Elan Microelectronics Corporation v. Apple, Inc.

Filing 371

Declaration of Derek C. Walter in Support of 369 Opposition/Response to Motion to Compel Discovery Related to Apple iOS Applications for the Accused Products filed byApple, Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit I)(Related document(s) 369 ) (Walter, Derek) (Filed on 8/2/2011)

Page 1

SUN MICROSYSTEMS INC, Plaintiff, v. NETWORK APPLIANCE, Defendant.
No. C-08-01641 EDL
UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF
CALIFORNIA
2009 U.S. Dist. LEXIS 122779

December 21, 2009, Decided
December 21, 2009, Filed
PRIOR HISTORY: Sun Microsystems, Inc. v. Network
Appliance, 2009 U.S. Dist. LEXIS 48209 (N.D. Cal.,
May 29, 2009)
COUNSEL: [*1] For Sun Microsystems Inc, a Delaware
corporation, Plaintiff: Christine Kerba Corbett, LEAD
ATTORNEY, Carrie Lynne Williamson, Mark Fowler,
Yakov M. Zolotorev, DLA Piper US LLP, East Palo
Alto, CA; Clayton W. Thompson, II, DLA Piper US
LLP, Reston, VA; David L. Alberti, DLA Piper Rudnick
Gray Cary US LLP, East Palo Alto, CA; Meryl Macklin,
Holme Roberts & Owen LLP, San Francisco, CA; Paul
Sung Cha, Scott Bialecki, PRO HAC VICE, Holme
Roberts & Owen, LLP, Denver, CO.
For Network Appliance Inc., a Delaware corporation,
Defendant: Azra M. Hadzimehmedovic, Weil Gotshal &
Manges LLP, Washington, DC; David J. Ball, Jr.,
Shawnna M. Yashar, Weil Gotshal & Manges LLP, PRO
HAC VICE, Washington, DC; Edward Robert Reines,
Gregory Hull, Jill Jane Ho, Weil Gotshal & Manges LLP,
Redwood Shores, CA; Jeffrey G. Homrig, Weil Gotshal
& Manges, Redwood Shores, CA; Patricia Young, Weil
Gotshal & Manges LLP, New York, NY; Tarra L. Zynda,
PRO HAC VICE, Weil Gotshal & Manges LLP,
Houston, TX.
For Symantec Corporation, Non-party, Miscellaneous:
Carisa S Yee, LEAD ATTORNEY, Latham & Watkins
LLP, Menlo Park, CA; Mark A. Flagel, Latham &
Watkins LLP, Los Angeles, CA.

For Network Appliance Inc., a Delaware corporation,
[*2] Counter-claimant: Edward Robert Reines, Weil
Gotshal & Manges LLP, Redwood Shores, CA; Patricia
Young, Weil Gotshal & Manges LLP, New York, NY.
For Sun Microsystems Inc, a Delaware corporation,
Counter-defendant: Christine Kerba Corbett, LEAD
ATTORNEY, Carrie Lynne Williamson, Mark Fowler,
Yakov M. Zolotorev, DLA Piper US LLP, East Palo
Alto, CA; Clayton W. Thompson, II, DLA Piper US
LLP, Reston, VA; David L. Alberti, DLA Piper Rudnick
Gray Cary US LLP, East Palo Alto, CA; Meryl Macklin,
Holme Roberts & Owen LLP, San Francisco, CA.
JUDGES: ELIZABETH D. LAPORTE, United States
Magistrate Judge.
OPINION BY: ELIZABETH D. LAPORTE
OPINION

ORDER GRANTING IN PART AND DENYING IN
PART NETAPP'S MOTION TO COMPEL AND
GRANTING IN PART AND DENYING IN PART
OUTSTANDING ISSUES SUN SEEKS FROM
NETAPP
On November 23, 2009, the parties filed two joint
two-page letters concerning discovery disputes relating
to: (1) discovery NetApp is seeking from Sun, and (2)

Page 2
2009 U.S. Dist. LEXIS 122779, *2

discovery Sun is seeking from NetApp. The Court
allowed the parties to file two joint briefs to fully address
the issues raised in the discovery letters. The parties have
now submitted additional joint briefing, along with
accompanying declarations and requests to seal, seeking
to [*3] compel various discovery from each other. For
the following reasons, the Court GRANTS IN PART and
DENIES IN PART NetApp's motion to compel and
GRANTS IN PART and DENIES IN PART Sun's
requests regarding outstanding issues Sun seeks from
NetApp.
The Court notes its concern that many of the issues
raised by these briefs likely could have been resolved by
the parties without Court involvement. In order to allow
this case and related cases to proceed as efficiently as
possible, the Court has previously allowed the parties to
raise discovery issues by way of joint letter briefs, and
has resolved some discovery disputes without requiring
noticed motions. However, this expedited procedure was
not intended to encourage the parties to proliferate
discovery disputes for resolution by the Court because it
is less burdensome on the parties to do so, while
increasing the burden the Court. The joint briefs filed by
the parties raised at least 14 different issues for the Court
to resolve, constituting the functional equivalent of
multiple motions to compel. The Court is, of course,
willing to work with the parties to resolve their disputes
as necessary, but will be unable to proceed expeditiously
to [*4] resolve the parties' more substantive disputes if
this unfortunate trend of raising multiple discovery issues
on a rolling basis continues. The parties are therefore
encouraged, once again, to seek Court involvement only
where it is truly required.
I. Discovery Sun Seeks From NetApp
A. Interrogatory 21
This interrogatory seeks information about the extent
to which each NetApp accused product is made, used,
sold, offered for sale, imported or distributed within the
United States, including how many units are imported,
exported, made, used, sold, offered for sale, imported or
distributed within the United States on a monthly basis.
NetApp's response pointed to documents that it
contends contain the requested information. See Ho Decl.
In Support of NetApp's Portion of Joint Brief, Ex. A. Sun
argues that the documents are not self-explanatory and no
one at NetApp has been able to explain the meaning of

the relevant columns within the documents or the codes
therein. NetApp responds that the documents provided
contain "Supplier Mapping" information which indicates
on its face where each supplier is located, and thus
whether and to what extent NetApp products are made in
the United States. Id., [*5] Ex. B. Specifically, the
"Supplier Flag" column has three values: US, FC, or
UNKNOWN, and NetApp's portion of the joint brief
states that these values indicate whether a supplier is
located in the United States, a Foreign Country, or its
location is Unknown. Joint Brief at 8:23-9:4. NetApp
confirms that it will supplement its response to
Interrogatory 21 to include descriptions of these three
possible values. Id. at n. 4. Therefore to the extend that
Sun complains that the "Supplier Flag" codes are
indecipherable, NetApp has addressed this concern. Sun
also complains that the "Supplier" column contains
unknown alphanumeric codes that NetApp has not
explained. NetApp persuasively responds that this
column pertains to the identity of its various suppliers,
and the Interrogatory did not request identity information,
so it need not supplement this information.
Finally, Sun contends briefly that the response did
not include the number of units sold or distributed within
the United States. NetApp does not address this point
other than to say that Sun's response to its Interrogatory
26 similarly does not contain this information (other than
an "approximation" of location and revenue attributable
[*6] to the United States) and any order to produce
additional information should be bilateral. This excuse is
insufficient. Therefore Sun's request that NetApp
supplement its response to Interrogatory 21 is DENIED,
except as to the number of units sold or distributed in the
United States, which NetApp is Ordered to provide.
While the Court will not decide the dispute regarding
Sun's alleged failure to provide similar information
because the issue is not properly before it, the Court notes
that the same standard should generally apply to both
sides.
B. Interrogatories 27-29
These interrogatories seek information on NetApp's
use of Solaris in products at issue in this litigation.
Number 27 asks for identification of NetApp customers
that operate Solaris on any NetApp product, including
revenue and support service revenue relating to Solaris.
Number 28 asks to identify each NetApp product that can
support Solaris. Number 29 seeks to identify each

Page 3
2009 U.S. Dist. LEXIS 122779, *6

NetApp product certified to run Solaris via the Solaris
Ready Program.
Sun argues that Solaris is an accused product and
information about NetApp's use and revenue associated
with it in any of its products is relevant to damages, and
Sun does not have [*7] access to this information.
NetApp counters that it has produced the requested
information with respect to the product at issue in the
-1641 case, SANscreen, by stating that Solaris does not
operate on SANscreen. See Ho Decl., Ex. D at 8-10.
NetApp argues that it should not be required to produce
irrelevant information about other NetApp products at
issue in the two other cases after discovery in those cases
has closed. Additionally, according to NetApp, this
would impose an undue burden on it because it is very
unlikely that someone using NetApp hardware would
replace DataONTAP with Solaris, and NetApp does not
support or track isolated instances of replacement, so this
investigation would be burdensome. NetApp further
argues that Sun has information about which NetApp
products are certified under the Solaris Ready Program
responsive to Number 29.
Sun's request that NetApp supplement its responses
to Interrogatories 27-29 is DENIED. NetApp is not
required to produce information about products not at
issue in the -1641 case, and it has already produced
information as to SANscreen. Requiring NetApp to
undertake an extensive search for isolated instances of
customers who have replaced [*8] DataONTAP with
Solaris would be unduly burdensome in light of the
limited potential benefit to Sun. Finally, Sun has not
adequately explained why it does not have records of
products certified under its own Solaris Ready Program,
including NetApp products.
C. Interrogatory 33
This interrogatory seeks identification of all patents
and patent applications resulting from the research and
development of WAFL.
Sun argues that this is relevant because WAFL is
NetApp's allegedly "pioneering" embodying product. Sun
also contends that NetApp propounded an almost
identical interrogatory with respect to Sun's ZFS product
which Sun answered in full. NetApp argues that these
interrogatories are not almost identical because its
interrogatory sought information about patents and patent
applications associated with an accused product, while

Sun's interrogatory seeks information about patents and
patent applications associated with an embodying product
that is not accused in this action (as it is in the -6053 and
-5488 actions). NetApp also contends that this is an effort
to obtain additional discovery in other cases after
discovery has closed, and it would constitute an undue
burden for NetApp to look [*9] through its over 250
patents and applications to determine which of them
relate to WAFL.
NetApp's reasoning, especially its undue burden
argument, is not persuasive. Because this discovery is
relevant and easily obtainable, Sun's request is
GRANTED.
D. Interrogatory 40 and 30(b)(6) Topic 1
These items seek information regarding the testing of
NetApp's SANscreen product. NetApp contends that
testing of SANscreen was covered by an earlier
interrogatory (Interrogatory 22) which it has already
responded to and refuses to respond to Interrogatory 40.
Sun reasonably questions why NetApp will not then
repeat its response with respect to this interrogatory.
Sun's request is GRANTED and NetApp is Ordered to
respond to Interrogatory 40, even if its response is simply
a repetition of its response to Interrogatory 22.
NetApp also argues that Sun had a 30(b)(6) deponent
on the topic of testing (under Topic 20) but failed to ask
any questions about testing. Sun counters that Topic 20
did not relate to testing of SANscreen, and was instead
directed to conception, reduction to practice,
development, design and modification. NetApp responds
that testing and quality assurance are an integral part of
development [*10] and modification, and that Sun's
counsel acknowledged as much during a deposition of
NetApp's witness for Topic 20. See Ho, Ex. H at 194-95.
While both parties' positions are reasonable, it is clear
that the topic was not addressed during previous
depositions, even if it could have been. Sun's request is
therefore GRANTED, and NetApp is Ordered to provide
a 30(b)(6) witness for no more than three hours to answer
questions directly related to testing of SANscreen.
E. 30(b)(6) Topics 1 and 4
Sun characterizes these deposition topics as covering
both support services offered in connection with
SANscreen, and the revenue associated with such support
services. However, NetApp correctly points out that the

Page 4
2009 U.S. Dist. LEXIS 122779, *10

deposition topics are really directed to financial
information regarding support services, not the support
services themselves. See Ho Decl., Ex. I at 4 (topics seek
"[a]ll facts and circumstances relating to the revenue,
profits, margins, and costs" of any NetApp support
service or product or service marketed or sold in
conjunction with a NetApp accused product).
NetApp contends that the support services are the
same for all of its products, and Sun already took a
deposition regarding support [*11] services, and
financial information regarding these services, in the
-6053 and -5488 cases. See Ho Decl., Ex. K at Topic 38;
Ex. L at Topic 36; Ex. M at 51-58 (prior deposition
testimony covering NetApp support services and related
financial information). Sun contends that the previous
deposition was limited to the issues in those cases, and
did not cover questions regarding the SANscreen suite of
products at issue in this case. Sun also disputes NetApp's
contention that there is no way to determine revenue
associated with support services of SANscreen products,
arguing that documents show that this information is
available. Joint Brief at 5 (citing Williamson Decl., Ex. B
at 448-449). NetApp's previous 30(b)(6) deponent on the
topic testified that he did not know how any financial
figure for professional services relating to SANscreen
was derived, but stated that if he needed the information
he would ask the "financial operations team." Id. at 449.
Sun should be given an opportunity to question
someone from this group on the revenue associated with
support services, since the previous deponent could not
provide any information as to how the stated revenue was
obtained. Sun's request [*12] on this topic is therefore
GRANTED, and NetApp is Ordered to provide a 30(b)(6)
deponent on the topics covered by the deposition notices,
which relate to financial information regarding support
services, not the support services themselves.
F. Production of Financial Information
1. Symantec Agreement
Sun argues that NetApp has failed to produce a
NetApp-Symantec resell agreement and blocked
testimony on the agreement during a deposition. Sun
believes this agreement and testimony relating to it are
relevant to damages because both Symantec's product
(that NetApp was reselling pursuant to the agreement)
and SANscreen are in the heterogeneous storage
management market. Sun contends that the terms,

payments and royalties NetApp was willing to pay to
resell a product in the same market as SANscreen is
relevant to damages and consideration of an appropriate
royalty. According to Sun, deponent Turner previously
testified that he is the only person still at NetApp who
was involved in the Symantec agreement, and would be
happy to talk about it if not constrained by confidentiality
obligations.
NetApp contends that there is no 30(b)(6) notice or
document request covering the Symantec agreement,
[*13] but does not address whether or not the agreement
contains a confidentiality provision or is otherwise
non-discoverable. However, Sun notes that it does not
seek a 30(b)(6) deponent- it seeks the testimony of Mr.
Turner in his personal capacity that was blocked due to
confidentiality concerns during his previous deposition.
Because NetApp has not explained any reason for
initially blocking this testimony, Sun's request is
GRANTED and NetApp is Ordered to re-produce Mr.
Turner in his individual capacity solely to testify as to the
Symantec agreement for no more than 1 hour.
With respect to production of the agreement itself,
NetApp argues that one of the document requests that
Sun believes covers the agreement relates only to
"customary licensing practices or norms in the industry,"
(Request 134). See Ho Decl., Ex. N at 117. This request
does not encompass individual license agreements such
as the Symantec agreement. NetApp argues that the other
potentially relevant document request (Request 154),
seeking license agreements for "products, technology, or
Patents" from third parties, was "massively overbroad."
Id. at 132-33. NetApp therefore limited its response by
producing only patent [*14] licenses for the NetApp
patents-in-suit and pertinent features of the accused
NetApp products. The Symantec agreement is relevant to
damages and falls within the scope of Request 154, and
NetApp is Ordered to produce a copy of the Symantec
agreement to be used solely for the purpose of calculating
damages.
2. Part Number List
Sun seeks a "part number" list mentioned during a
previous deposition to assist it in deciphering Netapp's
sales order data. NetApp states that it has agreed to
produce this list in exchange for Sun providing discovery
in response to NetApp's Interrogatory 35 (addressed in
NetApp's motion to compel). Sun agrees to produce a
legend for its "corporate codes" in response to NetApp's

Page 5
2009 U.S. Dist. LEXIS 122779, *14

Interrogatory 35, to the extent such information exists.
Joint Brief at n.2. Because there is basic agreement, the
parties are Ordered to exchange NetApp's "part number"
list for Sun's "corporate code" list, and are encouraged to
work together to provide information to assist the other in
understanding documents previously produced without
resort to Court involvement.
3. SANscreen Revenue Documents
Sun seeks deponent to testify regarding revenue
associated with SANscreen products and an updated
[*15] summary spreadsheet that reflects this revenue.
NetApp contends that it cannot produce this information
because it does not exist and Sun already has whatever
incomplete information is available. It argues that
NetApp does not break out SANscreen revenue, and the
documents Sun points to show only a dollar amount for
orders, but not deferred revenues. NetApp points to
deposition testimony stating that the closest thing NetApp
would have to this is a summary financial spreadsheet
where SANscreen would fall under an "add on" line, and
that the deponent had never seen a further breakout of
what portion of the "add on" is attributable to SANscreen.
Ho Decl., Ex. Q at 261-62.
NetApp persuasively argues that it does not break
out financial information to isolate SANscreen in the way
Sun would like. However, Sun's request is GRANTED
IN PART, and NetApp is Ordered to produce any other
documents relating to SANscreen revenue, to the extent
any such documents exist. Sun's request for another
deponent is DENIED because prior depositions have
indicated that there is no other information to be gained
on this topic.
II. Discovery NetApp Seeks From Sun
A. Testimony Re: Sun's Competitive Analysis of
NetApp [*16] Products
NetApp's deposition topic 71 is overbroad and seeks
testimony on any analysis of any NetApp product
conducted by or on behalf of Sun. See Ho Decl., Ex. 1 at
Topic 71. NetApp states that it has offered to narrow the
scope to include only accused and embodying products
and products that compete with Sun accused products,
but Sun refused the request.
Sun argues that it does not have a deponent on this
topic because its former competitive intelligence group is

defunct and its members no longer work at Sun- and
NetApp has already deposed one former member of the
group. Sun also argues that obtaining information to
prepare a witness would require gathering information
from over 100 product groups that might have done a
competitive analysis of NetApp products, and that
NetApp has "already questioned more than 50 Sun
employees and former employees regarding competitive
analysis and evaluations of NetApp products." NetApp
responds that Sun can prepare a witness based on other
Sun employees with knowledge of the competitive
intelligence group's work and the group's existing
documents, and that an abundance of potentially relevant
information within various product groups should not
justify [*17] failure to produce testimony. NetApp does
not address Sun's point that it has already questioned
more than 50 Sun employees relating to competitive
analysis.
Though it is a close question, NetApp's request is
DENIED. Sun has persuasively argued that it does not
have a deponent, nor can it reasonably prepare a
deponent, on this overbroad topic.
B. Testimony Re: Interactions With Onaro
NetApp seeks testimony regarding Sun's first
awareness of communications, negotiations, relationships
or agreements between Sun and Onaro with respect to the
NetApp accused products. See Joint Brief at 2:13-15. 1
NetApp argues that this information is relevant to
non-infringement, laches and damages because Sun was
aware of Onaro and SANscreen as early as 2005, and had
actual knowledge of the allegedly infringing activities as opposed to a passing familiarity - by at least that time.
See IXYS Corp. v. Advanced Power Tech., 321 F. Supp.
2d 1156, 1160-61 (N.D. Cal. 2004).
1 The deposition requests that NetApp cites,
Topics 1 and 2, are broader than this. Read
literally, Topic 2 would encompass anything
relating to Sun's first awareness of the NetApp
accused products and their functionality,
including when Sun [*18] first became aware of
potential infringement, and is not limited to
Onaro. However, NetApp's argument focuses on
Onaro so relief is limited to Onaro.
Sun counters that it has previously produced a
witness on these topics relating to the Sun patents-in-suit,
and that the information sought (relating to the accused

Page 6
2009 U.S. Dist. LEXIS 122779, *18

products) is irrelevant and overbroad. Sun argues that the
information is not relevant to infringement, laches or
damages because the testimony would only go to when
Sun was first aware of the product in the marketplace, not
whether the product was infringing. Sun also contends
that, to reasonably prepare a witness on the topic, it
would need to canvas thousands of current and former
employees about the Onaro relationship and the burden of
this outweighs any potential need for the information.
Testimony about Sun's early discussions and
dealings with Onaro relating to the accused product is
relevant to infringement and laches, and therefore
damages. Sun's argument that testimony about when it
was first aware of the product is irrelevant is weak, as this
testimony may also lead to information about when Sun
knew or should have known of potential infringement,
which is relevant. [*19] Also, NetApp correctly points
out that it is not asking Sun to canvass all 29,000
employees, but only to reasonably prepare a witness.
NetApp's request is therefore GRANTED. Sun is Ordered
to produce a 30(b)(6) witness on the topic, with the
understanding that Sun will take reasonable steps to
educate the witness on the topic, and NetApp should not
object based on lack of preparedness unless it appears
that Sun has not such taken reasonable steps.
C. Testimony Re: Use of Sun Accused Products
NetApp seeks testimony regarding use of Sun
accused products by Sun, its employees and specified
third parties. See Ho Decl., Ex. 1 at Topics 9-11, 43-44.
Sun does not contend that these requests are
overbroad or seek irrelevant information. Instead Sun
contends that it does not track internal or external use of
its products and therefore cannot produce a witness on
these topics. Sun concedes that it tracks the number of
downloads and registrations relating to Solaris 10 and
OpenSolaris, but states that this numeric metric does not
indicate how a third party is actually or potentially using
the programs that would be responsive to the deposition
topics in question. NetApp argues that Sun's position
[*20] that it does not track any of this information is
"inconceivable," and that deposition testimony shows that
some groups within Sun are mandated to use
OpenSolaris, which incorporates ZFS. See Ho, Ex. 7 at
84. Additionally, Sun's interrogatory responses and
deposition testimony show that Sun has at least some
tools for tracking third party use. See Ho Decl., Ex. 8 at
5; Ex. 9 at 4-6; Ex. 10 at 4.

Sun's position that it cannot provide any information
on these topics is somewhat unreasonable in light of
evidence that at least some Sun employees are mandated
to use Sun products, and it has some capability to track
(at least numerically) third party use. Therefore NetApp's
request is GRANTED, and Sun is Ordered to produce a
30(b)(6) witness on the topic, with the understanding that
Sun will take reasonable steps to educate the witness on
the topic, and NetApp should not object based on lack of
preparedness unless it appears that Sun has not such
taken reasonable steps. Sun is also ordered to supplement
its response to Interrogatory 17 to update it with
information since September 2008, and to produce
documents that track support of the 7000 series, as Sun
offered to do in the Joint Brief. [*21] See Joint Brief at
13.
D. Testimony Re: Sun-Veritas Agreement
In the parties' initial joint two-page letter, Sun stated
that it "has agreed to produce a witness who participated
in the negotiations of the Sun-Veritas agreement, to the
extent such a person exists. Sun also agrees to produce
information regarding payments Sun made to Veritas
pursuant to the agreement, to the extent such information
exists." Based on this concession, the Court's November
30, 2009 Order required Sun to produce a witness and
information on the Sun-Veritas agreement to the extent
the information exists.
Sun now claims that it cannot find any witness
knowledgeable about the Sun-Veritas negotiations
thirteen years after the fact, after interviewing six
individuals within Sun to find an appropriate witness. See
Williamson Decl. P 6. Sun further claims that it is still
investigating whether it possesses information regarding
payments made to Veritas pursuant to the agreement, and
agrees to produce a deponent to testify regarding
payments for two hours only if documents on the subject
are not self-explanatory. NetApp counters that, even if no
knowledgeable individual remains at Sun, Sun has a duty
to prepare a 30(b)(6) [*22] witness based on
documentation and responsive information provided by
those tangentially related to the transaction. NetApp
further contends that Sun cannot impose a unilateral time
limit on the deposition.
Sun's declaration does not address efforts made to
locate documentation relating to payments made to
Veritas under the agreement, but its portion of the brief
states that it is still investigating whether these

Page 7
2009 U.S. Dist. LEXIS 122779, *22

documents exist. Because it is unlikely that there is no
remaining documentation regarding this agreement
and/or payments made pursuant to it, NetApp's request
for documents is GRANTED. Sun is ordered to undertake
all reasonable efforts to locate any such documentation
and provide a deponent to testify about the documents for
a period of no more than three hours. Regarding the
Sun-Veritas negotiations, Sun has persuasively argued
that it cannot prepare a witness on the topic because there
is no one remaining with knowledge, and therefore
NetApp's request as to testimony on the negotiations is
DENIED.
E. Testimony and Documents Re: Sun Prior Art and
Product Comparisons
NetApp seeks a 30(b)(6) witness to testify about the
structure, function and operation of three Sun prior art
[*23] products - SunNetManager, SyMON, and
SunReMon.
NetApp argues that a recent deposition confirmed
that current Sun employee Michael Wookey has personal
knowledge about SunNetManager and SunReMon, and
that Sun has internal documentation regarding its
historical products. NetApp also argues that
documentation about these products was updated on the
SunSolve Website as recently as 2009, but Sun has not
produced all documents relating to these products. Sun
argues that it has not been able to locate a witness on
these products, and does not address NetApp's point
regarding Mr. Wookey, but agrees to produce a witness if
it is able to identify one.
NetApp's request is GRANTED, and Sun is Ordered
to produce Mr. Wookey or some other knowledgeable
deponent to testify about these products and any available
historical documentation relating to them. With respect to
the documents on the SunSolve Website, Sun argues that
they were not updated in 2009 (and indicates that the date
could reflect the date that NetApp counsel reviewed the
documents and not the date of creation or update), and
that it has produced all documents relating to these
products. Sun is Ordered to produce any additional
documents [*24] on these products to the extent they
have not previously been provided, and to provide a
declaration confirming what it has done to search for and
produce all responsive documents.
NetApp also seeks 30(b)(6) testimony on the
structure, function and operation of three other Sun

products - Tapestry, MPxIO and Solaris - as well as any
comparisons between these products and SANscreen. Sun
contends that the only employee with knowledge of these
topics is Hyon Kim, and Mr. Kim has already been
questioned on these topics in his personal capacity. Sun
states that there is no other information to be gained from
Mr. Kim through a 30(b)(6) deposition. NetApp counters
that its prior deposition of Mr. Kim was as a named
inventor on the '951 patent, and should not substitute for
corporate testimony on how the products actually
functioned that is relevant to a prior art analysis. The
court agrees with NetApp that Mr. Kim's personal
testimony as a patent inventor is different than corporate
testimony about prior art, even if the topics to be covered
overlap. NetApp's request is therefore GRANTED. Sun is
Ordered to produce Mr. Kim as a 30(b)(6) witness on the
topics listed for a deposition of no more [*25] than two
hours, limited in scope to cover only prior art analysis of
the products in question (and any comparison to
SANscreen) from a corporate perspective and shall not be
duplicative of Mr. Kim's prior deposition.
F. Interrogatories 34 and 35
Interrogatory 34 seeks information regarding testing
of each Sun Accused Product. Sun argues that the request
is overbroad in that it seeks testing information about
over 100 hardware products that are irrelevant to this
litigation. NetApp counters that the request is relevant to
infringement and willfulness because it reveals
information about design, features and operation. NetApp
states it has "made clear" that the interrogatory is directed
primarily toward testing of pertinent accused features.
NetApp also notes that Sun propounded similar
interrogatories regarding testing of NetApp products, and
NetApp provided a substantive response. This
interrogatory is overbroad, and NetApp's request is
therefore GRANTED IN PART and DENIED IN PART.
NetApp is Ordered to limit its request to testing of
pertinent accused features of the Accused Products, and
Sun is Ordered to respond to the interrogatory as
modified.
Interrogatory 35 seeks information about [*26]
support, maintenance and other services Sun provides for
the Accused Products. NetApp concedes that Sun has
provided some relevant documents on this topic, and that
Sun has agreed to further supplement its response in its
portion of the Joint Brief. However, NetApp argues that
the information is incomplete because Sun has not agreed

Page 8
2009 U.S. Dist. LEXIS 122779, *26

to "identify customers for hardware service or identify
hardware learning services." Joint Brief at n.8. Sun
responds that NetApp raised this issue for the first time
on December 9 during the drafting of the Joint Brief, and
Sun does not understand what NetApp means. NetApp's
final complaint regarding Interrogatory 35 is unclear, and
the parties are Ordered to further meet and confer on this
issue because Sun's supplemental response to the
interrogatory may satisfy NetApp's concern without the
need for Court involvement.
III. Sealing Requests
The parties have also submitted requests to have
various documents relating to the Joint Briefs filed under
seal. Specifically, they seek to file under seal:
A. Discovery NetApp Seeks From Sun
.The unredacted version of the Joint
Brief
. Exhibits 2, 4, 8, 9, 12 and 26 to the
Ho Declaration in Support

. Exhibits B, C, H, J, M, O, P, and Q
to the Ho Declaration in Support
. Exhibits B, C, and D to the
Williamson Declaration In Support

The parties have submitted declarations stating that
the documents listed above contain confidential
information, much of which has been designated as
Confidential or Highly Confidential under the parties'
stipulated protective order, that could cause competitive
harm if disclosed. Neither party has filed an objection to
the other's sealing request. The Court finds that good
cause has been shown for sealing because the documents
contain confidential business information which could
cause harm to the parties if publicly disclosed. The
parties' respective sealing requests are therefore
GRANTED in their entirety.
IT IS SO ORDERED.
Dated: December 21, 2009
/s/ Elizabeth D. Laporte

. Exhibits A and B to [*27] the
Williamson Declaration in Support
B. Discovery Sun Seeks From
NetApp

ELIZABETH D. LAPORTE
United States Magistrate Judge