Motorola Mobility, Inc. v. Apple, Inc.

Filing 275

REPLY to Response to Motion re 260 MOTION to Compel Rule 30(b)(6) Deposition Testimony From Apple [DE 270] filed by Motorola Mobility, Inc.. (Mullins, Edward)

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 REPLY IN SUPPORT OF ITS MOTION TO
COMPEL RULE 30(b)(6) DEPOSITION TESTIMONY FROM APPLE

I.

PRELIMINARY STATEMENT
In its opposition, D.E. 270, Apple does not dispute that the testimony regarding the iOS 5

email notifications relates to Apple's infringement of the '161 Patent. Instead, it attempts to
avoid discovery based on the hypertechnical argument that email notifications are somehow not
part of email functionality. But, Motorola's infringement contentions specifically call out
Apple's incoming email functionality – Apple was clearly on notice that its products were
accused and was obligated to provide appropriate discovery on them.
In addition, in opposing Motorola's request for additional deposition time regarding
MobileMe webmail source code, Apple ignores its own failure to comply with the Federal Rules
of Civil Procedure. Motorola requested the pertinent source code in 2010. That Apple neglected
to produce that code until the eve of deposition is no basis to avoid its discovery obligations. All
told, Apple's Opposition is merely an attempt to avoid a determination of this action on the
merits and should be rejected.
II.

ARGUMENT
A.

MOTOROLA'S PRELIMINARY INFRINGEMENT CONTENTIONS
ACCUSE APPLE'S EMAIL NOTIFICATION FUNCTIONALITY

In its Opposition, Apple argues that it need not provide a witness on iOS 5 email
notifications because, it asserts, email notifications are not explicitly called out in Motorola's
Preliminary Infringement Contentions (D.E. 270 at 4-7). It also argues that email notifications
could not have been accused because they were not public at the time of the contentions (D.E.
270 at 7). Apple's arguments are meritless.
Motorola has accused the email functionality that is present in all versions of iOS,
including iOS 5, of infringing the '161 patent. (Ex. C of Motorola's Motion). The notion that
"email notifications" are not specifically called out in the infringement contentions does not
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preclude it as an accused functionality. "In general, the purpose of preliminary infringement
contentions is to provide defendants with notice of infringement beyond the claim language
itself." Shurtape Techs., LLC v. 3M Co., 2011 WL 4750586 at *2 (W.D.N.C., Oct. 7, 2011).
Motorola's infringement contentions provided more than enough notice to Apple that Motorola
alleges that the email functionality in Apple's iOS devices infringes Motorola's '161 Patent.
Motorola's contentions make clear that Apple's iOS devices infringe, in part, because in response
to receiving an incoming email message, the Apple iOS devices check to determine whether the
sender's email address is stored in the device's address book. (Ex. C of Motorola's Motion at 1013). Accordingly, Apple was on notice that iOS email functionality, including performance of
address book checks in response to receiving incoming messages, was accused of infringement
and that its iOS 5 email notifications could be at issue.
Moreover, there can be no question that email notifications are within the scope of
discovery in this case. Discovery in this action is not limited to the express recitations of
Motorola's preliminary infringement contentions. In fact, "the scope of discovery may include
products and services (in this case, websites and systems) 'reasonably similar' to those accused in
the [Preliminary Infringement Contentions]." Epicrealm, Licensing, LLC v. Autoflex Leasing,
Inc., 2007 WL 2580969 at *3 (E.D. Tex. Aug. 27, 2007) (internal citations omitted); see Prism
Techs.s, LLC v. Adobe Sys., Inc., 2011 WL 6210292 at *5 (D. Neb. Dec. 14, 2011).
Here, even by Apple's own admission, (see D.E. 270 at 4), the discovery sought by
Motorola is reasonably similar to the functionalities accused in Motorola's preliminary
infringement contentions. Motorola's infringement contentions for the '161 Patent relate to the
way that Apple's iOS devices process address information from incoming emails, including by
checking the address book to see if the sender's address is stored in the address book. The iOS 5

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email notifications occur in response to receipt of incoming emails, and – based on empirical
observations – appear to include a checking of the device's address book. Accordingly, Apple
was on notice that iOS 5 email notifications are implicated by the functionality described in
Motorola's preliminary infringement contentions and are properly within the scope of discovery.
Therefore, Motorola's Motion should be granted and Apple should be compelled to
provide a 30(b)(6) witness to discuss the iOS 5 email notifications.
B.

APPLE IS ENTIRELY TO BLAME FOR THE TARDY SOURCE CODE
PRODUCTION AND MOTOROLA IS ENTITLED TO ADDITIONAL
DEPOSITION TIME ON THE MOBILEME WEBMAIL CODE

In response to Motorola's Motion, Apple attempts to justify its tardy source code
production by claiming that it "provided the requested source code in a timely manner" and
"went out of its way to make the code available as quickly as possible." (D.E. 270 at 8).
However, Apple's excuses ignore the dispositive facts – the code is relevant, within the scope of
the deposition topics, and even though Motorola requested it two years ago, Apple failed to
produce the code in sufficient time for it to be used at Mr. Peterson's deposition.
Motorola was Diligent In Seeking Apple's Source Code. Apple's first excuse for its tardy
source code production is that "Motorola was not diligent in seeking the relevant MobileMe
source code." (D.E. 270 at 8). Not so. On December 29, 2010, Motorola propounded its First
Set of Requests for Production, which included explicit requests for Apple source code. (See Ex.
D of Motorola's Motion at Request Nos. 1, 56, 64, and 67) 1 . Apple agreed to produce
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Request No. 1: All documents concerning this Action; Request No. 56: All documents
related to whether or not Apple infringes the Mobility Asserted Patents; Request No. 64: All
documents and things that support, contradict, refute, or otherwise relate to CounterclaimDefendants' allegations and contentions contained within the Complaint or Answer, Reply, and
Counterclaims, including without limitation any documents supporting Mobility's allegations
that Apple has infringed and is infringing the Mobility Asserted Patents; Request No. 67: All
documents and things concerning the research, design, development, manufacture, testing,
operation, performance, installation, marketing, use, or sale of any of Apple Accused
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"responsive, non-privileged documents" in response to these Requests. (See Ex. E of Motorola's
Motion). That Apple still had not produced this code by February 7, 2012, is more indicative of
the deficiencies in Apple's document production than it is of Motorola's diligence. Under the
Federal Rules of Civil Procedure, it is Apple's burden to produce all non-privileged, unobjectedto documents that are responsive to Motorola's Requests for Production, which, in this case, seek
all relevant Apple source code. To complain that Motorola did not point out its deficient source
code production earlier is to suggest that it is Motorola's burden to ensure that Apple complies
with the Federal Rules, which is certainly not the case. Motorola was diligent in requesting and
reviewing Apple's source code and should not be penalized for Apple's deficient productions.
Also, in support of its claims that Motorola was not diligent, Apple indicates that Mr.
Peterson was scheduled to be deposed twice before his February 8, 2012 deposition, but that
Motorola cancelled both of these depositions. The Opposition insinuates that if Mr. Peterson had
been deposed earlier, "Motorola would likely not even have reviewed the code, let alone notified
Apple of perceived deficiencies." (D.E. 270 at 8). This hypothetical argument is irrelevant – the
fact that Apple might have gotten away with a deficient document production if circumstances
had played out differently does not somehow absolve Apple of the deficiencies. Again, Apple's
argument ignores its own duties under the Federal Rules and attempts to blame its deficient
production on Motorola.
Apple's Production Efforts Were Too Little, Too Late. The remainder of Apple's
Opposition is dedicated to showing that once Motorola highlighted the deficiencies in Apple's
production, Apple "responded in a timely manner" and "provided extremely rapid access to the

Instrumentality, including without limitation all source code, documentation, manuals, and
design notes, and all revisions thereof.
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relevant MobileMe source code." (D.E. 270 at 8-9). This is untrue but, in any event, absolutely
irrelevant to the present Motion.
The fact remains that Motorola requested Apple source code in December of 2010.
Apple had a duty under the Federal Rules to produce that code in a timely manner, yet almost
two years later, it still had failed to do so. Then, after Motorola complained of these
deficiencies, Apple produced the code the day before Mr. Peterson's deposition, when Motorola's
expert was unavailable to review it. Regardless of Apple's alleged attempts to provide the source
code quickly once it had finally agreed to do so, the fact is that it moved too late. Apple did not
produce the source code in time for Motorola to identify and print the portions relating to the
webmail application to use with Mr. Peterson at his deposition. It was Apple's duty to produce
the code, and Apple's failure to do so in a timely manner that has prejudiced Motorola. The
Court should grant Motorola's Motion.
III.

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

granted in its entirety.
Respectfully submitted,

Dated: March 21, 2012

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

/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]
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[e-mail]
By:
/s/ Edward M. Mullins____
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]
Attorneys for Plaintiff and CounterclaimDefendants Motorola Solutions, Inc. and
Motorola Mobility, Inc.

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CERTIFICATE OF SERVICE
I HEREBY CERTIFY that on March 21, 2012, I served the foregoing document via
electronic mail on all counsel of record identified on the attached Service List.

/s/ Edward M. Mullins
Edward M. Mullins
SERVICE LIST
Motorola Mobility, Inc. v. Apple, Inc.
Case No.: 1:10-23580-Civ-UU
United States District Court, Southern District of Florida
Christopher R.J. Pace
[e-mail]
Edward Soto
[e-mail]
Weil, Gotshal & Manges LLP
1395 Brickell Avenue, Suite 1200
Miami, Florida 33131
Telephone: [phone]
Facsimile: [phone]
Nathan A. Greenblatt*
[e-mail]
Jill J. Ho*
[e-mail]
Jacqueline T. Harlow*
[e-mail]
Anne M. Cappella*
[e-mail]
Brian C. Chang*
[e-mail]
Weil, Gotshal & Manges, LLP
201 Redwood Shores Parkway
Redwood Shores, California 94065-1134
Telephone: [phone]
Facsimile: [phone]
Jenny C. Wu*
[e-mail]
Weil, Gotshal & Manges LLP
767 Fifth Avenue
New York, New York 10153
Telephone: [phone]

Samuel F. Ernst*
[e-mail]
Christine Saunders Haskett*
[e-mail]
Robert D. Fram*
[e-mail]
Chris Martiniak*
[e-mail]
Winslow B. Taub*
[e-mail]
Covington & Burling LLP
One Front Street
San Francisco, California 94111-5356
Telephone: [phone]
Facsimile: [phone]
Robert T. Haslam*
[e-mail]
Covington & Burling LLP
333 Twin Dolphin Drive, Suite 700
Redwood Shores, California 94065
Telephone: [phone]
Facsimile: [phone]

Matthew D. Powers*
[e-mail]
Steven S. Cherensky*
[e-mail]
Tensegrity Law Group LLP
201 Redwood Shores Parkway, Suite 401
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Facsimile: [phone]
Mark G. Davis*
[e-mail]
Weil, Gotshal & Manges LLP
1300 Eye Street, NW, Suite 900
Washington, DC 20005
Telephone: [phone]
Facsimile: [phone]

Redwood Shores, California
Telephone: [phone]
Facsimile: [phone]

*Admitted pro hac vice

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