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)

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF FLORIDA
MIAMI DIVISION
MOTOROLA MOBILITY, INC.,
Plaintiff,

Case Number: 10-24063-CIV-MORENO

v.
MICROSOFT CORPORATION

JURY TRIAL DEMANDED

Defendant.

NOTICE OF SUBPOENA OF RESEARCH IN MOTION CORPORATION
PLEASE TAKE NOTICE that pursuant to Rules 30(a)(1), 34(c) and 45 of the Federal
Rules of Civil Procedure, Plaintiff Motorola Mobility, Inc. (“Motorola”) will serve the
attached subpoena for documents (identified in Schedule A) and deposition (topics identified
in Schedule B) on Research In Motion Corporation (“RIM”), attached hereto.

Dated: April 26, 2011

Respectfully submitted,
/s/ Khue V. Hoang
Edward M. Mullins
Hal M. Lucas
Astigarraga Davis Mullins & Grossman, P.A.
701 Brickell Avenue, 16th Floor
Miami, FL 33131
Telephone: [phone]
Attorneys for Plaintiff /
Counterclaim Defendant
MOTOROLA MOBILITY, INC.
Jesse J. Jenner
Steven Pepe
Khue V. Hoang
Leslie M. Spencer
Ropes & Gray LLP
1211 Avenue of the Americas
New York, NY 10020
Telephone: [phone]
Norman H. Beamer
Mark D. Rowland
Gabrielle E. Higgins
Ropes & Gray LLP
1900 University Avenue, 6th Floor
East Palo Alto, CA 94303
Telephone: [phone]
Kevin J. Post
Megan F. Raymond
Ropes & Gray LLP
One Metro Center
700 12th Street NW, Suite 900
Washington, DC 20005
Telephone: [phone]

UNITED STATES D ISTRICT COURT
NORTHERN DISTRICT OF TEXAS
MOTOROLA MOBILITY, INC.,

SUBPOENA IN A CIVIL CASE

Plaintirr,

Case Number 1O-24063-CIV-MORENO
(S.D. Florida)
MICROSOFT CORPORAT ION.

Derendants.
TO:

RESEARCH IN MOTION CORPORATION
c/o C T CORI'QRATION SYSTEM

350 N. ST. PAUL ST. STE. 2900
DALLAS, TX 7520J

0

YOU ARE COMMANDED to appear in the United States Di strict Court at the place, date, and time specifi ed below to
testi fv in the above case.

PLACE Of T ESTIMONY

COURTROOM

DATE AND TIME

[8]

YOU ARE COMMANDED to appear at the place, date, and time specified below to testify at the takin g of a
depos ition in the above case. The deposition will be [ZI transcribed; [8J video taped; lSI audio recorded. SEE
SCHEDULE 13 A ITACHED HERETO.

PLACE OF D EPOS ITI ON

D ATE AND TIME

Jackson Walker LLP
Bank of America Plaza
May 17, 2011 @ 9:00AMCT
901 Main Street, Suite 6000
Dallas, TX 75202
YOU ARE COMMANDED to produce and permit in spection, copying, tcst ing or sampl in g of th e foll ow in g
[8]
documents, electronically storcd infonnation or objects at thc place, date, and time specified below (list
documents, e lcctronicall~ stored information or ob'ccts); SEE SC HEDULE A AlTACHED HERETO,
PLACE
DATE AND TIME
1908 Kings Ct.
Flower Mound, TX 75028

May 10,2011 @4: 00PMCT

0

YOU ARE COMMANDED to permit inspection ofthe following premises at the date and time specified below.
PREMISES
DATE AND TIME

Any organization not a party to thi s suit that is subpocnacd for thc taking of a deposition shall designate one or more
offic ers, directors, or managing agents, or other persons who consent to testify on its behalf, and may sct forth, for each
person designated, the matters on which a person will testify. Federal Rules ofeivil Procedure. 30(b)(6).
ISSUING On'leER SIGNATURE AND TITLE (i NDICATE IF~RNEY F
OR
DATE
PLAINTIFFOR DEFENDANT)
. y~,
A

I

Attornev for Plaintiff Motorola Mobilitv, Inc. ~ \./AAJA,
ISSUING OFFICER'S NAMe, ADDRESS AND PHONE NUMBER
Khuc V. Hoang
Ropes & Gray LLP
1211 Avenue of the Americas
New York, New York 10036·8704

U

Aori1 26, 2011
TEI-EPI lONE
[phone]

(See Federal Rule ofCivi[ Procedure 45 (c), (d), and (e), on ncxl page)
PROOf OF SERVICE
DATE

PLAcn

SI; RVI,;O

SER VEl) ON (PRINT NAME)

MANNER OF SERVICE

Sr; RVED By ( PRINT NAMe)

TITLE

D ECLARATION OF SER VER

I declare under penalty of perjury under the laws of the United States of America that the forego ing infonnat ion contained
in the Proof of Service is true and correct:
Exec uted on:
DATe

SIGNATURE OF SERV ER

ADDRESS OF SERVER

Federal Rule of Civil Procedure 4S (c), (d), and (e), as amended on December 1,2007:
(e) 1
'lIon:cTl.'f(; A PI:RSQN StrllJr.cr To A SIIBl'Or../'iA.

(I I AVOiding UndllC.' Burdo:n or Expense: Sanctions, A part)' or anomey rl'SpoIlsiblc

ror I~sumg and 5Crvlnllalubpocna must takc reasonable stcpiS to avoid imposing undue
Ilurdo:n or c~pcnsc on a person subject to the subpoena, The issuing coun must enforee
Ihls duty and impose ~n approprial~ ilanction - which may include lost camin&!! and
rell$ol1ablc anorncis fee.~ - - !'In ~ pany or anomey ",1m falls to comply.
(2\ Comm~nd 10 l'roduce Materials or Permit Inspection
(A) Appearance Not Required . A pcDOII commanded to produce d(ICumcnlS ,
d<'Clfonically ~ Ior.-d 'nfornl3toon, or Ulngiblc thinll$, Of to pelllut the inspection of
PR"I'USC:<, need n(ll appear In person at the place of produdion or Inspection unless also
"J<I1lnandcd to appear fnr a doc[lOSu,on, heanng, or 1rI~1
(Ill ObJectlon~ A pcllOn commanded 10 Jlfoduce docu~nts or tangible things
or 10 pennll inspecl lon may!lCl'le on the party or anomey dcsignaled in the subpoena a
wlll1cn OIl)CCII()T110 In~pcctlng, ,opyini:. testing or sampling any or all of tile m~lcrial$ or
10 'IlspeCling Ihe prcmise,~ - or to producing cleetronically siored informatiOll in the
form'" forms rcq(lest~'(], The obJe<:tion must be ~crvC(\ bo:forc the earlier of !he timc
sfli..'Cllied for comph~ncc 01' 14 days after !he subpoena is ~rvo:d lfan ooje(tion is made.
11>c fnllowlni: rui<."S apply
(I) At any hmc, 011 notICe to the command..'d person. the SCfVlng party may
mo"c lhe 1!I..mng coun for an order compelling prodoctlon Of inspection.
(III Th~ IM:ts may be required only as din..'C:too In die ordo:r. and tile order
must pml~'Ct a person "'110 is neither a party nOf a p.1ny's officer from significant cxpo;.'CI~
rcsultin& from compliance
(J\ Quashing or Mudif\.'i ng ~ Subpoena.
(A) When Rl'tluif~-d. 00 timely motion. the issuing coun must quash or modify
a subpoena IM1 '
(I) falls to allllw a reasonable time 10 comply~
(il) R'tIUliCS a person "'ho IS neither a IJ3ny nor I IJ3rty's officer to trlvcl
nlOl'l: lhan 100 miles from .....here illat person resides, b employed, Of regularly transactS
MII1C'" III person - - C.\ccpt tllat. $\lbj('(:t to Rule 4S{c)(lX3)(illl,lhe person may be
commalloded to :mend a trial by mwcilng from any soch place within !he statc ....'h<:u: the
llml I~ heid.
(Iii) rl!qlllles d isclosure Of PIIVilcJ:l'd or olher prole'tcd maUcr. Ifno
excepl ion or .....:lI vcr applies, or
(IV) sub)('(:ts a person 10 undue burden
IA) Wilen l'crmmcd To prntect a pellion slIbjec:t to 01' affected by. subpoena,
the I:\SUlng court may. 00 motltHl. </Ull.'ih Of moI.hfy the , ubpo<:oa if it requires:
(I) dlSClosllI& a trade ,"'Crel Of other confi<ktitialresearch, development. or
comrocrclftl rnformalOnn ,
(II) disclosrng!lll unrCUirncd CJlpen's opinion Of rnformaTion Ihat docs not
describe specific (lCcurrcnccs in dispUTe and results from !he expe rt 's study that was not
requc~lcd b~ ~ party. or
(iii) a p..:r~on who I~ ncilh.:r a pany nor a p.,rty's officer to Incur suootanllal
expensc 10 trJvcl more than 100 milt.;'llo (lltend trial
(C) $[)<.'Clfyrnt; Condl1lon~ as an Allemall~e In tile circumstances described In
Rule 4S(c)(J)( Il), the court may. instead (If quaslling or modifying a subpoena. order
aflPClran.;e or productIon undL"f specified condiuons ,fthe ~rvillg pany

(I) sho~ a substantial nccl fOf lhe testimony 01" materialttlat cannot be
otherwisc mel without undue hardsllip; and
(ii) eMures that the subpoenaed person will be relUOllably compensated.
(d) D UT1r.s IN R urONOING To A SUBI'O I:NA,

(I) Produdn g Documellts or 1:1~'ttronicall y SIClfed ln fonnation, These procedures
apply to producing documents or clectronlcall~ srored information:
(A) OocUml'CIU A person respon(\illllt(l a subpoell<lto produce documents must
produce lhem as they Ife kept in the ordinary course: ofbuslneu or nlll" OI"gani7.C and label
them to eOlTC$pond to !he categorics in the demand.
(8) Form fOf Producing Electronically Stored Information Not Spec,fied, Ira
subpoena does not ~pec, fy a form for prodUCing ek'CIronita!1y stored infOl"n1l1tion. tile
person respondin, must produce ,t in a form or forms in whklllt 's ordinallly maintained or
in a reasonably usablc form (If form~ .
(C) Elcclfoni'lIlly Stored InfClfmation Prod!H:cd In Only One I'orm, The person
responding need 001 producc the same electronically storcd informatioo in more !han one
r,~

(D) Inaccessible ElectronIcally Stored Information. The person responding ",-'Cd
not Jlfovide dlseo"ery ofelectronitally $IOfCd InfOIlIIalion from 5OUr«S thal the pelliOO
identifies as not reasonably accessible ~ause ofundllC.' burden 01" cost. On million to
compel discovery or for a protC'C1ivc order,die person responding must sllow that the
information is nOt reasonably acrcssib1c because of undue burden Of cost. If that shOWing IS
made. the court may nonetheless order disc:overy from sucb s(lurCC$ if the rcquesting pany
sho"" ,good cause, considering the limi\lltions of Rule 26(b)(2)(C). The coun mtly specify
condihons for the dlsc:ovcry
(2) Claiming Privilege or Pmtcclion.
(A) Informati on Withheld. A person wlthbnldlng subpoenaed infOfm3tioo under I
claim th;!t It is pnvilc,cd 01" sutrjec:t to protection as lnal-pn-patauoo matcrml mmt:
(i) expressly make the claim: and
(11) describe tile nature of the WIthheld documcnl$, communicationS. Of tanglblc
Illings in I manner lhat. without revcaling infOflT1~tion itselfpnvllcgcd or protoc:tcd, will
cnable the panIcs to assess tile claim.
(R) Information ProdllCed. lf information IlrodllCcd in rCiipon5c 10 Dsubpoena is
5ubjccitO 8 cla,im of privilege or ofprOl.ccuuo IL'Ilrial'preparalion mUlerial, the person
making tile claIm may notify any pany thai receIved !he mformatlon oftbe ct~lm and thc
basis for It. Aner being notifll-d, a party must promptly rctum, sequestcr. or destroy the
specified informalion and any copies it has, must not usc ordisclosc the Informatloo untIl
the clalm is n:soh"Cd~ mllSt take reasonable St~ps 10 retrieve tile information if the pany
disclosed it before beinl notificd~ and lTIIIy promptly pfdCl'ltdie information to the court
under SClI fOf I dClmnination of the claim. The pcBOn who Jlfoduced tile informalion mUSt
preserve the information until !he claim is fC5Olved.
(~) CONTEM n

Thc issuinl coun may hold in conlempt 8 pellion who. having been served. fails
without adequatc excuse to obey the subpocn~, A nonparty's failure to obey muSt be
excus..'I.! iftl'le subpoena purporu 10 require the nonparty to anCl1d Of produce al a place
outside the limits of Rule 4S{c)(J)(A)(;,)

SCHEDULE A
DEFINITIONS AND INSTRUCTIONS
For a statement of your obligations in producing documents under this subpoena, see
Rules 45(d)(1) and (2) of the Federal Rules of Civil Procedure, which appears on the reverse
side of the subpoena.
1.

The terms "you," "your," and/or "RIM," shall mean Research in Motion

Corporation, and any and all of its subsidiaries, parents, affiliates, divisions, successors,
predecessors, agents, employees, representatives, directors, officers, trustees, and attorneys,
or any other person or entity purporting to act on behalf of, or subject to the direction or
control of any of the foregoing.
2.

The term "Plaintiff" or "Motorola" shall refer to Motorola Mobility, Inc..

3.

Each of the terms "any," "all," and "each" shall be construed as "any, all, and/or

each."
4.

The connectives "and" and "or" shall be construed either disjunctively or

conjunctively as necessary to bring within the scope of the discovery request all responses
that might otherwise be construed to be outside of its scope.
5.

The use of the singular form of any word includes the plural and vice versa.

6.

The term "person" means any legal entity including natural persons, governmental

bodies or agencies, corporations, partnerships, unincorporated associations, joint ventures,
sole proprietorships, or any other entity or organization of individuals.
7.

The terms “document” and “documents” are to be construed synonymously with

their use in the Federal Rules of Civil Procedure, and includes without limitation all tangible
things which come within the meaning of the terms “writings and recordings” used in Federal

1

Rule of Evidence 1001 and all electronically stored information. A draft or non-identical
copy is a separate document within the meaning of this term.
8.

The term "relating to," "relate(s) to," or "related to" means, in addition to its

customary and usual meaning, discussing, referring, pertaining, reflecting, showing,
recording, or having any logical or factual connection whatever with the subject matter in
question.
9.

The term "concerning" means in whole or in part, directly or indirectly, referring to,

relating to, connected with, commenting on, responding to, showing, describing, analyzing,
reflecting, and consulting.
10.

The term "including" means including without limitation.

11.

The term “communication” means any transmission, exchange, or transfer of

information by any means regardless of content, format and medium.
12.

The terms “identify” or “identity” with respect to a natural person means providing

at least the following information for him or her: (a) full name; (b) present address and
telephone number, or if not known, last known address and telephone number; (c) current
employer; (d) title or position; and (e) employment duties, functions, and/or responsibilities.
13.

If in answering these Requests for Production RIM withholds any information

under a claim of privilege, work product immunity, or otherwise, please state that RIM is
withholding information and explain why, including a detailed description of the information
held and any grounds for an assertion of privilege. Information provided should include: (i)
the date of the document; (ii) the subject matter of the document; (iii) the person(s) who
prepared the document; (iv) all persons to whom the document was distributed, shown, or
explained; (v) its present custodian; and (vi) the nature of the privilege asserted.

2

14.

If RIM objects to or disagrees with any of the Definitions set forth in these

Requests, or if it does not understand any term used in these Requests, please explain in
detail the nature of RIM’s disagreement with the definition, or lack of understanding of the
term, and provide RIM’s grounds for the objection to or definition of the term. In responding
to the Request, please provide RIM’s understanding of the objected-to term and respond to
the Request using that definition.
15.

These requests shall apply to all documents in RIM’s possession, custody or

control, whether they are at any individual’s home or place of business or elsewhere. These
requests cover all responsive documents stored by personal computers, servers, hard disks,
electronic data storage devices, and data archives in RIM’s possession, custody, or control.
16.

If RIM is aware that a document or group of documents responsive to these requests

once existed, but has been destroyed or discarded, RIM shall state when the document or
group of documents was destroyed or discarded, why the document or group of documents
was destroyed or discarded, the person most knowledgeable about the content of the
document(s) and the circumstances under which the document or group of documents was
destroyed or discarded.
17.

All requested documents are to be produced in the same file or other organizational

environment in which they are maintained in the ordinary course of business. For example, a
document that is part of a file, docket or other grouping should be physically produced
together with all other documents from said file, docket or grouping, in the same order or
manner of arrangement as the original. Alternatively, as to each document and thing
produced in response hereto, identify the request for production in response to which the
document or thing is being produced.

3

18.

Color copies of documents are to be produced where color is necessary to interpret

or understand the contents.
19.

If no documents are responsive to a particular request, please so state.

DOCUMENTS TO BE PRODUCED
1. A representative copy of each Installation Guide, User Guide, Getting Started Guide
for each BlackBerry handheld device, as well as representative copies of other
instructional guides directed to end-users of BlackBerry handhelds devices, published
between 1999 and 2001, inclusive, including at least such guides for the RIM 850,
RIM 857, RIM 950, and RIM 957 handheld devices.
2. A representative copy of each Technical White Paper concerning BlackBerry
Enterprise Server published between 1999 and 2001, inclusive.
3. A representative copy of each Technical White Paper concerning BlackBerry
Exchange Edition published between 1999 and 2001, inclusive.
4. Any documents that RIM reviews or relies on in preparing for the deposition on the
topics listed in Schedule B to this subpoena.

4

SCHEDULE B
DEFINITIONS AND INSTRUCTIONS
1. Definitions and Instructions 1-19 in Schedule A to this subpoena are incorporated
herein.

DEPOSITION TOPICS
1. Authentication of all documents produced pursuant to paragraphs 1-4 of Schedule A
to this subpoena, including, but not limited to, authenticating the date of the drafting
and publication of any such document.
2. The functioning of email, contacts, calendar, and application synchronization for
BlackBerry Handhelds sold between 1999 and 2001, including synchronization
described in documents produced pursuant to paragraphs 1-4 of schedule A to this
subpoena, as well as how, in connection with such synchronization, BlackBerry
Handhelds elect to communicate data over wireless radio, a serial connection, or
some other synchronization mechanism.

5

CERTIFICATE OF SERVICE
I hereby certify that on April 26, 2011, a copy of the foregoing Notice Of Subpoena
Of Research In Motion Corporation was served by e-mail upon the counsel of record
included in the attached Service List.
/s/ Leslie M. Spencer
Leslie M. Spencer
SERVICE LIST
Motorola Mobility, Inc. v. Microsoft Corp., Case No. 1:10-cv-24063-MORENO
Roberto Martinez, Esq.
Curtis Miner, Esq.
COLSON HICKS EIDSON
255 Alhambra Circle, Penthouse
Coral Gables, FL 33134
Tel: [phone]
Email: [e-mail]
[e-mail]
Attorneys for Defendant /
Counterclaim Plaintiff
MICROSOFT CORPORATION
Of Counsel:
David T. Pritikin
Richard A. Cederoth
Douglas I. Lewis
John W. McBride
SIDLEY AUSTIN LLP
One South Dearborn
Chicago, IL 60603
Tel: [phone]
Email: [e-mail]
[e-mail]
[e-mail]
[e-mail]

Brian R. Nester
Kevin C. Wheeler
SIDLEY AUSTIN LLP
1501 K Street NW
Washington, DC 20005
Tel: [phone]
Email: [e-mail]
[e-mail]

UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF FLORIDA
MIAMI DIVISION
CASE NO. 1:10-CV-24063-MORENO/TORRES
MOTOROLA MOBILITY, INC.,
Plaintiff,
v.
MICROSOFT CORPORATION,
Defendant.

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

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PLAINTIFF MOTOROLA MOBILITY, INC.’S NOTICE OF
SUBPOENA TO THIRD PARTY HTC AMERICA, INC.
PLEASE TAKE NOTICE that pursuant to Rules 30(a)(1), 34(c), and 45 of the Federal
Rules of Civil Procedure, Plaintiff Motorola Mobility, Inc. (“Motorola Mobility”) will serve the
subpoena attached as Exhibit 1 on HTC America, Inc.
The documents set forth in the attached Schedule B are to be produced on or before May
25, 2011 at 9:00 am Pacific Time at the offices of the Summit Law Group, 315 Fifth Avenue
South, Suite 1000, Seattle, WA 98104.
PLEASE TAKE FURTHER NOTICE that pursuant to Rule 30(b)(6) of the Federal Rules
of Civil Procedure, Motorola Mobility, by and through its attorneys Ropes & Gray LLP, will
-126299269_1

take the deposition upon oral examination of the entity listed above by a designated
representative as to the matters set forth in the attached Schedule A on June 1, 2011 at 9:00 am
Pacific Time at the office of the Summit Law Group, 315 Fifth Avenue South, Suite 1000,
Seattle, WA 98104. The deposition will be recorded by stenographic and/or video means, taken
before a Notary Public or other officer authorized by law to administer oaths, and will continue
from day to day until completed.
Respectfully submitted,

Dated: May 10, 2011

By: /s/ Leslie M. Spencer___
Jesse J. Jenner
Steven Pepe
Khue V. Hoang
Leslie M. Spencer
Ropes & Gray LLP
1211 Avenue of the Americas
New York, NY 10036
Telephone: [phone]
Norman H. Beamer
Mark D. Rowland
Gabrielle E. Higgins
Ropes & Gray LLP
1900 University Avenue, 6th Floor
East Palo Alto, CA 94303
Telephone: [phone]
Kevin J. Post
Megan F. Raymond
Ropes & Gray LLP
One Metro Center
700 12th Street NW, Suite 900
Washington, DC 20005
Telephone: [phone]
Edward M. Mullins
Hal M. Lucas
Astigarraga Davis Mullins & Grossman, P.A.
-2-

26299269_1

701 Brickell Avenue, 16th Floor
Miami, Florida 33131
Telephone: [phone]
Attorneys for Plaintiff / Counterclaim Defendant
MOTOROLA MOBILITY, INC.

-326299269_1

CERTIFICATE OF SERVICE
I hereby certify that on May 10, 2011, copies of the foregoing Plaintiff Motorola
Mobility, Inc.’s Notice Of Subpoena To Third Party HTC America, Inc. was served by e-mail
upon the counsel of record included in the attached Service List.
/s/ Amanda F. Wieker___
Amanda F. Wieker

SERVICE LIST
Motorola Mobility, Inc. v. Microsoft Corp., Case No. 1:10-cv-24063-MORENO
Roberto Martinez, Esq.
Curtis Miner, Esq.
COLSON HICKS EIDSON
255 Alhambra Circle, 2nd Floor
Coral Gables, Florida 33134
Tel: [phone]
Email: [e-mail]
[e-mail]
Attorneys for Defendant /
Counterclaim Plaintiff
MICROSOFT CORPORATION
Of Counsel:
David T. Pritikin
Richard A. Cederoth
Douglas I. Lewis
John W. McBride
SIDLEY AUSTIN LLP
One South Dearborn
Chicago, IL 60603
Tel: [phone]
Email: [e-mail]
[e-mail]
[e-mail]
[e-mail]

Brian R. Nester
Kevin C. Wheeler
SIDLEY AUSTIN LLP
1501 K Street NW
Washington, DC 20005
Tel: [phone]
Email: [e-mail]
[e-mail]

-426299269_1

Exhibit 1

SCHEDULE A
DEFINITIONS AND INSTRUCTIONS
Each request in this Schedule is subject to and incorporates the following definitions and
instructions as used herein.
1.

“Motorola Mobility” or “Plaintiff” means, collectively and individually, Motorola

Mobility, Inc., and all its predecessors or successors (merged, acquired, or otherwise), parents,
divisions, subsidiaries, and affiliates thereof, and all officers, agents, employees, counsel and
other persons acting on its behalf, or any other person or entity subject to Motorola Mobility’s
control, or which controls Motorola Mobility, including but not limited to Motorola, Inc.
2.

“HTC” or “HTC Corporation” means, collectively and individually, HTC

Corporation, and all its predecessors or successors (merged, acquired, or otherwise), parents,
divisions, subsidiaries, and affiliates thereof, and all officers, agents, employees, counsel and
other persons acting on its behalf, or any other person or entity subject to HTC’s control, or
which controls HTC.
3.

“Microsoft,” “Microsoft Corporation,” or “Defendant” means, collectively and

individually, Microsoft Corporation, and all its predecessors or successors (merged, acquired, or
otherwise), parents, divisions, subsidiaries, and affiliates thereof, and all officers, agents,
employees, counsel and other persons acting on its behalf, or any other person or entity subject to
Microsoft’s control, or which controls Microsoft.
4.

“Person” means any natural person or individual, and any and all legal entities,

including without limitation, corporations, companies, firms, partnerships, joint ventures,
proprietorships, associations, governmental bodies or agencies, or other form of business
enterprise.

1

5.

The terms “and” and “or” are terms of inclusion and not of exclusion and are to be

construed either disjunctively or conjunctively as necessary to bring within the scope of these
requests any documents or responses which might be otherwise construed to be outside the scope
of these requests.
6.

The term “any” includes “all,” and the term “all” includes “any.”

7.

The singular of any term includes the plural of that term, and the plural includes

the singular.
8.

The term “concerning” means identifying, referring to, concerning, regarding,

evidencing, demonstrating, summarizing, reflecting, constituting, containing, embodying,
mentioning, pertaining to, commenting upon, connected with, discussing, describing, analyzing,
showing, comprising, or relating to in any relevant way to a particular subject, in whole or in
part, either directly or indirectly.
9.

“Document” shall have the broadest meaning and scope ascribed under Rule 34 of

the Federal Rules of Civil Procedure, and include all tangible things which come within the
meaning of the terms “writings and recordings,” as used in Federal Rule of Evidence 1001 and
all electronically stored information. A draft or non-identical copy is a separate document within
the meaning of this term.
10.

“Electronically stored information” means information created, manipulated,

communicated, stored, and/or best utilized in any type of electronic, magnetic or any other
nonpaper form or machine-readable medium.
11.

“Communication” means any transmission, exchange, or transfer of information

by any means regardless of content, format and medium.

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12.

“Identify” or “identity” with respect to a natural person or individual means

providing at least the following information for him or her: (a) full name; (b) present address and
telephone number, or if not known, last known address and telephone number; (c) current
employer; (d) title or position; and (e) employment duties, functions, and/or responsibilities.
13.

“Identify” or “identity” with respect to HTC’s products, devices, or other articles

of manufacture means providing the following information: (a) any designation used internally
by HTC or HTC’s employees for that product, device, or article of manufacture, including
formal or informal nicknames; and (b) any designation used publicly by HTC or HTC’s
employees for that product, device, or article of manufacture, including but not limited to the part
or model number and name.
14.

“Identify” or “identity” with respect to communications means providing the

following information: (a) the identity of the person(s) creating such communication; (b) the
identity of the recipient(s) of such communication; (c) the date of the communication; and (d) the
nature, substance, and contents of the communication.
15.

The “‘333 Patent” means United States Patent No. 6,272,333.

16.

“Windows Mobile Phone Technology” means Microsoft Windows® operating

system technology for mobile phones or devices, specifically including Windows Mobile 6.1,
Windows Mobile 6.5, and Windows Phone 7.
17.

“Windows Marketplace” means Microsoft’s virtual software application store,

specifically including Marketplace (as used with Windows Phone 7) and Windows Marketplace
for Mobile (as used with Windows Mobile 6.0, 6.1, and 6.5).
18.

“Application Registry Technology” means all Microsoft products, software,

instruction sets, programs, routines, data structures, object classes, commands or protocols

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released since 2004 and designed or operable to present, register, transfer, download, upload,
copy or manage software applications executable on a phone or mobile device, including but not
limited to Marketplace (for Windows Phone 7) and Windows Marketplace for Mobile.
19.

“HTC Windows Phones” means all mobile phones or devices sold or

manufactured by HTC that incorporate or embed Windows Mobile Phone Technology, including
but not limited to the HTC HD7, Arrive, Surround, Imagio, Touch, HD2, Tilt 2, Touch Pro2,
Dash 3G, Ozone, Touch Cruise
20.

“Technical Documentation” means documents that relate to structure, electronic

circuitry, operation, function, and/or features, including but not limited to user guides, user
manuals, reference manuals, service manuals, product manuals, use cases, product descriptions,
white papers, administrator guides, installation guides, technical manuals, technical
specifications, functional specifications, software manuals, software design documents, memory
maps, block diagrams, theory of operation documents, road maps, datasheets, schematics,
computer screen shots, prototype designs, assembly drawings, engineering drawings, software
design drawings or software programming code samples, and HTC Internet resources.
DEPOSITION TOPICS
TOPIC NO. 1
For all HTC Windows Phones, the design, structure, electronic circuitry, operation, and
functionality of the processor and all hardware components for transmitting and receiving data,
including but not limited to Bluetooth, 3G, GPRS, EDGE, and Wi-Fi data.

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TOPIC NO. 2
HTC’s use, incorporation, installation, and deployment of Windows Mobile Phone
Technology in HTC Windows Phones, including how HTC Windows Phones are adapted for,
utilize, run, or interact with Windows Mobile Phone Technology.
TOPIC NO. 3
The features, characteristics, and functions of HTC Windows Phones related to installing
software applications or updates, downloading, storing, updating, monitoring availability,
deleting, tracking versions and updates, and/or transmitting information regarding any software
application, including but not limited to use or incorporation of Windows Mobile Phone
Technology for maintaining a list of installed software applications on a HTC Windows Phone,
receiving software application installs or updates on a HTC Windows Phone from Windows
Marketplace, deleting software applications from a HTC Windows Phone, and transmitting to
Windows Marketplace information about a software application installation, deletion, update,
and/or other change.
TOPIC NO. 4
All contracts, licenses, and agreements between HTC and Microsoft concerning
Windows Mobile Phone Technology or HTC Windows Phones.
TOPIC NO. 5
All contracts, licenses, and agreements between HTC and Microsoft concerning any
litigation between Motorola Mobility and Microsoft.
TOPIC NO. 6
The marketing, advertising, and promotion of HTC Windows Phones in the United
States.

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TOPIC NO. 7
The volume or quantities of HTC Windows Phones (in units and dollars) sold or offered
for sale in the United States since 2004.
TOPIC NO. 8
The identity and location of all documents and things concerning the foregoing topics.

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SCHEDULE B
DEFINITIONS AND INSTRUCTIONS
For a statement of your obligations in producing documents under this subpoena, see
Rules 45(d)(1) and (2) of the Federal Rules of Civil Procedure, which appears on the reverse side
of the subpoena.
1.

Definitions and Instructions 1-20 in Schedule A to this subpoena are incorporated

herein by reference.
2.

If any document or thing is withheld subject to a claim of attorney-client

privilege, attorney work product immunity, or any other privilege or immunity from disclosure,
HTC shall describe in sufficient detail the nature of the document or thing withheld, its date, a
description of the subject matter, the names and addresses of all persons who prepared the
document and to whom the document was disclosed, its present custodian, and a statement of the
grounds for withholding the information, such that will enable other parties to assess the claim of
privilege or immunity.
3.

These Requests require HTC to produce all documents and things in HTC’s

possession, custody or control; or in the possession, custody or control of HTC’s agents,
consultants, representatives, officers, directors, affiliates, predecessors and successors in interest,
parents, divisions, subsidiaries, regional offices, assignees, trustees, employees, experts,
attorneys, and/or anyone else acting on HTC’s behalf or subject to its control.
4.

All documents and things should be produced with information that identifies the

file or other source in which each document responsive to these Requests is found, or a record of
such source information shall be made available upon request by Plaintiff during the course of
discovery. All documents and things should be produced in the same file or other organizational

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environment in which they are maintained. For example, a document that is part of a file, docket
or other grouping should be physically produced together with all other documents from said
file, docket or grouping responsive to said request, in the same order or manner of arrangement
as the original. Additionally, a document should be produced stapled, clipped or otherwise bound
or connected in the same manner as the original. Where color is necessary to interpret or
understand the content of the documents, please produce color copies.
5.

All documents that constitute electronically stored information as defined in the

Federal Rules of Civil Procedure shall be produced as single page TIFFs with image load files
showing production numbers and document breaks or as otherwise agreed. Plaintiff reserves the
right to request production of electronically stored information in its native format and/or with
associated metadata where necessary.
6.

If HTC cannot comply in full with any specific Request, after a diligent search,

HTC shall comply to the fullest extent possible, specifying: (a) the information it fails to
produce; and (b) why full compliance is not possible.
7.

If HTC fails to produce a document or thing on the grounds that such document or

thing is no longer in HTC’s possession, custody or control, HTC shall state what disposition was
made of that document or thing, including the circumstances of any loss or destruction of such
document or thing, and the names and addresses of all persons having knowledge of the nature
and contents of such document or thing.
8.

If HTC has no documents responsive to a certain request, please so state. If HTC

is aware that a document or group of documents responsive to these requests once existed, but
has been destroyed or discarded, identify each such document or group of documents, including
by stating: (i) the date of the document; (ii) the subject matter of the document; (iii) the person(s)

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who prepared or authored the document; (iv) all persons to whom the document was distributed,
shown, or explained; (v) when the document or group of documents was destroyed or discarded;
(vi) why the document or group of documents was destroyed or discarded; and (vii) the person
most knowledgeable about the content of the document(s) and the circumstances under which the
document or group of documents was destroyed or discarded.
9.

These requests are continuing in nature, and responses must be supplemented in

accordance with Fed. R. Civ. P 26(e). If additional information is later discovered that is
responsive to these requests, supplemental responses disclosing that information must be
submitted as promptly as possible.
REQUESTS FOR PRODUCTION OF DOCUMENTS AND THINGS
REQUEST NO. 1
Documents and things sufficient to show the design, structure, electronic circuitry,
operation, and functionality of the processor and all hardware components for transmitting and
receiving data, including but not limited to Bluetooth, 3G, GPRS, EDGE, and Wi-Fi data, for all
HTC Windows Phones, including but not limited to all circuit diagrams, schematics, hardware
design documents, engineering design drawings, parts lists, bills of materials, and other
Technical Documentation.
REQUEST NO. 2
Documents and things sufficient to identify and describe all Technical Documentation
that Microsoft distributes and/or makes available to HTC concerning Windows Mobile Phone
Technology as used in HTC Windows Phones.

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REQUEST NO. 3
Documents and things sufficient to show HTC’s use, incorporation, installation, or
deployment of Windows Mobile Phone Technology in HTC Windows Phones, including but not
limited to documents and things sufficient to show how HTC Windows Phones are adapted for,
utilize, run, or interact with Windows Mobile Phone Technology.
REQUEST NO. 4
Documents and things sufficient to show the operation, function, and performance of
Windows Mobile Phone Technology and/or HTC Windows Phones related to installing software
applications or updates, downloading, storing, updating, monitoring availability, deleting,
tracking versions and updates, and/or transmitting information regarding any software
application, including but not limited to use or incorporation of Windows Mobile Phone
Technology for maintaining a list of installed software applications on a HTC Windows Phone,
receiving software application installs or updates on a HTC Windows Phone from Windows
Marketplace, deleting software applications from a HTC Windows Phone, and transmitting to
Windows Marketplace information about a software application installation, deletion, update,
and/or other change, including but not limited to Technical Documentation and documented,
uncompiled source code.
REQUEST NO. 5
For any source code provided in response to Request No. 4, documents and things
sufficient to show all differences between that version (or revision) and each prior version (or
revision) since 2004.

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REQUEST NO. 6
Documents and things sufficient to show all contracts, licenses, and agreements between
Microsoft and HTC concerning Windows Mobile Phone Technology, HTC Windows Phones, or
Application Registry Technology.
REQUEST NO. 7
Documents and things sufficient to show all contracts, licenses, and agreements between
HTC and Microsoft concerning any litigation between Motorola Mobility and Microsoft.
REQUEST NO. 8
Documents and things sufficient to show HTC’s marketing, advertising, and promotion
of HTC Windows Phones in the United States.
REQUEST NO. 9
Documents sufficient show, on a yearly, quarterly or monthly periodic basis, the volume
or quantities of HTC Windows Phones (in units and dollars) sold or offered for sale in the United
States since 2004.

11

UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF FLORIDA
Miami Division
CASE NO. 1:10-CV-24063-MORENO
MOTOROLA MOBILITY, INC.,
Plaintiff,
v.
MICROSOFT CORPORATION,
Defendant.

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

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PLAINTIFF MOTOROLA MOBILITY, INC.’S NOTICE OF
DEPOSITION OF THIRD PARTY NTI CORPORATION
TO DEFENDANT MICROSOFT CORPORATION

PLEASE TAKE NOTICE that pursuant to Federal Rules of Civil Procedure 30
and 45, Plaintiff-Counterclaim Defendant Motorola Mobility, Inc. (“Motorola Mobility”) will
take the deposition upon oral examination of NTI Corporation, commencing on May 17, 2011 at
9:00 a.m.
The deposition will take place at the offices of Quinn Emanuel Urquhart &
Sullivan, LLP, 865 S. Figueroa St., 10th Floor, Los Angeles, California 90017, beginning on the
date and time specified above, or at such other time and place as may be agreed to by counsel.

The deposition will be taken before an officer authorized to administer oaths by the laws of the
United States and will be recorded by stenographic and videographic means. The deposition will
continue from day to day until completed.
You are invited to attend.
Dated: April 20, 2011

By: /s/ Leslie M. Spencer_____
Jesse J. Jenner
Steven Pepe
Khue V. Hoang
Leslie M. Spencer
Ropes & Gray LLP
1211 Avenue of the Americas
New York, NY 10020
Telephone: [phone]
Norman H. Beamer
Mark D. Rowland
Gabrielle E. Higgins
Ropes & Gray LLP
1900 University Avenue, 6th Floor
East Palo Alto, CA 94303
Telephone: [phone]
Kevin J. Post
Megan F. Raymond
Ropes & Gray LLP
One Metro Center
700 12th Street NW, Suite 900
Washington, DC 20005
Telephone: [phone]
Edward M. Mullins
Hal M. Lucas
Astigarraga Davis Mullins & Grossman, P.A.
701 Brickell Avenue
16th Floor
Miami, FL 33131
Telephone: [phone]
Attorneys for Plaintiff / Counterclaim Defendant
MOTOROLA MOBILITY, INC.

2

CERTIFICATE OF SERVICE
I hereby certify that on April 20, 2011, copies of Motorola Mobility, Inc.’s Notice of
Deposition of Third Party NTI Corporation to Defendant Microsoft Corporation, Subpoena to
NTI Corporation and Attachments thereto were served by e-mail upon the counsel of record
included in the attached Service List.
/s/Erin L. Greenfield
Erin L. Greenfield

SERVICE LIST
Motorola Mobility, Inc. v. Microsoft Corp., Case No. 1:10-cv-24063-MORENO
Roberto Martinez, Esq.
Curtis Miner, Esq.
COLSON HICKS EIDSON
255 Alhambra Circle, Penthouse
Coral Gables, FL 33134
Tel: [phone]
Email: [e-mail]
[e-mail]
Attorneys for Defendant /
Counterclaim Plaintiff
MICROSOFT CORPORATION
Of Counsel:
David T. Pritikin
Richard A. Cederoth
Douglas I. Lewis
John W. McBride
SIDLEY AUSTIN LLP
One South Dearborn
Chicago, IL 60603
Tel: [phone]
Email: [e-mail]
[e-mail]
[e-mail]
[e-mail]

Brian R. Nester
Kevin C. Wheeler
SIDLEY AUSTIN LLP
1501 K Street NW
Washington, DC 20005
Tel: [phone]
Email: [e-mail]
[e-mail]

UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF FLORIDA
Miami Division
CASE NO. 1:10-CV-24063-MORENO
MOTOROLA MOBILITY, INC.,
Plaintiff,
v.
MICROSOFT CORPORATION,
Defendant.

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

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PLAINTIFF MOTOROLA MOBILITY, INC.’S NOTICE OF
DEPOSITION OF THIRD PARTY ACER AMERICA CORPORATION
TO DEFENDANT MICROSOFT CORPORATION

PLEASE TAKE NOTICE that pursuant to Federal Rules of Civil Procedure 30
and 45, Plaintiff-Counterclaim Defendant Motorola Mobility, Inc. (“Motorola Mobility”) will
take the deposition upon oral examination of Acer America Corporation, commencing on May
18, 2011 at 9:00 a.m.
The deposition will take place at the offices of Ropes & Gray, LLP, 1900
University Avenue, 6th Floor, East Palo Alto, California 94303-2284, beginning on the date and
time specified above, or at such other time and place as may be agreed to by counsel. The

deposition will be taken before an officer authorized to administer oaths by the laws of the
United States and will be recorded by stenographic and videographic means. The deposition will
continue from day to day until completed.
You are invited to attend.
Dated: April 20, 2011

By: /s/ Leslie M. Spencer_____
Jesse J. Jenner
Steven Pepe
Khue V. Hoang
Leslie M. Spencer
Ropes & Gray LLP
1211 Avenue of the Americas
New York, NY 10020
Telephone: [phone]
Norman H. Beamer
Mark D. Rowland
Gabrielle E. Higgins
Ropes & Gray LLP
1900 University Avenue, 6th Floor
East Palo Alto, CA 94303
Telephone: [phone]
Kevin J. Post
Megan F. Raymond
Ropes & Gray LLP
One Metro Center
700 12th Street NW, Suite 900
Washington, DC 20005
Telephone: [phone]
Edward M. Mullins
Hal M. Lucas
Astigarraga Davis Mullins & Grossman, P.A.
701 Brickell Avenue
16th Floor
Miami, FL 33131
Telephone: [phone]
Attorneys for Plaintiff / Counterclaim Defendant
MOTOROLA MOBILITY, INC.

2

CERTIFICATE OF SERVICE
I hereby certify that on April 20, 2011, copies of Motorola Mobility, Inc.’s Notice of
Deposition of Third Party Acer America Corporation to Defendant Microsoft Corporation,
Subpoena to Acer America Corporation and Attachments thereto were served by e-mail upon the
counsel of record included in the attached Service List.
/s/Erin L. Greenfield
Erin L. Greenfield

SERVICE LIST
Motorola Mobility, Inc. v. Microsoft Corp., Case No. 1:10-cv-24063-MORENO
Roberto Martinez, Esq.
Curtis Miner, Esq.
COLSON HICKS EIDSON
255 Alhambra Circle, Penthouse
Coral Gables, FL 33134
Tel: [phone]
Email: [e-mail]
[e-mail]
Attorneys for Defendant /
Counterclaim Plaintiff
MICROSOFT CORPORATION
Of Counsel:
David T. Pritikin
Richard A. Cederoth
Douglas I. Lewis
John W. McBride
SIDLEY AUSTIN LLP
One South Dearborn
Chicago, IL 60603
Tel: [phone]
Email: [e-mail]
[e-mail]
[e-mail]
[e-mail]

Brian R. Nester
Kevin C. Wheeler
SIDLEY AUSTIN LLP
1501 K Street NW
Washington, DC 20005
Tel: [phone]
Email: [e-mail]
[e-mail]