Apple Inc. v. Samsung Electronics Co. Ltd. et al
Filing
815
Administrative Motion to File Under Seal Apple Inc.'s Notice of Motion and Motion to Compel filed by Apple Inc.(a California corporation). (Attachments: #1 Apple Inc.'s Notice of Motion and Motion to Compel, #2 Declaration of S. Calvin Walden in Support of Apple Inc.'s Notice of Motion and Motion to Compel, #3 Exhibit 1, #4 Exhibit 2, #5 Exhibit 3, #6 Exhibit 4, #7 Exhibit 5, #8 Exhibit 6, #9 Exhibit 7, #10 Exhibit 8, #11 Exhibit 9, #12 Exhibit 10, #13 Exhibit 11, #14 Exhibit 12, #15 Exhibit 13, #16 Exhibit 14, #17 [Proposed] Order Granting Apple's Motion to Compel)(Selwyn, Mark) (Filed on 3/15/2012)
EXHIBIT 7
February 28, 2012
Via Electronic Mail
Rachel Kassabian, Esq.
Quinn Emanuel Urquhart & Sullivan, LLP
555 Twin Dolphin Drive, 5th Floor
Redwood Shores, CA 94065
Re:
Apple Inc. v. Samsung Electronics Co. Ltd. et al.,
Case No. 11-cv-01846-LHK (N.D. Cal.)
Dear Rachel:
I write in response to your letter dated February 16, 2012. Apple disagrees with Samsung’s
characterization of its requests for production and believes Samsung’s reliance upon the Court’s
January 27, 2012 Order is misplaced.
Request No. 115
We appreciate your agreement to produce “documents sufficient to show royalty payments made
to Samsung by each licensee of the patents-in-suit.” However, Samsung’s agreement is narrower
than Judge Grewal’s order, which requires Samsung to produce “licenses for patents not-in-suit
but nevertheless declared essential to the standards at issue.” The production of the licenses
ordered by Judge Grewal is incomplete without production of the applicable royalty payments,
and we ask that you confirm your agreement to produce documents sufficient to show those
royalty payments. In addition, please confirm that your agreement to produce “documents
sufficient to show royalty payments made to Samsung by each licensee of the patents-in-suit.”
includes any portfolio license that includes one or more of the patents-in-suit.
Request Nos. 131 and 160
We appreciate your proposal to produce “documents sufficient to show licensing policies
applicable to UMTS-essential patents and/or the patents-in-suit that are not essential to any
standard” as well as “documents sufficient to show which Samsung employees were involved in
licensing the patents-in-suit.” Apple would like to confirm the scope of that offer. Does
“licensing policies applicable to UMTS-essential patents” include general policies that are
applicable to all of Samsung’s licensing? Does it include policies that are applicable to all
standards-essential licenses? Apple seeks assurance that Samsung’s offer is not limited to a
policy, practice, custom, guideline, or procedure or a licensing program that by their terms apply
exclusively to UMTS-essential patents but rather to all policies practices, customs, guidelines, or
procedures and all licensing programs that would also cover a UMTS-essential patent (or patentin-suit). Please confirm the scope of this offer.
Rachel Kassabian, Esq.
February 28, 2012
Page 2
Request Nos. 140 and 141
Requests 140 and 141 are not broad requests for compensation information. Accordingly, your
reference to the parties’ general practice of not inquiring into private compensation matters is
inapt. Instead, Apple is seeking specific information that goes to the core of Apple’s defenses.
The requests are narrowly tailored to “documents sufficient to show” and are limited to any
specific compensation associated with patents that have been declared essential to an industry
standard. If Samsung would like to redact the portions of such policies and documents that do
not apply to compensation tied to standards-essentiality, Apple is amendable to such a
compromise.
Request Nos. 151 – 154; 185 – 187; 501 – 503
While “technological nexus” may be the correct standard to apply when determining which
patent litigation documents must be produced in a subsequent patent litigation, that standard is
completely inapplicable to determining which documents are relevant to an antitrust claim.
Apple has narrowly tailored its requests to litigation positions Samsung has taken on issues that
are identical to the issues in this case. Apple is entitled to explore Samsung’s views on its IPR
disclosure and FRAND licensing obligations; Samsung’s prior litigation statements are among
the best sources of that information. Further, the production is not burdensome.
Assuming that we reach agreement on the relevant litigations, Apple would be amenable to a
limitation that would exclude, “discovery motions, filings prepared by other parties [and] reports
prepared by non-testifying experts.”
We understand you are conferring with your client and look forward to your further response.
Samsung has also offered to meet and confer in response to Apple’s RFP’s 501-503, which seek
similar documents relating to the Panasonic litigation. Apple’s offer to compromise with respect
to RFP’s 151-154, 186-187 applies to RFP’s 501-503 as well.
Request No. 132
Your suggestion that this request overlaps with the “standards” requests that were the subject of
the prior motion to compel is mistaken. Rather than seeking documents relating to standards
setting activity, this request relates to refusals to offer a FRAND license and Samsung’s reaction,
positions and discussions of the same. Accordingly, Apple continues to demand production of
these documents, with substitution of the word “UMTS” for “Defined Wireless Standard.”
Please confirm that Samsung will produce these documents.
Rachel Kassabian, Esq.
February 28, 2012
Page 3
Request No. 134
We appreciate your agreement to “produce business plans, strategy documents, financial
projections and licensing plans that are applicable to patents that have been declared essential to
the UTMS specifications identified in Apple’s answers and counterclaims (25.212, 25.213,
25.214, and 25.322).” Does Samsung intend to produce all “business plans, strategy documents,
financial projections and licensing plans” that would include or cover any UMTS essential
patent? Apple seeks assurance that Samsung’s offer is not limited to “business plans, strategy
documents, financial projections and licensing plans” that by their terms apply exclusively to
UMTS-essential patents but rather to all “business plans, strategy documents, financial
projections and licensing plans” that would also cover a UMTS-essential patent (or patent-insuit). Please confirm the scope of this offer.
Request No. 113
If we can reach agreement on the issues related to the other requests, Apple is willing to no
longer pursue this request.
Request No. 67
The relevance of documents relating to the research and development of the products that
Samsung itself claims are embodied by the patents-in-suit should be self-evident. At a
minimum, these documents are relevant to whether there were significant problems encountered
by Samsung that were solved by the claimed patented technology, as well as to how the patented
technology developed, the relative importance to Samsung of that technology versus other
technologies incorporated into its products, and whether there are viable alternatives to its
claimed technology. Given that these documents are highly-relevant and well within Samsung’s
ability to collect and produce, they must be produced.
Request No. 117
Judge Grewal has ordered Samsung to produce documents relating to licenses to the patents-insuit (including portfolio licenses containing any of the patents-in-suit). We believe that this is
the proper criteria for production under RFP 117 as well, and therefore cannot accept Samsung’s
offer to produce documents in response to RFP 117 for only an undefined “representative
sample” of these licensees. We are not seeking documents in response to RFP 117 for all of
Samsung’s licenses, but only those licenses to the patents-in-suit (including portfolio licenses).
Rachel Kassabian, Esq.
February 28, 2012
Page 4
Requests Relating to the Underlying Technology of the ‘516, ‘941 and ‘001 Patents (Nos.
175, 176, 179, 180, 182 and 183)
Contrary to your assertion in your February 16 letter, the scope of discovery that Apple sought to
compel on January 10, 2012 did not encompass every relevant document responsive to these
requests. In Apple’s January 10 motion, Apple sought to compel additional searches of
Samsung’s inventor files and production of documents related to Samsung’s participation in
ETSI and 3GPP. Apple’s Requests Nos. 175, 176, 179 and 182 are not limited to Samsung’s
inventor files or Samsung’s participation in standards setting organizations.
These requests cover the technology in the 7,447,516 (“the ‘516 patent”), 7,386,001 (“the ‘001
patent”) and 7,675,941 (“the ‘941 patent”) patents. Given that the language in these requests
comes directly from the claim language of the ‘516, ‘001 and ‘941 patents, Samsung cannot
dispute that the documents requested are relevant. Moreover, relevant documents responsive to
these requests may be found outside of the inventors’ files. Those documents would be outside
the scope of Apple’s January 10 motion to compel and should be produced in response to these
requests.
While Apple does not agree that Requests Nos. 175, 176, 179 and 182 are overbroad, in the
interest of facilitating discovery, Apple is willing to limit its requests. For Request No. 175,
Apple requests Samsung produce documents from before July 7, 1999 concerning
“segmentation, multiplexing, channel coding and interleaving.” For Request No. 176, Apple
requests Samsung produce documents constituting or concerning the categories (b)-(f), (i) and
(k). For Request No. 179, Apple requests Samsung produce documents constituting or
concerning the categories (b)-(i), (l), and (n). For Request No. 182, Apple requests Samsung
produce documents constituting or concerning the categories (b)-(h), (k), and (n).
If we can reach an agreement on the issues related to Requests Nos. 175, 176, 179 and 182,
Apple is willing to no longer pursue Requests Nos. 180 and 183.
Best regards,
/s/ S. Calvin Walden
S. Calvin Walden
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