Motorola Mobility, Inc. v. Apple, Inc.
Filing
323
MOTION to Amend/Correct the Procedural Schedule by Apple, Inc.. Responses due by 5/4/2012 (Attachments: # 1 Affidavit Declaration of Mark G. Davis, # 2 Exhibit A, # 3 Exhibit B, # 4 Exhibit C, # 5 Exhibit D, # 6 Exhibit E, # 7 Exhibit F, # 8 Exhibit G, # 9 Supplement Notice of Filing Under Seal, # 10 Text of Proposed Order Proposed Order Granting Motion to Amend Procedural Schedule)(Pace, Christopher)
EXHIBIT D
From:
Sent:
To:
Cc:
Subject:
Marshall Searcy
Saturday, April 14, 2012 2:27 PM
Schmidt, Jill
David Perlson; Davis, Mark; HaskettCS@cov.com; Cappella, Anne; Graham Pechenik;
emullins@astidavis.com; Matthew.Powers@tensegritylawgroup.com; Pace, Christopher
Re: Proposed Florida Schedule
Jill,
There appears to be a pattern emerging of Apple reneging on its agreements.
My email to you of yesterday accurately reflected our discussions. I also asked you to correct anything that you believed
was incorrect. Yet, Apple corrected nothing (as there was nothing to correct) and waited until after our filing to say that
it now opposed Motorola's motion.
Henceforth, we are really going to have to insist that Apple attorneys with authority take part in our discussions. It has
become apparent that we can't rely on any of Apple's representations as the meet and confers are currently staffed.
As to Apple's insistence on a comprehensive schedule, your own e‐mail acknowledges that HTC won't agree to
participate in creating such a schedule at this point, so Apple is demanding something that it knows it cannot have. We
have provided Apple with a proposed schedule for FLA1, which is what the Court has asked the parties to provide, and
remain willing to work with Apple on creating a logical and efficient schedule. However, Apple's insistence that HTC be
added to FLA1 is neither. Please let me know if someone on Apple's side wishes to‐‐and can‐‐participate in a discussion
about sensible scheduling for FLA1.
On Apr 14, 2012, at 1:33 PM, "Schmidt, Jill" wrote:
Hi Marshall,
I write because you filed an unopposed motion for leave to amend Motorola's complaint before
receiving a final response from us and because Motorola's motion does not accurately state Apple's
position. As stated in my email on Friday morning, and as I reiterated on our call, Apple does not object
in principle to Motorola's proposed amendment, but cannot agree to Motorola adding six new patents
under the current schedule. As Apple made clear, Apple would not oppose Motorola's motion only if
Motorola agreed to submit proposed comprehensive schedules for FL‐1 and FL‐2 to be raised with the
Court prior to our hearing next Thursday:
…Apple will not oppose Motorola's motion as long as Motorola agrees to submit a joint statement to
the court with a comprehensive set of schedules for both FL cases (with input from HTC) in time to be
addressed at the April 19 hearing.
While the parties were unable to reach agreement on a schedule during the meet and confer on
proposed schedules on Friday, although agreeing that the current FL‐2 schedule is unworkable,
Motorola's refusal to submit proposed schedules to the court for discussion at the Thursday hearing
does not change Apple's position. Since Motorola is unwilling to submit proposed schedules to the
Court, Apple opposes Motorola's motion to amend its FL‐2 complaint to add six new patents. Please
correct your characterization of Apple's position on Monday.
1
Also, since the parties appear to be at an impasse on the extensions to the FL‐1 and FL‐2 schedules,
Apple will file its own motion to amend the procedural schedules in both FL‐1 and FL‐2 early next
week. Apple believes that a quick resolution to the schedule is necessary given the approaching
deadlines, even though HTC is unwilling to substantively engage in discussions regarding FL‐2 schedules
until after it responds to Apple's counterclaims on May 11. If Motorola changes its mind regarding a
joint submission of proposed schedules to the Court, please let us know.
Best regards,
Jill
From: Marshall Searcy [mailto:marshallsearcy@quinnemanuel.com]
Sent: Friday, April 13, 2012 04:50 PM
To: Schmidt, Jill
Cc: David Perlson ; Davis, Mark; HaskettCS@cov.com
; Cappella, Anne; Graham Pechenik ;
emullins@astidavis.com
Subject: RE: Proposed Florida Schedule
Jill,
Thanks for speaking with us today. To follow up on our discussion:
Scheduling for FLA1‐‐Apple’s position is that the ‘721 patent—currently in the FLA2 case—should be
included in the claims to be tried in FLA1. Motorola is willing to agree to this addition.
However, Apple also wishes to try its claims on the ‘721 against HTC in FLA1, even though HTC is not a
party to FLA1, HTC has not even answered in FLA2 and Apple already has slide‐to‐unlock claims pending
against HTC in Delaware. During the call, you stated that Apple wanted to include HTC in FLA1 because
it wished to avoid duplicative discovery from Motorola and HTC on the ‘721 patent in FLA1 and FLA2,
respectively. However, as I stated, it seems the easiest solution to this problem would be to leave the
‘721 patent in the FLA2 case, where it is currently pending. In any event, Motorola does not agree to
the addition of HTC in FLA1.
Because you were not in a position to agree to reach an agreement on the phone, you stated that you
would check with the partners on the Apple side as to whether Apple could agree that HTC not be
included in FLA1, or alternatively, that the ‘721 patent simply stays in FLA2. Please let me know as soon
as possible.
Motion to Amend—You stated that Apple would not oppose the motion so long as the parties, including
HTC, were able to come up with a comprehensive schedule for FLA2 by April 19. As Motorola advised, it
is not in position to force HTC to an agreement on dates, nor is it reasonable to expect HTC to agree to
dates considering the current procedural posture of FLA2. I did confirm, however, that Motorola
recognizes that the current FLA2 schedule will have to be adjusted, and Motorola will be willing to
engage in discussions on that schedule. You stated that, in light of this statement, Apple did not oppose
Motorola’s motion to amend. Please let me know right away if I have misunderstood Apple’s position
on the motion to amend.
Have a great weekend.
From: Schmidt, Jill [mailto:jill.schmidt@weil.com]
Sent: Friday, April 13, 2012 8:52 AM
2
To: Marshall Searcy
Cc: David Perlson; Davis, Mark; HaskettCS@cov.com; Cappella, Anne; Graham Pechenik;
emullins@astidavis.com
Subject: RE: Proposed Florida Schedule
Hi Marshall,
Although Apple does not object in principle to Motorola's proposed amendment to add six new patents
to the FL‐2 case, Apple does object to such an amendment in light of the current schedule. First, the
current FL‐2 schedule was adopted before Apple answered the complaint and Motorola itself reserved
the right to "revisit these dates if necessary" if Apple asserted new patents. Now that Motorola seeks to
add six additional patents (and additional patents may be added by HTC when it files its responsive
pleading on May 11), the current FL‐2 schedule is unworkable. Also, even if the parties agree that some
of the FL‐2 issues should be consolidated with FL‐1, Motorola's currently proposed schedule does not
allow sufficient time for discovery on those new issues and, unless Apple's claim against HTC for the '721
patent is included in FL‐1, would require duplicative discovery in FL‐1 and FL‐2.
Therefore, Apple will not oppose Motorola's motion as long as Motorola agrees to submit a joint
statement to the court with a comprehensive set of schedules for both FL cases (with input from HTC) in
time to be addressed at the April 19 hearing. Please let us know if Motorola agrees.
I am available at 1pm PT to discuss. Please circulate a dial‐in.
Best regards,
Jill
From: Marshall Searcy [mailto:marshallsearcy@quinnemanuel.com]
Sent: Friday, April 13, 2012 7:45 AM
To: Marshall Searcy
Cc: Schmidt, Jill; David Perlson; Davis, Mark; HaskettCS@cov.com; Cappella, Anne; Graham Pechenik;
emullins@astidavis.com
Subject: Re: Proposed Florida Schedule
All,
Motorola will be filing its motion to amend today. Despite our repeated requests, and despite having
provided the proposed complaint to Apple on Tuesday, we still have not heard anything from
Apple. Please advise by no later than 10:30 a.m. Pacific time whether Apple intends to oppose
Motorola' motion.
In addition, we have not received any response to our scheduling proposal, notwithstanding the Court's
direction that the parties meet and confer and try to come to an agreement on scheduling. We
suggest that the parties conduct a telephonic conference at 1 pm Pacific time today to see if we can
make any headway on this issue.
On Apr 12, 2012, at 2:44 PM, "Marshall Searcy" wrote:
Jill and Anne,
Now that Apple has had the proposed amended complaint for a couple of days, would
you let us know if Apple intends to oppose Motorola’s motion to amend?
3
From: Marshall Searcy
Sent: Tuesday, April 10, 2012 10:59 PM
To: 'Schmidt, Jill'
Cc: David Perlson; 'Davis, Mark'; 'HaskettCS@cov.com'; 'Cappella, Anne'; Graham
Pechenik
Subject: RE: Proposed Florida Schedule
Jill,
Please find attached Motorola’s proposed amended complaint and a redline version.
From: Schmidt, Jill [mailto:jill.schmidt@weil.com]
Sent: Monday, April 09, 2012 12:46 PM
To: Marshall Searcy
Cc: David Perlson; Davis, Mark; 'HaskettCS@cov.com'; Cappella, Anne
Subject: RE: Proposed Florida Schedule
Hi Marshall,
To the extent Motorola is intending to move for leave to amend its FL‐2 complaint in
lieu of filing its response to Apple's counterclaims today, please send us your proposed
amendment immediately so we can evaluate whether we are going to oppose
Motorola's motion.
Thanks,
Jill
From: Cappella, Anne
Sent: Sunday, April 08, 2012 10:21 AM
To: Marshall Searcy
Cc: David Perlson; Davis, Mark; Schmidt, Jill; 'HaskettCS@cov.com'
Subject: RE: Proposed Florida Schedule
Marshall,
We'll need to see the proposed amended complaint before we can take a position.
Also, we haven't heard back from you regarding our proposal for the Florida
schedules. Please let us know Motorola's position. Thanks.
‐Anne
Anne Cappella
Weil, Gotshal & Manges LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065-1134
anne.cappella@weil.com
+1 650 802 3141 Direct
+1 650 303 0309 Mobile
+1 650 802 3100 Fax
4
From: Marshall Searcy [mailto:marshallsearcy@quinnemanuel.com]
Sent: Saturday, April 07, 2012 6:09 PM
To: Cappella, Anne
Cc: David Perlson; Davis, Mark; Schmidt, Jill
Subject: Re: Proposed Florida Schedule
Anne,
Just to follow up on this, Motorola will be moving for leave to amend its complaint to
add new patents. Please let me know if Apple will oppose Motorola's motion.
On Mar 29, 2012, at 2:57 PM, "Marshall Searcy"
wrote:
Anne,
Motorola does intend to add several additional patents.
From: Cappella, Anne [mailto:anne.cappella@weil.com]
Sent: Wednesday, March 28, 2012 3:31 PM
To: Marshall Searcy; David Perlson
Cc: Davis, Mark; Schmidt, Jill
Subject: RE: Proposed Florida Schedule
Marshall,
We are still discussing your proposal with our client.
You mentioned on our previous call that Motorola may be adding
additional patents to the FL‐2 case. For scheduling discussions, it would
be helpful to know whether Motorola will be adding any patents (and
how many) on Monday. Thanks.
‐Anne
Anne Cappella
Weil, Gotshal & Manges LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065-1134
anne.cappella@weil.com
+1 650 802 3141 Direct
+1 650 303 0309 Mobile
+1 650 802 3100 Fax
From: Marshall Searcy [mailto:marshallsearcy@quinnemanuel.com]
Sent: Tuesday, March 27, 2012 1:53 PM
To: Cappella, Anne; David Perlson
Cc: Davis, Mark; Schmidt, Jill
Subject: RE: Proposed Florida Schedule
Anne and Mark,
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Just to follow up, could you guys let me know Apple’s position on the
proposal that we discussed on Thursday, i.e., that Motorola’s current
claims in FLA2 and certain of Apple’s claims from FLA2 be tried in FLA1?
From: Cappella, Anne [mailto:anne.cappella@weil.com]
Sent: Thursday, March 22, 2012 11:11 AM
To: Marshall Searcy; David Perlson
Cc: Davis, Mark; Schmidt, Jill
Subject: RE: Proposed Florida Schedule
Yes. We can use this dial‐in: 1‐800‐782‐1473 (passcode 3999740).
‐Anne
Anne Cappella
Weil, Gotshal & Manges LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065-1134
anne.cappella@weil.com
+1 650 802 3141 Direct
+1 650 303 0309 Mobile
+1 650 802 3100 Fax
From: Marshall Searcy [mailto:marshallsearcy@quinnemanuel.com]
Sent: Thursday, March 22, 2012 10:03 AM
To: Cappella, Anne; David Perlson
Cc: Davis, Mark; Schmidt, Jill
Subject: RE: Proposed Florida Schedule
Hi Anne, are you available at 4 today for a discussion on this?
From: Cappella, Anne [mailto:anne.cappella@weil.com]
Sent: Wednesday, March 21, 2012 3:23 PM
To: David Perlson
Cc: Marshall Searcy; Davis, Mark; Schmidt, Jill
Subject: Proposed Florida Schedule
David and Marshall,
Mark Davis asked me to respond to the email you sent to him last night
since he is traveling.
If the only remaining discovery concerned our subpoena to Rovi, an
additional month may have been sufficient. Unfortunately, that is far
from the case.
As we mentioned at the hearing, an amendment to your invalidity
contentions will require more than a sole Neonode deposition and
Rovi's compliance with Apple's subpoena. For one, given that the '185
reference is not prior art on its face, Apple will have to locate and
depose the inventors of the '185 patent about what they invented,
when they invented it, and about any relevant documentation that
6
allegedly corroborates the earlier invention date. Apple may also have
to depose additional individuals who worked with or who are relied on
by Motorola to otherwise corroborate the inventors'
testimony. Further, Apple will need to obtain and thereafter conduct an
extensive review of any documentation allegedly corroborating the
inventors' statements. On top of all this, it will require additional time if
these third‐parties do not voluntarily provide Apple the discovery it
needs. This process alone will require more than one month to
complete.
Second, despite Apple's request, Motorola still has not provided its
invalidity contentions with respect to the '185 reference unless
Motorola intends to drop this reference. Only until we receive and
evaluate Motorola's contentions for a patent that is not prior art on its
face will Apple be able to judge the extent of discovery that will be
required. At a minimum, Apple cannot further narrow its claims under
the current schedule without Motorola's contentions and further
discovery.
Third, Apple will need to conduct further discovery into the first US sales
of the Neonode N1 device in order to determine whether it even
qualifies as prior art. As neither of Neonode's 30(b)(6) designees was
able to state definitively when the first US sales occurred, further
depositions may be required.
Fourth, unless Motorola intends to drop the Juels prior art reference
against the '849 patent, the depositions of both of these third‐party
inventors will need to be sought and taken. Again, if they do not appear
voluntarily, it will take additional time to compel their depositions.
Fifth, there may be other and currently unforeseen issues that call for
additional discovery. For example, Motorola has not yet served its
amended invalidity contentions on Apple. If these contentions raise
new issues (e.g., other Neonode references, etc.), Apple will certainly
need to take all of the appropriate steps to explore those matters. This
would involve further time and effort to locate documents and
witnesses, review documents, and depose witnesses.
Sixth, there are many outstanding 30b6 topics and missing document
production that has been and is just now coming to light. Motorola
delayed in providing STB witness until the end of February (and has only
provided 3 total witnesses thus far). It is during these depositions that
Apple has learned that Motorola has failed to produce a significant
number of relevant documents. Further, Apple continues to learn
through discussions with third party IPG maker Rovi and cable service
providers of additional documents in Motorola's possession it failed to
produce. For example, Rovi stated that it has thousands of
communications with Motorola, which Apple has not been able to
locate in Motorola's production.
Invalidity contentions aside, there are other reasons that justify our
proposed extension. Apple is still pursuing much‐needed discovery
7
from uncooperative third‐parties. For example, despite serving Rovi
with a subpoena back in January, Rovi has not agreed to put up
witnesses for deposition until just this week. Rovi has also finally
agreed to look into and produce certain documents Apple requested
several months ago. We are expecting those documents sometime next
week and are in the midst of negotiating deposition dates. If it turns
out that Rovi's productions remain deficient, Apple will have to pursue
further discovery from Rovi. Of course, Apple is not just seeking third‐
party discovery from Rovi. Apple also is still in negotiations with various
cable providers to produce requested documentation and deposition
witnesses. For at least some of these third‐parties, it appears that
motions to compel will need to be filed. It will take well over a month
for the motions to be heard and for those depositions to be ultimately
scheduled in the various jurisdictions governing the
subpoenas. Motorola's promises to these third parties and Apple to
produce documents on their behalf has only contributed to delay this
process because: Motorola does not appear to have produced all the
documents it promised, Motorola forced Apple to seek the court's
intervention to obtain the information, and Motorola engaged in
protracted rolling productions of responsive documents.
Further, Apple is still in need of discovery from Motorola. For instance,
we are still waiting for Motorola to complete its rolling production of
documentation connected to its set‐top boxes and Motorola continues
to refuse to identify exactly when it will be complete. These documents
include agreements with cable providers, US‐only sales, global sales,
statements of work or amendments to agreements that show the terms
and rates for post‐sale set‐top box related services, bills of materials,
documentation of the bootloader running on all the accused set‐top
boxes, etc. Apple also needs further depositions, including depositions
for Mr. Rossi and designees for certain topics that previously‐designated
Rule 30(b)(6) witnesses were not adequately able to address (see, e.g.,
Jason Lang's March 9 email to John Duchemin, cc'ing you). While we
have addressed the immediate discovery issues known to Apple, other
30b6 topics and discovery from Motorola are yet to be fulfilled by
Motorola (see, e.g., Jason Lang's March 21 email to John Duchemin). In
addition to the reasons stated above, addressing these discovery
matters with Motorola will require an extension of more than a month.
Finally, as Apple made clear to Motorola earlier in the year, one of
Apple's trial counsel has a conflict with the current trial schedule, which
would not be cured by a one month extension. Apple's proposed
schedule would avoid this conflict.
For the sake of efficiency and fairness, we believe our proposed
schedule will address our currently anticipated needs and will prevent
us from having to go back to court to ask for further extensions of
time. If you would like to discuss this further, please do not hesitate to
contact Mark Davis or me. If we cannot reach agreement by tomorrow,
however, we intend to move the court to implement our proposed
schedule.
8
Thanks,
‐Anne
Anne Cappella
Weil, Gotshal & Manges LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065-1134
anne.cappella@weil.com
+1 650 802 3141 Direct
+1 650 303 0309 Mobile
+1 650 802 3100 Fax
From: David Perlson
Date: March 20, 2012 9:53:48 PM EDT
To: "'Davis, Mark'"
Cc: Marshall Searcy
Subject: RE: Proposed Florida Schedule
+ Marshall
Mark, as I indicated in the call, we understand what the Court stated
regarding granting Apple a reasonable extension of expert and
discovery dates to account for the amendment of the invalidity
contentions. But the three months or more you propose is unnecessary
for that. As we stated at the hearing, the Neonode depo already
occurred and Apple already subpoenaed Rovi quite some
time ago. Any additional discovery you claim to need should easily be
completed within a month of the current schedule. In any event, to
date you have not provided us with a particularized showing of what
specific additional discovery you need. Please provide us with that
information and we will consider whether an extension of more than
one month is appropriate.
Further, your email references Apple’s refusal to allow the addition of
new products in FLA 1. As I stated before, Motorola would be willing to
agree to Apple adding its proposed amendment provided that Apple
likewise agree to Motorola’s amending its infringement contentions
with new products. My understanding is that Apple will not agree to
this. So the record is clear, however, Motorola would be willing to
agree to a longer extension – one closer to the extension you propose –
in the event you were to accept Motorola’s proposal for bilateral
amendment.
Thanks,
David
9
From: Davis, Mark [mailto:mark.davis@weil.com]
Sent: Tuesday, March 20, 2012 3:03 PM
To: David Perlson
Subject: RE: Proposed Florida Schedule
any thoughts on the proposed extensions?
From: Davis, Mark
Sent: Monday, March 19, 2012 9:13 PM
To: davidperlson@quinnemanuel.com
Subject: Proposed Florida Schedule
David,
Pursuant to our call earlier today, I've attached a new proposed
schedule for Florida 1 given the recent developments in that case,
including the new invalidity issues and the outstanding Motorola and
third party discovery issues. Please let me know if you agree to the
proposed extension.
As Jill outlined in her recent email, we also do not agree with Motorola's
proposed reasons to combine portions of Florida 2 with Florida 1. The
Court already rejected Motorola's attempt to add new products to
Florida 1 ‐ which would require the reopening of numerous depositions
to deal with new products.
FL‐1 (current)
Deadline to serve amended invalidity
contentions
Apple to substantially narrow asserted
claims
Close of fact discovery
Opening expert reports
Rebuttal expert reports
Close of expert discovery
Deadline to file dispositive motions
Deadline to file pretrial motions
Deadline to file joint pretrial
stipulations / jury instructions
Calendar call
Trial
Thanks,
Mark
‐‐
FL‐1 (proposed
extension)
3/26/12
3/22/12
4/26/12
3/28/12
3/30/12
4/27/12
5/15/12
5/18/12
6/1/12
9/13/12
6/29/12
7/13/12
8/17/12
8/31/12
9/7/12
10/29/12
1/11/13
10/16/12
10/22/12
1/22/13
1/28/13
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