Mirror Worlds, LLC v. Apple, Inc.

Filing 66

NOTICE by Apple, Inc. of Subpoena to Mirror Worlds Technologies, Inc. (Attachments: #1 Appendix Subpoena to Mirror Worlds Technologies, Inc.)(Smith, Stefani)

Mirror Worlds, LLC v. Apple, Inc.

Doc. 66 Att. 1

Issued by the

United States District Court
DISTRICT OF

DELAWARE

MIRROR WORLDS, LLC,

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: Mirror Worlds Technologies, Inc.

clo Corporation Service Company 2711 Centervile Rd., St. 400
Wilmington, DE 19808

o 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

DATE AND TIME

ø YOU ARE COMMANDED to appear at the place, date, and time specified below to testifY at the taking ofa deposition in the above case on the following topics: See Attachment B.
PLACE OF DEPOSITION
DATE AND TIME

Wei1 Gotshal & Manges, LLP

1201 N. Market Street Suite 1402
Wilmington, DE 19801

March 2, 2009 9:30 a.m.

the following documents or objects at the place, date, and time specified below (list documents or objects): See Attachment A.
YOU ARE COMMANDED to produce and permit inspection and copying of

ø

PLACE

DATE AND TIME

Weil Gotshal & Manges, LLP 1201 N. Market Street
Suite i 402
Wilmington, DE 19801

February 16,2009

5:00 p.m.

YOU ARE COMMANDED to permit inspection ofthe following premises at the date and time specified below.
PREMISES

DATE AND TIME

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 wil testifY. Federal Rules of

ISSUING OFFIC~~ ME. ADDRESS AND PHONE NUMBER

::~ ~~Uc
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DATE

ff TURE AND TITLE (IN:CA J. TTORNEY FOR PLAINTIFF OR DEFENDANT)

January 2 i, 2009

Stefani C. Si . h, Wei!, Gotshal & Manges LLP, 201 Redwood Shores Parkway, Redwood Shores, CA 94065;
Telephone [phone]

Dockets.Justia.com

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

Counterclaimant Apple Inc. hereby requests that Mirror Worlds Technologies, Inc. produce for
inspection and copying the documents and things requested.

DEFINITIONS
1. "You," "Your," and "Mirror Worlds Technologies" mean Mirror Worlds

Technologies, Inc., its 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, affiiates, representatives (including

consultants and attorneys), and others purporting to act on its behalf.

2. "Mirror Worlds" means Mirror Worlds LLC, its 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,

affiiates, representatives (including consultants and attorneys), and others purporting to act on
its behalf.
3. "Abacus" means Abacus Ventures LP, Abacus Ventures LLC, and/or Abacus &

Associates, their 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 their behalf.

4. "Lifestreams" means Lifestreams, Inc., its predecessors, successors, past and
present parents, subsidiaries, divisions, departments, and other organizational and operating units

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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 its behalf.
5. "Plainfield" means Plainfield Specialty Holdings I, Inc., their 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 their behalf.
6. "Recognition Interface" means Recognition Interface Inc. and/or Recognition

Interface LLC, their 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 their behalf.

7. 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.

8. "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.

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9. "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.

10. "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.

1 i. "Relating to" means pertaining to, referring to, and/or relating to the matter
specified.
12. "Apple Accused Products" means any product that is or wil be accused of

infringement in Mirror Worlds LLC v. Apple Inc., Case No. 6:08 cv 88 LED, fied in the United
States District Court for the Eastern District of Texas, including inter alia, Apple Spotlight, Time
Machine, Time Capsule, Cover Flow, iTunes and Apple Enterprise Server.

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.

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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.

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REQUESTS FOR DOCUMENTS AND THINGS
REQUEST NO.

1:

All documents and things relating to the Patents-in-Suit or Related Patents.

REQUEST NO.2:
All documents and things relating to the assignment of rights to the Patents-inSuit or Related Patents.

REQUEST NO.3:
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.4:
All documents and things relating to actual or potential

licenses to the Patents-in-

Suit or Related Patents, including without limitation, any offers to license the Patents-in-Suit or
Related Patents.

REQUEST NO.5:
All documents and things relating to any security interest in or lien against the
Patents-in-Suit.

REQUEST NO.6:

All documents and things relating to any actual or potential partnership,
collaboration or joint venture relating to the Patents-in-Suit or Related Patents.

REQUEST NO.7:
All documents and things relating to your past, present or future rights or interest
in the Patents-in-Suit or Related Patents, including the period during which you had or have such

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

REQUEST NO.8:
All documents and things relating to communications between or among Abacus,

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

REQUEST NO.9:
All documents and things relating to communications between or among Abacus,
Lifestreams, Mirror Worlds, 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. 10:

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

REQUEST NO.n:

All documents and things relating to any valuation, due diligence, analysis,

assessment, or investigation by Abacus, Lifestreams, Mirror Worlds, 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 fiing of documents with the Securities and Exchange

Commission or Internal Revenue Service.

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REQUEST NO. 12:
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. 13:
All documents and things relating to the value of Mirror Worlds' claims against

Apple Inc. in the litigation fied in the United States District Court for the Eastern District of
Texas, Case No. 6:08 cv 88 LED.

REQUEST NO. 14:
All documents and things relating to any formal or informal investigation, search,

analysis, opinion, report or study of Mirror Worlds' claims against Apple Inc. in Mirror Worlds

LLC v. Apple Inc., Case No. 6:08 cv 88 LED, filed in the United States District Court for the
Eastern District of Texas.

REQUEST NO. 15:
All documents and things relating to any role or investment by Abacus,

Lifestreams, Mirror Worlds, Mirror Worlds Technologies, Plainfield, Recognition Interface or
any third party in Mirror Worlds LLC v. Apple Inc., Case No. 6:08 cv 88 LED, filed in the United
States District Court for the Eastern District of

Texas.

REQUEST NO. 16:

All documents and things relating to any financial stake or other interest of
Abacus, Lifestreams, Mirror Worlds, Mirror Worlds Technologies, Plainfield, Recognition
Interface or any third party in the outcome of or any recovery from Mirror Worlds LLC v. Apple

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Inc., Case No. 6:08 cv 88 LED, filed in the United States District Court for the Eastern District of
Texas.

REQUEST NO. 17:
All documents and things relating to Your communications with Mirror Worlds or
its attorneys.

REQUEST NO. 18:
All documents and things relating to any past, present or future relationship

between or among Abacus, Lifestreams, Mirror Worlds" 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.

REQUEST NO. 19:
All documents and things relating to the Lifestreams Project.
REQUEST NO. 20:

All documents and things concerning Dr. David Gelernter's, Dr. Nicholas
Carriero's, Dr. Eric 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. 21:

All documents and things concerning communications between or among You or

Mirror Worlds, on the one hand, and Dr. Gelernter, Dr. Carriero, Dr. Freeman, Scott Fertig,
Randy Prager, Peter Sparago, or Yale, on the other hand.

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REQUEST NO. 22:
All documents and things concerning communications between or among You,

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

REQUEST NO. 23:
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. 24:

All documents and things concerning the distribution of any technical reports
concerning the Lifestreams Project.

REQUEST NO. 25:
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 technical reports concerning the Lifestreams Project.
REQUEST NO. 26:

All documents and things concerning communications between Yale, Christopher

Hatchell or Nancy Pellegrino or their predecessors, on the one hand, and You or Mirror Worlds,
on the other hand.

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10

REQUEST NO. 27:

All documents and things relating to any product or system incorporating or
embodying the claimed invention of any claim of any of the Patents-in-Suit or any Related
Patent.

REQUEST NO. 28:

All documents and things relating to Lifestreams', Mirror Worlds' or Your
products.
REQUEST NO. 29:

All documents and things relating to any Scopeware product.

REQUEST NO. 30:

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 to satisfy the marking requirements of 35 U.S.C.
§ 287.

REQUEST NO. 31:

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.

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REQUEST NO. 32:

All documents and things relating to any statement or communication, including

without limitation, demand letters, notice letters, presentations, claim charts, licenses or other

correspondence, in which any person or entity was notified of, charged with or accused of
infringing any of

the Patents-in-Suit or Related Patents.

REQUEST NO. 33:
All documents and things relating to any study, assessment, determination,

assertion, notification (including all notices of

infringement), conclusion, charge or contention by

You or Mirror Worlds of infringement of, or inducement to infringe, any claim of any of the
Patents-in-Suit or any Related Patent, by any person or entity other than Apple Inc.

REQUEST NO. 34:
All documents and things relating to Your 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 relatin g to any Apple product,
device, apparatus, method, process, or system conducted by or prepared by You, counsel for
You, or otherwise on Your behalf.

REQUEST NO. 35:

All documents and things relating to plans, suggestions, or contemplated action

regarding the bringing or institution of this action against Apple Inc, including, without
limitation, all corporate minutes and all other documents and things relating to meetings of any
corporate boards, committees or sub-committees.

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REQUEST NO. 36:

All documents relating to Your decision whether to pursue, to delay pursuit, or
not to pursue any claim that products or services made, used, sold, offered for sale or imported
by Apple Inc. infringe the Patents-in-Suit.
REQUEST NO. 37:

All documents and things relating to Your first knowledge of Apple Inc.' s alleged

infringement of each ofthe Patents-in-Suit.
REQUEST NO. 38:

All documents and things relating to Your first awareness of Apple's alleged

manufacture or sale of any of the Apple Accused Products or products or features that are
substantially similar.

REQUEST NO. 39:
All documents and things relating to any communications, relationship or

agreements between You and Apple Inc.

REQUEST NO. 40:
All documents and things relating to any communications, relationship or

agreements between Dr. David Gelernter and Apple Inc.

REQUEST NO. 41:

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

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REQUEST NO. 42:
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. 43:
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, 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. 44:
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.

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REQUEST NO. 45:
All documents and things relating to the preparation, filing or prosecution of the
applications that led to the Patents-in-Suit and all Related Patents.

REQUEST NO. 46:
All documents and things relating to Your decision to seek patent protection for
the subject matter of any claim of any of

the Patents-in-Suit.

REQUEST NO. 47:
All documents and things relating to the identification, selection, or determination
of the proper named inventors for any of

the Patents-in-Suit.

REQUEST NO. 48:

All documents and things relating to any communication, meeting or contact with
the U.S. Patent Office or any foreign patent offce relating to any u.s. or foreign patents or

patent applications relating to the Patents-in-Suit and all Related Patents.

REQUEST NO. 49:
All documents and things relating to any decision as to what materials to cite, or
not cite during the prosecution of any of the Patents-in-Suit or any Related Patents, including

without limitation all prior art search results.

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REQUEST NO. 50:

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. 51:
All prior ar relating to the claimed inventions of any claims of any of the Patentsin-Suit or Related Patents.

REQUEST NO. 52:

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. 53:
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.

REQUEST NO. 54:
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 Yale University internal technical publications or reports.

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REQUEST NO. 55:

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. 56:

All documents and things relating to any written description, including without
limitation the first written description, of any claim of any of the Patents-in-Suit, including, but
not limited to, invention disclosures and other written descriptions.

REQUEST NO. 57:

All documents and things relating to each mode, feature, aspect or alternative
design of practicing the subject matter of any claim of the any of the Patents-in-Suit, including

those not disclosed in the specifications of the Patents-in-Suit, but which allegedly embody, fall
within the scope of, or are made or practiced in accordance with any claim of any of the Patentsin-Suit.

REQUEST NO. 58:
All documents and things relating to any pre-filing communication of the subject
matter of any claim of any of the Patents-in-Suit.

REQUEST NO. 59:

All documents and things relating to the best mode of practicing the subject
matter of any claim of any of the Patents-in-Suit contemplated by the named inventors at the
time of filing any applications that led to or resulted in any of the Patents-in-Suit and at the time
of fiing any applications that led to or resulted in any Related Patents.

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REQUEST NO. 60:

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. 61:
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. 62:

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

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

REQUEST NO. 63:

All documents and things relating to the state of the art relevant to the subject
matter of the claims of the Patents-in-Suit and Related Patents as of

their filing date.

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REQUEST NO. 64:
All documents and things relating to the level of knowledge, schooling,

experience, expertise, or relevant technical information of a person having ordinary skil in the
art to which the inventions claimed in the Patents-in-Suit pertain.

REQUEST NO. 65:
With respect to each of the Patents-in-Suit, all documents and things evidencing
or otherwise relating to whether: (a) the subject matter of any claim allegedly satisfied a long felt

need in the art to which it pertains; (b) the industry failed to solve problems that allegedly are
solved by the subject matter of any claim; (c) any person or entity expressed skepticism or

disbelief concerning the subject matter of any claim; (d) the subject matter of any claim allegedly

has been a commercial success; ( e) the industry allegedly has recognized the significance of the

subject matter of any claim; (f) the subject matter of any claim allegedly has been copied by
others in the industry; and (g) the subject matter of any claim allegedly achieved unexpected
results.

REQUEST NO. 66:
With respect to each of the Patents-in-Suit, all documents and things relating to
any alleged nexus or lack thereof between any alleged commercial success of the subject matter
of any claim and the alleged advantages of

that subject matter.

REQUEST NO. 67:

All documents and things relating to the meaning or scope of the claims of the
Patents-in-Suit, including documents relating to any communication between You and any third
party relating to the meaning of the claims.

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REQUEST NO. 68:
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-in-

Suit or Related Patents.

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

Counterclaimant Apple Inc. hereby requests that Mirror Worlds Technologies, Inc. produce a
witness to testify as to the following topics.

DEFINITIONS AND INSTRUCTIONS
1. "You," "Your," and "Mirror Worlds Technologies" mean Mirror Worlds

Technologies, Inc., its 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, affiiates, representatives (including

consultants and attorneys), and others purporting to act on its behalf.

2. "Mirror Worlds" means Mirror Worlds LLC, its 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
its behalf.
3. "Abacus" means Abacus Ventures LP, Abacus Ventures LLC, and/or Abacus &

Associates, their 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 their behalf.

4. "Lifestreams" means Lifestreams, Inc., its predecessors, successors, past and
present parents, subsidiaries, divisions, departments, and other organizational and operating units

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of any of the foregoing, and all past and present directors, offcers, employees, agents, affiiates,
representatives (including consultants and attorneys), and others purporting to act on its behalf.
5. "Plainfield" means Plainfield Specialty Holdings I, Inc., their predecessors,

successors, divisions, deparments, and other organizational and operating units of any of the

foregoing, and all past and present directors, officers, employees, agents, affiiates,
representatives (including consultants and attorneys), and others purporting to act on their behalf.
6. "Recognition Interface" means Recognition Interface Inc. and/or Recognition

Interface LLC, their 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 their behalf.

7. 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.

8. "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.

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22

9. "Apple Accused Products" means any product that is or wil be accused of

infringement in Mirror Worlds LLC v. Apple Inc., Case No. 6:08 cv 88 LED, fied in the United
States District Couii for the Eastern District of Texas, including inter alia, Apple Spotlight, Time

Machine, Time Capsule, Cover Flow, iTunes and Apple Enterprise Server.

10. "Relating to" means pertaining to, referring to, and/or relating to the matter
specified.

11. The words "and" and "or" shall be used conjunctively or disjunctively, whichever

makes the request more inclusive.

12. The words "any," "all," or "each" shall be construed as "any, all, and each"
inc1 usi vel y.

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

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23

TOPICS OF EXAMINATION
TOPIC NO.1:

All facts and circumstances relating to any sale, transfer or assignment of any
right or interest in the Patents-in-Suit or Related Patents.
TOPIC

NO.2:
All facts and circumstances relating to actual or potential licenses to the Patents-

in-Suit or Related Patents, including without limitation, any offers to license the Patents-in-Suit
or Related Patents.
TOPIC NO.

3:

All facts and circumstances relating to whether You have or have had any past,

present or future rights or interest in the Patents-in-Suit or Related Patents, the period during
which you had or have such rights or interest, from whom you obtained such rights or interest
and, if applicable, to whom you assigned such rights or interest.
TOPIC NO.

4:

All facts and circumstances 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.

TOPIC NO.5:

All facts and circumstances 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.

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TOPIC NO.6:
The value of

the Patents-in-Suit and Related Patents.

TOPIC NO.7:

All facts and circumstances 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 fiing of documents with the Securities and Exchange

Commission or Internal Revenue Service.

TOPIC NO.8:
All facts and circumstances 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.

TOPIC NO.9:
The value of Mirror Worlds LLC's claims against Apple Inc. in Mirror Worlds

LLC v. Apple Inc., Case No. 6:08 cv 88 LED, filed in the United States District Court for the
Eastern District of Texas.

TOPIC NO. 10:
All facts and circumstances relating to any formal or informal investigation,

search, analysis, opinion, report or study of Mirror Worlds LLC's claims against Apple Inc. in

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25

Mirror Worlds LLC v. Apple Inc., Case No. 6:08 cv 88 LED, fied in the United States District
Court for the Eastern District of Texas.

TOPIC NO. 11:
All facts and circumstances relating to Your role or investment in Mirror Worlds

LLC v. Apple Inc., Case No. 6:08 cv 88 LED, fied in the United States District Court for the
Eastern District of

Texas.

TOPIC NO. 12:

All facts and circumstances relating to any financial stake or other interest of
Abacus, Lifestreams, Mirror Worlds LLC, Mirror Worlds Technologies, Plainfield, Recognition
Interface or any third party in the outcome of or any recovery from Mirror Worlds LLC v. Apple

Inc., Case No. 6:08 cv 88 LED, fied in the United States District Court for the Eastern District
of

Texas.

TOPIC NO. 13:
All facts and circumstances relating to Your communications with Mirror Worlds
LLC or its attorneys.

TOPIC NO. 14:

All facts and circumstances 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, corporate or financial
relationships between or among any of the above entities.

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26

TOPIC NO. 15:
All facts and circumstances relating to Dr. David Gelernter's, Dr. Nicholas

Carriero's, Dr. Eric 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.

TOPIC NO. 16:
All facts and circumstances relating to communications between or among You,

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

TOPIC NO. 17:
All facts and circumstances relating to technical reports concerning the

Lifestreams Project, including inter alia, the distribution of any technical reports concerning the
Lifestreams Project, who received technical reports concerning the Lifestreams Project, who had

access to technical reports concerning the Lifestreams system, and when such individuals or
institutions requested, received or had access to technical reports concerning the Lifestreams

Project.

TOPIC NO. 18:
The design, development, evaluation, testing, structure, characteristics, operation

(actual or intended), manufacture, use, sale, importation, license, lease or offer for sale of any
product or system incorporating or embodying the claimed invention of any claim of any of the
Patents-in-Suit or any Related Patent.

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27

TOPIC NO. 19:
The design, development, evaluation, testing, structure, characteristics, operation

(actual or intended), manufacture, use, sale, importation, license, lease or offer for sale of any
product or system of any Scopeware product.

TOPIC NO. 20:

All facts and circumstances 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 of35 U.S.C. § 287.

TOPIC NO. 21:
All facts and circumstances 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.

TOPIC NO. 22:
All facts and circumstances 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

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

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28

TOPIC NO. 23:
All facts and circumstances relating to any written description, including without

limitation the first written description, of any claim of any of the Patents-in-Suit, including, but
not limited to, invention disclosures and other written descriptions.

TOPIC NO. 24:
All facts and circumstances relating to any statement or communication in which
any person or entity was notified of, charged with or accused of infringing any of the Patents-inSuit or Related Patents, including inter alia, any study, assessment, determination, assertion,

notification (including all notices of infringement), conclusion, charge or contention by You or
Mirror Worlds of infringement of, or inducement to infringe, any claim of any of the Patents-inSuit or any Related Patent, by Apple Inc. or any person or entity other than Apple Inc.

TOPIC NO. 25:
All facts and circumstances relating to Your 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.

TOPIC NO. 26:
All facts and circumstances relating to plans, suggestions, or contemplated action
regarding the bringing or institution of this action against Apple Inc, including inter alia, relating

to Your decision whether to pursue, to delay pursuit, or not to pursue any claim that products or
services made, used, sold, offered for sale or imported by Apple Inc. infringe the Patents-in-Suit

TOPIC NO. 27:
All facts and circumstances relating to Your first knowledge of Apple Inc.' s
alleged infringement of each of the Patents-in-Suit.

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29

TOPIC NO. 28:
All facts and circumstances relating to Your first awareness of Apple's alleged

manufacture or sale of any of the Apple Accused Products or products or features that are
substantially similar.

TOPIC NO. 29:
All facts and circumstances relating to any communications, relationship or

agreements between You or Dr. David Gelernter and Apple Inc.

TOPIC NO. 30:

All facts and circumstances relating. to any actual or potential partnership,
collaboration or joint venture relating to the Patents-in-Suit or Related Patents.

TOPIC NO. 31:
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 whether and when to
seek patent protection for the subject matter of any claim of the Patents-in-Suit; the decision

concerning who should be named as an inventor on patent applications or draft patent

applications; and the decision as to what materials to cite, or not cite during the prosecution of
any of the Patents-in-Suit or any Related Patents.

TOPIC NO. 32:

Your knowledge, evaluation, analysis, or review of prior art relating to the
claimed inventions of any claims of

any of the Patents-in-Suit or Related Patents during

prosecution of

the Patents-in-Suit or Related Patents.

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30

REQUEST NO. 33:

The state of the art relevant to the subject matter of the claims of the Patents-inSuit and Related Patents as of their filing date.

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5096.0011

31