Motorola Mobility, Inc. v. Apple, Inc.

Filing 342

RESPONSE to Motion re 333 Plaintiff's MOTION to Enforce Order Compelling Rule 30(b)(6) Deposition Testimony from Apple and Accompanying Memorandum of Law in Support Apple's Response to Motorola's Motion to Enforce Order Compelling Rule 30(b)(6) Deposition Testimony From Apple filed by Apple, Inc.. Replies due by 5/11/2012. (Attachments: # 1 Affidavit Declaration of Christine Saunders Haskett, # 2 Exhibit 1, # 3 Exhibit 2, # 4 Exhibit 3, # 5 Exhibit 4, # 6 Exhibit 5, # 7 Exhibit 6)(Pace, Christopher)

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

MOTOROLA MOBILITY, INC.,
Plaintiff,
v.

JURY TRIAL DEMANDED

APPLE INC.,
Defendant.

APPLE INC.,
Counterclaim Plaintiff,
v.
MOTOROLA, INC. and
MOTOROLA MOBILITY, INC.,
Counterclaim Defendants.

APPLE’S RESPONSE TO
MOTOROLA’S MOTION TO ENFORCE ORDER COMPELLING RULE 30(b)(6)
DEPOSITION TESTIMONY FROM APPLE

I.

INTRODUCTION
On March 30, the Court ordered Apple to provide additional 30(b)(6) testimony within

ten days or as otherwise agreed by the parties. Apple then offered to provide a witness on a date
within the prescribed ten-day period. Motorola, however, rejected that date due to scheduling
conflicts and agreed that the witnesses could be provided outside the ten-day period.
Subsequently, Motorola separately took the position that claims from its second lawsuit in this
Court should be consolidated with the claims at issue in this suit and that the discovery deadlines
in this case should be extended accordingly.
On April 23, Judge Scola entered an order allowing Motorola to amend its infringement
contentions in this case, effectively allowing Motorola to consolidate its claims from its second
suit into this suit. Judge Scola simultaneously ordered the parties to meet and confer, within 20
days of April 23, regarding an amended schedule for this case, taking into account the new
products that Motorola would be adding to the case in its amended infringement contentions.
Although the Court ordered Motorola to provide its amended infringement contentions
“forthwith,” Motorola has yet to provide Apple with those contentions, meaning that Apple is not
yet aware of precisely which products Motorola intends to accuse in this suit. Under these
circumstances, Apple is unable to provide Motorola with the deposition testimony that it seeks,
as Apple does not know which accused products are to be covered by the testimony.
Despite this significant shift in the procedural landscape, Motorola insists that it must
receive the compelled deposition testimony by May 4—a date that will be of no significance
going forward, and a date by which Apple will have had no opportunity to take into account
Motorola’s supplemental infringement contentions in the preparation of the witnesses.
Given the course of events since this Court’s March 30 Order, the reasonable and
efficient time for those depositions is after Motorola provides its supplemental infringement
contentions and the parties have agreed on an amended case schedule, as ordered by Judge Scola.
Apple is not refusing to provide the deposition testimony that Motorola seeks; rather, Apple has
been and remains committed to negotiating the timing of those depositions in good faith and on a
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schedule that makes sense. Motorola’s instant motion is therefore unnecessary and wasteful of
the Court’s and the parties’ resources. The appropriate course here is for Motorola to provide its
amended infringement contentions, as ordered by Judge Scola, for the parties to agree on a new
case schedule, and for the parties to agree on deposition dates in the context of that schedule.
II.

STATEMENT OF FACTS
A.

This Court’s March 30, 2012 Order

On March 30, 2012, this Court ordered Apple to produce Rule 30(b)(6) witnesses with
knowledge of the e-mail notification function for iOS 5 and the source code for the webmail
functionality of Apple’s accused MobileMe product “within ten (10) days of the date of this
Order or as otherwise agreed by the parties.” D.E. 289. Four days later, on April 3, 2012, Apple
offered to schedule deposition testimony on April 9, 2012, on the source code for the webmail
functionality of Apple’s accused MobileMe product. Declaration of Christine Haskett in support
of Apple’s Response to Motorola’s Motion to Enforce Order Compelling Deposition Testimony
(“Haskett Decl.”), Ex. 1 (Haskett 4/3/12 email). Motorola rejected Apple’s offer, citing a
scheduling conflict for one of its attorneys. See, e.g., Motion at 3.
B.

The Subsequent Discussions Between the Parties and the Court’s April 23,
2012 Order

Subsequent to the Court’s March 30 order, Motorola maintained that certain claims from
the second lawsuit between these parties in this Court (Motorola II) should be consolidated with
the claims in this case. In particular, the same six patents asserted by Motorola in this case are
also asserted by Motorola in Motorola II, albeit against different Apple products. Motorola’s
position was that these claims, involving the same Motorola patents, should be consolidated into
this case, with the effect of bringing the Apple products accused in Motorola II into this case. In
taking this position, Motorola recognized that the close of fact discovery in this case (currently
set for May 4, 2012) would need to be extended, in order to provide sufficient time for discovery
on the new products. For example, on April 10, counsel for Motorola proposed adding several of

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the parties’ claims from Motorola II to this case, and moving the close of fact discovery to June
29, 2012. Haskett Decl., Ex. 2 (Searcy 4/10/12 email).
Apple has agreed that consolidation of the two cases makes sense but believes that the
consolidation should involve all of the claims in both cases, in order to avoid duplicative
discovery and promote judicial efficiency. Accordingly, on April 17, 2012, Apple filed a motion
seeking full consolidation of the two cases pending before this Court. See D.E. 323.
On April 23, 2012, Judge Scola issued an Order effectively permitting Motorola to add
the Apple products accused in Motorola II into this case and instructing the parties to agree on a
new case schedule. See D. E. 327 (vacating Judge Ungaro’s Order Striking Motorola’s
Supplemental Infringement Contentions and directing the parties “to meet-and-confer regarding
an appropriate amended procedural schedule for this case, in light of this Order.”). As Motorola
admits in its Motion, “the Court ordered the parties to meet and confer on a new schedule, which
presumably would move the discovery cut-off date.” Motion at 2 n.1. Judge Scola also ordered
the parties to meet and confer further on the consolidation issue. See D.E. 327.
C.

The Instant Motion

Despite the significant and ongoing changes to the contours of this case, Motorola has
insisted—and continues to insist—that it be provided with the deposition testimony that was the
subject of the Court’s March 30 order prior to the now-obsolete May 4 discovery deadline. See,
e.g., Haskett Decl., Exs. 3-4 (Bonifield 4/16/12 email; Bonifield 4/19/12 email). Apple has
resisted Motorola’s demands in this regard because the witnesses to be deposed are the same
witnesses who are going to be subject to deposition—yet again—in connection with the claims
from Motorola II that Judge Scola has just allowed to be brought into this case.
Indeed, because deposition testimony will need to be provided on the same types of
issues in connection with both the Motorola I and Motorola II claims, and because Motorola has
yet to provide Apple with its new infringement contentions (which Judge Scola ordered
Motorola to do over a week ago), Apple does not currently know the precise scope of the
witnesses’ testimony and is therefore unable to prepare them properly to testify. Apparently,
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under Motorola’s view, the same witnesses who have already been deposed in this case should
be deposed a second time prior to May 4, and then should be subject to deposition a third time in
connection with the new products that Motorola is about to bring into this case. This is
extraordinarily and unnecessarily burdensome for the witnesses. Nonetheless, Motorola has
continued its intransigence regarding scheduling the depositions before May 4, even after Judge
Scola issued the April 23 order drastically changing the contours of the case, and filed the instant
motion one day after that order was entered.
III.

ARGUMENT
Motorola’s motion presents the classic example of a motion that should not have been

brought. Apple has not refused to provide the deposition testimony that Motorola seeks. In fact,
far from it: before it became evident that the contours of the case were going to change, Apple
offered a date for one of the depositions sought, and Motorola rejected that date. Now that the
case has changed, however, it makes sense for the parties to meet and confer regarding dates for
the depositions that will make sense in light of the new schedule and the new claims that are
being brought into the case.
Indeed, the first step that needs to take place before more depositions are taken is that
Motorola must provide the amended infringement contentions that Judge Scola ordered be
submitted “forthwith.” All of the discovery of Apple’s witnesses in this case has been based on
Motorola’s infringement contentions; Apple has agreed throughout discovery to provide
Motorola with Rule 30(b)(6) deposition testimony that is related to Motorola’s infringement
allegations in this case. See, e.g., Haskett Decl., Ex. 5 (Ho 12/7/11 email). Until Apple receives
Motorola’s new infringement contentions, therefore, Apple cannot know what the scope of
further deposition testimony should be and cannot ensure that its witnesses are adequately
prepared to testify. Otherwise, once Motorola serves its amended infringement contentions, it
will inevitably request another set of depositions covering the newly accused products. Rather
than provide Apple with its new infringement contentions, as ordered, and then engage with
Apple regarding an appropriate deposition schedule, Motorola has chosen to waste the Court’s
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and the parties’ time with a motion to compel testimony that Apple is willing to provide on a
schedule that makes sense in the context of the case.
Motorola’s insistence that it be provided with witnesses for deposition prior to the nowobsolete May 4 discovery cutoff appears to be motivated by a desire to take depositions of the
same Apple witnesses, on the same issues, over and over again. Motorola has already taken the
depositions of the witnesses that it now seeks, and Apple is planning to provide them for
deposition a second time. These engineers are extremely busy, however, and if at all possible,
Apple would prefer to avoid providing them for deposition yet a third time in this case. Given
that it is foreseeable—in fact, almost a certainty—that these witnesses will need to be deposed in
connection with the new products that Motorola is about to add into this case in its amended
infringement contentions, the most efficient course would be for Apple to provide the witnesses
on all of the products—those currently in the case and those about to be added—at the same
time. By insisting that the witnesses be provided prior to the submission of Motorola’s amended
infringement contentions, however, Motorola appears to be trying to ensure that it will have yet
another chance to depose these same witnesses after this round. Motorola’s refusal to accept that
these witnesses not be re-deposed multiple times is inefficient, extremely burdensome, unfair and
highly disruptive to the witnesses, and smacks of gamesmanship. Such a result was not
foreseeable nor contemplated at the time of this Court’s March 30 order.1
Apple has demonstrated its continued willingness to negotiate with Motorola in good
faith regarding the overall procedural schedule, including an appropriate schedule for the
deposition testimony at issue. It remains committed to doing so, and asks the Court not to

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Indeed, to guard against the scenario in which the same witnesses would be deposed multiple
times, Apple sought an assurance that if the witnesses were to be provided by the now-obsolete
May 4 deadline, Motorola would not then seek a second deposition on the same subjects in light
of the anticipated revised schedule. Haskett Decl., Ex. 6 (Haskett 4/20/12 email). Rather than
respond to that proposal by Apple, Motorola chose instead to occupy the Court’s time with a
pointless motion that is based on a discovery cutoff that Motorola itself acknowledges no longer
applies.

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countenance this motion by Motorola, which at best wastes the resources of the parties and the
Court, and at worst attempts to use the Court to implement a scheme for the taking of inefficient
and duplicative discovery.
IV.

CONCLUSION
For the reasons discussed above, the Court should deny Motorola’s Motion to Enforce.

Dated: May 1, 2012

WEIL, GOTSHAL & MANGES LLP

/s/ Christopher R.J. Pace
Christopher R. J. Pace
[e-mail]
Edward Soto
[e-mail]
WEIL, GOTSHAL & MANGES LLP
1395 Brickell Avenue, Suite 1200
Miami, FL 33131
Telephone: [phone]
Facsimile: [phone]
Attorneys for Apple Inc.

OF COUNSEL:
Matthew D. Powers
[e-mail]
Steven Cherensky
[e-mail]
Tensegrity Law Group LLP
555 Twin Dolphin Drive, Suite 360
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: 650-802-6001

Mark G. Davis
[e-mail]
WEIL, GOTSHAL & MANGES LLP
1300 Eye Street, N.W., Suite 900
Washington, DC 20005
Telephone: [phone]
Facsimile: [phone]

Jill J. Ho
[e-mail]
WEIL, GOTSHAL & MANGES LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065
Telephone: [phone]

Robert T. Haslam
[e-mail]
COVINGTON & BURLING LLP
333 Twin Dolphin Drive, Suite 700
Redwood Shores, CA 94065
Telephone: [phone]

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Facsimile: [phone]

Facsimile: [phone]
Robert D. Fram
[e-mail]
Christine Saunders Haskett
[e-mail]
Samuel F. Ernst
[e-mail]
COVINGTON & BURLING LLP
One Front Street
San Francisco, CA 94111
Telephone: [phone]
Facsimile: [phone]

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CERTIFICATE OF SERVICE
I hereby certify that on May 1, 2012, I filed the foregoing document with the Clerk of the
Court. I also certify that the foregoing document is being served this day on all counsel of record
identified on the attached Service via email.
_ /s/ Christopher R.J. Pace

_

Christopher R.J. Pace (Fla. Bar No. 0721166)

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SERVICE LIST
Motorola Mobility, Inc. vs. Apple Inc.
Case No. 1:10cv023580-Civ-RNS-TEB
United States District Court, Southern District of Florida

Edward M. Mullins
Fla. Bar No. 863920
[e-mail]
ASTIGARRAGA DAVIS MULLINS & GROSSMAN, P.A.
701 Brickell Avenue, 16th Floor
Miami, FL 33131
Telephone: [phone]
Facsimile: [phone]
Attorneys for Motorola Mobility, Inc.
Of Counsel:
Charles K. Verhoeven
David A. Perlson
Anthony Pastor
QUINN EMANUEL URQUHART & SULLIVAN, LLP
50 California Street, 22nd Floor
San Francisco, CA 93111
[phone]
Raymond N. Nimrod
Edward J. DeFranco
QUINN EMANUEL URQUHART & SULLIVAN, LLP
51 Madison Avenue, 22nd Floor
New York, NY 10010
[phone]
David A. Nelson
QUINN EMANUEL URQUHART & SULLIVAN, LLP
500 West Madison Street, Suite 2450
Chicago, IL 60661
[phone]
[e-mail]
Attorneys for Motorola Mobility, Inc.

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