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 4

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YITAI HU (SBN 248085)
[e-mail]
SEAN P. DEBRUINE (SBN 168071)
[e-mail]
ELIZABETH H. RADER (SBN 184963)
[e-mail]
JANE HAN BU (SBN 240081)
[e-mail]
JENNIFER LIU (SBN 268990)
[e-mail]
PALANI P. RATHINASAMY (SBN 269852)
[e-mail]
ALSTON & BIRD LLP
275 Middlefield Road, Suite 150
Menlo Park, CA 94025-4008
Telephone:
650-838-2000
Facsimile:
650-838-2001
Attorneys for Plaintiff and Counterdefendant
ELAN MICROELECTRONICS
CORPORATION

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN FRANCISCO DIVISION

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Plaintiff and Counterdefendant,

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

ELAN MICROELECTRONICS
CORPORATION,

v.
APPLE, INC.,

ELAN MICROELECTRONICS
CORPORATION’S FOURTH
SUPPLEMENTAL OBJECTIONS AND
RESPONSES TO APPLE, INC.’S FIRST
SET OF INTERROGATORIES [NOS. 5,
7, 11]

Defendant and Counterplaintiff.
AND RELATED COUNTERCLAIMS

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PROPOUNDING PARTY:

APPLE, INC.

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RESPONDING PARTY:

ELAN MICROELECTRONICS CORPORATION

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SET NUMBER:

ONE (1)

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ELAN’S SUPPLEMENTAL OBJECTIONS AND RESPONSE TO
APPLE’S INTERROGATORY NOS. 5, 7 & 11

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

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Plaintiff Elan Microelectronics Corporation (“Elan”) hereby supplements its objections and

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responses to Defendant Apple, Inc.’s (“Apple”) First Set of Interrogatories to Elan

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Microelectronics Corporation (“Interrogatories”) as follows:

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GENERAL STATEMENTS AND OBJECTIONS

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Elan incorporates by references all of its previous Generate Statements and Objections and

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its General Objections to Apple’s definitions and instructions.

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SPECIFIC OBJECTIONS AND RESPONSES

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INTERROGATORY NO. 5:
Separately for each Elan Patent-in-Suit, state whether Elan contends that it has satisfied the

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marking requirements of 35 U.S.C. § 287, and if so, describe in detail all facts and circumstances

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supporting or otherwise relating to that contention (including documents and persons with

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knowledge).

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SUPPLEMENTAL RESPONSE TO INTERROGATORY NO. 5:

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Elan incorporates herein by reference each of its foregoing General Objections. Elan

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objects to this Interrogatory to the extent that it is intended to be treated as one interrogatory, as it

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contains multiple subparts, and thus will be treated as multiple interrogatories against the

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maximum permissible. Elan also objects to this Interrogatory to the extent it seeks information

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protected from disclosure by the attorney-client privilege, the attorney work product doctrine or

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any other applicable privilege, immunity, or protection.

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Subject to and without waiving the foregoing objections, Elan responds that as early as

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May, 2006, Elan started marking the patent number of the ‘352 Patent, among other patents, on the

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boxes in which it ships its touch-sensitive input devices practicing the ‘352 Patent. See

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ELN017263-ELN017264. Also see ELN120369, ELN120371-ELN120374. Further, Elan placed

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the same on the user interface window on or about April 2008. See ELN120367-ELN120368.

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SECOND SUPPLEMENTAL RESPONSE TO INTERROGATORY NO. 5:

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Elan incorporates by reference each of its previous General and Specific Objections.

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Subject to and without waiving the foregoing objections, Elan supplements its response as follows:
ELAN’S SUPPLEMENTAL OBJECTIONS AND RESPONSE TO
APPLE’S INTERROGATORY NOS. 5, 7 & 11

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Case No. 09-cv-01531 RS

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Beginning no later than April 16, 2008, Elan started to mark the 352 Patent on Elan’s

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touch-pad products through the driver’s software. When Elan’s direct customer (e.g., a

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downstream manufacture or vendor) installs the driver software, the notice that this touchpad is

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covered by the 352 Patent, among other Elan patents, will be displayed on the user interface

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window. Similarly, when an end user of the final downstream product opens the control panel

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window for the touchpad functionalities, the 352 Patent notice, among other Elan patents, will be

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displayed on the user interface window. Elan has continuously included notice of the 352 Patent

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on the specifications of its touch-pad products since at least October 26, 2006. Elan has placed a

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notice of the 352 Patent on the outer box that packages its touch-sensing products continuously

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since at least May 26, 2006.

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Elan further responds that it does not directly sell, deliver or ship its touch-sensing

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products to the United States. Thus, it has no knowledge as to the location or the final designation

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of the packaging boxes or specifications of its touch-sensing products.

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Elan has not marked the 353 Patent on any of its touch-sensing products.

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Elan further responds that Apple was aware of the 352 Patent no later than August 25,

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2004, when Apple disclosed the 352 Patent as a prior art reference during prosecution of U.S.

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Patent No. 7,561,146. Elan gave Apple actual notice of its infringement of the 352 Patent on

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August 29, 2006, when Elantech sent a letter to Apple regarding Apple’s unlicensed use of the 352

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Patent (APEL0058579). Elan also directs Apple to documents bearing production numbers

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ELN017263-ELN017264, ELN120369, ELN120371-ELN120374 where additional information

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responsive to this Interrogatory may be ascertained.

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INTERROGATORY NO. 7:

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Describe in detail all facts and circumstances relating to each communication between Elan

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and any third party concerning licensing, contracts, agreements, covenants not to sue, settlement

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agreements, actual or potential infringement, invalidity, or unenforceability of any of the Patents-in-

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Suit and the identities of all such third parties, including, but not limited to, the identity of each

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entity contacted by Elan regarding any of the Elan Patents-in-Suit and each license granted,

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obtained, or offered by Elan to any of the Elan Patents-in-Suit.
ELAN’S SUPPLEMENTAL OBJECTIONS AND RESPONSE TO
APPLE’S INTERROGATORY NOS. 5, 7 & 11

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Case No. 09-cv-01531 RS

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SUPPLEMENTAL RESPONSE TO INTERROGATORY NO. 7:
Elan incorporates herein by reference each of its foregoing General Objections. Elan

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objects to this Interrogatory to the extent that it is intended to be treated as one interrogatory, as it

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contains multiple subparts, and thus will be treated as multiple interrogatories against the

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maximum permissible. Elan also objects to this Interrogatory as overbroad and unduly

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burdensome to the extent it seeks “each communication between Elan and any third party.” Elan

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further objects to this Interrogatory to the extent it seeks information not relevant to any present

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claim or defense in this matter and not reasonably calculated to lead to the discovery of admissible

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evidence. Elan also objects to this Interrogatory to the extent it seeks information containing

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proprietary or confidential information of Elan or a non-party. Elan further objects to this

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Interrogatory to the extent it seeks information protected from disclosure by the attorney-client

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privilege, the attorney work product doctrine or any other applicable privilege, immunity, or

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protection.

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Subject to and without waiving the foregoing objections, Elan responds that Elan and

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Synaptics, Inc. entered into a settlement agreement with respect to ‘352 Patent in October 2008.

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Elan further states that Elan and Synaptics were engaged in litigation concerning, inter alia,

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Synaptics’ infringement of the ‘352 patent. That litigation also involved Prostar Computer, Inc.

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and Averatec, Inc. The pleadings and correspondence between the parties have been produced to

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Apple. Elan objects to the request that it “describe in detail each communication” between Elan

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and Synaptics, Prostar or Averatec during that litigation as unduly burdensome.

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Elan further responds that Elan had at least the following communications concerning
Elan’s ‘352 patent:
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Communications with Richard Wooley of Cirque Corporation concerning Cirque’s

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GlidePoint® touchpad with so-called Advanced Gestures, through Elan’s outside

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counsel Alston & Bird, beginning during or around July 6, 2009. See ELN126472.

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A letter to Mary E. Doyle of Palm, Inc. concerning Palm’s Palm Pre smart phone,

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through Elan’s outside counsel Alston & Bird, during or around July 6, 2009. See

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ELN126471. That letter was followed by a telephone conversation between Sean
ELAN’S SUPPLEMENTAL OBJECTIONS AND RESPONSE TO
APPLE’S INTERROGATORY NOS. 5, 7 & 11

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Case No. 09-cv-01531 RS

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DeBruine, counsel for Elan, and Douglass Luftman, Palm’s Assistant General

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Counsel.

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Communications with Charles Chamas and Anthony Baca of Hewlett-Packard

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Company, through Elan’s outside counsel Akin Gump Strauss Hauer & Feld LLP

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(“Akin Gump”), beginning during or around January 4, 2007. Mr. Baca and Mr.

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DeBruine also had at least one telephone conversation. See ELN126444.

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Communications with Tsuneo Toda of Toshiba Corporation concerning certain

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Toshiba laptop products, through Elan’s outside counsel Akin Gump, beginning

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during or around January 4, 2007. See ELN126446, ELN126451, and ELN126454.

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Elan further responds that it has had no license discussions regarding the ‘353 Patent.
SECOND SUPPLEMENTAL RESPONSE TO INTERROGATORY NO. 7:
Elan incorporates herein by reference each of its foregoing General and Specific
Objections stated above and the response provided above.

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Elan further states that it has not licensed or attempted to license the 353 Patent with any

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entity. Elan has not licensed or attempted to license the 352 Patent to any entities outside of the

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United States.

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THIRD SUPPLEMENTAL RESPONSE TO INTERROGATORY NO. 7:

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Elan incorporates herein by reference each of its foregoing General and Specific
Objections stated above and the responses provided above.
Elan further incorporates by reference its responses to Apple’s Interrogatory No. 34 and

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Cate Elsten Expert Reports (including all of the supplemental and amended reports) served on

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Apple in the ITC investigation captioned Certain Electronic Devices With Multi-Touch Enabled

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Touchpads And Touchscreens And Components Thereof.

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INTERROGATORY NO. 11:

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Separately for each of the Apple Patents-in-Suit, describe in detail the facts and

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circumstances relating to Elan’s first awareness of the patent, including inter alia, the date Elan

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first became aware of the existence of the patent, the person(s) who first became aware of the

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patent, the circumstances surrounding Elan’s first awareness of the patent, the content of any
ELAN’S SUPPLEMENTAL OBJECTIONS AND RESPONSE TO
APPLE’S INTERROGATORY NOS. 5, 7 & 11

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Case No. 09-cv-01531 RS

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related communications or documents and any actions taken by you as a result (including

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documents and persons with knowledge).

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SUPPLEMENTAL RESPONSE TO INTERROGATORY NO. 11:

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Elan incorporates herein by reference each of its foregoing General Objections. Elan

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objects to this Interrogatory to the extent that it is intended to be treated as one interrogatory, as it

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contains multiple subparts, and thus will be treated as multiple interrogatories against the

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maximum permissible. Elan also objects to this Interrogatory as overbroad and unduly

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burdensome. Elan further objects to this Interrogatory to the extent it seeks information not

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relevant to any present claim or defense in this matter and not reasonably calculated to lead to the

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discovery of admissible evidence. Elan also objects to this Interrogatory to the extent it seeks

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information protected from disclosure by the attorney-client privilege, the attorney work product

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doctrine or any other applicable privilege, immunity, or protection.

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Subject to and without waiving the foregoing objections, Elan responds that it currently

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understands that Nick Lin, a patent engineer in Elan’s Legal and IPR department prepared

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summaries of the ‘218 and ‘659 patents on or about September, 24, 2008 and February 26, 2009,

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respectively. Nick Lin uploaded the ‘218 patent summary onto Elan’s document management

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system, and internally circulated the ‘659 patent summary to Chairman Yeh, the legal department

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and the research and development department. Elan was not aware of Apple’s ‘218 patent or ‘659

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patent before Mr. Lin prepared the respective reports.

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SECOND SUPPLEMENTAL RESPONSE TO INTERROGATORY NO. 11:

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Elan incorporates herein by reference each of its foregoing General and Specific
Objections stated above.
Subject to and without waiving the foregoing objections, Elan amends its response as

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follows: Mr. Nick Lin, a patent engineer, currently serving as the Vice Project Manager in Elan’s

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Legal and IPR department prepared a summary of the ‘218 Patent on or about September 24, 2008

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and uploaded the patent summary onto Elan’s document management system. On or about

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February 25, 2009, Mr. Lin prepared the patent summary for the ‘659 Patent, and internally

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circulated the ‘659 patent summary to Chairman Yeh, and certain members of the IPR Legal
ELAN’S SUPPLEMENTAL OBJECTIONS AND RESPONSE TO
APPLE’S INTERROGATORY NOS. 5, 7 & 11

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Case No. 09-cv-01531 RS

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department and the research and development departments. Mr. Lin’s patent summaries were

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generated as part of the routine review procedure that Elan conducted regarding the issuances of

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U.S. patents relating to touch-sensing input device technology. Elan was not aware of Apple’s

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‘218 patent or ‘659 patent prior to Mr. Lin’s preparation of the respective reports. Elan further

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directs Apple to documents bearing production numbers ELN131240 and ELN1312138 where

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additional information responsive to this Interrogatory may be ascertained.

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DATED: June 23, 2011

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Respectfully submitted,
ALSTON & BIRD LLP

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By:

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LEGAL02/32698263v1

/s/ Sean P. DeBruine
Sean P. DeBruine
Attorneys for Plaintiff
ELAN MICROELECTRONICS CORPORATION

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ELAN’S SUPPLEMENTAL OBJECTIONS AND RESPONSE TO
APPLE’S INTERROGATORY NOS. 5, 7 & 11

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Case No. 09-cv-01531 RS