Apple Inc v. Samsung Electronics Co Ltd
Filing
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RESPONSE, by Defendant Samsung Electronics Co Ltd, to #2 MOTION to Quash. (Walters, Mark)
Honorable Marsha J. Pechman
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UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WASHINGTON
AT SEATTLE
APPLE INC., a California corporation,
Misc. Case No. 12MC27
Plaintiff,
v.
SAMSUNG’S OPPOSITION TO
MICROSOFT’S MOTION TO QUASH
THIRD-PARTY SUBPOENA
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SAMSUNG ELECTRONICS CO., LTD., a Korean
business entity; SAMSUNG ELECTRONICS
AMERICA, INC., a New York corporation;
SAMSUNG TELECOMMUNICATIONS
AMERICA, LLC, a Delaware limited liability
company,
Defendants.
Related to Civil Action 5:11-cv-01846
Pending in United States District Court
for the Northern District of California, San
Jose Division
In Re: Subpoena Issued to Third-Party
Microsoft Corporation
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SAMSUNG’S OPPOSITION TO MOT. TO QUASH
THIRD-PARTY SUBPOENA FILED BY MICROSOFT
Misc. Civil Case No. 12MC27 -1
FROMMER LAWRENCE & HAUG LLP
1191 SECOND AVENUE
SEATTLE, WASHINGTON 98101
(206) 336-5690
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MEMORANDUM IN OPPOSITION TO MICROSOFT'S MOTION TO QUASH
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This discovery dispute involves a third-party subpoena (the "Subpoena") served on
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Microsoft Corp. ("Microsoft") by Samsung Electronics Co., Ltd.; Samsung Electronics America,
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Inc.; and Samsung Telecommunications America, LLC (collectively, "Samsung") on February
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27, 2012. The narrow Subpoena sought evidence relating to one fact and one fact alone: the date
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of conception and reduction-to-practice of United States Patent 7,933,632 (the "'632 Patent")
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issued to Flynt et al. and assigned to Microsoft on its face. This information is important to
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Samsung's invalidity defenses in underlying patent-infringement litigation in the Northern
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District of California, and is "relevant" as that term is defined in the Federal Rules of Civil
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Procedure. Because the time for compliance specified in the Subpoena was reasonable given the
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narrow scope of the requests, and because the requests do not pose undue burden to Microsoft,
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Samsung respectfully requests that the Motion to Quash be DENIED, and that Microsoft be
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ordered to promptly comply with the requests specified in the original Subpoena.
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I.
Introduction
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A.
The Underlying Litigation
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The Subpoena at issue arises out of a patent-infringement action initiated by Apple, Inc.
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("Apple") against Samsung in the Northern District of California. Apple has asserted fifteen
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counts of patent infringement based on eight United States utility patents and seven design
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patents, as well as claims for federal Trade Dress, Trademark, and common law trademark
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infringement. In response, Samsung has asserted twenty-four affirmative defenses, sought a
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declaration that Apple infringes twelve of its United States utility patents, and sought a
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declaration that each of the Apple patents asserted against it are invalid for lack of novelty
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and/or obviousness. The utility patents asserted by Apple against Samsung relate to graphical
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user interfaces and multi-touch technology for handheld devices, including "smart phones."
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The scope of discovery in the underlying litigation has been extensive. Millions of pages
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of documents have been produced by the two parties, and Samsung has sought third-party
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discovery from at least thirty-six entities. These discovery proceedings have taken place over
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SAMSUNG’S OPPOSITION TO MOT. TO QUASH
THIRD-PARTY SUBPOENA FILED BY MICROSOFT
Misc. Civil Case No. 12MC27 -2
FROMMER LAWRENCE & HAUG LLP
1191 SECOND AVENUE
SEATTLE, WASHINGTON 98101
(206) 336-5690
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only approximately the past six months pursuant to the District Court's expedited case
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management schedule. On March 8, 2012, fact discovery closed.
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B.
The Subpoena In Question
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The Subpoena was served on Microsoft's registered agent for service of process in
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Sacramento, California 10 days prior to the close of discovery in the underlying litigation, on
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February 27, 2012. (See Subpoena: Schmidt Decl. at Ex. A). The Subpoena sought four narrow
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categories of documents limited to the conception and reduction to practice of a single Patent
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owned by Microsoft. Samsung offered to further narrow the scope and subject-matter of the
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requests over the next several days, but no agreement was reached.
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Microsoft served the present Motion to Quash.
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II.
On March 6, 2012,
Argument
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A.
The Subpoena Seeks Discovery Of Relevant Evidence.
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The subject of Samsung's third-party discovery requests is United States Patent
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7,933,632, issued to Flynt et al. (See '632 Patent: Schmidt Decl. at Ex. B). The Patent, entitled
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"Tile Space User Interface for Mobile Devices," was filed on June 16, 2006 and purports to
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claim priority to a provisional application filed on September 16, 2005. The subject-matter
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disclosed in the '632 Patent relates to graphical user interfaces for handheld devices like those
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claimed by the Apple patents in the underlying litigation. The abstract states that the claims
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involve "[s]ystems and methods for providing a user interface for mobile devices enable data
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and services available through the mobile device to be represented as a set of tiles maintained in
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a display space." (Schmidt Decl. at Ex. B).
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SAMSUNG’S OPPOSITION TO MOT. TO QUASH
THIRD-PARTY SUBPOENA FILED BY MICROSOFT
Misc. Civil Case No. 12MC27 -3
FROMMER LAWRENCE & HAUG LLP
1191 SECOND AVENUE
SEATTLE, WASHINGTON 98101
(206) 336-5690
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Many features disclosed in the '632 Patent read directly on and invalidate claims in the
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Patents asserted against Samsung by Apple. However, given that the priority and filing dates
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cited on the face of the '632 Patent post-date many of the relevant Apple patents, Apple may
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contest whether the published patent application or the document itself will qualify as "prior art."
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Therefore, Samsung would like to establish that Microsoft invented the subject-matter of the
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'632 Patent prior to Apple. Section 102(g) of the United States Patent Act states:
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A person shall be entitled to a patent unless—
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before such person's invention thereof, the invention was made in this country
by another inventor who had not abandoned, suppressed, or concealed it. In
determining priority of invention under this subsection, there shall be
considered not only the respective dates of conception and reduction to practice
of the invention, but also the reasonable diligence of one who was first to
conceive and last to reduce to practice, from a time prior to conception by the
other.
35 U.S.C. § 102(g)(2). Simply put, if Microsoft conceived of the inventions disclosed in the
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'632 Patent prior to those disclosed in the relevant Apple patents (even though the priority and
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filing dates on the face of the '632 patent are later), the '632 will qualify as "prior art" and may
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be included in Samsung's invalidity defenses against Apple for lack of novelty and obviousness.
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See Optimumpath, LLC v. Belkin Int'l, Inc., No. 09-1398, 2010 WL 4279501, at *2 (N.D. Cal.
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Oct. 22, 2010) (authorizing third-party deposition after discovery deadline when subpoena was
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served the day before discovery deadline – discovery was permitted to allow defendant to
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explore whether third-party's system qualified as prior art under the Patent Act).
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The importance of this Section 102(g) prior-art theory became apparent only very late in
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discovery proceedings. Leading up to Samsung's service of the Subpoena at issue here, Apple
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twice amended its Interrogatory Responses dealing with the conception and reduction to practice
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of its asserted patents (including an amendment on February 27th, the same day Samsung in turn
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served the Subpoena on Microsoft). In the ten days between the service of the February 27th
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Subpoena on Microsoft and the close of fact discovery in the underlying litigation, Apple has
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amended its alleged conception and reduction to practice dates three additional times. In light of
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SAMSUNG’S OPPOSITION TO MOT. TO QUASH
THIRD-PARTY SUBPOENA FILED BY MICROSOFT
Misc. Civil Case No. 12MC27 -4
FROMMER LAWRENCE & HAUG LLP
1191 SECOND AVENUE
SEATTLE, WASHINGTON 98101
(206) 336-5690
1
these recent amendments, establishing the prior art in the underlying litigation has become like
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shooting at a moving target.
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Subpoena on Microsoft in an effort to prove a favorable conception and reduction to practice
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date of the '632 Patent, or risk losing the ability to cite its subject-matter as a prior art reference.
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B.
By February 27th, Samsung was forced to either serve the
The Subpoena Does Not Provide An Unreasonably Short Period of Time For
Compliance.
Despite Microsoft's allegations to the contrary, the time for compliance set forth in the
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February 27th Subpoena was 10 days. The Subpoena was served on Microsoft's registered agent
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for service of process in Sacramento, California on February 27th and requested the production
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of documents and a short deposition on March 8th. This was not an "unreasonably short
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response time." Because "[t]he provisions of Rule 45 dealing with objections to a subpoena
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specifically contemplate that less than 14-day service may be proper," service "at least 10 days
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before the deposition or production is customary, but not mandatory." Judge William W.
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Schwarzer, et al., Rutter Group Practice Guide: Fed. Civ. P. Before Trial – California Practice
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Guide (Rutter Group 2011) ¶ 11:2277, citing Fed. R. Civ. P. 45(c)(2)(B); see also E. Maine
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Baptist Church v. Regions Bank, No. 4:05-cv-962, 2007 WL 1445257, at *1 n.1 (E.D. Mo. May
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10, 2007) (subpoena setting forth eleven-day time for compliance was not presumptively
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unreasonable). In its Motion To Quash, the only case Microsoft cites from the Ninth Circuit
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actually supports Samsung's position that for a deposition subpoena, "10 days' notice is
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customary." In re Stratosphere Corp. Secs. Lit., 183 F.R.D. 684, 687 (D. Nev. 1999).
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Even if the 10-day period for compliance raises questions regarding the Subpoena's
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reasonableness, this is mitigated by the narrow scope of its requests. The scope of the four
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document requests and six deposition topics are limited by subject matter and time. They seek
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evidence related to a single topic (invention date) of a single patent (the '632 Patent).
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Additionally, although some of the requests can be construed as seeking information relating to
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particular embodiments and Microsoft products practicing the claimed invention, Samsung made
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clear during meet-and-confer sessions that it was interested in discovering just one relevant fact:
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SAMSUNG’S OPPOSITION TO MOT. TO QUASH
THIRD-PARTY SUBPOENA FILED BY MICROSOFT
Misc. Civil Case No. 12MC27 -5
FROMMER LAWRENCE & HAUG LLP
1191 SECOND AVENUE
SEATTLE, WASHINGTON 98101
(206) 336-5690
1
the date on which the '632 Patent entered the public domain and became part of the prior art
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under Section 102(g).
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Additionally, Counsel for Samsung made repeated offers to Microsoft to narrow these
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modest requests even further between February 27th and March 8th. (Schmidt Decl. at Ex. C).1
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Microsoft rejected these offers. From the tone and tenor of the negotiations, it was made
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apparent to Samsung that Microsoft was not willing to provide Samsung any discovery on any
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topic, no matter how narrow the requests.
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C.
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The Fact That Microsoft Failed To Comply With The Subpoena Within The
Discovery Period Does Not Justify Quashing The Subpoena.
Section III of Microsoft's Memorandum of Law should be disregarded in its entirety.
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Each of the cases cited by Microsoft in that section relate to the situation in which a subpoena
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specifies a time for compliance after the close of discovery. See Integra Lifesciences, Ltd. v.
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Merck KGaA, 190 F.R.D. 556, 560 (S.D. Cal. 1999) (denying defendants' request to take a "trial
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deposition" of a witness nearly eleven months after the close of fact discovery); Marvin Lumber
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& Cedar Co. v. PPG Indus., Inc., 177 F.R.D. 443, 445 (D. Minn. 1997) (prohibiting defendant
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from serving third-party subpoena having return date after discovery deadline). By contrast, the
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Subpoena in this case specified a return date on the final day for discovery, and contrary to
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Microsoft's assertion, did not seek a "deadline-busting response."
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It makes no difference that Microsoft refused to comply with the Subpoena, and the issue
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is now in post-deadline motion practice.
Northern District of California Local Rule 37-3
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expressly authorizes a motion to compel third-party discovery up to seven days after the
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discovery cut-off. The possibility that discovery, properly served with a return date on or before
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These two offers were significant concessions on the part of Samsung, which were made
without prejudice to seek the full scope of discovery sought by the subpoenas. If Microsoft's
Motion to Quash is denied, Samsung asks that the Court order Microsoft to comply with the
Subpoena as originally served, and not as narrowed in subsequent negotiations.
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SAMSUNG’S OPPOSITION TO MOT. TO QUASH
THIRD-PARTY SUBPOENA FILED BY MICROSOFT
Misc. Civil Case No. 12MC27 -6
FROMMER LAWRENCE & HAUG LLP
1191 SECOND AVENUE
SEATTLE, WASHINGTON 98101
(206) 336-5690
1
the discovery deadline, might only be forthcoming upon a court order issued after the discovery
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deadline, is specifically contemplated by the Local Rules governing the underlying litigation.2
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Finally, it is worth noting that the Northern District of California has even permitted
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parties to seek discovery with a return date after the discovery deadline under some
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circumstances:
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When considering a motion for leave to take additional discovery after the cutoff, the court shall consider all relevant factors, including: (1) the moving
party's diligence; (2) the foreseeability of the need for additional discovery; (3)
the trial schedule; (4) any response from non-moving and third parties; (5) the
likelihood that the discovery will lead to relevant evidence; and (6) any
prejudicial effect.
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Optimumpath, 2010 WL 4279501, at *2, citing Tyco Thermal Controls LLC v. Redwood Indus.,
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No. 06-7164, 2010 WL 2353533, at *2 (N.D. Cal. June 9, 2010). Here, Samsung exercised
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reasonable diligence on this issue considering the scale and scope of discovery in the underlying
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litigation, as well as Apple's continuously shifting allegations with respect to the conception of
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its own patents. Trial of the underlying matter is scheduled for late July, and Samsung's modest
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discovery requests will in no way impact the litigation schedule going forward. The evidence
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sought is highly relevant and could very well determine whether the '632 Patent will qualify as
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prior art for purposes of this important patent-infringement suit, affecting a nation-wide market.
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Finally, in light of the Subpoena's narrow scope, the potential prejudicial effect to Apple (or to
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Microsoft, for that matter) is minimal. Therefore, even if Samsung's requests were untimely
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(they were not), this fact would still not justify quashing the Subpoena.
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D.
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The Subpoena Does Not Subject Microsoft To Undue Burden Or Threaten
To Adversely Affect Its Interests.
Microsoft's position appears to be that providing any evidence whatsoever of the
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conception and reduction-to-practice date of the '632 patent would be infeasible.
This
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contention is difficult to believe. The Patent is assigned to Microsoft on its face. The seven
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The Local Rules of this Court require discovery to be served so that responses are due 120
days prior to trial. W.D. Wash. Civ. L.R. 16(f). Trial of the underlying matter is scheduled for
July 30, 2012; therefore, if the underlying litigation were taking place in this district, any
discovery calling for a response before April 2, 2012 would have been timely.
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SAMSUNG’S OPPOSITION TO MOT. TO QUASH
THIRD-PARTY SUBPOENA FILED BY MICROSOFT
Misc. Civil Case No. 12MC27 -7
FROMMER LAWRENCE & HAUG LLP
1191 SECOND AVENUE
SEATTLE, WASHINGTON 98101
(206) 336-5690
1
inventors are presumably Microsoft employees who invented the subject-matter of the Patent
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within the scope of their employment. Even the prosecuting attorney named on the '632 Patent
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is from the same firm representing Microsoft in this Motion to Quash. In light of these facts, it
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should not be too much to ask for Microsoft to merely identify a general time frame by which
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those ideas were conceived and reduced to practice.
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To assist Microsoft in responding to the Subpoena, counsel for Samsung identified six,
discrete features within the '632 Patent to which it was willing to limit all discovery requests:
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The “ improved user interface for mobile devices such as smartphones, personal digital
assistants (PDAs) and the like” see 2:6-8, which “can include a set of dynamic tiles.”
Flynt 2:15.
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The “navigation component” that “controls movement through the tile space.” Flynt
6:35-49 and Claim 13.
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“Movement within the tile space need not be limited to simple vertical or horizontal
panning.” Flynt 10:44-45.
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“By indicating movement, the user can reposition the display screen indicator within
the tile space and thereby update the portion of the tile space to be displayed.” Flynt
11:32-35, and Figure 8.
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“[T]he user can select a tile and on zoom in, the selected tile can be displayed as the
active tile, centered in the mobile device display screen.” Flynt 11:35-37 and Claim
16.
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“Zooming out allows a user to determine current location within the tile space . . .
[d]uring zoom out, smaller representations of tiles can be used to allow for the display
of additional tiles within the display screen of the mobile device.” Flynt 11:17-20;
11:24-27.3
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See Schmidt Decl. at Ex. C.
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Additionally, in its final offer to resolve this discovery dispute informally on March 1, 2012,
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Samsung even indicated that it was not asking Microsoft to pinpoint conception and reduction to
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Despite Samsung offering to narrow all of its discovery requests to these six topics,
Microsoft continues to assert in its Motion to Quash that Samsung has provided "no specificity
as to which portions of the patent are relevant to the underlying dispute." (Microsoft Motion at
8). Although it acknowledges that Samsung has narrowed its requests to "new" topics,
Microsoft asserts that such narrowing is irrelevant because it does nothing to reduce the
"universe" of documents Microsoft must review. (Id.) If credited, this argument would
immunize any entity with a sufficiently large "universe" of documents from any third-party
discovery request, no matter how narrow.
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SAMSUNG’S OPPOSITION TO MOT. TO QUASH
THIRD-PARTY SUBPOENA FILED BY MICROSOFT
Misc. Civil Case No. 12MC27 -8
FROMMER LAWRENCE & HAUG LLP
1191 SECOND AVENUE
SEATTLE, WASHINGTON 98101
(206) 336-5690
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practice with absolute certainty.
Recognizing that conception in large organizations is
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sometimes a "fluid" process, Samsung offered to depose a witness who was willing to testify
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merely on the "general timeframe of conception and reduction to practice (say within a 1-2
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month range)." Again, no counter-proposal was offered by Microsoft.
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Finally, Microsoft cannot claim undue burden based on the vague and speculative
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argument that providing evidence in this matter might somehow adversely affect its future
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interest in the '632 Patent. As already discussed, Samsung has asked only for a "general
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timeframe" for conception of the six discrete features it has identified. The risk to Microsoft's
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interest in the '632 Patent is therefore minimal, and is not outweighed by the relevancy of the
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evidence to the underlying litigation. Nevertheless, Samsung is sensitive to Microsoft's desire
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not to prejudice its ability to later claim a priority date earlier than the date to which its witness
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might testify under this Subpoena. Samsung therefore offers to modify its discovery requests
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regarding dates for conception and reduction to practice to "no-later-than" dates, so long as
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Microsoft agrees to make a good faith effort to identify dates as close to the actual dates as is
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feasible.
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III.
Conclusion
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The Subpoena seeks highly relevant information that directly impacts Samsung's
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invalidity defenses in major patent-litigation affecting an important, nation-wide market. The
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Subpoena does not subject Microsoft to undue burden. The relatively short time for compliance
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is mitigated by the Subpoena's narrowly tailored requests.
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considerable concessions and multiple efforts to narrow these requests even further. For these
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reasons, the Motion to Quash should be DENIED and Microsoft should be compelled to comply
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with the third-party discovery requests as drafted in the February 27th Subpoena (and as
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modified by Samsung's offer to accept "no-later-than" dates in the final paragraph of Section
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II.C).
Further, Samsung has made
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SAMSUNG’S OPPOSITION TO MOT. TO QUASH
THIRD-PARTY SUBPOENA FILED BY MICROSOFT
Misc. Civil Case No. 12MC27 -9
FROMMER LAWRENCE & HAUG LLP
1191 SECOND AVENUE
SEATTLE, WASHINGTON 98101
(206) 336-5690
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Respectfully submitted,
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FROMMER LAWRENCE & HAUG LLP
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Dated: March 19, 2012
By: s/ Mark P. Walters
Mark P. Walters, WSBA No. 30819
Dario A. Machleidt, WSBA No. 41860
1191 Second Avenue, Suite 2000
Seattle, WA 98101
Telephone: (206) 336-5690
Facsimile: (206) 336-5691
Email: mwalters@flhlaw.com
dmachleidt@flhlaw.com
Of Counsel:
QUINN EMANUEL URQUHART &
SULLIVAN, LLP
Todd Briggs (pro hac vice application
forthcoming)
toddbriggs@quinnemanuel.com
555 Twin Dolphin Drive, 5th Floor
Redwood Shores, California 94065
Telephone: (650) 801-5000
Facsimile: (650) 801-5100
Patrick T. Schmidt (pro hac vice application
forthcoming)
patrickschmidt@quinnemanuel.com
865 S. Figueroa St., 10th Floor
Los Angeles, California 90017
Telephone: (213) 443-3000
Facsimile: (213) 443-3100
Attorneys for Defendants SAMSUNG
ELECTRONICS CO., LTD.; SAMSUNG
ELECTRONICS AMERICA, INC.; and
SAMSUNG TELECOMMUNICATIONS
AMERICA, LLC
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SAMSUNG’S OPPOSITION TO MOT. TO QUASH
THIRD-PARTY SUBPOENA FILED BY MICROSOFT
Misc. Civil Case No. 12MC27 -10
FROMMER LAWRENCE & HAUG LLP
1191 SECOND AVENUE
SEATTLE, WASHINGTON 98101
(206) 336-5690
CERTIFICATE OF SERVICE
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I, Mark P. Walters, hereby certify that on March 19, 2012, I caused the foregoing
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to be served on the following parties by e-mail and/or the Court Electronic Filing System
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(ECF):
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Gary H. Levin
Woodcock Washburn LLP
2929 Arch Street
Cira Centre, 12th Floor
Philadelphia, Pennsylvania 19104
levin@woodcock.com
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Mark D. Selwyn
Wilmer Cutler Pickering Hale and Dorr, LLP
950 Page Mill Road
Palo Alto, California, 94304
mark.selwyn@willmerhale.com
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Brian Larivee, Esq.
Wilmer Cutler Pickering Hale and Dorr, LLP
60 State Street
Boston, MA 02109
brian.larivee@wilmerhale.com
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Mia Mazza
Morrison & Foerster LLP
425 Market Street
San Francisco, CA 94105-2482
MMazza@mofo.com
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DATED: March 19, 2012
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s/ Mark P. Walters
Mark P. Walters, WSBA No. 30819
Dario A. Machleidt, WSBA No. 41860
FROMMER LAWRENCE & HAUG LLP
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SAMSUNG’S OPPOSITION TO MOT. TO QUASH
THIRD-PARTY SUBPOENA FILED BY MICROSOFT
Misc. Civil Case No. 12MC27 -11
FROMMER LAWRENCE & HAUG LLP
1191 SECOND AVENUE
SEATTLE, WASHINGTON 98101
(206) 336-5690
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