Case 1:13-cv-00633-DEP Document 124 Filed 08/22/14 Page 1 of 31

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF NEW YORK
ALBANY DIVISION
RENSSELAER POLYTECHNIC
INSTITUTE AND
DYNAMIC ADVANCES, LLC,
Plaintiffs,

Civil Action No.1:13-cv-00633-DNHDEP

v.
JURY TRIAL DEMANDED
APPLE INC.,
Defendant.

PLAINTIFFS MOTION TO COMPEL DISCOVERY FROM DEFENDANT APPLE INC.

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TABLE OF CONTENTS

INTRODUCTION ............................................................................................................. 1
BACKGROUND .............................................................................................................. 2
I.

Apples Siri Service Infringes All of RPIs Presumptively Valid

Claims ........................................................................................................ 2

II.

Several Alternative Reasonable Royalty Models are Potentially

Available to Determine Apples Infringement Damages ............................. 3

III.

RPI Discovery Requests Seek Information on Seven Topics

Relevant to Reasonable Royalty Models that Apple Has Refused to
Produce ..................................................................................................... 4

ARGUMENT .................................................................................................................... 7
I.

Discovery of Apple Information that Informs a Reasonable Royalty

Analysis Is Necessary and Routine ........................................................... 7

II.

The Court Should Order Apple to Produce Responsive Information

for the Seven Topics at Issue .................................................................... 9
A.

Apples Prior Litigation Statements, Testimony, and Judicial

Admissions Related to Siris Value.................................................. 9

B.

Apples Valuation of Siris Impact on Revenue, Profit,

Smartphone / Mobile Operating System Market Share, and
Siri Marketing Strategy .................................................................. 11

C.

Apples Agreements with Nuance and Other Third-Parties

Related to Siris NL or Speech Recognition Technology ............... 16

D.

Apple Agreements with Siri Partner Websites ............................... 18

E.

Apples Agreements with Automobile Manufactures

Advertising Siri .............................................................................. 19

F.

Apples Internal Licenses Related to Siri ....................................... 21

G.

Apples Deferred Revenue Accounting Related to Siri .................. 24

CONCLUSION .............................................................................................................. 25

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TABLE OF AUTHORITIES
Cases
Adrian Shipholding, Inc. v. Lawndale Group S.A., 2012 U.S. Dist. LEXIS 4234, at *26
27 (S.D.N.Y. Jan. 13, 2012)....................................................................................... 15
AGA Med. Corp. v. W.L. Gore & Assocs., 2011 U.S. Dist. LEXIS 157787, at *2224 (D.
Minn. Oct. 18, 2011) .................................................................................................... 8
Cornell Research Found. v. Hewlett Packard Co., 2005 U.S. Dist. LEXIS 47720
(N.D.N.Y, Oct. 11, 2005).............................................................................................. 4
Cornell Research Found. v. Hewlett Packard Co., 223 F.R.D. 55, 6263 (N.D.N.Y 2003)
.................................................................................................................................... 4
Fed. R. Civ. P. 26(b)(1 .................................................................................................... 7
Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y. 1970).
.................................................................................................................................... 8
Georgia-Pacific Corp., 318 F. Supp. 1116 at 1139 ........................................................ 23
Golden Trade v. Lee Apparel Co., 143 F.R.D. 514, 525 (S.D.N.Y. 1992) ..................... 24
Grigoleit at *3839 .......................................................................................................... 9
Grigoleit Co. v. Whirlpool Corp., 2014 U.S. Dist. LEXIS 686, at *3839 (C.D. Ill. Jan. 3,
2014) ........................................................................................................................... 8
High Point Sarl v. Sprint Nextel Corp., 2011 U.S. Dist. LEXIS 83126, at *1516 (D. Kan.
July 29, 2011) ............................................................................................................ 23
Hubbell v. O.W. Hubbell & Sons, Inc., 2008 U.S. Dist. LEXIS 26030, at *12 (N.D.N.Y
Mar. 28, 2008). ............................................................................................................ 8
Johns-Manville Corp. v. Guardian Indus. Corp., 718 F. Supp. 1310, 1315 ( E.D. Mich.
1989) ......................................................................................................................... 23
Johnson & Johnson Vision Care, Inc. v. Ciba Vision Corp., 712 F. Supp. 2d 1285, 1289
(M.D. Fla. 2010). ........................................................................................................ 23
King v. Pratt & Whitney, 161 F.R.D. 475, 476 (S.D. Fl. 1995) ....................................... 15
Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1324 (Fed. Cir. 2009) .................. 3
P&G Co. v. Paragon Trade Brands, Inc., 989 F. Supp. 547, 613 (D. Del. 1997) ............. 9
Positive Techs., Inc. v. Sony Elecs., Inc., 2013 U.S. Dist. LEXIS 26289, at *1215 (N.D.
Cal. Feb. 26, 2013) ...................................................................................................... 8
Rahman v. Smith & Wollensky Rest. Group, Inc., 2009 U.S. Dist. LEXIS 30275, at *5
(S.D.N.Y. Mar. 18, 2009) ........................................................................................... 15
Realtime Data, LLC D/B/A/ Ixo, v. Morgan Stanley, 1:11-cv-06696-KBF Dkt. No. 459, 2
3 (S.D.N.Y. May 1, 2012)............................................................................................. 8
Starlight Intl Inc. v. Herlihy, 186 F.R.D. 626, 638-640 (D. Kan. 1999) .......................... 15

ii

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Tailored Lighting, Inc. v. Osram Sylvania Prods., Inc., 255 F.R.D. 340, 2009 WL
367584, at *7 (W.D.N.Y. 2009) .................................................................................. 15
United States v. Taylor, 166 F.R.D. 356, 36063 (M.D.N.C. 1996) ............................... 15
W.L. Gore & Assocs. v. AGA Med. Corp., 2012 U.S. Dist. LEXIS 4942, at *45 (D. Del.
Jan. 17, 2012)............................................................................................................ 23

iii

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INTRODUCTION
Apple has spent nearly $

acquiring and developing the Siri personal

assistant service that infringes RPIs asserted patent. But in response to RPIs
discovery requests directed to the value of Siri, Apple has either refused to produce
information in its possession about the value of Siri, or claims such information does not
exist. RPI knows this pertinent information is in Apples possession, both because
and because Apple
relied on such information in its lawsuit against Samsung filed in February 2012.
In that lawsuit, Apple accused Samsung of infringing several Apple patents,
including two patents that cover Siri. Apple sought and obtained a preliminary injunction
and a $120 million jury verdict against Samsung based primarily on Siris importance to
Apple in its global competition against Samsungs Android-operated smartphones.
While the Federal Circuit later reversed the preliminary injunction, it ratified the lower
courts findingsbased on Apple evidencethat Siri is a significant source of consumer
demand for Apples mobile devices.
The discovery RPI seeks is uncontroversial. RPI requested from Apple the
information it used to obtain a preliminary injunction and nine-figure damages award
against Samsung. Both awards were based largely on the evidence Apple submitted
about Siris value. Despite RPIs repeated and specific requests, Apple has refused to
produce that information, and other information like it. Such information is highly
probative of the reasonable royalty Apple would have paid to RPI in a hypothetical
negotiation that would have occurred just months before Apple sued Samsung for
infringing Apple patents covering Siri. Apples discovery misconduct is improper and the
Court should compel Apple to produce the discovery RPI seeks.
1

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this method, infringement damages are calculated by subtracting the

infringers usual or acceptable net profit from its internal projections of its
expected net profit derived from its infringement. Id.
Where (as here) a patent does not have an established royalty based on prior
license agreements, each of the aforementioned reasonable royalty damages models
depends primarily on documents and information the patentee seeks and receives from
the accused infringer during discovery. See, e.g., Cornell Research Found. v. Hewlett
Packard Co., 223 F.R.D. 55, 6263 (N.D.N.Y 2003) (Peebles, M.J.) (reasonable royalty
analysis depends on information uniquely in the possession of defendant).1
III.

RPI Discovery Requests Seek Information on Seven Topics Relevant to

Reasonable Royalty Models that Apple Has Refused to Produce
RPI served, and Apple objected and responded to, five sets of requests for

production containing 134 document requests. Exs. 17 (Apple Resps. to RPIs

Requests for Production, Sets 15, and amended responses to Sets 2 and 3).2 RPI also
served, and Apple objected and responded to, four sets of interrogatories containing 23
interrogatories. Exs. 811 (Apple Resps. to RPIs Interrogatories, Sets 14). Finally, RPI
served Apple with three 30(b)(6) Deposition Notices containing 69 total topics. Exs. 12
14 (RPIs 30(b)(6) Notices to Apple, 13). With respect to every noticed topic Apple
objected and either stated it would present a witness to testify generally about a
substitute topic Apple unilaterally defined, refused to present a witness altogether, or

As the Court is no doubt aware, some portions of its Order were subsequently
modified. See Cornell Research Found. v. Hewlett Packard Co., 2005 U.S. Dist. LEXIS
47720 (N.D.N.Y, Oct. 11, 2005).
2
Citations to Ex. or Exs. refer to the exhibits described and attached to the
concurrently-filed Declaration of Alexander E. Gasser (Gasser Decl.).
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has not yet responded. See Exs. 1516 (Apple Resps. to Plaintiffs 30(b)(6) Notices, 1
2); Gasser Decl. 1619.3
RPIs discovery requests seek specific information on seven topics related to
potential reasonable royalty models and damages theories:
1) Apple documents, statements, and testimony about Siris value in
other litigation. Documents, pleadings, testimony, exhibits,
demonstratives, declarations, etc. from other litigation that contains Apple
representations about Siris technology and value to Apple, including
Apple v. Samsung, Case No. 5:12-cv-00630 [RFP 63]; and Apple
interrogatory responses concerning Apples representations in other
litigation about Siris technology and its value to Apple [Apple Resp. to
Interrogatory 13].
2) Apples assessment of Siris value. Apple documents concerning
Apples reason for acquiring Siri, Inc., and Siris impact on Apple iOS unit
sales, revenues, profits, customer loyalty, first-time smartphone buyers,
and smartphone / mobile operating system market share [RFPs 83, 106
109, 112]; Apple interrogatory responses describing Siris value to Apple
[Apple Resp. to Interrogatories 818; 2021]; and Apple witnesses
prepared to testify about these issues [Noticed Topics 16; 8, 1112; 15
17; 23, 2526; 63, 6566].
3) Nuance and speech recognition agreements. Apple documents
(including any agreements and licenses) concerning Apple payments for
and Siri use of NLP technology, speech recognition technology, and
Nuance NL or speech recognition technology used in Siri [RFPs 102109;
124217]; Apple interrogatory responses regarding Apples payments for
and Siris use of speech recognition technology, and Nuance NL or
speech technology used in Siri [Apple Resp. to Interrogatory 19]; and an
Apple witness prepared to testify about these issues [Noticed Topics 20
22; 37, 5253; 5658; 61, 6466].
4) Siri Partner agreements. Apple and Siri, Inc. documents, licenses, and
agreements related to Apples third-party Siri partners with which Siri
interfaces to respond to user queries, such as OpenTable, Wolfram|Alpha,
Fandango, Rotten Tomatoes, and Yelp. [RFPs 91, 102109]; Apple
interrogatory responses regarding Apple agreements with its third-party
3

To date, Apple has presented only three 30(b)(6) witnesses for deposition on just 15 of
RPIs noticed topics. And of the three depositions RPI has taken, two Apple witnesses
were only prepared to cover a small fraction of their designated topicsand the other
was not prepared to testify at all (see infra pp. 1115).
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Siri partners [Apple Responses to Interrogatory 19]; and an Apple witness

prepared to testify about these issues [Noticed Topics 2122; 37].
5) Automobile manufacturer agreements. Apple documents, licenses, and
agreements between Apple and automobile manufacturers deploying Siri
for use in the car, including products known as iOS in the Car and Siri
Eyes Free [RFPs 91, 9496]; Apple interrogatory responses regarding
Apple agreements with automobile manufacturers deploying Siri [Apple
Resp. to Interrogatory 19]; and an Apple witness prepared to testify about
these issues [Noticed Topic 67].
6) Apple internal licenses covering Siri technology. Apple documents
concerning Apple internal licenses that cover or relate to Siri or Siri
technology [RFPs 91109]; Apple interrogatory responses describing and
explaining such internal licenses [Apple Resp. to Interrogatories 19, 21];
and an Apple witness prepared to testify about these issues [Noticed
Topics 1314; 20, 23, 61, 63].
7) Apple deferred revenue and estimated selling price (ESP) related to
Siri. Apple documents concerning Apples deferred revenue and ESP
amounts and methodology concerning Siri [RFPs 83, 97]; Apple
interrogatory responses describing and explaining deferred revenue and
ESP concerning Siri [Apple Resp. to Interrogatories 1415; 18, 2021];
and an Apple witness prepared to testify about these issues [Noticed
Topics 1617; 24, 63].
Apple has objected to producing documents responsive to any of the RPI
requests for production concerning the above seven topics. Apple has also largely
defaulted in providing meaningful responses to RPIs interrogatories concerning the
same seven topics. Id. 1112, 28, 36, 41, 47. Likewise, Apple has either refused to
produce a corporate witness prepared to testify on the seven topics described above,
presented an unprepared witness, or presented witnesses on topics that Apple
redefined into vague and meaningless generalities. Id. 1316, 19, 25.
public reports have widely publicized) the existence
of Apple information responsive to the seven information categoriesand yet Apple still
refuses to produce such information. Id. 4043, 45. Apples discovery misconduct is

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contrary to the broad scope of discovery authorized by Fed. R. Civ. P. 26.4 Moreover,
Apples refusal to produce properly noticed and requested documents, interrogatory
responses, and prepared witnesses essential to analyzing the hypothetical negotiation
over a reasonable royalty prejudices RPI. Because RPI is required to present a
damages model rooted in the facts of the case, Apple has made a determined effort to
prevent RPIs access to those critical facts. Id.
ARGUMENT
I.

Discovery of Apple Information that Informs a Reasonable Royalty Analysis

Is Necessary and Routine
RPI is entitled to discovery from Apple regarding any non-privileged matter that is

relevant to its claim. Fed. R. Civ. P. 26(b)(1). Discoverable information is not limited to
information based on Apples view of what is relevantand Apple should not be
permitted to pick and choose from RPIs discovery requests and unilaterally announce
which of RPIs properly served and noticed requests it will respond to or ignore. Instead,
discoverable information encompasses any evidence reasonably calculated to lead to
the discovery of admissible evidence. Id. A party resisting discovery bears the burden
of showing specifically how, despite the broad and liberal construction afforded the
federal discovery rules, each discovery request is not relevant or how each question is
overly broad, burdensome, or oppressive, by submitting affidavits or offering evidence

Apples discovery antics in this case do not appear to be an isolated incident. See Ex.
17 (annotated list summarizing 13 published orders issued in the last 30 months
granting motions to compel Apple to produce responsive documents that were
withheldincluding cases assessing costs against Apple or precluding Apple from
putting in certain evidence at trial based on its failure to produce responsive
information during discovery related to such evidence).
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revealing the nature of the burden. Hubbell v. O.W. Hubbell & Sons, Inc., 2008 U.S.
Dist. LEXIS 26030, at *12 (N.D.N.Y Mar. 28, 2008).
Particularity with respect to patent damages, parties are entitled to broad
discovery into potentially relevant informationeven if by itself such information would
be inadmissible at trial. Positive Techs., Inc. v. Sony Elecs., Inc., 2013 U.S. Dist. LEXIS
26289, at *1215 (N.D. Cal. Feb. 26, 2013) (ordering information produced concerning
non-infringing accessories and content of infringing product because of potential
relevance to reasonable royalty rate, even though LaserDynamics precluded its
admissibility). The reason is that failing to require production of information that could
inform a damages analysis becomes, in effect, a premature Daubert ruling. See
Realtime Data, LLC D/B/A/ Ixo, v. Morgan Stanley, 1:11-cv-06696-KBF Dkt. No. 459, 2
3 (S.D.N.Y. May 1, 2012) (granting Plaintiffs motion to compel despite serious
questions about admissibility to avoid making a preclusive ruling on a potential
damages theory.). As a result, courts routinely grant such discovery and permit experts
to rely upon it. See, e.g., AGA Med. Corp. v. W.L. Gore & Assocs., 2011 U.S. Dist.
LEXIS 157787, at *2224 (D. Minn. Oct. 18, 2011) (granting motion to compel sales
data for non-accused product); Grigoleit Co. v. Whirlpool Corp., 2014 U.S. Dist. LEXIS
686, at *3839 (C.D. Ill. Jan. 3, 2014) (ordering discovery into per-unit royalty within 12cent range and directing parties to provide evidence supporting the proper royalty).
The most common method for ascertaining a reasonable royalty rate is the
fifteen-factor framework set forth in Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F.
Supp. 1116, 1120 (S.D.N.Y. 1970). Factor fifteen sets forth the willing buyer/willing
seller hypothetical negotiation that takes place at the time of first infringement, and

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through which all other factors are considered. See P&G Co. v. Paragon Trade Brands,
Inc., 989 F. Supp. 547, 613 (D. Del. 1997). This fact-intensive reconstruction of the
hypothetical world at the time of first infringement requires thorough, substantive, and
comprehensive evidence for trier of fact. Grigoleit at *3839.
II.
A.

The Court Should Order Apple to Produce Responsive Information for the
Seven Topics at Issue
Apples Prior Litigation Statements, Testimony, and Judicial Admissions
Related to Siris Value
RPI has repeatedly requested documents from Apple related to Apples other

litigation involving the value of Siriparticularly Apples lawsuit filed against Samsung in
February 2012 asserting two patents covering Siri. See Gasser Decl. 41. The only
documents Apple produced were two damages expert declarations (Exs. 18 and 19,
Vellturo Declarations) and a damages expert report (Ex. 20, Vellturo Report). The three
documents are heavily redacted. And they were each produced without any of the
attachments or cited evidence, and without any of the exhibits including Apple business
records, Apple witness declarations, Apple deposition testimony, or any other
documents. Apple has refused to produce anything more from its case against
Samsung that resulted in the district court entering a preliminary injunction against
Samsung based on an Apple Siri patent (subsequently reversed by the Federal Circuit),
and also resulting in a $120 million jury verdict for Apple. See Gasser Decl. 2123,
41, 45; see also Ex. 21 (deposition excerpts from Apple technical expert on Siri
patents).
The three heavily redacted documents Apple produced after months of delay
establish the existence and importance of hundreds of documents from Apples litigation
with Samsung over Apples Siri patent that are not only probative but contain Apple
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judicial admissions that go to the heart of certain damages issues in this case. For
example, in addition to an unknown number of documents produced, Apple put forth at
least two experts and three fact witnesses that testified in declarations, depositions,
hearings, and trial about Siris value and Siris importance to Apple in its global
competition for market share against Samsungs Android-operated mobile devices.
Those witnesses and the subject of their testimony include the following:

Apples damages expert, Dr. Vellturo, testified that during the time period
around RPI and Apples hypothetical negotiation (the period leading up to
the iPhone 4S launch in October 2011), the smartphone marketplace was
at a critical inflection point

ee Ex. 18, 5, 1764; Ex. 19, 1071. He

also testified about
(see Ex. 18, 78, 13, 44, 49; Ex. 19, 96106), and
calculated reasonable royalties for Apple patents covering Siri (see Ex. 20,
7983, 192206, 330433);

Apples technical expert for its asserted Siri patents, Dr. Polish, testified
that the speech recognition function of Siri is not as important to customer
demand as Siris ability to find information a user seeks (see Ex. 18,
99101; Ex. 21, pp. 15458);

Apples marketing expert, Dr. Hauser,

(see Ex. 20, 164, 25588, citing

Hauser testimony);

Mr. Joswiak, Apples worldwide Vice President for iPhone Product

Marketing, testified about
ee Ex.
18, 100; Ex. 20, 195, 356, 363, citing Joswiak testimony);

Mr. Sinclair, an Apple Product Marketing Manager for iPhone, testified that

(see Ex. 18, 7, 10, 42, 44, citing Sinclair

testimony).

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Apart from Dr. Vellturos redacted reports, Apple has not produced any of the
evidence it usedand the district court relied upon5to establish Siris value to Apple.
B.

Apples Valuation of Siris Impact on Revenue, Profit, Smartphone / Mobile

Operating System Market Share, and Siri Marketing Strategy
Apple has not only refused to produce the specific evidence it relied upon to

establish Siris value to Apple in its case against Samsung, it has virtually not produced
any document, interrogatory response, or witness with information showing how Apple
values Siri. See Ex. 42 (Email between counsel dated May 20, 2014); see also Gasser
Decl. 41, 47. Apple has spent in the neighborhood of $

to acquire and build-

out Siri, yet it has repeatedly asserted in this litigation that such documents do not exist.
Id. These claims are not credible, particularly in light of the fact that Apple had little
difficulty producing documents and witnesses establishing Siris value when it sued
Samsung. Thus, Apple should produce documents that tie Siris contribution to the
general financial information Apple did produce, including the specific information RPI
has requested (see supra at 56, listing the specific discovery requests directed to Siris
value).
Apples discovery intransigence on these issues is best illustrated in the 30(b)(6)
deposition RPI took of Allen Denison, Apples Senior Product Manager for iOS
The deposition occurred on August 6, 2014two weeks
after the July 22, 2014 telephonic hearing with the Court when RPI sought leave to file
this motion. That Mr. Denison was unprepared to testify on the topics for which he had

See Ex. 40 at 6585 (order granting preliminary injunction based on Apples Siri patent
only, and the importance of first-time purchasers in the smartphone market). Although
the Federal Circuit reversed the preliminary injunction order, it first ratified the key
findings of the district court that matter in this case. Apple v. Samsung, 695 F.3d 1370,
137576 (Fed. Cir. 2012).
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(table of citations to Apple objections and Mr. Denisons response). Mr. Denisons
testimony did not provide any meaningful information to RPIbut instead consisted of
questions, disruptive objections, and non-responses keyed to counsels objection.
A corporation has an affirmative duty to prepare the designee to the extent
matters are reasonably available, whether from documents, past employees, or other
sources." Rahman v. Smith & Wollensky Rest. Group, Inc., 2009 U.S. Dist. LEXIS
30275, at *5 (S.D.N.Y. Mar. 18, 2009) (quoting Tailored Lighting, Inc. v. Osram Sylvania
Prods., Inc., 255 F.R.D. 340, 2009 WL 367584, at *7 (W.D.N.Y. 2009)). The case law in
the Second Circuit and nationally makes it abundantly clear that [t]he production of an
unprepared witness as a 30(b)(6) representative is tantamount to a failure to appear for
the ordered deposition. Adrian Shipholding, Inc. v. Lawndale Group S.A., 2012 U.S.
Dist. LEXIS 4234, at *2627 (S.D.N.Y. Jan. 13, 2012) (citations omitted).6 See also
Starlight Intl Inc. v. Herlihy, 186 F.R.D. 626, 638-640 (D. Kan. 1999) (corporations have
a duty to designate knowledgeable 30(b)(6) witnesses and to prepare them to fully and
unevasively answer questions about the designated subject matter); King v. Pratt &
Whitney, 161 F.R.D. 475, 476 (S.D. Fl. 1995) (same). As the Samsung case illustrates,
Apple knows which of its employees have knowledge and how to prepare them to testify
about the value of Siri and Apples marketing strategy for Siri.

While there is limited in-district case law on this subject, the origin of the quotation,
and seminal case on the duty to instruct and prepare a witness for a 30(b)(6)
deposition, is United States v. Taylor, 166 F.R.D. 356, 36063 (M.D.N.C. 1996). This
case outlines the history and purpose of Rule 30(b)(6), and makes it clear that such
purpose is essentially to prevent exactly what Apple has done. Courts in every circuit
except the Federal Circuit, which defers to the law of regional circuits on evidentiary
questions not unique to its jurisdiction, have endorsed this case and its holding.
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C.

Apples Agreements with Nuance and Other Third-Parties Related to Siris

NL or Speech Recognition Technology

See Ex. 23 (Stasior

Dep. 46:1115; 84:39).

See Ex. 24 (Email from P. Oppenheimer to S. Forstall

APL-DynAdv_00099576-78).
(see Ex. 23 (Stasior Dep.
27:2429:3))

that information is relevant to RPIs

patent damages.

Georgia Pacific factor

two: the rates paid by the licensee for the use of other patents comparable to the
patent-in-suit.
Apple contends, ipse dixit, that speech to text agreements and licenses are not
comparable licenses and has refused to produce such information. But precisely
because Apple refuses to produce any speech to text documents or agreements, no
one knows whether such licenses are comparableor whether they are probative to
any other reasonable royalty or hypothetical negotiation issue. See Ex. 25 (Email from

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Apple counsel declining RPIs request for speech agreements stating, [w]e reiterate our
position that this case is about NLP technology and that is what defines the scope of
relevant information.).
Apples document requests to RPI specifically define Relevant Patents to
include speech to text patentsand that definition further reveals Apples concession
that speech to text technology is comparable to RPIs patent technology:
patents or patent applications, other than the patent-in-suit or related
patents/applications, relating to speech to text, natural language
processing technology, or any other technology that is comparable
to that claimed in the patent-in-suit.
Ex. 26 (Apples First Requests for Production Requests to RPI at 3) (emphasis added).
Apple used that definition of Relevant Patents in numerous document requests, email
requests, and 30(b)(6) notices served on RPI. Gasser Decl. 2930.
Moreover,

See, e.g., Ex. 27

and Ex. 28
.7
Apple cannot selectively produce
. Because this information
is relevant and discoverableand particularly because Apple has conceded and even

Apple also proposed and consented to defining speech processing as relevant and
comparable to NLP when defining the scope of the Protective Orders prosecution bar.
The Order specifically defines Affected Technologies as, computer-implemented
methods or systems for natural language processing technology, speech processing
technology, or intelligent personal assistant technologies that provide natural
language processing or speech processing features. (Dkt. 55, Agreed Protective
Order, 1(j), 5(b); emphasis added.)
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Tomatoes and restaurant reservation service OpenTable, will be helping

to power Apple's Siri, the voice-activated iPhone personal assistant, in the
new mobile operating system iOS6. The relationship between Apple and
Yelp illustrates the power struggle over how people find what they are
looking for on the Internet. Much more than just a clever feature, Siri is
emerging as a key tool for what some in the industry call "casual
search" - quickly finding routine information such as a restaurant
location. This can bypass Google and other traditional search
engines. That serves the interests of Apple, which sees an
opportunity to muscle in on its rival's core business and build
related advertising revenue.
Ex. 30 (Reuters, With Siri and New Alliances, Apple takes on Google search).

Siri
is Apples window through which users access these partner sites. Apples agreements
with such partners like Yelp, OpenTable, Rotten Tomatoes, and Fandango are potential
income streams to Apple (through advertising revenue, transaction fee sharing, or
mobile search market share), which further informs the value of Siri, and thus any
reasonable royalty analysis of Apples infringement.
E.

Apples Agreements with Automobile Manufactures Advertising Siri

RPIs requests to Apple cover any agreements, including license agreements,

between Apple and makers or sellers of non-Apple products. Ex. 6 (Apple Resp.to RFP
91 at 19). Non-limiting examples from RFPs include: General Motors (Id. at RFP 9091,
9495 at 1718; 24), iOS in the Car (Id. at RFP 91 at 19), and Siri: Eyes Free. (Id.)
Apple claims that
Ex. 31 (Email
from C. Chang dated July 29, 2014). This claim strains credibility because CarPlay
exists.
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Case 1:13-cv-00633-DEP Document 124 Filed 08/22/14 Page 24 of 31

Ex. 23 (Stasior Dep. 49:721).

Id. at 49:1525; 50:1852:8. Apples marketing behavior is far more consistent

with

than Changs assertion. Apples CarPlay webpage features Siri,

as does the product itself, which is designed to be used without touching the iPhone.
See Ex. 32 (Apple CarPlay, https://www.apple.com/ios/carplay). Apples webpage
states that five car manufacturers (Ferrari, Honda, Hyundai, Mercedes-Benz, and Volvo)
will have CarPlay available in models in 2014, while 24 additional committed partners
will have CarPlay on future models.

More likely,
Apple possesses but is withholding such agreementspossibly because these
agreements refer to the use of the iOS system or CarPlay rather than the use of Siri
technology per se. But any agreements between Apple and automobile manufacturers
regarding CarPlay are responsive to RPIs discovery requests regarding agreements
with makers and sellers of non-Apple products (including RFPs 91, 9496) and must be
produced. These agreements are relevant to at least Georgia-Pacific factor eleven: The
extent to which the infringer has made use of the invention; and any evidence probative

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Case 1:13-cv-00633-DEP Document 124 Filed 08/22/14 Page 25 of 31

of the value of that use. 318 F. Supp. at 1120. The terms and conditions of such
agreements could inform an experts analysis of the extent to which Apple and third
parties use Siri and its NLPas well as the value of such use.
F.

Apples Internal Licenses Related to Siri

RPI properly served document requests and interrogatories seeking information

concerning Apple internal licenses (license between two Apple entities) related to Siri or
its technology, including at least RFPs 91109, which broadly cover all internal or
external licenses or acquisitions including as a party, or any values given or received by
Apple and/or its subsidiaries relating to Siri or any natural language interface
technology. See supra pp. 1619. Apple has refused to produce or provide any
documents or interrogatory responses responsive to RPIs discovery requests regarding
internal licenses. See Gasser Decl. 2832; 38.
Counsel for Plaintiff previously tried to resolve this issue through its email, dated
June 23, 2014, requesting that Apple confirm

(e.g., APL-DynAdv_00092873-96949) upon

which Apple will rely for apportionment. See Ex. 11 (Apples Resp. to Interrogatory No.
21 at 911).

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Case 1:13-cv-00633-DEP Document 124 Filed 08/22/14 Page 26 of 31

Apple first claimed that

. See Ex. 33 (Email from C. Chang dated June 26, 2014). Apple now more
generally states

See Ex. 31

(Email from C. Chang dated July 29, 2014). Given Apples practice of defining relevant
responsive documents so narrowly, we request that the Court order Apple to produce all
internal licenses within the above four categories, as well as any internal license
documents embodying or relating to: (5) patents on NLP and virtual assistant
technology assigned to Apple and containing the terms virtual assistant, intelligent
assistant, or digital assistant; (6) the universal search patent asserted against
Samsung that Apple attributed to Siri in collateral litigation; and (7) any international or
foreign counterparts to the above.
Apple is known to have financial arrangements concerning IP interests with at
least its own foreign subsidiaries. In 2013, the U.S. Senate Permanent Subcommittee
on Investigations found that Apple regularly assigns economic rights in its IP to two of
its Irish subsidiaries, Apple Operations International and Apple Sales International.
Ex. 34 (Levin Memorandum dated May 21, 2013 at 17, DA 0011077). An adequate
response to Plaintiffs RFP 83 would include, at a minimum, the documents Apple
provided to the Senate investigation Committee. An adequate response to the other
requests would require all documents showing the specific arrangements between
Apple and its subsidiaries with respect to assigning economic rights to its IP, including
cost sharing agreements. Even if not a license such agreements reflect a measure of
the value of Apples IP, including Siri-related IP.

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Case 1:13-cv-00633-DEP Document 124 Filed 08/22/14 Page 27 of 31

Internal Apple licenses from one entity to another are potentially important data
points in a reasonable royalty analysis. See, e.g., Mars, Inc. v. Coin Acceptors, Inc., 527
F.3d 1359, 137374 (Fed. Cir. 2008) (finding no error where district court considered,
and ultimately decided upon a rate exceeding, the rate contemplated by an intra-firm
license); Johns-Manville Corp. v. Guardian Indus. Corp., 718 F. Supp. 1310, 1315 ( E.D.
Mich. 1989) (characterizing intra-firm licenses as a logical analytical floor for the
running royalty damages component), affd 1991 U.S. App. LEXIS 1075 (Fed. Cir. Jan.
24, 1991). Such licenses are also relevant to ascertain the extent of Apples discovery
obligations. See W.L. Gore & Assocs. v. AGA Med. Corp., 2012 U.S. Dist. LEXIS 4942,
at *45 (D. Del. Jan. 17, 2012) (granting limited jurisdictional discovery to determine
identity and control of, and thus jurisdiction over, purported infringer). Licenses to third
parties outside the U.S. are relevant and discoverable; baseless objections to such
discovery, even if routine, are sanctionable. See, e.g., High Point Sarl v. Sprint Nextel
Corp., 2011 U.S. Dist. LEXIS 83126, at *1516 (D. Kan. July 29, 2011) (granting motion
to compel licensing communications with foreign third parties) and 2011 U.S. Dist.
LEXIS 101700 (sanctioning High Point for its objection). The use of foreign patent
licenses under the Georgia-Pacific framework dates back to Georgia-Pacific itself. See
Georgia-Pacific Corp., 318 F. Supp. 1116 at 1139 (evaluating three foreign licenses and
holding that foreign licenses were consistent with patentees policy of reserving its
exclusive rights to sell products where it was in the market). Indeed, such patents may
provide value precisely because they are not entered into under the threat of U.S.
patent litigation. See Johnson & Johnson Vision Care, Inc. v. Ciba Vision Corp., 712 F.
Supp. 2d 1285, 1289 (M.D. Fla. 2010). Moreover, since Apple intends to rely upon

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Case 1:13-cv-00633-DEP Document 124 Filed 08/22/14 Page 28 of 31

foreign patents for apportionment, investigation of foreign licenses is essential to

Plaintiffs apportionment analysis. Such licenses are also relevant to ascertain the
extent of Apples discovery obligations. See Golden Trade v. Lee Apparel Co., 143
F.R.D. 514, 525 (S.D.N.Y. 1992) (holding that rights under a foreign license agreement
oblige licensor to secure documents from its licensees patents agents).
G.

Apples Deferred Revenue Accounting Related to Siri

As a result of significant additions to Apples offerings of software upgrade rights

and non-software services such as Siri, Apple expects about a $900 million sequential
increase in the net amount of revenue deferred. See Ex. 35 (Apples 2013 Q4 Earnings
Call Tr. at 8, RPI000817490;
Significantly,

(id. at 116:1423)
(id. at 112:11113:11).
(id. at
113:511)
See id. at 114:419.
Yet in response to an interrogatory seeking information regarding revenue Apple
defers from sales of products containing Siri, how Apple calculates a per-unit selling
price if Siri were regularly sold by Apple as a stand-alone product or service, and
Apples best estimates of its selling price (ESP), Apple (1) reiterated stock objections;
(2) ignored the request regarding deferred revenue;

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Case 1:13-cv-00633-DEP Document 124 Filed 08/22/14 Page 29 of 31

Case 1:13-cv-00633-DEP Document 124 Filed 08/22/14 Page 30 of 31

Date: August 15, 2014

Respectfully submitted:

Nicholas Mesiti (102192)

HESLIN ROTHENBERG FARLEY &
MESITI
5 Columbia Cir.
Albany, New York 12203
(518) 452-5600 (telephone)
(518) 452-5579 (facsimile)
nm@hrfmlaw.com

/s/ Paul J. Skiermont

Paul J. Skiermont (107001)
G. Donald Puckett
Donald E. Tiller (107002)
Alexander E. Gasser (603023)
Shellie Stephens (107164)

Counsel for Plaintiff

Rensselaer Polytechnic Institute
James R. Muldoon (506772)
HARRIS BEACH PLLC
333 W. Washington Street
Suite 200
Syracuse, New York 13202
(315) 423-7100 (telephone)
(315) 422-9331 (facsimile)
jmuldoon@harrisbeach.com
Steven P. Nonkes (517931)
HARRIS BEACH PLLC
99 Garnsey Road
Pittsford, New York 14534
(585) 419-8800 (telephone)
(585) 419-8813 (facsimile)
snonkes@harrisbeach.com
Counsel for Plaintiff
Dynamic Advances, LLC

SKIERMONT PUCKETT LLP

2200 Ross Avenue, Suite 4800W
Dallas, Texas 75201
(214) 978-6600 (telephone)
(214) 978-6601 (facsimile)
paul.skiermont@skiermontpuckett.com
don.tiller@skiermontpuckett.com
alex.gasser@skiermontpuckett.com
Counsel for Plaintiffs
Rensselaer Polytechnic Institute and
Dynamic Advances, LLC

Case 1:13-cv-00633-DEP Document 124 Filed 08/22/14 Page 31 of 31

CERTIFICATE OF SERVICE
I hereby certify that, on August 15, 2014, a true and correct copy of the foregoing
document, PLAINTIFFS MOTION TO COMPEL DISCOVERY FROM DEFENDANT
APPLE, INC. was served on the following counsel of record via one or more of the
following: the individual email addresses set forth below, the Courts regular ECF filing
procedures, and counsels provided list service address:
Apple-DynamicAdvancesService@fenwick.com.

Mitchell J. Katz (301057)

MENTER, RUDIN & TRIVELPIECE, P.C.
308 Maltbie Street Suite 200
Syracuse, New York 13204-1498
(315) 474-7541 (telephone)
(315) 474-4040 (facsimile)
mkatz@menterlaw.com

David M. Lacy Kusters

Ryan J. Marton
FENWICK & WEST LLP
555 California Street, 12th Floor
San Francisco, California 94104
(415) 875-2300 (telephone)
(415) 281-1350 (facsimile)
tcorbin@fenwick.com
dlacykusters@fenwick.com
rmarton@fenwick.com
Hector J. Ribera
William A. Moseley, Jr.
Joe D. Hadden
Carolyn Chang
FENWICK & WEST LLP
Silicon Valley Center
801 California Street
Mountain View, California 94041
(650) 988-8500 (telephone)
(650) 938-5200 (facsimile)
hribera@fenwick.com
wmoseley@fenwick.com
dhadden@fenwick.com
cchang@fenwick.com
/s/ Paul J. Skiermont
Paul J. Skiermont