Elan Microelectronics Corporation v. Apple, Inc.

Filing 320

Declaration of Jane H. Bu in Support of 319 Opposition/Response to Motion to Compel Elan Witness Depositions in the Northern District of California filed byElan Microelectronics Corporation. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5)(Related document(s) 319 ) (Bu, Jane) (Filed on 7/1/2011)

EXHIBIT 2

UNITED STATES INTERNATIONAL TRADE COMMISSION
WASHINGTON, D.C.
Before the Honorable Paul J. Luekern
Chief Administrative Law Judge
In the Matter of:
CERTAIN ELECTRONIC DEVICES
WITH MULTI-TOUCH ENABLED
TOUCHPADS AND TOUCHSCREEENS.

Inv. No. 337-TA-714

RESPONDENT APPLE INC.'S FIRST NOTICE OF DEPOSITION
OF COMPLAINANT ELAN MICROELECTRONICS CORPORATION

TO ALL PARTIES AND THEIR COUNSEL OF RECORD:
PLEASE TAKE NOTICE that Respondent Apple Inc., by and through its counsel of
record, will take the deposition upon oral examination of Complainant Elan Microelectronics
Corporation. The deposition will commence at 9:30 A.M. on November 8, 2010, at the offices
of Weil, Gotshal & Manges LLP, 1300 Eye Street, N.W., Suite 900, Washington, D.C. 20005, or
at such other location and date(s) mutually agreed to by the parties or set by the Court.
PLEASE TAKE FURTHER NOTICE that, pursuant to 19 C.F.R. § 210.28, Elan
Microelectronics Corporation is requested to designate one or more officers, directors, managing
agents, or other persons who consent to testify on its behalf with respect to each of the topics
listed in Attachment A (schedule of deposition topics).
The deposition will be taken before a notary public or other person authorized to
administer oaths under law, and will continue day to day until completed. The deposition will be
recorded by stenographic means and may also be videotaped.

Respectfully submitted,

Dated: October 7, 2010

Mark G. Davis
Michael R. Franzinger
Weil, Gotshal & Manges LLP
1300 Eye Street, N.W., Suite 900
Washington, D.C. 20005
Tel: [phone]
Fax: [phone]
Matthew D. Powers
Jared Bobrow
Douglas E. Lumish
Sonal N. Mehta
Derek C. Walter
Nathan Greenblatt
Weil, Gotshal & Manges LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065
Tel: [phone]
Fax: [phone]

Counsel for Respondent Apple Inc.

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ATTACHMENT A
DEFINITIONS AND INSTRUCTIONS
The following definitions apply to this Notice of Deposition:
a.

"Apple" means Respondent Apple Inc.

b.

"Elan," "you," and "your" means Complainant Elan Microelectronics

Corporation, its predecessors and successors, past and present parents, subsidiaries, divisions,
affiliates, and other organizational or operating units of any of the foregoing, and all past and
present directors, officers, employees, agents, and representatives (including consultants and
attorneys) of any of the foregoing.
c.

"Respondent" means any and all Respondents named or to be named in the

future by Elan in this Investigation, including without limitation Apple.
d.

"Investigation" shall mean the above-captioned proceeding at the United States

International Trade Commission, entitled Certain Electronic Devices with Multi-Touch Enabled
Touchpads and Touchscreens, Investigation No. 337-TA-714.
e.

"The Staff' means the Commission Investigative Attorney designated to engage

in investigatory activities in this Investigation or a related proceeding under 19 C.F.R. § 210 and
the Commission Rules.
f.

"The '352 Patent" means U.S. Patent No. No. 5,825,352.

g.

"Communication" means any form of oral or written interchange, whether in

person, by telephone, by facsimile, by telex, by electronic email, or by any other medium.
h.

"Document" shall be interpreted to the full extent permitted by the Commission's

Rules of Practice and Procedures and the Federal Rules of Civil Procedure and includes, without
limitation, e-mail, files stored on electronic media, copies of letters, notes and records of
telephone conversations, intra-corporate communications, minutes, bulletins, specifications,
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instructions, advertisements, literature, patents, patent applications, specification sheets and
diagrams, work assignments, reports, memoranda, memoranda of conversations, notes,
notebooks, drafts, data sheets, work sheets, contracts and agreements, memoranda of agreements,
assignments, licenses, sublicenses, opinions and reports of experts and consultants, books of
account, orders, invoices, statements, bills, checks and vouchers, brochures, photographs,
drawings, charts, catalogs, pamphlets, magazines, copies of magazines, decals, world-wide web
and/or internet postings, trade letters, notices and announcements, and press releases, and all
other printed, written, recorded, taped, electronic, graphic, computerized printout or other
tangible materials of whatever kind known to, or in the possession, custody, or control of Elan.
A draft or nonidentical copy is a separate document within the meaning of this term.
i.

The words "any," "all," and "each" shall mean any, all, each, and every.

j.

The phrases "relates to," "relating to," and "related to" shall mean in whole or

i n part constituting, containing, concerning, embodying, reflecting, describing, analyzing,
identifying, stating, referring to, dealing with, or in any way pertaining to.
k.

"Synaptics" means Synaptics, Inc., its predecessors and successors, past and

present parents, subsidiaries, divisions, affiliates, and other organizational or operating units of
any of the foregoing, and all past and present directors, officers, employees, agents, and
representatives (including consultants and attorneys) of any of the foregoing.
1. "Prostar" means Prostar Computer, Inc., its predecessors and successors, past
and present parents, subsidiaries, divisions, affiliates, and other organizational or operating units
of any of the foregoing, and all past and present directors, officers, employees, agents, and
representatives (including consultants and attorneys) of any of the foregoing.

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"Averatec" means Averatec, Inc., its predecessors and successors, past and
present parents, subsidiaries, divisions, affiliates, and other organizational or operating units of
any of the foregoing, and all past and present directors, officers, employees, agents, and
representatives (including consultants and attorneys) of any of the foregoing.
n. "Pixcir" means Pixcir Microelectronics Co., its predecessors and successors, past
and present parents, subsidiaries, divisions, affiliates, and other organizational or operating units
of any of the foregoing, and all past and present directors, officers, employees, agents, and
representatives (including consultants and attorneys) of any of the foregoing.
TOPICS FOR TESTIMONY
Elan's licensing of, or attempts to license, the '352 Patent, and expenses
associated therewith.
2.

Elan's policies, procedures and practices relating to patent licensing and licensing

of the '352 Patent, and other patents in its portfolio.
3.

Any royalties paid to Elan relating to the '352 Patent and the parties that paid

those royalties.
4.

Any negotiations related to licenses or potential licenses encompassing the '352

Patent.
The terms of any licenses or draft licenses encompassing the '352 Patent.
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

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why those entities have not entered into license or settlement 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.
8.

The settlement and license agreements between Elan and Synaptics, Elan and

Averatec, and Elan and Prostar, the history of those agreements before and after their execution,
and any discussions or efforts to renegotiate those agreements that have occurred or have been
proposed or that Elan anticipates.
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
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.

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10.

Elan's litigation expenses and corresponding attorney and law firm billing records

for any litigation encompassing the '352 Patent; the portions of those expenses attributable to
efforts to license the '352 Patent, including (with specificity) the amount spent on license
drafting and execution; and the identity of the person(s) employed by Elan responsible for
reviewing the aforementioned billing records.
11.

The expenditures referenced in Confidential Exhibit 3 to Elan's Complaint.

12.

The "substantial investment" referenced in paragraph 58 of Elan's complaint.

13.

The involvement of Y.H. Yeh, Wayne Chang, and other Elan employees and

officers in any Elan licensing and/or litigation efforts Elan believes are related to the '352 Patent
(including the Synaptics litigation, Pixcir litigation, and the district court litigation against
Apple).
14.

The involvement of Yitai Hu, Sean DeBruine, and other outside counsel for Elan

in any Elan licensing and/or litigation efforts Elan believes are related to the '352 Patent
(including the Synaptics litigation, Pixcir litigation, and the district court litigation against
Apple).
15.

The fee arrangements with outside counsel for Elan's litigations and licensing

related to the '352 Patent and any related payments made to outside counsel.
16.

The fee arrangements with outside counsel for Elan's patent litigations that

involve patents other than the '352 Patent.
17.

Elan's knowledge of the structure, function, and operation of Synaptics'

"TouchPad" and "ClearPad" products, as well as any other Synaptics products Elan contends or
may contend practice the '352 Patent.

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18.

Elan's knowledge of Synaptics' alleged investments in plant and equipment in the

United States, employment of labor and capital in the United States, and/or engineering,
research, and development related to articles Elan believes are protected by the '352 Patent,
including the timing of any such activities.
19.

Elan's knowledge of when Synaptics' products referenced in Topic No. 17 above

were, are, or will be commercially available in the United States, and the models and quantities
of those products commercially available in the United States and their prices.
20.

The identities of all parties with whom Elan claims to have had a common legal

interest with respect to entries 1-37 of Elan's September 1, 2010 Privilege Log (attached as
Exhibit A) and/or the September 17, 2010 letter from Jane Bu to Nathan Greenblatt (attached as
Exhibit B), and the nature of that asserted common legal interest.
21.

The identities of all customers for Elan touchpads or touchscreens and for any

products Elan believes practice the '352 Patent under license from Elan.
22.

Any information relating to use of Elan touchpads or touchscreens in any products

bearing Apple trademarks (either genuine or imitation).
23.

The identities of persons knowledgeable about the above topics.

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CERTIFICATE OF SERVICE

I hereby certify that a copy of the foregoing was served on October 7, 2010 as indicated, on the
following:
Via Hand Delivery (2 copies)
The Honorable Paul J. Luckern
Office of the Administrative Law Judge
U.S. International Trade Commission
500 E Street SW, Room 317-H
Washington, D.C. 20436

Via Email and Hand Delivery
Kevin Baer, Esq.
Office of Unfair Import Investigations
U.S. International Trade Commission
500 E Street SW, Room 401-A
Washington, D.C. 20436
[e-mail]

Via Email and Hand Delivery
Paul F. Brinkman, Esq.
Alston & Bird LLP
The Atlantic Building
950 F Street, NW
Washington, DC 20004
[e-mail]

Alv o R. Parrado
Paralegal

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