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)

Exhibit A

CONFIDENTIAL BUSINESS INFORMATION SUBJECT TO PROTECTIVE ORDER
IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF FLORIDA

Case No. 1:10cv023580-Civ-UU
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 MOBILITY, INC. RESPONSES TO
FIRST SET OF INTERROGATORIES (NOS. 1-10)
Pursuant to Federal Rules of Civil Procedure 26 and 33, Plaintiff and CounterclaimDefendant Motorola Mobility
Plaintiff

Mobility

responds to Defendant and Counterclaim-

) Interrogatories Nos. 1-10

.

PRELIMINARY STATEMENT
Mobility has made a reasonable investigation for information responsive to
Interrogatories based upon its current knowledge, information, and belief. Mobility is still
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CONFIDENTIAL BUSINESS INFORMATION SUBJECT TO PROTECTIVE ORDER
pursuing its investigation and analysis of the facts and law pertaining to this action, and has not
yet completed its investigation.

responses are made without prejudice to its right to

revise, correct, supplement, or clarify its responses at any time pursuant to Federal Rule of Civil
Procedure 26(e). Mobility reserves the right to make any use of, or to introduce at any hearing,
and at trial, information and/or documents responsive to the Interrogatories but discovered
subsequent to the date of this response. Mobility reserves all objections or other questions as to
the competency, relevance, materiality, privilege, or admissibility in any proceeding or trial for
any purpose whatsoever of its responses herein and any document or thing identified or provided
in response to the Interrogatories.
Mobility provides these written responses to the Interrogatories subject to the general and
specific objections stated below.
GENERAL OBJECTIONS
Mobility incorporates by reference the following general objections to
Interrogatories into

responses to each of the individual interrogatories as if fully set

forth therein:
1.

Mobility objects to the Interrogatories, and the Definitions and Instructions

therein, on the ground and to the extent that they purport to impose any obligation on Mobility
that is beyond the scope of Rules 26 and 33 of the Federal Rules of Civil Procedure or the
.
2.

Mobility bases the following responses on discovery available as of the date

hereof. Discovery is just beginning, and these responses are subject to change accordingly.
Mobility anticipates that further discovery, independent investigation, and analysis may lead to
the discovery of additional information or documents, supply additional facts and add meaning to

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CONFIDENTIAL BUSINESS INFORMATION SUBJECT TO PROTECTIVE ORDER
known facts, as well as establish entirely new factual conclusions and legal contentions, all of
which may lead to additions to, changes to, or variations from the responses set forth here.
3.

Mobility gives the following responses without prejudice to its right to produce or

rely on subsequently discovered information, facts, or documents. Mobility accordingly reserves
the right to change the response herein or produce or rely on subsequently discovered documents
as additional facts are ascertained, analysis is made, legal research is completed and contentions
are made. Mobility has given responses as contained herein in a good faith effort to comply with
Rules 26 and 33 of the Federal Rules of Civil Procedure, and to supply such responsive
possession, custody, or control, but are in

information as exists and is presently within

no way to be deemed to be to the prejudice of Mobility in relation to further discovery, research,
and analysis.
4.

Mobility, by responding to these Interrogatories, does not make any admissions

relative to the existence of any document or information, to the relevance or admissibility of any
documents or information, or to the truth or accuracy of any statement or characterization
contained in

requests. Mobility expressly reserves all objections as to relevance,

authenticity, or admissibility of any document or information.
5.

Mobility responds subject to and without prejudicing the positions it has taken in

its

in the

Western District of Wisconsin, Case No. 1:10-cv-00662-slc, its
-cv-00867, and its
ransfer in this action. Mobility reserves the right to
supplement or amend its responses after these pending motions are ruled upon.

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6.

Mobility objects to the Interrogatories to the extent they are vague, ambiguous,

overbroad, unduly burdensome, incomprehensible, harassing, duplicative, and/or cumulative of
other discovery.
7.

Mobility objects to the Interrogatories to the extent they seek information neither

relevant to a claim or defense of any party in this action or reasonably calculated to lead to the
discovery of admissible evidence.
8.

Mobility objects to these Interrogatories to the extent they seek information from

outside a reasonable time period or from a point other than a reasonable time. Mobility also
objects generally to the Interrogatories to the extent the time period in question is vague,
ambiguous, or undefined. Mobility is willing to meet and confer with Apple regarding
reasonable time periods and cutoffs.
9.

Mobility objects to the Interrogatories to the extent they seek information subject

to the attorney-client privilege, attorney work product immunity, the common interest doctrine
and/or other privilege or immunity. The inadvertent disclosure of information protected by such
privileges and protections shall not constitute waiver of the applicable privilege and/or protection
either as to the information inadvertently disclosed or as to any other information related thereto.
If any privileged or protected information were to be disclosed by Mobility in the absence of a
Court order compelling such disclosure, such disclosure would be inadvertent, and in such event,
Mobility requests the immediate return of any such information and all documents or tangible
things containing such inadvertently disclosed information upon notification to Apple. Mobility
will exchange with Apple a list of withheld documents at a time agreed to by counsel for the
parties. Mobility objects to the logging of privileged documents over an indefinite time period
and is willing to meet and confer with Apple regarding an appropriate scope for logging.

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10.

Mobility objects to the Interrogatories to the extent that they seek information

and/or documents not within the possession, custody, or control of Mobility. An objection on this
ground does not constitute a representation or admission that such information and/or documents
do, in fact, exist.
11.

Mobility objects to the Interrogatories to the extent that they seek information

and/or documents that are as accessible to Apple as they are to Mobility because it is
unreasonably burdensome to compel Mobility to obtain such information and/or documents for
Apple.
12.

Mobility objects to the Interrogatories to the extent they seek discovery that is

more appropriately sought by other means and to the extent they seek information that is
cumulative or duplicative of information already provided through other forms of discovery.
13.

Mobility

they purport to enlarge, expand, or alter in any way the plain meaning and scope of the
Interrogatories where such enlargement, expansion, or alteration renders said Interrogatories
vague, ambiguous, overbroad, unduly burdensome, harassing, incomprehensible, and/or causes
said Interrogatories to seek information that is neither relevant nor reasonably calculated to lead
to the discovery of admissible evidence.
14.

Mobility objects to the Interrogatories to the extent they call for information that

is confidential, commercially sensitive, or which constitutes confidential financial or proprietary
information, economic relationships, or trade secrets, which would impinge upon the
constitutionally protected right to privacy of individuals, or which is protected from disclosure
by law or contract, including but not limited to information subject to confidentiality agreements
or protective orders with third parties, without the prior consent of those third parties. Mobility

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CONFIDENTIAL BUSINESS INFORMATION SUBJECT TO PROTECTIVE ORDER
will make reasonable efforts to request the consent of third parties to produce such confidential,
proprietary information, and absent consent, reserves the right to withhold such third-party
confidential information from production. Furthermore, Mobility will not provide such
information until a suitable Protective Order is entered by the Court. At such time and to the
extent Mobility provides such information, the information will be provided pursuant to the
Protective Order.
15.

Mobility objects to the Interrogatories to the extent they call for a legal conclusion
responses should not be construed to provide

or opinion, or call for expert testimony.
legal conclusions or opinions.
16.

Mobility objects to these Interrogatories to the extent they seek to compel

Mobility to create or generate information and or documents that do not already exist.
17.

Mobility objects to the Interrogatories on the ground that they are unduly

burdensome and oppressive to the extent that they purport to require Mobility to search facilities
or inquire of employees other than those facilities or employees that would reasonably be
responses are based upon (1) a reasonable

expected to have responsive information.

search of facilities and file that could reasonably be expected to contain responsive information,
and (2) inquiries of

employees or representatives who could reasonably be expected

to possess responsive information.
18.

Mobility objects to the Interrogatories insofar as they are premature in light of the

parties Joint Planning and Scheduling Report filed in this action on December 29, 2010. The
parties have asked the Court to set a date on which the parties will disclose initial infringement
contentions and asserted claims, a date on which the parties will disclose initial invalidity
contentions and unenforceability contentions, and a date on which the parties will exchange

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claim terms and proposed constructions. Additionally, the parties have asked the Court to set
dates for opening and rebuttal expert reports. To the extent these Interrogatories call for or
require information the parties have agreed to exchange on a date set by the Court, they are
premature. Mobility will supplement its responses to premature Interrogatories at the appropriate
time.
19.

Mobility objects to these Interrogatories to the extent that they prematurely call
contentions. Mobility is still investigating the claims and defenses at issue in this

for

case. Mobility will provide responses to contention Interrogatories at an appropriate time.
20.

Mobility
initions include persons and entities not

within

control, and necessarily encompass attorneys or their agents, that have

provided legal advice to Mobility. Mobility also objects to the definitions to the extent they
all predecessors, subsidiaries, parents, and affiliates, including without
limitation the Mobile Devices segment of Motorola, Inc. and Motorola SpinCo Holdings Corp.,
and all past or present directors, officers, agents, representatives, employees, consultants,
attorneys, entities acting in joint-venture or partnership relationships with the aforementioned
entities, and oth

Mobility further objects to these definitions insofar as

they purport to define Motorola Solutions, Inc. (f/k/a Motorola, Inc.) and Motorola Mobility, Inc.
as the same legal entity. Additionally, Mobility objects to these definitions to the extent they
presuppose, assume or imply a relationship between Motorola Solutions, Inc. (f/k/a Motorola,
Inc.) and Motorola Mobility, Inc. that is inconsistent with the Amended and Restated Master
Separation and Distribution Agreement filed by Motorola Mobility Holdings, Inc. (f/k/a
Motorola SpinCo Holdings Corp.) with the Securities Exchange Commission on August 31,

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CONFIDENTIAL BUSINESS INFORMATION SUBJECT TO PROTECTIVE ORDER
2010. Mobility will construe these terms to mean only Motorola Solutions, Inc. (f/k/a Motorola,
Inc.) and Motorola Mobility, Inc., respectively, as is called for by the meaning and context of the
request in question.
21.

Mobility

overly broad and unduly
all predecessors, subsidiaries, parents, and affiliates, and

all past or present directors, officers, agents, representatives, employees, consultants, attorneys,
entities acting in joint-venture or partnership relationships
Mobility
22.

Mobility

-int Apple owns or has standing to assert any of the

enumerated patents. Mobility does not admit that Apple owns or has standing to asset any patent
in this action. Mobility further objects

-in-

is

overly broad, unduly burdensome and not relevant to the claims or defenses of any party to the
extent it includes Apple patents beyond U.S. Patents Nos. 5,583,560, 5,594,509, 5,621,456,
6,282,646, 7,380,116, and 7,657,849.
23.

Mobility objects to the definition of th

-Top

Solutions, Inc. (f/k/a Motorola, Inc.), Motorola Mobility, Inc. and any product or service that is
inconsistent with the Amended and Restated Master Separation and Distribution Agreement filed
by Motorola Mobility Holdings, Inc. (f/k/a Motorola SpinCo Holdings Corp.) with the Securities
Exchange Commission on August 31, 2010. Mobility further objects to the definition to the
extent it relies upon claim terms to define the universe of set-top boxes allegedly encompassed
by the definition. The Court has not yet construed these claim terms. In responding to

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Interrogatories incorporating this definition, Mobility does not admit any of the enumerated
devices function as described in the definition, including as described by claim terms not yet
defined. Mobility further objects to the definition to the extent it calls for legal conclusions
regarding the functionality of the enumerated devices and the activities of Mobility and Motorola
Solutions, Inc. as regards the enumerated devices. Mobility further objects to the definition to the
extent it identifies devices that do not exist. In responding to Interrogatories incorporating this
definition, Mobility will only respond as to the specifically enumerated devices, to the extent
such devices exist.
24.

Mobility
en Motorola

Solutions, Inc. (f/k/a Motorola, Inc.), Motorola Mobility, Inc. and any product or service that is
inconsistent with the Amended and Restated Master Separation and Distribution Agreement filed
by Motorola Mobility Holdings, Inc. (f/k/a Motorola SpinCo Holdings Corp.) with the Securities
Exchange Commission on August 31, 2010. Mobility further objects to the definition to the
extent it relies upon claim terms to define the universe of mobile devices allegedly encompassed
by the definition. The Court has not yet construed these claim terms. In responding to
Interrogatories incorporating this definition, Mobility does not admit any of the enumerated
devices function as described in the definition, including as described by claim terms not yet
defined. Mobility further objects to the definition to the extent it calls for legal conclusions
regarding the functionality of the enumerated devices and the activities of Mobility and Motorola
Solutions, Inc. as regards the enumerated devices. In responding to Interrogatories incorporating
this definition, Mobility will only respond as to the specifically enumerated devices.

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CONFIDENTIAL BUSINESS INFORMATION SUBJECT TO PROTECTIVE ORDER
25.

Mobility

-in-

extent it presupposes, assumes or implies a relationship between Motorola Solutions, Inc. (f/k/a
Motorola, Inc.), Motorola Mobility, Inc. and any patent that is inconsistent with the Amended
and Restated Intellectual Property Assignment Agreement filed by Motorola Mobility Holdings,
Inc. (f/k/a Motorola SpinCo Holdings Corp.) with the Securities Exchange Commission on
August 31, 2010. Mobility further objects to the extent that the definition presupposes, assumes
or implies that Motorola Mobility, Inc. does not own all right, title and interest in U.S. Patents
5,710,987, 5,765,119, 5,958,006, 6,008,737, 6,101,531, and 6,377,161. Motorola Solutions, Inc.
(f/k/a Motorola, Inc.) assigned each of these patents to Motorola Mobility, Inc. Mobility will use
-in26.

s.

Mobility objects

(s)

and unduly burdensome to the extent it includes foreign patents or applications. Mobility objects

definition. Mobility will construe this term to be limited to U.S. patent applications and patents at
issue in this action.
27.

Mobility object
U.S.C. §§ 102 and/or 103.

28.

Mobility

broad, unduly burdensome, vague, ambiguous and confusing. For example, the terms and

definition.

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29.

Mobility
purport to impose any obligation on Mobility that is beyond

the scope of the Federal Rules of Civil Procedure.
30.

Mobility

broad, unduly burdensome, vague, ambiguous and confusing.
31.

Mobility

burdensome, vague, ambiguous and confusing.
32.

Mobility objects to Appl

33.

Mobility objects to each interrogatory that asks Mobility to identify all

documents, any document, each document, or every document referring to some subject matter
because such interrogatories are overly broad and unduly burdensome. Such requests are more
appropriately served as requests for production.
34.

Mobility objects to each interrogatory that asks Mobility to identify all persons,

any person, each person, or every person on the grounds that such interrogatories are overly
broad and unduly burdensome, not relevant and not reasonably calculated to lead to the
discovery of admissible evidence.
35.

Mobility objects to A

longer in
such documents and things, and the person who has possession, custody or control of the
documents or t

Mobility cannot answer the Interrogatories with information it does not

currently possess. Mobility will answer each Interrogatory to the best of its ability with the
information in its possession, custody, and control.

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36.

Mobility objects that the Interrogatories are overly broad and unduly burdensome

to the extent they seek information that is already in the possession of Apple, publicly available,
or as readily available to Apple as it is to Mobility.
37.

Mobility objects to each Interrogatory to the extent it is duplicative or cumulative

of another Interrogatory.
38.

Mobility objects to each Interrogatory to the extent it is compound and/or

comprises multiple Interrogatories.
39.

Mobility objects to these Interrogatories to the extent they purport to require

Mobility to anticipate

future claims or defenses and/or other developments in this

Action. Mobility has not completed its discovery, investigation, research, and trial preparation,
and provides these responses to the Interrogatories based solely on the information presently
available and known to it.
40.

Mobility objects to these Interrogatories to the extent that they purport to require

Mobility to analyze, interpret, or summarize information for Apple that is contained in
documents responsive to Apple requests for the production of documents.
41.

Mobility expressly reserves the right to respond to any or all of the Interrogatories

by specifying the documents wherein the responsive information may be ascertained pursuant to
Federal Rule of Civil Procedure 33(d).
42.

Mobility has responded to the Interrogatories as it interprets and understands it. If

Apple subsequently asserts an interpretation of any Interrogatory or sub-part thereof that differs
from

understanding of that Interrogatory or sub-part thereof, Mobility reserves the

right to supplement, revise, amend, or modify its objections and/or responses.

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Report. Mobility also objects that this interrogatory is unduly burdensome because it comprises
at least five distinct interrogatories.
Mobility is still investigating the claims and defenses at issue in this case and will
provide responses regarding its asserted claims proposed constructions at the time set by the

Report. Pursuant to that request, Mobility is not yet required to identify the claims it asserts in
this action, its infringement contentions regarding the Apple Accused Products, or the claims for
which it will seek construction by the Court.
INTERROGATORY NO. 6:
Separately for each asserted claim of each of the Motorola Mobility Patents-in-Suit,
describe the circumstances of alleged conception and reduction to practice, including without
limitation an identification of: Motorola Mobilit

alleged priority date for that claim; the

alleged dates, locations of, and individuals involved in conception and reduction to practice;
whether the alleged reduction to practice was actual or constructive; and each document and
witness Motorola Mobility alleges can substantiate or corroborate such conception or reduction
to practice and/or the exercise of diligence, if any, in reduction to practice, including a full
description of how each document and witness allegedly substantiates or corroborates Motorola
allegations; and each document, electronically stored information, thing, or person
that Motorola Mobility relies on in support of its answer.
RESPONSE TO INTERROGATORY NO. 6:
Mobility incorporates its Preliminary Statement and General Objections set forth above
as though set forth fully herein. Mobility objects to this interrogatory to the extent that it seeks to
elicit information subject to and protected by the attorney-client privilege, the attorney work-

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product doctrine, the joint defense privilege, the common interest doctrine, and/or any other
applicable privilege or immunity. Mobility further objects to this interrogatory to the extent it
calls for a legal conclusion or presents a question of law. To the extent this interrogatory calls for
expert testimony or opinion, Mobility objects that this interrogatory is premature in light of the
uest
that the Court set deadlines for expert disclosures. Similarly, to the extent this interrogatory calls
for

infringement contentions or asserted claims, Mobility objects that this

interrogatory is premature because the parties have requested that the Court set dates for the
exchange of such information in the December 29, 2010 Joint Planning and Scheduling Report.
Mobility further objects that this interrogatory is overly broad, unduly burdensome and not
relevant to the claims of defenses of any party to the extent it is not limited to asserted claims.
Mobility also objects that this interrogatory is unduly burdensome because it comprises at least
six distinct interrogatories.
Mobility is still investigating the claims and defenses at issue in this case and will
provide responses regarding its asserted claims at the time set by the Court, pursuant to the

request, Mobility is not yet required to identify the claims it asserts in this action or its
infringement contentions regarding the Apple Accused Products.
Subject to and without waiving its General Objections and the foregoing specific
objections, Mobility states as follows:
As currently advised an
individuals were involved in the conception and reduction to practice:

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U.S. Patent No.

Individuals

6,008,737

Michael J. Deluca; Doug Kraul; Walter L. Davis

5,765,119

Michael J. Deluca; Joan S. Deluca

5,710,987

Thomas Eugene Paulick

6,377,161

Lisa Jane Gromelski; Gregory Lewis Cannon

6,101,531

Gene Eggleston; Mitch Hansen

5,958,006

Gene Eggleston; Mitch Hansen; Anthony Rzany
the priority dates for

the Mobility Patents-in-Suit are as follows:
U.S. Patent No.

Priority Date

6,008,737

At least as early as June 24, 1996.

5,765,119

At least as early as August 31, 1995.

5,710,987

At least as early as February 25, 1993.

6,377,161

At least as early as August 11, 1998.

6,101,531

At least as early as December 19, 1995.

5,958,006

At least as early as December 19, 1995.

Mobility has not yet completed its discovery and investigation of the facts relating to this
interrogatory. Mobility will supplement this response at the appropriate time and as its
investigation continues, in accordance with Federal Rule of Civil Procedure 26(e) and the
schedule ordered by the Court.
INTERROGATORY NO. 7:
For each asserted claim of each of the Motorola Mobility Patents-in-Suit, describe all
facts and circumstances relating to the first manufacture of the claimed invention, the first use of
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