Apple Inc. v. Samsung Electronics Co. Ltd. et al
Filing
600
Administrative Motion to File Under Seal Apples Motion to Compel Discovery Relating to Its Affirmative Defenses and Counterclaims filed by Apple Inc.(a California corporation). (Attachments: *** #1 Motion to Compel, #2 Maselli Declaration PURSUANT TO ORDER #804 DOCUMENT REMOVED.*** , #3 Ex A, #4 Ex B, #5 Ex C, #6 Ex D, #7 Ex E, #8 Ex F, #9 Ex G, #10 Ex H, #11 Ex I, #12 Ex J, #13 Ex K, #14 Ex L, #15 Ex M, #16 Ex N, #17 Ex O, #18 Ex P, #19 Ex Q, #20 Ex R, #21 Ex S, #22 Ex T, #23 Ex U, #24 Ex V, #25 Ex W, #26 Ex X, #27 Ex Y, #28 Ex Z, #29 Ex AA, #30 Ex BB, #31 Ex CC, #32 Ex DD, #33 Ex EE*** PURSUANT TO ORDER #804 DOCUMENT REMOVED. *** #34 , Ex FF #(35) Ex GG, #36 Proposed Order)(Selwyn, Mark) (Filed on 1/10/2012) Modified on 1/11/2012 (ewn, COURT STAFF). Modified on 1/11/2012 (feriab, COURT STAFF). Modified on 1/11/2012 (ewn, COURT STAFF). (Attachment 1 replaced on 3/13/2012) (sp, COURT STAFF). (Attachment 2 replaced on 3/13/2012) (sp, COURT STAFF). (Attachment 33 replaced on 3/13/2012) (sp, COURT STAFF). Modified on 3/13/2012 (sp, COURT STAFF). Modified on 3/13/2012 (sp, COURT STAFF). Modified on 6/8/2012 (ofr, COURT STAFF).
EXHIBIT FF
From: Melissa Chan [mailto:melissachan@quinnemanuel.com]
Sent: Tuesday, December 13, 2011 4:25 PM
To: Mazza, Mia
Cc: Maselli, Samuel; Walden, S. Calvin; Kolovos, Peter; AppleMoFo@mofo.com;
Rachel Herrick Kassabian; Diane Hutnyan; Joby Martin
Subject: Apple v Samsung: discovery correspondence and Exhibits A and B
Mia,
Attached are our revisions to Exhibits A and B of the reciprocal categories of
document requests. As we have previously discussed on meet and confer calls, we
anticipate that we will negotiate the scope of this chart and once we have reached
some sort of tentative agreement, that such chart will constitute the proposals
that we bring back to our clients. Therefore, this chart should only be used for
negotiation, and cannot be used against either party or be taken as an admission
as to relevance or agreement by either party; further limitations are listed in
numbers 1-6 below.
1. The proposed reciprocal obligations, if agreed upon, would describe the
parties’ obligations in addition to any commitments previously made in
written responses to the listed requests for production.
2. The “related requests” listed in the left-hand column are intended to
illustrate the general subject matter of the requested discovery. By carrying
out the proposed reciprocal obligation, the parties will produce documents
responsive to the listed “related requests.” By agreeing to the proposed
reciprocal obligation, however, neither party agrees to produce the full
scope of documents called for by the listed requests. Beyond the
documents described in the proposed reciprocal obligation, nothing in this
proposal is intended to waive either party’s written objections to the listed
requests, which are hereby reserved.
3. Nothing in this proposal prevents a party from seeking discovery
responsive to one or more of the affected requests beyond the agreed-upon
items.
4. Nothing in this proposal is intended to prevent a party from withholding
responsive materials if it believes in good faith it is obligated to do so by a
Court or arbitration order or by some other legitimate confidentiality
obligation to a third party.
5. Nothing in this proposal is intended to alter existing rules governing
privileged documents or the obligation to log privileged documents.
6. The parties intend that all documents and things matching the
description of a proposed reciprocal obligation will be produced. In using
the term “documents,” neither party intends to exclude “things.”
Please also note that in the interest of expediting these discussions, we have not
secured Samsung’s approval regarding each of the proposals in this chart.
Therefore, the proposals in this chart are subject to change. Also, there are a few
other categories of documents that we are still considering as reciprocal but have
not yet added to the chart due to the fact that you wanted this chart immediately.
We will let you know as soon as possible regarding those categories.
Thanks,
Melissa
Melissa Chan
Quinn Emanuel Urquhart & Sullivan, LLP
555 Twin Dolphin Drive, 5th Floor
Redwood Shores, CA 94065
650-801-5004 Direct
650.801.5000 Main Office Number
650.801.5100 FAX
melissachan@quinnemanuel.com
www.quinnemanuel.com
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Exhibit A
Document Category and Related Requests
Proposed Reciprocal Obligation
Inventor-related documents from inventor files,
including conception and reduction to practice
documents, notebooks, drawings, schematics,
specifications, development documents for
practicing products, and inventor publications
related to the subject matter of the purported
invention
The parties are to apply the following date
restriction to the search for inventor-related
documents in inventor files: the filingissuance
date of each patent in which the inventor is
named, or the date of introduction of a product
embodying the purported invention,
whichever was later.
Apple Request Nos. 64-67, 69, 76-78, 81-82,
140 and 82141
This date restriction does not apply to the
search of non-inventor-related documents
from inventor files, if any such documents
exist and if any such searches are warranted
(including, by way of example only,
documents relating to the accused
functionality of accused products, or
documents relating to standards participation).
Samsung Request Nos. 83, 86-90, 94, and 137
The parties agree to produce details of inventor
compensation, including incentives, awards,
bonuses, or special payments, paid to any
inventor in connection with applying for or
achieving issuance of the patents-in-suit.
The parties agree to produce documents
sufficient to identify all individuals involved in
developing the subject matter of the
patents-in-suit.
The parties are to produce license agreements
Negotiation and execution of licenseLicense
agreements pertaining to patents that have been relating to patents in suit that have been
declared as essential to a particular standard, as
declared essential to a particular standard
well as all non-privileged external and internal
Apple Request Nos. 59, 105106-108, 115,
communications and royalty information
117119-121, 128, 130, and 131
relating to such and documents sufficient to
show royalty payments made by each licensee
under these licenses.
License agreements pertaining to patents-in-suit The parties agree to produce license
sf-3073229
Document Category and Related Requests
that have not been declared as essential to a
particular standard
Apple Request Nos. 59, 105-108, 119, 128, and
128160
Samsung Request Nos. 9-13, 110-113, 121,
132-133, and 167
Proposed Reciprocal Obligation
agreements relating to patents-in-suit that have
not been declared as essential to a particular
standard, as well as royalty information
relating to such licensesdocuments sufficient
to show royalty payments made by each
licensee.
Marketing strategy and competitive analysis
The parties agree to produce U.S. and global
marketing strategy documents, marketing
Apple Request Nos. 3, 29,16, 29,149-150, 174, requirements documents, customer surveys,
218, 220, 221, 252, 253, 254, 256, 276 276,
market ormarket analyses (including actual or
441, 448, 463-468; PI Request Nos. 3-7;
projected market demand or market share),
205-210, 214, 217
competitor analyses, consumer surveys and
focus group studies relating to the products at
Samsung Request Nos. 29, 44, 130-131,
issue. These proposals are limited to the
140-141, 147, 169-170, 177-178, 183, 191, and documents in the possession of the entities
191.249.
named as parties in this case.
The parties shall further produce all market
analyses, competitor analyses, consumer
surveys, focus group studies, or
communications amongfrom the files of the
persons responsible for marketing
personnelthe products at issue that mention the
opposing party.
Advertising
Apple Request Nos. RFP 17, 32, 40, 207, 214,
218; 256; 276; PI Request Nos. 210, 214
Samsung Request Nos. 7, 15, 147, 163-164,
169, 169,177-178, 190- 191.
The parties shall produce U.S. media plans as
well as one copy and any drafts of each U.S.
advertisement for any product at issue. The
parties shall also produce copies of any
advertisements, wherever run, that specifically
and expressly mention or target the other party
or its products. These proposals are limited to
advertisements in the possession of the entities
named as parties in this case.
The parties shall produce documents sufficient
to show per-month advertising and marketing
spending in the U.S. regarding the products at
issue, to identify all markets and retail outlets
where the products at issue are or will be sold
or advertised
sf-3073229
2
Document Category and Related Requests
Proposed Reciprocal Obligation
The parties shall produce all product
placement requests.
The parties shall also produce sample product
packaging for the products at issue.
Identity and responsibilities of individuals who
participated in design and development of
products at issue.1
Apple Requests Nos. 30, 208, 275, 311-316; PI
Requests 159-160.
The parties agree to produce the following
categories of documents:
• Documents sufficient to show the
identity and title of individuals who
developed the accused features of the
Hardware Design of the products at issue;
Samsung Request Nos. 74, 88, 137, 171-172.
• Documents sufficient to show the
identity and title of individuals who
developed the design of the accused
features of the GUI (graphical user
interface) of the products at issue
(including the design of the icons used in
the GUI); and
• Documents sufficient to show the
identity and title of key individuals who
participated in the development of the
features that allegedly infringe the
asserted utility patents; and
• Documents sufficient to identify
Samsung’s licensing personnel and their
duties. This request is limited to the
personnel who negotiate licenses related
to tablets, phones and music players.
Management structures and organizational and The parties agree to produce the following
reporting structures of divisions responsible for categories of documents:
creating and marketing products at issue.
• Documents sufficient to show each
Apple Requests Nos. 45-46, 209, 311-316.
side’s executive and management
structure during the past three years,
1
This and the following request may encompass, for instance, organizational charts or, if organizational charts are not
available, other documents identifying relevant individuals and organizational structure.
sf-3073229
3
Document Category and Related Requests
Samsung Request Nos. 70, 72, 74.
Proposed Reciprocal Obligation
including individuals holding the
following positions: director, CEO, CFO,
CTO, CAO, president, vice president,
general counsel, and management level
engineers, department heads, and sales
and marketing representatives.
• Documents sufficient to show the
organizational and reporting structure of
entities and/or divisions responsible for
design, development, marketing,
advertising and product/business
planning for the products at issue, as well
as the identity of employees within each
such division. This includes all divisions
responsible for: (1) Hardware Design for
the products at issue; (2) the design of the
GUI of the products at issue; (3) the
development of the features that
allegedly infringe the asserted utility
patents; (4) marketing and advertising of
the products at issue; and (5)
product/business planning.2.
Providing dates of first sale and use, etc.
The parties agree to produce the following
categories of documents:
Apple Requests Nos. 258-259; 217; 260.
Samsung Request Nos. 7-8, 99, 100.
• Documents sufficient to show the dates
that each product at issue was first
offered for sale, sold and publically used
in the U.S.; and
• Documents showing when each
product at issue was approved for sale or
commercialization, who approved the
sale, and documents giving such
approval.
Design and development of hardware and GUI
Apple Request Nos. 11-12, 18, 26-27, 158,
198-199, 207, 210-214, 215, 219, 255, 291,
The parties agree to produce designer e-mails,
including emails with engineers and others,
CAD drawings, sketchbooks/notebooks,
models/mockups, and Adobe Illustrator or
2
The request encompasses Samsung’s Office of Development, R&D Management Group, and the Product Strategy
Team and Product Planning Group of Samsung’s Mobile Communication Division.
sf-3073229
4
Document Category and Related Requests
Proposed Reciprocal Obligation
other computer files relating to the
development of the accused features of the
Hardware Design—including design
Samsung Request Nos. 1-3, 4, 11, 15-16, 27, 93, alternatives and redesigns and the feasibility
136, 138, 139, 144, 170, 173, 176, 176-178,
(including ease of manufacturing, cost
188-189, 207207, and 240
savings, enhanced usability and technological
challenges) of the designs considered—of the
products at issue and, as well as predecessor
products on which the design of a product at
issue was substantially based and from which
an accused featured was derived.
326, 327327, 392-422, 453; PI RFPRequest
Nos. 158, 161, 162-164, 167167, 204, 205, 211
The parties agree to produce designer e-mails,
including emails with engineers and others,
CAD drawings, sketchbooks/notebooks, and
Adobe Illustrator or other computer files
relating to the accused features of the GUI
design/redesign of each product at issue, such
as the design and development of the iOS
human interface or TouchWiz, development of
the icon arrangements at issue, and design
ofdevelopment of the accused icon
arrangements, the feasibility of the designs
considered (including ease of manufacturing,
cost savings, enhanced usability and
technological challenges), and the design of
accused icons and prior versions of the icons at
issue.
The parties agree to produce designer meeting
minutes, notes of design meetings,
specifications or requirements communicated
to the designers, project management reports,
reports to executives, and public keynote
addresses relating to the accused features of
the Hardware Design or the GUI of the
products at issue, including for design
alternatives and predecessor products on
which the design of a product at issue was
substantially based and from which an accused
featured was derived.
The parties agree to produce trademark, trade
dress and design patent search reports,
including prior art searches, and business plans
sf-3073229
5
Document Category and Related Requests
Proposed Reciprocal Obligation
relating to accused hardware design or the
icons at issue.
The parties agree to produce correspondence
involving designers of the accused features of
the products at issue, relating to the accused
features of the products at issue, where such
correspondence includes the name of the
opposing party. or refers to the products of
third parties.
The parties shall exchange three samples of
each product at issue, including user
manualsand service manuals and other
documents relating to the intended use or
operation of the products at issue, as well as
documents sufficient to show all model
numbers, code names, or other internal
designations used to refer to the products or
functionalities at issue.
Definitions:
1. “Hardware Design” means the product’s industrial design, including the device’s casing,
screen and screen borders, bezel or band, buttons, ports, speaker, and all hardware, insignia,
or ornamentation thereon.
2. “GUI” means the graphical user interface displayed on a device’s screen, including all of
the icons displayed as part of the graphical user interface.
3. “Patents in suit” means both design and utility patents asserted in this case, except where
specifically noted otherwise.
sf-3073229
6
Legend:
Insertion
Deletion
Moved from
Moved to
Style change
Format change
Moved deletion
Inserted cell
Deleted cell
Moved cell
Split/Merged cell
Padding cell
Statistics:
Count
Insertions
Deletions
Moved from
Moved to
Style change
Format changed
Total changes
70
48
0
0
0
0
118
Exhibit B
The parties agree to produce the following non-privileged documents and log any
privileged documents falling within the following categories:
Document Category and Related
Requests
1.
Proposed Reciprocal Obligation
The parties agree to produce: designer and
developer e-mails, notebooks, schematics,
data sheets, drawings, specifications,
Apple Request Nos. 12, 207, 240,
source code1 and other computer files
243-246245; PI RFP 158, 203.
relating to the development of the Accused
Features of the Products at
Samsung Request Nos. 16, 52, 68, 76, 77, Issue—including versions that were
126, 136, 153, 171, 176, 185, 188,
considered but not commercialized.
193-218
To the extent not covered by the above, the
parties agree to produce any document that
specifically discusses the Accused
Features. of the Products at Issue.
Design and Development of Accused
Features
The parties agree to produce developer
meeting minutes, project management
reports, reports to executives, product
approval reports, and public keynote
addresses relating to the Accused Features
of the Products at Issue—including
versions that were considered but not
commercialized.
To the extent not covered by the above, the
parties agree to produce documents
sufficient to show the identities of third
party consultants who contributed to the
design or development of Accused
Features.
The parties agree to produce draft and final
user guides, operating manuals, and help
documentation regarding the Products at
1
As noted above, Apple is separately seeking a production of Samsung source code, which Samsung should produce
immediately.
Document Category and Related
Requests
Proposed Reciprocal Obligation
Issue.
The parties agree to produce all
publications, articles, technical reviews,
and white papers authored by or for the
party and in the party’s possession
discussing any Accused Feature of the
Products at Issue or any Accused Feature.
The parties agree to produce documents
relating to acquisition and analysis of the
other party’s products for comparison or
benchmarking purposes.
To the extent not already covered by
Exhibit A, the parties agree to produce
prior versions of the asserted and accused
icons.
2.
The parties agree to produce21 patent
search reports that reference the asserted
patents.
Willfulness & CopyingAllegations of
Willful Patent Infringement
Apple Requests Nos. 13-15, 19-21,
107-109, 112, 166-167, 192, 193,
195,197-199, 200-201,197-198, 200,
203-206, 319-324, 328-330; PI RFPs
1-2, 165-166, 204-205,1, 204, 211-213.
The parties agree to produce
policespolicies, practices or procedures
relating to steps taken to ensure
compliance withthe treatment of third
party intellectual propertypatent rights.
Samsung Request Nos. 35,5, 17, 18, 26,
27, 31-35, 40, 57, 79, 125, 135, 143, 150, The parties agree to produce documents
related to steps taken to mark
153, 180 180, 249, 251.
instrumentalities incorporating,
embodying, or practicing any
patent-in-suit.
The parties agree to produce documents
concerning the date and circumstances of
their first awareness of the asserted IP.
2
As noted above, the parties agree that privileged documents will be logged, not produced.
2
1
Document Category and Related
Requests
Proposed Reciprocal Obligation
The parties agree to produce product
design, development, marketing and
product strategy-related analyses,
investigations and comparison of the other
parties’ products. This would include
discussions of the other parties’ products in
the context of design industry groups or
associations.patents-in-suit.
The parties agree to produce any analyses
of the asserted patents, including opinions
and prior art searches, to the extent such
analyses are not privileged or the party
intends to rely on the opinion of counsel.
The parties agree to produce documents
relating to any actual or proposed design
around or non-infringing alternative to the
patents in suit.
The parties agree to produce any
discussions with a third party regarding
design arounds and non-infringing
alternatives to the patents in suit.
The parties agrees to produce documents
and correspondence that refer to the
opposing party or to the opposing party’s
products from the files (including central
files and individual custodian files) of any
division or employee responsible for the
design, development and marketing of the
Products at Issue (including customer
survey, R&D management, product
planning groups and product testing
groups).
3
Document Category and Related
Requests
Proposed Reciprocal Obligation
The parties agree to produce for inspection
all physical samples of the opposing
party’s Products at Issue in its possession
(excluding products purchased for
litigation or products personally owned by
its employees). all documents concerning
notice given to the opposing party about
any alleged infringement of the
patents-in-suit.
To the extent not covered by the above, the
parties agree to produce documents
sufficient to show when each became
aware of the other party’s allegedly
infringing products and alleged infringing
or similar features.
All reciprocal production requirements
contemplated in this section are subject to
proper objections based on attorney work
product and/or attorney-client privilege.
3.
The parties agree to produce all documents
that each party is relying on to show the
proper construction of the claims of the
patents-in-suit.
Validity
Apple Request Nos. 94-104, 157, 159,
284-291291, 331, 335, 359; PI RFP
Requests Nos. 8, 156-157, 197-199
The parties agree to produce all documents
relating to prior art searches, as well as
documents and things that each party
alleges are prior art to the patents in suit
(including source code for any alleged
prior-art software), including known prior
art relating to the field of the alleged
invention or the problems addressed by the
alleged invention.
Samsung Request Nos. 93, 97, 98, 104,
105, 10718-23, 92-94, 96-109
The parties agree to produce all documents
discussing alleged prior art, including, but
not limited to, any document concerning or
establishing the first public use, sale, offer
for sale, knowledge, publication,
patenting, invention, and/or reduction to
practice of the alleged prior art, and/or its
4
Document Category and Related
Requests
Proposed Reciprocal Obligation
abandonment, suppression or concealment.
The parties agree to produce all
communications with third parties
concerning prior art that is alleged to
invalidate any of the asserted claims of the
patents-in-suit.
The parties agree to produce accolades and
awards, criticisms, surveys, and analyses
of how users and the relevant industry or
industries reacted to the Products at Issue.
The parties agree to produce documents
sufficient to show the advantages and
disadvantages of asserted utility patents, as
well as other documents relating to
objective indicia of nonobviousness.
With respect to design patent and trade
dress/ trademark validity, theThe parties
agree to produce documents regarding the
costs and challenges of manufacturing the
Hardware Design of each party’s
respective Products at Issueand
communications relating to the best mode
or any other modes contemplated by the
inventors for carrying out the inventions
claimed in the patents-in-suit, whether or
not disclosed in the specification.
.
4 Trademark and Trade-Dress
Infringement
Apple Request Nos.36-39, 48, 196,
222, 257; PI RFP 206, 215.
Samsung Request Nos. 147, 148, 173,
177, 189,
5
The parties agree to produce e-mails and
documents from designers, developers
and marketing custodians (including
R&D management and product planning
groups) and trademark counsel (if not
privileged) discussing the possibility of
consumer confusion between the parties’
Products at Issue or the source,
sponsorship, or affiliation of the parties’
Products at Issue.
Document Category and Related
Requests
Proposed Reciprocal Obligation
The parties agree to produce e-mails and
documents from designers, developers
and marketing custodians (including
R&D management and product planning
groups) and trademark counsel (if not
privileged) discussing instances of
actual confusion between the parties’
Products at Issue or the source,
sponsorship, or affiliation of the parties’
Products at Issue..
The parties agree to produce trademark
search reports relating to any element of
Apple’s asserted trade dress or asserted
trademarks.
The parties agree to produce documents
discussing or assessing the design of
Apple’s Products at Issue, including the
distinctiveness or lack of distinctiveness
thereof or the similarity of design
between the parties’ products, from the
files of designers, developers, marketing
custodians (including customer survey,
R&D management and product planning
groups), and trademark/design patent
counsel (if not privileged).
5.
The parties agree to produce licenses,
settlement agreements, and agreements to
indemnify relating to patents-in-suit and
accused/or the Accused Features of the
products at issue.
Licenses and settlement agreements
(covering categories not covered in
Topics 2 and 3 of Exhibit A).
Apple Request Nos. 22-25, 250,
268-28224, 268, 269
The parties agree to produce outbound and
Samsung Request Nos. 50, 51, 64, 65, 66, inbound license agreements relating to
115.115, 134.
mobile electronic devices (including
tablets, phones, and MP3 players),
including but not limited to trademarks,
patents, or other intellectual property used
in such products. This includes any
settlement agreement that includes a
6
Document Category and Related
Requests
Proposed Reciprocal Obligation
license, covenant not to sue, or similar
agreement relating to mobile electronic
devices.
Each party agrees to produce documents
showing royalty payments made by or to
the party for agreements relating to mobile
electronic devices (including tablets,
phones, and MP3 players).
The parties agree to produce documents
containing or discussing any estimates or
determinations of value concerning the
asserted patents (including any portfolio
that includes one of the asserted patents).
Each party agrees to produce documents
containing or discussing any estimates or
determinations of value of its own or any
third party’s patent portfolio.
Each party agrees to produce documents
containing or discussing any estimates or
determinations of value of any patent or
patent portfolio relating to technologies
used in mobile electronic devices
(including tablets, phones, and MP3
players).
The parties agree to produce agreements
relating to any indemnification for any
infringement of the asserted patents, and
any negotiations concerning such
agreements.
6.
Documents relating to document
The parties agree to produce documents
sufficient to identify the structure of their
7
Document Category and Related
Requests
Proposed Reciprocal Obligation
collection and retention
respective e-mail system and to explain
their automatic deletion systems.
Apple Request Nos. 50, 29760, 297, 298,
The parties agree to produce a copy of the
and 306-310
document retention policies in effect
Samsung Request Nos. 14, 36, 73
during the past three years.
7.
Enforcement and other litigation:
The parties agree to produce documents
relating to all attempts to enforce the
asserted IP, including cease and desist
letters and Complaints filed in the U.S.
alleging infringement of the asserted IP.
over the past five years.
Apple Request Nos. 93, 110, 111,
151-154, 161-162, 164-165, 296,
302-304
Samsung Request Nos. 28, 46, 75, 95,
120, 122, 123,122-124, 142, 166, 184,
219-229
The parties agree to produce substantive
motions; written discovery responses;
andthe prior testimony of relevant
witnesses or on the patents in suit or trade
dress in deposition, trial and hearing
transcripts from prior lawsuits and
administrative proceedings involving
discussing the asserted IP.
The parties agree to produce documents
that were filed in court or served on the
opposing party in any litigation or other
proceedings between Apple and Samsung
occurring outside the United States,
including pleadings; motions; statements;
responses to written discovery requests;
deposition, trial, and hearing transcripts;
and all documents that each party produced
to the other party in such litigation or
proceedings.
The parties agree to produce all documents
that were filed in court or served on the
opposing party in any litigation or other
proceedings involving Apple or Samsung
involving the licensing, the determination
of a FRAND royalty rate, and/or the
propriety of any injunctive relief related to
8
Document Category and Related
Requests
Proposed Reciprocal Obligation
IPR that is claimed to be essential to any
defined wireless standard, including
pleadings; motions; statements; responses
to written discovery requests; deposition,
trial, and hearing transcripts; and all
documents that each party produced to the
other party in such litigation or
proceedings.
The parties agree to produce prior
deposition and trial transcripts for named
inventors of patents-in-suit from matters
that relate to the patents-in-suit in the
instant actions or from matters where the
patents-in-suit bore a technological nexus
to one or more of the patents-in-suit in the
instant action.3prior proceedings in which
the subject matter of the proceeding relates
to technology or designs disclosed in the
patents-in-suit, related patents, or any prior
art reference cited therein.
For each witness identified in initial
disclosures, including named inventors, or
each person responsible for the design,
development or marketing of the Products
at Issue, the parties agree to produce all
trial or deposition transcripts from other
patent or trademark litigation in which that
witness testified about tabletpersonal
computers, tablets, or phone products.
The parties agree to produce all documents
relating to the subject matter of this lawsuit
provided to or received from any person
who may testify in this lawsuit.
The parties agree to produce documents
relating to the ownership, title, transfer or
assignment of the patents-in-suit and any
entity or individual that has now, or had
3
Prior deposition transcripts have been the subject of numerous meet-and-confer discussions. This proposal is
Apple’s latest offer, which Samsung has stated it is considering.
9
Document Category and Related
Requests
Proposed Reciprocal Obligation
previously, a financial interest in the
patents-in-suit.
8.
Expert Materials
Apple Request No. 156, 295
Samsung Request Nos. 47-49
9.
Third Party Communications and
AgreementsParticipation in
Standard-Setting Organizations
Apple Request Nos. 35, 49, 52,
299-301136-139, 142, 144, 146-148;
Samsung Request NoNos. 3859-60,
117-119
For each expert witness designated or
disclosed by each party, or whose opinion
the party intends to rely on at trial, the
parties agree to produce, consistent with
the Court’s schedule for expert discovery,
the following categories of documents to
the extent they are in the parties’
possession, custody or control: (1) all
Documents relied on by that expert in
forming his/her opinions or drafting
his/her expert report; (2) all prior expert
reports and/or declarations submitted by
that expert in other litigations involving
any issue in dispute in this litigation; and
(3) all trial and deposition transcripts from
other litigation in which your expert
witness served as an expert.
The parties agree to produce any
communications with a third party
(including, in the case of Samsung,
Google)SSOs relating to this lawsuit or the
claims, designs, asserted IP, or features of
Products at Issue in this lawsuit.the ETSI
standards at issue in this case as
incorporated into the accused products
The parties agree to each produce any
agreement or guarantee between it and any
carrier, wholesaler, retailer or consumer
that would prohibit or impact its ability to
10
Document Category and Related
Requests
Proposed Reciprocal Obligation
obtain an injunction.
Financial data, sales and manufacturing
information
The parties agree to produce the following
categories of documents:
Apple Request Nos. 23, 28, 33-34, 41-42, •
114, 171-172, 260-267, 461-462;
Samsung Request Nos. 6-8, 25, 29,
42-44, 54-55, 69, 116, 130-134, 175,
252-254
Documents sufficient to show the
manufacturers for each product at
issue, as well as the location, volume
and dates of manufacture;
•
For each product at issue and all
products embodying the asserted
patents, documents sufficient to show
gross and net U.S. revenues generated
for each product, documents sufficient
to show total quantity of units sold on a
per-month basis, current and past retail
prices, and the costs of goods sold;
•
U.S. business models and financial
projections relating to the products at
issue, including projected revenues and
expenses, projected sales, projected
profits and profit margins, and pricing
worksheets and/or other documents
showing pricing practices or strategies;
and
•
Documents relating to the
commercialization of the
patents-in-suit, including business
plans, strategic plans, actual and
projected net profits on sales, licenses,
or other transfers, as well as valuations
of the patents-in-suit.
11
Document Category and Related
Requests
Prosecution of the Patents-in-Suit
Apple Request Nos. 53-58, 83-92;
Proposed Reciprocal Obligation
The parties agree to produce the following
categories of documents:
•
Certified copies of each patent-in-suit;
•
Prosecution histories for the
patents-in-suit, related patents, and any
foreign counterpart patents or
applications, including all references
and prior art cited during prosecution;
and
•
Documents relating to the preparation
and filing of the patents-in-suit,
including documents related to the
decision to seek patent protection, prior
art searches and evaluations, and any
decisions as to what references to cite
as prior art.
Samsung Request Nos. 81-82, 186
Definitions:
1. “Hardware Design” means the product’s industrial design, including the device’s casing,
screen and screen borders, bezel or band, buttons, ports, speaker, and all hardware, insignia,
or ornamentation thereon.
2. “GUI” means the graphical user interface displayed on a device’s screen, including all of
the icons displayed as part of the graphical user interface.
3. “Product at Issue” means: (1) in the case of Samsung, each product that has been accused
or is subsequently accused by Apple of infringement; and (2) in the case of Apple, the
iPhone, iPhone 3G, iPhone 3GS, iPhone 4, iPad. iPad 2, and iPod Touch (including all
versions thereof), and other Apple products subsequently accused of infringement.
12
4. “Accused Feature” means: any aspect, element, or function of any Product at Issue that is
alleged to infringe any of the asserted IP. In the case of Samsung, this includes, but is not
limited to, the display and touch sensor panels of the Samsung Products at Issue.
5. “Patents-in-suit” means both design and utility patents asserted in this action, except
where explicitly noted otherwise.
13
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Inserted cell
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Statistics:
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86
75
0
0
0
0
161
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