Elan Microelectronics Corporation v. Apple, Inc.

Filing 396

RESPONSE (re 357 MOTION to Compel Discovery on Various Issues ) REDACTED filed byApple, Inc.. (Greenblatt, Nathan) (Filed on 8/12/2011)

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MATTHEW D. POWERS (Bar No. 104795)
[e-mail]
TENSEGRITY LAW GROUP LLP
201 Redwood Shores Parkway, Suite 401
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: [phone]
JARED BOBROW (Bar No. 133712)
[e-mail]
SONAL N. MEHTA (Bar No. 222086)
[e-mail]
DEREK C. WALTER (Bar. No. 246322)
[e-mail]
NATHAN GREENBLATT (Bar No. 262279)
[e-mail]
WEIL, GOTSHAL & MANGES LLP
Silicon Valley Office
201 Redwood Shores Parkway
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: [phone]

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Attorneys for Defendant and Counterclaim Plaintiff
Apple Inc.

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

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ELAN MICROELECTRONICS
CORPORATION,
Plaintiff and Counterclaim
Defendant,

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

v.

APPLE’S OPPOSITION TO ELAN
MICROELECTRONICS
CORPORATION’S MOTION TO
COMPEL DISCOVERY ON VARIOUS
ISSUES

APPLE INC.,
Defendant and Counterclaim
Plaintiff.

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DATE:
TIME:
JUDGE:
CTRM:

August 30, 2011
10:00 a.m.
Hon. Paul S. Grewal
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CONFIDENTIAL – ATTORNEYS’ EYES ONLY
FILED UNDER SEAL

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APPLE’S OPPOSITION TO ELAN’S MOTION
TO COMPEL RE: VARIOUS ISSUES

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

TABLE OF CONTENTS

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Page

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I.
II.

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III.
IV.

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V.

INTRODUCTION ...............................................................................................................1
ELAN’S MOTION TO COMPEL FINANCIAL INFORMATION ON NONACCUSED PRODUCTS SHOULD BE DENIED ..............................................................2
A.
Elan Never Propounded Discovery Requests Directed to Financial
Information for Non-Accused Products ...................................................................3
B.
The Requested Discovery Is Irrelevant ....................................................................6
1.
There Is No Viable Comparison Between The Accused Products
And Non-Accused Products.........................................................................6
2.
The Burden of the Requested Discovery Outweighs Any Alleged
Benefit ..........................................................................................................9
ELAN’S DEMAND FOR COMMUNICATIONS REGARDING THIRD PARTY
SUBPOENAS WAS MOOT BEFORE ELAN EVEN FILED ITS MOTION..................11
ELAN’S DEMAND FOR TESTING TOOL DATA IS OVERLY BROAD AND
UNDULY BURDENSOME ..............................................................................................12
A.
Elan’s Discovery Request Is Overly Broad and Unduly Burdensome ..................13
B.
Elan Has Refused Any Compromise to Balance the Burden of Its Request..........15
CONCLUSION ..................................................................................................................16

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TO COMPEL RE: VARIOUS ISSUES

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

TABLE OF AUTHORITIES

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Page(s)

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CASES

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Florer v. Cheryl Johnson-Bales,
No. C06-5561, 2010 U.S. Dist. LEXIS 20939 (W.D. Wash. Feb. 16, 2010) ........................... 5

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In re Fontaine,
402 F. Supp. 1219 (E.D.N.Y. 1975).......................................................................................... 9

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Jones v. Martinez,
No. 04-cv-6318, 2008 U.S. Dist. LEXIS 103278 (E.D. Cal. Dec. 15, 2008) ........................... 5

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OTHER AUTHORITIES

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Fed. R. Civ. P. 26(b)(2)(c)(iii) ........................................................................................................ 9
Local Rule 37-2............................................................................................................................... 3
Rule 26 ................................................................................................................................... passim
Rule 34 ........................................................................................................................................ 1, 6

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APPLE’S OPPOSITION TO ELAN’S MOTION
TO COMPEL RE: VARIOUS ISSUES

ii

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

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I.

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INTRODUCTION

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Every aspect of Elan’s motion on “various issues” suffers from fundamental problems,

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whether they be logical, substantive, procedural, or some combination thereof. To start, roughly

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half of the discovery Elan seeks in its motion is already in its possession. For instance, Elan seeks

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detailed financial discovery on non-accused MacBook products without multiple-finger input.

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However, there is no such information to be had because there are no such non-accused MacBook

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products. To the contrary, all MacBook products that have ever been released are actually

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accused of infringing.

Accordingly, Apple has already produced to Elan relevant financial

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information for these products. Likewise, Elan demands that Apple produce all correspondence it

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has had with third parties in pursuing document subpoenas.

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produced this correspondence. Elan’s motion even includes as an exhibit an email that Apple sent

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before Elan filed its motion in which Apple unambiguously agreed to produce the requested

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correspondence.

However, Apple has already

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Where Elan’s motion seeks discovery not already in its possession, or that Apple had not

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already agreed to produce, its discovery demands suffer from different foundational problems.

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Most notably, Elan seeks detailed financial discovery on 24 different non-accused iPod products

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going back to 2003.

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prejudicial, unnecessary, and burdensome—was never actually requested in a proper Rule 34

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document request. In fact, as set forth below, this portion of Elan’s motion represents a motion to

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compel discovery that was informally demanded for the first time just a few weeks ago in a meet

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and confer email.

This discovery—in addition to being invasive, irrelevant, potentially

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The final portion of Elan’s “various issues” motion is a demand that Apple search for and

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collect every single document ever generated by every single Apple engineer using internal

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testing tools that date back as far as seven or eight years. On its face, this discovery demand for

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seven to eight years worth of raw data—which is not stored in a central repository but would have

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to be collected through a laborious search of custodial documents of dozens of engineers—is

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fatally overbroad and unduly burdensome. Yet Elan confirmed during meet and confer that this is
APPLE’S OPPOSITION TO ELAN’S MOTION
TO COMPEL RE: VARIOUS ISSUES

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

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precisely what it wanted, otherwise refusing to narrow the scope of its demand or propose any

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compromise solution, even though it is undeniably in possession of information that would allow

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it to formulate a meaningful narrowed request. Indeed, in the face of Elan’s refusal to narrow its

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discovery request, Apple proposed a compromise before Elan filed its motion, the record of which

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Elan failed to submit to the Court.

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narrowed discovery proposal, confirming that it is demanding the overbroad discovery called for

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by the literal terms of its document requests.

Since that time, Elan has completely ignored Apple’s

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Even standing in isolation, the over breadth of Elan’s requests is apparent. When viewed

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in the context of the overall discovery effort in this litigation—as it must be under Rule 26—this

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over breadth raises serious concerns about Elan’s recent hunger for discovery and motion

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practice. Taking into account discovery in the parallel ITC Investigation that the parties have

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agreed is usable in this action, Elan has served 67 Interrogatories, 72 requests for admission, and

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142 requests for production relevant to this case. It has received over 2.8 million pages of Apple

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documents (from countless custodians and central repositories), relevant source code, and the

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opportunity to inspect and collect for itself data from multiple internal Apple testing tools. By the

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close of discovery, Elan will have taken the depositions of at least 16 Apple witnesses. Any

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reasonable appetite for discovery would have long since been sated. Yet Elan persists in seeking

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discovery that it has not properly requested, does not need and cannot justify under applicable

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discovery rules. This motion should be denied.

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II.

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ELAN’S MOTION TO COMPEL FINANCIAL INFORMATION ON NON-ACCUSED
PRODUCTS SHOULD BE DENIED

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By its motion, Elan seeks “[s]ales, profit, cost information, in native spreadsheet format,

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for iPod and MacBook products without the Multi-Touch feature since 2003.” Mot. at 2-3, 9.

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However, Elan never actually served a discovery request seeking such information. Indeed,

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putting aside Elan’s creative interpretation of its own discovery requests, the reality is that Elan’s

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motion is based solely on a demand for information in a meet and confer email sent less than a

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month ago on July 13, 2011. This alone warrants a denial of this portion of Elan’s motion.
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TO COMPEL RE: VARIOUS ISSUES

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Elan’s motion should be denied on Rule 26 grounds as well. Elan’s motion seeks detailed

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and invasive discovery for at least 24 non-accused products and all variants thereof on the theory

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that this information will help it with its damages case. See Dkt. No. 341. Briefly, Elan seeks

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discovery that will purportedly allow it to compare financial information for products with

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multiple-finger input to financial information for products without multiple-finger input. Elan

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then hopes to somehow use the results to isolate the economic value of multiple-finger input

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alone. However, the non-accused iPod products that Elan seeks full-financial discovery on are

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vastly different from the accused iPod touch products. As set forth in detail below, although the

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names of the products have one word in common, any meaningful similarity ends there. Indeed,

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the products are so vastly different that it simply makes no sense to compare them for the purpose

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of isolating the value of multiple-finger input. As to the MacBook products that Elan seeks

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financial information on, all MacBook products that have ever been released are accused of

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infringing in this case, and that Apple has already provided Elan with full financial information

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for such products. This portion of Elan’s motion should be denied as moot.

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A.

Elan Never Propounded Discovery Requests Directed to Financial
Information for Non-Accused Products

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Pursuant to Civil Local Rule 37-2, “a motion to compel further responses to discovery

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requests must set forth each request in full . . . .” Thus, consistent with foundational discovery

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principles, the Local Rules contemplate as a prerequisite to any motion to compel an underlying

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discovery request.

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financial information for non-accused products—is not truly based on a discovery request, but on

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a demand articulated for the first time in a meet and confer email sent less than one month ago.

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Yet, Elan’s motion—which seeks native format spreadsheets detailing

Elan alleges in its motion that the detailed financial information it seeks is called for by
the following three Elan document requests:

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REQUEST FOR PRODUCTION NO. 79:

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All documents relating to any internal analysis or study of
anticipated and realized changes in profit price, profits per units and
sales volumes due to the incorporation of the Accused
Instrumentality and/or Multi-Touch technology into the Accused
Products.

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TO COMPEL RE: VARIOUS ISSUES

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

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REQUEST FOR PRODUCTION NO. 80:

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All documents related to customer acceptance of the iPod Touch
compared to the iPod without the Multi-Touch technology.

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REQUEST FOR PRODUCTION NO. 81:
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All documents related to customer acceptance of MacBooks with
Multi-Touch technology compared to those without.

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According to Elan, these document requests call for “[s]ales, profit, cost information, in native

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spreadsheet format, for iPod and MacBook products without the Multi-Touch feature since 2003.”

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Mot. at 9. Elan’s position is simply not credible. All of these requests pertain, at most, to

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marketing information that addresses the “Multi-Touch” feature in Apple products. Indeed,

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Request No. 79 appears to seek analyses related to anticipated or realized profits from Multi-

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Touch—it says nothing about financial spreadsheets in native form for non-accused products.

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Likewise, Request Nos. 80-81, both seek documents related to “customer acceptance” of Multi-

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Touch. Although Elan’s “customer acceptance” language is not a beacon of clarity, it brings to

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mind such discovery as customer surveys and/or market research, of which Apple has produced

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tens of thousands of pages. One thing it decidedly does not capture, however, is sales and

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revenue spreadsheets for non-accused products.

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Notably, when Elan actually intended to ask for native format spreadsheets that set forth

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specific detailed financial information, it did so. For instance, Elan sought financial information

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for the “Accused Products” and “Accused Instrumentality” in its Request No. 78:

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REQUEST FOR PRODUCTION NO. 78:

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Monthly and annual summary documents, in excel format, from
which the following may be determined regarding the Accused
Instrumentality for each of the Accused Products, since January 1,
2003,

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g.

total quantity of units purchased, first and last purchase date,
purchasing price, identity of the suppliers, manufactures,
vendors or sellers of the units

h.

cost of units purchased, including but not limited to, cost
bills of material or negotiated prices for component costs,
direct labor and materials, indirect labor and materials costs,
manufacturing, production and overhead cost, and other
standard costs and any associated variances;

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APPLE’S OPPOSITION TO ELAN’S MOTION
TO COMPEL RE: VARIOUS ISSUES

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

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i.

any claimed relevant allocation of overhead, the detail of
costs included in such overhead and the bases and methods
for allocating such overhead to the Accused Products;

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research and development
Instrumentality;

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total gross and net revenues that is generated by the Accused
Instrumentality from sales in the United States, if the
Accused Instrumentality is sold separately from the Accused
Products; and

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the underlying documents reflecting or relating to the
method of determining revenue and costs in items (a)
through (e).

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costs

for

the

Accused

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Id. In nearly 150 document requests served by Elan, there is no parallel request for products that
are not accused of infringement.

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In short, there was never any such request for documents of the type Elan now seeks. In

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fact, it was not until a July 13, 2011 discovery email that Elan stated for the first time “[i]n

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addition, for this category of discovery, Elan further requests that Apple provide, in native

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spreadsheet format, sales, pricing, profit and cost information for the accused products, and the

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non-accused older versions of the same products without the multi-touch function or without the

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use of multiple fingers.” Exh. 1 [July 25 email chain between D. Walter and J. Bu].1 Elan’s

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attempt to tack on a discovery request in a meet-and-confer email is inadequate, and its attempt to

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then enforce its email demand through a motion to compel is improper. See Jones v. Martinez,

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No. 04-cv-6318, 2008 U.S. Dist. LEXIS 103278, at *5 (E.D. Cal. Dec. 15, 2008) (“A review of

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the discovery documents indicates that plaintiff never requested a copy of the videotape.

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Therefore, plaintiff’s motion to compel production of the videotape of the incident is denied.”);

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Florer v. Cheryl Johnson-Bales, No. C06-5561, 2010 U.S. Dist. LEXIS 20939, at *6 (W.D. Wash.

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Feb. 16, 2010) (“Plaintiff did not request that the Defendants produce documents related to

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interrogatory number 17. Plaintiff cannot use a motion to compel to obtain a response to a

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question that was never posed to Defendants.”). In short, Elan’s RFPs 79-81 request a specific set

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All exhibits are to the Declaration of Nathan A. Greenblatt in Support of Apple’s
Opposition to Elan Microelectronics Corporation’s Motion To Compel Discovery On Various
Issues.
APPLE’S OPPOSITION TO ELAN’S MOTION
TO COMPEL RE: VARIOUS ISSUES

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of documents, not whatever documents Elan later decides it needs to conduct the “comparative

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analysis” purportedly “called for” by the requests. See Mot. at 3.

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B.

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To the extent the Court entertains Elan’s discovery request despite its failure to propound

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a proper Rule 34 document request, Elan’s motion should still be denied. As set forth below, the

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discovery Elan seeks is either already in its possession, or irrelevant, burdensome, invasive, and

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just plain unnecessary. As such, the Court should exercise its discretion pursuant to Rule 26 to

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deny the discovery Elan now requests.

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The Requested Discovery Is Irrelevant

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There Is No Viable Comparison Between The Accused Products And
Non-Accused Products

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During the parties’ meet and confer, Elan stated that it “requests that Apple provide, in

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native spreadsheet format, sales, pricing, profit and cost information for the accused products, and

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the non-accused older versions of the same products without the multi-touch function or without

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the use of multiple fingers.

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compared to the iPod products without the multi-touch technology, and accused MacBook sales

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information compared to those older versions without the multi-touch function.” Exh. 1 [July 25,

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2011 email chain between D. Walter and J. Bu]. In its motion, Elan ultimately requested only

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information for the “iPod and MacBook products without the Multi-Touch feature since 2003.”

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Mot. at 9. As noted above, for the MacBook products, Elan already has full financial information

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for all such products (including all version of the MacBook and MacBook Pro line of products)

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because they are all accused of infringing in this case. As such, this portion of Elan’s motion

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should be denied as moot.

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For example, we are requesting iPod touch sales information

Elan’s request for financial discovery related to Apple’s iPod products, on the other hand,

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should be denied under a basic Rule 26 analysis.

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information is relevant does not withstand even the most basic scrutiny. In short, Elan would like

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to compare financial information for Apple’s iPod products, which do not include multiple-finger

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input, to financial information for Apple’s iPod touch products, which do include multiple-finger

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input. Ostensibly, Elan contends that the differential in such information may be attributed to the
APPLE’S OPPOSITION TO ELAN’S MOTION
TO COMPEL RE: VARIOUS ISSUES

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Indeed, Elan’s theory as to why such

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

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presence of multiple-finger input in the iPod touch products. Although the Court is likely familiar

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with these products and does not require an explanation as to just how dissimilar they are, Apple

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summarizes the stark difference between these products for completeness.

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At the outset, although the iPod classic, iPod shuffle, iPod nano, and iPod touch products

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all have the word “iPod” in their names, they actually represent completely different product

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families. Indeed, former Apple engineer Greg Marriott, who worked on iPod products, testified

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as follows just a few weeks ago that the iPod classic and iPod touch are in “whole different

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product famil[ies]”:

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Q.

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A.
Q.
A.

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Do you recall any conversations about that with regard to
the iPod touch product?
No. Our team wasn’t involved in developing that product.
What team was involved in developing the iPod touch?
I don’t know. It just wasn’t ours. It shipped with the name
iPod, but it's a whole different product family, so . . .

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Exh. 2 [Marriott July 26, 2011 Dep. Tr.] at 74:15-24 (objections omitted).2
A picture showing an iPod classic on the left and an iPod touch on the right confirms this

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testimony and vividly reveals the major differences between the two classes of products:

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Emphasis added throughout, unless otherwise noted.

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Compare Exh. 3 [iPod classic] with Exh. 4 [iPod touch]. The iPod classic product on the left is a

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device primarily for the purpose of storing and playing back media. As such, it includes a limited

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list of menu items, most notably menu items for music, videos, photos, and podcasts. While it is

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capable of displaying videos and images, it does not include a sophisticated graphical user

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interface. Rather, it incorporates a scrollable text based menu system that the user scrolls through.

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The iPod touch shown on the right is a completely different product. See, e.g., Exh. 5

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[iPod touch features] (“In fact, the iPod touch has so much technology, you’ll forget it’s an

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iPod.”). It is lighter, thinner, and has longer battery life compared to the iPod classic. In addition

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to including functionality for music, videos, photos, and podcasts, the iPod touch has WiFi

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capability that allow users to access email and Internet using the Mail and the Safari web browser

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applications. Unlike the iPod classic, the iPod touch includes front and back-mounted cameras

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that take photos and HD video, and allow users to engage in video calls using the FaceTime

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application. See id. The iPod touch also comes standard with a stock monitoring application, a

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Google Maps application, a weather application, a YouTube application, and productivity

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applications including notes, an alarm clock, and a calculator, among others. See id. In addition,

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unlike the iPod classic, the iPod touch may also be used to access Apple’s iOS “App Store,”

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where users may browse and download hundreds of thousands of different individual applications

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of a range of different types for use with the device. See id. These apps, once stored on the

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device, may then be organized into user-defined groups and folders, and may later be accessed

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using a customizable graphical user interface. In short, the iPod touch is, in essence, a portable

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computing device with a wildly different feature set from any of the other iPod products, which is

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why within Apple “it’s [in] a whole different product family.”

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Given the radical differences in the feature sets of the various other iPod products and the

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iPod touch, it simply does not follow that any difference in cost, revenue, or pricing information

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between the iPod touch and other iPod products can be meaningfully attributed to or even

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correlated to multiple-finger input. In fact, Elan has never suggested any manner of disentangling

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economic information related to multiple-finger input from the bulk economic information related

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to the multiplicity of features in the iPod touch and iPod products. Consistent with this, there are
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TO COMPEL RE: VARIOUS ISSUES

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

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24 different iPod products—from the iPod classic to the iPod shuffle—that have been released by

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Apple since 2003, yet Elan makes no effort to try and narrow its request to iPod products that it

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could reasonably compare to the iPod touch, presumably because there is no reasonable

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comparison. See Exh. 6 [iPod models]. Indeed, the other Apple products sold under the “iPod”

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name include even fewer features than the iPod classic and are even more different from the iPod

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touch. For example, Apple’s iPod shuffle product lacks any display screen, measures one square

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inch and can only play music. Exh. 7 [iPod shuffle]. Elan’s motion does nothing to suggest any

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comparison that would pass muster as sound economic analysis for any iPod product at all, let

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alone all versions of all iPod products since 2003.

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Notably, Elan argues in its motion that “the issue for discovery is relevance, not the

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alleged strength or weakness of a party’s ultimate position.” Mot. at 5. Elan’s request that the

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Court ignore the “strength or weakness” of Elan’s position in ordering Apple to produce extensive

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financial information about products that are not at issue in this case is contrary to both law and

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logic. “While the standard of relevancy is a liberal one, it is not so liberal as to allow a party to

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roam in shadow zones of relevancy and to explore matter which does not presently appear

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germane on the theory that it might conceivably become so.” In re Fontaine, 402 F. Supp. 1219,

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1221 (E.D.N.Y. 1975). Here, Elan has not even attempted to articulate a theory of relevance

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beyond asserting that it later plans to undertake some unspecified comparison based on nothing

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more than the fact that several vastly different products all share the name “iPod.” Accordingly,

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the Court is well-justified in keeping the door to further discovery shut.

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2.

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The Burden of the Requested Discovery Outweighs Any Alleged
Benefit

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The Federal Rules of Civil Procedure embody a rule of proportionality, providing that

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even if requested discovery is relevant, it should nonetheless be denied if the Court determines

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that “the burden or expense of the proposed discovery outweighs its likely benefit, considering the

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needs of the case, the amount in controversy, the parties’ resources, the importance of the issues at

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stake in the action, and the importance of the discovery in resolving the issues.” Fed. R. Civ. P.

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26(b)(2)(c)(iii).
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Case No. C-09-01531 RS (PSG)

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The totality of these factors weighs against additional discovery relating to the non-

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accused iPod products. First, given the marked differences between the iPod and iPod touch

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products, it makes no sense to compare them for the purpose of determining the value of just one

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feature in the iPod touch products (i.e., multiple-finger input), and such comparisons will thus

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shed no light on Elan’s case. See supra Part II.B. At the same time, the burden and scope of what

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Elan demands is disproportionate. According to Elan, it is “merely requesting the same type of

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spreadsheets of accused products’ sales information for a few additional previous generations of

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the accused products.” Mot. at 6. In fact, Elan is asking for financial data for all iPods going

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back eight years to 2003. This encompasses 24 different iPod models, and includes all but three

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iPod models that have ever been released. See Exh. 6 [iPod models]. Such discovery, in addition

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to being burdensome, is invasive, particularly in light of the fact that none of the iPod products are

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actually accused in this case. In its motion, Elan makes no effort to try and cabin its discovery

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request or identify the specific iPod products it believes might make a reasonable comparison to

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the iPod touch. Instead, it just demands a mass of financial information for 24 previous products,

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none of which are accused.

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The burden of collecting this discovery is exacerbated by the tardiness of Elan’s discovery

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motion. Indeed, this action has been pending since April 2009, yet as set forth below, Elan never

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actually propounded discovery seeking the information sought in the instant motion.

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discovery requests that Elan alleges pertain to the instant motion were not served until April 12,

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2011, roughly two years into the case. Elan then waited three additional months—until July 13,

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2011—to tell Apple for the first time that it was interpreting its discovery requests creatively to

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require financial information for non-accused products. Now, with the parties busy trying to

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complete discovery efforts, Elan demands that Apple provide extensive unnecessary discovery on

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a topic that will yield no meaningful information.

The

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In addition to being unduly burdensome, the discovery Elan seeks also creates a

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significant risk of prejudice to Apple. Apple’s iPods are among the most successful consumer

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electronics products of the last ten years and the sales figures for all iPods going back to 2003

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represent an enormous dollar figure completely untied to Elan’s infringement allegations in the
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case. The introduction of such massive revenue numbers—in the billions of dollars—under the

2

guise of some sort of comparative analysis invites prejudice to Apple.

3

Finally, there is little benefit to the discovery Elan now seeks given the other discovery

4

already available to Elan. Apple has already expended significant resources to provide Elan with

5

extensive damages-related discovery, including detailed financial information for the accused

6

products and the components of the accused products that actually embody the accused

7

functionality, Apple has also provided Elan with extensive licensing, marketing, market research

8

and technical information. This extensive discovery sheds light on the Georgia-Pacific factors,

9

including the value of the accused functionalities relative to the products as a whole. In light of

10

the discovery that Elan already has at its disposal, any additional discovery regarding eight years

11

of financial information for non-accused iPod products would be irrelevant, prejudicial, and

12

burdensome and unnecessary.

13

III.

14

ELAN’S DEMAND FOR COMMUNICATIONS REGARDING THIRD PARTY
SUBPOENAS WAS MOOT BEFORE ELAN EVEN FILED ITS MOTION

15
16

The second part of Elan’s motion pertains to communications that counsel for Apple has

17

had with third parties in pursuing document subpoenas. Briefly, Apple served subpoenas on a

18

number of Elan’s putative customers in an effort to collect information regarding the presence of

19

Elan touchpads and touchscreens in the United States. In its motion, Elan contends that “Apple

20

has ignored Elan’s repeated requests for production of all of its communications with Elan

21

customers . . . .” Mot. at 7. Yet, Elan’s motion includes as an exhibit a six-page chain of email

22

correspondence between the parties on this issue. See Dkt. No. 358, Exh. E. Importantly, the

23

final part of that correspondence includes Apple’s unambiguous agreement “to produce the

24

correspondence you seek this week, along with any formal responses you have not already

25

received.” Id. Apple produced that correspondence just days later as promised, and this portion

26

of Elan’s motion is thus moot. Indeed, given that Apple agreed to produce the correspondence

27

Elan demands before Elan even filed its motion, this portion of Elan’s motion simply never

28

should have been presented to the Court.
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IV.

2

ELAN’S DEMAND FOR TESTING TOOL DATA IS OVERLY BROAD AND UNDULY
BURDENSOME

3
4

In its motion, Elan innocuously requests that Apple simply produce “[a]ll documents

5

responsive to RFPs 101-104 relating to the accused functionality of the accused products.” Mot.

6

at 9. Yet, Elan never sets forth these document requests in its motion, nor does it state with any

7

precision the magnitude and scope of what it is actually seeking. In fact, Elan’s request—made

8

with only a few weeks left in the fact discovery period—is vast, excessive, and unduly

9

burdensome. Elan Request for Production Nos. 101-104 seek raw data from testing tools that date

10

back to 2003. Elan thus demands eight years worth of raw data. This data is not maintained in

11

some sort of central repository or database, nor is it even generated systematically during

12

operation of the tools, but is logged in raw data files in “one-off circumstances” or reflected in

13

one-off screen captures, and accordingly, if it exists, resides on the hard drives and in the email

14

files of engineers on an ad hoc basis. See Exh. 8 [Aug. 7, 2011 S. Cinereski Dep. Tr. (Rough)] at

15

101:21-102:7. As a result, Elan effectively demands that Apple investigate and identify which of

16

its many engineers may have used the testing tools in question, determine whether they ever chose

17

to log or capture any data from their use of the tools, and then search through the custodial

18

documents and email to identify, collect, and produce data sets and screenshots that may have

19

been recorded.

20

Had this request come at the start of discovery two years ago, it would still be staggeringly

21

overbroad and unduly burdensome. That burden is only exacerbated by Elan’s delay. Elan has

22

long been in possession of information regarding the tools themselves and the individuals who

23

designed and/or used those tools. Weeks ago, Elan even filed an emergency motion to compel the

24

unrecorded inspection of one of those tools, and has since inspected both tools from which it now

25

seeks discovery. As such, Elan is in possession of information that would enable it narrow its

26

request to what it reasonably believes it needs for its case. Yet, it has consistently refused to do

27

so, and has ignored—and failed to submit to the Court—a compromise proposal that Apple made

28

before Elan filed its motion. Thus, it is clear that Elan truly does seek to have Apple try to track
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TO COMPEL RE: VARIOUS ISSUES

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down eight years worth of raw data from the hard drives and email files of engineers who may

2

have used these testing tools. This sweeping discovery request violates the requirements of Rule

3

26, and Elan’s motion should accordingly be denied.

4

A.

5

The document requests upon which Elan moves are as follows:

Elan’s Discovery Request Is Overly Broad and Unduly Burdensome

6

REQUEST FOR PRODUCTION NO. 101:

7
8

All documents and things relating to the tools described in
APEL0497107, including data or screenshots obtained from the
tools.

9

REQUEST FOR PRODUCTION NO. 102:

10
11

All documents and things generated through the use of Apple’s
, including but not limited to data files and
screenshots.

12

REQUEST FOR PRODUCTION NO. 103:

13

All documents and things related to or generated by Apple’s
Tool, including screenshots.

14
15
16
17
18
19

REQUEST FOR PRODUCTION NO. 104:
All documents and things generated by the
or
algorithms, e.g. APEL0497107, APEL0500763, APEL0500875,
APEL0501220
Thus, by these requests, Elan seeks “[a]ll documents” ever generated by Apple’s
algorithms, “[a]ll documents” obtained from Apple’s

or
tool, and

20

“[a]ll documents” generated by Apple’s

21

by Apple engineers for years, dating back as far as 2003, and, as Elan indicates, may be used to

22

generate voluminous log files recording the raw data that results from finger contact on an Apple

23

touchpad or touchscreen or may be used to generate screenshots. Although not all engineers at

24

Apple utilize these tools, the full scope of the group of engineers that have used them over the

25

years remains unclear. Accordingly, the magnitude of what Elan seeks by the literal terms of its

26

document requests is vast, and would require substantial amounts of onerous detective work on

27

the part of Apple and its legal team to collect. For instance, even if particular custodians are

28

identified, counsel is unaware of any way to search for the screenshots that Elan seeks or to
APPLE’S OPPOSITION TO ELAN’S MOTION
TO COMPEL RE: VARIOUS ISSUES

Tool. The tools Elan refers to have been in use

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ensure that all data generated by the tools has been identified. The screenshots are images that

2

cannot be searched using search terms. While some log files can be identifiable using search

3

terms, data generated from the “one-off” use of the testing tools can also simply be sets of

4

numbers pasted directly in an email or other document. Therefore, at best Apple could hope to

5

conduct a reasonable search for log files from a reasonably small set of custodians. On the other

6

hand, there is no reasonable way of systematically and comprehensively collecting screenshots or

7

data not in log files. Thus, on July 14, 2011 Apple objected to Elan’s discovery request seeking

8

“all documents and things related to or generated by Apple’s” tools as overly broad and unduly

9

burdensome.

10

As with Elan’s other last-minute discovery requests, the burden of these already excessive

11

discovery demands has been exacerbated by Elan’s lack of diligence in seeking discovery.

12

Indeed, Elan did not even serve the above discovery requests until June 14, 2011, more than two

13

years into the case and long after Elan had notice of the tools in question. As Elan acknowledges

14

in its motion, the tools in question were the subject of testimony during a hearing in a parallel ITC

15

Investigation that took place in February 2011 See Mot. at 7. Shortly after the hearing, Elan

16

requested an inspection of one of these tools, and the parties even conducted motion practice on

17

the issue of whether the inspections should be videotaped. See generally Dkt. No. 249; Dkt. No.

18

263. As Apple explained during the briefing process, Apple had produced documents relating to

19

these tools beginning over a year ago. See generally Dkt. No. 263 at 15-19 (public version of

20

Apple’s Opposition to Elan’s Motion to Compel Apple to Produce Testing Tool). This production

21

included documents that are precisely the sorts of testing results Elan is now seeking, which, as

22

noted above, Elan proudly identifies by Bates number in its discovery requests. Thus, there can

23

be no doubt that months, if not years, ago Elan was in a position to seek precisely the discovery it

24

now seeks. Now, with the parties busy trying to fulfill numerous other discovery obligations and

25

conclude discovery, Elan demands that Apple undertake a sweeping search through unknown

26

custodial files for raw data that may have been generated and recorded ad hoc over the last eight

27

years. This request is inappropriate and should be denied.

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B.

2

Notwithstanding the burden—indeed impossibility—of giving Elan what it claims to want,

3

Elan has repeatedly refused to make any effort to narrow the scope of its overbroad requests. For

4

example, at the outset of the meet and confer, Apple explained that there was no central source or

5

repository for the data Elan seeks, and repeatedly asked Elan if, in these circumstances, it was

6

truly demanding that Apple search custodial documents to identify and produce every document

7

generated by every use of either the

8

engineer. See Exh. 9 [July 26, 2011 email chain between D. Walter and P. Rathinasamy] at 1-2

9

(Elan “request[ing] all relevant documents produced by the Apple testing tools.”).

Elan Has Refused Any Compromise to Balance the Burden of Its Request

Tool or

tool by any Apple

Elan

10

confirmed repeatedly that this was precisely what it was seeking. Id. at 1. Elan took the position

11

that because these tools have been available since 2003, there is an appropriate time limit on the

12

scope of Elan’s request. See id. This is an empty concession. As an initial matter, Elan’s alleged

13

time limitation encompasses the entire lifetime of the tools in question. And, even if it did not, a

14

demand that Apple search through the files of individual engineers going back as far as seven to

15

eight years to try to determine whether some subset of them may have generated screenshots or

16

log files using one of multiple testing tools is the paradigm of an overbroad and unduly

17

burdensome request. Elan further takes the position that it has reduced the burden of its discovery

18

requests because it is “assisting Apple to locate relevant documents” by listing in its discovery

19

requests “exemplary documents already produced by Apple in this matter.” Mt. at 8. However,

20

during the meet and confer, Elan unambiguously confirmed that it was seeking every single

21

instance of the types of documents identified in its discovery requests. See Exh. 9 [July 26, 2011

22

email chain between D. Walter and P. Rathinasamy] at 1-2. In this regard, Elan’s “assistance”

23

does nothing meaningful to limit the scope of its requests or alleviate the burden of its request.

24

Given the vast scope of its requests and the associated burden, Elan should at least make a

25

reasonable effort to narrow the scope of its discovery requests based on information already

26

available to it. As noted above, Apple’s production includes numerous documents related to the

27

tools in question, the design and development of the accused products and related individuals,

28

such that Elan could capably identify a reasonable set of Apple engineers whose custodial
APPLE’S OPPOSITION TO ELAN’S MOTION
TO COMPEL RE: VARIOUS ISSUES

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documents it proposes that Apple search.

2

APEL0404758]. Accordingly, Apple suggested that Elan propose custodians for the search, but

3

Elan refused. See, e.g., Exh. Exh. 9 [July 26, 2011 email chain between D. Walter and P.

4

Rathinasamy] at 2-3. In an effort to resolve this issue, Apple itself proposed a reasonable set of

5

custodians that it could search for the type of data Elan is now seeking. See Exh. 9 [July 26, 2011

6

email chain between D. Walter and P. Rathinasamy] at 1. However, Elan never responded.

7

Instead, Elan pressed ahead with its motion, and in the process, chose not to provide the Court

8

with the correspondence confirming that Apple had proposed custodians for the search before

9

Elan filed its motion. Compare Bu Decl. (Dkt. No. 358) Exh. F with Exh. 9 [July 26, 2011 email

10

chain between D. Walter and P. Rathinasamy]. Notably, since Elan filed its motion, it has

11

remained silent and has failed to respond to Apple’s proposal or suggest any other sort of

12

compromise.

See, e.g., Exh. 10 [Document produced as

13

In short, the scope of Elan’s discovery requests is troubling, as is its refusal to work with

14

Apple to arrive at a reasonable scope of discovery in response to Elan’s requests. While Elan

15

complains that Apple’s over breadth and undue burden objections are “boilerplate,” the objections

16

are fully recognized under Rule 26 and are fully applicable here. Elan’s motion should be denied.

17

V.

18

CONCLUSION

19
20

For the foregoing reasons, Apple respectfully requests that Elan’s motion to compel be
denied on each of the “various issues” presented.

21
22

Dated: August 9, 2011

WEIL, GOTSHAL & MANGES LLP

23
24

By:

25
26

/s/ Sonal N. Mehta
Sonal N. Mehta
Attorneys for Defendant and
Counterclaim Plaintiff Apple Inc.

27
28
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Case No. C-09-01531 RS (PSG)