Motorola Mobility, Inc. v. Apple, Inc.

Filing 230

RESPONSE in Opposition re 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 filed by Motorola Mobility, Inc.. (Attachments: # 1 Affidavit of David M. Elihu, # 2 Exhibit A to Declaration (redacted), # 3 Exhibit B to Declaration, # 4 Exhibit C to Declaration, # 5 Exhibit D 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 NOS. 7 AND 12
REGARDING PRODUCTS EMBODYING MOTOROLA’S ASSERTED PATENTS

I.

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

Interrogatory Nos. 7 and 12 (DE 225), which seek sweeping information about which of all of
Motorola’s products embody Motorola’s asserted patents. Both interrogatories seek enormous
amounts of information about Motorola’s products that are not accused in this litigation, far in
excess of what is relevant to either parties’ claims and defenses. Apple asserts that it needs the
information in its interrogatories to determine if Motorola has marked any embodiments with the
numbers of the patents at issue in this case. But this argument is a red herring—Motorola already
has admitted that it is not aware of having marked any of its products with the patents at issue.
Moreover, responding to these Interrogatories would require massive efforts on behalf of
Motorola and its counsel. Motorola’s asserted patents date back nearly two decades, during
which time Motorola has had hundreds of products, in dozens of product lines, in numerous
product divisions. To go back and identify every product Motorola has sold since its earliest
asserted patent was filed, and make an analysis of whether each one meets every limitation of
any of the 20 asserted claims of each of its six asserted patents, would alone take hundreds if not
thousands of hours. And then on top of this, Apple seeks voluminous additional information
about each such product, including names of persons with knowledge, prices of sales or offers
for sale, and the identification of relevant documents. Even if it could be done, the task of
responding to these requests would more than require the full time effort of all of Motorola’s
inside and outside counsel throughout the entire period of fact discovery.
Indeed, Apple’s own arguments in another forum make clear Apple’s overreaching here.
In opposing a motion to compel this same information from Apple, Apple argued that such
information is overbroad and irrelevant, relying on the same authority it cites now to support the

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opposite position. Apple’s assertion that the information it seeks is “basic” and “vital to its
defenses” (DE 225 at 1) therefore falls flat. The caselaw cited by Apple is inapposite, and does
not hold that discovery of information about all embodying products is appropriate.
Accordingly, Apple’s Motion to Compel should be denied.
II.

STATEMENT OF FACTS
Interrogatory Nos. 7 and 12 from Apple’s First Set of Interrogatories to Motorola both

request information about “all of [Motorola’s] products that embody its asserted patents.” (DE
225 at 8.) Motorola accordingly attempted to identify such products. However, when it
recognized the enormous burden of doing so, and the fact that most such products would be
irrelevant to both of the parties’ claims and defenses, Motorola met and conferred with Apple in
an attempt to limit the number of embodying products to be identified. (See DiMuzio Decl. Ex.
17). At the same time, Motorola nonetheless identified numerous representative embodying
products. (See DiMuzio Decl.1 Ex. 6, 7). Motorola informed Apple that all of its products using
the Android operating system or the Android Marketplace embodied certain of its patents. (Id.)
As discovery continued, Motorola also explained that it would identify all of the Motorola
embodying products on which Motorola would rely for its contentions in this litigation. (See
DiMuzio Decl. Ex. 12).
Nonetheless, during further meet-and-confer efforts, Apple maintained that it would not
further narrow the number of embodying products to be identified, relying on the cases cited in
its Motion, Facebook and Aristocrat. (See DiMuzio Decl. Ex. 17). Motorola disputed Apple’s
characterization of those cases, and countered that neither case offers support for the extensive
discovery that Apple seeks. (Id.) Although the information Motorola already provided

1

“DiMuzio Decl.” refers to the Decl. of Elena DiMuzio in Support of Apple’s Motion to Compel.
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substantively responds to Apple’s request for embodying products, in a continued attempt at
cooperation, Motorola reiterated that it was still amenable to finding a compromise. (Id.) Apple
however refused to further narrow its requests, and persisted in seeking the far-reaching and
irrelevant discovery that it now asks the Court to compel.
III.

ARGUMENT
A.

Apple’s Interrogatory No. 12, Seeking All Devices that Embody Motorola’s
Patents and that Are Not Accused in this Case, is Improper and Objectionable

Apple seeks information from Motorola “identifying all of [Motorola’s] own products
that embody or embodied any asserted claim of its asserted patents.” (DE 225 at 8.) Apple’s
Interrogatory, however, is overbroad, unduly burdensome, and seeks irrelevant information.2
1.

Information About All Motorola Products Embodying its Patents is
Irrelevant

Apple bases its entitlement to the information in Interrogatory No. 12 on two legal
theories, asserting that all of Motorola’s embodiments are relevant: (1) to determine whether
Motorola should be barred from recovering damages, for failure to mark its products; and (2) to
assess “reasonably royalty” damages under Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F.
Supp. 1116, 1120 (S.D.N.Y. 1970). However, most of the information sought by Apple’s
Interrogatory lacks any relevance under either theory.
First, despite Apple’s claim that “[w]hether any of Motorola’s unmarked products
practiced the Patents-in-Suit” is of “paramount importance” to damages under § 287 (DE 225 at

2

Although Apple notes that Motorola complained about the burden of identifying all of its
embodying products, it argues that Motorola waived any objection to overbreadth or undue
burden for not raising them in its response. But this is not so, as Motorola raised them in its
General Objections, incorporated into its Response to Interrogatory No. 12. (See Elihu Decl. Ex.
A; DE 225 at 7.) In any event, these objections are referenced in response to the related
Interrogatory No. 7 and the parties specifically discussed the overbreadth and undue burden issue
in the meet and confer. (DE 225 at 9; DiMuzio Decl. Ex. 17.)
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2), Motorola has admitted that it is not aware of having marked any products with the numbers of
the patents in suit. (See DiMuzio Decl. Ex. 1.) As such, Apple’s argument is moot: whatever
the embodiments that may be identified, Motorola has already conceded they are not marked.
Apple’s argument is also irrelevant to Motorola’s method patent claims—“[t]he law is clear that
the notice provisions of § 287 do not apply where the patent is directed to a process or method.”
Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321, 1332 (Fed. Cir. 2010) (quoting Crown Pkg’g Tech.,
Inc. v. Rexam Beverage Can Co., 559 F.3d 1308, 1316 (Fed. Cir. 2009)) (emphasis added). Hence,
Apple’s argument has no application to the patents from which Motorola asserted method claims.
Second, nothing in the law indicates that a patent holder must show all the embodiments
of its patent to support a reasonable royalty analysis. To the contrary, under Georgia Pacific,
numerous independent factors go into the determination of a reasonable royalty. Mars, Inc. v.
Coin Acceptors, Inc., 527 F.3d 1359, 1364 (Fed. Cir. 2008) (discussing “the fifteen GeorgiaPacific factors”). In any event, “the amount of a prevailing party’s damages is a finding of fact
on which the [patent owner] bears the burden of proof by a preponderance of the evidence.”
Smithkline Diagnostics, Inc. v. Helena Labs. Corp., 926 F.2d 1161, 1164 (Fed. Cir. 1991); see
also Kearns v. Chrysler Corp., 32 F.3d 1541, 1551 (Fed. Cir. 1994) (“A patent owner bears the
burden of proof on damages.”). To reach a compromise, Motorola explained to Apple that it
would provide information about embodying products on which Motorola would rely to support
a Georgia Pacific analysis. (See DiMuzio Decl. Ex. 12.) Apple’s demand that Motorola provide
more—i.e., that Motorola provide detailed information on products that would not be part of its
reasonably royalty analysis—by definition seeks irrelevant information. Thus, neither of
Apple’s theories provides a basis for the sweeping discovery it seeks.

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The cases relied upon by Apple do not hold otherwise. In Aristocrat, the party moving to
compel had not sought information about every product embodying the asserted patents, as
Apple does here. Rather, its interrogatory was specifically limited to ten products. See
Aristocrat Techs. v. Int’l Game Tech., No. C 06-03717 RMW (RS), 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)).
2.

Apple’s Interrogatory Seeking Information About All Motorola Products
Embodying its Patents is Overbroad and Unduly Burdensome

Even if some of the information sought by Apple’s Interrogatory No. 12 were relevant,
the Interrogatory is also objectionable because it is overbroad and unduly burdensome, as
Apple’s own authority demonstrates. In Leader Technologies, Inc. v. Facebook Inc., Civ. No.
08-862-JJF-LPS, 2009 WL 3021168 (D. Del. Sept. 4, 2009), the court explained that “[t]his case
is fundamentally about whether Facebook infringes Leader’s patent, not about whether Leader
practices its own patent.” Id. at *2 (emphasis added). Although the court granted some additional
discovery, it only did so after “a proper weighing of the relative burdens on the parties, as well as
the relevance of the discovery Facebook seeks.” Leader Technologies is a comparatively small
company with only a small handful of products or services. (See Elihu Decl.3 Ex. D.).
Motorola, by contrast, has a large number of product portfolios, and literally hundreds of

3

“Elihu Decl.” refers to the Declaration of David M. Elihu in Support of Motorola’s Opposition
to Apple’s Motion to Compel Interrogatories Nos. 7 and 12 Regarding Products Embodying
Motorola’s Asserted Patents, filed herewith.
.
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products. Hence, the heavy burden on Motorola, particularly given the negligible relevance of
identifying every Motorola embodying product, demonstrates that Apple is not entitled to the
information it seeks.4
Moreover, Motorola already has identified numerous products that it contends relate to
the patents in suit. (See DiMuzio Decl. Exs. 6, 7.) Motorola informed Apple that all of
Motorola’s products using the Android operating system or the Android Marketplace embody its
asserted patents. (Id.) Furthermore, Motorola informed Apple that it would identify the products
on which Motorola would rely at trial. (See DiMuzio Decl. Ex. 12.) As both Facebook and
Aristocrat demonstrate, Apple is simply not entitled to information about the whole universe of
Motorola’s embodying products, when only a small portion is relevant to this litigation. Indeed,
while in this case Apple has persisted in claiming that the identification of such information is
proper, elsewhere it has argued just the opposite, as discussed below.
3.

Apple’s Assertion that there is “No Dispute” that it is Entitled to
Information About All Embodying Products is Belied by its Own
Arguments made Elsewhere

Apple asserts that “[t]here can be no dispute that Apple requires information about
Motorola’s embodying products for its defense.” (DE 225 at 8.) However, Apple’s own
arguments made elsewhere show just the opposite.
In May of last year, in litigation with Eastman Kodak Co. in the Western District of New
York, Apple—represented by the same counsel as here—opposed a motion to compel brought by
Kodak seeking the same information that Apple seeks here. In that case, Kodak asked for
discovery “related to any product embodying any of the inventions claimed in the Asserted
4

Accordingly, that Apple provided information about its own embodying products (DE 225 at
8) does not dictate that Motorola must do likewise, given Apple’s far smaller product line; in its
responses Apple identified just nine embodying products for one patent, and eleven for another.
(See DiMuzio Decl. Ex. 2.)
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Apple Patents.” (Elihu Decl. Ex. B at 19.) Apple, however, refused.
In opposing Kodak’s motion to compel, Apple argued that it is overbroad to require a
patentee to disclose all of its embodying products. Remarkably, Apple cited in support the same
case it relies on now to stand for exactly the opposite proposition, Leader Technologies, Inc. v.
Facebook Inc., 2009 WL 3021168 (D. Del. Sept. 4, 2009). Relying on Facebook, Apple
explained that its “counterclaims are fundamentally about whether Kodak infringes Apple’s
patents, not about whether Apple practices its own patent.” (Id.) Since there was “no authority”
before the court “to support requiring a patentee to prove how its own (by definition
‘unaccused’) products practice its own patent,” Apple argued that it did not need to disclose all
of its embodying products, and it requested that Kodak’s motion to compel be denied. (Id.)
Apple’s own arguments thus belie its claim to be entitled to relief here. Motorola should
not be compelled to produce information of the same sort that Apple itself has argued is
irrelevant. Cf. U.S. v. Campa, 459 F.3d 1121, 1178 n.156 (11th Cir. 2006) (suggesting that, even
where judicial estoppel does not apply, parties nonetheless should be prevented “from playing
fast and loose with the courts,” including by “a change in their subsequent position in unrelated
litigation based upon the same set of facts”) (internal citations omitted and quotations altered).
B.

Apple’s Interrogatory No. 7 Seeking Information About The First
Manufacture, Use, Offer for Sale and Sale of All Devices that Embody
Motorola’s Patents is Likewise Improper and Objectionable

Apple also asks the Court to compel Motorola to supplement its response to Interrogatory
No. 7, asserting that Motorola “promised” to do so, and arguing that Interrogatory No. 7 calls for
“relevant information vital to Apple’s defense.” (DE 225 at 10.) However, neither of Apple’s
theories has merit.
As an initial matter, Apple failed to confer with Motorola on this issue pursuant to Local
Rule 7.1(a)(3). Although Apple did meet and confer regarding Interrogatory No. 12 in advance
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of filing its motion to compel, Apple did not do so regarding Interrogatory No. 7. (See Elihu
Decl. Ex. C; DiMuzio Decl. Ex. 17.) This itself is cause for the Court to deny Apple relief. See,
e.g., Marler v. U-Store-It Mini Warehouse Co., No. 09–60613–CIV, 2011 WL 1430262 (S.D.
Fla. April 14, 2011); Horowitch v. Diamond Aircraft Indus., Inc., No. 6:06-CV-1703-Orl-19JGG,
2007 WL 1192401, at *4 (M.D. Fla. April 23, 2007). However, even were Apple to be able to
pursue its Motion to Compel on Interrogatory No. 7, relief should still be denied.
1.

Interrogatory No. 7 is Improper and Objectionable

Apple’s Interrogatory No. 7 is overbroad, unduly burdensome, and seeks irrelevant
information. Apple asks Motorola to identify “the first manufacture, use, public use, offer for
sale, and sale of any embodiment of the asserted claims of any of Motorola’s asserted patents,
including identification of” dates, persons with knowledge, sales prices, and documents.” (DE
225 at 10 (emphasis added).) As discussed above with regard to Interrogatory No. 12,
information about any embodiment of Motorola’s patents is overbroad, unduly burdensome, and
irrelevant. Accordingly, just as Motorola need not identify all of its embodying products in
response to Interrogatory No. 12, it need not produce information about all of its embodying
products in response to Interrogatory No. 7. Indeed, the breadth and burden of Interrogatory No.
7 is all the greater, as it does not simply ask Motorola to identify all of its embodying products,
but it goes far further, asking Motorola to obtain, analyze, and produce a vast amount of
information about every one of these irrelevant products.
2.

The Legal Grounds on which Apple Seeks a Response are Flawed

Nor do the flawed legal grounds on which Apple seeks a response to Interrogatory No.
7—under 35 U.S.C. §§ 102(b) and 287—compel further discovery.
Apple explains that information about the first public use, offer for sale, and first sale of a
product practicing a patent is required to determine the validity of a patent, because these
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activities can invalidate a patent under § 102(b) if they occur more than one year before a patent
application is filed. (DE 225 at 4.) But although Apple correctly notes that public use or sale of
an invention more than one year prior to the date the patent was applied for may render a patent
invalid, Apple fails to take into account the priority dates that Motorola already has provided for
each of its asserted patents.
Motorola has explained in its response to Apple’s Interrogatory No. 6 that, for every
asserted patent, Motorola is not relying in this case on a conception and reduction to practice
date earlier than one year before filing of the patent application. (See Elihu Decl. Ex. A at 21-23;
DE 1, Exs. 1-6.) Given that conception and reduction to practice necessarily must precede the
creation of a working embodiment of the invention, cf. Solvay S.A. v. Honeywell Int’l., Inc., 622
F.3d 1367, 1376 (Fed. Cir. 2010), it is therefore already clear that Motorola’s patents cannot be
invalidated in this case by Motorola’s own products under § 102(b). Compelling Motorola to
provide additional and burdensome discovery on this issue would therefore serve no purpose.
Apple’s argument that it requires a response to determine whether Motorola made sales
of embodying products without marking also falls short. Apple claims that such sales would bar
a recovery of damages. (DE 225 at 2.) But as explained above, Motorola has conceded that it is
not aware of having marked any of its products with the patents at issue in this case. (See
DiMuzio Decl. Ex. 1.) Hence, Apple’s argument is irrelevant. Motorola should not be compelled
to respond to Interrogatory No. 7—which is even broader and more burdensome than
Interrogatory No. 12 discussed above—so that Apple can obtain irrelevant information, to which
it is still not entitled.

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C.

Apple’s Assertion that Motorola “Promised” to Supplement is False

Furthermore, Apple’s assertion that Motorola “promised to update its response” to these
interrogatories (DE 225 at 10) is simply untrue. None of the correspondence cited by Apple
shows otherwise. Neither Exhibit No. 9 or 10 to the DiMuzio Declaration states, or even
suggests, that Motorola promised to supplement its response to Interrogatory Nos. 7 or 12.
Exhibit 9 in fact states that Apple “proposed that the parties mutually agree to supplement their
responses,” and that Motorola “look[s] forward to discussing this matter” at the next meet and
confer. This instead makes clear that an agreement as to supplementing the enumerated
interrogatories was not yet reached. Similarly, Exhibit 10 states that for certain Interrogatories,
Motorola would be serving supplemental responses, but that “[f]or the remaining
interrogatories”—including Nos. 7 and 12—“we are continuing to work on our responses.”
Indeed, during further meet-and-confer efforts, Apple explained that it would not narrow
the number of embodying products to be identified, relying on the cases cited in its Motion,
Facebook and Aristocrat. (See DiMuzio Decl. Ex. 17.) Motorola disputed Apple’s
characterization of those cases, and countered that neither case offers support for the extensive
discovery that Apple seeks. (Id.) Motorola nonetheless explained that it is “still amenable to
finding a compromise.” (Id.) Apple responded that, unless Motorola came forth with a specific
proposal on providing embodiments, there would be “nothing further to discuss.” (Id.) For
Apple therefore to assert that Motorola promised to supplement the very interrogatories where it
declared that parties to be at an impasse defies belief.
Nonexistent “promises” thus provide no grounds on which to compel further discovery.
IV.

CONCLUSION

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For the foregoing reasons, Motorola respectfully requests that Apple’s Motion to Compel
be denied in its entirety.
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]
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Marshall Searcy
QUINN EMANUEL URQUHART &
SULLIVAN, LLP
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

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