Elan Microelectronics Corporation v. Apple, Inc.

Filing 251

Declaration of Palani P. Rathinasamy in Support of 249 MOTION to Compel Apple, Inc. to Produce Testing Tool (Public Version) filed byElan Microelectronics Corporation. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit I, # 10 Exhibit J, # 11 Exhibit K, # 12 Exhibit L, # 13 Exhibit M, # 14 Exhibit N, # 15 Exhibit O, # 16 Exhibit P, # 17 Exhibit Q)(Related document(s) 249 ) (Rathinasamy, Palani) (Filed on 6/7/2011)

EXHIBIT O

Browder, Sissel
From:
Sent:
To:
Cc:
Subject:

Walter, Derek [[e-mail]]
Tuesday, May 24, 2011 8:42 AM
Rathinasamy, Palani P.
Apple Elan WGM Service; Elan Apple Team
RE:

Palani:
Although the
is a sensitive tool that reveals certain details about the innerworkings of Apple products, our request that any further
inspections be videotaped
is not driven by some "presumption" that it is source code under the protective order.
In fact, our request that any expert witness testing be videotaped is driven by the nature of
the tests and the unique issues in the case, which the parties have litigated at length in
the parallel ITC Investigation. As you are no doubt aware, under the claim constructions set
forth in Judge Seeborg's claim construction ruling, Elan's infringement theory relies upon
the alleged existence of three very specific data patterns, which are allegedly generated
when fingers contact the touchpad in only a certain way. One of the issues that came up at
the ITC, and which we expect to come up again, are the circumstances in which, if ever, those
hypothetical data patterns are encountered in operation of the products. Presumably, Mr.
Dezmelyk will test the
tool, in part, for the purpose of determining how
frequently, if at all, Elan's allegedly infringing data scenarios occur and/or what kinds of
finger contact are necessary to generate the allegedly infringing scenarios. Regardless of
whether Mr. Dezmelyk collects printed data, any testimony he offers on these issues will no
doubt be informed by his testing. Indeed, the very fact that uses encountered during the
inspection are not even alleged to infringe under Elan's theory goes to the viability of
Elan's theory and credibility of Mr. Dezmelyk's testimony. Thus, to the extent Mr. Dezmelyk
considers or relies upon the inspection in forming opinions as a testifying expert, Apple is
entitled to test the bases for his opinions in deposition and on cross examination. Given
that those bases will include what specific uses and conditions were and were not tested
during the inspection, we cannot do so unless a thorough and detailed record of each
inspection is created.
Below, you express concern that videotaping Mr. Dezmelyk's inspection will compromise your
ability to protect as work product any conversations you have with him during the inspection.
However, we will be happy to provide a breakout room for you so that you can conduct private
conversations with Mr. Dezmelyk.
Finally, you express concern that unless Mr. Dezmelyk is able to inspect the
tool
on May 25, he will have to make an additional trip at a later date to the west coast. We are
happy to work with you to schedule an inspection for Mr.Dezmelyk's next trip to California or
to try to schedule something in Boston next time one of our team members is on the East
Coast.
We trust that this removes any further objections Elan has to videotaped expert inspections
of the
tool. We will work promptly to get this set up.
Thanks,
Derek
-----Original Message----From: Rathinasamy, Palani P. [mailto:[e-mail]]
Sent: Monday, May 23, 2011 2:46 PM
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To: Walter, Derek
Cc: Apple Elan WGM Service; Elan Apple Team
Subject: RE:
Derek,
We don't agree with your presumption that the
Tool is source code under
the protective order as it is a tool
on Apple's touch sensors - not
source code operating within the Accused Products. In addition, once the program is loaded
into the computer, we are then dealing with the object code, not source code, which cannot be
read by us, nor are we trying to read the source code of the Tool. Regardless, Apple's
proposal of videotaping Mr. Dezmelyk is improper.
First, Elan's counsel will be present during Mr. Dezmelyk's inspection and will have
conversations with him regarding the Accused Products and the tool. As the parties have
agreed that expert's work product and communications between experts and counsel are not
discoverable, any such videotaping would violate this agreement.
Second, even assuming that the
tool is source code, which it is not,
the stipulated protective order between the parties bars any such videotaping. That
agreement states in relevant part that "[t]he Producing Party may visually monitor the
activities of the Receiving Party's representatives during any Source Code review, but only
to ensure that no unauthorized electronic records of Source Code are being created or
transmitted in any way." See Stipulated Protective Order at 11(b)(ii). Thus, Apple's
proposal to videotape is contrary to the stipulation.
Finally, Elan's inspection is entirely consistent with the protective order. Counsel and Mr.
Dezmelyk will inspect the
Tool and Mr. Dezmelyk will print out any
relevant collected data. See Stipulated Protective Order at 11(b)(iii). As has been the
case throughout this litigation, including in the ITC, Apple can review any printouts that
Mr. Dezmelyk makes and depose him to understand the basis for any testimony that he
ultimately provides.
Because videotaping any inspection by Mr. Dezmelyk is improper for the reasons stated above
and because you already have the
tool on the MacBook Pro available for inspection,
please confirm that Apple will make the
tool available for inspection
by Elan's counsel and Mr. Dezmelyk on Wednesday, May 25. As Mr. Dezmelyk has traveled to the
Bay Area from Boston for a deposition at Apple's request, we would like to have him view the
tool during his trip instead of having him travel here at a later date. Should Apple refuse
to provide for inspection this week, we will seek the costs for an additional trip.
Apple's response regarding a delay for the iPhone and iPad is perplexing considering that
during our inspection, Apple only provided the tool on one of the Apple Accused Products
instead of all the products. Furthermore, we specifically inquired about this issue during
our inspection on Wednesday, May 11 - nearly two weeks ago. Thus, any delay is due to
Apple's own doing. As our understanding is that this tool is used regularly within Apple,
please explain the additional steps necessary to make this tool available for inspection on
the iPhone and iPad.
Please confirm that Apple will allow for inspection by Elan's counsel and Mr. Dezmelyk by
close of business today. If Apple does not agree, we will move to compel tomorrow.
Best,
Palani
-----Original Message----2

From: Walter, Derek [mailto:[e-mail]]
Sent: Monday, May 23, 2011 10:45 AM
To: Rathinasamy, Palani P.; Elan Apple Team
Cc: Apple Elan WGM Service
Subject: RE:
Palani:
As indicated in your April 12 email below, it was contemplated that there would be additional
meet and confer regarding the contours and details of Elan's ongoing testing of the
tool following your initial informal inspection.
Two additional issues are raised by your request to continue your
May 25.

inspection on

First, and most important, you state that you would like to have your expert witness review
the tool on May 25. Unfortunately, any inspection by your expert witness is materially
different from the informal inspection that you recently conducted. In particular, any
inspection by your expert, regardless of whether he is able to collect printed data, will
inform and provide the basis for the testimony he ultimately provides in this case. As such,
it would be to the benefit of both parties if a detailed and thorough record of any such
inspections is made. To this end, Apple proposes that any expert inspections be videotaped.
Unfortunately, we will not be able to set this up by May 25.
Second, you request that Apple make the tool available with an iPhone and iPad. We have
investigated whether the tool can be used with these products, and we have determined that
there are a number of additional steps that must be carried out before it will even be
possible for us to do this. While we are continuing to investigate this possibility, we will
not be able to make the tool available for use with these products on May 25.
Given the foregoing, we cannot provide the
for inspection on May 25. However, if
you confirm that you will agree to the videotaping of any expert inspections, we will
continue to work on providing the
tool with a iPhone and iPad. In addition, we
will work with you to identify another mutually agreeable date for your ongoing inspection.
Thanks,
Derek
-----Original Message----From: Rathinasamy, Palani P. [mailto:[e-mail]]
Sent: Wednesday, May 18, 2011 5:11 PM
To: Walter, Derek
Cc: Apple Elan WGM Service; Elan Apple Team
Subject: RE:
Derek,
As you know, we made a brief inspection of one version of the
tool last
week. While the software was running on a MacBook and its associated touch screen, there was
no capacity to use the tool with any iOS products (iPhone, iPad, etc.). Your colleague who
was present said that he would look into making the tool available for those products, but we
have heard nothing further.
We would like to continue our inspection on Wednesday, May 25 at 9:30 AM. We request that
the tool be made available on an iPhone and iPad in addition to the MacBook Pro. As Mr.
Dezmelyk will be in Silicon Valley for his deposition, he will join us at this inspection.
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Consistent with our earlier agreement that we will make no printouts of the data we view.
Thereafter, we can meet and confer regarding how Elan will specify data from the
tool for production. Please confirm that this date will work for Apple.
Thanks,
Palani
-----Original Message----From: Walter, Derek [mailto:[e-mail]]
Sent: Tuesday, May 03, 2011 6:01 PM
To: Rathinasamy, Palani P.
Cc: Apple Elan WGM Service; Elan Apple Team
Subject: RE:
Palani:
We can make the tool available for inspection on Wednesday, May 11 at 9:30 AM.
confirm that this date will work for Elan.

Please

Thanks,
Derek
-----Original Message----From: Rathinasamy, Palani P. [mailto:[e-mail]]
Sent: Monday, May 02, 2011 6:48 PM
To: Walter, Derek
Cc: Apple Elan WGM Service; Elan Apple Team
Subject: RE:
Derek,
Please change our request to inspect the
9:30 AM at Weil's Silicon Valley Offices.

tool to Tuesday, May 10th at

Thanks,
Palani
-----Original Message----From: Rathinasamy, Palani P.
Sent: Monday, May 02, 2011 12:02 PM
To: 'Walter, Derek'
Cc: Apple Elan WGM Service; Elan Apple Team
Subject: RE:
Derek,
We would like to inspect the
Weil's Silicon Valley Offices.

tool on Monday, May 9th at 9:30 AM at
Can the review room be available then?

Best,
Palani
-----Original Message----4

From: Walter, Derek [mailto:[e-mail]]
Sent: Friday, April 15, 2011 5:38 PM
To: Rathinasamy, Palani P.; Elan Apple Team
Cc: Apple Elan WGM Service
Subject: RE:
Palani:
We can provide Elan with an informal inspection of the
tool, subject
to a few additional parameters. As you state below, your initial inspection is simply for
the purposes of getting familiar with the tool and its capabilities. As such, the initial
inspection will not be for the purpose of collecting any evidence. For instance, to the
extent the
tool is capable of generating data printouts, no such
printouts will be allowed during the initial inspection. In these circumstances, the initial
inspection will be restricted to outside counsel only, and not expert witnesses.
During the initial inspection, outside counsel for Apple will be present not just to monitor,
but to answer any basic questions you may have regarding operation of the tool. To the
extent we are unable to answer your questions, we will do our best to find answers as quickly
as possible.
We propose to conduct the inspection here at Weil's Silicon Valley Offices.
Thanks,
Derek
-----Original Message----From: Rathinasamy, Palani P. [mailto:[e-mail]]
Sent: Tuesday, April 12, 2011 7:41 AM
To: Walter, Derek
Cc: Apple Elan WGM Service; Elan Apple Team
Subject:
Derek,
We have re-reviewed the documents you identified during the meet and confer last Tuesday,
April 5, regarding the
tool. As we discussed during the call, although
we are agreeable to the method Sonal proposed for the inspection of the tool, without seeing
or using the actual tool, we cannot meaningfully propose a test protocol as requested. As
such, for a starting point, we propose to have an initial inspection of the tool, at the
facility of Apple's choice, subject to the source code provision of the protective order, for
our outside counsel and/or expert to simply get familiar with the operation of the tool.
After the initial inspection, the parties then can meet and confer to agree upon the contour
and details of the live testing and the related document production resulted from such tests.
Please let us know by Friday, April 15, whether you are agreeable to this proposal.
Thanks,
Palani
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IRS Circular 230 disclosure: To ensure compliance with requirements imposed by the IRS and
other taxing authorities, we inform you that any tax advice contained in this communication
(including any attachments) is not intended or written to be used, and cannot be used, for
the purpose of (i) avoiding penalties that may be imposed on any taxpayer or (ii) promoting,
marketing or recommending to another party any transaction or matter addressed herein.
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NOTICE: This e-mail message and all attachments transmitted with it may contain legally
privileged and confidential information intended solely for the use of the addressee. If the
reader of this message is not the intended recipient, you are hereby notified that any
reading, dissemination, distribution, copying, or other use of this message or its
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notify the sender immediately by telephone [phone]) or by electronic mail
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