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

Filing 866

JOINT STIPULATION AND ORDER REGARDING SAMSUNGS PRODUCTION OF DOCUMENTS AND WITHDRAWING APPLES MOTION TO COMPEL by Judge Paul S. Grewal, re #864 Stipulation (ofr, COURT STAFF) (Filed on 4/11/2012)

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HAROLD J. MCELHINNY (CA SBN 66781)
[e-mail]
MICHAEL A. JACOBS (CA SBN 111664)
[e-mail]
RICHARD S.J. HUNG (CA SBN 197425)
[e-mail]
MORRISON & FOERSTER LLP
425 Market Street
San Francisco, California 94105-2482
Telephone: [phone]
Facsimile: [phone]

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WILLIAM F. LEE (pro hac vice)
[e-mail]
WILMER CUTLER PICKERING
HALE AND DORR LLP
60 State Street
Boston, Massachusetts 02109
Telephone: [phone]
Facsimile: [phone]
MARK D. SELWYN (SBN 244180)
[e-mail]
WILMER CUTLER PICKERING
HALE AND DORR LLP
950 Page Mill Road
Palo Alto, California 94304
Telephone: [phone]
Facsimile: [phone]
Attorneys for Plaintiff and
Counterclaim-Defendant Apple Inc.

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

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APPLE INC., a California corporation,
Plaintiff,

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v.

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

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Case No. 11-cv-01846-LHK (PSG)
JOINT STIPULATION AND
[PROPOSED] ORDER
REGARDING SAMSUNG’S
PRODUCTION OF DOCUMENTS
AND WITHDRAWING APPLE’S
MOTION TO COMPEL

Defendants.

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JOINT STIPULATION AND [PROPOSED] ORDER REGARDING SAMSUNG’S PRODUCTION OF DOCUMENTS AND WITHDRAWING
APPLE’S MOTION TO COMPEL
CASE NO. 11-CV-01846-LHK (PSG)

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WHEREAS, on March 15, 2012, Apple Inc. (“Apple”) filed a Motion to Compel Samsung

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Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications

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America, LLC (collectively “Samsung,” and together with Apple, “the Parties” and individually

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each a “Party”) to produce (i) documents relating to positions Samsung has taken in other

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litigations regarding the licensing of patents and other intellectual property rights (“IPR”) claimed

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to be essential to the UMTS standard, the determination of a fair, reasonable and non-

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discriminatory (“FRAND”) royalty, and the propriety of injunctive relief for the infringement of

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IPR claimed to be essential to the UMTS standard; and (ii) documents concerning Samsung’s

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plans for the development, marketing or licensing of IPR that is claimed to be essential to the

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UMTS standard, including presentations to executive management and the Board of Directors.

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WHEREAS, on March 29, 2012, Samsung filed an Opposition to Apple’s Motion to
Compel;
WHEREAS, pursuant to Court Order, the filing date for the reply in support of Apple’s
Motion to Compel is April 10, 2012;
WHEREAS, the Parties have met and conferred and agreed to the joint stipulation below
that would resolve this discovery dispute without the Court’s intervention;
NOW, THEREFORE, IT IS HEREBY STIPULATED AND AGREED by the Parties as
follows:
1.

Samsung agrees to produce on a rolling basis, its non-privileged documents, if any,

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that it is able to locate after conducting a reasonable search, responsive to the following

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categories of documents for litigation in the US and foreign jurisdictions, excluding any

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responsive discovery motions, filings by third parties, and documents prepared by non-testifying

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experts:

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Documents and/or responsive portions thereof, including briefing not
publicly available on Pacer, responsive excerpts of deposition or other
testimony of Samsung’s current or former employees or its testifying
experts, and reports and/or responsive portions thereof prepared by
Samsung’s testifying experts, relating to or containing any claims or
statements by Samsung in any litigation or judicial proceeding, regarding
the determination of a FRAND royalty rate for any IPR that is claimed
Essential to the UMTS Standard, and the propriety of injunctive relief for
the infringement of IPR claimed to be Essential to the UMTS Standard.
JOINT STIPULATION AND [PROPOSED] ORDER REGARDING SAMSUNG’S PRODUCTION OF DOCUMENTS AND WITHDRAWING
APPLE’S MOTION TO COMPEL
CASE NO. 11-CV-01846-LHK (PSG)

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For the avoidance of doubt, Samsung agrees to conduct a reasonable
search for documents from at least the following litigations, and will
produce its non-privileged responsive documents (or portions thereof), to
the extent they exist: (1) In re Certain 3G WCDMA Handsets
(InterDigital v. Samsung), No. 337-TA-601 (I.T.C.); (2) Samsung v.
InterDigital, No. 07-0167 (D. Del.); (3) Ericsson v. Samsung, No. 06-0063
(E.D. Tex.); and (4) Telefonaktiebolaget LM Ericsson v. Samsung
Electronics UK Ltd., HC06 C00618. Of course, Samsung reserves the
right to make redactions as appropriate where documents contain nonresponsive information or statements, and to protect information about
unannounced products.

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2.

Samsung agrees to produce the documents referenced in paragraph 1, above, on a

rolling basis. Samsung agrees to use its best efforts to substantially complete production of
documents not containing third party confidential information by April 16, 2012. Any nonprivileged responsive documents that are not in English, however, may take longer to review and
produce, and Samsung agrees to produce such documents on a rolling basis to be substantially
completed by April 24, 2012. To the extent any documents referenced in paragraph 1 are subject
to a protective order or other provision precluding their disclosure to Apple, Samsung will use its
best efforts to obtain any necessary third party consent to redact any third party confidential
information and produce those documents in redacted form in the first instance by April 16, 2012.
To the extent that there are any documents referenced in paragraph 1 that Samsung is unable to
produce to Apple by April 16, Samsung agrees to meet and confer with Apple on April 18, 2012
at 2:00 p.m. Pacific concerning which documents have not been produced and the reasons
therefor. For those responsive documents that were redacted to protect third party confidential
business information, Samsung shall use its best efforts to obtain third party consent to provide
unredacted copies of those documents responsive to paragraph 1 as quickly as possible.
However, nothing in this stipulation shall require Samsung to produce responsive documents
from other proceedings if doing so would require Samsung to violate the terms of a protective
order or other authority precluding the disclosure of those documents.
3.

Samsung agrees to use its best efforts to make a substantially complete production

by April 16 of its non-privileged, responsive business plans, strategy documents, financial
projections and licensing plans dated from January 1, 1999 to December 31, 2005, located after a
JOINT STIPULATION AND [PROPOSED] ORDER REGARDING SAMSUNG’S PRODUCTION OF DOCUMENTS AND WITHDRAWING
APPLE’S MOTION TO COMPEL
CASE NO. 11-CV-01846-LHK (PSG)

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reasonable search, that are applicable to patents that have been declared essential to the UMTS

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specifications identified in Apple’s answer and counterclaim, even if those business plans and

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other responsive documents also apply to other patents, to UMTS generally and/or to 3G

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generally. Of course, Samsung reserves the right to make redactions as appropriate to protect

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information about unannounced products or technology that has not been incorporated into a

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released product. To the extent that there are any documents referenced in this paragraph that

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Samsung is unable to produce to Apple by April 16, Samsung agrees to meet and confer with

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Apple on April 18, 2012 at 2:00 p.m. Pacific concerning which documents have not been

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produced and the reasons therefor.

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4.

Apple’s Motion to Compel [Dkt. 815] is withdrawn. Apple may still file a motion

to enforce this stipulation if necessary; and
5.

No other dates or deadlines shall be modified by this stipulation and order.

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JOINT STIPULATION AND [PROPOSED] ORDER REGARDING SAMSUNG’S PRODUCTION OF DOCUMENTS AND WITHDRAWING
APPLE’S MOTION TO COMPEL
CASE NO. 11-CV-01846-LHK (PSG)

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Dated: April 10, 2012

Dated: April 10, 2012

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/s/ Mark D. Selwyn_____
William F. Lee
WILMER CUTLER PICKERING
HALE AND DORR LLP
60 State Street
Boston, Massachusetts 02109
Telephone: [phone]
Facsimile: [phone]

/s/ Victoria Maroulis________
Charles K. Verhoeven
QUINN EMANUEL URQUHART
& SULLIVAN LLP
50 California Street, 22nd Floor
San Francisco, California 94111
Telephone: [phone]

Mark D. Selwyn
WILMER CUTLER PICKERING
HALE AND DORR LLP
950 Page Mill Road
Palo Alto, California 94304
Telephone: [phone]
Facsimile: [phone]

Victoria Maroulis
Rachel Herrick Kassabian
QUINN EMANUEL URQUHART
& SULLIVAN LLP
555 Twin Dolphin Drive, 5th Floor
Redwood Shores, California 94065
Telephone: [phone]

Harold J. McElhinny
Michael A. Jacobs
Richard S.J. Hung
MORRISON & FOERSTER LLP
425 Market Street
San Francisco, California 94105
Telephone: [phone]
Facsimile: [phone]
Counsel for Plaintiff and CounterclaimDefendant Apple Inc.

Diane C. Hutnyan
QUINN EMANUEL URQUHART
& SULLIVAN LLP
865 S. Figueroa St., 10th Floor
Los Angeles, California 90017
Telephone: [phone]
Counsel for Samsung Electronics Co., Ltd.,
Samsung Electronics America, Inc., and
Samsung Telecommunications America, LLC

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PURSUANT TO STIPULATION, IT IS SO ORDERED.

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Dated:

, 2012

By:
The Honorable Paul S. Grewal
United States Magistrate Judge

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JOINT STIPULATION AND [PROPOSED] ORDER REGARDING SAMSUNG’S PRODUCTION OF DOCUMENTS AND WITHDRAWING
APPLE’S MOTION TO COMPEL
CASE NO. 11-CV-01846-LHK (PSG)

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ATTESTATION OF E-FILED SIGNATURE

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I, Mark D. Selwyn, am the ECF User whose ID and password are being used to file this

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Declaration. In compliance with General Order 45, X.B., I hereby attest that Victoria Maroulis

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has concurred in this filing.

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Dated: April 10, 2012

/s/ Mark. D Selwyn
Mark D. Selwyn

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JOINT STIPULATION AND [PROPOSED] ORDER REGARDING SAMSUNG’S PRODUCTION OF DOCUMENTS AND WITHDRAWING
APPLE’S MOTION TO COMPEL
CASE NO. 11-CV-01846-LHK (PSG)

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