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

Filing 222

RESPONSE (re #205 MOTION to Compel (Redacted) MOTION to Compel (Redacted) MOTION to Compel (Redacted) ) Apple's Opposition to Samsung's Motion to Compel Regarding Request for Production No. 1 and Interrogatory Nos. 1, 3, and 6 (Public Redacted Version) filed byApple Inc.. (Bartlett, Jason) (Filed on 9/12/2011)

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HAROLD J. MCELHINNY (CA SBN 66781)
[e-mail]
MICHAEL A. JACOBS (CA SBN 111664)
[e-mail]
RICHARD S.J. HUNG (CA SBN 197425)
[e-mail]
MORRISON & FOERSTER LLP
425 Market Street
San Francisco, California 94105-2482
Telephone: [phone]
Facsimile: [phone]

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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]
WILLIAM F. LEE (pro hac vice)
[e-mail]
WILMER CUTLER PICKERING
HALE AND DORR LLP
60 State Street
Boston, MA 02109
Telephone: [phone]
Facsimile: [phone]
Attorneys for Plaintiff
APPLE INC.

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

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APPLE INC., a California corporation,

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Plaintiff,

Case No. 11-cv-01846-LHK
APPLE’S OPPOSITION TO SAMSUNG’S
MOTION TO COMPEL REGARDING
REQUEST FOR PRODUCTION NO. 1 AND
INTEROGATORY NOS. 1, 3, AND 6

v.
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,

Date:
Time:
Place:
Judge:

September 13, 2011
10:00.
Courtroom 5, 4th Floor
Hon. Paul Singh Grewal

Defendants.

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PUBLIC REDACTED VERSION

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TABLE OF CONTENTS

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Page

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INTRODUCTION .......................................................................................................................... 1
STATEMENT OF FACTS ............................................................................................................. 1
ARGUMENT .................................................................................................................................. 4
I.
SAMSUNG’S REQUEST FOR
SEEKS UNREASONABLY
BURDENSOME DISCOVERY NOT NARROWLY TAILORED TO
PRELIMINARY INJUNCTION ISSUES. ......................................................................... 4
A.
Apple Has Already Gone Above and Beyond the Requirements of the
Court’s Order in Providing Expedited Discovery Relating to the Design
Patents at Issue in its Preliminary Injunction Motion ............................................. 4
B.
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II.
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A.
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B.
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III.
APPLE HAS ALREADY ANSWERED SAMSUNG’S INTERROGATORIES
AND NO SUPPLEMENTATION IS REQUIRED FOR THE PRELIMINARY
INJUNCTION MOTION .................................................................................................. 11
CONCLUSION ............................................................................................................................. 14

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TABLE OF AUTHORITIES

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Page(s)

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CASES

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OKI Am., Inc. v. Advanced Micro Devices, Inc.,
No. C 04-3171 CRB (JL), 2006 U.S. Dist. LEXIS 66441 (N.D. Cal. Aug. 31, 2006) ........... 10

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Polymer Techs. v. Bridwell,
103 F.3d 970 (Fed. Cir. 1996)........................................................................................... 13, 14
Securities & Exchange Commission v. Samuel H. Sloan & Co.,
369 F. Supp. 994 (S.D.N.Y. 1973).................................................................................... 14, 15

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INTRODUCTION

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At the outset of the preliminary injunction phase of this case, the Court set out the metes

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and bounds of the expedited discovery in which the parties were to engage. The Court

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emphasized that the discovery sought “must be relevant to the preliminary injunction motion,”

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and admonished the parties to “make all efforts to keep discovery requests reasonable in scope

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and narrowly tailored to address [that motion].” (D.N. 115 at 2.) Paying no heed to these

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instructions, Samsung now seeks to compel Apple to provide it with: (1) expedited production of

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documents that are burdensome to produce yet of extremely limited relevance compared to data

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Apple has already produced; (2)

and

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(3) interrogatory responses covering infringement contentions against not only Samsung products

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that are not at issue in Apple’s preliminary injunction motion, but also third party products that

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have no connection to the motion. Perhaps most troubling, however, are Samsung’s inaccurate

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representations about the record, its unwillingness to accept any compromise short of the

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production of everything that it has asked for, and its attempt to fault Apple for its own refusal to

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take advantage of the broad discovery that Apple has made available to it. As demonstrated

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below, Samsung has failed to put forth any legitimate basis for the relief that it has requested, and

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accordingly, its motion to compel should be denied.

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STATEMENT OF FACTS

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On July 18, 2011, the Court issued an Order Setting Briefing And Hearing Schedule For

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Preliminary Injunction Motion which set a deadline for expedited discovery on issues relevant to

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that motion. (D.N. 115.) The Order set a deadline of August 8, 2011 for “Samsung’s discovery

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from Apple.” (Id.) The Order explicitly states that “discovery sought under this schedule must

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be relevant to the preliminary injunction motion,” and that the parties must “make all efforts to

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keep discovery requests reasonable in scope and narrowly tailored to address [that motion].” (Id.

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at 2.)

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Thereafter, Samsung served 30 broad requests for production. (Declaration of Sara

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Jenkins in Support of Samsung’s Motion to Compel (“Jenkins Decl.”), D.N. 205, Ex. A.) For

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example, Request for Production No. 1 calls for all “DOCUMENTS RELATING to the
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conception and reduction to practice of the DESIGN PATENTS and the ’381 PATENT.” The

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requests define DESIGN PATENTS and the ’381 PATENT to include:

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

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(Id. at 4.) Samsung also served 9 broad interrogatories. (Jenkins Decl., Ex. B.) Interrogatory No.
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1, for example, seeks the date Apple “first became aware” of “each and every” Samsung product
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that Apple alleges infringes “one or more of the DESIGN PATENTS or the ’381 PATENT.” (Id.
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at 6-7.) Despite being “preliminary injunction discovery,” the interrogatory contains no explicit
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statement that limits it to the accused products which are the subject of Apple’s preliminary
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injunction motion. (Id.) Interrogatory Nos. 3 and 6 ask Apple to identify “by product name,
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product manufacturer, telecommunications carrier (if applicable), date of product announcement,
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date of product release, and appearance of product – including front, back, and side images”
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every product that Apple alleges use “any patented design or invention of the DESIGN
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PATENTS or the ’381 PATENT” and every product “currently available for purchase in the
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market” that Apple believes use those patents. (Id. at 7-8.) Again, Samsung defines DESIGN
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PATENTS and the ’381 PATENT to include a whole host of other patents. (Id. at 4.) Moreover,
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Nos. 3 and 6 are not explicitly limited to Samsung’s products, or even to products sold in the
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United States. (Id. at 7-8.)
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Given the Court’s Order on preliminary injunction discovery, Apple objected to
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Samsung’s requests and took the position that responsive discovery must be relevant to the
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preliminary injunction motion. (Jenkins Decl., Exs. C-D.) Notwithstanding those objections,
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Apple has produced over 35,000 pages of documents, provided detailed responses to Samsung’s
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interrogatories, has offered over ten witnesses on topics relevant to the injunction motion,
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. (Declaration of Jason Bartlett in
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Support of Apple’s Opposition to Samsung’s Motion to Compel (“Bartlett Decl.”), ¶ 2.)
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Apple has also made every effort to compromise and accommodate Samsung’s demands.
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ARGUMENT
I.

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SAMSUNG’S REQUEST FOR
SEEKS UNREASONABLY
BURDENSOME DISCOVERY NOT NARROWLY TAILORED TO
PRELIMINARY INJUNCTION ISSUES.

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A.

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Apple Has Already Gone Above and Beyond the Requirements of the Court’s
Order in Providing Expedited Discovery Relating to the Design Patents at
Issue in its Preliminary Injunction Motion.

Samsung requested “documents relating to the conception and reduction to practice of
[Apple’s] design patents.” (D.N. 205 at 4.)

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In short, Apple has been extremely reasonable. Samsung has only itself to blame for
refusing to inspect the very evidence that it now claims it was denied.
B.

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II.

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To understand the consequences of a leak, the Court need look no further than Samsung’s slavish

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copying of Apple’s designs that is the subject of this dispute. (Bartlett Decl., Ex. F (article noting

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Samsung redesigned its tablet to look more like the iPad 2).)

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This Court faced a request substantively identical to that made by Samsung in OKI Am.,

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Inc. v. Advanced Micro Devices, Inc., No. C 04-3171 CRB (JL), 2006 U.S. Dist. LEXIS 66441

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(N.D. Cal. Aug. 31, 2006). Specifically, a party had moved to compel a more open procedure for

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reviewing OKI’s “product layouts” or product schematics for “the convenience of its counsel.” Id.

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at *10-11. The court denied the motion because the layouts were “among OKI’s most valuable

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and secret assets” and “[e]ven an inadvertent disclosure of such information could spell economic

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catastrophe for OKI.” Id. at *11. This Court therefore provided for the layouts to be “produced

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at the office of OKI outside counsel” and reviewed “under OKI’s direct control and supervision.”

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Id.

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B.

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The record speaks for itself regarding Apple’s continuing efforts to accommodate

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Samsung’s unreasonable discovery requests. Despite the substantial expense and confidentiality

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risks presented by these compromises, Samsung failed to take advantage of these opportunities

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for further review or print-outs. (Id., Ex. D.) Given the unreasonableness of Samsung’s demands

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and refusal to engage in good faith negotiations regarding discovery issues, Samsung’s motion

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should be denied.

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III.

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APPLE HAS ALREADY ANSWERED SAMSUNG’S INTERROGATORIES AND
NO SUPPLEMENTATION IS REQUIRED FOR THE PRELIMINARY
INJUNCTION MOTION

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Like its allegations concerning Apple’s document production, Samsung’s attempt to

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compel a supplemental response to interrogatories numbers 1, 3 and 6 also fails to meet the

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exacting standard for preliminary injunction discovery established by this Court.

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Interrogatory 1

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Samsung’s Interrogatory No. 1 asks for the date that Apple first became aware of the

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“manufacture, use, sale, offer for sale, or importation” of the accused instrumentalities. (Jenkins

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Decl., Ex. B at 6-7.) Apple has already responded to that question in full by identifying the dates

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that the accused instrumentalities were first sold in the U.S. (Id., Ex. D at 6.)

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Samsung now apparently wishes that it had asked a different question. It asks that Apple

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be compelled to amend its response to Interrogatory No. 1 to state the date that it became aware

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of the public announcement anywhere in the world of the Samsung products at issue in Apple’s

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preliminary injunction motion. Even if Apple did have a duty to respond to a question other than

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the one posed (which it does not), there is no need for Apple to further supplement its response

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because Apple has already provided ample discovery on this issue in the form of both documents

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and deposition testimony.

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Beyond having failed to propound the question at issue, and lacking any basis for its

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demand that Apple provide a supplemental response to a different interrogatory, Samsung cannot

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seriously contend that it is entitled to additional discovery on this subject, especially where Apple

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has already provided the answers that Samsung seeks in the form of documents and deposition

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testimony.

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Interrogatories 3 and 6

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In violation of the Court’s Order, Samsung seeks via interrogatories what amounts to

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infringement contentions on “every product manufactured” not only by Samsung, but also by any
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other company that might infringe Apple’s patents—not just those products subject to potential

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injunctive relief. (Jenkins Decl., Ex. B at 7-8.) This is a clear violation of the Court’s Order, and

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would not be proper in any case. Apple has no duty to develop infringement contentions

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regarding the entire universe of phones and tablets for the purposes of this litigation. Whether

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other products not at issue in the motion do or do not infringe Apple’s patents has nothing to do

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with whether a narrow set of specific Samsung products should be enjoined. Samsung cannot

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maintain that what it now seeks is “relevant to the preliminary injunction motion,” “reasonable in

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scope,” or “narrowly tailored” as the Court required. (D.N. 115 at 2.)

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The parties’ dispute regarding the “irreparable harm” Apple has suffered as a result of

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Samsung’s misappropriation of Apple’s patents and design is not a reason for Samsung to

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demand that Apple develop infringement contentions relating to products not at issue in the

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preliminary injunction motion. Moreover, Polymer Techs. v. Bridwell, 103 F.3d 970 (Fed. Cir.

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1996) simply does not support Samsung’s assertion that “(t)he date (on which) Apple first

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became aware of these devices is directly relevant to Apple’s claim of irreparable harm.” Rather,

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that decision stands for the opposite proposition:

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The fact that other infringers may be in the marketplace does not
negate irreparable harm. A patentee does not have to sue all
infringers at once. Picking off one infringer at a time is not
inconsistent with being irreparably harmed.

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Id. at 975. Under Polymer Techs., there is no basis for Samsung’s contention that Apple’s
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awareness of infringement by other Samsung devices (or any other party’s devices that Apple has
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accused of infringing its intellectual property, such as Nokia’s) is relevant to Apple’s claim of
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irreparable harm.
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information about other companies Apple has sued on the patents-in-suit is a
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matter of public knowledge. (See Bartlett Decl. ¶ 12.); see also Securities & Exchange
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Commission v. Samuel H. Sloan & Co., 369 F. Supp. 994, 995 (S.D.N.Y. 1973) (“It is well
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established that discovery need not be required of documents of public record which are equally
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accessible to all parties”). Any further supplementation with respect to interrogatory numbers

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three and six is therefore unnecessary.

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CONCLUSION

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Samsung’s motion to compel does not meet the standard for preliminary injunction

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discovery set forth in this Court’s previous Order. Rather, Samsung’s motion seeks to harass

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Apple on issues that are wholly irrelevant to the case. Consequently, Samsung’s motion to

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compel should be DENIED.

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Dated: September 9, 2011

MORRISON & FOERSTER LLP

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By:

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

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ATTESTATION OF E-FILED SIGNATURE
I, JASON R. BARTLETT, am the ECF User whose ID and password are being used to

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file this Brief. In compliance with General Order 45, X.B., I hereby attest that Michael A. Jacobs

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has concurred in this filing.

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Dated: September 9, 2011

By:

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/s/ Jason R. Bartlett
Jason R. Bartlett

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