Elan Microelectronics Corporation v. Apple, Inc.

Filing 273

RESPONSE (re 209 MOTION to Compel Apple to Supplement Its Response to Elan's Interrogatory No. 13 ) PUBLIC VERSION filed byApple, Inc.. (Greenblatt, Nathan) (Filed on 6/9/2011)

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MATTHEW D. POWERS (Bar No. 104795)
[e-mail]
JARED BOBROW (Bar No. 133712)
[e-mail]
SONAL N. MEHTA (Bar No. 222086)
[e-mail]
DEREK C. WALTER (Bar. No. 246322)
[e-mail]
NATHAN GREENBLATT (Bar No. 262279)
[e-mail]
WEIL, GOTSHAL & MANGES LLP
Silicon Valley Office
201 Redwood Shores Parkway
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: [phone]

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Attorneys for Defendant and Counterclaim Plaintiff
Apple Inc.

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

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ELAN MICROELECTRONICS
CORPORATION,
Plaintiff and Counterclaim
Defendant,

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v.

Case No. C-09-01531 RS (PSG)
APPLE INC.’S RESPONSE TO ELAN
MICROELECTRONICS
CORPORATION’S MOTION TO
COMPEL APPLE TO SUPPLEMENT
ITS RESPONSE TO ELAN'S
INTERROGATORY NO. 13

APPLE INC.,
Defendant and Counterclaim
Plaintiff.

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DATE: June 28, 2011
TIME:
10:00 a.m.
JUDGE: Hon. Paul S. Grewal
CTRM: 5

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APPLE’S RESPONSE TO ELAN’S MOTION TO COMPEL
RE: INTERROGATORY NO. 13

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

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Elan Microelectronics Corp. (“Elan”) moves to compel Apple Inc. (“Apple”) to

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supplement its response to Elan Interrogatory No. 13, which seeks inter alia information related

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to codenames and labels used to identify Apple products. See Dkt. No. 209. Apple has already

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provided extensive information in response to this Interrogatory.

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separately for each accused product, Apple has already identified relevant internal Apple

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codenames, product names, model identification numbers, model numbers, and order numbers,

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and has identified on a per product basis the relevant chipsets they use.

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information is more than Elan needs to pursue its case. Nevertheless, by its motion, Elan seeks to

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compel Apple to go to the burdensome task of providing a table that further correlates the internal

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engineering code names with the most granular level of Apple product number, which carries

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with it information regarding the configuration of the product at issue that is completely

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unrelated to the issues in this case (e.g., the size of a laptop, the amount of memory it has, its

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color, etc.). This is the only information that Apple has not provided and that Elan seeks with its

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motion, and, as set forth below, it is entirely irrelevant to this case. Nevertheless, to avoid

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troubling the Court, Apple has agreed to undertake a special investigation to collect and verify

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how internal development codenames correlate to these granular external order numbers. To the

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extent there is any correlation and to the extent Apple is able to verify the correlation, Apple will

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supplement its interrogatory response by June 22, 2011 to provide the information that Elan

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seeks. Elan’s motion is thus moot.

There is no dispute that

The foregoing

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Despite the mootness of Elan’s motion, Apple provides the following explanation of the

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full scope of the information it has already provided to Elan and precisely why the additional

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information Elan seeks is irrelevant, should the Court wish to consider the relevant history. At

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the outset, Apple has collected and organized into tabular form model ID numbers, model

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numbers, and order numbers for 79 different accused Apple products—including 21 flavors of

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MacBook and 35 flavors of MacBook Pro. See Rathinasamy Decl., Exh. F [Apple’s Supp. Resp.]

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at 5-7.

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directed Elan by Bates number to documents that state the relevant types of touchpad ASICs they

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contain. Because these ASICs are the devices that actually store and execute the allegedly

Additionally, for eleven different categories of Apple accused products, Apple has

APPLE’S RESPONSE TO ELAN’S MOTION TO COMPEL
RE: INTERROGATORY NO. 13

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

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infringing functionality, this represents the core hardware information Elan needs to pursue its

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case. See Exh. 1 [Apple’s 10/28 Response to Elan ITC Interrogatory No. 31] at 11-12.1 In

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addition, as noted above, Apple has specified for the internal engineering code names, the type of

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products they correspond to. For instance, for the accused MacBook, MacBook Air, MacBook

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Pro, iPhone 3G/3GS, iPod Touch, iPad, iPhone, and Magic Trackpad products, Apple identified

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total internal codenames and verified with an Apple employee the corresponding product they

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were associated with, as set forth in the table below:

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See Exh. 2 [Apple 11/02/2010 Response to Elan ITC Supplemental Response to Interrogatory No.

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1] at 8; see also id. at 32 (verification of Apple employee Stan Ng). Apple provided similar

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information for the accused iBook and PowerBook G4 products as well. See Rathinasamy Decl.,

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Exh. B [Apple’s Resp.] at 5. Elan has never identified to Apple a particular internal codename

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that it was unable to associate with an Apple product, or a particular Apple product for which it

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was unable to determine the type of ASIC it contains.

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Despite having provided this information, Elan insists that Apple provide it with further

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information to correlate the internal engineering codes above with the most granular level of final

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product model number, which represents the final configuration of the product, including details

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All exhibits cites are to exhibits attached to the Declaration of Derek Walter in Support of
Apple Inc.’s Opposition to Elan Microelectronics Corporation’s Motion to Compel Apple to
Supplement its Response to Elan’s Interrogatory No. 13, filed concurrently herewith.
APPLE’S RESPONSE TO ELAN’S MOTION TO
COMPEL RE: INTERROGATORY NO. 13

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

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like its memory capacity, color, data carrier, etc. This information is irrelevant, as reflected in

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the minimal explanation Elan provides in its brief regarding why it allegedly needs such

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information.2

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understand and analyze the documents Apple has produced.” Motion at 6. On this issue, Elan

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states, at most, that this information is necessary for “tying externally described features with

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internal product numbers.” Id. Yet, Elan does not state what features it allegedly needs to tie to

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internal product numbers. Elan identifies no such features because there are none; Elan needs to

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know little more than the type of touch ASIC each product contains, which Apple has already

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provided. Indeed, Elan even proclaims in its brief that “under the current state of affairs, Elan

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has the information necessary to prove infringement by the accused Apple products.” Id. at 7.

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Next, Elan contends that the information it seeks is necessary to prove damages, because its

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infringement “proof would apply to the products listed under the internal project codes” and

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cannot be tied to external product codes. Id. at 7. But, as noted above, Apple has already told

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Elan whether a particular internal project codename corresponds to a MacBook Pro, iPad, iPhone,

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etc., and there is nothing about Elan’s infringement case that should require further information

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beyond the type of touch ASIC each product contains, which Apple has already provided, let

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alone information about the size or color of the product. Moreover, in connection with damages

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discovery, Apple will provide full financial information for the different configurations of these

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products, a point Apple would have explained had Elan ever articulated during the meet and

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confer process any relevance justification related to damages. Simply put, Elan’s position is

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based on a false and ill-informed presumption that to have complete financial information for the

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accused Apple products, it will need to correlate internal project codenames to the most granular

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level of Apple product number. Elan is simply wrong on this point.

First, Elan contends that the information is necessary so that it can “fully

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Importantly, the information Elan seeks is not kept or generated by Apple in the ordinary

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course of business because, as Elan acknowledges, the codenames are internal engineering

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Elan seeks this sort of irrelevant information while it at the same time withholds from
Apple critical information necessary to its case, including information regarding the presence of
Elan products in the United States, inventor depositions, and certain documents that have been
improperly redacted on the basis of privilege, as explained fully in Apple’s May 31, 2011 motion
to compel.
APPLE’S RESPONSE TO ELAN’S MOTION TO
COMPEL RE: INTERROGATORY NO. 13

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

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designations while the granular model numbers are marketing designations. See Motion at 4-5.

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Indeed, in some cases, there may be no correlation at all between internal engineering

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designations and external model numbers. As such, the information truly is burdensome to

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collect and review for accuracy, and Apple has therefore repeatedly requested that Elan explain

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the relevance of the information to assess whether the burden in generating it outweighs its likely

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benefit. See Fed. R. Civ. P. 26(b)(2)(C)(iii) (“On motion or on its own, the court must limit the

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frequency or extent of discovery otherwise allowed by these rules or by local rule if it determines

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that . . . the burden or expense of the proposed discovery outweighs its likely benefit . . .”).

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Unfortunately, as set forth above, despite repeated attempts by Apple to meet and confer on the

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relevance of the requested information, Elan never truly engaged on this issue, choosing instead

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to simply file a motion to compel. Despite these circumstances, in the interest of conserving the

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resources of both the parties and the Court, Apple will undertake the effort to identify for Elan the

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information it seeks by June 22, 2011.

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Dated: June 7, 2011

WEIL, GOTSHAL & MANGES LLP

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By:

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

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APPLE’S RESPONSE TO ELAN’S MOTION TO
COMPEL RE: INTERROGATORY NO. 13

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