Mirror Worlds, LLC v. Apple, Inc.

Filing 34

NOTICE by Apple, Inc. Notice of Subpoenas to Yale University, Dr. David Gelernter, Dr. Nicholas Carriero, Mr. Christopher Hatchell and Ms. Nancy Pellegrino (Attachments: #1 Attachment)(Mehta, Sonal)

Mirror Worlds, LLC v. Apple, Inc.

Doc. 34 Att. 1

Issued by the

United States District Court
DISTRICT OF

CONNCTICUT

MIROR WORLDS, LLC, Plaintiff
v.
APPLE INC.,

SUBPOENA IN A CIVIL CASE
CASE NUMBER:1 6:08 cv 88 LED Texas, Tyler Division) (Eastern Distrct of

Defendant.
TO:

Yale University President's Offce
PO Box 208229

New Haven, CT 06520-8229
D YOU AR COMMANED to appear in the United States Distrct Cour at the place, date,

and time specified

below to testify in the above case.
PLACE OF TESTIMONY
COURTROQM

DATE AND

TIME

0' YOU AR COMMANED to appear at the place, date, and time specified below to testifY ätthe taking of a deposition in the above case on the following topics: See Attachment B. .._-PLACE OF DEPOSlTON
, Wei

DATE AND TIME

i Gotshal & Manges, LLP 767 Fifth Avenue New York, NY 10022

October 28, 2008 9:30 am

0' YOU AR COMMANDED to produce and permit inspection and copying of the following documents or objects at the place, date, and time specified below (list documents or objects): See Attachment A.
PLACE
DATE AND TIME

Weil Gotshal & Manges, LLP 767 Fifth Avenue New York, NY 10022
YOU AR COMMANED to permit inspection of

October 20, 2008 9:30 am

the following premises at the date and time specified below.
DATE AND TIME

PREMISES

Any organization not a part to this suit that is subpoenaed for the taking of a deposition shall designate one or more offcers, directors, or managing agents, or other persons who consent to testify on its behalf, and may set forth, for each person de§.ignated, the matters on which the person will testify. Federal Rules of Civil Procedure. 30(b)(6).

'"'u"'o o~m" ATIO""V eo.,,,,,," ORO,","OANn
A TTOKl)I Y .r OR DEFENDANT APPLE INC.
ISSUING OFFICER'S NAME, ADDRESS AND PHONE NUMBER

DATE

October 2, 2008

Sonal N. Mehta, Weil, Gotshal & Manges LLP, 201 Redwood Shores Parkway, Redwood Shores, CA 94065;
Telephone [phone]
(See Rule 45, Federal Rules of

Civil Procedure Parts C & D on Reverse)

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

PROOF OF SERVICE

Dockets.Justia.com

DATE

PLACE

SERVED
SERVED ON (PRIT NAME)

MANER OF SERVICE

SERVED BY (pRIT 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 tre and correct.

Executed on

DATE

SIGNATURE OF SERVER

ADDRESS OF SERVER

Rule 45, Federal Rules of Civil

Procedure, Part C & D:
that, subject to

(e) PROTE.eTlON OFPERSONSSÜBJECT TO SUBPOENAS.

(I) A party or an attorney respûQsibl.e for the issuance and service of a subpoena shall
.: t\Ùereaspnabiesteps to avoid )mpó~ipg ~ndue burden or expense on a person subject to

that subpoena. The .cour on behalf of which the subpoena was issued shall enforce this duty and impose upon the party or attorney in breach of this duty an appropriate sanction, wb'irimay i¡¡duâe, but ISnof Hmitêdlò, löst eamitigsand a reasonable attorney's fee.
(2)(A) . A

the provisions of clause (c)(3)(B)(iii) of this rule, such a person may in order to attend tral be commanded to travel from any such place within the state in which the tral is held, or (iii) requires disclosure of privileged or other prbtected matter and no exception or

waiver applies, or r
(iv) subjects a person to undue burden:

person commanded to produce and permit inspection and copying of

(B) Ifa subpoena

designated. books; papers,' documents, or tangible things, or inspection of premises need nòt appear in person at the place of production or inspection unless commanded to appear for deposition, hearing or tral.

or c.ommerciaI information, or i
study made not at the

(i) requires disclosure of a trde secret or other confidentiàlresearch, development,
(ii) required disclosure of an unretained expert's opinion or information not

describing specific events or occurrences in dispute and resulting from the expert's

(B) Subject to paragraph (d)(2) of this rule, a person commanded to produce and
permit inspection and copying may, within 14 days after service the of

subpoena or before

the time specified for compliance if such time is less than 14 days after service, serve
upon the pary or attorney designated in the subpoena written objection to inspection or

request of any party, or (iii) requires a person who is not a party or an officer of a pary to incur substantial
or affected by the subpoena, quash or modify the subpoena or, if the

expense to travel more than 100 miles to attend trial, the court may, to protect a
person subject to

copying of any or all of the designated materials or of the premises. If objection is made,
the party serving the subpoena shall not be entitled to inspect and copy the. materials or

party in whose behalf the subpoena is issued shows a substantial need for the testimony or material that cannot be otherwise met without undue hardship and
assures that the person to whom the subpoena is addressed will be reasonably

inspect the premises except pursuant to an order of the court by which the subpoena was issued. If objection has been made, the pary serving the subpoena may, upon notice to

the person commanded to produce, move at any time for an order to compel the
production. Such an order to compel production shall protect any person who is not a
pary or an offcer of a pary from significant expense resulting from the inspection and

compensated, the court may' order appearance or production only upon specified
conditions.

copying commanded.

(d) DUTIES IN RESPONDING TO SUBPOENA.
(1) A person responding to a subpoena to produce documents shall produce them as they are kept in the usual course business or shall organize and label them to correspond of

(3)(A) On timely motion, the cour by which a subpoena was issued shall quash or
modify the subpoena if it

with the categories in the demand.
(2) When information subject to a subpoena is withheld on a claim that is privileged or subject to protection as tral preparation materials, the claim shall be made expressly and

more than 100 miles from the place where that person resides, is employed or
regularly transacts business in person, except

(i) fails to allow reasonable time for compliance; (ii) requires a person who is not a part or an offcer of a party to travel to a place

shall be supported by a description of the nature of the documents, communications, or
things not produced that is suffcient enable the demanding party to contest to the

claim.

2

ATTACHMENT A
Pursuant to Rule 45 of the Federal Rules of Civil Procedure, Defendant and
Counterclaim

ant Apple Inc. hereby requests that Yale University produce for inspection and

copying the documents and things requested.

DEFINITIONS

1. "You" and "Your" mean Yale University, its predecessors, successors, divisions,
departments, and other organizational and operating units of any of the foregoing, and all past
and present directors, officers, employees, agents, affiliates, representatives (including
consultants and attorneys), and others purporting to act on its behalf.
2. "Mirror Worlds" means Mirror Worlds LLC, Mirror Worlds Technologies, Inc.,

Lifestreams, Inc., Abacus Ventures, Recognition Interface, Inc., Recognition Interface LLC,

Plainfield Specialty Holdings I, Inc., their predecessors, successors, past and present parents,
subsidiaries, divisions,

departments, and other organizational and operating units of any of the

foregoing, and all past and present directors, officers, employees, agents, affliates,
representatives (including consultants and attorneys), and others purporting to act on their behalf.
3.

"Dr. Gelernter" means Dr. David Gelernter, Ph.D., or anyone working on his

behalf.
4.
"Dr. Carrero" means Dr. Nicholas Carero, Ph.D., or anyone working on his

behalf.
5. 6. 7.
8.

"Dr. Freeman" means Dr. Eric Freeman, Ph.D., or anyone working on his behalf.

"Scott Fertig" means Scott Fertig, or anyone working on his behalf.

"Randy Prager" means Randy Prager, or anyone working on his behalf. "Peter Sparago" means Peter Sparago, or anyone working on his behalf.

9. "Chrstopher Hatchell" means Chrstopher Hatchell, or anyone working on his

behalf.
10. "Nancy Pellegrno" means Nancy Pellegrno, or anyone working on her behalf.
11. The "Lifestreams Proj ect" means all research, writing or work relating to the Yale

Lifestreams Project (including without limitation as described at http://csww.cs.yale.edu/homes/freemanlifestreams.html), or to research, writing or work relating to
lifestreams by anyone associated with You or anyone affliated with You, including without
limitation, Dr. Gelemter, Dr. Carero, Dr. Freeman, Scott Fertig, Randy Prager or Peter Sparago.

12. The "Patents-in-Suit" means all patents asserted or to be asserted in the future by
Mirror Worlds in this action, including, without limitation, U.S. Patent No. 6,006,227 ("'227
patent"), U.s, Patent No. 6,638,313 ('''313 patent"), U.S. Patent No. 6,725,427 ("'427 patent"),

and U.s. .Patent ;No.6, 768,999 ("'999 patent"), individually and collectively.

13,"Related Patents" means all patents and patent applications relating to any of the

Patents-in-Suit, including any patents or patent applications (including all published and
unpublished pending and abandoned applications) from or through which any of

the Patents-in-

Suit claim priority, any patents or patent applications (including all published and unpublished
pending and abandoned

applications) that claim priority from or through any of the Patents-in-

Suit, and any foreign counterpart patents or patent applications (including all published and
unpublished pending and abandoned applications) of any of

the foregoing.

14. "Document" shall have the meaning set forth in Federal Rule of Civil Procedure

34, and shall include without limitation, information stored in electronic, magnetic, or optical
media, drafts, all translations of documents, and all materials relating to communications.

2

15. "Communication" means any form of oral or written interchange or attempted

interchange, whether in person, by telephone, by facsimile, by telex, by electronic mail, or by
any other medium.

16. "Concerning" means pertaining to, referrng to, and/or relating to the matter
specified.

INSTRUCTIONS
1. This request seeks production of all documents and things described in the request

which are in your possession, custody or control, whether prepared by you or anyone else, and in
any location they may exist.
2. . If you withhold any document or any portion thereof

on a claim of privilege,

provide a privilege log pursuant to Fed. R. Civ. P. 26.
3. If you contend that a portion of a document. contains information which is
immune from discovery, then produce

the document with the immune portion redacted therefrom

and describe the redacted portion in a privilege log pursuant to Fed. R. Civ. P. 26 (b)(5).
4. The words "and" and "or" shall be used conjunctively or disjunctively, whichever

makes the request more inclusive.

5. The words "any," "all," or "each" shall be construed as "any, all, and each"
inclusively.
6. The singular form of a word shall include the plural and vice versa.

3

REQUESTS FOR DOCUMENTS AND THINGS

REQUEST NO.1:

All documents and things concerning the identity, title, position and role of
persons who worked on the Lifestreams Project.

REQUEST NO.2:
All documents and things concerning Your, Dr. Gelernter's, Dr. Carero's, Dr.
Freeman's, Scott Fertig's, Randy Prager's, Peter Sparago's, or anyone else's work, research,
development or design relating to the Lifestreams Proj ect.

REQUEST NO.3:
All documents and things

concerning communications between or among You,

Dr. Gelernter, Dr. Carrero, Dr. Freeman,

Scott Fertig, Randy Prager, Peter Sparago, or anyone

else concerning'

the Lifestreams Project.

REQUEST NO.4:

All documents and things relating to any product, system or softare
incorporating or embodying any ideas or concepts developed as part of the Lifestreams Project,
including inter alia, documents and things concerning the research, development, design,

engineering, manufacture, invention, patenting, testing, use, demonstration, purchase, sale, or
offer for sale of ideas or concepts relating to the Lifestreams Project or any product, system or
softare conceived or developed as part of

the Lifestreams Project

REQUEST NO.5:
All documents and things concerning any publications, scientific articles,

technical reports, presentations, demonstrations, or seminars, published, held, or given before

June 28, 1996, by You, Dr. Gelernter, Dr. Carero, Dr. Freeman, Scott Fertig, Randy Prager,

4

Peter Sparago, or anyone else concerning the Lifestreams Project or any ideas, concepts, product,
system or softare conceived or developed as par of

the Lifestreams Project.

REQUEST NO.6:
All documents and things concerning meetings, conferences, discussion groups,

and other events attended by, hosted by, or organized before June 28, 1996 by You, Dr.
Gelernter, Dr. Carero, Dr. Freeman, Scott Fertig, Randy Prager, Peter Sparago, or anyone else
concerning the Lifestreams Project or any ideas, concepts, product, system or softare conceived

or developed as part ofthe Lifestreams Project.

REQUEST NO.7:

All documents and., things concerning the webpage available at http://cswww.cs.yale.edu/homes/freemanlifestreams.html.

REQUEST NO.8:
All

documents and things concerning techncal reports concerning the Lifestreams

Project, including inter alia, Yale University Deparment of Computer Science Technical Report
TR1070.

REQUEST NO.9:
All documents and things concerning files, indices, lists, binders, repositories or
other systems for maintaining, keeping, tracking and organizing any technical reports concerning

the Lifestreams Project, including inter alia, any fies, indices, lists, or binders in the possession

or control of Chrstopher Hatchell or Nancy Pellegrno concerning technical reports relating to
the Lifestreams Proj ect.

5

REQUEST NO. 10:

All documents and things concerning the distribution of any technical reports
concerning the Lifestreams Project, including inter alia, any files, indices, lists, or records in the

possession or control of Chrstopher Hatchell or Nancy Pellegrno concerning the distribution of
technical reports relating to the Lifestreams Project.

REQUEST NO. 11:
All documents and things concerning communications between You, any person

associated with You, Christopher Hatchell or Nancy Pellegrno or their predecessors, and any

person seeking access to any fies, indices, lists, or records concerning the distribution of
technical reports relating to the Lifestreams Proj ect.

REQUEST NO, 12:
All documents and things concerning communications between You, any person

associated with You, Christopher Hatchell or Nancy Pellegrno or their predecessors; and any person seeking access to Yale University Department of Computer Science Technical Report
TRI070.

REQUEST NO. 13:
All documents and things concerning communications between Chrstopher

Hatchell or Nancy Pellegrno or their predecessors, and Mirror Worlds or its attorneys.

REQUEST NO. 14:
All documents and things concerning any person or entity who requested

technical reports concerning the Lifestreams Project, who received technical reports concerning
the Lifestreams Project, and who had access to technical reports concerning the Lifestreams

6

system, including without limitation documents showing when such individuals or institutions
requested, received or had access to technical reports concerning the Lifestreams Project.

REQUEST NO. 15:

All documents and things conceming policies, procedures or practices for
generating, maintaining, keeping, tracking, organizing and distributing technical reports,
including inter alia, when, where and how technical reports are generated and printed; where,

how, and by whom techncal reports are maintained; and when, how, by whom and to whom
technical reports are distributed.

REQUEST NO. 16:
All documents and things concerning any publications, aricles, reports, meetings,
conferences~discussion groups, memoranda, e-mail, seminars, communications, demonstrations,
presentations, or other events where technical reports

concerning the Lifestreams Project are

disclosed or mentioned.

REQUEST NO. 17:
All documents and things concerning the content of the fourth paragraph of the
Information Disclosure Statement submitted by Richard S. Milner on March 19, 1998 to the

United States Patent and Trademark Offce located in the prosecution fie history of the '227
patent, including without limitation, all documents and things relating to Mr. Milner's statements
that the Technical Report entitled "The 'Lifestreams' Approach To Reorganizing the Information

World," dated April 1995 "was stored at Yale University in the fies of Christopher Hatchell, an

Administrative Associate, whose tasks included distribution of this Technical Report," that
"(aJccording to Mr. Hatchell's records and to the best of his knowledge, this Technical Report
was not distributed outside of the Department of Computer Science at Yale University," and that

7

"the list containing bibliographic information about the Technical Report from which the
technical report number was determined, is kept in a locked file in the Office of Computer
Science at Yale University."

REQUEST NO. 18:
All documents

and things relating to communications concerning the content of

the fourth paragraph of the Information Disclosure Statement submitted by Richard S. Milner on

March 19, 1998 to the United States Patent and Trademark Offce located in the prosecution file
history of

the '227 patent.

REQUEST NO. 19:
All documents and things concernmg any

patent applications, draft patent

applications'or issued patents relating to work by You, Dr. Gelernter, Dr. Carrero, Dr. Freeman,
Scott Fertig, Randy Prager, or Peter Sparago relating to the Lifestreams Project.

REQUEST NO. 20:

All documents and things concerning the decision whether and when to seek
patent protection for work relating to the Lifestreams Project, including without limitation,

documents showing who participated in making the decision whether and when to seek patent
protection for work relating to the Lifestreams Project and why You did not initially participate
in seeking patent protection for work relating to the Lifestreams Project.

REQUEST NO. 21:
All documents and things concerning the Patents-in-Suit or Related Patents.

REQUEST NO. 22:
All documents and things relating to the prosecution of the applications that led to
the Patents-in-Suit and all Related Patents.

8

REQUEST NO. 23:

All documents and things relating to decisions concerning who should be named

as an inventor on the Patents-in-Suit, Related Patents or draft patent applications relating to the

Lifestreams Project, including inter alia, documents relating to the Patent Office's requirement
that Dr. Gelernter be added as a named inventor to at least one of the Patents-in-Suit and

documents showing the identity, title, position and role of persons who contributed to the subject
matter of the patents or applications and the contribution of each such person.
REQUEST NO. 24:

All documents and things prepared by or at the direction of You or the named
inventors of the Patents-in-Suit or the Related Patents relating to the subject matter of

any claim

of

the Patents-in-Suit or any Related Patents.

REQUEST NO. 25:

All documents and things relating to any communications, including without

limitation any representations made by You, Dr. Gelernter, Dr. Carrero, Dr. Freeman, Scott
Fertig~ Randy Prager, or Peter Sparago, regarding the scope, validity, infrngement, inventorship,
patentability, enforceability or value of any of

the Patents-in-Suit or any Related Patents.

REQUEST NO. 26:

All documents and things relating to any formal or informal investigation, search,
analysis, opinion, report, study, or observation regarding the scope, validity, infrngement,

enforceability, patentability, inventorship or value of any of the Patents-in-Suit or any Related
Patents.

9

REQUEST NO. 27:

All documents and things concerning actual or potential licenses to the Patents-in-

Suit or Related Patents, including without limitations, any offers to license the Patents-in-Suit or
Related Patents.
REQUEST NO. 28:
All documents and things concerning the assignent of rights to the Patents-in-

Suit or Related Patents.
REQUEST NO. 29:

All documents and things concerning Mirror Wodds or Mirror Wodds' products.
REQUEST NO. 30:

All documents and things concerning Your communications with Mirror Worlds.
REQUEST NO. 31:

All documents and things concerning Your, Dr. Gelernter's; Dr. Carero's, Dr.
Freeman's, Scott Fertig's, Randy Prager's, or Peter Sparago's past or present relationship with

Mirror Worlds, including without limitation, any compensation received from Mirror Worlds or
any past or present interest in the Patents-in-Suit or Related Patents.

10

ATTACHMENT B
Pursuant to Rule 45 of the Federal Rules of Civil Procedure, Defendant and

Counterclaimant Apple Inc. hereby requests that Yale University produce a witness to testify as
to the following topics.

DEFINITIONS AND INSTRUCTIONS

1. "You" and "Your" mean Yale University, its predecessors, successors, divisions,
departents, and other organizational and operating units of any of the foregoing, and all past

and present directors, officers, employees, agents, affliates, representatives (including
consultants and attorneys), and others purporting to act on its behalf.
2. "Mirror Worlds" means Mirror Worlds LLC, Mirror Worlds Technologies, Inc.,

Lifestrears, Inc., Abacus Ventures, Recognition Interface, Inc., Recognition Interface LLC,
Plainfield Specialty Holdings I, Inc., their predecessors, successors, past

and present parerits,

subsidiaries, divisions, deparents, and other organizational and operating units of any of the

foregoing, and all past and present directors, officers, employees, agents, affiliates,
representatives (including consultants and attorneys), and others purporting to act on their behalf.
3.

"Dr. Gelernter" means Dr. David Gelernter, Ph.D., or anyone working on his

behalf.
4.
"Dr. Carrero" means Dr. Nicholas Carero, Ph.D., or anyone working on his

behalf.
5.

"Dr. Freeman" means Dr. Eric Freeman, Ph.D., or anyone working on his behalf. "Scott Fertig" means Scott Fertig, or anyone working on his behalf.

6. 7.
8.

"Randy Prager" means Randy Prager, or anyone working on his behalf. "Peter Sparago" means Peter Sparago, or anyone working on his behalf.

9. "Chrstopher Hatchell" means Chrstopher Hatchell, or anyone working on his

behalf.

10. "Nancy Pellegrno" means Nancy Pellegrno, or anyone working on her behalf.
11. The "Lifestreams Project" means all research, writing or work relating to the Yale

Lifestreams Project (including without limitation as described at http://csww.cs.yale.edu/homes/freeman/lifestreams.html), or to research, writing or work relating to
lifestreams by anyone associated with You or anyone affiliated with You, including without
limitation, Dr. Gelemter, Dr. Carrero, Dr. Freeman, Scott Fertig, Randy Prager or Peter Sparago.

12. The "Patents-in-Suit" means all patents asserted or to be asserted in the future by
Mirror '. Worlds in this action, including, without limitation, us. Patent No. 6,006,227 ("'227
patenC), U.S. Patent No. 6,638,313 ("'313 patent"), U.S. Patent No. 6,725,427 ('''427 patent"),
and u.s:

Patent No. 6,768,999 ("'999 patent"), individually and collectively.

13, "Related Patents" means all patents and patent applications relating to any of the

Patents-in-Suit; including any patents or patent applications (including all published and
unpublished pending and abandoned applications) from or through which any of

the Patents-in-

Suit claim priority, any patents or patent applications (including all published and unpublished
pending and abandoned applications) that claim priority from or through any of the Patents-inSuit, and any foreign counterpart patents or patent applications (including all published and

unpublished pending and abandoned applications) of any of the foregoing.
14. The words "and" and "or" shall be used conjunctively or disjunctively, whichever

makes the request more inclusive.

15. The words "any," "all," or "each" shall be construed as "any, all, and each"
inclusively.

2

16. The singular form of a word shall include the plural and vice versa.

3

TOPICS OF EXAMINATION

TOPIC NO.1:
All facts and circumstances relating to Your, Dr. Gelernter's, Dr. Carrero's, Dr.

Freeman's, Scott Fertig's, Randy Prager's, Peter Sparago's, or anyone else's work, research,
development or design relating to the Lifestreams Project, including without limitation, the

identity, title, position and role of persons who worked on the Lifestreams Project, and
communications between or among You, Dr. Gelernter, Dr. Carrero, Dr. Freeman, Scott Fertig,
Randy Prager, Peter Sparago, or anyone else concerning the Lifestreams Project.
TOPIC NO.

2:
All facts and circumstances relating to the research, development, design,

engineering, manufacture, invention, patenting, testing, use, demonstration, purchase, sale, or
offer for sale of ideas or concepts relating to the Lifestreams Project or any product, system or
softare conceived or developed as part ofthe Lifestreams Project.
TOPIC NO.

3:

All facts and circumstances relating to publications, scientific aricles, technical

reports, presentations, demonstrations, or seminars, published, held, or given before June 28,

1996, by You, Dr. Gelernter, Dr. Carrero, Dr. Freeman, Scott Fertig, Randy Prager, Peter
Sparago, or anyone else concerning the Lifestreams Project or any ideas, concepts, product,
system or software conceived or developed as part of

the Lifestreams Project.

TOPIC

NO.4:
All facts and circumstances relating to meetings, conferences, discussion groups,

and other events attended by, hosted by, or organized before June 28, 1996 by You, Dr.
Gelernter, Dr. Carrero, Dr. Freeman, Scott Fertig, Randy Prager, Peter Sparago, or anyone else

4

concerning the Lifestreams Project or any ideas, concepts, product, system or softare conceived
or developed as par ofthe Lifestreams Project.

TOPIC

NO.

5:
All facts and circumstances relating to techncal reports concerning the

Lifestreams Project, including, without limitation, Yale University Deparment of Computer
Science Technical Report TRI070.

TOPIC NO.6:
All facts and circumstances relating to files, indices, lists, binders, repositories or
other systems for maintaining, keeping, tracking and organizing any technical reports concerning

the Lifestreams Project, including, without limitation, any fies, indices, lists, or binders in the

possession or control of Chrstopher Hatchell or Nancy Pellegrno or their predecessors
concerning technical reports relating to the Lifestreams Project.

TOPIC NO.7:
All facts and circumstances relating to the distrbution of any

technical reports

concerning the Lifestreams Project, including, without limitation, any files, indices, lists, or

records in the possession or control of Chrstopher Hatchell or Nancy Pellegrno or their
predecessors concerning the distribution oftechnical reports relating to the Lifestreams Project.
TOPIC NO.

8:

All facts and circumstances relating to communications between You, any person

associated witn You, Christopher Hatchell or Nancy Pellegrno or their predecessors, and any

person seeking access to any files, indices, lists, or records concerning the distribution of
technical reports relating to the Lifestreams Proj ect.

5

TOPIC NO.9:
All facts and circumstances relating to communications between You, any person

associated with You, Chrstopher Hatchell or Nancy Pellegrno or their predecessors, and any
person seeking access to Yale University Department of Computer Science Technical Report
TRI070.
TOPIC NO.

10:

All facts and circumstances relating to communications between Chrstopher
Hatchell or Nancy Pellegrno or their predecessors, and Mirror Worlds or its attorneys.

TOPIC NO. 11:
All facts and circumstances relating to any person or entity who requested

technical reports concerning the Lifestreams Project, who received technical reports concerning
the Lifestreams Project, and who had access to technical reports concerning the Lifestreams

system, including inter alia, when such individuals or institutions requested, received or had
access to technical reports concerning the LifestreamsProject.

TOPIC NO. 12:

All facts and circumstances relating to policies, procedures or practices for
generating, maintaining, keeping, tracking, orgamzmg and distributing technical reports,
including inter alia, when, where and how technical reports are generated and printed; where,

how, and by whom technical reports are maintained; and when, how, by whom and to whom
technical reports are distributed.

TOPIC NO. 13:
All facts and circumstances relating to the fourth paragraph of the Information

Disclosure Statement submitted by Richard S. Milner on March 19, 1998 to the United States

6

Patent and Trademark Offce located in the prosecution fie history of the '227 patent, including

without limitation, All facts and circumstances relating to Mr. Milner's statements that the
Technical Report entitled "The 'Lifestreams' Approach To Reorganizing the Information

World," dated April 1995 "was stored at Yale University in the fies of Christopher Hatchell, an

Administrative Associate, whose tasks included distribution of this Technical Report," that
"According to Mr. Hatchell's records and to the best of his knowledge, this Technical Report
was not distributed outside of the Deparment of Computer Science at Yale University," and that

"the list containing bibliographic information about the Technical Report from which the
technical report number was determined, is kept in a locked fie in the Office of Computer
Science at Yale University."
TOPIC

NO. 14:

All facts and circumstances reüi.ting to communications concerning the content of
the' fourth paragraph of the Information Disclosure Statement submitted by Richard S. Milner on

March 19, 1998 to the United States Patent and Trademark Office located in the prosecution fie
history of

the '227 patent.

TOPIC NO. 15:

All facts and circumstances relating to any patent applications, draft patent
applications or issued patents relating to work by You, Dr. Gelernter, Dr. Carrero, Dr. Freeman,
Scott Fertig, Randy Prager, or Peter Sparago relating to the Lifestreams Project.
TOPIC NO.

16:

All facts and circumstances relating to the decision whether and when to seek
patent protection for work relating to the Lifestreams Project, including inter alia, who
paricipated in making the decision whether and when to seek patent protection for work relating

7

to the Lifestreams Project and why You did not initially participate in seeking patent protection
for work relating to the Lifestreams Proj ect.

TOPIC NO. 17:
All facts and circumstances relating to the prosecution of the applications that led
to the Patents-in-Suit and Related Patents, including inter alia, the decision concerning who

should be named as an inventor on patent applications or draft patent àpplications relating to the

Lifestreams Project, and the Patent Offce's requirement that Dr. Gelemter be added as a named
inventor to at least one of

the Patents-in-Suit.

TOPIC NO. 18:
All documents and things relating to any communications, including without

limitation any representations made by You, Dr. Gelemter, Dr. Carrero, Dr. Freeman,:Scott
Fertig, Randy Prager, or Peter Sparago, regarding the scope, validity, infrngement, inventorship,
patentability,

enforceability or value of any of the Patents-in-Suit or any Related Patents.

TOPIC NO. 19:
All documents and things relating to any formal or informal investigation, search,
analysis, opinion, report, study, or observation regarding the scope, validity, infrngement,

inventorship, patentability, enforceability or value of any of the Patents-in-Suit or any Related
Patents.

TOPIC NO. 20:

All facts and circumstances relating to efforts to license the Patents-In-Suit or
Related Patents.

8

TOPIC NO. 21:
All facts and circumstances relating to the assignent of rights to the Patents-inSuit or Related Patents.

TOPIC NO. 22:
All facts and circumstances relating to Your communications with Mirror Worlds.

TOPIC NO. 23:

All documents and things concerning Your, Dr. Gelernter's, Dr. Carero's, Dr.
Freeman's, Scott Fertig's, Randy Prager's, or Peter Sparago's past or present relationship with

Mirror Worlds, including without limitation, any compensation received from Mirror Worlds or
any past or present interest in the Patents-in-Suit or Related Patents.

9

Issued by the

United States District Court
DISTRICT OF

CONNCTICUT

MIROR WORLDS, LLC, Plaintiff
v.
APPLE INC.,

SUBPOENA IN A CIVIL CASE
CASE NUBER: i 6:08 cv 88 LED
(Eastern Distrct of

Texas, Tyler Division)

Defendant.
TO:
Nicholas Carriero

827 Stil Hil Rd
Hamden, CT 06518

D YOU AR COMMANED to appear in the United States Distrct Court at the place, date, and time specified below to testify in the above case.
PLACE OF TESTIMONY
COURTROOM

DATE AND TIME

0' YOU AR COMMANED to appear at the place, date, and time specified below to testify at the tàking of a: . deposition in the above case.
PLACE OF DEPOSITION
DATE AND TIME

Weil Gotshal & Manges, LLP 767 Fifth Avenue New York, NY 10022

October 31, 2008 9:30 am

¡

0' YOU AR COMMANED to produce and permit inspection and copying ofthe following documents or objects at the place, date, and time specified below (list documents or objects): See Attachment A.
PLACE

DATE AND TIME

Wei1 Gotshal & Manges, LLP 767 Fifth Avenue New York, NY 10022
YOU AR COMMANED to permit inspection of

October 20, 2008 9:30 am

the following premises at the date and time specified below.
DATE AND TIME

PREMISES

Any organization not a part to this suit that is subpoenaed for the taking of a deposition shall designate one or more offcers, directors, or managing agents, or other persons who consent to testify on its behalf, and may set forth, for Civil Procedure. 30(b)(6). each person designated, the matters on which the person wil testify. Federal Rules of
"'"'NO O"~ ANO "'" ,,,mcm W AITRN," eoR ''''",W' OR O,"eNAND
DATE

ATTORNE DE LNT APPLE INC. ~
ISSUING OF,F~ER'S NAME, ADDRESS AND PHONE NUMBER

October 2, 2008

Sonal N. Mehta, Weil, Gotshal & Manges LLP, 201 Redwood Shores Parkway, Redwood Shores, CA 94065;
Telephone [phone]
(See Rule 45, Federal Rules of

Civil Procedure PartsC & D on Reverse)

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

DATE

PLACE

SERVED
SERVED ON (PRIT NAME)

MANNER OF SERVICE

SERVED BY (pRIT 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

Rule 45, Federal Rules of Civil

Procedure, Part C & D:
that, subject to the provisions of clause (c)(3)(B)(iii) this of

(c) PROTECTION OF PERSONS SUBJECT TO SUBPOENAS.

rule, such a person may

(I) A party or an attorney responsible for the issuance and service of a subpoena shall take reasonable steps to avoid imposing undlle burden or expense on a person subject to that subpoena. The cour on behalf of which the subpoena was issued shall enforce this duty and impose upon the party or attorney in breach of this duty an appropriate sanction, which may include, but is not limited to, lost earnings and a reasonable attorney's fee.

in order to attend tral be commnded to travel from any such place within the state in which the tral is held, or (iii) requires disclosure of privileged or other protected matter and no exception' or

waiver applies, or (iv) subjects a person to undue burden.

(B) If a subpoena

(2)(A) A person commanded to produce and permit inspection and copying of
designated books, papers, documents or tangible things" or inspection of premises need not appear in person at the place of production or inspection unless commanded to appear for deposition, hearing or tral.
(i) requires disclosure of a trde secret or other confidential research, development, or commercial infonnation, or
(ii) required disclosure of an unretained expert's opinion or information not

describing specific events or occurences in dispute and resulting from the expert's

(B) Subject to paragraph (d)(2) of this nile, a person commanded to produce and
permit inspection and copying may, within 14 days after service the of

subpoena or before

the time specified for compliance if such time is less than 14 days after service, serve
upon the pary or attorney designated in the subpoena written objection to inspection or

request of any party, or (iii) requires a person who is not a pary or an offcer of a pary to incur substantial expense to travel more than 100 miles to attend trial, the court may, to protect a person subject to or affected by the subpoena, quash or modify the subpoena or, ifthe

study made not at the

copying of any or all of the designated materials or of the premises. If objection is made, the party serving the subpoena shall not be entitled to inspect and copy the materials or inspect the premises except pursuant to an order of the court by which the subpoena was
issued. If objection has been made, the par serving the subpoena may, upon notice to

pary in whose behalf the subpoena is issued shows a substantial need for the
testimony or material that canot be otherwise met without undue hardship and

assures that the person to whom the subpoena is addressed will be reasonably

compensated, the court may order appearance or production only upon specified
conditions.

the person commanded to produce, move at any time for an order to compel the
production. Such an order to compel production shall protect any person who is not a

party or an offcer of a pary from significant expense resulting from the inspection and
copying commanded.

(d) DUTIES IN RESPONDING TO SUBPOENA.
(I) A person responding to a subpoena to produce documents shall produce them as

(3)(A) On timely motion, the cour by which a subpoena was issued shall quash or
modify the subpoena if it

they are kept in the usual course of business or shall organize and label them to correspond with the categories in the demand.
(2) When information subject to a subpoena is withheld on a claim that is privileged or subject to protection as tral preparation materials, the claim shall be made expressly and

more than 100 miles from the place where that person resides, is employed or
regularly transacts business in person, except

(i) fails to allow reasonable time for compliance; (ii) requires a person who is not a par or an officer of a pary to travel to a place

shall be supported by a description of the nature of the documents, communications, or
things not produced that is sufcient enable the demanding party to contest to the

claim.

2

ATTACHMENT A
Pursuant to Rule 45 of the Federal Rules of Civil Procedure, Defendant and
Counterclaimant Apple Inc. hereby requests that Dr. Nicholas Carrero, Ph.D. produce for

inspection and copying the documents and things requested.

DEFINITIONS

1. "Yale" means Yale University, its predecessors, successors, divisions,
deparments, and other organizational and operating units of any of the foregoing, and all past
and present directors, officers, employees, agents, affliates, representatives (including
consultants and attorneys), and others purporting to act on its behalf.
2. "You" or "Your" means you, Dr. Nicholas Carero, Ph.D., or anyone working on

your behalf.
3. "Mirror Worlds" means Mirror Worlds LLC, Mirror Worlds Technologies, Inc.,

Lifestreams, Inc., Abacus Ventures, Recognition

Interface, Inc., Recognition Interface LLC,

Plainfield Specialty Holdings I, Inc., their predecessors, successors, past and present parents,
subsidiaries, divisions, deparments, and other organizational and operating units of any of the

foregoing, and all past and present directors, offcers, employees, agents, affliates,
representatives (including consultants and attorneys), and other~ purporting to act on their behalf.

4.

"Dr. Gelernter" means Dr. David Gelernter, Ph.D., or anyone working on his

behalf.
5. 6. 7. 8.

"Dr. Freeman" means Dr. Eric Freeman, Ph.D., or anyone working on his behalf. "Scott Fertig" means Scott Fertig, or anyone working on his behalf. "Randy Prager" means Randy Prager, or anyone working on his behalf. "Peter Sparago" means Peter Sparago, or anyone working on his behalf.

9. "Chrstopher Hatchell" means Chrstopher Hatchell, or anyone working on his

behalf.
10. "Nancy Pellegrino" means Nancy Pellegrno, or anyone working on her behálf.

11. The "Lifestreams Proj ect" means all research, writing or work relating to the Yale

Lifestreams Project (including without limitation as described at http://csww.cs.yale.edu/omes/freemanllifestreams.html), or to research, wrting or work relating to
lifestreams by anyone associated with Yale or anyone affliated with Yale, including without
limitation, You, Dr. Gelemter, Dr. Freeman, Scott Fertig, Randy Prager or Peter Sparago.

12. The "Patents-in-Suit" means all patents asserted or to be asserted in the future by
Mirror Worlds in this action, including, without limitation, U.S. Patent No. 6,006,227 ("'227
patent"), U.S. Patent No. 6,638,313 ("'313 patent"), U.S. Patent No. 6,725,427 ("'427 patent"),

and U.S. Patent No. 6,768,999 ("'999 patent"), individually and collectively.

13. "Related Patents" means all patents and patent applications relating to any of the

Patents-in-Suit, including any patents or patent applications (including all published and
unpublished pending and abandoned applications) from or through which any of

the Patents-in-

Suit claim priority, any patents or patent applications (including all published and unpublished
pending and abandoned applications) that claim priority from or through any of the Patents-inSuit, and any foreign counterpar patents or patent applications (including all published and

unpublished pending and abandoned applications) of any ofthe foregoing.
14. "Document" shall have the meaning set forth in Federal Rule of Civil Procedure

34, and shall include without limitation, information stored in electronic, magnetic, or optical
media, drafts, all translations of documents, and all materials relating to communications.

2

15. "Communication" means any form of oral or written interchange or attempted

interchange, whether in person, by telephone, by facsimile, by telex, by electronic mail, or by
any other medium.

16. "Concernng" means pertaining to, referrng to, and/or relating to the matter
specified.

INSTRUCTIONS
1. This request seeks production of all documents and things described in the request

which are in your possession, custody or control, whether prepared by you or anyone else, and in
any location they may exist.
2. If you withhold any document or any portion thereof on a claim of privilege,

provide a privilege log pursuant to Fed. R. Civ. P. 26.
3. If you contend that a portion of a document contains information which is

immune from discovery, then produce the document with the immune portion redacted therefrom
and describe the redacted portion in a privilege log pursuant to Fed. R. Civ. P. 26 (b)(5).
4. The words "and" and "or" shall be used conjunctively or disjunctively, whichever

makes the request more inclusive.

5. The words "any," "all," or "each" shall be construed as "any, all, and each"
inclusively.

6. The singular form of a word shall include the plural and vice versa.

3

REQUESTS FOR DOCUMENTS AND THINGS

REQUEST NO.1:
All documents and things concerning Your, Yale's, Dr. Gelernter's, Dr.
Freeman's, Scott Fertig's, Randy Prager's, Peter Sparago's, or anyone else's work, research,
development or design relating to the Lifestreams Project.

REQUEST NO.2:
All documents and things concernng communications between or among You,

Yale, Dr. Gelernter, Dr. Freeman, Scott Fertig, Randy Prager, Peter Sparago, or anyone else
concerning the Lifestreams Project.

REQUEST NO.3:

All documents and things relating to any product or system incorporating or
embodying any ideas or concepts developed as par of the Lifestreams Project, including inter
alia, documents and things concerning the research, development, design, engineering,

manufacture, invention, patenting, testing, use, demonstration, purchase, sale, or offer for sale of

ideas or concepts relating to the Lifestreams Project or any product, system, or softare
conceived or developed as part of

the Lifestreams Project

REQUEST NO.4:
All documents and things concerning any publications, scientific articles,

technical reports, presentations, demonstrations, or seminars, published, held, or given before

June 28, 1996, by You, Yale, Dr. Gelernter, Dr. Freeman, Scott Fertig, Randy Prager, Peter
Sparago, or anyone else concerning the Lifestreams Project or any ideas, concepts, product,
system or software conceived or developed as part of

the Lifestreams Project.

4

REQUEST NO.5:
All documents and things concerning meetings, conferences, discussion groups,

and other events attended by, hosted by, or organized before June 28, 1996 by You, Yale, Dr.
Gelernter, Dr. Freeman, Scott Fertig, Randy Prager, Peter Sparago, or anyone else concerning

the Lifestreams Project or any ideas, concepts, products, systems or softare conceived or
developed as part ofthe Lifestreams Project.

REQUEST NO.6:

All documents and things concerning the webpage available at http://csww.cs.yale.edu/omes/freemanlifestreams.htmL.

REQUEST NO.7:
All documents and things concerning technical reports concerning the Lifestreams

Project, including inter alia, Yale University Department of Computer Science Technical Report
TR1070.

REQUEST NO.8:
All documents and things concerning files, indices, lists, binders, repositories or
other systems for maintaining, keeping, tracking and organizing any technical reports concerning
the Lifestreams Project.

REQUEST NO.9:
All documents and things concerning the distribution of any technical reports
concerning the Lifestreams Project.

5

REQUEST NO.

10:

All documents and things concerning communications between You, Yale, or any

person associated with You or Yale and any person seeking access to any fies, indices, lists, or
records concerning the distribution of

technical reports relating to the Lifestreams Project.

REQUEST NO. 11:
All documents and things concerning communications between You, Yale, or any

person associated with You or Yale and any person seeking access to Yale University
Deparment of Computer Science Technical Report TRI070.

REQUEST NO. 12:

REQUEST NO. 14:

All documents and things concerning policies, procedures or practices for
generating, maintaining, keeping, tracking, organizing and distributing technical reports,
including inter alia, when, where and how technical reports are generated and printed; where,

how, and by whom technical reports are maintained; and when, how, by whom and to whom
technical reports are distributed.

6

REQUEST NO. 15:
All documents and things concerning any publications, articles, reports, meetings,

conferences, discussion groups, memoranda, e-mail, seminars, communications, demonstrations,

presentations, or other events where technical reports concerning the Lifestreams Project are
disclosed or mentioned.

REQUEST NO. 16:

All documents and things concerning any patent applications, draft patent
applications or issued patents relating to work by You, Yale, Dr. Gelernter, Dr. Freeman, Scott
Fertig, Randy Prager, or Peter Sparago relating to the Lifestreams Project.

REQUEST NO. 17:

All documents and things concerning the decision whether and when to seek
patent protection for work relating to the Lifestreams Project, including without limitation,

documents showing who paricipated in making the decision whether and when to seek patent

protection for work relating to the Lifestreams Project and why You or Yale did not initially
participate in seeking pàtent protection for work relating to the Lifestreams Project.

REQUEST NO. 18:
All documents and things concerning the Patents-in-Suit or Related Patents.

7

REQUEST NO. 19:
All documents and things relating to decisions concerning who should be named

as an inventor on the Patents-in-Suit, Related Patents or draft patent applications relating to the
Lifestreams Proj ect, including inter alia, documents relating to why you are not named as an

inventor on the Patents-in-suit, Related Patents or draft patent applications to relating to the
Lifestreams Project.
REQUEST NO. 20:

All documents and things concerning Mirror Worlds or Mirror Worlds' products.
REQUEST NO. 21:

All documents and things concerning Your, Yale's, Dr. Gelernter's, Dr.
Freeman's, Scott Fertig's, Randy Prager's, or Peter Sparago's past or present relationship with

Mirror Worlds, including without limitation, any compensation received from Mirror Worlds or
any past or present interest in the Patents-in-Suit or Related Patents.

8

Issued by the

United States District Court
DISTRICT OF

CONNECTICUT

MIROR WORLDS, LLC, Plaintiff
v.
APPLE INC.,

SUBPOENA IN A CIVIL CASE
CASE NUBER: 1 6:08 cv 88 LED Texas, Tyler Division) (Eastern Distrct of

Defendant.
TO:

David Gelernter 3 MohawkLn Woodbridge, CT 06525

D YOU AR COMMANED to appear in the United States District Court at the place, date, and time specified below to testify in the above case.
PLACE OF TESTIMONY
COURTROOM

DATE AND TIME

D YOU AR COMMANED to appear at the place, date, arid time specified below to testify at the taking of a deposition in the above case.
PLACE OF DEPOSITION
DATE AND TIME

0' YOU AR COMMANED to produce and permit inspection and copying of the following documènts or objects at the place, date, and time specified below (list documents or objects): See Attachment A.
PLACE

DATE AND TIME

Weil Gotsha1 & Manges, LLP 767 Fifth Avenue New York, NY 10022
YOU AR COMMANED to permit inspection of

October 20, 2008 9:30 am

the following premises at the date and time specified below.
DATE AND TIME

PREMISES

Any organization not a part 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 Civil Procedure. 30(b)(6). each person designated, the matters on which the person will testify. Federal Rules of
"W~ANO unE ,mo,m,

" Anomy mRe'-OR Of,,OANn

DATE

October 2, 2008
A i lyYNJ Y FOR DElANT APPLE INC.
ISSUING OFFICER'S NAME, ADDRESS AND PHONE NUMBER

Sonal N. Mehta, Weil, Gotshal & Manges LLP, 201 Redwood Shores Parkway, Redwood Shores, CA 94065;
Telephone [phone]
(See Rule 45, Federal Rules of

Civil Procedure Parts C & D on Reverse)

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

PROOF OF SERVICE
DATE

PLACE

SERVED
SERVED ON (PRIN NAME)
MANNER OF SERVICE

SERVED BY (pRIT NAME)

TITLE
.

DECLARATION OF SERVER
I declare under penalty of

perjury under the laws ofthe United States of America that the foregoing information contained in

the Proof of Service is tre and correct.

Executed on
DATE

SIGNATUR OF SERVER
ADDRESS OF SERVER

Rule 45, Federal Rules of Civil

Procedure, Part C & D:
that, subject to the provisions of clause (c )(3)(B)(iii) of this rule, such a person may in order to attend trial be commanded to travel from any such place within the state in which the tral is held, or (iii) requires disclosure of privileged or other protected matter and no exception or waiver applies, or
(iv) .subjects a person to undue burden.

(c) PROTECTION OF PERSONS SUBJECT TO SUBPOENAS.

(1) A part or an attorney responsible for the issuance and service of a subpoena shall take reasonable steps to avoid imposing undue burden or expense on a person subject to that subpoena. The court on behalf of which the subpoena was issued shall enforce this
duty and impose upon the party òr aitornèy. in breach of this duty an appropriate sanction,

. which may include, but is not limited to, lost earnings and a reasonable attorney's fee.
. (B) If a subpo~na

(2)(A) A person commanded to produce and permit inspection and copying of
designated books, papers, documents or tangible things, or inspection of premises need not appear in person at the place of production or inspection unless commanded to appear for deposition, hearing or tral.
(i) requires disclosure of a trde secret or other confidential research, development, or commercial information, or
(ii) required disclosure of an unretained expert's opinion or information not

describing specific events or occurences in dispute and resulting from the expert's

(B) Subject to paragrph (d)(2) of this rule, a person commanded to produce and
permit inspection and copying may, within 14 days after service the of

study made not at the

subpoena or before

the time specified for compliance if such time is less than i 4 days after service, serve upon the party or attorney designated in the subpoena written objection to inspection or copying of any or all of the designated materials or of the premises. If objection is made, the party serving the subpoena shall not be entitled to inspect and copy the materials or inspect the premises except pursuant to an order of the court by which the subpoena was issued, If objection has been made, the pary serving the subpoena may, upon notice to

expense to travel more than 100 miles to attend trial, the court may, to protect a
person subject to

request of any party, or (iii) requires a person who is not a party or an offcer of a party to incur substantial

or affected by the subpoena, quash or modify the subpoena or, jfthe

pary in whose behalf the subpoena is issued shows a substantial need for the testimony or material that cannot be otherwise met without undue hardship and
assures that the person to whom the subpoena is addressed will be reasonably

compensated, the court may order appearance or production only upon specified
conditions.

the person commanded to produce, move at any time for an order to compel the
production. Such an order to compel production shall protect any person who is not a
pary or an offcer of a pary from significant expense resulting from the inspection and

copying commanded.

(d) DUTIES IN RESPONDING TO SUBPOENA.
(I) A person responding to a subpoena to produce documents shall produce them as they are kept in the usual coure of business or shall organize and label them to correspond

(3)(A) On timely motion, the cour by which a subpoena was issued shall quash or
modify the subpoena if it

with the categories in the demand.

(i) fails to allow rcasonable time for compliance;

(ii) requires a person who is not a par or an offcer of a pary to travel to a place more than 100 miles from the place where that person resides, is employed or
regularly transacts business in person, except

(2) When inforiiaüon subject to a subpoena is withheld on a claiii that is privileged OJ subject to protection as tral preparation materials, the claim shall be made expressly and
shall be supported by a description of the nature of the documents, communications, or
things not produced that is suffcient enable to

the demanding party to contest the claim.

2

ATTACHMENT A
Pursuant to Rule 45 of the Federal Rules of Civil Procedure, Defendant and
Counterclaimant Apple Inc. hereby requests that Dr. David Ge1ernter, Ph.D. produce for

inspection and copying the documents and things requested.

DEFINITIONS

1. "Yale" means Yale University, its predecessors, successors, divisions,
departments, and other organizational and operating units of any of the foregoing, and all past
and present directors, officers, employees, agents, affliates, representatives (including
consultants and attorneys), and others purporting to act on its behalf.
2. "You" or "Your" means you, Dr. David Gelernter, Ph.D., or anyone working on

your behalf.
3. "Mirror Worlds" means Mirror Worlds LLC, Mirror Worlds Technologies, Inc.,

Lifestreams, Inc., Abacus Ventues, Recognition Interface, Inc., Recognition Interface LLC,

Plainfield Specialty Holdings I, Inc., their predecessors, successors, past and present parents,
subsidiaries,' divisions, departments, and other organizational and operating units of any of the

foregoing, and all past and present directors, offcers, employees, agents, affliates,
representatives (including consultants and attorneys), and others purporting to act on their behalf.
4.
"Dr. Carero" means Dr. Nicholas Carero, Ph.D., or anyone working on his

behalf.
5.

"Dr. Freeman" means Dr. Eric Freeman, Ph.D., or anyone working on his behalf.

6.
7.
8.

"Scott Fertig" means Scott Fertig, or anyone working on his behalf. "Randy Prager" means Randy Prager, or anyone working on his behalf.
. "Peter Sparago" means Peter Sparago, or anyone working on his behalf.

9. "Chrstopher Hatchell" means Chrstopher Hatchell, or anyone working on his

behalf.

10. "Nancy Pellegrno" means Nancy Pellegrno, or anyone working on her behalf.
11. The "Lifestreams Project" means all research, writing or work relating to the Yale

Lifestreams Project (including without limitation as described at http://csww.cs.yale.edu/omes/freemanlifestreams.html), or to research, writing or work relating to

lifestreams by anyone associated with Yale or anyone affliated with Yale, including without
limitation, You, Dr. Carero, Dr. Freeman, Scott Fertig, Randy Prager or Peter Sparago.

12. The "Patents-in-Suit" means all patents asserted or to be asserted in the future by
Mirror Worlds in this action, including, without limitation, U.S. Patent No. 6,006,227 ("'227
patent"), U.S. Patent No. 6,638,313 ('''313 patent"), U.S. Patent No. 6,725,427 ("'427 patent"),

and U.S. Patent No. 6,768,999 ("'999 patent"), individually and collectively.

13. "Related Patents" means all patents and patent applications relating to any of the

Patents-in-Suit, including any patents or patent applications (including all published and
unpublished pending and abandoned applications) from or through which any of the Patents-in-

Suit claim priority, any patents or patent applications (including all published and unpublished
pending and abandoned applications) that claim priority from or through any of the Patents-inSuit, and any foreign counterpar patents or patent applications (including all published and

unpublished pending and abandoned applications) of any of the foregoing.
14. "Document" shall have the meaning set forth in Federal Rule of Civil Procedure

34, and shall include without limitation, information stored in electronic, magnetic, or optical
media, drafts, all translations of documents, and all materials relating to communications.

2

15. "Communication" means any form of oral or wrtten interchange or attempted

interchange, whether in person, by telephone, by facsimile, by telex, by electronic mail, or by
any other medium.

16. "Concerning" means pertaining to, referrng to, and/or relating to the matter
specified.

INSTRUCTIONS
1. This request seeks production of all documents and things described in the request

which are in your possession, custody or control, whether prepared by you or anyone else, and in
any location they may exist.
2. If you withhold any document or any portion thereof on a claim of privilege,

provide a

privilege log pursuant to Fed. R. Civ. P. 26.
3. If you contend that a portion of a document contains information which is

immune from discovery, then produce the document with the immune portion redacted therefrom
and describe the redacted portion in a privilege log pursuant to Fed. R. Civ. P. 26 (b)(5).
4. The words "and" and "or" shall be used conjunctively or disjunctively, whichever

makes the request more inclusive.

5. The words "any," "all," or "each" shall be construed as "any, all, and each"
inclusively.
6. The singular form of a word shall include the plural and vice versa.

3

REQUESTS FOR DOCUMENTS AND THINGS

REQUEST NO.1:

All documents and things concerning the identity, title, position and role of
persons who worked on the Lifestreams Project.

REQUEST NO.2:
All documents and things concerning Yale's, Your, Dr. Carero's, Dr. Freeman's,
Scott Fertig's, Randy Prager's, Peter Sparago's, or anyone else's work, research, development or
design relating to the Lifestreams Project.

REQUEST NO.3:
All documents and things concerning communications between or among Yale,
You, Dr. Carero, Dr. Freeman, Scott Fertig, Randy Prager, Peter Sparago, or

anyone else

concerning the Lifestreams Project.

REQUEST NO.4:
All documents and things relating to any product, system or software

incorporating or embodying any ideas or concepts developed as part of the Lifestreams Project,
including inter alia, documents and things concerning the research, development, design,

engineering, manufacture, invention, patenting, testing, use, demonstration, purchase, sale, or
offer for sale of ideas or concepts relating to the Lifestreams Project or any product, system or
softare conceived or developed as part of

the Lifestreams Project

REQUEST NO.5:
All documents and things concerning any publications, scientific articles,

technical reports, presentations, demonstrations, or seminars, published, held, or given before

June 28, 1996, by Yale, You, Dr. Carrero, Dr. Freeman, Scott Fertig, Randy Prager, Peter

4

Sparágo, or anyone else concernng the Lifestreams Project or any ideas, concepts, products,
systems, or softare conceived or developed as part ofthe Lifestreams Project.

REQUEST NO.6:
All documents and things concerning meetings, conferences, discussion groups,

and other events attended by, hosted by, or organized before June 28, 1996 by Yale, You, Dr.
Carero, Dr. Freeman, Scott Fertig, Randy Prager, Peter Sparago, or anyone else concerning the
Lifestreams Project or any ideas, concepts, products, systems, or software conceived or

developed as part of

the Lifestreams Project.

REQUEST NO.7:
All documents and things concerning the webpage available at http://cs-

ww.cs.yale.edu/omes/freemanlifestreams.htmL.

REQUEST NO.8:
All documents and things concerning technical reports concerning the Lifestreams

Project, including inter alia, Yale University Department of Computer Science Technical Report
TR1070.

REQUEST NO.9:
All documents and things concerning files, indices, lists, binders, repositories or
other systems for maintaining, keeping, tracking and organizing any technical reports concerning
the Lifestreams Project.
REQUEST NO.

10:

All documents and things concerning the distrbution of any technical reports
concerning the Lifestreams Proj ect.

5

REQUEST NO. 11:
All documents and things concerning communications between You, Yale, or any

person associated with You or Yale and any person seeking access to any fies, indices, lists, or
records concerning the distrbution oftechnical reports relating to the Lifestreams Project.

REQUEST NO. 12:
All documents and things concerning communications between You, Yale, or any

person associated with You or Yale and any person seeking access to Yale University
Department of Computer Science Technical Report TRI070.

REQUEST NO. 13:
All documents and things concerning communications between You and Mirror
Worlds or its attorneys.

REQUEST NO. 14:
All documents and things concerning any person or entity who requested

technical reports concerning the Lifestreams Project, who received technical reports concerning
the Lifestreams Project, and who had access to technical reports concerning the Lifestreams

system, including without limitation documents showing when such individuals or institutions
requested, received or had access to techncal reports concerning the Lifestreams Project.

REQUEST NO. 15:

All documents and things concerning policies, procedures or practices for
generating, maintaining, keeping, tracking, organizing and distributing technical reports,
including inter alia, when, where and how technical reports are generated and printed; where,

how, and by whom technical reports are maintained; and when, how, by whom and to whom
technical reports are distributed.

6

REQUEST NO. 16:
All documents and things concerning any publications, aricles, reports, meetings,
conferences, discussion groups, memoranda, e-mail, seminars, communications, demonstrations,
presentations, or other events where technical reports concerning the Lifestreams Project are
disclosed or mentioned.

REQUEST NO. 17:

All documents and things concernmg any patent applications, draft patent
applications or issued patents relating to work by Yale, You, Dr. Carero, Dr. Freeman, Scott
Fertig, Randy Prager, or Peter Sparago relating to the Lifestreams Project.

REQUEST NO: 18:

All documents and things concerning the decision whether and when to seek
patent protection for work relating to the Lifestreams Project, includ