Motorola Mobility, Inc. v. Apple, Inc.

Filing 276

NOTICE by Apple, Inc. of Filing Declaration of Jill J. Ho in Support of Apple Inc.'s Motion for Leave to File Amended Answer and Exhibits Thereto (Attachments: # 1 Affidavit Declaration of Jill J. Ho in Support of Apple Inc.'s Motion for Leave to File Amended Answer, # 2 Exhibit A, # 3 Exhibit B, # 4 Exhibit C, # 5 Exhibit D, # 6 Exhibit E, # 7 Exhibit F, # 8 Exhibit H, # 9 Exhibit I, # 10 Exhibit J, # 11 Exhibit K, # 12 Exhibit L, # 13 Exhibit M, # 14 Exhibit N, # 15 Exhibit O, # 16 Exhibit P, # 17 Exhibit Q, # 18 Exhibit R, # 19 Exhibit S)(Pace, Christopher)

EXHIBIT S

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF FLORIDA
Case No. 1:10cv023580-Civ-UU

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 NOTICE OF DEPOSITION OF MOTOROLA MOBILITY, INC.

PLEASE TAKE NOTICE that, pursuant to Rule 30(b)(6) of the Federal
Rules of Civil Procedure, Apple Inc. (“Apple”) will take the deposition of Motorola
Mobility, Inc. (“Mobility”) on July 29, 2011 at 9:00 a.m. at the offices of Weil, Gotshal
& Manges, LLP, 201 Redwood Shores Parkway, Redwood Shores, CA 94065, or at such
other time and place as the parties mutually agree. The deposition will continue from day
to day until completed, Saturdays, Sundays, and holidays excepted.

The deposition will be taken before a court reporter or other person
authorized by law to administer oaths, and it will be recorded by stenographic means
and/or videotape. The deposition will be taken for the purpose of discovery, for use in
summary judgment briefing or at trial in this matter, and for any other purpose permitted
under the Federal Rules of Civil Procedure. The scope of this deposition will likely
include questions relating to information that has been designated “Confidential Business
Information” as that term is defined in the Protective Order for this action.
Pursuant to Rule 30(b)(6), Defendants shall designate a witness or
witnesses to appear and testify at the taking of a deposition on each of the topics set forth
below. Mobility shall identify the person(s) who will testify on its behalf pursuant to this
notice and the matter(s) about which each person will testify no less than five calendar
days prior to the date of their deposition. To the extent that Mobility intends to rely on
any documents or information not yet produced in this Investigation, those documents or
that information shall be produced no less than five calendar days prior to the date for the
expected testimony.
DEFINITIONS
A.

“You,” “Your,” “Mobility,” and “Motorola Mobility” is defined to

mean and refer to Defendant Motorola Mobility, Inc. and all of its corporate locations, and
all predecessors, subsidiaries, parents, and affiliates, including without limitation Motorola
SpinCo Holdings Corp., and all past or present directors, officers, agents, representatives,
employees, consultants, attorneys, entities acting in joint-venture or partnership
relationships with the aforementioned entities, and others acting on their behalf.

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B.

“Motorola Solutions” is defined to mean and refer to Defendant

Motorola Solutions, Inc. and all of its corporate locations, and all predecessors,
subsidiaries, parents, and affiliates, including without limitation Motorola, Inc., the
Mobile Devices segment of Motorola, Inc., and all past or present directors, officers,
agents, representatives, employees, consultants, attorneys, entities acting in joint-venture
or partnership relationships with the aforementioned entities, and others acting on their
behalf.
C.

“Apple” shall mean Plaintiff Apple Inc. and its predecessor, Apple

Computer Inc., and including without limitation all of its corporate locations, and all
predecessors, subsidiaries, parents, and affiliates, and all past or present directors, officers,
agents, representatives, employees, consultants, attorneys, entities acting in joint-venture
or partnership relationships with Apple, and others acting on behalf of Apple.
D.

“Action” shall mean the above-captioned case pending before the United

States District Court for the Southern District of Florida, entitled Motorola Mobility, Inc.
v. Apple Inc. and Apple Inc. v. Motorola Mobility, Inc. and Motorola Inc., Case No.
1:10cv023580-Civ-UU.
E.

“Apple Patent(s)-in-Suit” shall mean, individually and collectively, U.S.

Patent Nos. 5,583,560, 5,594,509, 5,621,456, 6,282,646, 7,380,116, and 7,657,849.
F.

“Apple Asserted Claim(s)” shall mean, individually and collectively, the

claims of the Apple Patents-in-Suit identified in Apple’s Supplemental Response to
Interrogatory No. 6, served May 18, 2011.
G.

“Motorola Accused Set-Top Box(es)” shall mean all set-top boxes,

including but not limited to DVR boxes, that provide or operate in conjunction with an

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interactive user interface for managing or selecting programs or services (e.g., TV
programs or DVR functions), and associated hardware, including remote control devices,
and software, including user interfaces and other application software designed for use on,
and loaded onto, such devices that are designed, made, used, developed, researched,
tested, sold, offered for sale, manufactured, or imported by or at the direction of You,
including but not limited to: DCT700, DCT2500, DCT3400, DCT3412, DCT3080,
DCT6200, DCT6208, DCT6400, DCT6412, DCX700, DCX3200, DCX3200 P2,
DCX3400, DCH70, DCH100, DCH200, DCH3200, DCH3416, DCH6200, DCH6416,
DTA100, QIP2500, QIP2708, QIP6200, QIP6416, QIP7100, and QIP7216.
H.

“Motorola Accused Mobile Device(s)” shall mean all electronic mobile

devices, such as smartphones, with 1) display output capabilities or 2) user interface
elements to unlock functionality (e.g., icons or patterns displayed on a touch-sensitive
screen), and associated hardware and software, including operating systems, user
interfaces and other application software designed for use on, and loaded onto, such
devices that are designed, made, used, developed, researched, tested, sold, offered for sale,
manufactured, or imported by or at the direction of You, including but not limited to: the
Atrix, Bravo, Backflip, Charm, Citrus, Cliq, CliqXT, Cliq2, Defy, Devour, Droid, Droid 2,
Droid 2 Global, Droid X, Droid Pro, Flipout, Flipside, i1, and Xoom.
I.

“Motorola Accused Product(s)” shall mean, individually and

collectively, Motorola Accused Set-Top Box(es) and Motorola Accused Mobile Device(s).
J.

“Motorola Patent(s)-in-Suit” shall mean, individually and collectively,

U.S. Patent Nos. 5,710,987, 5,765,119, 5,958,006, 6,008,737, 6,101,531, and 6,377,161.

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K.

“Motorola Asserted Claim(s)” shall mean, individually and collectively,

the claims of the Motorola Patents-in-Suit identified in Motorola’s Preliminary
Infringement Contentions, served May 18, 2011.
L.

“Apple Accused Product(s)” shall mean the Apple products identified in

Motorola’s Preliminary Infringement Contentions, served May 18, 2011.
M.

“Related Patent(s)” shall include but are not limited to patents issuing

directly or indirectly from any ancestor, continuation, continuation-in-part, divisional or
reissue application, any U.S. or foreign pending patent applications, abandoned or expired
patent application or issued patent that claims priority from the Apple Patents-in-Suit or
Motorola Patents-in-Suit or from any reissue, interference, reexamination, opposition,
cancellation, or nullity proceedings regarding any such patents or the applications thereof.
N.

“Prior Art” means any patent, publication, device, or activity which may

fall within the scope of 35 U.S.C. §§ 102 and/or 103.
O.

“Person” shall mean any natural person or any business, proprietorship,

firm, partnership, corporation, association, organization, or other legal entity. The acts of
a Person shall include the acts of directors, officers, owners, members, employees, agents,
attorneys, or other representatives acting on the Person’s behalf.
P.

“Document” shall be construed under the broadest possible construction

under the Federal Rules of Civil Procedure and shall include without limitation any
written, recorded, graphic, or other matter, whether sent or received or made or used
internally, however produced or reproduced and whatever the medium on which it was
produced or reproduced (whether on paper, cards, charts, files, or printouts; tapes, discs,
belts, video tapes, audiotapes, tape recordings, cassettes, or other types of voice recording

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or transcription; computer tapes, databases, e-mails; pictures, photographs, slides, films,
microfilms, motion pictures; or any other medium), and any other tangible item or thing of
readable, recorded, or visual material of whatever nature including without limitation
originals, drafts, electronic documents with included metadata, and all non-identical
copies of each document (which, by reason of any variation, such as the presence or
absence of handwritten notes or underlining, represents a distinct version).
Q.

“Thing” shall be construed under the broadest possible construction under

the Federal Rules of Civil Procedure.
R.

“Communication” shall mean any transmission of information in any

context or situation by or between two or more persons by any means or medium
whatsoever, whether in the form of an original, a draft, or a copy, whether stored in hard
copy, electronically or digitally, or on tape, either orally or in writing, including but not
limited to conversations; correspondence; electronic mails; telexes; facsimile
transmissions; telecopies; recordings in any medium of oral, written, or typed
communications; telephone or message logs; notes or memoranda relating to written or
oral communications; and any translation thereof.
S.

“Information” shall mean information in any form, including but not

limited to documentary, electronic, graphical, or tabular, and communicated by any
means, including but not limited to orally, in writing, or via electronic communication.
T.

“Identify” and “Identity” shall each mean:
(a) as applied to an individual, to state the individual’s full name, present

or last known address and telephone number, present or last known employer, present or
last known business address and telephone number, present and prior employment

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positions and corresponding dates of such positions, and a description of his present
employment responsibilities;
(b) as applied to a Person other than a natural person (including but not
limited to any business or other entity), to state the entity’s full name, place and date of
incorporation or formation, principal place of business or activity, and the identity of the
natural persons within that entity having knowledge of the matter with respect to which
that entity is named;
(c) as applied to a Document (whether or not any claim of privilege is
made in respect thereof), to state the type of Document, the date of creation of the
Document, the date of communication of the Document, the names and Identities of the
individuals who drafted, authored, or signed the Document or to whom a copy thereof was
addressed or sent, a summary of the subject matter of the Document, the number of pages
of the Document, the present whereabouts of the Document, including without limitation
all originals and copies, and the name and address of the present or last-known custodian
of the Document;
(d) as applied to a Thing (including without limitation any products
manufactured, developed, or sold by Motorola), to state the date that the Thing was first
introduced for sale, the date of the Thing’s first sale, all versions, parts, or revision
numbers or codes, all product names, and all team names or project titles used in
connection with the design, development, testing, or engineering of that product;
(e) as applied to a process, to state the date that the process was first used,
the date the products or goods made by the process were first sold, all numbers or codes
used to refer to the process, including but not limited to process revision numbers or

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codes, all process names, and all team names or project titles used in connection with the
design, development, testing, or engineering of that process; or
(f) as applied to a Communication, to state the type of Communication, the
date and the parties to such Communication, and if such Communication has been
recorded in documentary form, to identify all Documents recording such Communication.
U.

“Relate to,” “Related to,” “Relating to,” or “Concerning” shall mean in

whole or in part constituting, containing, embodying, reflecting, describing, involving,
supporting, contradicting, evidencing, analyzing, identifying, mentioning, stating,
referring directly or indirectly to, dealing with, or in any way pertaining to.
V.

Except where the context does not permit, the term “including” shall be

without limitation.
W.

Except where the context does not permit, the terms “and” and “or” shall

be both conjunctive and disjunctive.
X.

Except where the context does not permit, the terms “each” and “any”

shall mean any and all.
TOPICS
1.

The structure, function, operation, uses, and features of (1) each Motorola
Accused Product and (2) each product that You contend embodies or has ever
embodied the subject matter of any Motorola Asserted Claim.

2.

Identification of all software, firmware, and/or source code comprising all or
part of, or used by or for the operation of any Motorola Accused Product,

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including but not limited to the name and location of each software, firmware
and/or source code file.
3.

Internal or external Communications regarding the structure, function,
operation, uses, and features of each Motorola Accused Product.

4.

The conception, reduction to practice, design, research, and development of
(1) each Motorola Accused Product and (2) each product that You contend
embodies or has ever embodied the subject matter of any Motorola Asserted
Claim.

5.

Information contained in schematics, drawings, and design documents for
each Motorola Accused Product.

6.

The type of and amount of costs incurred by You in the research and
development of each Motorola Accused Product.

7.

The Person(s) involved in and most knowledgeable about any research,
development, testing, prototyping, or experiments relating to any of the
Motorola Accused Products.

8.

The manufacture, fabrication, prototyping, testing, and assembly of (1) each
Motorola Accused Product and (2) each product that You contend embodies
or has ever embodied the subject matter of any Motorola Asserted Claim.

9.

The sales, importation, exportation and distribution of (1) each Motorola
Accused Product and (2) each product that You contend embodies or has ever
embodied the subject matter of any Motorola Asserted Claim.

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10.

Your agreements with third parties concerning the supply, manufacture,
production, assembly, or importation of each Motorola Accused Product or
portion thereof.

11.

The marketing and promotion efforts regarding the features, performance,
attributes, or characteristics of (1) each Motorola Accused Product and
(2) each product that You contend embodies or has ever embodied the subject
matter of any Motorola Asserted Claim.

12.

Any competitive analysis, whether formal or informal, involving comparisons
between the Motorola Accused Products and products of other companies,
including but not limited to Apple.

13.

Your gross profits, gross margin, net income and net profits before taxes for
the Motorola Accused Products from 2004 to the present.

14.

Your expected, projected, or anticipated future sales revenue, costs, and
profits from the Motorola Accused Products.

15.

Financial documents maintained by You.

16.

Your accounting methods, forms, reports, and internal terminology for
compiling, maintaining, and analyzing financial data from 2004 to the present,
including those relating to plans, budgets, forecasts, and financial reports on a
company-wide basis and specifically for the Motorola Accused Products.

17.

The manner by which You determined the prices, quantities, features,
performance goals, attributes, and other characteristics of the Motorola
Accused Products, including but not limited to the factors that contributed
thereto.

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18.

The date, manner, and circumstances of Your first awareness of the Apple
Patents-in-Suit, including but not limited to Your reaction to the Apple
Patents-in-Suit, including any steps You took to avoid infringement of the
Apple Patents-in-Suit, including design-arounds or other modifications to the
Motorola Accused Products, any other steps You took in response to learning
of the existence of the Apple Patents-in-Suit, and any related communications.

19.

All efforts undertaken by You to design around or otherwise avoid
infringement of any of the Apple Asserted Claims.

20.

Any testing, analysis, consideration, or evaluation conducted by You or
anyone acting on Your behalf to determine whether, or that may have revealed
whether, any Motorola Accused Products infringe any of the Apple Patentsin-Suit.

21.

Any affidavit, declaration, or other sworn testimony that summarizes,
describes or refers to the Motorola Accused Products.

22.

The personnel and employment history for each of the named inventors of the
Motorola Patents-in-Suit.

23.

The conception of the alleged invention(s) claimed in the Motorola Patents-inSuit.

24.

Any and all efforts towards reducing to practice the alleged invention(s)
claimed in the Motorola Patents-in-Suit.

25.

Any actual reduction to practice of the alleged invention(s) claimed in the
Motorola Patents-in-Suit.

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26.

The nature and extent of any involvement or contribution of any person(s)
other than the named inventors in conception, diligence towards reduction to
practice, and/or reduction to practice of the alleged invention(s) claimed in the
Motorola Patents-in-Suit.

27.

The preparation, filing, and/or prosecution of the Motorola Patents-in-Suit and
any Related Patents, including reissue, interference, reexamination,
opposition, cancellation, and/or nullity proceedings.

28.

The scope, methodology (including identification of search terms), and results
of any prior art searches or analysis related to the Motorola Patents-in-Suit
and any Related Patents conducted by You, Your prosecuting attorneys, or
anyone substantially involved with the prosecution of the Motorola Patent-inSuit, whether prior to the issuance of the respective Motorola Patents-in-Suit
or since that time.

29.

Prior art to the alleged invention(s) of the Motorola Patents-in-Suit and any
Related Patents, known at any time by You, Your prosecuting attorneys, or
anyone substantially involved with the prosecution of the Motorola Patents-inSuit, whether prior to the issuance of the respective Motorola Patents-in-Suit
or since that time.

30.

The initial offer for sale, initial manufacture, initial use, initial sale, initial
public use, initial shipment, initial announcement, initial disclosure, initial
offer to license, and initial publication of each embodiment of the alleged
invention(s) of the Motorola Patents-in-Suit.

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31.

The level of ordinary skill that You allege pertains to each of the Motorola
Patents-in-Suit.

32.

The state of the art concerning the alleged invention(s) of each Motorola
Patent-in-Suit at the time the respective alleged invention(s) were conceived
and/or reduced to practice, including any perceived need in the industry for
the alleged invention(s) of the Motorola Patents-in-Suit.

33.

The benefits of the alleged invention(s) of each of the Motorola Patents-inSuit over the prior art.

34.

Any commercial success attributed by You to each of the Motorola Asserted
Claims, including but not limited to Your sales, profitability, advertising, and
use of the alleged invention(s) disclosed by each of the Motorola Asserted
Claims.

35.

The existence of any secondary considerations (as described in Graham v.
John Deere Co., 383 U.S. 1 (1966)) other than commercial success, such as
long-felt need, failure of others, industry recognition, or copying, etc. of the
subject matter of the Motorola Patents-in-Suit.

36.

The availability of non-infringing alternatives or lack thereof to the products
and devices alleged to practice the subject matter of each Motorola Asserted
Claim.

37.

Each mode of practicing the subject matter of each Motorola Asserted Claim.

38.

Any product, device, apparatus, method, process, system, or technology other
than the Apple Accused Products that You believe is, was, may be, or may
have been infringing the Motorola Patents-in-Suit or Related Patents in any

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other lawsuit, judicial proceeding, administrative proceeding, arbitration, or
other adverse proceeding
39.

Any lawsuit, judicial proceeding, arbitration, patent interference proceeding,
appeal proceeding, reissue, or reexamination proceeding, or patent opposition,
cancellation, or nullity proceeding concerning the Motorola Patents-in-Suit.

40.

Your patent policies or practices regarding licensing and/or sublicensing of
Your Patent Portfolio.

41.

Your actual and expected revenues from licensing and/or sublicensing of the
Motorola Patents-in-Suit.

42.

Agreements, including but not limited to licenses, between You and any
Person concerning the Motorola Patents-in-Suit or the Motorola Accused
Products.

43.

Any offers to license or notice letters written by You to any Person
concerning the Motorola Patents-in-Suit.

44.

The marking of any product or related materials with the patent number of any
of the Motorola Patents-in-Suit by You or any licensee to the Motorola
Patents-in-Suit.

45.

Any meeting of Your board of directors during which the Apple Patents-inSuit, Motorola Patents-in-Suit, this Action, or any Accused Apple Product
was discussed or considered.

46.

Any testing, analysis, consideration, or evaluation conducted by or on behalf
of You, Your counsel, or anyone else acting on Your behalf to determine

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whether, or that may have revealed whether, any Apple Accused Products
infringe any of the Motorola Asserted Claims.
47.

Your first knowledge of Apple’s alleged infringement of the Motorola
Patents-in-Suit.

48.

Any notice given to Apple prior to the filing of this Action reflecting Your
belief that Apple was, is, or may be infringing the Motorola Patents-in-Suit.

49.

Any communications between you and Apple concerning the Apple Patentsin-Suit or the Motorola Patents-in-Suit that occurred prior to the filing of the
instant lawsuit.

50.

Communications between You and any Person concerning the Apple Patentsin-Suit or the Motorola Patents-in-Suit.

51.

Communication between You and any Person concerning whether the
Motorola Patents-in-Suit are invalid, unenforceable, or not infringed by
Apple.

52.

The fifteen factors set forth in Georgia-Pacific Corp. v. U.S. PlywoodChampion Papers, Inc., 318 F. Supp. 1116, 1120 (S.D.N.Y. 1970) as they
apply to Your claim for damages in this Action.

53.

All facts and circumstances relied on by You to support the allegations stated
in any pleading served in this Action.

54.

All Communications between You and Apple as they relate to the Apple
Patents-in-Suit, the Motorola Patents-in-Suit, the Apple Accused Products, the
Motorola Accused Products, or this Action.

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55.

All cable service providers that have entered into any license, service, or other
agreements with Motorola and Motorola’s relationship with each such cable
service provider.

56.

The research, engineering, design, development, implementation, revision,
support, or provision of any version of the interactive program guides running
on each of the Motorola Accused Set-Top Boxes.

57.

The microchip(s), microprocessor(s), microcontroller(s), chipset(s) or other
component(s) that implements, supports, or provides interactive program
guide functions on each of the Motorola Accused Set-Top Boxes, including
without limitation any mechanisms for obtaining television programming
information from a source signal, television programming listing displays,
picture-in-picture displays, picture-in-picture jumping mechanisms, program
reminder mechanisms, program marking mechanisms, and recording
mechanisms.

58.

The software, firmware, or other source code used to implement, support, or
provide interactive program guide functions on each of the Motorola Accused
Set-Top Boxes, including without limitation any mechanisms for obtaining
television programming information from a source signal, television
programming listing displays, picture-in-picture displays, picture-in-picture
jumping mechanisms, program reminder mechanisms, program marking
mechanisms, and recording mechanisms.

59.

The operation of the user interface for locking or unlocking the touch screen
of each Motorola Accused Mobile Device, including (i) the conditions under

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which the touch screen becomes locked; (ii) the way(s) in which a user may
unlock a locked touch screen; (iii) any graphical elements presented by the
user interface when the touch screen is locked; (iv) whether such graphical
element(s) are interactive and, if so, how a user may interact with such
graphical element(s); and (v) any of the aforementioned locking or unlocking
functionalities.
60.

The software, firmware, or other source code used by any Motorola Accused
Mobile Device, including without limitation Droid X, Atrix, and Xoom, that
(i) detects the addition or removal of additional devices or peripherals; (ii)
detects the addition or removal of additional display devices; or (iii) allocates
video output between the built-in display and additional display devices.

61.

The software, firmware, or other source code used by any Motorola Accused
Mobile Device, including without limitation Droid X, Atrix, and Xoom, that
implements the Webtop and (HD) Entertainment Center applications.

62.

The file name(s) and directory location(s) for the source code referenced in
Topics 58-61.

63.

The corporate and personnel structure of Motorola Mobility.

64.

Your policies, practices, and procedures for the retention, preservation, and
destruction of Documents (including electronic documents and e-mails)
related to the foregoing deposition topics, including the actual steps taken to
retain and preserve documents relevant to this Action as well as the location,
organization, and custodians of such Documents.

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65.

The identity, locations, titles, and job descriptions of the persons most
knowledgeable about each the foregoing deposition topics.

66.

The identity and location of all persons, documents, and things consulted,
reviewed, communicated with or relied upon in preparing to testify about each
of the foregoing topics.

Dated: June 24, 2011

WEIL, GOTSHAL & MANGES LLP
By:

/s/ Jill J. Ho
Jill J. Ho
Attorneys for Apple Inc.

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CERTIFICATE OF SERVICE
I HEREBY CERTIFY that on June 24, 2011, I served the foregoing
document via electronic mail on all counsel of record identified on the attached Service
List.

/s/ Jill Ho
Jill Ho

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SERVICE LIST
Motorola Mobility, Inc. versus Apple Inc.
Case No. 1:10cv023580-Civ-UU
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]
Of Counsel:
Charles K. Verhoeven
[e-mail]
QUINN EMANUEL URQUHART & SULLIVAN, LLP
50 California Street, 22nd Floor
San Francisco, CA 93111
[phone]
Edward J. DeFranco
[e-mail]
QUINN EMANUEL URQUHART & SULLIVAN, LLP
51 Madison Avenue, 22nd Floor
New York, NY 10010
[phone]
David A. Nelson
[e-mail]
Jennifer A. Bauer
[e-mail]
QUINN EMANUEL URQUHART & SULLIVAN, LLP
500 West Madison Street, Suite 2450
Chicago, IL 60661
[phone]
[e-mail]
Attorneys for Motorola Mobility, Inc. and Motorola, Inc.
Electronically served via email

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