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)

Mirror Worlds, LLC v. Apple, Inc.

Doc. 309 Att. 3

EXHIBIT B

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Moore, Kim
From: Sent: To: Cc: Soobert, Allan M. Wednesday, June 30, 2010 12:45 PM Solo, Alex MW_v_Apple; 'Deborah Race'; 'Otis Carroll'; Mirror Worlds

Subject: RE: Apple Discovery Deficiencies Alex, I had intended to respond to this specific email on Friday (June 25) after our meet and confer on the Daubert issues and your motion to sever. But, we were obviously pre-occupied with other deadlines in this case, as I am sure you can appreciate. In any event, my apologies for not responding sooner. Your June 24 email appears to be an attempt to generate a number of discovery disputes, presumably in response to Apple's pending motion to compel. We hope that is not the case. Nevertheless, I am optimistic that we can work through these issues and, hopefully, reach a resolution or other accommodation, so that we can move forward with preparing the case for trial. In any event, let me address your points. Your proposed stipulation on Cover Flow in the iPods is overly broad, although we may be able to find some common ground. As an alternative, Apple is willing to agree as follows: if Mirror Worlds proves that the iPod Touch's Cover Flow feature satisfies the "receding, foreshortened stack" limitation, then the remaining iPods with the Cover Flow feature (i.e., Classic and Nano) would also satisfy that limitation. Conversely, if the limitation is not met by the iPod Touch, it would similarly not be met by the iPod Classic and iPod Nano. Please let us know if that is acceptable. On the privilege logs, Apple continues to believe that its privilege log is appropriate and complies with the applicable rules, unlike Mirror Worlds' log. Nevertheless, we are reevaluating the specific entries you have identified. Please let us know if there are any other specific entries that cause you concern, and we will look at those as well. In the meantime, we note that Mirror Worlds' privilege log remains deficient for the reasons stated in Apple's motion to compel, and Mirror Worlds continues to improperly withhold documents on the basis of an improper privilege/work product claim, as explained in Jeff Randall's June 24 letter. We would appreciate a response to that letter as soon as possible. As for Mr. Jobs, Joe Diamante's email merely states that the parties will "agree to disagree" and does not address any of the issues raised in Jeff Randall's June 24 letter. We ask that you respond to those points, so that we can understand your position. As for Apple's responses to Mirror Worlds' requests for admission, we have re-evaluated those responses, and continue to believe that they are proper and comply with the rules. If, however, there are specific examples or responses that you feel are improper, please identify them and we will take another look. As for Apple's duty to search for documents and provide discovery, Apple believes that it has fulfilled its obligations and has been more than reasonable in response to your requests, many of which go well beyond what is required or reasonable. As you know, Apple is a very large company and given Mirror Worlds' allegations of infringement (which implicate dozens of diverse products), the parties agreed early on in the case on a reasonable protocol for fulfilling discovery obligations. The parties accordingly agreed on a protocol addressing appropriate custodians and sources for production, among other things, and Apple has complied with that protocol and its obligations. In fact, on March 4, 2010, Apple even offered to conduct additional searches for documents as outlined in Stefani Smith's email of that date, to the extent Mirror Worlds was not satisfied. Mirror Worlds never responded or requested anything further. While discovery is closed, and expert reports are complete, please let us know if there is something that you believe that you need or do not have, and we will look into it. But, we do not believe that it is appropriate for you to raise this issue now, under these circumstances. As for Intellectual Ventures, Apple has previously investigated and searched for documents that might be relevant

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to any claim or defense in this case, and has found none. There do not appear to be any such documents that exist. We also note that Mirror Worlds served a subpoena on Intellectual Ventures in early 2009, and never followed up on its request for documents from Intellectual Ventures. Mirror Worlds also did not pursue this subject in any detail, if at all, in the nearly 20 depositions that it has taken of Apple witnesses in this case. Instead, it appears that this issue is merely being raised now, in response to Apple's motion to compel, which again we do not hope is the case. As for Messrs. Tribble, Bachman, and Robbin on Apple's witness list, Apple has, again, complied with its discovery obligations and followed the parties' agreed-upon protocol. Nevertheless, we have gone back through Apple's production, and confirmed that over 500 emails alone have been produced with these witnesses as authors or recipients (a number which we note dwarfs the TOTAL number of emails that Mirror Worlds has produced in this case, which in our estimation is roughly 50). In any event, we are investigating whether these witnesses have any other documents that have not already been produced that may be relevant to any claim or defense. We will report back to you, once we have completed that investigation. While we are, as always, available to discuss any of these issues, it would be more productive to put these issues behind us and move forward with preparing the case for trial, particularly with motions for summary judgment due tomorrow, July 1. In that regard, please respond to Jeff Randall's June 24 letter. Among other points in that letter, we specifically need to know if Mirror Worlds is willing to limit the number of claims that it intends to present at trial, given that the present number of asserted claims (i.e., 39 claims) is unwieldy and inappropriate, for the reasons explained in Jeff's letter. As we discussed during our meet and confer last Friday (June 25), Apple plans to move the Court to limit the number of claims, if Mirror Worlds is unwilling to do so. We would, accordingly, appreciate a response on at least that issue today. Thanks, Allan

_______________________________________________________________________ Allan M. Soobert | Paul, Hastings, Janofsky & Walker LLP | 875 15th Street, N.W., Washington, DC 20005 | direct: 202 551 1822 | main: 202 551 1700 | direct fax: [phone] | [e-mail] | www.paulhastings.com Paul Hastings is committed to sustainable practices. Reducing printed waste saves resources.

From: Solo, Alex [mailto:[e-mail]] Sent: Tuesday, June 29, 2010 5:16 PM To: Mirror Worlds Cc: MW_v_Apple; 'Deborah Race'; 'Otis Carroll' Subject: RE: Apple Discovery Deficiencies

Allan, As an initial point, could you please confirm whether Apple is willing, or planning, to provide a stipulation

that the remaining iPods including Cover Flow (e.g., Classic, Nano) infringe if the iPod Touch is found to infringe. If Apple is unable or unwilling to do so, please provide dates for a 30(b)(6) witness on those topics. Additionally, please note that Mirror Worlds reserves the right to supplement its dispositive motions if Apple does not provide Mirror Worlds with such stipulation within the next two days and if the subsequent depositions of the 30(b)(6) witnesses prompt such supplementation.

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I would also like to follow-up on my email below. It would be productive if Apple could provide its positions before having a meet and confer. Accordingly, could you please provide Apple's positions and a time for a meet and confer this Friday? Best regards, Alex
_____________________________ Alexander Solo Stroock & Stroock & Lavan LLP 180 Maiden Lane New York, NY 10038 Tel: (212) 806 - 6031 Fax: (212) 806 - 9031 _____________________________ This e-mail is intended only for the person or entity to which it is addressed and may contain information that is privileged, confidential or otherwise protected from disclosure. Dissemination, distribution or copying of this e-mail or the information herein by anyone other than the intended recipient is prohibited. If you have received this e-mail in error, please: (1) reply to the sender; (2) destroy this communication, including deletion of all associated files from all individual and network storage devices; and (3) refrain from copying or disseminating this communication by any means whatsoever. From: Solo, Alex Sent: Thursday, June 24, 2010 12:18 PM To: Mirror Worlds Cc: MW_v_Apple; 'Deborah Race'; Otis Carroll Subject: Apple Discovery Deficiencies

Allan, Addressed below are several outstanding discovery issues: 1 . ) P R I V I L E G E L O G S I n i t s m o t i o n t o c o m p e l , A p p l e a s s e r t s t h a t M i r r o r W o r l d s ' p r i v i l e g e l o g provides insufficient information. Apple's own privilege log provides no more information than Mirror Worlds' and, to the extent Apple claims Mirror W o r l d s ' p r i v i l e g e l o g i s d e f i c i e n t , s o i s A p p l e ' s . F o r e x a m p l e , A p p l e ' s p r i v i l e g e l o g e n t r i e s 1 6 , 3 0 , 8 0 , 8 2 8 3 , 1 4 7 , e t c . c l a i m p r i v i l e g e w i t h o u t identifying any attorneys. Furthermore, while Apple complains about the l e v e l o f d e t a i l i n M i r r o r W o r l d s ' p r i v i l e g e l o g , i t s o w n p r i v i l e g e l o g frequently uses descriptions like "confidential document reflecting attorneyclient communication re: protection of intellectual property." That description is similar to the description that Apple complains about in Mirror Worlds' log, but provides less information. Apple's log also i n c l u d e s e n t r i e s l i k e 4 6 5 , w h i c h d e s c r i b e s t h e t y p e o f d o c u m e n t a s "document" and only lists an author. Furthermore, it should be noted, that w i t h t h e e x c e p t i o n o f v e r y f e w e n t r i e s , t h e p r i v i l e g e l o g d o e s n o t i n c l u d e any nonemail documents. This raises the question of the sufficiency of A p p l e ' s d o c u m e n t s e a r c h s i n c e i t i s h a r d t o i m a g i n e t h a t A p p l e ' s c o u n s e l n e v e r p r o v i d e d A p p l e w i t h p a p e r d o c u m e n t s , o r t h a t A p p l e ' s l e g a l d e p a r t m e n t d o e s n o t r e t a i n a n y h a r d c o p i e s . Additionally, Apple's prosecution counsel's log fails to provide document types (e.g., letter, email, attachment, etc.) and includes entries like 82,

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which describes a "misc. document." Additionally, Apple's log frequently d e s c r i b e s t h e b a s i s f o r p r i v i l e g e a s " A t t o r n e y n o t e s , t h o u g h t s , a n d impressions . . .", which fails to provide information regarding what exactly is being withheld e.g., the notes or the underlying document (e.g., 81). The foregoing examples are not intended to be comprehensive. A p p l e h a s h a d M i r r o r W o r l d s ' p r i v i l e g e l o g f o r n e a r l y a y e a r n o w a n d h a s n o t r a i s e d a n y i s s u e s r e g a r d i n g i t u n t i l r e c e n t l y . T o d o s o n o w s e e m s t o be an unnecessary distraction when there are far more important matters to a d d r e s s i n t h i s c a s e , s u c h a s w r a p p i n g u p d i s c o v e r y , p r e p a r i n g s u m m a r y j u d g m e n t m o t i o n s a n d p r e p a r i n g f o r t r i a l . I f , h o w e v e r , A p p l e w a n t s t o r e v i s i t t h e i s s u e o f t h e p r i v i l e g e l o g s a t t h i s l a t e d a t e , t h e n i t i s o n l y f a i r a n d r e a s o n a b l e t h a t A p p l e a d d r e s s e s i s s u e s w i t h i t s o w n p r i v i l e g e l o g s . P l e a s e c o n f i r m t h a t A p p l e w a n t s t o g o d o w n t h a t p a t h b e c a u s e w e b e l i e v e t h e r e a r e m o r e i m p o r t a n t t h i n g s t h e p a r t i e s c a n b e d o i n g a t t h i s time. 2 . ) i P o d 3 0 ( b ) ( 6 ) w i t n e s s ­ W e h a v e p r e v i o u s l y d i s c u s s e d a p o s s i b i l i t y t h a t Apple may agree to a stipulation that would remove the need for this witness. Our proposal for such a stipulation is that Apple stipulate that t h e r e m a i n i n g i P o d s i n c l u d i n g C o v e r F l o w ( e . g . , C l a s s i c , N a n o ) i n f r i n g e i f t h e i P o d T o u c h i s f o u n d t o i n f r i n g e . P l e a s e l e t m e k n o w i f t h a t s t i p u l a t i o n i s a c c e p t a b l e t o A p p l e . O t h e r w i s e , p l e a s e p r o v i d e d a t e s f o r a 3 0 ( b ) ( 6 ) w i t n e s s r e g a r d i n g t h e i P o d s . 3 . ) C h r i s t i a n P l a t t ' s e m a i l o f J u n e 8 , 2 0 1 0 h a s f a i l e d t o a d d r e s s A p p l e ' s discovery deficiencies. For convenience, the numbers below will track the numbers in Christian P l a t t ' s l e t t e r . 1 . M i r r o r W o r l d s d i s a g r e e s w i t h A p p l e ' s p o s i t i o n r e g a r d i n g M r . J o b s a n d h a s s t a t e d i t s p o s i t i o n i n a n e m a i l f r o m J o e D i a m a n t e t o J e f f r e y R a n d a l l . 2 . A p p l e ' s p o s i t i o n r e g a r d i n g i t s d e f i c i e n t r e s p o n s e s t o M i r r o r W o r l d s ' RFAs is irreconcilable with the Federal Rules. Accordingly, Mirror Worlds insists that Apple amend its admissions to comply with the rules. 3 . M i r r o r W o r l d s d i s a g r e e s w i t h A p p l e ' s p o s i t i o n r e g a r d i n g A p p l e ' s d u t i e s t o s e a r c h t h e d o c u m e n t s o f A p p l e ' s e m p l o y e e s . A p p l e h a s a d u t y t o p r o v i d e Mirror Worlds with all necessary discovery. One type of discovery is not m u t u a l l y e x c l u s i v e t o a l l o t h e r s . M i r r o r W o r l d s d e p o s i t i o n s o f 3 0 ( b ) ( 6 ) witnesses is in no way a waiver of its rights to document production. It should be noted that it is, in fact, a concession by Mirror Worlds' to a l l o w A p p l e t o p e r f o r m a l i m i t e d s e a r c h o n t h e m a i l b o x e s o f e m p l o y e e s t h a t p o s s e s s k n o w l e d g e t h a t i s c l e a r l y r e l e v a n t t o M i r r o r W o r l d s ' c a s e . A c c o r d i n g l y , M i r r o r W o r l d s i n s i s t s t h a t A p p l e c o o p e r a t e a n d c o n d u c t t h e search of the relevant employee's mailboxes that it promised. 4. Intellectual Ventures is relevant to the case, at least due to its o v e r t u r e s w i t h r e s p e c t t o l i c e n s i n g t h e M i r r o r W o r l d s ' p a t e n t s i n s u i t . Accordingly, Intellectual Ventures' relationship with Apple is highly probative. Apple's suggestion that 30(b)(6) witness depositions somehow w a i v e t h i s d i s c o v e r y r e q u e s t d o e s n o t m a k e s e n s e i n l i g h t o f t h e f a c t t h a t there were no 30(b)(6) topics directed towards Intellectual Ventures and,

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in any event, such a deposition would not satisfy Apple's duty to produce d o c u m e n t s o n t h i s i s s u e . A p p l e d o e s n o t h a v e t h e r i g h t t o g e t t o d i c t a t e what discovery devices Mirror Worlds uses. Accordingly, Mirror Worlds i n s i s t s t h a t A p p l e p r o v i d e i t w i t h t h e r e q u e s t e d i n f o r m a t i o n r e g a r d i n g Intell ectual Ventu res. 6 . A p p l e i s n o t e n t i t l e d t o c o n d u c t l i t i g a t i o n b y s u r p r i s e . A p p l e h a s r e c e n t l y l i s t e d D r . B u d T r i b b l e a s a " w i l l c a l l " w i t n e s s f o r t r i a l . T h e knowledge of Dr. Tribble's importance was exclusively within Apple's control. Accordingly, Apple's position that Mirror Worlds' clear i n s i s t e n c e f o r d o c u m e n t s f r o m M r . T r i b b l e w a s n o t p e r s i s t e n t e n o u g h , a n d t h a t A p p l e m a y n o w w i t h h o l d r e l e v a n t e v i d e n c e f r o m a " w i l l c a l l " w i t n e s s , is unsustainable. Mirror Worlds demands that Dr. Tribble's documents be s e a r c h e d a n d p r o d u c e d a s e a r l y a s p o s s i b l e t o p r e v e n t a n y f u r t h e r p r e j u d i c e t o M i r r o r W o r l d s . M o r e o v e r , o n t h e T r i a l W i t n e s s l i s t f i l e d w i t h t h e C o u r t , A p p l e l i s t s B i l l B a c h m a n a s " w i l l c a l l " w i t n e s s a n d J e f f R o b b i n a s a " m a y c a l l " w i t n e s s . U n d e r L o c a l P a t e n t R u l e s a n d J u d g e D a v i s ' d i s c o v e r y o r d e r , A p p l e m u s t affirmatively produce all documents relevant to any claim or defense in t h i s c a s e . P l a i n l y , B i l l B a c h m a n , J e f f R o b b i n , a n d D r . T r i b b l e m u s t h a v e information relevant to a claim or defense or Apple would not have listed them on its Trial Witness list. Apple, accordingly, must search and p r o d u c e r e l e v a n t d o c u m e n t s f r o m t h e m . 7 . I b e l i e v e t h i s p o i n t h a s b e e n a d d r e s s e d i n M i r r o r W o r l d s ' m o t i o n t o c o m p e l . P l e a s e a d d r e s s t h e a b o v e p o i n t s a s s o o n a s p o s s i b l e o r p r o v i d e a t i m e o n F r i d a y J u n e 2 5 t h , w h e n y o u a r e a b l e t o m e e t a n d c o n f e r . Additionally, we would like to meet and confer on a Daubert motion r e g a r d i n g D r . U g o n e ' s r e l i a n c e o n s u r v e y i n t e r p r e t a t i o n s . R e g a r d s , Alex ______ ______ ______ ______ _____ A l e x a n d e r S o l o S t r o o c k & S t r o o c k & L a v a n L L P 1 8 0 M a i d e n L a n e N e w Y o r k , N Y 1 0 0 3 8 T e l : ( 2 1 2 ) 8 0 6 6 0 3 1 F a x : ( 2 1 2 ) 8 0 6 9 0 3 1 ______ ______ ______ ______ _____ T h i s e m a i l i s i n t e n d e d o n l y f o r t h e p e r s o n o r e n t i t y t o w h i c h i t i s addressed and may contain information that is privileged, confidential or otherwise protected from disclosure. Dissemination, distribution or copying of this email or the information herein by anyone other than the intended r e c i p i e n t i s p r o h i b i t e d . I f y o u h a v e r e c e i v e d t h i s e m a i l i n e r r o r , please: (1) reply to the sender; (2) destroy this communication, including d e l e t i o n o f a l l a s s o c i a t e d f i l e s f r o m a l l i n d i v i d u a l a n d n e t w o r k s t o r a g e

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devices; and (3) refrain from copying or disseminating this communication by any means whats oever.
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