NOKIA CORPORATION v. APPLE INC.

Filing 5

Memorandum in opposition to re 1 MOTION to Compel Deposition Testimony filed by SALVADOR M. BEZOS, RICHARD COLLER, GLENN PERRY, ROBERT STERNE. (Attachments: # 1 Exhibit, # 2 Exhibit, # 3 Exhibit, # 4 Exhibit, # 5 Exhibit, # 6 Exhibit, # 7 Exhibit, # 8 Exhibit, # 9 Exhibit, # 10 Exhibit, # 11 Exhibit, # 12 Exhibit, # 13 Exhibit, # 14 Exhibit, # 15 Exhibit, # 16 Exhibit, # 17 Exhibit, # 18 Exhibit, # 19 Exhibit, # 20 Exhibit, # 21 Exhibit, # 22 Exhibit, # 23 Exhibit, # 24 Exhibit, # 25 Exhibit, # 26 Certificate of Service)(Pickard, Byron)

IN THE UNITED STATES DISTRICT COURT
DISTRICT OF COLUMBIA

IN RE THIRD PARTY SUBPOENAS AD
TESTIFICANDUM

Case No. 1:11-MC-00284-EGS

Nokia Corporation,
Plaintiff,
v.

Case No. District of Delaware
Civil Action No. 1:09-cv-00791- GMS

Apple Inc.,
Defendant.

NONPARTIES' OPPOSITION TO NOKIA'S MOTION
TO COMPEL DEPOSITION TESTIMONY

TABLE OF CONTENTS
I. 

Introduction and Background .............................................................................................. 3 

II. 

Oral Conversations During the Interviews Are Not Relevant ............................................. 7 

III. 

Other More-Accessible and Less-Burdensome Sources of Relevant Information Exist ..... 8 

IV. 

Nokia Concedes Privileged Information Will Be Encountered ........................................... 9 

V. 

The Shelton Standard Should Apply.................................................................................... 9 

VI. 

Alternatively, if the Motion to Compel Is Granted, the Depositions Should Be Limited to
Any Non-privileged Discussions That Occurred During the Interviews .......................... 11 

VII.  Conclusion ......................................................................................................................... 12 

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I.

Introduction and Background
Robert Sterne, Glenn Perry, Richard Coller, and Sal Bezos (the "Apple Attorneys")

oppose Nokia's Motion to Compel, which was filed the same day the Apple Attorney's filed the
Nonparties' Motion to Quash in Case No. 1:11-MC-00295-RLW (the "related case"). Both this
motion and the related motion to quash concern the same deposition subpoenas of the Apple
Attorneys. Briefing on the Nonparties' Motion to Quash in the related case is at a more advanced
stage; the briefing on the Apple Attorneys' Motion to Quash closed today with the filing of a
reply brief.1 (Copies of the Apple Attorneys' Motion to Quash, Nokia's Opposition, and the
Apple Attorneys' Reply (without exhibits) are attached here as Exhibits 1-3.)
In the underlying litigation, Nokia Corporation v. Apple Inc., No. 1:09-cv-00791-GMS
(D. Del.), Apple made a counterclaim against Nokia, asserting that Nokia infringed nine of its
patents. On April 28, 2010, an attorney from Brient IP Law filed ex parte reexamination
requests on behalf of an anonymous requester against those nine patents.
A patent reexamination is a challenge to the patentability of a patent before the United
States Patent and Trademark Office (the “Office”). Because patent reexaminations provide
accused patent infringers two bites at the invalidity apple—one in the District Court and the
other at the Office—defendants often request patent reexaminations of the patents-in-suit as a
defense tactic in patent litigations. This case is no different. Although the reexaminations
handled by the Apple Attorneys were anonymously requested, the evidence shows that Nokia

1

Nokia did not effect service of its motion to compel until May 26, 2011.

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likely requested the reexaminations of the patents Apple asserted against Nokia as Nokia is the
only counterclaim defendant for these patents.
Nokia then served the deposition subpoenas at issue on the Apple Attorneys, each of
whom represent Apple Inc. in six of the nine reexaminations.2 The Apple Attorneys' prosecution
of these patent reexaminations is closely tied to the issues in the underlying litigation because the
basis of the validity challenges to the patents are largely the same in both.
Nokia's Motion to Compel and its Opposition in the related motion to quash articulate
only one area of testimony that it believes is non-privileged and relevant—statements made at
the interviews of two of the six patent reexaminations conducted by the Apple Attorneys.
Initially, counsel for the Apple Attorneys offered to allow the depositions if Nokia would limit
the scope of the depositions by serving a list of Rule 30(b)(6) deposition topics. Nokia refused.
(Emails between Rohan Kale, Nokia's counsel, and Byron Pickard, Apple Attorneys' counsel,
attached hereto as Exhibits 4 & 5.) And now for the first time in briefing on both motions, and
only in an attempt to show relevance, does Nokia suggest that the depositions will be limited to
the oral discussions that occurred during the interviews between the Apple Attorneys and the
Patent Office. Apple’s oral statements that are not in written file history are not relevant as they
do not inform the question of claim construction.

Those statements are not part of the

prosecution history and are simply extrinsic evidence. But it is the intrinsic evidence which is
the primary, and usually the sole, focus of claim construction. See Phillips v. AWH Corp., 415
F.3d 1303, 1327 (Fed. Cir. 2005) (en banc); PureChoice, Inc. v. Honeywell Int’l, Inc., No. 2:06CV-244, 2008 WL 190317, at *7 (E.D. Tex. Jan. 22, 2008) ("The lack of written record
2

Those reexaminations are (1) Control No. 90/010,964, involving U.S. Patent No. 5,634,074; (2) Control
No. 90/010,967, involving U.S. Patent No. 5,315,703; (3) Control No. 90/010,965, involving U.S. Patent No.
5,455,854; (4) Control No. 90/010,966, involving U.S. Patent No. 6,239,795; (5) Control No. 90/010,970,
involving U.S. Patent No. 6,189,034; and (6) Control No. 90/010,969, involving U.S. Patent No. 7,383,453.

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[concerning statements made at an interview], however, does not provide this court or the public
with any information in the prosecution history to determine the scope of these claim terms.").
Nokia has not shown why the claims at issue in its litigation with Apple require the consideration
of extrinsic evidence. Instead, Nokia offers the vague assertions "[t]he deposition testimony
sought by Nokia is foundational – it is the key to understanding how Apple has characterized the
854 and 703 patents in order to overcome prior art rejections made during reexamination" and
"[t]he disclosures the [Apple Attorneys] made to the patent examiner in order to distinguish prior
art cuts toward the very scope of the patents at issue and are thus crucial to the preparation of
Nokia's ongoing case in the Delaware ."

(Nokia Mot. to Compel 6-7.) These assertions do not

establish relevancy.
In Nokia's Opposition in the related case, Nokia further contends that "[t]his testimony
[concerning statements at the two interviews] goes to the heart of why the patent office
distinguished the patents from highly anticipatory prior art and serves as public notice to what
infringes or invalidates the claims." (Nokia Opp. 5, Exhibit 2.) This reasoning does not make
sense. First, oral statements made at an interview that are not included in interview summaries
as a practical matter can serve no public-notice function for the simple reason that they do not
appear in the written file history. Second, the question of why the Patent Office allowed the
claims cannot be answered by considering the oral statements at the interview that are not
included in the interview summary. The Patent Office’s rules only allow patentability decisions
to be based on the written record. 37 C.F.R. § 1.2; M.P.E.P §§ 713.04, 2281. And, the Patent
Office is presumed to follow its own rules. Rite-Hite Corp. v. Kelley Co., 819 F.2d 1120, 112223 (Fed. Cir. 1987) ("[Defendant] Kelley has provided neither evidence nor inference to
overcome the presumption that the PTO complied with its own rules.") Third, the reasons why

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the patent office confirmed Apple's patent claims are found in the examiner's written reasons for
allowance, contained in the Notices of Intent to Issue Reexam Certificates (commonly referred to
as "NIRCs").3 (Notice of Intent to Issue a Reexam Certificate mailed March 29, 2011, Control
No. 90/010,967 (U.S. Patent No. 5,315,703), attached here as Exhibit 6; Notice of Intent to Issue
a Reexam Certificate mailed January 13, 2011, Control No. 90/010,965 (U.S. Patent No.
5,455,854), attached here as Exhibit 7.)

Nokia's Motion to Compel in this case and its

Opposition in the related case completely ignore the Patent Office's rules and practices that make
the oral statements irrelevant to issues of patentability and not part of the prosecution history.
Further supporting the denial of Nokia's Motion to Compel is that there is no real dispute
that privilege issues will be encountered. (See Nokia Opp. 6, Exhibit 2.) Additionally, the
information Nokia seeks is available from other sources including the inventor, who Nokia has
not deposed, and the Examiners, who Nokia ignores in its Opposition as a source of the
information it wants.

Nokia instead argues it should be allowed discovery of the same

information from "all witnesses present at the interviews." (Nokia Opp. 7; see also Nokia Mot.
to Compel 8.) Given the lack of relevance of the information sought and the likelihood of
intruding on privileged information, the Court should not allow Nokia to take this discovery of
the Apple Attorneys because that exercise would be cumulative, duplicative, and unnecessarily
burdensome. Fed. R. Civ. P. 26(b)(2)(C).

3

Notably, in the '854 patent reexamination, the examiner stated that that Apple's written remarks filed on

December 23, 2010 were "persuasive" and therefore withdrew the rejections and confirmed the claims. ('854 patent
reexamination NIRC, Exhibit 7, p. 2, ¶4.) There was no mention of the interview as a reason for confirming the '854
patent’s claims. The NIRC for the '704 patent reexamination also references Apple's written responses to the Office
as the reasons for confirming the claims in reexamination. ('704 patent reexamination NIRC, Exhibit 6.) Again the
NIRC in that case does not mention any statements made at the interview as a reason for confirming the claims.

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II.

Oral Conversations During the Interviews Are Not Relevant
Oral statements to the Patent Office are not part of the patent's intrinsic evidence. See

PureChoice, Inc. v. Honeywell Int’l, Inc., No. 2:06-CV-244, 2008 WL 190317, at *7 (E.D. Tex.
Jan. 22, 2008). It is the intrinsic evidence—the patent and the written file history—that governs
claim construction, except in rare cases. Phillips v. AWH Corp., 415 F.3d 1303, 1327 (Fed. Cir.
2005) (en banc). Thus, the information Nokia seeks is not relevant to claim construction as
Nokia implies. Because Nokia has failed to show relevancy, depositions of the Apple Attorneys
on the reexaminations are not appropriate or necessary.
Nokia also ignores the basic fact that anything said at an interview that is not part of a
written interview summary cannot be considered by the Patent Office. M.P.E.P. § 713.04 (citing
37 C.F.R. § 1.2). This Patent Office rule dovetails with the important public-notice function that
the file history and patent provide—because the public must be able to rely on the file-wrapper
and the patent, everything relevant to patentability must be written in the file history or the patent
itself. 37 C.F.R. § 1.2; M.P.E.P §§ 713.04, 2281. In Nokia's Opposition in the related case,
Nokia recognizes the public-notice function of the patent and the file wrapper, but it tries to turn
this notion on its head by arguing that oral statements made at an interview (and not made a part
of the administrative record of the patent by including them in an interview summary) can
somehow serve a public-notice function.

But that does not make sense. How can unwritten

statements recorded only in human memory serve as notice to the public?
Indeed, Nokia's Opposition in the related case does not cite a single case where an
applicant's or patent owner's oral statements at an interview were considered as relevant for any
purpose by a District Court. To be sure, the two cases Nokia cites for patent-owner statements
being relevant, both involved statements in the written file history of the patents-in-suit.

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Gilliespie v. Dywidag Sys. Int’l, USA, 501 F.3d 1285, 1291 (Fed. Cir. 2007); Springs Window
Fashions L.P. v. Novo Indus., L.P., 323 F.3d 989, 995 (Fed Cir. 2003).
III.

Other More-Accessible and Less-Burdensome Sources of Relevant Information Exist
Everything relevant to the reexamination of the patents-in-suit is contained in the publicly

available file wrappers. The file wrappers include the written interview summaries provided by
the examiners, Apple's detailed multi-page slide presentations from the interviews, Apple's
statements of substance of the interview, and most significantly, Apple's written responses to the
Office Actions. See M.P.E.P. § 713.04; 37 C.F.R. § 1.560(b); e.g., Ex Parte Reexamination
Interview Summaries, attached here as Exhibits 8-11; Detailed Slide Presentation, attached here
as Exhibits 12-15; Statements of Substance of the Interviews, attached here as Exhibits 16-19.
This written record, not oral conversations, is what provides the public notice function
referenced by Nokia in its Opposition in the motion to quash. See Phillips v. AWH Corp., 415
F.3d at 1327. Further, Nokia concedes in its Opposition that it can depose the inventor that was
present during the interviews. Notably, Nokia ignores that it can also depose the examiners who
were present. And Nokia seems to argue that it will depose everyone present at the interviews.
(Nokia Opp. 7, Exhibit 2.)

But that exercise is wasteful because it would merely create

cumulative and duplicative discovery, while unnecessarily impinging on issues of attorney-client
privilege. Federal Rule 26(b)(2)(C) gives this Court the discretion to protect against that kind of
duplicative and cumulative discovery. That discretion should be exercised here.
Accordingly, all non-privileged information Nokia asserts is needed concerning the
reexaminations is already available in the file wrappers or by deposing the examiners as well as
the inventor.

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IV.

Nokia Concedes Privileged Information Will Be Encountered
In its Opposition in the related case, Nokia does not deny privileged information will be

encountered by deposing the Apple Attorneys. (Nokia Opp. 8, Exhibit 2.) In fact, Nokia admits
that there is a high likelihood that it will encounter privileged information, and only states that
the Apple Attorneys should object to each question that calls for a privileged response. (Nokia
Opp. 8, Exhibit 2.)
V.

The Shelton Standard Should Apply
Nokia's arguments, in its Motion to Compel and its Opposition in the motion to quash,

that the Shelton standard does not or should not apply misses the point. The Federal Rules of
Civil Procedure grant this Court ample discretion to provide the relief that the Apple Attorneys
seek by their Motion to Quash. Fed. R. Civ. P. 26(b)(2)(C). As one example, the court in
ResQnet denied a party’s efforts to depose prosecution counsel, even though court expressly did
not apply the Shelton standard. ResQNet.com, Inc. v. Lansa, Inc., No. 01Civ3578, 2004 WL
1627170, at *4 (S.D.N.Y. July 1, 2004.) In ResQNet the party seeking to depose prosecution
counsel raised arguments similar to Nokia's argument here, but the Court rejected those
arguments: "The prosecution histories speak for themselves, and the relevant inquiry in terms of
prior art and claim construction is how one of ordinary skill in the art would interpret and
understand those prosecution histories." Id. at *5.
In any event, the Shelton standard applies in this case—at a minimum its reasoning
should apply. In its Opposition in the motion to quash, Nokia opens its argument with a false
and unsupported claim: "Courts have expressly rejected the Shelton standard when the person
sought to be deposed is re-examination counsel." (Nokia Opp. 3.) First, Nokia states that
multiple courts have expressly rejected the Shelton standard for reexamination counsel, yet cites
only one case to support this assertion. Second, the case that Nokia cites involved patent counsel
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that prepared a patent opinion, not reexamination counsel. See aaiPharma, Inc. v. Kremers
Urban Dev. Co., 361 F. Supp. 2d 770, 775 (N.D. Ill. 2005) ("MBHB does not set forth any
authority showing that rendering a patentability opinion does not constitute ‘substantive
involvement’ in patent prosecution."), attached here as Exhibit 20; aaiPharma and McDonnell
Boehnen Hulbert & Berghoff’s Reply to Defendants' Opp. to Mot. to Quash Defendants' Rule 45
Subpoena, aaiPharma Inc. v. Kremers Urban Development Co., No. 05-CV-0537, at 2-3 (N.D.
Ill. Mar. 14, 2005) ("MBHB prepared an opinion directed to patentability or patent strategy, but
their efforts ended there."), attached here as Exhibit 21. Thus, despite Nokia's assertions, it
failed to cite any authority that expressly supports the proposition that the Shelton standard does
not apply to reexamination counsel regarding a patent subject to a concurrent litigation in either
its Motion to Compel or its Opposition.
Nokia's assertion that the Shelton standard does not apply to the Apple Attorneys because
they are not "trial counsel" ignores the role reexamination counsel plays in the concurrent
litigation. In the reexaminations, the Apple Attorneys have been tasked with the responsibility of
defending the patentability of the patented claims, otherwise Apple cannot assert these patents
against Nokia in the concurrent litigation.

Thus, the Apple Attorneys' responsibilities are

directly related to the concurrent litigation unlike the deponents in United States v. Philip Morris
Inc. or Evans v. Atwood. See United States v. Philip Morris Inc., 209 F.R.D. 13, 17 (D.D.C.
2002) (noting that the deponents had been delegated non-legal and non-litigation
responsibilities); Evans v. Atwood, No. CIV.A. 96-2746, 1999 WL 1032811, at *3 (D.D.C. Sept.
29, 1999) (stating that the deponent did not play a major role in the litigation).
Accordingly, the Shelton standard should apply to the depositions of the Apple Attorneys.

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VI.

Alternatively, if the Motion to Compel Is Granted, the Depositions Should Be Limited
to Any Non-privileged Discussions That Occurred During the Interviews
Although Nokia suggests that it only wants to depose the Apple Attorneys to obtain

information about oral conversations during the interviews for the '703 and '854 patent
reexaminations and does not seek information about litigation strategies, the deposition
subpoenas served on the Apple Attorneys are not so limiting.4 Nokia's Motion to Compel and its
Opposition in the motion to quash is the first time Nokia has even hinted at limiting the scope of
the depositions. When counsel for the Apple Attorneys suggested that Nokia narrow the scope
of depositions by serving a Rule 30(b)(6) list of topics, Nokia refused.5
Further, Nokia has only identified the discussions that occurred during the interviews
with the Patent Office as being allegedly relevant and discoverable. (Nokia Opp. 5, Exhibit 2.)
Accordingly, if Nokia's Motion to Compel is granted, the depositions should at least be limited to
any non-privileged discussions that occurred during the examiner interviews of the '703 and '854
patent reexaminations.

4

The subpoenas are attached here as Exhibits 22-25.

5

See Emails between Rohan Kale, Nokia’s counsel, and Byron Pickard, Apple Attorneys’ counsel,
attached hereto as Exhibits 4 & 5.

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VII.

Conclusion
For these reasons, it is respectfully requested that this Court deny Nokia's Motion to

Compel and forbid Nokia from deposing the Apple Attorneys or, in the alternative, limit the
scope of the depositions to any non-privileged discussions that occurred during the interviews.

Dated: June 13, 2011

Respectfully Submitted,

__/s/ Byron L. Pickard______________
Sterne, Kessler, Goldstein & Fox P.L.L.C.
David K.S. Cornwell (Bar ID: 431216)
Byron L. Pickard (Bar ID: 499545)
1100 New York Avenue, N.W.
Washington, DC 20005
202.371.2600
[e-mail]
[e-mail]
Counsel for Robert Sterne, Glenn Perry,
Richard Coller, and Sal Bezos

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