APPLE inc. and NEXT Software Inc. v. Motorola, Inc. and Motorola Mobility, Inc

Filing 3

DECLARATION of Brian Cannon in Support re: 1 MOTION to Compel DOCUMENT PRODUCTION AND DEPOSTION FROM JEFFERSON HAN AND PERCEPTIVE PIXEL. Other Court Name: NORTHERN DISTRICT OF ILLINOIS. Other Court Case Number: 11CV8450. (Filing Fee $ 46.00, Receipt Number 465401029188) MOTION to Compel DOCUMENT PRODUCTION AND DEPOSTION FROM JEFFERSON HAN AND PERCEPTIVE PIXEL. Other Court Name: NORTHERN DISTRICT OF ILLINOIS. Other Court Case Number: 11CV8450. (Filing Fee $ 46.00, Receipt Number 465401029188). Document filed by Motorola, Inc. and 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)(wb)

EXHIBIT 12

AO 88B (Rev. 06/09) Subpoena to Produce Documents, Information, or Objects or to Permit Inspection of Premises in a Civil Action

UNITED STATES DISTRICT COURT
for the
Southern District of New York
Apple Inc. and NeXT Software Inc.
Plaintiff
V.

Civil Action No. 10-CV-662-BBC

Motorola, Inc. and Motorola Mobility, Inc.
(If the action is pending in another district, state where:

Defendant

Western District of Wisconsin

SUBPOENA TO PRODUCE DOCUMENTS, INFORMATION, OR OBJECTS
OR TO PERMIT INSPECTION OF PREMISES IN A CIVIL ACTION
To: Perceptive Pixel, Inc.
Production: YOU ARE COMMANDED to produce at the time, date, and place set forth below the following
documents, electronically stored information, or objects, and permit their inspection, copying, testing, or sampling of the
material: See Attachment A.

Place: Quinn Emanuel Urquhart & Sullivan, LLP
51 Madison Ave, 22nd Floor, New York, NY 10010

Date and Time:
09/22/2011 9:00 am

E71 Inspection of Premises: YOU ARE COMMANDED to permit entry onto the designated premises, land, or
other property possessed or controlled by you at the time, date, and location set forth below, so that the requesting party
may inspect, measure, survey, photograph, test, or sample the property or any designated object or operation on it.
Place:

Date and Time:

The provisions of Fed. R. Civ. P. 45(c), relating to your protection as a person subject to a subpoena, and Rule
45 (d) and (e), relating to your duty to respond to this subpoena and the potential consequences of not doing so, are
attached.
Date:

09/10/2011
CLERK OF COURT
OR
Signature of Clerk or Deputy Clerk

Attorney's signature

The name, address, e-mail, and telephone number of the attorney representing (name of party)
Motorola Mobility, Inc.
, who issues or requests this subpoena, are:
Meghan E. Bordonaro
Quinn Emanuel Urquhart & Sullivan, LLP, 555 Twin Dolphin Drive, 5th Floor, Redwood Shores, CA 94065
email: meghanbordonaroAquinnemanuel.com tel.: [phone]

AO 88B (Rev. 06/09) Subpoena to Produce Documents, Information, or Objects or to Permit Inspection of Premises in a Civil Action (Page 2)

Civil Action No. 10-CV-662-BBC
PROOF OF SERVICE
(This section should not be filed with the court unless required by Fed. R. Civ. P. 45.)
This subpoena for (name of individual and title, if any)
was received by me on (date)

Ci I served the subpoena by delivering a copy to the named person as follows:
on (date)

; or

CI I returned the subpoena unexecuted because:

Unless the subpoena was issued on behalf of the United States, or one of its officers or agents, I have also
tendered to the witness fees for one day's attendance, and the mileage allowed by law, in the amount of

My fees are $

for travel and $

for services, for a total of $

I declare under penalty of perjury that this information is true.

Date:
Server's signature

Printed name and title

Server's address

Additional information regarding attempted service, etc:

0.00

AO 88B (Rev. 06/09) Subpoena to Produce Documents, Information, or Objects or to Permit Inspection of Premises in a Civil Action(Page 3)

Federal Rule of Civil Procedure 45 (c), (d), and (e) (Effective 12/1/07)
(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 Modifring 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) Specindng Conditions as an Alternative. In the circumstances
described in Rule 45(c)(3)(B), the court may, instead of quashing or
modifying a subpoena, ordcr appearance or production undcr
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 thcm as thcy 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 Injbrmation 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) C'laiming 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 trialpreparation 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
DOCUMENTS AND THINGS TO BE PRODUCED
PLEASE TAKE NOTICE that, pursuant to Rule 45 of the Federal Rules of Civil
Procedure, and as set forth in the accompanying Subpoena and the Definitions and Instructions
in this Attachment, Perceptive Pixel, Inc. shall produce and permit the inspection, copying,
testing and sampling of all documents and other tangible things specified below in this
Attachment via Federal Express courier or hand delivery, to counsel at the offices of Quinn
Emanuel Urquhart & Sullivan, LLP, 51 Madison Avenue, 22nd Floor, New York, New York
10010, within ten (10) calendar days of receipt hereof, or at such other time and place as may be
mutually agreed.
DEFINITIONS AND INSTRUCTIONS
1.

In responding to these Requests, furnish all available information, including

information in the possession, custody, or control of any of your agents, employees and persons
under your control. If you cannot fully respond to the following Requests after exercising due
diligence to secure the information requested thereby, so state, and specify the portion of each
Request that cannot be responded to fully and completely. In the latter event, state what efforts
were made to obtain the requested information and the facts relied upon that support your
contention that the Request cannot be answered fully and completely.
2.

If your response to a particular Request is a statement that you lack the ability to

comply with that Request, you must specify whether the inability to comply is because the
particular item or category of information never existed, has been destroyed, has been lost,
misplaced or stolen, or has never been or is no longer in your possession, custody or control, in
which case the name and address of any person or entity known or believed by you to have
possession, custody or control of that information or category of information must be identified.

02426.51761/4344631.1

3.

If you object to producing a document because of a privilege, you must

nevertheless provide the following information unless divulging the information would disclose
the privileged information:
(a) the nature of the privilege claim (including work product);
(b) the date of the document;
(c) the type of document, the custodian, location, and such other information sufficient to
identify the material for a subpoena duces tecum or a production request, including where
appropriate the author, the addressee, and, if not apparent, the relationship between the
author and addressee;
(d) the general subject matter of the document, electronically stored information or oral
communication.
4.

The term “Apple,” as used in these requests refer to Apple Inc., its agents,

employees, and persons under Apple’s control.
5.

The terms “Perceptive Pixel,” “you” and “your” as used in these requests refer to

Perceptive Pixel, Inc., its engineers, agents, employees, counsel, and persons under Perceptive
Pixel’s control.
6.

The terms “document” and “documents” shall be construed under the broadest

possible construction under the Federal Rules of Civil Procedure and shall include without
limitation any written, recorded, graphic or other material, including without limitation originals,
drafts, electronic documents, metadata, and all non-identical copies of any document.
7.

The term “TED Video” refers to the video available at

http://www.youtube.com/watch?v=QKh1Rv0PlOQ and
http://www.ted.com/talks/jeff_han_demos_his_breakthrough_touchscreen.html.

02426.51761/4344631.1

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8.

The term “January 2006 Demo Reel” refers to the video titled “Multi-Touch

Interaction Experiments” and dated “Jan-2006,” available at http://cs.nyu.edu/~jhan/ftirtouch/.
SPECIFIC CATEGORIES OF DOCUMENTS TO BE PRODUCED

No. 1:
Documents relating to Jeff Han’s presentation at the TED Conference in February, 2006
in Monterey, California, as referenced in the TED Video.

No. 2:
Documents relating to the multi touch device demonstrated by Jeff Han at the TED
Conference in February, 2006 in Monterey, California, including documents sufficient to show
the development of that device, the functionality of that device and any other public disclosure or
demonstration of that device, as referenced in the TED Video.

No. 3:
Documents relating to any prototypes, predecessors, builds, models, samples, demos and
versions of the multi touch device demonstrated by Jeff Han at the TED Conference in February,
2006 in Monterey, California, as referenced in the TED Video, including documents sufficient to
show the development of any such prototypes, predecessors, builds, models, samples, demos and
versions, their functionality, and any public disclosure or demonstration of any such prototypes,
predecessors, builds, models, samples, demos and versions.

02426.51761/4344631.1

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No. 4:
Any and all communications, agreements and contracts between Perceptive Pixel and
Apple, its engineers, agents, employees or its counsel, including but not limited to
communications, agreements and contracts with Weil, Gotshal & Manges LLP; Covington &
Burling LLP; and Tensegrity Law Group LLP.

No. 5:
Produce for inspection the multi touch sensor demonstrated by you at the TED
Conference in Monterey, California in February, 2006, and any device reflecting the
functionality present in the device demonstrated by Jeff Han at the TED Conference in
Monterey, California in February, 2006, as referenced in the TED Video.

No. 6:
Produce for inspection any prototypes, predecessors, builds, models, samples, demos and
versions of the multi touch device demonstrated by Jeff Han at the TED Conference in
Monterey, California in February, 2006, as referenced in the TED Video.

No. 7:
Produce for inspection all versions of the source code used to generate the executable
code that ran on the multi touch device demonstrated by Jeff Han at the TED Conference in
Monterey, California in February, 2006, as referenced in the TED Video.

02426.51761/4344631.1

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No. 8:
Produce for inspection all documents that describe the operations of the source code used
to generate the executable code that ran on the multi touch device demonstrated by Jeff Han at
the TED Conference in Monterey, California in February, 2006, as referenced in the TED Video.

No. 9:
Documents sufficient to show all individuals that contributed to the development of the
multi touch device demonstrated by Jeff Han at the TED Conference in Monterey, California in
February, 2006, as referenced in the TED Video, and any prototypes, predecessors, builds,
models, samples, demos and versions of the multi touch device.

No. 10:
Documents and communications relating to any offer by Apple to purchase Perceptive
Pixel, or any intellectual property rights or business owned by Perceptive Pixel.

No. 11:
Documents relating to the multi touch device demonstrated in the January 2006 Demo
Reel, including documents sufficient to show the development of that device, the functionality of
that device and any other public disclosure or demonstration of that device, as referenced in the
January 2006 Demo Reel.

No. 12:
Documents relating to any prototypes, predecessors, builds, models, samples, demos and
versions of the multi touch device demonstrated in the January 2006 Demo Reel, including

02426.51761/4344631.1

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documents sufficient to show the development of any such prototypes, predecessors, builds,
models, samples, demos and versions, their functionality, and any public disclosure or
demonstration of any such prototypes, predecessors, builds, models, samples, demos and
versions.

No. 13:
Produce for inspection the multi touch device demonstrated in the January 2006 Demo
Reel, and any device reflecting the functionality present in the device demonstrated in the
January 2006 Demo Reel.

No. 14:
Produce for inspection any prototypes, predecessors, builds, models, samples, demos and
versions of the multi touch device demonstrated in the January 2006 Demo Reel.

No. 15:
Produce for inspection all versions of the source code used to generate the executable
code that ran on the multi touch device demonstrated in the January 2006 Demo Reel.

No. 16:
Produce for inspection all documents that describe the operation of the source code used
to generate the executable code that ran on the multi touch device demonstrated in the January
2006 Demo Reel.

02426.51761/4344631.1

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No. 17:
Documents sufficient to show all individuals that contributed to the development of the
multi touch device demonstrated in the January 2006 Demo Reel, and any prototypes,
predecessors, builds, models, samples, demos and versions of the multi touch device.

02426.51761/4344631.1

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