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 3

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N O RT H E RN VI RG I N I A, D E N VE R,
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December 6, 2011

N E W YO RK , SAN F RAN C I SCO ,
L O S A N G E L E S, P A L O A L T O ,
SAN D I E G O , WASH I N G T O N , D .C .

T O K YO , L O N D O N , BR U SSE L S,
BE I JI N G , SH AN G H AI , H O N G K O N G

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By Email ([e-mail])
Rachel Herrick Kassabian
Quinn Emanuel
555 Twin Dolphin Dr., 5th Floor
Redwood Shores, California 94065
Re:

Apple v. Samsung, Case No. 11-cv-1846-LHK (PSG) (N.D. Cal.)

Dear Rachel:
I write to summarize the discussion of Samsung’s issues in our meet-and-confer call on
Wednesday, November 30, 2011. Mia Mazza’s summary of the discussion of Apple’s issues
has been provided in a previous letter.
Date Restrictions
Lower date restrictions
During the call, you expressed dissatisfaction with Apple’s selection of June 2003 as a lower
date cutoff for design patent inventors. Apple explained that this date was chosen as being
comfortably in advance of the reduction to practice of the earliest asserted design patent, the
D’889 patent. You stated that Apple has produced documents suggesting that the D’889
patent was reduced to practice as early as June 2003. You declined, however, to identify
those documents. We asked you to propose an alternate lower date cutoff, but you declined
to provide an alternate proposal. You asked for Apple to provide greater specificity as to an
exact date of the reduction to practice of the D’889 patent, and we agreed to consider the
request.
We confirmed that Apple did not apply any lower limits to utility patent inventors.

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Rachel Herrick Kassabian
December 6, 2011
Page Two
Upper date restrictions
Apple agreed to use the patent issuance date as the upper date limit for utility patent
inventors.
Apple explained that it was still considering Samsung’s upper-date cutoff request with
respect to design patent inventor documents.
Search Terms
During the call, you asked for a response to Samsung’s letter, sent the night before the call,
regarding Samsung’s newly proposed search terms. We explained that Apple had not yet
had a chance to review and consider the letter, given the timing, but is generally amenable to
proposals of additional search terms in both directions. We noted that certain of Samsung’s
requested search terms — for example, “look” and “feel” — appear likely to give rise to an
unreasonably large number of hits. We stated that we will investigate the reasonableness of
the requested new search terms, in part by running internal searches of relevant custodians’
documents, and discuss Apple’s position with Samsung after the results of that investigation.
Judge Grewal’s November 16, 2011 Order
You sought to discuss issues raised in Samsung’s letter, sent the evening before the meetand-confer call, relating to photographs from the D’889 patent prosecution history. As
required by the Court, Apple has explained its search process and forwarded a stipulation
setting out that the “photographs from the D’889 patent prosecution history produced by
Apple are the highest quality that it has found.”
With respect to Apple’s search process, you suggested additional sources and search terms.
We stated that Apple would consider Samsung’s proposals.
With respect to the produced photographs, you referenced a November 1, 2011 declaration of
Erik Olson in opposition to Samsung’s Motion to Compel. The Olson Declaration had stated
that the exhibit corresponding to photographs from the D’889 patent prosecution history
consisted of color scans. You asserted, based on that statement, that Apple was in possession
of color copies of the photographs at issue. During the November 30 call, however, Apple
explained that the statement in the Olson declaration was intended to confirm that Apple had
used a color scanning process to ensure that the scan it had produced to Samsung was of the
highest quality. The document that was color-scanned was a black-and-white document.
Apple has produced its best available copy of the photographs at issue, and is unaware of any
color versions of the photographs at issue.

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Rachel Herrick Kassabian
December 6, 2011
Page Three
Other discovery related to D’889 and Apple Model 035
Samsung has requested that Apple agree to de-designate photographs of Apple Model 035.
Apple declines to de-designate any photos of the 035 model other than the photos that were
made public by their submission to the patent office.
With respect to Doug Satzger’s emails, we confirmed that Mr. Satzger’s employment with
Apple ended three years ago, and Apple no longer possesses any of his emails. Apple has
now conducted two thorough searches for any emails of Mr. Satzger and has been unable to
locate any.
Prior Deposition Testimony
We confirmed Apple’s offer to produce prior deposition transcripts from inventors where the
prior case exhibits a “technological nexus” with the present case, consistent with case law.
You asserted that Apple had defined “technological nexus” to cover only patents-in-suit, but
my November 29 letter defined the term as covering “prior cases involving the patents-insuit or patents covering the same or similar technologies, features, or designs as the patentsin-suit.” My letter had also provided examples for the sake of clarity.
You expressed dissatisfaction with Apple’s definition of “technological nexus,” so we asked
you to propose an alternate definition. You declined to do so. Instead, you reiterated your
request that Apple produce a list of all prior depositions of each inventor, including
depositions that were irrelevant and for which transcripts would not be produced. We
explained that this request for Apple’s attorneys to create work product is more properly
covered by an Interrogatory.
Mac OS 10.0, Super Clock, Brain Box, Philips Receiver, Apple Cinema Display, Sony
designs, other smartphone (Treo, Razr) designs
We acknowledged Samsung’s outstanding requests for information regarding these
categories, which Samsung contends may involve prior art. We confirmed that Apple is in
the process of diligently searching for the information.
Alleged waiver of attorney-client privilege
You reiterated Samsung’s assertion that by making certain statements to the Court at a
hearing regarding the conduct of Mr. Zeller, Apple waived all attorney-client privilege with
respect to certain Apple witnesses. Apple has responded that Samsung’s position is
unreasonable and unsupportable, and Apple has nothing further to state on this topic.

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Rachel Herrick Kassabian
December 6, 2011
Page Four
Protective Order for Itay Sherman
Apple provided December 5 through 7 as available dates for a lead trial counsel meet-andconfer.
Sincerely,
/s/ Jason R. Bartlett
Jason R. Bartlett
cc:

Samuel Maselli
S. Calvin Walden
Peter Kolovos

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