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

Filing 637

Administrative Motion to File Under Seal filed by Apple Inc.. (Attachments: # 1 Wheeler Declaration ISO Motion to Seal, # 2 Proposed Order ISO Motion to Seal, # 3 Bartlett Declaration ISO Opposition to Motion to Enforce, # 4 Ex A to Bartlett Decl, # 5 Ex B to Bartlett Decl, # 6 Ex C to Bartlett Decl, # 7 Ex D to Bartlett Decl, # 8 Ex E to Bartlett Decl, # 9 Ex F to Bartlett Decl, # 10 Ex G to Bartlett Decl, # 11 Ex H to Bartlett Decl, # 12 Ex I to Bartlett Decl, # 13 Ex J to Bartlett Decl, # 14 Ex K to Bartlett Decl, # 15 Opposition to Motion to Enforce, # 16 Maselli Decl ISO Opposition to Motion to Compel, # 17 Ex A Maselli Decl, # 18 Ex B Maselli Decl, # 19 Ex C Maselli Decl, # 20 Ex D Maselli Decl, # 21 Ex E Maselli Decl, # 22 Opposition to Motion to Compel, # 23 Mazza Declaration ISO Opposition to Motion for Clarification, # 24 Ex A Mazza Decl, # 25 Ex B Mazza Decl, # 26 Ex C Mazza Decl)(Jacobs, Michael) (Filed on 1/17/2012)

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1 2 3 4 5 6 7 8 9 HAROLD J. MCELHINNY (CA SBN 66781) hmcelhinny@mofo.com MICHAEL A. JACOBS (CA SBN 111664) mjacobs@mofo.com JENNIFER LEE TAYLOR (CA SBN 161368) jtaylor@mofo.com ALISON M. TUCHER (CA SBN 171363) atucher@mofo.com RICHARD S.J. HUNG (CA SBN 197425) rhung@mofo.com JASON R. BARTLETT (CA SBN 214530) jasonbartlett@mofo.com MORRISON & FOERSTER LLP 425 Market Street San Francisco, California 94105-2482 Telephone: (415) 268-7000 Facsimile: (415) 268-7522 10 11 WILLIAM F. LEE william.lee@wilmerhale.com WILMER CUTLER PICKERING HALE AND DORR LLP 60 State Street Boston, MA 02109 Telephone: (617) 526-6000 Facsimile: (617) 526-5000 MARK D. SELWYN (SBN 244180) mark.selwyn@wilmerhale.com WILMER CUTLER PICKERING HALE AND DORR LLP 950 Page Mill Road Palo Alto, California 94304 Telephone: (650) 858-6000 Facsimile: (650) 858-6100 Attorneys for Plaintiff and Counterclaim-Defendant APPLE INC. 12 13 UNITED STATES DISTRICT COURT 14 NORTHERN DISTRICT OF CALIFORNIA 15 SAN JOSE DIVISION 16 APPLE INC., a California corporation, 17 18 19 20 21 22 23 Plaintiff, v. SAMSUNG ELECTRONICS CO., LTD., a Korean corporation; SAMSUNG ELECTRONICS AMERICA, INC., a New York corporation; and SAMSUNG TELECOMMUNICATIONS AMERICA, LLC, a Delaware limited liability company, Case No. 11-cv-01846-LHK APPLE’S OPPOSITION TO SAMSUNG’S MOTION TO ENFORCE VARIOUS COURT ORDERS Date: Time: Place: Judge: January 19, 2012 10:00 a.m. Courtroom 5, 4th Floor Hon. Paul S. Grewal Defendants. 24 25 26 PUBLIC REDACTED VERSION CONTAINS CONFIDENTIAL INFORMATION 27 28 APPLE’S OPP. TO SAMSUNG’S MOT. TO ENFORCE VARIOUS COURT ORDERS CASE NO. 11-CV-01846-LHK sf-3093648 TABLE OF CONTENTS 1 2 Page 3 INTRODUCTION........................................................................................................................... 1 4 ARGUMENT .................................................................................................................................. 3 I. APPLE HAS NOT VIOLATED THE COURT’S ORDERS TO PRODUCE RELEVANT SKETCHBOOKS.......................................................................................... 3 II. APPLE’S PRODUCTION OF FILES RELATING TO THE CONCEPTION AND REDUCTION TO PRACTICE OF THE ASSERTED DESIGNS HAS BEEN THOROUGH AND IT HAS NOT VIOLATED ANY COURT ORDERS........................ 5 5 6 7 A. CAD......................................................................................................................... 6 8 B. Sketchbooks............................................................................................................. 7 9 C. Models ..................................................................................................................... 7 .............................................................................. 8 10 III. APPLE HAS NOT VIOLATED ANY COURT ORDER REGARDING DEDESIGNATION OF MODEL 035 PHOTOGRAPHS ....................................................... 9 12 IV. APPLE HAS NOT VIOLATED ANY ORDER TO IDENTIFY WHAT FILES WERE SEARCHED.......................................................................................................... 10 13 CONCLUSION ............................................................................................................................. 13 11 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 APPLE’S OPP. TO SAMSUNG’S MOT. TO ENFORCE VARIOUS COURT ORDERS CASE NO. 11-CV-01846-LHK sf-3093648 i 1 2 INTRODUCTION Because Apple has fully complied with all of the Court’s orders regarding production, 3 Samsung’s Motion to Enforce should be denied. Samsung’s motion is based on an overbroad and 4 unsupported reading of its own requests and the Court’s prior orders and is also brought for an 5 improper purpose. 6 Sketchbooks: Samsung claims that Apple has failed to produce all relevant sketchbooks, 7 based on its belief that it previously requested and the Court’s orders span dates before 2003. 8 Both are untrue. Samsung’s requests for Apple’s sketchbooks—and the prior related motion 9 practice before this Court—have always concerned the alleged relevance of these sketchbooks to 10 the asserted design patents. For this reason, and in view of the September 2003 conception date 11 for the earliest design, Apple previously proposed a January 1, 2003 lower cut-off date for its 12 sketchbook production. 13 Apple openly disclosed this date to Samsung and invited Samsung to propose a different 14 date—but Samsung did not respond. Samsung’s sudden demand now for 2002 sketchbooks, after 15 Apple has completed its sketchbook production, is arbitrary. Samsung’s moving papers confirm 16 this, as they articulate no reason for believing 2002 sketchbooks to be relevant. Apple could not 17 have violated an order with respect to something that Samsung did not previously request, and it 18 should not be forced to repeat the time-consuming and burdensome process of collecting, 19 scanning, reviewing, and producing earlier sketchbooks based on Samsung’s belated demands. Samsung claims that Apple has violated Court orders allegedly requiring the 20 21 production of 22 Apple has complied with those orders. Apple has produced industrial design models and CAD, as 23 it agreed to do months ago, and Samsung has already inspected them. As for the Model 035 CAD 24 files that Samsung claims were not produced on December 30, Samsung simply did not know 25 how to open them, and thus mistakenly believed that they were unavailable. 26 27 CAD drawings, prototypes, and models. But Earlier Court orders made no reference to because Samsung did not move to compel their production. In any event, 28 APPLE’S OPP. TO SAMSUNG’S MOT. TO ENFORCE VARIOUS COURT ORDERS CASE NO. 11-CV-01846-LHK sf-3093648 1 1 2 3 Photograph de-designation: Samsung claims that Apple has violated an order to de- 4 designate photographs. This, too, is based on a misreading of the Court’s December 22, 2011 5 Order. In that Order, the Court noted that Apple “may maintain its confidentiality designation on 6 only those photos that display details or aspects of the tablet mockups that were not disclosed in 7 the earlier patent filings and that remain proprietary to Apple.” (Order Granting in Part 8 Samsung’s Motion to Compel [Dkt. No. 536] at 3.) Consistent with the Order, Apple informed 9 Samsung that it would redact the details that went beyond what was disclosed in earlier patent 10 filings before de-designating the photographs at issue—namely, scale information. Concurrently 11 with this filing, Apple has produced to Samsung de-designated photographs with the additional 12 scale information redacted. 13 The scale information in Samsung’s photographs is not part of the public record, and thus 14 Apple could not have violated an order by failing to unredact it and allow public dissemination. 15 Samsung’s demand for production of de-designated versions of photographs showing non-public 16 scale information appears to be driven by its improper desire to use the images in foreign 17 litigation. 18 Photograph search protocol: Samsung claims that Apple violated an order to identify 19 which files were searched to find photographs that were submitted to the Patent Office during the 20 prosecution of the D’889 patent. In its moving papers, however, Samsung concedes that Apple 21 has already provided the requested information. 22 Samsung’s “motion to enforce” must be seen for what it is: a threadbare attempt to defuse 23 a future sanctions motion against it. Even in the final months of discovery, Samsung’s production 24 has been late, incomplete, and begrudging. (Apple’s Motion to Compel Production [Dkt. No. 25 613-1] at 1-2.) Samsung has produced documents only under court order or threatened sanctions. 26 (See Order Granting in Part Apple’s Motion to Compel [Dkt. No. 537] (explaining that “further 27 failure to comply with the September 28 Order will subject Samsung to sanctions.”) But even 28 then, Samsung has still proceeded to miss court-ordered deadlines. (See Samsung’s Motion to APPLE’S OPP. TO SAMSUNG’S MOT. TO ENFORCE VARIOUS COURT ORDERS CASE NO. 11-CV-01846-LHK sf-3093648 2 1 Extend Time for Compliance [Dkt. No. 554-0] (claiming that compliance with December 22, 2 2011 Order was “physically impossible”); Order Denying Samsung’s Motion to Extend Time to 3 Complete Discovery [Dkt. No. 567].) Apple has not violated this Court’s orders—Samsung has. 4 The Court should deny Samsung’s motion. 5 ARGUMENT 6 Samsung seeks an order from the Court directing Apple to “comply in full with all 7 standing discovery orders” by either January 22, 2012 (the date stated in Samsung’s brief) or 8 January 25, 2012 (the date stated in Samsung’s proposed order). Apple has fully complied with 9 the Court’s orders. Samsung’s motion should be denied. 10 11 12 I. APPLE HAS NOT VIOLATED THE COURT’S ORDERS TO PRODUCE RELEVANT SKETCHBOOKS. Apple finished producing all designer sketchbooks that it could find relating to the patents 13 in suit by December 30, 2011—a day before the deadline set by the Court in its Order of 14 December 22. (Order Granting in Part Samsung’s Motion to Compel [Dkt. No. 536] at 4) 15 (“December 22 Order.”)1 The produced sketchbooks range in date from 2003 to 2010. 16 Samsung’s theory that Apple violated the Order appears to be based on the assumption that the 17 Court required Apple to produce all sketchbooks in its possession, regardless of relevance. The 18 Court did no such thing. 19 The Court’s Prior Orders: The Court’s September 13, 2011 preliminary injunction 20 discovery order directed Apple to produce sketchbooks “relating to the four patents at issue in 21 Apple’s preliminary injunction motion.” (Order Granting-In-Part and Denying-In-Part 22 Samsung’s Motion to Compel [Dkt. No. 233] at 2) (“September 13 Order.”) Samsung’s next 23 motion to compel did not seek to expand this universe, but rather noted that the Court had ordered 24 1 25 26 27 28 Apple discovered five additional sketchbooks belonging to Apple designer Bart Andre after December 30, and immediately inspected the sketchbooks to identify pages relevant to the asserted designs. (See Declaration of Jason R. Bartlett in Support of Apple’s Opposition to Samsung’s Motion to Enforce Various Court Orders (“Bartlett Decl.”) ¶ 2.) Apple produced the 22 unredacted pages of content it identified as relevant, as well as additional redacted pages and covers, within just a few days of the discovery of these additional sketchbooks, on January 9. (Id.) APPLE’S OPP. TO SAMSUNG’S MOT. TO ENFORCE VARIOUS COURT ORDERS CASE NO. 11-CV-01846-LHK sf-3093648 3 1 “Apple to produce all relevant inventor sketchbooks relating to certain” design patents, and 2 requested that the Court enforce that prior order by ordering more fulsome copies of the 3 sketchbooks at issue. (Samsung’s Motion to Compel [ECF No. 487] at 15.) The Court’s 4 December 22 Order granted Samsung’s request in part and ordered production by December 31. 5 (December 22 Order at 4.) 6 There is nothing to suggest that, via its order, the Court was seeking to expand the scope 7 of Apple’s sketchbook production beyond what Samsung requested and irrespective of relevance 8 relevance. (Id.) Apple has now produced sketchbooks relating to all design patents in suit. 9 (Bartlett Declaration ¶ 2.) 10 Apple’s Compliance Efforts: As part of its collection process, Apple had to identify 11 what sketchbooks it would collect and produce. This was a massive undertaking, and as Apple 12 has previously described to the Court, the final leg of Apple’s sketchbook review and production 13 involved a team of more than 25 individuals working overtime and over weekends during the 14 holiday season to complete production. (Apple’s Opposition to Samsung’s Motion to Extend 15 Time for Compliance [Dkt. No. 565] at 4-5.) It would be nonsensical, fruitless, and burdensome 16 for Apple to additionally collect and process sketchbooks from years before designers were even 17 working on the projects that led to the design patents at issue. 18 Apple has been transparent about its sketchbook production process. Apple disclosed on 19 November 15 that it used a 2003 date cut-off in connection with Industrial Designer document 20 productions. (See Bartlett Decl. Ex. a.) In subsequent meet-and-confer discussions, the parties 21 discussed Apple’s 2003 date cut-off on sketchbooks specifically. (Id. Ex. B.) (summarizing 22 correspondence and meet-and-confer regarding lower date cut-off for industrial design document 23 production.) Apple selected this date because it had found no evidence that any industrial 24 designer was working on anything relating to a design patent at issue until the fall of 2003. (Id.) 25 As a result, the January 2003 date Apple applied provided a comfortable buffer and should 26 include all relevant sketchbooks. 27 The parties discussed Apple’s 2003 date cut-off on sketchbooks specifically during a 28 meet-and-confer on December 21. (Id.) Apple invited Samsung to name a date that it considered 4 APPLE’S OPP. TO SAMSUNG’S MOT. TO ENFORCE VARIOUS COURT ORDERS CASE NO. 11-CV-01846-LHK sf-3093648 1 early enough, if Samsung believed that Apple’s selection of 2003 as the lower cutoff was not 2 sufficiently early. (Id.) Samsung refused to do so, instead asked Apple to confirm in writing 3 what date it used as a cut-off for production of sketchbooks. (Id.) Apple did so in a letter of 4 December 24, 2011, then proceeded to complete scanning and processing of sketchbooks over the 5 Christmas holiday. (Id.) After Apple had completed this process, Samsung arbitrarily declared 6 that it wanted 2002 sketchbooks too. (Id.) 7 To this day, Samsung still presents no basis for its very belated request for pre-January 8 2003 sketchbooks. Even its motion fails to offer a rationale for why 2002 sketchbooks should be 9 2 relevant, or an excuse for not making its request earlier. Samsung’s demands are therefore 10 baseless and its reading of the Court’s Orders is wrong. Samsung’s motion should be denied. 11 II. 12 APPLE’S PRODUCTION OF FILES RELATING TO THE CONCEPTION AND REDUCTION TO PRACTICE OF THE ASSERTED DESIGNS HAS BEEN THOROUGH AND IT HAS NOT VIOLATED ANY COURT ORDERS 13 Samsung wrongly argues that Apple has violated Court orders by failing to produce 14 documents relating to the conception and reduction to practice of the asserted design patents. 15 Apple has made a full and complete production that is more than adequate to show conception 16 and reduction to practice. Apple has produced all the CAD files that industrial designers created 17 when they were designing the products at issue. (Bartlett Decl. ¶ 4.) Unlike Samsung, Apple has 18 produced all industrial design CAD, including all drafts, for all relevant products (that is, all 19 released generations of iPhone, iPad, and iPod touch). (Id.) Apple has produced every sketch 20 related to these products that its industrial designers made while working on these products. (Id.) 21 And Apple has produced every model that it could find that the industrial designers made or had 22 made relating to those products. (Id.) Samsung began inspection of those models on Friday, 23 January 13, 2012. (Id. Ex. G.) The production included plus assorted 24 2 25 26 27 28 Samsung’s reference to Apple’s production of e-mails from 2002 is a red herring. Emails are produced for many reasons. For example, an e-mail may be a hit for one of Apple’s search terms. Samsung does not cite a single e-mail that suggests sketchbooks from 2002 would be relevant. Samsung’s failure to point to a single piece of evidence that Apple designers were working on relevant designs in 2002 means it has no such evidence. Samsung is simply grasping for an argument to support its late attempt to burden Apple by reopening its sketchbook collection and production process. APPLE’S OPP. TO SAMSUNG’S MOT. TO ENFORCE VARIOUS COURT ORDERS CASE NO. 11-CV-01846-LHK sf-3093648 5 1 partial models and parts. The Court’s prior orders did not require Apple to produce 2 the reasons discussed below, no such order should issue now. . For 3 A. 4 Apple began producing CAD files long ago, during the preliminary injunction phase of CAD 5 this case. Apple has produced all the CAD files that industrial designers created when they were 6 designing the products at issue. (Bartlett Decl. ¶ 4.) A portion of a produced CAD file is 7 attached to the Bartlett Declaration as Exhibit B and pictured below. As shown in the example 8 below, CAD alone is more than sufficient to show the relevant details and multiple views of a 9 given design: 10 11 12 13 14 15 16 17 18 19 20 21 Before December 31, Apple produced industrial design CAD files covering all announced 22 generations of iPhone, iPod touch, and iPad, as well as CAD relating to the 035 model that 23 Samsung requested. (Bartlett Decl. ¶ 4.) 24 Samsung’s claim that Apple still has not produced the CAD files relating to the 035 tablet 25 is flat-out false. Apple produced CAD files relating to the 035 tablet by December 31, pursuant 26 to the Court’s Order. (Id.) When Samsung reported that it was unable to view the CAD data, 27 Apple immediately began investigating the issue. In the interim, and as a courtesy, Apple’s 28 attorneys prepared PDFs of the CAD files over the weekend and provided them to Samsung as a 6 APPLE’S OPP. TO SAMSUNG’S MOT. TO ENFORCE VARIOUS COURT ORDERS CASE NO. 11-CV-01846-LHK sf-3093648 1 temporary workaround. (Id. Ex. D.) Through its investigation, Apple determined that the 2 relevant CAD files were not corrupted or missing. Instead, Samsung simply did not understand 3 how to open them using the relevant software program (rather than by simple double-clicking on 4 the file). (Id. Ex. E.) 5 B. 6 In addition to CAD, as described above in greater detail, Apple produced before 7 December 31 every sketch that it could locate related to every design patent at issue. (See infra 8 Section I.) 9 C. 10 11 Sketchbooks Models Apple has produced all industrial design models for Samsung’s inspection. (Bartlett Decl. Ex. F.) A photograph of one design model is pictured below as an exemplar: 12 13 14 15 16 17 18 19 20 Samsung began inspecting the models on Friday, January 13. (Bartlett Decl. Ex. G.) 21 22 23 24 25 26 27 28 APPLE’S OPP. TO SAMSUNG’S MOT. TO ENFORCE VARIOUS COURT ORDERS CASE NO. 11-CV-01846-LHK sf-3093648 7 1 Apple has also agreed to produce any still-working prototypes that it has been able to 2 identify, although it has only identified a limited number. (Id. Ex. B.) Apple has canvassed 3 individuals working on touch hardware, design, operating system software, core driver software, 4 and product design to identify any working prototypes, and has asked that Samsung do the same. 5 (Id. ¶ 8). Samsung has not responded. (Id.) 6 The only items that Apple has not agreed to produce are the many non-working prototypes 7 and parts and pieces. (Id.) Many Apple engineers have old dead parts sitting in desk drawers, on 8 shelves, or in boxes. (Id.) To attempt to gather up all of those old pieces of hardware and present 9 them to Samsung for inspection would be a massive waste of time and effort, particularly in view 10 of the other materials Apple has produced. Given Apple’s substantial production of design 11 documents, as discussed above, including production of all relevant CAD, sketchbooks, models, 12 and its agreement to produce working prototypes, the burden of collecting, transporting, and 13 presenting for inspection non-working prototype pieces and parts far outweighs any potential 14 relevance. (Id.) 15 16 Apple acknowledges that industrial design CAD files, sketchbooks, and design models 17 pertaining to the asserted design patents are relevant to conception and reduction to practice of 18 Apple’s asserted designs. are not relevant, however. 19 20 21 22 23 24 25 26 27 28 APPLE’S OPP. TO SAMSUNG’S MOT. TO ENFORCE VARIOUS COURT ORDERS CASE NO. 11-CV-01846-LHK sf-3093648 8 1 2 3 4 5 6 7 8 9 10 11 (Id. Ex. H.) 12 13 14 15 16 17 18 19 Apple has already made a more than adequate 20 production of materials relating to conception and reduction to practice of its asserted designs. In 21 this late stage of discovery, the parties have much more pressing issues to focus on than whatever 22 marginal information might be gleaned from 23 III. . 24 APPLE HAS NOT VIOLATED ANY COURT ORDER REGARDING DEDESIGNATION OF MODEL 035 PHOTOGRAPHS 25 Samsung claims that Apple has violated an order to de-designate photographs, but this 26 misrepresents the Court’s December 22, 2011 Order. 27 28 APPLE’S OPP. TO SAMSUNG’S MOT. TO ENFORCE VARIOUS COURT ORDERS CASE NO. 11-CV-01846-LHK sf-3093648 9 1 As Samsung admits in its Motion, the Court noted in its Order that Apple “may maintain 2 its confidentiality designation on only those photos that display details or aspects of the tablet 3 mockups that were not disclosed in the earlier patent filings and that remain proprietary to 4 Apple.” (Order Granting in Part Samsung’s Motion to Compel [Dkt. No. 536] at 3.) Consistent 5 with this Order, Apple informed Samsung that it would redact the details that went beyond what 6 was disclosed in earlier patent filings before de-designating the photographs at issue—namely, 7 scale information. (Bartlett Decl. Ex. B.) Apple also informed Samsung that if it wished to take 8 photographs that did not include such additional information, Apple would not designate such 9 photographs as confidential. (Id.) 10 Samsung derides Apple’s position as a “waste” and “meritless objection,” but fails to 11 dispute the key point—the photographs submitted to the PTO do not contain any scale 12 information.3 Unlike Samsung’s photographs, the photographs submitted to the PTO do not 13 contain rulers. Unlike Samsung’s photographs, the model in the photographs submitted to the 14 PTO is not set side-by-side with an iPad 2. Concurrently with this opposition, Apple has 15 produced to Samsung de-designated photos that omit scale information and that are consistent 16 with the photographs submitted to the PTO. (Id. Ex. I.) 17 IV. 18 APPLE HAS NOT VIOLATED ANY ORDER TO IDENTIFY WHAT FILES WERE SEARCHED 19 The Court’s Order of November 16 required Apple to “identify specifically which 20 custodians’ files were searched, any search terms that were used, and the time frame included in 21 those searches.” (Order Granting-in-Part Samsung’s Motion to Compel Apple to Produce 22 Documents and Things [Dkt. No. 398] at 2-3.) The purpose of this Order was to provide 23 Samsung the opportunity to suggest additional locations to search. (Id.) 24 25 26 27 28 3 Samsung’s Motion to Enforce mentions that one photograph provided to the USPTO shows a person holding the model. (Motion at 9.) An image of an individual of unknown size holding a tablet does not provide precise scale information on the level of rulers or side-by-side products. APPLE’S OPP. TO SAMSUNG’S MOT. TO ENFORCE VARIOUS COURT ORDERS CASE NO. 11-CV-01846-LHK sf-3093648 10 1 Samsung’s own brief concedes that Apple has already identified what files it searched to 2 find photographs submitted to the USPTO during the prosecution of the D’889 patent. (Motion at 3 10.) On November 28, 2011, Apple wrote Samsung to identify which custodian files were 4 searched, the absence of search terms used, and the lack of timeframe restrictions: 5 Apple’s outside prosecuting attorney, Tracy Durkin of Sterne, Kessler, Goldstein & Fox. Sterne Kessler received from Beyer Weaver, the firm of Apple’s former prosecuting agent Quin Hoellwarth, the entire file that Beyer Weaver possessed relating to the prosecution of the D’889 Patent. Ms. Durkin searched both electronic and paper files relating to the D’889 Patent. Apple acquired from Ms. Durkin the best copies of the photographs that were present in the file. Original photographs were not found. 6 7 8 9 Steve Beyer of the Beyer Law Group, formerly of the Beyer Weaver firm. Mr. Beyer checked both hard copy and electronic document repositories relating to the D’889 Patent. Mr. Beyer confirmed that his firm has previously transferred its whole file to Sterne Kessler at Apple’s request. 10 11 12 Quin Hoellwarth, formerly of the Beyer Weaver firm and now an in-house patent agent at Apple. Mr. Hoellwarth did not take any files related to the prosecution of the D’889 Patent with him to Apple. Nonetheless, Mr. Hoellwarth searched his own paper files, emails, and local electronic drives. As noted above, Mr. Hoellwarth’s former firm sent its entire file for the D’889 Patent to Tracy Durkin at Sterne Kessler. Mr. Hoellwarth did not possess original photographs or any copies that were better than the copies provided by Ms. Durkin. 13 14 15 16 17 18 Apple’s legal department. Mr. Hoellwarth also searched Apple legal department paper files and servers. 19 Publicly available files stored by the USPTO. 20 The above searches were manual, were intended to search in each location previously known potentially to have contained the files, and accordingly did not rely on any automated date restrictions or search terms.” 21 22 (Bartlett Decl. Ex. J.) Samsung’s claim, in the face of this letter, that Apple has not identified 23 which files were searched and violated the Court’s order requiring such disclosure is simply 24 untrue. 25 Samsung’s remaining argument relies on a selective and misleading quotation of a portion 26 of the deposition of Tracy Durkin, an outside patent prosecution attorney. Ms. Durkin, a nonparty 27 witness, was asked what steps she took to review documents in response to Samsung’s subpoena. 28 APPLE’S OPP. TO SAMSUNG’S MOT. TO ENFORCE VARIOUS COURT ORDERS CASE NO. 11-CV-01846-LHK sf-3093648 11 1 (Motion at 10 n.32.) She noted, correctly, that she is outside the jurisdiction of the Court and, as 2 a nonparty witness, was under no obligation to affirmatively search for documents responsive to 3 Samsung’s invalid subpoena. (Id.) But Ms. Durkin’s comments do not detract from the adequacy 4 of her collection and production efforts, on Apple’s behalf, of any relevant documents in her 5 possession. 6 Samsung claims, without any citation or support, that it has identified relevant CDs that 7 were not searched and asks the Court to order immediate production as these may contain “the 8 photos submitted to the PTO.” (E.g., Motion at 12-13.) The only support Apple has found for 9 Samsung’s claim is a statement in Ms. Durkin’s more recent deposition in a related action in the 10 U.S. International Trade Commission. Ms. Durkin states that she has a CD in the files her firm 11 received from Apple’s prior patent prosecution firm. (Bartlett Decl. Ex. K at 265:8-268:13.) 12 Ms. Durkin also testified that there are no images of the item shown in the D’889 prosecution on 13 the CD, and indeed, she does not believe there are photographs of any kind on the CD. (Id. at 14 268:4-13.) 15 Samsung’s continued obsession with Apple’s efforts to search for the 035 photographs is 16 bizarre and unproductive.4 Apple has already produced the highest quality photographs it was 17 able to locate, and has confirmed as such in writing—both in a letter and in a stipulation signed 18 by Apple’s co-lead counsel. (Bartlett Decl. Ex. J.) Apple has produced the model itself for 19 inspection and allowed Samsung to take its own photographs. (See Samsung’s Motion to Compel 20 [Dkt. No. 487-0] at 10) (acknowledging that Samsung inspected various Apple tablet models and 21 took photographs of those items). Apple has produced concurrently with this filing de-designated 22 photographs showing the details that were visible in the public USPTO filings. (Bartlett Decl. Ex. 23 I.) Apple has also agreed to let Samsung take high-quality photographs that reproduce images 24 submitted to the PTO and confirmed that Apple would not designate such photographs as 25 4 26 27 28 Apple has noted for Samsung and the Court that the previously-taken 035 photographs are of limited, if any, relevance, given the file history of the D’889 patent. (See Apple’s Opposition to Samsung’s Motion to Compel [Dkt. No. 502-3] at 9-10.) The photographs are not part of the prosecution history, but were attached in an appendix that the Examiner struck from the application. (Id.) APPLE’S OPP. TO SAMSUNG’S MOT. TO ENFORCE VARIOUS COURT ORDERS CASE NO. 11-CV-01846-LHK sf-3093648 12 1 confidential under the protective order. (Id. Ex. B.) At this point, it is not clear what possible 2 need Samsung has for additional photographs of the 035 model or additional detail on Apple’s 3 searches. Samsung’s groundless and moot motion is an unnecessary burden on Apple and the 4 Court and should be denied. 5 6 CONCLUSION For the reasons set forth above, the Court should deny Samsung’s motion. 7 8 Dated: January 17, 2012 MORRISON & FOERSTER LLP 9 10 11 12 By: /s/ Michael A. Jacobs Michael A. Jacobs Attorneys for Plaintiff APPLE INC. 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 APPLE’S OPP. TO SAMSUNG’S MOT. TO ENFORCE VARIOUS COURT ORDERS CASE NO. 11-CV-01846-LHK sf-3093648 13

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