MPEG LA has had
since October 24, 2022, and information which MPEG LA has been able to compare to Samsung’s document‐by‐
document log, with its revised privilege assertions, since December 19, 2022.
It is also improper for you to suggest that Samsung was somehow tardy in rolling off its documents. When MPEG
LA provided its own document‐by‐document logs on December 6, 2022, it did not produce the rolled‐off
documents until January 6, 2023 or January 9, 2023—a longer period than Samsung required for its roll‐off
production. Similarly inappropriate is MPEG LA’s attempt to leverage Samsung’s good‐faith reevaluation of its
privilege determinations in order to seek document‐by‐document logging of more categories than the parties
agreed and the Court ordered. We note that, when MPEG LA produced its own document‐by‐document log, it
determined that an entire category of documents that MPEG LA had withheld as privileged the first time was not
actually privileged at all. As this is, according to your email, a proper basis to demand further document‐by‐
document reviews, Samsung reserves all rights to do so.
We will review your request as time allows, and will likely be willing to re‐review the documents contained in
some or all of the categories you have listed to confirm whether we stand by our initial determinations of
privilege. Again, we do not believe that any application to the Court is ripe on an issue you first raised on the
afternoon of January 17, 2023, and we reserve all rights with respect to any such issues MPEG LA nonetheless
raises, including rights to demand further privilege logging from MPEG LA and to be awarded any fees expended
litigating a Rule 14 issue that MPEG LA never sought to meet and confer over.
Owen
1
FILED: NEW YORK COUNTY CLERK 01/17/2023 05:48 PM INDEX NO. 656312/2022
NYSCEF DOC. NO. 44 RECEIVED NYSCEF: 01/17/2023
From: Kusmin, Ben
Sent: Tuesday, January 17, 2023 12:06 PM
To: Owen Roberts ; Samuel Donohue
; Rebecca Arno ; Kevin Hardy
; Michael Carlinsky
Cc: Taylor, Philip M. ; Murphy, Craig P. ; Holden, John
; Vandever, Delton ; Kusmin, Ben
Subject: Samsung v. MPEG LA ‐ Samsung's Assertions of Privilege
[EXTERNAL EMAIL from bkusmin@windelsmarx.com]
Owen,
As you know, MPEG LA asked Samsung to provide document-by-document privilege logs for Categories
44, 52, and 104 of Samsung’s Amended Privilege Log, as provided for in Paragraph 22(f) of the
Confidentiality Order (Dkt. 40). In responding to this request, Samsung withdrew or amended its
privilege assertion for about half of the documents it had withheld in Categories 44 and 52, and on
January 13 (this past Friday) produced 358 documents spanning almost 1,900 pages, some of which were
redacted. Samsung’s December 5, 2022 Amended Privilege Log describes these documents as covering
two types of Category Subject Matter: “royalty rights under MPEG LA HEVC Patent Pool” (both
categories) and/or “termination rights under MPEG LA HEVC Patent Pool” (Category 44).
There are 20 additional categories on Samsung’s Amended Privilege Log that contain at least one of
these two topics in the description of the Category Subject Matter. These 20 categories collectively
describe 771 emails and 2,543 total documents. Several of the categories have the exact same
description as Category 44, but for different time periods (see 42, 43, 45). It seems highly likely that many
of the documents logged in these 20 categories are likewise not privileged, and ought to be
produced. At the very least, Samsung should re-evaluate its assertions of privilege over the documents in
these categories and provide document-by-document privilege logs.
The categories that MPEG LA believes Samsung should re-evaluate are 1-4, 16-17, 31, 34, 35, 42, 43, 45,
53, 57, 58, 63, 66, 69, and 119. If Samsung is unwilling to re-evaluate its assertions of privilege over these
documents, MPEG LA will make an application for relief with the Court, consistent with Confidentiality
Order ¶ 22(h). We note that the timing of our request was dictated by the need to review the documents
de-logged from Categories 44, 52, and 104. Samsung disclosed on December 19th that it would de-log
and produce this material, and ultimately produced it on January 13th—one business day before the
deadline for raising Rule 14 disputes relating to privilege logs. See Dec. 8, 2022 Compliance Conference
Order ¶ 2. Please respond by 5 pm today so that we can raise this issue with the Court, if necessary, prior
to the expiration of the deadline.
Finally, we acknowledge Samsung’s January 13 request, pursuant to Paragraph 22(g) of the
Confidentiality Order, for a document-by-document privilege log for MPEG LA’s Category 37, and will
provide such a log in due course.
MPEG LA reserves all rights.
Regards,
Ben
2
FILED: NEW YORK COUNTY CLERK 01/17/2023 05:48 PM INDEX NO. 656312/2022
NYSCEF DOC. NO. 44 RECEIVED NYSCEF: 01/17/2023
Ben J Kusmin
Windels Marx Lane &
Mittendorf, LLP
156 West 56th Street, New
York, New York 10019
Direct Dial: 212.237.1169 |
General Fax: 212.262.1215
bkusmin@windelsmarx.com |
www.windelsmarx.com
This message is sent by a law firm and may contain information that is privileged or confidential. If you received this transmission in error, regardless of
whether you are a named recipient, please notify the sender by reply e-mail and delete the message and any attachments.
3
Preview
FILED: NEW YORK COUNTY CLERK 01/17/2023 05:48 PM INDEX NO. 656312/2022 NYSCEF DOC. NO. 44 RECEIVED NYSCEF: 01/17/2023 Exhibit 1 (January 17, 2023 Letter) FILED: NEW YORK COUNTY CLERK 01/17/2023 05:48 PM INDEX NO. 656312/2022 NYSCEF DOC. NO. 44 RECEIVED NYSCEF: 01/17/2023 Kusmin, Ben From: Owen Roberts Sent: Tuesday, January 17, 2023 4:15 PM To: Kusmin, Ben; Samuel Donohue; Rebecca Arno; Kevin Hardy; Michael Carlinsky Cc: Taylor, Philip M.; Murphy, Craig P.; Holden, John; Vandever, Delton Subject: RE: Samsung v. MPEG LA - Samsung's Assertions of Privilege Ben, Your demand for a response to an issue you are raising for the first time in less than five hours is not appropriate, and we are not in a position to fully respond to your points below or meet and confer on them this afternoon. We would have been happy to do so at any prior point, including during our meet and confer on January 4, 2023 when you did not mention any of these issues. We do not believe you have complied with Justice Crane’s Rule 8(a) requirement that parties “must attempt to resolve discovery disputes through meaningful good faith efforts (i.e., to meet and confer)” before raising any issues under Rule 14. Nor do we believe you have any good cause for waiting until the day after the scheduled deadline to bring Rule 14 issues before the Court to first broach this subject. As your email notes, you have had our document‐by‐document privilege logs for the three categories you selected for document‐by‐document logging since December 19, 2022. You claim that your prejudicially late raising of this issue is due to needing to “review the documents de‐logged from Categories 44, 52, and 104,” but your email does not reference a single one of these documents, or explain why any of them should cause Samsung to revisit its privilege determinations on other documents, logged in other categories, from other time periods, senders, or recipients. Instead, the only argument contained in your email is about the topics contained in Samsung’s categorical privilege log—information that MPEG LA has had since October 24, 2022, and information which MPEG LA has been able to compare to Samsung’s document‐by‐ document log, with its revised privilege assertions, since December 19, 2022. It is also improper for you to suggest that Samsung was somehow tardy in rolling off its documents. When MPEG LA provided its own document‐by‐document logs on December 6, 2022, it did not produce the rolled‐off documents until January 6, 2023 or January 9, 2023—a longer period than Samsung required for its roll‐off production. Similarly inappropriate is MPEG LA’s attempt to leverage Samsung’s good‐faith reevaluation of its privilege determinations in order to seek document‐by‐document logging of more categories than the parties agreed and the Court ordered. We note that, when MPEG LA produced its own document‐by‐document log, it determined that an entire category of documents that MPEG LA had withheld as privileged the first time was not actually privileged at all. As this is, according to your email, a proper basis to demand further document‐by‐ document reviews, Samsung reserves all rights to do so. We will review your request as time allows, and will likely be willing to re‐review the documents contained in some or all of the categories you have listed to confirm whether we stand by our initial determinations of privilege. Again, we do not believe that any application to the Court is ripe on an issue you first raised on the afternoon of January 17, 2023, and we reserve all rights with respect to any such issues MPEG LA nonetheless raises, including rights to demand further privilege logging from MPEG LA and to be awarded any fees expended litigating a Rule 14 issue that MPEG LA never sought to meet and confer over. Owen 1 FILED: NEW YORK COUNTY CLERK 01/17/2023 05:48 PM INDEX NO. 656312/2022 NYSCEF DOC. NO. 44 RECEIVED NYSCEF: 01/17/2023 From: Kusmin, Ben Sent: Tuesday, January 17, 2023 12:06 PM To: Owen Roberts ; Samuel Donohue ; Rebecca Arno ; Kevin Hardy ; Michael Carlinsky Cc: Taylor, Philip M. ; Murphy, Craig P. ; Holden, John ; Vandever, Delton ; Kusmin, Ben Subject: Samsung v. MPEG LA ‐ Samsung's Assertions of Privilege [EXTERNAL EMAIL from bkusmin@windelsmarx.com] Owen, As you know, MPEG LA asked Samsung to provide document-by-document privilege logs for Categories 44, 52, and 104 of Samsung’s Amended Privilege Log, as provided for in Paragraph 22(f) of the Confidentiality Order (Dkt. 40). In responding to this request, Samsung withdrew or amended its privilege assertion for about half of the documents it had withheld in Categories 44 and 52, and on January 13 (this past Friday) produced 358 documents spanning almost 1,900 pages, some of which were redacted. Samsung’s December 5, 2022 Amended Privilege Log describes these documents as covering two types of Category Subject Matter: “royalty rights under MPEG LA HEVC Patent Pool” (both categories) and/or “termination rights under MPEG LA HEVC Patent Pool” (Category 44). There are 20 additional categories on Samsung’s Amended Privilege Log that contain at least one of these two topics in the description of the Category Subject Matter. These 20 categories collectively describe 771 emails and 2,543 total documents. Several of the categories have the exact same description as Category 44, but for different time periods (see 42, 43, 45). It seems highly likely that many of the documents logged in these 20 categories are likewise not privileged, and ought to be produced. At the very least, Samsung should re-evaluate its assertions of privilege over the documents in these categories and provide document-by-document privilege logs. The categories that MPEG LA believes Samsung should re-evaluate are 1-4, 16-17, 31, 34, 35, 42, 43, 45, 53, 57, 58, 63, 66, 69, and 119. If Samsung is unwilling to re-evaluate its assertions of privilege over these documents, MPEG LA will make an application for relief with the Court, consistent with Confidentiality Order ¶ 22(h). We note that the timing of our request was dictated by the need to review the documents de-logged from Categories 44, 52, and 104. Samsung disclosed on December 19th that it would de-log and produce this material, and ultimately produced it on January 13th—one business day before the deadline for raising Rule 14 disputes relating to privilege logs. See Dec. 8, 2022 Compliance Conference Order ¶ 2. Please respond by 5 pm today so that we can raise this issue with the Court, if necessary, prior to the expiration of the deadline. Finally, we acknowledge Samsung’s January 13 request, pursuant to Paragraph 22(g) of the Confidentiality Order, for a document-by-document privilege log for MPEG LA’s Category 37, and will provide such a log in due course. MPEG LA reserves all rights. Regards, Ben 2 FILED: NEW YORK COUNTY CLERK 01/17/2023 05:48 PM INDEX NO. 656312/2022 NYSCEF DOC. NO. 44 RECEIVED NYSCEF: 01/17/2023 Ben J Kusmin Windels Marx Lane & Mittendorf, LLP 156 West 56th Street, New York, New York 10019 Direct Dial: 212.237.1169 | General Fax: 212.262.1215 bkusmin@windelsmarx.com | www.windelsmarx.com This message is sent by a law firm and may contain information that is privileged or confidential. If you received this transmission in error, regardless of whether you are a named recipient, please notify the sender by reply e-mail and delete the message and any attachments. 3