Motorola Mobility, Inc. v. Apple, Inc.

Filing 235

REPLY to Response to Motion re 224 MOTION to Compel Responses to Interrogatories Regarding Set-Top Box Patents (Nos. 19-22) filed by Apple, Inc.. (Attachments: # 1 Affidavit Declaration of Jason Lang, # 2 Exhibit A, # 3 Exhibit B, # 4 Exhibit C, # 5 Exhibit D)(Pace, Christopher) Modified on 2/10/2012 (ls).

EXHIBIT C

Lang, Jason
From:
Sent:
To:
Cc:
Subject:
Attachments:

John Duchemin <[e-mail]>
Wednesday, February 08, 2012 10:34 PM
Lang, Jason; '[e-mail]'; Apple Moto Weil
Moto-Apple-SDFL
RE: Motorola-Apple (Florida): Apple's production requests
FW E-mail from Apple to Time Warner counsel

Jason,
In my e-mail yesterday, I indicated that Motorola is in the process of producing, to the extent it is available to Motorola,
information on the brand and version number of interactive programming guides that are eventually installed on
accused set-top boxes that Motorola sells to Time Warner. Motorola can and will provide such information by February
10. Motorola also agrees to provide similar information for other customers whom Apple also has served with equally
overbroad and unduly burdensome subpoenas.
Motorola will also produce information explaining how some of these interactive programming guides are installed on
the accused set-top boxes. Motorola does not have information about every single instance of such installations.
Apple has indicated, in correspondence with Motorola’s customers, that this information is exactly the sort that Apple
desires to obtain from its subpoenas on these third parties. For instance, in a January 24, 2011, e-mail to Time-Warner
counsel David Benyacar that I have attached here, Apple counsel stated:
“To the extent that it facilitates Time Warner Cable's response, Apple is particularly interested in obtaining
discovery on the following topics, dating back to October 6, 2004:
“Which IPGs are installed on the Motorola STBs offered by Time Warner Cable to its customers (i.e., the name of
the IPG, such as TV-Guide, Passport, Aptiv, as well as the version number)?
“Who installs the IPGs on these STBs, and how do they get installed?
“How much does Time Warner Cable pay for these IPGs, and to whom do they make the payments?”
Despite Motorola’s good faith effort to accommodate Apple’s demands on Motorola customers, your letter seeks even
more information than before—specifically, a manual corresponding to each brand and version of each interactive
programming guide. None of the subpoenas to Motorola’s customers seek any such documents. Certainly no discovery
request to Motorola seeks such information. And Apple indicated, in the above-quoted e-mail, nothing about requiring
anyone to assemble any such documents, particularly on extremely short notice and absent any formal discovery
request.
Apple also accuses Motorola of “interfer[ing] with Apple’s attempts to procure information from third parties” and
“delay[ing] producing information.” Motorola has stated since mid-November 2011, immediately after Apple sent its
subpoenas to Motorola’s customers, that it may be able to assist in producing documents on behalf of its customers,
and is now doing so at its customers’ requests. Moreover, this Monday was the first time that Apple ever demanded
information from Motorola about interactive programming guides that are installed after Motorola sells its set-top
boxes to its customers. (Interrogatories No. 20-22 only ask for information about set-top boxes “manufactured, [etc.]
with an interactive program guide, by or on behalf of Motorola.”) Even though data about interactive programming
guides installed post-sale is not responsive to any Apple discovery request on Motorola, and is of highly questionable
relevancy in any event, Motorola still is doing its best to provide such information to Apple in a timely manner in order
to limit the burden of Apple’s subpoenas on Motorola’s customers.

1

To the extent Apple includes this e-mail chain as an exhibit in its reply brief regarding the motion to compel, please be
sure to include this e-mail. Neither this e-mail nor my e-mail from yesterday contain confidential business information.
Best regards,
John

From: Lang, Jason [mailto:[e-mail]]
Sent: Wednesday, February 08, 2012 4:50 PM
To: John Duchemin; '[e-mail]'; Apple Moto Weil
Cc: Moto-Apple-SDFL
Subject: RE: Motorola-Apple (Florida): Apple's production requests

John,
Just following up on the below, in addition to confirming that Motorola will be producing the information outlined
below, please also confirm that Motorola will be producing information regarding how those IPGs are installed on the
accused set-top boxes (or identify with specificity what is not in Motorola's possession, custody, or control). I had noted
below that Mr. Benyacar confirmed that such information was in Motorola's possession and that his understanding was
that Motorola would be producing this information. But you did not mention below whether Motorola had any
intention to produce this information. As with the other information outlined below, if we cannot get an assurance from
Motorola that it will be providing this information, we will have to seek it from the third parties.
Thanks, Jason

J. Jason Lang
Weil, Gotshal & Manges LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065-1134
[e-mail]
[phone] Direct
[phone] Fax

From: Lang, Jason
Sent: Wednesday, February 08, 2012 1:33 PM
To: John Duchemin; '[e-mail]'; Apple Moto Weil
Cc: Moto-Apple-SDFL
Subject: RE: Motorola-Apple (Florida): Apple's production requests

John,
Please confirm that Motorola will provide information on the brand and version number of interactive programming
guides that correspond to and are eventually installed on each accused set-top boxes that Motorola sells by Friday
February 10. Please also provide a manual that corresponds to each brand and version of interactive programming
guide. To the extent Motorola does not have this information, Motorola must identify what information is not in
Motorola's possession, custody, or control by Friday February 10. Otherwise, because Motorola still has not provided
Apple with any assurances that it will produce all of the requested information in a timely manner, we intend to move
forward with this discovery in parallel with third party deponents. This is necessary because Motorola has interfered
with Apple's attempts to procure information from third parties and delayed producing information that has been in its
possession all along until a few weeks before the close of fact discovery and before expert reports are due.
Thanks, Jason
2

J. Jason Lang
Weil, Gotshal & Manges LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065-1134
[e-mail]
[phone] Direct
[phone] Fax

From: John Duchemin [mailto:[e-mail]]
Sent: Tuesday, February 07, 2012 11:43 PM
To: Lang, Jason; '[e-mail]'; Apple Moto Weil
Cc: Moto-Apple-SDFL
Subject: RE: Motorola-Apple (Florida): Apple's production requests

Jason, to address your questions:
Motorola is in the process of producing, to the extent it is available to Motorola, information on the brand and version
number of interactive programming guides that are eventually installed on accused set-top boxes that Motorola sells to
Time Warner. There is no inconsistency here: Motorola provides information regarding the identity of interactive
programming guides that are installed onto certain of the accused set-top boxes, but Motorola does not and has not
sold accused set-top boxes in the United States that include a programming guide. The installation of IPGs occurs postsale, after the accused set-top boxes are received by Motorola’s customers.
Motorola also will produce, to the extent it exists and is available to Motorola, similar information for Comcast, Verizon,
Cablevision, Suddenlink, Charter Communications, Cox Communications, and Mediacom.
Best regards,
John
John Duchemin
Associate,
Quinn Emanuel Urquhart & Sullivan, LLP
555 Twin Dolphin Drive, 5th Floor
Redwood Shores, CA 94065
650-801-5096 Direct
650.801.5000 Main Office Number
650.801.5100 FAX
[e-mail]
www.quinnemanuel.com
NOTICE: The information contained in this e-mail message is intended only for the personal and confidential use of the recipient(s) named above. This message
may be an attorney-client communication and/or work product and as such is privileged and confidential. If the reader of this message is not the intended
recipient or agent responsible for delivering it to the intended recipient, you are hereby notified that you have received this document in error and that any
review, dissemination, distribution, or copying of this message is strictly prohibited. If you have received this communication in error, please notify us immediately
by e-mail, and delete the original message.

From: Lang, Jason [mailto:[e-mail]]
Sent: Monday, February 06, 2012 6:26 PM
To: John Duchemin; '[e-mail]'; Apple Moto Weil
Cc: Moto-Apple-SDFL
Subject: RE: Motorola-Apple (Florida): Apple's production requests
3

Counsel,
I've been in discussions with David Benyacar who represents Time Warner and BrightHouse in regards to the third-party
subpoenas that Apple served on Time Warner and BrightHouse relating to the Motorola Accused Set-Top Boxes. David
informed me that Motorola is in possession of responsive information relating to what IPGs (brand and version) are
installed on the Motorola Accused Set-Top Boxes and how those IPGs are installed on the respective boxes. This is
consistent with earlier representations that Motorola made to Apple, but is inconsistent with Motorola's answers to
Apple's interrogatories and with statements that Motorola made during meet and confers. Please confirm that
Motorola will be providing this information for Motorola Accused Set-Top Boxes that are sold to Time Warner and
BrightHouse, namely, what IPGs are installed on the Motorola Accused Set-Top boxes (for each accused device, the
brand and version of the IPG), the number of each Accused Motorola Set-Top Box that is sold to the respective entities,
and how those IPGs are installed on the respective boxes.
Also confirm whether Motorola will be providing this information for Comcast, Verizon, Cablevision, Suddenlink, Charter
Communications, Cox Communications, Mediacom, and other cable providers that sell, lease, or otherwise provide the
Motorola Accused Set-Top Boxes.
Thanks, Jason

J. Jason Lang
Weil, Gotshal & Manges LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065-1134
[e-mail]
[phone] Direct
[phone] Fax

From: Lang, Jason
Sent: Thursday, February 02, 2012 4:43 PM
To: 'John Duchemin'; '[e-mail]'; Apple Moto Weil
Cc: Moto-Apple-SDFL
Subject: RE: Motorola-Apple (Florida): Apple's production requests

Hi John,
Thank you for the response below. I write to address the issue of executable IPG code and to provide some clarification
that may assist the below ongoing production.
With respect to the TV guide code, as I said in my January 24th email to you, we feel that such code is responsive to
long-pending document requests. And we would expect that given that it was in Motorola's possession, it would have
been used with Motorola STBs, triggering a substantive response to interrogatory 20. As to its relevance, our
infringement contentions specifically allege that Motorola directly infringes through testing, developing, and using its
STBs with IPG code. Those contentions show that the execution of this code may directly infringe the method claims of
the STB patents. Accordingly, the fact that such executable code is in Motorola's possession is highly relevant to at least
Apple’s direct infringement claims.
We thus ask that you provide a log of the executable IPG code that was and that is in Motorola's possession. It appears
now that your basis for refusing to produce this code is that it is immune from discovery due to “strict confidential
provisions.” Please comply with the instructions from Apple’s Request for Production that request that you provide
information about what documents and things you allege are immune from discovery (see Instruction 4 of Apple’s
4

12/29/10 Request for Production). Of course, FRCP 34 also requires that you state such objections. The log should
provide the name of each executable code (versions and brand), who had access to it, etc., as the instruction specifies.
Please provide this information by February 10th to enable Apple to assess other avenues of obtaining this code and
corresponding source code.
With respect to a point of clarification that may assist Motorola’s supplement production efforts, we are not seeking
“tens of thousands of agreements” that are either irrelevant or duplicative, and our requests are not overbroad. Apple’s
document requests cover agreements relating to the accused Motorola STBs. To the extent that Motorola has tens of
thousands of such agreements, these agreements are highly relevant to Apple’s direct and indirect infringement
allegations – these agreements cover, e.g., the direct sale of accused products and testing agreements with IPG makers
that reflect direct and indirect infringement. If such a voluminous number of these agreements exist, this just means
that there is voluminous infringing activity. Motorola cannot use its voluminous amount of infringing activities against
Apple. As always, I am available by phone to discuss if that will assist.
Thanks for producing the supplemental production in a rolling manner given the fast approaching fact discovery cutoff
and expert report deadline.
Thanks, Jason

J. Jason Lang
Weil, Gotshal & Manges LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065-1134
[e-mail]
[phone] Direct
[phone] Fax

From: John Duchemin [mailto:[e-mail]]
Sent: Tuesday, January 31, 2012 7:47 PM
To: '[e-mail]'; Apple Moto Weil
Cc: Moto-Apple-SDFL
Subject: Motorola-Apple (Florida): Apple's production requests

Jason,
I write to respond to various questions you have posed in written communications about Motorola’s production.
1.
You ask about documents bearing the specification code 365-095-xxxx. That specification code is used on tens of
thousands of Motorola documents, most of which are irrelevant to the present case. It would be unduly burdensome
for Motorola to produce every single one of these documents. However, we are preparing to produce those documents
that you specifically requested, namely, any relevant and non-privileged documents bearing that specification code
prefix that are referred to in documents already produced by Motorola. Production of these documents is ongoing and
should be complete by Wednesday, February 8.
2.
You requested that Motorola provide Apple with agreements with third-party cable providers and programming
guide makers. As previously explained, Apple's request is extremely broad, as Motorola has tens of thousands of
agreements with customers and providers. However, Motorola is in the process of compiling, reviewing and analyzing
these documents and producing those responsive to Apple’s production requests. Production is ongoing and will be
5

completed on a rolling basis. However, our goal is to get any responsive documents produced to you no later than
Wednesday, February 15.
3.
You requested that Motorola provide Apple with additional documentation related to testing of third-party
interactive programming guides, including documentation related to the Acadia Application Integration Center and to an
extranet site shared by Comcast and Motorola. Again, production is ongoing and will be completed on a rolling basis. A
set of approximately 120 documents related to this subject is currently in production and should arrive at Apple soon.
4.
You requested that Motorola provide Apple with documentation related to the infrared functionality of its set-top
boxes. An additional set of Motorola documents relating to infrared functionality is currently in production and should
arrive at Apple soon.
5.
You have asked for Motorola to make available third-party interactive programming guide source code in its
possession. As stated in previous correspondence and meet-and-confers, Motorola does not possess and has not
possessed any such source code. In later correspondence, you have also broadened this request to ask for any thirdparty interactive programming guide “software” in Motorola’s possession, including executable files. This vague request
is overbroad and unduly burdensome in that it seeks to have Motorola produce third-party software, bound by strict
confidentiality provisions, that is entirely unnecessary for Apple to prove its case.
Please bear in mind that production is ongoing, that Motorola reserves all of its objections to Apple’s discovery requests,
and that Motorola also reserves the right to collect and produce subsequent to the above dates.
Best regards,
John
John Duchemin
Associate,
Quinn Emanuel Urquhart & Sullivan, LLP
555 Twin Dolphin Drive, 5th Floor
Redwood Shores, CA 94065
650-801-5096 Direct
650.801.5000 Main Office Number
650.801.5100 FAX
[e-mail]
www.quinnemanuel.com
NOTICE: The information contained in this e-mail message is intended only for the personal and confidential use of the recipient(s) named above. This message
may be an attorney-client communication and/or work product and as such is privileged and confidential. If the reader of this message is not the intended
recipient or agent responsible for delivering it to the intended recipient, you are hereby notified that you have received this document in error and that any
review, dissemination, distribution, or copying of this message is strictly prohibited. If you have received this communication in error, please notify us immediately
by e-mail, and delete the original message.

The information contained in this email message is intended only for use of the individual or entity named above. If the
reader of this message is not the intended recipient, or the employee or agent responsible to deliver it to the intended
recipient, you are hereby notified that any dissemination, distribution or copying of this communication is strictly
prohibited. If you have received this communication in error, please immediately notify us by email, [e-mail],
and destroy the original message. Thank you.

6