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 WESTERN DISTRICT OF WISCONSIN
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) Civil Action No. 3:10-cv-826
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) District Judge Barbara B. Crabb
) Magistrate Judge Stephen L. Crocker
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MOTOROLA MOBILITY, INC.,
Plaintiff,
v.
MICROSOFT CORPORATION,
Defendant.

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

PLAINTIFF AND COUNTERCLAIM DEFENDANT
MOTOROLA MOBILITY, INC.’S INITIAL DISCLOSURES
Plaintiff and Counterclaim Defendant Motorola Mobility, Inc. (“Motorola Mobility”)
respectfully makes the following Initial Disclosures pursuant to Rule 26(a)(1), Fed. R. Civ. P.,
and the Court’s Preliminary Pretrial Conference Order (D.I. 36).
These Initial Disclosures are based on information reasonably available to Motorola
Mobility at this time. Motorola Mobility’s investigation into this matter is ongoing and Motorola
Mobility reserves the right to supplement and/or amend these Initial Disclosures as required by
Rule 26(e), Fed. R. Civ. P.
Motorola Mobility 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
1

contained 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 Mobility hereby gives notice that the following individuals are likely to have
discoverable information that Motorola may use to support its claims or defenses. Motorola
Mobility does not consent to or authorize Microsoft or its counsel to communicate with any of
Motorola Mobility’s current or former employees. Any such individual should be contacted only
through Motorola Mobility’s counsel of record.
INDIVIDUAL

Michael Kotzin

CONTACT
INFORMATION

SUBJECT(S) OF
INFORMATION

2075 Jordan Terrace,
Buffalo Grove, Illinois
60089 (former
employee); may only be
contacted through the
undersigned counsel for
Motorola Mobility.

Inventions disclosed and/or
claimed in United States Patent
Nos. 6,992,580 (the ’580
Patent) and 7,088,220 (the ’220
Patent); state of the art of the
’580 and ’220 Patents;
conception and reduction to
practice of the invention
disclosed in the ’580 and ’220
Patents; and the prosecution of
the ’580 and ’220 Patents.

2

INDIVIDUAL

CONTACT
INFORMATION

SUBJECT(S) OF
INFORMATION

Matthew Klapman

3825 Charles Drive,
Northbrook, Illinois
60062 (former
employee); may only be
contacted through the
undersigned counsel for
Motorola Mobility.

Inventions disclosed and/or
claimed in the ’580 Patent; state
of the art of the ’580 Patent;
conception and reduction to
practice of the invention
disclosed in the ’580 Patent;
and the prosecution of the ’580
Patent.

William Alberth Jr.

600 North U.S. Highway
45, Libertyville, Illinois
60048 (Motorola
Mobility employee); may
only be contacted
through the undersigned
counsel for Motorola
Mobility.

Inventions disclosed and/or
claimed in the ’580 Patent; state
of the art of the ’580 Patent;
conception and reduction to
practice of the invention
disclosed in the ’580 Patent;
and the prosecution of the ’580
Patent.

George Valliath

1161 Ash Street,
Winnetka Illinois 60093
(former employee); may
only be contacted
through the undersigned
counsel for Motorola
Mobility.

Inventions disclosed and/or
claimed in United States Patent
No. 7,106,358 (the ’358
Patent); state of the art of the
’358 Patent; conception and
reduction to practice of the
invention disclosed in the ’358
Patent and the prosecution of
the ’358 Patent.

Kevin Jelley

600 North U.S. Highway
45, Libertyville, Illinois
60048 (Motorola
Mobility employee);
May only be contacted
through the undersigned
counsel for Motorola
Mobility.

Inventions disclosed and/or
claimed in the ’358 Patent; state
of the art of the ’358 Patent;
conception and reduction to
practice of the invention
disclosed in the ’358 Patent;
and the prosecution of the ’358
Patent.

3

INDIVIDUAL

CONTACT
INFORMATION

SUBJECT(S) OF
INFORMATION

Eric Bodnar

188 Minna Street #34E,
San Francisco California
94105 (former
employee); may only be
contacted through the
undersigned counsel for
Motorola Mobility.

Inventions disclosed and/or
claimed in United States Patent
No. 6,686,931 (the ’931
Patent); state of the art of the
’931 Patent; conception and
reduction to practice of the
invention disclosed in the ’931
Patent; and the prosecution of
the ’931 Patent.

Nelson Comas

600 North U.S. Highway
45, Libertyville, Illinois
60048 (Motorola
Mobility employee); may
only be contacted
through the undersigned
counsel for Motorola
Mobility.

Inventions disclosed and/or
claimed in United States Patent
No. 5,738,583 (the ’583
Patent); state of the art of the
’583 Patent; conception and
reduction to practice of the
invention disclosed in the ’583
Patent; and the prosecution of
the ’583 Patent.

Alan Gil

Motorola Solutions, Inc.
1303 East Algonquin Rd
Schaumburg, Illinois
60196; may only be
contacted through the
legal department of
Motorola Solutions.

Inventions disclosed and/or
claimed in the ’583 Patent; state
of the art of the ’583 Patent;
conception and reduction to
practice of the invention
disclosed in the ’583 Patent;
and the prosecution of the ’583
Patent.

Christopher McCarley

Contact information
currently unknown.

Inventions disclosed and/or
claimed in the ’583 Patent; state
of the art of the ’583 Patent;
conception and reduction to
practice of the invention
disclosed in the ’583 Patent;
and the prosecution of the ’583
Patent.

4

INDIVIDUAL

CONTACT
INFORMATION

SUBJECT(S) OF
INFORMATION

Kirk Dailey

600 North U.S. Highway
45, Libertyville, Illinois
60048 (Motorola
Mobility employee); may
only be contacted
through the undersigned
counsel for Motorola
Mobility.

Corporate structure of Motorola
Mobility.

Jeremy Netzel1

600 North U.S. Highway
45, Libertyville, Illinois
60048 (Motorola
Mobility employee); may
only be contacted
through the undersigned
counsel for Motorola
Mobility.

Business and financial
information relating to the
Motorola Droid 2, Droid X,
Backflip, Charm, Cliq, and i1
products sold in the United
States.

Peter Prunuske

600 North U.S. Highway
45, Libertyville, Illinois
60048 (Motorola
Mobility employee); may
only be contacted
through the undersigned
counsel for Motorola
Mobility.

Program Manager for the
Motorola Droid 2 phone.

Marjorie Silha

600 North U.S. Highway
45, Libertyville, Illinois
60048 (Motorola
Mobility employee); may
only be contacted
through the undersigned
counsel for Motorola
Mobility.

Program Manager for the
Motorola Droid X phone.

1

Motorola Mobility has never sold the Motorola Mesh Wide Area Network AP 7181 or the Motorola
CPEi150 router products in the United States.

5

INDIVIDUAL

CONTACT
INFORMATION

SUBJECT(S) OF
INFORMATION

Paul Martinson

600 North U.S. Highway
45, Libertyville, Illinois
60048 (Motorola
Mobility employee); may
only be contacted
through the undersigned
counsel for Motorola
Mobility.

Program Manager for the
Motorola Backflip phone.

Thomas Strathman

1700 3rd Street
Winthrop Harbor, Illinois
60096 (former
employee); may only be
contacted through the
undersigned counsel for
Motorola Mobility.

Program Manager for the
Motorola Charm phone.

David Wu

600 North U.S. Highway
45, Libertyville, Illinois
60048 (Motorola
Mobility employee); may
only be contacted
through the undersigned
counsel for Motorola
Mobility.

Program Manager for the
Motorola Cliq phone.

Lamberto Roscioli

600 North U.S. Highway
45, Libertyville, Illinois
60048 (Motorola
Mobility employee); may
only be contacted
through the undersigned
counsel for Motorola
Mobility.

Program Manager for the
Motorola i1 phone.

Current and/or former Motorola
Solutions, Inc. (“Motorola
Solutions”) employees

Motorola Solutions, Inc.
1303 East Algonquin Rd
Schaumburg, Illinois
60196; may only be
contacted through the
legal department of
Motorola Solutions.

Persons knowledgeable about
the design and operation of the
Motorola Mesh Wide Area
Network AP 7181 and the
Motorola CPEi150 (“Accused
Network Routers”).

6

INDIVIDUAL

CONTACT
INFORMATION

SUBJECT(S) OF
INFORMATION

Google, Inc.

1600 Amphitheatre
Pkwy, Mountain View,
CA 94043

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

Current and/or former Motorola
Solutions employees

Motorola Solutions, Inc.
1303 East Algonquin Rd
Schaumburg, Illinois
60196; may only be
contacted through the
legal department of
Motorola Solutions.

Business, marketing and
financial information relating to
the Accused Network Routers.

Current and/or former Motorola
Solutions employees

Motorola Solutions, Inc.
1303 East Algonquin Rd
Schaumburg, Illinois
60196; may only be
contacted through the
legal department of
Motorola Solutions.

Development, structure, design,
and/or operation for the
Accused Network Routers.

Named inventors of
Microsoft’s patents-in-suit

Contact information
currently unknown.

Named inventors on United
States Patent Nos. 6,374,276;
7,454,718; 6,822,664;
7,421,666; and 6,256,642
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.

7

Motorola Mobility 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 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 Mobility’s claims,
defenses and damages sought in this case. Motorola Mobility 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 Mobility’s custody, possession, and control that
Motorola Mobility may use to support its claims, defenses and damages include:
a)

The Motorola patents-in-suit;

b)

The complete file histories of the Motorola Mobility 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 Mobility patents-in-suit;

d)

Copies of relevant and discoverable correspondence;

e)

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

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f)

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

g)

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

h)

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

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
Mobility 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 Mobility
patents-in-suit.

Many of the aforementioned documents contain Motorola Mobility 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 Mobility’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 Mobility’s search for documents that it may use to support
its claims, defenses and damages in this action is continuing and Motorola Mobility reserves the
right to supplement this disclosure pursuant to Rule 26(e), Fed. R. Civ. P.
9

Motorola Mobility 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.

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 Mobility seeks money damages
adequate to compensate Motorola Mobility for Microsoft’s infringement. The computation of
Motorola Mobility’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 Mobility at this time. Motorola Mobility expressly reserves the right to supplement
this disclosure at such time that discovery makes it appropriate to do so. Motorola Mobility’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 Mobility is currently unaware of any applicable agreement that requires
disclosure under Rule 26(a)(1)(A)(iv), Fed. R. Civ. P.
Motorola Mobility’s investigation of its claims is ongoing and Motorola Mobility
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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March 9, 2011

Of Counsel:
Jesse J. Jenner*
Steven Pepe*
Anthony A. Pastor*
Ropes & Gray LLP
1211 Avenue of the Americas
New York, NY 10036
Phone No. [phone]

/s/ Steven Pepe
Scott W. Hansen
WI State Bar ID No. 1017206
[e-mail]
Lynn M. Stathas
WI State Bar ID No. 1003695
[e-mail]
Rebecca F. Kennedy
WI State Bar ID No. 1047201
[e-mail]
Reinhart Boerner Van Deuren S.C.
1000 North Water Street
Suite 1700
Milwaukee, WI 53202
Phone No. [phone]
Facsimile No. 414-298-8097
Attorneys for Plaintiffs,
MOTOROLA MOBILITY, INC.

Norman H. Beamer*
Mark D. Rowland*
Gabrielle E. Higgins*
Ropes & Gray LLP
1900 University Avenue, 6th Floor
East Palo Alto, CA 94303
Phone No. [phone]

*Admitted Pro hac vice

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CERTIFICATE OF SERVICE
The undersigned hereby certifies that on March 9, 2011, the foregoing document
is being served via E-mail this day on the counsel of record identified in the attached Service
List.
/s/ Kevin Post

SERVICE LIST
Christopher C. Davis
John C. Scheller
Michael Best & Friedrich LLP
P.O. Box 1806
Madison, WI 53701-1806

By Email:
[e-mail]
[e-mail]

Charles J. Crueger
Michael Best & Friedrich LLP
100 E. Wisconsin Avenue, Ste. 3300
Milwaukee, WI 53202

By Email:
[e-mail]

David T. Pritikin
Richard A. Cederoth
John W. McBride
Douglas I. Lewis
SIDLEY AUSTIN LLP
One South Dearborn
Chicago, IL 60603

By Email:
[e-mail]
[e-mail]
[e-mail]
[e-mail]