NOKIA CORPORATION v. APPLE INC.

Filing 4

Memorandum in opposition to re 1 MOTION to Quash filed by NOKIA CORPORATION. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit I, # 10 Declaration of Rohan Kale, # 11 Text of Proposed Order)(Brinkman, Paul)

UNITED STATES DISTRICT COURT FOR THE
DISTRICT OF COLUMBIA

NOKIA CORPORATION,
Plaintiff,
v.

Civil Action No. 1:11-mc-00295-RLW

Defendant.

Underlying Case in the District of Delaware
Civil Action No. 09-791-GMS
Assigned to: Honorable Gregory M. Sleet

APPLE INC.,

APPLE INC.,
Counterclaim-Plaintiff,
v.
NOKIA CORPORATION and NOKIA INC.,
Counterclaim-Defendants.
NOKIA CORPORATION’S OPPOSITION TO THIRD PARTY
WITNESSES’ MOTION TO QUASH SUBPOENAS

TABLE OF CONTENTS
INTRODUCTION .............................................................................................................. 1
BACKGROUND ................................................................................................................ 1
ARGUMENT...................................................................................................................... 3
I.

THE SHELTON STANDARD IS INAPPLICABLE............................................3
A. The Information Sought is Relevant and Discoverable ..................................5
B. The Witnesses Admit that Information Nokia Seeks is Not Protected
by the Attorney Client Privilege .....................................................................6
C. No Other Means Exist to Obtain the Detailed Information for the
Events that Transpired at the Reexamination Interviews ...............................6

CONCLUSION................................................................................................................... 8

INTRODUCTION
There is no dispute that Messrs. Sterne, Perry, Coller, and Bezos (“the
Witnesses”) are in possession of facts directly relevant to the issues of validity and
infringement of Apple’s patents asserted against Nokia in the pending litigation Nokia
Corp. v. Apple Inc., No. 1:09-cc-00791 (D. Del. Oct. 22, 2009) (“the Delaware action”).
The Witnesses participated in face to face, public meetings with the United States Patent
and Trademark Office (“PTO”) patent examiner, during which the patentability of the
claims of two of the asserted patents was discussed.
The Witnesses’ only excuse for failing to appear for their properly subpoenaed
depositions and the apparent basis for this belated motion is that the Witnesses are
Apple’s patent lawyers – not Apple’s trial counsel. There is no prohibition from
deposing a lawyer, who is not trial counsel for one of the parties, simply because they
happen to be a lawyer. Each of these patent lawyers participated in arguments with the
US PTO in an effort to distinguish the claims from the prior art. The public statements
made by these patent lawyers to the patent examiner are admissions by Apple that Nokia
can use to defend itself from infringement and establish that the patents are not valid.
The Court should accordingly deny the Witnesses’ motion to quash, and grant
Nokia’s related motion to compel and order the Witnesses to appear for deposition on
July 11, 12, 13, and 14, 2011. Nokia Corp. v. Apple Inc., No. 1:11-mc-00284 (D.D.C.
May 17, 2011).
BACKGROUND
The background facts are not in dispute. On October 22, 2009, Nokia instituted
an action against Apple in the United States District Court for the District of Delaware,
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asserting ten patents declared essential to wireless communications standards. Nokia
Corp. v. Apple Inc., No. 1:09-cv-00791 (Declaration of Rohan Kale (“Kale Dec.”), ¶ 2,
Ex. A). Apple counterclaimed asserting that Nokia infringed nine of its implementation
patents (id. at ¶ 3, Ex. B). Two of the patents asserted by Apple are US Patents
5,315,703 (“the 703 patent”) and 5,455,854 (“the 854 patent”) (id. at Ex. B, ¶ 224, 248).
Subsequently, the asserted Apple patents entered reexamination in the United States
Patent and Trademark Office (“PTO”). On December 14, 2010, Attorneys Robert Sterne,
Glenn Perry, Salvador Bezos, and Rich Coller had face to face meetings with the patent
examiner in an effort to distinguish invalidating prior art from the 854 patent (id. at ¶ 5,
Ex. D). The same attorneys attended a similar interview on February 8, 2010 in an effort
to distinguish the 703 patent over invalidating prior art. The Examiner and attorneys
submitted summaries of the interview. Unfortunately, these summaries do not contain a
detailed account of what was said during the interview (id.). As part of its summary of
the interview, Apple submitted a 41 page power point presentation. Again, unfortunately,
the power point does not include the narrative that went along with the presentation to the
examiner (id.).
To discover what admissions and statements the patent lawyers made to the
Examiner at the reexamination interviews with respect to the 703 and 854 patents, Nokia
served subpoenas for the production of documents and for the appearance of Apple’s
representatives, the patent lawyers, who were present at the reexamination interviews for
deposition. After a series of correspondence with the witnesses’ attorney, in which the
witnesses refused to appear for deposition, Nokia filed its motion to compel the

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appearance of the Witnesses for deposition. Nokia Corp. v. Apple Inc., No. 1:11-mc00284.
ARGUMENT
I.

The Shelton Standard is inapplicable

The Witnesses’ reliance on Shelton v. American Motors Corp., 805 F.2d 1323 (8th
Cir. 1986) is misplaced. Courts have expressly rejected the Shelton standard when the
person sought to be deposed is re-examination counsel. aaiPharma, Inc. v. Kremers
Urban Dev. Co., 361 F. Supp. 2d 770, 775 (N.D. Ill. 2005). Furthermore, this Court has
unambiguously held that the Shelton factors are limited to trial or litigation counsel, and
even then only where there is a risk of exposing litigation strategy. United States v.
Philip Morris Inc., 209 F.R.D. 13, 17 (D.D.C. 2002). The Witnesses are not trial counsel
in this case.
In Philip Morris, this Court refused to apply the Shelton factors even when the
witnesses were trial attorneys because they were subpoenaed strictly as fact witnesses and
the United States was not seeking information about litigation strategies (id. at *14-15).
In the present case, the Witnesses are not trial counsel, have been subpoenaed strictly as
fact witnesses, and Nokia is not seeking information about litigation strategies. Nokia
wishes to depose the Witnesses to obtain facts about the non-privileged discussions that
occurred at the reexamination interviews. The witnesses admit that they are not litigation
counsel, hence litigation strategies are not at stake (Nonparties’ Motion to Quash Nokia
Subpoenas and for a Protective Order, P. 8). Indeed, the subpoenaed witnesses are not
even involved in the underlying Delaware litigation between Apple and Nokia (id.).
None of the other cases cited by the Witnesses are applicable either. In Evans v.
Atwood, No. 96-2746, 1999 U.S. Dist. LEXIS 17545 (D.D.C. Sept. 29, 1999), this Court
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allowed the deposition of defendant’s in house attorney, explaining that underlying facts
are not protected by attorney-client privilege (id. at *15). In Evans, this Court even
agreed that a blanket assertion of attorney-client privilege, which is what the witnesses
are doing here, is inappropriate (id.). In Corp. for Public Broadcasting. v. American
Automobile Centennial Commission., No. 97-1810, 1999 U.S. Dist. Lexis 1072, at *4
(D.D.C. Feb. 2, 1999), also cited by the Witnesses, plaintiffs sought depositions of the
defendant’s attorneys for information about a potential oral contract. However, the
defendant represented that the oral contract was negotiated between the parties, not their
counsel. Id. at *4. Hence, the attorneys the plaintiff in Corp. for Public Broadcasting
sought to depose were not percipient fact witnesses as the Witnesses are here.
The only litigation strategy that appears to be at play here is the subpoenaed
witnesses’ effort to preclude Nokia from obtaining a detailed account of the arguments
that they made to the Examiner. The subpoenaed witnesses attempt to conflate the
invalidity challenges in the reexaminations with potential invalidity challenges that might
arise in the pending litigation, arguing that there is equal harm in deposing reexamination
counsel as there is in deposing litigation counsel. Setting aside the fact that the Witnesses
were unable to find any case law to support this proposition, the fact of the matter is that
the arguments for validity that they refer to are in fact public – not confidential – hence
not protectable even if they are analogous. The crucial difference between reexamination
counsel and litigation counsel is that reexaminations contain non-privileged
communications to a patent examiner that discuss the scope of the patent. These
communications are meant to exist in the public domain, which is why the Shelton

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standard does not apply to reexamination counsel. aaiPharma, Inc, supra, 361 F. Supp.
2d at 775.
Since the witnesses are in possession of non-privileged, factual matters not related
to the underlying litigation, the heightened test articulated in Shelton simply does not
apply. Even if the Shelton factors are applied, however, all three prongs are satisfied.
A.

The Information Sought is Relevant and Discoverable

The Witnesses argue that the discoverable facts are only relevant to an inequitable
conduct defense. This is incorrect. Nokia is not attempting to seek these depositions for
pleading inequitable conduct, but because the subpoenaed witnesses have unique, nonprivileged personal knowledge related to what statements were made to the Examiner
about the prior art and the Examiner’s rejection of the claims. This testimony 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. Gillespie v.
Dywidag Sys. Int’l, USA, 501 F.3d 1285, 1291 (Fed. Cir. 2007) (“The public notice
function of a patent and its prosecution history requires that a patentee be held to what he
declares during the prosecution of his patent”) quoting Springs Window Fashions L.P. v.
Novo Indus., L.P., 323 F.3d 989, 995 (Fed. Cir. 2003).
Messrs. Sterne, Perry, Coller, and Bezos were present at the reexamination
interviews and made statements to the patent examiner that define the scope of the
invention, i.e., what infringes and what doesn’t and what invalidates and what doesn’t.
The statements that were made and the details of the events that transpired are crucial to
Nokia’s understanding of the patents.

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B.

The Witnesses Admit that Information Nokia Seeks is Not
Protected by the Attorney Client Privilege

In their Motion to Quash, the best the Witnesses could do with regard to whether
the deposition would be directed to privileged matter, was to state that there is a “high
likelihood” that Nokia will encounter privileged information during depositions. This is
true of any deposition and should not be the basis for quashing the subpoenas. This
Court has recognized that depositions of patent prosecution counsel are frequently
allowed, refusing to uphold blanket invocations of attorney-client privilege as the
witnesses here seem to do. Amicus Commc’ns., L.P., v. Hewlett-Packard Co., No 990284 HHK/DAR, 1999 U.S. Dist. Lexis 20901 at *6 (D.D.C. 1999).
Further, if counsel for the subpoenaed witnesses believes a particular question
calls for a privileged response, he or she can still interpose a privilege objection during
the deposition. Evans, 1999 U.S. Dist. Lexis 17545 at *15-16.
C.

No Other Means Exist to Obtain the Detailed Information for
the Events that Transpired at the Reexamination Interviews

The details of the events of the interviews are discoverable from the people who
attended the interviews. The witnesses cite the reexamination interview summaries as
potential alternative sources of information, yet the summaries, as the name implies, are
merely summaries. They do not include everything that was said or what transpired at
the interviews. For example, the entire interview summary for US Patent 5,315,703 is
shown below.
“Patent Owner’s representative provided an overview of the invention and
discussed differences between the Cohen reference and the instant
invention. Particularly, Patent Owner’s representative argued Cohen
failed to teach a notification receiver object (e.g. “receiving the
notification by the at least one of the plurality of objects”) and a
connection object. Examiner agreed to consider Cohen in light of Patent
Owner’s arguments.”
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(Kale Dec. at ¶ 5, Ex. D.) Such a terse and overly simplified summary is hardly
sufficient to explain what the witnesses said to the Patent Examiner and how the
witnesses specifically characterized the scope of the patent in order to overcome the prior
art. Certainly, Nokia is entitled to ask the Witnesses to provide Nokia with the same
“overview” of the invention and the differences between the Cohen reference and the
invention. The only mechanism to ensure that Nokia can obtain the best description of
what was said is to depose all the individuals present.
The Witnesses, knowing that the written interviews are insufficient, also suggest
that Nokia can depose the non-attorneys who were present such as the examiners and the
inventors. Nokia is deposing the inventor. But that is not relevant here. Nokia is entitled
to the recollections of all witnesses present at the interviews to ensure that Nokia obtains
a complete picture of the events that transpired.
Moreover, as recognized by this Court, because the Witnesses are percipient fact
witnesses that have non-privileged, personal knowledge of the events that transpired at
the reexamination interviews, the Witnesses have and had every reason to expect that
their depositions may be requested. Amicus Commc’ns supra., No 99-0284 HHK/DAR,
1999 U.S. Dist. Lexis 20901 at *5 (“when a party employs a counsel to represent it in a
case where an attorney has played a role in the underlying facts, both the attorney and the
party have every reason to expect that the attorney’s deposition may be requested”)
(quoting United Phosphorus, Ltd. v. Midland Fumigant, Inc., 164 F.R.D. 245, 249
(D.Kan. 1995)).

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CONCLUSION
For the reasons set forth above and on the authorities cited, Nokia respectfully
requests that the Court deny the Witnesses’ motion to quash, and direct that the witnesses
be made available for depositions on July 11, 12, 13, and 14, 2011.
Dated: June 3, 2011
By:

/s/ Paul F. Brinkman
D.C. Bar No. 441681
ALSTON & BIRD, LLP
950 F St NW
Washington, DC 20004
202-756-3300 (telephone)
202-756-3333 (facsimile)

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CERTIFICATE OF SERVICE
I hereby certify that copies of the foregoing were caused to be served on June 3, 2011,
upon the following in the manner indicated:
Richard L. Horwitz, Esq.
David E. Moore, Esq.
POTTER, ANDERSON & CORROON LLP
Hercules Plaza – 6th Floor
1313 North Market Street
Wilmington, DE 19801

Via Electronic Mail

William F. Lee, Esq.
Mark D. Selwyn, Esq.
WilmerHale
60 State Street
Boston, MA 02109

Via Electronic Mail

Kenneth H. Bridges, Esq.
Michael T. Pieja, Esq.
Bridges & Mavrakakis LLP
540 Cowper Street
Suite 100
Palo Alto, CA 94301

Via Electronic Mail

Byron Pickard
Sterne, Kessler, Goldstein and
Fox P.L.L.C.
1100 New York Ave.
Washington, D.C. 20005

Via Electronic Mail

Dated: June 3, 2011

/s/ Paul F. Brinkman
Paul F. Brinkman
D.C. Bar No. 441681
Alston & Bird LLP
The Atlantic Building
950 F Street NW
Washington, DC 20004-1014