Mirror Worlds, LLC v. Apple, Inc.

Filing 76

NOTICE by Apple, Inc. OF SUBPOENAS TO COOPER & DUNHAM LLC, JONES DAY AND NIXON & VANDERHYE (Attachments: #1 Appendix SUBPOENA TO COOPER & DUNHAM LLC, #2 Appendix SUBPOENA TO JONES DAY, #3 Appendix SUBPOENA TO NIXON & VANDERHYE)(Smith, Stefani)

Mirror Worlds, LLC v. Apple, Inc.

Doc. 76 Att. 2

Issued by the

United States District Court
NORTHERN
DISTRICT OF

OHIO

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

SUBPOENA IN A CIVIL CASE
CASE NUER: (Eastern Distrct of

I 6:08 cv 88 LED

Texas, Tyler Division)

Defendant.
TO:

Jones Day
c/o Paul A. Grater Jones Day North Point
901 Lakeside Avenue

Cleveland, OH 44114-1190

o 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
COURTROOM

DATE AND TIME

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

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

PLACE

DATE AND TIME

Either as agreed by parties, or by mail to: Weil Gotshal & Manges, LLP 201 Redwood Shores Parkway Redwood Shores, CA 94065
YOU AR COMMAED to permit inspection of

May 27,2009

5:00pm

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 designated, the matters on which the person will testify. Federal Rules of Civil Procedure. 30(b)(6).
ISSUING OFFICER SIGNATURE AND TITLE (INICATE IF ATTORNEY FOR PLAITIFF OR DEFENDANT)

~? .C'f2-."î- ~yy
ATTORNEYFi

-

DATE

May 13,2009

DEFENDANT APPLE INC.

ISSUING OFFICER'~ AME, ADDRESS AND PHONE NUMBER

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

SVI :\30993010116NS601 LDOCIIS096.001 I

Dockets.Justia.com

ATTACHMENT A
DEFINITIONS
1. "You," "Your," and "Jones Day" means Jones Day, its predecessors and

successors, its past and present parents, subsidiaries, divisions, affiliates, and other

organizational or operating units of any of the foregoing, and all past and present directors,
officers, employees, agents, and representatives (including consultants and attorneys) of any of
the foregoing, and others purorting to act on their behalf.
2. "Mirror Worlds" means Plaintiff Mirror Worlds LLC, its predecessors and

successors, its past and present parents, subsidiaries, divisions, affliates, and other

organizational or operating units of any of the foregoing, and all past and present directors,
officers, employees, agents, and representatives (including consultants and attorney;) of any of
the foregoing, and others purorting to act on their behalf.
3. "Mirror Worlds Technologies" means Mirror Worlds Technologies, Inc.,

its predecessors and successors, its past and present parents, subsidiares, divisions, affiliates,

and other organizational or operating units of any of the foregoing, and all past and present
directors, officers, employees, agents, and representatives (including consultants and attorneys)
of any of the foregoing, and others purorting to act on their behalf.
4. "Abacus" means Abacus Ventures LP, Abacus Ventues LLC, and/or

Abacus & Associates, their predecessors and successors, their past and present parents,
subsidiaries, divisions, affiliates, and other organizational or operating unts of any of the
foregoing, and all past and present directors, offcers, employees, agents, and representatives

(including consultants and attorneys) of any of the foregoing, and others purorting to act on

their behalf.

2

5. "Lifestreams" means Lifestreams, Inc., its predecessors and successors, its
past and present parents, subsidiares, divisions, affiliates, and other organzational or operating
units of any of the foregoing, and all past and present directors, officers, employees, agents, and

representatives (including consultants and attorneys) of any of the foregoing, and others
purporting to act on their behalf.
6. "Plainfield" means Plainfield Specialty Holdings I, Inc., their predecessors

and successors, their past and present parents, subsidiares, divisions, affiliates, and other
organizational or operating units of any of the foregoing, and all past and present directors,
officers, employees, agents, and representatives (including consultants and attorneys) of any of
the foregoing, and others purorting to act on their behalf.
7. "Recogntion Interface" means Recognition Interface Inc. and/or

Recogntion Interface LLC, their predecessors and successors, their past and present parents,
subsidiaries, divisions, affiliates, and other organizational or operating unts of any of the
foregoing, and all past and present directors, offcers, employees, agents, and representatives

(including consultants and attorneys) of any of the foregoing, and others purorting to act on

their behalf.
8. "Patents-in-Suit" means all patents asserted or to be asserted in the futue

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.
9. "Related Patents or Applications" means issued, pending or abandoned
patents or applications relating to the Patents-in-Suit, including without limitation U.S.

3

Application Nos. 09/892,385, 10/238,367, 10/397,752, 10/455,607, 10/834,561, 11/528,070,

11/607,099, 12/049,247, 12/049,249, and 12/077,047, and all other continuing applications,

continuations-in-par applications, divisional applications, reexamination proceedings, reissue
applications, abandoned applications, published unpublished applications, and any and foreign
counterpar applications of any of the foregoing.

10. "Communcation" means any form of oral or wrtten interchange, whether

in person, by telephone, by facsimile, by telex, by electronic email, or by any other medium.

11. "Document" shall have the meaning set forth in Federal Rules 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.

A draft or nonidentical copy is a separate document within the meang of this term.

12. "Relating to" means pertaining to, referrng to, and/or relating to the
matter specified.

13. The words "any," "all," and "each" shall mean any, all, each, and every.
14. "Prior art" is used herein in the same sense that it is used in 35 U.S.c.

§ 103, and includes, without limitation, any patent or printed publication, or any prior
knowledge, prior use, prior sale or offer for sale in the United States, or other act, event, or thing
defined in 35 U.S.C. § 102, taken individually or in combination.

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.

4

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 worlds "and" and "or" shall be used conjunctively or disjunctively,
whichever makes the request more inclusive.

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

REQUESTS
1. All documents of or relating to Mirror Worlds Technologies, Mirror

Worlds, Recogntion Interface, Abacus, Plainfield, Lifestreams, or any of the inventors of the
Patents-in-Suit.

2. All documents relating to the preparation, drafting, filing, or prosecution
of

the Patents-in-Suit or Related Patents or Applications.
3. All documents provided to or obtained by you concernng the preparation,

drafting, filing, or prosecution ofthe Patents-in-Suit or Related Patents or Applications.
4. All non-identical copies, including all drafts and drawings, of the file

histories of any of the Patents-in-Suit or Related Patents or Applications.
5. 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 of the Patents-inSuit or Related Patents or Applications.

5

6. All documents relating to communcations between You or any other

patent attorney(s) and/or agent(s) and the named inventors of the Patents-in-Suit or Related

Patents or Applications relating to the preparation and prosecution of the Related Patents or
Applications or applications that lead to issuance of

the Patents-in-Suit.

7. All documents and things prepared by or at the direction of the named

inventors of the Patents-in-Suit or Related Patents or Applications relating to the subject matter
of any claim of the Patents- in-Suit or Related Patents or Applications.
8. All documents relating to the Patents-in-Suit or Related Patents or

Applications, including without limitation all notebooks and other documentation of any work
related to the inventions claimed in the Patents-in-Suit or Related Patents or Applications.
9. All documents relating to the conception and reduction to practice of each

invention claimed in the Patents-in-Suit or Related Patents or Applications, including but not

limited to, all documents corroborating conception or reduction to practice of each invention
claimed therein.

10. All documents relating to the decision to seek patent protection for the
subject matter claimed in the Patents-in-Suit or Related Patents or Applications, including

without limitation documents relating to who made that decision, when that decision was made
and the reasons for that decision.

11. All documents and things relating to the identification, selection, or
determination of the proper named inventors of any of the Patents-in-Suit or Related Patents or
Applications.

6

12. All documents relating to all prior ar searches and search results relating
to the Patents-in-Suit or Related Patents or Applications, including without limitation, documents
relating to who performed the search and when the search was performed.
13. All prior art relating to the claimed inventions of any claims of the

Patents-in-Suit or Related Patents or Applications.
14. All non-identical copies of all references cited to the U.S. Patent Office or

any foreign patent office during the prosecution of any of the Patents-in-Suit or Related Patents
or Applications.

15. All documents relating to the decision of what references to submit or not
submit and what materials to cite or not cite to the Patent Office durng the prosecution of the
Related Patents or Applications and the applications that resulted in issuance of the Patents-in-

Suit, including without limitation documents relating to who made that decision, when that
decision was made and the reasons for that decision.
16. Separately for each reference in Request 15, documents sufficient to show

Your first awareness of references submitted to the Patent Offce (including without limitation
prior art submitted in connection with any Information Disclosure Statement) durng the

prosecution of the Related Patents or Applications or the applications that resulted in issuance of

the Patents-in-Suit, including without limitation documents showing when You first became
aware of that reference and the circumstances surounding that first awareness.
17. Separately for each reference in Request 15, documents sufficient to show

the named inventor(s)' first awareness of references submitted to the Patent Office (including
without limitation prior art submitted in connection with any Information Disclosure Statement)

during the prosecution of the Related Patents or Applications or the applications that resulted in

7

issuance of the Patents-in-Suit, including without limitation documents showing when each of
the named inventors first became aware of that reference and the circumstances surounding that
first awareness.
18. All wrtten descriptions made by, on behalf of, or at the request of You

and/or any named inventor of the Patents-in-Suit relating to each invention claimed in the

Patents-in-Suit or Related Patents or Applications.
19. All invention disclosures or other disclosures prior to the filing of the

Related Patents or Applications or the applications leading to the Patents-in-Suit relating to each
invention claimed in the Patents-in-Suit or Related Patents or Applications.

20. All documents relating to prototypes, drawings, specifications, schematics

diagrams, source code, materials, or models relating to softare embodying or practicing the
inventions claimed in the Patents-in-Suit or Related Patents or Applications.

21. All documents relating to the first public use, demonstration, sale or
license, or offer to sell or license any product embodying any invention claimed in the Patentsin-Suit.

22. All documents relating to the first publication that describes the inventions
claimed in the Patents-in-Suit or Related Patents or Applications.

23. All documents relating to (a) publications, papers, presentations, or
speeches authored in whole or in pary by Lifestreams, Mirror Worlds Technologies or by any
named inventor of the Patents-in-Suit relating to the inventions claimed in the Patents-in-Suit or
Related Patents or Applications, and (b) any awards or acknowledgements received by

Lifestreams, Mirror Worlds Technologies, or any named inventors of the Patents-in-Suit or
Related Patents or Applications relating to any invention claimed therein.

8

24. All documents relating to all versions of Lifestreams or Mirror Worlds
Technologies' softare, including all versions produced, marketed, licensed, and/or sold under

other names.
25. All documents relating to the involvement of individuals employed by

Lifestreams, Mirror Worlds Technologies, Abacus, Recognition Interface, Plainfield, or Mirror

Worlds in the prosecution of the applications that lead to the Patents-in-Suit or the Related
Patents or Applications.

26. All documents relating to payment of fees or costs for patent prosecution
or Patents-in-Suit or Related Patents or Applications by individuals employed by Lifestreams,
Mirror Worlds Technologies, Abacus, Recogntion Interface, Plainfield, or Mirror Worlds.
27. All documents relating to communications between You and anyone or

more of Lifestreams, Mirror Worlds Technologies, Abacus, Recogntion Interface, Plainfield, or

Mirror Worlds relating to prosecution of the applications that lead to the Patents-in-Suit or the
Related Patents or Applications.
28. All documents and things relating to any pre-filing communcation of the

subject matter of any claim of any of the Patents-in-Suit or Relating Applications to any person
or entity outside the named inventors.

29. All documents and thigs relating to the ownership, title, transfer,
assignent, or licensing (including offers of any of the above) of any of the Patents-in-Suit or
Related Patents or Applications in whole or par, alone or in conjunction with any other patents

or intellectual property.

9

30. All documents and things relating to any

ownership interest in the Patents-

in-Suit or Related Patents or Applications, including any interest in any potential recovery in the
above-captioned action.

31. All documents and things relating to any valuation, due diligence,
analysis, assessment, or investigation as to the Patents-in-Suit or Related Patents or Applications.

32. 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 or Applications.
33. All documents related to any communcations between Lifestreams,

Mirror Worlds Technologies, Abacus, Recognition Interface, Plainfield, Mirror Worlds, or any
named inventor of the Patents-in-Suit or Related Patents or Applications and You related to the
Patents-in-Suit or Related Patents or Applications.

34. All documents related to any interviews related to the Patents-in-Suit or
Related Patents or Applications of anyone at or associated with Lifestreams, Yale University,

Mirror Worlds Technologies, Abacus, Recogntion Interface, Plainfield, or Mirror Worlds,

including without limitation anyone who is named as an inventor of the Patents-in-Suit or
Related Patents or Applications.
35. All documents reflecting or relating to communcations or interviews

relating to any Yale Computer Science Deparent Techncal Reports, including without

limitation any such interviews or communications involving anyone at or associated with
Lifestreams, Yale University, Mirror Worlds Technologies, Abacus, Recogntion Interface,

10

Plainfield, or Mirror Worlds, including without limitation anyone who is named as an inventor of
the Patents-in-Suit or Related Patents or Applications.
36. All documents related to any communcations between any person

affiiated with Lifestreams, Mirror Worlds Technologies, Abacus, Recogntion Interface,
Plainfield, or Mirror Worlds and any investor, potential investor, purchaser, or potential
purchaser of any assets related to those entities, including without limitation the Patents-in-Suit
and Related Patents or Applications, or interest in those assets.

37. With respect to each of the Patents-in-Suit and Related Patents or
Applications, all documents relating to whether: (a) the apparatuses or methods claimed in the
patent allegedly satisfy a long felt need in the ar to which they pertain, (b) the industry failed to

solve problems that allegedly are solved by the apparatuses or methods claimed in the patent, (c)
experts in the industry expressed skepticism relating to the apparatuses or methods claimed in the
patent, (d) the apparatuses 0 method claimed in the patent allegedly have been a commercial

success, ( e) the industr has recognzed the signficance of the apparatuses or methods claimed
in the patent, (f) the apparatuses or methods claimed in the patent allegedly have been copied by
others in the industry, (g) the apparatuses or methods claimed in the patent have advantages over
prior apparatuses or methods for performing similar tasks.

38. With respect to each of the Patents-in-Suit and Related Patents or
Applications, all documents relating to any nexus or lack thereof between any commercial
success of the apparatuses or methods claimed in the patent and the alleged advantages of those
apparatuses or methods.
39. All documents concernng your file maintenance and document retention

policies and practices, including but not limited to any such documents concernng retention,

11

storage, maintenance, organization, filing, or destrction of documents received from or sent to
any of the named inventors of any of the Patents-in-Suit or Related Patents or Applications.

12