Elan Microelectronics Corporation v. Apple, Inc.

Filing 209

MOTION to Compel Apple to Supplement Its Response to Elan's Interrogatory No. 13 filed by Elan Microelectronics Corporation. Motion Hearing set for 6/28/2011 10:00 AM in Courtroom 5, 4th Floor, San Jose before Magistrate Judge Paul Singh Grewal. (Attachments: # 1 Proposed Order)(Rathinasamy, Palani) (Filed on 5/24/2011)

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YITAI HU (SBN 248085)
[e-mail]
SEAN P. DEBRUINE (SBN 168071)
[e-mail]
ELIZABETH H. RADER (SBN 184963)
[e-mail]
JANE HAN BU (SBN 240081)
[e-mail]
JENNIFER LIU (SBN 268990)
[e-mail]
PALANI P. RATHINASAMY (SBN 269852)
[e-mail]
ALSTON & BIRD LLP
275 Middlefield Road, Suite 150
Menlo Park, CA 94025-4008
Telephone:
650-838-2000
Facsimile:
650-838-2001
Attorneys for Plaintiff and Counterdefendant
ELAN MICROELECTRONICS
CORPORATION

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UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION

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ELAN MICROELECTRONICS
CORPORATION,

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Plaintiff and Counterdefendant,
v.
APPLE, INC.,

Case No. 5:09-cv-01531 RS (PSG)
ELAN MICROELECTRONICS
CORPORATION’S NOTICE OF
MOTION AND MOTION TO COMPEL
APPLE TO SUPPLEMENT ITS
RESPONSE TO ELAN’S
INTERROGATORY NO. 13

Defendant and Counterplaintiff.
AND RELATED COUNTERCLAIMS

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Date: June 28, 2011
Time: 10:00 a.m.
Courtroom 5
Hon. Paul S. Grewal

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ELAN’S MOT. TO COMPEL SUPPL. RESP. TO ELAN’S
INTERROGATORY NO. 13

Case No. 5:09-cv-01531 RS (PSG)

NOTICE OF MOTION AND MOTION

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TO APPLE, INC. AND ITS ATTORNEYS OF RECORD:

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PLEASE TAKE NOTICE that on June 28, 2011, at 10:00 a.m. or as soon thereafter as the

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matter may be heard, in Courtroom 5, located at 280 South First Street, Fifth Floor, San Jose,

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California, Plaintiff Elan Microelectronics Corporation (“Elan”) will and hereby does move this

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Court, pursuant to L.R. 37-1(a) and Fed. R. Civ. P. 37(a)(1) and 37(a)(4) to Compel Apple to

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provide a complete answer to Elan’s Interrogatory No. 13.

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As its basis for this motion, as more fully set forth in the following Memorandum of Points
and Authorities, Elan states that this is a patent infringement action wherein the accused Apple

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products are laptop computers, tablet computers, smartphones and other devices that include

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touchpad or touchscreen input devices. On December 13, 2010, Elan served Interrogatory No. 13

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requesting that Apple identify all product names, project codes, model names and model numbers

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for each of Apple’s Accused Products. Apple has provided some information in its responses to

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this interrogatory, at first providing only internal development codes for each product and its

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associated touchpad or touchscreen. After repeated requests Apple has also provide a separate list

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of external model names and model numbers. However, Apple simply refuses to correlate the

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internal project code names with the external model numbers under which the resulting products

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were sold and, more importantly, the numbers under which internal documentation and sales

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information are maintained within Apple. Thus, Apple’s internal technical documents refer only

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to the internal product codes, while external documents used to advertise those products, and

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internal documents tracking sales of those documents, use the external product names and model

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numbers. By its piecemeal response Apple is refusing to fully answer the interrogatory, and

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refusing to provide basic, highly relevant information that is uniquely within its knowledge.

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Accordingly, Elan respectfully requests that this Court compel Apple to provide a full and

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complete response to Elan’s Interrogatory No. 13 which, at a minimum, will provide all external

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product names and numbers along with all internal product names or codes, separately for each

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accused Apple product.

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This motion is based upon this Notice of Motion, Memorandum of Points and Authorities,
ELAN’S MOT. TO COMPEL SUPPL. RESP. TO ELAN’S
INTERROGATORY NO. 13

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Case No. 5:09-cv-01531 RS (PSG)

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and the Declaration of Palani P. Rathinasamy (“Rathinasamy Decl.”) and on such other argument

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and evidence as may be presented to the Court at or prior to the hearing on this motion.
MEMORANDUM OF POINTS AND AUTHORITIES

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I.

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Elan is forced to bring this motion to obtain the most basic of information from Apple – a

INTRODUCTION

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list of the codes, names and model numbers Apple itself has used to identify its own products.

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Over the six months since Elan served its interrogatory seeking this information, Apple has only

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grudgingly identified its internal project codes for each general product name, and separately

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provided a list of external model names and numbers. Apple simply refuses to provide a single,

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complete response to this interrogatory in which, for each product, it identifes both the internal

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codes and the external model names and numbers. This information is necessary for Elan to

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understand the documents produced by Apple. While Apple’s internal technical documents refer

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to the development code names, its website and user guides refer to Apple products by an external

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name, such as a “MacBook 13” or a “MA254LL/A. Elan has no way to ensure that the technical

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documents it has reviewed correlate to any particular product sold by Apple, and to ensure that it

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has complete documentation for each such product. Certainly Apple has this information, as it

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has been able to provide the components of a complete answer. Apple is simply refusing to

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provide the key to correlate this information, a key only it possesses. Its refusal to provide this

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basic information about its own products is nothing more than discovery obstruction. Because

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discovery is to be completed in less than two months, Apple must be compelled to provide the

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requested response immediately.

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II.

STATEMENT OF MATERIAL FACTS

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Elan served its Second Set of Interrogatories on December 13, 2010. Interrogatory No. 13

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simple seeks the internal and expert model names and numbers used by Apple to identify each of

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the accused products:

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Identify by each unique product name, product code, product model and/or any other
product nomenclatures each Apple Product designed, made, used, sold, offered for
sale, imported, or distributed by or for Apple.
ELAN’S MOT. TO COMPEL SUPPL. RESP. TO ELAN’S
INTERROGATORY NO. 13

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Case No. 5:09-cv-01531 RS (PSG)

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(Declaration of Palani P. Rathinasamy (“Rathinasamy Decl.”), Ex. A [Elan’s Second Set of

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Interrogatories to Apple Inc. [Nos. 13-15] at 6). On January 12, 2011 Apple responded to

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Interrogatory No. 13 by identifying only the internal product names associated with broad family

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of Accused Products (Rathinasamy Decl., Ex. B [Apple’s Resp.] at 5). Apple failed to identify any

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external product names or model numbers, despite the express request for such information.

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On March 15, 2011, Elan asked Apple to cure that deficient response, explaining:

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While Apple has identified products by broad model name (e.g. PowerBook) and by
internal development code, it has not provided the full model names or the external
product numbers it used to differentiate among version of those products. For
example, Apple's web site lists three different specification sheets for PowerBook
computers released in April of 2004. Those include the PowerBook G4 12 Inch, 17
inch and 15 inch versions. Those specifications further refer to various model
numbers, for example M9183LL/A, M9184LL/A, M9421LL/A, M9422LL/A and
M9462LL/A. However, Interrogatory No. 13 requests all product model
names/numbers used to identify these products. As Apple did not identify at least
the aforementioned model numbers, Apple has not provided a complete response and
should immediately update these responses to include all external model names and
numbers used to identify the Accused Products. I am available this Thursday, 1:00
PM PST, to meet and confer regarding this issue.

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(Rathinasamy Decl., Ex. C [3/15/2011 Rathinasamy E-Mail to Greenblatt]) (emphasis in

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original).

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After initially refusing to provide any additional information at all, (Rathinasamy Decl., Ex.

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D [3/24/2011 Greenblatt E-mail to Rathinasamy]), Apple agreed to supplement its response

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(Rathinasamy Decl., Ex. E [3/29/2011 Mehta E-mail to Rathinasamy]). On April 1, 2011, Apple

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provided a Supplemental Response in which it identified only the external name for each Apple

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product (Rathinasamy Decl., Ex. F [Apple’s Supp. Resp.] at 5-7). This supplemental response

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does not correlate the newly provided external model names and numbers with the internal

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product codes Apple previously supplied (id.)

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Elan contacted Apple by e-mail on March 31, 2011 and the parties engaged in a telephonic

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meet and confer on April 5, 2011 to discuss, amongst other things, the requested supplementation

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(Rathinasamy Decl., Ex. G [3/31/2011 Bu E-mail to Walter]). Elan thereafter repeatedly asked

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Apple to fully respond to Interrogatory No. 13 (Rathinasamy Decl., Ex. H [Rathinasamy

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5/11/2011 and 5/4/2011 E-mail Exchange to Walter] at 1, 2-3; Ex. I [5/2/2011 Rathinasamy E-

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mail to Walter]). Despite these requests Apple simply refuses to provide a complete response

ELAN’S MOT. TO COMPEL SUPPL. RESP. TO ELAN’S
INTERROGATORY NO. 13

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Case No. 5:09-cv-01531 RS (PSG)

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(Rathinasamy Decl., Ex. J [5/6/2011 Walter Email to Rathinasamy]). Accordingly, Elan states

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that it has satisfied its meet and confer obligation pursuant to L.R. 37-1(a) and Fed. R. Civ. P.

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37(a)(1) and has no choice but to seek Court intervention to resolve this matter (Rathinasamy Decl.

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at ¶ 15).

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III.

ARGUMENT
A.

Legal Standard

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“[P]arties may obtain discovery regarding any non-privileged matter that is relevant to any

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party’s claim or defense” or “appears reasonably calculated to lead to the discovery of admissible

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evidence.” Fed. R. Civ. P. 26(b)(1). Further, a motion to compel is appropriate when a party

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provides an “incomplete disclosure, answer, or response” to an Interrogatory request. Fed. R. Civ.

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P. 26(a)(3)(B)(iii) & (a)(4).

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B.

Elan’s Requested Supplementation Is Highly Relevant to Elan’s
Infringement Analysis of Apple’s Products

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Apple’s website identifies Apple products by a general brand name, such as the MacBook,

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PowerBook or iPad. Within these general brand names, there are often different discrete products

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based on configuration, such as the MacBook with a 12” LCD screen versus one with a 14”

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screen, or an iPad with 8 GB of memory versus one with 16 GB. Each different product is

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referred to by an external product number, such as the MB061LL/B, MB062LL/B, or

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MB063LL/B (Rathinasamy Decl., Ex. K [Screenshot from Apple.com] at 1]). Further, Apple’s

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website describes the features and specifications available in Apple’s products and provides user

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guides that instruct customers on how to use the products (id.). Those user guides are listed by

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general product name and configuration, but do not reflect particular model numbers.

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When those products are under development, Apple refers to the same products internally

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by code names. Those code names differ significantly from the external commercial name or

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number (Rathinasamy Decl., Ex. B [Apple’s First Response to Apple’s Interrogatory Nos. 13-15]

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at 5). This internal nomenclature is used almost exclusively throughout Apple’s internal

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engineering documents (see, e.g., Rathinasamy Decl., Ex. L [Apple Schematics]) as well as

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amongst communications between Apple employees without ever referring to the external product
ELAN’S MOT. TO COMPEL SUPPL. RESP. TO ELAN’S
INTERROGATORY NO. 13

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Case No. 5:09-cv-01531 RS (PSG)

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name (see, e.g., Rathinasamy Decl., Ex. M [Apple Internal E-mail]).
Thus, the technical documents revealing the structure and operation of the accused

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products are grouped according to the internal code name, while the documents concerning

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Apple’s marketing and sales of the accused products are grouped according to the external model

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names and numbers. It is therefore clear that the correlation between the internal and external

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product names is highly relevant. As Elan has explained to Apple, “given the multiple models of

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trackpads used in different products with the same generic name, correlation between internal and

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external names is necessary for tying externally described features with internal product numbers.”

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(Rathinasamy Decl., Ex. H [5/11/2011 Rathinasamy E-mail to Walters] at 1).

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This information wholly within Apple’s knowledge, and is precisely the type of

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information best discovered through an interrogatory. Apple’s answer to this interrogatory is

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necessary for Elan to fully understand and analyze the documents Apple has produced. There can

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be no question that Elan is entitled to this information and Apple’s outright refusal to provide this

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correlation is without justification.

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C.

The Relevancy of the Correlation Information Outweighs Any Alleged
Burden Apple Faces to Obtain Such Information

Apple fully admits that it is able to provide the correlation requested in Interrogatory No.

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13. Apple’s only basis for refusing to provide that information is that it would be “highly

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burdensome.” (Rathinasamy Decl, Ex. J [5/6/2011 Walter Email to Rathinasamy]). Apple has not

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provided any factual justification for this alleged burden, and this claim is highly dubious. Apple

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employees communicate internally by internal product codes and its marketing group

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commercializes these products by external product or commercial names. While it might be a

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“burden” for Apple’s counsel to request and obtain this information, there is no reason to believe

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that this “burden” is any greater than is typical of other discovery requests.

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More importantly, there is not basis whatsoever to assert that the minimal burden on Apple

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would somehow outweigh the relevance of this information in this litigation. As stated in Section

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III.B, correlating Apple’s external product specifications and user guides with Apple’s internal

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documents is highly relevant to Elan’s infringement analysis and understanding of the other
ELAN’S MOT. TO COMPEL SUPPL. RESP. TO ELAN’S
INTERROGATORY NO. 13

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Case No. 5:09-cv-01531 RS (PSG)

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discovery provided by Apple. For example, under the current state of affairs, Elan has the

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information necessary to prove infringement by the accused Apple products. However, that proof

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would apply to the products listed under the internal project codes. In order to prove damages,

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Elan would have no reliable way to tie Apple’s marketing and sales information to those project

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codes. This relevancy greatly outweighs any alleged burden to Apple particularly considering that

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Apple is the only one in the position to accurately provide such correlation information. As the

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relevancy to Elan to properly review Apple documents outweighs any alleged burden to Apple,

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this Court should compel Apple to supplement its response to Elan’s Interrogatory No. 13. See,

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e.g., SEC v. Berry, No. C07-04431-RMW(HRL) (N.D. California April 1, 2011) (order granting

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motion to compel interrogatory) (rejecting defendant’s “burdensome” argument in part based on

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the amount of time defendant was aware of interrogatory request).

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CONCLUSION

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For the foregoing reasons, Elan respectfully requests that the Court grant its motion to

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compel Apple to supplement its response to Elan’s Interrogatory No. 13 and correlate the internal

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and external product names for each Apple product.
Respectfully submitted,
DATED: May 24, 2011
ALSTON & BIRD LLP

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By:

/s/ Palani P. Rathinasamy
Palani P. Rathinasamy
Attorneys for Plaintiff and Counterdefendant
ELAN MICROELECTRONICS CORPORATION

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LEGAL02/32634739v3

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ELAN’S MOT. TO COMPEL SUPPL. RESP. TO ELAN’S
INTERROGATORY NO. 13

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Case No. 5:09-cv-01531 RS (PSG)