Elan Microelectronics Corporation v. Apple, Inc.

Filing 263

RESPONSE (re 249 MOTION to Compel Apple, Inc. to Produce Testing Tool (Public Version) ) Apple's Opposition to Elan Microelectronics Corporation's Motion to Compel Apple to Produce Testing Tool filed byApple, Inc.. (Greenblatt, Nathan) (Filed on 6/8/2011)

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1 2 3 4 5 6 7 8 MATTHEW D. POWERS (Bar No. 104795) matthew.powers@weil.com JARED BOBROW (Bar No. 133712) jared.bobrow@weil.com SONAL N. MEHTA (Bar No. 222086) sonal.mehta@weil.com DEREK C. WALTER (Bar. No. 246322) derek.walter@weil.com NATHAN GREENBLATT (Bar No. 262279) nathan.greenblatt@weil.com WEIL, GOTSHAL & MANGES LLP Silicon Valley Office 201 Redwood Shores Parkway Redwood Shores, CA 94065 Telephone: (650) 802-3000 Facsimile: (650) 802-3100 9 10 Attorneys for Defendant and Counterclaim Plaintiff Apple Inc. 11 UNITED STATES DISTRICT COURT 12 NORTHERN DISTRICT OF CALIFORNIA 13 SAN FRANCISCO DIVISION 14 ELAN MICROELECTRONICS CORPORATION, Case No. C-09-01531 RS (PSG) 15 Plaintiff and Counterclaim Defendant, 16 17 18 19 v. APPLE’S OPPOSITION TO ELAN MICROELECTRONICS CORPORATION’S MOTION TO COMPEL APPLE TO PRODUCE TESTING TOOL APPLE INC., Defendant and Counterclaim Plaintiff. 20 DATE: TIME: JUDGE: CTRM: June 7, 2011 2:00 p.m. Hon. Paul S. Grewal 5 21 22 23 24 FILED UNDER SEAL 25 SUBJECT TO PROTECTIVE ORDER 26 27 28 APPLE’S OPPOSITION TO ELAN’S MOTION TO COMPEL TESTING TOOL Case No. C-09-01531 RS (PSG) TABLE OF CONTENTS 1 Page 2 3 I. INTRODUCTION .......................................................................................................... 1 4 II. RELEVANT LEGAL PRINCIPLES ............................................................................... 2 5 III. ELAN’S REASONS FOR DEMANDING A INSPECTION CONFIRM THAT IT IS ESSENTIAL TO VIDEOTAPE THE TESTING ...................... 3 6 A. The ’352 Patent Is A One-Dimensional Method With A Temporal Restriction ........................................................................................................... 3 8 B. The Apple Products Are Entirely Different From The Claimed Method ............... 4 9 C. Elan’s Infringement Theory Depends On The Exact Placement, Pressure, And Orientation Of Fingers Contacting The Touch Sensor, And The Allegation That Certain Uses Are Common ......................................................... 6 7 10 11 IV. THERE IS NO VIABLE ALTERNATIVE TO VIDEOTAPING THE TESTS.............. 10 12 V. THE PARTIES’ DISCOVERY AGREEMENTS DO NOT SUPPORT ELAN’S POSITION, AND THERE ARE NO WORK PRODUCT CONCERNS ........................ 12 VI. APPLE COMPLIED FULLY WITH ITS DISCOVERY OBLIGATIONS AND HAS COOPERATED WITH ELAN TO PROVIDE INSPECTIONS OF THE ............................................................................................................... 15 VII. CONCLUSION............................................................................................................. 19 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 APPLE’S OPPOSITION TO ELAN’S MOTION TO COMPEL TESTING TOOL i Case No. C-09-01531 RS (PSG) 1 TABLE OF AUTHORITIES Page 2 3 RULES 4 Fed. R. Civ. P. 26.............................................................................................................. 2, 3, 13 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 APPLE’S OPPOSITION TO ELAN’S MOTION TO COMPEL TESTING TOOL ii Case No. C-09-01531 RS (PSG) 1 I. 2 INTRODUCTION 3 Elan’s motion seeks the “immediate production” of Apple’s proprietary 4 tool or, in the alternative, “unfettered access” to the tool by Elan’s testifying expert, 5 without any record of the expert’s testing or use of the tool. Motion at 1. Elan asserts that such 6 immediate production or unfettered access is necessary “to enable the analysis of all of the 7 accused products”—all of which have been adjudged as noninfringing on multiple independent 8 grounds in a parallel International Trade Commission (“ITC”) proceeding.1 Id. Yet, Apple has 9 already allowed Elan’s counsel to inspect the without hindrance, and has 10 even assisted in teaching counsel how to use the tool. Furthermore, Apple has agreed to allow 11 Elan’s expert to inspect the 12 dispute between the parties is a narrow one: whether these expert witness tests should be 13 videotaped. 14 to his heart’s content. In fact, the only actual On this issue, Elan’s motion provides the Court with no information regarding how the 15 evidence Elan intends to collect using the 16 theory in this case. In fact, Elan’s infringement theory depends critically on the individual 17 placement, pressure, and orientation of fingers on the touch sensor. Likewise, it depends on the 18 allegation that certain types of contact are “common.” is relevant to Elan’s infringement Thus, how Elan’s expert uses the 19 tool in testing the accused products—and whether those uses are 20 “common”—will provide facts or data that will later form the basis of his inevitable opinion that 21 Apple infringes. Under the Federal Rules of Civil Procedure, Apple is entitled to a full record of 22 how Mr. Dezmelyk uses the 23 relied upon directly by Mr. Dezmelyk in forming his opinions. Apple is aware of no way to 24 make an accurate record of this other than through videotape, and Elan’s motion includes no 25 viable alternative suggestion. tool because that use will be considered and 26 1 27 28 While Elan’s motion identifies the tool as relevant to all accused products, it is only relevant to Apple’s current products, which were also at issue in the parallel ITC Investigation, and not to legacy products that are accused in this lawsuit but were not at issue in the ITC. APPLE’S OPPOSITION TO ELAN’S MOTION TO COMPEL TESTING TOOL 1 Case No. C-09-01531 RS (PSG) 1 At the same time, Elan’s motion lacks any legitimate claim that creating such a record 2 would prejudice it in any way. Instead, Elan’s motion focuses on the red herrings that the 3 is not classified as “source code,” the assertion that an incomplete record 4 should suffice for cross-examination purposes because Apple’s attorneys have won some awards, 5 and the false assertion that aspects of the inspection are protected by the work product doctrine. 6 For good measure, Elan throws in a copious amount of false innuendo regarding Apple’s alleged 7 late-production of the 8 their lack of merit, none of Elan’s arguments has any bearing on the key issue here: the need for 9 a complete record of the facts or data relied upon by Elan’s expert in forming his opinions. 10 Because Apple is entitled to create such a record—especially so that it can fairly and fully cross- 11 examine Mr. Dezmelyk—Elan’s motion should be denied. in the parallel ITC Investigation. Even setting aside 12 II. 13 RELEVANT LEGAL PRINCIPLES 14 As a general matter, any facts or data that an expert relies upon in forming his opinion are 15 discoverable. Indeed, FRCP 26(a)(2)(B) explains that an expert’s report “must contain” “the facts 16 or data considered” by the expert in forming his opinions. Fed. R. Civ. P. 26(a)(2)(B)(ii). The 17 Advisory Committee Notes provide critical guidance as to the scope of these rules. The Notes 18 explain that “the intention is that ‘facts or data’ be interpreted broadly to require disclosure of any 19 material considered by the expert, from whatever source, that contains factual ingredients. The 20 disclosure obligation extends to any facts or data ‘considered’ by the expert in forming the 21 opinions to be expressed, not only those relied upon by the expert.” Fed. R. Civ. P. 26 (advisory 22 committee’s notes for 2010 amendment). 23 Consistent with that basic principle, the Rules specifically contemplate that parties cannot 24 shield information considered or relied upon by an expert from discovery under the guise of 25 communications with counsel. While the most recently amended version of the Federal Rules 26 include an exception to “protect communications between the party’s attorney and any witnesses 27 required to provide a report under Rule 26(a)(2)(B) . . . ,” they also confirm that any such 28 communications are not protected from discovery to the extent they “identify facts or data that the APPLE’S OPPOSITION TO ELAN’S MOTION TO COMPEL TESTING TOOL 2 Case No. C-09-01531 RS (PSG) 1 party’s attorney provided and that the expert considered in forming the opinions to be expressed . 2 . . .” Fed. R. Civ. P. 26(a)(4)(C). Importantly, the Notes explain that “Rules 26(b)(4)(B) and (C) 3 do not impede discovery about the opinions to be offered by the expert or the development, 4 foundation, or basis of those opinions.” Fed. R. Civ. P. 26 (advisory committee’s notes for 2010 5 amendment). Indeed, the Notes specifically contemplate that “the expert’s testing of material 6 involved in litigation, and notes of any such testing, would not be exempted from discovery by 7 this rule.” Id.2 8 III. 9 ELAN’S REASONS FOR DEMANDING A INSPECTION CONFIRM THAT IT IS ESSENTIAL TO VIDEOTAPE THE TESTING 10 11 Elan’s motion includes no background regarding the technology or issues in this case, and 12 no corresponding explanation for why it wants an inspection of the 13 conduct tests of the accused products, let alone a non-videotaped inspection. Elan’s motion 14 assumes that it is obvious that such discovery is relevant. However, a basic understanding of the 15 asserted patent, accused products, and Elan’s infringement theory is required to understand why 16 Elan believes this discovery is relevant, and precisely why it is essential to videotape any expert 17 testing of the tool. 18 A. 19 Elan’s ’352 patent pertains to a very specific method for detecting the simultaneous 20 presence of two fingers on the surface of a touchpad or touchscreen. The method entails using a 21 one-dimensional profile of data obtained from scanning a touch sensor in a specific way to 22 determine whether two fingers are present. Such a profile is shown below: tool to The ’352 Patent Is A One-Dimensional Method With A Temporal Restriction 23 24 25 26 27 28 2 Emphasis added throughout, unless otherwise noted. APPLE’S OPPOSITION TO ELAN’S MOTION TO COMPEL TESTING TOOL 3 Case No. C-09-01531 RS (PSG) 1 Exh. 1 [’352 patent] at Fig. 4.3 In the ’352 patent, the individual elements of this profile are 2 sequentially stepped through one-by-one to identify the first maxima (105), then a minima (100), 3 and then finally the second maxima (110), in precisely that order. Each peak (105 and 110) is 4 presumed to correspond to a finger contact. 5 This method is reflected in the Court’s claim construction rulings in this case. First, as 6 confirmation of the one-dimensional nature of the method, the Court has, in view of an agreement 7 by the parties, construed the claims to require identification of the extrema in a “finger profile 8 taken on a line.” See Dkt. No. 183 at 7-10. Second, as confirmation that the claims require 9 identification of the extrema in precisely the order described above (i.e., first a maxima, then a 10 minima, and then another maxima), the Court has also construed the claims to include a temporal 11 requirement. Id. at 7-10 (construing the claims to call for a temporal order, explaining that “the 12 claim language plainly implies, or even explicitly calls for, a particular order”). Notably, Chief 13 ALJ Luckern in the ITC independently construed the claims in a consistent manner. See Exh. 2 14 [ITC Claim Construction Order] at 9-18. In short, both this Court and Chief ALJ Luckern found 15 that the method of the ’352 patent is limited very specifically to a temporal analysis of one- 16 dimensional data. 17 B. 18 In contrast to the one-dimensional technique described and claimed in the ’352 patent, 19 Apple’s Multi-Touch™ products use a modern, sophisticated set of algorithms that analyze 20 touches to a touchpad or touchscreen in two dimensions. Stripped down to its most basic 21 elements, the algorithms employed in the Apple products The Apple Products Are Entirely Different From The Claimed Method 22 23 24 25 26 27 28 3 All exhibits citations are to the Declaration Of Derek C. Walter In Apple’s Opposition To Elan Microelectronics Corporation’s Motion To Compel Apple To Produce Testing Tool, submitted concurrently herewith. APPLE’S OPPOSITION TO ELAN’S MOTION TO COMPEL TESTING TOOL 4 Case No. C-09-01531 RS (PSG) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 APPLE’S OPPOSITION TO ELAN’S MOTION TO COMPEL TESTING TOOL 5 Case No. C-09-01531 RS (PSG) 1 2 3 Importantly, these algorithms are fully two-dimensional, and do not use a “finger profile 4 taken on a line” for anything. Such a concept is entirely foreign to the products at issue in this 5 motion. Moreover, the Apple products, 6 let alone in the precise order required by the claims. In short, the Apple 7 products operate in a completely different manner than the ’352 patent, as reflected in the claim 8 constructions from two independent tribunals. 9 infringement arguments on multiple independent grounds. See, e.g., Exh. 3 [ITC Final Initial 10 In the ITC, the Chief ALJ rejected Elan’s Determination] at 14 11 12 13 14 15 id. at 15-17 16 17 18 19 20 21 C. Elan’s Infringement Theory Depends On The Exact Placement, Pressure, And Orientation Of Fingers Contacting The Touch Sensor, And The Allegation That Certain Uses Are Common 22 Notwithstanding the Chief ALJ’s resounding rejection of Elan’s post-claim construction 23 infringement theory, Elan apparently intends to pursue its theory again here and ostensibly seeks 24 unrecorded testing of the accused products using the 25 theory. At the outset, Elan concedes that, under its theory, the vast majority of uses of the 26 accused Apple products are not even alleged to infringe the ’352 patent. Instead, Elan alleges that 27 the accused Apple products infringe only “sporadically or occasionally,” namely, when three very 28 specific hypothetical uses of the products are made that supposedly produce data sets that meet APPLE’S OPPOSITION TO ELAN’S MOTION TO COMPEL TESTING TOOL 6 tool to support that Case No. C-09-01531 RS (PSG) 1 certain very specific conditions. See, e.g., Exh. 4 [Elan ITC Petition for Review] at 2 (arguing 2 that “[t]he law is clear that Apple’s products will infringe a method claim even where it [sic] 3 embodies the claim sporadically or occasionally.”). Specifically, Elan alleges that the products 4 will infringe when used in such a way so as to produce 5 6 7 8 See Exh. 5 9 [Apple’s 3/4/2011 ITC Posthearing Br.] at 48. Elan illustrated the first of these hypothetical 10 scenarios with the following graphic in its ITC Posthearing Reply Brief: 11 12 13 14 15 16 17 18 19 20 21 22 Exh. 6 [3/18/2011 Elan Posthearing Reply Br.] at 13. 23 24 25 Id. 26 Elan’s post-claim construction infringement theory is admittedly so narrow that, at the 27 ITC hearing, Elan’s expert testified that changes to even one pixel value in the hypothetical data 28 sets he presented would eliminate even the allegation of infringement. APPLE’S OPPOSITION TO ELAN’S MOTION TO COMPEL TESTING TOOL 7 See, e.g., Exh. 7 Case No. C-09-01531 RS (PSG) 1 [Dezmelyk, ITC Hearing Tr.] at 653:2-654:25 (“Q. 2 3 ; id. at 667:10-16 (“Q. 4 5 6 ; see also id. at 657:5-658:2 7 8 ); id. at 668:8-12 (same). 9 Of course, whether the particular narrow data conditions posited by Elan are produced in 10 the actual operation of the accused products depends directly on how the touchpad or touchscren 11 is used, a point Elan plainly acknowledges. For instance, Elan’s expert testified in the ITC 12 hearing as follows: 13 14 15 16 17 Id. at 653:25-654:7. Elan further contended that certain hypothetical uses that lead to Elan’s 18 narrow allegedly-infringing scenarios represent allegedly “common” modes of use. For instance, 19 Elan’s expert opined at the ITC hearing that certain “common” “curl[ed]” finger orientations that 20 are used to achieve “better control” might generate Elan’s three infringement scenarios. See, e.g., 21 Exh. 8 [3/4/2011 Elan ITC Posthearing Br.] at 63 (“Based on his extensive experience with touch 22 input devices, Mr. Dezmelyk testified that it is common for users to curl their fingers and use the 23 tips of their fingers on the touch sensor surface for better control when executing two finger 24 gestures.”) (citation omitted). Elan’s ITC Posthearing Reply Brief makes clear the extent to 25 which Elan’s infringement theory relies upon both particular data patterns and the allegation that 26 such data patterns will occur during allegedly “common” usage of Apple’s products: 27 28 APPLE’S OPPOSITION TO ELAN’S MOTION TO COMPEL TESTING TOOL 8 Case No. C-09-01531 RS (PSG) 1 2 3 4 5 Exh. 6 [3/18/2011 Elan ITC Posthearing Reply Br.] at 13-14. 6 As a result, as a threshold matter and completely apart from the merits of its theory, it is 7 undisputed that Elan’s infringement allegation hinges on how the Apple products are used.4 8 Thus, Elan must show that, taking into account factors such as the angle, orientation and pressure 9 of contacts to the touch sensor, the three specific scenarios it has come up with can exist in 10 operation of the accused products and, if so, how “common” or uncommon they are. It is thus 11 clear that Elan’s intention in demanding an inspection of the 12 the accused products to somehow support Mr. Dezmelyk’s opinion that certain uses at a “steep 13 angle” with the right “orientation and pressure” will lead to the specific conditions upon which 14 Elan’s theory rests. The form and manner in which Elan’s expert uses the accused Apple 15 products during his testing will necessarily form the basis for any opinion he ultimately presents. 16 4 17 18 19 20 21 22 23 24 25 26 27 28 tool is to test Of course, this is only a threshold inquiry. Even if Elan were correct that Apple’s products are used in one or more of the three highly-contrived scenarios it accuses of infringement, Elan would have to prove that the two-dimensional method employed by Apple’s products practices the one-dimensional method of the patent. In the ITC Investigation, the Chief ALJ rejected this infringement theory as legally deficient for method claim 1 because it relies on an apples-to-oranges comparison between the happenstance results of Apple’s algorithm for particular data conditions and the method of the ’352 patent: Complainant [Elan] has argued that, for certain finger positions on a touchpad, respondent’s [Apple’s] algorithm will result in an infringing set of data; i.e., (CBr at 44.) However, the administrative law judge notes that it is a method claim that is asserted, and therefore, it is a method that is at issue, not the results of that method. (See, inter alia, Joy Techs. Inc. v. Flakt, Inc., 6 F.3d 770, 775 (Fed. Cir. 1993); Surfware, Inc. v. Celeritive Techs., Inc., 2009 WL 605803 at *5; GTX Corp. v Kofax Image Prods Inc 571 F Supp 2d 742 748 (E D Tex 2008) ) Thus said algorithm does not infringe, even if certain hypothetical resulting datasets appear to track a straight line. Exh. 3 [ITC Final Initial Determination] at 14 (emphasis in original) (footnote omitted). Consistent with that, the Chief ALJ determined that Apple’s products do not infringe the ’352 patent on multiple grounds, each of which is completely independent of any specific use scenario (hypothetical or otherwise). APPLE’S OPPOSITION TO ELAN’S MOTION TO COMPEL TESTING TOOL 9 Case No. C-09-01531 RS (PSG) 1 IV. 2 THERE IS NO VIABLE ALTERNATIVE TO VIDEOTAPING THE TESTS 3 As explained above, Elan has acknowledged unequivocally that not all uses of Apple 4 products infringe and that its infringement theory relies upon how the Apple products are used. It 5 now wishes to have its expert runs tests with the 6 testify that, when he used Apple products in a certain way, it led to infringement. To illustrate 7 the types of tests Mr. Dezmelyk will carry out, the images below show an exemplary two finger 8 touch on the touchpad with corresponding output from the tool so that he may later . 9 10 11 12 13 14 15 16 17 18 19 20 Exh. 9 [ ] at APEL397521. In the figure, 21 . Mr. Dezmelyk, however, will conduct his test with 22 bare fingers, experimenting with various angles and orientations of finger contact and with 23 different finger pressures to try and achieve the three allegedly infringing uses described above. 24 Rather than allow Apple to videotape such tests so that it will have adequate discovery of 25 the basis for Mr. Dezmelyk’s inevitable infringement opinions, Elan seeks to have its testifying 26 expert (in concert with its counsel) conduct unrecorded testing behind closed doors. Elan does 27 not explain how this request can be squared with basic rules governing expert disclosures. 28 Instead, Elan complains that “Apple makes this extraordinary request for the sole purpose of APPLE’S OPPOSITION TO ELAN’S MOTION TO COMPEL TESTING TOOL 10 Case No. C-09-01531 RS (PSG) 1 making its cross-examination more convenient.” 2 “convenience.”5 Rather, it is a necessary part of an inspection so that Apple may conduct a 3 meaningful cross-examination of Mr. Dezmelyk on how he used the products during his testing, 4 including what “steep angle” or “orientation and pressure” he used and how common or 5 uncommon that use will be in operation of the products. Notwithstanding Elan’s compliments to 6 Apple’s counsel, even the most skilled cross examiner needs discovery of the underlying facts 7 with which to cross examine the witness. That is precisely why the Federal Rules require full and 8 fair disclosure of expert opinions and the bases therefor. Here, Apple is aware of no meaningful 9 way it can test Mr. Dezmelyk on how he used the product during his testing without some video 10 Motion at 9. This has nothing do with record of those uses, and Elan presents no viable alternative in its motion. 11 Elan notes that the basis for Mr. Dezmelyk’s opinions will be in his expert report. Motion 12 at 9. However, his report, which is not due to be served for three months, will include no 13 objective record of how he used the Apple products during his testing to arrive at his infringement 14 opinions. Rather, it will include, at best, his untested (and, without a record of the inspection, 15 untestable) recollection or recount of the tests he conducted months earlier during the inspection, 16 and, at worst, his self-serving conclusions without any explanation of the uses he tested to arrive 17 at those conclusions. In either case, Apple will have no way of confirming that he did not use the 18 products in some contrived or unusual way to generate the allegedly-infringing data scenarios. 19 Elan also alleges that Apple can “test any opinions based on data obtained from the 20 through cross examination during a deposition or at trial.” Motion at 9. Yet, even if a 21 voluminous record of every data set Mr. Dezmelyk generates through every touch of the touchpad 22 is created (the output of Mr. Dezmelyk’s tests), there will still be no information regarding how 23 Mr. Dezmelyk touched the touchpad to generate that data (the input that generated that output). 24 With only half the story, Apple will still be entirely unable to test whether Mr. Dezmelyk was 25 forced to use the touchpad in non-standard or contrived ways to generate the alleged 26 infringement. 27 5 28 Indeed, it is rather inconvenient to arrange for and manage the videotaping of Mr. Dezmelyk’s inspection. APPLE’S OPPOSITION TO ELAN’S MOTION TO COMPEL TESTING TOOL 11 Case No. C-09-01531 RS (PSG) 1 Likewise, to the extent Elan is contending that Mr. Dezmelyk can be cross-examined 2 during his deposition or at trial based on live use of the 3 examination will shed no light on the extent to which Mr. Dezmelyk needed to experiment and/or 4 train himself to use the Apple products in such a way so as to consistently generate an allegedly 5 infringing scenario. Such considerations are directly relevant here because any use that relies 6 upon experimentation or training or trial-and-error to generate the allegedly-infringing conditions 7 does not reflect a normal use of the accused products and thus may not support a finding that the 8 alleged uses actually happen outside of closed-door testing by Elan’s litigation team. At a 9 minimum, the extent to which Mr. Dezmelyk had to test extraordinary uses of the products to 10 generate allegedly-infringing conditions is pertinent to the question of damages, such that Apple 11 must be given a full record of his testing. tool, such a cross- 12 Finally, Elan contends that Apple can rely on its own fact witnesses and engineers, or 13 even its own expert, to challenge whether Mr. Dezmelyk is “misusing or misrepresenting the 14 and its data.” Id. at 9. However, testimony from other witnesses is no substitute for 15 core evidence that goes directly to the credibility or weight of Mr. Dezmelyk’s testimony. 16 Furthermore, Elan fails to explain how such individuals can challenge whether Mr. Dezmelyk is 17 “misusing” the tool without a record of how he actually used the tool in the first place. As Elan’s 18 testifying expert on infringement, whether Mr. Dezmelyk is “misrepresenting” the data from the 19 tool is, of course, an important issue. But, with respect to the specific question of whether the 20 inspections should be videotaped, this is a non-issue, because the driving 21 concern here is to create an accurate record of how Mr. Dezmelyk uses the Apple products during 22 his inspection, something that the raw data sheds little light upon. 23 V. 24 THE PARTIES’ DISCOVERY AGREEMENTS DO NOT SUPPORT ELAN’S POSITION, AND THERE ARE NO WORK PRODUCT CONCERNS 25 26 In its motion, Elan states that its attorneys intend to be present with their testifying expert 27 when he conducts tests using the 28 would therefore violate the parties’ agreement that expert work product and communications APPLE’S OPPOSITION TO ELAN’S MOTION TO COMPEL TESTING TOOL tool, and that videotaping any testing 12 Case No. C-09-01531 RS (PSG) 1 between attorneys and experts are not discoverable. Motion at 8. Elan makes a similar argument 2 with regard to the parties’ agreement on the manner of conducting source code inspections. Id. at 3 8-9. Neither of these arguments supports Elan’s position. 4 At the outset, the proposed videotaping is not of work product or communications 5 between Elan’s counsel and its testifying expert, but of the tests conducted by its expert using the 6 tool—facts that will form the basis of his opinions. Despite that, to address 7 Elan’s apparent concern that videotaping Mr. Dezmelyk’s testing would compromise Elan’s 8 counsel’s ability to protect as work product conversations between counsel and the expert, Apple 9 even offered to provide a breakout room so that Elan’s team could conduct private conversations 10 with Mr. Dezmelyk during breaks in the testing. See Rathinasamy Decl, Exh. O [5/24/2011 D. 11 Walter email to P. Rathinasamy]. That Elan rejected this offer and instead believes that its 12 lawyers need to be behind closed doors with its expert while he is conducting the tests he will 13 later rely upon in support of his opinions (or, as Apple expects, the many failed tests that will 14 show how contrived Elan’s allegedly-infringing scenarios are) highlights precisely why Apple 15 would be prejudiced by unrecorded testing by Elan’s testifying expert and litigation team. 16 Indeed, the risk that such unreliable opinions will prejudice the opposing party or compromise the 17 process is precisely why protections afforded to communications between experts and counsel 18 “do not impede discovery about the opinions to be offered by the expert or the development, 19 foundation, or basis of those opinions,” and why “the expert’s testing of material involved in 20 litigation, and notes of any such testing, would not be exempted from discovery by this rule.” 21 Fed. R. Civ. P. 26 (advisory committee’s notes for 2010 amendment). 22 Contrary to Elan’s suggestion, the parties’ agreement on the discovery of expert work 23 product is fully in line with this. The full text of the agreement, which Elan does not include in 24 its motion, is as follows: 25 26 27 The parties further agree that draft expert reports, including notes, and communications between expert witnesses and counsel for the purpose of preparing expert reports are not discoverable except insofar as relied upon or considered by the expert witness in rendering his or her opinion. 28 APPLE’S OPPOSITION TO ELAN’S MOTION TO COMPEL TESTING TOOL 13 Case No. C-09-01531 RS (PSG) 1 Dkt. No. 41 at 5. Importantly, the final sentence of this agreement confirms the baseline rule that 2 anything the expert relies upon in forming his opinions will, in fact, be discoverable. See supra 3 Part II. An objective record of how Mr. Dezmelyk uses the Apple products during his testing—as 4 reflected in a video recording—is neither a draft expert report nor a communication between him 5 and Elan’s counsel for the purpose of preparing an expert report. Rather, as set forth above, Mr. 6 Dezmelyk’s testing constitutes the underlying facts and data that Mr. Dezmelyk will ultimately 7 rely upon in forming his infringement opinion in this case. Thus, if anything, the parties’ 8 discovery agreement on expert work product confirms that Mr. Dezmelyk’s 9 inspection should be recorded. 10 Elan further argues that the parties’ agreement on source code inspections allows only for 11 visual monitoring to confirm that no unauthorized copies of source code are made, and therefore 12 that no videotaping should be allowed of the 13 argument is misplaced. To be sure, the 14 reveals details about the highly confidential inner-workings of the Apple products, and is thus 15 entitled to the utmost security and protection. Declaration of Wayne Westerman In Support of 16 Apple’s Opposition to Elan’s Motion To Compel ¶¶ 4, 10 . For that reason and given the nature 17 of the tool, Apple proposed that the tool could not just be turned over to Elan like a document or 18 end-user device could be, and instead proposed an appropriate initial inspection procedure 19 pursuant to the protective order. Rathinasamy Decl., Exh. G [4/4/2011 S. Mehta email to S. 20 Debruine]. Elan agreed. See Rathinasamy Decl., Exh. H [4/12/2011 P. Rathinasamy email to D. 21 Walter]. Elan now seeks to leverage that agreement into some sort of license for secret testing by 22 Elan’s testifying expert. However, while the 23 code than normal documents or product samples for purposes of confidentiality, the tool is of 24 course of a different ilk than source code. Source code is static. The content of source code does 25 not depend on what sections one reads or how it is accessed. Both parties have access to this 26 source code, and it will be the same every single time either party reviews it. Thus, videotaping a 27 source code inspection would, in the first instance, make little sense, and, in any event, offer no 28 insight into the bases for expert opinion that the static source code itself does not provide. The APPLE’S OPPOSITION TO ELAN’S MOTION TO COMPEL TESTING TOOL tool inspections. Elan’s tool is a proprietary tool that tool is more akin to source 14 Case No. C-09-01531 RS (PSG) 1 same is not true of the 2 depending on how the underlying Apple product is used, including where the fingers are placed, 3 how they are positioned, etc. As such, Elan’s argument that the parties’ discovery agreement on 4 source code inspections should govern the live testing it now proposes to conduct with the 5 , which will have decidedly different output fails. 6 VI. 7 APPLE COMPLIED FULLY WITH ITS DISCOVERY OBLIGATIONS AND HAS COOPERATED WITH ELAN TO PROVIDE INSPECTIONS OF THE 8 9 Elan’s motion is laced with innuendo and allegations that Apple has repeatedly evaded 10 Elan’s specific requests for the 11 discovery obligations. To put it mildly, Elan’s motion paints an incomplete and inaccurate 12 picture of discovery in both the ITC action and this case. 13 tool and otherwise failed to comply with its From the earliest stages of the ITC case, Apple’s document production has included 14 documents related to the 15 produced the following document related to 16 which explicitly refers to the 17 includes the following figure illustrating its use and output: tool. For instance, on April 30, 2010, Apple tool, describes how it should be used, and 18 19 20 21 22 23 24 25 26 27 28 APPLE’S OPPOSITION TO ELAN’S MOTION TO COMPEL TESTING TOOL 15 Case No. C-09-01531 RS (PSG) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 Exh. 9 [ ] at APEL397521; see also Exh. 10 22 at APEL0399166 (Apple spreadsheet produced on April 23 30, 2010 showing results from testing with the 24 Additionally, on June 23, 2010, months before the fact discovery cutoff in the ITC Investigation 25 and more than a year before the cutoff in this case, Apple produced additional documents that 26 further referred to and/or described the 27 Algorithm Debugging] 28 APEL1164012; Exh. 13 at tool. See, e.g., Exh. 11 [Multitouch APEL1164016; APPLE’S OPPOSITION TO ELAN’S MOTION TO COMPEL TESTING TOOL tool): Walter Decl. ¶¶ 9-10. Exh. 12 ] at at APEL1164014 16 Case No. C-09-01531 RS (PSG) 1 ): Walter Decl. ¶¶ 11-13. Thereafter, in 2 November 2010, Elan deposed the lead engineer on the touchpad functionality at issue in the 3 instant motion. It failed to ask any questions about these documents, let alone any general 4 questions regarding the 5 Given the foregoing, any suggestion by Elan that Apple was somehow tardy in producing 6 discovery related to the 7 to learn of the 8 allege, this was only the result of Elan’s own failure to diligently review Apple’s thorough 9 document production. tool or whether Apple had any other similar tools. simply cannot be credited.6 If, in fact, Elan failed until late in the ITC proceedings, as Elan now appears to 10 In any event, any allegations regarding tardy document production in the ITC are 11 irrelevant to the instant motion in this Court, where Apple has undisputedly produced on time 12 abundant documentation related to the 13 with Elan’s efforts to seek additional discovery on the 14 when Elan made a request about the 15 make it available to outside counsel on an informal basis, after which the parties could meet and 16 confer regarding the details of further inspections by expert witnesses. As Elan itself stated, 17 “[a]fter the initial inspection, the parties then can meet and confer to agree upon the contour and 18 details of the live testing and of the related document production resulted from such test.” See 19 Rathinasamy Decl., Exh. H [4/12/2011 P. Rathinasamy email to D. Walter]. Thereafter, Elan 20 failed to request an informal inspection for more than two weeks. See Motion at 4-5. When Elan 21 finally did so, Apple presented the tool, and Elan carried out its informal inspection.7 , and has otherwise cooperated fully . Most importantly, in this case, Apple agreed with Elan to 22 6 23 24 25 26 27 28 Specifically, Elan appears to allege that Apple prejudiced Elan’s ability to pursue its case in the ITC because it did not produce one particular manual for the tool until a few days before the close of discovery but after the motion to compel deadline. See Motion at 2 n.1. However, these complaints are not credible given the numerous other documents (described above) that Apple produced months earlier, which describe and refer to the . In any event, if Elan truly felt that this allegedly-late production warranted a motion to compel in the ITC, it could and should have raised that issue before the ITC. 7 Elan asserts that during its informal inspection of the tool it asked that the tool be made available with iPhone, iPad, and iPod touch but that Apple has unreasonably delayed in making the tool available with those products. In fact, Elan made no such request during its inspection. At most, Elan merely made an initial inquiry as to whether it would be possible for the tool to be used with those devices. See Declaration of A. Percer In Support of APPLE’S OPPOSITION TO ELAN’S MOTION TO COMPEL TESTING TOOL 17 Case No. C-09-01531 RS (PSG) 1 Unfortunately, at this point, the process broke down, though not through the fault of 2 Apple. One week after its informal inspection, Elan unilaterally chose to unwind the meet and 3 confer framework that the parties had put in place for arranging inspections of the 4 . Indeed, on May 18, Elan informed Apple that it wanted to continue its inspection the 5 following week and would do so with its expert witness. In noticing up this inspection without 6 the agreed-upon meet and confer, Elan suggested that “[t]hereafter, we can meet and confer 7 regarding how Elan will specify data from the 8 Rathinasamy Decl., Exh. K [5/18/2011 P. Rathinasamy email to D. Walter]. 9 informed Elan that it wished to videotape any such inspections, Elan insisted on a telephonic 10 discovery hearing with the Court the very next day. At this telephonic hearing, the Court opened 11 with a salient question: why, after, all this time, was Elan suddenly demanding on an emergency 12 basis that it be given an unfettered inspection of the 13 Elan gave—besides alleged discovery misdeeds by Apple—was that its expert witness was in 14 town from the East Coast and did not want to purchase an airline ticket for him to fly back for an 15 inspection at a later date. Of course this is not an emergency situation, a point that is confirmed 16 by the months of delay that Elan indulged in before deciding to actually seek discovery on the 17 . In reality, the instant motion—which comes long after Apple agreed to tool for production.” When Apple tool. The only answer 18 make the 19 allowed to manipulate the tool behind closed doors to generate some scraps of evidence to 20 support infringement theories that have already been rightfully rejected. Any suggestion that this 21 situation is somehow a result of Apple misconduct must be rejected. available to Elan’s expert—is simply a demand that Elan be 22 23 24 25 26 27 28 Apple’s Opposition to Elan’s Motion To Compel ¶¶ 2-3 In response counsel for Apple promptly investigated the issue and learned that . See id. ¶ 4; Westerman Decl. ¶¶ 5-10. Apple has been working diligently to prepare the tool for testing with these devices and does not object to Elan’s inspection as soon as it is ready, so long as the inspection is videotaped. APPLE’S OPPOSITION TO ELAN’S MOTION TO COMPEL TESTING TOOL 18 Case No. C-09-01531 RS (PSG) 1 VII. 2 CONCLUSION For the foregoing reasons, Apple respectfully requests that Elan’s motion to compel be 3 4 denied. 5 6 Dated: June 3, 2011 WEIL, GOTSHAL & MANGES LLP 7 8 By: 9 10 /s/ Sonal N. Mehta Sonal N. Mehta Attorneys for Defendant and Counterclaim Plaintiff Apple Inc. 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 APPLE’S OPPOSITION TO ELAN’S MOTION TO COMPEL TESTING TOOL 19 Case No. C-09-01531 RS (PSG)

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