Motorola Mobility, Inc. v. Microsoft Corporation

Filing 74

RESPONSE in Opposition re #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 filed by Motorola Mobility, Inc.. (Attachments: #1 Exhibit, #2 Exhibit, #3 Exhibit, #4 Exhibit, #5 Exhibit, #6 Exhibit, #7 Exhibit, #8 Exhibit, #9 Exhibit, #10 Exhibit, #11 Exhibit, #12 Exhibit, #13 Exhibit, #14 Exhibit, #15 Exhibit, #16 Exhibit, #17 Exhibit, #18 Exhibit, #19 Exhibit, #20 Exhibit, #21 Exhibit, #22 Exhibit, #23 Exhibit, #24 Exhibit, #25 Exhibit, #26 Exhibit, #27 Exhibit, #28 Affidavit, #29 Affidavit, #30 Affidavit)(Giuliano, Douglas)

EXHIBIT J

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

PLAINTIFF MOTOROLA MOBILITY, INC.’S NOTICE OF
SUBPOENA TO THIRD PARTY VON ALAN MOCK
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 Von Alan Mock.
The documents set forth in Schedule A attached thereto are to be produced on or before
June 15, 2011 at 5:00 pm Eastern Time at the offices of Astigarraga Davis Mullins & Grossman,
P.A., 701 Brickell Avenue, 16th Floor, Miami, FL 33131.
PLEASE TAKE FURTHER NOTICE that Motorola Mobility, by and through its
attorneys Ropes & Gray LLP, will take the deposition upon oral examination of Mr. Eaton on
June 21, 2011 at 9:30 am Eastern Time at the office of Astigarraga Davis Mullins & Grossman,
P.A., 701 Brickell Avenue, 16th Floor, Miami, FL 33131. 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,

-126843955_1

Dated: June 2, 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.
701 Brickell Avenue, 16th Floor
Miami, Florida 33131
Telephone: [phone]
Attorneys for Plaintiff / Counterclaim Defendant
MOTOROLA MOBILITY, INC.

-226843955_1

CERTIFICATE OF SERVICE
I hereby certify that on June 2, 2011, copies of the foregoing Plaintiff Motorola Mobility,
Inc.’s Notice Of Subpoena To Third Party Von Alan Mock 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, 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]

-326843955_1

Exhibit
1

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
MOTOROLA MOBILITY, INC.,

SUBPOENA IN A CIVIL CASE

Plaintiff,

Case 1:10-CV-24063/MORENO/BROWN1
(D. Fla.)

v.
MICROSOFT CORPORATION,
Defendants.
TO:

Von Alan Mock
8114 Rose Marie Circle
Boynton Beach, FL 33472-1025
Palm Beach County

YOU ARE COMMANDED to appear in the United States District Court at the place, date, and time specified below to
testify in the above case.
COURTROOM
DATE AND TIME

PLACE OF TESTIMONY

YOU ARE COMMANDED to appear at the place, date, and time specified below to testify at the taking of a
deposition in the above case. The deposition will be
transcribed;
video taped;
audio recorded.
PLACE OF DEPOSITION

DATE AND TIME

Astigarraga Davis Mullins & Grossman, P.A.
701 Brickell Avenue, 16th Floor
Miami, FL 33131

June 21, 2011
9:30 a.m.

YOU ARE COMMANDED to produce and permit inspection, copying, testing or sampling of the following
documents, electronically stored information or objects at the place, date, and time specified below (list
documents, electronically stored information or objects): SEE SCHEDULE A ATTACHED HERETO
PLACE

DATE AND TIME

Astigarraga Davis Mullins & Grossman, P.A.
701 Brickell Avenue, 16th Floor
Miami, FL 33131

June 15, 2011
5:00 p.m.

YOU ARE COMMANDED to permit inspection of the following premises at the date and time specified below.
PREMISES

DATE AND TIME

Any organization not a party to this suit that is subpoenaed for the taking of a deposition shall designate one or more
officers, directors, or managing agents, or other persons who consent to testify on its behalf, and may set forth, for each
person designated, the matters on which a person will testify. Federal Rules of Civil Procedure. 30(b)(6).
ISSUING OFFICER SIGNATURE AND TITLE (INDICATE IF ATTORNEY FOR
PLAINTIFF OR DEFENDANT)

DATE

Attorney for Plaintiff

Date

ISSUING OFFICER’S NAME, ADDRESS AND PHONE NUMBER
Leslie M. Spencer
Ropes & Gray LLP
1211 Avenue of the Americas
New York, New York 10036-8704

TELEPHONE
[phone]

(See Federal Rule of Civil Procedure 45 (c), (d), and (e), on next page)

1

If action is pending in district other than district of issuance, state district under case number.

PROOF OF SERVICE
DATE

SERVED

Date

PLACE

Place

SERVED ON (PRINT NAME)

MANNER OF SERVICE

SERVED BY (PRINT NAME)

TITLE

DECLARATION OF SERVER

I declare under penalty of perjury under the laws of the United States of America that the foregoing information contained
in the Proof of Service is true and correct:
Executed on:
DATE

SIGNATURE OF SERVER

ADDRESS OF SERVER

Federal Rule of Civil Procedure 45 (c), (d), and (e), as amended on December 1, 2007:

(c) PROTECTING A PERSON SUBJECT TO A SUBPOENA.
(1) Avoiding Undue Burden or Expense; Sanctions. A party or attorney responsible
for issuing and serving a subpoena must take reasonable steps to avoid imposing undue
burden or expense on a person subject to the subpoena. The issuing court must enforce
this duty and impose an appropriate sanction — which may include lost earnings and
reasonable attorney's fees — on a party or attorney who fails to comply.
(2) Command to Produce Materials or Permit Inspection.
(A) Appearance Not Required. A person commanded to produce documents,
electronically stored information, or tangible things, or to permit the inspection of
premises, need not appear in person at the place of production or inspection unless also
commanded to appear for a deposition, hearing, or trial.
(B) Objections. A person commanded to produce documents or tangible things
or to permit inspection may serve on the party or attorney designated in the subpoena a
written objection to inspecting, copying, testing or sampling any or all of the materials or
to inspecting the premises — or to producing electronically stored information in the
form or forms requested. The objection must be served before the earlier of the time
specified for compliance or 14 days after the subpoena is served. If an objection is made,
the following rules apply:
(i) At any time, on notice to the commanded person, the serving party may
move the issuing court for an order compelling production or inspection.
(ii) These acts may be required only as directed in the order, and the order
must protect a person who is neither a party nor a party's officer from significant expense
resulting from compliance.
(3) Quashing or Modifying a Subpoena.
(A) When Required. On timely motion, the issuing court must quash or modify
a subpoena that:
(i) fails to allow a reasonable time to comply;
(ii) requires a person who is neither a party nor a party's officer to travel
more than 100 miles from where that person resides, is employed, or regularly transacts
business in person — except that, subject to Rule 45(c)(3)(B)(iii), the person may be
commanded to attend a trial by traveling from any such place within the state where the
trial is held;
(iii) requires disclosure of privileged or other protected matter, if no
exception or waiver applies; or
(iv) subjects a person to undue burden.
(B) When Permitted. To protect a person subject to or affected by a subpoena,
the issuing court may, on motion, quash or modify the subpoena if it requires:
(i) disclosing a trade secret or other confidential research, development, or
commercial information;
(ii) disclosing an unretained expert's opinion or information that does not
describe specific occurrences in dispute and results from the expert's study that was not
requested by a party; or
(iii) a person who is neither a party nor a party's officer to incur substantial
expense to travel more than 100 miles to attend trial
(C) Specifying Conditions as an Alternative. In the circumstances described in
Rule 45(c)(3)(B), the court may, instead of quashing or modifying a subpoena, order
appearance or production under specified conditions if the serving party:

(i) shows a substantial need for the testimony or material that cannot be
otherwise met without undue hardship; and
(ii) ensures that the subpoenaed person will be reasonably compensated.
(d) DUTIES IN RESPONDING TO A SUBPOENA.
(1) Producing Documents or Electronically Stored Information. These procedures
apply to producing documents or electronically stored information:
(A) Documents. A person responding to a subpoena to produce documents must
produce them as they are kept in the ordinary course of business or must organize and label
them to correspond to the categories in the demand.
(B) Form for Producing Electronically Stored Information Not Specified. If a
subpoena does not specify a form for producing electronically stored information, the
person responding must produce it in a form or forms in which it is ordinarily maintained or
in a reasonably usable form or forms.
(C) Electronically Stored Information Produced in Only One Form. The person
responding need not produce the same electronically stored information in more than one
form.
(D) Inaccessible Electronically Stored Information. The person responding need
not provide discovery of electronically stored information from sources that the person
identifies as not reasonably accessible because of undue burden or cost. On motion to
compel discovery or for a protective order, the person responding must show that the
information is not reasonably accessible because of undue burden or cost. If that showing is
made, the court may nonetheless order discovery from such sources if the requesting party
shows good cause, considering the limitations of Rule 26(b)(2)(C). The court may specify
conditions for the discovery.
(2) Claiming Privilege or Protection.
(A) Information Withheld. A person withholding subpoenaed information under a
claim that it is privileged or subject to protection as trial-preparation material must:
(i) expressly make the claim; and
(ii) describe the nature of the withheld documents, communications, or tangible
things in a manner that, without revealing information itself privileged or protected, will
enable the parties to assess the claim.
(B) Information Produced. If information produced in response to a subpoena is
subject to a claim of privilege or of protection as trial-preparation material, the person
making the claim may notify any party that received the information of the claim and the
basis for it. After being notified, a party must promptly return, sequester, or destroy the
specified information and any copies it has; must not use or disclose the information until
the claim is resolved; must take reasonable steps to retrieve the information if the party
disclosed it before being notified; and may promptly present the information to the court
under seal for a determination of the claim. The person who produced the information must
preserve the information until the claim is resolved.
(e) CONTEMPT.
The issuing court may hold in contempt a person who, having been served, fails
without adequate excuse to obey the subpoena. A nonparty's failure to obey must be
excused if the subpoena purports to require the nonparty to attend or produce at a place
outside the limits of Rule 45(c)(3)(A)(ii).

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

DEFINITIONS
a)

“’370 Patent” means U.S. Patent No. 6,983,370.

b)

“Named Inventors” refers to Eric Thomas Eaton, David Jeffery Hayes, and

Von Alan Mock.
c)

“Patent Counsel” refers to all person who prepared or prosecuted, or assisted

in the preparation or prosecution of the ‘370 Patent and Related Patents and Applications thereto,
including without limitation Randi L. Karpinia (formerly known as Randi L. Dulaney) (Reg. No.
46,148), Sylvia Chen (Reg. No. 39,633), and other attorneys at Motorola.
d)

“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.
e)

“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.
f)

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.
g)

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

h)

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

includes the singular.

i)

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.
j)

“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.
k)

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

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

“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.
m)

“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.
n)

“Application” means any patent application or similar document submitted or

filed anywhere in the world, including but not limited to any provisional application, continuing
application, continuation-in-part application, divisional application, file-wrapper continuation,
reexamination proceeding, reissue application, and abandoned application.
o)

“Related Patents and Applications” means any patent or Application

submitted or filed anywhere in the world that is related to the ‘370 Patent, including but not limited
to any patent or Application that (i) claims priority in whole or in part to or from the ‘370 Patent, (ii)
is the basis for a claim of priority in whole or in part for the ‘370 Patent, or (iii) discloses the same
subject matter as the ‘370 Patent.

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REQUESTS FOR PRODUCTION
REQUEST FOR PRODUCTION NO. 1
All documents concerning the conception or reduction to practice of the subject matter of
each claim of the ‘370 Patent, including, without limitation, any engineering notebooks,
laboratory notebooks, log books, records books, memoranda, design reviews, progress
reports, technical reports, drawings, schematics, specifications, diagrams, computer records,
diaries, calendars, test results, invention disclosures, patent prosecution records.
REQUEST FOR PRODUCTION NO. 2
All documents concerning the contribution of each of the Named Inventors to the conception
or reduction to practice of the subject matter disclosed in the ‘370 Patent.
REQUEST FOR PRODUCTION NO. 3
All documents concerning any communications by or among any or all of the Named
Inventors, Patent Counsel or other Persons concerning the ‘370 Patent.
REQUEST FOR PRODUCTION NO. 4
All documents concerning the validity, patentability, enforceability, or scope of any claim of
the ‘370 Patent and any Related Patents and Applications thereto.
REQUEST FOR PRODUCTION NO. 5
All documents concerning any patent application, including any abandoned or pending U.S
or foreign application, relating to the subject matter of the ‘370 Patent.
REQUEST FOR PRODUCTION NO. 6
All documents created, generated, edited or reviewed by any or all of the Named Inventors of
the ‘370 Patent, or created at the direction of or in conjunction with any work done with or
for any or all of the Named Inventors, including without limitation, laboratory notebooks,
memoranda and reports, concerning any or part of any embodiment or subject matter
described or claimed in the ‘370 Patent and any Related Patents and Applications thereto.

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REQUEST FOR PRODUCTION NO. 7
All documents concerning the design, development, experimentation, testing, method of
operation, or manufacture of any product, system or service that embodies, falls within the
scope of, or is practiced in accordance with any subject matter disclosed or claimed in the
‘370 Patent.
REQUEST FOR PRODUCTION NO. 8
All documents concerning any licenses (exclusive or non-exclusive, restricted or nonrestricted), purchase agreements, assignments, transfers, joint development agreements, or
contracts concerning the ‘370 Patent and any Related Patents and Applications thereto.
REQUEST FOR PRODUCTION NO. 9
All documents concerning the first sale or first offer for sale of any product, system or
service that embodies, falls within the scope of, or is practiced in accordance with any
subject matter disclosed or claimed in the ‘370 Patent.
REQUEST FOR PRODUCTION NO. 10
All documents concerning any demonstration of any product, system or service that
embodies, falls within the scope of, or is practiced in accordance with any subject matter
disclosed or claimed in the ‘370 Patent.

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