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)

Download PDF
IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF WISCONSIN ) ) ) Civil Action No. 3:10-cv-826 ) ) District Judge Barbara B. Crabb ) Magistrate Judge Stephen L. Crocker ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) 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; 8 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. 10 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. (212) 596-9000 /s/ Steven Pepe Scott W. Hansen WI State Bar ID No. 1017206 shansen@reinhartlaw.com Lynn M. Stathas WI State Bar ID No. 1003695 lstathas@reinhartlaw.com Rebecca F. Kennedy WI State Bar ID No. 1047201 rkennedy@reinhartlaw.com Reinhart Boerner Van Deuren S.C. 1000 North Water Street Suite 1700 Milwaukee, WI 53202 Phone No. (414) 298-1000 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. (650) 617-4000 *Admitted Pro hac vice 11 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: ccdavis@michaelbest.com jcscheller@michaelbest.com Charles J. Crueger Michael Best & Friedrich LLP 100 E. Wisconsin Avenue, Ste. 3300 Milwaukee, WI 53202 By Email: cjcrueger@michaelbest.com David T. Pritikin Richard A. Cederoth John W. McBride Douglas I. Lewis SIDLEY AUSTIN LLP One South Dearborn Chicago, IL 60603 By Email: dpritikin@sidley.com rcederoth@sidley.com jwmcbride@sidley.com dilewis@sidley.com

Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.


Why Is My Information Online?