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 16

DiMuzio, Elena
From:
Sent:
To:
Cc:
Subject:

Marshall Searcy <[e-mail]>
Friday, December 23, 2011 11:11 AM
DiMuzio, Elena; David Perlson; Moto-Apple-SDFL
Weil_TLG Apple Moto FL External; AppleCov
RE: Apple/Moto SDFL: Letter re Production of Embodying Products

Elena,
I’ve looked at your prior correspondence and the two cases cited. We disagree with Apple’s characterization of
Aristocrat and Facebook. Facebook does not support the notion that Motorola should be required to identify all
embodiments of its asserted patents. To the contrary, the Facebook court recognized that “This case is fundamentally
about whether Facebook infringes Leader’s patent, not about whether Leader practice its own patent.” Leader Techs.
Inc. v. Facebook Inc., No. 08-862-JJF-LPS, 2009 WL 3021168, at * 2 (D. Del. Sept. 4, 2009).
Likewise, in Aristocrat Techs., while the moving party had asked the other side to identify embodying products, it limited
its request to just ten such products. Aristocrat Techs. v. International Game Tech., No. 06-03717 RMW, 2009 WL
3573327, at *2 (N.D. Cal. Oct. 30, 2009) (“In this interrogatory, IGT requests Aristocrat to “[e]xplain fully whether the
following games, products, systems, software and/or controllers do or do not practice, or are or are not capable of
practicing, any method claimed in the Asserted Patents, and your factual and legal bases for that.” The request goes on
to list ten such games or products.” (emphasis added)).
Here, even with the narrowing of Interrogatory No. 12 suggested in your December 14 letter, Apple is still asking
Motorola to conduct a further review of additional Motorola products and services to see if they embody claims of the
Motorola patents in suit. We don’t see any reason to conduct such an analysis, especially in light of the fact that the
parties have already identified products that they contend relate to the patents in suit. Accordingly, we cannot agree to
Apple’s December 14 proposal.
That being said, we are still amenable to finding a compromise. I will be available after 3 pm today if you would like to
discuss further alternative proposals.

From: DiMuzio, Elena [mailto:[e-mail]]
Sent: Wednesday, December 21, 2011 12:30 PM
To: Marshall Searcy; David Perlson; Moto-Apple-SDFL
Cc: Weil_TLG Apple Moto FL External; AppleCov
Subject: FW: Apple/Moto SDFL: Letter re Production of Embodying Products

Marshall,
As requested, here is the letter proposing a limitation to the parties’ discovery requests on embodying products. I
believe the proposed limitation addresses the concerns you raised about our request being over-broad and unduly

burdensome. However, there are numerous decisions compelling production of information relating to all
products embodying the asserted claims (as our Interrogatory 12 requests). See, for example, Leader Techs.
Inc. v. Facebook Inc., No. 08-862-JJF-LPS, 2009 WL 3021168 at *2 (D. Del. Sept. 4, 2009) (“Facebook is entitled
to know every Leader product or service that Leader contends practices any of the asserted claims of the
patent-in-suit. Facebook is also entitled to know which claims are practiced by which of Leader's products and
services.”). We have found no authority to support Motorola’s refusal to produce on this point.
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Please let me know if you are available on Friday to continue this discussion. Thanks.
Best Regards,
Elena.
From: DiMuzio, Elena
Sent: Wednesday, December 14, 2011 5:20 PM
To: David Perlson; Moto-Apple-SDFL
Cc: Weil_TLG Apple Moto FL External; AppleCov
Subject: Apple/Moto SDFL: Letter re Production of Embodying Products

David,
Please see attached letter.
Best Regards,
Elena.
Elena DiMuzio| Associate | COVINGTON & BURLING LLP
One Front Street | San Francisco, CA 94111 |Phone: [phone] | Fax: [phone] | [e-mail]

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