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)
Exhibit 3
Case 1:11-mc-00295-RLW Document 5
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IN THE UNITED STATES DISTRICT COURT
DISTRICT OF COLUMBIA
IN RE THIRD PARTY SUBPOENAS AD
TESTIFICANDUM
Case No. 1:11-MC-00295-RLW
Nokia Corporation,
Plaintiff,
v.
Case No. District of Delaware
Civil Action No. 1:09-cv-00791- GMS
Apple Inc.,
Defendant.
NONPARTIES’ REPLY TO NOKIA CORPORATION’S OPPOSITION TO
NONPARTIES’ MOTION TO QUASH SUBPOENAS
Case 1:11-mc-00295-RLW Document 5
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TABLE OF CONTENTS
I.
Introduction .......................................................................................................................... 3
II.
Oral Conversations During the Interviews Are Not Relevant ............................................. 5
III.
Other More-Accessible and Less-Burdensome Sources of Relevant Information Exist ..... 6
IV.
Nokia Concedes Privileged Information Will Be Encountered ........................................... 7
V.
The Shelton Standard Should Apply.................................................................................... 7
VI.
Alternatively, if the Motion to Quash Is Not Granted, the Depositions Should Be Limited
to Any Non-privileged Discussions That Occurred During the Interviews ........................ 9
VII. Conclusion ......................................................................................................................... 10
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I.
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Introduction
Nokia’s opposition articulates only one area of testimony that it believes is non-
privileged and relevant—the 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. And now for the first time in its
Opposition, 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 have
no special status on the question of the claim construction. Those statements are not part of the
prosecution history and are simply extrinsic evidence, and 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. 2:06-CV244, 2008 WL 190317, at *7 (E.D. Tex. Jan. 22, 2008)(“The lack of written record [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 assertion “the details of the events that
transpired [during the interviews] are crucial to Nokia’s understanding of the patents.” (Nokia
Opp. 5.)
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.”
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(Nokia Opp. 5.) 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, 1122-1123 (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 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”).1 (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 1); (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
2.) Nokia’s opposition completely ignores the Patent Office’s rules and practices that make the
oral statements irrelevant to issues of patentability and not part of the prosecution history.
1
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 2, 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 1.)
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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Further supporting the need to quash the deposition subpoenas is that there is no real
dispute that privilege issues will be encountered. (Nokia Opp. 6.) Nokia also recognizes that the
information it seeks is available from other sources including the inventor, who Nokia has not
deposed, and the Examiners, who Nokia ignores in its opposition as 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.)
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).
II.
Oral Conversations During the Interviews Are Not Relevant
Oral statements to the Patent Office are not part of the intrinsic evidence for the patent.
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. 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
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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 memories
serve as notice to the public?
Indeed, Nokia’s opposition does not cite a single case where an applicant’s or patent
owner’s oral statements at an interviews 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. 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., Nonparties’ Mot. to Quash
Exs. 8-11. This written record, not oral conversations, is what provides the public notice
function referenced by Nokia in its Opposition. See Phillips v. AWH Corp., 415 F.3d at 1327.
Further, in addition to the file wrappers, Nokia concedes 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.) But that exercise is wasteful because it would merely create cumulative and
duplicative discovery, while unnecessarily impinging on issues of attorney-client privilege.
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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.
IV.
Nokia Concedes Privileged Information Will Be Encountered
Nokia does not deny privileged information will be encountered by deposing the Apple
Attorneys. (Nokia Opp. 8.) 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.)
V.
The Shelton Standard Should Apply
Nokia’s arguments that the Shelton test 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. 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
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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 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 3; 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 4. 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.
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).
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Accordingly, the Shelton standard should apply to the depositions of the Apple Attorneys.
VI.
Alternatively, if the Motion to Quash Is Not 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. (See Nonparties’ Mot. to Quash
Exs. 1-4). Nokia’s Opposition 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.2
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.)
Accordingly, if the Apple Attorneys’’ Motion to Quash is not 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.
2
See Nonparties’’ Mot. to Quash Exs. 6 & 7.
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VII.
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Conclusion
For these reasons, it is respectfully requested that this Court quash the deposition
subpoenas of the Apples Attorneys and issue a protective order forbidding Nokia from deposing
the Apple Attorneys or, in the alternative, limit the scope of the depositions to any nonprivileged 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
dcornwell@skgf.com
bpickard@skgf.com
Counsel for Robert G. Sterne, Glenn J.
Perry, Richard D. Coller III and Salvador
M. Bezos
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