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

Filing 741

MOTION for Attorney Fees AND COSTS IN CONNECTION WITH MOTION TO COMPEL DEPOSITIONS OF 14 OF SAMSUNG'S PURPORTED "APEX" WITNESSES filed by Apple Inc.. Motion Hearing set for 3/27/2012 10:00 AM in Courtroom 5, 4th Floor, San Jose before Magistrate Judge Paul Singh Grewal. Responses due by 3/1/2012. Replies due by 3/8/2012. (Attachments: #1 Proposed Order)(Jacobs, Michael) (Filed on 2/16/2012)

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HAROLD J. MCELHINNY (CA SBN 66781)
[e-mail]
MICHAEL A. JACOBS (CA SBN 111664)
[e-mail]
JENNIFER LEE TAYLOR (CA SBN 161368)
[e-mail]
ALISON M. TUCHER (CA SBN 171363)
[e-mail]
RICHARD S.J. HUNG (CA SBN 197425)
[e-mail]
JASON R. BARTLETT (CA SBN 214530)
[e-mail]
MORRISON & FOERSTER LLP
425 Market Street
San Francisco, California 94105-2482
Telephone: [phone]
Facsimile: [phone]

WILLIAM F. LEE
[e-mail]
WILMER CUTLER PICKERING
HALE AND DORR LLP
60 State Street
Boston, MA 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

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

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APPLE INC., a California corporation,

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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,

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Defendants.
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Case No. 11-cv-01846-LHK (PSG)
APPLE INC.’S MOTION FOR
ATTORNEYS’ FEES AND COSTS IN
CONNECTION WITH MOTION TO
COMPEL DEPOSITIONS OF 14 OF
SAMSUNG’S PURPORTED “APEX”
WITNESSES

Date:
Time:
Place:
Judge:

March 27, 2012
10:00 a.m.
Courtroom 5, 4th Floor
Hon. Paul S. Grewal

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APPLE’S MOTION TO FOR FEES & COSTS RE MOTION TO COMPEL “APEX” DEPOSITIONS
CASE NO. 11-CV01846-LHK
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NOTICE OF MOTION AND MOTION

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TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD:

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PLEASE TAKE NOTICE that on March 27, 2012, at 10:00 a.m., or as soon as the matter

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may be heard by the Honorable Paul S. Grewal in Courtroom 5, United States District Court for

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the Northern District of California, Robert F. Peckham Federal Building, 280 South 1st Street,

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San Jose, CA 95113, Apple Inc. (“Apple”) shall and hereby does move the Court for an order

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pursuant to Federal Rule of Civil Procedure 37(a)(5)(A) for an award of attorneys’ fees and costs

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incurred by Apple in connection with Apple’s Motion to Compel Depositions of 14 of Samsung’s

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Purported “Apex” Witnesses, including attorneys’ fees and costs incurred in connection with this

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motion for fees and costs.
This motion is based on this notice of motion and supporting memorandum of points and

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authorities; Apple’s Motion to Compel Depositions of 14 of Samsung’s Purported “Apex”

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Witnesses (“Motion to Compel”) filed concurrently herewith; the Declaration of Mia Mazza in

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Support of Apple’s Motion To Compel Depositions of 14 of Samsung’s Purported “Apex”

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Witnesses (“Mazza Decl.”) and all exhibits thereto; and such other written or oral argument as

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may be presented at or before the time this motion is taken under submission by the Court.

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RELIEF REQUESTED

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Pursuant to Federal Rule of Civil Procedure 37, Civil Local Rule 37-4, and the Court’s

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inherent authority, Apple seeks an order requiring Samsung and its attorneys to pay Apple the

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attorneys’ fees and expenses Apple has incurred (and will incur) (1) in connection with Apple’s

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Motion to Compel Depositions of 14 of Samsung’s Purported “Apex” Witnesses, and (2) in

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connection with this motion for fees and costs, if the Court grants Apple’s Motion to Compel

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Depositions of 14 of Samsung’s Purported “Apex” Witnesses.

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In the alternative, if the Court grants in part and denies in part Apple’s Motion to Compel

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Depositions of 14 of Samsung’s Purported “Apex” Witnesses, Apple seeks an order requiring

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Samsung and its attorneys to pay Apple a portion of the attorneys’ fees and expenses Apple has

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incurred (and will incur) (1) in connection with Apple’s Motion to Compel Depositions of 14 of

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APPLE’S MOTION TO FOR FEES & COSTS RE MOTION TO COMPEL “APEX” DEPOSITIONS
CASE NO. 11-CV-01846-LHK
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Samsung’s Purported “Apex” Witnesses, and (2) in connection with this motion for fees and costs,

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apportioned as the Court deems appropriate.

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STATEMENT OF ISSUES TO BE DECIDED

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Whether Samsung and its attorneys must pay Apple the attorneys’ fees and expenses

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Apple has incurred (and will incur) (1) in connection with Apple’s Motion to Compel Depositions

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of 14 of Samsung’s Purported “Apex” Witnesses, and (2) in connection with this motion for fees

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and costs.

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Dated: February 16, 2012

MORRISON & FOERSTER LLP

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By:

/s/ Michael A. Jacobs
Michael A. Jacobs
Attorneys for Plaintiff
APPLE INC.

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APPLE’S MOTION TO FOR FEES & COSTS RE MOTION TO COMPEL “APEX” DEPOSITIONS
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MEMORANDUM OF POINTS AND AUTHORITIES
Due to Samsung’s refusal to produce 14 high-level Samsung employees for deposition,

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Apple was forced to file a motion to compel on February 16, 2012. (See Motion to Compel, filed

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concurrently herewith.) Apple is entitled to recover its expenses if the Court grants Apple’s

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Motion to Compel. Samsung cannot show that any of the exceptions barring such recovery exist.

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If a motion to compel is granted, “the court must, after giving an opportunity to be heard,

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require the party or deponent whose conduct necessitated the motion, the party or attorney

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advising that conduct, or both to pay the movant’s reasonable expenses incurred in making the

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motion, including attorney’s fees.” Fed. R. Civ. P. 37(a)(5)(A) (emphasis added); see also

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Civ. L. R. 37-4. Rule 37(a)(5)(A) provides exceptions to this mandatory rule only if the opposing

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party can establish “(i) the movant filed the motion before attempting in good faith to obtain the

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disclosure or discovery without court action; (ii) the opposing party’s nondisclosure, response, or

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objection was substantially justified; or (iii) other circumstances make an award of expenses

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unjust.” Fed. R. Civ. P. 37(a)(5)(A). A losing party’s discovery conduct will not be substantially

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justified unless “it is a response to a ‘genuine dispute, or if reasonable people could differ as to

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the appropriateness of the contested action.’” Devaney v. Continental Am. Ins. Co., 989 F.2d

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1154, 1163 (11th Cir. 1993), quoting Pierce v. Underwood, 487 U.S. 552, 565 (1988); see also

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Adv. Comm. Notes to 1970 Amend. to former Fed. R. Civ. P. 37(a)(4) (losing party bears burden

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to demonstrate substantial justification); Rodriguez v. Simmons, No. 2:09-cv-02195-KSN, 2011

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WL 1322003, at *8 (E.D. Cal. Apr. 4, 2011) (bad faith not required).

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The prevailing party also is entitled to reimbursement of the expenses incurred in

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connection with preparing a motion for fees and costs. Matlink, Inc. v. Home Depot U.S.A.,

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Inc., No. 07cv1994-DMS (BLM), 2008 WL 8504767, at *6 (S.D. Cal. Oct. 27, 2008), citing

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Anderson v. Dir., Office of Workers Comp. Programs, 91 F.3d 1322, 1325 (9th Cir. 1996)

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(compensation for time spent litigating fee petition “must be included in calculating a reasonable

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fee because uncompensated time spent on petitioning for a fee automatically diminishes the value

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of the fee eventually received”).

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APPLE’S MOTION TO FOR FEES & COSTS RE MOTION TO COMPEL “APEX” DEPOSITIONS
CASE NO. 11-CV01846-LHK
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Samsung cannot establish that any of the exceptions barring recovery of fees and costs

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exist. First, as discussed in detail in the Mazza Declaration, Apple filed the Motion to Compel

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only after “attempting in good faith to obtain the [depositions] without court action[.]” Fed. R.

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Civ. P. 37(a)(5)(A)(i). (See Mazza Decl. ¶¶ 4–11 & Exs. 4–7.) In fact, Samsung only agreed to

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reduce the number of witnesses that it refused to produce from 17 down to 14 after Apple’s

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counsel sent Samsung 15 pages of correspondence and the parties’ lead counsel conferred in

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person on two separate occasions ending on February 14, 2012. (Id.)

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Second, Samsung lacks any justification—let alone a “substantial justification”—for its

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refusal to produce the 14 “apex” witnesses for deposition. 37(a)(5)(A)(ii). As further detailed in

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Apple’s motion to compel, there is substantial evidence that the witnesses at issue in the Motion

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to Compel were intimately involved with key issues in this case that go to the heart of the dispute

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between the parties. The “apex” witnesses were in a position to have unique knowledge of facts

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and events central to Apple’s case. Samsung has never had a colorable argument that the apex

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deposition doctrine shields such witnesses from deposition. Thus, Samsung’s failure to make the

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witnesses available for deposition was not “a response to a genuine dispute,” and “reasonable

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people could [not] differ as to the appropriateness of the contested action.” Devaney, 989 F.2d at

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1163.

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Third, and finally, Samsung can point to no “other circumstances mak[ing] an award of
expenses unjust.” Fed. R. Civ. P. 37(a)(5)(A)(iii).
Accordingly, if the Court grants Apple’s motion to compel, Rule 37(a)(5)(A) mandates an

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award of Apple’s attorneys’ fees and costs. If the Court grants in part and denies in part the

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motion to compel, Apple respectfully requests an award of a portion of Apple’s attorneys’ fees

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and costs, apportioned as the Court deems appropriate. See Fed. R. Civ. P. 37(a)(5)(C).

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In light of the fact that Apple will continue to incur fees in connection with the Motion to

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Compel through the time of hearing and in connection with this motion for fees, and due to the

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exigencies of Apple’s having to prepare the Motion to Compel, Apple asks that the Court permit

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Apple to file a supporting declaration detailing the fees incurred in connection with the Motion to

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APPLE’S MOTION TO FOR FEES & COSTS RE MOTION TO COMPEL “APEX” DEPOSITIONS
CASE NO. 11-CV01846-LHK
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Compel within two weeks after the Court issues an order granting Apple’s motion to compel, if

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any.

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CONCLUSION

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For the reasons discussed above, if the Court grants Apple’s Motion to Compel, the Court

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should issue an order directing Samsung and Samsung’s attorneys to pay Apple’s fees and costs

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incurred in connection with the Motion to Compel and this motion for fees and costs.

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Dated: February 16, 2012

MORRISON & FOERSTER LLP

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By:

/s/ Michael A. Jacobs
Michael A. Jacobs
Attorneys for Plaintiff
APPLE INC.

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APPLE’S MOTION TO FOR FEES & COSTS RE MOTION TO COMPEL “APEX” DEPOSITIONS
CASE NO. 11-CV01846-LHK
sf-3108216

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