Mirror Worlds, LLC v. Apple, Inc.

Filing 309

MOTION To Limit the Number of Asserted Claims by Apple, Inc.. (Attachments: # 1 Affidavit of Jeffrey G. Randall, # 2 Exhibit A, # 3 Exhibit B, # 4 Exhibit C, # 5 Exhibit D, # 6 Exhibit E, # 7 Exhibit F, # 8 Exhibit G, # 9 Exhibit H, # 10 Text of Proposed Order)(Randall, Jeffrey)

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Mirror Worlds, LLC v. Apple, Inc. Doc. 309 Att. 2 EXHIBIT A Dockets.Justia.com (650) 320-1850 jeffreyrandall@paulhastings.com June 24, 2010 VIA E-MAIL Joseph Diamante Stroock & Stroock & Lavan LLP 180 Maiden Lane New York, NY 10038-4982 Re: Mirror Worlds v. Apple, 6:08-cv-88 LED Dear Joe: This letter follows up on a number of items raised in yesterday's deposition of Lou Nemeth and addresses a few trial-related matters. With dispositive motions due soon and preparations for trial underway, please address the following issues as soon as possible. First, Mirror Worlds has improperly withheld and redacted documents that are not privileged. Mr. Nemeth repeatedly testified that Mirror Worlds and related entities were not anticipating litigation until shortly before suit was filed against Apple in 2008, despite discussions of alleged infringement of the patents-in-suit by Google, Microsoft, Yahoo, AOL, and perhaps others. While it appears that Mr. Nemeth testified in this way in an attempt to justify Mirror Worlds Technologies' ("MWT") failure to preserve critical documents for use in this case, anticipation of litigation is, as you know, a pre-requisite to asserting the work-product doctrine. See Fed. R. Civ. P. 26(b)(3). To the extent there was, in fact, no anticipation of litigation as Mr. Nemeth claims, Mirror Worlds' work-product claims are improper and any documents withheld or redacted solely on this basis must be produced. While I understand that you suggested that Mirror Worlds may be willing to produce the improperly-redacted documents without redactions if Apple agrees that there is no waiver of privilege, your proposal does not address the full extent of improperlywithheld documents, and Apple cannot agree to the proposal without addressing these documents as well. There are also a number of documents that have been improperly withheld or redacted by Mirror Worlds that cannot be privileged because they were given to the public. This category includes, for example, RI-005831, RI-006147, and Sparago-0000391, among others. Please produce these allegedly "privileged" documents that were disseminated to the public, so that Apple is not further prejudiced. Joseph Diamante June 24, 2010 Page 2 Second, Mirror Worlds and MWT have failed to respond to and properly designate witnesses to address the Rule 30(b)(6) notices served by Apple. The day before Mr. Nemeth's deposition on June 23, 2010, you submitted objections and responses to Apple's second notice of deposition of MWT pursuant to Rule 30(b)(6). For many of the topics listed in the notice, Mirror Worlds refused to designate a witness, including for important topics related to Apple's claims and defenses. In addition, for those topics where Mr. Nemeth was designated, Mirror Worlds materially and unilaterally limited the scope of Mr. Nemeth's testimony. We ask that you immediately provide witnesses for the topics not covered, which include, but are not limited to, the following: the U.S. government funding of Lifestreams, the prior art Lifestreams publication TR1054, and the reexamination and prosecution of the patents-in-suit. In addition to these deficiencies, Mirror Worlds has not responded to Apple's first and second 30(b)(6) notices. Third, the inclusion of Apple's CEO Steve Jobs on Mirror Worlds' witness list for trial appears to be an attempt to unduly burden and harass Apple's CEO. Despite repeated requests by Apple, you have not identified information relating to Mr. Jobs that you either did not obtain from other Apple witnesses or could have obtained from an appropriately tailored Rule 30(b)(6) deposition. As you know, Mirror Worlds has already deposed numerous Apple executives, managers, and engineers, including the few who were on the emails relating to Mr. Jobs. Mirror Worlds has exhausted Apple's corporate knowledge on the subject, and several of these witnesses will be available at trial. It is completely unnecessary to seek Mr. Jobs under these circumstances. Accordingly, please confirm the removal of Mr. Jobs from your witness list. Fourth, it is Apple's hope to reach an agreement with Mirror Worlds to limit the number of claims addressed at trial. However, if we cannot reach an agreement, given the limited time between now and the trial and the numerous preparations underway, Apple will need to get a motion on file before Judge Davis soon. By Apple's count, Mirror Worlds is asserting approximately 50 claims from four patents. This many claims cannot be tried efficiently, and would put an undue burden on the Court and jury. We suggest that you limit the total number of claims to 5 or less. Such a limitation would ensure a manageable presentation of the parties' claims and defenses at trial. As you know, limits on the number of claims to be tried are common in patent cases and in the Eastern District of Texas. For example, in ReRoof America, Inc. v. United Stuctures of America, Inc., 1999 WL 674517 (Fed. Cir.1999) (unpub.) the Federal Circuit affirmed the district court's limitation of claims from eighteen to five total for the five patents-in-suit. Similarly, in Flearing Components, Inc. v. Shure, Inc., 2008 WL 2485426, at * 1 (E.D. Tex. 2008), Judge Clark limited the plaintiff who asserted three patents-in-suit to three representative claims per patent for both claim construction and trial. See also Widevine v. Verimatrix, 2:07-cv-321, slip op. at *2 (E.D. Tex. 2009) (Rader, J.) (limiting the number of claims asserted from sixty-five to five); LG Elecs. Inc. v. Petters Group Worldtivicle, Inc., 5:08- Joseph Diamante June 24, 2010 Page 3 cv-00163 (E.D. Tex. 2009) (Folsom, J.) (Docket Entry # 59) (limiting plaintiff to ten claims); Konami Digital Entertainment Co, Ltd. et al v. Harmonix Music Systems, Inc. et al., 6:08cv-00286, (Docket Entry # 247) (E.D. Tex. 2010) (Love, J.) (limiting the claims to be tried to no more than 12). Finally, in light of upcoming dispositive motions and preparations for trial, Apple would appreciate your response to these issues by close of business tomorrow. As always, we remain open to discuss these issues with you. Sincerely, /s/ Jeff G. Randall Jeff G. Randall of PAUL, HASTINGS, JANOFSKY & WALKER LLP cc: Mirror Worlds and Apple Distribution Lists

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