Elan Microelectronics Corporation v. Apple, Inc.

Filing 225

Declaration of Derek Walter In Support of Apple Inc.'s Motion to Compel (1) Discovery Relating to US Sales; (2) Documents Improperly Withheld on the Basis of Privilege; and (3) Inventor Depositions filed byApple, Inc.. (Attachments: # 1 Exhibit 1, # 2 Exhibit 3, # 3 Exhibit 5, # 4 Exhibit 6, # 5 Exhibit 7, # 6 Exhibit 9, # 7 Exhibit 10, # 8 Exhibit 15, # 9 Exhibit 22, # 10 Exhibit 24, # 11 Exhibit 28, # 12 Exhibit 29, # 13 Exhibit 30, # 14 Exhibit 31, # 15 Exhibit 32, # 16 Exhibit 33, # 17 Exhibit 36)(Greenblatt, Nathan) (Filed on 5/31/2011)

EXHIBIT 1

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MATTHE\V D. POWERS (Bar No. 104795)
[e-mail]
EDWARD R. REINES (Bar No. 135960)
[e-mail]
SONAL N. MEHTA (Bar No. 222086)
[e-mail]
WEIL, GOTSHAL & MANGES LLP
Silicon Valley Office
201 Redwood Shores Parkway
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: [phone]

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Attorneys for Apple Inc.

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UNITED STATES DISTRICT COURT
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NORTHERN DISTRICT OF CALIFORNIA
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SAN lOSE DIVISION
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ELAN MICROELECTRONICS
CORPORATION,

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Plaintiff and Counterclaim
Defendant,

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v.

Case No. C-09-01531 RS
APPLE INC.'S FIRST SET OF
INTERROGATORIES TO ELAN
MICROELECTRONICS
CORPORATION
(INTERROGATORY NOS. 1-17)
Han. Richard Seeborg

APPLE INC.,
Defendant and Counterclaim
Plaintiff.

Demand for 1ury Trial

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Pursuant to Federal Rules of Civil Procedure 26 and 33, Apple Inc. ("Apple")
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requests that Elan Microelectronics Corporation ("Elan") respond separately, fully, in writing,
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and under oath, to these interrogatories within 30 days after service hereof.
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APPLE'S FIRST SET OF INTERRO(;ATORIES TO ELAN
l'S_ACTIVE:143141 121101143141121_1 .DOC'-

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DEFINITIONS AND INSTRUCTIONS

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1.

"Apple" means Defendant and Counterclaim Plaintiff Apple Inc.

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2.

"Elan," "you," and "your" means Plaintiff and Counterclaim Defendant

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Elan Microelectronics Corporation, its predecessors and successors, past and present parents,

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subsidiaries, divisions, affiliates, and other organizational or operating units of any of the

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foregoing, and all past and present directors, officers, employees, agents, and representatives

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(including consultants and attorneys) of any of the foregoing.

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future by Elan in this action, including, without limitation, U.S. Patent Nos. 5,825,352 and
7,274,353 individually and collectively.

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"Elan Patents-in-Suit" means all patents asserted or to be asserted in the

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'The '352 Patent" and "The '353 Patent" mean U.S. Patent No. 5,825,352
,

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and U.S. Patent No. 7,274,353 respectively.

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5.

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future by Apple

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7,495,659, and 6,933,929 individually and collectively.

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6.

In

this action, including, without limitation, U.S. Patent Nos. 5,764,218,

"The '218 Patent," "The '659 Patent," and "The '929 Patent" mean U.S.

Patent No. 5,764,218, U.S. Patent No. 7,495,659, and U.S. Patent No. 6,933,929 respectively.

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"Apple Patents-in-Suit" means all patents asserted or to be asserted in the

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"Patents-in-Suit" means the Apple Patents-in-Suit and Elan Patents-in-Suit

individually and collectively.

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8.

"Elan Accused Products" means touch-sensitive input devices or touch

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pads designed, marketed, manufactured, and/or sold by Elan, including but not limited to the

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Smart-Pad.

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9.

"Prior art" is used herein in the same sense that it is used in 35 U.S.C.

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§§ 102-103, and includes, without limitation, any patent or printed publication, or any prior

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knowledge, prior use, prior sale or offer for sale in the United States, or other act, event, or thing

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defined in 35 U.S.C. § 102, taken individually or in combination, including without limitation,

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any system, method, apparatus, publication, patent or use which has been cited to Elan by any

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person or entity as prior art.
APPLE'S FIRST SET OF INTERROGATORIES TO ELAN
lIS_ACTIVE:143141121101143141121-'DO(,\

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"Related Patents" means all patents and patent applications relating to any

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of the Elan Patents-in-Suit or Apple Patents-in-Suit, including any patents or patent applications

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(including all published and unpublished pending and abandoned applications) from or through

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which any of the Elan Patents-in-Suit or Apple Patents-in-Suit claim priority, any patents or

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patent applications (including all published and unpublished pending and abandoned applications)

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that claim priority from or through any of the Elan Patents-in-Suit or Apple Patents-in-Suit, and

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any foreign counterpart patents or patent applications (including all published and unpublished

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pending and abandoned applications) of any of the foregoing.

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"Communication" means any form of oral or written interchange, whether

in person, by telephone, by facsimile, by telex, by electronic email, or by any other medium.
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"Document" shall be interpreted to the full extent permitted by the Federal

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Rules of CiviI Procedure and includes, without limitation, e-mail, files stored on electronic media,

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copies of letters, notes and records of telephone conversations, intra-corporate communications,

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minutes, bulletins, specifications, instructions, advertisements, literature, patents, patent

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applications, specification sheets and diagrams, work assignments, reports, memoranda,

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memoranda of conversations, notes, notebooks, drafts, data sheets, work sheets, contracts and

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agreements, memoranda of agreements, assignments, licenses, sublicenses, opinions and reports

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of experts and consultants, books of account, orders, invoices, statements, bills, checks and

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vouchers, brochures, photographs, drawings, charts, catalogs, pamphlets, magazines, copies of

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magazines, decals, world-wide web and/or internet postings, trade letters, notices and

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announcements, and press releases, and all other printed, written, recorded, taped, electronic,

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graphic, computerized printout or other tangible materials of whatever kind known to, or in the

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possession, custody, or control of Elan. A draft or nonidentical copy is a separate document

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within the meaning of this term.

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13.

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The words "identify," "identity," and "identification" mean:
a.

as applied to an individual, state the individual's full name; present
or last known address and telephone number; present or last known

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APPLE'S FIRST SET OF INTERROGATORIES TO ELAN

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employer; and present or last known business address and

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telephone number;

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b.

as applied to a document, state the type of document; date of the

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document; names of the individuals who drafted, authored, or

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signed the document; names of the individuals to whom the

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document or a copy thereof was addressed or sent; a summary of

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the subject matter of the document; the number of pages of the

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document; the present whereabouts of the document; the name and

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address of the current custodian; and the Bates number(s), if the

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document has been produced.

c.

as applied to a patent or patent application, state the country where

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it was filed or granted; the patent or patent application number; the

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filing date; the dates of publication and issue, if any; the identity of

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all inventors; the title; and the identity of all related applications

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and patents.

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d.

as applied to oral communications, state the name of the person

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making the communication and the name(s) of the person(s) present

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while the communication was made, and, where not apparent, the

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relationship of the person(s) present to the person making the

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communication; the date and place of the communication; and a

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summary of the subject matter of the communication.

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e.

as applied to an event or chain of events, state the date(s) of each

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occurrence relevant to the event; identify all indi viduals having

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information concerning the event, including but not limited to those

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involved

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requesting, or otherwise participating in the event and/or those who

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can corroborate or refute the described circumstances of the event;

in

witnessing,

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APPLE'S FIRST SET OF INTERROGATORIES TO ELAN

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supervising,

controlling,

supporting,

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and desclibe the role and/or contribution of each person so

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identified.

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"Concerning means relating or referring to, discussing, describing,

summarizing, evidencing, or constituting.

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The words "any," "all," and "each" shall mean any, all, each, and every.

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The terms "and" and "or" should be understood as either conjunctive or

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disjunctive, whichever is necessary to bring within the scope of the interrogatory any responses

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that might otherwise have been understood to be outside its scope,

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17.

Use of the singular includes the plural and vice versa.

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18.

The term "person" refers to both natural persons and to corporate or other

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business entities (including Elan), whether or not in the employ of Elan, and the "acts" of a

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person (including Elan) are defined to include the acts of directors, officers, owners, members,

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employees, agents or attorneys acting on the person's behalf.

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Pursuant to Federal Rules of Civil Procedure 26(e), these interrogatories

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are continuing in nature and therefore require Elan to furnish supplemental responses whenever it

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obtains different or additional knowledge, information, or belief relating to these interrogatories.

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These requests are being propounded in light of the discovery served thus far in this case. Apple

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stands ready to meet and confer to discuss the best and most efficient way to conduct discovery

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bilaterally.

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If you withhold any information based upon a claim of privilege or any

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other claim of immunity from discovery, then state in writing in response the claim being asserted

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and describe the facts and circumstances giving rise to it in sufficient detail so as to permit

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defendants and declaratory relief claimants to evaluate, and the Court to adjudicate, the merits of

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the claim.

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INTERROGATORIES
INTERROGATORY NO.1:

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Separately for each claim of the Elan Patents-in-Suit, describe in detail the

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conception and reduction to practice of the claimed invention and any acts of diligence, including
APPLE'S FIRST SET OF INTER ROGATORIES TO ELAN

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the dates on which Elan contends the claimed invention was conceived and reduced to practice

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and each person and all documents that can corroborate such conception, reduction to practice

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and/or diligence.

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INTERROGATORY NO.2:

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Separately for each claim of the Elan Patents-in-Suit, identify the individual and/or

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individuals that Elan contends conceived the subject matter of that claim or participated in the

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reduction to practice of the subject matter of that claim, including the subject matter he or she

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contributed to that claim or the contribution of that individual to the reduction to practice of that

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claim, including a full description of all facts and circumstances (including documents and

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persons with knowledge) and reasons supporting such contention.

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INTERROGATORY NO.3:

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Separately for each claim of the Elan Patents-in-Suit, identify the first written

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description, first offer for sale, first sale, first public disclosure, first public use, and first

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disclosure to another of the claimed invention, including, without limitation, the date on which

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such event occurred, the identity of each person with knowledge of any of the foregoing and the

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identity of all documents relating to the foregoing.

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INTERROGATORY NO.4:

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Identify all Prior Art to the Elan Patents-in-Suit that Elan is aware of, and describe

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in detail when, by whom and under what circumstances such Prior Art was discovered or

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identified.

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INTERROGATORY NO.5:

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Separately for each Elan Patent-in-Suit, state whether Elan contends that it has

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satisfied the marking requirements of 35 U.S.C. § 287, and if so, describe in detail all facts and

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circumstances supporting or otherwise relating to that contention (including documents and

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persons with knowledge).

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INTERROGATORY NO.6:

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Separately for each Elan Patent-in-Suit, state the date on which Elan contends that

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Apple first became aware of that patent (whether through actual or constructive notice) and
APPLE'S FIRST SET OF INTERROGATORIES TO ELAN

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describe in detail all facts and circumstances supporting or otherwise relating to that contention

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(including documents and persons with knowledge).

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INTERROGATORY NO.7:

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Describe in detail all facts and circumstances relating to each communication

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between Elan and any third party concerning licensing, contracts, agreements, covenants not to

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sue, settlement agreements, actual or potential infringement, invalidity, or unenforceability of any

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of the Patents-in-Suit and the identities of all such third parties, including, but not limited to, the

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identity of each entity contacted by Elan regarding any of the Elan Patents-in-Suit and each

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license granted, obtained, or offered by Elan to any of the Elan Patents-in-Suit.

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INTERROGATORY NO.8:

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Describe in detail all facts and circumstances supporting or otherwise relating to

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Elan's calculation of damages allegedly resulting from Apple's alleged infringement, including,

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but not limited to, the type alld dollar amount of damages and the method(s) and calculation(s)

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used to compute that calculation of damages, including a full description of all facts (including

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documents and persons with knowledge) and reasons supporting such contention.

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INTERROGATORY NO.9:

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Describe in detail all facts and circumstances supporting or otherwise relating to

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Elan's contention that Apple has willfully infringed or is willfully infringing the Elan Patents-in-

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Suit, including a full description of all facts (including documents and persons with knowledge)

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and reasons supporting such contention.

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INTERROGATORY NO. 10:

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Separately for each of the Elan Patents-in-Suit, state the date on which Elan

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contends that Apple's alleged infringement of that patent began and the date on which Elan first

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became aware of such infringement, and explain in detail why Elan did not commence this action

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against Apple between the date Elan became so aware and April 2009.

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INTERROGATORY NO. 11:

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Separately for each of the Apple Patents-in-Suit, describe in detail the facts and

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circumstances relating to Elan's first awareness of the patent, including inter alia, the date Elan
APPLE'S FIRST SET OF INTERROGATORIES TO ELAN

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first became aware of the existence of the patent, the person(s) who first became aware of the

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patent, the circumstances surrounding Elan's first awareness of the patent, the content of any

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related communications or documents and any actions taken by you as a result (including

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documents and persons with knowledge).

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INTERROGATORY NO. 12:

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Identify (by product name, including all trade names and designations, internal

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names, and names during development; part number; model; manufacturer; designer; supplier;

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and dates first sold or offered for sale) all products or designs of all touch-sensitive input devices

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or touch pads designed, marketed, made, used, sold, offered for sale, imported, exported,

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licensed, or distributed by or for Elan.

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INTERROGATORY NO. 13:

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Separately for each product or design the identification of which is requested by

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Interrogatory No. 12, describe in detail each sale, license, or other instance in which a customer

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or other third party has obtained rights to the product or design, including inter alia the name and

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address of the customer or third party, the date on which the third party or customer first obtained

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rights to the product or design, what software, hardware or know-how were provided by Elan, and

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all written or oral communications between Elan and the customer or third party concerning the

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design, operation, structure, testing, use or maintenance of the product or design (including

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documents and persons with knowledge).

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INTERROGATORY NO. 14:

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Separately for each product or design the identification of which is requested by

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Interrogatory No. 12, describe in detail each individual that participated in the design or

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development of that product or design and their role in the design or development.

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INTERROGATORY NO. 15:

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Separately for each product or design the identification of which is requested by

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Interrogatory No. 12, state the total quantity of the product or design made, used, sold, offered for

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sale, imported, exported, leased, distributed, or licensed in the United States, and the gross and

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net revenues and profits derived from each such activity (including documents and persons with
APPLE'S FIRST SET OF INTERROGATORIES TO ELAN

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knowledge).

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INTERROGATORY NO. 16:

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For each claim of each Apple Patent-in-Suit that you contend is not infringed by

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Elan Accused Products, describe in detail the factual basis of such contention.

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INTERROGATORY NO. 17:

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Describe in detail Elan's activities and business in the United States with regard to

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Elan Accused Products, including without limitation, marketing, sales, product development,

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and/or product support and instructions directed to or conducted in the United States by Elan,

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including without limitation by Elan's ELAN Information Technology Group office in Cupertino,

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CA.

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Dated: August 21, 2009

WEIL, GOTSHAL & MANGES LLP

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By'~~"':J-

_
Sonal N. Mehta
Attorneys for Defendant and
Counterclaim Plaintiff Apple Inc.

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APPLE'S FIRST SET OF INTERROGATORIES TO ELAN

<)

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CERTIFICATE OF SERVICE

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I declare that I am employed with the law firm of Weil, Gotshal & Manges LLP,

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whose address is 201 Redwood Shores Parkway, Redwood Shores, California 94065-1175. I am

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not a party to the within cause, and I am over the age of eighteen years. I further declare that on

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August 21,2009, I served a copy of:

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APPLE INC.'S FIRST SET OF INTERROGATORIES TO
ELAN MICROELECTRONICS CORPORATION
(INTERROGATORY NOS. 1-17)

D

BY U.S. MAIL by placing a true copy thereof enclosed in a sealed
envelope with postage thereon fully prepaid, addressed as follows, for collection and mailing in
accordance with the firm's ordinary business practices. I am readily familiar with the practice for
collection and processing of mail, and know that in the ordinary course of business practice that
the document(s) described above will be deposited with the U.S. Postal Service on the same date
as sworn to below.

C8J

BY ELECTRONIC SERVICE by electronically mailing a true and
correct copy through the electronic mail system to the email addressees) set forth in the service
list below.

D

BY OVERNIGHT DELIVERY by placing a true copy thereof enclosed
in a sealed envelope with overnight delivery fees provided for, addressed as follows, for
collection by Federal Express in accordance with ordinary business practices. I am readily
familiar with the practice for collection and processing of correspondence for overnight delivery
and know that in the ordinary course of business practice the document(s) described above will be
deposited by an employee or agent in a box or other facility regularly maintained by Federal
Express for collection on the same day that the document(s) are deposited.

D

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BY PERSONAL SERVICE by placing a true copy thereof enclosed in a
sealed envelope to be delivered by messenger to the offices of the addressee(s) (and left with an
employee or person in charge of addressee's office), as stated below, during ordinary business
hours.
Yitai Hu ([e-mail])
Sean P. DeBruine ([e-mail])
S.H. Michael Kim ([e-mail])
C. Augustine Rakow ([e-mail])
Alston + Bird LLP
Two Palo Alto Square
3000 El Camino Real, Suite 400
Palo Alto, CA 94306
Telephone: [phone]; Facsimile: 650-838-2001

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I declare under penalty of perjury under the laws of the United States of America

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that the foregoing is true and correct.
Executed on August 21, 2009, at Redwood

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Sonal N, Mehta
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APPLE'S fiRST SET OF INTERROGATORIES TO ELAN

us_ ACTI\ f. \.I 1141121\01143141121_I.DOC\.

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