Apple, Inc. v. Motorola, Inc. et al
Filing
247
Exhibit to 236 Declaration,,,, filed by Motorola, Inc., Motorola Mobility, Inc. (Attachments: # 1 Exhibit 84 - Dialey to Rosenbrock, dated January 26, 1998, # 2 Exhibit 85 - McCormack to Rosebrock, dated December 20, 2002, # 3 Exhibit 110 - Civil Docket, Case No. 3:11-cv-00178-bbc (W.D. Wis.), # 4 Exhibit 111 - Apple's Amended Invalidity Contentions, # 5 Exhibit 115 - Order Denying Apple's Motion for Preliminary Injunction, Case No. 3:11-cv-00178-bbc (W.D. Wis.), # 6 Exhibit 117 - Hearing Transcript regarding Apple's Motion for Preliminary Injunction, Case No. 3:11-cv-00178-bbc (W.D. Wis.), # 7 Exhibit 118 - Prosecution History for Patent No. 6,493,002, # 8 Exhibit 119 - Order Denying Apple's Motion for Preliminary Injunction, Case No. 3:11-cv-00178-bbc (W.D. Wis.), # 9 Exhibit 120 - Patent No. 5,319,712, # 10 Exhibit 122 - Patent No. 5,572,193, # 11 Exhibit 121 - Patent No. 6,175,559, # 12 Exhibit 123 - Patent No. 6,359,898, # 13 Exhibit 125 - Elihu to Haskett, dated August 22, 2011, # 14 Exhibit 126 - Apple's Answer, Affirmative Defenses, and Counterclaims to Motorola's Answer and Counterclaims to Apple's Amended Complaint, # 15 Exhibit 127 - Motorola's First Set of Interrogatories to Apple) (Burrows, James) Modified on 11/7/2011; correct #120 patent number (mmo).
Exhibit 125
quinn emanuel
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WRITER'S DIRECT DIAL NO.
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davidelihu@quinnemanuel.com
August 22, 2011
VIA ELECTRONIC MAIL
Christine Saunders Haskett
Covington & Burling LLP
One Front Street
San Francisco, CA 94111-5356
Tel: 415.591.7087
Fax: 415.955.6587
Re:
Apple Inc. and NeXT Software, Inc. (f/k/a NeXT Computer, Inc.) v. Motorola, Inc. and
Motorola Mobility, Inc., Civ. No. 10-CV-00662-BBC (W.D. Wis.)
Dear Christine:
I write regarding Apple's Unenforceability Contentions, received on May 16, 2011, and in
particular its failure to address Apple's defense of "Estoppel/Unclean Hands."
On December 3, 2010, Apple served its Answer, Affirmative Defenses, and Counterclaims in
this action. (D.I. 13.) Apple filed amended Answers on January 28, 2011 (D.I. 50) and April 15,
2011 (D.I. 82).
Apple’s Fifth Defense asserts that some or all of Motorola's declared essential patent are
unenforceable under the doctrines of equitable estoppel (see D.I. 82 at ¶ 174) and unclean hands
(see id. at ¶ 176). Apple also asserts that "Motorola has refused to offer Apple a license to the
Asserted Patents on F/RAND terms as promised." (Id. at ¶ 163.) Apple further did not plead any
facts relating specifically to any of the six Motorola patents at issue and why Motorola is
estopped from their enforcement, including its F/RAND allegation. Apple’s unclean hands
defense also lacks specificity, asserting only that "Motorola's assertion of its Counterclaims of
quinn emanuel urquhart & sullivan, llp
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Christine Saunders Haskett
August 22, 2011
purportedly essential patents in violation of its obligation to license on F/RAND terms
constitutes unclean hands which bars any relief sought by Motorola in this case." (Id. at ¶ 176.)
Apple's responses to Motorola's contention interrogatories do not provide any more detail. For
example, in its Objections and Responses to Motorola’s First Set of Interrogatories (Nos. 1-9)
served January 24, 2011, Apple deferred its obligation to provide support for its unenforceability
contentions. Apple has not updated its response to Motorola's Interrogatory No. 2.
Motorola requests that Apple immediately provide updated contentions with respect to its
defense of estoppel and unclean hands. These contentions are already late under the Court's
schedule. See Preliminary Pretrial Conference Order of December 20, 2010, D.I. 27 at 2 ("By
this date, a defendant must disclose all of its contentions of invalidity and unenforceability.").
Motorola requests that Apple update its unenforceability contentions by August 26, 2011.
Further delay will prejudice Motorola in its preparation for trial, and Motorola will assume that
Apple does not intend to pursue these defenses in this particular action.
Sincerely,
/s/ David M. Elihu
David M. Elihu
2
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