Motorola Mobility, Inc. v. Apple, Inc.

Filing 236

REPLY to Response to Motion 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 Apple, Inc.. (Pace, Christopher) Modified on 2/10/2012 (ls).

IN THE UNITED STATES DISTRICT COURT
FOR THE 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.

DEFENDANT AND COUNTERCLAIM PLAINTIFF APPLE INC.’S REPLY IN
SUPPORT OF ITS MOTION TO COMPEL RESPONSES TO INTERROGATORIES
NOS. 7 AND 12 REGARDING PRODUCTS EMBODYING MOTOROLA’S ASSERTED
PATENTS

I.

INTRODUCTION
The theme of Motorola’s Opposition is that it may choose to produce only a subset of

relevant information. Motorola does not say that relevant information does not exist; on the
contrary, it says there is so much relevant information that it would be burdensome to produce it
all. Motorola argues that it can produce only the information that helps its case, and omit the
rest. Not surprisingly, Motorola has cited no authority supporting its position. Motorola chose
to accuse Apple of infringing its six patents, and must meet the resulting discovery obligations.
Apple requires the information sought by Interrogatories 7 and 12 to test the most basic
principles in a patent case: first, the amount of Motorola’s damages (Interrogatory 12); and
second, whether its patents are valid (Interrogatory 7).
Motorola makes three faulty arguments about why it does not need to respond to these
interrogatories. First, Motorola argues that because it admits that it never marked any of its
products with its asserted patents, it need not say if its products practiced those patents. This
argument is misleading. Apple is entitled to the factual basis for any damages Motorola claims.
As explained in Apple’s opening brief, Motorola is not entitled to pre-suit damages if it practiced
its patents without marking. Thus, Motorola must identify its embodying products to determine
whether it may seek pre-suit damages. Second, Motorola takes the position that it is required to
identify only the embodying products it will rely on to show commercial success. But evidence
of the commercial failure of any embodying products is equally probative of the value of
Motorola’s patents. Third, Motorola argues that it does not need to produce information about
the first sale or public use of its asserted patents, even though this information could invalidate
the patents. Apple is entitled to learn if any invalidating embodiments of the patents-in-suit were
sold or in public use more than a year before the applications were filed.
II.

ARGUMENT
A.

Interrogatory 12 Seeks Information Required to Determine if Motorola May
Claim Six Years of Pre-Suit Damages

Motorola argues that Apple should not need any discovery beyond its admission that it
failed to mark its products with its asserted patents. See Opp’n at 4. But Motorola’s failure to

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mark is only half the story. Information about marking is useless without the identification of
products sought by Interrogatory 12. If Motorola practiced its own patents and did not mark
them with the patent numbers, it cannot seek damages until it can prove that it gave Apple actual
notice of infringement. See 35 U.S.C. § 287(a). On the other hand, if Motorola did not practice
its own patents during the six years before it brought the claims in this case, it had no obligation
to mark, and marking has no impact on damages. Motorola’s Opposition makes clear that
Motorola itself has no idea whether it is entitled to have what it asks for—damages during the six
years before its complaint—because it has not investigated whether or not it had an obligation to
mark during this time. Without a substantive response to Interrogatory 12 identifying what
Motorola products embodied its asserted patents during the six years pre-suit,1 Apple is likewise
unable to answer this question. Motorola’s refusal to identify its own embodying products may
well be covering up the fact that it is not entitled to claim six years of pre-suit damages for each
of its asserted patents. Motorola should not be rewarded for hiding this relevant information.
Motorola argues that because method claims do not trigger the marking requirement,
there is no reason for it to produce information regarding “the patents from which Motorola
asserted method claims.” This is incorrect. The Federal Circuit has held that when a party has
asserted both method and system claims from a given patent (as Motorola has done in this case),
failure to mark embodying products limits damages until actual notice of infringement. See
Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., 559 F.3d 1308, 1317 (Fed. Cir. 2009)
(citing Am. Med. Sys., Inc. v. Med. Engineering Corp., 6 F.3d 1523 (Fed. Cir. 1993), holding that
failure to mark barred damages for infringement of method claims when “both apparatus and
method claims of the . . . patent were asserted.”). In the case cited by Motorola, the Federal
Circuit stated that marking is not required when “[a]ll claims of the . . . patent are drawn to a
method.” Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321, 1332 (Fed. Cir. 2010) (emphasis added).

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Although Motorola suggests throughout its brief that it has already identified some embodying
products, its actual responses to these Interrogatories name no Motorola products.

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Motorola likewise misunderstands why identification of its own embodying products is
relevant to determining a reasonable royalty under the Georgia-Pacific analysis. Motorola
admits that the commercial success of its own embodying products is relevant to determination
of a reasonable royalty. But Apple is entitled to learn about other Motorola products that may
undermine Motorola’s arguments. For example, if Motorola has products that practice its patents
but failed commercially, Apple is entitled to this information in defending the patent
infringement allegations. Therefore, this information is relevant and Motorola must produce it.
Without any testimony or evidence in support, Motorola claims that identification of its
own embodying products would be burdensome. There is a simple solution. If Motorola agrees
to give up its demand for six years of pre-suit damages, and forgo any claim to commercial
success of its asserted patents, Apple’s Interrogatory 12 might not be necessary. See Samsung
SDI Co. v. Matsushita Elec. Indus. Co., No. 05-1680, 2006 WL 5097356 (W.D. Pa. Oct. 11,
2006). But until then, this information is relevant and cannot be hidden. In Samsung, the
defendant sought identification of all embodying products that practiced the Patents-in-Suit. Id.
at *1. The court denied the request because it found it too burdensome “given its remote
relevance to the case.” Id. Specifically, the court stressed that the plaintiff would not “rely[] on
the assertion that its own [products] practice[] any of the claimed inventions,” that it would “rely
only on the date of actual notice for damages in lieu of marking,” and that it “would not urge
commercial success as a factor in the analysis of a . . . reasonable royalty.” Id. Unlike the
plaintiff in Samsung, Motorola wants it both ways: it wants the maximum possible damages
recovery without revealing whether it is entitled to claim it, and it wants to rely on its successful
products while hiding any less-successful embodying products. This isn’t how discovery works.
Motorola is obliged to produce all relevant information, not just the information that helps its
case.
Motorola attempts to identify an inconsistency in Apple’s position by citing to Apple’s
arguments in another case. See Opp’n at 6-7 (citing briefing submitted in Eastman Kodak Co. v.
Apple Inc., No. 10-cv-06022 (W.D.N.Y)). Motorola has mischaracterized the discovery request
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at issue and Apple’s opposing arguments. In fact, Apple’s arguments here and in Kodak are
consistent. After Apple had identified its own embodying products, Kodak moved to compel a
universe of discovery, including “materials related to any product embodying any of the
inventions claimed in the Asserted Apple Patents, and the design, development, and manufacture
of any technology or product embodying any of the inventions claimed in the Asserted Apple
Patents.” See Elihu Decl. ISO Opp’n (Dkt. 230-1), Ex. B at 19. In contrast, here, Apple has
simply asked Motorola to identify those of its products that practice its asserted claims. In
Kodak, Apple acknowledged that the Facebook case ordered exactly this discovery, “the names
of the products embodying the asserted claims of the patent in suit and an identification of which
claims the products practice.” Id. (citing Leader Techs. v. Facebook Inc., No. 08-862-JJF-LPS,
2009 WL 3021168 (D. Del. Sept. 4, 2009)).
B.

Interrogatory 7 Seeks Identification of a Small Number of Motorola
Products, Information Which Could Invalidate Motorola’s Asserted Patents

Motorola misstates the law when it suggests that it can circumvent the requirements of 35
U.S.C. § 102(b) by relying on a priority date of no more than a year before each of its patent
applications was filed. The priority date claimed by Motorola is unrelated to an inquiry of
whether its patent is invalid under Section 102. Section 102 sets forth one of the requirements
for patentability of an invention. In short, if an invention was in public use or on sale in the
United States more than a year before the date of application, then the invention may not be
patented. An inventor cannot “undo” a public disclosure or sale by later arguing that his
invention did not exist at the time the disclosure or sale was made. Such an exception would
swallow the rule. Any patentee would be free to ignore the one-year filing deadline (a
“condition of patentability”) and then attempt to correct the error through self-serving argument.
See In re Cygnus Telecomms. Tech., LLC, Patent Litig., 536 F.3d 1343, 1353 (Fed. Cir. 2008)
(affirming invalidation of a patent based on a commercial sale more than one year before the
application was filed, and rejecting the inventor’s arguments that his invention was not reduced
to practice at the time of the sale).

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Motorola argues that it “is not relying in this case on a conception and reduction to
practice date earlier than one year before filing of the patent application.” Opp’n at 9 (emphasis
added). Motorola does not say that it couldn’t rely on earlier dates, only that it is choosing not to
“in this case.” Motorola is free to make this choice, but the conclusion it draws from this
decision—that no embodiment of the patented inventions could have existed before its chosen
dates—does not follow. Just because Motorola has elected not to rely on earlier dates of
invention does not mean that Motorola did not sell or publicly use the invention more than one
year before filing its patent application. In other words, a patent-invalidating disclosure of the
inventions may have occurred, and Apple is entitled to know if it did.2
Motorola’s complaints about the burden of conducting this discovery are overstated. For
each patent-in-suit, the “first” event (manufacture, use, offer for sale, and sale) can occur only
once. Identifying witnesses with knowledge, the date of the event, the price of any sale, and
documents on which Motorola relies for its answer may require some effort, but no more than
Apple had to do to respond to Motorola’s mirror Interrogatory 11 (which sought all the same
categories of supporting information). In fact, Motorola’s request went further, as it asked Apple
to identify the first confidential disclosures of its first embodiments. See DiMuzio Decl. ISO
Motion to Compel (Dkt. No. 225-1) Ex. 4. Apple responded completely to this interrogatory.
Motorola’s actions highlight that it views discovery as a one-way street. It can demand
any information from Apple while producing only limited information and claiming that any
damaging information is overly burdensome. This frustrates discovery and prevents Apple from
properly defending against Motorola’s allegations. Apple respectfully asks that the Court order
Motorola to provide complete answers to Apple’s Interrogatories 7 and 12.

2

Motorola’s argument that Apple did not fulfill is meet-and-confer obligations is simply wrong.
As stated in the DiMuzio Declaration ISO Motion to Compel, counsel for Apple and Motorola
met on January 18, 2012 to discuss Motorola’s failure to supplement numerous interrogatories,
including Nos. 7 and 12, and Motorola stated it would not supplement either response. DiMuzio
Decl. (Dkt. No. 225-1) at ¶ 5; See also Ho Decl. (Dkt. No. 224-1) at ¶ 19, Ex. T, and ¶ 20.

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Dated: February 9, 2012

WEIL, GOTSHAL & MANGES LLP

_/s/ Christopher R. J. Pace __________
Christopher R. J. Pace
[e-mail]
Edward Soto
[e-mail]
WEIL, GOTSHAL & MANGES LLP
1395 Brickell Avenue, Suite 1200
Miami, FL 33131
Telephone: [phone]
Facsimile: [phone]
Attorneys for Apple Inc.

OF COUNSEL:
Matthew D. Powers
[e-mail]
Steven Cherensky
[e-mail]
Tensegrity Law Group LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: 650-802-6001

Mark G. Davis
[e-mail]
WEIL, GOTSHAL & MANGES LLP
1300 Eye Street, N.W., Suite 900
Washington, DC 20005
Telephone: [phone]
Facsimile: [phone]

Jill J. Ho
[e-mail]
WEIL, GOTSHAL & MANGES LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: [phone]

Robert T. Haslam
[e-mail]
COVINGTON & BURLING LLP
333 Twin Dolphin Drive, Suite 700
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: [phone]
Robert D. Fram
[e-mail]
Christine Saunders Haskett
[e-mail]
Samuel F. Ernst
[e-mail]
COVINGTON & BURLING LLP

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One Front Street
San Francisco, CA 94111
Telephone: [phone]
Facsimile: [phone]

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CERTIFICATE OF SERVICE
I hereby certify that on February 9, 2012, I filed the foregoing document with the Clerk
of the Court. I also certify that the foregoing document is being served this day on all counsel of
record identified on the attached Service via CM/ECF.
/s/ Christopher R. J. Pace
Christopher R.J. Pace (Fla. Bar No. 0721166)

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SERVICE LIST
Motorola Mobility, Inc. vs. Apple Inc.
Case No. 1:10cv023580-Civ-RNS-TEB
United States District Court, Southern District of Florida

Edward M. Mullins
Fla. Bar No. 863920
[e-mail]
ASTIGARRAGA DAVIS MULLINS & GROSSMAN, P.A.
701 Brickell Avenue, 16th Floor
Miami, FL 33131
Telephone: [phone]
Facsimile: [phone]
Attorneys for Motorola Mobility, Inc.
Of Counsel:
Charles K. Verhoeven
David A. Perlson
Anthony Pastor
QUINN EMANUEL URQUHART & SULLIVAN, LLP
50 California Street, 22nd Floor
San Francisco, CA 93111
[phone]
Raymond N. Nimrod
Edward J. DeFranco
QUINN EMANUEL URQUHART & SULLIVAN, LLP
51 Madison Avenue, 22nd Floor
New York, NY 10010
[phone]
David A. Nelson
QUINN EMANUEL URQUHART & SULLIVAN, LLP
500 West Madison Street, Suite 2450
Chicago, IL 60661
[phone]
[e-mail]
Attorneys for Motorola Mobility, Inc.

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