Elan Microelectronics Corporation v. Apple, Inc.

Filing 397

EXHIBITS re 384 Declaration in Support, REDACTED EXHIBIT 9 to the Declaration of Nathan Greenblatt In Support of Apple's Opposition to Elan Microelectronics Corporation's Motion to Compel Discovery on Various Issues filed byApple, Inc.. (Related document(s) 384 ) (Greenblatt, Nathan) (Filed on 8/12/2011)

EXHIBIT 9

Greenblatt, Nathan
From:
Sent:
To:
Cc:
Subject:

Walter, Derek
Tuesday, July 26, 2011 8:03 PM
Rathinasamy, Palani P.
Elan Apple Team; Apple Elan WGM Service
RE: Elan/Apple: Apple's Response to Elan's RFP Nos. 101-104

Palani:
During our meet and confer, I repeatedly asked you in no uncertain terms whether you were in fact seeking every
document generated by every use by any Apple engineer of either the
Tool or Multi-Touch tester tool. You
confirmed repeatedly that this was precisely what you were seeking. Below, you explain that you understand these
tools to have been available since at least 2003, and that this somehow appropriately limits the scope of your overbroad
request. It does not. A request for us to search through the files of individual engineers going back as much as seven to
eight years to try to determine whether some subset of Apple engineers may have generated one-off screenshots or log
files using one of multiple software tools plainly reflects an overbroad and unduly burdensome request. Likewise, your
identification of examples of the type of data you are requesting does nothing to limit the scope of your request or to
alleviate the burden of asking Apple to undertake a search apparently aimed at identifying a needle in a
haystack. Indeed, you confirmed unambiguously during the meet and confer that you were seeking every single
instance of the types of documents you identified in your discovery request.
In fact, there is no reason why you cannot make some effort to reasonably narrow your request. Apple's production
includes numerous documents related to the software tools in question, including correspondence regarding their use,
which provides you with ample information as to the identities of the Apple engineers who used them. Notably, you
have had these documents in your possession for at least a year; by now you should be able to identify the individuals
that you believe are most likely to have generated information relevant to your case. The fact that you instead demand
that Apple and its attorneys identify every engineer who may have used the tools in question and then search for and
collect any data they may have generated is troubling. The notion that you would need remotely this much data for
your case is not credible, and you provide no reason to suggest that the data from a targeted set of custodians would be
insufficient for your purposes.
Additionally, we note again that Elan did not even serve RFPs 101-104 seeking data from these tools until June 14, 2011,
more than two years into the case and long after Elan had notice of the tools in question. As noted above, Apple
produced documents relating to these tools over a year ago, including documents that you acknowledge are precisely
the sorts of testing results that you are seeking, based on our reasonable search. To the extent Elan claims it now needs
more than that, it has not explained its failure to serve these requests until June 14, 2011, more than two months after
Elan requested an emergency hearing with the Court demanding that Apple provide the
tool
itself. Now, with just a few weeks left in discovery, you demand that Apple undertake a sweeping search through
custodial files for every piece of available raw data that may have been generated on the fly from a pair of software
tools that you acknowledge date back years and that Apple has already made available to Elan for inspection.
Given the foregoing, Apple's objections are well-founded. Nevertheless, in the interest of compromise, Apple remains
willing to discuss a reasonable proposal that we go back and search again for additional data that may have been
generated from the use of these testing tools. While Elan has declined to engage in a meaningful discussion on such a
search, Apple would agree to search the files of Wayne Westerman and Stephanie Cinereski for additional raw data of
the sort you seek, to the extent not already produced. We believe that our offer to go back again and look for such
documents in their files is more than reasonable given the circumstances. Please confirm Elan agrees to this proposal or
let us know specifically what additional information Elan is requesting.
Thanks,
1

Derek
From: Rathinasamy, Palani P. [mailto:[e-mail]]
Sent: Tuesday, July 26, 2011 5:50 PM
To: Walter, Derek
Cc: Elan Apple Team; Apple Elan WGM Service
Subject: RE: Elan/Apple: Apple's Response to Elan's RFP Nos. 101-104

Derek,
You repeatedly mischaracterize our meet and confer. As I explained during the meet and confer, we request all relevant
documents produced by the Apple testing tools. These documents are relevant because Apple has argued and
continues to argue that Elan has presented no evidence that Apple performs multi-finger gestures. As you know, the
documents requested by Elan show Apple’s use of the Accused Products in an infringing manner. Thus, to the extent
that Apple continues to argue that Elan has not presented evidence that Apple employees use the Accused Products as
claimed by Elan, Elan requests these documents regardless of how the document was generated or who generated the
document. Those document are very likely to show Apple’s direct infringement.
Your e-mail requests that Elan somehow limit its request to specific custodians. However, you refused to identify any
Apple custodians who would be involved with the generation of the type of documents requested by Elan. In fact, you
failed to identify whether the data has yet been collected from Ms. Cinereski, the employee that I specifically identified
and who created one of the tools in question. Regardless, only Apple is in a position to know which of its engineers
possessed Apple’s testing tools and to gather the requested relevant data generated by those engineers. It appears
from our conversation that Apple has failed to do the most basic research to determine what information Apple itself
possesses. This is particularly true when you stated during the meet and confer that Elan somehow knows the contents
of Apple’s documents better than Apple does.
Finally, your e-mail, not surprisingly, omits that Elan has provided significant guidance as to its request. First, you
originally took the position that Elan’s request was overly burdensome because it was not limited in time in that it
requests data stretching back to 1995. As I explained during the meet and confer, it is our understanding that the
and
tool were created around late 2003 and late 2004 respectively, and that should
therefore limit the request in terms of time. In addition, as I explained during the meet and confer, Elan has provided
numerous examples of the types of relevant documents in its document request by pointing Apple to specific production
ranges and asked that all such data be produced.
To the extent that Apple fails to do the most basic search and instead continues to rely on boilerplate objections, we are
at an impasse and Elan will file a motion to compel on this issue.
Regards,
Palani
From: Walter, Derek [mailto:[e-mail]]
Sent: Tuesday, July 26, 2011 5:04 PM
To: Rathinasamy, Palani P.
Cc: Elan Apple Team; Apple Elan WGM Service
Subject: RE: Elan/Apple: Apple's Response to Elan's RFP Nos. 101-104

Palani:
I write to follow up on our meet and confer on Elan's RFP Nos. 101-04. During our call, you confirmed that you are
asking Apple to identify and produce every instance of every document and/or data set generated by any Apple
engineer who has ever used either the
or
tool. Put another way, you confirmed
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that you were asking us to produce every instance of every document of the exemplary types identified in your
discovery request. From the outset of the call, we explained that there was no central repository for such documents at
Apple. Moreover, given the age of the some of the tools in question, the nature of the data they generate (i.e.,
seemingly random sets of numbers), and the fact that data from these tools is generated as one-off screenshots or data
files ad hoc, it is extremely burdensome to search for the data you seek in the records of individuals custodians, if it even
exists. This burden is exacerbated by the fact that Elan has known about these tools from Apple's production for well
over a year, but waited until the last few weeks of fact discovery to request that we undertake such a sweeping and
burdensome search in compressed time.
We thus asked that you narrow your request in some way to make it reasonable. For example, we suggested that you
could identify some possible custodians for us to search based on your review of our document production, a proposal
we could then consider with our team and client. Although you declined to narrow your discovery requests on our call,
we reiterate our willingness to discussing reasonable compromises taking into account the circumstances of your
requests and what you are seeking. To the extent Elan declines to consider a reasonable compromise and insists that we
search for all document ever generated by any of the tools identified in your discovery request, your request remains
extremely overbroad and unduly burdensome, and Apple stands on its objections.
Thanks,
Derek

From: Walter, Derek
Sent: Tuesday, July 26, 2011 1:16 PM
To: Rathinasamy, Palani P.
Cc: Elan Apple Team; Apple Elan WGM Service
Subject: RE: Elan/Apple: Apple's Response to Elan's RFP Nos. 101-104

Palani:
Are you available at 1:30 today? If so, just call my office at [phone].
Thanks,
Derek
From: Rathinasamy, Palani P. [mailto:[e-mail]]
Sent: Tuesday, July 26, 2011 10:45 AM
To: Walter, Derek
Cc: Elan Apple Team; Apple Elan WGM Service
Subject: RE: Elan/Apple: Apple's Response to Elan's RFP Nos. 101-104

Derek,
Let’s talk at lunch today as I understand that you are sitting second chair in the deposition today. We need an
affirmative position today on whether Apple will produce this relevant discovery in light of the fact that fact discovery is
closing shortly and due to upcoming 30(b)(6) depositions relating to, inter alia, MT testing tools.
Thanks,
Palani
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From: Walter, Derek [mailto:[e-mail]]
Sent: Monday, July 25, 2011 7:57 PM
To: Rathinasamy, Palani P.
Cc: Elan Apple Team; Apple Elan WGM Service
Subject: RE: Elan/Apple: Apple's Response to Elan's RFP Nos. 101-104

Palani:
I will be in the Marriott deposition tomorrow. Are you available sometime in the early evening
tomorrow? Alternatively, Wednesday is fairly open.
Thanks,
Derek
From: Rathinasamy, Palani P. [mailto:[e-mail]]
Sent: Monday, July 25, 2011 2:32 PM
To: Walter, Derek
Cc: Elan Apple Team; Apple Elan WGM Service
Subject: Re: Elan/Apple: Apple's Response to Elan's RFP Nos. 101-104

Derek,
Unfortunately 5:30 PM won't work for us today. Are you available tomorrow at 9:30 AM?
Best,
Palani
From: Walter, Derek [mailto:[e-mail]]
Sent: Sunday, July 24, 2011 03:13 PM
To: Rathinasamy, Palani P.
Cc: Elan Apple Team; Apple Elan WGM Service <[e-mail]>
Subject: RE: Elan/Apple: Apple's Response to Elan's RFP Nos. 101-104

Palani:
I apologize, I meand to respond to the email below. Will 5:30 PM on Monday work for you?
Thanks,
Derek
From: Rathinasamy, Palani P. [mailto:[e-mail]]
Sent: Friday, July 22, 2011 11:07 AM
To: Greenblatt, Nathan; Walter, Derek
Cc: Elan Apple Team; Apple Elan WGM Service; [e-mail]
Subject: RE: Elan/Apple: Apple's Response to Elan's RFP Nos. 101-104

Hi Nathan,
How about 10:00 AM on Monday, July 25.
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Thanks,
Palani
From: Greenblatt, Nathan [mailto:[e-mail]]
Sent: Friday, July 22, 2011 9:42 AM
To: Rathinasamy, Palani P.; Walter, Derek
Cc: Elan Apple Team; Apple Elan WGM Service; [e-mail]
Subject: RE: Elan/Apple: Apple's Response to Elan's RFP Nos. 101-104

Hi Palani,
I am sending this email on behalf of Derek Walter, who is out of the office. Thank you for your email. We are not
available to meet and confer today at 1 p.m. Can you propose a time early next week?
Thanks,

Nathan A. Greenblatt
Weil, Gotshal & Manges LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065-1134
[e-mail]
[phone] Direct
[phone] Fax

From: Rathinasamy, Palani P. [mailto:[e-mail]]
Sent: Thursday, July 21, 2011 5:43 PM
To: Walter, Derek
Cc: Elan Apple Team; Apple Elan WGM Service; [e-mail]
Subject: Elan/Apple: Apple's Response to Elan's RFP Nos. 101-104

Dear Derek,
I write regarding Apple’s July 14th objections to Elan’s Request for Production Nos. 101-104. These
requests require that Apple produce documents generated from the tool described in APEL0497107
(RFP 101), Apple’s
Tool (RFP 102), Apple’s
Tool (RFP 103), and
Apple’s
or
algorithm, such as those shown in APEL0497107, APEL0500763,
APEL0500875, and APEL0501220. Apple has objected to producing these relevant documents as
“overbroad, unduly burdensome and not reasonably calculated to lead to the discovery of admissible
evidence, including without limitation, to the extent it seeks information available to Elan through other
sources, including through the inspection or testing of the accused products and/or [Apple tool] made
available by Apple, and to the extent it seeks documents and things not related to the accused
functionalities of the accused products.”
We disagree that this is a valid basis on which to withhold these plainly relevant documents. These
documents are relevant to other issues, and will provide information not available to Elan through
other sources. For example, this information is relevant and admissible to show that Apple’s
employees use the accused products in this country in an infringing manner. Apple’s reliance on
5

Elan’s inspection or testing of the accused products or Apple’s testing tools is unavailing because, as
you know, Elan’s inspection of the product and testing tools would lead to data generated by Elan –
not Apple employees. Thus, the information requested by Elan is both relevant and admissible and
Elan requests that Apple immediately produce such documents. Please let us know if you are
available to meet and confer tomorrow at 1:00 PM PST regarding this issue.
Best Regards,
Palani
Palani P. Rathinasamy
Alston + Bird LLP
275 Middlefield Road Suite 150
Menlo Park, CA 94025
Tel: [phone] | Fax: [phone]
[e-mail]

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attachments transmitted with it may contain legally privileged and confidential information intended solely for
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any reading, dissemination, distribution, copying, or other use of this message or its attachments is strictly
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reader of this message is not the intended recipient, or the employee or agent responsible to deliver it to the intended
recipient, you are hereby notified that any dissemination, distribution or copying of this communication is strictly
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