Motorola Mobility, Inc. v. Apple, Inc.

Filing 260

MOTION to Compel Rule 30(b)(6) Deposition Testimony From Apple by Motorola Mobility, Inc.. Responses due by 3/26/2012 (Attachments: # 1 Affidavit M. Korhonen, # 2 Affidavit C. Garrigan, # 3 Exhibit A, # 4 Exhibit B, # 5 Exhibit C, # 6 Exhibit D, # 7 Exhibit E, # 8 Exhibit F, # 9 Exhibit G, # 10 Exhibit H, # 11 Exhibit I)(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 MOTION TO COMPEL RULE 30(b)(6)
DEPOSITION TESTIMONY FROM APPLE
AND ACCOMPANYING MEMORANDUM OF LAW IN SUPPORT

Pursuant to Federal Rule of Civil Procedure 30(b)(6), 37(a) and S.D. Local Rule 26.1,
Plaintiff and Counterclaim Defendant Motorola Mobility, Inc. (“Motorola”) respectfully moves
this Court to compel Defendant and Counterclaim Plaintiff Apple Inc. (Apple”) to produce
proper Rule 30(b)(6) testimony relating to Rule 30(b)(6) First Notice Topics 59 and 60 regarding
the email notification function for iOS 5 and the source code for the webmail functionality of
Apple’s accused MobileMe product.
I.

PRELIMINARY STATEMENT
Motorola brings this motion seeking 30(b)(6) witnesses on behalf of Apple relating to

Apple products accused of infringing U.S. Patent Nos. 6,377,161 (“the ’161 patent”) and
6,101,531 (“the ’531 patent”). Apple cannot be permitted to deny Motorola testimony directly
related to Motorola’s allegations that Apple infringes these two patents.
The '161 patent describes an invention for facilitating the exchange of address
information between mobile devices. Motorola alleges, in part, that the Apple accused devices
infringe the ‘161 patent because after Apple’s accused devices receive an email, they check the
sender's email address against email addresses stored in the receiving device’s address book to
see if the sender's email address is already associated with an existing contact. Then, depending
on the result of that address book check, the accused devices process the address information in a
predetermined manner, including, but not limited to, by offering the user the option to add the
address to their contacts or viewing the sender's contact information.
Apple provided Dr. Cristobal Baray as a 30(b)(6) witness on Apple’s products relating to
those email functions. During his deposition, Dr. Baray testified that devices running Apple iOS
5 offer notifications for new email messages, including summary information for those

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messages. However, other than testifying that such notifications exist, Dr. Baray was unable to
provide much, if any, additional information regarding how they function or whether the device
checks its address book. Motorola has twice requested Apple to provide an additional corporate
representative witness to testify on this Topic, but Apple has refused – claiming that the email
notification functions are not accused of infringing the '161 patent. But, that is not correct—they
are accused.
Accordingly, Apple should be compelled to provide a corporate designated witness
prepared to testify regarding the email notifications on devices running iOS 5.
Apple likewise cannot deny Motorola 30(b)(6) testimony relating to the webmail
application of Apple's accused MobileMe service. Apple designated a witness to testify on the
source code for MobileMe, including webmail. But despite Motorola's requests, Apple did not
grant access to the source code until the day before the Rule 30(b)(6) deposition on MobileMe.
By that time, it was too late for Motorola to use the source code at deposition. The Protective
Order requires that Motorola review the source code at the office of Apple’s counsel and select
the pages it wants printed, at which point Apple has two business days to deliver the printed
pages. There was no way for Motorola’s expert, or anyone else, to review the source code and
identify and print relevant portions in time for the deposition of Apple’s witness.
The MobileMe webmail source code is highly relevant, under Apple's control, and its
production imposes almost no burden on Apple. Apple had no excuse for failing to provide that
source code in time for deposition. Motorola therefore respectfully requests that the Court enter
an order compelling Apple to provide a 30(b)(6) witness on the webmail source code.

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II.

STATEMENT OF FACTS
A.

30(b)(6) Testimony Regarding Email Notifications

Motorola's Deposition Notice to Apple. On July 27, 2011, Motorola served on Apple its
Notice of Deposition of Apple, Inc. pursuant to Federal Rule of Civil Procedure 30(b)(6). That
notice included topics seeking information about Apple’s accused products, including the
following topics 59 and 60:
59.
The operation, structure, function, and implementation of capabilities in
Apple’s Accused Instrumentalities, including the source, operation, and
implementation of Operation Code therein. [Operation code was defined to
include source code.]
60.
The file name(s) and directory location(s) for the source code referenced
in Topic 59.
See Ex. A.1, 2
Apple designated Dr. Baray to testify regarding topics 59 and 60 “as they relate to the
email functionalities accused in Motorola’s infringement contentions for the ‘161 patent,” and
Motorola took his deposition on February 16, 2012.
Deposition of Dr. Baray. At his deposition, Dr. Baray testified that for devices running
iOS 5, when a new email is received, the devices “can have summary information displayed in
the lock screen or as an alert, or displayed as a banner.” Ex. B, Baray Tr. at 40:5-6.3 This
notification feature indicates that iOS devices running iOS 5 check the address book whenever a
1

"Ex __" refers to the exhibits attached to the declaration of Cathleen G. Garrigan filed
in support of this motion.
2

Because Apple’s failure to designate a witness on the topic and failure to provide source
code in time constitutes a failure to provide discovery as opposed to an objection to discovery,
there is no ability to set forth the question and objection as required for certain motions to
compel.
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For the record, Motorola filed a redacted copy of this Motion on March 9, 2012, and
redacted material that had been designated Confidential by Apple pursuant to the Court’s
Protective Order. (DE67.) On March 12, 2012, Motorola filed an unredacted version under seal.

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new email is received in order to provide contact information for the sender as part of the
summary information that is included with notifications for new emails. Motorola’s
infringement contentions are directed, in part, at this functionality. Ex. C at 10-13. Dr. Baray
testified that the team he supervises at Apple handles source code relating to email on iOS
devices, and he admitted that that “a person on my team” worked on the source code that relates
to the notifications. Ex. B, Baray Tr. 55:15-17.
While Dr. Baray identified the existence of these email notifications, he stated he was not
prepared to testify about them:
Q Right. And also with respect to emails, you were not prepared to testify
regarding notification function with respect to email, right?
A It was not a topic, yeah, that I was prepared for.
Ex. B, Baray Tr. 170:25-171:4. And while Dr. Baray acknowledged that there were two ways
the email notifications could provide the name of the sender, he did not know which approach
iOS 5 used—whether the system checks the address book to see if the sender’s email address
was present in the address book or uses whatever display name is included with the email
address, if any. Id. at 57:17-58:13; 55:9-11 (“I’m not sure if it is – if we do the same address
book check or not.”). Nor, could Dr. Baray say which source code files were responsible for the
notification feature. Id. at 56:3-6.
Nevertheless, Apple refused at Dr. Baray’s deposition to give Motorola a witness on the
notification issue, and Apple maintained that refusal when the parties met and conferred on the
issue on February 24. While Apple contended this notification is not accused, this is not correct,

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as discussed above. Given Apple’s position on the matter—and the rapidly approaching close of
fact discovery on March 284—is forced to bring this motion to compel.
B.

30(b)(6) Testimony Regarding Source Code For MobileMe Webmail

Motorola's Infringement Contentions. Motorola Mobility filed the complaint in this
lawsuit, accusing Apple of infringing six of its patents, including the ‘531 patent. The ‘531
patent relates to methods for sending data, such as email messages, over a wireless network, in
which a server filters the data based on user-selected criteria. For example, a user could select
that emails from certain senders all be filtered into a folder for junk mail, instead of the user's
inbox, and a server would apply that criteria to filter emails sent to the user.
Motorola's Requests For Source Code. Motorola has diligently sought production of the
portions of Apple’s source code relating to the methods recited in the ‘531 patent claims and
discovery related thereto. On December 29, 2010, Motorola served its First Set of Request for
Production to Apple seeking production of, among other things, Apple source code relevant to
the functionalities of the accused products. See Ex. D at Request Nos. 1, 56, 64, 66, and 67. On
January 31, 2011, Apple agreed to produce "responsive, non-privileged documents" in response
to Request Nos. 56, 64, 66, and 67. See Ex. E.
On July 27, 2011, Motorola served on Apple its first Rule 30(b)(6) notice on Apple. Ex.
A. That notice included topics seeking testimony on the source code for Apple’s accused
products relating to infringement of Motorola’s patents. Topic 59 sought testimony on “the
operation, structure, function, and implementation of capabilities” in Apple’s accused products,
including the “Operation Code,” which was defined to include source code. Id. Topic 60 sought

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The Court stated at the hearing on March 9, 2010, that it would grant the parties’ joint
motion to modify certain pretrial deadlines (DE 256), including the discovery deadline form
March 16, 2012, to March 28, 2012.

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testimony on “the file name(s) and directory location(s) for the source code referenced in Topic
59.” Id. On February 6, 2012, Apple designated Phil Peterson to testify regarding Topics 59 and
60 “as they relate to the MobileMe Rules functionality, and the MobileMe junk mail filtering
functionality to the extent that Apple has information regarding that functionality, accused in
Motorola’s infringement contentions for the ‘531 patent.” Ex. F.
Apple fails to produce key source code relating to the MobileMe Rules functionality in
time for Motorola to prepare for Mr. Peterson’s deposition. During the week of January 30,
Motorola’s expert reviewed Apple source code at the office of Apple’s counsel, as Motorola
prepared for Mr. Peterson’s deposition. Motorola’s expert determined that Apple had not yet
made available source code relating to Apple’s webmail service provided as a part of the accused
MobileMe product. Motorola notified Apple on Wednesday, February 1, that while its source
code review was still ongoing, Apple needed to provide “the web application code that creates
and handles the user interface and application logic for editing Junk Mail filtering settings, and
for creating mail rules.” Ex. G. Motorola then met and conferred with Apple regarding the
source code on February 3 and February 6. Korhonen Decl. ¶ 1. It was not until February 7 that
Apple finally indicated it had made the MobileMe webmail source code available. Id.
That did not mean that Motorola had immediate access to the code. The protective order
agreed to by the parties establishes specific procedures governing source code. (D.E. 69.) Under
that protective order, Motorola could not simply take the source code and show it to Mr. Peterson
– the code must be reviewed on a laptop computer kept in a locked safe at the office of Apple’s
counsel, Weil Gotshal & Manges in Redwood Shores, California. The reviewer must identify
the particular source code files that relate to MobileMe webmail, print those files, then wait 2
business days for the printed pages to be produced by Apple. (D.E. 69.) By waiting until the

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afternoon before Mr. Peterson’s deposition, when Motorola’s expert on source code was not
available, Apple made it impossible for Motorola identify the particular files that needed to be
printed. Moreover, even if he were available, Motorola would not have sufficient time print a
hard copy, receive the production version, and show it to Mr. Peterson at his deposition.
On February 6, Motorola notified Apple that it would not be able to depose Mr. Peterson
on February 8 on the source code for webmail, and that it would need an additional deposition on
that topic. Ex. H. Apple refused to postpone Mr. Peterson's February 8 deposition, suggesting
that Motorola somehow was at fault for Apple's tardy, February 7 production. Ex. I. Motorola
requested a further deposition on the source code in multiple emails, at Mr. Peterson’s
deposition, and at a meet and confer with Apple on this issue on February 24, 2012. Korhonen
Decl. ¶ 2. Apple continues to refuse to provide this discovery to Motorola. Motorola will be
significantly prejudiced if it does not have an opportunity to depose an Apple 30(b)(6) witness
on the source code for MobileMe webmail and thus brings this motion to compel.
III.

LEGAL STANDARD
“Rule 30(b)(6) obligates the responding corporation to provide a witness who can answer

questions regarding the subject matter listed in the notice. King v. Pratt & Whitney, 161 F.R.D.
475, 476 (S.D.Fla.1995); Fed. R. Civ. P. 30(b)(6). “If the designated deponent cannot answer
those questions, then the corporation has failed to comply with its Rule 30(b)(6) obligations and
may be subject to sanctions.” Id.; Quantachrome Corp. v. Micromeritics Inst. Corp., 189 F.R.D.
697, 699 (S.D. Fla. 1990) (“Micromeritics must designate persons who have knowledge of the
matters sought by Quantachrome and must also prepare those persons so that they are able to
give complete and knowledgeable answers.”). In particular, the corporation can be required to
provide a witness to testify regarding the subject matter for which the first deponent was

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unprepared. E.E.O.C. v. Thurston Motor Lines, Inc., 124 F.R.D. 110, 114 (M.D.N.C. 1989)
(“Brown had absolutely no right under the rules to refuse to designate a witness…. The Court
now orders that the Rule 30(b)(6) deposition (and 30(b)(5) production of documents) of Brown
be conducted in accordance with such notice as the Commission may give.”).
IV.

ARGUMENT
A.

Apple Is Obligated To Provide A 30(b)(6) Witness To Testify Regarding
Email Notifications And It Refuses To Do So

Motorola’s Rule 30(b)(6) notice sought testimony on “the operation, structure, function,
and implementation of capabilities” of the instrumentalities that Motorola accused of infringing
Motorola’s ‘161 patent, including the related source code. See Ex. A at Topics 59 and 60. One
of the instrumentalities accused of infringing the ‘161 patent is the way that Apple products
process email. The email notification functionality of iOS is part of that process.
There is no dispute that the witness Apple offered on email relating to Motorola’s ‘161
patent assertions—Dr. Baray—was not prepared to testify on the operation or function of email
notifications. Ex. B, Baray Tr. at 166:3-7. Nevertheless, Apple contends that it need not provide
a witness on the email notifications because, according to Apple, the notification function is not
accused. As detailed above, however, this is false. Motorola’s infringement contentions for the
‘161 Patent are directed, in part, to the way that email functions on iOS devices. In particular,
those contentions relate to the way that email on Apple’s iOS devices processes address
information from incoming emails, including checking the address book to see if the sender's
address is stored in the address book and processing the address information in response to that
address check.
The testimony sought from Dr. Baray is reasonably calculated to lead to the discovery of
admissible evidence. Indeed, Dr. Baray’s existing testimony establishes that email notifications

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may involve checking the email address of the email’s sender against the address book. Though
he hypothesized that the notification function may not involve such a check, he admitted that he
did not know. In any event, email notifications are covered by Motorola’s infringement
contentions and therefore are covered by Motorola’s 30(b)(6) Topics 59 and 60. Apple has no
justification for its continued refusal to provide Motorola with a 30(b)(6) witness on email
notifications.
B.

Apple Should Be Compelled To Provide A 30(b)(6) Witness To Testify
Regarding The Source Code For MobileMe Webmail

Apple likewise has no basis for denying Motorola 30(b)(6) testimony on source code for
functionalities of Apple products that have been accused of infringement. Motorola is entitled to
discovery on the source code for the webmail functionality for Apple’s accused MobileMe
product. Motorola propounded document requests directed to the source code for Apple’s
accused products and a Rule 30(b)(6) notice seeking a witness on that source code. Apple does
not dispute that MobileMe, including webmail, is an accused product in this case. The source
code that determines how that webmail functions is highly probative to Motorola’s infringement
case relating to the ‘531 patent. See McKesson Information Solutions LLC v. Epic Sys. Corp.,
495 F. Supp. 2d 1329, 1334 (N.D. Ga. 2007) (requiring defendant to produce its entire source
code within ten days of order).
Apple, however, denied Motorola the opportunity to depose Apple’s 30(b)(6) witness
about that critical source code. Apple designated Mr. Peterson to testify on the source code for
Apple’s products accused of infringing the ‘531 patent, including MobileMe webmail. But,
Apple did not make the source code for that function available for Motorola’s expert to review at
the office of Apple’s counsel until the afternoon before Mr. Peterson’s deposition. That late
production meant that Motorola could not show Mr. Peterson the source code at his deposition.

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Apple’s refusal to provide deposition on that source code prejudices Motorola. Motorola
bears the burden of proving that Apple’s accused products infringe the ‘531 patent. Apple’s
30(b)(6) witness and Apple documents show that MobileMe webmail meets the limitations of the
‘531 patent claims. MobileMe webmail allows users to select criteria (called “rules”) and
modify those rules. Those rules are sent to the webmail server and the webmail server then uses
those rules to filter the user’s email. A 30(b)(6) deposition on the source code that underlines
these operations will provide further evidence of Apple’s infringement. Thus, if Apple is
allowed to deny Motorola a 30(b)(6) deposition with adequate time to review the relevant source
code , it would deprive Motorola of valuable evidence that would help meet Motorola’s burden
of proving that Apple’s products infringe the ‘531 patent. As a result, Apple should be
compelled to provide a 30(b)(6) deposition relating to the source code for MobileMe webmail.
V.

CONCLUSION
For the foregoing reasons, Motorola respectfully requests this Motion to Compel be

granted in its entirety.
CERTIFICATE OF GOOD FAITH CONFERENCE
Pursuant to Local Rule 7.1(a)(3), I hereby certify that counsel for Motorola has conferred
with counsel for Apple in a good faith effort to resolve the issues raised in the motion and has
been unable to do so.
/s/ Matthew O. Korhonen
Matthew O. Korhonen
Respectfully submitted,

Dated: March 9, 2012

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

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/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]
By:
/s/ Annette C. Escobar____
Edward M. Mullins (FBN 863920)
Annette C. Escobar (FBN 369380)
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
Matthew O. Korhonen
QUINN EMANUEL URQUHART &
SULLIVAN, LLP
865 S. Figueroa St., 10th Floor
Los Angeles, California 90017
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]

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Attorneys for Plaintiff and CounterclaimDefendants Motorola Solutions, Inc. and
Motorola Mobility, Inc.
CERTIFICATE OF SERVICE
I HEREBY CERTIFY that on March 9, 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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