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 127

UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WISCONSIN
)
)
Plaintiff &
)
Counterclaim-Defendant )
)
v.
)
)
MOTOROLA, INC. and MOTOROLA
)
MOBILITY, INC.
)
)
)
Defendants &
Counterclaim-Plaintiffs. )

APPLE INC.

Case No. lO-CV-662-slc

JURY TRIAL DEMANDED

DEFENDANT AND COUNTERCLAIM-PLAINTIFF MOTOROLA MOBILITY, INC'S
FIRST SET OF INTERROGATORIES TO APPLE INC.

Defendant and Counterclaim-Plaintiff Motorola Mobility, Inc. propounds the following
Interrogatories on Plaintiff and Counterclaim-Defendant Apple Inc. and requests that they be
answered separately, fully, and under oath within thirty (30) days of service pursuant to Federal
Rule of Civil Procedure 33.
DEFINITIONS

1.

The terms "Apple," "Plaintiff," "you," and "your" refers collectively and

individually to Apple Inc., and all its predecessors or successors (merged, acquired, or
otherwise), parents, divisions, subsidiaries, and affiliates thereof, and all officers, agents,
employees, counsel and other persons acting on their behalf, including, but not limited to,
Taligent Inc., NeXT Software Inc., and FingerWorks, Inc.
2.

The term "Mobility" refers to Motorola Mobility, Inc., and all its predecessors or

successors (merged, acquired, or otherwise), parents, divisions, subsidiaries, and affiliates
thereof, and all officers, agents, employees, counsel and other persons acting on its behalf.
3.

The term "Motorola" refers to Motorola, Inc., and all its predecessors or

successors (merged, acquired, or otherwise), parents, divisions, subsidiaries, and affiliates
thereof, and all officers, agents, employees, counsel and other persons acting on its behalf.
4.

The term "Defendants" refers collectively to Mobility and Motorola.

5.

The terms "Complaint" refers to Apple's Complaint filed in this matter on

October 29, 2010.
6.

The term "Counterclaims" refers to Motorola Mobility's Counterclaims I-IX filed

in this matter on November 9,2010.
7.

The term "Action" shall mean the case entitled Apple Inc. v. Motorola, Inc. and

Motorola Mobility, Inc., Case No. 1O-CV-662-slc, pending in the United States District Court for
the Western District of Wisconsin.
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8.

The term "'516 Patent" refers to U.S. Patent No. 5,311,516, as corrected, reissued

and/or reexamined.
9.

The term "'712 Patent" refers to U.S. Patent No. 5,319,712, as corrected, reissued

and/or reexamined.
10.

The term "'230 Patent" refers to U.S. Patent No. 5,490,230, as corrected, reissued

and/or reexamined.
11.

The term "'193 Patent" refers to U.S. Patent No. 5,572,193, as corrected, reissued

and/or reexamined.
12.

The term '''559 Patent" refers to U.S. Patent No. 6,175,559, as corrected, reissued

and/or reexamined.
13.

The term '''898 Patent" refers to U.S. Patent No. 6,359,898, as corrected, reissued

and/or reexamined.
14.

The term "Mobility Asserted Patents" refers to the '516 '712, '230, '193, '559,

and '898 Patents, collectively.
15.

The term "Mobility Asserted Claims" refers to any claim of the Mobility Asserted

Patents asserted in this Action.
16.

The terms "Apple Accused Instrumentality" or "Apple Accused Instrumentalities"

means any offering, process, method, product, system, device, apparatus, network, software or
other instrumentality of Apple that Mobility contends infringes any claim of the Mobility
Asserted Patents, including, but not limited to, the Apple iPhone, Apple iPhone 3G, Apple
iPhone 3GS, Apple iPhone 4, each generation of the Apple iPod Touch, Apple Mac Pro, Apple
iMac, Apple Mac mini, Apple MacBook Pro, Apple MacBook, Apple MacBook Air, Apple iPad,
and Apple iPad 3G.

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17.

The term "'949 Patent" refers to U.S. Patent No. 7,479,949, as corrected, reissued

and/or reexamined.
18.

The term "'002 Patent" refers to U.S. Patent No. 6,493,002, as corrected, reissued

and/or reexamined.
19.

The term '''315 Patent" refers to U.S. Patent No. 5,838,315, as corrected, reissued

and/or reexamined.
20.

The term "Apple Asserted Patents" refers to the '949, '002, and '315 Patents,

collectively.
21.

The term "Apple Asserted Claims" refers to any claim of the Apple Asserted

Patents asserted in this Action.
22.

"Embodying Product(s)" means any offering, product, device, apparatus, process,

method, act, or other instrumentality that, when made, used, offered for sale, sold, or practiced
(either by itself or in conjunction with other products, methods, or processes), Apple contends or
has contended constitutes, practices, incorporates or embodies an apparatus, system, method, or
process claimed in any of the Apple Asserted Patents.
23.

The terms "Accused Instrumentality of Defendants" or "Accused

Instrumentalities of Defendants" means any offering, process, method, product, system, device,
apparatus, network, software or other instrumentality of Motorola or Mobility that Apple
contends infringes any claim of the Apple Asserted Patents, including, but not limited to, the
Droid, Droid 2, Droid X, Cliq, Cliq XT, BackFlip, Devour A555, Devour iI, and Charm.
24.

When used in relation to a patent, "Subject Matter" means all products, processes,

services, implementations, uses, or other matter covered by one or more claims of that patent.
25.

"Related Application(s)" means any patent or application related to a patent,

including foreign counterpart patents or applications, whether by means of a continuation,
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continuation-in-part, division, reexamination, correction or re-issue, whether issued, pending, or
abandoned.
26.

The term "Prior Art" means all publications, patents, physical devices, prototypes,

products, uses, sales, offers for sale, or other activity concerning the Subject Matter of the Apple
or Mobility Asserted Patents, as the case may be, or related United States or foreign patents, and
existing on, or occurring at, a date such as to be relevant under any subdivision of 35 U.S.c. §§

102 or 103.
27.

The terms "product" or "products" shall mean any product, apparatus, system or

28.

The term "infringe" or any variant thereof, including but not limited to

servIce.

"infringing" and "infringement," refers to any type of patent infringement, whether direct,
indirect, by equivalents, contributory, or by inducement.
29.

The term "concerning," in addition to its usual and customary meaning, shall also

mean relating to, alluding to, referring to, constituting, describing, discussing, evidencing, or
regarding.
30.

The term "relating to," in addition to its usual and customary meaning, shall also

mean alluding to, referring to, constituting, describing, discussing, evidencing, or regarding.
31.

The words "pertain to" or "pertaining to" mean: relates to, refers to, contains,

concerns, describes, embodies, mentions, constitutes, constituting, supports, corroborates,
demonstrates, proves, evidences, shows, refutes, disputes, rebuts, controverts or contradicts.
32.

The term "identify" shall mean (1) when referring to a person, the person's full

name, present or last known address, and the last known title and place of employment; (2) when
referring to a business, legal, or governmental entity or association, the name and address of the
main office; (3) when referring to a fact, the fact and the documentary or testimonial support for

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that fact; (4) when referring to a product or thing, the title or model name/number, any code or
project name, or other name by which it has been referred, and a general description of the
product or thing; (5) when referring to a written communication, identity ofthe document(s) in
which the communication was made; (6) when referring to an oral communication, the identity
of persons participating in the communication; (7) when referring to nonpatent documents, the
Bates number, type of document, its general nature and subject matter, date of creation, and all
author(s), addressee(s), and recipient(s); and (8) when referring to patent documents, the country,
patent and/or application number, dates of filing, publication, and grant, the names of patentees
or applicants.
33.

The term "describe" shall mean, in addition to its usual and customary meaning,

the identity of all persons with knowledge of the information sought in the interrogatory, and the
identity of all documents referring, regarding, or relating to the information sought in the
interrogatory.
34.

The term "date" shall mean the exact date, month and year, if ascertainable or, if

not, the best approximation of the date (based upon relationship with other events).
35.

The terms "document" and "documents" shall be construed to include, without

limitation, any computer disk, diskette, tape, card or any other form of computer data storage,
electronic data, or electronically stored information, existing or deleted files, metadata, data
collected and stored through use of the Internet, including "bookmarks" and browser history
identifying Web sites visited, voice-mail messages and identifying information (including
information stored on cell phones and hand-held communication devices), digital photographs,
charts and graphs stored electronically, writings, drawings, graphs, chart photographs, sound
recordings, images, and all other data or data compilations stored in any medium from which
information can be obtained, however produced or reproduced, of any kind or description,
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whether sent or received, including original copies, drafts and both sides thereof, regardless of
their author or origin, or however denominated by the recipient ofthis Request. In all instances
in which a document, or a series of documents, has been prepared on a periodic basis (such as
monthly, quarterly, semiannually, annually, etc.) the document reflecting each such period is
requested.
36.

The terms "communication" and "communications" shall refer to all written, oral,

telephonic or other inquiries, dialogues, discussions, conversations, interviews, correspondence,
consultations, negotiations, agreements, understandings, meetings, letters, notes, telegrams,
advertisements, computer mail, e-mail and all other documents evidencing any verbal or
nonverbal interaction between persons and entities.
37.

The term "agent" shall mean any agent, employee, officer, director, attorney,

independent contractor or any other person acting at the direction of or on behalf of another.
38.

The terms "person" and "persons" refers to any natural persons, corporate or other

business entities, and all other forms of legal entities, and shall include the following:
corporations, proprietorships, associations, joint ventures, companies, partnerships or other
business or legal entities, trade organizations, standards organizations, including governmental
bodies and agencies.
39.

The term "third party" or "third parties" refers to individuals, persons, or entities

that are not a party to this Action.
40.

The word "or" shall also include within its meaning the word "and," and vice

versa; each shall be read in the conjunctive and in the disjunctive wherever each appears, and
neither of these words shall be interpreted to limit the scope of these Interrogatories.
41.

The terms "any" and "all" shall each mean and include the other.

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42.

The use of a verb in any tense shall be construed as the use of the verb in all other

43.

The singular shall include the plural and vice versa; the terms "and" or "or" shall

tenses.

be both conjunctive and disjunctive; and the term "including" mean "including without
limitation."
INSTRUCTIONS

1.

In answering the following Interrogatories, furnish all available information,

including information in the possession, custody, or control of any of Apple's attorneys,
directors, officers, agents, employees, representatives, associates, investigators, or divisions
affiliates, partnerships, parents or subsidiaries, and persons under Apple's control, who have the
best knowledge, not merely information known to Apple's based on Apple's own personal
knowledge. If you cannot fully respond to the following Interrogatories after exercising due
diligence to secure the information requested thereby, so state, and specify the portion of each
Interrogatory that cannot be responded to fully and completely. In the latter event, state what
efforts were made to obtain the requested information and the facts relied upon that support the
contention that the Interrogatory cannot be answered fully and completely; and state what
knowledge, information or belief Apple has concerning the unanswered portion of any such
Interrogatory.
2.

If Apple's response to a particular Interrogatory is a statement that Apple lacks

the ability to comply with that Interrogatory, Apple must specify whether the inability to comply
is because the particular item or category of information never existed, has been destroyed, has
been lost, misplaced, or stolen, or has never been, or is no longer, in Apple's possession,
custody, or control, in which case the name and address of any person or entity known or

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believed by you to have possession, custody, or control ofthat information or category of
information must be identified.
3.

If you object to fully identifying a document, electronically stored information or

oral communication because of a privilege, you must nevertheless provide the following
information unless diVUlging the information would disclose the privileged information:
(a) the nature of the privilege claimed (including work product);
(b) if the privilege is being asserted in connection with a claim or defense
governed by state law, the state privilege rule being invoked;
(c) the date of the document, electronically stored information or oral
communication;
(d) if a document, the type of document (e.g., letter or memorandum) and, if
electronically stored information, the software application used to create it
(e.g., MS Word or MS Excel Spreadsheet), and the custodian, location, and
such other information sufficient to identify the material for a subpoena duces
tecum or a production request, including where appropriate the author, the
addressee, and, if not apparent, the relationship between the author and
addressee;
(e) if an oral communication: the place where it was made, the names of the
persons present while it was made, and, if not apparent, the relationship of the
persons present to the declarant; and
(f) the general subject matter of the document, electronically stored information
or oral communication.
4.

You are under a continuous obligation to supplement your answers to these

interrogatories under the circumstances specified in Federal Rule of Civil Procedure 26(e).

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INTERROGATORIES
INTERROGATORY NO. 1.
For each Apple Accused Instrumentality, describe the complete basis for your contention
that Apple does not infringe the Mobility Asserted Patents.

INTERROGATORY NO.2.
For each Mobility Asserted Patent, describe the complete basis for your contention that
the patent is not valid or enforceable, including for each patent an identification of all material or
information that you contend constitutes Prior Art and a description, on a claim-by-claim,
element-by-element basis of why you contend the Prior Art renders the Mobility Asserted Patent
invalid.

INTERROGATORY NO.3.
Describe the date, manner, and circumstances under which Apple was first made aware
of each of the Mobility Asserted Patents and the actions Apple undertook related to such
awareness.

INTERROGATORY NO.4.
For each Apple Asserted Claim, identify all Prior Art relating to that claim and the basis
for any contention by Apple that the Prior Art does not render the Apple Asserted Claim invalid,
including each element of the Apple Asserted Claim that Apple contends cannot be found in the
Prior Art and an explanation of why each element so identified would not have been obvious to a
person of ordinary skill in the art, as you define such a person, over the Prior Art as of Apple's
claimed priority date for the claim.

INTERROGATORY NO.5.
Separately for each Apple Asserted Claim, identify all evidence supporting or
contradicting any secondary considerations of non-obviousness, including without limitation

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commercial success, long-felt need, commercial acquiescence, expressions of skepticism,
copying, teaching away, failed attempts by others, or simultaneous development.

INTERROGATORY NO.6.
For each claim of the Apple Asserted Patents that you allege Defendants have infringed
or are infringing, describe the complete basis for your contention that Defendants are infringing
or have infringed that claim by describing in a claim chart on an element-by-element basis where
each element of each Asserted Claim can be found in each Accused Instrumentality of
Defendants that you contend infringes that claim, whether such alleged infringement is literal or
by equivalents, how 35 U.S.C. § 112(6) is satisfied, if applicable, and whether such alleged
infringement is direct (i.e., under 35 U.S.C. § 271(a)) or indirect (i.e., under 35 U.S.c. §§ 271(b)
or (c)).

INTERROGATORY NO.7.
Separately for each element of each claim identified in response to Interrogatory No.6,
state how you construe or interpret the element to conclude that each Accused Instrumentality of
Defendants infringes each Apple Asserted Claim and describe all intrinsic and extrinsic evidence
that supports your construction.

.INTERROGATORY NO.8.
For each Apple Asserted Claim, separately identify, by product name, version,
description and/or other identifying characteristic, every Embodying Product covered by the
Apple Asserted Claim and describe, on an element-by-element basis, the basis for your
contention, whether made now or in the past, that the product so identified practices the Apple
Asserted Claim.

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.INTERROGATORY NO.9.
Identify any and all patent licenses, cross licenses, or other similar agreements, including
without limitation covenants not to sue or non-assertion agreements, known to Apple, which
concern the Subject Matter of the Apple or Mobility Asserted Patents or Related Applications.

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Respectfully submitted,

Dated: December 20, 2010

MOTOROLA, INC. &
MOTOROLA MOBILITY, INC.
By:
Scott W. Hansen (1017206)
Lynn Stathas (1003695)
Paul Stockhausen (1034225)
REINHART BOERNER VAN DEUREN, S.C.
22 East Mifflin Street
P.O. Box 2018
Madison, WI 53701-2018
Phone: [phone]
Fax: [phone]
Email: [e-mail]
Of Counsel
David A. Nelson (6209623)
Jennifer A. Bauer (6289020)
QUINN EMANUEL URQUHART &
SULLIVAN, LLP
500 West Madison St., Ste. 2450
Chicago, IL 60661
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Charles K. Verhoeven
50 California Street, 22nd Floor
San Francisco, CA 94111
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Edward J. DeFranco
51 Madison Avenue, 22nd Floor
New York, NY 10010
Telephone: [phone]
Facsimile: [phone]
Email: [e-mail]
Attorneys for Defendants Motorola, Inc. and
Motorola Mobility, Inc.

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