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).

Download PDF
Exhibit 125 quinn emanuel trial lawyers | new york 51 Madison Avenue, 22nd Floor, New York, New York 10010-1601 | TEL: (212) 849-7000 FAX: (212) 849-7100 WRITER'S DIRECT DIAL NO. (212) 849-7285 WRITER'S INTERNET ADDRESS 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 LOS ANGELES | 865 South Figueroa Street, 10th Floor, Los Angeles, California 90017-2543 | TEL (213) 443-3000 FAX (213) 443-3100 SAN FRANCISCO | 50 California Street, 22nd Floor, San Francisco, California 94111-4788 | TEL (415) 875-6600 FAX (415) 875-6700 SILICON VALLEY | 555 Twin Dolphin Drive, 5th Floor, Redwood Shores, California 94065-2139 | TEL (650) 801-5000 FAX (650) 801-5100 CHICAGO | 500 W. Madison Street, Suite 2450, Chicago, Illinois 60661-2510 | TEL (312) 705-7400 FAX (312) 705-7401 LONDON | 16 Old Bailey, London EC4M 7EG, United Kingdom | TEL +44(0) 20 7653 2000 FAX +44(0) 20 7653 2100 TOKYO | NBF Hibiya Bldg., 25F, 1-1-7, Uchisaiwai-cho, Chiyoda-ku, Tokyo 100-0011, Japan | TEL +81 3 5510 1711 FAX +81 3 5510 1712 MANNHEIM | Erzbergerstraße 5, 68165 Mannheim, Germany | TEL +49(0) 621 43298 6000 FAX +49(0) 621 43298 6100 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

Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.


Why Is My Information Online?