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

Filing 887

Declaration of Mia Mazza In Support Of Apples Administrative Motion For Clarification Regarding April 12 Order filed byApple Inc.. (Attachments: #1 Exhibit 1, #2 Exhibit 2, #3 Exhibit 3, #4 Exhibit 4, #5 Exhibit 5, #6 Exhibit 6, #7 Exhibit 7, #8 Exhibit 8, #9 Exhibit 9, #10 Exhibit 10, #11 Exhibit 11, #12 Exhibit 12, #13 Exhibit 13, #14 Exhibit 14, #15 Exhibit 15, #16 Exhibit 16, #17 Exhibit 17, #18 Exhibit 18, #19 Exhibit 19, #20 Exhibit 20, #21 Exhibit 21, #22 Exhibit 22, #23 Exhibit 23, #24 Exhibit 24)(Tucher, Alison) (Filed on 4/26/2012)

Exhibit 16

quinn emanuel trial lawyers | silicon valley
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March 3, 2012
VIA ELECTRONIC MAIL
Jason Bartlett
Morrison & Foerster, LLP
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:
This letter responds to your letter of February 29, 2012 regarding Apple's production of
employee deposition transcripts and other materials from proceedings with a technological nexus
to this action. We write this letter in one final attempt to avoid returning to Court on this issue,
though we are extremely frustrated that less than a week from the discovery cut-off and
notwithstanding the Court’s ruling requiring production of the employee transcripts over a month
ago, we still are confident that there remain responsive transcripts that have not yet been
produced.
Cases Having A Technological Nexus To This Action
In an effort to narrow the issues relating to this issue, Samsung has again reviewed the list of
actions it previously identified that have a potential technological nexus to this action, either
because they involve the same patents, or otherwise fall within the definition of technological

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nexus as adopted by the Court in its December 22 Order. As a result of that review, we believe
that at least the following actions would have responsive witness transcripts and other materials.1


Nokia v. Apple, 09-cv-00791 (D. Del.): involves the ‘381 patent at issue in this suit



Apple Inc. v. Motorola Inc. et al., 10-cv-00661 (W.D. Wis.): involves the ‘828 and
‘607 patents at issue in this suit



Apple Inc. v. Motorola Inc. et al., 10-cv-00662 (W.D. Wis.): involves the ‘002 patent
at issue in this suit



Investigation of Certain Mobile Devices And Related Software (Apple v. Motorola),
337-TA-750 (ITC): involves the ‘828 and ‘607 patents at issue in this suit



Apple v. High Tech Computer Corp., 10-cv-00167 (D. Del.): involves the ‘381 patent
at issue in this suit



Investigation Regarding Certain Portable Electronic Devices (Apple v. High Tech
Computer Corp.), 337-TA-797 (ITC): involves the ‘915, ‘129, and ‘381 patents at
issue in this suit



Investigation of Certain Electronic Devices with Multi-Touch Enabled Touchpad and
Touchscreens (Elan Microelectronics Corp. v. Apple), 337-TA-714 (ITC): involves
U.S. Patent No. 5,825, 352, which discloses a method for determining the number of
fingers simultaneously present during each scan of a touchpad surface, allows for the
determination of the location of each finger and the distance between them, and
covers similar touch-based interface functions as the '828, '915, and '163 patents at
issue in this suit



Elan Microelectronics Corp. v. Apple, Inc., 09-cv-01531 (N.D. Cal.): involves the
patent-at-issue in 337-TA-714 (ITC) (above), as well as counterclaims involving
U.S. Patent Nos. 5,764,218 and 7,495,659, which describe methods for detecting gap
intervals and mapping user input on touch-sensitive devices and cover similar touchbased interface functions as the '828, '915, '891, and '163 patents at issue in this suit



Investigation Regarding Certain Electronic Digital Media Devices (Apple v.
Samsung), 337-TA-796 (ITC): involves the ‘949 patent as well as other utility and
design patents that cover similar technologies and features as the patents-in-suit and
are claimed to be embodied by the same Apple devices. These include the D’757
and D’678 patents, which claim designs for a portable electronic device that are very
similar to the D’087 and D’677 patents-in-suit.

1

Our effort to provide such a list does not limit the scope of Apple’s obligations to
identify any other matters it is aware of that could contain responsive materials, and we expect
Apple to do so as it has previously indicated it would.
2

Deposition Transcripts of Apple Employees Subject To Court Order
Your letter asserts that Apple would review its production to “confirm that it has produced all
transcripts of Apple witnesses with a technological nexus to this case.” We have reviewed the
production as well, and have identified the following witness/employee transcripts from the
matters on our list:
1.

Nokia v. Apple, 09-cv-00791 (D. Del.)
a.

2.

Transcript of April 7, 2011 Deposition of Bas Ording

Apple Inc v. Motorola Inc. et al., 10-cv-00662 (W.D. Wis.)
a.
b.

Transcript of October 11, 2011 Deposition of Wayne Westerman

c.
3.

Transcript of September27, 2011 Deposition of Steven Christensen

Transcript of April 1, 2011 Deposition of Richard Lutton

Investigation of Certain Mobile Devices And Related Software (Apple v.
Motorola), 337-TA-750 (ITC)
a.
b.

Transcript of July 12, 2010 Deposition of Steven Hotelling

c.

Transcript of June 23, 2011 Deposition of Brian Huppi

d.

Transcript of August 3, 2011 Deposition of Joshua A. Strickon

e.

Transcript of June 28, 2011 Deposition of Wayne Westerman

f.

Transcript of July 28, 2011 Deposition of Eric Jue

g.

Transcript of July 7, 2011 Deposition of Boris Teksler

h.

Transcript of June 24, 2011 Deposition of Martin Grunthander

i.
4.

Transcript of June 23, 2011 Deposition of John G. Elias

Transcript of July 14, 2011 Deposition of Chris Krah

Investigation of Certain Electronic Devices with Multi-Touch Enabled Touchpad
and Touchscreens (Elan Microelectronics Corp. v. Apple), 337-TA-714 (ITC)
a.

Transcript of November 19, 2010 Deposition of Steven Hotelling

b.

Transcript of August 3, 2011 Deposition of Joshua A Strickon

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Thus, from the list of matters we have identified above, we only have located deposition
transcripts from the above four cases, and as to those it strongly appears that the production does
not include all Apple employee transcripts that would satisfy the technological nexus standard.
We have not located any Apple employee transcripts from the other five matters even though
most of those matters assert the same patents as Apple is asserting in this case. Remarkably,
Apple has failed to produce any deposition transcripts from its own ITC 796 case against
Samsung. It is therefore difficult for us to believe that Apple has come close to satisfying its
obligations under the Court’s December 22 Order.
Please let us know by the close of business on Monday, March 5, whether, for each case on our
list of nine cases, there are any transcripts beyond those that have been produced that satisfy the
technological nexus requirement, the Bates numbers for those if they have already been
produced, and for any that have not been produced, when Apple will produce those transcripts.
To be clear, we believe that this would include any transcripts that include testimony relating to
the scope, infringement, and/or validity of the patents-in-suit, or of related patents, or relate to
the commercial embodiments of the inventions or designs claimed in those patents. If Apple is
aware of other cases that have not been included in our list from which there may be responsive
transcripts, please let us know that as well by the end of the day on Monday, March 5, and when
we can expect to receive any responsive transcripts. Given that Apple was obligated to have
provided these transcripts by January 15, 2012, we reserve all of Samsung’s rights with respect
to this issue, including the right to seek a further opportunity to take discovery based on any
belatedly produced transcripts.
Other Materials from Related Proceedings
Beyond the employee deposition transcripts, our requests seek any other materials from the same
cases we have identified (and any others Apple is aware of) that relate to the scope, infringement
and/or validity of the patents-in-suit, or of related patents, or that relate to the commercial
embodiments of the inventions or designs claimed in those patents. We have identified the
specific requests in prior correspondence. To be clear, these materials would include any of the
following that satisfy the technological nexus requirement: (1) deposition transcripts from
witnesses other than Apple employees, including employees of the adverse party, third parties,
patent prosecution attorneys, and experts; (2) expert reports, declarations, and deposition
testimony; (3) claim construction briefs; (4) affidavits, declarations or other witness statements
from inventors, experts, and Apple employees; (5) briefing for dispositive and discovery motions
including all supporting declarations and exhibits; (6) pleadings; (7) hearing and trial transcripts;
(8) invalidity and infringement contentions; (9) materials presented as part of technical tutorials;
(10) asserted prior art; (11) written discovery and responses thereto; and (12) court orders and
opinions.
It is not clear from your February 29 letter whether Apple is objecting to searching for and
producing any of these materials, or whether its position is more nuanced. This is because your
letter in one place says “Apple is not searching for and broadly producing all ‘materials’ from
any case with an alleged technological nexus, nor is such a search called for by any of
Samsung’s requests for production,” but later appears to suggest that the reason Apple has not
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provided this information is that Samsung has not obtained consent from necessary third parties
to release their confidential business information. You also challenge the list of cases we had
previously given, although we have narrowed that list as set forth above.
With regard to CBI, you stated in your February 10 letter that once Samsung obtains third party
consent, “Apple will promptly produce” responsive documents. We have already informed you
some weeks ago that Google, Atmel, and HTC have given permission for Apple to produce CBI,
subject to the protective order, but yet Apple has not produced any materials from the related
actions. Why? With regard to Nokia and Motorola, they have asked for more information
concerning what documents are at issue, and only Apple is in a position to know this
information, but still refuses to cooperate. The fact that it is now near the end of discovery is not
the fault of Samsung, as these requests were made months ago.
More fundamentally, though, there undoubtedly is a significant amount of material that would
not contain any CBI at all. Apple has never disputed this. Still, though, Apple is using the CBI
issue as an excuse to delay. Again, the question is why?
We have been more than cooperative, and in good faith have sought to secure third party
consents. In order for us to know whether it will be necessary to move to compel and if so the
scope of any such motion, please let us know by March 5, 2012 whether Apple is going to
produce the materials from the actions we have identified that fall within the technological nexus
definition, from which cases, and if so, provide a date certain by which they will be produced.
I look forward to hearing from you.
Kind regards,
/s/ Diane C. Hutnyan
Diane C. Hutnyan

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