Apple Inc. v. Samsung Electronics Co. Ltd. et al
Filing
825
OPPOSITION to ( #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 byApple Inc.. (Attachments: #1 Nathan Sabri Declaration, #2 Exhibit 1, #3 Exhibit 2, #4 Exhibit 3, #5 Exhibit 4, #6 Exhibit 5, #7 Exhibit 6, #8 Exhibit 7, #9 Exhibit 8, #10 Proposed Order)(Jacobs, Michael) (Filed on 3/21/2012) Modified text on 3/22/2012 (dhm, COURT STAFF).
Exhibit 1
quinn emanuel
trial lawyers | washington, dc
1299 Pennsylvania Avenue NW, Suite 825, Washington, District of Columbia 20004-2400 | TEL: (202) 756-1950 FAX: (202) 756-1951
November 3, 2011
VIA ELECTRONIC MAIL
Jason Bartlett
Morrison and Foerster
425 Market Street
San Francisco, California 94105-2482
Re:
Apple v. Samsung Elecs. Co. et al., Case No. 11-cv-1846 LHK (N.D. Cal.)
Dear Jason:
Per our discussions during yesterday’s meet and confer call, we have grouped Samsung’s
Requests for Production (Set One) into categories for ease of reference. Those categories, and
our comments where appropriate, are set forth below. Please provide a written response by
Monday, November 7 identifying which categories of documents Apple will agree to produce.
The parties can discuss any areas of disagreement at our next meet and confer session on
Wednesday, Nov. 9.
Product Examples, Technical, and Manufacturing Documents (1, 6, 7, 8, 16, 39, 69, 76, 77,
136)
On yesterday’s call, you indicated that Apple would agree to a mutual exchange of
product examples. We are considering your proposal and will get back to you. You also
indicated that you would provide all requested manufacturing and sales information for all
products manufactured and imported into the US. We are currently assessing whether this is
adequate.
Furthermore, you indicated that Apple intends to produce the documents already
produced in the 794 investigation in this case. You also indicated that you are undertaking an
quinn emanuel urquhart & sullivan, llp
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independent investigation in this case to identify additional documents relevant to the Northern
District of California case. You indicated that these documents will be produced this month.
Corporate Documents (4, 14, 36, 70, 72, 74, 144)
On yesterday’s call, you indicated that Apple would provide internal code names for all
Apple products, as well as accused components, such as the baseband processor, source code,
and touchscreen. Please provide this information so that we can determine whether we need
additional information responsive to these requests.
Licensing and license negotiations/settlement agreements and FRAND (9, 11, 12, 50, 51, 59
60 110, 112, 113, 111, 114, 117, 118, 119, 121, 133, 143, 167)
Apple’s licenses with REDACTED
have been produced. On yesterday’s call Apple
proposed that the parties agree to exchange just the bare licenses for all of the non-essential
patents, and that for the essential patents, Apple wanted negotiation documents as well. We are
considering this proposal and will get back to you.
Documents pertaining to this lawsuit and pre-suit investigation (38, 46, 52, 63, 64, 65, 66,
68, 73, 126, 127, 153, 180, 185)
Documents related to other lawsuits and enforcement of the Apple patents and claims (75,
91, 94, 120, 142, 184, 95, 124, 125, 187)
Apple has produced a number of deposition and trial transcripts relating to inventors of
patents previously asserted. Apple has also produced a small number of additional transcripts.
The number of remaining transcripts from Apple’s witnesses is small, and highly relevant to this
case.
First, Samsung is entitled to these additional transcripts to assess credibility of the
witnesses. See 9th Circuit Model Civil Jury Instruction No. 2.8 (evidence that a witness lied
under oath on a prior occasion may be considered, along with all other evidence, in deciding
whether or not to believe the witness and how much weight to give to the testimony of the
witness).
In addition, these transcripts should be producedbecause the witnesses’ testimony in all
Apple-related litigations share a “technological nexus” to the technical issues in this litigation.
Inventio AG v. Thyssenkrupp Elevator Am. Corp., 662 F. Supp. 2d 375 (D. Del. 2009); see also
Bennett v. Segway, Inc., 2011 WL 4965179 (W.D.N.C. Oct. 19, 2011). Here, the witnesses have
been employed by Apple and have testified about the same or similar products at issue in this
litigation. Samsung is entitled to this former testimony.
Apple patent and trademark ownership (85, 84, 192)
Patentability of all intellectual property in the case (93, 97, 98, 104, 105, 107, 101, 102, 103,
106, 108, 109, 122, 123, 128, 129, 130, 131, 132, 188, 21, 22, 53, 61, 89, 92, 96, 99, 100)
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On last night’s call, you indicated that you would produce the source code for Mac OS
10.0, a computer with a working version of Mac OS 10.0, and the Super Clock source code.
To the extent Apple intends to argue that its intellectual property is not invalid and is
infringed, or to the extent that it intends to argue that Samsung’s patents are invalid and not
infringed, Samsung is entitled to all information Apple intends to rely on.
Similarly, to the extent Apple has information in its possession that may invalidate or
otherwise render its patents not enforceable or not infringed, Samsung is entitled to that
information as well.
Damages/remedy and marketing (115, 116, 135, 175, 25, 30, 43, 44, 45, 54, 55, 56, 134, 155,
158, 174, 161, 163)
Knowledge /Notice (150, 157, 158, 159)
Design Constraints / Functionality (176, 149, 139)
Consumer confusion/dilution/use by others/ studies/ surveys (140, 141, 166 , 146, 151 162,
165, 169, 177, 178, 179, 181, 182, 183, 191)
Secondary meaning/distinction (147, 148)
Misappropriation and contentions (152, 154, 173)
Samsung profit from trademarks (160)
Samsung Confidential Information (58)
Prosecution histories and foreign counterparts (186, 81, 82)
We have received the prosecution histories for only the Apple patents-in-suit. The family
members and foreign counterpart prosecution histories are also relevant to all claims and should
be produced.
Conception and reduction to practice (171, 189, 83, 86, 87, 88, 90, 137, 172)
We have received a small number of documents related to conception and reduction to
practice for the utility patents. We believe that not all relevant documents have been produced.
We also request that you respond to Mr. Zeller’s letter of November 1, which highlights a
number of obvious deficiencies in Apple’s production of design patent sketchbooks.
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Best regards,
/s/ Marissa R. Ducca
Marissa R. Ducca
MRD
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02198.51855/4430287.2
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