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

Filing 613

Administrative Motion to File Under Seal filed by Apple Inc.. (Attachments: #1 Apple's Motion to Compel Production of Documents and Things, #2 Mazza Declaration ISO Apple's Motion to Compel, #3 Ex A to Mazza Decl, #4 Ex B to Mazza Decl, #5 Ex C to Mazza Decl, #6 Ex D to Mazza Decl, #7 Ex E to Mazza Decl, #8 Ex F to Mazza Decl, #9 Ex G to Mazza Decl, #10 Ex H to Mazza Decl, #11 Ex I to Mazza Decl, #12 Ex J to Mazza Decl, #13 Ex K to Mazza Decl, #14 Ex L to Mazza Decl, #15 Ex M to Mazza Decl, #16 Ex N to Mazza Decl, #17 Proposed Order)(Jacobs, Michael) (Filed on 1/11/2012) Modified on 6/8/2012 (ofr, COURT STAFF).

Exhibit I

quinn emanuel

trial lawyers | silicon valley

555 Twin Dolphin Drive, 5th Floor, Redwood Shores, California 94065-2139 | TEL: [phone] FAX: [phone]

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January 2, 2012
VIA ELECTRONIC MAIL
Mia Mazza
Morrison & Foerster
425 Market Street
San Francisco, CA 94105-2482
Re:

Apple Inc. v. Samsung Elecs. Co., Case No. 11-cv-1846 LHK

Dear Mia:
I write in response to your letters of December 26, 2011 and December 28, 2011 concerning
production of revenue, sales, pricing and other financial information.
Misstatements in the December 26, 2011 Letter
Your December 26, 2011 letter misrepresents Samsung’s position on this issue. Samsung is not
"withholding" financial documents. In fact, you acknowledge as much by recognizing that
Samsung has already begun its production of financial documents, both in this case and in the
ITC. See, e.g., SAMNDCA00024754 – SAMNDCA00027518; SAMNDCA00027363 –
SAMNDCA00027415; S-ITC-005190581 – S-ITC-005234991. Moreover, contrary to the
statements in your letter, we have never suggested that Samsung does not retain financial data
from individual carriers. Rather, as Diane’s letter of December 20, 2011 makes clear, Apple’s
idiosyncratic demands as to the format of this information are largely pointless: Samsung has no
duty to create information or documents that match Apple’s preferred format, but Samsung will
produce the documents it maintains in the ordinary course of its business. Your letter does not
dispute Samsung’s position, but instead mischaracterizes it.
quinn emanuel urquhart & sullivan, llp
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Mia Mazza
January 2, 2012

Samsung’s Objections to the Scope and Relevance of Apple’s Requests
Apple needs to address Samsung's concerns about scope and relevance, and support its position
with citation to authority. For example, your December 26, 2011 letter attempts to justify
Apple's demands for worldwide sales data by asserting that "Apple is entitled to an award equal
to Samsung's profits." This statement misunderstands basic patent law principles. Even if Apple
prevails in proving infringement, 35 U.S.C. § 284 does not provide for a disgorgement remedy.
Apple may recover damages equal to its loss, not Samsung’s gain. See Aro Mfg. Co. v.
Convertible Top Replacement Co., 377 U.S. 476, 507 (1964) (patentees’ damages calculated
"without regard to the question whether the defendant has gained or lost [. . .].") Moreover,
because foreign sales cannot infringe Apple's U.S. patents, those sales are irrelevant to Apple's
recovery. See, e.g., Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 441 (2007). Thus, Apple has
utterly failed to articulate any legal basis for its demands.
Samsung has similar concerns with many of the requests described in your December 28, 2011
letter. For instance, many are not limited to the accused products, instead seeking financial
reports ―for smartphones and for mobile phones more broadly[.]‖ Similarly, your letter seeks
documents from Samsung entities which are not named as defendants in this case. Please
articulate, with citation to authority, why Apple believes such information is relevant and why
it is a proper subject for discovery.
Apple’s Reciprocal Discovery Obligations
Although Samsung objects to the breadth of Apple’s requests, Samsung nonetheless believes that
all of the document categories identified in your letters are reciprocal. See, e.g., Samsung RFP
Nos. 6-8, 25, 29, 42-44, 54, 55, 69, 116, 130-134, 139, 163, 173, 175, 182, 190, and 252-254.
Tellingly, your December 26, 2011 letter simply ignores Samsung's corresponding requests for
financial documents—requests that are nearly identical to Apple's requests, and which have also
been outstanding since August 2011. Although your December 28, 2011 states that ―an agreedupon mutual exchange of certain financial information appears imminent,‖ this statement directly
contradicts Apple’s repeated assertions—first in Wes Overson's November 22, 2011 letter, and
again in your December 19, 2011 letter—that it does not consider financial documents to be the
subject of the parties' ongoing negotiations. Moreover, Apple did nothing during the previous
meet and confer call to suggest that its position has changed. Please identify which categories of
financial documents you now suddenly view as subject to an ―imminent‖ mutual exchange, as
well as the corresponding requests for production.
Apple has had our counterproposal for several weeks now. Instead of pursuing a reciprocal
agreement, however, Apple’s only response thus far has been to demand a unilateral
commitment from Samsung to complete production by a date certain. Given this conduct, it

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Mia Mazza
January 2, 2012
appears that Apple is using the parties’ reciprocity negotiations to create a superficial appearance
of meeting and conferring. Apple's persistent threat to forge ahead with motion practice while
ignoring its reciprocal obligations represents a clear failure to meet and confer in good faith.
Apple has not made any commitment to producing the financial documents sought by Samsung,
much less by a date certain, as Apple demands of Samsung. If Apple insists on such a one-sided
approach to the discovery process, Samsung will be forced to place this issue on the agenda for
the upcoming meet and confer and thereafter pursue motion practice -- unless Apple makes a
written commitment to produce, by January 10, 2011, all documents responsive to the requests
identified above and in Diane Hutnyan’s January 2, 2011 letter.

Very truly yours,

/s/
Rachel Herrick Kassabian

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