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

Filing 502

Administrative Motion to File Under Seal filed by Apple Inc.. (Attachments: #1 Declaration, #2 Proposed Order, #3 Exhibit Apple's Opposition to Samsung's Motion to Compel, #4 Mazza Decl ISO Apple's Opposition to Samsung's Motion to Compel, #5 Ex. 1 to Mazza Decl ISO Apple's Opposition to Samsung's Motion to Compel, #6 Ex. 2 to Mazza Decl ISO Apple's Opposition to Samsung's Motion to Compel, #7 Proposed Order Denying Samsung's Motion to Compel, #8 Apple's Opposition to Samsung's Motion to Permit Samsung's Expert Itay Sherman to Review Design Materials Designated Under the Protective Order, #9 Kim Declaration ISO Apple's Opposition to Samsung's Motion to Permit Samsung's Expert Itay Sherman to Review Design Materials Designated Under the Protective Order, #10 Ex. 1 to the Kim Declaration, #11 Ex. 2 to the Kim Declaration, #12 Ex. 3 to the Kim Declaration, #13 Ex. 4 to the Kim Declaration, #14 Ex. 5 to the Kim Declaration, #15 Ex. 6 to the Kim Declaration, #16 Ex. 7 to the Kim Declaration, #17 Ex. 8 to the Kim Declaration, #18 Ex. 9 to the Kim Declaration, #19 Proposed Order Denying Samsung's Motion to Permit Samsung's Expert Itay Sherman to Review Design Materials Designated Under the Protective Order)(Hung, Richard) (Filed on 12/15/2011)

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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]

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Attorneys for Plaintiff and
Counterclaim-Defendant 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 (PSG)
APPLE’S OPPOSITION TO
SAMSUNG’S MOTION TO COMPEL

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:

December 16, 2011
10:00 a.m.
Courtroom 5, 4th Floor
Hon. Paul S. Grewal

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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........................................................................................................................... 4

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ARGUMENT .................................................................................................................................. 4

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I.

APPLE HAS PRODUCED AN ENORMOUS VOLUME OF
DOCUMENTS, SOURCE CODE, CAD, MODELS, AND OTHER
ITEMS. ................................................................................................................................ 4

II.

APPLE HAS ALREADY PRODUCED OR AGREED TO PRODUCE
MOST OF THE ITEMS SAMSUNG’S MOTION DEMANDS. ....................................... 5

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A.

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Apple Will Have Substantially Completed Its Production of Several
Other Items by December 15, 2011......................................................................... 7

C.

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Apple Has Already Produced Several of the Items Samsung Seeks ....................... 5

B.

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Apple Has Agreed to Produce Most of the Other Items As Quickly
As Possible and Has Been Diligently Working to Locate and
Produce Them.......................................................................................................... 7

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7.
III.

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“All Materials Related to” the

C.

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“All Documents Related” to Alleged Prior Art For Design Patents ..................... 11

B.

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SAMSUNG’S DEMANDS FOR “ALL” RELATED DOCUMENTS ARE
OVERBROAD AND UNDULY BURDENSOME. ......................................................... 11
A.

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Other Requests .......................................................................................... 10

Miscellaneous Additional Unspecified “Information”.......................................... 14

............................................................. 13

IV.

APPLE IS ENTITLED TO PROTECT THE CONFIDENTIALITY OF ITS
UNRELEASED PRODUCTS. .......................................................................................... 16

V.

APPLE IS NOT REQUIRED TO PRODUCE HIGHLY SENSITIVE
INFORMATION HAVING NOTHING TO DO WITH THIS CASE. ............................ 18
A.

Apple’s Expanded Sketchbook Production Will Properly Redact
Products Not at Issue in This Case. ....................................................................... 18

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B.

Apple’s Production of Prior Witness Testimony Is Properly Limited
to Cases With a “Technological Nexus” to This Case. ......................................... 19

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CONCLUSION ............................................................................................................................. 21
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TABLE OF AUTHORITIES
Page(s)

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CASES

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Int'l Seaway Trading Corp. v. Walgreens Corp.,
589 F.3d 1233 (Fed. Cir. 2009) ............................................................................................... 12

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Inventio AG v. Thyssenkrupp Elevator Americas Corp.,
662 F. Supp. 2d 375 (D. Del. 2009) ............................................................................ 19, 20, 21
STATUTES
35 U.S.C. § 102 ............................................................................................................................. 12

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RULES
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Fed R. Civ. P.
26(b) ........................................................................................................................................ 18
26(b)(2).................................................................................................................................... 11
26(b)(2)(C) .............................................................................................................................. 21
26(b)(5)(B) .............................................................................................................................. 17

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INTRODUCTION

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Samsung’s motion to compel is a knee-jerk and needless reaction to Apple’s own motion.

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Apple has already produced or agreed to produce most of the categories of documents sought in

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Samsung’s motion. Other categories sought by Samsung’s motion are ill-defined, yet Apple has

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agreed to do what could reasonably be done to respond to these requests. Attempting to gin up

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controversies, Samsung has wasted the Court’s time on unnecessary issues. Indeed, the

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manufactured issues raised by Samsung’s motion actually confirm the fact that Apple’s

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production to date—consisting of more than a million pages—has provided the key information

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needed by Samsung to prepare its defense. Apple’s motion, by contrast, asks the Court to remedy

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the fact that Samsung has yet to produce the core documents Apple needs to conduct depositions

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and litigate its case going forward. Samsung’s motion to compel should be denied.

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ARGUMENT
I.

APPLE HAS PRODUCED AN ENORMOUS VOLUME OF DOCUMENTS,
SOURCE CODE, CAD, MODELS, AND OTHER ITEMS.

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Samsung’s motion is made up of a list of miscellaneous “follow-on” requests, reflecting

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the substantial coverage of Apple’s core production of documents and things to date. Since the

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Preliminary Injunction hearing on October 13, Apple has produced well over a million pages of

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documents in the Northern District of California offensive action alone. (Mazza Decl. ¶ 2.) In

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addition, Apple has produced for inspection numerous CAD files, native and printed source code

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files, Director files on a computer capable of viewing them, and the models and prototypes

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requested by Samsung in connection with its depositions of Apple inventors. (Id.) Samsung also

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deposed 17 Apple patent prosecutors in the month of October 2011, and 31 Apple inventors in the

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months of October and November 2011. (Id.)

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By contrast, since the Preliminary Injunction hearing, Samsung’s total production in the

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Northern District of California offensive action has been about 650 documents, totaling less than

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29,000 pages. (Mazza Decl. ¶ 3.) About 22,000 of those pages were produced in the past week.

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(Id.) Samsung has refused to schedule 36 of the 37 depositions of Samsung witnesses that Apple

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noticed before and shortly after Thanksgiving. (Id.) (Samsung offered a date for its first witness

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just last night. (Id.))

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Despite the imbalance between the parties’ respective productions for Apple’s offensive

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case, Apple has actively continued to collect, process, review, and produce documents for its

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rolling production. And even though Samsung has deposed literally dozens of Apple witnesses

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but declined to make its witnesses available for deposition, Apple has dutifully chased down

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Samsung’s various “follow-on” requests from the depositions of its inventors and prosecutors.

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Apple has also aggressively pursued Samsung’s newly raised requests for documents, such as its

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November 2011 requests for various items of alleged prior art.

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Samsung’s sudden imposition of deadlines in its motion to compel is the first time

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Samsung ever requested production by a specific date. (Mazza Decl. ¶ 4.) As recently as the

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parties’ December 7, 2011, meet-and-confer call, Samsung specifically declined to set any

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production deadlines. (Id.) Samsung instead stated that it was sufficient that Apple was working

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diligently to search for and produce the requested information. (Id.)

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In view of Apple’s diligence in responding to Samsung’s miscellaneous “to-do” list,

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Samsung needed to manufacture deadlines for its motion or it would have little to say. To be

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clear, unlike Apple’s motion, Samsung’s motion does not seek core documents that it needs

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urgently to advance its defenses. Many of the requested items are 10 to 20 years old and have

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been difficult to track down.

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II.

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APPLE HAS ALREADY PRODUCED OR AGREED TO PRODUCE MOST OF
THE ITEMS SAMSUNG’S MOTION DEMANDS.
In addition to the million pages of documents, and the models, prototypes, source code,

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CAD files, and Director files that Apple has already produced, Apple has either produced or has

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committed to producing most of the information Samsung seeks in its motion to compel.

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A.

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Several of the categories of documents Samsung requests in its motion to compel have

Apple Has Already Produced Several of the Items Samsung Seeks

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already been produced, underscoring the hastiness of Samsung’s motion. For example, Samsung

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seeks the production of pleadings, briefs, discovery, and transcripts from Apple v. Motorola
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actions in the ITC and the Western District of Wisconsin. (Samsung Mot. at 4-5.) Apple already

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produced those materials, however—totaling more than 45,000 pages—on November 23, 2011,

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and December 1, 2011. (Mazza Decl. ¶ 5.)

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The four alleged deficiencies that Samsung identified in its December 11, 2011, letter do
not, in fact, exist. In particular:

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“[ITC] Staff’s pre-hearing hearing brief” (Samsung Mot. at 5 n.5): Apple located

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and produced this brief immediately after receiving Samsung’s December 11, 2011

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letter. (Mazza Decl. ¶ 6.)

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“John Elias’ witness statement, testimony and cross-examination” (Samsung Mot.

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at 5 n.5): Apple did not submit a witness statement for Mr. Elias, and he did not

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testify at any hearings in the Motorola cases. (Mazza Decl. ¶ 6.)

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“Jeffrey Brown’s witness statement, testimony and cross-examination” (Samsung

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Mot. at 5 n.5): Mr. Brown’s statement and testimony contain substantial

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confidential information of third party

(Mazza Decl. ¶ 6.)

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“Martin Simmons’ witness statement” (Samsung Mot. at 5 n.5): Like Jeffrey

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Brown’s testimony, Mr. Simmons’ testimony contains Confidential Business

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Information that will require consent to produce. (Mazza Decl. ¶ 6.)

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Samsung also asserts that Apple “produced only a redacted copy” of a document

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containing confidential business information of Apple and two third parties. (Samsung Mot. at 5

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n.5.) As soon as Samsung brought those redactions to Apple’s attention, however, Apple

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produced a version that redacted the confidential business information of Apple. Apple did so

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last week, before Samsung’s motion to compel was filed. (Mazza Decl. ¶ 5.) Accordingly, Apple
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has already met all of Samsung’s demands in this first category, to the extent possible within the

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limits of the ITC protective order governing the Motorola investigation.

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Apple produced the

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photographs— without any confidentiality designation— last week, before Samsung filed its

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motion. (Mazza Decl. ¶ 5.)

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B.

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Apple Will Have Substantially Completed Its Production of Several Other
Items by December 15, 2011

As of the date of the hearing, Apple will have already produced at Morrison & Foerster’s
Palo Alto office the following items for Samsung’s inspection:

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An Apple computer specially configured and adapted to run the 10 year old Mac

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OS 10.0 operating system.

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Portions of the Mac Operating System 10.0 and 10.1 source code believed to relate

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to the functions described in Samsung’s motion.

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Portions of the Mac Operating System 7.5—more than 15 years old—source code

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believed to correspond to the

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(Mazza Decl. ¶ 9.) Apple informed Samsung no later than the parties’ December 7, 2011 meet-

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and-confer call that it planned to make this production by December 15th, (id. ¶ 8), but Samsung

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moved to compel on these issues anyway.

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C.

Apple Has Agreed to Produce Most of the Other Items As Quickly As
Possible and Has Been Diligently Working to Locate and Produce Them

Apple has also been working on producing a large number of other items on Samsung’s

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list as quickly as possible. None of these items relate to the upcoming Markman proceedings.

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And confirming the retaliatory nature of Samsung’s motion, Samsung never suggested a deadline

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of December 23rd before filing its motion. (Mazza Decl. ¶ 4.) Apple’s attorneys have been

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diligently meeting and following up with the Industrial Design team about these items. (Id. ¶ 10.)

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3.

Apple Cinema Display

Samsung has asked that the Court order Apple to produce all documents relating to a line

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of desktop monitors called the Apple Cinema Display, alleging that this display is prior art.

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(Samsung Mot. at 19.) This is unnecessary, as Apple has agreed and already explained to

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Samsung that it will produce the CAD files showing the final design of the Apple Cinema

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Display. (Mazza Decl. ¶ 14.)

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not part of the iPhone development project. (Id.)

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is the same as the one that was photographed and submitted to the Patent Office. The relevance

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(Id.

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Other Requests

Apple has already agreed to search the documents of relevant witnesses to locate any
additional documents relating to

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(Mazza Decl. ¶ 19.)

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Apple has also already agreed to supplement its responses to Interrogatory No. 1. (Id. ¶ 20; Mot.

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at 18.) While Samsung had previously declined to place any specific deadlines on these requests,

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Apple intends to do both of these things before December 23—the date requested in Samsung’s

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proposed order.

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III.

SAMSUNG’S DEMANDS FOR “ALL” RELATED DOCUMENTS ARE
OVERBROAD AND UNDULY BURDENSOME.

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Under Civil Local Rule 37-2, a party moving to compel production “must detail the basis

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for the party’s contention that it is entitled to the requested discovery and must show how the

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proportionality and other requirements of Fed. R. Civ. P. 26(b)(2) are satisfied.” Apple has

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produced, and has agreed to produce, the substantial categories of documents listed above.

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Samsung has not, however, met its burden under Local Rule 37-2 with respect to additional

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documents, materials, and other information “related” to the items Apple has agreed to produce.

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“All Documents Related” to Alleged Prior Art For Design Patents

Apple has agreed to produce final CAD files for each item of purported prior art sought by

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Samsung in its motion. (Mazza Decl. ¶ 21.) The parties have not specifically discussed any

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additional items that Samsung believes it has good reason to request of Apple regarding that

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alleged prior art. (Id.) The fleeting, vague references in Samsung’s motion to “all documents

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related” to prior art do not meet Local Rule 37-2’s requirements.

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“All documents related to the Apple Cinema Display.”

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Apple denies Samsung’s claim that Apple’s 1999 “Cinema Display” computer monitor is

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prior art for the D’889 or any other design patent at issue in this case. Nevertheless, as discussed

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in Section II, Apple has agreed to produce final CAD files for that line of computer monitors.

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Samsung’s motion states that Samsung “has also requested that Apple produce all

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documents related to the Apple Cinema Display, . . . as well as any related models or prototypes.”

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(Samsung Mot. at 19.) Samsung first made this request in a letter dated November 8, 2011,

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asking Apple to produce “all documents related to Apple Cinema Display, including but not

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limited to notebooks, diagrams, progress reports, studies, internal memoranda, contracts for

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services, and communications created or used in connection with the design of Apple Cinema

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Display, as well as any related models or prototypes.” (Mazza Decl. ¶ 22.)

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Apple responded on November 10, 2011, asserting its disagreement that the Apple

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Cinema Display monitor is prior art, and stating further that Samsung’s “request for ‘all

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documents related to’ the monitor is overbroad and unduly burdensome given the alleged
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relevance of the device.” (Id.) Samsung clarified in subsequent meet-and-confer

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communications that it is only seeking information regarding the external appearance of the

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monitor. (Id. ¶ 21.)

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Apple has agreed to produce final CAD files for the Apple Cinema Display. (Id.)

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Samsung’s motion to compel provides no basis for requiring Apple to provide anything more

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regarding the Apple Cinema Display. To establish invalidity under 35 U.S.C. § 102 in the patent

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design context, Samsung must show that an ordinary observer would find the overall appearance

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of the prior art to be substantially identical to the overall appearance of the asserted design patent.

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See Int'l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1243 (Fed. Cir. 2009). This

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test is based solely on a visual comparison of the two designs. As a result, Samsung requires only

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access to materials showing the three-dimensional design of the alleged prior art product—

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information that the CAD files would readily supply. Samsung has not identified any additional

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documents, let alone offered any reason why Apple should provide additional documents.

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that it has been requesting these “other materials” since November 8, 2011. (Mot. at 12; see also

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id. at 13 (referring to “Work orders, model shop records, and other materials”); id. (referring to

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“all documents and things related to this mockup, including CAD drawings, photographs, model

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shop orders and other records”); id. (“It is critical that Apple produce all documents and things

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pertaining to this mockup”); id. (“All materials related to the 035 mockup are in Apple’s

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possession”); id. (“Apple should be compelled to produce all documents and things related to

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the 035 mockup without further delay.”)) But Samsung’s November 8 letter was just as vague

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from its own industrial designers, despite the fact that Samsung products are the accused products

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to produce . . . further materials on this subject,” including “[a]ll information, documents,

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drawings, and models based on or related to the Sony design language.” (Samsung Mot. at 17.)

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letter requested that Apple produce “the documents related to these exercises/investigations,

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(Id.

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IV.

APPLE IS ENTITLED TO PROTECT THE CONFIDENTIALITY OF ITS
UNRELEASED PRODUCTS.

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APPLE IS NOT REQUIRED TO PRODUCE HIGHLY SENSITIVE
INFORMATION HAVING NOTHING TO DO WITH THIS CASE.

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Under Fed R. Civ. P. 26(b), Apple is required to produce all relevant information. It is not

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required to produce irrelevant information.

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(Id.

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B.

Apple’s Production of Prior Witness Testimony Is Properly Limited to Cases
With a “Technological Nexus” to This Case.

Apple has not refused to produce deposition transcripts that are relevant to this case.

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(Mazza Decl. ¶ 34.) For the inventors of the patents in suit, it has already produced prior

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testimony that bears a technological nexus to the patents at issue in this case. (Id.) It is willing to

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produce similar transcripts for other deponents. (Id.) This “technological nexus” standard is

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based on the very cases Samsung cites in support of its motion. See Inventio AG v. Thyssenkrupp

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Elevator Americas Corp., 662 F. Supp. 2d 375, 381 (D. Del. 2009). Samsung, however, wants a
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much broader range of deposition transcripts—all transcripts of all depositions of all Apple

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witnesses in all cases where the witness was testifying in his or her capacity as an Apple

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employee. (See Mot. at 20; Proposed Order at 2.) Samsung’s request is unjustifiably overbroad.

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As Samsung’s own authorities acknowledge, Samsung bears the burden of showing why

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the information sought is relevant to the issues in this case. Inventio AG, 662 F. Supp. 2d at 381.

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Without any explanation or support, Samsung claims that the transcripts it is seeking “almost of

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necessity relate to the same or similar technologies at issue in this case.” (Samsung Mot. at 20.)

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That assertion is simply untrue. Samsung’s demand for all deposition transcripts of Apple

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employees, regardless of subject matter, encompasses a wide array of transcripts that have

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nothing to do with the issues in this case. Apple is involved in consumer class actions,

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employment cases, antitrust, and even personal-injury cases. (Mazza Decl. ¶ 34.) Even for patent

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disputes, the patents at issue are often unrelated to the patents here. (Id.) Apple’s dispute with

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Kodak, for example, involves digital imaging patents. (Id.) None of the transcripts from that

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case are likely to be relevant to the issues in this case which does not involve digital imaging

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technology.

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Moreover, Samsung’s requested relief, which demands that Apple produce all prior

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testimony of “Apple witnesses,” is broader than Samsung’s document requests. (See Prop. Order

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at 2.) Samsung bases its motion on four requests for production: Nos. 75, 95, 184, and 187.

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Requests Nos. 95 and 184 are both limited to transcripts of testimony given by Apple’s inventors,

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not every Apple employee. Requests 75 and 187 both request documents related to Apple’s

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intellectual property or products at issue, which generally fall within the scope of documents

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Apple is willing to produce. In addition, despite Samsung’s current demand that Apple list and

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describe all cases that it has ever participated in, Samsung has never served Apple with an

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interrogatory request making this request.

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As discussed above, Samsung has not provided an adequate basis for demanding these

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documents from Apple. On the contrary, it has previously admitted during the parties’ meet and

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confer sessions that the only basis for its broad request is that Apple’s employees might have said

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something in a wholly unrelated case that might have some sort of impeachment value in the
APPLE’S OPPOSITION TO SAMSUNG’S MOT. TO COMPEL
CASE NO. 11-CV-01846-LHK (PSG)
sf-3083332

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1

present action. (Mazza Decl. ¶ 35.) That is the definition of a fishing expedition. Such discovery

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is not allowed under the Federal Rules of Civil Procedure. Fed. R. Civ. P. 26(b)(2)(C)

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(instructing the court to limit discovery if it determines that, among other things, “the discovery

4

sought is unreasonably cumulative or duplicative” or “the burden or expense of the proposed

5

discovery outweighs its likely benefit.”); see also, Inventio AG v. Thyssenkrupp Elevator

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Americas Corp., 662 F. Supp. 2d 375, 381 (D. Del. 2009) (noting that rule 26(b)(2)(C) imposes a

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balancing test).

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Finally, Samsung’s supposed “compromise”—whereby each party creates an “irrelevance

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log” justifying why each irrelevant transcript is irrelevant—is not a compromise at all. Samsung

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cites no precedent for this request or provides no good reason why these irrelevant depositions

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transcripts (as opposed to, for example, sketchbooks) should be singled out for special treatment.

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Apple has provided Samsung with its proposed definition of “technological nexus”:

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Apple interprets “technological nexus” to include prior cases
involving the patents-in-suit or patents covering the same or similar
technologies, features, or designs as the patents-in-suit. For the
sake of clarity, with respect to design patent inventors, this would
include prior cases involving the asserted design patents or other
design patents covering the same designs or design elements. With
respect to utility patent inventors, this would include the asserted
utility patents or other utility patents covering touch-based interface
functions, display elements, touch-screen hardware, or touch-screen
logic.

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This is a sufficiently clear standard for both parties to follow. Apple requests that the
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Court reject Samsung’s overly-broad and unduly burdensome request for transcripts.
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CONCLUSION
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For these reasons, Apple respectfully requests that Samsung’s Motion to Compel be
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DENIED.
Dated: December 15, 2011

MORRISON & FOERSTER LLP

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By:

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/s/ Richard S.J. Hung
Richard S.J. Hung
Attorneys for Plaintiff
APPLE INC.

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APPLE’S OPPOSITION TO SAMSUNG’S MOT. TO COMPEL
CASE NO. 11-CV-01846-LHK (PSG)
sf-3083332

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