Motorola Mobility, Inc. v. Apple, Inc.

Filing 229

RESPONSE in Opposition re 224 MOTION to Compel Responses to Interrogatories Regarding Set-Top Box Patents (Nos. 19-22) filed by Motorola Mobility, Inc.. (Attachments: # 1 Affidavit Declaration of David M. Elihu, # 2 Exhibit 1 to Declaration (Filed under seal), # 3 Exhibit 2 to Declaration, # 4 Exhibit 3 to Declaration, # 5 Exhibit 4 to Declaration (redacted), # 6 Exhibit 5 to Declaration, # 7 Exhibit 6 to Declaration (redacted), # 8 Exhibit 7 to Declaration (redacted), # 9 Exhibit 8 to Declaration)(Escobar, Annette)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
Case No. 1:10cv023580-Civ-RNS-TEB

MOTOROLA MOBILITY, INC.,
Plaintiff,
v.

JURY TRIAL DEMANDED

APPLE INC.,
Defendant.

APPLE INC.,
Counterclaim Plaintiff,
v.
MOTOROLA, INC. and
MOTOROLA MOBILITY, INC.,
Counterclaim Defendants.

MOTOROLA’S OPPOSITION TO APPLE’S MOTION TO COMPEL RESPONSES TO
INTERROGATORIES REGARDING SET-TOP BOX PATENTS (NOS. 19-22)

I.

INTRODUCTION
Apple asks this Court to compel Motorola to supplement its responses to Apple’s

Interrogatories regarding Apple’s set-top box patents (Nos. 19-22). (DE 224). However,
Apple’s Interrogatories are vague and overbroad—seeking, for example, a “narrative description”
of the relationship between Motorola and every cable company with which Motorola ever has had
an agreement, where the number of agreements with such companies is in the tens of thousands.
Moreover, the information purportedly sought by Apple is best provided in documents that
Motorola already has produced or agreed to produce. Given that Motorola is cooperating with
such production, particularly in light of the remaining time for fact discovery, Apple’s claim that
“Motorola’s tactics are severely prejudicing Apple” (DE 224 at 10) rings hollow.
In fact, rather than focus on any legitimate need for the discovery it seeks to compel or
substantively rebut Motorola’s objections, Apple’s central argument is that Motorola made an
“express promise to substantively supplement” its responses, “specifically including its
responses to Apple’s Interrogatory Nos. 19-22.” (DE 224 at 2-3) But, the documents submitted
in support of Apple’s motion do not bear out this misleading account. Instead, the parties agreed
to supplement their responses to those interrogatories that needed supplementation by midJanuary; however, neither party supplemented their responses where their initial answers were
appropriate, as Motorola’s responses were here.
Now, in an effort to obtain discovery to which it is still not entitled, Apple instead
attempts to rely on “promises” of supplementation that Motorola never made. In short, Apple’s
Motion should not have been brought at all, and should be denied.

1

II.

STATEMENT OF FACTS
On November 14, 2011, Apple served its Third Set of Interrogatories, Nos. 16-22. (Ho

Decl.1 ¶ 3, Ex. B.) Apple’s Interrogatory Nos. 19-22, at issue here, seek information about every
cable service provider that has had an agreement with Motorola, as well as “a narrative
description of the relationship between Motorola and each such cable service provider,” and asks
for the identification of, and information about, every Motorola set-top box manufactured, used,
distributed, sold, offered for sale, or imported with an interactive program guide. (Id.)
On a telephone conference three days following the service of its Third Set of
Interrogatories, Apple proposed supplementing certain interrogatory responses by December 16.
(Id. ¶¶ 9-10, Ex. G.) In a November 21 letter referencing this discussion, listed among the
interrogatories were Apple’s Interrogatory Nos. 20 and 22, responses to which were not even due
until December 19—several days after the proposed date for supplementation. (Id.) Further, no
mention was made of Interrogatory Nos. 19 and 21. (Id.)
Motorola subsequently served its initial responses to Apple’s Third Set of Interrogatories
on December 19, objecting to each of Apple’s Interrogatories on numerous grounds, and
responding to the extent it understood each Interrogatory. (Id. ¶¶ 4-5, Exs. C, D.) With regard to
Interrogatory Nos. 20, 21 and 22, Motorola understood those interrogatories to ask for various
information with respect to set-top boxes that Motorola manufactured, imported, used, sold,
offered for sale, or distributed “with an interactive programming guide.” Motorola answered that
it has “has not manufactured, used, distributed, sold, offered for sale, or imported” any infringing
systems, and, specifically, “has not sold in the United States set top boxes that include a program
guide of any type.”
1

“Ho Decl.” refers to the Declaration of Jill J. Ho in Support of Apple’s Motion to Compel
Responses to Interrogatories Regarding Set-Top Box Patents (Nos. 19-22) (Dkt. No. 224-1).
2

Besides requesting discovery from Motorola, Apple also subpoenaed various cable
companies that are Motorola clients, seeking overlapping information, for instance regarding
agreements, and relating to testing. Not surprisingly, cable companies quickly objected to the
breadth of these subpoenas as overbroad, burdensome, and impossible to comply with. (See
Elihu Decl.2 Ex. 1; Ho Decl. Ex. I.) In an effort to streamline discovery and reduce the burden
on those companies, Motorola in discussions memorialized in correspondence dated November 14
and 21 explained that it believed that certain of the discovery requests “can be addressed by
Motorola.” (Ho Decl. Exs. F, G.) Apple subsequently on November 21 issued amended
subpoenas to the third-party cable companies that removed or revised many of the topics to which
those companies had objected in the original November 10 subpoenas. (See Elihu Decl. Ex. 2.)
On December 14, 2011, the parties agreed to extend the date for mutual supplementation
an additional five days, from December 16 to December 21. (Ho Decl. ¶ 12, Ex. L.) By email
on that date, Apple also sought confirmation that Motorola would be supplementing, among
other interrogatories, Nos. 20 and 22. Again, no mention was made of either Nos. 19 or 21. (Id.)
On December 16, 2011, the parties jointly moved to amend the scheduling order, seeking
in part to extend the deadline for completion of fact discovery by three weeks, from January 17
to February 10. (DE 203.) On December 20, the Court entered an Amended Scheduling Order,
extending the deadline for fact discovery to March 16, 2012, five additional weeks beyond that
requested by the parties, for a total extension of eight weeks. (DE 206 at 2.)
On December 21, Motorola wrote Apple to explain that while it would be providing
certain supplemental responses as listed by Apple, it was “continuing to work on [its] responses”

2

“Elihu Decl.” refers to the Declaration of David Elihu in Support of Motorola’s Opposition to
Apple’s Motion to Compel Responses to Interrogatories Regarding Set-Top Box Patents (Nos.
19-22), filed herewith.
3

and therefore suggested “in view of the new case schedule” an extension for the remaining
supplementation for both parties. (Ho Decl. Ex. M.) Specifically in response to Apple’s query
whether Motorola would be “supplementing” Interrogatory Nos. 20 and 22, Motorola explained
that it had already “responded to Interrogatory Nos. 20 and 22 on Monday.” (Id.)
As the parties continued to meet and confer and exchange correspondence regarding
supplementation, on December 26 and 29, Apple again sought confirmation that Motorola would
still be supplementing its responses to Apple’s Third Set of Interrogatories, and in the December
29 communication, Apple for the first time explained that it sought supplementation of “all of the
rogs in Apple’s third set (Nos. 16-22), not just Nos. 20 & 22.” (Ho. Decl. Ex. Q.) In that email,
Apple also specifically complained that Motorola’s responses to Interrogatories in the Third Set
regarding source code (i.e., Nos. 16-18) failed to provide a narrative explanation or identify file
names. (Id.) In response, Motorola explained on January 3 that, to the extent it had
supplemental responses to provide, “our supplementation will include any supplemental
responses for the third set.”3 (Ho Decl. Ex. P.)
On the agreed upon date for supplementation, January 17, the parties exchanged
supplemental interrogatory responses. (Ho Decl. ¶ 18.) Motorola served supplemental responses
to numerous of Apple’s First, Second, Third, and Fifth Sets of Interrogatories. As part of its
supplementation on Apple’s Third Set of Interrogatories, Motorola provided supplemental
responses to Interrogatory Nos. 16 and 17, specifically to respond to the complaints raised in
Apple’s December 29 letter, by identifying for each accused product the specific file names for
Motorola source code. (Elihu Decl. Ex. 4.) When the parties met and conferred regarding

3

In fact, Apple was on notice that Motorola would not be providing supplemental answers to at
least one interrogatory from the third set. (See Elihu Decl. Ex. 3.)
4

supplementation, Motorola therefore stated that it believed its supplementation to have been
complete. (Ho Decl. ¶ 20.)
III.

ARGUMENT
Apple asserts that Motorola should be compelled to supplement its responses because

“Motorola refuses to provide the very information it promised.” (DE 224 at 1.) However,
Motorola made no such promises and Apple’s Interrogatories are improper and objectionable.
A.

Motorola’s Responses and Objections to Interrogatory Nos. 19-22 Are Proper
1.

Interrogatories No. 20-22

Interrogatory Nos. 20-22 all seek information regarding “each and every Motorola set-top
box manufactured, used, distributed, sold, offered for sale, or imported with an interactive
program guide, by or on behalf of Motorola.” The vague and undefined language of Apple’s
Interrogatories invites Motorola to inaccurately state that its set-top boxes are manufactured,
distributed, offered for sale, or imported with an interactive program guide. However,
Motorola’s set-top boxes are not manufactured, distributed, offered for sale, or imported with an
interactive program guide. Indeed, this is one of Motorola’s central noninfringement positions
on the set-top box patents upon which Apple sues in its counterclaim.
Motorola therefore objected to the terms “set-top box . . . with an interactive program
guide” as undefined, vague and ambiguous, and further objected on grounds that Apple sought,
without having provided a definition, the identification of each and every Motorola “set-top box .
. . with an interactive program guide.” (Ho Decl. Ex. D (emphasis added).) Motorola also
responded that, to the extent it understood these Interrogatories in view of Apple’s set-top box
patents, Motorola “has not manufactured, used, distributed, sold, offered for sale, or imported”
any infringing systems, and “has not sold in the United States set top boxes that include a program
guide of any type.” (Id.)
5

Although Apple contends that Motorola is simply “playing word games in an attempt to
avoid answering” these Interrogatories (DE 224 at 7), asking Motorola to respond otherwise,
based on the vague and undefined language of Interrogatories, is thus tantamount to inviting
Motorola to provide a misleading statement on a primary issue. As such, Motorola’s objections
and responses are proper, and any purported delay in obtaining additional information therefore
stems instead from Apple’s failure to properly clarify the scope of its Interrogatories.4
Moreover, these Interrogatories are overbroad and unduly burdensome, and seek
information far outside the scope of the claims at issue in this action. Motorola therefore also
objected “to the extent that Apple seeks to add theories and evidence in a manner inconsistent
with the relief it sought and was granted in connection with its Motion to Strike Motorola’s
Supplemental Infringement Contentions.” (Id. (citing DE 178, 198.)) In Apple’s Motion to
Strike, Apple asserted that products that were not accused in the parties’ infringement
contentions “are not relevant to this case,” and argued that “injecting” such “new products into
the case” “would lead to a never-ending discovery process.” (DE 178 at 11 n.8, 12.).
Nevertheless, by seeking information about “each and every Motorola set-top box”—i.e., not
only the specific Motorola accused products—Apple seeks precisely the same information that
Apple itself stated was not relevant after successfully narrowing the case to prior-identified

4

Apple never sought to meet and confer to discuss or narrow the language of its Interrogatories,
but only met and conferred on whether or not Motorola would supplement generally. (See, e.g.,
Ho Decl. Exs. O–P.) Apple’s arguments at this stage regarding Motorola’s purported “word
games” thus fall flat. Horowitch v. Diamond Aircraft Indus., Inc., 2007 WL 1192401, at *4
(M.D. Fla. April 23, 2007) (denying motion to compel “a better answer” to an interrogatory
objected to as vague, and admonishing that “Counsel should be talking to each other to clarify
any confusion” rather than bringing a motion to compel). Indeed, Apple’s failure to meet and
confer on “the issues to be raised in the motion” violates Local Rule 7.1(a)(3), and is itself cause
for the Court to deny Apple relief. Id.; see also Marler v. U-Store-It Mini Warehouse Co., No.
09-cv-60613, 2011 WL 1430262 (S.D. Fla. April 14, 2011).
6

products.5 In its Motion to Compel, Apple provides no basis for why that same information from
Motorola now would be relevant, and indeed it is not. See United States v. Eichholz, Civ. No.
CR409-166, 2009 WL 3754201, at *1 n.2 (S.D. Ga. Nov. 9, 2009) (noting that, in discovery,
“what is sauce for the goose . . . is sauce for the gander”).
2.

Interrogatory No. 19

Interrogatory No. 19 seeks the identification “of each cable service provider that is or has
been a party to a license, service, or other agreement with Motorola” along with a “narrative
description of the relationship” with each such provider. This Interrogatory is extremely broad:
as Motorola has discussed with Apple, Motorola has tens of thousands of agreements with cable
service providers. (See Elihu Decl., Ex. 6 at 1; Ex. 7 at 1.) Nonetheless, Motorola is in the
process of compiling, reviewing and analyzing these documents, and is producing them on a
rolling basis. These agreements—far more than any “narrative description” of relationships—
will provide Apple with the information it purports to be seeking and is a proper manner to
respond to an interrogatory on these circumstances as the burden would be the same for both
parties. See Fed. R. Civ. P. 33(d). Accordingly, a Motion to Compel on this Interrogatory
should not have been brought, and should not be granted.
B.

Motorola Never Represented to Apple that it Would Provide Additional
Information Beyond What it Has Already Provided, and Continues to
Provide, in the Course of Discovery

Rather than focus on Motorola’s objections to Apple’s improper Interrogatories, Apple
instead asserts that the Court should compel Motorola to immediately provide additional
interrogatory responses because Motorola supposedly has refused to comply with its “express
promise to substantively supplement” all of its responses to Interrogatory Nos. 19-22 (DE 224 at
5

See Elihu Decl. Ex. 5 (arguing that there can be no obligation to respond to discovery related
to non-accused products, programs, or applications because “they are not in the case”).
7

2-3), as well as its “representations that it would provide information responsive to Apple’s
third-party discovery” (id. at 1). But both of these allegations are untrue.
1.

Motorola Never Made an “Express Promise” to Supplement All of its
Responses to Apple’s Third Set of Interrogatories

Motorola never made an “express promise to substantively supplement” all of its
responses, “specifically including its responses to Apple’s Interrogatory Nos. 19-22,” as Apple
asserts. (DE 224 at 2-3.) Rather, as the letter memorializing those discussions makes clear,
Apple “proposed that the parties mutually agree to supplement their responses.” (Id., Ex. G. at 2
(emphasis added).) Indeed, that letter explains that Motorola “look[s] forward to discussing this
matter” at the next meet and confer, making plain that an agreement as to those specific
interrogatories was not yet reached. (Id. at 3.) As to Interrogatories from the Third Set, an
agreement to supplement was not reached for good reason—Motorola’s initial responses were
not due to be served until three days after the date Apple proposed for supplementation. Plainly,
there could not have been any basis for agreeing to “supplement” responses which had not yet
been served, and would not even be served by the proposed date for supplementation.
Accordingly, when Apple subsequently sought to determine whether Motorola would be
supplementing those Interrogatories, after the previously agreed-upon date for supplementation
was pushed back, Motorola specifically explained that it had already “responded to Interrogatory
Nos. 20 and 22 on Monday,” i.e., it had just served its initial responses two days prior. (Ho Decl.
Ex. M at 1.) This in no way suggested that Motorola intended to supplement its responses to
those interrogatories.
Further, after Apple later clarified that it sought supplemental responses to all of the
Interrogatories in its Third Set (and not just for 19 and 22, as it initially requested), Motorola
merely said that any supplemental responses would be served together with its other
8

supplemental responses on the date the parties agreed upon for a mutual exchange. And on that
date Motorola did provide supplemental responses for the Third Set, for Interrogatory Nos. 16
and 17, responding to specific purported deficiencies raised by Apple. But in light of its
objections (as discussed further below), Motorola did not (and continues to not) believe that
further supplementation of Interrogatory Nos. 19-22 was necessary.
2.

Motorola is Producing Information Responsive to Apple’s Third-Party
Discovery, and Has Not Prejudiced Apple’s Ability to Separately Obtain
Such Discovery from Third Parties

Apple’s further assertion that Motorola has “refused” to comply with “representations
that it would provide information responsive to Apple’s third-party discovery” (DE 224 at 1) is
also untrue. Motorola already has produced, and continues to produce, documents responsive to
Apple’s third-party requests, including numerous documents of the very sort Apple specifically
asserts that Motorola has refused to provide. For example, Apple claims that Motorola “refuses
to provide any information regarding” relationships between Motorola and “cable providers with
which it has agreements.” (DE 224 at 4-5.) Despite the overbreadth of such a request (as
Motorola has literally tens of thousands of such agreements), Motorola has produced and is
producing such documents on a rolling basis. (See Elihu Decl. Ex. 7 at 1.) Motorola has
produced, and continues to collect, review, and produce in the course of discovery, numerous
other categories of documents responsive to Apple’s third-party requests—the same information
which Apple in its Motion accuses Motorola of refusing to provide. (Id.) For instance, on
February 1, 2012, Motorola produced hundreds of documents to Apple, including documents
relating to Motorola’s relationship with and product testing arrangements involving third-party
cable providers. (See Elihu Decl. Ex. 8.)
Moreover, although Motorola agreed to assist Apple by addressing relevant third-party
discovery requests, Motorola never agreed to respond to any specific interrogatories addressed to
9

it—and in particular not Nos. 19-22—in lieu of third party discovery. Motorola simply noted
that it could help to address topics and document requests from third party subpoenas for which
it also has responsive information. (Ho Decl. Ex. G at 2.) The correspondence relied upon by
Apple does not show otherwise. (See id., Exs. F, G.)
In any event, Apple has not been prejudiced by any of Motorola’s purported discovery
deficiencies. There are still six weeks before the end of fact discovery, and as Apple notes,
Apple “is continuing to meet and confer with Motorola regarding its production of all relevant
third-party agreements and other core documents,” and has “reserved its rights” to pursue thirdparty discovery if it does not obtain what it wishes from Motorola. (DE 224 at 3, n.4.) Indeed,
the fact that Apple subsequently issued amended subpoenas to these third parties, removing or
revising many of the topics in the original subpoenas, would suggest that Apple either recognized
the objectionable nature of its original requests, or already has obtained the discovery it sought.
Any alleged failure of Motorola to assist Apple with third-party discovery—which, as
Apple noted, was limited by Motorola to documents (DE 224 at 3)—thus offers no basis on
which to compel responses from Motorola to Apple’s Interrogatory Nos. 19-22.
IV.

CONCLUSION
For the foregoing reasons, Motorola respectfully requests that Apple’s Motion to Compel

be denied in its entirety.

10

Respectfully submitted,

Dated: February 6, 2012

MOTOROLA SOLUTIONS, INC. (f/k/a
MOTOROLA, INC.) AND MOTOROLA
MOBILITY, INC.
By:

/s/ David Perlson
David Perlson

Charles K. Verhoeven
David Perlson
QUINN EMANUEL URQUHART &
SULLIVAN, LLP
50 California Street, 22nd Floor
San Francisco, CA 94111
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
[e-mail]
Edward M. Mullins (863920)
Astigarraga Davis Mullins & Grossman, P.A.
701 Brickell Avenue, 16th Floor
Miami, Florida 33131
Phone: [phone]
Fax: [phone]
Email: [e-mail]
Edward J. DeFranco
Raymond Nimrod
Quinn Emanuel Urquhart & Sullivan, LLP
51 Madison Avenue, 22nd Floor
New York, New York 10010
Phone: [phone]
Fax: [phone]
Email: [e-mail]
David A. Nelson
QUINN EMANUEL URQUHART &
SULLIVAN, LLP
500 West Madison St., Ste. 2450
Chicago, IL 60661
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Marshall Searcy
QUINN EMANUEL URQUHART &
SULLIVAN, LLP
11

865 S. Figueroa St., 10th Floor
Los Angeles, California 90017
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Attorneys for Plaintiff and CounterclaimDefendants Motorola Solutions, Inc. and
Motorola Mobility, Inc.

CERTIFICATE OF SERVICE
I HEREBY CERTIFY that on February 6, 2012, I served the foregoing document via
electronic mail on all counsel of record identified on the attached Service List.

/s/ Annette C. Escobar
Annette C. Escobar

12