Motorola Mobility, Inc. v. Apple, Inc.

Filing 225

MOTION to Compel Responses to Interrogatories Nos. 7 and 12 Regarding Products Embodying Motorola's Asserted Patents and Accompanying Memorandum of Law in Support by Apple, Inc.. Responses due by 2/16/2012 (Attachments: # 1 Affidavit Declaration of Elena Dimuzio, # 2 Exhibit 1, # 3 Exhibit 2, # 4 Exhibit 3, # 5 Exhibit 4, # 6 Exhibit 5, # 7 Exhibit 6, # 8 Exhibit 7, # 9 Exhibit 8, # 10 Exhibit 9, # 11 Exhibit 10, # 12 Exhibit 11, # 13 Exhibit 12, # 14 Exhibit 13, # 15 Exhibit 14, # 16 Exhibit 15, # 17 Exhibit 16, # 18 Exhibit 17, # 19 Text of Proposed Order)(Pace, Christopher)

EXHIBIT 11

December 14, 2011

BY EMAIL
David Perlson
Quinn Emanuel
50 California Street, 22nd Floor
San Francisco, CA 94111
Re:

Motorola Mobility v. Apple, Southern District of Florida Case No.
1:10-cv-023580

Dear David:
I write to discuss Motorola’s refusal to identify its own products that practice its patents
asserted in the above-captioned case (“embodying products”).
Apple has served multiple requests asking Motorola to identify embodying products and
to provide certain information about those products. For example, Apple’s Interrogatory 12 asks
Motorola to identify “all devices manufactured, sold, or used by You or any non-party to this
Action that You believe has embodied, practiced, fallen within the scope of, used, or been
marked with the Motorola Mobility Patents-in-Suit.” In addition, many of Apple’s Requests for
Production to Motorola seek documents relating to embodying products and sales of embodying
products. See Requests for Production 5-7, 9, 23, 35, and 36.
During our last meet-and-confer call relating to these requests, you stated that Motorola
would only identify “representative” embodying products, not all embodying products. This
position is unacceptable to Apple. Motorola has admitted that it never marked any products with
the patents asserted in this case. As I explained during our meeting, if Motorola was selling
products without marking during the six years before this lawsuit was filed, it might be barred
from claiming damages during that time. In addition, as you noted during the same call, a
party’s use of its own asserted patents, and the commercial success of products practicing such
patents, are relevant to multiple Georgia-Pacific factors.
We remain willing to meet and confer to limit this request to reduce the burden to
Motorola. For example, if multiple embodying products were sold during overlapping intervals
in the six years before this suit was brought, we would accept Motorola’s identification of just
one representative product from each time period during the six years, and production of

David Perlson
December 14, 2011
Page 2
documents relating to those products. Apple is willing to make reciprocal identifications and
productions for its own embodying products sold during the six years before its counterclaims
were asserted in response to Motorola’s requests for discovery about such products. These
requests include Motorola’s Requests for Production 4, 16, 25-27 and Motorola’s Interrogatories
5 and 8.
We would like to meet and confer regarding the proposed limitations to the parties’
discovery requests. Are you, or other members of your team, available to discuss on Friday of
this week?
Sincerely,
/s/ Elena DiMuzio
Elena DiMuzio