Apple Inc. v. Samsung Electronics Co. Ltd. et al

Filing 1041

Administrative Motion to File Under Seal Apple Inc.'s Opposition to Samsung's Motion to Enforce April 12, 2012 Order filed by Apple Inc.. (Attachments: #1 Declaration of Erica Tierney in Support of Admin. Motion to Seal, #2 Proposed Order Granting Motion to Seal, #3 Apple's Opposition to Samsung's Motion to Enforce April 12, 2012 Order, #4 Proposed Order Denying Samsung's Motion, #5 Declaration of Mia Mazza in Support of Apple's Opposition, #6 Exhibit 1, #7 Exhibit 2, #8 Exhibit 3, #9 Exhibit 4, #10 Exhibit 5, #11 Exhibit 6, #12 Exhibit 7)(Jacobs, Michael) (Filed on 6/5/2012) Modified on 6/6/2012 pursuant to General Order No. 62, attachment #1 sealed (dhm, COURT STAFF).

1
2
3
4
5
6
7
8
9

HAROLD J. MCELHINNY (CA SBN 66781)
[e-mail]
MICHAEL A. JACOBS (CA SBN 111664)
[e-mail]
JENNIFER LEE TAYLOR (CA SBN 161368)
[e-mail]
ALISON M. TUCHER (CA SBN 171363)
[e-mail]
RICHARD S.J. HUNG (CA SBN 197425)
[e-mail]
JASON R. BARTLETT (CA SBN 214530)
[e-mail]
MORRISON & FOERSTER LLP
425 Market Street
San Francisco, California 94105-2482
Telephone: [phone]
Facsimile: [phone]

WILLIAM F. LEE
[e-mail]
WILMER CUTLER PICKERING
HALE AND DORR LLP
60 State Street
Boston, MA 02109
Telephone: [phone]
Facsimile: [phone]
MARK D. SELWYN (SBN 244180)
[e-mail]
WILMER CUTLER PICKERING
HALE AND DORR LLP
950 Page Mill Road
Palo Alto, California 94304
Telephone: [phone]
Facsimile: [phone]

10
11

Attorneys for Plaintiff and
Counterclaim-Defendant APPLE INC.

12
13
UNITED STATES DISTRICT COURT

14

NORTHERN DISTRICT OF CALIFORNIA

15

SAN JOSE DIVISION

16
17
18

APPLE INC., a California corporation,
Plaintiff,

19
20

Case No. 11-cv-01846-LHK (PSG)
APPLE INC.’S OPPOSITION TO
SAMSUNG’S MOTION TO
ENFORCE APRIL 12, 2012 ORDER

v.

23

SAMSUNG ELECTRONICS CO., LTD., a
Korean corporation; SAMSUNG ELECTRONICS
AMERICA, INC., a New York corporation; and
SAMSUNG TELECOMMUNICATIONS
AMERICA, LLC, a Delaware limited liability
company,

24

Defendants.

21
22

Date:
Time:
Place:
Judge:

June 21, 2012
10:00 a.m.
Courtroom 5, 4th Floor
Hon. Paul S. Grewal

25
26

PUBLIC REDACTED VERSION

27
28
APPLE INC.’S OPPOSITION TO SAMSUNG’S MOTION TO ENFORCE APRIL 12, 2012 ORDER
CASE NO. 11-CV-01846-LHK (PSG)
sf- 3154341

1

TABLE OF CONTENTS

2

Page

3

TABLE OF AUTHORITIES ........................................................................................................ ii 
I. 
INTRODUCTION ............................................................................................................ 1 
II. 
BACKGROUND .............................................................................................................. 1 
A. 
Samsung’s March Motion to Compel and Enforce ............................................... 1 
B. 
Apple’s Compliance with the Court’s April 12 Order .......................................... 2 
III. 
ARGUMENT .................................................................................................................... 4 
A. 
Samsung’s Request for Five Depositions After the Deadline Should be
Denied ................................................................................................................... 5 
1. 
Samsung unreasonably delayed requesting depositions under the
April 12 Order such that depositions could not be completed by
May 10. ..................................................................................................... 5 
2. 
The requested depositions are not “tied to the production” of
deposition transcripts. ............................................................................... 6 
a. 
Andrew Bright............................................................................... 6 
b. 
Priya Balasubramaniam ................................................................ 7 
c. 
Saku Hieta ..................................................................................... 8 
d. 
Richard Howarth ......................................................................... 10 
e. 
Emilie Kim .................................................................................. 10 
B. 
Apple Has Already Produced Materials Covered by the April 12 Order in
Redacted Form to the Extent Possible and Sought Consent from Third
Parties to Produce Documents. ........................................................................... 12 
IV.  CONCLUSION ............................................................................................................... 14 

4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

APPLE INC.’S OPPOSITION TO SAMSUNG’S MOTION TO ENFORCE APRIL 12, 2012 ORDER
CASE NO. 11-CV-01846-LHK (PSG)
sf-3154341

i

1

TABLE OF AUTHORITIES

2

Page(s)

3

CASES

4

Certain Personal Data and Mobile Commuc’n Devices and Related Software,
Inv. No. 337-TA-710, 2011 ITC LEXIS 1668 (July 15, 2011) ................................................ 2

5
6
7
8
9
10

Nissei America, Inc. v. Cincinnati Milacron, Inc.,
95 F.R.D. 471, 475 (N.D. Ill. 1982) ........................................................................................ 12
Ultratech, Inc. v. Tamarack Scientific Co.,
2005 WL 696979 (N.D. Cal. 2005)........................................................................................... 5
U.S. v. Int’l Union of Petrol. & Indus. Workers,
870 F.2d 1450, 1452 (9th Cir. 1989)....................................................................................... 12

11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
APPLE INC.’S OPPOSITION TO SAMSUNG’S MOTION TO ENFORCE APRIL 12, 2012 ORDER
CASE NO. 11-CV-01846-LHK (PSG)
sf-3154341

ii

1

I.

INTRODUCTION
Honoring both the letter and the spirit of the April 12 Order, Apple produced transcripts,

2
3

and produced them six days early to give Samsung extra time to identify potential deponents.

4

Apple also produced all of the court documents to which it had access under the governing

5

protective orders — more than 3,800 of them. Apple even moved the International Trade

6

Commission — unprompted by either this Court or Samsung — to allow its counsel to provide

7

access to the remaining documents without consent of the producing parties. Apple continues to

8

go beyond the requirements of the Order. Its counsel are preparing redacted versions of the

9

unproduced court documents, as Samsung requests in its Motion, even though the Order did not

10

so require. Apple also kept the Court apprised of its efforts to comply in an April 26 Motion for

11

Clarification (Dkt. No. 885-0) and subsequent Status Update Re Compliance with April 12 Order

12

(Dkt. No. 903).
Samsung, failed to take reasonable steps to avail itself of the relief granted under the

13
14

Order by waiting until May 9 to request five depositions that the Court ordered to be finished by

15

May 10. Samsung demanded that Apple either present witnesses the next day (which it could

16

not) or agree to ignore the Court’s deadline. Samsung continues to violate the spirit of the Order

17

by seeking to compel depositions which have nothing to do with mitigating prejudice to

18

Samsung. The deposition transcript excerpts Samsung relies on to support this motion show

19

plainly that Samsung has suffered no prejudice. Apple therefore requests that Samsung’s motion

20

be denied and that the discovery phase of this dispute be finally drawn to a close.

21

II.

BACKGROUND

22

A.

23

In March, Samsung filed a motion challenging Apple’s understanding of the scope of

Samsung’s March Motion to Compel and Enforce

24

Apple’s obligation to produce deposition transcripts under the December 22 Order, and seeking to

25

compel Apple to produce “other documents” from a list of proceedings identified by Samsung as

26

having a “technological nexus” with the present case. (Samsung’s Motion to Compel Production

27

of Materials from Related Proceedings and to Enforce December 22, 2011 Court Order, filed

28

under seal March 7). The Court granted Samsung’s motion in part and ordered that “to mitigate
APPLE INC.’S OPPOSITION TO SAMSUNG’S MOTION TO ENFORCE APRIL 12, 2012 ORDER
CASE NO. 11-CV-01846-LHK (PSG)
sf-3154341

1

1

prejudice to Samsung” from late-produced deposition transcripts, Samsung could take up to five

2

additional depositions. (Dkt. No. 867) The Court continued, “Samsung must complete any

3

deposition to be taken as a result of this order by May 10, 2012.” (Id.) With respect to court

4

documents, the Court noted Apple’s argument that redacting third-party confidential information

5

from all materials to be produced would be burdensome. It therefore ordered Apple to produce

6

unredacted court documents from the eight cases Samsung had identified. (Id. at 12.)

7

B.

8

Apple produced all deposition transcripts required by the Court’s order by April 21,

Apple’s Compliance with the Court’s April 12 Order

9

2012 — six days before the deadline. (Sabri Declaration in Support of Apple’s Oppositions to

10

Samsung’s Motion for Sanctions and Motion to Enforce (“Sabri Decl.”) ¶ 20.) Samsung claims

11

that Apple produced 283 transcripts. Absurdly, Samsung reaches that number by counting

12

transcripts from depositions in the 796 Investigation that Samsung itself took, copies of which it

13

of course already had. Apple agreed to Samsung’s proposal to immediately “deem” the

14

transcripts produced in this litigation. (Id. Ex. 14). In addition, Apple produced transcripts

15

overbroadly in an attempt to avoid any possible further dispute —which Samsung now uses

16

against Apple in both this motion to enforce and its motion for sanctions. Apple produced:

17



Forty-three transcripts from the Nokia 701 investigation (Id. Ex. 16) — a case that

18

Samsung initially included on its list of cases considered to have a technological

19

nexus but later dropped (Id. Exs. 9-12);

20



Sixty-six transcripts from the HTC ITC 710 investigation (Id. Ex. 16) — a case

21

which was not included on Samsung’s list of cases alleged to have a technological

22

nexus, but which Samsung’s counsel, Quinn Emanuel, who also represents HTC,

23

clearly knew about. (Id. Ex. 12). The suit involves data analysis and operating

24

system-related technologies not at issue in this case. See Certain Personal Data

25

and Mobile Communications Devices and Related Software, Inv. No. 337-TA-710,

26

2011 ITC LEXIS 1668, at *12-16 (July 15, 2011);

27
28



Seven transcripts from the QRG district court litigation (Sabri Decl. Ex. 16.). The
QRG case was also omitted from Samsung’s list of technological nexus cases, and

APPLE INC.’S OPPOSITION TO SAMSUNG’S MOTION TO ENFORCE APRIL 12, 2012 ORDER
CASE NO. 11-CV-01846-LHK (PSG)
sf-3154341

2

1

with good reason. The asserted QRG patent referred to controlling a water supply

2

valve in a basin or fountain; Apple only included transcripts from this case in its

3

production because QRG alleged certain capacitive touch products infringed its

4

patent (Id. Ex. 21.);

5



Twenty-two transcripts from the Elan district court litigation (Id.). Apple

6

previously produced all the Elan transcripts with a technological nexus for

7

witnesses who testified in this case. Apple’s production after April 12 was limited

8

to testimony with no technological nexus or from individuals not appearing as

9

witnesses in this case;

10



Twelve transcripts from the HTC 797 investigation (Id.). All of these transcripts

11

post-dated the January 15 deadline for production of transcripts. None is “prior”

12

testimony of a witness testifying in this case. Indeed, seven of the 12 transcripts

13

were created after the discovery cut-off;

14



15
16

Twenty-eight transcripts from Motorola litigation (Id.), none of which is prior
testimony with a technological nexus from a witness testifying in this case; and



Nineteen transcripts from the Nokia Delaware litigation — again, none of which

17

is prior testimony with a technological nexus from a witness testifying in this case.

18

(Id. Ex. 16).

19

After completing its production of transcripts, Apple moved for clarification of the

20

April 12 Order on April 26. Apple sought to clarify that (1) Apple need not produce court

21

documents containing confidential third-party information where the relevant protective order or

22

rule does not permit production, even pursuant to court order, and (2) the five depositions to

23

which Samsung is entitled must be connected to Apple’s production of transcripts pursuant to the

24

April 12 Order and the alleged prejudice to Samsung. Apple noted that Samsung had failed to

25

inform Apple of the depositions it intended to seek under the Order. (Apple’s Motion for

26

Clarification [Dkt. No. 885] at 5.)

27
28

Three times—on April 24; April 30; and May 4, 2012 (Sabri Decl. Exs. 25, 26, and 27,
respectively)—Apple wrote Samsung to ask that it identify deponents, warning Samsung that
APPLE INC.’S OPPOSITION TO SAMSUNG’S MOTION TO ENFORCE APRIL 12, 2012 ORDER
CASE NO. 11-CV-01846-LHK (PSG)
sf-3154341

3

1

Apple would not ignore the Court’s May 10 deadline. Despite Apple’s three reminders and

2

motion for clarification, Samsung still waited eighteen days after Apple completed production of

3

transcripts to identify five deponents for the first time. Samsung sent its list to Apple at 12:21AM

4

on the morning of May 9. (Sabri Decl. Ex. 17.) Samsung demanded that Apple stipulate to

5

continue depositions through May 18 or else produce all five deponents the next day, May 10.

6

(Id.)

7

Apple detailed the steps it took to produce Court documents in compliance with the

8

April 12 Order in its April 26 Motion for Clarification (Dkt. Nos. 885, 887) and subsequent

9

Status Update Re Compliance with April 12 Order (Dkt. No. 903). Apple has continued its

10

efforts since its status update, producing unredacted court documents when available. Its counsel

11

has also redacted remaining unproduced court documents—even though the April 12 Order does

12

not call for that. (Mazza Declaration in Support of Apple’s Opposition to Samsung’s Motion to

13

Enforce (“Mazza Decl.”) ¶¶ 12-14.)

14

Several nonparties have objected to or failed to respond to Apple’s requests to produce

15

unredacted court documents. As noted in Apple’s previous filings, Apple filed a motion with the

16

ITC seeking permission to produce documents subject to ITC protective orders, as the ITC does

17

not permit production absent consent, even pursuant to the orders of other courts. (Dkt. No. 887-

18

0, Mazza Decl. ¶ 15.) On May 7, the Office of Unfair Import Investigations opposed Apple’s

19

motion, acknowledging that “Apple is ‘between a rock and a hard place’” and asserting that ITC

20

protective orders without exception prohibit counsel from providing confidential documents to

21

Apple without consent of the producing parties. (Apple’s Status Update 0Dkt. No. 903].) The

22

ITC has not yet ruled on the motion.

23

III.

24

ARGUMENT
Samsung’s motion to compel five depositions should be denied because (1) Samsung

25

waited far too long to request the depositions and (2) the depositions Samsung belatedly

26

requested will not mitigate any prejudice arising from Apple’s production of transcripts in

27

compliance with the April 12 Order. Samsung’s motion to compel production of redacted Court

28
APPLE INC.’S OPPOSITION TO SAMSUNG’S MOTION TO ENFORCE APRIL 12, 2012 ORDER
CASE NO. 11-CV-01846-LHK (PSG)
sf-3154341

4

1

documents also should be denied because it would impose an unreasonable burden on Apple not

2

required by the April 12 Order.

3

A.

4

Samsung unreasonably delayed requesting depositions, and depositions it has requested do

5

not “mitigate the prejudice to Samsung” as contemplated by the order (Order at 10).

6

1.

7
8
9

Samsung’s Request for Five Depositions After the Deadline Should be Denied

Samsung unreasonably delayed requesting depositions under the
April 12 Order such that depositions could not be completed by
May 10.

The April 12 Order allowed a limited but reasonable window for Samsung to take
additional depositions. Apple was ordered to produce deposition transcripts on a rolling basis

10

finishing by April 27 and Samsung was ordered to complete any such depositions 13 days later on

11

May 10. Apple finished its production a week early to give Samsung even more time to review

12

the transcripts produced. Apple asked Samsung repeatedly to identify deponents and warned that

13

it would not stipulate to allow any depositions to slip even later into the post-discovery period.

14

Samsung ignored the warnings and failed to identify any deponents until after midnight on

15

May 9. At that point, there was no reasonable way that Apple could present five witnesses for

16

deposition by May 10. Ultratech, Inc. v. Tamarack Scientific Co., No. C 03-3235 CRB (JL),

17

2005 WL 696979, at *1 (N.D. Cal. 2005) (six-days’ notice of deposition not reasonable). Nor

18

was it reasonable for Samsung to ignore deadlines imposed to prevent discovery from spilling too

19

far into the post-discovery period, thus jeopardizing the orderly preparation of the case for trial.

20

Samsung claims that it was unable to provide names of deponents earlier because of

21

Apple’s alleged delay in “narrowing” its claims for trial, and because the number of transcripts

22

produced was large. There is no presumption, let alone a requirement, under the April 12 Order,

23

that Apple would narrow its claims before depositions were conducted. Indeed, Judge Koh’s

24

order directing the parties to consider narrowing their respective cases issued after the April 12

25

Order. Moreover, Apple filed its final statement narrowing its claims at 6:00 pm on May 7. If

26

Samsung were merely waiting for that filing, it still could have provided its list of deponents

27

before May 9.

28
APPLE INC.’S OPPOSITION TO SAMSUNG’S MOTION TO ENFORCE APRIL 12, 2012 ORDER
CASE NO. 11-CV-01846-LHK (PSG)
sf-3154341

5

1

The volume of transcripts produced after April 12 is a red herring. First, the depositions

2

that Samsung requested do not genuinely arise from late production of transcripts. As discussed

3

below, Samsung was already aware of each of the requested witnesses and the scope of their

4

knowledge well before Apple’s production pursuant to the April 12 Order. The transcript

5

excerpts Samsung relies on are devoid of any information that would give rise to the need for

6

depositions. Second, the great majority of deposition transcripts Apple produced were not new to

7

Samsung’s counsel. The more than eighty transcripts from the 796 investigation were not new

8

because Samsung is party to that investigation. The 106 transcripts Apple produced from the

9

HTC and Motorola cases were not new to Samsung’s counsel because the same firm that

10

represents Samsung here represents — under the direction of the same lead lawyer — the

11

defendants in those actions.

12

2.

13
14

The requested depositions are not “tied to the production” of
deposition transcripts.

Samsung claims that the depositions it requests “are reasonably tied to the production of

15

deposition transcripts.” (Samsung’s Motion to Enforce (“Motion”) at 7.) That claim cannot

16

withstand scrutiny.

17

a.

Andrew Bright

18

Samsung claims that it needs to depose Andrew Bright because Apple’s transcript

19

production revealed that he “oversaw earpiece issues with the iPhone 3GS and the overall audio

20

performance of the iPhone 4.” (Motion at 7.) Samsung asserts that he testified that the “size and

21

shape of the speaker box affects performance at high and low frequencies.” This, according to

22

Samsung, makes him “relevant to Samsung’s functionality defense” because any “design choices

23

made based on acoustics are not properly within the scope of a design patent or Apple’s alleged

24

trade dress.” Samsung’s argument fails for several reasons.

25

First, the transcripts that are alleged to contain the revealing Andrew Bright testimony are

26

from the Nokia 701 investigation. As discussed in more detail in Apple’s concurrently filed

27

opposition to Samsung’s motion for sanctions, Samsung initially included the 701 investigation

28

on its proposed list of cases alleged to have a technological nexus but dropped it after negotiation.
APPLE INC.’S OPPOSITION TO SAMSUNG’S MOTION TO ENFORCE APRIL 12, 2012 ORDER
CASE NO. 11-CV-01846-LHK (PSG)
sf-3154341

6

1

(Sabri Decl. Exs. 9-12.) It therefore was not a violation of the December 22 Order — which

2

specifically encouraged the parties to come to “agreement” on the cases considered to have a

3

technological nexus — for Apple not to have produced the Nokia 701 transcripts earlier.

4

Second, Samsung knew of Mr. Bright’s role working on iPhone acoustics months before

5

Apple’s April transcript production. An Apple witness identified Mr. Bright and his role in a

6

deposition taken in this case on February 16. (Sabri Decl. Ex. 22 at 25:13-17 (Mr. Bright was a

7

“principal contact” within the “Acoustics” group “as it pertained to the iPhone 4”.) Thus,

8

Samsung’s alleged failure to “discover” Mr. Bright’s alleged relevance to the case was not a

9

result of non-production of transcripts.

10

Third, Mr. Bright testified that he joined Apple in 2009, too late to have been involved in

11

creating the asserted designs. (Hutnyan Decl. [965-2] Ex. 12 at 57:6-58:7). Apple’s asserted

12

design patents all arose out of the original iPhone project. The asserted designs were created (and

13

design patents filed) well before Mr. Bright joined Apple. Similarly, Apple’s asserted trade

14

dresses arise from both the original iPhone and the iPhone 3G, which first shipped in 2008.

15

Mr. Bright could not have been involved in any “design choices” affecting these asserted trade

16

dresses.1

17
18

b.

Priya Balasubramaniam

Priya Balasubramaniam was identified as the “manager of the display and touch panel

19

procurement team” in a deposition taken in this case on March 1, 2012, not in any of the

20

deposition transcripts produced by Apple. (Sabri Decl. Ex. 23 at 32:24-33:6.) The transcript

21

snippets that Samsung attached to its brief disclose nothing of relevance.

22

To justify this deposition, Samsung relies on the testimony of Dan Roskes in the HTC 710

23

investigation, which was taken by a Quinn Emanuel attorney. Mr. Roskes said exactly two words

24

about Ms. Balasubramaniam, testifying that she is responsible for “LCD procurement.” (Hutnyan

25

Ex. 13, Roskes at 58:10-12). If Samsung had wanted to investigate LCD procurement, it had

26
27
1

28

Apple’s May 7 filing stated that Apple was no longer asserting the iPhone 4 trade dress.

APPLE INC.’S OPPOSITION TO SAMSUNG’S MOTION TO ENFORCE APRIL 12, 2012 ORDER
CASE NO. 11-CV-01846-LHK (PSG)
sf-3154341

7

1

many opportunities to do so during the discovery period. Samsung did not, however, because

2

LCD procurement has nothing to do with any of Apple’s asserted claims.

3

Samsung argues that Ms. Balasubramaniam’s knowledge “of the choice to use certain

4

LCD displays” is relevant because “the rationale for choosing a certain display may concern a

5

functional rather than ornamental purpose.” (Motion at 8.) This rationale fails because Apple has

6

not asserted particular LCD displays as an element of its asserted designs. Even if it had, the

7

witnesses knowledgeable of the effect of those choices on design would be the designers whom

8

Samsung has already deposed. It makes no sense to depose a “procurement” employee to probe

9

the rationale of the designers in selecting a particular industrial design.

10

The remaining transcript excerpts Samsung relies on are no more relevant. One witness

11

testified that he consulted with Ms. Balasubramaniam about “master supply agreements.”

12

(Hutnyan Ex. 14 at 15:19-24.). Master supply agreements have nothing to do with the alleged

13

“functionality” of Apple’s design patents and trade dress. Samsung has never asked any Apple

14

witness in this case about master supply agreements. Another deponent consulted with

15

Ms. Balasubramaniam about components in the iPod nano media player. (Id. Ex. 15 at 11:18-

16

12:18.) The iPod nano is not at issue in this case at all.

17
18

c.

Saku Hieta

Samsung struggles but fails to manufacture some meaningful nexus between Mr. Hieta

19

and the transcripts produced by Apple. There is nothing new in those transcripts that warrants a

20

deposition of Mr. Hieta. Rather, this particular request appears to be driven by Samsung’s

21

apparent regret that it did not prioritize Mr. Hieta as a witness during fact discovery, even though

22

his identity and responsibilities were plainly evident to Samsung at the time. Samsung should not

23

be permitted to use the opportunity for limited, remedial depositions afforded by the Court’s April

24

12 Order to correct its own perceived litigation error.

25

Samsung does not suggest that Mr. Hieta’s name appears in the transcripts recently

26

produced by Apple; there is no testimony from him, or about him. Samsung therefore strains to

27

create a subject-matter nexus: it argues that testimony in the transcripts reveals information about

28

Apple’s “sourcing of baseband chipsets,” specifically Apple’s supplier for certain chipsets. (See
APPLE INC.’S OPPOSITION TO SAMSUNG’S MOTION TO ENFORCE APRIL 12, 2012 ORDER
CASE NO. 11-CV-01846-LHK (PSG)
sf-3154341

8

1

Hutnyan Decl. Ex. 16, Sanguinetti Dep. 48:4-14.) In response to this, Samsung claims that it

2

needs to depose Mr. Hieta, Apple’s senior manager of procurement. Yet the identity and supplier

3

of the baseband chipsets incorporated into Apple’s iPhone 3G, iPhone 3GS, and iPad products

4

has long been in the factual record in this case and disclosed to Samsung. As Samsung

5

acknowledges, Mr. Hieta himself provided this very information in a January 21, 2012

6

declaration. (Dkt. No. 660-04.) Apple also disclosed this information as early as October 2011

7

in response to interrogatories, four months before the close of fact discovery. (Mazza Decl.

8

Ex. 1.) Accordingly, Samsung’s requested deposition of Mr. Hieta would in no way serve the

9

remedial purpose of the Court’s April 12, 2012 Order.

10

Moreover, Samsung cannot possibly argue that the Sanguinetti transcript—the only

11

transcript Samsung identified in its attempt to justify its request to depose Mr. Hieta—was

12

untimely produced. Mr. Sanguinetti’s deposition took place on March 16, 2012, two months after

13

the January 15, 2012 deadline to comply with the Court’s initial order to produce transcripts and

14

eight days after the close of fact discovery in this case. (Hutnyan Decl. Ex. 16 at 1.)

15

Finally, although it is a frank admission of its motives for including Mr. Hieta on its

16

deposition list, Samsung is wrong that it “push[ed]” to depose Mr. Hieta or “timely noticed” his

17

deposition during discovery. Instead, it served an eleventh-hour deposition notice on February

18

27, 2012, just before the close of fact discovery, thereby failing to provide Apple with reasonable

19

notice. (Mazza Decl. ¶ 3). At the time, Samsung was also requesting additional deposition time

20

with Tony Blevins, a Vice President at Apple who had already been deposed on supply chain

21

issues, including sourcing for Apple’s products. (Id.; id. Ex. 2 at 21:9-21; 37:5-38:13; 39:21-

22

40:7; 41:23-42:4; 45:3-45:11; 50:3-51:24; 52:16-54:15.) Given the tardiness of Samsung’s

23

requests, the limited fact discovery window remaining, and the substantial overlap in relevant job

24

responsibilities between Mr. Blevins and Mr. Hieta, Apple offered to designate Mr. Blevins’ prior

25

testimony as 30(b)(6) testimony and to present him for an additional half day of 30(b)(6)

26

testimony, in exchange for Samsung’s agreement to withdraw its Hieta notice. (Id. Ex. 3.)

27

Apple’s position then and now is that a deposition of Mr. Hieta would be unreasonably

28

duplicative. (Id.) Even though the parties were pressed against the discovery deadline, Samsung
APPLE INC.’S OPPOSITION TO SAMSUNG’S MOTION TO ENFORCE APRIL 12, 2012 ORDER
CASE NO. 11-CV-01846-LHK (PSG)
sf-3154341

9

1

failed to even respond to the offer for more than a week. (Id. ¶ 6.) Apple nevertheless made

2

Mr. Blevins available for additional testimony on April 3, 2012. (Mazza Decl. ¶ 7.) Any claim

3

that Apple somehow prevented Samsung from bringing the issue to the Court’s attention before

4

the close of discovery is therefore unfounded. Accordingly, to the extent that Samsung suffered

5

any prejudice from its inability to depose Mr. Hieta (a dubious claim given the depositions of

6

Mr. Blevins), Samsung has only its own lack of diligence to blame, not Apple’s production of

7

transcripts.

8
9

d.

Richard Howarth

Samsung has spent 13 hours on the record deposing Richard Howarth about his role

10

designing the iPhone, in this case and in the 796 ITC investigation. Samsung fails to identify a

11

single fact about him or his work in any of the transcripts produced. Samsung vaguely alleges

12

that “the deposition transcripts Apple belatedly produced provide new information within the

13

scope of Mr. Howarth’s knowledge.” (Motion at 10.) In support of this, Samsung cites

14

transcripts from the depositions of Stephen Lemay and Achim Pantfoerder in the Nokia 701

15

investigation — the investigation that Samsung dropped from its list of cases alleged to have a

16

technological nexus. Neither of the transcripts even mentions the industrial design department in

17

which Mr. Howarth works, let alone Mr. Howarth himself. (Hutnyan Exs. 17 & 18.) All of the

18

testimony of Mr. Lemay that Samsung cites relates to software, not hardware, and, more

19

specifically, to the user interface elements associated with the “magnification loupe” of the virtual

20

keyboard at issue in that case. (Id. Ex. 17.) As for the Pantfoerder deposition, the most that can

21

be said is that it relates to the iPhone — nothing in the transcript discusses industrial design or

22

Mr. Howarth.

23
24

e.

Emilie Kim

As an initial matter, Samsung’s argument with respect to Ms. Kim stems from an

25

erroneous factual premise: while Samsung suggests that it did not depose Ms. Kim in her

26

personal capacity (Mot. at 10), this simply is not the case. Apple designated Ms. Kim as a

27

30(b)(6) witness on February 23, and the deposition was scheduled for March 7. (Mazza Decl.

28

Ex. 5.) The day before this deposition, Samsung noticed Ms. Kim’s individual deposition to take
APPLE INC.’S OPPOSITION TO SAMSUNG’S MOTION TO ENFORCE APRIL 12, 2012 ORDER
CASE NO. 11-CV-01846-LHK (PSG)
sf-3154341

10

1

place on that same March 7 date. (Id. Ex. 6.) Indeed, at Ms. Kim’s deposition, Samsung marked

2

as deposition exhibits both its 30(b)(6) notice and Ms. Kim’s personal deposition notice. (Id.

3

Ex. 7 at 6:25-7:23) Accordingly, Ms. Kim was deposed both as a 30(b)(6) designee and in her

4

individual capacity on March 7, but Samsung’s counsel nonetheless concluded this deposition

5

after approximately two hours, confirming that he had no more questions. (Id. at 65:20-21.)

6

Now, three months later, Samsung seeks additional deposition time with Ms. Kim,

7

purportedly because Ms. Kim has “knowledge reasonably related to subjects revealed in the

8

transcripts” produced by Apple pursuant to the Court’s April 12 Order. However, the transcripts

9

produced by Apple revealed nothing about Ms. Kim or her knowledge; indeed, Samsung’s motion

10

does not even suggest that Ms. Kim’s name appears in any of the produced transcripts. While

11

Samsung claims that the transcripts discuss features of the Camera and Photos apps about which

12

Ms. Kim is knowledgeable, including swiping gestures purportedly relevant to the ’460 patent

13

(see Mot. at 10), Samsung does not identify a single question relating to swiping and/or gestures

14

that it could not equally well have asked Ms. Kim three months ago.

15

In reality, Samsung’s request for a second deposition with Ms. Kim is no more than a

16

belated attempt to seek discovery to support a late-developed and untimely infringement theory,

17

wholly unrelated to the recently produced transcripts. As set forth in Apple’s pending Motion to

18

Strike Certain Portions of Samsung’s Expert Reports (Dkt. 939-1 at 12-13), on March 22 (two

19

weeks after Ms. Kim’s deposition), Samsung disclosed in the opening report of its expert,

20

Dr. Yang, a new infringement theory

21

. This theory is nowhere in Samsung’s Infringement

22

Contentions, and for this reason Apple has moved to strike it. Samsung did not ask Ms. Kim any

23

questions about swiping or gestures when it had the opportunity, and its attempt to use the

24

Court’s April 12 Order to remedy this failure should be rejected, as any further deposition time

25

with Ms. Kim would serve only to award Samsung discovery it could have sought during the

26

discovery period.

27
28
APPLE INC.’S OPPOSITION TO SAMSUNG’S MOTION TO ENFORCE APRIL 12, 2012 ORDER
CASE NO. 11-CV-01846-LHK (PSG)
sf-3154341

11

1

B.

2

Apple Has Already Produced Materials Covered by the April 12 Order in
Redacted Form to the Extent Possible and Sought Consent from Third
Parties to Produce Documents.

3

Samsung seeks an order directing Apple (a) to produce in redacted form documents

4

implicated by the April 12 Order, (b) to confer with Samsung regarding which documents need to

5

be produced in unredacted or partially unredacted form, and (c) to seek consent to remove

6

specific redactions immediately. (Motion at 12.) Samsung’s motion should be denied because

7

Apple has already complied with the April 12 Order and Samsung’s proposal would place an

8

undue burden on Apple.

9

Appropriately, Samsung does not request that Apple be compelled to produce all

10

documents covered by the April 12 Order in “unredacted” form in violation of protective orders

11

issued in other matters. As discussed in Apple’s Motion for Clarification and supporting

12

declaration [Dkt. Nos. 885 and 887] such a request would have been unreasonable because Apple

13

does not control documents which its counsel is legally bound not to provide to Apple. Nissei

14

America, Inc. v. Cincinnati Milacron, Inc., 95 F.R.D. 471, 475 (N.D. Ill. 1982) (plaintiffs “need

15

not produce [material] that is subject to [the ITC] protective order since it is not available to

16

plaintiffs or within their possession, custody, or control within the contemplation of Rule 33(a) or

17

Rule 34(a) of the Federal Rules.”); see also Fed. R. Civ. P. 34(a)(1); U.S. v. Int’l Union of Petrol.

18

& Indus. Workers, 870 F.2d 1450, 1452 (9th Cir. 1989) (“control” within meaning of Rule 34

19

defined as “legal right to obtain documents upon demand”). Apple has already sought consent to

20

produce unredacted documents — including filing a motion with the ITC to allow such

21

production. Unless Apple obtains consent, however, Apple’s outside counsel cannot even

22

provide copies of the relevant documents to Apple where certain protective orders or court rules

23

prohibit. Therefore:

24



Apple has already produced all court documents from the Nokia Delaware case,

25

the Motorola Wisconsin (10-cv-00661) case, and the HTC ITC (337-TA-797)

26

investigation unredacted. (Mazza Decl. ¶ 11.)

27
28
APPLE INC.’S OPPOSITION TO SAMSUNG’S MOTION TO ENFORCE APRIL 12, 2012 ORDER
CASE NO. 11-CV-01846-LHK (PSG)
sf-3154341

12

1



Apple has produced all court documents from the HTC Delaware case (10-cv-

2

00167) unredacted, except for four documents that contain Google CBI for which

3

Google has refused to provide consent.

4



Apple has produced all court documents from the Elan (N.D. Cal. Case No. 09-

5

cv-01531 and ITC Inv. No. 337-TA-714) cases unredacted, except for certain

6

docket entries containing Elan CBI for which Elan has refused to provide consent.

7

(Id. ¶ 13.)

8



Apple has produced all court documents from the Motorola Wisconsin/Illinois

9

(Case No. 11-cv-8540, formerly W.D. Wis. 10-cv-00662) and ITC 750 (Inv. No.

10

337-TA-750) matters unredacted, except for certain documents that contain the

11

CBI of nonparties who have not provided consent upon request. (Id. ¶ 14.)

12

Samsung requests that the Court order Apple to produce immediately in redacted form all

13

documents that Apple has not yet produced. The April 12 Order requires only production of

14

unredacted documents, and now is not the time to require Apple to produce more. Several of the

15

nine cases on Samsung’s list are ongoing. It is not reasonable to request that Apple constantly

16

monitor ongoing litigation for new filings, continuously send out letters to numerous third-parties,

17

and be always preparing redacted copies just in case the third-parties object. As for existing court

18

documents, although it has not been and should not be ordered to do so, Apple has already

19

prepared redacted versions.

20



21
22

Apple produced redacted versions of the four documents HTC Delaware case (10cv-00167) documents for which Google refused consent. (Id. ¶ 12.)



Counsel for Apple in the Elan matters has prepared and provided to Elan redacted

23

versions of all remaining documents in the Elan matters to allow Elan’s counsel to

24

confirm that the redactions are acceptable, and has given Elan’s counsel until June

25

11 to review them. Apple will make any modifications to the redactions that Elan

26

requests and then produce the remainder. (Id. ¶ 13.)

27
28



Likewise, counsel for Apple in the Motorola matters has prepared proposed
redacted versions of all remaining documents. Counsel has written again to each

APPLE INC.’S OPPOSITION TO SAMSUNG’S MOTION TO ENFORCE APRIL 12, 2012 ORDER
CASE NO. 11-CV-01846-LHK (PSG)
sf-3154341

13

1

of the third parties who have ignored Apple’s previous request for consent.

2

Unless otherwise instructed, counsel will provide the redacted versions to

3

Samsung. (Id. ¶ 14.)

4

Samsung requests that the Court order Apple to “confer” with Samsung regarding which

5

documents need to be produced in unredacted form. This request is ironic because Apple already

6

attempted to engage Samsung in such a negotiation shortly after the April 12 Order issued, but

7

Samsung refused. As explained in Apple’s motion for clarification, Apple informed Samsung

8

that other protective orders and rules prohibited Apple from producing all unredacted court

9

documents without consent. Apple asked to confer with Samsung regarding which nonpublic

10

items Samsung truly needed so that Apple could narrow its requests of third parties. (Mazza

11

Declaration in Support of Motion for Clarification [Dkt. No. 887-0] ¶ 18.) Samsung flatly

12

rejected this request. (Id. ¶ Ex. 3 [Dkt. No. 887-10] at 3 (rejecting Apple’s request that Samsung

13

identify nonpublic items it wanted to receive).) Now, there is little additional effort to be saved

14

through such a conference. Apple has already done all it can by producing all unredacted court

15

documents it is able to produce, has pressed all other parties for consent where such consent is

16

required, and has even filed a motion before the ITC. (Mazza Decl. ¶¶ 11-15.)

17

In sum, the document production remedy that Samsung seeks is both unwarranted and

18

unnecessary.

19

IV.

20

CONCLUSION
Samsung’s motion should be denied.

21
22
23
24
25
26
27
28
APPLE INC.’S OPPOSITION TO SAMSUNG’S MOTION TO ENFORCE APRIL 12, 2012 ORDER
CASE NO. 11-CV-01846-LHK (PSG)
sf-3154341

14

1
2
3
4

Dated: June 5, 2012

HAROLD J. MCELHINNY
MICHAEL A. JACOBS
JENNIFER LEE TAYLOR
ALISON M. TUCHER
RICHARD S.J. HUNG
JASON R. BARTLETT
MORRISON & FOERSTER LLP

5
6
7
8

By:

/s/ Michael A. Jacobs
MICHAEL A. JACOBS
Attorneys for Plaintiff
APPLE INC.

9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
APPLE INC.’S OPPOSITION TO SAMSUNG’S MOTION TO ENFORCE APRIL 12, 2012 ORDER
CASE NO. 11-CV-01846-LHK (PSG)
sf-3154341

15