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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1 2 3 4 5 6 7 8 9 HAROLD J. MCELHINNY (CA SBN 66781) hmcelhinny@mofo.com MICHAEL A. JACOBS (CA SBN 111664) mjacobs@mofo.com JENNIFER LEE TAYLOR (CA SBN 161368) jtaylor@mofo.com ALISON M. TUCHER (CA SBN 171363) atucher@mofo.com RICHARD S.J. HUNG (CA SBN 197425) rhung@mofo.com JASON R. BARTLETT (CA SBN 214530) jasonbartlett@mofo.com MORRISON & FOERSTER LLP 425 Market Street San Francisco, California 94105-2482 Telephone: (415) 268-7000 Facsimile: (415) 268-7522 WILLIAM F. LEE william.lee@wilmerhale.com WILMER CUTLER PICKERING HALE AND DORR LLP 60 State Street Boston, MA 02109 Telephone: (617) 526-6000 Facsimile: (617) 526-5000 MARK D. SELWYN (SBN 244180) mark.selwyn@wilmerhale.com WILMER CUTLER PICKERING HALE AND DORR LLP 950 Page Mill Road Palo Alto, California 94304 Telephone: (650) 858-6000 Facsimile (650) 858-6100 10 11 Attorneys for Plaintiff and Counterclaim-Defendant APPLE INC. 12 13 14 UNITED STATES DISTRICT COURT 15 NORTHERN DISTRICT OF CALIFORNIA 16 SAN JOSE DIVISION 17 APPLE INC., a California corporation, 18 19 20 21 22 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 23 Defendants. 24 25 PUBLIC REDACTED VERSION 26 27 28 APPLE’S OPPOSITION TO SAMSUNG’S MOT. TO COMPEL CASE NO. 11-CV-01846-LHK sf-3083332 1 TABLE OF CONTENTS 2 Page 3 INTRODUCTION........................................................................................................................... 4 4 ARGUMENT .................................................................................................................................. 4 5 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 6 7 8 A. 11 Apple Will Have Substantially Completed Its Production of Several Other Items by December 15, 2011......................................................................... 7 C. 10 Apple Has Already Produced Several of the Items Samsung Seeks ....................... 5 B. 9 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 12 13 14 15 16 17 18 19 20 7. III. 21 27 28 “All Materials Related to” the C. 24 “All Documents Related” to Alleged Prior Art For Design Patents ..................... 11 B. 23 26 SAMSUNG’S DEMANDS FOR “ALL” RELATED DOCUMENTS ARE OVERBROAD AND UNDULY BURDENSOME. ......................................................... 11 A. 22 25 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 APPLE’S OPPOSITION TO SAMSUNG’S MOT. TO COMPEL CASE NO. 11-CV-01846-LHK (PSG) sf-3083332 1 1 B. Apple’s Production of Prior Witness Testimony Is Properly Limited to Cases With a “Technological Nexus” to This Case. ......................................... 19 2 CONCLUSION ............................................................................................................................. 21 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 APPLE’S OPPOSITION TO SAMSUNG’S MOT. TO COMPEL CASE NO. 11-CV-01846-LHK (PSG) sf-3083332 2 1 TABLE OF AUTHORITIES Page(s) 2 3 CASES 4 Int'l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233 (Fed. Cir. 2009) ............................................................................................... 12 5 6 7 8 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 9 RULES 10 11 12 13 Fed R. Civ. P. 26(b) ........................................................................................................................................ 18 26(b)(2).................................................................................................................................... 11 26(b)(2)(C) .............................................................................................................................. 21 26(b)(5)(B) .............................................................................................................................. 17 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 APPLE’S OPPOSITION TO SAMSUNG’S MOT. TO COMPEL CASE NO. 11-CV-01846-LHK (PSG) sf-3083332 3 1 INTRODUCTION 2 Samsung’s motion to compel is a knee-jerk and needless reaction to Apple’s own motion. 3 Apple has already produced or agreed to produce most of the categories of documents sought in 4 Samsung’s motion. Other categories sought by Samsung’s motion are ill-defined, yet Apple has 5 agreed to do what could reasonably be done to respond to these requests. Attempting to gin up 6 controversies, Samsung has wasted the Court’s time on unnecessary issues. Indeed, the 7 manufactured issues raised by Samsung’s motion actually confirm the fact that Apple’s 8 production to date—consisting of more than a million pages—has provided the key information 9 needed by Samsung to prepare its defense. Apple’s motion, by contrast, asks the Court to remedy 10 the fact that Samsung has yet to produce the core documents Apple needs to conduct depositions 11 and litigate its case going forward. Samsung’s motion to compel should be denied. 12 13 14 ARGUMENT I. APPLE HAS PRODUCED AN ENORMOUS VOLUME OF DOCUMENTS, SOURCE CODE, CAD, MODELS, AND OTHER ITEMS. 15 Samsung’s motion is made up of a list of miscellaneous “follow-on” requests, reflecting 16 the substantial coverage of Apple’s core production of documents and things to date. Since the 17 Preliminary Injunction hearing on October 13, Apple has produced well over a million pages of 18 documents in the Northern District of California offensive action alone. (Mazza Decl. ¶ 2.) In 19 addition, Apple has produced for inspection numerous CAD files, native and printed source code 20 files, Director files on a computer capable of viewing them, and the models and prototypes 21 requested by Samsung in connection with its depositions of Apple inventors. (Id.) Samsung also 22 deposed 17 Apple patent prosecutors in the month of October 2011, and 31 Apple inventors in the 23 months of October and November 2011. (Id.) 24 By contrast, since the Preliminary Injunction hearing, Samsung’s total production in the 25 Northern District of California offensive action has been about 650 documents, totaling less than 26 29,000 pages. (Mazza Decl. ¶ 3.) About 22,000 of those pages were produced in the past week. 27 (Id.) Samsung has refused to schedule 36 of the 37 depositions of Samsung witnesses that Apple 28 APPLE’S OPPOSITION TO SAMSUNG’S MOT. TO COMPEL CASE NO. 11-CV-01846-LHK (PSG) sf-3083332 4 1 noticed before and shortly after Thanksgiving. (Id.) (Samsung offered a date for its first witness 2 just last night. (Id.)) 3 Despite the imbalance between the parties’ respective productions for Apple’s offensive 4 case, Apple has actively continued to collect, process, review, and produce documents for its 5 rolling production. And even though Samsung has deposed literally dozens of Apple witnesses 6 but declined to make its witnesses available for deposition, Apple has dutifully chased down 7 Samsung’s various “follow-on” requests from the depositions of its inventors and prosecutors. 8 Apple has also aggressively pursued Samsung’s newly raised requests for documents, such as its 9 November 2011 requests for various items of alleged prior art. 10 Samsung’s sudden imposition of deadlines in its motion to compel is the first time 11 Samsung ever requested production by a specific date. (Mazza Decl. ¶ 4.) As recently as the 12 parties’ December 7, 2011, meet-and-confer call, Samsung specifically declined to set any 13 production deadlines. (Id.) Samsung instead stated that it was sufficient that Apple was working 14 diligently to search for and produce the requested information. (Id.) 15 In view of Apple’s diligence in responding to Samsung’s miscellaneous “to-do” list, 16 Samsung needed to manufacture deadlines for its motion or it would have little to say. To be 17 clear, unlike Apple’s motion, Samsung’s motion does not seek core documents that it needs 18 urgently to advance its defenses. Many of the requested items are 10 to 20 years old and have 19 been difficult to track down. 20 II. 21 22 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, 23 CAD files, and Director files that Apple has already produced, Apple has either produced or has 24 committed to producing most of the information Samsung seeks in its motion to compel. 25 A. 26 Several of the categories of documents Samsung requests in its motion to compel have Apple Has Already Produced Several of the Items Samsung Seeks 27 already been produced, underscoring the hastiness of Samsung’s motion. For example, Samsung 28 seeks the production of pleadings, briefs, discovery, and transcripts from Apple v. Motorola APPLE’S OPPOSITION TO SAMSUNG’S MOT. TO COMPEL CASE NO. 11-CV-01846-LHK (PSG) sf-3083332 5 1 actions in the ITC and the Western District of Wisconsin. (Samsung Mot. at 4-5.) Apple already 2 produced those materials, however—totaling more than 45,000 pages—on November 23, 2011, 3 and December 1, 2011. (Mazza Decl. ¶ 5.) 4 5 The four alleged deficiencies that Samsung identified in its December 11, 2011, letter do not, in fact, exist. In particular: 6 “[ITC] Staff’s pre-hearing hearing brief” (Samsung Mot. at 5 n.5): Apple located 7 and produced this brief immediately after receiving Samsung’s December 11, 2011 8 letter. (Mazza Decl. ¶ 6.) 9 “John Elias’ witness statement, testimony and cross-examination” (Samsung Mot. 10 at 5 n.5): Apple did not submit a witness statement for Mr. Elias, and he did not 11 testify at any hearings in the Motorola cases. (Mazza Decl. ¶ 6.) 12 “Jeffrey Brown’s witness statement, testimony and cross-examination” (Samsung 13 Mot. at 5 n.5): Mr. Brown’s statement and testimony contain substantial 14 confidential information of third party (Mazza Decl. ¶ 6.) 15 16 17 18 19 20 21 “Martin Simmons’ witness statement” (Samsung Mot. at 5 n.5): Like Jeffrey 22 Brown’s testimony, Mr. Simmons’ testimony contains Confidential Business 23 Information that will require consent to produce. (Mazza Decl. ¶ 6.) 24 Samsung also asserts that Apple “produced only a redacted copy” of a document 25 containing confidential business information of Apple and two third parties. (Samsung Mot. at 5 26 n.5.) As soon as Samsung brought those redactions to Apple’s attention, however, Apple 27 produced a version that redacted the confidential business information of Apple. Apple did so 28 last week, before Samsung’s motion to compel was filed. (Mazza Decl. ¶ 5.) Accordingly, Apple APPLE’S OPPOSITION TO SAMSUNG’S MOT. TO COMPEL CASE NO. 11-CV-01846-LHK (PSG) sf-3083332 6 1 has already met all of Samsung’s demands in this first category, to the extent possible within the 2 limits of the ITC protective order governing the Motorola investigation. 3 4 5 6 Apple produced the 7 photographs— without any confidentiality designation— last week, before Samsung filed its 8 motion. (Mazza Decl. ¶ 5.) 9 B. 10 11 12 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: 13 An Apple computer specially configured and adapted to run the 10 year old Mac 14 OS 10.0 operating system. 15 Portions of the Mac Operating System 10.0 and 10.1 source code believed to relate 16 to the functions described in Samsung’s motion. 17 Portions of the Mac Operating System 7.5—more than 15 years old—source code 18 believed to correspond to the 19 20 (Mazza Decl. ¶ 9.) Apple informed Samsung no later than the parties’ December 7, 2011 meet- 21 and-confer call that it planned to make this production by December 15th, (id. ¶ 8), but Samsung 22 moved to compel on these issues anyway. 23 24 25 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 26 list as quickly as possible. None of these items relate to the upcoming Markman proceedings. 27 And confirming the retaliatory nature of Samsung’s motion, Samsung never suggested a deadline 28 APPLE’S OPPOSITION TO SAMSUNG’S MOT. TO COMPEL CASE NO. 11-CV-01846-LHK (PSG) sf-3083332 7 1 of December 23rd before filing its motion. (Mazza Decl. ¶ 4.) Apple’s attorneys have been 2 diligently meeting and following up with the Industrial Design team about these items. (Id. ¶ 10.) 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 3. Apple Cinema Display Samsung has asked that the Court order Apple to produce all documents relating to a line 22 of desktop monitors called the Apple Cinema Display, alleging that this display is prior art. 23 (Samsung Mot. at 19.) This is unnecessary, as Apple has agreed and already explained to 24 Samsung that it will produce the CAD files showing the final design of the Apple Cinema 25 Display. (Mazza Decl. ¶ 14.) 26 27 28 APPLE’S OPPOSITION TO SAMSUNG’S MOT. TO COMPEL CASE NO. 11-CV-01846-LHK (PSG) sf-3083332 8 1 2 3 not part of the iPhone development project. (Id.) 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 is the same as the one that was photographed and submitted to the Patent Office. The relevance 28 APPLE’S OPPOSITION TO SAMSUNG’S MOT. TO COMPEL CASE NO. 11-CV-01846-LHK (PSG) sf-3083332 9 1 2 3 4 5 6 7 8 (Id. 9 10 11 12 13 14 15 16 17 18 19 20 7. Other Requests Apple has already agreed to search the documents of relevant witnesses to locate any additional documents relating to 21 (Mazza Decl. ¶ 19.) 22 Apple has also already agreed to supplement its responses to Interrogatory No. 1. (Id. ¶ 20; Mot. 23 at 18.) While Samsung had previously declined to place any specific deadlines on these requests, 24 Apple intends to do both of these things before December 23—the date requested in Samsung’s 25 proposed order. 26 27 28 APPLE’S OPPOSITION TO SAMSUNG’S MOT. TO COMPEL CASE NO. 11-CV-01846-LHK (PSG) sf-3083332 10 1 III. SAMSUNG’S DEMANDS FOR “ALL” RELATED DOCUMENTS ARE OVERBROAD AND UNDULY BURDENSOME. 2 3 Under Civil Local Rule 37-2, a party moving to compel production “must detail the basis 4 for the party’s contention that it is entitled to the requested discovery and must show how the 5 proportionality and other requirements of Fed. R. Civ. P. 26(b)(2) are satisfied.” Apple has 6 produced, and has agreed to produce, the substantial categories of documents listed above. 7 Samsung has not, however, met its burden under Local Rule 37-2 with respect to additional 8 documents, materials, and other information “related” to the items Apple has agreed to produce. 9 10 A. “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 11 Samsung in its motion. (Mazza Decl. ¶ 21.) The parties have not specifically discussed any 12 additional items that Samsung believes it has good reason to request of Apple regarding that 13 alleged prior art. (Id.) The fleeting, vague references in Samsung’s motion to “all documents 14 related” to prior art do not meet Local Rule 37-2’s requirements. 15 “All documents related to the Apple Cinema Display.” 16 Apple denies Samsung’s claim that Apple’s 1999 “Cinema Display” computer monitor is 17 prior art for the D’889 or any other design patent at issue in this case. Nevertheless, as discussed 18 in Section II, Apple has agreed to produce final CAD files for that line of computer monitors. 19 Samsung’s motion states that Samsung “has also requested that Apple produce all 20 documents related to the Apple Cinema Display, . . . as well as any related models or prototypes.” 21 (Samsung Mot. at 19.) Samsung first made this request in a letter dated November 8, 2011, 22 asking Apple to produce “all documents related to Apple Cinema Display, including but not 23 limited to notebooks, diagrams, progress reports, studies, internal memoranda, contracts for 24 services, and communications created or used in connection with the design of Apple Cinema 25 Display, as well as any related models or prototypes.” (Mazza Decl. ¶ 22.) 26 Apple responded on November 10, 2011, asserting its disagreement that the Apple 27 Cinema Display monitor is prior art, and stating further that Samsung’s “request for ‘all 28 documents related to’ the monitor is overbroad and unduly burdensome given the alleged APPLE’S OPPOSITION TO SAMSUNG’S MOT. TO COMPEL CASE NO. 11-CV-01846-LHK (PSG) sf-3083332 11 1 relevance of the device.” (Id.) Samsung clarified in subsequent meet-and-confer 2 communications that it is only seeking information regarding the external appearance of the 3 monitor. (Id. ¶ 21.) 4 Apple has agreed to produce final CAD files for the Apple Cinema Display. (Id.) 5 Samsung’s motion to compel provides no basis for requiring Apple to provide anything more 6 regarding the Apple Cinema Display. To establish invalidity under 35 U.S.C. § 102 in the patent 7 design context, Samsung must show that an ordinary observer would find the overall appearance 8 of the prior art to be substantially identical to the overall appearance of the asserted design patent. 9 See Int'l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1243 (Fed. Cir. 2009). This 10 test is based solely on a visual comparison of the two designs. As a result, Samsung requires only 11 access to materials showing the three-dimensional design of the alleged prior art product— 12 information that the CAD files would readily supply. Samsung has not identified any additional 13 documents, let alone offered any reason why Apple should provide additional documents. 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 APPLE’S OPPOSITION TO SAMSUNG’S MOT. TO COMPEL CASE NO. 11-CV-01846-LHK (PSG) sf-3083332 12 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 that it has been requesting these “other materials” since November 8, 2011. (Mot. at 12; see also 20 id. at 13 (referring to “Work orders, model shop records, and other materials”); id. (referring to 21 “all documents and things related to this mockup, including CAD drawings, photographs, model 22 shop orders and other records”); id. (“It is critical that Apple produce all documents and things 23 pertaining to this mockup”); id. (“All materials related to the 035 mockup are in Apple’s 24 possession”); id. (“Apple should be compelled to produce all documents and things related to 25 the 035 mockup without further delay.”)) But Samsung’s November 8 letter was just as vague 26 27 28 APPLE’S OPPOSITION TO SAMSUNG’S MOT. TO COMPEL CASE NO. 11-CV-01846-LHK (PSG) sf-3083332 13 1 2 3 4 5 6 from its own industrial designers, despite the fact that Samsung products are the accused products 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 APPLE’S OPPOSITION TO SAMSUNG’S MOT. TO COMPEL CASE NO. 11-CV-01846-LHK (PSG) sf-3083332 14 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 to produce . . . further materials on this subject,” including “[a]ll information, documents, 16 drawings, and models based on or related to the Sony design language.” (Samsung Mot. at 17.) 17 18 19 20 21 22 letter requested that Apple produce “the documents related to these exercises/investigations, 23 24 25 26 27 28 APPLE’S OPPOSITION TO SAMSUNG’S MOT. TO COMPEL CASE NO. 11-CV-01846-LHK (PSG) sf-3083332 15 1 2 3 4 5 6 7 8 9 10 11 (Id. 12 13 14 15 16 17 18 19 20 21 IV. APPLE IS ENTITLED TO PROTECT THE CONFIDENTIALITY OF ITS UNRELEASED PRODUCTS. 22 23 24 25 26 27 28 APPLE’S OPPOSITION TO SAMSUNG’S MOT. TO COMPEL CASE NO. 11-CV-01846-LHK (PSG) sf-3083332 16 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 APPLE’S OPPOSITION TO SAMSUNG’S MOT. TO COMPEL CASE NO. 11-CV-01846-LHK (PSG) sf-3083332 17 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 APPLE IS NOT REQUIRED TO PRODUCE HIGHLY SENSITIVE INFORMATION HAVING NOTHING TO DO WITH THIS CASE. 23 Under Fed R. Civ. P. 26(b), Apple is required to produce all relevant information. It is not 24 V. required to produce irrelevant information. 25 26 27 28 APPLE’S OPPOSITION TO SAMSUNG’S MOT. TO COMPEL CASE NO. 11-CV-01846-LHK (PSG) sf-3083332 18 1 2 3 4 (Id. 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 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. 24 (Mazza Decl. ¶ 34.) For the inventors of the patents in suit, it has already produced prior 25 testimony that bears a technological nexus to the patents at issue in this case. (Id.) It is willing to 26 produce similar transcripts for other deponents. (Id.) This “technological nexus” standard is 27 based on the very cases Samsung cites in support of its motion. See Inventio AG v. Thyssenkrupp 28 Elevator Americas Corp., 662 F. Supp. 2d 375, 381 (D. Del. 2009). Samsung, however, wants a APPLE’S OPPOSITION TO SAMSUNG’S MOT. TO COMPEL CASE NO. 11-CV-01846-LHK (PSG) sf-3083332 19 1 much broader range of deposition transcripts—all transcripts of all depositions of all Apple 2 witnesses in all cases where the witness was testifying in his or her capacity as an Apple 3 employee. (See Mot. at 20; Proposed Order at 2.) Samsung’s request is unjustifiably overbroad. 4 As Samsung’s own authorities acknowledge, Samsung bears the burden of showing why 5 the information sought is relevant to the issues in this case. Inventio AG, 662 F. Supp. 2d at 381. 6 Without any explanation or support, Samsung claims that the transcripts it is seeking “almost of 7 necessity relate to the same or similar technologies at issue in this case.” (Samsung Mot. at 20.) 8 That assertion is simply untrue. Samsung’s demand for all deposition transcripts of Apple 9 employees, regardless of subject matter, encompasses a wide array of transcripts that have 10 nothing to do with the issues in this case. Apple is involved in consumer class actions, 11 employment cases, antitrust, and even personal-injury cases. (Mazza Decl. ¶ 34.) Even for patent 12 disputes, the patents at issue are often unrelated to the patents here. (Id.) Apple’s dispute with 13 Kodak, for example, involves digital imaging patents. (Id.) None of the transcripts from that 14 case are likely to be relevant to the issues in this case which does not involve digital imaging 15 technology. 16 Moreover, Samsung’s requested relief, which demands that Apple produce all prior 17 testimony of “Apple witnesses,” is broader than Samsung’s document requests. (See Prop. Order 18 at 2.) Samsung bases its motion on four requests for production: Nos. 75, 95, 184, and 187. 19 Requests Nos. 95 and 184 are both limited to transcripts of testimony given by Apple’s inventors, 20 not every Apple employee. Requests 75 and 187 both request documents related to Apple’s 21 intellectual property or products at issue, which generally fall within the scope of documents 22 Apple is willing to produce. In addition, despite Samsung’s current demand that Apple list and 23 describe all cases that it has ever participated in, Samsung has never served Apple with an 24 interrogatory request making this request. 25 As discussed above, Samsung has not provided an adequate basis for demanding these 26 documents from Apple. On the contrary, it has previously admitted during the parties’ meet and 27 confer sessions that the only basis for its broad request is that Apple’s employees might have said 28 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 20 1 present action. (Mazza Decl. ¶ 35.) That is the definition of a fishing expedition. Such discovery 2 is not allowed under the Federal Rules of Civil Procedure. Fed. R. Civ. P. 26(b)(2)(C) 3 (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 6 Americas Corp., 662 F. Supp. 2d 375, 381 (D. Del. 2009) (noting that rule 26(b)(2)(C) imposes a 7 balancing test). 8 Finally, Samsung’s supposed “compromise”—whereby each party creates an “irrelevance 9 log” justifying why each irrelevant transcript is irrelevant—is not a compromise at all. Samsung 10 cites no precedent for this request or provides no good reason why these irrelevant depositions 11 transcripts (as opposed to, for example, sketchbooks) should be singled out for special treatment. 12 Apple has provided Samsung with its proposed definition of “technological nexus”: 13 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. 14 15 16 17 18 This is a sufficiently clear standard for both parties to follow. Apple requests that the 19 Court reject Samsung’s overly-broad and unduly burdensome request for transcripts. 20 CONCLUSION 21 For these reasons, Apple respectfully requests that Samsung’s Motion to Compel be 22 23 DENIED. Dated: December 15, 2011 MORRISON & FOERSTER LLP 24 25 By: 26 /s/ Richard S.J. Hung Richard S.J. Hung Attorneys for Plaintiff APPLE INC. 27 28 APPLE’S OPPOSITION TO SAMSUNG’S MOT. TO COMPEL CASE NO. 11-CV-01846-LHK (PSG) sf-3083332 21

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