Elan Microelectronics Corporation v. Apple, Inc.

Filing 410

EXHIBITS re 401 Declaration in Support, /Exhibit 3 to the Declaration of Jane H. Bu in Support of Elan Microelectronics Corporation's Reply in Support of Its Motion to Compel Discovery on Various Issues (Redacted) filed byElan Microelectronics Corporation. (Related document(s) 401 ) (Bu, Jane) (Filed on 8/24/2011)

EXHIBIT 3

From:
Sent:

To:
Cc:
Subject:

Walter, Derek [[e-mail]]
Tuesday, August 16, 2011 5:18 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:
Below you state that "[w]e are always open to further meet and confer with you to avoid
burdening the Court with discovery issues." However, the timeline of events relevant to this
issue is, quite frankly, at odds with this statement. Indeed, on July 26 you declared that
"[t]o 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." You
declared this "impasse" after just one meet and confer phone call during which you
unambiguously confirmed that Elan was seeking every document generated by every use by any
Apple engineer of either the
l. Likewise, you
confirmed that Elan was seeking every single instance of the types of documents you
identified in your discovery request. While it is true that you "never requested Apple to
interview every single engineer employed by Apple for such requests," you nonetheless
confirmed that you were seeking every document ever generated by an Apple engineer using
either the F
You proposed nothing to narrow these
demands.
Despite this, just hours after the meet and confer, Apple reiterated that it was open to
discussing a reasonable scope for the discovery Elan is seeking and even stated that it
"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." There was no response to
this proposal from Elan. Instead, just a few hours later, Elan filed its Motion to compel.
Two weeks later, Apple filed its Opposition to Elan's motion. In the interim, there still
had been no response to Apple's proposal. Now -- six days after Apple filed its Opposition,
twenty days after our reiterated offer to discuss a reasonable scope of discovery with you,
and after 5 PM on the day before Elan's reply brief is due -- you respond for the first time
to our July 26 proposal to search the files of Wayne Westerman and Stephanie Cinereski. We
do not believe these facts suggest a genuine openness to meet and confer meaningfully.
Indeed, your email below continues to lack any proposal for how Elan will narrow its
discovery requests to address our overbreadth and undue burden objections. To the contrary,
you criticize Apple for failing to do a "basic search" and "fulfill its discovery
obligations." Yet, Apple's search in this case was more than reasonable, as was its proposal
for a reasonable supplementation of its production based on Elan's new requests for testing
data. At this point, there can be no dispute that Wayne Westerman and Stephanie Cinereski
are individuals who are likely to have generated data of the sort you seek, a fact Elan
should be well aware of. Indeed, Mr. Westerman is one of the leaders of the relevant
development group within Apple, and he has even appeared on Apple's behalf as a key witness
during the ITC hearing. With regard to the
specifically, a search for documents
that refer to both "Westerman" and "
" in Apple's production returns 803 documents.
Likewise, Ms. Cinereski is the author of one of the tools in question, and Elan even
identified her as an individual that it wished to depose on these issues.
Beyond this,
there are over 300 documents in Apple's production that specifically refer to the "
including countless emails among Apple engineers discussing use of the tool.
Likewise, there are over 212 documents referring to the
, again
including countless emails among Apple engineers. Additionally, on July 18, 2011 -- more
than a week before Elan filed its motion -- Apple had identified Nima Parivar as its 30(b)(6)
witness on Elan's deposition topic related to use of the
l within Apple. Given

1

this, your contention that "only Apple, not Elan, is in a position to identify the
individuals who would have used the Apple testing tools and generated relevant
documentations" simply cannot be credited. To the contrary, given the scope of Apple's
production to date, Elan is undoubtedly in position to identify a reasonable set of
custodians that it believes may have data relevant to its case. As such, if Elan believes it
is insufficient for Apple to search the files of Mr. Westerman and Ms. Cinereski, it has more
than enough information to propose a reasonable set of additional custodians. Yet, Elan has
repeatedly declined to do so, or make any other reasonable proposal for narrowing its
overbroad discovery request. Indeed, your eleventh-hour email notwithstanding, Elan has
failed to even engage in a meaningful discussion on the issue.
Apple reiterates its willingness to search the files of Mr. Westerman and Ms. Cinereski for
data of the sort you seek. To the extent this search fails to yield a reasonable sample of
data of the sort you seek (a result we think is unlikely), we are willing to discuss
reasonably expanding the scope of our search in good faith. However, we cannot agree to a
sweeping demand that we collect seven to eight years worth of data that has been generated by
any Apple engineer who happened to use a pair of Apple testing tools, and if that remains
Elan's position, we may in fact be at an impasse.
Thanks,
Derek
Original Message
From: Rathinasamy, Palani P. [mailto:[e-mail]]
Sent: Monday, August 15, 2011 5:05 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,
Your claim that Elan is not willing to make an effort to reasonably narrow our requests is
not well taken. We are always open to further meet and confer with you to avoid burdening the
Court with discovery issues. However, as I explained during the meet and confer, only Apple,
not Elan, is in a position to identify the individuals who would have used the Apple testing
tools and generated relevant documentations. Other than Ms. Cinereski and Mr. Westerman, it
appears that Apple has not even made an effort to identify any other individual(s) that may
have the relevant documents. Elan has never requested Apple to interview every single
engineer employed by Apple for such requests. However, Apple has to conduct a reasonable
inquiry and at least interview other individuals at Apple's
, or similar
units that most likely will retain such testing data, to fulfill its discovery obligations.
Indeed, in assisting Apple for the collection, Elan has identified many exemplary documents
with production numbers. However, Elan is without knowledge to instruct Apple which
witnesses to interview or how to collect such information.
Apple's refusal to even conduct such an investigation falls far short of its discovery
obligations mandated by the Federal Rules. As a starting point, please identify the
individuals that Apple has interviewed or identified, or searched files in response to the
disputed requests Nos. 101-104, and the results of such inquiry. Thus Elan will at least have
a minimum knowledge base to work with Apple to further narrow the scope of the search.
Best,
Palani

2

From: Walter, Derek [[e-mail]]
Sent: Tuesday, July 26, 2011 8:02 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:
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
or
. 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
l 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.
3

Thanks,
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
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
4

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
. Put another way, you confirmed 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,

5

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
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
6

Hi Nathan,
How about 10:00 AM on Monday, July 25.
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,
[cid:image001.jpg@01CC4BCE.B7A71870]
Nathan A. Greenblatt
Weil, Gotshal & Manges LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065-1134
[e-mail]<mailto:[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
(RFP 102), Apple's
(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
7

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 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] I Fax: [phone]
[e-mail]<mailto:[e-mail]>

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