Case 1:22-cv-00058-ADA Document 140 Filed 09/23/23 Page 1 of 5
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
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`IDENTITY SECURITY LLC,
`
`Plaintiff,
`v.
`
`APPLE INC.
`
`
`
`Defendant.
`
`Civil Action No. 1:22-cv-58-ADA
`
`
`Jury Trial Demanded
`
`The Court, having held a discovery hearing on September 13, 2023, hereby orders as
`
`Order
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`
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`
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`follows with respect to that hearing between Plaintiff Identity Security LLC (“Identity Security”)
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`and Defendant Apple Inc. (“Apple”):
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`(1)
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`Identity Security seeks to compel productions with respect to certain damages-related
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`Requests for Production. Apple is ordered to produce any non-privileged responsive
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`documents to Identity Security’s Requests for Production Nos. 11, 17–19, 21, 28, 29–30,
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`36, 51, 57, 59–60, and 63–64 no later than September 20, 2023. To the extent Apple has
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`searched for responsive documents to any particular request and believes no responsive
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`documents exist, Apple will confirm that in writing to counsel for Identity Security.
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`(2) The parties dispute whether Apple should produce conjoint analyses for the Accused
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`Products. Apple is ordered to search for and produce any non-privileged documents
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`responsive to Requests for Production Nos. 31 and 32 on the same terms described in
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`paragraph (1), above.
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`(3) The parties dispute the sufficiency of Apple’s response to Interrogatory No. 18, which
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`requests responsive information regarding how the Accused Products handle certain
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`accused “digital identity data.” The Court denied Plaintiff’s request for a supplemental
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`1
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
`
`IDENTITY SECURITY LLC,
`
`Plaintiff,
`v.
`
`APPLE INC.
`
`
`
`Defendant.
`
`Civil Action No. 1:22-cv-58-ADA
`
`
`Jury Trial Demanded
`
`The Court, having held a discovery hearing on September 13, 2023, hereby orders as
`
`Order
`
`
`
`
`
`
`
`follows with respect to that hearing between Plaintiff Identity Security LLC (“Identity Security”)
`
`and Defendant Apple Inc. (“Apple”):
`
`(1)
`
`Identity Security seeks to compel productions with respect to certain damages-related
`
`Requests for Production. Apple is ordered to produce any non-privileged responsive
`
`documents to Identity Security’s Requests for Production Nos. 11, 17–19, 21, 28, 29–30,
`
`36, 51, 57, 59–60, and 63–64 no later than September 20, 2023. To the extent Apple has
`
`searched for responsive documents to any particular request and believes no responsive
`
`documents exist, Apple will confirm that in writing to counsel for Identity Security.
`
`(2) The parties dispute whether Apple should produce conjoint analyses for the Accused
`
`Products. Apple is ordered to search for and produce any non-privileged documents
`
`responsive to Requests for Production Nos. 31 and 32 on the same terms described in
`
`paragraph (1), above.
`
`(3) The parties dispute the sufficiency of Apple’s response to Interrogatory No. 18, which
`
`requests responsive information regarding how the Accused Products handle certain
`
`accused “digital identity data.” The Court denied Plaintiff’s request for a supplemental
`
`
`
`1
`
`
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`Case 1:22-cv-00058-ADA Document 140 Filed 09/23/23 Page 2 of 5
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`response but stated that Identity Security may serve a 30(b)(6) topic regarding the
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`information sought by Interrogatory No. 18, subject to the limit of approximately twelve
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`30(b)(6) topics discussed in (5) below.
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`(4) The parties dispute the sufficiency of Apple’s response to Interrogatory No. 20, which
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`relates to the encryption of certain memory in the Accused Products. The Court has
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`reviewed the response, finds it sufficient, and denies Identity Security’s motion to compel
`
`a further response to this interrogatory.
`
`(5)
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`Identity Security served Apple with a Rule 30(b)(6) Notice with 164 topics after deposing
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`five Apple engineers in their personal capacity. Apple responded to 76 topics in that Notice
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`by designating past witness testimony already covering the noticed topic as its corporate
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`testimony. The Court stated that 164 topics was “too many by a pretty big factor” and
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`ordered Identity Security to identify a total of approximately one dozen 30(b)(6) topics (not
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`including certain interrogatory-related topics described herein). Apple may designate past
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`testimony as responsive to those topics but, to the extent Identity Security wants to ask
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`additional questions on that topic, Apple must designate a corporate witness or witnesses
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`to be deposed on such topic, even if that means a witness who previously testified in a
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`personal capacity may be deposed a second time.
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`(6) The parties dispute the sufficiency and scope of Apple’s production of licensing materials.
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`Apple’s responses to relevant requests for production said: “Apple has produced or will
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`produce responsive executed licenses on which it intends to rely to the extent Apple is able
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`to locate such documents within its possession, custody, or control after a reasonable
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`search.” Both sides need to not limit their production to what they intend to rely on.
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`Regardless, Identity Security’s motion to compel is denied based on Apple’s
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`2
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`Case 1:22-cv-00058-ADA Document 140 Filed 09/23/23 Page 3 of 5
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`representations to the Court that it has conducted a reasonable search and produced or will
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`produce any licenses “relevant in this case” after reviewing the allegations in the
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`“infringement contentions,” the asserted “patents,” and “relevant . . . technology” (Tr. at
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`29:18–25, 30:11–12), and has not withheld otherwise responsive licenses.
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`(7) The parties dispute whether Apple should be required to engage in further searches related
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`to certain high-level business strategy documents related to the accused functionalities. The
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`Court stated, “I’m assuming Apple has searched Apple-wide with regard to [the accused]
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`functionality.” Tr. 35:15–17. Apple responded by stating that it has “searched the
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`documents of those who have worked directly on this product, including during
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`development” and the documents of “the most senior person within this architecture group”
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`who is “the most likely to have these documents.” Tr. 36:5–14. Apple explained that it
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`would produce the documents it located in the search it had already performed by the end
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`of the week of 9/19. Apple will also provide 30(b)(6) testimony on this topic. Based on
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`these representations, the Court denied Identity Security’s request.
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`(8)
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`Identity Security seeks to compel the production of certain usage data in the Accused
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`Products. Apple has agreed to produce usage data related to the accused functionalities of
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`the Accused Products, to the extent it can be located after a reasonable search, by
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`September 22, 2023. Identity Security’s motion to compel on this issue is thus denied as
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`moot.
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`(9)
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`Identity Security moved to compel the production of certain technical documents. Apple
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`represented that it “has conducted a reasonable investigation regarding these documents
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`and produced them to the extent they exist.” The parties will work together to identify
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`documents by Bates number that Apple says have been produced or for Apple to confirm
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`3
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`Case 1:22-cv-00058-ADA Document 140 Filed 09/23/23 Page 4 of 5
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`that additional responsive documents do not exist after conducting a reasonable search.
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`Otherwise, the motion to compel is denied as moot.
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`(10) Identity Security seeks to compel Apple to identify alleged non-infringing alternatives in
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`advance of 30(b)(6) depositions. Apple has agreed to supplement its response to
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`Interrogatory No. 8 reasonably in advance of a 30(b)(6) deposition on the topic of alleged
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`non-infringing alternatives. Identity Security’s motion to compel on this issue is thus
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`denied as moot.
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`(11) The parties dispute the sufficiency of Apple’s response to Identity Security’s Interrogatory
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`No. 21, which seeks identification of any multi-user functionality on iPad devices, the dates
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`any such functionality was offered to consumers, and usage data for any such functionality.
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`Apple is ordered, at its option, to fully answer Interrogatory No. 21—for clarity, to the
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`extent no responsive information is available, a written confirmation of that fact is an
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`answer. Apple may alternatively provide 30(b)(6) testimony on this information.
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`(12) The parties dispute the sufficiency of Apple’s responses to Interrogatories 15 and 17. The
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`Court denies Identity Security’s motion to compel further interrogatory responses. The
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`Court stated that Plaintiff may “expand [its] 30(b)(6) topics by one” if Identity Security
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`“feel[s] there’s something specific that is missing.” Tr. at 47:18–23.
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`(13) Certain dates relating to the close of fact and expert discovery, as well as expert reports,
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`will be adjusted by roughly two weeks as proposed by Identity Security.
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`(14) With respect to the alleged invalidity of each Asserted Claim, Apple will identify no more
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`than five (5) Prior Art Grounds for each Asserted Claim by September 20, 2023.
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`4
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`Case 1:22-cv-00058-ADA Document 140 Filed 09/23/23 Page 5 of 5
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`It is so ORDERED.
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`SIGNED this 23rd day of September, 2023.
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`5
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