1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 ILLUMINA INC., et al., DISCOVERY ORDER 8 Plaintiffs, Case No. 20-cv-01465-WHO (TSH) ECF Nos. 365, 387, 394, 396, 403 9 v.

10 BGI GENOMICS CO., LTD., et al., Case No. 19-cv-03770-WHO (TSH) ECF Nos. 351, 366, 368, 370, 375 11 Defendants.

12

13 The parties have a fight about some of Defendants’ claims of attorney-client privilege. 14 First, the Court will retrace how we got here. Then the Court will address some procedural 15 disputes. Then the Court will rule on the merits and address whether there should be any next 16 steps. 17 A. Procedural Background 18 Fact discovery closed on March 26, 2021. See ECF No. 2491. On March 31, 2021, before 19 the deadline to move to compel expired, the parties filed a joint discovery letter brief (ECF No. 20 314), in which Illumina sought several forms of relief. It asked the Court to order Defendants to 21 produce a privilege log, asserting that they had not yet produced a log for their unproduced and 22 clawed back documents. Illumina explained that absent a log, it had no way to evaluate 23 Defendants’ privilege assertions, and it also had no idea how many documents Defendants had 24 withheld. Illumina also stated that for the clawed back documents, “many” included questionable 25 clams of privilege. Illumina stated that Defendants as of that date had clawed back 159 documents 26 on 18 separate occasions and that their pattern of behavior surrounding their clawbacks raised 27 1 substantial questions. Illumina argued that on multiple occasions Defendants clawed back 2 documents that on their face did not appear to be privileged. Illumina’s letter also requested in 3 camera review of six specific examples. 4 At the April 7, 2021 hearing the Court stated:

5 My tentative thought is to tell the parties to exchange their privilege logs and then file a joint discovery letter brief following up on the 6 March 31st letter, if there remains a dispute as to that. Now, fact discovery has closed, and the deadline to move to compel has passed. 7 So I would be basically carrying forward the existing dispute that was filed on time and just seeing if the privilege log resolves it or if I need 8 to do an in-camera review. 9 And the Court’s discovery order at 20-1465 ECF No. 333 stated:

10 The parties filed a joint discovery letter brief in which Illumina moved to compel on certain issues concerning attorney-client and work- 11 product privilege. As discussed at the hearing, the parties are still negotiating on these issues, and those negotiations may narrow the 12 dispute. Accordingly, the Court orders Defendants to serve a privilege log for the six documents for which Illumina sought in 13 camera review by April 14, 2021. The parties shall exchange their remaining privilege logs by April 21, 2021. No later than May 5, 14 2021 the parties may file one or more joint discovery letter briefs concerning privilege issues that were timely raised under Civil Local 15 Rule 37-3. 16 The parties filed joint discovery letter briefs by May 5, 2021,2 challenging many of each 17 other’s claims of privilege. The Court determined that Illumina’s May 5 request for in camera 18 review was within the scope of its March 31 letter brief and therefore treated Illumina’s May 5 19 brief as a supplemental brief on a dispute that had been timely raised. By contrast, Defendants’ 20 May 5 brief did not relate back to any discovery dispute they raised before the deadline to move to 21 compel had expired, so the Court considered Defendants’ May 5 letter untimely. ECF No. 357. 22 Illumina’s May 5 brief asked the Court to prioritize review of documents listed in Exhibit 1 23 and to consider reviewing a longer list of documents in Exhibit 2. However, the Court found it 24 hard to line up Exhibits 1 and 2 with the privilege logs in Exhibits 3, 4, 6, 7 and 8, so the Court 25 ordered Illumina to resubmit them in a different format. ECF No. 357. Illumina did that in ECF 26 Nos. 374 and 378. In that submission, the Exhibit 1 documents were highlighted in green, and the 27 1 Exhibit 2 documents were highlighted in yellow. 2 In ECF No. 382, the Court determined that it was unable to see the basis for any of the 3 claims of privilege in the green-highlighted documents, and the Court ordered Defendants to 4 submit them for in camera review. Defendants made their in camera submission on May 27, 5 2021, but it included more than the documents requested. It also included a cover letter that 6 contained a road map of the items submitted, as well as an appendix listing the green-highlighted 7 documents. The column on the right of the appendix amounted to a document-by-document 8 argument in favor of the claim of privilege; this had never been provided to Illumina. Defendants 9 also submitted a Declaration by Avanindra Chaturvedi dated May 27, 2021 to substantiate their 10 claims of privilege – a document also never provided to Illumina. Defendants also included a 11 copy of a previously filed discovery letter brief and two excerpts from depositions in these cases. 12 Defendants did not initially provide this in camera submission to Illumina. After Illumina 13 complained, Defendants provided a redacted version of the cover letter and the Chaturvedi 14 declaration to Illumina. 15 B. Further Briefing 16 On May 31, 2021, Illumina filed objections to Defendants’ in camera submission. ECF 17 No. 387. First, Illumina objected that Defendants did not have authorization to submit the cover 18 letter, amended privilege log and Chaturvedi declaration in camera and off docket. Second, 19 Illumina objected that the amended privilege log, coupled with the declaration, violated the Court- 20 ordered meet and confer deadlines concerning privilege logs, prejudicing Illumina. Third, 21 Illumina objected that the Chaturvedi declaration is riddled with hearsay, lacks foundation and 22 contradicts his deposition testimony. 23 Defendants responded to Illumina’s objections on June 3, 2021. ECF No. 394. 24 Defendants denied they did anything improper. To moot the issue of filing things off docket, 25 Defendants attached as Exhibits 2 and 3 the cover letter, amended privilege log and Chaturvedi 26 declaration (with minimal redactions for privilege). Second, Defendants contended that there is 27 nothing remarkable about elaborating on the basis for a claim of privilege in connection with an in 1 Chaturvedi declaration is well supported and does not contradict his deposition testimony. 2 Illumina then filed an administrative motion for leave to file a reply brief in support of its 3 objections, attaching the proposed reply brief. ECF No. 396. The administrative motion argued 4 that the Defendants’ response to Illumina’s motion distorted the record in significant ways and 5 made new arguments in support of their privilege claims. In the proposed reply brief, Illumina 6 reprised its argument that Defendants should not have filed the cover letter, amended privilege log 7 and Chaturvedi declaration in camera and off docket. Illumina also offered some additional 8 criticisms of the Chaturvedi declaration. Illumina also reprised its objections that Defendants’ 9 amended privilege log was untimely and that their privilege claims were unsupported. In the 10 course of making these arguments in the proposed reply brief, Illumina made a throwaway 11 assertion that the attorney-client privilege is not recognized under Chinese law, and so may not 12 apply to some of the Chinese BGI entities. 13 Defendants filed an opposition to Illumina’s administrative motion. ECF No. 403. 14 Defendants argued that a reply brief was unnecessary from Illumina. Defendants also responded 15 to the arguments in Illumina’s proposed reply brief. As Illumina’s proposed reply brief largely 16 duplicated earlier arguments, Defendants’ responses did the same. As for the suggestion that 17 Chinese law might apply to the privilege claims here, Defendants pointed out that this was the first 18 time Illumina had suggested as much, and even now Illumina offered it only as a suggestion 19 without definitively arguing the point. 20 C. Procedural Rulings 21 The Court rules on the procedural arguments as follows: 22 Illumina’s motion for leave to file a reply brief in support of its objections is granted. 23 There is no prejudice to Defendants, which have already filed a substantive response to Illumina’s 24 reply brief in the form of their opposition to the motion for leave. 25 Illumina’s objection that Defendants did not have authorization to submit the cover letter, 26 amended privilege log and Chaturvedi declaration in camera is moot because Defendants filed 27 redacted versions of those items in the public record in their response to Illumina’s objections. 1 declaration, violated the Court-ordered meet and confer deadlines concerning privilege logs. 2 Illumina argues that Defendants withheld the basis for their claims of privilege right up until the 3 Court ordered in camera review. And that’s true – that’s exactly what Defendants did. However, 4 in camera review was the remedy the Court adopted to deal with the fact that the privilege logs 5 failed to substantiate the claims of privilege. Had the logs been good in the first place, the Court 6 would not have ordered in camera review at all. Once the Court ordered in camera review, there 7 was nothing wrong with Defendants further explaining the basis for their claim of privilege, in 8 particular for documents where the claim of privilege is not obvious on its face. “Elaborating the 9 basis for the claim of privilege through in camera submissions is unexceptionable.” Kasza v. 10 Browner, 133 F.3d 1159, 1169 (9th Cir. 1998); see, e.g., Apple Inc. v. Samsung Elecs. Co. Ltd., 11 11-cv-1846 LHK PSG, ECF No. 2790 (N.D. Cal. Nov. 18, 2013) (ordering Samsung to file on the 12 docket the brief and declarations it submitted in camera in support of its claim of privilege, but 13 still agreeing to consider those materials). 14 The Court finds that the Chaturvedi declaration provides appropriate foundation, is for the 15 most part not hearsay, and does not contradict the cited portions of his deposition. That 16 declaration, combined with the amended privilege log and the in camera review of the documents 17 themselves enable the Court to make informed rulings on the claims of privilege. 18 The Court determines that Illumina has waived any argument that Chinese law governs any 19 of these claims of privilege. As recounted above, the Court is treating this privilege dispute as a 20 continuation of a discovery dispute that Illumina raised before the deadline to move to compel 21 expired. The suggestion that Chinese law might apply is completely outside the scope of the 22 issues Illumina raised by the deadline. Prior to the deadline, Illumina was complaining about the 23 lack of a privilege log and seemingly improper claims of privilege. Those arguments assumed that 24 the attorney-client privilege was available to be claimed, which is inconsistent with Illumina’s new 25 suggestion that Chinese law might apply, under which there would be no attorney-client privilege. 26 D. Privilege Rulings 27 The Court sustains Defendants’ privilege claims concerning CGI001321371, 1 CGI3618861, CGI3620255, CGI3668640, CGI003735331, CGI003735987, CGI003736284, 2 KEY00066590, KEY01500985, KEY01548905, and KEY01559770. 3 The highlighted material in CGI001296834 is not privileged. This slide deck is a product 4 road map written by a non-attorney. It lists assumptions behind the road map, as well as pluses 5 and minuses, some of which reference freedom to operate. While the author may have chosen to 6 include those references based on the advice of counsel, these references are not themselves legal 7 advice or a request for legal advice. They are assumptions behind a business plan, and in one 8 instance an assessment of the business impact that legal uncertainty may create. 9 For CGI3625530, the assertion that the highlighted material contains or relays legal advice 10 from patent prosecution counsel is completely unsupported. The first half of the highlighted 11 material is obviously not legal advice at all; it is factual information, and even if it had been 12 relayed by patent prosecution counsel, it would still not be privileged. The reference to a patent 13 filing in the second half of the highlighted material does not support an inference that it is legal 14 advice from a patent prosecutor, as the third bullet point in the email makes clear that the author 15 knows how to read a patent. 16 For CGI3666721, the highlighted material is an update concerning a legal aspect that is 17 part of an overall project, but the update does not contain any legal advice or request for legal 18 advice. 19 CGI36667099 is a marketing plan that contains a SWOT (strengths, weaknesses, 20 opportunities and threats) analysis. A businessperson’s statement that the company needs to 21 assess legal risk as part of its SWOT analysis is not privileged. Importantly, the document does 22 not contain any such assessment of legal risk. Further, while requests for legal advice are also 23 privileged, a 53-page marketing slide deck that mentions potential legal risk twice in passing is not 24 how a company asks for legal advice either. CGI3667695 is a variant of CGI36667099. 25 CGI3668247 is a slide deck concerning Defendants’ new organizational structure with 26 updates from each group. The first redaction (page 9 of the .pdf) identifies a specific legal risk, 27 and the Court agrees that is privileged. For the second redaction (page 32 of the .pdf), Defendants 1 reorganization was to improve collaboration within the company. It is just as possible that the 2 || highlighted material on page 32 is a discussion of a business process problem. And for the third 3 redaction (on page 37 of the .pdf), there is no indication that the highlighted material contains 4 || legal advice. It seems like Defendants ran a search for the word “patent,” and then claimed 5 || privilege over every reference to that word, regardless of context. 6 Accordingly, the Court overrules Defendants’ claims to attorney-client privilege in 7 |} CGI001296834, CGI3625530, CGI3666721, CG1I36667099, CGI3667695, and CGI3668247 8 (except for the redaction on page 9). 9 E. Whether Further Court Action Is Appropriate 10 Having reviewed the green-highlighted documents in camera, the Court must now decide 11 whether also to perform an in camera review of the larger set of yellow-highlighted documents. 12 || Illumina had characterized these as “‘a broader set of documents which the Court may review at its 5 13 discretion,” ECF No. 374, as opposed to the narrower set of green-highlighted documents, which 14 || Illumina “respectfully ask[ed] the Court to prioritize,” id. The Court concludes that in camera 3 15 review of the yellow-highlighted documents is not warranted. For the documents the Court has a 16 || reviewed in camera, the Court sustained Defendants’ privilege claims about three quarters of the 3 17 time, so there is no indication of a significant pattern of misusing the privilege. Likewise, while 18 the Court rejected one quarter of the privilege claims, those concerned small redactions that did 19 || not significantly alter the content of the documents. Further, the number of briefs that were filed 20 || in connection with this dispute indicates that this privilege dispute has metastasized into expensive 21 and unproductive satellite litigation that is best brought to an end. Accordingly, the Court declines 22 || to review the yellow-highlighted documents in camera. 23 IT IS SO ORDERED. 24 25 Dated: June 29, 2021 26 7 LU \ - | 4 □ 7 THOMAS S. HIXSON United States Magistrate Judge 28