Google Inc. v. Rockstar Consortium US LP et al

Filing 134

MOTION for Issuance of Letters Rogatory to the Superior Court of Justice of Ontario, Canada for Nortel Networks Corporation, Jean-Pierre Fortin, Angela de Wilton, Jaspreet Harit, Yee-Ning Chan, Brian Finlay Beaton, Bruce Dale Stalkie, Mitch A. Brisebois, Laura A. Mahan, Paul Michael Brennan, Brian Cruickshank, and John Eric Lumsden filed by Google Inc.. (Attachments: # 1 Exhibit A to Google's Notice of Unopposed Motion and Motion for Issuance of Letter Rogatory, # 2 Declaration of Kristin J. Madigan In Support of Google's Unopposed Motion for Issuance of Letter Rogatory, # 3 Exhibit 1, # 4 Exhibit 2, # 5 Exhibit 3, # 6 Exhibit 4, # 7 Exhibit 5, # 8 Exhibit 6, # 9 Exhibit 7, # 10 Exhibit 8, # 11 Exhibit 9, # 12 Exhibit 10, # 13 Exhibit 11, # 14 Exhibit 12, # 15 Exhibit 13, # 16 Exhibit 14, # 17 Exhibit 15, # 18 Exhibit 16, # 19 Exhibit 17, # 20 Exhibit 18, # 21 Exhibit 19, # 22 Exhibit 20, # 23 Exhibit 21, # 24 Proposed Order)(Curran, Patrick) (Filed on 9/29/2014) Modified on 9/30/2014 (cpS, COURT STAFF).

EXHIBIT A

1 QUINN EMANUEL URQUHART & SULLIVAN, LLP
Charles K. Verhoeven (Cal. Bar No. 170151)
Sean Pak (Cal. Bar No. 219032)

David Eiseman (Cal. Bar No. 114758)
Kristin J. Madigan (Cal. Bar No. 233436)

[e-mail]
50 California Street, 22nd Floor

San Francisco, California 94111
 [phone]
[phone] facsimile

Victoria F. Maroulis (Cal. Bar No. 202603)
[e-mail]

555 Twin Dolphin Drive, 5th Floor
 Redwood Shores, California 94065
[phone]
 [phone] facsimile


Patrick D. Curran (Cal. Bar No. 241630)
[e-mail]
51 Madison Avenue, 22nd Floor

New York, New York 10010
 [phone]
[phone] facsimile

Attorneys for Plaintiff GOOGLE INC.


UNITED STATES DISTRICT COURT



NORTHERN DISTRICT OF CALIFORNIA



OAKLAND DIVISION





GOOGLE INC.,
Plaintiff,




v.

ROCKSTAR CONSORTIUM US LP and
 MOBILESTAR TECHNOLOGIES LLC,




Defendants.

CASE NO. 13-cv-5933-CW
LETTER ROGATORY TO THE
SUPERIOR COURT OF JUSTICE OF
ONTARIO, CANADA FOR NORTEL
NETWORKS CORPORATION, JEANPIERRE FORTIN, ANGELA DE
WILTON, JASPREET HARIT, YEE-NING
CHAN, BRIAN FINLAY BEATON,
BRUCE DALE STALKIE, MITCH A.
BRISEBOIS, LAURA A. MAHAN, PAUL
MICHAEL BRENNAN, BRIAN
CRUICKSHANK, AND JOHN ERIC
LUMSDEN





CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

TO THE APPROPRIATE JUDICIAL AUTHORITY OF THE STATE OF CANADA:

2

The United States District Court for the Northern District of California presents its

3 compliments to the Superior Court of Justice of Ontario, Canada and respectfully requests
4 international judicial assistance to obtain evidence to be used in the above-captioned civil action
5 proceeding before this Court. This Court has determined that it would further the interests of
6 justice if by the proper and usual process of your Court, you summon an adequate representative
7 of Nortel Networks Corporation, and Jean-Pierre Fortin, Angela De Wilton, Jaspreet Harit, Yee8 Ning Chan, Brian Finlay Beaton, Bruce Dale Stalkie, Mitch A. Brisebois, Laura A. Mahan, Paul
9 Michael Brennan, Brian Cruickshank, and John Eric Lumsden, to appear before a person
10 empowered under Ontario law to administer oaths and take testimony forthwith, to give testimony
11 under oath or affirmation by questions and answers upon oral examination in respect of the
12 matters and issues identified in Schedules A-X, and permit the parties to create a written transcript
13 and video recording of such testimony. This Court has also determined that it would further the
14 interests of justice if by the proper and usual process of your Court, you summon Nortel Networks
15 Corporation, Jean-Pierre Fortin, Angela De Wilton, Jaspreet Harit, Yee-Ning Chan, Brian Finlay
16 Beaton, Bruce Dale Stalkie, Mitch A. Brisebois, Laura A. Mahan, Paul Michael Brennan, Brian
17 Cruickshank, and John Eric Lumsden to produce copies of the documents in their possession,
18 custody or control that are identified in Schedules A-X.
19

The applicant for this letter is Google Inc. Canadian counsel is available to answer any

20 questions the Canadian Court may have.
21

This request is made pursuant to Rule 4(f)(2)(B) of the Federal Rules of Civil Procedure;

22 the All Writs Act, 28 U.S.C. §1651 and 28 U.S.C. §1781 (permitting the transmittal of letters
23 rogatory through the district courts and the Department of State); the Ontario Evidence Act,
24 R.S.O. 1990, c. E. 23; and the Canada Evidence Act, R.S.C., 1985, c. C-5. The United States
25 District Court for the Northern District of California, Oakland Division, is a competent court of
26 law and equity which properly has jurisdiction over this proceeding, and has the power to compel
27 the attendance of witnesses and production of documents both within and outside its jurisdiction.
28 On information and belief, Nortel Networks Corporation carries on business in Canada, within the
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CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1 Province of Ontario. On information and belief, Nortel Networks Corporation has or is likely to
2 have possession of the documents specified in Schedule A and knowledge of the subject matter
3 specified in Schedule B herein.
4

The testimony and production of documents are intended for use at trial or directly in the

5 preparation of trial, and in the view of this Court, will be relevant to claims and defenses in the
6 case, including Plaintiff Google Inc.’s allegations of non-infringement of the asserted patents.
7

This request is made with the understanding that it will in no way require any person to

8 commit any offense, or to undergo a broader form of inquiry than he or she would if the litigation
9 were conducted in a Canadian court. The requesting Court is satisfied that the evidence sought to
10 be obtained through this request is relevant and necessary and cannot reasonably be obtained by
11 other methods. Because this Court lacks authority to compel participation of these persons and,
12 such participation being necessary in order that justice be served in the above-captioned
13 proceedings, this Court respectfully requests assistance from the Ontario Superior Court of Justice.
14

1.

15

Honorable Chief Judge Claudia Wilken
United States District Court Judge
United States District Court for the Northern District of California
Ronald V. Dellums Federal Building
1301 Clay Street
Oakland, California 94612
United States of America

16
17
18
19

SENDER

2.

20

CENTRAL AUTHORITY OF THE REQUESTED STATE
Superior Court of Justice
393 University Avenue
10th Floor
Toronto, Ontario
M5G 1E6
Canada

21
22
23
3.

PERSON TO WHOM THE EXECUTED REQUEST IS TO BE RETURNED

24
25
26
27

Kristin J. Madigan
Quinn Emanuel Urquhart & Sullivan, LLP
50 California Street, 22nd Floor
San Francisco, California 94111
[phone]
[phone] facsimile

28
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CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

4.

2
3

SPECIFICATION OF DATE BY WHICH THE REQUESTING
AUTHORITY REQUIRES RECEIPT OF THE RESPONSE TO THE
LETTER OF REQUEST

A response is requested as soon as possible, in order to ensure that the evidence may be

4 obtained before the deadline for discovery in this case, currently set for January 23, 2015.
5

5.

NAMES AND ADDRESSES OF THE PARTIES AND THEIR
REPRESENTATIVES OF THE CASE (ARTICLE 3(B))

6
The evidence requested relates to the action Google Inc. v. Rockstar Consortium US LP,
7
Case No. 13-5933 (N.D. Cal.), United States District Court for the Northern District of California.
8
The parties and their representatives are listed herein as follows:
9
a.

Plaintiffs:

10
11

Google Inc.
1600 Amphitheatre Parkway
Mountain View, California 94043

12
Represented By:
13
14
15
16
17

QUINN EMANUEL URQUHART & SULLIVAN, LLP
Charles K. Verhoeven
Sean Pak
David Eiseman
Kristin J. Madigan
50 California Street, 22nd Floor
San Francisco, California 94111
[phone]
[phone] facsimile

18
19
20
21
22
23
24

QUINN EMANUEL URQUHART & SULLIVAN, LLP
Victoria F. Maroulis
555 Twin Dolphin Drive, 5th Floor
Redwood Shores, California 94065
[phone]
[phone] facsimile
QUINN EMANUEL URQUHART & SULLIVAN, LLP
Patrick D. Curran
51 Madison Avenue, 22nd Floor
New York, New York 10010
[phone]
[phone] facsimile

25
b.

Defendants:

26
27

Rockstar Consortium US LP
Legacy Town Center I
7160 North Dallas Parkway

28
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CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

Suite No. 250
Plano, TX 75024

2
MobileStar Technologies LLC
Legacy Town Center I
7160 North Dallas Parkway
Suite No. 250
Plano, TX 75024

3
4
5

Represented By:
6
Courtland L. Reichman
McKool Smith PC
255 Shoreline Drive
Suite 510
Redwood Shores, California 94065

7
8
9

Mike McKool
Douglas A. Cawley
Ted Stevenson III
David Sochia
McKool Smith, PC
300 Crescent Court
Suite 1500
Dallas, Texas 75201

10
11
12
13
14

Joshua W. Budwin
McKool Smith, PC
300 W. 6th Street
Suite 1700
Austin, Texas 78701

15
16
17
18

6.

NATURE AND PURPOSE OF THE PROCEEDINGS AND SUMMARY OF
THE FACTS

19

a.

20

Nature and Purpose of the Claims

Nortel’s facilities in Canada were the “primary centre for R&D” before Nortel declared

21 bankruptcy in 2009. (Declaration of Kristin J. Madigan in Support of Google’s Motion of
22 Issuance of Letters Rogatory (hereinafter “Madigan Decl.”) Ex. 20 ¶ 30.) U.S. Patent Nos.
23 5,838,551, 6,333,973, 6,037,937, 6,128,298, 6,463,131, 6,765,591, and 6,937,572 (the “patents-in24 suit”) were assigned to Nortel, Nortel Networks Ltd., and Northern Telecom Ltd. (Madigan Decl.
25 Exs. 2-8.) They were later acquired by Rockstar through an auction of Nortel’s intellectual
26 property assets that took place in 2011. (Madigan Decl. Ex. 1 ¶ 13-14; 28; 33; 39; 45; 51; 57; 63.)
27 In June 2011, Apple, Microsoft, and three other technology companies founded Rockstar’s
28 predecessor company, Rockstar Bidco, LP. (Id. ¶ 13.) In July 2011, Rockstar Bidco participated
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CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1 in an auction conducted by Nortel for a patent portfolio that comprised over 6,000 patents,
2 including the patents-in-suit. (Madigan Decl. Ex. 9 ¶ 9.) Rockstar Bidco won the auction and
3 subsequently transferred the patents to Rockstar. (Madigan Decl. Ex. 1 ¶ 13-14; 28; 33; 39; 45;
4 51; 57; 63.)
5

On October 31, 2013, Rockstar filed infringement actions in the Eastern District of Texas

6 (the “Texas actions”) against ASUS, HTC, Huawei, LG, Pantech, Samsung, and ZTE (the “OEM
7 Defendants”)—but not Google.1 In the Texas actions, Rockstar alleged infringement of the
8 patents-in-suit, but limited its infringement allegations to the Android operating system, developed
9 by Google. Six of the seven asserted patents are software patents, which Rockstar asserts against
10 seven diverse functionalities on the Android platform. Rockstar accuses Android’s “Mobile
11 Hotspot functionality” of infringing the ’298 patent; Android’s “VPN management functionality”
12 of infringing the ’591 patent; Android’s “Messaging and Notification functionality” of infringing
13 the ’131 patent; Android’s “integrated notification message center” of infringing the ’973 patent;
14 Android’s “Location Services functionality” of infringing the ’572 patent; and Android’s
15 “navigable graphical user interface (‘navigable GUI’) that permits a user to manipulate and control
16 the contents of the display to maximize the use of display real estate” of infringing the ’937 patent.
17 (Madigan Decl. Ex. 1 ¶ 20.) The seventh patent, U.S. Patent No. 5,838,551, is a hardware patent.
18 (Id. ¶ 21.) Rockstar accuses Android devices “includ[ing] at least one electronic package
19 comprising a component that is located between an EMI shield and a ground member for
20 performing shielding operations” where “[t]he EMI shield is incorporated into the electronic
21 package, which is then mounted to a circuit board” of infringing the ’551 patent. (Id.) For every
22 one of its software patents, and even for its sole hardware patent, Rockstar limits its infringement
23 assertions to devices running Google’s Android operating system.
24
1

Rockstar Consortium US LP v. ASUSTeK Computer, Inc., No. 13-0894; Rockstar
Consortium US LP v. HTC Corp., No. 13-0895; Rockstar Consortium US LP v. Huawei
26 Investment & Holding Co., No. 13-0896; Rockstar Consortium US LP v. LG Electronics Inc., No.
13-0898; Rock-star Consortium US LP v. Pantech Co., No. 13-0899; Rockstar Consortium US LP
27 v. Samsung Electronics Co., No. 13-0900; and Rockstar Consortium US LP v. ZTE Corp., No. 130901.
28
25

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CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

On December 23, 2013, Google filed this action (the “California action”) seeking a

2 declaration that Google does not infringe the patents-in-suit. (Madigan Decl. Ex. 1.) In response
3 to Google’s allegations of non-infringement in the California action, Rockstar filed counterclaims,
4 including infringement of the patents-in-suit. (Madigan Decl. Ex. 9.) In response to Rockstar’s
5 counterclaims, Google raised the defenses of invalidity and unenforceability. (Madigan Decl. Ex.
6 10.) After Google filed the California action, Rockstar added Google as a defendant in one of the
7 Texas actions, Rockstar Consortium US LP v. Samsung Electronics Co., Ltd., et al., and Google
8 Inc., Case No. 13-900, Docket No. 19 (E.D. Tex. Dec. 31, 2013).
9
10

b.

Nortel Networks Corporation

Nortel Networks Corporation is Nortel’s Canadian parent corporation, and the “primary

11 centre for R&D” for Nortel prior to declaring bankruptcy in 2009. (Madigan Decl. Ex. 20 ¶ 30.).
12 Nortel Networks Corporation (“Nortel”) is the original assignee of asserted U.S. Patent Nos.
13 6,037,937 and 6,128,298. (Madigan Decl. Exs. 3-4.) It is also the parent corporation of Nortel
14 Networks Ltd., the original assignee of asserted U.S. Patent Nos. 6,333,973, 6,463,131, 6,765,591,
15 and 6,937,572, and the successor corporation of Northern Telecom Ltd., the original assignee of
16 asserted U.S. Patent No. 5,838,551. (Madigan Decl. Exs. 2, 5-8.) Nortel has relevant information
17 regarding the validity and enforceability of the patents-in-suit, and potentially, information
18 regarding alleged infringement by Google. This information is directly relevant to Rockstar’s
19 allegations of patent infringement and Google’s defenses that the patents-in-suit are invalid and
20 unenforceable. Nortel also has relevant information regarding the value of the patents-in-suit from
21 analyses and evaluations conducted in connection with its efforts to sell, license, and otherwise
22 monetize the patents-in-suit. Google seeks unique information from Nortel, and Nortel’s
23 valuations of its own patents is perhaps the most telling evidence on this issue. Furthermore,
24 Nortel has information and firsthand knowledge regarding the 2011 auction for its intellectual
25 property assets, which include the patents-in-suit. This information may be relevant to the
26 determination of patent damages in the form of a reasonable royalty if the patents-in-suit are found
27 valid, infringed, and enforceable.
28
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CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1
2

c.

Jean Pierre Fortin, Angela De Wilton, and Jaspreet Harit

Jean-Pierre Fortin, Angela De Wilton, and Jaspreet Harit are former Nortel employees and

3 the in-house attorneys who prosecuted the patent applications that issued as the ’551, ’937 and
4 ’591 patents, respectively. (Madigan Decl. Ex. 19 at 4-7.) Accordingly, Jean-Pierre Fortin,
5 Angela De Wilton, and Jaspreet Harit have information regarding analyses and evaluations of the
6 validity and enforceability of the ’551, ’937 and ’591 patents. They may also have information
7 regarding analyses of potential infringement by third parties, including Google. Such information
8 is directly relevant both to Rockstar’s infringement claims and to Google’s defenses.
9

d.

10
11

Yee-Ning Chan, Brian Finlay Beaton, Bruce Dale Stalkie, Mitch A.
Brisebois, and Laura A. Mahan

Yee-Ning Chan, Brian Finlay Beaton, Bruce Dale Stalkie, Mitch A. Brisebois, and Laura

12 A. Mahan are former Nortel employees and named inventors on the patents-in-suit. (Madigan
13 Decl. Exs. 2, 3, 5, 6.) In its Rule 26(f) disclosures, Rockstar identified these individuals as people
14 who “may have knowledge regarding the conception and reduction to practice” of the claimed
15 inventions. (Madigan Decl. Ex. 19 at 4-6.) These individuals have information regarding the
16 conception and reduction to practice of the inventions claimed in the patents-in-suit, and the
17 priority date Rockstar asserts for those inventions. Such information is directly relevant both to
18 Rockstar’s infringement claims and to Google’s validity defenses.
19

In addition to their role as named inventors on two of the patents-in-suit, Mitch A.

20 Brisebois and Laura Mahan are also named inventors on U.S. Patent No. 6,310,944. (Madigan
21 Decl. Exs. 15.) Google has asserted U.S. Patent No. 6,310,944 as part of its invalidity contentions
22 relating to the ’572 patent. (Madigan Decl. Ex. 12 at 48.) These two individuals have information
23 regarding the conception and reduction to practice of this alleged prior art.
24
25

e.

Paul Michael Brennan, Brian Cruickshank, and John Eric Lumsden

Paul Michael Brennan, Brian Cruickshank, and John Eric Lumsden are the three named

26 inventors of U.S. Patent No. 6,888,927. (Madigan Decl. Ex. 17.) There are no other named
27 inventors on the patent. (Id.) Google has asserted this patent as part of its invalidity contentions
28 relating to U.S. Patent No. 6,937,572. (Madigan Decl. Ex. 12 at 49.) These three individuals have
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CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1 information regarding the conception and reduction to practice of this alleged prior art. Further, as
2 former Nortel employees working on apparently similar subject matter, these individuals may
3 possess information regarding Rockstar’s asserted patent, U.S. Patent No. 6,937,572, including
4 related commercial products, inventorship, development efforts, and diligence in reduction to
5 practice by Nortel. Such information is directly relevant to Google’s invalidity defenses.
6

7.

7

The evidence to be obtained consists of documents for use at trial or in preparing for trial

EVIDENCE TO BE OBTAINED AND PURPOSE

8 in this matter. Google has also requested oral testimony from an adequate representative of
9 Nortel, and from Jean-Pierre Fortin, Angela De Wilton, Jaspreet Harit, Yee-Ning Chan, Brian
10 Finlay Beaton, Bruce Dale Stalkie, Mitch A. Brisebois, Laura A. Mahan, Paul Michael Brennan,
11 Brian Cruickshank, and John Eric Lumsden. I conclude that Nortel, Jean-Pierre Fortin, Angela De
12 Wilton, Jaspreet Harit, Yee-Ning Chan, Brian Finlay Beaton, Bruce Dale Stalkie, Mitch A.
13 Brisebois, Laura A. Mahan, Paul Michael Brennan, Brian Cruickshank, and John Eric Lumsden
14 have information that is directly relevant to damages, Google’s claims that the patents-in-suit are
15 not infringed, and Google’s defenses that the patents-in-suit are invalid and unenforceable, which
16 Google cannot obtain by any other means.
17

The Court concludes that it is in the interests of justice for an adequate representative of

18 Nortel, and for Jean-Pierre Fortin, Angela De Wilton, Jaspreet Harit, Yee-Ning Chan, Brian Finlay
19 Beaton, Bruce Dale Stalkie, Mitch A. Brisebois, Laura A. Mahan, Paul Michael Brennan, Brian
20 Cruickshank, and John Eric Lumsden to be examined on the topics listed in Schedules A-X and to
21 produce the documents listed in Schedules A-X. On the issue of the documents to be produced in
22 Schedules A-X, the Court appreciates that some of the documents requested could be in the
23 possession, custody, or control of Rockstar. However, the Court considers production of the
24 documents in Schedules A-X to be fair, appropriate and necessary in the circumstances having
25 regard to the litigation timetable in this proceeding. With regard to the litigation timetable,
26 Rockstar has not yet completed its production of relevant documents, and under this Court’s Case
27 Management Order, fact discovery does not close until January 23, 2015. It would be inefficient,
28 cumbersome and contrary to a proper administration of justice and use of judicial resources to
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CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1 require Google to first obtain a complete document production from Rockstar and only then seek
2 Letters of Request for production from Nortel, Jean-Pierre Fortin, Angela De Wilton, Jaspreet
3 Harit, Yee-Ning Chan, Brian Finlay Beaton, Bruce Dale Stalkie, Mitch A. Brisebois, Laura A.
4 Mahan, Paul Michael Brennan, Brian Cruickshank, and John Eric Lumsden.
5

I appreciate that some of the documents in Schedules A-X, and the testimony sought in

6 Schedules A-X, may call for confidential, or trade secret information. Under the Northern District
7 of California Patent Local Rules, until the Court issues a different order, the Patent Local Rule 2-2
8 Interim Model Protective Order governs this case, and extends to the document productions or
9 testimony of third parties including Nortel. A copy of the governing protective order is attached.
10 (Madigan Decl. Ex. 21.)
11

Nortel, Jean-Pierre Fortin, Angela De Wilton, Jaspreet Harit, Yee-Ning Chan, Brian Finlay

12 Beaton, Bruce Dale Stalkie, Mitch A. Brisebois, Laura A. Mahan, Paul Michael Brennan, Brian
13 Cruickshank, and John Eric Lumsden all reside in Ontario and, upon information and belief, are
14 neither domiciled nor doing business in the United States.2 Thus, this Court cannot directly
15 compel them to provide the requested testimony.
16

It is, therefore, respectfully requested that the Ontario Superior Court of Justice compel

17 Nortel, Jean-Pierre Fortin, Angela De Wilton, Jaspreet Harit, Yee-Ning Chan, Brian Finlay
18 Beaton, Bruce Dale Stalkie, Mitch A. Brisebois, Laura A. Mahan, Paul Michael Brennan, Brian
19 Cruickshank, and John Eric Lumsden to produce documents responsive to the requests for
20 production in Schedules A, C, E, G, I, K, M, O, Q, S, U, and W to this Letter of Request, to the
21 extent that they are in their possession, custody, or control, and are not privileged under the
22 applicable laws of Canada or the United States. This Court also requests that the Ontario Superior
23 Court of Justice compel the appearance of Nortel, through a knowledgeable corporate
24 representative, to testify under oath, concerning the topics set forth in Schedule B to this Letter of
25 Request. This Court also requests that the Ontario Superior Court of Justice compel the
26
27
28

2

Google understands that Mr. Chan may conduct business in the United States, but does not
know the frequency or duration of his United States visits, or where is located for service.

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CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1 appearance of Jean-Pierre Fortin, Angela De Wilton, Jaspreet Harit, Yee-Ning Chan, Brian Finlay
2 Beaton, Bruce Dale Stalkie, Mitch A. Brisebois, Laura A. Mahan, Paul Michael Brennan, Brian
3 Cruickshank, and John Eric Lumsden to testify under oath, concerning the topics set forth in
4 Schedules D, F, H, J, L, N, P, R, T, V, and X to this Letter of Request.
5

The requested documents and testimony are needed for use at trial in connection with the

6 parties’ claims and defenses. While this Court expresses no view at this time as to the merits in
7 the above-captioned case, it believes the evidence sought here will be relevant to and either
8 probative or disprobative of material facts relevant to the parties’ claims and defenses.
9

8.

IDENTITY AND ADDRESS OF THE ENTITIES AND PERSONS TO BE
EXAMINED

10
The identity and address of the entities and persons to be examined is set forth below. The
11
addresses provided are based on currently available information, and may be supplemented.
12
13
14

Nortel Networks Corporation
5945 Airport Road
Suite 360
Mississauga, Ontario
Canada L4V 1R9

15
16

Jean Pierre Fortin
Kanata, Ontario K2K 2V6
Canada 32819

17
18
19
20
21

Angela De Wilton
499 Tillbury Avenue
Ottawa, Ontario
Canada K2A 4G8
Jaspreet Harit
34 Farmfield Cres
Kanata, Ontario
Canada K2M 2S8

22
23
24
25
26

Yee-Ning Chan
30 Cres Evanshen
Kanata, Ontario
Canada K0J 1M0
Brian Finlay Beaton
172 McClellan Road
Nepean, Ontario
Canada K2H 5W1

27
28

Bruce Dale Stalkie
63 Beamish Cres
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CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

Kanata, Ontario
Canada K2K 2R7

2
Mitch A. Brisebois
Kanata, Ontario
Canada

3
4

Laura A. Mahan
Ottawa, Ontario
Canada

5
6

Paul Michael Brennan
77 Matchedash Street South
Orillia, Ontario
Canada L3V 4W6

7
8
9

Brian Cruickshank
112 Grenadier Drive
Kingston, Ontario
Canada K7K 6E9

10
11

John Lumsden
30 Brigadier Pvt
Ottawa, Ontario
Canada K1N 1E6

12
13
14
15

9.

STATEMENT OF THE SUBJECT MATTER ABOUT WHICH THE
PERSON WILL BE EXAMINED

16

This Court requests that questioning be permitted of an adequate representative of Nortel

17 regarding the topics listed in Schedule B to this Letter of Request. This Court requests that
18 questioning be permitted of Jean-Pierre Fortin, Angela De Wilton, Jaspreet Harit, Yee-Ning Chan,
19 Brian Finlay Beaton, Bruce Dale Stalkie, Mitch A. Brisebois, Laura A. Mahan, Paul Michael
20 Brennan, Brian Cruickshank, and John Eric Lumsden regarding the topics listed in Schedules D,
21 F, H, J, L, N, P. R, T, V, and X to this Letter of Request.
22

10.

23

It would further the interests of justice if you would summon Nortel, Jean-Pierre Fortin,

DOCUMENTS AND OTHER EVIDENCE TO BE EXAMINED

24 Angela De Wilton, Jaspreet Harit, Yee-Ning Chan, Brian Finlay Beaton, Bruce Dale Stalkie,
25 Mitch A. Brisebois, Laura A. Mahan, Paul Michael Brennan, Brian Cruickshank, and John Eric
26 Lumsden to produce or make available for inspection the documents set forth in Schedules A, C,
27 E, G, I, K, M, O, Q, S, U, and W to this Letter of Request.
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CASE NO. 13-CV-5933-CW
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1

11.

REQUIREMENT THAT THE EVIDENCE BE GIVEN ON OATH OR
AFFIRMATION

2
3

It would further the interests of justice if, by the proper and usual process of your Court,

4 you summon Nortel, Jean-Pierre Fortin, Angela De Wilton, Jaspreet Harit, Yee-Ning Chan, Brian
5 Finlay Beaton, Bruce Dale Stalkie, Mitch A. Brisebois, Laura A. Mahan, Paul Michael Brennan,
6 Brian Cruickshank, and John Eric Lumsden to appear before a person empowered under Ontario
7 law to administer oaths and take testimony and give testimony under oath or affirmation on the
8 topics listed in Schedules B, D, F, H, J, L, N, P, R, T, V, and X by questions and answers upon
9 oral examination at a convenient location in Toronto.
10

12.

11

The examinations shall be conducted pursuant to the discovery rules as provided for in the

SPECIAL PROCEDURES OR METHOD TO BE FOLLOWED

12 Federal Rules of Civil Procedure of the United States, except to the extent such procedure is
13 incompatible with the laws of Canada. This Court further requests: (1) that the examination be
14 taken orally; (2) that the examination be taken before a commercial stenographer and videographer
15 selected by Google; (3) that the videographer be permitted to record the examination by
16 audiovisual means; (4) that the stenographer be allowed to record a verbatim transcript of the
17 examination; (5) that the examination be conducted in English, or, if necessary, with the assistance
18 of an interpreter selected by Google; (6) that, if the examination is conducted through an
19 interpreter, verbatim transcripts of the proceeding in both English and French be permitted; (7)
20 that the witness be examined for no more than ten and a half (10.5) hours if the witness requires an
21 interpreter or seven (7) hours if the witness does not require an interpreter; (8) that the time
22 allotted for the examination be divided equally between Rockstar and Google; and (9) that the
23 witness be examined as soon as possible.
24

In the event that the evidence cannot be taken according to some or all of the procedures

25 described above, this Court requests that it be taken in such manner as provided by the laws of
26 Canada for the formal taking of testimonial evidence.
27
28
-12-

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

13.

2

We respectfully request that any order made by the Court will require the examining party

REQUEST FOR NOTIFICATION

3 to send notice of the time and place for the taking of testimony, and to provide copies of the
4 transcript and video recording of such deposition and copies of the documents produced to the
5 parties’ representatives as identified in Section 5 above and to:
6

Honorable Chief Judge Claudia Wilken
United States District Court Judge
United States District Court for the Northern District of California
Ronald V. Dellums Federal Building
1301 Clay Street
Oakland, California 94612
United States of America

7
8
9
10

14.

11
12

None.

13

15.

REQUEST FOR ATTENDANCE OR PARTICIPATION OF JUDICIAL
PERSONNEL OF THE REQUESTING AUTHORITY AT THE
EXECUTION OF THE LETTER OF REQUEST

SPECIFICATION OF PRIVILEGE OR DUTY TO REFUSE TO GIVE
EVIDENCE UNDER THE LAW OF THE STATE OF ORIGIN

14
Under the laws of the United States, a witness has a privilege to refuse to give evidence if
15
to do so would disclose a confidential communication between the witness and his or her attorney
16
that was communicated specifically for the purpose of obtaining legal advice and which privilege
17
has not been waived. United States law also recognizes a privilege against criminal self18
incrimination. Other limited privileges on grounds not applicable here also exist, such as
19
communications between doctors and patients, husband and wife, and clergy and penitent. Certain
20
limited immunities are also recognized outside the strict definition of privilege, such as the limited
21
protection of work product created by attorneys during or in anticipation of litigation.
22
16.

REIMBURSEMENT

23
The fees and costs incurred in the execution of this Request which are reimbursable will be
24
borne by the above-named Plaintiff, Google.
25
Google is willing to reimburse the reimbursable fees and costs incurred by Nortel, Jean26
Pierre Fortin, Angela De Wilton, Jaspreet Harit, Yee-Ning Chan, Brian Finlay Beaton, Bruce Dale
27
Stalkie, Mitch A. Brisebois, Laura A. Mahan, Paul Michael Brennan, Brian Cruickshank, and John
28
-13-

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1 Eric Lumsden in complying with any order of the Superior Court of Justice of Ontario giving
2 effect to this Request for International Judicial Assistance.
3
4
5

Dated:
The Honorable Chief Judge Claudia Wilken
U.S. District Court Judge

6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
-14-

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

SCHEDULE A

2

DOCUMENTS TO BE PRODUCED BY NORTEL NETWORKS CORPORATION

3

It is respectfully requested that Nortel Networks Corporation be compelled to produce the

4 following documents that are in its possession, custody, or control, and which are not privileged
5 under Canadian or U.S. law:
6

1.

All documents regarding the patents-in-suit, namely U.S. Patent Nos. 5,838,551,

7 6,333,973, 6,037,937, 6,128,298, 6,463,131, 6,765,591, and 6,937,572 , any related
8 patents/applications, or the subject matter in suit, including all documents regarding the
9 patentability, novelty, non-obviousness, scope, validity, invalidity, enforceability,
10 unenforceability, infringement or non-infringement of any claim in any of the patents-in-suit or
11 related patents/applications, including any analyses, evaluations, or searches conducted by you or
12 any third party, or by any person on behalf of you or any third party.
13

2.

All communications with any Rockstar entity or any Rockstar shareholder

14 (including Apple Inc., Microsoft Corporation, Sony Corporation of America, Ericsson, EMC
15 Corporation or Blackberry Ltd.), regarding the patents-in-suit, any related patents/applications, or
16 the subject matter in suit, including communications regarding any potential or actual litigation
17 regarding the patents-in-suit, including this litigation, or the decision to file any patent18 infringement litigation and/or enter any license agreement.
19

3.

All documents regarding the July 2011 auction for Nortel’s intellectual property

20 assets that relate directly or indirectly to the patents-in-suit, related patents/applications, or the
21 subject matter in suit, including any such documents provided in any clean room or electronic data
22 room by Nortel or Nortel’s advisors to potential investors or buyers in connection with the July
23 2011 auction.
24

4.

All documents relating in any way to any efforts you made to license, sell,

25 monetize, or otherwise generate revenue from the patents-in-suit, related patents/applications, or
26 the subject matter in suit, either directly or as part of a broader portfolio, including: all license
27 agreements, all acquisition agreements, cross licenses, covenants not to sue, or non-assertion
28 agreements that cover any of the patents-in-suit, all offers to license or sell any of the patents-inA-1

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1 suit to any third party, all documents (including draft agreements) regarding the negotiation of any
2 agreement, royalties for, or acquisition of the patents-in-suit; and all presentations, mailings,
3 meeting minutes, infringement analyses, validity analyses, notice letters, cease and desist letters,
4 proposals, offers, term sheets, and letters of intent.
5

5.

Documents sufficient to show Nortel’s assessment of the value of Nortel’s

6 intellectual property portfolio offered in the residual patent sale and any segment thereof,
7 including (but not limited to) any valuations of the patents-in-suit, related patents/applications, and
8 any valuations that include or subsume the value of the foregoing, whether such valuations were
9 performed by Nortel, any Rockstar entity, or any third party.
10

6.

All documents regarding the sales, revenue, income, profit, gross margin, costs,

11 expenses, forecasts, projections, budgets, or commercialization efforts for any Nortel product,
12 system, or method that embodies any claim of the patents-in-suit, including Nortel’s capacity to
13 manufacture, market, and sell any Nortel product, system, or method that embodies any claim of
14 the patents-in-suit, and the incremental sales, revenue, income, or profit attributable to the use of
15 the technology claimed in any of the patents-in-suit in any Nortel product, system, or method.
16

7.

All documents regarding the marketing, promotion, competitive analysis, or market

17 analysis regarding any Nortel product, system, or method that embodies any claim of the patents18 in-suit, including surveys, analyses of market demand or market share (either projected or actual),
19 advertising materials, promotional or sales materials, marketing plans, press releases, and analyst
20 reports.
21

8.

All documents regarding business plans, strategic plans, operating plans, marketing

22 plans, financial plans, production plans, sales plans and capital or investment plans regarding any
23 Nortel product, system, or method that embodies any claim of the patents-in-suit.
24

9.

All documents regarding the demand for any feature(s), functionality(ies), and/or

25 attribute(s) embodied in any claim of the patents-in-suit, including consumer surveys, market
26 studies, market performance analyses, competitive analyses and assessments, outside consultant
27 reports, and any research or study regarding whether the technology in any of the patents-in-suit
28 drives consumer demand for any Nortel product, system, or method.
A-2

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

10.

All documents regarding the presence or absence of any non-infringing alternatives

2 or substitutes for any claim of the patents-in-suit, including documents concerning any
3 investigation regarding the characteristics of any non-infringing alternative, the reasons why the
4 alternative is non-infringing, and the time and cost to develop or implement any non-infringing
5 alternative.
6

11.

All documents regarding the research, design, development or testing of any claim

7 of the patents-in-suit, related patents/applications, or the subject matter in suit, including but not
8 limited to all handwritten or typed notes, laboratory notebooks, inventor notebooks, computer
9 programs, source code or data.
10

12.

All documents regarding the alleged conception, any alleged diligence from

11 conception to reduction to practice, and any actual reduction to practice of any claim in the
12 patents-in-suit, including inventor notes, documents regarding the role of any person involved in
13 the conception and/or reduction to practice of any claim, and any communications with third
14 parties concerning the technology claimed in any of the patents-in-suit.
15

13.

All documents regarding the performance, advantages, disadvantages, problems,

16 features, commercial or technical benefits, improvements, commercial success, long-felt need,
17 praise or acclaim regarding the technology claimed in any of the patents-in-suit.
18

14.

All documents regarding any prior art, including prior art submitted or cited to the

19 U.S. Patent & Trademark Office during the prosecution of any of the patents-in-suit or related
20 patents/applications, and publications or references asserted by third parties to be prior art, or
21 evaluated by you as potential prior art, including Nortel’s awareness of prior art, the date and
22 circumstances pursuant to which Nortel first learned of such prior art, and any effort by or on
23 behalf of Nortel to locate prior art.
24

15.

All documents regarding the filing and prosecution of the patents-in-suit or related

25 patents/applications, including but not limited to all draft and final versions of such applications,
26 office actions, draft and final versions of responses to office actions, and all communications
27 regarding the filing and prosecution of such patent applications, including those communications
28 kept by any prosecuting attorneys.
A-3

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

16.

All documents regarding Nortel’s formal or informal policies, procedures,

2 practices, or guidelines for licensing, sublicensing or assigning rights to patents, including the
3 patents-in-suit, related patents/applications, or any patent related to the subject matter in suit, and
4 for the preparation and filing of patent applications, including any policies or procedures regarding
5 invention disclosures, when to file patent applications, patent prosecution, and the citation of prior
6 art.
7

17.

Documents sufficient to identify every attempt by Nortel or any party acting on

8 behalf of Nortel to enforce the patents-in-suit, either in the United States or abroad, including all
9 documents regarding the assertion, potential assertion, or potential for assertion against any third
10 party, including Google, any accusation of infringement of any of the claims of any of the patents11 in-suit by any person, all documents regarding any decision to file or decline to file any potential
12 or actual litigation or other claim regarding any of the patents-in-suit or related
13 patents/applications, and all documents regarding any settlement, whether executed or considered,
14 relating to any adversarial proceeding in the United States or abroad involving the patents-in-suit,
15 related patents/applications, or any patent related to the subject matter in suit.
16

18.

All documents regarding any damage or harm Nortel allegedly suffered as a result

17 of the sale, offer for sale, or use of any Google product or service alleged to infringe the patents18 in-suit.
19

19.

All documents sufficient to show Nortel’s first awareness of Google’s activities

20 that form the basis of any allegation that Google infringes any of the patents-in-suit, including all
21 documents regarding the timing or delay of potential legal claims based on any of the patents-in22 suit, including the circumstances regarding that timing or delay, and any actual or potential
23 prejudice regarding that timing or delay.
24

20.

All documents regarding any inspection, testing, evaluation, or analysis of any

25 product or service of Google showing how such product or service of Google compares to one or
26 more claims of the patents-in-suit, and all documents regarding any claim that Google infringes or
27 has infringed the patents-in-suit or that Google copied the technology claimed in any of the
28 patents-in-suit.
A-4

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

21.

A copy of any source code or software that embodies or reflects any of the systems

2 or methods claimed in the patents-in-suit or related patents/applications.
3

22.

All documents regarding the marking under 35 U.S.C. § 287 of any products,

4 services, systems, or methods with any of the patents-in-suit or related patents/applications.
5

23.

Documents regarding your document retention policies and practices, including all

6 documents regarding any destruction of any documents otherwise responsive to these document
7 requests and your efforts to preserve, retain or destroy documents, including practices or policies
8 regarding schematic diagrams, technical specifications, source code, invention disclosures,
9 documents regarding inventions, patents and patent applications, and electronic mail.
10

24.

All documents and things, including communications and source code, regarding

11 U.S. Patent Nos. 5,987,100; 6,333,973; 6,084,951; 6,310,944; 6,853,713; 6,888,927; or 5,796,170;
12 or Meridian Mail, VISIT Messenger, Nortel Companion, Bay Area Optivity Configurator 2.0, and
13 New Oaks Communications Extranet Switches.
14

25.

All documents and things, including communications, sufficient to show the time

15 period during which Meridian Mail, VISIT Messenger, Nortel Companion, Bay Area Optivity
16 Configurator 2.0, and New Oaks Communications Extranet Switches were manufactured, sold,
17 licensed, or otherwise made available in the United States and the quantity manufactured, sold,
18 licensed, or otherwise made available in the United States.
19

26.

All documents and things, including communications, sufficient to show the time

20 period during which any feature or product embodying U.S. Patent Nos. 5,987,100; 6,333,973;
21 6,084,951; 6,310,944; 6,853,713; 6,888,927; or 5,796,170 were manufactured, sold, licensed, or
22 otherwise made available in the United States and the quantity manufactured, sold, licensed, or
23 otherwise made available in the United States.
24

27.

All documents and things, including communications, prior to January 5, 2000

25 regarding (i) U.S. Patent Nos. 5,987,100; 6,333,973; or 6,084,951, or Meridian Mail and VISIT
26 Messenger; (ii) the subject matter of the ’131 patent; or (iii) user notification of incoming
27 communication events, including representative samples of software and hardware, executable
28
A-5

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1 software, manuals, technical plans, diagrams, workbooks, manuals, published articles,
2 publications, and user guides.
3

28.

All documents and things, including communications, prior to December 29, 2000

4 regarding (i) U.S. Patent Nos. 6,310,944; 6,853,713; or 6,888,927, or Nortel Companion; (ii) the
5 subject matter of the ’572 patent; or (iii) call trace on a packet-switched network, including
6 representative samples of software and hardware, executable software, manuals, technical plans,
7 diagrams, workbooks, manuals, published articles, publications, and user guides.
8

29.

All documents and things, including communications, prior to April 23, 1997

9 regarding (i) Meridian Mail and VISIT Messenger; (ii) the subject matter of the ’973 patent; or
10 (iii) user notifications of different message types, including representative samples of software and
11 hardware, executable software, manuals, technical plans, diagrams, workbooks, manuals,
12 published articles, publications, and user guides.
13

30.

All documents and things, including communications, prior to April 2, 1999

14 regarding (i) Bay Area Optivity Configurator 2.0 and New Oaks Communications Extranet
15 Switches; (ii) the subject matter of the ’591 patent; or (iii) any graphical user interface for
16 managing virtual private networks, including representative samples of software and hardware,
17 executable software, manuals, technical plans, diagrams, workbooks, manuals, published articles,
18 publications, and user guides.
19

31.

All documents and things, including communications, prior to August 1, 1996

20 regarding (i) the subject matter of the ’551 patent; or (ii) EMI shielding of an electronic package.
21

32.

All documents and things, including communications, prior to April 24, 1996

22 regarding (i) the subject matter of the ’298 patent; or (ii) routing using network address
23 translation.
24

33.

All documents and things, including communications, prior to December 4, 1997

25 regarding (i) the subject matter of the ’937 patent; or (ii) any graphical user interface for managing
26 virtual private networks.
27
28
A-6

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

34.

All documents regarding the licensing model and study referenced in the expert

2 report of James E. Malackowski in In re Nortel Networks Inc., No. 09-10138-KG, Docket No.
3 13655 at 25-26, 33-34 (Bankr. D. Del. May 28, 2014).
4

35.

All documents related to Topic Nos. 1-34 subject to sealing or redaction in any

5 Nortel bankruptcy action, including (1) the documents in Schedule A1 (“Post-Petition Asset Sale
6 Documents,” Docket No. 13554-1), Schedule A2 (“License and Other Confidential Agreements,”
7 Docket No. 13554-1) and Schedule B (“Third Party Documents,” Docket No. 13554-2) to the
8 Order Providing Directions and Establishing Procedures for Sealing Trial Exhibits, Redacting
9 Pretrial Submissions, and Protecting Confidential Information from Public Disclosure During
10 Trial (Docket No. 13554), as well as (2) Schedule A (Docket No. 13729-1), Schedule A1 (“Post11 Petition Asset Sale Documents,” Docket No. 13729-2) and Schedule A2 (“License and Other
12 Confidential Agreements,” Docket No. 13729-3) to the Supplementary Order Providing Directions
13 and Establishing Procedures for Sealing Trial Exhibits, Redacting Pretrial Submissions, and
14 Protecting Confidential Information from Public Disclosure During the Trial (Docket No. 13729)
15 in In re Nortel Networks Inc., et al., No. 09-10138-KG (Bankr. D. Del.).
16
17

The word “document” or “documents” above should be interpreted in its broadest sense

18 and include(s), but is not limited to, handwritten or electronic notes, memoranda, e-mails, calendar
19 invitations and appointments, records of meetings, promotional and sales materials, planning and
20 strategy documents, focus group information, press releases, analyst reports, competitive analyses,
21 schematics, engineering drawings, product and performance specifications, teardown
22 specifications, operational and service manuals, technical guides, electronic recordings, instant
23 messages, phone messages, call recordings, source code and electronic files.
24
25
26
27
28
A-7

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

SCHEDULE B

2

TOPICS FOR THE DEPOSITION OF NORTEL NETWORKS CORPORATION

3

It is respectfully requested that Nortel Networks Corporation be compelled to testify (via

4 corporate designee), under oath or affirmation, on the following topics for use at trial:
5

1.

Any comparison, analyses, or evaluations concerning the patentability, novelty,

6 non-obviousness, scope, validity, invalidity, enforceability, unenforceability, or infringement of
7 the patents-in-suit, namely U.S. Patent Nos. 5,838,551, 6,333,973, 6,037,937, 6,128,298,
8 6,463,131, 6,765,591, and 6,937,572, or related patents/applications.
9

2.

Nortel’s assessment of the value of Nortel’s intellectual property portfolio offered

10 in the residual patent sale and any segment thereof, including (but not limited to) any valuations of
11 the patents-in-suit, related patents/applications, and any valuations that include or subsume the
12 value of the foregoing, whether such valuations were performed by Nortel, any Rockstar entity, or
13 any third party.
14

3.

The July 2011 auction for Nortel’s intellectual property assets.

15

4.

Meetings, discussions, and communications with Rockstar, any Rockstar

16 shareholder, any Nortel advisor, Google, or any third party regarding the July 2011 auction of
17 Nortel’s intellectual property assets, Google, or this litigation.
18

5.

The sales, revenue, income, profit, gross margin, costs, expenses, forecasts,

19 projections, budgets, marketing, promotion, or analyses of market demand, market share, or
20 competition concerning any Nortel product, system, or method that embodies any claim of the
21 patents-in-suit, including the incremental sales, revenue, or profit attributable to the use of the
22 technology claimed in any of the patents-in-suit in any Nortel product, system, or method.
23

6.

The demand for any feature(s), functionality(ies), and/or attribute(s) embodied in

24 any claim of the patents-in-suit, including any research or study regarding whether the technology
25 in any of the patents-in-suit drives consumer demand for any Nortel product, system, or method.
26

7.

Any non-infringing alternatives or substitutes for any claim of the patents-in-suit,

27 including any investigation regarding the characteristics of any non-infringing alternative, the
28
B-1

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1 reasons why the alternative is non-infringing, and the time and cost to develop or implement any
2 non-infringing alternative.
3

8.

The conception, alleged diligence from conception to reduction to practice,

4 reduction to practice, research, design, development, and testing of any claim of the patents-in5 suit.
6

9.

The performance, advantages, disadvantages, problems, features, commercial or

7 technical benefits, improvements of the technology, commercial success, long-felt need, praise or
8 acclaim concerning the technology of the patents-in-suit.
9

10.

The filing and prosecution of the patents-in-suit or related patents/applications,

10 including any affirmative steps taken by the applicants to meet their duty of candor and good faith
11 to the United States Patent and Trademark Office, including any errors or potential errors in any of
12 the patents-in-suit.
13

11.

Nortel’s practices and policies for the preparation and filing of patent applications,

14 patent licensing, and document retention.
15

12.

Every attempt by Nortel or by any party acting on Nortel’s behalf to enforce any of

16 the patents-in-suit, either in the United States or abroad, including any analysis, evaluation, or
17 discussion regarding the assertion, potential assertion, or potential for assertion of any of the
18 patents-in-suit, against any third party including Google, and any settlement, whether executed or
19 considered, relating to any adversarial proceeding in the United States or abroad involving the
20 patents-in-suit, related patents/applications, or any patent related to the subject matter in suit.
21

13.

Any claim by you that Google infringes, has infringed, or copied the technology

22 claimed in any of the patents-in-suit, including Nortel’s first awareness of Google’s activities that
23 form the basis of any allegation that Google infringes any of the patents-in-suit, any investigation
24 conducted by you or on your behalf of any Google product or service that relates to the technology
25 of the patents-in-suit, and any damage or harm Nortel allegedly suffered as a result of the sale,
26 offer for sale, or use of any Google product or service.
27
28
B-2

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

14.

U.S. Patent Nos. 5,987,100; 6,333,973; 6,084,951; 6,310,944; 6,853,713;

2 6,888,927; or 5,796,170; or Meridian Mail, VISIT Messenger, Nortel Companion, Bay Area
3 Optivity Configurator 2.0, and New Oaks Communications Extranet Switches.
4

15.

The labeling or marking with patent information any product, service, system, or

5 method sold, marketed, or commercialized that embodies any claim of the patents-in-suit.
6

16.

The documents produced in response to the letters rogatory.

7

17.

Prior art to the patents-in-suit, namely U.S. Patent Nos. 5,838,551, 6,333,973,

8 6,037,937, 6,128,298, 6,463,131, 6,765,591, and 6,937,572.
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
B-3

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

SCHEDULE C

2

DOCUMENTS TO BE PRODUCED BY JEAN-PIERRE FORTIN

3

It is respectfully requested that Jean-Pierre Fortin be compelled to produce the following

4 documents that are in its possession, custody, or control, and which are not privileged under
5 Canadian or U.S. law:
6

1.

All documents that refer or relate to U.S. Patent No. 5,838,551 (the “’551 patent”),

7 including any documents that relate to the scope of the claimed inventions, the development of the
8 claimed inventions, the drafting of the ’551 patent, the terms used in the ’551 patent, inventorship
9 of the ’551 patent, prosecution of the ’551 patent, and any opinions, analyses and/or investigations
10 of infringement of the ’551 patent. For greater certainty, this includes all documents that include,
11 refer or relate to:
12

a. the priority claim made in the ’551 patent, including the conception and/or

13

reduction to practice of any invention disclosed, described, or claimed in the ’551

14

patent, and diligence between the date of conception and reduction to practice of

15

any alleged invention described, disclosed, or claimed in the ’551 patent;

16

b. the purported inventions disclosed, described, or claimed in the ’551 patent,

17

including the first written description, and the first disclosure of any alleged

18

invention described, disclosed, or claimed in the ’551 patent;

19
20

c. the design or development of any alleged invention described, disclosed, or claimed
in the ’551 patent, including any invention disclosure forms and prototypes;

21

d. communications with the U.S. Patent & Trademark Office, foreign patent offices,

22

including the Canadian Intellectual Property Office, foreign patent agents, or third

23

parties regarding the prosecution of the ’551 patent;

24

e. any reference cited during prosecution of the ’551 patent;

25

f. any analyses or efforts to draft the ’551 patent or design products or systems

26

embodying the subject matter disclosed or claimed in the ’551 patent around prior

27

art products, systems or patents;

28
C-1

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

g. the work you did in connection with the prosecution of the ’551 patent such as

1
2
3

billing records or time sheets.
2.

All documents relating to prior art to the ’551 patent, including all documents that

4 refer or relate to any EMI shielding of an electronic package. For greater certainty, this includes
5 all documents that include, refer or relate to:
6

a. prior art to the ’551 patent submitted to the U.S. Patent & Trademark Office or any

7

foreign patent office, including the Canadian Intellectual Property Office, during

8

the prosecution of the ’551 patent;
b. the work you did searching for prior art to the ’551 patent, including publications or

9
10

references evaluated by you as potential prior art and all textbooks, articles, or

11

other sources consulted, gathered, or reviewed in drafting or prosecuting the ’551

12

patent;

13

c. any U.S. or foreign patents or patent applications filed prior to August 1, 1996

14

relating to EMI shielding of an electronic package, or any alleged invention

15

disclosed, described or claimed in the ’551 patent;

16

d. any publications, sale, offer for sale, or public use prior to August 1, 1996 of EMI

17

shielding of an electronic package, or any alleged invention disclosed, described, or

18

claimed in the ’551 patent.

19

3.

All documents supporting any objective indicia of non-obviousness of any alleged

20 invention described, disclosed or claimed in the ’551 patent, including, but not limited to,
21 contentions of commercial success of the invention and/or products embodying the invention,
22 long-felt but unsolved needs met by those products and/or the invention, failure of others to meet
23 these needs, industry recognition of the invention and/or products embodying the invention, and
24 deliberate copying of the invention or laudatory statements by accused infringers.
25

4.

All documents that refer or relate to any investigations of Google’s products and

26 services with respect to EMI shielding of electronic packages and/or attempts to compare or
27 distinguish Google’s products and services from any technology owned or promoted by Yee-Ning
28 Chan, Nortel Networks Corporation, or Rockstar Consortium US LP.
C-2

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1
2

The word “document” or “documents” above should be interpreted in its broadest sense

3 and include(s), but is not limited to, handwritten or electronic notes, memoranda, e-mails, calendar
4 invitations and appointments, records of meetings, promotional and sales materials, planning and
5 strategy documents, focus group information, press releases, analyst reports, competitive analyses,
6 schematics, engineering drawings, product and performance specifications, teardown
7 specifications, operational and service manuals, technical guides, electronic recordings, instant
8 messages, phone messages, call recordings, source code and electronic files.
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
C-3

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

SCHEDULE D

2

TOPICS FOR THE DEPOSITION OF JEAN-PIERRE FORTIN

3

It is respectfully requested that Jean-Pierre Fortin be compelled to testify, under oath or

4 affirmation, on the following topics for use at trial:
5

1.

Mr. Fortin’s knowledge and involvement with the ’551 patent, including the scope

6 of the claimed inventions, the development of the claimed inventions, the drafting of the ’551
7 patent, the terms used in the ’551 patent, inventorship of the ’551 patent, prosecution of the ’551
8 patent, and any opinions, analyses and/or investigations of infringement of the ’551 patent
9

2.

Mr. Fortin’s knowledge about prior art to the ’551 patent.

10

3.

Mr. Fortin’s knowledge about any objective indicia of non-obviousness of any

11 alleged invention described, disclosed or claimed in the ’551 patent.
12

4.

Mr. Fortin’s knowledge of any investigations of Google’s products and services

13 with respect to EMI shielding of an electronic package and/or attempts to compare or distinguish
14 Google’s products and services from any technology owned or promoted by Yee-Ning Chan,
15 Nortel Networks Corporation, or Rockstar Consortium US LP.
16

5.

The documents produced in response to the letters rogatory.

17
18
19
20
21
22
23
24
25
26
27
28
D-1

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

SCHEDULE E

2

DOCUMENTS TO BE PRODUCED BY ANGELA DE WILTON

3

It is respectfully requested that Angela De Wilton be compelled to produce the following

4 documents that are in its possession, custody, or control, and which are not privileged under
5 Canadian or U.S. law:
6

1.

All documents that refer or relate to U.S. Patent No. 6,037,937 (the “’937 patent”),

7 including any documents that relate to the scope of the claimed inventions, the development of the
8 claimed inventions, the drafting of the ’937 patent, the terms used in the ’937 patent, inventorship
9 of the ’937 patent, prosecution of the ’937 patent, and any opinions, analyses and/or investigations
10 of infringement of the ’937 patent. For greater certainty, this includes all documents that include,
11 refer or relate to:
12

a. the priority claim made in the ’937 patent, including the conception and/or

13

reduction to practice of any invention disclosed, described, or claimed in the ’937

14

patent, and diligence between the date of conception and reduction to practice of

15

any alleged invention described, disclosed, or claimed in the ’937 patent;

16

b. the purported inventions disclosed, described, or claimed in the ’937 patent,

17

including the first written description, and the first disclosure of any alleged

18

invention described, disclosed, or claimed in the ’937 patent;

19
20

c. the design or development of any alleged invention described, disclosed, or claimed
in the ’937 patent, including any invention disclosure forms and prototypes;

21

d. communications with the U.S. Patent & Trademark Office, foreign patent offices,

22

including the Canadian Intellectual Property Office, foreign patent agents, or third

23

parties regarding the prosecution of the ’937 patent;

24

e. any reference cited during prosecution of the ’937 patent;

25

f. any analyses or efforts to draft the ’937 patent or design products or systems

26

embodying the subject matter disclosed or claimed in the ’937 patent around prior

27

art products, systems or patents;

28
E-1

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

g. the work you did in connection with the prosecution of the ’937 patent such as

1
2
3

billing records or time sheets.
2.

All documents relating to prior art to the ’937 patent, including all documents that

4 refer or relate to any overlaid tools in graphical user interfaces. For greater certainty, this includes
5 all documents that include, refer or relate to:
6

a. prior art to the ’937 patent submitted to the U.S. Patent & Trademark Office or any

7

foreign patent office, including the Canadian Intellectual Property Office, during

8

the prosecution of the ’937 patent;
b. the work you did searching for prior art to the ’937 patent, including publications or

9
10

references evaluated by you as potential prior art and all textbooks, articles, or

11

other sources consulted, gathered, or reviewed in drafting or prosecuting the ’937

12

patent;

13

c. any U.S. or foreign patents or patent applications filed prior to December 4, 1997

14

relating to any overlaid tools in graphical user interfaces, or any alleged invention

15

disclosed, described or claimed in the ’937 patent;

16

d. any publications, sale, offer for sale, or public use prior to December 4, 1997 of

17

overlaid tools in graphical user interfaces, or any alleged invention disclosed,

18

described, or claimed in the ’937 patent.

19

3.

All documents supporting any objective indicia of non-obviousness of any alleged

20 invention described, disclosed or claimed in the ’937 patent, including, but not limited to,
21 contentions of commercial success of the invention and/or products embodying the invention,
22 long-felt but unsolved needs met by those products and/or the invention, failure of others to meet
23 these needs, industry recognition of the invention and/or products embodying the invention, and
24 deliberate copying of the invention or laudatory statements by accused infringers.
25

4.

All documents that refer or relate to any investigations of Google’s products and

26 services with respect to any overlaid tools in graphical user interfaces and/or attempts to compare
27 or distinguish Google’s products and services from any technology owned or promoted by Brian
28
E-2

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1 Finlay Beaton, Colin Donald Smith, Bruce Dale Stalkie, Nortel Networks Corporation, or
2 Rockstar Consortium US LP.
3
4

The word “document” or “documents” above should be interpreted in its broadest sense

5 and include(s), but is not limited to, handwritten or electronic notes, memoranda, e-mails, calendar
6 invitations and appointments, records of meetings, promotional and sales materials, planning and
7 strategy documents, focus group information, press releases, analyst reports, competitive analyses,
8 schematics, engineering drawings, product and performance specifications, teardown
9 specifications, operational and service manuals, technical guides, electronic recordings, instant
10 messages, phone messages, call recordings, source code and electronic files.
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
E-3

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

SCHEDULE F

2

TOPICS FOR THE DEPOSITION OF ANGELA DE WILTON

3

It is respectfully requested that Angela De Wilton be compelled to testify, under oath or

4 affirmation, on the following topics for use at trial:
5

1.

Ms. Wilton’s knowledge and involvement with the ’937 patent, including the scope

6 of the claimed inventions, the development of the claimed inventions, the drafting of the ’937
7 patent, the terms used in the ’937 patent, inventorship of the ’937 patent, prosecution of the ’937
8 patent, and any opinions, analyses and/or investigations of infringement of the ’937 patent
9

2.

Ms. Wilton’s knowledge about prior art to the ’937 patent.

10

3.

Ms. Wilton’s knowledge about any objective indicia of non-obviousness of any

11 alleged invention described, disclosed or claimed in the ’937 patent.
12

4.

Ms. Wilton’s knowledge of any investigations of Google’s products and services

13 with respect to overlaid tools in graphical user interfaces and/or attempts to compare or distinguish
14 Google’s products and services from any technology owned or promoted by Brian Finlay Beaton,
15 Colin Donald Smith, Bruce Dale Stalkie, Nortel Networks Corporation, or Rockstar Consortium
16 US LP.
17

5.

The documents produced in response to the letters rogatory.

18
19
20
21
22
23
24
25
26
27
28
F-1

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

SCHEDULE G

2

DOCUMENTS TO BE PRODUCED BY JASPREET HARIT

3

It is respectfully requested that Jaspreet Harit be compelled to produce the following

4 documents that are in its possession, custody, or control, and which are not privileged under
5 Canadian or U.S. law:
6

1.

All documents that refer or relate to U.S. Patent No. 6,765,591 (the “’591 patent”),

7 including any documents that relate to the scope of the claimed inventions, the development of the
8 claimed inventions, the drafting of the ’591 patent, the terms used in the ’591 patent, inventorship
9 of the ’591 patent, prosecution of the ’591 patent, and any opinions, analyses and/or investigations
10 of infringement of the ’591 patent. For greater certainty, this includes all documents that include,
11 refer or relate to:
12

a. the priority claim made in the ’591 patent, including the conception and/or

13

reduction to practice of any invention disclosed, described, or claimed in the ’591

14

patent, and diligence between the date of conception and reduction to practice of

15

any alleged invention described, disclosed, or claimed in the ’591 patent;

16

b. the purported inventions disclosed, described, or claimed in the ’591 patent,

17

including the first written description, and the first disclosure of any alleged

18

invention described, disclosed, or claimed in the ’591 patent;

19
20

c. the design or development of any alleged invention described, disclosed, or claimed
in the ’591 patent, including any invention disclosure forms and prototypes;

21

d. communications with the U.S. Patent & Trademark Office, foreign patent offices,

22

including the Canadian Intellectual Property Office, foreign patent agents, or third

23

parties regarding the prosecution of the ’591 patent;

24

e. any reference cited during prosecution of the ’591 patent;

25

f. any analyses or efforts to draft the ’591 patent or design products or systems

26

embodying the subject matter disclosed or claimed in the ’591 patent around prior

27

art products, systems or patents;

28
G-1

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

g. the work you did in connection with the prosecution of the ’591 patent such as

1
2
3

billing records or time sheets.
2.

All documents relating to prior art to the ’591 patent, including all documents that

4 refer or relate to any graphical user interface for managing virtual private networks. For greater
5 certainty, this includes all documents that include, refer or relate to:
6

a. prior art to the ’591 patent submitted to the U.S. Patent & Trademark Office or any

7

foreign patent office, including the Canadian Intellectual Property Office, during

8

the prosecution of the ’591 patent;
b. the work you did searching for prior art to the ’591 patent, including publications or

9
10

references evaluated by you as potential prior art and all textbooks, articles, or

11

other sources consulted, gathered, or reviewed in drafting or prosecuting the ’591

12

patent;

13

c. any U.S. or foreign patents or patent applications filed prior to April 2, 1999

14

relating to any graphical user interface for managing virtual private networks, or

15

any alleged invention disclosed, described or claimed in the ’591 patent;

16

d. any publications, sale, offer for sale, or public use prior to April 2, 1999 of any

17

graphical user interface for managing virtual private networks, or any alleged

18

invention disclosed, described, or claimed in the ’591 patent.

19

3.

All documents supporting any objective indicia of non-obviousness of any alleged

20 invention described, disclosed or claimed in the ’591 patent, including, but not limited to,
21 contentions of commercial success of the invention and/or products embodying the invention,
22 long-felt but unsolved needs met by those products and/or the invention, failure of others to meet
23 these needs, industry recognition of the invention and/or products embodying the invention, and
24 deliberate copying of the invention or laudatory statements by accused infringers.
25

4.

All documents that refer or relate to any investigations of Google’s products and

26 services with respect to graphical user interface for managing virtual private networks and/or
27 attempts to compare or distinguish Google’s products and services from any technology owned or
28
G-2

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1 promoted by Matthew W. Poisson, Melissa L. Desroches, James M. Milillo, Nortel Networks
2 Corporation, or Rockstar Consortium US LP.
3
4

The word “document” or “documents” above should be interpreted in its broadest sense

5 and include(s), but is not limited to, handwritten or electronic notes, memoranda, e-mails, calendar
6 invitations and appointments, records of meetings, promotional and sales materials, planning and
7 strategy documents, focus group information, press releases, analyst reports, competitive analyses,
8 schematics, engineering drawings, product and performance specifications, teardown
9 specifications, operational and service manuals, technical guides, electronic recordings, instant
10 messages, phone messages, call recordings, source code and electronic files.
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
G-3

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

SCHEDULE H

2

TOPICS FOR THE DEPOSITION OF JASPREET HARIT

3

It is respectfully requested that Jaspreet Harit be compelled to testify, under oath or

4 affirmation, on the following topics for use at trial:
5

1.

Jaspreet Harit’s knowledge and involvement with the ’591 patent, including the

6 scope of the claimed inventions, the development of the claimed inventions, the drafting of the
7 ’591 patent, the terms used in the ’591 patent, inventorship of the ’591 patent, prosecution of the
8 ’591 patent, and any opinions, analyses and/or investigations of infringement of the ’591 patent
9

2.

Jaspreet Harit’s knowledge about prior art to the ’591 patent.

10

3.

Jaspreet Harit’s knowledge about any objective indicia of non-obviousness of any

11 alleged invention described, disclosed or claimed in the ’591 patent.
12

4.

Jaspreet Harit’s knowledge of any investigations of Google’s products and services

13 with respect to any graphical user interface for managing virtual private networks and/or attempts
14 to compare or distinguish Google’s products and services from any technology owned or
15 promoted by Matthew W. Poisson, Melissa L. Desroches, James M. Milillo, Nortel Networks
16 Corporation, or Rockstar Consortium US LP.
17

5.

The documents produced in response to the letters rogatory.

18
19
20
21
22
23
24
25
26
27
28
H-1

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

SCHEDULE I

2

DOCUMENTS TO BE PRODUCED BY YEE-NING CHAN

3

It is respectfully requested that Yee-Ning Chan be compelled to produce the following

4 documents that are in his possession, custody, or control, and which are not privileged under
5 Canadian or U.S. law:
6

1.

All documents regarding Mr. Chan’s work at Nortel Networks Corporation in his

7 role as a named inventor on U.S. Patent No. 5,838,551 (the “’551 patent”).
8

2.

All documents that refer or relate to the ’551 patent. For greater certainty, this

9 includes all documents that include, refer or relate to:
10

a. The scope of the claimed invention, including the meaning of any terms used in the
’551 patent or related patents/applications;

11
12

b. persons involved in inventing or developing the technology described or claimed in
the ’551 patent;

13
14

c. the conception and/or reduction to practice of any invention disclosed, described, or

15

claimed in the ’551 patent, and diligence between the date of conception and

16

reduction to practice, including any invention disclosure forms, inventor notebooks,

17

lab notebooks, and prototypes;

18

d. prosecution of the ’551 patent;

19

e. any opinion, analyses and/or investigations of infringement of the ’551 patent.

20

3.

All documents created prior to August 1, 1996 relating to prior art to the ’551

21 patent, including all documents that refer or relate to EMI shielding of an electronic package. For
22 greater certainty, this includes all documents that include, refer or relate to:
23

a. the work Mr. Chan did searching for prior art to the ’551 patent, including

24

publications or references evaluated by Mr. Chan as potential prior art and all

25

textbooks, articles, or other sources consulted, gathered, or reviewed in conceiving

26

or developing the concepts in the ’551 patent;

27
28
I-1

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

b. any U.S. or foreign patents or patent applications filed prior to August 1, 1996

2

relating to EMI shielding of an electronic package, or any alleged invention

3

disclosed, described or claimed in the ’551 patent;

4

c. any publications, sale, offer for sale, or public use prior to August 1, 1996 of EMI

5

shielding of an electronic package, or any alleged invention disclosed, described, or

6

claimed in the ’551 patent.

7

4.

Nortel’s development, marketing, and sale of any products embodying the

8 technology described or claimed in the ‘551 patent.
9

5.

All documents dated or created prior to August 1, 1996 that refer or relate to U.S.

10 Patent Nos. 4,551,746; 4,922,324; 5,153,379; 5,313,371; 5,355,016; 5,371,404; 5,394,011;
11 5,436,203; 5,459,368; 5,639,989; 5,717,245; 5,796,170; 5,866,942; 5,986,340; or 6,262,477;
12 Patent Cooperation Treaty Patent Application Publication No. WO 95/27341; A Handbook Series
13 on Electromagnetic Interference and Compatibility Volume 3 Electromagnetic Shielding, White,
14 et al. (1988); ESD Packaging Requirement for an Opto-Electronic Receiver Module, Foster, et al.
15 (IEEE 1990); or Grounding and Shielding Techniques in Instrumentation, 2nd Ed., Ralph
16 Morrison (1977).
17
18

The word “document” or “documents” above should be interpreted in its broadest sense

19 and include(s), but is not limited to, handwritten or electronic notes, memoranda, e-mails, calendar
20 invitations and appointments, records of meetings, promotional and sales materials, planning and
21 strategy documents, focus group information, press releases, analyst reports, competitive analyses,
22 schematics, engineering drawings, product and performance specifications, teardown
23 specifications, operational and service manuals, technical guides, electronic recordings, instant
24 messages, phone messages, call recordings, source code and electronic files.
25
26
27
28
I-2

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

SCHEDULE J

2

TOPICS FOR THE DEPOSITION OF YEE-NING CHAN

3

It is respectfully requested that Yee-Ning Chan be compelled to testify, under oath or

4 affirmation, on the following topics for use at trial:
5

1.

Mr. Chan’s work at Nortel Networks Corporation in his role as a named inventor

6 on U.S. Patent No. 5,838,551 (the “’551 patent”).
7

2.

The ’551 patent, including the scope of the claimed inventions, the development of

8 the technology claimed in the ’551 patent, the conception and reduction to practice of the ’551
9 patent, the terms used in the ’551 patent or related patents/applications, persons involved in
10 inventing or developing the ’551 patent, prosecution, and any opinion, analyses and/or
11 investigations of infringement of the ’551 patent.
12

3.

Mr. Chan’s knowledge of prior art to the ’551 patent, including whether he or

13 others at Nortel were aware of and/or had researched EMI shielding of an electronic package prior
14 to August 1, 1996.
15

4.

Development, marketing, operation or sale of products including EMI shielding of

16 an electronic package or products or services embodying the ’551 patent by Nortel or others.
17

5.

Communications and discussions prior to August 1, 1996 that Mr. Chan had

18 relating to EMI shielding of an electronic package.
19

6.

Mr. Chan’s knowledge prior to August 1, 1996 of U.S. Patent Nos. 4,551,746;

20 4,922,324; 5,153,379; 5,313,371; 5,355,016; 5,371,404; 5,394,011; 5,436,203; 5,459,368;
21 5,639,989; 5,717,245; 5,796,170; 5,866,942; 5,986,340; or 6,262,477; Patent Cooperation Treaty
22 Patent Application Publication No. WO 95/27341; A Handbook Series on Electromagnetic
23 Interference and Compatibility Volume 3 Electromagnetic Shielding, White, et al. (1988); ESD
24 Packaging Requirement for an Opto-Electronic Receiver Module, Foster, et al. (IEEE 1990); or
25 Grounding and Shielding Techniques in Instrumentation, 2nd Ed., Ralph Morrison (1977).
26
27
28
J-1

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

SCHEDULE K

2

DOCUMENTS TO BE PRODUCED BY BRIAN FINLAY BEATON

3

It is respectfully requested that Brian Finlay Beaton be compelled to produce the following

4 documents that are in his possession, custody, or control, and which are not privileged under
5 Canadian or U.S. law:
6

1.

All documents regarding Mr. Beaton’s work at Nortel Networks Corporation in his

7 role as a named inventor on U.S. Patent No. 6,333,973 or 6,037,937 (the “’973 or ’937 patents”).
8

2.

All documents that refer or relate to the ’973 or ’937 patents. For greater certainty,

9 this includes all documents that include, refer or relate to:
10

a. The scope of the claimed invention, including the meaning of any terms used in the
’973 or ’937 patents or related patents/applications;

11
12

b. persons involved in inventing or developing the technology described or claimed in
the ’973 or ’937 patents;

13
14

c. the conception and/or reduction to practice of any invention disclosed, described, or

15

claimed in the ’973 or ’937 patents, and diligence between the date of conception

16

and reduction to practice, including any invention disclosure forms, inventor

17

notebooks, lab notebooks, and prototypes;

18

d. prosecution of the ’973 or ’937 patents;

19

e. any opinion, analyses and/or investigations of infringement of the ’973 or ’937

20
21

patents.
3.

All documents created prior to April 23, 1997 relating to prior art to the ’973 or

22 ’937 patents, including all documents that refer or relate to overlaid tools in graphical user
23 interfaces. For greater certainty, this includes all documents that include, refer or relate to:
24

a. the work Mr. Beaton did searching for prior art to the ’973 or ’937 patents,

25

including publications or references evaluated by Mr. Beaton as potential prior art

26

and all textbooks, articles, or other sources consulted, gathered, or reviewed in

27

conceiving or developing the concepts in the ’973 or ’937 patents;

28
K-1

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

b. any U.S. or foreign patents or patent applications filed prior to April 23, 1997

2

relating to overlaid tools in graphical user interfaces, or any alleged invention

3

disclosed, described or claimed in the ’973 or ’937 patents;

4

c. any publications, sale, offer for sale, or public use prior to April 23, 1997 of

5

overlaid tools in graphical user interfaces, or any alleged invention disclosed,

6

described, or claimed in the ’973 or ’937 patents.

7

4.

Nortel’s development, marketing, and sale of any products of any products

8 embodying the technology described or claimed in the ’973 or ’937 patents.
9

5.

All documents dated or created prior to April 23, 1997 that refer or relate to U.S.

10 Patent Nos. 6,084,951; 4,479,213; 4,837,798; 5,533,097; 5,333,266; 5,448,759; 5,533,097;
11 5,550,861; 5,568,540; 5,579,472; 5,682,386; 5,742,905; 6,233,318; 6,335,927; 5,611,055;
12 5,252,951; 5,260,697; 5,491,495; 5,500,935; 5,581,243; 5,651,107; 5,638,501; 5,655,094;
13 5,699,244; 5,745,116; 5,760,773; 6,025,841; 6,069,626; 6,160,551; 6,493,006; Network
14 Architecture and Radio Link Performance of MOBITEX® Systems, Alavi, et. al. (1994); Voice
15 Over ATM to the Desktop: The LAN as PBX, Brooks, et. al. (1997); Standards Policy for
16 Information Infrastructure, Kahin, et. al. (1995); Internet Primer for Information Professionals,
17 Lane, et. al. (1993); Teleservices supported by a GSM Public Land Mobile Network (PLMN)
18 (GSM 02.03 version 3.4), ETSI (1992); Digital cellular telecommunications system (Phase 2+);
19 General description of a GSM Public Land Mobile Network (PLMN) (GSM 01.02), ETSI (1993);
20 Technical realization of the Short Message Service (SMS) Point-to-Point, ETSI (1995); Digital
21 cellular telecommunications system (Phase 2); Technical realization of facsimile group 3
22 transparent, ETSI (1995); Digital cellular telecommunications system (Phase 2+); General on
23 supplementary services, ETSI (1995); Digital cellular telecommunications system; Technical
24 realization of facsimile group 3 non-transparent, ETSI (1996); Digital cellular telecommunications
25 system (Phase 2+); Teleservices supported by a GSM Public Land Mobile Network (PLMN)
26 (GSM 02.03 version 5.3.0), ETSI (1996); GSM Full Rate Speech Transcoding, ETSI (1992);
27 Digital cellular telecommunications system; Full rate speech; Processing functions, ETSI (1992);
28 Digital cellular telecommunications system; Full rate speech; Processing functions, ETSI (1996);
K-2

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1 Digital cellular telecommunications system (Phase 2+); Technical realization of the Short Message
2 Service (SMS) Point-to-Point (PP), ETSI (1995); Digital cellular telecommunications system
3 (Phase 2+); Network Architecture, ETSI (1996); GoAnyWhere: plenty of modem bang for buck,
4 Kramer (1996); Basic GroupWise Concepts for Support Professionals, Lee (1996); NovaLink
5 supports phone links, Lee (1996); Messaging Using the Global System for Mobile
6 Communications, Murch, et. al. (1995); Newton’s Telecom Dictionary, Fifth Edition, Newton
7 (1992); The Information Highway: The Convergence of Telecommunications, Broadcast,
8 Distribution and Microprocessing, Shaw (1996); LAN TIMES Encyclopedia of Networking,
9 Sheldon (1994); “Advanced Network Technology”, OTA-BP-TCT-101, Office of Technology
10 Assessment, U.S. Government (1993); NovaLink to Offer First Type 2 PC Card Combining
11 Wireless Data With a Standard Data Fax Modem; Complete Mobile Data With a Standard Data
12 Fax Modem; Complete Mobile Data Communications Device is Also Cellular Ready, Business
13 Wire (1995); Intuity Message Manager Release 4.1 Getting Started, Lucent Technologies (1997);
14 Intuity Message Manager Release 2.0 User’s Guide, Lucent Technologies (1995); The GSM
15 System for Mobile Communications, Mouly, et. al. (1992); Pulse Code Modulation (PCM) of
16 Voice Frequencies, ITU (1993); Nokia 9000 Communicator User Manual, Nokia (1994); Nokia
17 2190 Owner’s Manual, Nokia (1996); User Guide: Ericsson CF337/CH337, OmniPoint
18 Communications (1996); AT&T Unified Messaging System; AUDIX; Boston Technology;
19 CallXpress3; Ericsson CF337/CH337; GroupWise / NetWare; Intuity Message Manager; Nokia
20 9000 Communicator; Nokia 2190; NovaMail; OfficeVision; A Marking Based Interface for
21 Collaborative Writing, Hardock, et al. (1993); Avoiding Trouble with Mouse Capture, Branch
22 (1997); Newton 2.0 User Interface Guidelines, Apple Computer Inc. (1996); Newton
23 Programmer’s Guide 2.0, Apple Computer Inc. (1996); Using Small Screen Space More
24 Efficiently, Kamba, et. al. (1996); EO Personal Communicator / Samsung Penmaster; Conquest of
25 the New World; InkWare NoteTaker; Newton MessagePad; NeXTStation N1100; Star 7;
26 Toolglass and Magic Lenses; Windows 95 / Microsoft Office; Windows for Pen Computing;
27 WinPad or X Window System.
28
K-3

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

The word “document” or “documents” above should be interpreted in its broadest sense

2 and include(s), but is not limited to, handwritten or electronic notes, memoranda, e-mails, calendar
3 invitations and appointments, records of meetings, promotional and sales materials, planning and
4 strategy documents, focus group information, press releases, analyst reports, competitive analyses,
5 schematics, engineering drawings, product and performance specifications, teardown
6 specifications, operational and service manuals, technical guides, electronic recordings, instant
7 messages, phone messages, call recordings, source code and electronic files.
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
K-4

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

SCHEDULE L

2

TOPICS FOR THE DEPOSITION OF BRIAN FINLAY BEATON

3

It is respectfully requested that Brian Finlay Beaton be compelled to testify, under oath or

4 affirmation, on the following topics for use at trial:
5

1.

Mr. Beaton’s work at Nortel Networks Corporation in his role as a named inventor

6 on U.S. Patent No. 6,333,973 or 6,037,937 (the “’973 or ’937 patents”).
7

2.

The ’973 or ’937 patents, including the scope of the claimed inventions, the

8 development of the technology claimed in the ’973 or ’937 patents, the terms used in the ’973 or
9 ’937 patents or related patents/applications, persons involved in inventing or developing the ’973
10 or ’937 patents, prosecution, and any opinion, analyses and/or investigations of infringement of
11 the ’973 or ’937 patents.
12

3.

Mr. Beaton’s knowledge of prior art to the ’973 or ’937 patents, including whether

13 he or others at Nortel were aware of and/or had researched user notifications of different message
14 types or overlaid tools in graphical user interfaces prior to April 23, 1997.
15

4.

Development, marketing, operation, or sale of products including user notifications

16 of different message types or overlaid tools in graphical user interfaces or products or services
17 embodying the ’973 or ’937 patents by Nortel or others.
18

5.

Communications and discussions prior to April 23, 1997 that Mr. Beaton had

19 relating to user notifications of different message types or overlaid tools in graphical user
20 interfaces.
21

6.

Mr. Beaton’s knowledge prior to April 23, 1997 of U.S. Patent Nos. 6,084,951;

22 4,479,213; 4,837,798; 5,533,097; 5,333,266; 5,448,759; 5,533,097; 5,550,861; 5,568,540;
23 5,579,472; 5,682,386; 5,742,905; 6,233,318; 6,335,927; 5,611,055; 5,252,951; 5,260,697;
24 5,491,495; 5,500,935; 5,581,243; 5,651,107; 5,638,501; 5,655,094; 5,699,244; 5,745,116;
25 5,760,773; 6,025,841; 6,069,626; 6,160,551; 6,493,006; Network Architecture and Radio Link
26 Performance of MOBITEX® Systems, Alavi, et. al. (1994); Voice Over ATM to the Desktop: The
27 LAN as PBX, Brooks, et. al. (1997); Standards Policy for Information Infrastructure, Kahin, et. al.
28 (1995); Internet Primer for Information Professionals, Lane, et. al. (1993); Teleservices supported
L-1

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1 by a GSM Public Land Mobile Network (PLMN) (GSM 02.03 version 3.4), ETSI (1992); Digital
2 cellular telecommunications system (Phase 2+); General description of a GSM Public Land
3 Mobile Network (PLMN) (GSM 01.02), ETSI (1993); Technical realization of the Short Message
4 Service (SMS) Point-to-Point, ETSI (1995); Digital cellular telecommunications system (Phase 2);
5 Technical realization of facsimile group 3 transparent, ETSI (1995); Digital cellular
6 telecommunications system (Phase 2+); General on supplementary services, ETSI (1995); Digital
7 cellular telecommunications system; Technical realization of facsimile group 3 non-transparent,
8 ETSI (1996); Digital cellular telecommunications system (Phase 2+); Teleservices supported by a
9 GSM Public Land Mobile Network (PLMN) (GSM 02.03 version 5.3.0), ETSI (1996); GSM Full
10 Rate Speech Transcoding, ETSI (1992); Digital cellular telecommunications system; Full rate
11 speech; Processing functions, ETSI (1992); Digital cellular telecommunications system; Full rate
12 speech; Processing functions, ETSI (1996); Digital cellular telecommunications system (Phase
13 2+); Technical realization of the Short Message Service (SMS) Point-to-Point (PP), ETSI (1995);
14 Digital cellular telecommunications system (Phase 2+); Network Architecture, ETSI (1996);
15 GoAnyWhere: plenty of modem bang for buck, Kramer (1996); Basic GroupWise Concepts for
16 Support Professionals, Lee (1996); NovaLink supports phone links, Lee (1996); Messaging Using
17 the Global System for Mobile Communications, Murch, et. al. (1995); Newton’s Telecom
18 Dictionary, Fifth Edition, Newton (1992); The Information Highway: The Convergence of
19 Telecommunications, Broadcast, Distribution and Microprocessing, Shaw (1996); LAN TIMES
20 Encyclopedia of Networking, Sheldon (1994); “Advanced Network Technology”, OTA-BP-TCT21 101, Office of Technology Assessment, U.S. Government (1993); NovaLink to Offer First Type 2
22 PC Card Combining Wireless Data With a Standard Data Fax Modem; Complete Mobile Data
23 With a Standard Data Fax Modem; Complete Mobile Data Communications Device is Also
24 Cellular Ready, Business Wire (1995); Intuity Message Manager Release 4.1 Getting Started,
25 Lucent Technologies (1997); Intuity Message Manager Release 2.0 User’s Guide, Lucent
26 Technologies (1995); The GSM System for Mobile Communications, Mouly, et. al. (1992); Pulse
27 Code Modulation (PCM) of Voice Frequencies, ITU (1993); Nokia 9000 Communicator User
28 Manual, Nokia (1994); Nokia 2190 Owner’s Manual, Nokia (1996); User Guide: Ericsson
L-2

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1 CF337/CH337, OmniPoint Communications (1996); AT&T Unified Messaging System; AUDIX;
2 Boston Technology; CallXpress3; Ericsson CF337/CH337; GroupWise / NetWare; Intuity
3 Message Manager; Nokia 9000 Communicator; Nokia 2190; NovaMail; OfficeVision; A Marking
4 Based Interface for Collaborative Writing, Hardock, et al. (1993); Avoiding Trouble with Mouse
5 Capture, Branch (1997); Newton 2.0 User Interface Guidelines, Apple Computer Inc. (1996);
6 Newton Programmer’s Guide 2.0, Apple Computer Inc. (1996); Using Small Screen Space More
7 Efficiently, Kamba, et. al. (1996); EO Personal Communicator / Samsung Penmaster; Conquest of
8 the New World; InkWare NoteTaker; Newton MessagePad; NeXTStation N1100; Star 7;
9 Toolglass and Magic Lenses; Windows 95 / Microsoft Office; Windows for Pen Computing;
10 WinPad or X Window System.
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
L-3

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

SCHEDULE M

2

DOCUMENTS TO BE PRODUCED BY BRUCE DALE STALKIE

3

It is respectfully requested that Bruce Dale Stalkie be compelled to produce the following

4 documents that are in his possession, custody, or control, and which are not privileged under
5 Canadian or U.S. law:
6

1.

All documents regarding Mr. Stalkie’s work at Nortel Networks Corporation in his

7 role as a named inventor on U.S. Patent No. 6,037,937 (the “’937 patent”).
8

2.

All documents that refer or relate to the ’937 patent. For greater certainty, this

9 includes all documents that include, refer or relate to:
10

a. The scope of the claimed invention, including the meaning of any terms used in the
’937 patent or related patents/applications;

11
12

b. persons involved in inventing or developing the technology described or claimed in
the ’937 patent;

13
14

c. the conception and/or reduction to practice of any invention disclosed, described, or

15

claimed in the ’937 patent, and diligence between the date of conception and

16

reduction to practice, including any invention disclosure forms, inventor notebooks,

17

lab notebooks, and prototypes;

18

d. prosecution of the ’937 patent;

19

e. any opinion, analyses and/or investigations of infringement of the ’937 patent.

20

3.

All documents created prior to December 4, 1997 relating to prior art to the ’937

21 patent, including all documents that refer or relate to overlaid tools in graphical user interfaces.
22 For greater certainty, this includes all documents that include, refer or relate to:
23

a. the work Mr. Stalkie did searching for prior art to the ’937 patent, including

24

publications or references evaluated by Mr. Stalkie as potential prior art and all

25

textbooks, articles, or other sources consulted, gathered, or reviewed in conceiving

26

or developing the concepts in the ’937 patent;

27
28
M-1

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

b. any U.S. or foreign patents or patent applications filed prior to December 4, 1997

2

relating to overlaid tools in graphical user interfaces, or any alleged invention

3

disclosed, described or claimed in the ’937 patent;

4

c. any publications, sale, offer for sale, or public use prior to December 4, 1997 of

5

overlaid tools in graphical user interfaces, or any alleged invention disclosed,

6

described, or claimed in the ’937 patent.

7

4.

Nortel’s development, marketing, and sale of any products of any products

8 embodying the technology described or claimed in the ‘937 patent.
9

5.

All documents dated or created prior to December 4, 1997 that refer or relate to

10 U.S. Patent Nos. 5,252,951; 5,260,697; 5,491,495; 5,500,935; 5,581,243; 5,651,107; 5,638,501;
11 5,655,094; 5,699,244; 5,745,116; 5,760,773; 6,025,841; 6,069,626; 6,160,551; 6,493,006; A
12 Marking Based Interface for Collaborative Writing, Hardock, et al. (1993); Avoiding Trouble with
13 Mouse Capture, Branch (1997); Newton 2.0 User Interface Guidelines, Apple Computer Inc.
14 (1996); Newton Programmer’s Guide 2.0, Apple Computer Inc. (1996); or Using Small Screen
15 Space More Efficiently, Kamba, et. al. (1996); EO Personal Communicator / Samsung Penmaster;
16 Conquest of the New World; InkWare NoteTaker; Newton MessagePad; NeXTStation N1100;
17 Star 7; Toolglass and Magic Lenses; Windows 95 / Microsoft Office; Windows for Pen
18 Computing; WinPad; or X Window System.
19
20

The word “document” or “documents” above should be interpreted in its broadest sense

21 and include(s), but is not limited to, handwritten or electronic notes, memoranda, e-mails, calendar
22 invitations and appointments, records of meetings, promotional and sales materials, planning and
23 strategy documents, focus group information, press releases, analyst reports, competitive analyses,
24 schematics, engineering drawings, product and performance specifications, teardown
25 specifications, operational and service manuals, technical guides, electronic recordings, instant
26 messages, phone messages, call recordings, source code and electronic files.
27
28
M-2

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

SCHEDULE N

2

TOPICS FOR THE DEPOSITION OF BRUCE DALE STALKIE

3

It is respectfully requested that Bruce Dale Stalkie be compelled to testify, under oath or

4 affirmation, on the following topics for use at trial:
5

1.

Mr. Stalkie’s work at Nortel Networks Corporation in his role as a named inventor

6 on U.S. Patent No. 6,037,937 (the “’937 patent”).
7

2.

The ’937 patent, including the scope of the claimed inventions, the development of

8 the technology claimed in the ’937 patent, the conception and reduction to practice of the ’937
9 patent, the terms used in the ’937 patent or related patents/applications, persons involved in
10 inventing or developing the ’937 patent, prosecution, and any opinion, analyses and/or
11 investigations of infringement of the ’937 patent.
12

3.

Mr. Stalkie’s knowledge of prior art to the ’937 patent, including whether he or

13 others at Nortel were aware of and/or had researched overlaid tools in graphical user interfaces
14 prior to December 4, 1997.
15

4.

Development, marketing, operation, or sale of products including overlaid tools in

16 graphical user interfaces or products or services embodying the ’937 patent by Nortel or others.
17

5.

Communications and discussions prior to December 4, 1997 that Mr. Stalkie had

18 relating to overlaid tools in graphical user interfaces.
19

6.

Mr. Stalkie’s knowledge prior to December 4, 1997 of U.S. Patent Nos. 5,252,951;

20 5,260,697; 5,491,495; 5,500,935; 5,581,243; 5,651,107; 5,638,501; 5,655,094; 5,699,244;
21 5,745,116; 5,760,773; 6,025,841; 6,069,626; 6,160,551; 6,493,006; A Marking Based Interface for
22 Collaborative Writing, Hardock, et al. (1993); Avoiding Trouble with Mouse Capture, Branch
23 (1997); Newton 2.0 User Interface Guidelines, Apple Computer Inc. (1996); Newton
24 Programmer’s Guide 2.0, Apple Computer Inc. (1996); or Using Small Screen Space More
25 Efficiently, Kamba, et. al. (1996); EO Personal Communicator / Samsung Penmaster; Conquest of
26 the New World; InkWare NoteTaker; Newton MessagePad; NeXTStation N1100; Star 7;
27 Toolglass and Magic Lenses; Windows 95 / Microsoft Office; Windows for Pen Computing;
28 WinPad; or X Window System.
N-1

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

SCHEDULE O

2

DOCUMENTS TO BE PRODUCED BY MITCH A. BRISEBOIS

3

It is respectfully requested that Mitch A. Brisebois be compelled to produce the following

4 documents that are in his possession, custody, or control, and which are not privileged under
5 Canadian or U.S. law:
6

1.

All documents regarding Mr. Brisebois’s work at Nortel Networks Corporation in

7 his role as a named inventor on U.S. Patent No. 6,463,131 (the “’131 patent”).
8

2.

All documents that refer or relate to the ’131 patent. For greater certainty, this

9 includes all documents that include, refer or relate to:
10

a. The scope of the claimed invention, including the meaning of any terms used in the
’131 patent or related patents/applications;

11
12

b. persons involved in inventing or developing the technology described or claimed in
the ’131 patent;

13
14

c. the conception and/or reduction to practice of any invention disclosed, described, or

15

claimed in the ’131 patent, and diligence between the date of conception and

16

reduction to practice, including any invention disclosure forms, inventor notebooks,

17

lab notebooks, and prototypes;

18

d. prosecution of the ’131 patent;

19

e. any opinion, analyses and/or investigations of infringement of the ’131 patent.

20

3.

All documents created prior to December 22, 1997 relating to prior art to the ’131

21 patent, including all documents that refer or relate to user notification of incoming communication
22 events. For greater certainty, this includes all documents that include, refer or relate to:
23

a. the work Mr. Brisebois did searching for prior art to the ’131 patent, including

24

publications or references evaluated by Mr. Brisebois as potential prior art and all

25

textbooks, articles, or other sources consulted, gathered, or reviewed in conceiving

26

or developing the concepts in the ’131 patent;

27
28
O-1

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

b. any U.S. or foreign patents or patent applications filed prior to December 22, 1997

2

relating to user notification of incoming communication events, or any alleged

3

invention disclosed, described or claimed in the ’131 patent;

4

c. any publications, sale, offer for sale, or public use prior to December 22, 1997 of

5

user notification of incoming communication events, or any alleged invention

6

disclosed, described, or claimed in the ’131 patent.

7

4.

Nortel’s development, marketing, and sale of any products of any products

8 embodying the technology described or claimed in the ‘131 patent.
9

5.

All documents dated or created prior to December 22, 1997 that refer or relate to

10 U.S. Patent Nos. 4,352,091; 4,803,487; 4,837,798; 4,918,438; 5,012,219; 5,172,092; 5,278,539;
11 5,327,486; 5,363,426; 5,422,733; 5,459,482; 5,533,102; 5,579,472; 5,604,491; 5,608,786;
12 5,627,528; 5,635,897; 5,642,413; 5,663,703; 5,675,507; 5,765,178; 5,767,778; 5,890,073;
13 5,896,096; 5,946,386; 5,987,100; 6,061,570; 6,044,278; 6,084,951; 6,092,102; 6,160,489;
14 6,169,911; 6,263,190; 6,271,764; 6,333,973; 6,335,927; 6,633,630; European Patent Nos. 0 471
15 023; 0 586 906; or 0 906 790; Patent Cooperation Treaty Patent Application Publication No.
16 97/48080; The Audio-Graphical Interface to a Personal Integrated Telecommunications System,
17 Arons (1984); Multimedia Nomadic Services on Today’s Hardware, Schmandt (1994);
18 Phoneshell: the Telephone as Computer Terminal, Schmandt (1993); Not Just Another Voice Mail
19 System, Stifelman (1991); A Conversational Telephone Messaging System, Schmandt, et. al.
20 (1984); Phone Slave: A Graphical Telecommunications Interface, Schmandt, et. al. (1985); Nokia
21 9000 Communicator User Manual, Nokia (1995); Nokia 9000i Communicator User Manual,
22 Nokia (November 1997); Nokia 2190 Owner’s Manual (1996); User Guide: Ericsson
23 CF337/CH337, OmniPoint Communications (1996); AOL 3.0; AT&T Unified Messaging System;
24 AUDIX; CallXpress 3; Connex; Ericsson CF337 and CH337; GroupWise / NetWare; Intuity
25 Message Manager; Motorola Tango Pager; FaxWeb; Nokia 9000 Communicator; Nokia 9000i
26 Communicator; Nokia 2190; NovaMail; Phone Slave; Phoneshell; Pine; or TkPostage.
27

6.

All documents that refer or relate to U.S. Patent No. 6,310,944 or Canadian Patent

28 No. 2,256,221, including any documents that relate to the scope of the claimed inventions, the
O-2

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1 development of the claimed inventions, the drafting of the patents, the terms used in the patents,
2 inventorship of the patents, prosecution of the patents, and any opinions, analyses and/or
3 investigations of infringement of the patents. For greater certainty, this includes all documents
4 that include, refer or relate to:
5
6
7
8
9
10

a. Conception, development, and/or reduction to practice of any of the claims of the
patents;
b. The first written description, first written disclosure, and first embodiment of any
concept, idea, or invention disclosed in the patents;
c. Inventorship of any of the claims of the patents, including the identification,
selection, or determination of the inventors;

11

d. Preparation, filing, and prosecution of the patents;

12

e. Physical evidence, specimens, written documents, notes, and communications

13

provided to patent counsel and/or any other person or entity responsible for the

14

preparation or prosecution of the patents;

15
16
17
18
19
20
21
22
23

f. Any publication or other written disclosure to another person or entity of any
concept, idea, or invention disclosed in the patents;
g. Any disclosures, sales, offers for sale, or uses of any concept, idea, or invention
disclosed in the patents;
h. Any prior art to the patents, including any reference cited during prosecution of the
patents;
i. Investigations, analyses, or searches concerning the patentability of the subject
matter claimed in the patents;
j. Engineering documents, software, executable software and source code created in

24

conjunction with any of the concepts disclosed in the patents;

25

k. Any embodiment of any of the inventions disclosed in the patents;

26

l. Notebooks or records of any type, including laboratory notebooks, computer

27

records, experimental results, technical specifications, and other materials,

28
O-3

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

reflecting the research, design, development, experimentation, or testing of any

2

concept, idea, or invention disclosed and claimed in the patents;

3

m. Sworn testimony, statements, affidavits, or declarations by any of the named

4

inventors of the patents concerning any concepts, ideas, or inventions disclosed in

5

the patents;

6

n. Communications with anyone about the patents or any collection of patents in

7

which the patents may have been included for sale, license, or otherwise;

8

o. Patents, publications, articles, presentations, and other writings, whether or not

9

published, authored or co-authored by any of the named inventors of the patents

10

relating to the subject matter of the patents;

11

p. Ownership or grant of any right, title, or interest in the patents;

12

q. Analysis of whether and how any concepts, ideas, or inventions disclosed in the

13
14

patents were being used by Mr. Brisebois or any other person or entity.
7.

All documents that refer or relate to any feature, invention or application, software,

15 or product which incorporated a call trace on a packet switched network (“call trace product”)
16 prior to December 29, 2000, including representative samples of software and hardware,
17 executable software, manuals, technical plans, diagrams, workbooks, manuals, published articles,
18 publications, and user guides.
19

8.

Documents sufficient to identify, by build or version name or number, any and all

20 versions of each call trace product manufactured, sold, licensed or otherwise made available in the
21 United States prior to December 29, 2000.
22

9.

Documents sufficient to show the time period during which each call trace product

23 was manufactured, sold, licensed, or otherwise made available in the United States and the
24 quantity manufactured, sold, licensed, or otherwise made available in the United States prior to
25 December 29, 2000.
26

10.

All documents that refer or relate to the marketing, advertising, or promotional

27 efforts related to any call trace product in the United States prior to December 29, 2000.
28
O-4

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

11.

All documents that refer or relate to any person knowledgeable about the creation,

2 design, development, operation or implementation of any call trace product manufactured, sold,
3 licensed, or otherwise made available in the United States prior to December 29, 2000.
4
5

The word “document” or “documents” above should be interpreted in its broadest sense

6 and include(s), but is not limited to, handwritten or electronic notes, memoranda, e-mails, calendar
7 invitations and appointments, records of meetings, promotional and sales materials, planning and
8 strategy documents, focus group information, press releases, analyst reports, competitive analyses,
9 schematics, engineering drawings, product and performance specifications, teardown
10 specifications, operational and service manuals, technical guides, electronic recordings, instant
11 messages, phone messages, call recordings, source code and electronic files.
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
O-5

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

SCHEDULE P

2

TOPICS FOR THE DEPOSITION OF MITCH A. BRISEBOIS

3

It is respectfully requested that Mitch A. Brisebois be compelled to testify, under oath or

4 affirmation, on the following topics for use at trial:
5

1.

Mr. Brisebois’s work at Nortel Networks Corporation in his role as a named

6 inventor on U.S. Patent No. 6,463,131 (the “’131 patent”).
7

2.

The ’131 patent, including the scope of the claimed inventions, the development of

8 the technology claimed in the ’131 patent, the conception and reduction to practice of the ’131
9 patent, the terms used in the ’131 patent or related patents/applications, persons involved in
10 inventing or developing the ’131 patent, prosecution, and any opinion, analyses and/or
11 investigations of infringement of the ’131 patent.
12

3.

Mr. Brisebois’s knowledge of prior art to the ’131 patent, including whether he or

13 others at Nortel were aware of and/or had researched user notification of incoming communication
14 events prior to December 22, 1997.
15

4.

Development, marketing, operation, or sale of products including user notification

16 of incoming communication events or products or services embodying the ’131 patent by Nortel
17 or others.
18

5.

Communications and discussions prior to December 22, 1997 that Mr. Brisebois

19 had relating to user notification of incoming communication events.
20

6.

Mr. Brisebois’s knowledge prior to December 22, 1997 of U.S. Patent Nos.

21 4,352,091; 4,803,487; 4,837,798; 4,918,438; 5,012,219; 5,172,092; 5,278,539; 5,327,486;
22 5,363,426; 5,422,733; 5,459,482; 5,533,102; 5,579,472; 5,604,491; 5,608,786; 5,627,528;
23 5,635,897; 5,642,413; 5,663,703; 5,675,507; 5,765,178; 5,767,778; 5,890,073; 5,896,096;
24 5,946,386; 5,987,100; 6,061,570; 6,044,278; 6,084,951; 6,092,102; 6,160,489; 6,169,911;
25 6,263,190; 6,271,764; 6,333,973; 6,335,927; 6,633,630; European Patent Nos. 0 471 023; 0 586
26 906; or 0 906 790; Patent Cooperation Treaty Patent Application Publication No. 97/48080; The
27 Audio-Graphical Interface to a Personal Integrated Telecommunications System, Arons (1984);
28 Multimedia Nomadic Services on Today’s Hardware, Schmandt (1994); Phoneshell: the
P-1

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1 Telephone as Computer Terminal, Schmandt (1993); Not Just Another Voice Mail System,
2 Stifelman (1991); A Conversational Telephone Messaging System, Schmandt, et. al. (1984);
3 Phone Slave: A Graphical Telecommunications Interface, Schmandt, et. al. (1985); Nokia 9000
4 Communicator User Manual, Nokia (1995); Nokia 9000i Communicator User Manual, Nokia
5 (November 1997); Nokia 2190 Owner’s Manual (1996); User Guide: Ericsson CF337/CH337,
6 OmniPoint Communications (1996); AOL 3.0; AT&T Unified Messaging System; AUDIX;
7 CallXpress 3; Connex; Ericsson CF337 and CH337; GroupWise / NetWare; Intuity Message
8 Manager; Motorola Tango Pager; FaxWeb; Nokia 9000 Communicator; Nokia 9000i
9 Communicator; Nokia 2190; NovaMail; Phone Slave; Phoneshell; Pine; or TkPostage.
10

7.

Mr. Brisebois’s knowledge and involvement with U.S. Patent No. 6,310,944 or

11 Canadian Patent No. 2,256,221, including the scope of the claimed inventions, the development of
12 the claimed inventions, the drafting of the patents or related patents/applications, the terms used in
13 the patents or related patents/applications, inventorship of the patents or related
14 patents/applications, prosecution of the patents or related patents/applications, and any opinions,
15 analyses and/or investigations of infringement of the patents.
16

8.

Mr. Brisebois’s knowledge about any feature, invention or application, software, or

17 product which incorporated a call trace on a packet switched network (“call trace product”).
18

9.

Mr. Brisebois’s knowledge about any and all versions of each call trace product

19 manufactured, sold, licensed or otherwise made available in the United States prior to December
20 29, 2000.
21

10.

Mr. Brisebois’s knowledge about the time period during which each call trace

22 product was manufactured, sold, licensed, or otherwise made available in the United States.
23

11.

Mr. Brisebois’s knowledge of the marketing, advertising, or promotional efforts

24 related to any call trace product in the United States prior to December 29, 2000.
25

12.

Mr. Brisebois’s knowledge of any person knowledgeable about the creation,

26 design, development, operation or implementation of any call trace product manufactured, sold,
27 licensed, or otherwise made available in the United States prior to December 29, 2000.
28
P-2

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

SCHEDULE Q

2

DOCUMENTS TO BE PRODUCED BY LAURA A. MAHAN

3

It is respectfully requested that Laura A. Mahan be compelled to produce the following

4 documents that are in her possession, custody, or control, and which are not privileged under
5 Canadian or U.S. law:
6

1.

All documents regarding Ms. Mahan’s work at Nortel Networks Corporation in her

7 role as a named inventor on U.S. Patent No. 6,463,131 (the “’131 patent”).
8

2.

All documents that refer or relate to the ’131 patent. For greater certainty, this

9 includes all documents that include, refer or relate to:
10

a. The scope of the claimed invention, including the meaning of any terms used in the
’131 patent or related patents/applications;

11
12

b. persons involved in inventing or developing the technology described or claimed in
the ’131 patent;

13
14

c. the conception and/or reduction to practice of any invention disclosed, described, or

15

claimed in the ’131 patent, and diligence between the date of conception and

16

reduction to practice, including any invention disclosure forms, inventor notebooks,

17

lab notebooks, and prototypes;

18

d. prosecution of the ’131 patent;

19

e. any opinion, analyses and/or investigations of infringement of the ’131 patent.

20

3.

All documents created prior to December 22, 1997 relating to prior art to the ’131

21 patent, including all documents that refer or relate to user notification of incoming communication
22 events. For greater certainty, this includes all documents that include, refer or relate to:
23

a. the work Ms. Mahan did searching for prior art to the ’131 patent, including

24

publications or references evaluated by Ms. Mahan as potential prior art and all

25

textbooks, articles, or other sources consulted, gathered, or reviewed in conceiving

26

or developing the concepts in the ’131 patent;

27
28
Q-1

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

b. any U.S. or foreign patents or patent applications filed prior to December 22, 1997

2

relating to user notification of incoming communication events, or any alleged

3

invention disclosed, described or claimed in the ’131 patent;

4

c. any publications, sale, offer for sale, or public use prior to December 22, 1997 of

5

user notification of incoming communication events, or any alleged invention

6

disclosed, described, or claimed in the ’131 patent.

7

4.

Nortel’s development, marketing, and sale of any products of any products

8 embodying the technology described or claimed in the ‘131 patent.
9

5.

U.S. Patent Nos. 4,352,091; 4,803,487; 4,837,798; 4,918,438; 5,012,219;

10 5,172,092; 5,278,539; 5,327,486; 5,363,426; 5,422,733; 5,459,482; 5,533,102; 5,579,472;
11 5,604,491; 5,608,786; 5,627,528; 5,635,897; 5,642,413; 5,663,703; 5,675,507; 5,765,178;
12 5,767,778; 5,890,073; 5,896,096; 5,946,386; 5,987,100; 6,061,570; 6,044,278; 6,084,951;
13 6,092,102; 6,160,489; 6,169,911; 6,263,190; 6,271,764; 6,333,973; 6,335,927; 6,633,630;
14 European Patent Nos. 0 471 023; 0 586 906; or 0 906 790; Patent Cooperation Treaty Patent
15 Application Publication No. 97/48080; The Audio-Graphical Interface to a Personal Integrated
16 Telecommunications System, Arons (1984); Multimedia Nomadic Services on Today’s Hardware,
17 Schmandt (1994); Phoneshell: the Telephone as Computer Terminal, Schmandt (1993); Not Just
18 Another Voice Mail System, Stifelman (1991); A Conversational Telephone Messaging System,
19 Schmandt, et. al. (1984); Phone Slave: A Graphical Telecommunications Interface, Schmandt, et.
20 al. (1985); Nokia 9000 Communicator User Manual, Nokia (1995); Nokia 9000i Communicator
21 User Manual, Nokia (November 1997); Nokia 2190 Owner’s Manual (1996); User Guide:
22 Ericsson CF337/CH337, OmniPoint Communications (1996); AOL 3.0; AT&T Unified
23 Messaging System; AUDIX; CallXpress 3; Connex; Ericsson CF337 and CH337; GroupWise /
24 NetWare; Intuity Message Manager; Motorola Tango Pager; FaxWeb; Nokia 9000
25 Communicator; Nokia 9000i Communicator; Nokia 2190; NovaMail; Phone Slave; Phoneshell;
26 Pine; or TkPostage.
27

6.

All documents that refer or relate to U.S. Patent No. 6,310,944 or Canadian Patent

28 No. 2,256,221, including any documents that relate to the scope of the claimed inventions, the
Q-2

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1 development of the claimed inventions, the drafting of the patents, the terms used in the patents,
2 inventorship of the patents, prosecution of the patents, and any opinions, analyses and/or
3 investigations of infringement of the patents. For greater certainty, this includes all documents
4 that include, refer or relate to:
5
6
7
8
9
10

a. Conception, development, and/or reduction to practice of any of the claims of the
patents;
b. The first written description, first written disclosure, and first embodiment of any
concept, idea, or invention disclosed in the patents;
c. Inventorship of any of the claims of the patents, including the identification,
selection, or determination of the inventors;

11

d. Preparation, filing, and prosecution of the patents;

12

e. Physical evidence, specimens, written documents, notes, and communications

13

provided to patent counsel and/or any other person or entity responsible for the

14

preparation or prosecution of the patents;

15
16
17
18
19
20
21
22
23

f. Any publication or other written disclosure to another person or entity of any
concept, idea, or invention disclosed in the patents;
g. Any disclosures, sales, offers for sale, or uses of any concept, idea, or invention
disclosed in the patents;
h. Any prior art to the patents, including any reference cited during prosecution of the
patents;
i. Investigations, analyses, or searches concerning the patentability of the subject
matter claimed in the patents;
j. Engineering documents, software, executable software and source code created in

24

conjunction with any of the concepts disclosed in the patents;

25

k. Any embodiment of any of the inventions disclosed in the patents;

26

l. Notebooks or records of any type, including laboratory notebooks, computer

27

records, experimental results, technical specifications, and other materials,

28
Q-3

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

reflecting the research, design, development, experimentation, or testing of any

2

concept, idea, or invention disclosed and claimed in the patents;

3

m. Sworn testimony, statements, affidavits, or declarations by any of the named

4

inventors of the patents concerning any concepts, ideas, or inventions disclosed in

5

the patents;

6

n. Communications with anyone about the patents or any collection of patents in

7

which the patents may have been included for sale, license, or otherwise;

8

o. Patents, publications, articles, presentations, and other writings, whether or not

9

published, authored or co-authored by any of the named inventors of the patents

10

relating to the subject matter of the patents;

11

p. Ownership or grant of any right, title, or interest in the patents;

12

q. Analysis of whether and how any concepts, ideas, or inventions disclosed in the

13
14

patents were being used by Ms. Mahan or any other person or entity.
7.

All documents that refer or relate to any feature, invention or application, software,

15 or product which incorporated a call trace on a packet switched network (“call trace product”)
16 prior to December 29, 2000, including representative samples of software and hardware,
17 executable software, manuals, technical plans, diagrams, workbooks, manuals, published articles,
18 publications, and user guides.
19

8.

Documents sufficient to identify, by build or version name or number, any and all

20 versions of each call trace product manufactured, sold, licensed or otherwise made available in the
21 United States prior to December 29, 2000.
22

9.

Documents sufficient to show the time period during which each call trace product

23 was manufactured, sold, licensed, or otherwise made available in the United States and the
24 quantity manufactured, sold, licensed, or otherwise made available in the United States prior to
25 December 29, 2000.
26

10.

All documents that refer or relate to the marketing, advertising, or promotional

27 efforts related to any call trace product in the United States prior to December 17, 1997.
28
Q-4

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

11.

All documents that refer or relate to any person knowledgeable about the creation,

2 design, development, operation or implementation of any call trace product manufactured, sold,
3 licensed, or otherwise made available in the United States prior to December 17, 1997.
4
5

The word “document” or “documents” above should be interpreted in its broadest sense

6 and include(s), but is not limited to, handwritten or electronic notes, memoranda, e-mails, calendar
7 invitations and appointments, records of meetings, promotional and sales materials, planning and
8 strategy documents, focus group information, press releases, analyst reports, competitive analyses,
9 schematics, engineering drawings, product and performance specifications, teardown
10 specifications, operational and service manuals, technical guides, electronic recordings, instant
11 messages, phone messages, call recordings, source code and electronic files.
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
Q-5

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

SCHEDULE R

2

TOPICS FOR THE DEPOSITION OF LAURA A. MAHAN

3

It is respectfully requested that Laura A. Mahan be compelled to testify, under oath or

4 affirmation, on the following topics for use at trial:
5

1.

Ms. Mahan’s work at Nortel Networks Corporation in her role as a named inventor

6 on U.S. Patent No. 6,463,131 (the “’131 patent”).
7

2.

The ’131 patent, including the scope of the claimed inventions, the development of

8 the technology claimed in the ’131 patent, the conception and reduction to practice of the ’131
9 patent, the terms used in the ’131 patent or related patents/applications, persons involved in
10 inventing or developing the ’131 patent, prosecution, and any opinion, analyses and/or
11 investigations of infringement of the ’131 patent.
12

3.

Ms. Mahan’s knowledge of prior art to the ’131 patent, including whether she or

13 others at Nortel were aware of and/or had researched user notification of incoming communication
14 events prior to December 22, 1997.
15

4.

Development, marketing, operation, or sale of products including user notification

16 of incoming communication events or products or services embodying the ’131 patent by Nortel
17 or others.
18

5.

Communications and discussions prior to December 22, 1997 that Ms. Mahan had

19 relating to notification of incoming communication events.
20

6.

U.S. Patent Nos. 4,352,091; 4,803,487; 4,837,798; 4,918,438; 5,012,219;

21 5,172,092; 5,278,539; 5,327,486; 5,363,426; 5,422,733; 5,459,482; 5,533,102; 5,579,472;
22 5,604,491; 5,608,786; 5,627,528; 5,635,897; 5,642,413; 5,663,703; 5,675,507; 5,765,178;
23 5,767,778; 5,890,073; 5,896,096; 5,946,386; 5,987,100; 6,061,570; 6,044,278; 6,084,951;
24 6,092,102; 6,160,489; 6,169,911; 6,263,190; 6,271,764; 6,333,973; 6,335,927; 6,633,630;
25 European Patent Nos. 0 471 023; 0 586 906; or 0 906 790; Patent Cooperation Treaty Patent
26 Application Publication No. 97/48080; The Audio-Graphical Interface to a Personal Integrated
27 Telecommunications System, Arons (1984); Multimedia Nomadic Services on Today’s Hardware,
28 Schmandt (1994); Phoneshell: the Telephone as Computer Terminal, Schmandt (1993); Not Just
R-1

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1 Another Voice Mail System, Stifelman (1991); A Conversational Telephone Messaging System,
2 Schmandt, et. al. (1984); Phone Slave: A Graphical Telecommunications Interface, Schmandt, et.
3 al. (1985); Nokia 9000 Communicator User Manual, Nokia (1995); Nokia 9000i Communicator
4 User Manual, Nokia (November 1997); Nokia 2190 Owner’s Manual (1996); User Guide:
5 Ericsson CF337/CH337, OmniPoint Communications (1996); AOL 3.0; AT&T Unified
6 Messaging System; AUDIX; CallXpress 3; Connex; Ericsson CF337 and CH337; GroupWise /
7 NetWare; Intuity Message Manager; Motorola Tango Pager; FaxWeb; Nokia 9000
8 Communicator; Nokia 9000i Communicator; Nokia 2190; NovaMail; Phone Slave; Phoneshell;
9 Pine; or TkPostage.
10

7.

Ms. Mahan’s knowledge and involvement with U.S. Patent No. 6,310,944 or

11 Canadian Patent No. 2,256,221, including the scope of the claimed inventions, the development of
12 the claimed inventions, the drafting of the patents or related patents/applications, the terms used in
13 the patents or related patents/applications, inventorship of the patents or related
14 patents/applications, prosecution of the patents or related patents/applications, and any opinions,
15 analyses and/or investigations of infringement of the patents.
16

8.

Ms. Mahan’s knowledge about any feature, invention or application, software, or

17 product which incorporated a call trace on a packet switched network (“call trace product”).
18

9.

Ms. Mahan’s knowledge about any and all versions of each call trace product

19 manufactured, sold, licensed or otherwise made available in the United States prior to December
20 17, 1997.
21

10.

Ms. Mahan’s knowledge about the time period during which each call trace product

22 was manufactured, sold, licensed, or otherwise made available in the United States.
23

11.

Ms. Mahan’s knowledge of the marketing, advertising, or promotional efforts

24 related to any call trace product in the United States prior to December 17, 1997.
25

12.

Ms. Mahan’s knowledge of any person knowledgeable about the creation, design,

26 development, operation or implementation of any call trace product manufactured, sold, licensed,
27 or otherwise made available in the United States prior to December 29, 2000.
28
R-2

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

SCHEDULE S

2

DOCUMENTS TO BE PRODUCED BY PAUL MICHAEL BRENNAN

3

It is respectfully requested that Paul Michael Brennan be compelled to produce the

4 following documents that are in his possession, custody, or control, and which are not privileged
5 under Canadian or U.S. law:
6

1.

All documents that refer or relate to U.S. Patent No. 6,888,927, Canadian Patent

7 No. 2,287,146, or European Patent Application No. 1,017,214, including any documents that
8 relate to the scope of the claimed inventions, the development of the claimed inventions, the
9 drafting of the patents, the terms used in the patents, inventorship of the patents, prosecution of the
10 patents, and any opinions, analyses and/or investigations of infringement of the patents. For
11 greater certainty, this includes all documents that include, refer or relate to:
12
13
14
15
16
17

a. Conception, development, and/or reduction to practice of any of the claims of the
patents;
b. The first written description, first written disclosure, and first embodiment of any
concept, idea, or invention disclosed in the patents;
c. Inventorship of any of the claims of the patents, including the identification,
selection, or determination of the inventors;

18

d. Preparation, filing, and prosecution of the patents;

19

e. Physical evidence, specimens, written documents, notes, and communications

20

provided to patent counsel and/or any other person or entity responsible for the

21

preparation or prosecution of the patents;

22
23
24
25
26
27

f. Any publication or other written disclosure to another person or entity of any
concept, idea, or invention disclosed in the patents;
g. Any disclosures, sales, offers for sale, or uses of any concept, idea, or invention
disclosed in the patents;
h. Any prior art to the patents, including any reference cited during prosecution of the
patents;

28
S-1

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

i. Investigations, analyses, or searches concerning the patentability of the subject

2

matter claimed in the patents;

3

j. Engineering documents, software, executable software and source code created in

4

conjunction with any of the concepts disclosed in the patents;

5

k. Any embodiment of any of the inventions disclosed in the patents;

6

l. Notebooks or records of any type, including laboratory notebooks, computer

7

records, experimental results, technical specifications, and other materials,

8

reflecting the research, design, development, experimentation, or testing of any

9

concept, idea, or invention disclosed and claimed in the patents;

10

m. Sworn testimony, statements, affidavits, or declarations by any of the named

11

inventors of the patents concerning any concepts, ideas, or inventions disclosed in

12

the patents;

13

n. Communications with anyone about the patents or any collection of patents in

14

which the patents may have been included for sale, license, or otherwise;

15

o. Patents, publications, articles, presentations, and other writings, whether or not

16

published, authored or co-authored by any of the named inventors of the patents

17

relating to the subject matter of the patents;

18

p. Ownership or grant of any right, title, or interest in the patents;

19

q. Analysis of whether and how any concepts, ideas, or inventions disclosed in the

20
21

patents were being used by Mr. Brennan or any other person or entity.
2.

All documents that refer or relate to any feature, invention or application, software,

22 or product which incorporated a call trace on a packet switched network (“call trace product”)
23 prior to December 29, 2000, including representative samples of software and hardware,
24 executable software, manuals, technical plans, diagrams, workbooks, manuals, published articles,
25 publications, and user guides.
26

3.

Documents sufficient to identify, by build or version name or number, any and all

27 versions of each call trace product manufactured, sold, licensed or otherwise made available in the
28 United States prior to December 29, 2000.
S-2

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

4.

Documents sufficient to show the time period during which each call trace product

2 was manufactured, sold, licensed, or otherwise made available in the United States and the
3 quantity manufactured, sold, licensed, or otherwise made available in the United States prior to
4 December 29, 2000.
5

5.

All documents that refer or relate to the marketing, advertising, or promotional

6 efforts related to any call trace product in the United States prior to December 29, 2000.
7

6.

All documents that refer or relate to any person knowledgeable about the creation,

8 design, development, operation or implementation of any call trace product manufactured, sold,
9 licensed, or otherwise made available in the United States prior to December 29, 2000.
10
11

The word “document” or “documents” above should be interpreted in its broadest sense

12 and include(s), but is not limited to, handwritten or electronic notes, memoranda, e-mails, calendar
13 invitations and appointments, records of meetings, promotional and sales materials, planning and
14 strategy documents, focus group information, press releases, analyst reports, competitive analyses,
15 schematics, engineering drawings, product and performance specifications, teardown
16 specifications, operational and service manuals, technical guides, electronic recordings, instant
17 messages, phone messages, call recordings, source code and electronic files.
18
19
20
21
22
23
24
25
26
27
28
S-3

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

SCHEDULE T

2

TOPICS FOR THE DEPOSITION OF PAUL MICHAEL BRENNAN

3

It is respectfully requested that Paul Michael Brennan be compelled to testify, under oath

4 or affirmation, on the following topics for use at trial:
5

1.

Mr. Brennan’s knowledge and involvement with U.S. Patent No. 6,888,927,

6 Canadian Patent No. 2,287,146, or European Patent Application No. 1,017,214, including the
7 scope of the claimed inventions, the development of the claimed inventions, the drafting of the
8 patents or related patents/applications, the terms used in the patents or related patents/applications,
9 inventorship of the patents or related patents/applications, prosecution of the patents or related
10 patents/applications, and any opinions, analyses and/or investigations of infringement of the
11 patents.
12

2.

Mr. Brennan’s knowledge about any feature, invention or application, software, or

13 product which incorporated a call trace on a packet switched network (“call trace product”).
14

3.

Mr. Brennan’s knowledge about any and all versions of each call trace product

15 manufactured, sold, licensed or otherwise made available in the United States prior to December
16 29, 2000.
17

4.

Mr. Brennan’s knowledge about the time period during which each call trace

18 product was manufactured, sold, licensed, or otherwise made available in the United States.
19

5.

Mr. Brennan’s knowledge of the marketing, advertising, or promotional efforts

20 related to any call trace product in the United States prior to December 29, 2000.
21

6.

Mr. Brennan’s knowledge of any person knowledgeable about the creation, design,

22 development, operation or implementation of any call trace product manufactured, sold, licensed,
23 or otherwise made available in the United States prior to December 29, 2000.
24
25
26
27
28
T-1

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

SCHEDULE U

2

DOCUMENTS TO BE PRODUCED BY BRIAN CRUICKSHANK

3

It is respectfully requested that Brian Cruickshank be compelled to produce the following

4 documents that are in his possession, custody, or control, and which are not privileged under
5 Canadian or U.S. law:
6

1.

All documents that refer or relate to U.S. Patent No. 6,888,927, Canadian Patent

7 No. 2,287,146, or European Patent Application No. 1,017,214, including any documents that
8 relate to the scope of the claimed inventions, the development of the claimed inventions, the
9 drafting of the patents, the terms used in the patents, inventorship of the patents, prosecution of the
10 patents, and any opinions, analyses and/or investigations of infringement of the patents. For
11 greater certainty, this includes all documents that include, refer or relate to:
12
13
14
15
16
17

a. Conception, development, and/or reduction to practice of any of the claims of the
patents;
b. The first written description, first written disclosure, and first embodiment of any
concept, idea, or invention disclosed in the patents;
c. Inventorship of any of the claims of the patents, including the identification,
selection, or determination of the inventors;

18

d. Preparation, filing, and prosecution of the patents;

19

e. Physical evidence, specimens, written documents, notes, and communications

20

provided to patent counsel and/or any other person or entity responsible for the

21

preparation or prosecution of the patents;

22
23
24
25
26
27

f. Any publication or other written disclosure to another person or entity of any
concept, idea, or invention disclosed in the patents;
g. Any disclosures, sales, offers for sale, or uses of any concept, idea, or invention
disclosed in the patents;
h. Any prior art to the patents, including any reference cited during prosecution of the
patents;

28
U-1

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

i. Investigations, analyses, or searches concerning the patentability of the subject

2

matter claimed in the patents;

3

j. Engineering documents, software, executable software and source code created in

4

conjunction with any of the concepts disclosed in the patents;

5

k. Any embodiment of any of the inventions disclosed in the patents;

6

l. Notebooks or records of any type, including laboratory notebooks, computer

7

records, experimental results, technical specifications, and other materials,

8

reflecting the research, design, development, experimentation, or testing of any

9

concept, idea, or invention disclosed and claimed in the patents;

10

m. Sworn testimony, statements, affidavits, or declarations by any of the named

11

inventors of the patents concerning any concepts, ideas, or inventions disclosed in

12

the patents;

13

n. Communications with anyone about the patents or any collection of patents in

14

which the patents may have been included for sale, license, or otherwise;

15

o. Patents, publications, articles, presentations, and other writings, whether or not

16

published, authored or co-authored by any of the named inventors of the patents

17

relating to the subject matter of the patents;

18

p. Ownership or grant of any right, title, or interest in the patents;

19

q. Analysis of whether and how any concepts, ideas, or inventions disclosed in the

20
21

patents were being used by Mr. Cruickshank or any other person or entity.
2.

All documents that refer or relate to any feature, invention or application, software,

22 or product which incorporated a call trace on a packet switched network (“call trace product”)
23 prior to December 29, 2000, including representative samples of software and hardware,
24 executable software, manuals, technical plans, diagrams, workbooks, manuals, published articles,
25 publications, and user guides.
26

3.

Documents sufficient to identify, by build or version name or number, any and all

27 versions of each call trace product manufactured, sold, licensed or otherwise made available in the
28 United States prior to December 29, 2000.
U-2

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

4.

Documents sufficient to show the time period during which each call trace product

2 was manufactured, sold, licensed, or otherwise made available in the United States and the
3 quantity manufactured, sold, licensed, or otherwise made available in the United States prior to
4 December 29, 2000.
5

5.

All documents that refer or relate to the marketing, advertising, or promotional

6 efforts related to any call trace product in the United States prior to December 29, 2000.
7

6.

All documents that refer or relate to any person knowledgeable about the creation,

8 design, development, operation or implementation of any call trace product manufactured, sold,
9 licensed, or otherwise made available in the United States prior to December 29, 2000.
10
11

The word “document” or “documents” above should be interpreted in its broadest sense

12 and include(s), but is not limited to, handwritten or electronic notes, memoranda, e-mails, calendar
13 invitations and appointments, records of meetings, promotional and sales materials, planning and
14 strategy documents, focus group information, press releases, analyst reports, competitive analyses,
15 schematics, engineering drawings, product and performance specifications, teardown
16 specifications, operational and service manuals, technical guides, electronic recordings, instant
17 messages, phone messages, call recordings, source code and electronic files.
18
19
20
21
22
23
24
25
26
27
28
U-3

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

SCHEDULE V

2

TOPICS FOR THE DEPOSITION OF BRIAN CRUICKSHANK

3

It is respectfully requested that Brian Cruickshank be compelled to testify, under oath or

4 affirmation, on the following topics for use at trial:
5

1.

Mr. Cruickshank’s knowledge and involvement with U.S. Patent No. 6,888,927,

6 Canadian Patent No. 2,287,146, or European Patent Application No. 1,017,214, including the
7 scope of the claimed inventions, the development of the claimed inventions, the drafting of the
8 patents or related patents/applications, the terms used in the patents or related patents/applications,
9 inventorship of the patents or related patents/applications, prosecution of the patents or related
10 patents/applications, and any opinions, analyses and/or investigations of infringement of the
11 patents.
12

2.

Mr. Cruickshank’s knowledge about any feature, invention or application, software,

13 or product which incorporated a call trace on a packet switched network (“call trace product”).
14

3.

Mr. Cruickshank’s knowledge about any and all versions of each call trace product

15 manufactured, sold, licensed or otherwise made available in the United States prior to December
16 29, 2000.
17

4.

Mr. Cruickshank’s knowledge about the time period during which each call trace

18 product was manufactured, sold, licensed, or otherwise made available in the United States.
19

5.

Mr. Cruickshank’s knowledge of the marketing, advertising, or promotional efforts

20 related to any call trace product in the United States prior to December 29, 2000.
21

6.

Mr. Cruickshank’s knowledge of any person knowledgeable about the creation,

22 design, development, operation or implementation of any call trace product manufactured, sold,
23 licensed, or otherwise made available in the United States prior to December 29, 2000.
24
25
26
27
28
V-1

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

1

SCHEDULE W

2

DOCUMENTS TO BE PRODUCED BY JOHN ERIC LUMSDEN

3

It is respectfully requested that John Eric Lumsden be compelled to produce the following

4 documents that are in his possession, custody, or control, and which are not privileged under
5 Canadian or U.S. law:
6

1.

All documents that refer or relate to U.S. Patent No. 6,888,927, Canadian Patent

7 No. 2,287,146, or European Patent Application No. 1,017,214, including any documents that
8 relate to the scope of the claimed inventions, the development of the claimed inventions, the
9 drafting of the patents, the terms used in the patents, inventorship of the patents, prosecution of the
10 patents, and any opinions, analyses and/or investigations of infringement of the patents. For
11 greater certainty, this includes all documents that include, refer or relate to:
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13
14
15
16
17

a. Conception, development, and/or reduction to practice of any of the claims of the
patents;
b. The first written description, first written disclosure, and first embodiment of any
concept, idea, or invention disclosed in the patents;
c. Inventorship of any of the claims of the patents, including the identification,
selection, or determination of the inventors;

18

d. Preparation, filing, and prosecution of the patents;

19

e. Physical evidence, specimens, written documents, notes, and communications

20

provided to patent counsel and/or any other person or entity responsible for the

21

preparation or prosecution of the patents;

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24
25
26
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f. Any publication or other written disclosure to another person or entity of any
concept, idea, or invention disclosed in the patents;
g. Any disclosures, sales, offers for sale, or uses of any concept, idea, or invention
disclosed in the patents;
h. Any prior art to the patents, including any reference cited during prosecution of the
patents;

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CASE NO. 13-CV-5933-CW
LETTER ROGATORY

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i. Investigations, analyses, or searches concerning the patentability of the subject

2

matter claimed in the patents;

3

j. Engineering documents, software, executable software and source code created in

4

conjunction with any of the concepts disclosed in the patents;

5

k. Any embodiment of any of the inventions disclosed in the patents;

6

l. Notebooks or records of any type, including laboratory notebooks, computer

7

records, experimental results, technical specifications, and other materials,

8

reflecting the research, design, development, experimentation, or testing of any

9

concept, idea, or invention disclosed and claimed in the patents;

10

m. Sworn testimony, statements, affidavits, or declarations by any of the named

11

inventors of the patents concerning any concepts, ideas, or inventions disclosed in

12

the patents;

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n. Communications with anyone about the patents or any collection of patents in

14

which the patents may have been included for sale, license, or otherwise;

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o. Patents, publications, articles, presentations, and other writings, whether or not

16

published, authored or co-authored by any of the named inventors of the patents

17

relating to the subject matter of the patents;

18

p. Ownership or grant of any right, title, or interest in the patents;

19

q. Analysis of whether and how any concepts, ideas, or inventions disclosed in the

20
21

patents were being used by Mr. Lumsden or any other person or entity.
2.

All documents that refer or relate to any feature, invention or application, software,

22 or product which incorporated a call trace on a packet switched network (“call trace product”)
23 prior to December 29, 2000, including representative samples of software and hardware,
24 executable software, manuals, technical plans, diagrams, workbooks, manuals, published articles,
25 publications, and user guides.
26

3.

Documents sufficient to identify, by build or version name or number, any and all

27 versions of each call trace product manufactured, sold, licensed or otherwise made available in the
28 United States prior to December 29, 2000.
W-2

CASE NO. 13-CV-5933-CW
LETTER ROGATORY

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4.

Documents sufficient to show the time period during which each call trace product

2 was manufactured, sold, licensed, or otherwise made available in the United States and the
3 quantity manufactured, sold, licensed, or otherwise made available in the United States prior to
4 December 29, 2000.
5

5.

All documents that refer or relate to the marketing, advertising, or promotional

6 efforts related to any call trace product in the United States prior to December 29, 2000.
7

6.

All documents that refer or relate to any person knowledgeable about the creation,

8 design, development, operation or implementation of any call trace product manufactured, sold,
9 licensed, or otherwise made available in the United States prior to December 29, 2000.
10
11

The word “document” or “documents” above should be interpreted in its broadest sense

12 and include(s), but is not limited to, handwritten or electronic notes, memoranda, e-mails, calendar
13 invitations and appointments, records of meetings, promotional and sales materials, planning and
14 strategy documents, focus group information, press releases, analyst reports, competitive analyses,
15 schematics, engineering drawings, product and performance specifications, teardown
16 specifications, operational and service manuals, technical guides, electronic recordings, instant
17 messages, phone messages, call recordings, source code and electronic files.
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24
25
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CASE NO. 13-CV-5933-CW
LETTER ROGATORY

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SCHEDULE X

2

TOPICS FOR THE DEPOSITION OF JOHN ERIC LUMSDEN

3

It is respectfully requested that John Eric Lumsden be compelled to testify, under oath or

4 affirmation, on the following topics for use at trial:
5

1.

Mr. Lumsden’s knowledge and involvement with U.S. Patent No. 6,888,927,

6 Canadian Patent No. 2,287,146, or European Patent Application No. 1,017,214, including the
7 scope of the claimed inventions, the development of the claimed inventions, the drafting of the
8 patents or related patents/applications, the terms used in the patents or related patents/applications,
9 inventorship of the patents or related patents/applications, prosecution of the patents or related
10 patents/applications, and any opinions, analyses and/or investigations of infringement of the
11 patents.
12

2.

Mr. Lumsden’s knowledge about any feature, invention or application, software, or

13 product which incorporated a call trace on a packet switched network (“call trace product”).
14

3.

Mr. Lumsden’s knowledge about any and all versions of each call trace product

15 manufactured, sold, licensed or otherwise made available in the United States prior to December
16 29, 2000.
17

4.

Mr. Lumsden’s knowledge about the time period during which each call trace

18 product was manufactured, sold, licensed, or otherwise made available in the United States.
19

5.

Mr. Lumsden’s knowledge of the marketing, advertising, or promotional efforts

20 related to any call trace product in the United States prior to December 29, 2000.
21

6.

Mr. Lumsden’s knowledge of any person knowledgeable about the creation, design,

22 development, operation or implementation of any call trace product manufactured, sold, licensed,
23 or otherwise made available in the United States prior to December 29, 2000.
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CASE NO. 13-CV-5933-CW
LETTER ROGATORY