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

Filing 467

Administrative Motion to File Under Seal filed by Apple Inc.. (Attachments: #1 Exhibit Motion to Compel, #2 Exhibit Mazza Declaration, #3 Exhibit Ex. 1 to Mazza Decl, #4 Exhibit Ex. 2 to Mazza Decl, #5 Exhibit Ex. 3 to Mazza Decl, #6 Exhibit Ex. 4 to Mazza Decl, #7 Exhibit Ex. 5 to Mazza Decl, #8 Exhibit Ex. 6 to Mazza Decl, #9 Exhibit Ex. 7 to Mazza Decl, #10 Exhibit Ex. 8 to Mazza Decl, #11 Exhibit Ex. 9 to Mazza Decl, #12 Exhibit Ex. 10 to Mazza Decl, #13 Exhibit Ex. 11 to Mazza Decl, #14 Exhibit Ex. 12 to Mazza Decl, #15 Exhibit Ex. 13 to Mazza Decl, #16 Exhibit Ex. 14 to Mazza Decl, #17 Exhibit Ex. 15 to Mazza Decl, #18 Exhibit Ex. 16 to Mazza Decl, #19 Exhibit Ex. 17 to Mazza Decl, #20 Exhibit Ex. 18 to Mazza Decl, #21 Proposed Order)(Jacobs, Michael) (Filed on 12/8/2011) Modified on 12/15/2011 (feriab, COURT STAFF). (Attachment 10 replaced on 12/21/2011) (sp, COURT STAFF). (Attachment 16 replaced on 12/21/2011) (sp, COURT STAFF). PURSUANT TO ORDER #523 DOCUMENTS 467-10 AND 467-16 REMOVED. Modified on 12/21/2011 (sp, COURT STAFF).

Exhibit 11

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October 13, 2011

MORRISON & FOERSTER LLP
NEW YORK, SAN FRANCISCO,
LOS ANGELES, PALO ALTO,
SACRAMENTO, SAN DIEGO,
DENVER, NORTHERN VIRGINIA,
WASHINGTON, D.C.
TOKYO, LONDON, BRUSSELS,
BEIJING, SHANGHAI, HONG KONG

Writer’s Direct Contact
415.268.6096
[e-mail]

Via E-Mail
Kevin Johnson
Victoria Maroulis
Quinn Emanuel
555 Twin Dolphin Drive, 5th Floor
Redwood Shores, CA 94065
Re:

Apple Inc. v. Samsung Elecs. Co. et al. Case No. 11-cv-1846 LHK (N.D. Cal.)
CONFIDENTIAL—Subject to Protective Order

Dear Kevin and Victoria:
This letter concerns Samsung’s outstanding responses to Apple’s discovery requests. During
the preliminary injunction phase of this lawsuit, Samsung failed to respond fully and
completely to many of Apple’s document and interrogatory requests, such as the request that
Samsung provide the source code for several accused applications. Moreover, to date,
Samsung has failed to comply with the Court’s order to produce documents pertinent to
Apple products, instead conducting an inconsistent and incomplete search that fails to
capture all pertinent documents. Your most recent letter of October 12 fails to explain away
your lack of compliance. We again request a meet and confer about the issues remaining
from the preliminary injunction discovery phase of the case. The subject matter is still
pertinent even after the hearing has occurred. Could we meet and confer on those issues next
Monday at 1:30 pm in our office?
In addition to these preliminary injunction-related requests, Apple has served requests that
are relevant to issues beyond its preliminary injunction motion. Now that that motion has
been argued, we ask that Samsung provide full and complete responses to these requests,
beginning with the complete production of documents responsive to Apple’s second set of
requests for production, as well as any remaining documents responsive to Apple’s first and
second set of preliminary injunction requests. To help with our meet and confer discussions,
I will summarize these document requests below.

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Kevin Johnson
Victoria Maroulis
October 13, 2011
Page Two
1.

Design and Utility Patent Infringement

Apple has served several requests related to Samsung’s infringement of Apple’s design and
utility patents, including RFPs 11, 12, 18, 26, 27, and 30. (See Apple’s Second Set of
Requests for Production served Aug. 3, 2011 (“RFP 2”).) In addition, several of Apple’s
preliminary injunction requests, such as RFPs 158, 159-164, 167, 200-203, are also relevant
to infringement. (See Apple’s Second Set of Preliminary Injunction Requests for Production
served Aug. 26, 2011 (“PI RFP 2”).) Among other things, these requests ask Samsung to
produce: (1) documents related to the design and developments of the hardware and GUI of
the accused products, including the development of the features and functions that are
alleged to infringe the patents at issue; (2) documents sufficient to identify each person
involved in the design and development of the accused products; (3) documents relating to
the decision to adopt the hardware design of the accused products as well as each version of
the GUI used in each product; and (4) source code for certain accused applications and
features, and for displaying images on the AMOLED screens.
2.

Trademark and Trade Dress Infringement

Apple also has asked Samsung to produced documents related to the trademark and trade
dress infringement claims. Requests related to this topic include RFPs 36-39 (see RFP 2),
and preliminary injunction RFP 215 (see PI RFP 2). These requests cover documents
relating to: (1) any asserted element of Apple’s trade dress, trade dress registrations, trade
dress applications, and trademarks; (2) actual or possible consumer confusion between Apple
and Samsung’s products; (3) Samsung’s knowledge of any third party’s use of Apple’s trade
dress, trade dress registration, trade dress applications, and trademarks; and (4) documents in
which Samsung was made aware of possible consumer confusion.
3.

Design Decisions, Secondary Considerations, and Willfulness

On a related issue, Apple has served several requests regarding Samsung’s design decisions
with regard to the accused products. These requests also relate to Samsung’s awareness of
the patents at issue in this case. Requests related to these topics include RFPs 13-15, 19-21,
and 31 (see RFP 2), and preliminary injunction requests 1-2, 165-166, 204-205, and 211-213,
(see Apple’s First Set of Preliminary Injunction Requests for Production served Jul. 12, 2011
(“PI RFP 1”); PI RFP 2). The requests encompass: (1) documents relating to when and
under what circumstances Samsung became aware of the Apple patents at issue in this case;
(2) documents relating to the development of the accused products that mention or refer to
Apple or its products, or to Samsung’s inspection of Apple’s products; (3) all samples of
Apple products in Samsung’s possession (excluding samples purchased for this lawsuit); (4)
documents sent or received by Lee Don-Joo relating to Apple or its products; and (5)
documents relating to Samsung’s analyses or attempts to avoid infringement of the patents at
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Kevin Johnson
Victoria Maroulis
October 13, 2011
Page Three
issue, including documents related to opinions and prior art searches. The court recently
ordered Samsung to produce some of these documents in advance of the preliminary
injunction hearing, and we need to meet and confer on whether it is complete, but these
requests also cover designs, features and products not at issue in the preliminary injunction
motion for which no documents have been produced.
4.

Marketing, Sales and Royalty Documents

Many of Apple’s document requests are directed to Samsung’s marketing, sales and
licensing documents, including RFPs 9-10, 16-17, 22-25, 28-29, 32-34, 40-42, and 47-48.
(See RFP 2.) Several preliminary injunction requests are also relevant to this topic, including
RFPs 3-7, 207-210, 214, and 216-217. These requests call for several types of documents,
including documents sufficient to show: (1) U.S. revenues generated by each accused
product; (2) unit sales of each accused product; (3) current and past retail prices for each
accused product; (4) the number and percentage of units returned by purchasers or retailers
(and the reasons for the return); (5) the actual and projected market share for Samsung’s
smart phones and tablets; and (6) sales forecasts for the accused products. They also ask for:
(1) copies of advertising relating to the accused products; (2) documents relating to
promotions (actual or considered) of the accused products, including ads or promotions that
refer directly or indirectly to Apple products; and (3) documents sufficient to show the per
month advertising and marketing spending in the U.S. for the accused products. Finally, they
ask for documents relating to: (1) valuations of the patents at issue; (2) valuations of
Samsung’s patent portfolio; (3) documents relating to indemnification for any infringement
of the patents at issue; and (4) payments made by or to Samsung for licenses to intellectual
property.
5.

Miscellaneous Requests

Apple has served requests related to a variety of other topics. The requests in this category
include, among other things, requests for: (1) documents relating to Samsung’s management
structure; (2) documents sufficient to show the structure of entities responsible for the
accused devices; (3) agreements (including joint defense agreements) between Samsung and
third parties related to the subject matter of these proceedings; and (4) Samsung’s document
retention policy in effect during the last three years. (See RFP 2 at 35, 43-46, & 49-52.)
In addition, several of Apple’s preliminary injunction requests are directed to Samsung’s
invalidity defenses, including RFPs 8, 156-157, 197-199. (See PI RFP 2.) These requests
encompass documents related to any alleged prior art to the patents at issue in the
preliminary injunction motion, including documents related to LaunchTile and XNav and to
the alleged prior art designs discussed in Samsung’s opposition brief.

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Kevin Johnson
Victoria Maroulis
October 13, 2011
Page Four
To the extent Samsung believes that it has completed production of documents responsive to
any of the above requests, we ask that for each such request you state whether your
production is complete and provide us with the information required under Judge Grewal’s
September 28th Order.
The above is simply an overview of the document requests served on Samsung for the
purpose of our meet and confer discussions. To date, Samsung has produced few documents
responsive to these requests. Given the March 8th discovery cut-off and the need to take
depositions of international witnesses, we request that Samsung begin producing documents
responsive to these requests as soon as possible. We also propose that we meet and confer
regarding a mutually-agreeable deadline for completion of its production. We are available
to discuss this on Monday as well.
Best regards,
/s/
Wesley E. Overson

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