Motorola Mobility, Inc. v. Microsoft Corporation

Filing 62

Defendant's MOTION to Change Venue Defendant's Motion to Transfer This Action to the Western District of Washington and Accompanying Memorandum of Law by Microsoft Corporation. Responses due by 6/6/2011 (Attachments: #1 Exhibit Exhibit A David Kaefer's Declaration, #2 Exhibit Exhibit 1 to David Kaefer's Declaration, #3 Exhibit Exhibit 2 to David Kaefer's Declaration, #4 Exhibit Exhibit 3 to David Kaefer's Declaration, #5 Exhibit Exhibit B Curtis Miner's Declaration, #6 Exhibit Exhibit 1 to Curtis Miner's Declaration, #7 Exhibit Exhibit 2 to Curtis Miner's Declaration, #8 Exhibit Exhibit 3 to Curtis Miner's Declaration, #9 Exhibit Exhibit 4 to Curtis Miner's Declaration, #10 Exhibit Exhibit 5 to Curtis Miner's Declaration, #11 Exhibit Exhibit 6 to Curtis Miner's Declaration, #12 Exhibit Exhibit 7 to Curtis Miner's Declaration, #13 Exhibit Exhibit 8 to Curtis Miner's Declaration, #14 Exhibit Exhibit 9 to Curtis Miner's Declaration, #15 Exhibit Exhibit 10 to Curtis Miner's Declaration, #16 Exhibit Exhibit 11 to Curtis Miner's Declaration, #17 Exhibit Exhibit 12 to Curtis Miner's Declaration, #18 Exhibit Exhibit 13 to Curtis Miner's Declaration, #19 Exhibit Exhibit 14 to Curtis Miner's Declaration, #20 Exhibit Exhibit 15 to Curtis Miner's Declaration, #21 Exhibit Exhibit 16 to Curtis Miner's Declaration, #22 Exhibit Group Exhibit C to Motion, #23 Exhibit Group Exhibit D to Motion)(Miner, Curtis)

UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF FLORIDA
Civil Action No. 1:10-cv-24063-MORENO/TORRES

)
)
)
Plaintiff,
)
)
v.
)
)
MICROSOFT CORPORATION,
)
)
Defendant.
)
)
)
MICROSOFT CORPORATION,
)
)
Counterclaim Plaintiff, )
)
v.
)
)
MOTOROLA MOBILITY, INC.
)
)
Counterclaim Defendant. )
)
MOTOROLA MOBILITY, INC.

JURY TRIAL DEMANDED

PLAINTIFF AND COUNTERCLAIM DEFENDANT
MOTOROLA MOBILITY, INC.’S INITIAL DISCLOSURES
Plaintiff and Counterclaim Defendant Motorola Mobility, Inc. (“Motorola”) respectfully
makes the following Initial Disclosures pursuant to Rule 26(a)(1), Fed. R. Civ. P., and the
Court’s Pretrial Order Setting Conference (Docket No. 23).
These Initial Disclosures are based on information reasonably available to Motorola at
this time. Motorola’s investigation into this matter is ongoing and Motorola reserves the right to
supplement and/or amend these Initial Disclosures as required by Rule 26(e), Fed. R. Civ. P.
Motorola provides these Initial Disclosures without waiving in any manner: (1) the right
to object on any basis permitted by law to the use of any Initial Disclosure information contained
1

herein for any purpose in any subsequent proceeding in this or any other action; and (2) the right
to object on any basis permitted by law to any discovery request or proceeding involving or
related to the subject matter of these Initial Disclosures.

DISCLOSURES
a) The name and, if known, the address and telephone number of each individual
likely to have discoverable information--along with the subjects of that information-that the disclosing party may use to support its claims or defenses, unless the use
would be solely for impeachment.
Motorola hereby gives notice that the following individuals are likely to have
discoverable information that Motorola may use to support its claims or defenses. Motorola does
not consent to or authorize Microsoft or its counsel to communicate with any of Motorola’s
current or former employees. Any such individual should be contacted only through Motorola’s
counsel of record.
INDIVIDUAL

CONTACT
INFORMATION

SUBJ ECT(S) OF
INFORMATION

Frank Kolnick

Ontario, Canada
(Former Employee); may
only be contacted
through the undersigned
counsel for Motorola.

Inventions disclosed and/or
claimed in United States Patent
No. 5,502,839 (the ’839
Patent); state of the art of the
’839 Patent; conception and
reduction to practice of the
invention disclosed in the ’839
Patent and the prosecution of
the ’839 Patent.

Gene Eggleston

May only be contacted
through the undersigned
counsel for Motorola.

Inventions disclosed and/or
claimed in United States Patent
No. 5,764,899 (the ’899
Patent); state of the art of the
’899 Patent; conception and
reduction to practice of the
invention disclosed in the ’899
Patent and the prosecution of
the ’899 Patent.

2

INDIVIDUAL

CONTACT
INFORMATION

SUBJ ECT(S) OF
INFORMATION

Mitch Hansen

Fox River Grove, IL
(Former Employee); may
only be contacted
through the undersigned
counsel for Motorola.

Inventions disclosed and/or
claimed in United States Patent
No. 5,764,899 (the ’899
Patent); state of the art of the
’899 Patent; conception and
reduction to practice of the
invention disclosed in the ’899
Patent and the prosecution of
the ’899 Patent.

Anthony Rzany

May only be contacted
through the undersigned
counsel for Motorola.

Inventions disclosed and/or
claimed in United States Patent
No. 5,764,899 (the ’899
Patent); state of the art of the
’899 Patent; conception and
reduction to practice of the
invention disclosed in the ’899
Patent and the prosecution of
the ’899 Patent.

Joan DeLuca

Boca Raton, FL (Former
Employee); may only be
contacted through the
undersigned counsel for
Motorola.

Inventions disclosed and/or
claimed in United States Patent
No. 5,784,001 (the ’001
Patent); state of the art of the
’001 Patent; conception and
reduction to practice of the
invention disclosed in the ’001
Patent and the prosecution of
the ’001 Patent.

Doug Kraul

Gloucester, MA (Former
Employee); may only be
contacted through the
undersigned counsel for
Motorola.

Inventions disclosed and/or
claimed in United States Patent
No. 5,784,001 (the ’001
Patent); state of the art of the
’001 Patent; conception and
reduction to practice of the
invention disclosed in the ’001
Patent and the prosecution of
the ’001 Patent.

3

INDIVIDUAL

CONTACT
INFORMATION

SUBJ ECT(S) OF
INFORMATION

Charles Batey, Jr.

Austin, TX (Former
Employee); may only be
contacted through the
undersigned counsel for
Motorola.

Inventions disclosed and/or
claimed in United States Patent
No. 5,784,001 (the ’001
Patent); state of the art of the
’001 Patent; conception and
reduction to practice of the
invention disclosed in the ’001
Patent and the prosecution of
the ’001 Patent.

Dwight Smith

May only be contacted
through the undersigned
counsel for Motorola.

Inventions disclosed and/or
claimed in United States Patent
No. 6,272,333 (the ’333
Patent); state of the art of the
’333 Patent; conception and
reduction to practice of the
invention disclosed in the ’333
Patent and the prosecution of
the ’333 Patent.

Kamala Urs

May only be contacted
through the undersigned
counsel for Motorola.

Inventions disclosed and/or
claimed in United States Patent
No. 6,408,176 (the ’176
Patent); state of the art of the
’176 Patent; conception and
reduction to practice of the
invention disclosed in the ’176
Patent and the prosecution of
the ’176 Patent.

Jayanthi Rangarajan

Chicago, IL (Former
Employee); may only be
contacted through the
undersigned counsel for
Motorola.

Inventions disclosed and/or
claimed in United States Patent
No. 6,757,544 (the ’544
Patent); state of the art of the
’544 Patent; conception and
reduction to practice of the
invention disclosed in the ’544
Patent and the prosecution of
the ’544 Patent.

4

INDIVIDUAL

CONTACT
INFORMATION

SUBJ ECT(S) OF
INFORMATION

David Ladd

Lisle, IL (Former
Employee); may only be
contacted through the
undersigned counsel for
Motorola.

Inventions disclosed and/or
claimed in United States Patent
No. 6,757,544 (the ’544
Patent); state of the art of the
’544 Patent; conception and
reduction to practice of the
invention disclosed in the ’544
Patent and the prosecution of
the ’544 Patent.

Senaka Balasuriya

Weston, FL (Former
Employee); may only be
contacted through the
undersigned counsel for
Motorola.

Inventions disclosed and/or
claimed in United States Patent
No. 6,757,544 (the ’544
Patent); state of the art of the
’544 Patent; conception and
reduction to practice of the
invention disclosed in the ’544
Patent and the prosecution of
the ’544 Patent.

Curtis Tuckey

Chicago, IL (Former
Employee); may only be
contacted through the
undersigned counsel for
Motorola.

Inventions disclosed and/or
claimed in United States Patent
No. 6,757,544 (the ’544
Patent); state of the art of the
’544 Patent; conception and
reduction to practice of the
invention disclosed in the ’544
Patent and the prosecution of
the ’544 Patent.

Eric Eaton

Lake Worth, FL (Former
Employee); may only be
contacted through the
undersigned counsel for
Motorola.

Inventions disclosed and/or
claimed in United States Patent
No. 6,983,370 (the ’370
Patent); state of the art of the
’370 Patent; conception and
reduction to practice of the
invention disclosed in the ’370
Patent and the prosecution of
the ’370 Patent.

5

INDIVIDUAL

CONTACT
INFORMATION

SUBJ ECT(S) OF
INFORMATION

David Hayes

Lake Worth, FL (Former
Employee); may only be
contacted through the
undersigned counsel for
Motorola.

Inventions disclosed and/or
claimed in United States Patent
No. 6,983,370 (the ’370
Patent); state of the art of the
’370 Patent; conception and
reduction to practice of the
invention disclosed in the ’370
Patent and the prosecution of
the ’370 Patent.

Von Mock

Boynton Beach, FL
(Former Employee); may
only be contacted
through the undersigned
counsel for Motorola.

Inventions disclosed and/or
claimed in United States Patent
No. 6,983,370 (the ’370
Patent); state of the art of the
’370 Patent; conception and
reduction to practice of the
invention disclosed in the ’370
Patent and the prosecution of
the ’370 Patent.

Kirk Dailey

May only be contacted
through the undersigned
counsel for Motorola.

Corporate structure of
Motorola.

Chris Collins

May only be contacted
through the undersigned
counsel for Motorola.

Business and financial
information relating to the
products accused by Microsoft
sold in the United States.

Peter Prunuske

May only be contacted
through the undersigned
counsel for Motorola.

Program Manager for the
Motorola Droid 2 phone.

Marjorie Silha

May only be contacted
through the undersigned
counsel for Motorola.

Program Manager for the
Motorola Droid X phone.

Google, Inc.

1600 Amphitheatre
Pkwy, Mountain View,
CA 94043

Development, structure, design,
and/or operation of the Android
Platform.

6

INDIVIDUAL

CONTACT
INFORMATION

SUBJ ECT(S) OF
INFORMATION

Lawrence Robinson

May only be contacted
through the undersigned
counsel for Motorola.

Business, marketing and
financial information relating to
the DCH and BMC set-top
boxes.

Tom Chester

May only be contacted
through the undersigned
counsel for Motorola.

Business and financial
information concerning the
DCH and BMC set-top boxes.

Jeff Newdeck
Tim Newman

May only be contacted
through the undersigned
counsel for Motorola.

Development, structure, design,
and/or operation for the DCH
set-top boxes.

Janet Fryer

May only be contacted
through the undersigned
counsel for Motorola

Development, structure, design,
and/or operation for the BMC
set-top boxes.

Named inventors of
Microsoft’s alleged patents-insuit

Contact Information
Currently Unknown.

Named inventors on United
States Patent Nos. 6,791,536;
6,897,853; 7,024,214;
7,493,130; 7,383,460;
6,897,904; and 6,785,901;
believed to have knowledge
regarding the conception and
reduction to practice of the
alleged invention disclosed in
the aforementioned Patents and
the prosecution of the
aforementioned Patents.

Current and/or Former
Microsoft Employees

Contact Information
Currently Unknown

Believed to have knowledge
regarding the design and/or
development of the accused
products and/or products which
allegedly embody the Microsoft
asserted patents.

Motorola further identifies the individuals listed on Microsoft’s Initial Disclosures as
persons potentially having knowledge of facts relevant to this case and reserves the right to rely
7

upon any of such individuals to support its claims, defenses and damages in this action. In
addition, individuals to be identified in the parties’ discovery responses and document
production are expected to have discoverable information regarding Motorola’s claims, defenses
and damages sought in this case. Motorola expressly reserves the right to supplement its
response pursuant to Rule 26(e), Fed. R. Civ. P., as its investigation continues, and further
expressly reserve the right to call as witnesses such additional persons identified during the
course of discovery and as its investigation continues.
b) A copy--or a description by category and location--of all documents, electronically
stored information, and tangible things that the disclosing party has in its
possession, custody, or control and may use to support its claims or defenses, unless
the use would be solely for impeachment.
Categories of documents in Motorola’s custody, possession, and control that Motorola
may use to support its claims, defenses and damages include:
a)

The Motorola patents-in-suit;

b)

The complete file histories of the Motorola patents-in-suit, including all cited
references;

c)

Documents and/or things relevant to the conception and reduction to practice of
the claimed inventions in the Motorola patents-in-suit;

d)

Copies of relevant and discoverable correspondence;

e)

Documents sufficient to describe the functionality of the products relating to the
Motorola patents-in-suit;

f)

Documents sufficient to describe the structure, operation, and functionality of the
products accused in Microsoft’s counterclaims;

g)

Documents sufficient to show Motorola’s relevant marketing and sales activities
of the products relating to the Motorola patents-in-suit;

h)

Documents sufficient to show Motorola’s relevant marketing and sales activities
of the products accused in Microsoft’s counterclaims;
8

i)

Financial documents relating to the sale and use of the products accused in
Microsoft’s counterclaims;

j)

The Microsoft patents-in-suit;

k)

Prior art articles, documents, and products relating to the invalidity of the
Microsoft patents-in-suit;

l)

Documents relating to the level of ordinary skill in the field of art of the Motorola
patents-in-suit;

m)

Documents relating to the level of ordinary skill in the field of art of the Microsoft
patents-in-suit; and

n)

Documents relating to Microsoft’s willful infringement of the Motorola patentsin-suit.

Many of the aforementioned documents contain Motorola and/or third-party confidential
information and will be produced or made available for inspection subject only to any protective
order issued in this action and at the time called for in this Court’s Scheduling Order. Further,
Motorola’s identification of documents does not waive any privilege that may apply to those
documents. Motorola also expressly reserves the right to object to any request for production on
any appropriate ground, including that the requested information is subject to protection under
the attorney-client privilege, the work product doctrine or any other immunity from discovery.
Motorola’s search for documents that it may use to support its claims, defenses and damages in
this action is continuing and Motorola reserves the right to supplement this disclosure pursuant to
Rule 26(e), Fed. R. Civ. P.
Motorola also reserves the right to refer to and/or introduce any and all demonstrative
exhibits prepared in this case, any documents that are generated in this case after the date of this
disclosure including, but not limited to, papers filed with the Court, written discovery, expert
reports, correspondence and the like, and any documents not listed above in rebuttal.

9

c) A computation of each category of damages claimed by the disclosing party--who
must also make available for inspection and copying as under Rule 34 the
documents or other evidentiary material, unless privileged or protected from
disclosure, on which each computation is based, including materials bearing on the
nature and extent of injuries suffered.
In addition to seeking a permanent injunction, Motorola seeks money damages adequate
to compensate Motorola for Microsoft’s infringement. The computation of Motorola’s damages
in this action requires information that is in the possession, custody, or control of Microsoft, and
potentially third parties, and is not presently available to Motorola at this time. Motorola
expressly reserves the right to supplement this disclosure at such time that discovery makes it
appropriate to do so. Motorola’s investigation of its claims, defenses and damages is ongoing
and Motorola expressly reserves the right to supplement its response pursuant to Rule 26(e), Fed.
R. Civ. P., as its investigation continues.
d) For inspection and copying as under Rule 34, any insurance agreement under which
an insurance business may be liable to satisfy all or part of a possible judgment in
the action or to indemnify or reimburse for payments made to satisfy the judgment.
Motorola is currently unaware of any applicable agreement that requires disclosure under
Rule 26(a)(1)(A)(iv), Fed. R. Civ. P.
Motorola’s investigation of its claims is ongoing and Motorola expressly reserves the
right to supplement its response pursuant to Rule 26(e), Fed. R. Civ. P., as its investigation
continues.

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January 24, 2011

By: /s/ Leslie M. Spencer___
Leslie M. Spencer
(admitted pro hac vice)
Ropes & Gray LLP
1211 Avenue of the Americas
New York, NY 10036
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Edward M. Mullins, Fla. Bar No. 863920
[e-mail]
Hal M. Lucas, Fla. Bar No. 0853011
[e-mail]
Astigarraga Davis Mullins & Grossman, P.A.
701 Brickell Avenue, 16th Floor
Miami, Florida 33131
Telephone: [phone]
Facsimile: [phone]
Attorneys for Plaintiff,
MOTOROLA MOBILITY, INC.
Of Counsel:
Jesse J. Jenner
(admitted pro hac vice)
Steven Pepe
(admitted pro hac vice)
Ropes & Gray LLP
1211 Avenue of the Americas
New York, NY 10036
Telephone: [phone]
Facsimile: [phone]
Norman H. Beamer
(admitted pro hac vice)
Mark D. Rowland
(admitted pro hac vice)
Gabrielle E. Higgins
(admitted pro hac vice)
Ropes & Gray LLP
1900 University Avenue, 6th Floor
East Palo Alto, CA 94303
Telephone: [phone]
Facsimile: [phone]
11

CERTIFICATE OF SERVICE
The undersigned hereby certifies that on January 24, 2011, the foregoing document is
being served via E-mail this day on the counsel of record identified in the attached Service List.

By: __/s/ Leslie M. Spencer___

SERVICE LIST
Motorola Mobility, Inc. v. Microsoft Corp., Case No. 1:10-cv-24063-MORENO/TORRES

Roberto Martinez, Esq.
Curtis Miner, Esq.
[e-mail]
COLSON HICKS EIDSON
255 Alhambra Circle, 2nd Floor
Coral Gables, Florida 33134
Attorneys for Defendant and Counterclaim Plaintiff, Microsoft Corporation

Of Counsel:
Richard A. Cederoth
[e-mail]
John W. McBride
[e-mail]
SIDLEY AUSTIN LLP
One South Dearborn
Chicago, IL 60603