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]

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]

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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,
Plaintiff,
vs.

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Date: TBA
Time: TBA

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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DECLARATION OF SAMUEL J.
MASELLI IN SUPPORT OF APPLE
INC.’S NOTICE OF MOTION AND
MOTION TO COMPEL DISCOVERY
RELATING TO APPLE’S AFFIRMATIVE
DEFENSES AND COUNTERCLAIMS

Defendants.

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Civil Action No. 11-CV-01846-LHK

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,

ORAL ARGUMENT REQUESTED
PUBLIC REDACTED VERSION

Counterclaim-Plaintiffs,
v.
APPLE INC., a California corporation,
Counterclaim-Defendant.

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DECLARATION OF SAMUEL J. MASELLI IN
SUPPORT OF APPLE’S MOTION TO COMPEL
Case No. 11-cv-01846 (LHK)

I, Samuel J. Maselli, hereby declare as follows:

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1.

I am an attorney at the law firm of Wilmer Cutler Pickering Hale and Dorr LLP,

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counsel for Apple Inc. (“Apple”) in the above-referenced litigation. I am licensed to practice law

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in the State of California, and am admitted to practice before the U.S. District Court for the

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Northern District of California. I am familiar with the facts set forth herein, and, if called as a

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witness, I could and would testify competently to those facts under oath.

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2.

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Production of Documents and Things dated August 3, 2011.

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Attached as Exhibit A is a true and correct copy of Apple’s Requests for

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Attached as Exhibit B is a true and correct copy of Samsung’s Objections and

Responses to Apple’s Requests for Production of Documents and Things dated September 8,

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2011.
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DECLARATION OF SAMUEL J. MASELLI IN
SUPPORT OF APPLE’S MOTION TO COMPEL
Case No. 11-cv-01846 (LHK)

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I.

Samsung Inventor Collection and Production

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4.

The custodial metadata provided by Samsung indicates that the following

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numbers of documents were produced for the named inventors of Samsung’s patents-in-suit:

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Number of
Documents
Produced from
Inventor’s Files

Samsung Inventor

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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
Jeong-Seok Oh

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663
175
85
125
293
129
152
68
0
38
0
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12
0
0
0
0
309
0
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157
0
91
0
0
0
0
0
0

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DECLARATION OF SAMUEL J. MASELLI IN
SUPPORT OF APPLE’S MOTION TO COMPEL
Case No. 11-cv-01846 (LHK)

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Number of
Documents
Produced from
Inventor’s Files

Samsung Inventor

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Sang-Ryul Park
Moon-Sang Jeong
TOTAL DOCUMENTS

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2354

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5.

In their depositions, several Samsung inventors, including Joon Young Cho, Jae-

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Seung Yoon, Juho Lee, Gert-Jan Van Lieshout, and Jeong-Seok Oh, described the manner in

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which they searched for documents in connection with this case. Attached as Exhibit C is a true

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and correct copy of excerpts from the transcript of the deposition of Joon Young Cho. Attached

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as Exhibit D is a true and correct copy of excerpts from the transcript of the deposition of Jae-

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Seung Yoon. Attached as Exhibit E is a true and correct copy of an excerpt from the transcript
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of the deposition of Juho Lee. Attached as Exhibit F is a true and correct copy of excerpts from

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the transcript of the deposition of Gert-Jan Van Lieshout. Attached as Exhibit G is a true and

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correct copy of excerpts from the transcript of the deposition of Jeong-Seok Oh.

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6.

In discovery correspondence, Apple detailed what it believes to be deficiencies in

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Samsung’s inventor collection, and asked for more information about the manner in which

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Samsung conducted its searches. Attached as Exhibit H is a true and correct copy of a letter sent

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from me to Rachel H. Kassabian dated December 2, 2011 discussing inventor collection.

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Attached as Exhibit I is a true and correct copy of a letter sent from me to Rachel H. Kassabian

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dated December 6, 2011 also discussing inventor collection.

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7.

Samsung did not provide the specific information requested in my December 2

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and December 6, 2011 letters when it responded on December 6 and December 20, 2011.

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Attached as Exhibit J is a true and correct copy of a letter sent from Sara Jenkins to Sam Maselli

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DECLARATION OF SAMUEL J. MASELLI IN
SUPPORT OF APPLE’S MOTION TO COMPEL
Case No. 11-cv-01846 (LHK)

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dated December 6, 2011. Attached as Exhibit K is a true and correct copy of a letter sent from

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Sara Jenkins to Sam Maselli dated December 20, 2011.

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8.

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Attached as Exhibit L is a true and correct copy of Samsung’s First Amended and

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Supplemental Identification of Custodians, Litigation Hold Notices, and Search Terms, which

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was served on Apple on December 1, 2011. This document provides the search terms that were

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employed to search the files of Samsung’s named inventors.

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9.

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On December 13, 2011, Apple identified deficiencies in the search terms

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employed by Samsung’s inventors, and included a set of supplemental search terms which Apple

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believes would remedy these deficiencies. Attached as Exhibit M is a true and correct copy of a

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letter sent from Peter Kolovos to Victoria Maroulis and Rachel Kassabian dated December 13,

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2011.

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10.

Samsung took more than three weeks to respond to Mr. Kolovos’ December 13,

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2011 letter, and in its response, Samsung did not agree to conduct any additional searches

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employing any of the search terms suggested by Apple. Attached as Exhibit N is a true and

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correct copy of a letter sent from Sara Jenkins to Peter Kolovos dated January 6, 2012

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responding to Mr. Kolovos’ December 13, 2011 letter.

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Ms. Jenkins’ January 6, 2012 letter asserted (for the first time) that “Korean

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equivalents of the search terms [were] applied to the inventors’ files whenever it was necessary

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or appropriate.” (Exhibit L.) Attached as Exhibit O is a true and correct copy of an email sent

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from Peter Kolovos to Sara Jenkins dated January 7, 2012 seeking clarification on the issue of

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which Korean equivalents of search terms were applied by Samsung.
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DECLARATION OF SAMUEL J. MASELLI IN
SUPPORT OF APPLE’S MOTION TO COMPEL
Case No. 11-cv-01846 (LHK)

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II.

Samsung Production of Documents Relating to Standards Setting
Organizations

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Apple has asserted counterclaims in this action that pertain to Samsung’s

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activities before the European Telecommunications Standards Institute (“ETSI”) and the Third

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Generation Partnership Project (“3GPP”).

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13.

Information about the number and types of 3GPP meetings that took place

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previously, and technology proposals made by Samsung and other companies at those meetings,
can be found at, among other places, the following two IP addresses:

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http://www.3gpp.org/ftp/Specs/html-info/Meetings-R1.htm;

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http://ftp.3gpp.org/tsg_ran/WG1_RL1/

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Several Samsung inventors testified about Samsung’s participation in standards

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setting organizations, ETSI, and the 3GPP, as well as the types of documents generated at

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Samsung relating to its participation. Attached as Exhibit P is a true and correct copy of excerpts

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from the transcript of the deposition of Soeng-Hun Kim. Attached as Exhibit Q is a true and

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correct copy of excerpts from the transcript of the deposition of Hyeon Woo Lee. Attached as

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Exhibit R is a true and correct copy of excerpts from the transcript of the deposition of Himke
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Van Der Velde. Attached as Exhibit S is a true and correct copy of excerpts from the transcript

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of the deposition of Young Bum Kim. Attached as Exhibit T is a true and correct copy of

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excerpts from the transcript of the deposition of Yong-Jun Kwak. Attached as Exhibit C is a true

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and correct copy of excerpts from the transcript of the deposition of Joon Young Cho. Attached

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as Exhibit E is a true and correct copy of an excerpt from the transcript of the deposition of Juho

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Lee. Attached as Exhibit F is a true and correct copy of excerpts from the transcript of the
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deposition of Gert-Jan Van Lieshout.

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DECLARATION OF SAMUEL J. MASELLI IN
SUPPORT OF APPLE’S MOTION TO COMPEL
Case No. 11-cv-01846 (LHK)

15.

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In discovery correspondence, Apple detailed deficiencies in Samsung’s SSO

production. Letters discussing deficiencies in Samsung’s SSO production include the following:
Exhibit U, a true and correct copy of letter from Calvin Walden to Victoria Maroulis dated

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October 13, 2011; Exhibit V, a true and correct copy of a letter from me to Ms. Kassabian dated
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November 8, 2011; Exhibit W, a true and correct copy of a letter from Calvin Walden to Ms.

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Chan dated November 15, 2011; Exhibit X, a true and correct copy of a letter from Jason Bartlett

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to Ms. Kassabian dated November 20, 2011; Exhibit Y, a true and correct copy of a letter from

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Mia Mazza to Ms. Kassabian dated November 23, 2011 Exhibit Z, a true and correct copy of a

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letter from Ms. Mazza to Ms. Kassabian dated December 5, 2011; Exhibit AA, a true and correct

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copy of a letter from Ms. Mazza to Ms. Hutnyan dated December 24, 2011.
16.

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In its responses, Samsung has not agreed to make a substantially complete

production of SSO documents, including ETSI and 3GPP documents. See Exhibit BB, a true and
correct copy of a letter from Ms. Chan to Mr. Walden dated October 21, 2011; Exhibit CC, a true

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and correct copy of a letter from Ms. Kassabian to Ms. Mazza and myself dated November 20,
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2011.
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In a letter dated December 6, 2011, Samsung noted that it “views these [SSO]

documents as largely within the scope of the reciprocal agreement currently being negotiated

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between the parties…the scope of Samsung’s production of these documents will depend on the
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parties’ agreement.” See Exhibit DD, a true and correct copy of a letter from Ms. Chan to Mr.
Walden dated December 6, 2011.
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On November 10, 2011, Apple sent Samsung a letter with an attachment

containing proposed “reciprocal” production obligations. Samsung responded to those proposed

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reciprocal production obligations, as well as to additional categories of reciprocal production

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DECLARATION OF SAMUEL J. MASELLI IN
SUPPORT OF APPLE’S MOTION TO COMPEL
Case No. 11-cv-01846 (LHK)

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obligations proposed by Apple, on December 13, 2011. See Exhibit FF, a true and correct copy

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of an email from Ms. Chan to Ms. Mazza, with attachments. In its December 13, 2011 response,

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Samsung proposed a reciprocal production obligation covering public SSO documents only.

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On November 16, 30, and December 7, and 21, 2011, the parties met and

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conferred by telephone. During these telephone conferences, Samsung was unwilling to commit

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to any production of licensing-related documents other than executed licenses.

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III.

Samsung’s Production of License Negotiation Documents

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During negotiations concerning Samsung’s production of licenses and license

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negotiation documents, Apple has offered that Samsung can satisfy its production obligations by

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producing (1) executed licenses agreements (only) for those licenses to the relevant technologies

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

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license agreements and license negotiation documents relating to patents that Samsung has

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declared essential to the ETSI and/or 3GPP standards. (See, e.g., Exhibit FF, Dec. 13 Email

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Chan to Mazza and attached redline of Apple’s Exhibit A; see also Exhibit GG, Walden E-Mail

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to Kassabian dated January 8, 2012).)
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In response to Apple’s proposals to narrow its requests, Samsung has counter-

offered reciprocal production obligations on the parties that would require production of
executed licenses only. (See Exhibit FF, Chan e-mail to Mazza with attachments.) Similarly,

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during the parties’ meet-and-confer teleconferences held November 16 and 20, and December 7

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and 21, 2011, Samsung has been unwilling to commit to producing anything other than executed

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licenses.

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DECLARATION OF SAMUEL J. MASELLI IN
SUPPORT OF APPLE’S MOTION TO COMPEL
Case No. 11-cv-01846 (LHK)

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4.

The Lead Counsel In-Person Meeting

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On January 5, 2012, lead counsel for the parties met and conferred in person on

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Samsung’s production of documents from its inventors’ files, Samsung production of standardsrelated documents, and Samsung’s production of licensing-related documents. The parties

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reached an impasse on which documents Samsung would produce, but agreed that the meet and
confer requirement was satisfied with respect to the issues that are the subject of this motion.

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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

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productions relating to SSO's and patent licensing negotiations, and stated that it would send a

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letter later in the day with further details. At 7:45 pm Pacific on January 10, 2012, Samsung sent

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Apple

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A copy of this letter is
attached as Exhibit EE.

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I declare under penalty of perjury that the foregoing is true and correct to the best of my
knowledge. Executed on this 10th day of January, 2012, in Palo Alto, California.

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Dated: January 10, 2012

/s/ Samuel J. Maselli
Samuel J. Maselli

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DECLARATION OF SAMUEL J. MASELLI IN
SUPPORT OF APPLE’S MOTION TO COMPEL
Case No. 11-cv-01846 (LHK)

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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 to all counsel of record who are deemed to have

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consented to electronic service per Civil Local Rule 5.4.
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/s/ Samuel J. Maselli
Samuel J. Maselli

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DECLARATION OF SAMUEL J. MASELLI IN
SUPPORT OF APPLE’S MOTION TO COMPEL
Case No. 11-cv-01846 (LHK)