Case 1:13-cv-00633-DEP Document 150 Filed 09/17/14 Page 1 of 10

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF NEW YORK

RENSSELAER POLYTECHNIC
INSTITUTE, et al.,
[REDACTED VERSION]
Plaintiffs,

Civil Action No.

1:13-CV-0633 (DEP)

v.
APPLE INC.,
Defendant.

APPEARANCES:

OF COUNSEL:

FOR PLAINTIFFS:
SKIERMONT PUCKETT LLP
2200 Ross Avenue
Suite 4800W
Dallas, TX 75201

PAUL J. SKIERMONT, ESQ.

HESLIN ROTHENBERG FARLEY

& MESITI P.C.
5 Columbia Circle
Albany, NY 12203

NICHOLAS MESITI, ESQ.

HARRIS BEACH PLLC

333 West Washington Street
Suite 200
Syracuse, NY 13202

JAMES R. MULDOON, ESQ.

Case 1:13-cv-00633-DEP Document 150 Filed 09/17/14 Page 2 of 10

FOR DEFENDANT:
FENWICK & WEST LLP
555 California Street
12th Floor
San Francisco, CA 94101

J. DAVID HADDEN, ESQ.

CAROLYN CHANG, ESQ.

MENTER, RUDIN
& TRIVELPIECE, P.C.
308 Maltbie Street
Suite 200
Syracuse, NY 13204

MITCHELL J. KATZ, ESQ.

DAVID E. PEEBLES
U.S. MAGISTRATE JUDGE
ORDER
Currently pending before the court in connection with this action are
cross-motions, both of which were filed on August 15, 2014, principally
addressing discovery and, in the case of defendant's motion, also
requesting an order limiting the number of asserted patent claims to be
presented to the jury at trial. Dkt. Nos. 117, 118. Oral argument was held
with respect to the parties' cross-motions on September 10, 2014. During
the hearing held on that date, I made various oral rulings concerning the
motions. Based upon the parties' submissions and oral arguments and the
court's bench decision, which is incorporated herein by reference, it is
hereby
ORDERED as follows:
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(1)

The motion filed by defendant Apple, Inc. ("Apple") to compel

discovery and limit the number of claims asserted in this action (Dkt. No.
117) is GRANTED in part, and DENIED in part.
(2)

Defendant's request that the court limit the number of claims

asserted by the plaintiffs in this action is DENIED. The court does,

however, believe that a narrowing of the issues in this case could be
beneficial and lead to more efficient case management, and thus
encourages the parties to meet and confer at an appropriate juncture with
an eye toward reducing the number of asserted claims and prior art
references to be presented at trial.
(3)

Addressing defendant's motion to compel discovery, the court

finds that Dynamic Advances, LLC ("Dynamic Advances"), has control

over documents and information within IP Navigation Group's ("IP
Navigation") possession, custody, or control relating to this litigation.
Accordingly, all responses by Dynamic Advances to defendant's discovery
demands must include responsive, non-privileged documents and
information within the possession, custody, or control of IP Navigation,
including but not limited to the following:
(a)

Documents regarding valuations of, any analyses of, or

any negotiations with Rensselaer Polytechnic Institute ("RPI")

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regarding the patent-in-suit, including but not limited to (i) any

documents or communications relating to or reflecting any analysis
of RPI's patent portfolio by Patent Calls, Inc.,; and (2) identification of
potential targets of the patent-in-suit or expected return on the
patent-in-suit.
(b)

Documents regarding Dynamic Advances' or IP

Navigation's efforts to license or otherwise transfer any rights to the

patents-in-suit or valuation or analysis of the patented technology,
including but not limited to (i) any communications with Samsung,
LG, or any other entity; or (ii) any evaluation or analysis conducted
by Dr. Selmer Bringsjord..
(c)

Documents relating to Marathon Patent Group's

acquisition of Dynamic Advances, including but not limited to (i) term

sheets, (ii) litigation evaluations, and (iii) any documents relating to
the negotiations that reflect any analysis or valuation of the patentin-suit.
(4)

The foregoing paragraph includes e-mail communications of

Erich Spangenberg and Dierdre Leane. The parties are directed to meet
and confer and agree upon a protocol to be utilized in searching the e-mail
accounts of Mr. Spangenberg and Dr. Leane for the existence of relevant,
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non-privileged documents by September 17, 2014. The search, review,

and production of documents from those individuals' e-mail accounts must
be completed by October 1, 2014.
(5)

No costs or attorney's fees are awarded to any party in

connection with defendant's motion, including those that would otherwise

be awardable under Rule 37(a)(5) of the Federal Rules of Civil Procedure.
(6)

Plaintiffs' motion to compel discovery (Dkt. No. 118) is

GRANTED in part, and DENIED in part.

(7)

Plaintiffs are hereby granted leave to conduct a further

deposition of Scott Denison, or such other witness as defendant

designates, pursuant to Rule 30(b)(6) of the Federal Rules of Civil
Procedure. The parties are directed to confer regarding the topics to be
addressed in the 30(b)(6) deposition. Apple shall properly prepare and
produce a witness to testify regarding the agreed-upon topics, which shall
include but not be necessarily limited to marketing, marketing plans,
market research, consumer research or surveys and market analyses
relating to Siri, the value of Siri, and any competitive analysis of Siri with
competing natural language processing technology or comparing one
version of Siri to another. This ruling is without prejudice to plaintiffs' right
to request the production of a Rule 30(b)(6) witness to address other
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relevant topics.
(8)

Defendant is directed to pay all reasonable expenses,

including reasonable attorney's fees, incurred by plaintiffs as a result of the

failed Denison deposition. Those expenses include those incurred in
preparing and arguing plaintiffs' motion to compel discovery (Dkt. No.
118), subject to reasonable apportionment.
(9)

In accordance with the foregoing paragraph, within fourteen

days of the date of this order, plaintiffs shall prepare and submit to the
court a proper fee application that includes adequate evidentiary support
in accordance with the law of this circuit. Defendant will thereafter have
seven days from the date of filing of that application to object to the
amounts sought by plaintiffs.
(10) The time spent by plaintiffs' counsel deposing Denison on
August 6, 2014, shall not count toward plaintiffs' seventy-hour total
deposition time limit as set forth in this court's text minute entry dated
February 13, 2013, in Civil Action No.1:12-CV-1579.
(11) Plaintiffs' motion to compel defendant to produce information
generated in connection with the Apple Inc. v. Samsung litigation is
GRANTED in part. Specifically, Apple shall provide a full and complete
production of all documents and information from Apple Inc. v. Samsung
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Elecs. Co., Ltd., No. 12-CV-0630 (N.D. Cal. filed Feb. 8, 2012), regarding
the value and importance of Siri to Apple. That production shall include all
pleadings, motion papers, documents, responses to interrogatories, and
other discovery requests, damages and marketing expert reports and
exhibits thereto, expert and fact witness testimony (declarations,
deposition, hearing, and trial), produced or presented by Apple that relate
to or reflect the value and/or significance of Siri and its constituent
technologies, including its importance to Apple's financial and marketing
position vis--vis other smartphone and mobile operating system
providers. This also includes but is not limited to full and complete copies
of all Dr. Vellturo reports, exhibits, declarations, and testimony, as well as
full and complete copies of all Dr. Hauser reports, exhibits, declarations,
and testimony. The foregoing materials identified in this paragraph should
be produced without redactions, and specifically with complete,
unredacted copies of all exhibits and evidence referred to therein. Apple
shall also produce all testimony (declarations, deposition, and trial) related
exhibits, deposition testimony, and documents from Dr. Polish, Mr.
Joswiak, and Mr. Sinclair.
(12) To the extent any of the information covered by this order is
subject to third-party obligations of confidentiality, such information shall
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nonetheless be produced by Apple to plaintiffs' counsel by September 30,

2014, and to the extent third-party consent has not been obtained to
produce the documents covered by this order, such documents shall
nonetheless be produced under the designation of at least confidentialoutside attorneys' eyes only, and such third-party documents and
information shall be otherwise subject to the terms of the protective order
in effect in this action.
(13) Plaintiffs' motion to compel Apple to produce all internal
documents and information reflecting Apple's assessment of Siri's value is
GRANTED. Apple is hereby directed to produce all non-privileged
documents within its possession, custody, or control regarding the value of
Siri, including documents related to the acquisition of Siri and documents
created subsequent to acquisition that reflect the value of Siri to Apple.
(14) Plaintiffs' motion to compel the production of speech
recognition agreements entered into by Apple is GRANTED. Apple shall
produce all documents within its possession, custody, or control between
Apple and any third-party, including though not limited to Nuance, relating
to the use of speech processing technology.
(15) Plaintiffs' motion to compel the production of Siri Partner
Agreements is DENIED.
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(16) Plaintiffs' motion to compel the production of agreements

between Apple and automobile manufacturers is DENIED.
(17) Plaintiffs' motion to compel the production of Apple's internal
licenses covering Siri technology is DENIED, without prejudice, as moot.
(18) Plaintiffs' motion to compel information regarding Apple's
Deferred Revenue and Estimated Selling Price (ESP) related to Siri is
GRANTED. Apple shall produce all non-privileged documents sufficient to
show the cost of Siri used to calculate the ESP for non-software services,
as referenced in paragraph (4) of the declaration of Mark Buckley (Dkt.
No. 127-2), for the time period beginning whenever Apple began making
such calculations through to the present.
(19) All productions required under this order shall occur by
October 15, 2014, unless otherwise directed or mutually agreed between
the parties.
(20) In light of the obligations imposed in this order, the following
deadlines are hereby extended:
Event
Fact Discovery
Opening Expert Reports
Rebuttal Expert Reports
Close of Expert Discovery
Dispositive Motion Filing Deadline

New Deadline
October 30, 2014
November 13, 2014
December 15, 2014
January 15, 2015
February 16, 2015

(21) Having determined that the parties' interests in maintaining the

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confidentiality of the redacted information outweighs the public's First

Amendment right of access to this order as a judicial document, the
original of this order shall be filed under seal. A redacted version of this
order shall also be filed by the clerk and will be publicly available through
CM/ECF and PACER.

Dated:

September 17, 2014

Syracuse, NY

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