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)

Download PDF
1 2 3 4 5 6 7 8 9 10 11 YITAI HU (SBN 248085) yitai.hu@alston.com SEAN P. DEBRUINE (SBN 168071) sean.debruine@alston.com ELIZABETH H. RADER (SBN 184963) elizabeth.rader@alston.com JANE HAN BU (SBN 240081) jane.bu@alston.com JENNIFER LIU (SBN 268990) celine.liu@alston.com PALANI P. RATHINASAMY (SBN 269852) palani.rathinasamy@alston.com 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 12 UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION 13 14 15 16 ELAN MICROELECTRONICS CORPORATION, 17 18 19 20 21 22 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 23 Date: June 28, 2011 Time: 10:00 a.m. Courtroom 5 Hon. Paul S. Grewal 24 25 26 27 28 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 1 2 TO APPLE, INC. AND ITS ATTORNEYS OF RECORD: 3 PLEASE TAKE NOTICE that on June 28, 2011, at 10:00 a.m. or as soon thereafter as the 4 matter may be heard, in Courtroom 5, located at 280 South First Street, Fifth Floor, San Jose, 5 California, Plaintiff Elan Microelectronics Corporation (“Elan”) will and hereby does move this 6 Court, pursuant to L.R. 37-1(a) and Fed. R. Civ. P. 37(a)(1) and 37(a)(4) to Compel Apple to 7 provide a complete answer to Elan’s Interrogatory No. 13. 8 9 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 10 products are laptop computers, tablet computers, smartphones and other devices that include 11 touchpad or touchscreen input devices. On December 13, 2010, Elan served Interrogatory No. 13 12 requesting that Apple identify all product names, project codes, model names and model numbers 13 for each of Apple’s Accused Products. Apple has provided some information in its responses to 14 this interrogatory, at first providing only internal development codes for each product and its 15 associated touchpad or touchscreen. After repeated requests Apple has also provide a separate list 16 of external model names and model numbers. However, Apple simply refuses to correlate the 17 internal project code names with the external model numbers under which the resulting products 18 were sold and, more importantly, the numbers under which internal documentation and sales 19 information are maintained within Apple. Thus, Apple’s internal technical documents refer only 20 to the internal product codes, while external documents used to advertise those products, and 21 internal documents tracking sales of those documents, use the external product names and model 22 numbers. By its piecemeal response Apple is refusing to fully answer the interrogatory, and 23 refusing to provide basic, highly relevant information that is uniquely within its knowledge. 24 Accordingly, Elan respectfully requests that this Court compel Apple to provide a full and 25 complete response to Elan’s Interrogatory No. 13 which, at a minimum, will provide all external 26 product names and numbers along with all internal product names or codes, separately for each 27 accused Apple product. 28 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 2 Case No. 5:09-cv-01531 RS (PSG) 1 and the Declaration of Palani P. Rathinasamy (“Rathinasamy Decl.”) and on such other argument 2 and evidence as may be presented to the Court at or prior to the hearing on this motion. MEMORANDUM OF POINTS AND AUTHORITIES 3 4 I. 5 Elan is forced to bring this motion to obtain the most basic of information from Apple – a INTRODUCTION 6 list of the codes, names and model numbers Apple itself has used to identify its own products. 7 Over the six months since Elan served its interrogatory seeking this information, Apple has only 8 grudgingly identified its internal project codes for each general product name, and separately 9 provided a list of external model names and numbers. Apple simply refuses to provide a single, 10 complete response to this interrogatory in which, for each product, it identifes both the internal 11 codes and the external model names and numbers. This information is necessary for Elan to 12 understand the documents produced by Apple. While Apple’s internal technical documents refer 13 to the development code names, its website and user guides refer to Apple products by an external 14 name, such as a “MacBook 13” or a “MA254LL/A. Elan has no way to ensure that the technical 15 documents it has reviewed correlate to any particular product sold by Apple, and to ensure that it 16 has complete documentation for each such product. Certainly Apple has this information, as it 17 has been able to provide the components of a complete answer. Apple is simply refusing to 18 provide the key to correlate this information, a key only it possesses. Its refusal to provide this 19 basic information about its own products is nothing more than discovery obstruction. Because 20 discovery is to be completed in less than two months, Apple must be compelled to provide the 21 requested response immediately. 22 II. STATEMENT OF MATERIAL FACTS 23 24 Elan served its Second Set of Interrogatories on December 13, 2010. Interrogatory No. 13 25 simple seeks the internal and expert model names and numbers used by Apple to identify each of 26 the accused products: 27 28 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 3 Case No. 5:09-cv-01531 RS (PSG) 1 (Declaration of Palani P. Rathinasamy (“Rathinasamy Decl.”), Ex. A [Elan’s Second Set of 2 Interrogatories to Apple Inc. [Nos. 13-15] at 6). On January 12, 2011 Apple responded to 3 Interrogatory No. 13 by identifying only the internal product names associated with broad family 4 of Accused Products (Rathinasamy Decl., Ex. B [Apple’s Resp.] at 5). Apple failed to identify any 5 external product names or model numbers, despite the express request for such information. 6 On March 15, 2011, Elan asked Apple to cure that deficient response, explaining: 7 8 9 10 11 12 13 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. 14 (Rathinasamy Decl., Ex. C [3/15/2011 Rathinasamy E-Mail to Greenblatt]) (emphasis in 15 original). 16 After initially refusing to provide any additional information at all, (Rathinasamy Decl., Ex. 17 D [3/24/2011 Greenblatt E-mail to Rathinasamy]), Apple agreed to supplement its response 18 (Rathinasamy Decl., Ex. E [3/29/2011 Mehta E-mail to Rathinasamy]). On April 1, 2011, Apple 19 provided a Supplemental Response in which it identified only the external name for each Apple 20 product (Rathinasamy Decl., Ex. F [Apple’s Supp. Resp.] at 5-7). This supplemental response 21 does not correlate the newly provided external model names and numbers with the internal 22 product codes Apple previously supplied (id.) 23 Elan contacted Apple by e-mail on March 31, 2011 and the parties engaged in a telephonic 24 meet and confer on April 5, 2011 to discuss, amongst other things, the requested supplementation 25 (Rathinasamy Decl., Ex. G [3/31/2011 Bu E-mail to Walter]). Elan thereafter repeatedly asked 26 Apple to fully respond to Interrogatory No. 13 (Rathinasamy Decl., Ex. H [Rathinasamy 27 5/11/2011 and 5/4/2011 E-mail Exchange to Walter] at 1, 2-3; Ex. I [5/2/2011 Rathinasamy E- 28 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 4 Case No. 5:09-cv-01531 RS (PSG) 1 (Rathinasamy Decl., Ex. J [5/6/2011 Walter Email to Rathinasamy]). Accordingly, Elan states 2 that it has satisfied its meet and confer obligation pursuant to L.R. 37-1(a) and Fed. R. Civ. P. 3 37(a)(1) and has no choice but to seek Court intervention to resolve this matter (Rathinasamy Decl. 4 at ¶ 15). 5 6 III. ARGUMENT A. Legal Standard 7 “[P]arties may obtain discovery regarding any non-privileged matter that is relevant to any 8 party’s claim or defense” or “appears reasonably calculated to lead to the discovery of admissible 9 evidence.” Fed. R. Civ. P. 26(b)(1). Further, a motion to compel is appropriate when a party 10 provides an “incomplete disclosure, answer, or response” to an Interrogatory request. Fed. R. Civ. 11 P. 26(a)(3)(B)(iii) & (a)(4). 12 13 B. Elan’s Requested Supplementation Is Highly Relevant to Elan’s Infringement Analysis of Apple’s Products 14 Apple’s website identifies Apple products by a general brand name, such as the MacBook, 15 PowerBook or iPad. Within these general brand names, there are often different discrete products 16 based on configuration, such as the MacBook with a 12” LCD screen versus one with a 14” 17 screen, or an iPad with 8 GB of memory versus one with 16 GB. Each different product is 18 referred to by an external product number, such as the MB061LL/B, MB062LL/B, or 19 MB063LL/B (Rathinasamy Decl., Ex. K [Screenshot from Apple.com] at 1]). Further, Apple’s 20 website describes the features and specifications available in Apple’s products and provides user 21 guides that instruct customers on how to use the products (id.). Those user guides are listed by 22 general product name and configuration, but do not reflect particular model numbers. 23 When those products are under development, Apple refers to the same products internally 24 by code names. Those code names differ significantly from the external commercial name or 25 number (Rathinasamy Decl., Ex. B [Apple’s First Response to Apple’s Interrogatory Nos. 13-15] 26 at 5). This internal nomenclature is used almost exclusively throughout Apple’s internal 27 engineering documents (see, e.g., Rathinasamy Decl., Ex. L [Apple Schematics]) as well as 28 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 5 Case No. 5:09-cv-01531 RS (PSG) 1 2 name (see, e.g., Rathinasamy Decl., Ex. M [Apple Internal E-mail]). Thus, the technical documents revealing the structure and operation of the accused 3 products are grouped according to the internal code name, while the documents concerning 4 Apple’s marketing and sales of the accused products are grouped according to the external model 5 names and numbers. It is therefore clear that the correlation between the internal and external 6 product names is highly relevant. As Elan has explained to Apple, “given the multiple models of 7 trackpads used in different products with the same generic name, correlation between internal and 8 external names is necessary for tying externally described features with internal product numbers.” 9 (Rathinasamy Decl., Ex. H [5/11/2011 Rathinasamy E-mail to Walters] at 1). 10 This information wholly within Apple’s knowledge, and is precisely the type of 11 information best discovered through an interrogatory. Apple’s answer to this interrogatory is 12 necessary for Elan to fully understand and analyze the documents Apple has produced. There can 13 be no question that Elan is entitled to this information and Apple’s outright refusal to provide this 14 correlation is without justification. 15 16 17 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. 18 13. Apple’s only basis for refusing to provide that information is that it would be “highly 19 burdensome.” (Rathinasamy Decl, Ex. J [5/6/2011 Walter Email to Rathinasamy]). Apple has not 20 provided any factual justification for this alleged burden, and this claim is highly dubious. Apple 21 employees communicate internally by internal product codes and its marketing group 22 commercializes these products by external product or commercial names. While it might be a 23 “burden” for Apple’s counsel to request and obtain this information, there is no reason to believe 24 that this “burden” is any greater than is typical of other discovery requests. 25 More importantly, there is not basis whatsoever to assert that the minimal burden on Apple 26 would somehow outweigh the relevance of this information in this litigation. As stated in Section 27 III.B, correlating Apple’s external product specifications and user guides with Apple’s internal 28 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 6 Case No. 5:09-cv-01531 RS (PSG) 1 discovery provided by Apple. For example, under the current state of affairs, Elan has the 2 information necessary to prove infringement by the accused Apple products. However, that proof 3 would apply to the products listed under the internal project codes. In order to prove damages, 4 Elan would have no reliable way to tie Apple’s marketing and sales information to those project 5 codes. This relevancy greatly outweighs any alleged burden to Apple particularly considering that 6 Apple is the only one in the position to accurately provide such correlation information. As the 7 relevancy to Elan to properly review Apple documents outweighs any alleged burden to Apple, 8 this Court should compel Apple to supplement its response to Elan’s Interrogatory No. 13. See, 9 e.g., SEC v. Berry, No. C07-04431-RMW(HRL) (N.D. California April 1, 2011) (order granting 10 motion to compel interrogatory) (rejecting defendant’s “burdensome” argument in part based on 11 the amount of time defendant was aware of interrogatory request). 12 CONCLUSION 13 For the foregoing reasons, Elan respectfully requests that the Court grant its motion to 14 compel Apple to supplement its response to Elan’s Interrogatory No. 13 and correlate the internal 15 and external product names for each Apple product. Respectfully submitted, DATED: May 24, 2011 ALSTON & BIRD LLP 16 17 18 By: /s/ Palani P. Rathinasamy Palani P. Rathinasamy Attorneys for Plaintiff and Counterdefendant ELAN MICROELECTRONICS CORPORATION 19 20 21 LEGAL02/32634739v3 22 23 24 25 26 27 28 ELAN’S MOT. TO COMPEL SUPPL. RESP. TO ELAN’S INTERROGATORY NO. 13 7 Case No. 5:09-cv-01531 RS (PSG)

Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.

Why Is My Information Online?