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)

EXHIBIT 2

From:
Sent:
To:
Cc:
Subject:

Marshall Searcy <[e-mail]>
Tuesday, April 10, 2012 4:07 PM
Cappella, Anne
David Perlson; Davis, Mark; Schmidt, Jill; Haskett, Christine; Michael Pieja
([e-mail]); Pace, Christopher
RE: Proposed Florida Schedule

Anne,
Following up on Apple’s proposal from yesterday, we are obviously concerned that the consolidation Apple is suggesting
would indefinitely postpone any trial in FLA1. In keeping with the Court’s directive from earlier today, Motorola believes
that the claims of FLA1 should be adjudicated in the most efficient way possible.
To that end, and in accordance with the Court’s instruction, we propose the following schedule, which tracks the
schedule that Apple previously proposed on March 19.
FL-1 (current)
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

3/28/12
3/30/12
4/27/12
5/15/12
5/18/12
6/1/12
9/13/12

FL-1 (proposed
extension)
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

In the interests of efficiency, we believe that the claims to be tried in FLA 1 should also include 1) the claims currently
pending in FLA1; 2) Motorola’s current claims in FLA2; 3) Apple’s slide to unlock claims in FLA 2; and 4) Apple’s new
infringement theory in its proposed amended answer. We believe the Motorola’s proposed schedule and grouping of
claims will best serve the Court’s efficiency concerns. We are willing to work with Apple on specific dates. However, in
light of all the work that has been into FLA1 up to this point, which includes a three day Markman hearing, two tutorials,
over 20 depositions and the substantial completion of discovery, we cannot agree to a schedule that would indefinitely
postpone the FLA1 trial.

From: Cappella, Anne [mailto:[e-mail]]
Sent: Monday, April 09, 2012 6:04 PM
To: Marshall Searcy
Cc: David Perlson; Davis, Mark; Schmidt, Jill; '[e-mail]'; Michael Pieja ([e-mail]); Pace,
Christopher
Subject: RE: Proposed Florida Schedule

Marshall,
Here is a proposed schedule combining FL-1 and FL-2 along the lines of what we are contemplating.
1

Event

FL-1 (current)

FL-2 (current)

Infringement contentions for
new patents
Invalidity contentions for
new patents
Markman Hearing for new
patents
Close of fact discovery

--

--

Consolidated FL-1
& FL-2 Schedule
7/13/12

--

--

8/10/12

--

--

11/2/12

5/4/12

6/8/12

Opening expert reports

5/11/12

6/8/12

Rebuttal expert reports

6/8/12

7/9/12

Close of expert discovery

7/3/12

7/30/12

Deadline to file dispositive
motions

7/13/12

8/13/12

Deadline to file pretrial
motions

7/20/12

10/29/12

Deadline to file joint pretrial
stipulations / jury
instructions
Calendar call

9/13/12

1/11/13

10/16/12

1/22/13

Trial

10/22/12

1/28/13

80 days after
Markman order
issues
90 days after
Markman order
issues
120 days after
Markman order
issues
150 days after
Markman order
issues
160 days after
Markman order
issues
180 days after
Markman order
issues
220 days after
Markman order
issues
250 days after
Markman order
issues
260 days after
Markman order
issues

Of course, this proposed schedule is subject to seeing the number and nature of patents Motorola and HTC seek to
add. With deadlines approaching in both FL cases, we'll need to know Motorola's position on this proposed schedule in
the next couple days to allow for briefing in case the parties cannot reach agreement. Please let us when you are
available to discuss.
-Anne

Anne Cappella
Weil, Gotshal & Manges LLP
2

201 Redwood Shores Parkway
Redwood Shores, CA 94065-1134
[e-mail]
[phone] Direct
[phone] Mobile
[phone] Fax

From: Marshall Searcy [mailto:[e-mail]]
Sent: Monday, April 09, 2012 1:48 PM
To: Cappella, Anne
Cc: David Perlson; Davis, Mark; Schmidt, Jill; '[e-mail]'
Subject: RE: Proposed Florida Schedule

Anne, with regard to Apple’s proposal for consolidation, we believe it will unnecessarily delay resolution of the claims in
FLA1.
As we have done in the past, however, we are happy to discuss scheduling for either or both cases, so please let me
know the dates that Apple has in mind.
From: Cappella, Anne [mailto:[e-mail]]
Sent: Sunday, April 08, 2012 10:21 AM
To: Marshall Searcy
Cc: David Perlson; Davis, Mark; Schmidt, Jill; '[e-mail]'
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
[e-mail]
[phone] Direct
[phone] Mobile
[phone] Fax

From: Marshall Searcy [mailto:[e-mail]]
Sent: Saturday, April 07, 2012 6:09 PM
To: Cappella, Anne
Cc: David Perlson; Davis, Mark; Schmidt, Jill
Subject: Re: Proposed Florida Schedule

Anne,
3

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" <[e-mail]> wrote:
Anne,
Motorola does intend to add several additional patents.
From: Cappella, Anne [mailto:[e-mail]]
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

<image001.jpg>
Anne Cappella
Weil, Gotshal & Manges LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065-1134
[e-mail]
[phone] Direct
[phone] Mobile
[phone] Fax

From: Marshall Searcy [mailto:[e-mail]]
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,
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:[e-mail]]
Sent: Thursday, March 22, 2012 11:11 AM
To: Marshall Searcy; David Perlson
Cc: Davis, Mark; Schmidt, Jill
Subject: RE: Proposed Florida Schedule
4

Yes. We can use this dial-in: 1-800-782-1473 (passcode 3999740).
-Anne

<image001.jpg>
Anne Cappella
Weil, Gotshal & Manges LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065-1134
[e-mail]
[phone] Direct
[phone] Mobile
[phone] Fax

From: Marshall Searcy [mailto:[e-mail]]
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:[e-mail]]
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
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.
5

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 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.

6

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.
Thanks,
-Anne

<image001.jpg>
Anne Cappella
Weil, Gotshal & Manges LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065-1134
[e-mail]
[phone] Direct
[phone] Mobile
[phone] Fax

From: David Perlson <[e-mail]>
Date: March 20, 2012 9:53:48 PM EDT
To: "'Davis, Mark'" <[e-mail]>
Cc: Marshall Searcy <[e-mail]>
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,
7

David
From: Davis, Mark [mailto:[e-mail]]
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: [e-mail]
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

--

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

Thanks,
Mark

8

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9