Motorola Mobility, Inc. v. Apple, Inc.

Filing 270

RESPONSE in Opposition re 260 MOTION to Compel Rule 30(b)(6) Deposition Testimony From Apple filed by Apple, Inc.. (Pace, Christopher)

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.

APPLE’S OPPOSITION TO
MOTOROLA’S MOTION TO COMPEL RULE 30(b)(6)
DEPOSITION TESTIMONY FROM APPLE

TABLE OF CONTENTS

Introduction ..................................................................................................................................... 1 
I. 

Statement of Facts ................................................................................................................... 1 
A. 

30(b)(6) Testimony Regarding Email Notifications ............................................... 1 

B. 

30(b)(6) Testimony Regarding Source Code for MobileMe Webmail ................... 2 

II.  Argument ................................................................................................................................ 3 
A. 

Motorola Has Not Accused Email Notifications and is Therefore Not Entitled to a
30(b)(6) Witness ..................................................................................................... 3 
1. 
2. 

A user clicking on an address while reading an email in OS X is not iOS
email notifications. ...................................................................................... 5 

3. 

A button visible while reading a text message is not email notifications. .. 6 

4. 
B. 

A user tapping on an address while reading an email is not email
notifications................................................................................................. 5 

Motorola is legally precluded from accusing the email notification
functionality. ............................................................................................... 7 

Motorola is Not Entitled to an Additional 30(b)(6) Witness on MobileMe Because
Apple Provided the Requested Source Code in a Timely Manner. ........................ 8 
1. 
2. 

Apple responded in a timely manner to Motorola’s requests for source
code. ............................................................................................................ 8 

3. 
III. 

Motorola was not diligent in seeking the relevant MobileMe source code. 8 

Apple provided extremely rapid access to the relevant MobileMe source
code. ............................................................................................................ 9 

Conclusion ........................................................................................................................ 10 

i

I.

INTRODUCTION
Motorola seeks to compel Apple to provide additional Rule 30(b)(6) testimony on two

separate grounds, neither of which has merit. First, Motorola demands that Apple provide a
witness for deposition regarding a functionality in Apple’s products that is not accused of
infringement and is therefore irrelevant to this case.
Second, Motorola demands that Apple provide an additional witness for deposition
regarding Apple’s MobileMe service, despite the fact that Apple has already provided such a
witness, on the grounds that Apple produced certain source code files to Motorola the day before
that deposition. Motorola neglects to mention that Motorola only requested these source code
files two days before the deposition (one day before Apple produced them). Apple went to great
lengths to collect the source code and produce it in less than 24-hours after Motorola’s request.
Motorola has no basis to complain about the timing of the production. Moreover, Apple has
already offered Motorola an additional deposition on these source code files, thus rendering moot
this aspect of Motorola’s motion.
II.

STATEMENT OF FACTS
A.

30(b)(6) Testimony Regarding Email Notifications

Motorola asserts that its ’161 patent covers the functionality by which an Apple device,
upon receiving a message, checks the sender’s address against the device’s address book and
then takes certain actions.




In particular, Motorola accuses the following three functionalities:
1

In iOS, when the user taps on an unknown address while
reading an email, the user can add that address to the address
book.
In OS X, when the user clicks on an unknown address while
reading an email, the user can add that address to the address
book.
In iOS, when the user is reading a text message from an
unknown sender, the device displays a button that allows the
user to add that sender to the user’s contacts list.

See Motorola Motion to Compel (“Mot. to Compel”), Ex. C at 10-13.
1

iOS is the operating system used by Apple iPhone and iPad devices. OS X is the operating
system used by Apple laptops and desktop computers. Although the two are related, they run
different operating system and application software, including different mail applications. Only
iOS-based phones support text messaging (“SMS”).
1

Apple designated Dr. Cris Baray as a 30(b)(6) witness to testify about the operation of
Apple’s products “as they relate to the email functionalities accused in Motorola' s infringement
contentions for the ‘161 patent.” Mot. to Compel, Ex. A at 1. During Dr. Baray’s deposition,
Motorola asked him a number of questions about “email notifications.” See id., Ex. B. “Email
notifications” are a separate functionality, available only in iOS 5,2 and unrelated to the
functionalities described in Motorola’s infringement contentions. Dr. Baray, who had not been
designated to testify on this topic, could not discuss it. See id.
Motorola subsequently requested that Apple designate another 30(b)(6) witness to testify
about email notifications. As this functionality is not accused of infringing any Motorola patent
in this case, Apple did not designate such a witness on an issue outside the scope of this
litigation. Motorola then filed the instant motion to compel Apple to designate such a witness.
B.

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

In this litigation, Motorola asserts that its ’531 patent covers part of the email
functionality provided by Apple’s MobileMe service. In December 2010, Motorola served
document requests, which included a number of extremely broad and vaguely worded requests
for source code. See Mot. to Compel, Ex. D. In addition to objecting to these requests as overly
broad and unduly burdensome, Apple agreed to produce responsive, non-privileged documents.
See id., Ex. E. Over the course of this litigation, the parties have met and conferred a number of
times in order to clarify and narrow the scope of these requests, including requests for source
code related to the functionalities accused of infringing the ’531 patent. Haskett Decl. ¶ 1.
On two occasions (January 5 and January 20, 2012), Motorola was scheduled to depose
Apple engineer Phil Peterson on topics that included source code related to MobileMe Rules, and
on both occasions, Motorola cancelled the deposition. Haskett Decl. ¶ 2. On February 1, 2012,
one week before the third scheduled deposition of Mr. Peterson, Motorola first requested “[t]he
web application code that creates and handles the user interface and application logic for editing
2

iOS 5 is version 5 of the iOS operating system for iPhone and iPad devices. Both iOS 4 and
iOS 5 contain the functionality accused in Motorola’s infringement contentions as described
above. However, only iOS 5 supports the notification functionality at issue here.
2

Junk Mail filtering settings, and for creating mail rules” and requested a meet and confer for two
days later, on Friday, February 3. Mot. to Compel, Ex. G at 1-2.
During the Friday meet and confer, Apple’s counsel explained that
and therefore asked for further explanation of
the request. Haskett Decl. ¶ 3. Motorola responded that it could not provide that explanation,
but would attempt to do so the following Monday, February 6, 2012. Id.; Korhonen Declaration
in Support of Motorola’s Motion to Compel (“Korhonen Decl.”) ¶ 1; Mot. to Compel, Ex. I at 1.
During the Monday meet and confer, Motorola narrowed its request and Apple agreed to produce
the narrower set of source code that is the subject of this dispute. Mot. to Compel, Ex. I at 1.
Apple provided this code for inspection the next day, Tuesday, February 7. Korhonen
Decl. ¶ 1; Mot. to Compel, Ex. I at 1. Immediately after doing so, Apple offered to waive the
normal 24-hour notice requirement for access to the source code so that Motorola could review
the code before Mr. Peterson’s deposition. Motorola did not review the code or make any further
requests regarding review of the code before Mr. Peterson’s deposition. Haskett Decl. ¶ 4. On
February 8, 2012, Motorola deposed Mr. Peterson for the full 7 hours permitted under the FRCP.
Motorola then filed the instant motion to compel additional 30(b)(6) testimony.
III.

ARGUMENT
A.

Motorola Has Not Accused Email Notifications.

Because email notifications have not been accused by Motorola of infringing any of its
patents at issue in this case, Motorola is not entitled to deposition testimony regarding that
functionality. Motorola’s Rule 30(b)(6) deposition notice sought testimony on:
59. The operation, structure, function, and implementation of
capabilities in Apple's Accused Instrumentalities, including the
source, operation, and implementation of Operation Code therein.
60. The file name(s) and directory location(s) for the source code
referenced in Topic 59.
Mot. to Compel, Ex. A at 17 (emphasis added). 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.” Mot. to Compel at 3; see also id., Ex. A.

3

During Dr. Baray’s February 16 deposition, Motorola asked a series of questions of Dr.
Baray relating to the email notification functions in iOS 5. Because the email notification
functionality is nowhere mentioned in the infringement contentions for the ’161 patent,3 Dr.
Baray was not prepared to testify about that functionality.

See, e.g., Mot. to Compel, Ex. B
at 41:2-10, 55:5-11, 55:15-56:2, 56:25-4, 57:15-22.
As Dr. Baray noted in his deposition,

See
Mot. to Compel at 3; id., Ex. B at 40:4-6.4 This functionality alerts users when a new email has
come in, and occurs completely separately from, and is unrelated to, the process by which a user
reads an email. See Mot. to Compel, Ex. B at 61:8-20.
Notably, in support of its contention that Motorola has accused this functionality,
Motorola’s motion contains only a single citation to their infringement contentions, and that cites
generally to 4 pages of the contentions without a single quote: “Motorola’s infringement
contentions are directed, in part, at this functionality. Ex. C, at 10-13.” Mot. to Compel at 4.
Not once in these four pages of Motorola’s infringement contentions, however, is the email
notification functionality mentioned, discussed, or described. See id., Ex. C. at 10-13. Rather, in
3

Infringement contentions provide detailed assertions about what the plaintiff contends infringes
an asserted patent. As described below in detail, in December 2011, Judge Ungaro struck
Motorola’s attempt to supplement its contentions, holding that the court had ordered that final
contentions be served by June 1.
4
In its motion, Motorola follows this quote with a statement that “[t]his notification feature
indicates that iOS devices running iOS 5 check the address book whenever a 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 Motion to Compel
Rule 30(b)(6) Deposition Testimony from Apple at 3-4. However, Motorola does not provide
any citations for this assertion, presumably because Motorola has adduced no evidence—
including simple user testing—that it does so and because Dr. Baray testified at deposition
Mot. to Compel, Ex. B at 55:4-11.
4

the infrin
ngement contentions, Mo
otorola ident
tifies three s eparate functionalities th are accus
hat
sed
of infringing the ’161 patent, all of which are completel y separate and different f
e
from the ema
ail
notification functionality. In par
rticular, each of the accused function
h
nalities occur while a us is
rs
ser
already reading the message in question, and only one of the three even applies t email on i
q
d
f
to
iOS
devices. As a result, none of these is or inclu
udes email notifications.
1. A user tapping on an addr while re
g
ress
eading an email is not em
mail
notifications.
First, Motorola identifies tapping on an email add
a
dress in an open email:
( 1 ) Where the se
econd portab messagin g unit is an Apple iPhon
ble
ne,
iPad, or iPod Touch, after receiving an e mail's address informatio
on
ion), the use of the sec ond portable messaging
er
e
(address informati
unit can check to determine whether infor
w
rmation identical to the
email address info
ormation is stored in the Contacts Ap (the
s
pp
address book) of that Apple iP
t
Phone, iPad , or iPod Tou If not,
uch.
the Apple iPhone, iPad, or iPo Touch cre
,
od
eates a prompt screen
upon user selectio of the ema address, which allow the user to
on
ail
ws
o
select the email ad
ddress and either create a new contact or add it t
to
an existing contac
ct:

Id. at MOTO-APP
PLE-000603
37953_12675
51.
Motorola Motion to Compel, Ex. C. at 10-11. As cited by Motorola, this functio
onality requir
res
that the user “[t]ap the message, and, if neces
ssary tap De
etails to see the recipient Then tap a
ts.
name ….” Id. This is therefore not the emai notification functional
n
il
lity.
2. A user clicking on an addr while r eading an email in OS X is not iOS e
g
ress
email
notifications.
Second, Motorola identifi clicking on an email address in an open ema on a comp
fies
ail
puter
running OS X:
O
2) Where the seco portable messaging unit is an Apple
ond
Computer, after re
eceiving an email’s addr
e
ress information (address
information), the user of the second porta
u
s
able messagin unit can
ng
check to determin whether in
ne
nformation i dentical to the email
address informatio is stored in the Addre Book Application (th
on
ess
he
address book) of that Apple Computer. If not, the Apple Compute
t
C
f
er
creates a drop-dow list upon user selectio of the email address,
wn
on
from which the us can creat a new co ntact or add it to an
ser
te
existing contact:

5

ple
er
Screenshot of App Compute Screen, t aken May 9, 2011,
MOTO-APPLE-0
0006037953_
_126641.
Mot. to Compel, Ex. C. at 11-12. First, this accused func
C
.
a
ctionality is once again b
based on an
email that is already open. Second, this func
ctionality is an OS X “Apple Compu
uter,” not an iOS
device for which Motorola argue notificatio are accu sed. This, also, is theref
es
ons
fore not the e
email
notification functionality.
3. A button visible while read
ding a text message is not email not
tifications.
Finally, Motorola identifi the displa of an “Add to Contacts” button w
ies
ay
when viewing a
g
received text message (“SMS”):
(2) [sic] Where a text message containin g address info
t
e
formation
(address informati
ion) is receiv by a sec
ved
cond Apple i
iPhone
(second messagin unit), the user of the se
ng
u
econd portable messagin
ng
unit can check to determine whether infor
w
rmation identical to the
email address info
ormation is stored in the Contacts Ap (the
s
pp
address book) of that Apple iP
t
Phone. If not the Apple iPhone
t,
creates a prompt screen upon user selectio of the email address,
s
on
which allows the user to selec the email address and either create a
u
ct
e
new contact or ad it to an exi
dd
isting conta ct:

6

See iPhone 4 Screenshots, taken January 3, 2011, MOTO-APPLEp0006037953_126643 (arrows and labels added).
Mot. to Compel, Ex. C. at 12-13. First, as above, this only accuses functionality in messages that
have already been opened by the user. Further, the above functionality is related to SMS
messages, and not to emails. Dr. Baray was only designated to testify on “email functionality,”
and Motorola seeks to compel testimony “regarding the email notification function.” The email
notification function is separate and unrelated to the “Add to Contacts” button when reviewing a
text message. Moreover, email and text messaging are separate applications.
4. Motorola is legally precluded from accusing the email notification
functionality.
On December 6, 2011, Judge Ungaro granted Apple’s motion to strike a set of
“Supplemental Infringement Contentions” put forth by Motorola in October 2011, over four
months after the court-ordered June 1, 2011 deadline. Order Granting Motion to Strike, Dkt.
198. It is undisputed that the email notification functionality did not exist until iOS 5, which was
first previewed to the public on June 6, 2011, and released on October 12, 2011, both of which
are after the deadline to supplement infringement contentions. Motorola cannot argue in good
faith that when it served its infringement contentions on May 18, 2011, see Cathleen Garrigan
Declaration in Support of Mot. to Compel ¶ 3, it was accusing functionality that was
unannounced to the public. The email notification function was not available for almost five
months after Motorola served its infringement contentions. In any event, under Judge Ungaro’s
order, Motorola’s infringement contentions are final and Motorola is precluded from accusing
additional products or functionality.5
In sum, Motorola has not accused—and cannot accuse—the email notification
functionality. Testimony on functionality that Motorola has not accused is not reasonably
calculated to lead to admissible evidence, and Motorola is not entitled to a designated 30(b)(6)
witness on functionality which is not alleged to infringe. See Fed. R. Civ. P. 26(b)(1).

5

The “Supplemental Infringement Contentions” Motorola sought to use are identical to the
original contentions with respect to the pages cited by Motorola in its motion. See Motorola
Supplemental Infringement Contentions at 12-15, Dkt 160.
7

Therefore, the Court should deny Motorola’s motion to compel production of a 30(b)(6) witness
on any topics relating to email notifications.
B.

Motorola is Not Entitled to an Additional 30(b)(6) Witness on MobileMe
Because Apple Provided the Requested Source Code in a Timely Manner.

Because Apple provided access to the MobileMe webmail source code as soon as it was
requested—and indeed, went out of its way to make the code available as quickly as possible for
use at deposition—Motorola is not entitled to an additional deposition.
1. Motorola was not diligent in seeking the relevant MobileMe source code.
Motorola points out that it discovered that Apple had not produced the source code in
question during the week before Mr. Peterson’s February 8 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.6
Mot. to Compel at 6. However, Motorola does not mention that this was the third time that Mr.
Peterson had been scheduled to be deposed on these topics, that Motorola had cancelled both
previous scheduled dates, and that the previously scheduled date was January 20—before
Motorola even reviewed the MobileMe source code production. Haskett Decl. ¶ 2; Mot. to
Compel, Ex. F at 1-2. If any of the previous depositions had gone forward as planned, Motorola
would likely not even have reviewed the code, let alone notified Apple of perceived deficiencies.
2. Apple responded in a timely manner to Motorola’s requests for source code.
After reviewing the source, on Wednesday, February 1—exactly a week before Mr.
Peterson’s third scheduled deposition—Motorola notified Apple of nineteen perceived
deficiencies in Apple’s source code production on various topics and included a request for
“[t]he web application code that creates and handles the user interface and application logic for
editing Junk Mail filtering settings, and for creating mail rules.” Mot. to Compel, Ex. G at 1-2.
6

Motorola’s initial Requests for Production were overbroad and provided Apple with no
guidance as to which source code—out of the enormous quantities of source Apple possesses—
was sought. As a result, extensive meet and confer discussions were required in order for Apple
to determine which code it was that Motorola was legitimately seeking.
8

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.”
Mot. to Compel at 6-7. However, as described above, Apple produced the code in a timely
fashion, and as Motorola notes, it was their expert’s unavailability rather than any printing delay
that prevented it from examining the source code in time. See id. Apple should not be now
punished for a circumstance—unavailability of Motorola’s expert—beyond Apple’s control.
Further, to the extent Motorola blames the protective order for its inability to make use of
the source code, it neglects to mention that immediately after informing Motorola of the source
code’s availability, Apple explicitly waived the notice period required under the protective order:
To be clear, even though Motorola has not given the requisite 24hour notice that it intends to inspect Apple's source code today, we
will waive the notice requirement if you or your experts wish to
inspect source code this afternoon.
Haskett Decl., Ex. 1 at 1. To the extent it believed that there would be a delay in printing,
Motorola did not request any additional waiver, see id. ¶ 4, and as it admits, any perceived
inability to print did not affect its ability to review or make use of the source code.
Finally, notwithstanding the fact that Apple diligently and timely responded to
Motorola’s belated and last-minute request for additional source code, in an effort to resolve this
dispute between the parties, Apple has offered Motorola an additional one-hour deposition
limited to questions relating to the webmail source code produced on February 7. One hour is
more than sufficient time for Motorola to be able to ask questions about the source code in
question. Further, Mr. Peterson’s deposition on February 8 consisted of 7 hours and 2 minutes of
testimony on the record. Accordingly, Apple has offered an hour over the time Motorola would
have had, consistent with the 7-hour limit on depositions, if they had asked Mr. Peterson about
the source code at the deposition. Accordingly, in light of this offer, Motorola’s motion should
be denied as moot, in any event.
IV.

CONCLUSION
For the foregoing reasons, the Court should deny Motorola’s Motion to Compel.

10

Dated: March 16, 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
555 Twin Dolphin Drive, Suite 360
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
One Front Street

11

San Francisco, CA 94111
Telephone: [phone]
Facsimile: [phone]

12

CERTIFICATE OF SERVICE
I hereby certify that on March 16, 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 ECF.
/s/Christopher R. J. Pace
Christopher R.J. Pace (Fla. Bar No. 0721166)

13

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.

14