Elan Microelectronics Corporation v. Apple, Inc.

Filing 319

RESPONSE (re 313 MOTION to Compel Elan Employee Depositions in N.D. Cal ) filed byElan Microelectronics Corporation. (Attachments: # 1 Appendix A)(DeBruine, Sean) (Filed on 7/1/2011)

APPENDIX A

Appendix A ISO Elan Opposition To Apple Motion To Compel Elan Depositions in NDCA
Comparison between Apple ITC 30(b)(6) Topics and NDCA Case Topics
Topics relating to Apple’s claims only
Topics relating to Elan’s claims or both parties’claims
Topics that are completely redundant to ITC topics and Elan will not be producing a witness

Apple NDCA 30(b)(6) Topics At Issue

Similar or Redundant Apple ITC
30(b)(6) Topics
Apple 2nd 30(b)(6) Notice Topic 4:

1. The design, development, structure,
function, and operation of Elan
Touchpads or touchscreens that have
been sold or offered for sale in, or
imported into, the United States.

The research, design, development,
implementation, and testing of any Elan
product or technology (including, but not
limited to, any product, apparatus, method,
invention, system, service, prototype,
drawing, design, schematic, invention,
embodiment or item) allegedly covered by
the ‘352 Patent, including, but not limited
to, the identity of each person who
participated in or has knowledge of the
research, design, development,
implementation, and testing; and the
identity, name, design, features, function,
structure, and operation of any such
products or technology.

Apple 2nd 30(b)(6) Notice Topic 6:
2. The sales and marketing of Elan
Touchpads or touchscreens that have
Any attempts by Elan, persons employed by
been sold or offered for sale in, or
Elan, or persons acting on behalf of Elan to
imported into, the United States, including market, sell, or otherwise commercialize

LEGAL02/32717927v1

Elan Witnesses
Already
Testified in
California
Mr. Maco Tang
on November 22,
2011

Whether Elan Will
Produce Witness For
This Topic
Yes; relates to Apple
claims
Elan designee: Mr. Eric
Yang (possibly one
additional witness)

Mr. Ian Chung,
Nov 15-16, 2010

Yes; relates to Apple
claims
Elan designee: Mr. Ian
Chung (possibly one

Appendix A ISO Elan Opposition To Apple Motion To Compel Elan Depositions in NDCA
Comparison between Apple ITC 30(b)(6) Topics and NDCA Case Topics

Apple NDCA 30(b)(6) Topics At Issue

Similar or Redundant Apple ITC
30(b)(6) Topics

without limitation, all efforts to sell,
market or promote the inclusion or use of
Elan Touchpads or touchscreens in
products sold, offered for sale, imported,
or intended for sale, offer for sale,
importation or use in the United States.

any product or prototype covered by the
'352 Patent including, but not limited to, the
first demonstration of such product, the first
use of such product, the first sale or offer to
sell or license of such product, the date(s)
when Elan began marketing, offering for
sale, or selling such product or prototype,
the identity of each person involved in such
marketing or selling, and Documents
relating to any of the foregoing.
Apple 2nd 30(b)(6) Notice Topic 6 (see
above)

3. Elan’s communications and contacts
with third parties relating to the actual or
potential supply or inclusion of Elan
Touchpads or touchscreens in products
that have been sold or offered for sale in,
or imported into, the United States.
4. The transfer or acquisition of rights to
or in US Patent No. 5,825,352, including
without limitation, all agreements by or
between Logitech, Inc., K-Tech Devices
Corp., Elantech Devices Corp. and/or
Elan.

Apple 2nd 30(b)(6) Notice Topic 7:
7. The facts and circumstances
concerning Elan’s acquisition of the '352
Patent

Apple 2nd 30(b)(6) Notice Topic 7:
5. The merger or acquisition of K-Tech
Devices Corp. with or by Elantech

7. The facts and circumstances concerning

-2LEGAL02/32717927v1

Elan Witnesses
Already
Testified in
California

Whether Elan Will
Produce Witness For
This Topic
additional witness)

Mr. Ian Chung,
Nov 15-16, 2010.

Mr. Wayne
Chang, Nov 15
and 16, 2010

Mr. Wayne
Chang, Nov 15
and 16, 2010

Yes; relates to Apple
claims
Elan designee: Mr. Ian
Chung (possibly one
additional witness)
No. This Topic is
completely redundant to
the testimonies already
taken in the ITC Action.

No. This Topic is
completely redundant to
the testimonies already

Appendix A ISO Elan Opposition To Apple Motion To Compel Elan Depositions in NDCA
Comparison between Apple ITC 30(b)(6) Topics and NDCA Case Topics

Similar or Redundant Apple ITC
30(b)(6) Topics

Apple NDCA 30(b)(6) Topics At Issue
Devices Corp.

Elan's acquisition of the '352 Patent

7. The conception and reduction to
practice of US Patent No. 7,274,353.

N/A

Elan Witnesses
Already
Testified in
California

Whether Elan Will
Produce Witness For
This Topic
taken in the ITC Action

N/A

Yes; relates to Elan
claims; however, will be
a very short subject
matter deposition since
no 353 patent inventors
are still employed by
Elan.
Elan designee: Mr.
Wayne Chang

First Set of 30(b)(6) Notice, Topics 6-9
8. Licensing or efforts to license US
Patent No. 5,825,352, US Patent No.
7,274,353 and related patents, including
without limitation, the nature, terms, and
scope of any license or offer to license; all
efforts to license and all negotiations
related to the licensing; discussions or
communications relating to possible
business agreements or arrangements
relating to or arising out of licensing
discussions; and discussions or

6. The entities with whom Elan has
discussed or negotiated a license or
settlement agreement including or
otherwise relating to the '352 Patent but
which have not entered into a license or
settlement agreement, or have only entered
into a license or settlement agreement of
narrower scope than proposed by Elan, and
the information of which Elan is aware
relating to why those entities have not
entered into license or settlement

-3LEGAL02/32717927v1

Mr. Wayne
Chang, Nov 15
and 16, 2010

No. This Topic is
completely redundant to
the testimonies already
taken in the ITC Action.
Further Elan has
responded in its
interrogatory response
that it has not licensed or
even attempted to license
the 353 patent.

Appendix A ISO Elan Opposition To Apple Motion To Compel Elan Depositions in NDCA
Comparison between Apple ITC 30(b)(6) Topics and NDCA Case Topics

Apple NDCA 30(b)(6) Topics At Issue
communications with prospective
licensees, including but not limited to
demand letters, notice letters,
presentations and claim charts.

Similar or Redundant Apple ITC
30(b)(6) Topics
agreements of the full scope proposed by
Elan.
7.
Elan's communications with any
entity relating to asserting or enforcing the
'352 Patent or other patents in its portfolio,
including cease and desist letters and claim
charts.
9.
All facts and circumstances related
to any licenses and licensing negotiations
(including, but not limited to, evaluating,
offering, requesting, pursuing, and executing
licenses) including or otherwise concerning
the '352 Patent, including, but not limited
to, the identity of each person involved in or
with knowledge of any license or licensing
negotiations, the facts and circumstances of
any license or licensing negotiations,
Communications made relating to licenses
or licensing negotiations (including
Communications relating to the scope,
infringement, validity, or enforceability of,
or prior art to, the '352 Patent, as well as any
royalty reports), the outcome of any
licensing negotiations, the terms of any
license agreements resulting from any

-4LEGAL02/32717927v1

Elan Witnesses
Already
Testified in
California

Whether Elan Will
Produce Witness For
This Topic

Appendix A ISO Elan Opposition To Apple Motion To Compel Elan Depositions in NDCA
Comparison between Apple ITC 30(b)(6) Topics and NDCA Case Topics

Apple NDCA 30(b)(6) Topics At Issue

Similar or Redundant Apple ITC
30(b)(6) Topics

Elan Witnesses
Already
Testified in
California

Whether Elan Will
Produce Witness For
This Topic

licensing negotiations (including the name
and location of the licensee and the
amount of royalties or other type of
compensation paid), products licensed,
dates and volumes of sales of licensed
products, the revenue, gross margin, net
profit, or loss attributable to any licenses,
all facts related to any action Elan has
used to enforce any license, all facts
related to Elan's investments to exploit the
'352 Patent through licensing, and
Documents relating to any of the foregoing.
9. The settlement of any claim relating to
US Patent No. 5,825,352, US Patent No.
7,274,353 and related patents, including
without limitation, settlement
negotiations.

See above, see also, First Set of 30(b)(6)
Topic Nos. 4, 5, 8:
4. Any negotiations related to licenses or
potential licenses encompassing the '352
Patent.
5. The terms of any licenses or draft
licenses encompassing the '352 Patent.
8.
The settlement and license
agreements between Elan and Synaptics,
Elan and Averatec, and Elan and Prostar,
the history of those agreements before and

-5LEGAL02/32717927v1

Mr. Wayne
Chang, Nov 15
and 16, 2010

No. This Topic is
completely redundant to
the testimonies already
taken in the ITC Action.

Appendix A ISO Elan Opposition To Apple Motion To Compel Elan Depositions in NDCA
Comparison between Apple ITC 30(b)(6) Topics and NDCA Case Topics

Apple NDCA 30(b)(6) Topics At Issue

Similar or Redundant Apple ITC
30(b)(6) Topics

Elan Witnesses
Already
Testified in
California

Whether Elan Will
Produce Witness For
This Topic

after their execution, and any discussions or
efforts to renegotiate those agreements that
have occurred or have been proposed or that
Elan anticipates.
10. The revenues, sales, costs, profits,
margins, expenses and other financial
information for the Elan Touchpads or
touchscreens that have been sold or
offered for sale in, or imported into, the
United States.

Apple 1st Set of 30(b)(6) Deposition
Topic No 5.

11. Elan’s knowledge of Apple’s alleged
infringement of each asserted claim of
US Patent No. 5,825,352 and US Patent
No. 7,274,353.

Apple 2nd 30(b)(6) Notice Topic 9:

5. The identity and the price, cost, and any
other numerical valuation of touchpads
and touchscreens allegedly covered by the
'352 Patent manufactured by, for, or under
authorization from Elan, including the
relative value of these components as
compared to the products that contain them.

9.
Elan's efforts to identify Apple
products that Elan contends infringe the
'352 Patent, any information or evaluation
gathered or considered by Elan in its
decision to accuse Apple of infringement,
any reverse engineering or tests of Apple
products or components performed or
requested by Elan, the facts, circumstances,

-6LEGAL02/32717927v1

Mr. Ian Chung;
Nov. 15-16.

Yes, relates to both
parties’ claims.
Elan designee: Mr. Ian
Chung and Ms. Liling
Lai (limited to the
authentication and
explanation of the sales
spreadsheets)

Mr. Wayne
Chang, Nov 15
and 16, 2010

Yes, relates to Elan
claim; however the
subject matter of the
deposition will be short
and the responsive and
non-privileged
information has been
provided via
interrogatory responses.

Appendix A ISO Elan Opposition To Apple Motion To Compel Elan Depositions in NDCA
Comparison between Apple ITC 30(b)(6) Topics and NDCA Case Topics

Apple NDCA 30(b)(6) Topics At Issue

Similar or Redundant Apple ITC
30(b)(6) Topics

Elan Witnesses
Already
Testified in
California

and date(s) of Elan's first awareness of
Apple's alleged infringement, the identity
of each person who has knowledge of any
of the foregoing, and Documents relating to
any of the foregoing.
12. Elan’s decision to bring this action
against Apple, including, but not limited
to, Elan’s decision to assert each of US
Patent No. 5,825,352, US Patent No.
7,274,353 and related patents against
Apple.

Apple 2nd 30(b)(6) Notice Topics 9 and
11:
9.
Elan's efforts to identify Apple
products that Elan contends infringe the
'352 Patent, any information or evaluation
gathered or considered by Elan in its
decision to accuse Apple of infringement,
any reverse engineering or tests of Apple
products or components performed or
requested by Elan, the facts, circumstances,
and date(s) of Elan's first awareness of
Apple's alleged infringement, the identity of
each person who has knowledge of any of
the foregoing, and Documents relating to
any of the foregoing.
14.
Any and all analyses or opinions
conducted by, at the request of, or on behalf
of Elan on the validity or invalidity,
enforceability or unenforceability,

-7LEGAL02/32717927v1

Whether Elan Will
Produce Witness For
This Topic
Elan designee: Mr.
Wayne Chang

Same as above

Same as above

Appendix A ISO Elan Opposition To Apple Motion To Compel Elan Depositions in NDCA
Comparison between Apple ITC 30(b)(6) Topics and NDCA Case Topics

Similar or Redundant Apple ITC
30(b)(6) Topics

Apple NDCA 30(b)(6) Topics At Issue

Elan Witnesses
Already
Testified in
California

Whether Elan Will
Produce Witness For
This Topic

infringement or non-infringement,
patentability, or scope of the '352 Patent or
any claim thereof, including, but not limited
to, all advice of counsel regarding the
enforceability of the '352 Patent upon which
Elan may rely for any purpose in this
Investigation.
13. All efforts by or on behalf of Elan to
satisfy the marking requirements of 35
U.S.C. § 287 for each of US Patent No.
5,825,352, US Patent No. 7,274,353 and
related patents.

N/A

N/A

14. Elan’s first awareness of the Apple
patents-in-suit and actions taken in
response, including without limitation,
any study, investigation or analysis of the
Apple patents-in-suit or related patents.

N/A

N/A

-8LEGAL02/32717927v1

Yes, relates to Elan’s
claim; however the
subject matter of the
deposition will be short
and the responsive
information has been
provided via
interrogatory responses.
Elan designee: TBD
Yes, relates to Apple’s
claim; the subject matter
of the deposition will be
short and the responsive
and non-privileged
information has been
provided via
interrogatory responses.

Appendix A ISO Elan Opposition To Apple Motion To Compel Elan Depositions in NDCA
Comparison between Apple ITC 30(b)(6) Topics and NDCA Case Topics

Similar or Redundant Apple ITC
30(b)(6) Topics

Apple NDCA 30(b)(6) Topics At Issue

Elan Witnesses
Already
Testified in
California

Whether Elan Will
Produce Witness For
This Topic
Elan designee: Mr.
Wayne Chang

15. The demonstration, use, and identity
of Elan products and literature shown,
displayed and/or demonstrated at
tradeshows or conferences in the United
States, including without limitation, CES.

N/A

N/A

16. All indemnity agreements in which
N/A
Elan has an indemnity obligation to
another party related to patent
infringement in the United States,
including without limitation, for the Apple
patents-in-suit.
17. Elan’s use or reference to Apple,
N/A
Apple products or Apple patents in the
sales and marketing of Elan products.

N/A

18. Communications or contacts with
existing or potential customers regarding
Apple products or Apple patents.

Elan designee: TBD
Yes, relates to Apple
claims.
Elan designee: Mr.
Wayne Chang

N/A

N/A

N/A

-9LEGAL02/32717927v1

Yes, relates to Apple’s
claim; the subject matter
of the deposition will be
short and the responsive
and non-privileged
information has been
provided via
interrogatory responses.

Yes, relates to Apple
claims.
Elan designee: Mr.
Wayne Chang
Yes, relates to Apple
claims.

Appendix A ISO Elan Opposition To Apple Motion To Compel Elan Depositions in NDCA
Comparison between Apple ITC 30(b)(6) Topics and NDCA Case Topics

Similar or Redundant Apple ITC
30(b)(6) Topics

Apple NDCA 30(b)(6) Topics At Issue

Elan Witnesses
Already
Testified in
California

19. The emulation, use, study, reverseengineering, or other consideration of
any Apple product in the design and
development of Elan products.

Apple 2nd 30(b)(6) Depo Notice Topic 11

20. Authentication of documents and
things regarding the foregoing topics.

N/A

N/A

21. The identity of persons knowledgeable N/A
regarding the foregoing topics.

N/A

11. All inspections, analyses, comparisons,
examinations, reverse engineering, tests, or
evaluations of Apple products, or any
components contained therein, conducted
by or for Elan

- 10 LEGAL02/32717927v1

Mr. Wayne
Chang, Nov 15
and 16, 2010

Whether Elan Will
Produce Witness For
This Topic
Elan designee: Mr. Ian
Chung (possibly one
additional witness)
Yes, relates to Apple
claims.
Elan designee: Mr. Eric
Yang

Yes; Relate to both
parties’ claims; nonsubstantive topics
Yes; Relate to both
parties’ claims; nonsubstantive topics