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

Filing 782

Administrative Motion to File Under Seal re Samsung's Motion Compel Production Materials From Related Proceedings and to Enforce 12/22/11 Court Order filed by Samsung Electronics America, Inc., Samsung Electronics Co. Ltd., Samsung Telecommunications America, LLC. (Attachments: #1 Proposed Order Granting Samsung's Motion to Seal, #2 Exhibit 1 to Motion to Seal: Redacted Motion to Compel re Related Proceedings, #3 Exhibit 2 to Motion to Seal: Redacted Diane Hutnyan Declaration ISO Motion to Compel re Related Proceedings, #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 Exhibit G to Hutnyan Declaration, #11 Exhibit H to Hutnyan Declaration, #12 Exhibit I to Hutnyan Declaration, #13 Exhibit J to Hutnyan Declaration, #14 Exhibit K to Hutnyan Declaration, #15 Exhibit L to Hutnyan Declaration, #16 Exhibit M to Hutnyan Declaration, #17 Exhibit N to Hutnyan Declaration, #18 Proposed Order Granting Samsung's Motion to Compel Production Materials From Related Proceedings and to Enforce 12/22/11 Court Order)(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 MATERIALS FROM
RELATED PROCEEDINGS AND TO
ENFORCE DECEMBER 22, 2011 COURT
ORDER



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.




02198.51855/4638149.3

Case No. 11-cv-01846-LHK
HUTNYAN DECLARATION IN SUPPORT OF SAMSUNG’S MOTION TO ENFORCE DECEMBER 22, 2011
COURT ORDER

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

Samsung’s Document Request For Materials From Related Proceedings

8

2.

9 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

10 hereto as Exhibit A.

Request No. 75 asked for production of: “All DOCUMENTS relating to any

11 lawsuit, administrative proceeding, or other proceeding involving any of the APPLE ACCUSED
12 PRODUCTS, APPLE IP, or patents related to the APPLE PATENTS-IN-SUIT, including, without
13 limitation, any pleading, paper, motion, affidavit, declaration, report, decision, or order, for cases
14 to include, without limitation, C11-80169 MISCJF (HRL) (N.D. Cal.), 337-TA-794 (ITC),
15 1:2010 cv 23580 (S.D. Fla.), 1:2010 cv06385 (N.D. Ill.), 1:2010cv06381 (N.D. Ill.), 337-TA-745
16 (ITC), 1:2010cv00166 (D. Del.), 1:2010cv00167 (D. Del.), 337-TA-724 (ITC), 3:2010cv00249
17 (W.D. Wisc.), and 337-TA-701 (ITC).”
18

3.

Request No. Request 97 sought: “All DOCUMENTS and COMMUNICATIONS

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

4.

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

22 September 12, 2011.

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

23 Exhibit B. Apple objected to Request Nos. 75 and 97, but offered to meet and confer.
24

Samsung’s Motion To Compel Apple Employee Deposition Transcripts And

25

The Court’s Order Requiring Production By January 15, 2012

26

5.

After Apple refused to produce responsive documents, Samsung engaged in a

27 lengthy meet and confer process in which both parties agreed the “technological nexus” standard
28 should be applied, but disagreed as to how that would be applied to the present case.
02198.51855/4638149.3

Samsung

Case No. 11-cv-01846-LHK
-2HUTNYAN DECLARATION IN SUPPORT OF SAMSUNG’S MOTION TO ENFORCE DECEMBER 22, 2011
COURT ORDER

1 argued for a factually-based interpretation, noting that Apple’s “Apple’s vague definitions are
2 antithetical to the Court’s efforts to promote discovery transparency, and inevitably lead to
3 wasteful, time-consuming disputes in the future.”
4

6.

Notwithstanding the parties’ meet and confer efforts, Apple continued to refuse to

5 produce responsive deposition transcripts from other matters responsive to Request No. 75.
6

7.

As a result, Samsung brought a motion compel the production of deposition

7 transcripts of Apple employees from the matters listed in its request.

A true and correct copy of

8 Samsung’s motion to compel is attached hereto as Exhibit C.
9

8.

In its opposition (a copy of which is attached hereto as Exhibit D), Apple claimed

10 that it had “not refused to produce deposition transcripts that are relevant to this case.”
11 Opp. at 19.

Apple

It asserted that “[f]or the inventors of the patents in suit, it has already produced prior

12 testimony that bears a technological nexus to the patents at issue in this case.” Id. Apple
13 assured the Court that “[i]t is willing to produce similar transcripts for other deponents.” Id.
14
15
16
17
18

In order to define the scope of what Apple was offering to produce, Apple proposed the
following definition of “technological nexus”: Apple interprets “technological nexus” to
include prior cases involving the patents-in-suit or patents covering the same or similar
technologies, features, or designs as the patents-in-suit. For the sake of clarity, with
respect to design patent inventors, this would include prior cases involving the asserted
design patents or other design patents covering the same designs or design elements.
With respect to utility patent inventors, this would include the asserted utility patents or
other utility patents covering touch-based interface functions, display elements, touchscreen hardware, or touch-screen logic.

19 Id. at 21. Apple claimed that “[t]his is a sufficiently clear standard for both parties to follow.”
20 Id.
21

9.

In an Order issued on December 22, 2011 (a copy of which is attached hereto as

22 Exhibit E), the Court accepted Apple’s definition of technological nexus, and ordered Apple to
23 “apply this standard and complete its production of all responsive transcripts on a rolling basis
24 and no later than January 15, 2012.”

Order at 5 & n. 6 (emphasis added).

25

Apple’s Failure To Comply With The Court’s Order And

26

Samsung’s Efforts To Secure Compliance

27

10.

By the January 15, 2012 deadline, Apple had failed to comply with the Court’s

28 December 22 Order.
02198.51855/4638149.3

Case No. 11-cv-01846-LHK
-3HUTNYAN DECLARATION IN SUPPORT OF SAMSUNG’S MOTION TO ENFORCE DECEMBER 22, 2011
COURT ORDER

1

11.

As a result, I and other members of Samsung’s counsel team were required to

2 devote a substantial number of hours seeking to secure Apple’s compliance.

This included the

3 preparation of numerous letters requesting compliance, and attending lead counsel meet and
4 confers. Attached hereto as Exhibit L is a true and correct copy of the February 28, 2012 letter
5 from me to Harold McElhinny, Kristin Yohannan, Nina S. Tallon.
6

12.

On February 13, 2012, I wrote to Apple’s counsel and identified those cases we

7 thought may have satisfied the “technological nexus” requirement set forth in the Court’s
8 December 22 Order.
9

13.

A true and correct copy of my letter is attached hereto as Exhibit F.

I attended a lead counsel meet and confer with Charles Verhoeven and Harold

10 McElhinny on February 14 and 15, 2012.

During the meeting, I asked Apple’s lead counsel

11 Harold McElhinny whether Apple would produce the depositions from the two ITC actions
12 pending between Samsung and Apple, in which similar patents were being litigated. Apple’s
13 counsel refused.
14

14.

At that same meet and confer, Apple’s counsel Jason Bartlett admitted that Apple

15 had not yet produced all deposition transcripts that fell within the scope of the Court’s
16 December 22 Order.
17

15.

On February 19, 2012, I wrote a follow up letter to Apple counsel on the subject of

18 materials from other matters having a technological nexus to this case. In that letter, I
19 specifically addressed the topic of deposition transcripts that were responsive to the Court’s
20 December 22 order, and noted Apple’s admission that it had not complied.
21 Apple produce all responsive transcripts without further delay.

I requested that

A true and correct copy of this

22 letter is attached hereto as Exhibit G.
23

16.

In a letter dated February 29, 2012 (a copy of which is attached as Exhibit H),

24 Apple’s counsel responded to my letter and agreed to “review its production to confirm that it has
25 produced all transcripts of Apple’s witnesses with a technological nexus to this case.”
26

17.

In a letter dated March 3, 2012 responding to the February 29 letter from Apple’s

27 counsel, in a final effort to avoid judicial intervention, I narrowed the list of related matters as to
28 which Samsung was seeking deposition transcripts and related materials. I further identified
02198.51855/4638149.3

Case No. 11-cv-01846-LHK
-4HUTNYAN DECLARATION IN SUPPORT OF SAMSUNG’S MOTION TO ENFORCE DECEMBER 22, 2011
COURT ORDER

1 those employee transcripts Samsung was able to locate in Apple’s production, and noted that
2 Apple had produced no transcripts for five of the nine matters, and only a few transcripts from the
3 others. It thus strongly appeared that Apple was not in compliance with the Court’s Order.

I

4 asked that Apple’s counsel let me know by Monday, March 5, 2012 whether it had any further
5 responsive transcripts and, if so, when it would be producing them.

As of the time of execution

6 of this Declaration, I have not received any response to my letter, a true and correct copy of which
7 is attached hereto as Exhibit I.
8
9

Samsung’s Efforts To Obtain Other Materials From Related Proceedings
18.

In parallel with Samsung’s efforts to secure compliance with the Court’s

10 December 22 Order, Samsung also has sought to obtain production of other materials from the
11 related proceedings that satisfy the technological nexus requirement.
12

19.

Apple has resisted producing this information, claiming that it contained

13 confidential business information (“CBI”) of third parties, and that Samsung would need to secure
14 consent of those parties before production could be made.
15

20.

In a letter dated February 10, 2012, a copy of which is attached hereto as Exhibit J,

16 Apple’s counsel stated that “[o]nce Samsung obtains this consent, Apple will promptly produce
17 such documents.”
18

21.

Samsung secured consent from HTC, Atmel, and Google, and informed Apple’s

19 counsel it had done so.
20

22.

Yet Apple continued to refuse production.

With respect to Motorola and Nokia, Samsung informed Apple’s counsel that these

21 parties had requested additional details concerning the nature of the documents that would fall
22 within the scope of Samsung’s requests, details that would necessarily need to come from Apple.
23 Apple has yet to cooperate by providing this information to the third parties who requested it.
24

23.

[Intentionally left blank.]

25

24.

[Intentionally left blank.]

26

25.

Attached hereto as Exhibit K is a true and correct copy of a January 27, 2010 Reply

27 to Office Action letter from Apple’s counsel to Patent Office, contained in the file wrapper for the
28 D’678 patent at issue in this action.
02198.51855/4638149.3

Case No. 11-cv-01846-LHK
-5HUTNYAN DECLARATION IN SUPPORT OF SAMSUNG’S MOTION TO ENFORCE DECEMBER 22, 2011
COURT ORDER

1

26.

Attached hereto as Exhibit M is a true and correct copy of the Complaint under 19

2 U.S.C. § 1337: Certain Electronic Digital Media Devices and Components Thereof, Inv. No. 3373 TA-796.
4

27.

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

5 15, 2012 ITC Deposition of Christopher Stringer, which was produced in the ITC 796
6 Investigation.
7

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

8 true and correct.
9
10
11

Executed in Los Angeles, California on March 6, 2012.
By /s/ Diane C. Hutnyan
Diane C. Hutnyan

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02198.51855/4638149.3

Case No. 11-cv-01846-LHK
-6HUTNYAN DECLARATION IN SUPPORT OF SAMSUNG’S MOTION TO ENFORCE DECEMBER 22, 2011
COURT ORDER