Case 5:15-cv-02008-EJD Document 85-8 Filed 04/13/16 Page 1 of 4
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`EXHIBIT 6
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`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
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`Case 5:15-cv-02008-EJD Document 85-8 Filed 04/13/16 Page 2 of 4
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`March 4, 2016
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`VIA-EMAIL
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`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
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`Re: OpenTV, Inc. et al. v. Apple Inc., No. 5:15-cv-02008-EJD: Discovery
`Meet and Confer Follow-Up
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`Dear Elizabeth:
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`I write to follow up on certain topics discussed in the parties’ discovery meet and confer
`on February 11, 2016.
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`OpenTV’s Responses to Apple’s Interrogatories
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`Interrogatory No. 8—Conception and Reduction to Practice of Claimed Inventions
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`Apple’s February 2, 2016 letter identified a number of deficiencies with OpenTV’s
`response regarding conception and reduction to practice of the inventions claimed in OpenTV’s
`asserted patents.
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`For the ’169 Patent, OpenTV identified a conception date “as early as June 2001,” but did
`not describe the conception, identify any documents supporting that conception date, or describe
`or identify any documents relating to diligence in reducing the claimed invention to practice. On
`our call, OpenTV indicated that it was basing the June 2001 conception date on privileged
`documents that OpenTV has not produced. OpenTV indicated that it would tell Apple in the
`“next few weeks” whether it would rely on those privileged documents and assert the June 2001
`date. It has now been three weeks since our call and OpenTV has had Apple’s invalidity
`contentions for three months, but OpenTV has still failed to provide this critical information.
`Apple requests that no later than March 11, OpenTV supplement its response to Interrogatory
`No. 8, including to (a) confirm whether OpenTV will rely on a conception date of June 2001, and
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`Case 5:15-cv-02008-EJD Document 85-8 Filed 04/13/16 Page 3 of 4
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`March 4, 2016 - Page 2
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`(b) if so, to describe the bases for asserting that conception date and its diligence, produce all
`documents supporting OpenTV’s contentions (responsive to Apple’s Requests for Production,
`including Nos. 5-8), and supplement its identification of documents supporting OpenTV’s
`conception date, diligence, and reduction to practice for the ’169 Patent.
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`For the ’736 Patent, OpenTV’s response asserted a reduction to practice by February 8,
`1996. On our call, you indicated that OpenTV was not currently intending to rely on a
`conception date for the ’736 Patent earlier than February 8, 1996, and was not withholding any
`information or documents based on privilege. On February 26, however, OpenTV indicated for
`the first time that it will rely on a conception date of September 14, 1995, based on a document
`in the ’736 File History. That document was produced only as part of the file history and the
`production numbers do not overlap with the production numbers that OpenTV identified in its
`response as allegedly providing “additional information regarding the conception of the asserted
`claims.” OpenTV, moreover, has not described or identified any diligence between that asserted
`conception date and the alleged reduction to practice of the ’736 Patent. Apple requests that no
`later than March 11, OpenTV (a) explain its failure to disclose this earlier conception date in
`OpenTV’s October 15, 2015 infringement contentions or December 23, 2015 interrogatory
`responses, (b) produce all documents supporting OpenTV’s contentions (responsive to Apple’s
`Requests for Production, including Nos. 5-8), and (c) supplement its interrogatory response to
`identify the alleged conception date, describe its diligence, and identify all documents supporting
`the conception date, diligence, and reduction to practice for the ’736 Patent.
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`For the’740 Patent, on our call, you indicated that OpenTV does not currently plan to
`allege a conception date earlier than May 28, 2003, the filing date of the Swiss application to
`which the ’740 claims priority, and is not withholding as privileged any documents related to
`conception or diligence. Apple requests that no later than March 11, OpenTV confirm that it will
`not assert a conception date for the ’740 Patent earlier than May 28, 2003.
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`OpenTV’s response also referred generally to certain produced documents as providing
`“additional information regarding the conception of the asserted claims,” citing 500 pages of
`documents (OPENTV2008-00008615-OPENTV2008-00009148), but OpenTV did not identify
`which documents related to alleged conception of which patent claims. On our call, you
`indicated that OpenTV would look into identifying by production number which documents are
`relevant to which asserted patents. Apple requests that no later than March 11, OpenTV
`supplement its interrogatory response to identify the particular production numbers
`corresponding to each of the asserted patents and/or particular claims.
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`OpenTV’s delayed identification of conception dates and production of documents
`related to conception and diligence is prejudicial to Apple’s preparation of its invalidity case as
`well as petitions for inter partes review Apple is preparing on asserted claims. Apple also is
`prejudiced because documents related to the alleged inventions claimed in the asserted patents
`are potentially relevant to claim construction and to other defenses including non-infringement.
`It is imperative that OpenTV produce all documents related to conception, diligence, and/or
`reduction to practice for the asserted patents, which have been known to OpenTV since it filed
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`applications for or acquired those patents. Apple therefore requests that no later than March 18,
`OpenTV produce all such documents. Apple also reserves the right to revise its proposed
`constructions, to seek additional terms for construction, to amend its invalidity contentions, and
`to bring other defenses based on any newly identified documents related to conception or
`diligence.
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`Interrogatory No. 13—License Agreements Related to Asserted Patens and Comparable Licenses
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`Interrogatory No. 13 seeks information regarding license agreements relating to the
`OpenTV Asserted Patents and all other license agreements OpenTV considers comparable. As
`stated in Apple’s February 2 letter, OpenTV’s response relied on FRCP 33(d) but identified no
`documents, and OpenTV refused to produce documents in response to certain related Apple
`Requests for Production. On our call, OpenTV indicated that you were waiting for permission
`from third parties to produce. You also indicated that you would investigate whether OpenTV
`has any lists of licensees, and if it does, OpenTV will produce such lists. Apple requests that
`OpenTV provide the status of its requests to third parties to produce the requested licenses and
`its investigation into whether any lists of licensees exist.
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`OpenTV’s Responses to Apple’s Requests for Production of Documents
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`On our call, you indicated that OpenTV will consider supplementing its responses to
`Apple’s requests for production to state whether any responsive materials are being withheld on
`the basis OpenTV’s objections, as required under FRCP 34(b)(2)(C). Apple requests that by
`March 18, OpenTV confirm whether it will supplement its responses and if so, the date by which
`OpenTV intends to do so.
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`With respect to Apple’s Request for Production Nos. 27, 31, 35, 137, and 141 regarding
`the production of documents related to the Kudelski Group, you indicated that OpenTV’s
`position is that OpenTV does not have possession, custody, or control of such documents. You
`agreed, however, that OpenTV would investigate whether the Kudelski Group makes products
`that compete with Apple and would confirm whether OpenTV will continue to assert Apple’s
`awareness of asserted patents through alleged awareness of the Kudelski Group’s portfolio.
`Apple requests that by March 18, OpenTV confirm its positions on these two topics.
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`Sincerely,
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`/s/ Jay Choi
`Jay Choi
`for O’Melveny & Myers LLP