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

Filing 788

ORDER by Judge Paul S. Grewal granting in part and denying in part #682 , #702 , #723 Motion to Compel (psglc2, COURT STAFF) (Filed on 3/8/2012)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

United States District Court
For the Northern District of California

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APPLE INC.,

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Plaintiff,
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v.
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SAMSUNG ELECTRONICS CO., LTD, a
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Korean corporation; SAMSUNG
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ELECTRONICS AMERICA, INC., a New York )
corporation; and SAMSUNG
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TELECOMMUNICATIONS AMERICA, LLC, )
a Delaware limited liability company,
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Defendants.

Case No.: C 11-cv-1846 LHK (PSG)
ORDER GRANTING-IN-PART
PLAINTIFF’S MOTION TO COMPEL
TIMELY PRODUCTION OF
FOREIGN-LANGUAGE
DOCUMENTS
(Re: Docket Nos. 682, 702, and 723)

In this patent infringement action, Plaintiff Apple Inc. (“Apple”) moves to compel the

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timely production of English and foreign-language documents in advance of related witness

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depositions. Apple contends that Defendants and counter-claimants Samsung Electronics Co.,

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LTD., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC

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(collectively “Samsung”) have routinely delayed the production of relevant, responsive discovery

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and dumped hundreds and even thousands of documents on Apple on the eve of deposition.

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Because many of these documents are in Korean, Apple argues that they require additional lead-

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time to process and translate. Their last-minute production thus interferes with Apple’s ability to

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fairly review documents and prepare competently for depositions.

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Apple initially sought to compel Samsung to produce the documents from its witness files

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at least ten days in advance of the deposition for documents written in whole or in part in a foreign

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language, and at least five days in advance for English-language documents. Based on the likely
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Case No.: CV 11-1846 LHK (PSG)
ORDER

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resolution of this motion after the close of fact discovery,1 however, Apple alternatively seeks to

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compel a second deposition with those Samsung witnesses for whom documents were not

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produced within the ten-day or five-day windows.
Samsung responds that under the court’s rulings of December 22, 2011 and January 27,

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2012, which ordered the production of documents according to certain deadlines and no later than

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three-days before a deposition,2 a “three-day rule” is “reasonable under the circumstances of the

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expedited case.” Samsung argues that the relief Apple seeks is unworkable and that Apple does not

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itself abide by its own purported standard for pre-deposition production, such that any remedy

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should be reciprocal for both sides.
On March 6, 2012, the parties appeared for hearing. Having considered the arguments and

United States District Court
For the Northern District of California

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evidence presented, the court grants-in-part Apple’s motion to compel.
I.

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BACKGROUND

Early in the case, the parties agreed that documents from witness files would be produced

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no later than five days before the deposition.3 But for a few isolated incidents in which limited

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documents were produced three or four days in advance, Apple contends that it met its obligation

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during the October 2011 depositions of Apple’s inventors and patent prosecutors. These documents

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were all in English. In contrast, Apple offers numerous examples of Samsung producing thousands

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of Korean-language documents with far less lead time, or even no lead time at all, prejudicing

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Apple’s preparation for deposition and prosecution of its case.4 Examples include:


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the production of 4,409 Korean-language documents from Samsung witness Ahyeung
Kim’s custodial files two days before the deposition, and an additional 3,069 pages on the

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Apple initially moved for and received a hearing on shortened time. In view of the frequent
requests for shortened-time in this case, the court vacated that hearing and Apple re-noticed the
hearing pursuant to Civ. L.R. 7-2 for March 6, 2012. The court is informed that fact discovery
closes on March 8, 2012.
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See Docket No. 537 (Order Granting-In-Part and Denying-In-Part Mot. to Compel) (“December
22 Order”); Docket No. 673 (Order Re: Discovery Motions) (“January 27 Order”).

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Samsung does not dispute Apple’s representation with respect to this agreement. See Docket No.
735 at 8 n.5 (Samsung’s Opp’n to Mot. to Compel).
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See Docket No. 683 ¶ 5 (Mazza Decl.).
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Case No.: CV 11-1846 LHK (PSG)
ORDER

morning of the deposition, after it had begun;

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

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the production of 5,284 Korean-language documents from Samsung witness Junho Park’s
custodial files less than three days before the deposition, and an additional 2,163 pages,
totaling 20,135 pages, less than two days before; and

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in the case of English-language documents, the production of 5,256 documents, totaling
over 35,000 pages, from Samsung witness Tim Sheppard’s custodial files just over three
days before the deposition.5

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More recent examples, cited in Apple’s reply and supplemental filing of March 4, 2012, include:
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

the production of 4,393 documents from Samsung witness Dae Woon Meyong’s custodial
files totaling 45,866 pages less than one day before the deposition. Apple notes that
Samsung, “to its credit,” agreed to reschedule the deposition to a later date.6

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the production of 0 documents from Samsung witness Min Cheol Shin’s custodial files
even three days before the deposition, but then 1,421 documents totaling 37,156 pages 5
hours before the deposition; and



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the production of 1 Korean-language document totaling 27 pages from Samsung witness
Seung Hun Yoo’s custodial files 44 days before the deposition, 6,184 Korean-language
documents totaling 30,277 pages less than 4 days before the deposition, and then another
688 documents totaling 5,680 pages 5 hours after the deposition started.7

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According to Apple, it takes an average of five days to process, review, select, and translate

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United States District Court
For the Northern District of California

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the documents for an average-sized, Korean-language production.8 Once useable documents are

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forwarded to outside counsel, it takes another five days to competently prepare for a deposition,

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reflecting the parties’ previous agreement. Apple argues that it has adhered to the five-day rule in

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producing English-only documents from its witness files, and that Samsung should not be allowed

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to operate at an advantage by giving Apple far less lead-time. Had Samsung complied with the

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actual production deadlines provided in the court’s earlier discovery orders, Apple argues that this

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motion would be unnecessary.

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Samsung does not dispute its belated pattern of production for certain depositions, but
emphasizes the numerous occasions in which it has produced the bulk of documents well in

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According to Apple, many of Tim Sheppard’s documents were illegible; Samsung did not provide
legible copies until the night before the deposition. Id. & 7.

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Docket No. 756-1 & 6 (Mazza Reply Decl.). In another instance involving a belated, voluminous
document production for Samsung witness Wookyun Kho, Apple notes that it had to “fight for
weeks” before Samsung agreed to offer Kho for a second day of deposition. Id. & 28.

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See Docket No. 766-1 && 3-9 (Supp. Mazza Decl.).

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Docket No. 683 ¶¶ 9-12.
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Case No.: CV 11-1846 LHK (PSG)
ORDER

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advance of at least the purported “three day rule.”9 Samsung attributes the late instances to

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technical glitches or late-discovered documents. Samsung also emphasizes that Apple’s

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representation of the productions for Ahyoung Kim and Junho Park, which serve as Apple’s most

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egregious examples, is not entirely accurate.10 Samsung contends that Apple has produced

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documents in less than the three-day window in numerous instances, including one occasion in

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which Apple produced “highly relevant” documents after the deposition concluded, and another in

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which Apple produced 17,000 pages of documents the day before the deposition.11 According to

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Samsung, not until January 10, 2012 did Apple first request the production of Korean-language

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documents on a ten day advance schedule.12 Samsung contends that it sought to discuss a workable

United States District Court
For the Northern District of California

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compromise during meet and confer, but that Apple was not responsive and never raised the five-

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day, English language request until this motion.13 Because Samsung has largely complied with the

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Samsung specifically concedes that it “narrowly missed” the three-day deadline for production
with respect to six depositions – those of Ahyoung Kim, Junho Park, Juho Lee, Gert-Jan Van
Lieshout, Jae Seung Yoon, and Seong Hun Kim – but otherwise has completed document
production at least three days in advance. See Docket No. 735-3 ¶ 3 (Binder Decl.). See also
Docket No. 735 at 4 (Samsung’s Opp’n to Mot. To Compel). Moreover, Samsung offered to
postpone the deposition of Junho Park due to the document production problem, but Apple
declined. Apple responds that it has no record of Samsung having offered to postpone Junho Park’s
deposition. See Docket No. 756-1 & 27.

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For Ahyoung Kim, Samsung states that it produced a substantial portion of production, totaling
thousands of documents, in October 2011, months before Kim’s January 2012 deposition. Docket
No. 735-3 ¶ 3. For Junho Park, Samsung states that it produced documents “just shy” of the three
day mark due to “technical glitches.” Docket No. 735-1 ¶ 12.

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Docket No. 735-2 ¶¶ 4-7 (Martin Decl.). Apple responds in kind to Samsung’s examples. In four
of the five cases of production that came one or two days late, Apple states that it produced
“literally a handful of documents” late, which Apple highlighted for Samsung, and to which
Samsung responded with a letter reserving all rights to call the witnesses for further deposition.
Moreover, Apple states that these witnesses were later called for deposition in the ITC action, and
Samsung did not request additional time. As to the single production of 17,000 pages late, Apple
explains that it notified Samsung immediately upon learning that an error had resulted in the
documents not being produced, provided a hard copy of the production shortly thereafter, and has
not stated that it will not make the witnesses available for additional deposition time related to the
late-produced documents. See Docket No. 756 at 8 (Apple’s Reply in Support of Mot. to Compel);
Docket No. 756-1 && 17-24.
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Docket No. 735-1 ¶ 9 (Kassabian Decl.).

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Id. ¶ 11.

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Case No.: CV 11-1846 LHK (PSG)
ORDER

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“three-day rule” and is making every effort to provide responsive discovery on the compressed

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schedule, Samsung urges that Apple’s motion should be denied.
II.

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DISCUSSION

The court’s earlier rulings referencing prioritized document production no later than three

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days in advance of a deposition provided nothing more than a “drop dead” deadline for production

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that otherwise risked arriving after the scheduled deposition to which it was relevant. Until the

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filing of this motion, neither party moved to set a requirement for longer lead-time.14 Accordingly,

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the so-called “three-day rule” urged by Samsung is not a rule at all, but a minimum requirement

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that applies only to the document production covered by the December 22 and January 27 orders.15

United States District Court
For the Northern District of California

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The court finds Apple’s demonstration of a pattern of last-minute document production by

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Samsung to be troubling in its consistency. Samsung’s own evidence shows that it has produced

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documents with less than three days’ advance timing in 6 out of 25 depositions in February and

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early March, and with less than five days’ advance timing in at least 15 out of 25 depositions.16

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Apple’s evidence shows that most of these productions involved hundreds and often thousands of

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pages of material in Korean.17

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The court finds equally troubling the failure of the parties to establish protocols in a case of

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this magnitude and complexity for the exchange of foreign-language documents, or for

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contingency arrangements when a production becomes substantially delayed. One need not

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subscribe to Apple’s 10-day and 5-day proposed rules – although Samsung does not dispute these

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time frames are appropriate for competent deposition preparation – to recognize that there is a

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point after which the production of thousands of pages of documents for deposition is likely to

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The court notes that Apple first raised the issue that it was having a problem with last-minute,
high-volume document productions from Samsung at the January 19, 2012 hearing on other
discovery motions then before the court. Because the court did not have a motion or any briefing
before it on the issue, it declined to entertain any argument on the matter at that time.

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To the extent that there is overlap between material subject to these orders and the purported
“document dumps” that are the subject of this motion, those failing to meet the three-day-inadvance requirement are in violation of the December 22 and January 27 orders.

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See Docket No. 774-3 at 2 (Martin Dec. in Support of Samsung’s Sur-Reply).

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See Docket No. 766-2 (Supp. Mazza Decl.), Ex. A-1.
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Case No.: CV 11-1846 LHK (PSG)
ORDER

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result in prejudice. As Apple noted at the hearing, the deposition may be the only opportunity to

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authenticate documents and determine their potential value and admissibility for trial.
In light of the repeated, late productions by Samsung and the volume of material involved,

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the court finds Apple’s request for additional deposition time to be warranted. Without a more

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specific showing of prejudice as to each witness, however, Apple asks too much in seeking to re-

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depose “any witnesses for whom Korean-language documents were substantially produced less

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than ten days before the deposition, or for whom English documents were substantially produced

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less than five days before the deposition.” Instead, Apple may identify no more than ten Samsung

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witnesses, out of those listed in the briefing on this motion, for whom a substantial portion of

United States District Court
For the Northern District of California

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custodial documents were produced with insufficient time to process and translate in advance of

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the deposition. Apple may take no more than 25 hours to depose all ten witnesses. As discussed at

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the hearing, these 25 hours count against the 250-hour limit set by Judge Koh. Samsung must make

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the identified persons available in conformity with the order as set out below.18

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III.

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ORDER

Samsung shall make available the witnesses identified by Apple, not to exceed ten

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witnesses for a total of 25 hours or fewer, in Korea or in this district. As further discussed at the

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hearing, no less than 72 hours in advance of the scheduled deposition, Apple shall provide

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Samsung with a list of the topics it intends to cover at the follow-up depositions. These depositions

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shall be completed no later than March 31.

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IT IS SO ORDERED.

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Dated: 5/8/2012
_________________________________
PAUL S. GREWAL
United States Magistrate Judge

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At the hearing, Samsung’s counsel argued that the remedy should be reciprocal. The court has no
motion from Samsung before it. To the extent that Samsung is attempting to pursue a non-judicial
remedy from Apple before consuming the court’s time, the court strongly encourages Apple to
extend the same opportunity to Samsung in those instances in which Apple has produced a
substantial volume of documents shortly before, or after, a deposition. In particular, the court draws
Apple’s attention to its representation with respect to Apple witness Richard Dinh: “Apple has not
stated that it will not make the witness available for additional deposition time related to the lateproduced documents.” Docket No. 756 at 8 (Apple’s Reply in Support of Mot. to Compel).
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Case No.: CV 11-1846 LHK (PSG)
ORDER