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

Filing 730

Declaration of Marc J. Pernick in Support of #729 Opposition/Response to Motion, CORRECTION OF DOCKET #728 filed byApple Inc.. (Attachments: #1 Exhibit 1, #2 Exhibit 2, #3 Exhibit 3, #4 Exhibit 4, #5 Exhibit 5, #6 Exhibit 6, #7 Exhibit 7, #8 Exhibit 8, #9 Exhibit 9, #10 Exhibit 10, #11 Exhibit 11, #12 Exhibit 12, #13 Exhibit 13)(Related document(s) #729 ) (Hung, Richard) (Filed on 2/13/2012)

EXHIBIT 12

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January 30, 2012

MORRISON & FOERSTER LLP
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Via E-Mail
Rachel Herrick Kassabian
Quinn Emanuel
555 Twin Dolphin Drive, Fifth Floor
Redwood Shores, CA 94065
Re:

Apple v. Samsung, Case No. 11-cv-1846-LHK (N.D. Cal.)
Subject to Protective Order––Contains Samsung AEO Information

Dear Rachel:
This responds to your January 28, 2012 letter regarding Samsung’s proposed expert Samuel
Lucente. Apple maintains its objection. At your request, I write to again set out Apple’s
position.
Apple objects to the disclosure of its protected materials to Mr. Lucente based, in part, on his
status as a co-inventor and owner of pending patent applications in several jurisdictions that
relate to user interfaces in mobile phones. As we understand it, Samsung proposes giving
Mr. Lucente access to Apple protected information on precisely this subject matter.
Samsung has never proposed any reasonable way to address that problem, or to limit the
types of information to which Mr. Lucente would be allowed access.
In addition, Samsung has still never made a proper disclosure with regard to Mr. Lucente.
This too is a basis on which Apple objects to Samsung’s disclosure of Apple protected
information to Mr. Lucente. Specifically, Paragraph 12(a) of the Protective Order (emphasis
added) states:
Prior to disclosing any Protected Material to any person described in
Paragraphs 9(b)(iii) or 10(c)(iii) (referenced below as “Person”), the Party seeking
to disclose such information shall provide the Producing Party with written notice
that includes: ... (iii) an identification of all of the Person’s past or current
employment or consulting relationships, including direct relationships and
relationships through entities owned or controlled by the Person, within the last
five (5) years....

pa-1509210

Rachel Herrick Kassabian
January 30, 2012
Page Two
This would require, among other things, that Samsung give Apple information on all of
Mr. Lucente’s consulting relationships through his current company Lucente Design. But
Samsung has not done so and, moreover, the information it has provided appears inaccurate
or incomplete.
In response to our questions about Lucente Design’s clients, Samsung reported that
Mr. Lucente’s employment with HP ended in November 2010, and that, since then, while
with Lucente Design, Mr. Lucente only consulted for Honeywell Aerospace and sits on a
Design Advisory Board at Pepsico’s Frito-Lay division. Samsung stated that, other than
those matters, Mr. Lucente “has refrained from taking on any other clients due to this case.”
The public record appears to show otherwise. Publicly available information states that
Mr. Lucente still “consults with the Hewlett-Packard Co.” (see http://idsa.org/sam-lucente
and http://www.dmi.org/dmi/html/conference/europe11/s_hp.htm), which is inconsistent
with what Samsung has told us.
Samsung’s disclosure remains incomplete under Paragraph 12(a) of the Protective Order, and
there are questions about the accuracy of what Samsung has disclosed so far.
For these reasons, it appears that motion practice is necessary to resolve the parties’ dispute.
It is possible that Samsung’s moving papers will inform our position or shed light on
potential compromises. In any event, in terms of scheduling, we can agree to a modified
version of the schedule you propose. We would agree to the following:
Samsung Motion:
Apple Opposition:
Hearing:

Monday, January 30th
Friday, February 3rd
Tuesday, February 7th

Please let us know if that is acceptable to Samsung.
Sincerely,
/s/ Marc J. Pernick
Marc J. Pernick

pa-1509210