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

Filing 781

Administrative Motion to File Under Seal filed by Samsung Electronics America, Inc., Samsung Electronics Co. Ltd., Samsung Telecommunications America, LLC. (Attachments: #1 Proposed Order Granting Samsung's Motion to File Documents Under Seal, #2 Exhibit 1 to Motion to Seal: Redacted Samsung Motion to Compel Production, #3 Exhibit 2 to Motion to Seal: Redacted Diane Hutnyan Declaration ISO Samsung's Motion to Compel, #4 Exhibit A to Hutnyan Declaration, #5 Exhibit B to Hutnyan Declaration, #6 Exhibit C to Hutnyan Declaration, #7 Exhibit D to Hutnyan Declaration, #8 Exhibit E to Hutnyan Declaration, #9 Exhibit F to Hutnyan Declaration, #10 Proposed Order Granting Samsung's Motion to Compel Efforts to Obtain Documents Related to Design Patents)(Maroulis, Victoria) (Filed on 3/7/2012)

EXHIBIT 2

1 QUINN EMANUEL URQUHART & SULLIVAN, LLP
Charles K. Verhoeven (Cal. Bar No. 170151)
 [e-mail]
50 California Street, 22nd Floor
 San Francisco, California 94111
Telephone: [phone]
 Facsimile: [phone]
 Kevin P.B. Johnson (Cal. Bar No. 177129)
[e-mail]
 Victoria F. Maroulis (Cal. Bar No. 202603)
[e-mail]
 555 Twin Dolphin Drive 5th Floor
Redwood Shores, California 94065
 Telephone: [phone]
Facsimile: [phone]

Michael T. Zeller (Cal. Bar No. 196417)
 [e-mail]
865 S. Figueroa St., 10th Floor
 Los Angeles, California 90017
Telephone: [phone]
 Facsimile: [phone]
 Attorneys for SAMSUNG ELECTRONICS
CO., LTD., SAMSUNG ELECTRONICS
 AMERICA, INC. and SAMSUNG
TELECOMMUNICATIONS AMERICA, LLC



UNITED STATES DISTRICT COURT



NORTHERN DISTRICT OF CALIFORNIA, SAN JOSE DIVISION

 APPLE INC., a California corporation,

CASE NO. 11-cv-01846-LHK



DECLARATION OF DIANE C.
HUTNYAN IN SUPPORT OF
SAMSUNG’S MOTION TO COMPEL
PRODUCTION OF DOCUMENTS
RELATING TO APPLE’S EFFORTS TO
OBTAIN DESIGN PATENTS RELATED
TO THE PATENTS-IN-SUIT



Plaintiff,
vs.

 SAMSUNG ELECTRONICS CO., LTD., a
Korean business entity; SAMSUNG
 ELECTRONICS AMERICA, INC., a
New York corporation; SAMSUNG
 TELECOMMUNICATIONS
AMERICA, LLC, a Delaware limited liability
 company,


Date: April 10, 2012
Time: 10:00 a.m.
Place: Courtroom 5, 4th Floor
Judge: Hon. Paul S. Grewal

Defendants.




FILED UNDER SEAL


Case No. 11-cv-01846-LHK

1

I, Diane C. Hutnyan, declare:

2

1.

I am a member of the bar of the State of California and am admitted to practice

3 before this Court. I am a partner at Quinn Emanuel Urquhart & Sullivan, LLP, counsel for
4 Samsung Electronics Co., Ltd., Samsung Electronics America, inc., and Samsung
5 Telecommunications America, LLC (collectively “Samsung”) in this action.

I have personal

6 knowledge of the following facts, and would competently testify to them if called upon to do so.
7

2.

8 matter.

On August 3, 2011, Samsung served its First Set of Requests for Production in this
A true and correct copy of Samsung’s First Set of Requests for Production is attached

9 hereto as Exhibit A.
10

3.

Request No. 81 asked for production of: “Prosecution histories of the APPLE IP,

11 including all PRIOR ART cited therein, patents related to the APPLE PATENTS-IN-SUIT, and
12 any foreign counterpart patents, registrations, or applications to the APPLE IP or patents related to
13 the APPLE PATENTS-IN-SUIT, including, without limitation, any reexamination and reissue
14 applications.”
15

4.

Request No. Request 82 sought:

“All DOCUMENTS and things relating to the

16 preparation, filing and/or prosecution of the APPLE IP, patents related to the APPLE PATENTS17 IN-SUIT, and any foreign counterpart patents or patent applications to the APPLE PATENTS-IN18 SUIT or patents related to the APPLE PATENTS-IN-SUIT, including, without limitation, any
19 reexamination and reissue applications.”
20

5.

Request No. 97 sought: “All DOCUMENTS and COMMUNICATIONS

21 concerning the patentability, novelty, scope, infringement, validity, invalidity, enforceability or
22 unenforceability of any claim in any of the APPLE IP.”
23

6.

Request No. 98 sought: “All DOCUMENTS and things relating to any

24 information, including patents, publications, prior knowledge, public uses, sales, or offers for sale,
25 that may constitute, contain, disclose, refer to, relate to, or embody any PRIOR ART to any
26 alleged invention claimed by the APPLE IP.”
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Case No. 11-cv-01846-LHK
-2DECLARATION OF DIANE C. HUTNYAN IN SUPPORT OF SAMSUNG’S MOTION TO COMPEL
PRODUCTION OF DOCUMENTS RELATING TO APPLE’S EFFORTS TO OBTAIN DESIGN PATENTS
RELATED TO THE PATENTS-IN-SUIT

1

7.

Apple served a written response to the First Set of Requests for Production on

2 September 12, 2011.

A true and correct copy of Apple’s Response is attached hereto as

3 Exhibit B. With respect to Requests 81 and 82, Apple agreed to produce responsive, non4 privileged documents in its possession, custody, or control, if any, located after a reasonable
5 search, sufficient to show file histories and prosecution documents for the asserted Apple patents.
6 Apple objected to Requests 97 and 98, but offered to meet and confer.
7

8.

On December 30, 2011, Samsung served its Fifth Set of Request for Production.

8 Request No. 362 sought:

“All DOCUMENTS RELATING to any applications or other attempts

9 by APPLE to obtain any design patent registration for the iPad 2, whether in a foreign country or
10 in the U.S.”
11

9.

Apple served a written response to the Fifth Set of Requests for Production on

12 February 3, 2012.

In response to Request 362, Apple agreed to produce publicly available

13 United States file histories relating to the iPad 2, if any, located after a reasonable search.

Apple

14 has declined to produce any of its unpublished applications relating to the iPad2, or any
15 documents relating to such applications.
16

10.

Samsung has since at least January 2012 made good faith efforts to meet and confer

17 in an effort to avoid a motion with respect to Apple’s published and unpublished patent
18 applications, including for the iPad2. Attached hereto as Exhibit C are copies of correspondence
19 relating to this issue.
20

11.

The parties’ lead counsel met and conferred on February 6, and then again most

21 recently, on February 14 and 15, 2012, Apple’s counsel agreed that Apple would produce any
22 patents, applications or file history for published iPad2 and other relevant design patent
23 applications (or issued patents) no later than February 17.
24

12.

Apple has yet to do so.

With respect to unpublished applications, Apple’s counsel stated that Apple was

25 unwilling to produce such applications and related documentation because it believes Quinn
26 Emanuel might use this information to advise its clients on how to design around Apple’s patents.
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Case No. 11-cv-01846-LHK
-3DECLARATION OF DIANE C. HUTNYAN IN SUPPORT OF SAMSUNG’S MOTION TO COMPEL
PRODUCTION OF DOCUMENTS RELATING TO APPLE’S EFFORTS TO OBTAIN DESIGN PATENTS
RELATED TO THE PATENTS-IN-SUIT

1

13.

Attached hereto as Exhibit D is a true and correct copy of Apple Inc’s Amended

2 Objections and Responses to Samsung’s Interrogatory No. 7 to Apple Relating to Apple Inc's
3 Motion for a Preliminary Injunction.
4

14.

Attached hereto as Exhibit E are true and correct copies of excerpts from the

5 Certified File Wrapper for U.S. Design Patent D504, 889, as produced to Samsung by Apple in
6 this action.
7

15.

Attached hereto as Exhibit F is a true and correct copy of Exhibit 7 to the February

8 15, 2012 ITC Deposition of Christopher Stringer.
9

I declare under penalty of perjury under the laws of the United States that the foregoing is

10 true and correct.
11

Executed in Los Angeles, California on March 6, 2012.

12
13
14

By
Diane C. Hutnyan

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Case No. 11-cv-01846-LHK
-4DECLARATION OF DIANE C. HUTNYAN IN SUPPORT OF SAMSUNG’S MOTION TO COMPEL
PRODUCTION OF DOCUMENTS RELATING TO APPLE’S EFFORTS TO OBTAIN DESIGN PATENTS
RELATED TO THE PATENTS-IN-SUIT