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 F

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

DeBruine, Sean
Saturday, March 26, 2011 9:15 AM
Mehta, Sonal; Morris, John
Apple Elan WGM Service; Elan Apple Team
RE: Elan-Apple: Letter of S. DeBruine to S. Mehta re RFPs 20 and 21

onal,
Thank you for your response. While I appreciate you pointing out a small handful of
responsive documents in Apple's production, your email effectively ignores the very specific
requests made in my letter. First, I asked that Apple immediately produce a working copy of
the
, all documents relating to that tool and all documents
including output taken from that tool. Please confirm that Apple will produce these items
immediately.
As to your claim that "Apple produced numerous documents describing the
, including documents that describe the tool and how it is used during testing and
verification of Apple's products. Apple produced numerous documents describing the
, including documents that describe the tool and how it is used during
testing and verification of Apple's products" we have not seen those documents and they are
not among the bates ranges you provided. Please identify the documents to which you refer
and confirm that Apple has produced all such documents. If Apple has not made a complete
production, please immediately provide a date certain by which that production will be
complete.
Likewise, you do not address my point regarding usability studies. We have seen no
documents regarding user testing of the multifinger gestures used in any of the accused Apple
products relevant to the 352 patent, nor of the ability to switch modes relevant to the 353
patent. Please produce these documents.
Finally, your objection that certain videos are available to Elan from Apple's website does
not excuse Apple from producing those videos and all other responsive documents. Unless
Apple reconsiders and makes a full production of these items we will move to compel.
Best regards,
Sean
________________________________________
From: Mehta, Sonal [[e-mail]]
Sent: Friday, March 25, 2011 3:02 PM
To: Morris, John
Cc: Apple Elan WGM Service; Elan Apple Team; DeBruine, Sean
Subject: RE: Elan-Apple: Letter of S. DeBruine to S. Mehta re RFPs 20 and 21
Sean,
I write in response to your letter of March 17 regarding testing tools.
includes a number of inaccuracies which I address below.

Your letter

At the outset, we disagree with your statement that Apple has not produced responsive
documents relating to testing. Even a cursory review of Apple's production reveals that
Apple has produced numerous testing-relating documents, including merely by way of example,
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emails, testing guidelines and test updates (e.g., APEL1770106-APEL1770170, APEL1753880APEL1753906, APEL1619159-APEL1619206, APEL1242913-APEL1242943, APEL1465185-APEL1465232,
APEL1594360-APEL1594449, APEL1596813-APEL1596862, APEL1612457- APEL1612506). With respect to
your specific complaint that Apple has not produced documents relating to its
, your letter again misstates the record. As Elan is well aware, and itself elicited
during its direct examination of Dr. Westerman during the ITC evidentiary hearing, Apple has
a tool for the
on
Apple's products. Apple produced numerous documents describing the
,
including documents that describe the tool and how it is used during testing and verification
of Apple's products, and even documents that
using the tool (e.g., APEL0397519-APEL0397525, APEL0399166, APEL1749277, APEL1706214APEL1706254, APEL1749323-APEL1749364, APEL1619159-APEL1619206, APEL1753880-APEL1753906,
APEL1594360-APEL1594449). In short, Apple's production of testing-related documents has been
substantial.
Given the above, the thrust of your letter appears to be your suggestion that "in its posthearing brief in the ITC[,] Apple now argues that actual data of the type captured from this
simulation tool is necessary to demonstrate the relevant operation of its products." This
not only misstates Apple's position, but also the record of ITC proceedings. As Apple has
consistently explained, noninfringement of Apple's products is demonstrated through the
operation of Apple's algorithms, which operate the same way irrespective of the use. Those
algorithms do not ever practice the claimed method, no matter what the size, shape, pressure,
orientation, etc. of contacts on the touchpad. It is only under Elan's strained infringement
theory that certain highly-specific, highly-constrained hypothetical uses are alleged to
infringe. As a result, Elan bears the burden to prove such hypothetical uses have actually
occurred in practice. Elan had ample opportunity to attempt to satisfy its burden of proof,
including based on Apple's substantial production of testing-related documents, Elan's own
testing of the accused products, or otherwise in discovery in the ITC action.
Elan
completely failed to satisfy that burden in the ITC and now appears to seek to shift blame on
Apple for Elan's own failure of proof. We need not debate the merits of Elan's attempt to
burden-shift here -- the ITC record speaks for itself, and CALJ Luckern and the Commission
will soon decide whether Elan has satisfied its burden. With respect to the district court
action, to the extent Elan continues to allege infringement based on narrow hypothetical
uses, the burden remains on Elan to establish that the conditions required for such uses to
fall within Elan's infringement theory have existed in the actual operation of Apple's
accused products.
In any event, with respect to the issue of testing-relating discovery raised in your email,
we encourage you to review our production of such documents, including documents in the
categories noted above. If, after reviewing our production, you believe there are specific
categories of documents that are missing or for which you would like us to check again, we
would be happy to discuss your request at that time. Along the same lines, with respect to
your request that Apple produce videos demonstrating the operation of Apple's products from
Apple's website, the videos on Apple's website are equally accessible to Elan and we direct
you to our website. To the extent Elan is seeking something beyond that, please let us know
specifically what it is and why you believe you need it, and we will consider your request.
Regards,
[cid:image001.jpg@01CBEADE.1F1091D0]
Sonal N. Mehta
Weil, Gotshal & Manges LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065-1134
[e-mail]<mailto:[e-mail]>
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[phone] Direct
[phone] Fax
From: Morris, John [mailto:[e-mail]]<mailto:[mailto:[e-mail]]>
Sent: Thursday, March 17, 2011 4:39 PM
To: Mehta, Sonal
Cc: Apple Elan WGM Service; Elan Apple Team; DeBruine, Sean
Subject: Elan-Apple: Letter of S. DeBruine to S. Mehta re RFPs 20 and 21
Dear Ms. Mehta:
Please see the attached letter from Sean DeBruine regarding RFPs 20 and 21.
Regards,
William (John) Morris
Legal Secretary to Sean P. DeBruine
ALSTON & BIRD LLP
275 Middlefield Road, Suite 150
Menlo Park, California 94025-4004
www.alston.com<http://www.alston.com>

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