Elan Microelectronics Corporation v. Apple, Inc.

Filing 316

Declaration of Derek C. Walter in Support of 315 MOTION to Shorten Time for Apple's Motion to Compel Elan Employee Depositions in N.D. Cal. filed byApple, Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B)(Related document(s) 315 ) (Walter, Derek) (Filed on 6/28/2011)

EXHIBIT B

From:
Sent:
To:
Cc:
Subject:

Mehta, Sonal
Tuesday, June 28, 2011 10:26 AM
Elan Apple Team
Apple Elan WGM Service
motion to shorten time

Counsel,
Per Derek's email below, we are planning to file today a motion to compel Elan to present its employees in the Northern
District of California pursuant to the parties' agreement. We plan to file a motion to shorten time such that Elan's
opposition would be due Friday and the motion would be heard on July 5th, concurrently with the motion to compel
Elan to present its inventors for deposition in the Northern District of California pursuant to the same agreement. Please
let us know by COB today whether Elan consents to our motion to shorten time.
Regards,
Sonal N. Mehta
Weil Gotshal & Manges
201 Redwood Shores Pkwy
Redwood Shores, CA 94065
t: [phone]
f: [phone]
[e-mail]
From: Walter, Derek
Sent: Thursday, June 23, 2011 8:09 PM
To: Bu, Jane; Elan Apple Team
Cc: Apple Elan WGM Service
Subject: RE: Meet and confer re depositions of Elan witness

Jane:
Thank you for your email below providing further detail on Elan's designation of witnesses to allow us to meet and
confer on the scope of the Rule 30(b)(6) deposition and to consider your request that the depositions be conducted in
Taiwan.
First, with respect to the scope of the Rule 30(b)(6) testimony, we respond below on the open items:
•

Topics 13, 15: Although Apple is entitled to testimony on these topics notwithstanding Elan's interrogatory
responses, we can agree, in the spirit of efficiency, to your proposal that the parties discuss the need for
testimony on these topics after Apple reviews Elan's supplemental interrogatory responses on the condition that
we receive those supplemental responses right away such that our request for Rule 30(b)(6) testimony is not
subject to further delay. Please confirm that we will receive Elan's supplemental responses by June 28th.

•

Topics 4,5,8,9: Apple does not agree to withdraw these topics. While Apple did obtain certain testimony
relating to Elan's acquisition and licensing of the '352 patent in the ITC investigation, that testimony was in the
context of Elan's domestic industry allegations and not in the context of patent damages, which are at issue in
the district court case for the first time. Moreover, Apple's topics also relate to the '353 patent, which was not
at issue in the ITC. Please confirm that Mr. Chang will testify on these topics in addition to Topics 7, 11, 12, 14
and 16 and 21, or let us know if Elan will be designating another witness on these topics.
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•

Topic 6: We take your statement as a representation that Elan does not have any knowledge or information on
the conception and reduction to practice of the ’352 patent beyond the sources specifically identified in Elan's
written response to this deposition topic, i.e., "Mr. Steven Bisset and Mr. Paul Haughey’s depositions taken on
September 27, 2010 and October 12, 2010 and to Apple’s March 26, 2010 Subpoena issued to Logitech and any
documents produced by Logitech in response to that subpoena." In reliance on that representation and with
the understanding that we will oppose any attempt by Elan to rely on any additional information related to
conception and reduction to practice of the '352 patent beyond that specifically identified, Apple will withdraw
Topic 6. If this understanding is incorrect, then Elan must designate a witness to testify on its behalf.

Second, with respect to location, we have gone back and considered again your request that the depositions be taken in
Taiwan, but for the reasons we have previously discussed, cannot agree to abrogate the parties' agreement that party
witnesses will be made available for deposition in the Northern District of California. Indeed, we do not think your
arguments for why the depositions should take place in Taiwan are well-taken, even if Elan had raised those points
before the parties stipulated (twice) that the depositions will go forward here. We will be filing next week a motion to
compel Elan to present the witnesses locally pursuant to that agreement and will be requesting a shortened briefing
schedule and hearing date.
We are available to discuss these issues by telephone again if you would like.
Thanks,
Derek

From: Bu, Jane [mailto:[e-mail]]
Sent: Wednesday, June 22, 2011 8:17 PM
To: Walter, Derek
Cc: Elan Apple Team; Apple Elan WGM Service
Subject: Re: Meet and confer re depositions of Elan witness

Derek:
To follow up my June 15 email, we still have not heard anything from Apple regarding Apple's individual
and 30(b)(6) witnesses deposition schedule. Please provide us the list of the designated 30(b)(6)
witnesses and the proposed schedule as soon as possible.
Further, as promised, here is the list of the confirmed Elan designated witnesses for Apple's 30(b)(6)
topics:
Topics 1, 19: Eric Yang (Yang, Wei-Wen; 楊維文)
Topics 2, 3, 17, 18: Ian Chung (Chung, Shuan-Lung; 鍾選龍)
Topics 7, 11, 12, 14, 16, 21: Wayne Chang (Chang, Wei-Cuo; 張衛國)
Topic 10: Ian Chung, Grace Lai (Li-ling Lai 賴麗玲). Please note that Ms. Lai is designated for the limited
purpose of authenticating and explaining the fields of Elan's sale spreadsheets.
Topic 13, 15: To streamline the case, Elan is in the process of supplementing its interrogatory responses
corresponding to these topics. We believe information provided in the supplemented responses will
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make the depositions unnecessary. We'd be happy to discuss designated witnesses and deposition
logistics if upon reviewing the response Apple decides that further testimony is necessary to explore
these topics.
Topics 20: each individual witness designated for the topic
Topics 4,5,8,9: Elan will not produce a witness for these topics since Mr. Chang has given extensive
testimonies for the same topics in the ITC Action. Please confirm that Apple will drop these topics.
Topic 6: Elan does not have any additional responsive information. Please confirm that Apple will drop
this topic.
As I have indicated below, we would be able to make these witnesses, including the individually
designated witnesses available for deposition in Taiwan at the end of June and first week of July. A week
has passed and we have not heard anything from Apple regarding its final position, as such we can't offer
to produce these witnesses next week in Taiwan. However, we remain willing to make them available
promptly. Further, in light of the recent production of Mr. Nick Lin's patent summaries, we also believe
his deposition will no longer be necessary. Please let us know whether Apple will consider dropping Mr.
Lin's deposition.
Finally, the parties have not discussed the 1/2 versus 2/3 time against the total 21-hour 30(b)(6) time
limit due to the translation needs. Elan maintains its position of 2/3 time against the limit, but we are
willing to further discuss this issue.
Best,
Jane
_____________________________________________
From: Bu, Jane
Sent: Wednesday, June 15, 2011 10:27 PM
To: 'Walter, Derek'
Cc: Elan Apple Team; Apple Elan WGM Service
Subject: Meet and confer re depositions of Elan witness

Derek,
I am writing to confirm our conversation earlier today regarding the depositions of Elan witness and
to emphasize some salient points.
As we discussed, the statement that Elan would bring "Elan employees" and inventors to the NDCA
was made with the intention of covering witnesses for Elan's claims. We have not revisited that
language since Apple only recently noticed any such depositions in this case. I also note, and as we
have discussed in our Opposition to Apple Motion to Compel, at the time Elan made the original
CMC statement, three of the 353 inventors had already left the company and such information was
clearly represented to Apple in Elan's Initial Rule 26 Disclosure dated September 2009. The fourth
and last inventor left Elan's employ shortly thereafter, so Elan is no longer in a position to provide
any of the inventors in the United States.

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As you are no doubt aware, the presumption is that corporate employees will be deposed where they
work. Apple has not given us any reason to change this presumption. That is especially the case
here where Apple has noticed a large number of depositions, demanded that they occur in a short
period of time and where many of the depositions it is demanding are redundant of testimony
already taken from witness previously made available in the United States. Even under Apple's
reading of the CMC statement, that provision does not give Apple the unfettered right to notice entire
departments at Elan, nor to seek purely redundant depositions. Yet that is precisely what Apple has
done. Apple has noticed the individual depositions of Mr. Eric Yang, Draco Wu, and Leo Chen, all of
whom are engineers in the same department.
In addition, in our conversation you expressly demanded that Elan provide witnesses in the United
States to testify on topics nearly identical to the topics on which Elan employees have already been
deposed, in the United States. For example, Apple's First Notice of Deposition of Elan issued in the
ITC action, Topics 1-9, are essentially identical to Apple's current 30(b)(6) Topics 4,5,8, and 9. (We
also note that Elan has affirmatively responded in its response to Apple Interrogatory No. 7, that Elan
has not licensed or attempted to license the 353 Patent). Therefore, these topics are completely
redundant. Apple has provided no good reason why Elan should be put to the burden of providing
witness for these topics at all, much less incur the burden and expense of bringing those witnesses to
the United States. Indeed, in the January 20, 2011 joint CMC statement, we have agreed that "[e]ach
party has made voluminous production of documents, and depositions of party witnesses, inventors
and non-parties have taken place. Much of this discovery has been undertaken in connection with the
ITC investigation. Remaining topics of discovery include completion of document productions,
depositions of certain individuals named as inventors and party witnesses relating to the accused
functionalities, as well as damages-related discovery including sales and profits derived from the
accused products." With that said, if Apple can narrow these topics to the subjects not covered in the
previous depositions, we will consider providing witnesses for limited depositions in Taiwan.
This underscores our position that economy, efficiency and flexibility favor the depositions going
forward in Taiwan. Indeed, including the five individual employees Apple has noticed, we are
looking at about 9-10 witness depositions. While Elan is inquiring into witnesses' visa status, such
procedure will not be trivial, neither is the disruption to normal work flow and cost Elan will incur to
bring these witnesses to the NDCA.
Further, as you are already aware from Mr. Chung's deposition, Elan's touchpad and touchscreen
departments are located in separate locations. Thus any given Elan employee is much more familiar
with either Elan's touchpad or touchscreen product lines, not both. The ability of a witness to obtain
additional information should they not recall a particular subject matter in a 30(b)(6) topic will be
greatly enhanced by having corporate resources readily available. If Elan is forced to bring its
witnesses to NDCA, Elan will certainly designate the most knowledgeable witnesses and prepare
them on the products they don't know from daily experience. Given the sheer number of depositions
Apple is demanding, Elan simply will not be able to provide more than 1 witness for all Elan product
related topics. However, if the depositions were to taken place in Taiwan, Elan will have the added
benefit to have immediate access to other employees. As such, if necessary and within reason, Elan is
willing to produce two witnesses for each topic relating to Elan products to best comprehensively
cover Apple's deposition topics. As I also discussed, for shorter depositions, perhaps Apple should
consider video conferencing as an alternative approach.
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During the meet and confer, I have provided you the identifies of Elan's designated 30(b)(6)
witnesses. We will re-confirm the witness designations with Elan and will provide you the final list
of the designated witnesses and their Chinese names shortly.
Finally, we have not heard any response from Apple relating Elan's 30(b)(6) depositions or Elan's
June 10, 2011 letter discussing the serious document production deficiencies from Apple. Other than
a few licenses, we have not received any damages documents from Apple, for example sales volume,
revenue and cost data. In light of the approaching discovery cut-off, please confirm that Apple is
available on Friday for a meet and confer to discuss these outstanding discovery issues.
Best,
Jane
Alston & Bird LLP
275 Middlefield Road | Suite 150 | Menlo Park, CA 94025
650-838-2019 Direct
650-838-2001 Fax
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