Motorola Mobility, Inc. v. Apple, Inc.

Filing 282

NOTICE by Apple, Inc. Notice of Filing of Declaration of Jill J. Ho in Support of Apple Inc.'s Motion to Compel Production of Documents and Testimony Regarding Set-Top Box Components and Exhibits Thereto (Attachments: # 1 Affidavit Declaration of Jill J. Ho in Support of Apple Inc.'s Motion to Compel Production of Documents and Testimony Regarding Set-Top Box Components, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit G, # 6 Exhibit H)(Pace, Christopher)

EXHIBIT B

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 FIRST SET OF REQUESTS FOR PRODUCTION
TO MOTOROLA MOBILITY AND MOTOROLA (NOS. 1-49)

Pursuant to Federal Rules of Civil Procedure 26 and 34, Defendant and
Counterclaim Plaintiff Apple Inc. (“Apple”) requests that Plaintiff and Counterclaim Defendant
Motorola Mobility, Inc. (“Motorola Mobility”) and Counterclaim Defendant Motorola, Inc.
(“Motorola”) (collectively, the “Counterclaim Defendants”) produce copies of documents and
things requested below at the law offices of Weil, Gotshal & Manges LLP, 201 Redwood Shores
Parkway, Redwood City, California, 94065 within thirty (30) days after service hereof. Apple

also requests that, within thirty (30) days after service hereof, Counterclaim Defendants serve
Apple with their written responses to these Requests for Production of documents and things in
accordance with Rule 34 of the Federal Rules of Civil Procedure. Pursuant to Federal Rule of
Civil Procedure 26(e), these Requests for Production are continuing in nature and therefore
require Counterclaim Defendants to furnish supplemental productions whenever they obtain
different or additional knowledge, information, or belief relative to these Requests for
Production.
DEFINITIONS
A.

“Motorola Mobility” shall mean 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.
B.

“Motorola” shall mean Motorola, Inc, and all of its corporate locations, and all

predecessors, subsidiaries, parents, and affiliates, including without limitation 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.

“You,” “Your,” “Counterclaim Defendant,” and “Counterclaim Defendants”

shall each mean and refer to Motorola, Inc. and Motorola Mobility, Inc, and all of their corporate
locations, and all predecessors, subsidiaries, parents, and affiliates, including without limitation
the Mobile Devices segment of Motorola, Inc. and Motorola SpinCo Holdings Corp., and all past
or present directors, officers, agents, representatives, employees, consultants, attorneys, entities

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acting in joint-venture or partnership relationships with the aforementioned entities, and others
acting on their behalf.
D.

“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.
E.

“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.
F.

“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.
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 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, 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.

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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 Motorola Backflip, Charm, Cliq, CiqXT, Defy,
Devour, Droid, Droid 2, Droid Pro, Droid X, Milestone, Bravo, Citrus, Flipout, Flipside, i1.
I.

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

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

“Motorola Mobility 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.
K.

“Apple Accused Product(s)” shall mean any and all products that Motorola

Mobility accuses of infringing the Motorola Mobility Patents-in-Suit.
L.

“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 Mobility Patents-in-Suit or
from any interference or reexamination proceedings regarding any such patents or the applications
thereof.
M.

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

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

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N.

“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.
O.

“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 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 nonidentical copies of each document (which, by reason of any variation, such as the presence or
absence of hand-written notes or underlining, represents a distinct version).
P.

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

Federal Rules of Civil Procedure.
Q.

“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,

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written, or typed communications; telephone or message logs; notes or memoranda relating to
written or oral communications; and any translation thereof.
R.

“Identify,” “Identity,” and “Identification” 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 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 You), 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

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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 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.
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.

“Describe,” when used in relation to an act, event, instance, occasion, transaction,

conversation, or Communication, shall mean (1) to state the date and place thereof; (2) to identify
the individual participants; (3) to summarize separately for each individual participant what was
said or done; and (4) to identify each document used or prepared in connection therewith or
making any reference thereto.
U.

“Date” shall mean the exact date, if known, or the closest approximation to the

exact date as can be specified, including without limitation, the year, month, week in a month, or
part of a month.
V.

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

or in part constituting, containing, embodying, reflecting, describing, involving, supporting,

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contradicting, evidencing, analyzing, identifying, mentioning, stating, referring directly or
indirectly to, dealing with, or in any way pertaining to.
W.

As used herein, the singular form of a term shall be interpreted to include the

plural and vice versa.
X.

As used herein, the masculine form of a term shall be interpreted to include the

feminine and vice versa.
Y.

Except where the context does not permit, the term “including” shall be without

limitation.
Z.

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

conjunctive and disjunctive.
AA.

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

any and all.
INSTRUCTIONS
1.

Each request shall be answered pursuant to Federal Rules of Civil Procedure 26

and 34, and supplemented as required by Federal Rule of Civil Procedure 26(e).
2.

These Requests shall apply to all documents in Your possession, custody, or

control at the present time, or coming into Your possession, custody or control prior to the date
of the production. If You know of the existence, past or present, of any documents or things
requested below, but are unable to produce such documents or things because they are not
presently in Your possession, custody, or control, You shall so state and shall identify such
documents or things, and the person who has possession, custody or control of the documents or
things.

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3.

If no documents are responsive to a particular request, You are to state in Your

response that no responsive documents exist.
4.

If You withhold any document or portion thereof; in response to any of the

requests set forth below on grounds of privilege or any other claim of immunity from discovery,
then for each document, communication, or portion thereof so withheld, state the following: (a)
the type of document (e.g., letter, memorandum, contract, etc.); (b) its title; (c) its date; (d) its
subject matter; (e) the name, address, and employer at the time of preparation of the individual(s)
who authored, drafted, or prepared it; (f) the name, address, and employer at the time of
dissemination of the individual(s) to whom it was directed, circulated, or copied, or who had
access thereto; and (g) the grounds on which the document is being withheld (e.g., “attorneyclient privilege,” “attorney work product,” etc.).
5.

If You contend that a portion of a document contains information that is immune

from discovery, then produce the document with the allegedly immune portion redacted
therefrom and describe the redacted portion in a privilege log pursuant to the instructions in
paragraph 4 above.
6.

These requests seek all responsive documents in their original language, and, if

such original language is not English, these requests also seek all English-language translations
that may exist for any such documents.
7.

Each document is to be produced along with all drafts, without abbreviation or

redaction.
8.

Any keys, codes, explanations, manuals, or other documents necessary for the

interpretation or understanding of the documents produced in response to these Requests for
Production shall be produced.

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9.

In the event that You object to any request on the ground that it is overbroad

and/or unduly burdensome for any reason, respond to that request as narrowed to the least extent
necessary, in Your judgment, to render it not overbroad/unduly burdensome and state
specifically the extent to which You have narrowed that request for purposes of Your response
and the factual basis for Your conclusion.
10.

In the event that You object to any request on the ground that it is vague and/or

ambiguous, identify the particular words, terms or phrases that are asserted to make such request
vague and/or ambiguous and specify the meaning actually attributed to You by such words for
purposes of Your response thereto.
REQUESTS FOR PRODUCTION
REQUEST FOR PRODUCTION NO. 1:
Documents sufficient to show Your corporate and personnel structure, including but not
limited to organizational charts showing Your groups, units, divisions, or departments (or Your
subsidiaries, parents, sisters, partnerships, and affiliates) and the names, positions, titles, duties,
and reporting relationships of officers, employees, and other personnel that are or were involved
in (a) engineering, design, or research and development; (b) manufacture, fabrication, assembly,
or testing; (c) importation, exportation, or distribution; (d) licensing; and/or (e) sales, marketing,
and promotion of each Motorola Accused Product and each product that You contend embodies
the subject matter claimed in any Motorola Mobility Patent-in-Suit.
REQUEST FOR PRODUCTION NO. 2:
Documents sufficient to show how You maintain information regarding the research,
design, manufacture, sale, offer for sale, importation, use, and/or marketing of each Motorola
Accused Product and each product that You contend embodies the subject matter claimed in any

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Motorola Mobility Patent-in-Suit, including for each database that contains such information:
the name of the database; the location of the database; and the fields of the database that can be
queried.
REQUEST FOR PRODUCTION NO. 3:
All documents and things concerning the Apple Patents-in-Suit and Related Patents.
REQUEST FOR PRODUCTION NO. 4:
All documents and things concerning the Motorola Mobility Patents-in-Suit and Related
Patents.
REQUEST FOR PRODUCTION NO. 5:
All documents and things concerning the structure, function, operation, uses, and features
of each Motorola Accused Product and each product that You contend embodies the subject
matter claimed in any Motorola Mobility Patent-in-Suit, including but not limited to design
specifications, manuals, brochures, data sheets, source code, bug reports, and technical
specifications.
REQUEST FOR PRODUCTION NO. 6:
All documents and things concerning the design, development, manufacture, fabrication,
testing, installation, and assembly of each Motorola Accused Product and each product that You
contend embodies the subject matter claimed in any Motorola Mobility Patent-in-Suit, including
but not limited to documents identifying: assembly arrangements, suppliers, manufacturers, codevelopers, distributors, and any other third party relationships.
REQUEST FOR PRODUCTION NO. 7:
All documents and things concerning the marketing and promotion of each Motorola
Accused Product and each product that You contend embodies the subject matter claimed in any

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Motorola Mobility Patent-in-Suit, including but not limited to: competitive analyses, press
releases, financial reports, financial performance analyses, business plans, analyses concerning
product design, consumer surveys, consultant surveys, advertising campaigns, promotional or
sales training materials, press releases, emails, presentation materials, customer communications,
reference account testimonials, analyst reports and notes, customer-facing documents, documents
relating to market segments, market share, or market revenue, and similar documents that refer
or relate to Your projected and actual financial performance which are not otherwise publicly
available.
REQUEST FOR PRODUCTION NO. 8:
Documents referring or relating to comparisons between the Motorola Accused Products
and products of other companies, including but not limited to Apple’s products.
REQUEST FOR PRODUCTION NO. 9:
All documents and things concerning the sales, importation, or exportation of each
Motorola Accused Product and each product that You contend embodies the subject matter
claimed in any Motorola Mobility Patent-in-Suit, including but not limited to documents
identifying: all customers, distributors, resellers, seller’s agents or independent sales
representatives; the quantity produced, total sales volume, and the revenues that You have
received, expect to receive and/or has projected to receive from the sale, lease, license,
sublicense or use of that product; current price lists, actual selling prices, customer proposals,
price quotes, pricing requests, purchase orders, invoices, summaries of sales and sales reports;
gross and net profits derived from sales; supply agreements or distributorship agreements.

12

REQUEST FOR PRODUCTION NO. 10:
All annual reports, required financial filings and other financial statements including
statements of operations, balance sheets, Profit and Loss statements, statements in changes in
retained earnings and notes thereto, whether prepared for internal or external reporting purposes,
prepared by You or on behalf of You.
REQUEST FOR PRODUCTION NO. 11:
All documents and things concerning Your awareness of the Apple Patents-in-Suit,
including but not limited to Your first awareness of each of the Apple Patents-in-Suit and first
awareness that Apple believed You infringe the Apple Patents-in-Suit.
REQUEST FOR PRODUCTION NO. 12:
All documents and things concerning any testing, analysis, consideration, or evaluation
conducted by or prepared for You, counsel for 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 Patents-in-Suit or Related Patents, including but not limited to any inquiry,
opinion, report, observation, search, study, evaluation relating in any manner to the patentability,
validity, enforceability, inventorship, scope, or infringement of any claim of the Apple Patentsin-Suit or Related Patents.
REQUEST FOR PRODUCTION NO. 13:
All documents concerning, supporting, or contradicting the level of ordinary skill that
You allege pertains to each of the Motorola Mobility Patents-in-Suit.
REQUEST FOR PRODUCTION NO. 14:
All documents and things concerning the identification, selection, or determination of the
proper inventors for the Motorola Mobility Patents-in-Suit.

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REQUEST FOR PRODUCTION NO. 15:
All documents and things concerning the personnel and employment history for each of
the named inventors of the Motorola Mobility Patents-in-Suit, including resumes or curriculum
vitae.
REQUEST FOR PRODUCTION NO. 16:
All documents and things authored or given, in whole or in part, generated at or by the
direction of any of the inventors named on the face of the Motorola Mobility Patents-in-Suit
regarding the subject matter of any claim of the Motorola Mobility Patents-in-Suit, including
without limitation: invention disclosures, engineering notebooks, laboratory notebooks, records,
logs, publications, abstracts, papers, presentations, speeches, transcripts (including printed
transcripts, audiotapes, and videotapes), declarations, and affidavits.
REQUEST FOR PRODUCTION NO. 17:
All documents and things concerning the conception, reduction to practice (both
constructive and actual), and acts of diligence leading to the reduction to practice of the subject
matter of any claim of the Motorola Mobility Patents-in-Suit, including without limitation: any
engineering notebooks, laboratory notebooks, log books, record books, memoranda, design
reviews, progress reports, technical reports, drawings, schematics, specifications, diagrams,
computer records, diaries, calendars, test results, invention disclosures, patent prosecution
records, or any other documents or things which You contend or may contend corroborate the
conception.
REQUEST FOR PRODUCTION NO. 18:
All documents and things concerning the conception, design, development, manufacture,
assembly, testing, performance, installation, operation, or marketing of any device, prototype,

14

product, apparatus, method, process, system, or technology that allegedly embodies, falls within
the scope of, or is made or practiced in accordance with the subject matter of any claim of the
Motorola Mobility Patents-in-Suit, whether licensed, sold, imported, or offered for sale
anywhere in the world, including but not limited to:
(a)

all original and all revised blueprints, design reports, illustrations,
diagrams, test specifications, data sheets, flow charts, drawings,
specifications, control drawings, sales outline drawings, specifications,
engineering documents, laboratory notebooks, log books, record books,
memoranda, schematic diagrams, process schematics, design documents,
project books, project files, computer records, diaries, calendars, design
reviews, test results, progress reports, technical reports, manufacturing
documents, procurement documents (including all invoices), requests for
proposals, requests for quotations, and correspondence for all versions of
any prototype;

(b)

all prototypes, engineering models or other physical models used,
constructed, or made during the design or development of any of the
products; and

(c)

all documents dated prior to, or which existed prior to, the filing date of
the application for the Motorola Mobility Patents-in-Suit, including all
agreements providing for compensation or financing of any work
performed in connection with the design or development of any
technology or product embodying the invention claimed in any claim of
the Motorola Mobility Patents-in-Suit.

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REQUEST FOR PRODUCTION NO. 19:
All documents and things concerning each mode of practicing the subject matter of each
claim of the Motorola Mobility Patents-in-Suit, including each mode, feature, aspect, or
alternative design, which is not disclosed in the specification of the Motorola Mobility Patentsin-Suit, but which allegedly embodies, falls within the scope of, or is made in accordance with
any claim of the Motorola Mobility Patents-in-Suit.
REQUEST FOR PRODUCTION NO. 20:
All documents and things concerning the preparation, filing, and/or prosecution of:
(a)

the Motorola Mobility Patents-in-Suit;

(b)

any patents or patent applications (including any pending or abandoned
applications) from or through which the Motorola Mobility Patents-in-Suit
claim priority;

(c)

all applications and patents incorporated by reference in the Motorola
Mobility Patents-in-Suit;

(d)

any patents or patent applications (including any pending or abandoned
applications) that claim priority from or through the Motorola Mobility
Patents-in-Suit;

(e)

related applications and patents; and

(f)

any foreign counterpart patents or patent applications (including any
unpublished applications) to any of (a), (b), (c), (d), or (e).

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REQUEST FOR PRODUCTION NO. 21:
All documents and things concerning any lawsuit, judicial proceeding, arbitration, patent
interference proceeding, appeal proceeding, reissue, reexamination proceeding, or patent
opposition or cancellation proceeding concerning:
(a)

the Motorola Mobility Patents-in-Suit;

(b)

any patents or patent applications (including any pending or abandoned
applications) from or through which the Motorola Mobility Patents-in-Suit
claim priority;

(c)

all applications and patents incorporated by reference in the Motorola
Mobility Patents-in-Suit;

(d)

any patents or patent applications (including any pending or abandoned
applications) that claim priority from or through the Motorola Mobility
Patents-in-Suit;

(e)

related applications and patents; and

(f)

any foreign counterpart patents or patent applications (including any
unpublished applications) to any of (a), (b), (c), (d), or (e).

REQUEST FOR PRODUCTION NO. 22:
All documents and things concerning any information, including patents, publications,
prior knowledge, products, public uses, sales, or offers for sale, that may constitute, contain,
disclose, refer to, relate to, or embody any prior art to the subject matter of any claim of the
Motorola Mobility Patents-in-Suit, whether actual or alleged, either received by or identified by
You.

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REQUEST FOR PRODUCTION NO. 23:
All documents and things concerning the initial offer for sale, initial manufacture, initial
use, initial sale, initial public use, initial shipment, initial announcement, initial disclosure, and
initial publication of each embodiment of any invention claimed in the Motorola Mobility
Patents-in-Suit.
REQUEST FOR PRODUCTION NO. 24:
All documents and things concerning any disclosure or publication of the subject matter
of any claim of the Motorola Mobility Patents-in-Suit to any person or entity other than You,
including, without limitation, any pre-filing date sales, offers for sale, public uses,
demonstrations, announcements, advertisements, correspondence with potential customers, or
publications.
REQUEST FOR PRODUCTION NO. 25:
All documents and things that You allege affect, limit, or bear on the interpretation and/or
construction of any claims of the Motorola Mobility Patents-in-Suit, including without limitation
any relevant Prior Art.
REQUEST FOR PRODUCTION NO. 26:
All documents and things, not produced in response to another document request, upon
which You intend to rely on to support the validity of any claim of the Motorola Mobility
Patents-in-Suit, including, without limitation, evidence of objective indicia of non-obviousness
and other evidence of alleged novelty or non-obviousness.
REQUEST FOR PRODUCTION NO. 27:
All documents and things concerning any product, device, apparatus, method, process,
system, or technology regardless of whether reduced to tangible form that You have accused of

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infringing the Motorola Mobility Patents-in-Suit and Related Patents in any other lawsuit,
judicial proceeding, administrative proceeding, arbitration, or other communication including
without limitation cease and desist actions.
REQUEST FOR PRODUCTION NO. 28:
All documents and things concerning any testing, analysis, consideration, or evaluation
conducted by or prepared for You , counsel for You, or anyone acting on Your behalf to
determine whether, or that may have revealed whether, any Apple Accused Products infringe any
of the Motorola Mobility Patents-in-Suit or Related Patents, including but not limited to any
inquiry, opinion, report, observation, search, study, evaluation relating in any manner to the
patentability, validity, enforceability, inventorship, scope, or infringement of any claim of the
Motorola Mobility Patents-in-Suit or Related Patents.
REQUEST FOR PRODUCTION NO. 29:
All documents and things concerning Your first knowledge of Apple’s alleged
infringement of the Motorola Mobility Patents-in-Suit.
REQUEST FOR PRODUCTION NO. 30:
All documents and things concerning any notice given to Apple reflecting Your
allegation that Apple was, is, or may be infringing the Motorola Mobility Patents-in-Suit.
REQUEST FOR PRODUCTION NO. 31:
Documents referring or relating to comparisons between the Apple Accused Products and
other products of other companies, including but not limited to Your products.
REQUEST FOR PRODUCTION NO. 32:
All documents and things concerning any meetings, negotiations, discussions,
agreements, or other communications regarding the Motorola Mobility Patents-in-Suit, including

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any communications between You and Apple, whether or not such negotiations, discussions, or
other communications ultimately led to an agreement.
REQUEST FOR PRODUCTION NO. 33:
All documents and things not covered by the prior requests concerning:
(a)

the conception and development of the inventions claimed in the Motorola
Mobility Patents-in-Suit;

(b)

the inventorship of the inventions claimed in the Motorola Mobility
Patents-in-Suit;

(c)

the claim that Apple has infringed or is infringing the Motorola Mobility
Patents-in-Suit;

(d)

the claim that Apple has willfully infringed or is willfully infringing the
Motorola Mobility Patents-in-Suit;

(e)

the subject matter contained in related applications and patents;

(f)

the validity of the Motorola Mobility Patents-in-Suit;

(g)

the enforceability of the Motorola Mobility Patents-in-Suit; and

(h)

the state of the art concerning the inventions claimed in the Motorola
Mobility Patents-in-Suit at the time the alleged invention was conceived
and/or reduced to practice.

REQUEST FOR PRODUCTION NO. 34:
A sample of each product authorized by You to be developed, sold, offered for sale,
licensed, or imported that You claim embodies any invention claimed in any claim of the
Motorola Mobility Patents-in-Suit.

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REQUEST FOR PRODUCTION NO. 35:
All documents sufficient to quantify sales of Motorola Accused Products or products that
You assert embody any of the inventions claimed by any claim of the Motorola Mobility Patentsin-Suit on an annual basis (either calendar year or defined fiscal year since the first sale of any
such product) including without limitation, the dates of such sales, the identities of the
purchasers, quantity sold to each purchaser, and price.
REQUEST FOR PRODUCTION NO. 36:
All documents concerning the costs or expenses associated with the design, research,
development, manufacture, sale, or distribution of each Motorola Accused Product and each
product that You allege embody any of the inventions claimed by any claim of the Motorola
Mobility Patents-in-Suit.
REQUEST FOR PRODUCTION NO. 37:
All documents and things concerning any market study or commercial study relating to
the valuation of each Motorola Accused Product and each product that You contend embodies
the subject matter claimed in any Motorola Mobility Patent-in-Suit, including but not limited to
competitive analyses, press releases, financial reports, financial performance analyses, business
plans, analyses concerning product design, competition, consumer surveys, consultant surveys,
advertising campaigns, promotional or sales training material, market segments, market share, or
market revenue, and similar documents that refer or relate to Your projected and actual financial
performance which are not otherwise publicly available.
REQUEST FOR PRODUCTION NO. 38:
All documents and things relating to the fifteen factors set forth in Georgia-Pacific Corp.
v. U.S. Plywood-Champion Papers, Inc., 318 F. Supp. 1116, 1120 (S.D.N.Y. 1970) as they apply

21

to Motorola Mobility’s claim for damages in this Action.
REQUEST FOR PRODUCTION NO. 39:
All documents and things concerning Your licensing and/or sublicensing of patents,
including without limitation documents sufficient to show all personnel involved with licensing,
licensing policies and practices, license agreements, settlement agreements, covenants not to sue,
negotiations, discussions, royalty payments, or other communications concerning licensing of
patents.
REQUEST FOR PRODUCTION NO. 40:
All documents and things relating to marking of any product or related materials with the
patent number of any of the Motorola Mobility Patents-in-Suit.
REQUEST FOR PRODUCTION NO. 41:
All documents and things concerning any patent search conducted by or on behalf of You
which identify or list any of the Apple Patents-in-Suit, Motorola Mobility Patents-in-Suit and/or
Related Patents.
REQUEST FOR PRODUCTION NO. 42:
All documents and things concerning any meeting of Your board of directors at which the
Apple Patents-in-Suit, Motorola Mobility Patents-in-Suit, Related Patents, this Action, or any
Apple product was discussed or considered.
REQUEST FOR PRODUCTION NO. 43:
Documents given to You or disseminated by You at any presentation or meeting, the
purpose of which was, at least in part, to discuss Apple, the Apple Patents-in-Suit, the Motorola
Mobility Patents-in-Suit, the possibility the Motorola Accused Products infringe the Apple
Patents-in-Suit, and/or the possibility the Apple Accused Products infringe the Motorola

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Mobility Patents-in-Suit, including but not limited to negotiation booklets, analyses, claim
charts, memoranda, or other documents used or exchanged in connection with such presentation
or meeting.
REQUEST FOR PRODUCTION NO. 44:
All documents and things concerning any affidavit, declaration, or other sworn testimony
that summarizes, describes or refers to the Motorola Mobility Patents-in-Suit.
REQUEST FOR PRODUCTION NO. 45:
All documents and things concerning any affidavit, declaration, or other sworn testimony
that summarizes, describes or refers to the Motorola Accused Products.
REQUEST FOR PRODUCTION NO. 46:
All documents and things describing or referring to Apple, the Apple Patents-in-Suit, or
this Action, including but not limited to press releases, letters to customers or potential
customers, communications, or public statements by You relating to this Action.
REQUEST FOR PRODUCTION NO. 47:
All documents and things concerning Your pleadings in this Action, including without
limitation documents relied upon or consulted by You in preparing Your Complaint and Answer
and Counterclaims, and documents that either support or contradict Your allegations, defenses,
and counterclaims.
REQUEST FOR PRODUCTION NO. 48:
Documents and things concerning any of Your responses to Apple’s Interrogatories
and/or Requests for Admissions in this Action, including all documents and things considered
during the preparation of any such responses.

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REQUEST FOR PRODUCTION NO. 49:
All documents and things concerning the assignment or ownership of the Motorola
Mobility Patents-in-Suit, including without limitation, any assignment agreements, and any
documents and things relating to Your allegation that Motorola Mobility is the owner of all
rights, title, and interest in the Motorola Mobility Patents-in-Suit.

Dated: December 29, 2010

Respectfully submitted,

_/s/ _Patricia Young___________
Christopher R. J. Pace
Edward Soto
WEIL, GOTSHAL & MANGES LLP
1395 Brickell Avenue, Suite 1200
Miami, FL 33131
Telephone: [phone]
Facsimile: [phone]
Matthew D. Powers
Steven S. Cherensky
Jill J. Ho
WEIL, GOTSHAL & MANGES LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: [phone]
Mark G. Davis
WEIL, GOTSHAL & MANGES LLP
1300 Eye Street, N.W., Suite 900
Washington, DC 20005
Telephone: [phone]
Facsimile: [phone]

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Patricia Young
WEIL, GOTSHAL & MANGES LLP
767 Fifth Avenue
New York, NY 10153
Telephone: [phone]
Facsimile: [phone]
Attorneys for Apple Inc.

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CERTIFICATE OF SERVICE
I HEREBY CERTIFY that on December 29, 2010, I served the foregoing
document via electronic mail on all counsel of record identified on the attached Service List.

/s/Patricia Young
Patricia Young

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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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