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 10

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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

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NORTHERN DISTRICT OF CALIFORNIA

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SAN FRANCISCO DIVISION

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ELAN MICROELECTRONICS
CORPORATION’S THIRD
SUPPLEMENTAL OBJECTIONS AND
RESPONSES TO APPLE, INC.’S FIRST
SET OF INTERROGATORIES [NOS. 7,
14 & 17]

Plaintiff,

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

ELAN MICROELECTRONICS
CORPORATION,

v.
APPLE, INC.,
Defendant.
AND RELATED COUNTERCLAIMS

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PROPOUNDING PARTY:

APPLE, INC.

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RESPONDING PARTY:

ELAN MICROELECTRONICS CORPORATION

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SET NUMBER:

ONE [NOS. 1-17]

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ELAN’S THIRD SUPPLEMENTAL OBJECTIONS AND
RESPONSES TO APPLE’S FIRST SET OF INTERROGATORIES
[NOS. 7, 14 & 17]

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

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Plaintiff Elan Microelectronics Corporation (“Elan”) hereby supplements its objections and

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responses to Defendant Apple, Inc.’s (“Apple”) First Set of Interrogatories to Elan

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Microelectronics Corporation (“Interrogatories”) as follows:
GENERAL STATEMENTS AND OBJECTIONS

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1.

Elan’s responses to Apple’s First Set of Interrogatories are based on Elan’s current

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knowledge after a reasonable inquiry. Elan’s investigation with regard to the subject matter of this

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action is ongoing, and Elan will supplement its responses and objections in accordance with Patent

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Local Rules and applicable law. The following responses are provided without prejudice to Elan’s

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right to introduce at hearing or trial any evidence that is subsequently discovered relating to proof

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of currently known facts and to produce and introduce all evidence whenever discovered relating

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to the proof of subsequently discovered material facts. The following objections and responses do

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not constitute any admission by Elan as to the relevance, materiality, or admissibility into evidence

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of the subject matter or facts contained in any interrogatory or in Elan’s response. Elan reserves

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its right to refer to, conduct discovery with reference to, or offer into evidence any and all facts,

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and information notwithstanding the initial responses and objections interposed herein, consistent

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with Patent Local Rules and applicable law.

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2.

Elan’s responses are made subject to and without waiver of:
a. Elan’s right to object on any ground (e.g., relevance, etc.) to the use of

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Elan’s responses or any portion thereof in any proceedings, including this or

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any other action; and
b. Elan’s right to object on any ground to any additional discovery requests

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that may be served in this action.

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3.

Any statement made herein of an intent to produce documents is not, and shall not

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be deemed, an admission of any factual or legal contention contained in any individual

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Interrogatory, nor that any particular documents exist or are relevant and admissible in this matter.

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4.

In addition to any specific objections which may be made on an individual basis in

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the separate responses set forth below, Elan objects generally to each Interrogatory to the extent

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that it seeks to elicit information subject to and protected by the attorney-client privilege, the
ELAN’S THIRD SUPPLEMENTAL OBJECTIONS AND
RESPONSES TO APPLE’S FIRST SET OF INTERROGATORIES
[NOS. 1-17]

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

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attorney work product doctrine and/or any other applicable privilege, immunity, or protection.

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Any inadvertent disclosure of such information shall not be deemed a waiver of the attorney-client

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privilege, the work product doctrine, or any other applicable privilege or immunity.

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5.

Elan objects to the Interrogatories, including without limitation the “Definitions”

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and “Instructions” contained therein, to the extent that they seek to impose burdens or obligations

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upon Elan beyond what is prescribed and/or required by applicable law and rules, including the

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Federal Rules of Civil Procedure and this Court’s Patent Local Rules.

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6.

Elan objects to the Interrogatories to the extent that they seek discovery of

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information related to any counterclaim which the Court has dismissed from this action. Elan will

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only provide information relating to any counterclaims for patent infringement if and when Apple

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asserts cognizable claims of patent infringement against Elan.

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7.

Elan objects generally to each Interrogatory to the extent it seeks information or

documents consisting of confidential, proprietary, or trade secret information of non-parties.
8.

Elan objects generally to each Interrogatory to the extent it seeks information that is

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not in Elan’s possession, custody, or control, or information that would be burdensome to locate,

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retrieve, prepare, review, and/or produce, where such burden outweighs any material benefit the

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information would have to the litigation.

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9.

Elan objects generally to each Interrogatory to the extent that it contains any factual

or legal misrepresentations, or where they are vague and/or ambiguous.
10.

Elan objects generally to each Interrogatory to the extent that it is compound and

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contains multiple subparts, and thus represents an improper attempt to circumvent the limits on

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interrogatories imposed by the parties’ agreement and the Federal Rules of Civil Procedure.

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11.

These general objections are applicable to each and every one of the following

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specific objections and responses, and failure to repeat an objection in response to a specific

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Interrogatory shall not be deemed a waiver of the objection. Further, if Elan specifically repeats

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one or more of these general objections in response to a specific Interrogatory, such specific

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response shall not be a waiver of any other general objections.

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ELAN’S THIRD SUPPLEMENTAL OBJECTIONS AND
RESPONSES TO APPLE’S FIRST SET OF INTERROGATORIES
[NOS. 1-17]

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

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12.

Elan’s discovery responses are subject to any present or future Protective Order in

this case.
GENERAL OBJECTIONS TO APPLE’S DEFINITIONS AND INSTRUCTIONS
Elan incorporates by references all of its previous general objections to Apple’s definitions
and instruction.
SPECIFIC OBJECTIONS AND RESPONSES TO INTERROGATORIES
INTERROGATORY NO. 7:
Describe in detail all facts and circumstances relating to each communication between Elan
and any third party concerning licensing, contracts, agreements, covenants not to sue, settlement

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agreements, actual or potential infringement, invalidity, or unenforceability of any of the Patents-in-

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Suit and the identities of all such third parties, including, but not limited to, the identity of each

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entity contacted by Elan regarding any of the Elan Patents-in-Suit and each license granted,

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

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SUPPLEMENTAL RESPONSE TO INTERROGATORY NO. 7:

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Elan incorporates herein by reference each of its foregoing General Objections. Elan

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objects to this Interrogatory to the extent that it is intended to be treated as one interrogatory, as it

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contains multiple subparts, and thus will be treated as multiple interrogatories against the

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maximum permissible. Elan also objects to this Interrogatory as overbroad and unduly

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burdensome to the extent it seeks “each communication between Elan and any third party.” Elan

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further objects to this Interrogatory to the extent it seeks information not relevant to any present

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claim or defense in this matter and not reasonably calculated to lead to the discovery of admissible

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evidence. Elan also objects to this Interrogatory to the extent it seeks information containing

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proprietary or confidential information of Elan or a non-party. Elan further objects to this

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Interrogatory to the extent it seeks information protected from disclosure by the attorney-client

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privilege, the attorney work product doctrine or any other applicable privilege, immunity, or

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protection.

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Subject to and without waiving the foregoing objections, Elan responds that Elan and
Synaptics, Inc. entered into a settlement agreement with respect to ‘352 Patent in October 2008.
ELAN’S THIRD SUPPLEMENTAL OBJECTIONS AND
RESPONSES TO APPLE’S FIRST SET OF INTERROGATORIES
[NOS. 1-17]

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

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Elan further states that Elan and Synaptics were engaged in litigation concerning, inter alia,

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Synaptics’ infringement of the ‘352 patent. That litigation also involved Prostar Computer, Inc.

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and Averatec, Inc. The pleadings and correspondence between the parties have been produced to

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Apple. Elan objects to the request that it “describe in detail each communication” between Elan

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and Synaptics, Prostar or Averatec during that litigation as unduly burdensome.

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Elan further responds that Elan had at least the following communications concerning
Elan’s ‘352 patent:
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GlidePoint® touchpad with so-called Advanced Gestures, through Elan’s outside

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counsel Alston & Bird, beginning during or around July 6, 2009. See ELN126472.

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Communications with Richard Wooley of Cirque Corporation concerning Cirque’s

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A letter to Mary E. Doyle of Palm, Inc. concerning Palm’s Palm Pre smart phone,

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through Elan’s outside counsel Alston & Bird, during or around July 6, 2009. See

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ELN126471. That letter was followed by a telephone conversation between Sean

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DeBruine, counsel for Elan, and Douglass Luftman, Palm’s Assistant General

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Counsel.

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Communications with Charles Chamas and Anthony Baca of Hewlett-Packard

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Company, through Elan’s outside counsel Akin Gump Strauss Hauer & Feld LLP

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(“Akin Gump”), beginning during or around January 4, 2007. Mr. Baca and Mr.

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DeBruine also had at least one telephone conversation. See ELN126444.

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Communications with Tsuneo Toda of Toshiba Corporation concerning certain

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Toshiba laptop products, through Elan’s outside counsel Akin Gump, beginning

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during or around January 4, 2007. See ELN126446. ELN126451, and

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ELN126454.

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Elan further responds that it has had no license discussions regarding the ‘353 Patent.
SECOND SUPPLEMENTAL RESPONSE TO INTERROGATORY NO. 7:
Elan incorporates herein by reference each of its foregoing General and Specific
Objections stated above and the response provided above.

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ELAN’S THIRD SUPPLEMENTAL OBJECTIONS AND
RESPONSES TO APPLE’S FIRST SET OF INTERROGATORIES
[NOS. 1-17]

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

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Elan further states that it has not licensed or attempted to license the 353 patent with any

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entity. Elan has not attempted or licensed 352 patent with any entities outside of the United States.

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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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SUPPLEMENTAL RESPONSE TO INTERROGATORY NO. 14:

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Elan incorporates herein by reference each of its foregoing General Objections. Elan
objects to this Interrogatory to the extent that it is intended to be treated as one interrogatory, as it

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contains multiple subparts, and thus will be treated as multiple interrogatories against the

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maximum permissible. Elan also objects to this Interrogatory as overbroad and unduly

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burdensome. Elan also objects to this Interrogatory to the extent it seeks information not relevant

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to any present claim or defense in this matter and not reasonably calculated to lead to the discovery

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of admissible evidence. Elan also objects to this Interrogatory to the extent it seeks information

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protected from disclosure by the attorney-client privilege, the attorney work product doctrine or

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any other applicable privilege, immunity, or protection.

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Subject to and without waiving the foregoing objections, Elan understands the following

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individuals to have participated in the design or development of the products identified in response

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to Interrogatory No. 12:

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Name
Yang, Wei-Wen (Eric)
Wu, Wan-Ling (Winnie)
Wu, Teng-Yen (Draco)
Wu, Chih-Lung (Jacky)
Chen, Te-Jung (Darren)
Chen, Jian-Wei (Leo)
Kuo, Jui-Ting (Jennie)
Lin, Yen-Yo (Tom)
Lin, Song-Yi (Steven)
Lee, Yu-Tien (Alex)
Ho, Yi-Hsiang (Peter)

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Title
Sr. Manager
Research and Development Asst.
Sr. Manager
Sr. Electrical Technology Manager
Senior Electrical Engineer
Software Engineer
Research and Development Asst.
Linux Software Engineer
Electrical Engineer
Electrical Engineer
FAE Engineer

ELAN’S THIRD SUPPLEMENTAL OBJECTIONS AND
RESPONSES TO APPLE’S FIRST SET OF INTERROGATORIES
[NOS. 1-17]

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

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Chuang, Ying-Jie (Roger)
Wei, Wei-Feng (Giorgio)
Hsu, Hsin-Fu (Samuel)
Huang, Kuo-Ming (Aaron)
Wang, Kuo-Tai (Miller)
Tsai, Po-Ming (Koven)
Chang, Wen-Hong (Wilson)
Eric Chung
Mai, Wei-Kuo
Wu, Tsung-Hsiao
Pai, Charles
Chiu, Yen-Chang (Godwin)
Tang, Maco
Roven Lee

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SECOND SUPPLEMENTAL RESPONSE TO INTERROGATORY NO. 14:

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Windows Software Engineer
Software Engineer
Firmware Engineer
Firmware Engineer
Electrical Engineer
Electrical Engineer
Electrical Engineer
Director
Supervisor, Firmware Development
Director
Director
Director
Assistant Manager
Assistant Manager

Elan incorporates herein by reference each of its foregoing General and Specific

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Objections. Subject to and without waiving the foregoing objections, Elan states that the following

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individuals participated significantly in the design or development of the products identified in

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response to Interrogatory No. 12:

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Name
Wei-Wen (Eric)
Yang
Te-Yu (Scarlett)
Shu
Teng-Yen (Draco)
Wu
Te-Jung (Darren)
Chen

Main Role

Senior Manager

Smart-Pad and Click-Pad
product development

NID

Manager

Touchpad testing

NID

Senior Manager

NID

Senior
Electrical
Engineer

Smart-Pad and Click-Pad
product development
Smart-Pad and Click-Pad
product function testing

NID

Director
Director

Former Senior Electrical
Technology Manager;
Smart-Pad hardware
module development
Supervise firmware
development
Head of SRD3
Engineering management

SRD3
SRD3

N/A

Former head of SRD3;
353 patent inventor

SA2

N/A

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Chih-Lung (Jacky)
Wu (no longer with
the firm)

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Wei-Kuo Mai

Manager

Charles Pai
Min-Shu Wang
Yen-Chang
(Godwin) Chiu (no
longer with the
firm)

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Business
Unit

Title

ELAN’S THIRD SUPPLEMENTAL OBJECTIONS AND
RESPONSES TO APPLE’S FIRST SET OF INTERROGATORIES
[NOS. 1-17]

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NID
SRD1

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

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Shih-Chi (Edward)
Lin (no longer with
the firm)
Yung-Lieh (Kelvin)
Chien (no longer
with the firm)
Ting-Hao Yeh (no
longer with the
firm)

N/A

353 patent inventor

SA2

N/A

353 patent inventor

SA2

N/A

353 patent inventor

SA2

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Maco Tang

Manager

James Chen

Manager

JC Lin

Manager

CF Wu

Manager

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“SRD1” stands for System R&D Division 1. This business division is responsible for
Elan’s MCU, Communication IC and Audio Video Equipment product lines. Starting
from 2009, SRD1 also started to provide additional R&D support to Elan’s touch-sensing
product lines.

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“SRD3” stands for System R&D Division 3. This business division was formally known
as the “Smart Human Interface” (SHI) unit prior to the Elan and Elantech merger in 2008.
SRD3 currently is mainly responsible for the development, application and marketing of
Elan’s touchscreen products.

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“SA2” stands for System Application Division 2. This business unit was responsible for
the PC Peripheral, Communication IC and MCU product lines. SA2 no longer exists at
Elan. On or about January 2008, the PC peripheral product line was taken over by the SHI
unit.

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SRD3

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SRD3

“NID” stands for Notebook Input Device Center. This business division is responsible for
the research and development of Elan’s Notebook Touchpad and Pointing Stick product
lines.

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SRD3

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SRD3

Elan further responds that

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Elan touch-sensing
products design and
development; review of
Elan ITO module
firmware
Platform development,
driver software
engineering
Controller application
engineering
Mechanical design

INTERROGATORY NO. 17:

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

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Accused Products, including without limitation, marketing, sales, product development, and/or

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

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without limitation by Elan’s ELAN Information Technology Group office in Cupertino, CA.
ELAN’S THIRD SUPPLEMENTAL OBJECTIONS AND
RESPONSES TO APPLE’S FIRST SET OF INTERROGATORIES
[NOS. 1-17]

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

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SUPPLEMENTAL RESPONSE TO INTERROGATORY NO. 17:
Elan incorporates herein by reference each of its foregoing General Objections. Elan

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objects to this Interrogatory to the extent that it is intended to be treated as one interrogatory, as it

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contains multiple subparts, and thus will be treated as multiple interrogatories against the

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maximum permissible. Elan also objects to this Interrogatory as overbroad and unduly

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burdensome. Elan further objects to this Interrogatory to the extent it seeks information not

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relevant to any present claim or defense in this matter and not reasonably calculated to lead to the

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discovery of admissible evidence, inter alia to the extent it seeks information regarding ELAN

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Information Technology Group, an entity that is not a party to this lawsuit. Elan also objects to

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this Interrogatory to the extent it seeks information protected from disclosure by the attorney-client

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privilege, the attorney work product doctrine or any other applicable privilege, immunity, or

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protection. Elan further objects to this Interrogatory as vague and ambiguous with respect to the

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term “Elan’s activities and business in the Untied States.”

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Subject to and without waiving the foregoing objections, Elan responds that it has not sold

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in the United States any touchpad products or any “Elan Accused Product.” Elan further responds

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that Elan employees attended and exhibited products or product literature at the Computer

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Electronics Show (“CES”) in Las Vegas in 2008, 2009 and 2010. Elan has already produced

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product literature at ELN117285 to ELN117309 that Elan employees displayed at CES, from

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which Apple can ascertain further information responsive to this Interrogatory in accordance with

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Fed. R. Civ. P. 33(d).
Elan employees have also met with employees at Dell, Nokia, Logitech and Motorola in

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the United States to discuss Elan’s products and technologies. Elan further responds that Elan

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Information Technology Group has engaged in no activities or business in the United States

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related to any touchpad product or “Elan Accused Product” including no marketing, sales, product

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development, or product support activities. Elan will produce business records pursuant to Fed. R.

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Civ. P. 33(d) from which Apple can ascertain further information responsive to Interrogatory No.

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17.

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ELAN’S THIRD SUPPLEMENTAL OBJECTIONS AND
RESPONSES TO APPLE’S FIRST SET OF INTERROGATORIES
[NOS. 1-17]

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

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SECOND SUPPLEMENTAL RESPONSE TO INTERROGATORY NO. 17:
Elan incorporates herein by reference each of its foregoing General and Specific
Objections.
Subject to and without waiving the foregoing objections, Elan supplements its responses

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above as follows: Elan has not directly sold in the United States any “Elan Accused Product.”

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Elan further responds that Elan employees attended and exhibited products or product literature at

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the Computer Electronics Show (“CES”) in Las Vegas in 2011. Elan further directs Apple to

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ELN1308316 to 1308344, the product literature that Elan employees displayed at the 2011 CES,

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and ELN1308372 through ELN1308374 from which Apple can ascertain additional information

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responsive to this Interrogatory. At the 2011 CES, Elan discussed its technology and products

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with representatives from Flextronics, Motorola, Google, LG and Sony.

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DATED: May 13, 2011

Respectfully submitted,
ALSTON & BIRD LLP

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By:

/s/ Sean P. DeBruine
Sean P. DeBruine
Attorneys for Plaintiff
ELAN MICROELECTRONICS CORPORATION

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ELAN’S THIRD SUPPLEMENTAL OBJECTIONS AND
RESPONSES TO APPLE’S FIRST SET OF INTERROGATORIES
[NOS. 1-17]

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