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

Filing 841

MEMORANDUM OF POINTS AND AUTHORITIES IN OPPOSITION to ( #815 Administrative Motion to File Under Seal Apple Inc.'s Notice of Motion and Motion to Compel ) filed by Samsung Electronics America, Inc.(a New York corporation), Samsung Electronics Co. Ltd., Samsung Telecommunications America, LLC(a Delaware limited liability company). (Attachments: #1 Declaration Declaration of Joby Martin In Support of Samsung's Opposition to Apple's Motion to Compel, #2 Exhibit 1, #3 Exhibit 2, #4 Exhibit 4, #5 Exhibit 5, #6 Exhibit 6, #7 Exhibit 7, #8 Exhibit 8, #9 Proposed Order)(Maroulis, Victoria) (Filed on 3/30/2012) Modified text on 4/2/2012 (dhm, COURT STAFF).

EXHIBIT 4

quinn emanuel

trial lawyers | silicon valley

555 Twin Dolphin Drive, 5th Floor, Redwood Shores, California 94065-2139 | TEL: [phone] FAX: [phone]

WRITER'S INTERNET ADDRESS
[e-mail]

February 16, 2012

S. Calvin Walden
WilmerHale
399 Park Ave.
New York, NY 10022

Re:

Apple v. Samsung Elecs. Co. et al., Case No. 11-cv-1846

Dear Calvin:
I write in response to your letter dated January 13, 2012 concerning Apple's requests for
production. As discussed in detail below, Samsung believes that many of Apple's requests are
precluded to the extent that they seek documents beyond the scope of the Court's January 27,
2012 Order. Several other requests are overbroad and unduly burdensome; we have made a good
faith attempt to propose a narrowed scope of production responsive to these requests, subject to
client approval. To the extent that Apple believes that Samsung's offers are inadequate or
unclear, we ask that Apple explain what documents it seeks in addition to the production
described below, and why those documents are relevant.
Request No. 115
During the discussions of reciprocal document requests, Samsung agreed to produce documents
sufficient to show royalty payments made to Samsung by each licensee of the patents-in-suit.
We intend to produce this information to the extent that it is not covered by our previous
productions.
quinn emanuel urquhart & sullivan, llp
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Request No. 131
As you know, the Court's January 27, 2012 Order limits the scope of discovery relating to
negotiation documents to the "patents declared essential to the standards at issue, as defined by
the UTMS specifications stated in Apple's affirmative defenses and counterclaims." Samsung
believes that its burden to produce negotiation documents relating to standards-essential patents
is governed by the Order.
Request Nos. 140 and 141
As we have discussed previously, Samsung is not necessarily opposed to providing information
relating to bonuses and other compensation provided to inventors of the patents-in-suit. Apple,
however, has refused to produce documents relating to inventor compensation, and has
specifically instructed inventors not to answer compensation-related questions in N.D. Cal.
depositions. Please let me know if Apple is willing to produce this information on a reciprocal
basis.
Request Nos. 151-154 and 185-187
Samsung will not produce documents from any U.S. litigation except for those bearing a
technological nexus to the patents-in-suit—the same limitation that Apple imposed on Samsung's
request for documents from other litigations. Moreover, any production by Samsung will
exclude discovery motions, filings prepared by other parties, reports prepared by non-testifying
experts, and any documents that do not specifically relate to the licensing of standards-essential
IPR under the ETSI IPR Policy, the determination of a FRAND royalty rate for standardsessential IPR under the ETSI IPR Policy, and the propriety of injunctive relief for infringement
of standards-essential IPR under the ETSI IPR Policy. We are conferring with our client to
determine the precise scope of what we can agree to produce, and will get back to you shortly.
Request Nos. 113, 133 and 160
As a general matter, Apple's requests relating to Samsung's licensing policies and personnel must
be tailored to the patents-in-suit and patents covering comparable technology, rather than "all
documents" relating to Samsung's "licensing program" generally or "all documents" relating to
the licensing of "any intellectual property."
Accordingly, we propose that Samsung 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. Samsung's licensing activities with respect to non-asserted, non-essential, unrelated
patents are not relevant to Apple's claims and defenses.
We further propose that Samsung produce documents sufficient to show which Samsung
employees were involved in licensing the patents-in-suit. Samsung has already produced such
documents but will confirm whether its production is complete.

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Request No. 67
Samsung has objected to this request as overbroad insofar as it seeks "all documents" relating to
the "research, design, development, manufacture, assembly, testing, or operation" of product
features that are unrelated to the technology claimed by the patents-in-suit. At a minimum, this
request must be limited to specific product features described in Samsung's asserted patents.
Furthermore, Samsung will not produce documents relating to all of the nearly 50 products that
embody the patents-in-suit. In any event, Samsung does not believe that the documents sought
by this request are relevant to the issue of whether Apple's products infringe the asserted claims
of the Samsung patents-in-suit. Please explain why you believe such documents are relevant.
Request No. 117
Samsung believes that this request is also overbroad. We propose that Samsung produce
documents sufficient to show the information provided to a representative sample of licensees of
the patents-in-suit regarding the use, testing, manufacture and operation of product features that
embody the technology claimed by the patents-in-suit. During the January 19, 2012 discovery
hearing, Judge Grewal admonished Apple to consider mechanisms for reducing discovery
burdens, such as selecting representative samples. We believe that this request is amenable to
such an arrangement, whereby Samsung would produce documents provided to one or two
representative licensees. Please let us know if Apple would be willing to consider something
along these lines.
Request No. 132
In its January 27, 2012 Order, the Court rejected Apple's attempt to obtain all documents relating
to Samsung's participation in ETSI and 3GPP, instead finding that Samsung's proposed
productions sufficient. To the extent that Apple's request extends beyond the scope of the
discovery called for by the order, it is precluded by the Court's reasoning and conclusion.
Request No. 134
In light of the Court Order, we propose that Samsung 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). The other documents called for by this request—such as
valuations for patents other than those asserted in this action, or research and development plans
relating to technology not claimed in the patents-in-suit—are irrelevant to this case.
Requests Relating to Standards-Essential Technology (Nos. 175, 176, 179, 180, 182 and 183)
The scope of discovery that Apple sought to compel on January 10, 2012 encompassed every
relevant document that is responsive to these requests. The Court denied that motion, finding a

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more limited production sufficient to meet Apple's legitimate needs. Samsung therefore regards
its production of documents responsive to these requests as complete.

Very truly yours,

/s/
Rachel Herrick Kassabian
02198.51855/4605814.1

02198.51855/4605814.1

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