UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`
`
`Before The Honorable Theodore R. Essex
`Administrative Law Judge
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`
`
`In the Matter of
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`CERTAIN MOBILE DEVICES AND
`RELATED SOFTWARE
`
`Investigation No. 337-TA-750
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`
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`COMPLAINANT APPLE INC.’S MOTION IN LIMINE NO. 7 TO EXCLUDE THE
`WITNESS STATEMENTS OF JOSEPH VIERRA (RX-1882C) AND
`CLAYTON WEIMER (RX-1883C) AND TO PRECLUDE TESTIMONY
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`Pursuant to Commission Rule 210.15, Complainant Apple Inc. (“Apple”) hereby
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`respectfully moves in limine to preclude Respondent Motorola Mobility (“Motorola”) from
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`offering testimony at the hearing from Joseph Vierra and Clayton Weimer, two individuals who
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`were not on Motorola’s June 3, 2011 witness list. Motorola’s disclosure of these individuals as
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`potential trial witnesses on August 22, 2011 was untimely, and the Administrative Law Judge
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`should preclude Motorola from calling Mr. Vierra and Mr. Weimer or relying on their witness
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`statements at the hearing.
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`Pursuant to Ground Rule 3.2, Apple certifies that it has made reasonable, good-faith
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`efforts to contact and resolve the matter presented in this motion with counsel for Motorola and
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`the OUII Staff Attorney at least two business days prior to filing this motion. Motorola indicated
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`that it will oppose this motion. The OUII Staff indicated that it will state its position after
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`reviewing the motion.
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`

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`Dated: September 6, 2011 (cid:9)
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`Respectfully submitted,
`
`Mark G. Davis
`Brian E. Ferguson
`Robert T. Vlasis
`Edward S. Jou
`Christopher T. Marando
`Weil, Gotshal & Manges LLP
`1300 Eye Street, N.W., Suite 900
`Washington, D.C. 20005
`Tel.: (202) 682-7000
`
`Anne M. Cappella
`Jill J. Ho
`Jacqueline T. Harlow
`Erin C. Jones
`Brian C. Chang
`Weil, Gotshal & Manges LLP
`201 Redwood Shores Parkway
`Redwood Shores, CA 94065
`Tel: (650) 802-3000
`
`Matthew D. Powers
`Steven S. Cherensky
`Paul T. Ehrlich
`Stefani C. Smith
`Robert L. Gerrity
`Tensegrity Law Group LLP
`201 Redwood Shores Parkway, Suite 401
`Redwood Shores, CA 94065
`Tel: (650) 802-6000
`
`Attorneys for Complainant Apple Inc.
`
`2
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`

`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`
`
`Before The Honorable Theodore R. Essex
`Administrative Law Judge
`
`
`
`
`
`
`
`
`In the Matter of
`
`CERTAIN MOBILE DEVICES AND
`RELATED SOFTWARE
`
`Investigation No. 337-TA-750
`
`
`
`MEMORANDUM IN SUPPORT OF COMPLAINANT APPLE INC.’S
`MOTION IN LIMINE NO. 7 TO EXCLUDE THE WITNESS STATEMENTS OF
`JOSEPH VIERRA (RX-1882C) AND CLAYTON WEIMER (RX-1883C) AND TO
`PRECLUDE TESTIMONY
`
`
`Complainant Apple Inc. (“Apple”) respectfully submits this Memorandum in Support of
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`its Motion In Limine to Exclude the Witness Statements of Joseph Vierra and Clayton Weimer
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`and to Preclude Testimony. Joseph Vierra and Clayton Weimer purportedly have knowledge of
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`materials related to a “PenPoint” system that Respondent Motorola Mobility (“Motorola”)
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`asserts is prior art to one of Apple’s patents-in-suit, U.S. Patent No. 5,379,430 (‘430 patent).
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`Motorola’s experts have failed to identify any reliance upon either Mr. Vierra or Mr. Weimer in
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`their expert reports, and Motorola failed to disclose either individual as a hearing witness in a
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`timely manner under the Procedural Schedule.
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`I.
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`FACTUAL BACKGROUND
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`Motorola served its Tentative Witness List on June 3, 2011, six weeks before the close of
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`discovery in this Investigation. Motorola’s list named nearly 170 potential witnesses. The vast
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`majority of those witnesses had not been deposed, due to the sheer impracticability of deposing
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`such a large number of witnesses. Motorola’s list of nearly those 170 witnesses who “may
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`testify” at the hearing did not include Joseph Vierra or Clayton Weimer.
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`

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`
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`Because Motorola had named almost 170 potential hearing witnesses with fewer than 50
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`days left in fact discovery, Apple requested on the June 16, 2011, Discovery Committee call that
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`Motorola identify the individuals that it actually intended to call at the hearing and to make them
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`available for deposition. Apple repeated this request in a follow-up email. Motorola did not
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`respond, and despite naming almost 170 potential hearing witnesses, Motorola never named
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`Joseph Vierra or Clayton Weimer as hearing witnesses, and never attempted to supplement its
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`list of “tentative” witnesses.
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`On July 15, 2011, Motorola served its initial expert reports addressing the alleged
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`invalidity of Apple’s patents-in-suit. The reports included a report on Apple’s ‘430 patent from
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`Dr. C. Douglass Locke, which addressed the validity of the ‘430 patent against a number of prior
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`art references including “PenPoint” products and documents. In his report, Dr. Locke asserts
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`that PenPoint was in public use and offered for sale no later than August 4, 1993, the date of
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`filing of the ‘430 patent. RX-885C [Corrected Locke Report Appendix 4]. Dr. Locke did not
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`support that assertion by reference to any witness, including Joseph Vierra or Clayton Weimer.
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`None of Motorola’s experts relied on or referred to those two individuals at all in expert reports
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`in this Investigation.
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`Motorola waited until August 22, 2011, to identify Mr. Vierra and Mr. Weimer as
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`potential hearing witnesses, when it submitted witness statements that it had apparently prepared
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`with those individuals.
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`II.
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`ARGUMENT
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`Motorola’s late-disclosed PenPoint witnesses should be precluded from testifying under a
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`straightforward application of the procedural scheduling order (Order No. 5). The Procedural
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`Schedule was designed to prevent the type of trial-by-ambush that Motorola is attempting here.
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`2
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`

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`
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`Order No. 5 required the parties to disclose hearing witnesses six weeks before the close of fact
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`discovery, contemplating that at that time, late in discovery, the issues would be narrowed and
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`the parties could focus their energy on only the people and issues that would be featured at the
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`hearing. Motorola has attempted to thwart the witness-disclosure schedule in two ways. First,
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`Motorola served a voluminous “Tentative Witness List,” containing almost 170 entries for
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`witnesses and witnesses yet to be identified by several third-party companies (threatening that
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`each company placeholder may result in multiple additional witnesses). That list, in the context
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`of a three-patent investigation, was at best grossly unrealistic and at worst a deliberate attempt to
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`bury Motorola’s intended hearing witnesses in a mountain of irrelevancies.1 Second, Motorola
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`failed to include all of its hearing witnesses on that list, leaving Mr. Vierra and Mr. Weimer off
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`of its massive list of possible witnesses. The result of Motorola’s actions is that Motorola
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`recently promised to bring live to the hearing at least eight people who were never deposed,
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`including Mr. Vierra and Mr. Weimer who were not even identified as potential witnesses until
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`August 22, 2011.
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`1 Motorola succeeded in burying other intended witnesses to shield them from discovery.
`As discussed in Apple’s co-pending conditional motion in limine concerning Dale Bengston,
`Steven Isaac, Mike Kraus, Andy Rubin, Christy Wyatt, and Robert Ellett, Motorola apparently
`plans to call at least six witnesses who were among the 170 names on its “tentative” witness list
`but who were not offered for deposition during discovery. When Motorola served its massive
`list in June, it was clearly unrealistic for Apple to seek and take depositions of everyone on
`Motorola’s list, particularly given the parties’ other discovery and expert report obligations. At
`the time, Motorola ignored Apple’s requests to identify the truly likely hearing witnesses so that
`they could be deposed in the short remaining time during discovery. While Motorola has waited
`until now to narrow its witness list to these individuals, there are still three weeks remaining
`before the hearing, and these witnesses should be deposed. To permit Motorola to offer these
`witnesses at the hearing without any opportunity for Apple to depose them before cross
`examination would severely prejudice Apple and reward Motorola for its discovery tactic of
`identifying so many witnesses that dozens would skate through discovery unchallenged and still
`be available for presentation at the hearing.
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`
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`3
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`

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`
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`Motorola has not offered any excuse for its failure to disclose these witnesses. Motorola
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`has long known that this particular set of putative prior art materials would be at issue. Motorola
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`apparently was able to collect PenPoint-related source code (JX-696C) and physical exhibits
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`(RPX-4) during the discovery period, possibly from these same individuals, and Motorola’s
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`expert opined at some length on these materials. However, Motorola’s expert, Dr. Locke, did not
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`rely at all in his expert report on any individuals related to PenPoint, as can be seen from his list
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`of materials considered. RX-884 [Corrected Locke Report Appendix 3]. Motorola has offered
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`no explanation for either its failure to identify or rely on these individuals for purposes of expert
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`reports, or for its need for three new witnesses (including Steven Isaac) to bolster a single prior
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`art reference at the hearing, in addition to its expert.
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`Excluding these untimely-disclosed witnesses will also streamline a hearing that is
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`already crowded with witnesses and issues. Motorola has resorted to a kitchen-sink approach to
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`its defenses in this Investigation—on the ‘430 patent alone Motorola is apparently attempting to
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`address 13 different prior art references through its expert at the hearing.2 But even that
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`overlarge list of 13 references understates the lengths to which Motorola has gone to bulk up its
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`prior art case to avoid joining up disputes over any particular defense. Motorola served its final
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`list of prior art on June 10, 2011, which included hundreds of prior art references supposedly
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`related to the ‘430 patent alone (with hundreds more against the other two patents-in-suit).
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`Motorola also charted what it presumably believed were the references it was most likely to rely
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`on—and charted 35 references. These contentions mirror Motorola’s approach on the Tentative
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`Witness List, where Motorola claims Apple has no basis to be surprised over which witnesses it
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`2 Motorola has also attempted to launch a multitude of other late defenses, including its
`unsupported standing and license challenges, and its supplemental-report best-mode and
`indefiniteness arguments.
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`4
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`

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`has chosen to call from its 10-page list on the eve of the hearing. Apple expects that Motorola's
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`resort to quantity will be seen for what it is and will not be mistaken for quality, and that each
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`defense will fail on the merits. However, there is no need to further expand the proceedings with
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`witnesses who were not disclosed and who relate to only one of many flawed prior art
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`references.
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`Mr. Vierra and Mr. Weimer should be precluded from testifying, and their witness
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`statements (RX-1882C and RX-1883C) should be excluded. In the alternative, should Motorola
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`be given permission to add these witnesses, Apple and the Staff should be allowed to take their
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`depositions before the hearing. Apple has also moved conditionally to exclude Motorola's other
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`witnesses who were not deposed during discovery because they were not identified as likely
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`hearing witnesses. Motorola should not be able to bring witnesses live to the hearing who have
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`not been deposed.
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`III. CONCLUSION
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`For the foregoing reasons, Apple's Motion In Limine No. 7 should be granted.
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`Dated: September 6, 2011 (cid:9)
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`Respectfully submitted,
`
`Mark G. Davis
`Brian E. Ferguson
`Robert T. Vlasis
`Edward S. Jou
`Christopher T. Marando
`Weil, Gotshal & Manges LLP
`1300 Eye Street, N.W., Suite 900
`Washington, D.C. 20005
`Tel.: (202) 682-7000
`
`Anne M. Cappella
`Jill J. Ho
`Jacqueline T. Harlow
`Erin C. Jones
`
`E
`
`

`
`Brian C. Chang
`Weil, Gotshal & Manges LLP
`201 Redwood Shores Parkway
`Redwood Shores, CA 94065
`Tel: (650) 802-3000
`
`Matthew D. Powers
`Steven S. Cherensky
`Paul T. Ehrlich
`Stefani C. Smith
`Robert L. Gerrity
`Tensegrity Law Group LLP
`201 Redwood Shores Parkway, Suite 401
`Redwood Shores, CA 94065
`Tel: (650) 802-6000
`
`Attorneys for Complainant Apple Inc.
`
`Ce
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`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of the foregoing was served on September 6, 2011 as indicated, on
`the following:
`
`Via EDIS
`The Honorable James R. Holbein
`Secretary
`U.S. International Trade Commission
`500 E Street SW, Room 112
`Washington, D.C. 20436
`
`Via Email
`Lisa Kattan
`Office of Unfair Import Investigations
`U.S. International Trade Commission
`500 E Street, S.W., Room 401
`Washington, D.C. 20436
`lisa.kattan@usitc.gov
`
`Via Hand Delivery & Email (2 copies)
`The Honorable Theodore R. Essex
`Office of the Administrative Law Judge
`U.S. International Trade Commission
`500 E Street SW, Room 317
`Washington, D.C. 20436
`gregory. moldafsky@usitc. gov
`
`Via Email and Hand -Delivery
`Charles F. Schill
`STEPTOE & JOHNSON LLP
`1330 Connecticut Avenue, N.W.
`Washington, DC 20036
`motorola750@steptoe.com
`
`Via Email
`Charles K. Verhoeven
`Quinn Emanuel Urquhart & Sullivan LLP
`50 California Street, 22nd Floor
`San Francisco, CA 94111
`
`Via Email
`Robert T. Haslam
`Covington & Burling LLP
`333 Twin Dolphin Drive, Suite 700
`Redwood Shores, CA 94065-1418
`
`David A. Nelson
`Quinn Emanuel Urquhart & Sullivan LLP
`500 West Madison Street, Ste. 2450
`Chicago, IL 60661
`
`Robert D. Fram
`Covington & Burling LLP
`One Front Street
`San Francisco, CA 941110
`
`Edward J. DeFranco
`Quinn Emanuel Urquhart & Sullivan LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`
`Moto-Apple-750@quinnemanuel .com
`
`AppleCov@cov.com
`
`olleen Sp
`Paralegal