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

Filing 611

MOTION to Compel Discovery Relating to Its Affirmative Defenses and Counterclaims Correction of Docket #600 filed by Apple Inc.(a California corporation). Motion Hearing set for 1/18/2012 02:00 PM before Hon. Lucy H. Koh. Responses due by 1/17/2012. (Attachments: #1 Declaration of Samuel J. Maselli Correction of Docket #[600-2], #2 Exhibit EE Correction of Docket #[600-33])(Selwyn, Mark) (Filed on 1/11/2012)

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HAROLD J. MCELHINNY (CA SBN 66781)
[e-mail]
MICHAEL A. JACOBS (CA SBN 111664)
[e-mail]
RICHARD S.J. HUNG (CA SBN 197425)
[e-mail]
MORRISON & FOERSTER LLP
425 Market Street
San Francisco, California 94105-2482
Telephone: [phone]
Facsimile: [phone]

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WILLIAM F. LEE (pro hac vice)
[e-mail]
WILMER CUTLER PICKERING
HALE AND DORR LLP
60 State Street
Boston, Massachusetts 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]
Attorneys for Plaintiff and
Counterclaim-Defendant Apple Inc.

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United States District Court
Northern District of California
San Jose Division

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APPLE INC., a California corporation,
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Plaintiff,

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vs.

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SAMSUNG ELECTRONICS CO., LTD., a
Korean business entity, SAMSUNG
ELECTRONICS AMERICA, INC., a New
York corporation, and SAMSUNG
TELECOMMUNICATIONS AMERICA,
LLC, a Delaware limited liability company,

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Defendants.
SAMSUNG ELECTRONICS CO., LTD., a
Korean business entity, SAMSUNG
ELECTRONICS AMERICA, INC., a New
York corporation, and SAMSUNG
TELECOMMUNICATIONS AMERICA,
LLC, a Delaware limited liability company,

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APPLE INC.’S NOTICE OF MOTION
AND MOTION TO COMPEL
DISCOVERY RELATING TO APPLE’S
AFFIRMATIVE DEFENSES AND
COUNTERCLAIMS
Date: TBA
Time: TBA
ORAL ARGUMENT REQUESTED
PUBLIC REDACTED VERSION

Counterclaim-Plaintiffs,

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Civil Action No. 11-CV-01846-LHK

v.
APPLE INC., a California corporation,
Counterclaim-Defendant.
APPLE INC.’S NOTICE OF MOTION AND MOTION
TO COMPEL DISCOVERY RELATING TO APPLE’S
AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

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TABLE OF CONTENTS

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MEMORANDUM OF POINTS AND AUTHORITIES .................................................................1

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I.

INTRODUCTION. ..................................................................................................1

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II.

LEGAL STANDARD..............................................................................................1

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III.

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THE COURT SHOULD ORDER SAMSUNG TO COMPLETE ITS
PRODUCTION OF INVENTOR DOCUMENTS BY JANUARY 23,
2012..........................................................................................................................2

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A.

Background. .................................................................................................2

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B.

Samsung’s Inventor Documents Are Relevant and Discoverable. ..............4

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C.

Samsung’s Manner of Collecting from Its Inventors Was Deficient...........5

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D.

The Search Terms Used by Samsung to Search Its Inventors’ Files
Are Insufficient. ...........................................................................................8

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IV.
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THE COURT SHOULD ORDER SAMSUNG TO COMPLETE
PRODUCTION OF DOCUMENTS REFLECTING ITS ACTIVITIES
BEFORE STANDARDS SETTING ORGANIZATIONS BY JANUARY
23, 2012....................................................................................................................9

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A.

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Background. .................................................................................................9
1.

Samsung Witness Testimony Establishes the Sources of
Potentially Relevant Documents Regarding Samsung’s
Participation in Standards Setting Organizations. .........................10

2.

Samsung Has Not Made a Complete Production Of
Documents Relating to Its Participation in Standards
Setting Organizations, and Has Not Committed to Remedy
this Deficiency in a Timely Manner. .............................................12

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B.

Samsung’s Documents Related to Its Participation in Standards
Setting Organizations are Relevant and Discoverable...............................14

C.

Samsung Should Be Ordered to Complete Production of Its
Standards Setting Organization Documents by January 23, 2012.............15

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V.
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THE COURT SHOULD ORDER SAMSUNG TO COMPLETE
PRODUCTION OF LICENSES AND LICENSE NEGOTIATION
DOCUMENTS BY JANUARY 23, 2012. ............................................................15

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A.

Background. ...............................................................................................15

B.

Samsung’s Licenses and Licenses Negotiation Documents are
Relevant and Discoverable. .......................................................................17

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VI.

CONCLUSION......................................................................................................18

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APPLE INC.’S NOTICE OF MOTION AND MOTION TO
COMPEL DISCOVERY RELATING TO APPLE’S
AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

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TABLE OF AUTHORITIES

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Cases

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Allied Tube & Conduit Corp. v. Indian Head, Inc.,
486 U.S. 492 (1988).................................................................................................................. 15

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Atmel Corp. v. Authentec Inc.,
2008 U.S. Dist. LEXIS 10850 (N.D. Cal. Jan. 31, 2008) ......................................................... 18

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C&C Jewelry Mfg. v. West,
2010 U.S. Dist. LEXIS 110587 (N.D. Cal. Oct. 7, 2010)......................................................... 17

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Del Campo v. Kennedy,
236 F.R.D. 454 (N.D. Cal. 2006)................................................................................................ 1

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Genentech, Inc. v. Trs. of the Univ. of Pa.,
2011 U.S. Dist. LEXIS 64432 (N.D. Cal. June 16, 2011) .......................................................... 1

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Heat & Control, Inc. v. Hester Indus., Inc.,
785 F.2d 1017 (Fed. Cir. 1986)................................................................................................... 1

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In Re Rambus Inc.,
7 Fed. Appx. 925 (Fed. Cir. 2001)...................................................................................... 14, 15

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Johnson & Johnson, v. R.E. Service Co. Inc.,
2004 U.S. Dist. LEXIS 26973 (N.D. Cal. Nov. 2, 2004)............................................................ 2

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Jones v. Bremen High Sch. Dist. 228,
2010 WL 2106640 (N.D. Ill. May 25, 2010) .............................................................................. 7

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Kilopass Tech., Inc. v. Sidense Corp.,
2011 U.S. Dist. LEXIS 65610 (N.D. Cal. June 21, 2011) .......................................................... 1

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LG Elecs., Inc. v. Motorola, Inc.,
2010 U.S. Dist. LEXIS 79047 (N.D. Ill. Aug. 5, 2010) ........................................................... 15

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Multiven, Inc. v. Cisco Sys, Inc.,
2010 U.S. Dist. LEXIS 71221 (N.D. Cal. July 9, 2010)............................................................. 2

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Phoenix Sols. Inc. v. Wells Fargo Bank, N.A.,
254 F.R.D. 568 (N.D. Cal. 2008).............................................................................................. 17

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Play Visions, Inc. v. Dollar Tree Stores, Inc.,
2011 WL 2292326 (W.D. Wash. June 8, 2011).......................................................................... 7

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Quanta Computer, Inc. v. LG Electronics, Inc.,
553 U.S. 617 (2008).................................................................................................................. 17

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SmithKline Beecham Corp. v. Apotex Corp.,
2006 U.S. Dist. LEXIS 4276 (E.D. Pa. Jan. 31, 2006) ............................................................. 15

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Sorensen v. Lexar Media Inc.,
2008 U.S. Dist. LEXIS 105503 (N.D. Cal. Dec. 19, 2008) ...................................................... 17

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APPLE INC.’S NOTICE OF MOTION AND MOTION TO
COMPEL DISCOVERY RELATING TO APPLE’S
AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

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Wachtel v. Health Net, Inc.,
239 F.R.D. 81 (D.N.J. 2006)....................................................................................................... 7

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APPLE INC.’S NOTICE OF MOTION AND MOTION TO
COMPEL DISCOVERY RELATING TO APPLE’S
AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

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NOTICE OF MOTION AND MOTION

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TO DEFENDANTS SAMSUNG ELECTRONICS CO. LTD., SAMSUNG ELECTRONICS
AMERICA, INC., and SAMSUNG TELECOMMUNICATIONS AMERICA, LLC AND
THEIR COUNSEL OF RECORD:

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PLEASE TAKE NOTICE THAT at a date and time to be set by the Court, Plaintiff and

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Counterclaim-Defendant Apple Inc. (“Apple”) will move pursuant to Federal Rule of Civil

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Procedure 37(a) for an order compelling Defendants and Counterclaim-Plaintiffs Samsung

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Electronics Co. Ltd., Samsung Electronics America, Inc. and Samsung Telecommunications

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America, LLC (collectively, “Samsung”) to complete production of three categories of

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documents by January 23, 2012: (1) documents from the files of Samsung’s named inventors;

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(2) documents relating to Samsung’s participation in standards-setting organizations (“SSOs”);

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and (3) documents relating to patent license negotiations.

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In accordance with Local Rule 37-1(a), Apple certifies that it has attempted to meet and

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confer with counsel for Samsung in good faith to resolve these disputes without Court

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intervention, but those efforts have been unsuccessful. See Sections III(C) and (D), IV(A)(2),

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and V(A), infra, as well as the accompanying declaration of Samuel J. Maselli. The parties

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further held a lead counsel in-person meeting on January 5, 2012, where they were unable to

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resolve these issues.1

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This motion is based on this Notice of Motion, the accompanying Memorandum of Points

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and Authorities in support thereof, the Declaration of Samuel Maselli, and any other matters

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properly before the Court.

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On the afternoon of January 10, 2012, as Apple was finalizing this Motion, Samsung indicated
for the first time in an e-mail that it would agree to supplement its productions relating to SSO's
and patent licensing negotiations, and stated that it would send a letter later in the day with
further details. At 7:45 pm Pacific on January 10, 2012, Samsung sent Apple

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(Declaration of Samuel J. Maselli
(“Maselli Decl.”), Ex EE.) For the reasons discussed herein, these proposals are not acceptable
to Apple, and thus Apple has filed this Motion on this date pursuant to the Stipulation of the
parties to an expedited briefing schedule for motions to compel. Apple will review any future
offers to compromise from Samsung, and will promptly advise the Court if any issues addressed
in this Motion have been mooted.

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APPLE INC.’S NOTICE OF MOTION AND MOTION TO
COMPEL DISCOVERY RELATING TO APPLE’S
AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

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RELIEF REQUESTED
Pursuant to Federal Rule of Civil Procedure 37 and Patent Local Rule 3-4, Apple seeks

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an order compelling Samsung to produce three discrete categories of highly relevant documents:

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(1) complete its production of documents from its inventor files; (2) ETSI and 3GPP related

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documents; and (3) patent license and licensing negotiation related documents. Samsung should

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complete its production of these documents by January 23, 2012.

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STATEMENT OF ISSUES TO BE DECIDED

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1.

Whether Samsung should be compelled to complete production of documents

from its inventor files by January 23, 2012, after those files have been collected in a thorough

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and forensically-sound manner, and after searches of electronic files are performed using

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appropriate search terms, including Korean-language terms (the native language of most of the

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named inventors).

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2.

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Whether Samsung should be compelled to complete its production of documents

related to its participation in ETSI and the 3GPP by January 23, 2012.

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3.

Whether Samsung should be compelled to complete production of documents

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related to patent licenses and license negotiations (whether resulting in a contract or not)

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covering patents declared essential to wireless standards by January 23, 2012.

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APPLE’S CIVIL L.R. 37-2 STATEMENT

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Pursuant to Local Rule 37-2, the Apple document requests at issue in this Motion and

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Samsung’s responses thereto are set forth below:2

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THIRD SET OF REQUESTS FOR PRODUCTION, REQUEST NO. 69:

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All engineering notebooks, laboratory notebooks, records, logs, files, and electronically

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stored information generated at or by the direction of any of the Samsung Named Inventors, and

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all engineering notebooks, laboratory notebooks, records, logs, files, and electronically stored

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They are also attached as Exhibits A and B to the Declaration of Samuel J. Maselli in Support
of Motion to Compel Production of Documents and Things (the “Maselli Decl.”).

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APPLE INC.’S NOTICE OF MOTION AND MOTION TO
COMPEL DISCOVERY RELATING TO APPLE’S
AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

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information in which any of the Samsung Named Inventors made any entries that pertain in any

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way to any of the Samsung Patents-In-Suit or the subject matter disclosed or claimed therein.

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RESPONSE TO REQUEST FOR PRODUCTION NO. 69:

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In addition to its Objections and Responses Common to All Requests for Production,

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which it hereby incorporates by reference, Samsung objects to this Request to the extent that it

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seeks to elicit information subject to and protected by the attorney-client privilege, the attorney

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work-product doctrine, the joint defense privilege, the common interest doctrine, and/or any

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other applicable privilege or immunity. Samsung further objects to the Request to the extent it is

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unduly burdensome, and/or would require undue expense to answer. Samsung further objects the

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Request as vague and ambiguous. For example, the terms “generated at or by the direction of”

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and “subject matter” is vague and ambiguous. Samsung further objects to the Request as

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overbroad in that it is not limited to any reasonable time period and seeks documents and things

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from time periods not at issue in this litigation. Samsung further objects to the Request as

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duplicative of Apple’s Request For Production Nos. 64, 65, 66. Samsung further objects to the

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Request to the extent it seeks documents that are not within the possession, custody, or control of

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Samsung. Samsung further objects to the Request to the extent it seeks documents equally or

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more readily available to Apple than to Samsung. Samsung further objects to the Request to the

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extent the requested documents are publicly available. Samsung further objects to the Request as

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premature to the extent it seeks documents and things inconsistent with the timeframes set forth

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in the Northern District of California Patent Local Rules.

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Subject to these objections, Samsung will produce relevant, non-privileged documents

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within its possession, custody, or control, if any, after conducting a reasonable search in

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accordance with the Patent Local Rules.

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THIRD SET OF REQUESTS FOR PRODUCTION, REQUEST NO. 72:

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All documents relating to the contribution of each of the Samsung Named Inventors to
the Samsung Patents-In-Suit.

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APPLE INC.’S NOTICE OF MOTION AND MOTION TO
COMPEL DISCOVERY RELATING TO APPLE’S
AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

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RESPONSE TO REQUEST FOR PRODUCTION NO. 72:
In addition to its Objections and Responses Common to All Requests for Production,

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which it hereby incorporates by reference, Samsung objects to this Request to the extent that it

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seeks to elicit information subject to and protected by the attorney-client privilege, the attorney

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work-product doctrine, the joint defense privilege, the common interest doctrine, and/or any

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other applicable privilege or immunity. Samsung further objects to the Request to the extent it is

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unduly burdensome, and/or would require undue expense to answer. Samsung further objects the

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Request as vague and ambiguous. For example, the term “contribution” is vague and ambiguous.

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Samsung further objects to the Request as duplicative of Apple’s Request For Production Nos.

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64, 65, 66, 69, 70, and 71. Samsung further objects to the Request to the extent it seeks

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documents that are not within the possession, custody, or control of Samsung. Samsung further

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objects to the Request to the extent it seeks documents equally or more readily available to Apple

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than to Samsung. Samsung further objects to the Request to the extent the requested documents

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are publicly available. Samsung further objects to the Request to the extent it calls for a legal

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conclusion.

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Subject to these objections, Samsung will produce relevant, non-privileged documents

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within its possession, custody, or control, if any, after conducting a reasonable search in

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accordance with the Patent Local Rules.

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THIRD SET OF REQUESTS FOR PRODUCTION, REQUEST NO. 73:

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All documents sent to or from any of the Samsung Named Inventors relating to the

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Samsung Patents-In-Suit, the prosecution of the Samsung Patents-In-Suit, and/or the subject

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matter of any claim of the Samsung Patents-In-Suit.

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RESPONSE TO REQUEST FOR PRODUCTION NO. 73:

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In addition to its Objections and Responses Common to All Requests for Production,

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which it hereby incorporates by reference, Samsung objects to this Request to the extent that it

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seeks to elicit information subject to and protected by the attorney-client privilege, the attorney

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work-product doctrine, the joint defense privilege, the common interest doctrine, and/or any

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vii

APPLE INC.’S NOTICE OF MOTION AND MOTION TO
COMPEL DISCOVERY RELATING TO APPLE’S
AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

1

other applicable privilege or immunity. Samsung further objects to the Request to the extent it is

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unduly burdensome, and/or would require undue expense to answer. Samsung further objects to

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the Request as duplicative of Apple’s Request For Production Nos. 64, 65, 66, 69, 70, 71, and

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72. Samsung further objects to the Request to the extent it seeks documents that are not within

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the possession, custody, or control of Samsung. Samsung further objects to the Request to the

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extent it seeks documents equally or more readily available to Apple than to Samsung. Samsung

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further objects to the Request to the extent the requested documents are publicly available.

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Samsung further objects to the Request as premature to the extent it seeks documents and things

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inconsistent with the timeframes set forth in the Northern District of California Patent Local

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Rules.
Subject to these objections, Samsung is willing to meet and confer with Apple about the

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relevance and scope of the information sought by this request.

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THIRD SET OF REQUESTS FOR PRODUCTION, REQUEST NO. 79:

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All documents, whether published or not, constituting or relating to writings,

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publications, abstracts, papers, presentations, memoranda, reports, or speeches authored or given

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by or for Samsung or any of the Named Inventors relating to the subject matter disclosed or

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claimed in any of the Samsung Patents-In-Suit, including without limitation such documents

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provided to SSOs.

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RESPONSE TO REQUEST FOR PRODUCTION NO. 79:

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In addition to its Objections and Responses Common to All Requests for Production,

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which it hereby incorporates by reference, Samsung objects to this Request to the extent that it

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seeks to elicit information subject to and protected by the attorney-client privilege, the attorney

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work-product doctrine, the joint defense privilege, the common interest doctrine, and/or any

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other applicable privilege or immunity. Samsung further objects to the Request to the extent it is

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unduly burdensome, and/or would require undue expense to answer. Samsung further objects the

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Request as vague and ambiguous. For example, the term “subject matter” is vague and

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ambiguous. Samsung further objects to the Request as overbroad in that it is not limited to any

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APPLE INC.’S NOTICE OF MOTION AND MOTION TO
COMPEL DISCOVERY RELATING TO APPLE’S
AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

1

reasonable time period and seeks documents and things from time periods not at issue in this

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litigation. Samsung further objects to the Request to the extent it seeks documents equally or

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more readily available to Apple than to Samsung. Samsung further objects to the Request to the

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extent the requested documents are publicly available. Samsung further objects to the Request as

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premature to the extent it seeks documents and things inconsistent with the timeframes set forth

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in the Northern District of California Patent Local Rules.

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Subject to these objections, Samsung is willing to meet and confer with Apple about the

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relevance and scope of the information sought by this request.

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THIRD SET OF REQUESTS FOR PRODUCTION, REQUEST NO. 119:

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All documents concerning or comprising licenses of or agreements to license any IPR

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related to any of the Defined Wireless Standards, including without limitation licenses of such

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IPR from Samsung to third parties and licenses of such IPR from third parties to Samsung.

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RESPONSE TO REQUEST FOR PRODUCTION NO. 119:

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In addition to its Objections and Responses Common to All Requests for Production,

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which it hereby incorporates by reference, Samsung objects to this Request to the extent that it

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seeks to elicit information subject to and protected by the attorney-client privilege, the attorney

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work-product doctrine, the joint defense privilege, the common interest doctrine, and/or any

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other applicable privilege or immunity. Samsung further objects to the Request to the extent it is

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unduly burdensome, and/or would require undue expense to answer. Samsung further objects the

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Request as vague and ambiguous. For example, the term “IPR” is vague and ambiguous.

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Samsung further objects to the Request as overly burdensome for its use of the term “Defined

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Wireless Standards.” Samsung further objects to the Request to the extent it seeks documents

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that are not within the possession, custody, or control of Samsung. Samsung further objects to

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the Request to the extent it seeks documents equally or more readily available to Apple than to

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Samsung. Samsung further objects to the Request to the extent the requested documents are

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publicly available. Samsung further objects to the Request to the extent it seeks documents

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APPLE INC.’S NOTICE OF MOTION AND MOTION TO
COMPEL DISCOVERY RELATING TO APPLE’S
AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

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containing confidential third party information, including information subject to a non-disclosure

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or other agreement between Samsung and a third party.

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Subject to these objections, Samsung will produce relevant, non-privileged documents

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within its possession, custody, or control, if any, after conducting a reasonable search in

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accordance with the Patent Local Rules.

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THIRD SET OF REQUESTS FOR PRODUCTION, REQUEST NO. 120:

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All documents relating to the negotiation of any license of or agreement to license any

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technology allegedly Essential to any Defined Wireless Standards, including without limitation,

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documents reflecting discussions between the parties, licensing presentations, claim charts, and

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documents identifying the Samsung personnel who negotiated or authorized any such licenses or

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license agreement.

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RESPONSE TO REQUEST FOR PRODUCTION NO. 120:

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In addition to its Objections and Responses Common to All Requests for Production,

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which it hereby incorporates by reference, Samsung objects to this Request to the extent that it

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seeks to elicit information subject to and protected by the attorney-client privilege, the attorney

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work-product doctrine, the joint defense privilege, the common interest doctrine, and/or any

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other applicable privilege or immunity. Samsung further objects to the Request to the extent it is

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unduly burdensome, and/or would require undue expense to answer. Samsung further objects the

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Request as vague and ambiguous. For example, the term “IPR” is vague and ambiguous.

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Samsung further objects to the Request as overbroad in that it is not limited to any reasonable

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time period and seeks documents and things from time periods not at issue in this litigation.

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Samsung further objects to the Request as overly burdensome for its use of the term “Defined

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Wireless Standards.” Samsung further objects to the Request to the extent it seeks documents

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that are not relevant to the claims or defenses of any party and/or not reasonably calculated to

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lead to the discovery of admissible evidence. Samsung further objects to the Request to the

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extent it seeks documents that are not within the possession, custody, or control of Samsung.

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Samsung further objects to the Request to the extent it seeks documents equally or more readily

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APPLE INC.’S NOTICE OF MOTION AND MOTION TO
COMPEL DISCOVERY RELATING TO APPLE’S
AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

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available to Apple than to Samsung. Samsung further objects to the Request to the extent the

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requested documents are publicly available. Samsung further objects to the Request to the extent

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it seeks documents containing confidential third party information, including information subject

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to a non-disclosure or other agreement between Samsung and a third party.

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Subject to these objections, Samsung is willing to meet and confer with Apple about the

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relevance and scope of the information sought by this request.

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THIRD SET OF REQUESTS FOR PRODUCTION, REQUEST NO. 137:

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All documents relating to technical proposals, responses to others’ technical proposals,

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reports, change requests, responses to others’ change requests, emails or other communications,

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related to any Samsung technology, that were submitted or sent by Samsung to a working group

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or body operating under the auspices of any of the Defined Wireless SSOs, or were received by

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or sent to Samsung by a participant in such a Defined Wireless SSO working group or body.

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RESPONSE TO REQUEST FOR PRODUCTION NO. 137:

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In addition to its Objections and Responses Common to All Requests for Production,

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which it hereby incorporates by reference, Samsung objects to this Request to the extent that it

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seeks to elicit information subject to and protected by the attorney-client privilege, the attorney

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work-product doctrine, the joint defense privilege, the common interest doctrine, and/or any

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other applicable privilege or immunity. Samsung further objects to the Request to the extent it is

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unduly burdensome, and/or would require undue expense to answer. Samsung further objects to

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the Request as overbroad in that it is not limited to any reasonable time period and seeks

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documents and things from time periods not at issue in this litigation. Samsung further objects to

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the Request to the extent it seeks documents that are not relevant to the claims or defenses of any

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party and/or not reasonably calculated to lead to the discovery of admissible evidence. Samsung

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further objects to the Request as vague, ambiguous, and overly burdensome for its use of the

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terms “any Samsung technology,” “body operating under the auspices of any of the Defined

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Wireless SSOs” and “Defined Wireless SSOs” Samsung further objects to the Request to the

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extent it seeks documents that are not within the possession, custody, or control of Samsung.

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APPLE INC.’S NOTICE OF MOTION AND MOTION TO
COMPEL DISCOVERY RELATING TO APPLE’S
AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

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Samsung further objects to the Request to the extent it seeks documents equally or more readily

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available to Apple than to Samsung. Samsung further objects to the Request to the extent the

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requested documents are publicly available. Samsung further objects to the Request to the extent

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it seeks documents containing confidential third party information, including information subject

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to a non-disclosure or other agreement between Samsung and a third party.

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Subject to these objections, Samsung is willing to meet and confer with Apple about the

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relevance and scope of the information sought by this request.

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THIRD SET OF REQUESTS FOR PRODUCTION, REQUEST NO. 142:

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All documents relating to Samsung’s identification, disclosure, or notification to any of

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the Defined Wireless SSOs of any of Samsung’s technology as Essential or allegedly Essential to

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any of the Defined Wireless Standards.

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RESPONSE TO REQUEST FOR PRODUCTION NO. 142:

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In addition to its Objections and Responses Common to All Requests for Production,

14

which it hereby incorporates by reference, Samsung objects to this Request to the extent that it

15

seeks to elicit information subject to and protected by the attorney-client privilege, the attorney

16

work-product doctrine, the joint defense privilege, the common interest doctrine, and/or any

17

other applicable privilege or immunity. Samsung further objects to the Request to the extent it is

18

unduly burdensome, and/or would require undue expense to answer. Samsung further objects to

19

the Request as overbroad in that it is not reasonably limited as to the scope of documents and

20

things it seeks. Samsung further objects to the Request as overbroad in that it is not limited to

21

any reasonable time period and seeks documents and things from time periods not at issue in this

22

litigation. Samsung further objects to the Request as overly burdensome for its use of the overly

23

broad terms “Defined Wireless SSOs,” “Samsung’s Alleged Essential Technology,” and

24

“Defined Wireless Standards.” Samsung further objects to the Request to the extent it seeks

25

documents that are not relevant to the claims or defenses of any party and/or not reasonably

26

calculated to lead to the discovery of admissible evidence.

27
28

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AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

1

Subject to these objections, Samsung will produce relevant, non-privileged documents

2

within its possession, custody, or control, if any, after conducting a reasonable search in

3

accordance with the Patent Local Rules.

4

THIRD SET OF REQUESTS FOR PRODUCTION, REQUEST NO. 144:

5

All documents relating to Samsung’s understanding of, and compliance with, any IPR

6

practice, policy, or procedure of any of the Defined Wireless SSOs to disclose Essential IPR

7

during the standardization process of any of the Defined Wireless Standards.

8

RESPONSE TO REQUEST FOR PRODUCTION NO. 144:

9

In addition to its Objections and Responses Common to All Requests for Production,

10

which it hereby incorporates by reference, Samsung objects to this Request to the extent that it

11

seeks to elicit information subject to and protected by the attorney-client privilege, the attorney

12

work-product doctrine, the joint defense privilege, the common interest doctrine, and/or any

13

other applicable privilege or immunity. Samsung further objects to the Request to the extent it is

14

unduly burdensome, and/or would require undue expense to answer. Samsung further objects the

15

Request as vague and ambiguous. For example, the term “Samsung’s understanding of, and

16

compliance with,” is vague and ambiguous. Samsung further objects to the Request as overbroad

17

in that it is not reasonably limited as to the scope of documents and things it seeks. Samsung

18

further objects to the Request as overbroad in that it is not limited to any reasonable time period

19

and seeks documents and things from time periods not at issue in this litigation. Samsung further

20

objects to the Request to the extent it seeks documents that are not relevant to the claims or

21

defenses of any party and/or not reasonably calculated to lead to the discovery of admissible

22

evidence. Samsung further objects to the Request as overly burdensome for its use of the overly

23

broad terms “Defined Wireless SSOs” and “Essential IPR” and “Defined Wireless Standards.”

24

Subject to these objections, Samsung will produce relevant, non-privileged documents

25

within its possession, custody, or control, if any, after conducting a reasonable search in

26

accordance with the Patent Local Rules.

27
28

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APPLE INC.’S NOTICE OF MOTION AND MOTION TO
COMPEL DISCOVERY RELATING TO APPLE’S
AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

1
2

APPLE’S CERTIFICATION PURSUANT TO FED. R. CIV. P. 37(A)(1)
Apple hereby certifies that it has in good faith conferred with Samsung in an effort to

3

obtain the discovery described immediately above without Court action. Apple has held multiple

4

meet-and-confer teleconferences with Samsung without resolution, and was also unable to

5

resolve these discovery disputes during the lead counsel in-person meeting held January 5, 2012.

6

Apple’s efforts to resolve these discovery disputes without court intervention are described in

7

Sections III(C) and (D), IV(A)(2), and V(A), infra, and in the Declaration of Samuel J. Maselli

8

in Support of Motion to Compel Production of Documents and Things (the “Maselli Decl.”) and

9

exhibits attached thereto, submitted concurrently herewith.

10

Dated: January 10, 2012

/s/ Mark D. Selwyn
Mark D. Selwyn
WILMER CUTLER PICKERING
HALE AND DORR LLP
950 Page Mill Road
Palo Alto, California 94304
Telephone: [phone]
Facsimile: [phone]

11
12
13
14

Attorneys for Plaintiff and
Counterclaim-Defendant Apple Inc.

15
16
17
18
19
20
21
22
23
24
25
26
27
28

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APPLE INC.’S NOTICE OF MOTION AND MOTION TO
COMPEL DISCOVERY RELATING TO APPLE’S
AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

1
2

MEMORANDUM OF POINTS AND AUTHORITIES
I.

3

INTRODUCTION.
Despite the issuance of applicable discovery requests in August, Samsung has not made a

4

meaningful production of several categories of key documents as detailed below. Nor is

5

Samsung willing to commit to making a complete production by a date certain. Given the

6

looming March 8, 2012 fact discovery cut-off, it is essential that Samsung complete its

7

production on a timely basis so that Apple can have sufficient time to review the documents,

8

prepare for depositions, and conduct other necessary follow-up discovery. Accordingly, Apple

9

hereby moves for an order compelling Samsung to complete its production of these documents

10

by January 23, 2012.

11

II.

12

LEGAL STANDARD.
Parties “may obtain discovery regarding any nonprivileged matter that is relevant to any

13

party’s claim or defense[.]” See Fed. R. Civ. P. 26(b)(1). Information may be discoverable,

14

even if not admissible at trial, “if the discovery appears reasonably calculated to lead to the

15

discovery of admissible evidence.” See id. Further, “a party may move for an order compelling

16

disclosure or discovery.” See Fed. R. Civ. P. 37(a)(1); see also Kilopass Tech., Inc. v. Sidense

17

Corp., No. C 10-92966, 2011 U.S. Dist. LEXIS 65610, at *3-5 (N.D. Cal. June 21, 2011);

18

Genentech, Inc. v. Trs. of the Univ. of Pa., No. C 10-02037, 2011 U.S. Dist. LEXIS 64432, at *5

19

(N.D. Cal. June 16, 2011); Del Campo v. Kennedy, 236 F.R.D. 454, 457-58 (N.D. Cal. 2006).

20

In general, discovery of relevant evidence may be limited only when the “burden or

21

expense of the proposed discovery outweighs its likely benefit, considering the needs of the case,

22

the amount in controversy, the parties’ resources, the importance of the issues at stake in the

23

action, and the importance of the discovery in resolving the issues.” See Fed. R. Civ. P.

24

26(b)(2)(C)(iii). When there is doubt about relevance, a court should tend toward permitting

25

discovery. See, e.g., Heat & Control, Inc. v. Hester Indus., Inc., 785 F.2d 1017, 1024 (Fed. Cir.

26

1986) (“[T]he court must be careful not to deprive a party of discovery that is reasonably

27

necessary to afford a fair opportunity to develop and prepare the case.”) (quoting Fed. R. Civ. P.

28

1

APPLE INC.’S NOTICE OF MOTION AND MOTION TO
COMPEL DISCOVERY RELATING TO APPLE’S
AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

1

26(b)(1), Advisory Committee Notes, 1983 Amendment).

2

In addition to the obligation to provide relevant discovery, parties must do so in a manner

3

that facilitates the orderly discovery process. See Multiven, Inc. v. Cisco Sys., Inc., No. 5:08-cv-

4

05391 JW (HRL), 2010 U.S. Dist. LEXIS 71221, *5-*6 (N.D. Cal. July 9, 2010) (directing a

5

Special Master to assist with the production of documents “with enough time before the close of

6

discovery to allow Cisco time to actually do anything with them”); Johnson & Johnson, v. R.E.

7

Service Co. Inc., No. C 03-2549 SBA (JL), 2004 U.S. Dist. LEXIS 26973, *7 (N.D. Cal. Nov. 2,

8

2004) (ordering expedited production of documents to allow the requesting party sufficient time

9

to prepare for fact witness depositions).

10

III.

11

THE COURT SHOULD ORDER SAMSUNG TO COMPLETE ITS
PRODUCTION OF INVENTOR DOCUMENTS BY JANUARY 23, 2012.3

12

A.

Background.

13

Pursuant to the Court’s scheduling order, Samsung was required to make its inventors

14

available for deposition before December 1, 2011. Necessarily, Samsung should have made a

15

complete production of all responsive materials from the files of those inventions in advance of

16

their depositions. Though Samsung did produce some documents prior to the depositions, it

17

became apparent from the paucity of the productions and from the testimony of the inventors that

18

Samsung did not conduct an adequate collection of documents from its inventors’ files. Instead,

19

it is evident that Samsung’s attorneys placed the burden of locating relevant documents, and

20

conducting electronic searches for documents, on the Samsung inventors themselves. Multiple

21

inventors testified to the myriad, and unregulated, ways in which they conducted their self-

22

searches. Further, once Apple received the “transparency disclosures” which set forth the search

23

terms used by Samsung to search its inventors’ files, Apple became aware of additional

24

deficiencies in Samsung’s inventor document collection and production. Not surprisingly, their

25

searches often resulted in very few responsive documents being produced from their files.

26
3

27

The documents discussed in this section are responsive to one or more of the following
Requests for Production: Nos. 69, 72, 73, 79.

28

2

APPLE INC.’S NOTICE OF MOTION AND MOTION TO
COMPEL DISCOVERY RELATING TO APPLE’S
AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

1

Indeed, Samsung’s custodial metadata supplied along with its productions indicates that there

2

have been zero documents produced from the files of 15 of its 32 inventors, and just a handful of

3

documents produced for several others. The total number of documents produced from inventors

4

is 2,354, broken down by inventor as follows:

5
6

Samsung Inventor

7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27

Youn-Hyoung Heo
Ju-Ho Lee
Joon-Young Cho
Young-Bum Kim
Yong-Jun Kwak
Soeng-Hun Kim
Gert-Jan Van Lieshout
Himke Van Der Velde
Jae-Yoel Kim
Hee-Won Kang
Hun-Kee Kim
Gin-Kyn Choi
Jae-Seung Yoon
Noh-Sun Kim
Jun-Sung Lee
Yong-Suk Moon
Hye-Young Lee
Se-Hyoung Kim
Min-Goo Kim
Beong-Jo Kim
Soon-Jae Choi
Chang-Soo Park
Joong-Ho Jeong
Hyeon-Woo Lee
Young-Hwan Lee
Pyung-soo Kim
Hyuk-soo Son
Sung-ho Eun
Jae-Min Kim

Number of
Documents
Produced from
Inventor’s Files
0
663
175
85
125
293
129
152
68
0
38
0
5
12
0
0
0
0
309
0
11
157
0
91
0
0
0
0
0

28

3

APPLE INC.’S NOTICE OF MOTION AND MOTION TO
COMPEL DISCOVERY RELATING TO APPLE’S
AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

1
2

Samsung Inventor

3

Number of
Documents
Produced from
Inventor’s Files

Jeong-Seok Oh
Sang-Ryul Park
Moon-Sang Jeong
TOTAL DOCUMENTS

4
5

0
17
24
2354

6
7
8

(Maselli Decl. at ¶ 4.)
Apple has asked Samsung to remedy the deficiencies in its inventor collection

9

methodology and search terms on multiple occasions, and Samsung has refused, including at the

10

lead counsel in-person meeting between the parties. Accordingly, Apple seeks an order directing

11

Samsung to remedy these deficiencies on an expedited basis by conducting a thorough and

12

comprehensive collection of documents from its inventor files, and then making complete

13

production of relevant documents from those files (using a complete set of search terms).

14

B.

Samsung’s Inventor Documents Are Relevant and Discoverable.

15

There can be no doubt that documents from the files of the named inventors of the

16

Samsung patents-in-suit are relevant and discoverable. Such documents likely describe the

17

conception and reduction to practice of the asserted patents, and may be relevant to potential

18

inequitable conduct claims. To the extent that inventors participated in activities before SSOs,

19

there may also be documents in the inventors’ files that bear on Apple’s counterclaims stemming

20

from Samsung’s SSO-related activities. See Section IV supra. Samsung itself has

21

acknowledged the relevance of inventor files in its Motion to Compel Production of Documents

22

and Things and Responsive Answers to Propounded Discovery (“Samsung’s Motion to

23

Compel”), filed December 12, 2011 (Dkt. 483), in which it argued that materials in Apple

24

inventor files were “obviously central to the issues in this action, including anticipation,

25

obviousness . . .” See Samsung’s Motion to Compel, p. 15.

26
27

Pursuant to this Court’s Local Rules, a motion to compel must “show how the
proportionality and other requirements of Fed. R. Civ. P. 26(b)(2) are satisfied.” See Civil L. R.

28

4

APPLE INC.’S NOTICE OF MOTION AND MOTION TO
COMPEL DISCOVERY RELATING TO APPLE’S
AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

1

37-2. The proportionality requirement of Local Rule 37-2 is easily satisfied here, as the burden

2

on Samsung in producing the requested documents does not outweigh the probative value.

3

These documents are plainly relevant. Additionally, there is no legitimate dispute that Samsung

4

has the resources to produce these documents on a timely basis, particularly given that Samsung

5

has already agreed to produce relevant, non-privileged documents.

6

C.

Samsung’s Manner of Collecting from Its Inventors Was Deficient.

7

The deposition testimony from Samsung’s named inventors confirms that Samsung’s

8

counsel placed undue reliance on its inventors to search for, identify, and collect documents from

9

their own files, which they have appeared to have done, at best, in an incomplete and non-

10
11

systematic fashion. For example:
•

12
13
14
15
16

•

17
18
19
20
21
22
23
24

•

25
26
27
28

5

APPLE INC.’S NOTICE OF MOTION AND MOTION TO
COMPEL DISCOVERY RELATING TO APPLE’S
AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

1

•

2
3
4
5

•

6
7
8
9

In response to these and other revelations from the inventor depositions, Apple requested

10

more information about the manner in which Samsung conducted its searches. Apple sent

11

Samsung letters on December 2 and 6 raising concerns it had with Samsung’s collection of

12

inventor documents. (See Maselli Decl., Ex. H (Dec. 2 Letter Maselli to Kassabian); Id., Ex. I

13

(Dec. 6 Letter Maselli to Kassabian).) In these letters, Apple requested the following specific

14

information:

15
16
17

(i) Were additional searches of the files of these witness conducted in addition to
the self-searches described in their depositions? If the answer is yes, provide
details regarding the searching that was performed (including, for each witness, a
description of which hard-copy documents and electronic depositories were
searched, whether e-mails (and attachments to e-mails) were searched, and the
search terms utilized);

18
19
20
21
22
23
24
25
26

(ii) Whether the self-searching methodology described in the aforementioned
testimony has been the standard method employed by Samsung in its search for
and collection of custodial documents from inventors still employed by Samsung;
and
(iii) Provide a description of the inventor self-searches, including, for each
witness, (a) explain whether the witness searched for both hard-copy and
electronic documents, (b) list the electronic repositories that were searched (e.g.,
desk-top computer, lap-top computer, external hard-drives, shared-drives,
dedicated servers, etc.), (c) for each repository searched, provide a list of the
search terms employed and an explanation how the contents of the repository
were searched (e.g., were searches conducted of document metadata only? Were
searches conducted of the content of all the documents in the repository? Were
searches conducted of the content of only some of the documents in the repository
(e.g., Word documents searched, PDF’s not searched?, etc.), and (d) explain
whether the witness searched any repositories containing e-mail, and, if so,
whether the search of the repository included a search of e-mail attachments.

27
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6

APPLE INC.’S NOTICE OF MOTION AND MOTION TO
COMPEL DISCOVERY RELATING TO APPLE’S
AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

1

Apple continued to follow up on the issue of the deficiency of Samsung’s inventor collection in

2

letters and during meet-and-confer teleconferences as well as the in-person lead counsel meeting.

3

(Maselli Dec., Ex. Z (Dec. 5 Letter Mazza to Kassabian); Id., Ex. AA (Dec. 24 Letter Mazza to

4

Hutnyan).) In response to these inquiries, Samsung asserted that its collections were sufficient,

5

but failed to provide the information requested above. (See Maselli Decl., Ex. J (Dec. 6 Letter

6

Jenkins to Maselli); Id., Ex. K (Dec. 20 Letter Jenkins to Maselli).) Nor has Samsung provided

7

any details regarding any additional searches performed beyond the inventors’ “self-searches.”

8

This manner of unguided self-searching is clearly insufficient. See Play Visions, Inc. v.

9

Dollar Tree Stores, Inc., No. C09-1769, 2011 WL 2292326, at *6 (W.D. Wash. June 8, 2011)

10

(imposing sanctions for, among other reasons, “counsel’s failure to assist and guide his client’s

11

production of discovery responses.”); Wachtel v. Health Net, Inc., 239 F.R.D. 81, 82 (D.N.J.

12

2006) (granting sanctions where defendant “relied on the specified business people within the

13

company to search and turn over whatever documents they thought were responsive, without

14

verifying that the searches were sufficient”); Jones v. Bremen High School District 228, No. 08

15

C 3548, 2010 WL 2106640, at *7 (N.D. Ill. May 25, 2010) (finding unreasonable that defendant

16

directed employees “to search their own email without help from counsel” and allowed them “to

17

make the decision about the relevance of such documents, especially when those same

18

employees have the ability to permanently delete unfavorable email from a party’s system.”).

19

“Most non-lawyer employees . . . do not have enough knowledge of the applicable law to

20

correctly recognize which documents are relevant to a lawsuit and which are not.” Jones, 2010

21

WL 2106640, at *7. Samsung’s reliance on inventor self-searching is particularly suspect here

22

because several of the inventors in question are expressly accused of misconduct before SSOs in

23

Apple’s amended counterclaims in reply (see Section IV(A) below), and, as such, Samsung’s

24

counsel is improperly relying on these inventors to turn over evidence of their own misconduct.

25

See id. (finding it improper for a party’s employees “to make the decision about the relevance of

26

such documents, especially when those same employees have the ability to permanently delete

27

unfavorable email from a party’s system”). Accordingly, the Court should order Samsung to

28

7

APPLE INC.’S NOTICE OF MOTION AND MOTION TO
COMPEL DISCOVERY RELATING TO APPLE’S
AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

1

conduct new, systematic searches for responsive documents, under the guidance of counsel with

2

the search terms described in Section III(D) below, and to produce the responsive documents by

3

January 23, 2012.

4

D.

5

The Search Terms Used by Samsung to Search Its Inventors’ Files Are
Insufficient.

The overly narrow search terms employed to by Samsung to search the files of its named
6
inventors (identified by Samsung in its “transparency disclosures” of December 1, 2011) are a
7
further deficiency in its inventor production. The searches employed by the inventors are
8
deficient in at least the following respects:
9

•

Inadequate Searches Employing SSO-Related Search Terms: Despite the fact that
many of the inventors were involved in Samsung’s activities before standards setting
organizations, Samsung did not search most inventor files using SSO-related terms.

•

12

No Searches Using Korean Search Terms: According to the disclosures served by
Samsung on December 1, with the exception of the single term (“interleaver”), no Korean
language search terms were run for any of the inventors’ electronic files. (Maselli Decl.,
Ex. L.) Since nearly all of the inventors are native Korean speakers (and indeed were
deposed through a Korean translator), it is logical to assume that many, if not most,
responsive documents are likely to be in Korean.4

•

11

No Searches for Two of the Asserted Patents: No searches have been conducted
whatsoever for two of Samsung’s asserted patents, the ‘055 and ‘871 patents. Instead,
Samsung claims those searches will be conducted at some undefined future time.

•

10

Inadequate Searches Using Patent-Specific Search Terms: The search terms for ten
of Samsung’s asserted patents (the ‘711, ‘460, ‘893, ‘516, ‘001, ‘941, ‘604, ‘410, ‘792,
and ‘867 patents) fail to include either obviously-relevant and patent-specific terms, or
commonly-used variants of patent-specific terms.

13
14
15
16
17
18
19

Apple identified these deficiencies by letter dated December 13, 2011, and included in its

20
21

correspondence a set of supplemental search terms which Apple believed would remedy these

22

deficiencies and lead to a more complete production of responsive materials from the Samsung

23

inventor files. (Maselli Decl., Ex. M (Dec. 13, 2011 Letter Kolovos to Maroulis and

24
4

25
26
27

In a letter dated January 6, Samsung asserted (for the first time) that “Korean equivalents of the
search terms [were] applied to the inventors’ files whenever it was necessary or appropriate.”
(Maselli Decl., Ex. N (Jan. 6 Letter Jenkins to Kolovos).) Given that this was inconsistent with
the information in Samsung's December 1 disclosures, Apple asked Samsung to disclose which
search terms other than “interleaver” (if any) were also run using an equivalent Korean term.
(Maselli Decl., Ex. O (Jan. 7 E-Mail Kolovos to Jenkins).) Samsung has not responded.

28

8

APPLE INC.’S NOTICE OF MOTION AND MOTION TO
COMPEL DISCOVERY RELATING TO APPLE’S
AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

1

Kassabian).) Though Samsung took several weeks to respond to Apple’s letter, it did not agree

2

to supplement any of its searches using additional terms. (Maselli Decl., Ex. N (Jan. 6, 2012

3

Letter Jenkins to Kolovos).) Nor did Samsung agree at the lead counsel in-person meeting to use

4

any additional search terms.
Samsung’s use of grossly insufficient search terms likely has limited its production to a

5
6

fraction of the responsive materials that should have been produced, and may explain the paucity

7

of Samsung’s inventor production. Accordingly, the Court should order Samsung to conduct

8

new searches of its inventor documents, once properly collected, using a more robust set of

9

search terms. The search terms proposed by Apple are set forth in its proposed Order (which

10

tracks the search terms proposed by Apple in its correspondence with Samsung).

11

IV.

12

THE COURT SHOULD ORDER SAMSUNG TO COMPLETE PRODUCTION OF
DOCUMENTS REFLECTING ITS ACTIVITIES BEFORE STANDARDS
SETTING ORGANIZATIONS BY JANUARY 23, 2012.5

13

A.

14

In this action, Samsung asserts that Apple infringes twelve patents, including seven

Background.

15

patents that Samsung has declared “essential” to the European Telecommunications Standards

16

Institute (“ETSI”), a leading wireless communications standards setting organization. ETSI is

17

part of a telecommunications industry collaboration called the Third Generation Partnership

18

Project (“3GPP”); 3GPP has developed the UMTS (Universal Mobile Telecommunications

19

System) telecommunications standard. Samsung has declared seven of the twelve patents that it

20

has asserted against Apple in this action as essential to the UMTS standard (the “declared-

21

essential patents”).6

22

Apple’s Amended Counterclaims in Reply (Dkt. 381), filed on November 8, 2011,

23

include affirmative defenses that Samsung’s patents are unenforceable, and counterclaims

24

against Samsung for breach of contract, promissory estoppel, violation of the Sherman Act, and

25

5

26
27

The documents discussed in this section are responsive to one or more of the following
Requests for Production: Nos. 137, 142, 144.
6
The seven patents are U.S. Patent Nos. 7,447,516, 7,200,792, 6,928,604, 7,386,001, 7,050,410,
7,675,941 and 7,362,867.

28

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APPLE INC.’S NOTICE OF MOTION AND MOTION TO
COMPEL DISCOVERY RELATING TO APPLE’S
AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

1

unfair competition under Cal. Bus. & Prof. Code. Apple also seeks a declaration that Apple is

2

licensed to Samsung’s declared-essential patents.7
Apple’s Amended Counterclaims assert, inter alia, that Samsung deliberately and

3
4

deceptively failed to disclose to ETSI and 3GPP in a timely fashion the intellectual property

5

rights (“IPR”) that Samsung now claims are essential to the UMTS standard, and that Samsung

6

delayed this disclosure in order to encourage the incorporation of Samsung’s technologies into

7

the standard. See Amended Counterclaims ¶¶ 44, 57. In particular, Apple asserts that Samsung

8

personnel frequently participated in 3GPP working groups during the relevant timeframe (1999-

9

2005), championed Samsung’s technical proposals, affirmatively steered the SSOs to adopt

10

Samsung’s technical proposals, and then disclosed Samsung’s IPR only after the relevant

11

standard or technical specification was finalized. Id. Apple’s Amended Counterclaims provide

12

specific instances for each declared-essential patent where Samsung personnel (including named

13

inventors of the patents in suit) made presentations to 3GPP working groups in support of the

14

adoption of Samsung technology in the standard, without disclosing (as required by ETSI policy)

15

that Samsung was already pursuing patent protection for that technology. See id. at ¶ 57(a)-(g).8

16

1.

17

Samsung Witness Testimony Establishes the Sources of Potentially
Relevant Documents Regarding Samsung’s Participation in Standards
Setting Organizations.

18

To date, Apple has taken the depositions of twenty-four Samsung inventors, several of

19

whom were involved in presentations made by Samsung to 3GPP working groups. Several of

20

these inventors testified about Samsung’s involvement in ETSI and the development of the

21
22
23
24
25
26
27

7

These counterclaims were also all included in Apple’s original Counterclaims in Reply filed on
July 21. Apple also seeks a declaratory judgment of non-infringement and invalidity for each
patent asserted by Samsung.
8
As further outlined in Apple’s counterclaims, individuals at Samsung made false promises to
standards-setting organizations regarding the licensing of its standards-essential patents.
Specifically, Samsung disclosed its asserted patents and falsely promised to license these patents
on fair, reasonable, and non-discriminatory (“FRAND”) terms in declarations signed by various
Samsung representatives. See Apple’s Amended Counterclaims in Reply, ¶ 44 (“Samsung did
not intend to meet its FRAND commitments”); ¶ 47 (alleging Samsung’s “intentional failure to
disclose to the 3GPP that it would not offer to all UMTS implementers FRAND license terms”).

28

10

APPLE INC.’S NOTICE OF MOTION AND MOTION TO
COMPEL DISCOVERY RELATING TO APPLE’S
AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

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UMTS standard, and further identified the groups within Samsung with responsibility in those

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areas. These witnesses established at least the following about Samsung’s participation in SSOs:

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APPLE INC.’S NOTICE OF MOTION AND MOTION TO
COMPEL DISCOVERY RELATING TO APPLE’S
AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

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2.

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Samsung Has Not Made a Complete Production Of Documents Relating
to Its Participation in Standards Setting Organizations, and Has Not
Committed to Remedy this Deficiency in a Timely Manner.

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The deposition testimony obtained by Apple to date confirms that Samsung’s production

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of documents relating to its participation in ETSI/3GPP is woefully inadequate, as it has

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consisted mostly of publicly-available documents, as well as a limited production from certain

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inventor files. Samsung’s SSO production is deficient in at least three ways:

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First, Samsung has not produced any policies or procedures (or equivalent documents)
relating to Samsung’s understanding of and/or compliance with ETSI and/or 3GPP
disclosure requirements.

•

Second, Samsung has not produced entire categories of documents related to its
participation in ETSI and the 3GPP, including: internal reports concerning Samsung
employees’ attendance at 3GPP meetings, meeting minutes and other documents
prepared for or during internal meetings held to improve proposals to be submitted to
3GPP standards meetings, draft agendas, draft proposals, PowerPoint presentations, and
email correspondence.

•

Third, Samsung has not produced documents from the files of many witnesses likely to
have discoverable SSO information. Indeed, it appears that the only SSO documents
produced by Samsung thus far bearing bates-numbers for this action have come from the
files of inventors.

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12

APPLE INC.’S NOTICE OF MOTION AND MOTION TO
COMPEL DISCOVERY RELATING TO APPLE’S
AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

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While Samsung’s production of SSO-related documents is thus plainly deficient, it has
been unwilling to remedy this deficiency in a timely manner. Apple sent letters detailing
particular deficiencies in Samsung’s SSO document production, and demanding a substantially
complete production of SSO documents, on November 8, 15, 18, 20, 23, and December 5 and 24,
2011. (See id., at ¶ 15.) In its responses, Samsung has refused to make a substantially complete
production of SSO documents, including ETSI and 3GPP documents. (See, e.g., id., Ex. BB (Oct.
21 Letter Chan to Walden); Id., Ex. CC (Nov. 20 Letter Kassabian to Maselli and Mazza).)
Instead, in a December 6, 2011 letter, Samsung stated that it “views these [SSO] documents as
largely within the scope of the reciprocal agreement currently being negotiated between the
parties . . . the scope of Samsung’s production of these documents will depend on the parties’
agreement.” (See id., Ex. DD (Dec. 6 Letter Chan to Walden).) The “reciprocal agreement”
referred to by Samsung is a draft agreement the parties have been negotiating that would obligate
both sides to produce particular categories of documents. However, when Samsung proposed a
“reciprocal” category for the production of SSO documents, it limited its proposal to public
documents directly disclosed to ETSI only.9 (See id., Ex. FF (Dec. 13 Email Chan to Mazza and
attached redline to Exhibit B).) Although Samsung has offered at the eleventh hour to produce

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On the parties’ meet-and-confer teleconferences, and during the lead counsel in-person
meeting, Samsung has similarly been unwilling to commit to producing anything other than
publicly-available SSO documents. (Maselli Decl. ¶ 19 (Nov. 16, Nov. 30, Dec. 7 and Dec. 21
meet and confers).)

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13

APPLE INC.’S NOTICE OF MOTION AND MOTION TO
COMPEL DISCOVERY RELATING TO APPLE’S
AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

1
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(Maselli Dec., Ex. EE), Samsung's proposal is still deficient in several significant ways:
•

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Samsung has not agreed to produce documents which show the structure of the
departments or teams at Samsung that work on SSO-related issues so that Apple may
identify pertinent fact witnesses to depose; and

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Samsung has not agreed to produce documents which show its general policies and/or
practices with regard to the disclosure of purportedly essential IPR to ETSI and 3GPP;

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Samsung has not agreed to produce documents related to Samsung's decision to disclose
(or not to disclose) the patents-in-suit to ETSI and 3GPP.

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Finally, Samsung has not expressly agreed that its production of SSO documents will
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extend beyond the files of Samsung's named inventors. For at least these reasons, Samsung's
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proposal is inadequate.
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B.

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Samsung’s Documents Related to Its Participation in Standards Setting
Organizations are Relevant and Discoverable.

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The ETSI/3GPP documents requested above are discoverable because they are relevant at
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least to Apple’s affirmative defenses that Samsung’s patents are unenforceable, as well as many
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of Apple’s counterclaims in reply. As detailed in Section IV(A) above, Apple’s amended
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counterclaims incorporate several specific factual allegations regarding SSO-related misconduct
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by Samsung and its employees. The testimony of Samsung’s inventors has thus far provided
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additional support for these allegations. See Section IV(A)(1) above. Accordingly, there can be
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little doubt that documents related to Samsung’s standards-setting activities are relevant and that
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Samsung is obligated to produce them.10 See, e.g., In Re Rambus Inc., 7 Fed. Appx. 925, 926

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(Fed. Cir. 2001) (denying petition for writ of mandamus regarding district court order granting
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motion to compel production of documents related to the disclosure of intellectual property
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The proportionality requirement of Local Rule 37-2 is easily satisfied here, as the burden on
Samsung in producing the requested documents does not outweigh the probative value. By
asserting patents which are purportedly essential to the UMTS standard against Apple, Samsung
has made its activities regarding the adoption of those standards a core issue in this litigation.
Additionally, there is no legitimate dispute that Samsung has the resources to produce these
documents on a timely basis, particularly given that Samsung has already agreed to produce
relevant, non-privileged documents.

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14

APPLE INC.’S NOTICE OF MOTION AND MOTION TO
COMPEL DISCOVERY RELATING TO APPLE’S
AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

1

rights to an SSO); LG Elecs., Inc. v. Motorola, Inc., No. 10-CV-3179, 2010 U.S. Dist. LEXIS

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79047, *9-10 (N.D. Ill. Aug. 5, 2010) (granting motion to compel production of documents

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pertaining to standards-setting activities); SmithKline Beecham Corp. v. Apotex Corp., No. 99-

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CV-4304, 2006 U.S. Dist. LEXIS 4276, *9-*11 (E.D. Pa. Jan. 31, 2006) (granting motion to

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compel production of communications with standards-setting organization because “[i]t is clear

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that communications between a corporation and a standards-setting organization can form the

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basis of an antitrust claim”) (citing Allied Tube & Conduit Corp. v. Indian Head, Inc., 486 U.S.

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492, 499-500 (1988).

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C.

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Samsung Should Be Ordered to Complete Production of Its Standards
Setting Organization Documents by January 23, 2012.

Fact discovery closes on March 8, 2012. Apple thus has approximately eight weeks to

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receive Samsung’s document production, identify witnesses, depose them, and determine

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whether further discovery is necessary and warranted. Indeed, the effects of any further delays

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in the production of relevant documents in this case are likely to be exacerbated because many of

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Samsung’s relevant documents may be produced in Korean and will therefore need to be

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translated. Apple cannot fairly develop its case if Samsung does not produce its SSO-related

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documents on a timely basis, including its internal policies, drafts proposals, and internal

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communications concerning Samsung’s participation in SSO’s and its decisions when, and when

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not, to disclose technology and IPR to SSO’s. Thus, Samsung should be ordered to complete

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production of SSO documents by January 23, 2012.

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V.

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THE COURT SHOULD ORDER SAMSUNG TO COMPLETE PRODUCTION OF
LICENSES AND LICENSE NEGOTIATION DOCUMENTS BY JANUARY 23,
2012.11

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A.

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Apple’s document requests, as narrowed through the meet and confer process, seek: (1)

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Background.

executed license agreements (only) for those licenses to relevant technologies that cover only

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The documents discussed in this section are responsive to one or more of the following
Requests for Production: Nos. 119, 120.

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15

APPLE INC.’S NOTICE OF MOTION AND MOTION TO
COMPEL DISCOVERY RELATING TO APPLE’S
AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

1

patents that have not been declared “essential” to a standards body; and (2) license agreements

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and license negotiation documents relating to patents that Samsung has declared essential to the

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ETSI and/or 3GPP standards. (See Maselli Decl. at ¶ 20; Id., Ex. A (Apple’s Document

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Requests); Id., Ex. FF (Dec. 13 Email Chan to Mazza and attached redline of Apple’s Exhibit

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A).)

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Despite Apple’s requests, Samsung has not yet made a substantial production of

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documents reflecting the negotiation of licenses to patents that have been declared essential to

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ETSI and/or 3GPP standards. As with the SSO documents, Apple has repeatedly requested that

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Samsung provide a date certain by which it will complete its production of patent licensing

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negotiation documents. (Maselli Decl., Ex. Z (Dec. 5 Letter Mazza to Kassabian); Id., Ex. AA

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(Dec. 24 Letter Mazza to Huntyan).) Apple also proposed that the parties reach agreement on a

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reciprocal production in this regard of (1) executed license agreements (only) for those licenses

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(in the relevant technologies) that cover only patents that have not been declared “essential” to a

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standards body; and (2) license agreements and license negotiation documents relating to patents

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that Samsung has declared standards essential to ETSI and/or 3GPP. (See id., Ex. FF (Dec. 13

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Email Chan to Mazza and attached redline of Apple’s Exhibit A).) In response, Samsung

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proposed a reciprocal production only of executed licenses to the patents-in-suit, and struck out

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any reciprocal obligation to produce documents reflecting patent license negotiations. (See id..)

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Similarly, during the parties’ meet-and-confer teleconferences, and at the lead counsel in-person

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meeting, Samsung has been unwilling to commit to producing anything other than executed

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licenses. (Maselli Decl. ¶ 21 (Nov. 16, Nov. 30, Dec. 7, and Dec. 21 meet and confers).) While

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Samsung's latest proposal (sent the evening this Motion was filed)

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(See Maselli Dec., Ex. EE.)

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16

APPLE INC.’S NOTICE OF MOTION AND MOTION TO
COMPEL DISCOVERY RELATING TO APPLE’S
AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

1

B.

Samsung’s Licenses and Licenses Negotiation Documents are Relevant and
Discoverable.

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Documents reflecting Samsung’s licenses covering declared-essential patents and the

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related license negotiations are plainly relevant to Apple’s affirmative defenses and to the

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calculation of a reasonable royalty. First, licenses and documents reflecting negotiations of

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licenses to the asserted patents may reflect Samsung’s (or its counterparty’s) understanding of

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the breadth of the licenses granted to the patents in suit, and thus bear directly on Apple’s

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defenses that the Samsung patents-in-suit are unenforceable against Apple by virtue of an

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express or implied license or other exhaustion of rights. See, e.g., Dkt. 381, ¶ 196; see also

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Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617, 625 (2008) (the first authorized

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sale of a patented item terminates all patent rights to that item).

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Second, documents reflecting patent license negotiations for declared-essential patents

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(even declared-essential patents not asserted in this action) are relevant to the determination of an

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appropriate “Fair, Reasonable, and Non-Discriminatory” (FRAND) royalty rate, if any. This

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Court has recognized on several occasions that license agreements and documents related to the

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negotiation of license agreements are relevant, particularly if they predate the litigation. See,

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e.g., C&C Jewelry Mfg. v. West, No. C09-01303, 2010 U.S. Dist. LEXIS 110587, at *6 (N.D.

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Cal. Oct. 7, 2010) (granting motion to compel production of all documents related to the

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licensing of the patents-in-suit, including documents pertaining to licenses granted to third

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parties); Phoenix Sols. Inc. v. Wells Fargo Bank, N.A., 254 F.R.D. 568, 582 (N.D. Cal. 2008)

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(granting motion to compel production of communications with third parties related to the

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licensing of the patents-in-suit in part because such communications were relevant to the

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calculation of damages and what the patent owner perceived to be a reasonable royalty rate);

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Sorensen v. Lexar Media Inc., No. C 08-0095, 2008 U.S. Dist. LEXIS 105503, at *6-*7 (N.D.

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Cal. Dec. 22, 2008) (granting motion to compel production of draft licensing agreements because

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they “could have relevance on the damages question of what constitutes a reasonable royalty”).

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17

APPLE INC.’S NOTICE OF MOTION AND MOTION TO
COMPEL DISCOVERY RELATING TO APPLE’S
AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

1

Accordingly, the documents sought will be relevant to the calculation of any alleged damages

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and to the determination of a FRAND royalty rate, if any, for the declared-essential patents.
While there can be no legitimate dispute that the negotiation documents sought by Apple

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are highly relevant and discoverable, the burden on Samsung in producing the requested

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documents does not outweigh the probative value of these documents. See Atmel Corp. v.

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Authentec Inc., No. C-06-02138, 2008 U.S. Dist. LEXIS 10850, at *4 (N.D. Cal. Jan. 31, 2008)

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(granting motion to compel production of all relevant licensing agreements, including those that

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“do not involve the precise patents-in-suit”). There is no legitimate dispute that Samsung has the

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resources to produce these documents on a timely basis, and the Court should order Samsung to

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do so. Given the looming fact discovery deadline and Apple’s need to review any license

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production in advance of completing its depositions of the appropriate Samsung personnel, the

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Court should order Samsung to complete production of licenses and licensing negotiation

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documents by January 23, 2012.

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VI.

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CONCLUSION
For the foregoing reasons, Apple respectfully requests that the Court grant its Motion to

Compel Discovery from Samsung.

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APPLE INC.’S NOTICE OF MOTION AND MOTION TO
COMPEL DISCOVERY RELATING TO APPLE’S
AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

1

Dated: January 10, 2012

/s/ Mark D. Selwyn
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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William F. Lee (admitted pro hac vice)
([e-mail])
WILMER CUTLER PICKERING
HALE AND DORR LLP
60 State Street
Boston, Massachusetts 02109
Telephone: [phone]
Facsimile: [phone]

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Harold J. McElhinny (SBN 66781)
([e-mail])
Michael A. Jacobs (SBN 111664)
([e-mail])
Richard S.J. Hung (CA SBN 197425)
[e-mail]
MORRISON & FOERSTER LLP
425 Market Street
San Francisco, California 94105
Telephone: ( 415) 268-7000
Facsimile: [phone]

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Attorneys for Plaintiff and
Counterclaim-Defendant Apple Inc.

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APPLE INC.’S NOTICE OF MOTION AND MOTION TO
COMPEL DISCOVERY RELATING TO APPLE’S
AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)

1
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CERTIFICATE OF SERVICE
The undersigned hereby certifies that a true and correct copy of the above and foregoing
document has been served on January 10, 2012 by electronic mail upon the following:

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Charles Kramer Verhoeven (Cal. Bar No. 170151)
([e-mail])
Quinn Emanuel Urquhart & Sullivan LLP
50 California Street, 22nd Floor
San Francisco, California 94111
Telephone: [phone]
Facsimile: [phone]
Kevin P.B. Johnson (Cal. Bar No. 177129)
([e-mail])
Victoria F. Maroulis (Cal. Bar No. 202603)
([e-mail])
Quinn Emanuel Urquhart & Sullivan LLP
555 Twin Dolphin Drive 5th Floor
Redwood Shores, California 94065
Telephone: [phone]
Facsimile: [phone]

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Edward J. DeFranco (Cal. Bar No. 165596)
([e-mail])
Quinn Emanuel Urquhart & Sullivan LLP
51 Madison Avenue, 22nd Floor
New York, New York 10010
Telephone: [phone]
Facsimile: [phone]
Michael T. Zeller (Cal. Bar No. 196417)
([e-mail])
Quinn Emanuel Urquhart & Sullivan LLP
865 S. Figueroa St., 10th Floor
Los Angeles, California 90017
Telephone: [phone]
Facsimile: [phone]

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/s/ Mark. D Selwyn
Mark D. Selwyn

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20

APPLE INC.’S NOTICE OF MOTION AND MOTION TO
COMPEL DISCOVERY RELATING TO APPLE’S
AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
Case No. 11-cv-01846 (LHK)