UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C. 20436
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`Before The Honorable Theodore R. Essex
`Administrative Law Judge
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`Inv. No. 337-TA-750
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`In the Matter of
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`CERTAIN MOBILE DEVICES AND
`RELATED SOFTWARE
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`RESPONSE OF THE COMMISSION INVESTIGATIVE STAFF
`TO COMPLAINANT APPLE INC.’S MOTION IN LIMINE NO. 6 TO
`EXCLUDE THE TESTIMONY OF WITNESSES WHO WERE NOT
`OFFERED FOR DEPOSITION OR, IN THE ALTERNATIVE, MOTION
`TO COMPEL DEPOSITIONS (MOTION DOCKET NO. 750-031)
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`Pursuant to Order No. 13 (Sept. 2, 2011), the Commission Investigative Staff
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`(“Staff”) hereby submits its response to the September 6, 2011 motion in limine number 6
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`of Complainant Apple Inc. (“Apple”). More specifically, Apple moves to preclude
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`Respondent Motorola Mobility Inc. (“Motorola”) from offering at the evidentiary hearing
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`testimony from six witnesses that Apple did not depose during the discovery period or, in
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`the alternative, to compel depositions of these six witnesses prior to their appearance at
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`the hearing. As discussed more fully below, the Staff opposes the motion in part.
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`I.
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`Background
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`On June 3, 2011, Motorola timely filed and served its tentative list of witnesses in
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`this investigation. See Respondents’ Tentative Witness List, EDIS Doc. ID 451946 (June
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`3, 2011). All six of the witnesses that Apple seeks to exclude were explicitly identified
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`by Motorola in that list.1 See id. Apple nonetheless objects to these witnesses providing
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`testimony at trial on the grounds that the list was overly inclusive and thereby “failed to
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`provide any reasonable notice of the witnesses that would be called at the hearing.”
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`See Memo at 2.
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`Apple allegedly attempted to narrow Motorola’s tentative list of witnesses during
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`the discovery period by serving interrogatories that sought identification of the
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`individuals “most knowledgeable” on various topics. See Memo at 3-5. According to
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`Apple, four of the contested witnesses, i.e., Ms. Wyatt, Mr. Rubin, Mr. Bengston, and
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`Mr. Kraus, were not identified in Motorola’s interrogatory responses even though their
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`proffered testimony falls within the scope of these interrogatories. See id. at 3-4. With
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`respect to the two remaining witnesses, i.e., Mr. Ellett and Mr. Isaac, Apple argues that
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`these witnesses are expected to provide testimony on prior art issues that were not
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`sufficiently disclosed in Motorola’s invalidity expert reports and notice of prior art.
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`See id. Apple is thus of the view that it was not provided with adequate notice of these
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`six witnesses during the discovery period. See id.
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`Apple further argues that it sought informal clarification as to Motorola’s
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`tentative list of witnesses as part of the parties’ June 16, 2011 discovery committee
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`meeting. See Memo at 2; Exhibit 2 to Declaration of Edward Jou at 2 (June 16, 2011
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`1
`The Staff notes that Apple’s motion includes a declaration from counsel stating
`that Steve Isaac was not disclosed on Motorola’s list of tentative witnesses.
`See Declaration of Edward Jou at ¶7 (“I participated in the Rule 3.2 conference on
`September 2, 2011 on behalf of Complainant Apple Inc., and during that conference,
`counsel for Motorola Mobility, Inc. offered to schedule depositions for Clayton Weimer
`and Steven Isaac, two witnesses that were not disclosed on Respondents’ Tentative
`Witness List but now appear on its hearing witness list.”). Counsel’s assertions
`notwithstanding, Mr. Isaac was explicitly identified on page 6 of that list. See
`Respondents’ Tentative Witness List at 6, EDIS Doc. ID 451946 (June 3, 2011).
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`3
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`email asking for clarification as to third party witnesses that Motorola intended to call at
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`trial); Exhibit 3 to Declaration of Edward Jou at 1 (Sept. 1, 2011 email purportedly
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`confirming that Apple also sought clarification in June as to employee witnesses that
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`Motorola intended to call at trial). According to Apple, Motorola did not provide the
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`clarification sought prior to serving its pre-trial statement and brief. See Memo at 2.
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`II.
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`Discussion
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`As discussed more fully below, the parties appear to have reached agreement with
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`respect to Apple’s objections regarding three of the six witnesses at issue in the instant
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`motion, i.e., Mr. Ellet, Mr. Isaac, and Mr. Krause. Given the parties’ apparent agreement,
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`the Staff responds below solely as to Apple’s objections regarding the remaining three
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`witnesses, i.e., Mr. Bengston, Mr. Rubin, and Ms. Wyatt.
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`A. Motorola’s Tentative List of Witnesses Provided Adequate Notice
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`Apple argues that it lacked adequate notice as to Mr. Bengston, Mr. Rubin, and
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`Ms. Wyatt because Motorola did not identify these witnesses: (1) in response to
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`interrogatories seeking the identification of individuals “most knowledgeable” on the
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`topics on which they are expected to testify; or (2) in response to requests purportedly
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`made in conjunction with the parties’ June 16, 2011 discovery committee call. See
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`Memo at 3-5. The Staff disagrees.
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`First, Apple overlooks the fact that the procedural schedule calls for the filing of a
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`tentative witness list – not a final witness list. See Attachment A to Order No. 5 at 1 (Jan.
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`20, 2011) (“File tentative list of witnesses a party will call to testify at the hearing, with
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`an identification of each witness’s relationship to the party”). The noted witness list is
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`“tentative” because a party is not expected to know early on in the investigation which
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`4
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`witnesses will ultimately testify at trial. Indeed, the Ground Rules require the parties
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`later provide an actual list of trial witnesses (presumably narrowed from their prior,
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`tentative list) as part of their pre-trial statement and brief. See Ground Rule 8(b). As
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`such, Motorola was under no obligation to confirm Mr. Bengston, Mr. Rubin, and
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`Ms. Wyatt as trial witnesses prior to the deadline for submitting its pre-trial statement and
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`brief.
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`Second, Motorola’s purported failure to identify Mr. Bengston, Mr. Rubin, and
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`Ms. Wyatt in certain interrogatory responses does not require they be excluded from the
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`evidentiary hearing. Apple never filed a motion to compel more complete responses to
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`these interrogatories, to otherwise challenge the adequacy of the responses provided, or to
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`compel associated depositions prior to the close of fact discovery. Precluding Motorola
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`from introducing such testimony for purported discovery violations is thus not warranted.
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`See 19 C.F.R. §210.33(b) (providing a list of sanctions that a judge may impose where a
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`party fails to comply with an order compelling discovery, including precluding the
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`offending party from offering evidence or testimony on a particular topic); Certain
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`Agricultural Tractors, Lawn Tractors, Riding Lawnmowers, and Components Thereof,
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`Inv. No. 337-TA-486, Comm’n Op. at 19 n.14, USITC Pub. No. 3625 (Aug. 2003) (“An
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`order compelling discovery is a prerequisite to all sanctions under Commission Rule
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`210.33.”); Certain Electronic Devices With Image Processing Systems, Components
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`Thereof, and Associated Software, Inv. No. 337-TA-724, Order No. 39, 2011 ITC LEXIS
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`762 at *9 (Mar. 29, 2011) (denying a motion in limine as to proffered testimony because
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`the moving party did not previously move to compel a corresponding deposition after
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`subpoenaing the witness).
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`5
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`Moreover, Apple’s interrogatories purportedly seek identification of the
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`individuals “most knowledgeable” on various topics. See Memo at 3-4; CX-29C
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`(Motorola interrogatory responses). Motorola is under no obligation to bring the
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`“most knowledgeable” witnesses to trial as part of its case in chief, and may have elected
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`to use other witnesses instead, e.g., due to witness availability, travel restrictions, breadth
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`of topics able to be covered, etc. Thus, Apple has also failed to identify any
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`inconsistencies between Motorola’s interrogatory responses and its identification of
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`Mr. Bengston, Mr. Rubin, and Ms. Wyatt as trial witnesses.
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`For at least these reasons, the Staff opposes Apple’s motion as it relates to the
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`proffered testimony of Mr. Bengston, Mr. Rubin, and Ms. Wyatt.
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`B.
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`Apple’s Alternative Request For Depositions
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`Finally, Apple argues in the alternative that “there are still three weeks remaining
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`before the hearing, and these witnesses can and should be deposed before their cross-
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`examinations at the hearing” in the event that Apple’s motion in limine is denied.
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`See Memo at 5. The Staff disagrees. Both the deadline to compel expert discovery and
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`the deadline to compel fact discovery have long since passed. See Order No. 9 (setting
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`August 15, 2011 as the deadline for moving to compel expert discovery); Order No. 8
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`(setting July 22, 2011 as the deadline for moving to compel fact discovery). For at least
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`the reasons discussed above, good cause does not exist for Apple’s belated request to
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`depose the noted witnesses, all of whom were timely and explicitly identified on
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`Motorola’s list of tentative witnesses, at this late date. The Staff thus opposes Apple’s
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`alternative request to compel the depositions of Mr. Bengston, Mr. Rubin, and Ms. Wyatt.
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`III. Conclusion
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`6
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`In the Staff’s view, Apple had adequate and timely notice of Mr. Bengston,
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`Mr. Rubin, and Ms. Wyatt by way of Motorola’s tentative list of witnesses. Apple’s
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`motion should thus be denied as it relates to these three witnesses. With respect to the
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`remaining three witnesses, i.e., Mr. Ellett, Mr. Krause, and Mr. Isaac, the parties appear
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`to have reached an agreement that renders moot Apple’s objections.
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`September 14, 2011
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`Respectfully submitted,
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` /s/ Daniel L. Girdwood
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`Lynn I. Levine, Director
`Anne Goalwin, Supervisory Attorney
`Lisa Kattan, Investigative Attorney
`Daniel L. Girdwood, Investigative Attorney
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`OFFICE OF UNFAIR IMPORT INVESTIGATIONS
`U.S. International Trade Commission
`500 E Street, S.W., Suite 401-H
`Washington, D.C. 20436
`202.205.3409 (Phone)
`202.205.2158 (Facsimile)
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`Certain Mobile Devices And
`Related Software
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`Investigation No. 337-TA-750
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that on September 14, 2011, he caused the foregoing
`RESPONSE OF THE COMMISSION INVESTIGATIVE STAFF TO
`COMPLAINANT APPLE INC.’S MOTION IN LIMINE NO. 6 TO EXCLUDE
`THE TESTIMONY OF WITNESSES WHO WERE NOT OFFERED FOR
`DEPOSITION OR, IN THE ALTERNATIVE, MOTION TO COMPEL
`DEPOSITIONS (MOTION DOCKET NO. 750-031) to be filed with the Commission,
`served by hand upon Administrative Law Judge Theodore R. Essex (2 copies, plus a
`courtesy .pdf copy to Gregory.Moldafsky@usitc.gov), and served upon the private parties
`(1 copy each) in the manner indicated below:
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`Complainant Apple
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`Mark Davis
`c/o Weil, Gotshall & Manges LLP
`1300 Eye Street
`Washington, D.C. 20005
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`Apple.moto.750@weil.com
`Weil_TLG.Apple.Moto.750.external@weil.com
`AppleCov@cov.com
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`Respondent Motorola
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`Charles K. Verhoeven
`c/o Quinn Emanuel Urquhart & Sullivan LLP
`50 California Street 22nd Floor
`San Francisco, C.A. 94111
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`Moto-Apple-750@quinnemanuel.com
`Motorola750@steptoe.com
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`VIA EMAIL
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`VIA EMAIL
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`/s/ Daniel L. Girdwood
`Daniel L. Girdwood, Investigative Attorney
`U.S. International Trade Commission
`Office of Unfair Import Investigations
`500 E Street, S.W. - Suite 401
`Washington, D.C. 20436
`(202) 205-3409
`(202) 205-2158 (fax)
`daniel.girdwood@usitc.gov