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

Filing 1043

Declaration of Nathan Sabri in Support of #1042 Opposition/Response to Motion, #1041 Administrative Motion to File Under Seal Apple Inc.'s Opposition to Samsung's Motion to Enforce April 12, 2012 Order filed byApple Inc.. (Attachments: #1 Exhibit 1, #2 Exhibit 2, #3 Exhibit 3, #4 Exhibit 4, #5 Exhibit 5, #6 Exhibit 6, #7 Exhibit 7, #8 Exhibit 8, #9 Exhibit 9, #10 Exhibit 10, #11 Exhibit 11, #12 Exhibit 12, #13 Exhibit 13, #14 Exhibit 14, #15 Exhibit 15, #16 Exhibit 16, #17 Exhibit 17, #18 Exhibit 18, #19 Exhibit 19, #20 Exhibit 20, #21 Exhibit 21, #22 Exhibit 22, #23 Exhibit 23, #24 Exhibit 24, #25 Exhibit 25, #26 Exhibit 26, #27 Exhibit 27)(Related document(s) #1042 , #1041 ) (Jacobs, Michael) (Filed on 6/5/2012)

DECLARATION OF NATHAN SABRI IN
SUPPORT OF APPLE’S OPPOSITIONS TO
SAMSUNG’S MOTION FOR SANCTIONS AND
MOTION TO ENFORCE

EXHIBIT 4

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November 15, 2011
VIA ELECTRONIC MAIL
Wesley E. Overson
Morrison & Foerster
425 Market Street
San Francisco, CA 94105-2482
Re:

Apple, Inc. v. Samsung Elecs. Co., Case No. 11-cv-1846 LHK (N.D. Cal.)

Dear Wes:
Your November 10, 2011 letter maintains Apple’s position that prior testimony of inventors is
irrelevant unless it relates to the particular patents asserted in this action. This position is flatly
contradicted by the decision in Inventio AG v. Thyssenkrupp Elevator Amers. Corp., 662 F.
Supp. 2d 375 (D. Del. 2009). The court in Inventio ordered the plaintiff to produce transcripts of
testimony from a prior proceeding involving “tangentially related” technology. See id. at 381383. The testimony of these individuals—both inventors and non-inventors—was relevant and
discoverable on the sole basis that they possessed "generalized knowledge" of issues involved in
the litigation and were likely to be called as witnesses. Id. at 383.
The cases Apple cites do not address the issue of prior testimony and offer no support for Apple's
narrow concept of relevance. Rather, those cases stand only for the proposition that the broad
scope of discovery may be limited where a request is cumulative or would impose undue
hardship. See Rivera v. NIBCO, Inc., 364 F. 3d 1057, 1072 (9th Cir. 2004) (discovery into
immigration status creates “a substantial risk of chilling the plaintiffs' rights” and was contrary to
public policy); Prof'l Recovery Servs., Inc. v. GE Capital Corp., 2009 WL 137236 at *4 (D. N.J.
Jan. 15, 2009) (refusing discovery that implicated serious privacy concerns and sought "a large
amount of personal material about a non-party in order to discover information which could have
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Wesley E. Overson
November 15, 2011

been (and may still be) ascertained through other means.”) (citing Fed. R. Civ. P. 26(b)(2)(C)).
By contrast, Apple makes no attempt to explain why Samsung’s request would impose undue
hardship. Producing these transcripts would not impose significant expense because they are
likely to be in Apple’s possession already. Moreover, Samsung has eliminated any individual
privacy concerns by limiting its request to instances where the inventor is testifying in his or her
capacity as an Apple employee. Absent a showing of hardship, Apple’s citation to dicta about
“fishing expeditions” does not require Samsung to demonstrate that the prior testimony is likely
to contain inconsistencies. The court in Inventio AG readily recognized this and therefore
permitted discovery of prior testimony despite the fact that the defendant had not "allege[d]
specifically" how the prior testimony "contain[ed] information that is directly relevant to the
instant litigation[.]" Id. at 383.
Please be prepared to tell us on tomorrow's meet and confer call whether and when Apple will
produce the requested prior testimony.

Best regards,
/s/ Marissa R. Ducca

Marissa R. Ducca

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