Case 5:15-cv-02008-EJD Document 85-6 Filed 04/13/16 Page 1 of 4
`
`
`
`EXHIBIT 4
`
`
`
`
`
`
`
`DECLARATION OF MELODY DRUMMOND HANSEN
`IN SUPPORT OF DEFENDANT APPLE INC.’S MOTION
`TO PRECLUDE RELIANCE ON CERTAIN
`INVENTION DATES AND TO STRIKE CERTAIN ALLEGATIONS
`Case No. 5:15-CV-02008-EJD
`
`

`
`Case 5:15-cv-02008-EJD Document 85-6 Filed 04/13/16 Page 2 of 4
`
`
`
`
`
`
`February 2, 2016
`
`VIA-EMAIL
`
`Elizabeth A. Niemeyer
`FINNEGAN, HENDERSON, FARABOW,
`GARRET & DUNNER, LLP
`901 New York Avenue, NW
`Washington, D.C. 20001-4413
`Tel (202) 408-4000
`elizabeth.niemeyer@finnegan.com
`
`Re: OpenTV, Inc. et al. v. Apple Inc., No. 5:15-cv-02008-EJD
`
`Dear Elizabeth:
`
`We write regarding deficiencies in OpenTV’s objections and responses to Apple’s First
`Set of Interrogatories (Nos. 1-16) and First Set of Requests for Production (Nos. 1-153), served
`November 23, 2015. Apple’s review of OpenTV’s objections and responses remains ongoing,
`and this is not an exhaustive list. Apple reserves the right to address other deficiencies at a later
`time.
`
`OpenTV’s Responses to Interrogatory Nos. 8, 9, and 13
`
`Apple’s Interrogatory No. 8 seeks information regarding the circumstances surrounding
`the conception and reduction to practice of the inventions claimed in each OpenTV Asserted
`Patent, including acts of diligence in reducing the claimed inventions to practice. OpenTV refers
`to documents numbered OPENTV2008-00008615 - OPENTV2008-00009148 for “additional
`information regarding the conception of the asserted claims.” Please confirm that these
`documents represent a complete production of all evidence that OpenTV intends to rely on to
`support the alleged conception dates of the OpenTV Asserted Patents.
`
`OpenTV’s response to Apple’s Interrogatory No. 8 is deficient for at least the following
`reasons.1 First, OpenTV states that the claimed invention of the ’736 patent was constructively
`
`
`1 Because the Court has dismissed all asserted claims of the ’081 and ’429 patents (Dkt. No. 72), we are not
`including in this letter the deficiencies in OpenTV’s responses with respect to those patents, but Apple reserves all
`rights to address such deficiencies at a later time if needed.
`
`
`
`

`
`Case 5:15-cv-02008-EJD Document 85-6 Filed 04/13/16 Page 3 of 4
`
`February 2, 2016 - Page 2
`
`
`
`
`reduced to practice by February 8, 1996, which is the filing date of the application to which
`the ’736 patent claims priority. But OpenTV does not include any information about a
`conception date or actual reduction to practice, and does not describe any diligence in reducing
`the claimed invention to practice. Please confirm that OpenTV does not allege any conception
`date for the ’736 patent earlier than February 8, 1996, and does not allege any actual reduction to
`practice of the claimed invention. Please also confirm that OpenTV is not withholding any
`information related to conception or diligence on the basis of privilege.
`
`Second, OpenTV states that the claimed invention of the ’169 patent was conceived at
`least as early as June 2001, and was constructively reduced to practice by April 19, 2002, which
`is the filing date of the provisional application to which the ’169 patent claims priority. However,
`OpenTV describes no circumstances nor identifies any documents relating to diligence in
`reducing the claimed invention to practice between June 2001 and April 19, 2002. Please
`confirm that OpenTV will supplement its response to provide a description of any diligence and
`identify by production number any documents OpenTV contends relate to conception or
`diligence for the claimed invention of the ’169 patent. Please also confirm that OpenTV is not
`withholding any information related to conception or diligence on the basis of privilege.
`
`Third, OpenTV states that the claimed invention of the ’740 patent was constructively
`reduced to practice by May 28, 2003, which is the filing date of the Swiss application to which
`the ’429 claims priority. But OpenTV does not include any information about a conception date
`or any actual reduction to practice, and does not describe any diligence in reducing the claimed
`invention to practice. Please confirm that OpenTV does not allege any conception date for
`the ’740 patent earlier than May 28, 2003, and does not allege any actual reduction to practice of
`the claimed invention. Please also confirm that OpenTV is not withholding any information
`related to conception or diligence on the basis of privilege.
`
`Interrogatory No. 9 seeks information concerning objective evidence and secondary
`considerations that OpenTV may rely on to show that the claimed inventions are not obvious
`under 35 U.S.C. § 103. In response, OpenTV merely recites the presumption of non-obviousness,
`and states that Apple’s accused products have enjoyed commercial success. If OpenTV currently
`has in its possession evidence on which it intends to rely regarding objective evidence and
`secondary consideration of non-obviousness, OpenTV must provide that evidence now and
`cannot wait until the deadlines for expert reports. Please confirm that OpenTV has produced all
`evidence of secondary considerations or objective evidence of non-obviousness currently in
`OpenTV’s possession, including any evidence that rebuts such secondary considerations.
`
`Interrogatory No. 13 seeks information regarding license agreements relating to the
`OpenTV Asserted Patents and all other license agreements OpenTV considers comparable.
`OpenTV’s response fails to identify any agreements and instead invokes FRCP 33(d). This is
`improper where, as here, OpenTV has produced no license agreements or other documents
`responsive to this request and where OpenTV has not agreed to produce documents in response
`to Apple’s related document requests. For example, in response to Apple’s Request for
`Production No. 15 seeking documents identifying third parties who have licensed the OpenTV
`
`
`
`

`
`Case 5:15-cv-02008-EJD Document 85-6 Filed 04/13/16 Page 4 of 4
`
`February 2, 2016 - Page 3
`
`
`
`
`Asserted Patents and Related Patents, OpenTV states only that it will “meet and confer with
`Apple to determine the proper scope, if any, for a search of documents responsive to this request.”
`Please confirm that OpenTV will supplement its response to this interrogatory to identify all
`licenses relating to the Asserted Patents and Related Patents and all third parties who have
`licensed the Asserted Patents and Related Patents.
`
` OpenTV’s Responses to Requests for Production
`
`OpenTV’s objections to Apple’s Requests for Production Nos. 1-153 are deficient at least
`because they do not comply with Fed. R. Civ. P. 34(b)(2)(C), which requires that “[a]n objection
`must state whether any responsive materials are being withheld on the basis of that objection.”
`None of OpenTV’s objections state whether any responsive materials are being withheld. Please
`confirm that OpenTV will immediately supplement its objections and responses to Apple’s
`Requests for Production Nos. 1-153 to comply with Fed. R. Civ. P. 34(b)(2)(C).
`
`OpenTV refuses to search for or produce documents responsive to Apple’s Requests for
`Production Nos. 27, 31, 35, 137, and 141, which seek documents related to the Kudelski Group.
`The documents requested are relevant to the claims and defenses at issue in this action at least
`because OpenTV devotes numerous paragraphs of its complaint to alleging facts regarding the
`Kudelski Group and alleges that “Apple would be aware of a prominent portfolio such as that of
`The Kudelski Group, as this portfolio is well-known in the industry.” See, e.g., Complaint at 4-
`8, 11, 14, 17, 19, 21, 23. Please confirm that OpenTV will produce documents responsive to
`Apple’s Requests for Production Nos. 27, 31, 35, 137, and 141.
`
`In response to Apple’s Requests for Production Nos. 15-17, 24-26, 28-30, 32-34, 45, 74,
`80, 88, 96, 104, 112, 128-136, 138-140, 142-144, and 149, OpenTV responds that it will meet
`and confer with Apple to determine the proper scope for a search of responsive documents.
`OpenTV’s objections that these requests are overly broad and unduly burdensome because they
`seek information that is irrelevant, immaterial, not related to any claim or defense, and/or not
`reasonably calculated to lead to the discovery of admissible evidence are without merit. The
`documents requested are relevant to the claims and defenses at issue in this action, including at
`least OpenTV’s requests for damages and an injunction and Apple’s potential defenses.
`
`Please provide your availability for a telephonic meet and confer on Monday, February 8,
`through Thursday, February 11, regarding OpenTV’s responses and the deficiencies identified
`above.
`
`
`
`
`
`
`
`
`
`Sincerely,
`
`/s/ Jay Choi
`Jay Choi
`for O’Melveny & Myers