Mirror Worlds, LLC v. Apple, Inc.

Filing 65

NOTICE by Apple, Inc. of Subpoena to Scott Fertig (Attachments: #1 Appendix Subpoena to Scott Fertig)(Smith, Stefani)

Mirror Worlds, LLC v. Apple, Inc.

Doc. 65 Att. 1

Issued by the

United States District Court
DISTRICT OF
MIRROR WORLDS, LLC,

CONNECTICUT

Plaintiff
v.

SUBPOENA IN A CIVIL CASE
CASE NUMBER: i 6:08 cv 88 LED
(Eastern District of

APPLE INC.,

Texas, Tyler Division)

Defendant.
TO:

Scott Fertig
15 FIr Bsmt Ridge Rd Branford, CT 06405

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

DA TE AND TIME

0' YOU ARE COMMANDED to appear at the place, date, and time specified below to testify at the taking of a deposition in the above case.
PLACE OF DEPOSITON
DA TE AND TIME

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

March 3, 2009 9:30 am

0' YOU ARE 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 ARE COMMANDED to permit inspection of

February 16, 2009
5:00 p.m.

the following premises at the date and time specified below.
DA TE 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 each person designated, the matters on which the person wil testify. Federal Rules of Civil Procedure. 30(b)(6).
DATE

_ . ri

ATTOR y fcl EFENDAN;~& fN~\: _
ISSUING OFFICER'S N. E, ADDRESS AND PHONE NUMBER

'."~T:::.rnND,cm" A'r0""CY COR '","TI" OR O""OA"'

January 20, 2009

Stefani C. Smith, Weil, Gotshal & Manges LLP, 201 Redwood Shores Parkway, Redwood Shores, CA 94065;
Telephone [phone]
(See Rule 45, Federal Rules of Civil Procedure Parts C & 0 on Reverse)
i If action is pending in district other than district of issuance, state district under case number.

Dockets.Justia.com

PROOF OF SERVICE
DATE
PLACE

SERVED
SER VEO ON (PRINT NAME)

MANNER OF SERVICE

SERVED BY (PRINT NAME)

TITLE

DECLARA nON 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, Parts C & D:

(c) PROTECTION OF PERSONS SUBJECT TO SUBPOENAS.

(I) Aparty or an attomey responsible for the issuance and service ofa 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 or attomey in breach of this duty an appropriate sanction, whicb may include, but is not limited to, lost eamings and a reasonable attomey's fee.

that, subject to the provisions of clause (c)(3)(B)(iii) of this mle, sueh a person may in order to attend trial be commanded to travel from any such place within the slate in which the trial is held, or (iii) requires disclosure of privileged or other protccted 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 triaL.

(i) requires disclosure of a trade 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 occurrences in dispute and resulting from the expel1's

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

thc time specified for compliance if sucJi time is less than 14 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 objeetion is made, the party serviug the subpoena shall not be entitled to inspect and eopy the materials or inspect thc 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

study made not at the request of any part, or (iii) requires a person who is nol a party or an offcer of a party to incur substantial expense to travel more than 100 miles to attend trial, the court may, to protecl a
person subject to or affected by the subpoena, quash or modify the subpoena or, if the

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 compensated, the co1l1 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. Sueh an order to compel production shall protect any person who is not a pai1y or an offcer of a party 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 court by which a subpoena was issued shall quash or
modity 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.

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 ofa party to travel to a place

(2) When infonnation subject to a subpoena is withheld on a claim that is privileged or subject to protection as trial 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 to enable 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 Scott Fertig 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, Scott Fertig, 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, 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.
4.

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

behalf.
5.

"Dr. Freeman" means Dr. Eric Freeman, Ph.D., or anyone working on his behalf. "Nicholas Carreiro" means Nicholas Carreiro, 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. "Christopher Hatchell" means Christopher Hatchell, or anyone working on his

behalf.
10. "Nancy Pellegrino" means Nancy Pellegrino, 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/freeman/lifestreams.html), or to research, writing or work relating to
lifestreams by anyone associated with Yale or anyone affiliated with Yale, including without
limitation, You, Dr. Gelemter, Dr. Freeman, Nicholas Careiro, 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 ("the '227
patent"), U.S. Patent No. 6,638,313 ("the '313 patent"), U.S. Patent No. 6,725,427 ("the '427

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

i 5. "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.

i 6. "Concerning" means pertaining to, referring to, and/or relating to the matter
specified.

INSTRUCTIONS
i. 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, Nicholas Carreiro'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 concerning communications between or among You,

Yale, Dr. Gelernter, Dr. Freeman, Nicholas Carreiro, 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 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 software

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, Nicholas Carreiro, 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, Nicholas Carreiro, 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.6:
All documents and things concerning the webpage available at http://csww.cs.yale.edulhomes/freeman/lifestreams.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 the distribution of any technical reports
concerning the Lifestreams Project.

REQUEST NO.9:
All documents and things relating to any actual or potential collaboration,
partnership or joint venture between You, Yale, Dr. Gelemter, Dr. Freeman, Nicholas Carreiro,
Randy Prager, Peter Sparago, or Mirror Worlds relating to any ideas, concepts, products, systems
or software conceived or developed as part of

the Lifestreams project.

5

REQUEST NO. 10:
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.

11:

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

REQUEST NO. 12:

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 or Yale did not initially
participate in seeking patent protection for work relating to the Lifestreams Project.

REQUEST NO. 13:
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 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. 14:
All documents and things concerning the Patents-in-Suit or Related Patents.

6

REQUEST NO. 15:

All documents and things relating to the assignment of rights to the Patents-inSuit or Related Patents.

REQUEST NO. 16:
All documents and things relating to any sale or transfer of any right or interest in
the Patents-in-Suit or Related Patents.

REQUEST NO. 17:
All documents and things relating to 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. 18:

All documents and things relating to any security interest in or lien against the
Patents-in-Suit.

REQUEST NO. 19:
Documents sufficient to show whether You have or have had any past, present or

future rights or interest in the Patents-in-Suit or Related Patents, the time period during which

you had or have such fights or interest, from whom you obtained such rights or interest and, if
applicable, to whom you assigned such rights or interest.

REQUEST NO. 20:
All documents and things relating to communications between or among Abacus,

Lifestreams, Mirror Worlds LLC, Mirror Worlds Technologies, Plainfield, and Recognition
Interface relating to the Patents-in-Suit or Related Patents.

7

REQUEST NO. 21:
All documents and things relating to communications between or among Abacus,

Lifestreams, Mirror Worlds LLC, Mirror Worlds Technologies, Plainfield, and Recognition
Interface, on the one hand, and any third party, on the other hand, relating to the Patents-in-Suit

or Related Patents.

REQUEST NO. 22:

All documents and things relating to the value of the Patents-in-Suit or Related
Patents,

REQUEST NO. 23:

All documents and things relating to any valuation, due diligence, analysis,
assessment, or investigation by Abacus, Lifestreams, Mirror Worlds LLC, Mirror Worlds
Technologies, Plainfield, and Recognition Interface or any other person or entity as to the value
of any of the Patents-in-Suit or Related Patents, including without limitation, any due diligence,
valuation or assessment in conjunction with any acquisition or transfer of rights to the Patents-inSuit or in conjunction with the filing of documents with the Securities and Exchange

Commission or Internal Revenue Service.
REQUEST NO. 24:

All documents and things relating to any formal or informal investigation, search,
analysis, opinion, report, study, or observation regarding the scope, validity, infringement,
enforceability, patentability, or inventorship of any of

the Patents-in-Suit or any Related Patents.

REQUEST NO. 25:

All documents and things relating to the subject matter disclosed or claimed in
any of the Patents-in-Suit or any Related Patents, including, without limitation, patents, patent

8

applications, articles, abstracts, publications, books, manuscripts, papers, posters, presentations,
speeches, technical disclosures, or technical publications.

REQUEST NO. 26:
All documents and things evidencing or otherwise relating to the conception and
reduction to practice of the subject matter of any claim of any of the Patents-in-Suit, including

without limitation any act of diligence leading to the reduction to practice, including but not

limited to, any engineering or laboratory notebooks, log books, record books, memoranda,

design reviews, progress reports, technical reports, drawings, schematics, specifications,

diagrams, computer records, diaries, calendars, test results, invention disclosures, patent
prosecution records, or any other documents or things which corroborate, or otherwise relate to,
the conception.

REQUEST NO. 27:

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

with Mirror Worlds, including without limitation, any compensation received from Mirror
Worlds.
REQUEST NO. 28:

All documents and things relating to any past, present or future relationship

between or among Abacus, Lifestreams, Mirror Worlds LLC, Mirror Worlds Technologies,
Plainfield and Recognition Interface, including without limitation, documents and things relating
to corporate or financial relationships between or among any of the above entities.

9

REQUEST NO. 29:

All documents and things concerning communications between You and Mirror
Worlds LLC or its attorneys.
REQUEST NO. 30:

All documents and things concerning Mirror Worlds or Mirror Worlds' products.
REQUEST NO. 31:

All documents and things relating to any Scopeware product or any product or
system incorporating or embodying the claimed invention of any claim of any of the Patents-inSuit or any Related Patent.
REQUEST NO. 32:

All documents and things relating to any marking of any product or related
materials with the patent number of any of the Patents-in-Suit, including, but not limited to, all

documents and things relating to any efforts by or on behalf of Mirror Worlds Technologies to
satisfy the marking requirements of 35 U.S.C. § 287.

REQUEST NO. 33:

All documents and things relating to any conference, seminar, exhibition,
convention, or trade show at which any product, device, apparatus, method, process, or system
that allegedly embodies, falls within the scope of, or is practiced in accordance with the subject
matter of any claim of any of the Patents-in-Suit or any Scopeware product are or were

discussed, referred to, advertised, displayed, demonstrated, or shown, including, without

limitation, advertisements, brochures, articles, pamphlets, price lists, product specifications, or
other promotional, marketing, or presentation materials.

10

REQUEST NO. 34:
All documents and things relating to the research, design, development,

manufacture, assembly, testing, or operation, by You or any other person or entity, of any device,

prototype, product or system that allegedly embodies, falls within the scope of, or is practiced in

accordance with the subject matter of any claim of any of the Patents-in-Suit or any Scopeware

product, including, without limitation, any engineering or laboratory notebooks, log books,
record books, memoranda, design reviews, progress reports, technical reports, drawings,

schematics, specifications, diagrams, computer records, diaries, calendars, or test results.
REQUEST NO. 35:

All documents and things relating to any analysis, consideration, or evaluation of

whether any Apple products, devices, apparatuses, methods, processes, or systems infringe any

claim of any of the Patents-in-Suit, including, without limitation, all reports, opinions, letters,
investigations, studies, tests, evaluations, or analyses relating to any Apple product, device,

apparatus, method, process, or system conducted by or prepared by You, Mirror Worlds, counsel
for You or Mirror Worlds, or otherwise on Your or Mirror Worlds' behalf.

REQUEST NO. 36:
All documents and things relating to the research, design, development,

manufacture, assembly, testing, or operation, by You or any other person or entity, of any
Scopeware product, including, without limitation, any engineering or laboratory notebooks, log
books, record books, memoranda, design reviews, progress reports, technical reports, drawings,

schematics, specifications, diagrams, computer records, diaries, calendars, or test results.

11

REQUEST NO. 37:

All documents and things relating to any third party's research, design,
development, manufacture, testing, operation, sale, marketing, performance, or installation of
any product, device, apparatus, method, process, or system that embodies, falls within the scope

of, or is practiced in accordance with any subject matter disclosed or claimed in any of the
Patents-in-Suit.

REQUEST NO. 38:
All documents identifying individuals who assisted or participated in the design,
development, manufacture and/or testing of any prototype or commercial product that embodies,

falls within the scope of or is practiced in accordance with one or more claimed inventions of
any of the Patents-in-Suit and/or of any Scopeware product, including, without limitation, all

documents relating to the actual consultancy, participation or assistance.

REQUEST NO. 39:
All prior art relating to the claimed inventions of any claims of any of the Patentsin-Suit or Related Patents.

REQUEST NO. 40:

All documents and things relating to any evaluation, analysis, or review of any
prior art relating to any of the Patents-in-Suit or Related Patents.

REQUEST NO. 41:
All documents or things You have considered, or any person or entity has asserted

or identified, as potentially embodying prior art, or relating to prior art, to the subject matter of
any claim of any of the Patents-in-Suit or any Related Patent.

12

REQUEST NO. 42:
All documents and things relating to technical or scientific writings, whether

published or not, that were authored by, attributed to, or given in whole or in part by any of the

named inventors of any of the Patents-in-Suit or by You, relating to, in whole or in part, the
subject matter of any of the Patents-in-Suit, including without limitation, patents, patent
applications, articles, abstracts, publications, manuscripts, papers, posters, presentations,

speeches, technical disclosures, or Y ale University internal technical publications or reports.

REQUEST NO. 43:

All documents and things relating to any information, including without
limitation, patents, publications, prior knowledge, public uses, sales, or offers for sale, that may

constitute, contain, disclose, refer to, relate to, or embody any prior art to the subject matter of
any claim of any of

the Patents-in-Suit.

REQUEST NO. 44:
All documents and things evidencing or otherwise relating to the first prototype,

first experimental use, first demonstration, first offer for sale, first manufacture, first use, first

sale, first public use, first shipment, first announcement, and/or first public disclosure of each

embodiment of any invention claimed in any of the Patents-in-Suit and/or of any Scopeware
product in the United States.
REQUEST NO. 45:

All documents and things relating to any disclosure or publication of the subject
matter of any claim of any of the Patents-in-Suit and/or of any Scopeware product to any person
or entity other than You, including, without limitation, any pre-filing sales, offers for sale, public

13

uses, demonstrations, announcements, advertisements, correspondence with potential customers,
or publications.

REQUEST NO. 46:
All documents and things relating to market studies, reports or analyses relating to
product design, competition, consumers surveys, outside consultant surveys, advertising

campaigns, promotional and sales training material, market segments, market share, or market
revenue (actual or predicted), relating to the subject matter of any claim of any of the Patents-inSuit or Related Patents.

14