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 5

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Weil, Gotshal & Manges LLP

Jill J. Ho
650.802.3163
[e-mail]

October 31, 2011

BY E-MAIL

David Perlson
Quinn Emanuel Urquhart & Sullivan, LLP
50 California Street, 22nd Floor
San Francisco, California 94111
[e-mail]
Re: Motorola Mobility, Inc. v. Apple, Inc. (SDFL), Case No. 1:10cv023580-Civ-UU
Dear David,
I write to address the numerous deficiencies in Motorola Mobility, Inc.’s (“Motorola’s”)
responses to Apple, Inc.’s (“Apple’s”) First, Second, Third, and Fourth Sets of Requests for Production
of Documents and Things as well as Apple’s First and Second Sets of Interrogatories.
As a preliminary matter, while Apple has attempted to produce documents that are only
responsive to document requests to this action using a “FL-Apple” prefix, Motorola’s document
productions have all used the same “MOTO-APPLE” prefix. To the extent that any Motorola
documents were specifically produced in response to requests served by Apple in this action, please
identify those Bates ranges. By way of example, any documents produced by Motorola regarding the
accused set top boxes are not relevant to any other pending litigation between the parties. Please
identify such documents by November 11, 2011.
A. Deficiencies in Responses to Document Requests
Motorola has failed to respond adequately (or at all) to many of Apple’s requests for production.
Notably, we have yet to receive Motorola’s responses Apple’s Fourth Set of Requests for Production,
served on May 20, 2011. Please serve those immediately or confirm that Motorola has already produced
documents responsive to those requests.
1.

Motorola’s Refusal to Produce Documents

Motorola has refused to produce documents in response to Request for Production Nos. 13, 23,
and 47-49. For example, Request for Production No. 23 asks for:
All documents and things concerning the initial offer for sale, initial
manufacture, initial use, initial sale, initial public use, initial shipment,

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initial announcement, initial disclosure, and initial publication of each
embodiment of any invention claimed in the Motorola Mobility Patentsin-Suit.
There should be no dispute that Request No. 23 is relevant to the validity of the Motorola
Patents-in-Suit, and Motorola has provided no good-faith basis for refusing to respond. Similarly, each
of the aforementioned requests calls for information relevant to the parties’ claims and defenses in this
matter and are likely to lead to the discovery of admissible information. Please confirm that Motorola
will promptly produce such documents and, in any event, by no later than November 11, 2011.
2.

No Basis For Motorola’s Purported Lack of Understanding of Apple’s Requests

Motorola responds to Request for Production Nos. 15-18, 27, 34-37, and 41-42 by agreeing to
produce documents only “to the extent that Motorola understands this request.” For example, Request
for Production No. 15 asks for:
All documents and things concerning the personnel and employment
history for each of the named inventors of the Motorola Mobility Patentsin-Suit, including resumes or curriculum vitae.
Motorola, however, fails to identify what it believes to be confusing about this request. This
request is straightforward and simply asks for documents related to the personnel and employment
history for each of the named inventors of the Motorola Patents-in-Suit, including resumes or curriculum
vitae. Motorola’s responses to Apple’s Request for Production Nos. 15-18, 27, 34-37, and 41-42 state
that “to the extent Motorola understands this Request, Motorola will produce non-privileged, relevant
documents, responsive to this request, if any, that are in Motorola's possession, custody or control.”
Similarly, Motorola’s responses to Request for Production Nos. 5-9, 21-22, 24, and 39 ask for a
meet-and-confer “to understand [the Request’s] meaning.” For example, Request for Production No. 8
simply asks for:
Documents referring or relating to comparisons between the Motorola
Accused Products and products of other companies, including but not
limited to Apple’s products.
Motorola’s responses to this and other straightforward requests caveat that “after meeting and
conferring with Apple in a good faith effort to narrow the scope of this Request and to understand its
meaning, at an appropriate time thereafter, Mobility will produce non-privileged, relevant documents,
responsive to this Request, if any, that are in Mobility’s possession, custody or control.”
Please clarify your understanding and identify what questions you have, if any, concerning the
scope of the aforementioned requests. I am generally available to meet and confer with you regarding
any questions concerning scope this week. In any event, because Motorola has not contested that each
of Apple’s requests calls for information relevant to the parties’ claims and defenses in this matter and

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are likely to lead to the discovery of admissible information, Motorola should promptly produce the
responsive documents at least within the scope of its understanding of these requests.
3.

Motorola’s Inappropriate Limitation on the Timing of Its Production

Motorola’s responses to Request for Production Nos. 11-12, 18-19, 25-26, and 28 state that
Motorola will only produce the relevant documents at an unspecified “appropriate” time. For example,
Request No. 11 asks for:
All documents and things concerning Your awareness of the Apple
Patents-in-Suit, including but not limited to Your first awareness of each
of the Apple Patents-in-Suit and first awareness that Apple believed You
infringe the Apple Patents-in-Suit.
Motorola responded that “at an appropriate time, Mobility will produce non-privileged, relevant
documents, responsive to this Request, if any, that are in Mobility’s possession, custody or control.”
Similarly, Motorola’s responses to Request for Production Nos. 5-9 and 21-22 ask for a meet-andconfer, and “at an appropriate time thereafter,” the relevant documents will be produced.
Motorola fails to explain why it believes these requests are premature and why documents should
not be produced immediately. Each of these requests calls for information relevant to the parties’ claims
and defenses in this matter and are likely to lead to the discovery of admissible information.
Accordingly, Motorola must promptly produce documents responsive to these Requests for Production
or explain why it is refusing to do so.
4.

Motorola’s Attempts to Unilaterally Narrow the Scope of Apple’s Requests

In its responses to Requests for Production Nos. 2-10, 21-22, 24, 31, 39, 43, and 46, Motorola
asks for a meet-and-confer “to narrow the scope” of the request. Please clarify in writing exactly how
Motorola proposes to narrow the scope of each of these requests prior to our meet and confer. Also,
please be prepared to discuss why Motorola believes the scope of these Requests need to be narrowed
and when the requested documents will be produced.
B. Deficiencies in Responses to Interrogatories
I also write to address numerous deficiencies in Motorola’s responses to Apple’s interrogatories.
1.

Motorola’s Failure to Respond

Motorola’s responses to Interrogatory Nos. 7, 8, 14, and 15 state that Motorola “is still
investigating the claims and defenses at issue in this case” and will provide responses “on the timeframe
set by the Court” or “after it has had an opportunity to seek discovery.” I note that Apple’s First Set of
Interrogatories was served December 29, 2010—over ten months ago, and its Second Set of
Interrogatories was served February 24, 2011—over seven months ago, and yet many of Apple’s
interrogatories still remain unanswered. Motorola has had ample time to respond. Please serve
substantive responses to these interrogatories by no later than November 11, 2011.

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2.

Weil, Gotshal & Manges LLP

Motorola's Failure to Supplement

Additionally, Motorola stated in response to Interrogatory Nos. 3, 6, 12, and 13 that it had "not
yet completed its discovery and investigation of the facts" relating to the interrogatories and would
supplement its response "at the appropriate time and as its investigation continues." This was over
seven months ago; yet, to date, only two interrogatory responses have been supplemented. Motorola has
had ample time to supplement its responses to Apple's interrogatories. Please serve supplemental
responses to these interrogatories by no later than November 11, 2011.
Please do not hesitate to contact me if you have any questions. I am generally available to meet
and confer this week.
Best regards,

0
J. Ho
cc: Counsel of Record