Case 1:21-cv-00896-ADA Document 451 Filed 12/21/22 Page 1 of 10
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`Civil Action No. 1:21-cv-00896-ADA
`PUBLIC VERSION
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`FINTIV, INC.,
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`Plaintiff,
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`v.
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`APPLE INC.,
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`Defendant.
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`SEALED ORDER REGARDING
`THE DECEMBER 13, 2022 DISCOVERY DISPUTE HEARING
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`Pursuant to the Standing Order Governing Proceedings (OGP) 4.2 - Patent Cases, the
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`Minute Entry for proceedings held (Dkt. 448), and the Court’s Standing Order for Discovery
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`Hearings in Patent Cases, the parties jointly submit the below proposed order reflecting the
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`Court’s rulings at the December 13, 2022, discovery hearing regarding the parties’ discovery
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`disputes.
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`Issue 1: Apple’s Objections to Fintiv’s Proposed Email Custodians and Search Terms
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`Fintiv’s Position
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`Fintiv requested that Apple search email for 44 Apple custodians. Each of the 44
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`custodians was either: (1) identified in the documents or emails this Court ordered Apple to
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`produce in the Order on Emergency Motion because they were identified in Apple’s Opposition;
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`(2) identified in Apple’s Initial Disclosures; or (3) identified by Fintiv as someone who had met
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`with Fintiv. Of these custodians, 24 are listed on two emails/calendar invites related to: a
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`meeting with CorFire in 2012; and a meeting listing Mozido as a “target” company related to “a
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`larger Apple Pay play, growing payment and commerce services through acquisition.” Apple
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`objected on burdensome grounds because of the number of custodians, but Fintiv should not be
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`Case 1:21-cv-00896-ADA Document 451 Filed 12/21/22 Page 2 of 10
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`deprived of email communications simply because Apple chose to involve numerous, relevant
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`Apple employees in the CorFire/Mozido meetings.
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`Apple also objected on burdensome grounds to the number of Fintiv’s search terms.
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`Fintiv’s search terms relate to: (1) the asserted patent, the named inventors, and unique terms
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`therein; (2) CorFire and its product names; (3) the names of former Fintiv employees; and (4)
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`third-party vendors Fintiv believe attended the Apple-CorFire meeting(s). Many of the search
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`terms are permutations of the names of CorFire employees listed Master Restrict Project
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`Agreement Apple signed with CorFire related to the development of Apple Pay.
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`For these reasons, Fintiv respectfully requested that the Court order Apple to search all
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`44 email custodians and all 40 search terms requested by Fintiv and produce the results of the
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`same.
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`Relief Sought: Order Apple to search all email custodians and search terms requested by Fintiv.
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`Apple’s Position
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`Fintiv’s request that Apple search the email of 44 Apple custodians for 40 search terms:
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`(1) directly contravenes the Court’s July 5, 2022, Order (ECF 441); (2) is contrary to the
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`representations that Fintiv made to the Court during the June 24, 2022, hearing and the Court’s
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`clear statements to Fintiv at the hearing; (3) seeks information pertaining to communications
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`between 2012 and 2014 that are neither relevant nor properly discoverable because there are no
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`willfulness or indirect infringement claims and the patent-in-suit did not issue until September
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`23, 2014; (4) is neither proportional or fair; and (5) ignores that discovery closed over a year ago
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`and excluded email discovery.
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`The Court’s July 5, 2022, Order ordered “limited bilateral discovery” including requiring
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`that “[b]oth parties . . . conduct additional searches through limited sets of email and ESI using
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`custodians and search terms . . .” See Order on Emergency Motion (ECF 441) (the “Order”) at ¶
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`2(f). The subject matter addressed at the June 24, 2022, hearing that resulted in the Court’s
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`Order pertained solely to pre-suit communications between Apple and the prior assignee of the
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`asserted patent, SK C&C/CorFire, and with Fintiv (previously named “Mozido”). June 24, 2022,
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`Hearing Transcript (“Tr.”) (ECF 439).
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`Pursuant to the Order and consistent with the subject addressed at the June 24, 2022,
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`hearing, Apple timely served email discovery requests on Fintiv on August 1, 2022, in which
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`Apple identified 11 Fintiv email custodians likely to have knowledge regarding pre-suit
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`communications, and Apple identified 10 narrowly tailored search terms relating to that topic.
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`Fintiv never objected to Apple’s proposed custodians or topics.
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`On August 4, 2022, Fintiv served discovery requests seeking four times the amount of
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`discovery sought by Apple: 44 Apple email custodians and 40 search terms. On August 29,
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`2002, Apple objected to the overbreadth and irrelevance of many of the proposed custodians and
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`search terms and, pursuant to the Court’s OGP, Apple proposed an “alternate plan” identifying
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`the 11 custodians and 11 terms that (subject to running search term hit reports) Apple would be
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`willing to run and that are most likely to lead to the discovery of responsive information.
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`Betraying its current professed interest in moving this case forward promptly, Fintiv sat
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`silent in September. And in October. Fintiv then requested to meet and confer in December, but
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`refused to withdraw any of its 44 Apple proposed custodians or any of its 40 search terms.
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`Fintiv’s sweeping requests directly contravene the Court’s Order permitting “limited
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`bilateral discovery”—there is nothing limited about 44 custodians and 40 search terms,
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`particularly in the context of discovery that was ordered long after the close of formal discovery
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`that did not include any email discovery. Moreover, the Court made it clear to Fintiv during the
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`June 24, 2022, hearing that the Court would permit only a “small number” of search terms. Tr. at
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`55. And Fintiv itself told the Court during the June 24, 2022, hearing that Fintiv was requesting
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`“a very brief surgical process” that would be “limited” and “not . . . a fishing expedition.” Tr. at
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`54-55. Indeed, the breath of the email discovery that Fintiv seeks is now well beyond what
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`likely would have been permitted had Fintiv requested it before the discovery cut-off.
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`But beyond the sheer number of custodians and terms, many of them have little to no
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`bearing on the limited subject matter to which this discovery was to be directed. For example,
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`the search terms include such widely used terms in the mobile payment space like “se” (short for
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`secure element), “Provision!,” “widget,” “rule engine,” “filter,” and “register.” And the list of
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`witnesses includes apex witnesses Steve Jobs and Tim Cook. The over breath of Fintiv’s search
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`terms is exemplified by the fact that running Fintiv’s 40 search terms over a single custodian’s
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`(Chris Sharp’s) email from 2011-2016 returned over 78,000 documents.
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`Relief Sought: Order Fintiv to limit: (1) its custodians to the following 11 custodians on its list:
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`Ben Vigier, Charlie Buchbinder; Pascal Caillon; Jason Miller; Ahmer Khan; David Haggerty;
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`Joakim Linde; Chris Sharp; Brian Tucker; Baris Cetinok; and David Parker; and (2) limit its
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`search terms to the following 11 search terms on its list: CorFire; SK C&C; Incomm; CorPay;
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`CorTSM; Eubank; Warra; CorTrust; Caillon; 8843125; and Mozido.
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`The Court’s Ruling:
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`Fintiv and Apple each may identify 12 custodians and 11 search terms for email
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`discovery. If a party objects to one or more custodians or one or more search terms identified by
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`the other party (for example, if the search term results in an excessive number of emails), the
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`parties shall meet and confer to attempt to resolve the objections. If the parties are unable to
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`resolve their objections, then the parties may submit their dispute to the Court. If the Court hears
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`and sustains an objection to one or more custodians or search terms, then the number of
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`custodians or search terms will be reduced accordingly. For example, if Fintiv includes Tim
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`Cook in its list of custodians and Apple objects to that custodian and the Court sustains that
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`objection, then Fintiv will thereafter be limited to 11 custodians.
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`Issue 2: Apple’s Failure to properly designate produced documents
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`Fintiv’s Position
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`Apple wrongly produced the following two CorFire slide presentations without labelling
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`them confidential under the Court’s Protective Order in this action: (1) APPLE-
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`FINTIV_00706345-706390; and (2) APPLE-FINTIV_00706447-706458. Both documents are
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`confidential and meet the Protective Order’s definition of confidential information as they
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`contain confidential business information of Fintiv. See D. I. 56 at ¶ 9.
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`Moreover, Fintiv obtained these two documents subject to an NDA with CorFire. Apple has not
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`identified any prejudice from marking these documents AEO.
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`For these reasons, Fintiv respectfully requests that the Court order Apple to re-produce
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`these documents designated as Confidential under the Protective Order.
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`Relief Sought: Order Apple to re-produce these documents with a Confidential label under the
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`Protective Order.
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`Apple’s Position
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`The two documents at issue are not confidential, contain no confidential information, and
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`therefore are not properly subject to a confidentiality designation under the Protective Order. The
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`first presentation (APPLE-FINTIV_00706345) is titled “CorFire Merchant Workshop—New
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`York, 12th September,” which was apparently held for Crédit Mutuel bank (not Apple). It
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`primarily consists of an overview of CorFire and its products (id. at 347-58) and an overview of
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`other companies’ e-wallet offerings (id. at 359-390). The information about CorFire is largely
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`repurposed from CorFire’s public website. See, e.g.,
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`https://web.archive.org/web/20110509065202/http://www.corfire.com/our-company/index.php;
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`https://web.archive.org/web/20110509065318/http://www.corfire.com/products-
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`services/index.php. This presentation does not contain any “Confidential” labels other than slide
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`40 (APPLE-FINTIV_00706384), which contains a footer that reads “© 2011 by SK C&C USA,
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`Inc. Confidential.” However, that slide contains no confidential information, but rather an image
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`of an Old Navy advertisement and an iPhone.
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`The second presentation (APPLE-FINTIV_00706447) is titled “TSM Deployments
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`Mapping” and contains maps of NFC deployments (id. at 448-452) and lists of companies with
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`NFC deployments, such as Mastercard and Amex, organized by geographic region (id. at 453-
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`458). This presentation contains no confidentiality markings.
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`In contrast to these two documents, the presentation attached as Exhibit C to the Eubank
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`Declaration to Fintiv’s Emergency Motion (ECF 431) is marked “© 2012 by SK C&C USA, Inc.
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`Confidential Proprietary” on nearly every slide.
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`These documents were not provided to Apple under the November 2012 NDA between
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`Apple and SK C&C. Moreover, even if the documents had been provided to Apple under the
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`NDA, the presentations are not “Confidential Information” under the NDA because: (1) the NDA
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`requires that “Confidential Information” be “clearly designated as ‘Confidential’” in writing
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`(which is not the case); and (2) the NDA has a five-year time limit on any such designation
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`(which, if applicable, has now long passed).
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`Moreover, Fintiv has failed to identify any actual confidential information in either
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`document.
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`Fintiv also is wrong that there is no adverse consequence to designating these documents
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`confidential under the Protective Order. First, doing so prejudices the public from being able to
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`access non-confidential information used in this action. Second, Fintiv likely is to later argue to
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`the jury or the Court, should the documents be stamped “Confidential” under the Protective
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`Order, that Apple somehow is wrongfully in possession of these documents (which is incorrect)
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`and that these documents contain confidential CorFire information (which also is incorrect).
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`Relief Sought: Deny Fintiv’s requested relief or, in the alternative, order Fintiv to identify with
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`specificity the precise material that Fintiv claims is confidential and why.
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`The Court’s Ruling:
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`Apple must re-produce both documents (Fintiv Exs. 3 and 4 to the joint discovery
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`submission) labeled with a “Confidential” designation under the Protective Order. This order is
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`without prejudice to Apple later addressing Fintiv’s potential use of these documents at trial with
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`the Court (by in limine motion or otherwise at the Pre-Trial Conference), including requesting a
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`further determination by the Court based upon a fuller record whether these documents are
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`entitled to a Confidentiality designation under the Protective Order.
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`Issue 3: Fintiv’s Apparent Spoliation of Emails for Ten out of Eleven Fintiv Custodians
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`Apple’s Position
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`Paragraph 2.f of the Order requires “bilateral” email discovery. Apple provided Fintiv its
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`list of 11 email custodians on August 1, 2022. Fintiv did not object to Apple’s list of custodians.
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`Nearly four months later, on November 30, 2022, Fintiv informed Apple for the first time that
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`Fintiv does not have any email for ten of the eleven Fintiv custodians. Fintiv has not provided
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`Apple basic information about why Fintiv has email for only one custodian, what happened to
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`email for the other ten custodians, when and how these emails were deleted, and what document
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`preservation obligations these custodians had at the time of the deletion of their email.
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`Fintiv’s apparently inability to produce email for 10 of its 11 custodians is very troubling,
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`both with respect to the Court’s Order and as it suggests serious evidence spoliation may have
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`occurred. First, the Court’s ordering requiring post-discovery cut-off email discovery regarding
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`the parties’ pre-suit communications was premised upon the discovery being “bilateral.” Order
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`at ¶ 2. If Fintiv cannot participate in meaningful bilateral email discovery as ordered by the
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`Court, it would be neither fair nor proportional to require Apple to do so, in which case the
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`appropriate course of action would be for the parties to revert to their positions prior to the Order
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`where no email or other discovery was required and the parties were prepared to proceed to trial
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`based upon the record as it existed prior to Fintiv bring its emergency motion.
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`Second, as it appears undisputed that each of the 11 custodians did have email, the
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`disappearance of that email raises significant spoliation issues. The Court and Apple are entitled
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`to know what happened to the email.
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`This is particularly troubling in light of what Fintiv told the Court at the June 24, 2022,
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`hearing that resulted in the Court’s bilateral discovery order. In particular, Fintiv told the Court
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`that it already “made sure that what we were going to say [about the parties’ pre-suit
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`communications] was backed up by evidence,” that a company needs to “look at its own e-mails”
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`in responding to discovery requests” and that Fintiv “did the due diligence for Fintiv in this
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`case.” Tr. at 44-45.
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`Apple therefore requests, as an initial step, that the Court order Fintiv to answer in
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`writing : (a) why Fintiv does not have any emails for ten out of eleven custodians; (b) what
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`happened to the emails for these custodians from January 1, 2011-December 31, 2016; (c) when
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`were these custodians’ emails deleted and by whom; and (d) whether any of these custodians
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`were under any preservation obligations at the time of the deletion of their emails and, if not,
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`why not. Depending on Fintiv’s answers to these emails and the parties’ subsequent meet and
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`confer regarding those answers, Apple may request further relief from the Court, which could
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`include seeking remedies relating to evidence spoliation or requesting that the Court return the
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`parties and the evidentiary record in this case prior to Fintiv’s emergency motion.
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`Relief Sought: Order Fintiv to respond in writing to the following questions: (a) why does
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`Fintiv not have any emails for ten out of eleven custodians Apple identified for email production
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`from Fintiv; (b) what happened to the emails for these custodians from January 1, 2011-
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`December 31, 2016; (c) when were these custodians’ emails deleted and by whom; and (d)
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`whether any of these custodians were under any preservation obligations at the time of the
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`deletion of their emails and, if not, why not.
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`Fintiv’s Position
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`Fintiv did not provide any position prior to the hearing, but represented to the Court
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`during the hearing that there was no evidence spoliation, that no emails were deleted, and that it
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`would be able to respond to Apple’s questions.
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`The Court’s Ruling:
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`Fintiv is ordered to respond in writing to Apple to the following questions by December
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`23, 2022: (a) why does Fintiv not have any emails for ten out of eleven custodians Apple
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`identified for email production from Fintiv; (b) what happened to the emails for these custodians
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`from January 1, 2011-December 31, 2016; (c) when were these custodians’ emails deleted and
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`by whom; and (d) whether any of these custodians were under any preservation obligations at the
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`time of the deletion of their emails and, if not, why not.
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`If Apple is not satisfied with the answers provided by Fintiv, the parties are ordered to
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`meet and confer. If Apple remains dissatisfied with Fintiv’s explanations after the meet and
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`confer, then Apple may seek further assistance from the Court.
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`SIGNED this 21st day of December, 2022.
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