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

Filing 565

OPPOSITION to ( #554 MOTION for Extension of Time For Compliance With Certain Deadlines Set By The Court's Order (Dkt No. 537) ) filed byApple Inc.. (Attachments: #1 Declaration, #2 Exhibit A, #3 Exhibit B, #4 Exhibit C, #5 Exhibit D, #6 Exhibit E, #7 Exhibit F, #8 Exhibit G, #9 Proposed Order)(Jacobs, Michael) (Filed on 12/30/2011) Modified text on 1/4/2012 (dhm, COURT STAFF).

Exhibit D

425 MARKET STREET
SAN FRANCISCO
CALIFORNIA 94105-2482
TELEPHONE: [phone]
FACSIMILE: 415 268 7522

MO RRI SO N & F O E RST E R L LP
N E W YO RK , SAN F RAN C I SCO ,
LO S AN G E LE S , P ALO ALTO ,
SAC RAME N T O , SAN D I E G O ,
D E N VE R , N O RT H E RN VI RG I N I A
WASH I N G T O N , D C

,

T O K YO , L O N D O N , BRU SSE L S ,
BE I JI N G , SH AN G H AI , H O N G K O N G

WWW.MOFO.COM

Writer’s Direct Contact
415.268.6096
[e-mail]

November 16, 2011

Via E-Mail ([e-mail])
Rachel Herrick Kassabian
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 Rachel:
This letter concerns Samsung’s compliance with the Court’s September 28 Order,
1
specifically, Samsung’s search for relevant survey and marketing documents. During the
November 2 meet and confer session, Samsung agreed to disclose the search terms and
methods that were used to collect and produce pertinent documents from Samsung’s central
marketing files and marketing custodians. (See Letter from Mazza to Kassabian dated Nov.
4.) Your November 8 letter fails to do that, however. Instead, you have merely referred
back to Samsung’s incomplete October 10th Amended Identification that necessitated this
follow-up inquiry in the first place.
As Apple has repeatedly pointed out to Samsung (see, e.g., our letters dated October 10,
October 19, and November 1), Samsung’s October 10 Amended Identification is incomplete.
It does not disclose what search terms were used to search Samsung’s central marketing files
or, for that matter, what central files were searched. Moreover, no marketing custodian other
than Sungwook Kwon is listed, even though Samsung itself has claimed that it searched for
documents in the possession of other marketing-related custodians. Of course, the search
terms used to search the files of the undisclosed custodians are also not disclosed. Each of
these issues was specifically discussed with Samsung during the November 2 meet-andconfer call.
1

Samsung’s proposal regarding searching for the term “Apple” has been addressed in a separate letter.

sf-3071559

Rachel Herrick Kassabian
November 16, 2011
Page Two
Moreover, during that call you stated that Samsung had limited its search for, and production
of, survey documents in two ways that were not disclosed in your October 10 Amended
Identification. First, Samsung limited its search and production to surveys of U.S.
consumers only and not consumers in any other country. Second, Samsung limited its search
and production to survey documents that mention both (a) one of the Apple products alleged
to embody one or more of the features claimed in the patents and (b) one of the four
Samsung devices at issue in the preliminary injunction motion. These restrictions are
inconsistent with your October 10 Amended Identification.
Your November 8 letter states that Samsung “has agreed to consider supplementing its
production based on Apple’s broader request” and that you would get back to us “shortly.”
Apple disagrees with your statement that Apple’s request for information is “broader” than
the September 28 Order. In any event, we have not heard from you yet. Please confirm that
Samsung will immediately produce the following documents:
From all central marketing files (in the U.S., Korea, or any other location), all survey
documents that include any of the following terms: Apple or A Company or
or
A or A
or A4 or iPhone or
or iPad or
From the custodial files of Sungwook Kwon, Jena Yu, Tim Benner, and all other
custodians in all other geographical areas with responsibility for surveying customers
of the Galaxy S 4G, Infuse 4G, Droid Charge and Galaxy Tab 10.1, all survey
documents that include any of the following terms: Apple or A Company or
or
A or A
or A4 or iPhone or
or iPad or
If Samsung is not willing to produce these documents, please provide a date and time for a
lead counsel meet and confer on this subject so that the parties may exhaust all opportunities
for resolution in advance of a motion to compel. Apple reserves the right to seek sanctions in
connection with this violation of the Court’s September 28 Order.
Best regards,
/s/ Wesley E. Overson
Wesley E. Overson

sf-3071559

quinn emanuel trial lawyers | silicon valley
555 Twin Dolphin Drive, 5th Floor, Redwood Shores, California 94065-2139 | TEL: [phone] FAX: [phone]

WRITER'S INTERNET ADDRESS
[e-mail]

November 20, 2011
VIA ELECTRONIC MAIL
Mia Mazza
Morrison & Foerster
425 Market Street
San Francisco, CA 94125-2482

Re:

Samuel Maselli
WilmerHale
950 Page Mill Road
Palo Alto, CA 94304

Apple, Inc. v. Samsung Elecs. Co. et al., Cae No. 11-cv-1846 LHK (N.D. Cal.)

Dear Mia and Samuel:
I write to address and memorialize several issues discussed during our meet-and-confer call on
Wednesday, November 16, 2011.
Apple's Issues
I.

The Court's September 28th Order
Searching files for the opposing party's name

As previously indicated in my letter of November 8, 2011, Samsung is generally agreeable to
including the term “Apple” (with delimiters as needed) in searching its designers' custodial
documents provided that Apple search for the term "Samsung" in its designers’ files. Samsung
made it clear, and Apple is not contesting, that this was not something ordered by the Court in its
September 28 Order, but rather, would be done pursuant to an agreement of the parties. During
the November 16, 2011 meet and confer call, Apple has now broadened its request by asking
Samsung to include the term "Apple" in searching the files of (1) engineers who worked on the
quinn emanuel urquhart & sullivan, llp
LOS ANGELES | 865 South Figueroa Street, 10th Floor, Los Angeles, California 90017-2543 | TEL [phone] FAX [phone]
NEW YORK | 51 Madison Avenue, 22nd Floor, New York, New York 10010-1601 | TEL [phone] FAX [phone]
SAN FRANCISCO | 50 California Street, 22nd Floor, San Francisco, California 94111-4788 | TEL [phone] FAX [phone]
CHICAGO | 500 W Madison Street, Suite 2450, Chicago, Illinois 60661-2510 | TEL [phone] FAX [phone]
WASHINGTON, DC | 1299 Pennsylvania Avenue NW, Suite 825, Washington, District of Columbia 20004-2400 | TEL [phone] FAX [phone]
LONDON | 16 Old Bailey, London EC4M 7EG, United Kingdom | TEL [phone] FAX [phone]
TOKYO | NBF Hibiya Bldg , 25F, 1-1-7, Uchisaiwai-cho, Chiyoda-ku, Tokyo 100-0011, Japan | TEL [phone] FAX [phone]
MANNHEIM | Erzbergerstraße 5, 68165 Mannheim, Germany | TEL [phone] FAX [phone]

Mia Mazza
Samuel Maselli
November 20, 2011
products at issue, (2) employees responsible for marketing those products, and (3) employees
responsible for developing the accused features. Moreover, Apple further requested that the
parties include in their search terms any nicknames or foreign language terms that custodians
may use to refer to the opposing party. Apple further proposed that the parties would disclose, in
their court-ordered identifications, any delimiters used to reduce the number of false "hits" in
their searches.
We will consult with our client to see whether it will agree to this new proposal.
Consumer surveys
Despite Samsung's previous agreement to supplement its production of consumer survey
documents, Apple has broadened its request yet again. In Wes Overson's November 16th letter,
Apple requests that Samsung search the central marketing files, wherever located, as well as the
files of Sungwook Kwon, Jinna Yoon, Tim Benner, and any other custodians with responsibility
for surveying customers of the products at issue during the preliminary injunction phase, using
the search string disclosed in Samsung's October 10 identifications. During the meet-and-confer
call, in response to our questions, Apple agreed that the searches it is proposing would be limited
to the named defendants' employees' and central marketing files – and would not include the
custodians or files of any Samsung subsidiary or entity which is not a party to this case. We will
confer with Samsung and get back to you.
II.

Proposed reciprocal agreement to produce certain categories of documents

We believe Apple's proposal of reciprocal categories of document requests is a helpful exercise.
However, several aspects of Apple’s current proposal (hereafter "Exhibit A") are problematic.
For instance, Exhibit A omits numerous Samsung requests that fall squarely within the identified
categories, while including many other requests that are irrelevant to them. Moreover, Exhibit A
inappropriately focuses on numerous Apple requests for which Samsung's written responses are
not yet due. Finally, Apple indicated on last week’s call that its Exhibit A was incomplete, and
that Apple would be sending us additional categories of documents which it believes implicate
reciprocal obligations. Please send us those additional categories as soon as possible, so that the
parties can avoid dealing with these issues on a piecemeal basis. In the meantime, Samsung is
considering and preparing a response to Apple’s Exhibit A.
III.

Production of relevant inventor documents

Samsung does not believe that inventor-related documents is a reciprocal category at this stage in
discovery. Exhibit A only includes one proposed agreement for this category: that the parties
limit inventor-related searches to the filing date of the relevant patent application. Not only has
02198.51855/4456552.1

2

Mia Mazza
Samuel Maselli
November 20, 2011
Samsung already rejected this idea weeks ago, this proposal is not reciprocal because Apple has
already completed its searches, albeit using improper date restrictions. As discussed below and
in other previous correspondence, Samsung demands that Apple re-run its searches using proper
date restrictions.
During the call Samsung confirmed that it is searching its inventors' files for any and all types of
responsive documents, through the use of search terms and witness interviews. Samsung has not
specifically or intentionally withheld certain categories of documents over others. Apple
confirmed that it had engaged in these same activities in searching its inventors’ files for
responsive documents.
Apple stated that it would send a separate correspondence clarifying any questions or concerns it
might still have regarding Samsung's inventor searches.
III.

Apple’s Second Set of Preliminary Injunction Interrogatories (Nos. 10-14).

Pending final client approval, Samsung intends to supplement its responses to Apple's
interrogatory requests Nos. 10-14 by Monday, November 21, 2011. Samsung's supplemental
responses will be as complete as possible in light of the fact that nearly four months remain
before the close of fact discovery, and Samsung’s investigation is ongoing.
IV.

Reciprocal agreement to produce licensing documents.

Apple has proposed that the parties exchange (1) license agreements and royalty information for
non-FRAND patents-in-suit, and (2) license agreements, royalty information, and negotiation
documents for all patents (whether asserted or not) that have been declared essential to a
standard at issue in this lawsuit. We will confer with Samsung on this issue, along with the other
reciprocal document categories Apple has raised. We understand that Apple wishes to expedite
the approval process for this category of documents, which we will endeavor to do.
V.

Protective Order provisions regarding cross-use.

The parties have agreed in principle on domestic cross-use of produced documents only.
Samsung is in the process of fine-tuning the language of these provisions and evaluating edits
made by Apple. Samsung will try to provide Apple with a final draft before the Thanksgiving
holiday, or the week thereafter.

02198.51855/4456552.1

3

Mia Mazza
Samuel Maselli
November 20, 2011
VI.

Production of documents related to participation in standards-setting organizations

The parties have reciprocal requests for this category of documents. See, e.g., Samsung's RFPs,
Set One, No. 117-119. Therefore, Samsung will include these requests in its revisions to Exhibit
A and deal with them accordingly. In the meantime, Samsung has produced documents
responsive to Apple's standards-related requests and will continue to do so. Any specific
concerns raised in Samuel Maselli's letters of November 8th and November 14th will be addressed
shortly.
VII.

Samsung attorneys’ assertion of privilege in depositions.

Samsung disagrees that its assertions of privilege during recent depositions was inappropriate,
and will respond to Samuel Maselli's November 15th email in due course.
VIII. The Five-Day Rule
Apple requested that the parties provide advance notice to the opposing party if they know in
advance that they will be unable to complete a deposition-related production five days prior to
the deposition. While Samsung suspects that the parties often may not know in advance that
there will be such a production issue, Samsung agrees to Apple’s proposal, with the
understanding that Apple will provide the same advance notice if it comes to learn that it will not
be able to complete a deposition-related production five days prior to the deposition.
IX.

Production of source code related to accused features

As we made clear during the previous meet and confer call, both parties have requests seeking
production of source code for the accused products. Like all reciprocal categories, we will
confer with Samsung and get back to you. In the meantime, Samsung will produce relevant
source code on a rolling basis and will also respond to Wes Overson's letter dated November 9,
2011.

02198.51855/4456552.1

4

Mia Mazza
Samuel Maselli
November 20, 2011
Samsung's Issues
I.

Deficiencies in Apple's searches and production
Apple's written responses to Samsung's first, second and third requests for production

Apple's written responses to Samsung's requests for production fail to give Samsung fair notice
of what Apple intends to produce or why it finds Samsung's requests objectionable. Rather,
Apple has either merely labeled requests as overbroad—a bare legal conclusion—or stated that it
would meet and confer on the scope of a request. Marissa Ducca first requested that Apple
clarify its position nearly two months ago on September 30, 2011, and again on November 3
November 8, 2011. None of Apple's correspondence is responsive to Marissa's letters. In
contrast, when Apple asked Samsung to clarify its objections, my letter of October 26, 2011
explained in detail Samsung's objections to at least eighty of Apple's requests.
During the call, Apple stated that Wes Overson's letter of November 10, 2011 was intended to be
Apple's response to Marissa's letters on this issue. Mr. Overson's letter, however, only addresses
Apple's requests and contains no indication of Apple's positions with respect to why it should not
provide all documents responsive to Samsung's requests. Although Exhibit A does include
Samsung requests for which Apple has reciprocal requests, this exhibit mischaracterizes many of
Samsung's requests, and further, does not absolve Apple of its obligations to provide adequate
responses to all of Samsung's document requests, including those that are nonreciprocal.
Apple indicated that it will send a letter indicating whether it will produce documents in response
to Samsung's nonreciprocal production requests. Samsung, in turn, agreed that it would revisit
its response to S. Calvin Walden's letter dated October 13, 2011 and further discuss any issues
that may have gone unaddressed.
Documents relating to Apple's assertion of its patents against Motorola
Apple represented that it has collected and is in the process of reviewing the documents
referenced in Marissa Ducca's November 10th letter. Samsung noted again the importance of
receiving these materials promptly, in light of impending claim construction proceedings, and
Apple stated that it will produce these documents before Thanksgiving. If Apple does not do so,
we will need to have a lead counsel meet and confer to resolve the matter. Please let us know
when during the next two weeks Apple’s lead counsel is available.

02198.51855/4456552.1

5

Mia Mazza
Samuel Maselli
November 20, 2011

Transcripts of prior testimony
Samsung has repeatedly asked Apple to produce all transcripts of prior testimony where an
individual who would likely appear as a witness in this case has testified in his or her capacity as
an Apple employee. With respect to Samsung's inventors, Samsung is producing all such
transcripts that it is able to locate through a reasonable search. By contrast, Apple has made
clear that the only transcripts it regards as relevant are those in which the witness testified
regarding a patent asserted in this matter, notwithstanding case law to the contrary.
During the meet-and-confer call, Apple stated that it may now be willing to broaden its concept
of relevance to include transcripts from proceedings that have a "technological nexus" to the
subject matter of the instant case. Samsung indicated that it may be willing to adopt the
"technological nexus" approach, provided that the parties agree on a mutually acceptable
definition of that concept. During the call, however, Apple was unable to articulate what it
meant by "technological nexus." Consequently, Samsung insisted that the parties exchange a list
of the prior cases in which their witnesses have testified, so that the parties would be able to
make their own independent determination of which transcripts are relevant and should be
produced. Apple stated that it would consider Samsung's request, but as of this writing still has
not provided its final position. More than two weeks have elapsed since Samsung raised this
issue, during which time Samsung has had to depose several Apple witnesses without this
pertinent evidence. In light of Apple's consistent failure to articulate any meaningful alternative
standard, or otherwise move the ball forward, please be advised that if we cannot resolve this
issue in the next week, Apple should be prepared to discuss it at the upcoming lead counsel meet
and confer.
02198.51855/4456552.1

6

Mia Mazza
Samuel Maselli
November 20, 2011
Inventor-related document production
Samsung still has not received a response to Marissa Ducca's letters of October 18, 2011 and
November 12, 2011 regarding documents missing from Apple's inventor productions. Apple
stated that it has been investigating why these documents were not produced and is currently
drafting a response. Apple stated that it would respond by Monday, November 21, 2011.
Missing custodial information
Apple represented that all of the custodial information in its productions is complete and up to
date. We will consider Apple’s representation and get back to you.
Redacted

Redacted

02198.51855/4456552.1

7

Mia Mazza
Samuel Maselli
November 20, 2011
Redacted

II.

Apple's use of inaccurate translations during depositions

Apple has used English translations of Korean documents while deposing Korean speakers.
Samsung objects to the use of English translations with Korean speakers where the original
Korean document would suffice. Samsung also objects to the use of any translations that are not
produced to Samsung in advance of depositions in sufficient time for Samsung to evaluate their
accuracy. Apple represented that where possible, it will produce translations to Samsung in
advance of the deposition, but that it will continue to use translations even if they are not
produced in advance. Samsung objects to this practice, and will continue to object at deposition
to the use of any translations that it has not been given an opportunity to check for accuracy.
III.

Apple's selective waiver of the attorney-client privilege

At Apple's insistence, Michael Zeller sent a letter dated November 10, 2011 that spells out
precisely which portions of the hearing transcript constitute a waiver of the privilege. Yet after
ignoring that letter, and without providing any authority or rationale in support of its position,
Apple told us only that it disagrees. This is improper. Please provide a written response to Mr.
Zeller’s November 10 letter which details Apple’s position and the authority on which it relies.
IV.

Expert witnesses

Samsung has objected to Apple's disclosure of Peter Bressler as an expert witness in this case.
Apple indicated that it will neither show Mr. Bressler any confidential Samsung documents nor
pursue motion practice to obtain the right to do so. Please let us know if Apple’s position
changes in the future.
Samsung also requests that Apple set up a time for an in-person meet and confer on the issue of
Itay Sherman's access to Apple confidential documents. Apple said that it will inform Samsung
of Harold McElhinny's availability for such a meeting but has yet to do so. Please confirm that
Mr. McElhinny will make himself available during the next two weeks.

02198.51855/4456552.1

8

Mia Mazza
Samuel Maselli
November 20, 2011
Very truly yours,

Rachel Herrick Kassabian

02198.51855/4456552.1

9