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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EXHIBIT B REDACTED VERSION 425 MARKET STREET SAN FRANCISCO CALIFORNIA 94105-2482 TELEPHONE: 415.268.7000 FACSIMILE: 415 268 7522 MO RRI SO N & F O E RST E R L LP N E W YO RK , SAN F RAN C I SCO , L O S A N G E L E S, P A L O A L T O , SAC RAME N T O , SAN D I E G O , D E N VE R, N O RT H E RN VI RG I N I A, WASH I N G T O N , D C T O K YO , L O N D O N , BR U SSE L S, BE I JI N G , SH AN G H AI , H O N G K O N G WWW.MOFO.COM January 5, 2012 Writer’s Direct Contact 415.268.6615 JasonBartlett@mofo.com Via E-Mail (dhutnyan@quinnemanuel.com) Diane Hutnyan Quinn Emanuel 865 S. Figueroa St., 10th Floor Los Angeles, CA 90017 Re: Apple v. Samsung, Case No. 11-cv-1846 LHK (PSG) (N.D. Cal.) Dear Diane: I write in response to your letter of January 2, 2012 setting out Samsung’s agenda items for the upcoming lead counsel in-person meet-and-confer session. A letter summarizing Apple’s positions as described in detail below is attached. Mac OS X (10.0) Samsung has requested that Apple produce a working computer that was in public use before July 10, 2001 with a brightness adjustment button and is running the Mac OS X v. 10.0 software that was in public use before July 10, 2001. Apple originally produced a working 10-year-old computer that it had to piece together from 3 different machines in order to make it operational and source code relating to features at issue on December 15. Samsung requested more code on December 20, and Apple produced the requested code the next day. Samsung now states that the brightness button on the provided computer is nonfunctional and requests a new system with a working brightness button. Samsung appears to already have the software and hardware it is seeking, as this function is pictured in Samsung’s invalidity contentions. Moreover, this issue was raised very close to Apple’s company-wide shutdown for the holidays, and as a result, we were unable to investigate and determine why there was no working brightness button on the provided system. An Apple technician visited our offices today and was not able to resolve the problem. He will return tomorrow and continue to investigate the issue. sf-3090097 Diane Hutnyan January 5, 2012 Page Two Memory Cards Samsung has requested that Apple return memory cards containing Samsung’s work product and confirm that it has destroyed all of Samsung’s work product. Samsung has picked up the memory cards. Apple will expunge prior produced images from production. De-Designation of 035 Model Photographs Samsung has requested that Apple de-designate certain photographs of the 035 Model. We have reviewed the photographs that Samsung requests Apple de-designate and concluded that the photographs have technical information beyond what is available in publicly filed PTO documents. Specifically, each photograph has information relating to scale that is not visible in the PTO record. Apple will produce de-designated versions of these photographs with information relating to scale redacted. The only exceptions are extreme closeups, which Judge Grewal has already noted contain more information than was available in the publicly filed photographs. If Samsung wishes to replicate the PTO photographs without adding additional visual information or technical detail, Apple will not designate those photographs as confidential. Source Code and Technical Documents Samsung claims that Apple has failed to produce source code and technical documents. This issue was addressed in separate correspondence by Sam Maselli of Wilmer Hale. Documents Referencing “Samsung” and Other Terms Samsung claims that Apple has failed to produce documents referencing “Samsung” and “other relevant terms.” Apple has already run “Samsung” as a search term on Apple inventor documents and has been producing those hits. By January 31, Apple will run “Samsung” as a search term on product marketing, advertising, and market research files relating to research conducted by Apple. If additional delimiters are needed to remove large amounts of irrelevant material, we will disclose those delimiters. sf-3090097 Diane Hutnyan January 5, 2012 Page Three Apple will not run the terms “Android” or “Droid” without additional delimiters. Test searches reveal that this would result in very large amounts of irrelevant documents from Apple’s collection, which would take months to review. These are general terms that do not apply specifically to Samsung, and given the amount of material, applying these search terms without delimiters would be an undue burden and overly broad. Surveys and Marketing Samsung claims that Apple has failed to produce consumer surveys, focus groups, and other marketing-related documents. Contrary to Samsung’s assertion that customer surveys were raised in a letter of December 3, 2011, this issue was raised for the first time in a letter of January 2. There was no mention of a request by Samsung for survey documents in any letter of December 3, 2011 received by Apple. Nevertheless, Apple will produce by January 31, 2012 final survey reports, questionnaires, and raw survey data for all customer surveys conducted by Apple relating to iPhone, iPod touch, and iPad; and all market research reports purchased by Apple in the ordinary course of business relating to iPhone, iPod touch, and iPad. If, after reviewing the production, Samsung seeks more than this, please let us know. Financial Documents Samsung claims that Apple has failed to produce relevant financial documents. Like consumer surveys, production of financial documents was first raised by Samsung in a letter of January 2. Your letter of January 2 states that this issue was discussed during the parties’ last meet-and-confer, but that is untrue; Samsung did not raise Apple’s production of financial documents during the meet-and-confer. In fact, this item was not on Samsung’s agenda at all. Apple raised Samsung’s failure to produce financial documents on the call, and that is all that was discussed. Nevertheless, Apple will produce, by the end of next week, at least: U.S. and worldwide units by quarter from FY 2007 to 2011 for iPhone, iPod touch, and iPad U.S. and worldwide revenue by quarter from FY 2007 to 2011 for iPhone, iPod touch, and iPad GAAP line of business reports setting forth Standard Margins, Adjusted Standard Margins, Gross Margins, allocated SG&A, and Research and Development Costs for iPhone, iPod, and iPad for FY 2007 to 2011 sf-3090097 Diane Hutnyan January 5, 2012 Page Four Bills of Materials for all accused Apple products, including line item cost information Capital expenditure data for the U.S. and worldwide relating to iPhone, iPad, and iPod Apple will produce, by January 31, responsive documents from Apple’s product marketing team, including strategic planning documents and market requirements documents. Apple will produce market research documents as discussed above. If, after reviewing the production, Samsung seeks more than this, please let us know. REDAC Working Prototypes, and Models TED Samsung claims that Apple has failed to produce REDA , working prototypes, and models. CTED These items were first requested by Samsung on December 3, 2011. Apple has already produced a very large number of design-related materials, including CAD for the original iPhone produced during the preliminary injunction phase; CAD for all other announced iPhone, iPod touchy, and iPad products produced by December 30, 2011; sketchbooks relating to announced iPhone, iPod touch, and iPad products produced by December 30, 2011; and e-mails and electronic files of industrial designers substantially completed by October 2011. Apple will produce, per Judge Grewal’s December 22 order, all models, partial models, and parts relating to announced iPhone, iPod touch, and iPad products by January 15, 2012. REDACTED REDACTED Apple has a limited number of working prototypes, and will produce the prototypes it finds after a reasonable search. Please confirm Samsung will do the same. NeXT OS Source Code Samsung claims that Apple has failed to produce requested NeXT OS source code. Apple will produce all available NeXT OS source code by January 13. We understand that this resolves Samsung’s request. sf-3090097 Diane Hutnyan January 5, 2012 Page Five Mac OS Tiger Samsung claims that Apple has failed to produce source code for Mac OS Tiger. Apple understands that Samsung alleges certain “dashboard icons” appearing in Tiger inspired a design patent covering iOS icons. Apple will bring a copy of a released version of Tiger with a screenshot to the conference tomorrow. Apple will not produce “all documents” relating to Tiger, a request that is significantly overbroad given that the asserted relevance detailed above and goes beyond Samsung’s own requests for production. Advertising Documents Samsung claims that Apple has failed to produce all relevant documents identified during Sissie Twiggs’ deposition. Again, this issue was raised for the first time in a letter of December 30. There is no basis for Samsung’s claim that documents should have been produced before the preliminary injunction deposition of Sissie Twiggs. The scope of preliminary injunction production was negotiated between the parties, and the Twiggs deposition occurred months ago. Nevertheless, Apple will produce: Print, television, and outdoor advertisements by January 13, 2012 Database reports of iPhone, iPad, and iPod touch use in media by January 13, 2012 Media plans and “click count” reports for search engine marketing by January 20, 2012 Advertising campaign binders by January 31, 2012 Online display advertisements by January 31, 2012 sf-3090097 Diane Hutnyan January 5, 2012 Page Six Audits of media as run by January 31, 2012 Apple has not found any items called “builds.” Samsung’s request for media “builds” appears to be based on a misreading of Ms. Twiggs’ testimony. Samsung’s request for demographic studies is addressed above under “Surveys and Marketing.” If Samsung seeks more than this, please let us know. Sketchbooks from 2002 Samsung has requested that Apple produce sketchbooks from January 2002 through January 2003. Samsung’s letter of December 30 is the first time Samsung has made the request for sketchbooks dating back to 2002. Apple disclosed on September 15 that it used a 2003 date cut-off in connection with Industrial Designer document productions. The parties discussed Apple’s 2003 date cut-off on sketchbooks specifically during a meet-and-confer on December 21. Apple invited Samsung to name a date that it considered early enough. Samsung declined to do so. Instead, Samsung asked Apple to confirm in writing what date it used as a cut-off for production of sketchbooks. Apple did so in a letter of December 24, then proceeded to complete scanning and processing of sketchbooks over the Christmas holiday. Samsung has articulated no basis for its untimely and arbitrary request for pre-January 2003 sketchbooks. Apple sees no evidence that any industrial designer was involved in anything relating to the project, which led to tablet design, until the fall of 2003. As a result, Apple will not produce 2002 sketchbooks. Keyword Searches of Inventor Documents Samsung took issue with certain of Apple’s searches in a letter of November 29, 2011 and asked Apple to run 114 new searches. Apple subsequently ran almost all of them. In a letter of December 24, Apple counterproposed search terms in a handful of instances where Samsung’s terms were overbroad, e.g., “look” and “feel.” Samsung submitted a countercounter proposal on December 30. A table setting out these positions and Apple’s current offer is below. Search terms for industrial design inventors: sf-3090097 Diane Hutnyan January 5, 2012 Page Seven Term Suggested by Samsung Delimited Term Counter-counter proposal by Samsung Apple’s Reply Corner or radius corner within 25 of radius corner* within 25 of (radi* or sharp or round*) corner* within 5 of (radi* or sharp or round*) balanc* balanc* within 10 of (design or border) balanc* within 25 of (feel or look or design or border or impression) acceptable thin or light thin within 10 of light (thin* or light* or thick*) within 25 of (design or form or factor or profile or phone) (thin* or light* or thick*) within 5 of (form or factor or profile or phone) target none - no basis for relevance target within 25 (audience or customer or user or purchaser) acceptable mask mask and glass and (tablet or display or screen or edge or perimeter) mask Will provide in separate correspondence sf-3090097 Please provide examples of false hits if Apple claims this term is overly Diane Hutnyan January 5, 2012 Page Eight burdensome look or feel look within 10 of feel Apple’s proposed search is sufficient N/A simpl* simpl* within 10 of design simpl* within 10 of (design or form or factor or appearance or impression or phone) simpl* within 10 of (design or form or factor or appearance or impression) minimal* minimal* within 10 of design minimal* within 10 of (design or form or factor or appearance or impression or phone) acceptable speaker or slot speaker within 25 of slot (speaker or “ear piece”) within 25 (slot or opening or location or shape) acceptable chamfer chamfer within 25 of (bezel or rim or receiver) Apple’s proposed response is sufficient N/A button button within 10 of (home or menu or volume or hold) button within 10 of (home or menu or volume or hold or locat* or recess* or concave or circ*& or quit or calm or lent*) acceptable tablet tablet within 10 of sf-3090097 Diane Hutnyan January 5, 2012 Page Nine computer Search terms for Messrs. Chaudhri and Anzures: grid grid within 20 of icon grid within 20 of (icon* or pattern* or layout or display or align* or line* or springboard or row) grid within 20 of (icon* or pattern* or layout or display or align* or springboard or row) array array within 20 of icon array within 20 of (icon* or pattern* or layout or display or align* or line* or grid or springboard or row) acceptable columns columns within 20 of icon column* within 20 of (icon* or pattern* or layout or display or align* or line* or grid or springboard or row) column* within 10 of (icon* or pattern* or layout or display or align* or line* or grid or springboard or row) message within 20 of (icon or metaphor) none — no basis for relevance message within 20 of (icon or metaphor) “message icon” or message within 20 of metaphor These terms are relevant to the text message (or instant message) icon depicted in the patented designs, as well as the trademark for the messaging icon. dock sf-3090097 dock within 10 of (icon or bottom or dock within 20 of (icon* or bottom or row or phone or dock within 10 of (icon* or bottom or row or phone or Diane Hutnyan January 5, 2012 Page Ten row) status within 5 of bar homescreen or springboard or place* or arrang* or config* or layout or transparen* or thumb or convenien* or locat*) homescreen or springboard or place* or arrang* or config* or layout or transparen* or thumb or convenien* or locat*) none – no basis for relevance status within 5 of bar status bar within 5 of (icon or design) These terms are relevant to the status bar at the top of the homescreen, which is depicted in the UI design patents. springboard springboard within springboard within 10 of (icon or GUI or 20 of (phone or interface) iphone or icon* or GUI or UI or interface or design or patent* or grid or column* or look or dock or dots or intuitive or function* or intent* or easy or convenien* or thumb or navigate or unique or novel or wada) springboard within 5 of (phone or iphone or icon* or GUI or UI or interface or design or patent* or grid or column* or dock or dots or intuitive or function* or intent* or easy or convenien* or thumb or navigate or unique or novel or wada) target none — no basis for relevance acceptable target within 25 (audience or user or customer or purchaser) Apple’s Responses to Certain RFPs Samsung requests that Apple confirm it is “producing all documents and tangibles” relating to several specifically enumerated requests for production relating to willful infringement by Samsung of Apple’s trade dress, trademarks, and design patents, namely Request Nos. 146, sf-3090097 Diane Hutnyan January 5, 2012 Page Eleven 152, 154, 156, 157, 159, 162, 165, 179, 181, 182, and 192. This issue was raised by Samsung for the first time by letter on December 30, and is unripe for lead counsel meetand-confer or a motion to compel. It is unclear to Apple why Samsung has suddenly taken issue, without any meet-and-confer, with these specific requests for production. Nor is it clear what Samsung seeks by its requested confirmation. As stated in Apple’s responses to the relevant requests for production, subject to and without waiving its objections, Apple has produced or will produce responsive, non-privileged documents in its possession, custody, or control, if any, located after a reasonable search. Ive Deposition Samsung has requested a second day of deposition with Jonathan Ive. Again, this is an unripe issue raised for the first time in Samsung’s letter of December 31. Samsung has set out no basis for its request, simply stating that it needs another day of deposition with Mr. Ive and demanding a deposition within the next two weeks. Samsung had its full measure of deposition time with Mr. Ive. Samsung chose when to take the deposition. Apple will not present Mr. Ive for another day of deposition. Stanford Archive Samsung claims that Apple has failed to make available documents and things in the Stanford archive. Yet again, this is an issue raised for the first time in Samsung’s letter of January 1, 2012. There has been no prior correspondence on this and no meet-and-confer. Samsung is seeking Apple’s assistance to access a “large collection of the company’s historical documents and artifacts” donated to Stanford. Apple will send a letter to the archive asking Stanford to give access to Samsung. Please let us know the names of the attorneys who will conduct the review. Please also confirm that Samsung will timely produce any documents or things that it obtains from the archive. **** Six of Samsung’s eighteen topics—the most substantive—were raised for the first time on the last days of December or first days of January with no prior correspondence and no meetand-confer. It is a waste of both Mr. McElhinny’s and Mr. Verhoeven’s time for one party to bombard the other with letters that simultaneously a) raise issues for the first time and b) purport to tee them up for lead-counsel meet-and-confer. Please refrain from this abusive attempt to circumvent the meet-and-confer process in the future. sf-3090097 Diane Hutnyan January 5, 2012 Page Twelve Sincerely, /s/ Jason R. Bartlett Jason R. Bartlett Attachment sf-3090097 Diane Hutnyan January 5, 2012 Page Thirteen Samsung Request Mac OS 10.0 working computer with brightness adjustment button Memory card containing Samsung photographs of Apple tablet models. De-designated photographs of the 035 Model sf-3090097 What Apple Has Produced or Will What Apple Will Not Produce Produce Source code relating to feature at N/A issue (12/15) Working computer loaded with OS 10.0 (12/15) Follow-up production of requested additional code (12/23) Apple is continuing to investigate the brightness button issue. Memory card (1/3/2012) De-designated photographs of the 035 Model with information going beyond PTO record redacted De-designated photographs with unredacted scale information or closeups showing more information than is present in PTO record Diane Hutnyan January 5, 2012 Page Fourteen Samsung Request Documents containing the search term “Samsung” Customer Surveys and other market research sf-3090097 What Apple Has Produced or Will What Apple Will Not Produce Produce Searches for Apple documents Search for containing the term “Samsung” “Android” or conducted on Apple inventor “Droid” without documents additional delimiters Searches for Apple documents containing the term “Samsung” will be conducted on product marketing, advertising, and market research files relating to research conducted by Apple by January 31, 2012. Searches for Apple documents containing the term “Android” or “Droid” with the delimiter DomainSender = Apple, as absent a delimiter, such a search returns tens of thousands of irrelevant documents that would take months to review. Final survey reports, “All” documents questionnaires and raw survey data relating to for all customer surveys conducted customer surveys by Apple relating to iPhone, iPod (overbroad, touch and iPad (1/31/2012) unreasonably duplicative, All market research reports burdensome) purchased by Apple in the ordinary course of business relating to iPhone, iPod touch and iPad. (1/31/2012) Diane Hutnyan January 5, 2012 Page Fifteen Samsung Request Financial Documents sf-3090097 What Apple Has Produced or Will Produce U.S. and world wide units by quarter from FY 2007 to 2011 for iPhone, iPod touch and iPad (1/13/2012) U.S. and world wide revenue by quarter from FY 2007 to 2011 for iPhone, iPod touch and iPad (1/13/2012) GAAP line of business reports setting forth Standard Margins, Adjusted Standard Margins, Gross Margins, allocated SG&A, and Research and Development Costs for iPhone, iPad and iPod for FY2007 to 2011 (1/13/2012) Bill of Materials for all accused Apple products (including line item cost information) (1/13/2012) Capital expenditure data for the U.S. and world wide relating to iPhone, iPad and iPod (1/13/2012) What Apple Will Not Produce “All” Financial Documents (unreasonably duplicative, burdensome, and unreliable) Diane Hutnyan January 5, 2012 Page Sixteen Samsung Request REDA CTED Working Apple prototypes Models What Apple Has Produced or Will What Apple Will Not Produce Produce CAD for original iPhone N/A (produced during PI phase) CAD for all other announced iPhone, iPod touch, and iPad products (12/30/2011) Sketchbooks relating to announced iPhone, iPod touch, and iPad products (12/30/2011) All emails and electronic files of Industrial Designers (rolling production substantially completed in October 2011) All models, partial models, and parts relating to announced iPhone, iPod touch and iPad products (1/15/2012) REDACTED NeXT OS Source Code sf-3090097 (1/31/2012) Working prototypes All available NeXT OS source code (1/13/2012) N/A Diane Hutnyan January 5, 2012 Page Seventeen Samsung Request All documents relating to Tiger operating system (Mac OS 10.4) sf-3090097 What Apple Has Produced or Will Produce Copy of Mac OS Tiger with screenshot showing “dock” icons. What Apple Will Not Produce “All” documents relating to Tiger (burdensome, irrelevant; theory of relevance is some icons in iOS, shown in asserted design patent, are were found in Tiger “dock”; no reason to produce any source code, much less “all documents relating to Tiger” based on that) Diane Hutnyan January 5, 2012 Page Eighteen Samsung Request Advertising Documents sf-3090097 What Apple Has Produced or Will Produce Representative advertising relating to iPhone and iPod touch (produced during PI phase) Advertising campaign binders (1/31/2011) Media plans (1/20/2011) Print advertisements (1/13/2011) Television advertisements (1/13/2011) Outdoor advertisements (1/13/2011) Report of database of iPhone, iPad and iPod touch in media (1/13/2011) “Click count” reports for Search Engine Marketing (1/20/2011) Online display advertisements (1/31/2011) Direct marketing messages (1/31/2011) Billets reports (audit of advertising as run) (1/31/2011) Also, primary and secondary market research data as discussed below (see customer surveys and market research) What Apple Will Not Produce “All” documents relating to advertising “builds,” as Apple has not found any such document type. “All” documents relating to advertising and marketing generally (vague, overbroad) Diane Hutnyan January 5, 2012 Page Nineteen Samsung Request Industrial Designer sketchbooks dated between 1/2002 and 1/2003 What Apple Has Produced or Will Produce Industrial Designer Sketchbooks dated from 1/2003 to the present to the extent related to announced iPhone, iPod touch, and iPad products (rolling production concluded 12/30/2011) Keyword Searches of Inventor Documents All electronic searches Samsung requested in its letter of November 29 except for certain overbroad search terms (e.g. “look” and “feel”). Apple proposed alternatives to Samsung’s overbroad searches in its letter of December 24. Samsung submitted a counterproposal on December 30. Certain Samsung RFPs Relating to Infringement / Willful Infringement. Have already produced nonprivileged Samsung negotiations documents Any other responsive documents located will be produced as they are found after a reasonable search. sf-3090097 What Apple Will Not Produce Sketchbooks dating from January 2002 to January 2003 (Samsung could have specifically requested much earlier, but did not. Samsung has provided no reason to think that preJanuary 2003 sketchbooks are relevant). Apple’s position on Samsung’s counterproposal is in the letter to which this chart is attached. N/A Diane Hutnyan January 5, 2012 Page Twenty Samsung Request A second day of deposition with J. Ive (12/31/2012 Access to the Stanford Archive of Apple materials (1/1/2012) sf-3090097 What Apple Has Produced or Will Produce Depositions of every inventor on every asserted patent, including all Industrial Designers Apple will send a letter to the archive asking Stanford to give access to Samsung. What Apple Will Not Produce A second deposition of J. Ive (Samsung’s request, raised just days ago, failed to state any basis) N/A

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