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

Filing 205

MOTION to Compel (Redacted) filed by Samsung Electronics America, Inc., Samsung Electronics Co. Ltd., Samsung Telecommunications America, LLC. Motion Hearing set for 9/13/2011 10:00 AM in Courtroom 5, 4th Floor, San Jose before Magistrate Judge Paul Singh Grewal. Responses due by 9/9/2011. Replies due by 9/12/2011. (Attachments: #1 Jenkins Declaration, #2 Exhibit A, #3 Exhibit B, #4 Exhibit C, #5 Exhibit D, #6 Exhibit E, #7 Exhibit F, #8 Exhibit G, #9 Exhibit H, #10 Exhibit I, #11 Exhibit J, #12 Exhibit K, #13 Exhibit L, #14 Exhibit M, #15 Exhibit N, #16 Exhibit O, #17 Exhibit P, #18 Exhibit Q, #19 Proposed Order)(Maroulis, Victoria) (Filed on 9/1/2011)

EXHIBIT A

02198.51855/4324341.1

1 QUINN EMANUEL URQUHART & SULLIVAN, LLP
Charles K. Verhoeven (Cal. Bar No. 170151)
2 [e-mail]
50 California Street, 22nd Floor
3 San Francisco, California 94111
Telephone: [phone]
4 Facsimile: [phone]
5 Kevin P.B. Johnson (Cal. Bar No. 177129)
[e-mail]
6 Victoria F. Maroulis (Cal. Bar No. 202603)
[e-mail]
th
7 555 Twin Dolphin Drive 5 Floor
Redwood Shores, California 94065
8 Telephone: [phone]
Facsimile: [phone]
9
Michael T. Zeller (Cal. Bar No. 196417)
10 [e-mail]
865 S. Figueroa St., 10th Floor
11 Los Angeles, California 90017
Telephone: [phone]
12 Facsimile: [phone]
13 Attorneys for SAMSUNG ELECTRONICS
CO., LTD., SAMSUNG ELECTRONICS
14 AMERICA, INC. and SAMSUNG
TELECOMMUNICATIONS AMERICA, LLC
15
16

UNITED STATES DISTRICT COURT

17

NORTHERN DISTRICT OF CALIFORNIA, SAN JOSE DIVISION

18 APPLE INC., a California corporation,
19
20

CASE NO. 11-cv-01846-LHK

Plaintiff,
vs.

21 SAMSUNG ELECTRONICS CO., LTD., a
Korean business entity; SAMSUNG
22 ELECTRONICS AMERICA, INC., a New
York corporation; SAMSUNG
23 TELECOMMUNICATIONS AMERICA,
LLC, a Delaware limited liability company,
24
Defendants.
25

SAMSUNG’S REQUESTS FOR
PRODUCTION OF DOCUMENTS AND
THINGS RELATING TO APPLE INC.’S
MOTION FOR A PRELIMINARY
INJUNCTION

26
27
28
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Case No. 11-cv-01846-LHK

1

Pursuant to Rules 26 and 34 of the Federal Rules of Civil Procedure, Defendants and

2 Counterclaimants Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and
3 Samsung Telecommunications America, LLC (collectively “Samsung”) request that Defendant
4 Apple Inc. (“Apple”) produce for inspection and copying the documents and things set forth below
5 at the offices of Quinn Emanuel Urquhart & Sullivan, LLP, 50 California Street, 22nd Floor, San
6 Francisco, California 94111 within 30 days, or such other time as the parties agree or the Court
7 orders.
8
9

DEFINITIONS
1.

The terms “APPLE,” “PLAINTIFF,” “YOU,” and “YOUR” shall refer to Apple,

10 Inc., any predecessor or successor of Apple, Inc., and any past or present parent, division,
11 subsidiary, affiliate, joint venture, associated organization, director, officer, agent, employee,
12 consultant, staff member, or other representative of Apple, Inc., including counsel and patent
13 agents, in any country.
14

2.

The term “DEFENDANTS” means Samsung Electronics Co., Ltd., Samsung

15 Electronics America, Inc., and Samsung Telecommunications America, LLC.
16

3.

The terms “DOCUMENT” and “DOCUMENTS” shall have the broadest meaning

17 ascribed to it by Federal Rule of Civil Procedure 34 and Federal Rule of Evidence 1001. This
18 includes copies which differ from the original in any way, including handwritten notations or other
19 written or printed matter.

It also includes information stored electronically, whether in a

20 computer database or otherwise, regardless of whether such documents are presently also in non21 electronic form.
22

4.

The term “RELATING” shall mean regarding, referring to, concerning,

23 mentioning, reflecting, pertaining to, evidencing, identifying, involving, describing, discussing,
24 commenting on, embodying, responding to, supporting, contradicting, containing, or constituting
25 (in whole or in part).
26

5.

The term “DESIGN PATENTS” shall mean U.S. Design Patent Nos. D618,677,

27 D593,087 and D504,889 and all parents, progeny, continuations, applications, divisional
28
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RELATING TO APPLE’S MOTION FOR A PRELIMINARY INJUNCTION

1 applications, reexaminations, or reissues thereof and all foreign counterpart applications and
2 patents which claim the same subject matter.
3

6.

The term “’381 PATENT” shall mean U.S. Patent No. 7,469,381 and all parents,

4 progeny, continuations, applications, divisional applications, reexaminations, or reissues thereof
5 and all foreign counterpart applications and patents which claim the same subject matter.
6

7.

“PRIOR ART” shall mean any reference, publication, patent, physical specimen,

7 use, invention by another, sale, offer for sale, or other activities that are relevant to the validity of
8 the DESIGN PATENTS or the ‘381 PATENT including anything that is relevant to the
9 patentability of any patent claim under 35 U.S.C. §§ 102 and 103.

Prior Art is not limited to

10 references or other activities cited to the United States Patent and Trademark Office during
11 prosecution of any patent.
12

8.

“This Lawsuit” shall mean the action entitled Apple, Inc. v. Samsung Electronics

13 Co., Ltd., Case No. 11-cv-01846-LHK.
14

9.

The connectives “and,” “or,” and “and/or” shall be construed either disjunctively or

15 conjunctively, as necessary to bring within the scope of these requests for production all responses
16 that might otherwise be construed to be outside of their scope.
17

10.

The word “each” includes the word “every,” and the word “every” includes the

18 word “each,” as necessary to bring within the scope of these requests for production all responses
19 that might otherwise be construed to be outside of their scope.
20

11.

The word “any” includes the word “all,” and the word “all” includes the word

21 “any,” as necessary to bring within the scope of these requests for production all responses that
22 might otherwise be construed to be outside of their scope.
23

12.

The word “all” includes the word “each,” and the word “each” includes the word

24 “all,” as necessary to bring within the scope of these requests for production all responses that
25 might otherwise be construed to be outside of their scope.
26

13.

The use of the singular form of any word includes the plural and vice-versa, as

27 necessary to bring within the scope of these requests for production all responses that might
28 otherwise be construed to be outside of their scope.
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RELATING TO APPLE’S MOTION FOR A PRELIMINARY INJUNCTION

1

INSTRUCTIONS

2

1.

Each DOCUMENT is to be produced along with all non-identical drafts thereof in

3 their entirety, without abbreviation or redaction.
4

2.

All DOCUMENTS shall be produced in the order that they are kept in the usual

5 course of business, and shall be produced in their original folders, binders, covers or containers, or
6 photocopies thereof.
7

3.

In the event that any DOCUMENT called for by these requests or subsequent

8 requests is to be withheld on the basis of a claim of privilege or immunity from discovery, that
9 DOCUMENT is to be identified by stating (i) the author(s), addressee(s) and any indicated or
10 blind copyee(s); (ii) the DOCUMENT’s date, number of pages and attachments or appendices;
11 (iii) the subject matter(s) of the DOCUMENT; (iv) the nature of the privilege or immunity
12 asserted; and (v) any additional facts on which you would base your claim of privilege or
13 immunity.1
14

4.

These Requests for Production shall be deemed continuing so as to require further

15 and supplemental production in accordance with the Federal Rules of Civil Procedure.
16

REQUESTS FOR PRODUCTION

17 REQUEST FOR PRODUCTION NO. 1:
18

DOCUMENTS RELATING to the conception and reduction to practice of the DESIGN

19 PATENTS and the ‘381 PATENT.
20 REQUEST FOR PRODUCTION NO. 2:
DOCUMENTS sufficient to identify the individuals, including but not limited to named

21

22 inventors, who contributed to the conception of the designs or alleged inventions of the DESIGN
23 PATENTS or the ‘381 PATENT.
24
25
26

1

Provided the parties reach an agreement that neither party needs to log documents and
27 information generated after the start of this Lawsuit on April 15, 2011, this Instruction applies
only to privileged information and documents generated before the start of litigation.
28
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RELATING TO APPLE’S MOTION FOR A PRELIMINARY INJUNCTION

1 REQUEST FOR PRODUCTION NO. 3:
2

Samples of all products that Apple contends infringe the DESIGN PATENTS and the ‘381

3 PATENT.
4 REQUEST FOR PRODUCTION NO. 4:
5

Communications between YOU and any other person, including, but not limited to, the

6 inventors of the DESIGN PATENTS and of the ‘381 PATENT, concerning the DESIGN
7 PATENTS or the ‘381 PATENT, any products accused of infringing the DESIGN PATENTS or
8 the ‘381 PATENT, or This Lawsuit.
9 REQUEST FOR PRODUCTION NO. 5:
10

DOCUMENTS RELATING to the functionality—including the ease of manufacturing,

11 cost savings, or any other benefit—of any claimed feature, element or combination of elements in
12 any of the DESIGN PATENTS, including without limitation:
13

(a)

a flat front screen,

14

(b)

a clear front screen,

15

(c)

a black-colored front surface,

16

(d)

rectangular shape,

17

(e)

four corners,

18

(f)

rounded corners,

19

(g)

symmetry,

20

(h)

a rectangular screen,

21

(i)

an inset screen,

22

(j)

substantial borders on two sides of a screen,

23

(k)

narrow borders on two sides of a screen,

24

(l)

a horizontal speaker slot,

25

(m)

a speaker slot on the front,

26

(n)

a centered speaker,

27

(o)

a speaker above a display screen,

28

(p)

a speaker near the top of a phone handset,
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1

(q)

a bezel around the edge of product,

2

(r)

a circular button on the front, or

3

(s)

a button located at the center bottom.

4 REQUEST FOR PRODUCTION NO. 6:
5

DOCUMENTS RELATING to the scope, construction, meaning or interpretation of the

6 DESIGN PATENTS or the ‘381 PATENT.
7 REQUEST FOR PRODUCTION NO. 7:
8

DOCUMENTS RELATING to any re-examination proceedings before the United States

9 Patent and Trademark Office RELATING to the ‘381 PATENT.
10 REQUEST FOR PRODUCTION NO. 8:
11

DOCUMENTS discussing, reflecting, supporting, undermining, or otherwise RELATING

12 to the scope, infringement, validity, and enforceability of any claim of the DESIGN PATENTS or
13 the ‘381 PATENT.
14 REQUEST FOR PRODUCTION NO. 9:
15

Transcripts of testimony given at a deposition, hearing, trial, or other proceeding by the

16 named inventors of the DESIGN PATENTS or the ‘381 PATENT RELATING to the DESIGN
17 PATENTS or the ‘381 PATENT, including any testimony provided by Bas Ording RELATING to
18 the ‘381 PATENT.
19 REQUEST FOR PRODUCTION NO. 10:
20

PRIOR ART relating to the DESIGN PATENTS or the ‘381 PATENT.

21 REQUEST FOR PRODUCTION NO. 11:
22

Samples of all products that embody the claims of any of the DESIGN PATENTS or the

23 ‘381 PATENT and publications, product literature or publications relating to such products.
24 REQUEST FOR PRODUCTION NO. 12:
25

DOCUMENTS sufficient to identify every foreign counterpart patent application to the

26 DESIGN PATENTS and the ‘381 PATENT.
27 REQUEST FOR PRODUCTION NO. 13:
28
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Case No. 11-cv-01846-LHK
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RELATING TO APPLE’S MOTION FOR A PRELIMINARY INJUNCTION

1

The prosecution history for every foreign counterpart patent application to the DESIGN

2 PATENTS and the ‘381 PATENT, including any English translations.
3 REQUEST FOR PRODUCTION NO. 14:
4

Each item of PRIOR ART cited in the prosecution history for every foreign counterpart

5 patent application to the DESIGN PATENTS and the ‘381 PATENT, including any English
6 translations.
7 REQUEST FOR PRODUCTION NO. 15:
8

All DOCUMENTS relied on by Cooper Woodring in his declaration submitted in support

9 of YOUR Motion for Preliminary Injunction dated July 1, 2011.
10 REQUEST FOR PRODUCTION NO. 16:
11

All prior expert reports and declarations submitted by Cooper Woodring in other litigations

12 involving design patent infringement, industrial design, or electronic consumer goods.
13 REQUEST FOR PRODUCTION NO. 17:
14

All trial and deposition transcripts from other litigations in which Cooper Woodring

15 testified as an expert.
16 REQUEST FOR PRODUCTION NO. 18:
17

All DOCUMENTS relied on by Ravin Balakrishnan in his declaration submitted in support

18 of YOUR Motion for Preliminary Injunction dated July 1, 2011.
19 REQUEST FOR PRODUCTION NO. 19:
20

All prior expert reports and declarations submitted by Ravin Balakrishnan in other

21 litigations involving utility patents.
22 REQUEST FOR PRODUCTION NO. 20:
23

All trial and deposition transcripts from other litigations in which Ravin Balakrishnan

24 testified as an expert.
25 REQUEST FOR PRODUCTION NO. 21:
26

DOCUMENTS from any prior or current litigation or dispute relating to infringement,

27 validity, enforceability, or ownership of the DESIGN PATENTS, including Apple Inc. v. Brilliant
28 Store, Inc., Case No. 10-cv-2996-SBA.
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RELATING TO APPLE’S MOTION FOR A PRELIMINARY INJUNCTION

1 REQUEST FOR PRODUCTION NO. 22:
2

DOCUMENTS from any prior or current litigation or dispute relating to infringement,

3 validity, enforceability, or ownership of the ‘381 PATENT, including Nokia Corp. v. Apple Inc.,
4 Case No. 1:09-cv-00791 (D. Del.), and Apple Inc. v. High Tech Computer Corp. (HTC), Case No.
5 1:10-cv-00167 (D. Del.)
6 REQUEST FOR PRODUCTION NO. 23:
7

DOCUMENTS RELATING to all licenses and potential licenses for the DESIGN

8 PATENTS or the ‘381 PATENT, including all correspondence and DOCUMENTS RELATING
9 to licensing offers or negotiations.
10 REQUEST FOR PRODUCTION NO. 24:
11

DOCUMENTS RELATING to competition between each version of the iPhone and any

12 product YOU accuse of infringing the DESIGN PATENTS or the ‘381 PATENT.
13 REQUEST FOR PRODUCTION NO. 25:
14

DOCUMENTS RELATING to competition between each version of the iPad and any

15 product YOU accuse of infringing the DESIGN PATENTS or the ‘381 PATENT.
16 REQUEST FOR PRODUCTION NO. 26:
17

DOCUMENTS sufficient to identify the respective markets of each version of the iPhone

18 and the iPad.
19 REQUEST FOR PRODUCTION NO. 27:
20

DOCUMENTS sufficient to identify the respective market shares of each version of the

21 iPhone and the iPad.
22 REQUEST FOR PRODUCTION NO. 28:
23

DOCUMENTS sufficient to identify the respective market share of each product that

24 competes with the iPhone or the iPad.
25 REQUEST FOR PRODUCTION NO. 29:
26

DOCUMENTS sufficient to identify all projections YOU have reviewed or considered as

27 to what the respective market share of the iPhone and iPad, and each product that competes with
28 the iPhone or the iPad, are likely to be at any future point.
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SAMSUNG’S REQUESTS FOR PRODUCTION OF DOCUMENTS AND THINGS
RELATING TO APPLE’S MOTION FOR A PRELIMINARY INJUNCTION

1 DATED: July 6, 2011
2

QUINN EMANUEL URQUHART &
SULLIVAN, LLP

3
4
5
6
7
8

By/s/ Victoria F. Maroulis
Charles K. Verhoeven
Kevin P.B. Johnson
Victoria F. Maroulis
Michael T. Zeller
Attorneys for SAMSUNG ELECTRONICS CO.,
LTD., SAMSUNG ELECTRONICS AMERICA,
INC., and SAMSUNG
TELECOMMUNICATIONS AMERICA, LLC

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1
2

CERTIFICATE OF SERVICE
I hereby certify that on July 6, 2011, I caused SAMSUNG’S REQUESTS FOR

3 PRODUCTION OF DOCUMENTS AND THINGS RELATING TO APPLE INC.’S
4 MOTION FOR A PRELIMINARY INJUNCTION to be electronically served on the following
5 via email:
6 ATTORNEYS FOR APPLE INC.
7 HAROLD J. MCELHINNY
[e-mail]
8 MICHAEL A. JACOBS
[e-mail]
9 JENNIFER LEE TAYLOR
[e-mail]
10 ALISON M. TUCHER
[e-mail]
11 RICHARD S.J. HUNG
[e-mail]
12 JASON R. BARTLETT
[e-mail]
13 MORRISON & FOERSTER LLP
425 Market Street
14 San Francisco, California 94105-2482
Telephone: [phone]
15 Facsimile: [phone]
16
17

I declare under penalty of perjury that the foregoing is true and correct. Executed in San

18 Francisco, California on July 6, 2011.
19
20

/s/ Erik Olson
Erik Olson

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