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1 myoung@gibsondunn.com 2 GIBSON, DUNN & CRUTCHER LLP

MERYL L. YOUNG (CA SBN 110156)

3161 Michelson Drive 3 Irvine, CA 92612-4412 Telephone: (949) 451-3800 4 Fax: (949) 451-4220
5 6 7 8 9 10

Y. ERNEST HSIN (CA SBN 201668) ehsin@gibsondunn.com GIBSON, DUNN & CRUTCHER LLP 1881 Page Mill Road Palo Alto, CA 94304-1211 Telephone: (650) 849-5322 Fax: (650) 849-5333

JOSH A. KREVITT (CA SBN 208552) jkrevitt@gibsondunn.com (admitted pro hac vice) GIBSON, DUNN & CRUTCHER LLP 200 Park Avenue New York, NY 10166-0193 Telephone: (212) 351-4000 Fax: (212) 351-4035 APPLE INC. and APPLE SALES INTERNATIONAL UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF CALIFORNIA APPLE INC. and APPLE SALES INTERNATIONAL, Plaintiffs, v. MOTOROLA MOBILITY LLC, Defendant. CONFIDENTIAL FILED UNDER SEAL CASE NO. 3:12-CV-00355-GPC-BLM PLAINTIFFS APPLE INC.S AND APPLE SALES INTERNATIONALS OPPOSITION TO MOTOROLAS MOTION FOR EXCEPTION FROM PROTECTIVE ORDER

11 Attorneys for Plaintiffs 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 IV. 21 22 23 24 25 26 27 28

TABLE OF CONTENTS Page I. II. Introduction............................................................................................................ 1 Background ............................................................................................................ 2 A. B. Motorola Agreed to a Protective Order that Prohibits It from Using Apples Confidential Business Information Outside this Case................................... 2 Apple Produced Confidential Business Information Regarding Its Supply Chain and License Agreements .................................................................... 3 1. 2. C. III. Document 1 Contains Highly Confidential Apple Business Information ........................................................................................ 4 Document 2 Contains Highly Confidential Apple Business Information ........................................................................................ 5

Motorola Conducted an Unjustified Fishing Expedition and Now Seeks to Benefit from Its Behavior ............................................................................ 5 Legal Standard ............................................................................................. 8 Abiding by the Protective Order Will Not Prejudice Motorolas Case ......... 9 Disclosure of Apples Confidential Information Would Be Highly Prejudicial .................................................................................................... 9 Motorolas Motion Is Hypocritical and Contrary to Motorolas Own Stated Positions Regarding Confidential Business Information ............................ 12

ARGUMENT ......................................................................................................... 7 A. B. C. D.

Conclusion ........................................................................................................... 13

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TABLE OF AUTHORITIES Page(s) Cases Am. Standard, Inc. v. Pfizer, Inc., 828 F.2d 734 (Fed. Cir. 1987)....................................................................................... 9 960 F.2d 1465 (9th Cir. 1992) .............................................................................8, 9, 10 171 Cal. App. 4th 1 (Cal. Ct. App. 2009).................................................................... 10

7 Brown Bag Software v. Symantec Corp., 8 9 Citizens of Humanity LLC v. Costco Wholesale Corp., 10

Golden Eagle Dist. Corp. v. Burroughs Corp., 11 801 F.2d 1531 (9th Cir. 1986) .................................................................................. 7, 8
12 Intel Corp. v. Via Tech., Inc., 13 14

198 F.R.D. 525 (N.D. Cal. 2000) ................................................................... 8, 9, 11, 12 Kwikset Corp. v. Sup. Ct., 51 Cal. 4th 310 (Cal. 2011)......................................................................................... 10 730 F.2d 1465 (Fed. Cir. 1984)............................................................................8, 9, 12 259 F.3d 1101 (9th Cir. 2001) .................................................................................... 10 Rules Fed. R. Civ. P. 26(b)(1).................................................................................................... 6 Fed. R. Civ. P. 26(c) ........................................................................................................ 8

15 U.S. Steel Corp. v. U.S., 16 17 Yeti by Molly Ltd. v. Deckers Outdoor Corp., 18 19 20 21 22 23 24 25 26 27 28 ii
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I.

INTRODUCTION

Motorola seeks an exception to the parties Protective Order in order to disclose

3 to its in-house attorneys confidential business information about Apples supply chain 4 and licensing negotiations with non-party Qualcomm. By Motorolas own admission, the 5 purpose of this disclosure has nothing to do with the claims in this case.

Rather,

6 Motorola wants to take information it has learned through discovery and use it for 7 completely unrelated business negotiations against Qualcomm. Not only is this an abuse 8 of the discovery process and a violation of the Protective Order, but also the disclosure 9 would be prejudicial to Apple. The information Motorola seeks to disclose is proprietary 10 business information that should not and cannot be shared with competitive decision 11 makers at Motorolaone of Apples direct competitors in the smartphone industry. 12

The law is clear: Motorola is not entitled to an exception from the Protective

13 Order unless it can show that its defense in this case has been prejudiced, and that such 14 prejudice outweighs the harm of disclosing Apples information. Motorola does not even 15 attempt to address these factors. Instead, Motorola suggests that the information might 16 be useful in Motorolas dealings with Qualcomm, while entirely ignoring the prejudice to 17 Apple. 18

Motorolas request to share the details of Apples negotiations and relationship

19 with Qualcomm is ironic, given that Motorola has maintained that the nature of its own 20 dealings with Qualcomm must be held in the strictest confidence by outside counsel only. 21 Throughout this case, Motorola has refused to allow Apples in-house counsel to see or 22 consider relevant terms of the Qualcomm-Motorola

agreement that is the very

23 subject of this lawsuit. Reviewing those terms would help Apple understand the core 24 issues of the case and make settlement or other resolutions more likely. Nevertheless, 25 Motorola has insisted that this information be kept away from Apples in-house counsel 26 because of its supposedly sensitive business nature. Motorolas position regarding the 27 proprietary nature of its dealings with non-party Qualcomm cannot be reconciled with its 28 1
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Case 3:12-cv-00355-GPC-BLM Document 154-2 Filed 11/13/13 Page 5 of 17 1 demand that the Court remove the protections over Apples confidential dealings with 2 that same non-party. 3

For nearly two years, Motorola has expected Apple to litigate this case while

4 keeping its in-house counsel in the dark. Now, without any legal basis for disclosing 5 Apples confidential information, Motorola is asking this Court to hold it to a lower 6 standard than the one to which Motorola has held Apple, just so Motorola may benefit in 7 its dealings outside this case. The Court should reject Motorolas unfair and hypocritical 8 demand. 9 10 11 12

II.

BACKGROUND

A. Motorola Agreed to a Protective Order that Prohibits It from Using Apples Confidential Business Information Outside this Case On December 5, 2012, Motorola and Apple agreed to a Joint Protective Order Dkt. No. 101 (Protective Order). The parties entered the

13 signed by this Court.

14 Protective Order in order to facilitate production and receipt of information during 15 discovery in the above-referenced action, and they recognized the need to protect trade 16 secret and other confidential research, development or commercial information that may 17 be produced or otherwise disclosed by a party or by non-parties during the course of this 18 action. Id. at Preamble. Motorola and Apple agreed that: 19 20 21 22 23
1

Protected Material1 . . . shall be used by a Receiving Party2 solely for the purpose of this action, and any appeals therefrom, including any efforts to settle this action, and shall not be disclosed or used for any other purpose whatsoever, including without limitation any other legal proceeding, including any Protected Material is defined as all information, documents, testimony and/or

24 things, or portions thereof, subject to discovery in this action, which contain non-public,

25 Order, as well as any secondary material, such as pleadings, written discovery, expert 26 information. Protective Order at 1. 27
2

confidential information and/or trade secrets designated pursuant to the terms of this

reports, notes, summaries or any other materials that contain, describe or reflect such

Receiving Party is defined as any person who receives Protected Material from a party . . . or non-party producing materials or information in response to a 28 subpoena or otherwise. Id. at 1, 3.
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legal proceeding involving any of the parties, patent prosecution or acquisition, or any business or competitive purpose or function of any kind. Pursuant to Motorolas agreement not to use Apples of highly confidential emails

3 Id. at 12 (emphases added).

4 confidential business information for purposes beyond this case, Apple produced 5 documents spanning

pages, including

6 from the files of its top ranking licensing and supply-chain management executives. 7 Motorola now seeks to profit from two Apple documents that have proven to have 8 nothing to do with this case. 9 10 11

B. Apple Produced Confidential Business Information Regarding Its Supply Chain and License Agreements This case is properly focused on the question of whether Apple, as a Qualcomm See Dkt. 135 (Apples Count Two MSJ).

12 customer, is entitled to rights under an agreement between Qualcomm and Motorola (the 13 Qualcomm-Motorola Agreement).

14 Accordingly, during discovery, Apple produced documents concerning its customer 15 relationship with Qualcomm, including 16 17 18

On June 7, 2013, Apple produced two emails (with attachments) from , which Motorola has identified as Document 1 and Document 2,

19 respectively. Declaration of Y. Ernest Hsin (Hsin Decl.), Ex. 1 20 Email between Apple Executives (Document 1)) at [001-005]; id., Ex. 2 21

Email from Qualcomm to Apple (Document 2)) at [006-010]. Both Documents

22 contain Apples confidential business information, the disclosure of which would be 23 prejudicial to Apple.3 24 25 26 27 28

Motorola does not acknowledge, much less address, Apples interest in protecting this confidential information. Instead, it offers Qualcomm-produced versions of the Documents and claims, without support, that Qualcomms agreement to permit disclosure should bind Apple. But because the information in these Documents is sensitive to Apple, it is entirely irrelevant whether Qualcomm consents to the disclosure. On Motorolas theory, Qualcomms consent would be sufficient to permit Apples in-house counsel to review confidential Motorola information contained in Qualcomm-Motorola communications.
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1.

Document 1 Contains Highly Confidential Apple Business Information

Document 1 is a

According to Motorolas own reasoning, which its counsel has repeated throughout Moreover, Apple considers the terms upon which Apple will agree to

8 this case, the text of a business agreement in this industry is highly sensitive, confidential 9 information.5

10 purchase mobile device components commercially sensitive, proprietary business 11 information. Hsin Decl., Ex. 3 (October 14, 2013 Deposition of Boris Teksler (Teksler 12 Depo.)) at 143:15-145:20 [014]; id., Ex. 4 (August 23, 2013 Deposition of David Tom 13 (Tom Depo.)) at 41:9-25, 72:2-73:5 [019, 021]. The need for confidentiality in this 14 case is further heightened by the fact that Motorola is one of Apples direct competitors 15 in the mobile device industry and itself a potential customer of Qualcomm components. 16

The date of the email and the identities of the Apple recipients are also highly

17 sensitive, confidential information. To maintain its competitive position in the mobile 18 telecommunications industry, and to deter outsiders from ascertaining where Apple is in 19 the product development cycle, Apple closely guards information about when and how it 20 engages with components suppliers such as Qualcomm. And the specific identities of the 21 Apple executives involved indicate not only the relative importance of the Qualcomm 22 23
4

24 disclose, but these redactions are insufficient to cover Apples confidential business 25 versions of Documents 1 and 2. 26
5

Motorola has redacted the versions of Document 1 and Document 2 that it seeks to

information. Except as noted, the descriptions in this memorandum relate to the redacted

In fact, Motorola has consistently refused to allow Apples outside counsel to make even a limited disclosure of the Qualcomm-Motorola Agreement terms in dispute 27 in this case to the one Apple in-house attorney in to disclose Document 1, containing , to four Google and Motorola in-ho 28
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Case 3:12-cv-00355-GPC-BLM Document 154-2 Filed 11/13/13 Page 8 of 17 1 relationship to Apple, but also the stage of negotiations and status of the parties 2 relationship as of 3 4 5 6 7 8 9 10

2.

Document 2 Contains Highly Confidential Apple Business Information

Document 2 is

As stated above, the who and when of Apples supply negotiations compose

11 highly sensitive, confidential business information subject to protection as trade secrets. 12 Document 2 13 14 15 16 17
6

C. Motorola Conducted an Unjustified Fishing Expedition and Now Seeks to Benefit from Its Behavior After Apple produced Documents 1 and 2, Motorola apparently sensed that the

18 Documents might create leverage against Qualcomm, which had provided corporate 19 20 21
6

Depo.)) at 184:23-185:10 [026]; id., Ex. 6 (September 20, 2013 Deposition of Michael Hartogs (Hartogs Depo.)) 22 at 27:20-24 [031]; id., Ex. 7 (September 25, 2013 Deposition of Eric Koliander (Koliander Depo.)) at 96:23-97:16 [035].
23 24 25

ve Order (Motorola Memo.) at 12. This non sequitur is a holdover from Motorolas defunct equitable estoppel defense, discussed below, and yet another degree 26 removed from the contractual
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Motorola thus set

2 out to use the remaining period for discovery in this case to develop more information 3 about the alleged disclosure of Qualcomm-Motorola Agreement terms allegedly 4 evidenced by Documents 1 and 2. Motorola had already asked Apple executives Tim 5 Butzow and David Tom during their depositions about 6

but Motorola then went further, serving additional deposition subpoenas on

7 Qualcomm employees Eric Koliander and Michael Hartogs, demanding additional 8 document discovery from Qualcomm, and even moving this Court to compel additional 9 Qualcomm corporate testimony regarding possible disclosures of terms. 10

Prior to the close of discovery in October 2013, Apple countenanced Motorolas

11 fishing expedition because it believed that Motorola was acting in good faith to develop 12 evidence that would be admissible in this case. See Fed. R. Civ. P. 26(b)(1). Motorola 13 had contended that Apple was equitably estopped from claiming rights under the 14 Qualcomm-Motorola Agreement, based on Apples allegedly improper receipt of certain 15 terms of the Agreement.

But by the close of fact discovery, Motorola had failed to

16 adduce evidence to establish the necessary elements of equitable estoppel, prompting 17 Apple to move for summary judgment against that defense. Dkt. 138, 150.7 Thus, by the 18 close of discovery, the apparent justification for Motorolas fishing expedition had 19 evaporated, and Motorola was left with nothing to show for its efforts. 20

Now, because its equitable estoppel theory is no longer viable, Motorola moves

21 this Court for permission to salvage something from its discovery efforts that will benefit 22 Motorola elsewhere. Motorola claims that it must disclose Documents 1 and 2 to four 23
7

24 things, Motorola cannot show that Apple was under any duty to tell Motorola that it was 25 Apples Count Two MSJ and Apples Motion for Summa 26

The alleged fact of disclosure is irrelevant to this case because, among other

aware of certain terms of the Qualcomm-Motorola Agreement. As discussed in detail in

fenses (Dkt. 138), Motorola admits that , and Motorola has failed to identify a hat would apply. Nonetheless, in an effort to add an air of legitimacy to 27 its instant motion, Motorola boasts that Motorola is already permitted to use [Documents 1 and 2] on an outside attorneys eyes only basis for purposes of this case . . 28 . . Motorola Memo. at 13.
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Case 3:12-cv-00355-GPC-BLM Document 154-2 Filed 11/13/13 Page 10 of 17 1 Google and Motorola in-house attorneys involved not only in litigation, but also in 2 Motorolas patent licensing business: 3 4 5 6 7 8 9 10 11 12 13 14 15

Motorola seeks to disclose Documents 1 and 2: in order to allow Motorola to properly address any breach; in order for Motorola and its personnel to address issues of whether Qualcomm complied with contractual obligations; for purposes of addressing Qualcomms breach with Qualcomm as needed; and for purposes of correspondence with Qualcomm and, if necessary, through Court action against Qualcomm. Dkt. 153, Memorandum in Support of Motorola Motion for Exception from Protective Order (Motorola Memo.) at 2, 12-13. III. ARGUMENT

The parties agreed-upon Protective Order states that Protected Materials in this

16 case shall be used only in this matter. Protective Order at 1. Motorola conspicuously 17 avoids providing any legal basis for modifying the Protective Order here.8 Motorola does 18 not explain the applicable legal standards because it has no colorable argument under 19 them: Motorola must show (1) that its case defense in this litigation would be prejudiced 20 without the requested modification to the Protective Order, and (2) that such prejudice 21 would outweigh the harm to Apple that would be caused by the disclosure of its 22 23 24 25 26

See Golden Eagle Dist. Corp. v. Burroughs Corp., 801 F.2d 1531, 1539 (9th Cir. 1986) (A court has a right to expect that counsel will state the controlling law fairly and 27 fully; indeed, unless that is done the court cannot perform its task properly. A lawyer must not misstate the law, fail to disclose adverse authority (not disclosed by his 28 opponent), or omit facts critical to the application of the rule of law relied on.).
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Case 3:12-cv-00355-GPC-BLM Document 154-2 Filed 11/13/13 Page 11 of 17 1 confidential information. Motorola has not shown (or even argued) that it meets either of 2 these requirements. Therefore, Motorolas motion should be denied. 3 4
9

A. Legal Standard Under the Federal Rules of Civil Procedure, the Court may issue a Protective

5 Order to ensure that a trade secret or other confidential research, development, or 6 commercial information not be revealed or be revealed only in a specified way. Fed. R. 7 Civ. P. 26(c)(1)(G). In order to modify the parties Protective Order to allow disclosure 8 of confidential information, Motorola must establish good cause. 9 Software v. Symantec Corp., 960 F.2d 1465, 1471-72 (9th Cir. 1992). 10

See Brown Bag

First, Motorola must show how abiding by the current protective order will

11 prejudice its defense here. See id.; see also Intel Corp. v. Via Tech., Inc., 198 F.R.D. 12 525, 528 (N.D. Cal. 2000) (The protective order must actually prejudice presentation of 13 the moving partys case, not merely increase the difficulty of managing the litigation.). 14

Second, Motorola must show that such prejudice outweighs the risk of injury to

15 Apple. See Brown Bag Software, 960 F.2d at 1471-72; see also Intel Corp. v. Via Tech., 16 Inc., 198 F.R.D. 525, 528 (N.D. Cal. 2000). The risk of injury is especially great where, 17 as here, the parties to whom the information would be disclosed are employees involved 18 in competitive decisionmaking at a direct competitor of the party whose information is 19 being disclosed. See U.S. Steel Corp. v. United States, 730 F.2d 1465, 1468 (Fed. Cir. 20 1984); Am. Standard, Inc. v. Pfizer, Inc., 828 F.2d 734, 741 (Fed. Cir. 1987) (Courts 21 have presumed that disclosure to a competitor is more harmful than disclosure to a 22 noncompetitor.). Such disclosure would give the disclosing party an unfair competitive 23 advantage over its competitor. 24

Courts have found good cause when, for example, the specialized technical

25 knowledge of in-house counsel was essential to the proper handling of litigation, and 26 27
9

28 in real or feigned ignorance of authorities which render his argument meritless.). 8

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See Golden Eagle at 1542 (A lawyer should not be able to proceed with impunity

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Case 3:12-cv-00355-GPC-BLM Document 154-2 Filed 11/13/13 Page 12 of 17 1 such counsel was not involved in a companys competitive decisionmaking. See Intel 2 Corp., 198 F.R.D. at 528; see also U.S. Steel, 730 F.2d at 1468 (finding good cause 3 where the party seeking disclosure had no outside counsel, the litigation was extremely 4 complex and at an advanced stage, and both parties agreed that in-house counsel was 5 not involved in competitive decisionmaking). 6 7

B. Abiding by the Protective Order Will Not Prejudice Motorolas Case To show good cause for an exception from the Protective Order, Motorola must

8 demonstrate that its case presentation would be actually prejudiced without such 9 exception. See Brown Bag, 960 F.2d at 1472. Motorola cannot do so. Motorola has not 10 argued that its in-house counsel possess any specialized knowledge that makes them 11 indispensable to this litigation. See Intel Corp., 198 F.R.D. at 528. In fact, Motorola 12 has not advanced any explanation for how its defense in this case would be prejudiced 13 unless its four in-house licensing and litigation counsel review Documents 1 and 2. To 14 the contrary, Motorola actually admits that it is not seeking an exception to the Protective 15 Order for the proper purpose of advancing its defense in this case, but rather that it is 16 seeking to use [Documents 1 and 2] for purposes of correspondence with Qualcomm 17 and, if necessary, through Court action against Qualcomm.

Motorola Memo. at 13.

18 This is precisely the type of business or competitive purpose or function explicitly 19 contemplated, and prohibited, by the Protective Order. Protective Order at 12. 20 21

C. Disclosure of Apples Confidential Information Would Be Highly Prejudicial Even if Motorola could show that its case would be prejudicedsomething it has

22 not even tried to doit would also have to show that the prejudice outweighs the harm of 23 disclosing Apples confidential business information. See Brown Bag Software, 960 F.2d 24 at 1472. Again, Motorola does not even attempt to make the required showing. 25

Disclosure of Documents 1 and 2 would prejudice Apple by providing one of its as well as trade

26 direct competitors 27 secrets concerning Apples supply chain. The Documents reveal 28 9
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as well as information about and In fact, the Documents contain

4 information that Motorola itself considers critically sensitive and unfit for disclosure to 5 opposing in-house counsel. 6

California law protects the identities of Apples suppliers and Apples negotiations as trade secrets. See Citizens of Humanity

7 with those suppliers regarding

8 LLC v. Costco Wholesale Corp., 171 Cal. App. 4th 1, 13 (Cal. Ct. App. 2009), overruled 9 on other grounds by Kwikset Corp. v. Sup. Ct., 51 Cal. 4th 310, 337 (Cal. 2011); see also 10 Yeti by Molly Ltd. v. Deckers Outdoor Corp., 259 F.3d 1101, 1108 (9th Cir. 2001) (The 11 identity of a supplier can be a trade secret.). Moreover, the circumstances of Apples 12 and Qualcomms negotiations are sensitive information that a competitor such as 13 Motorola would find advantageous to have. Cf. Intel, 198 F.R.D. at 530 ([Intel in-house 14 counsels] knowledge of technical aspects of VIAs products, VIAs licensing 15 agreements, and marketing information, would be directly relevant to her evaluation of 16 licensing agreements of related products of Intel. Confidential information in this case 17 may provide Intel a competitive advantage in negotiating related licenses in the future.). 18

Motorolas outside counsel knows from discovery in this case that Apple considers

19 the information reflected in Documents 1 and 2 to be confidential, but Motorola 20 nonetheless failed to raise that point with the Courtinstead suggesting that Apples 21 justification for opposing Motorolas motion is flimsy. Motorola Memo. at 1. In fact, 22 Apple witnesses consistently testified that Apples history with Qualcomm, as well as the 23 specific negotiations between the two parties, is information that is valuable to Apple and 24 that Apple desires to keep secret. See Teksler Depo. at 143:15-145:20 [014]; Tom Depo. 25 at 41:9-25; 72:2-73:5 [019, 021].10 26 27
10

28 confidential. For example,

Apple has always emphasized to Motorola that such information was highly
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Motorola, for its part, feels the same way about its own confidential business

2 agreements. In its applications to file motion papers under seal in this case, filed just last 3 month, Motorola routinely redacted even general discussion of the contents of 4 confidential agreements and information that reveals the scope of those agreements. 5 Dkt. 147 at 3.

Motorola maintains, as it has throughout this litigation, that its of which could be damaging to

6 agreements are confidential and considered trade secrets and commercially sensitive 7 proprietary business information, the public 8 those [contracting] entities. Id. at 3-4. 9

Furthermore, Motorola does not even suggest that the four in-house counsel to

10 whom it proposes to disclose Documents 1 and 2 are not involved in competitive 11 decision-making. See U.S. Steel, 730 F.2d at 1468. Motorolas legal department is not 12 just a litigation support center; to the contrary, proposed recipients 13

serve the

in a strategic

14 capacity. See Hsin Decl., Ex. 9 (September 6, 2013 Deposition of Kirk Dailey (Dailey 15 Depo.)) at 25:7-9 (emphasis added) [043]; id., Ex. 10 (September 5, 2013 Deposition of 16 Timothy Kowalski (Kowalski Depo.) at 16:12-24:16 [048-050].11 17

Motorolas arguments suggest that it does not intend to bring a particular in-house

18 attorneys expertise to bear on Documents 1 and 2; rather, it seeks permission to disclose 19 the Documents to a team of four attorneys, so they can exercise their discretion in 20 advancing Motorolas various business interests related to Qualcomm. Motorola requests 21 disclosure for purposes of correspondence with Qualcomm and, if necessary, through 22 Court action against Qualcomm, and for purposes of addressing Qualcomms breach 23 with Qualcomm as needed. Motorola Memo. at 13 (emphases added).12 24 25 26 27
11

Moreover, If Motorola merely needs advice on the viability of a legal claim against
11

12

28 Qualcomm, it can consult with its attorneys at Winston & Strawn LLP. See Intel Corp.,
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D. Motorolas Motion Is Hypocritical and Contrary to Motorolas Own Stated Positions Regarding Confidential Business Information This litigation concerns intellectual property rights Qualcomm secured from

4 Motorola. Unlike the material at issue in this motion, the subject matter of this litigation 5 is naturally public facing, in that the contract terms in dispute here were 6

Apple has, therefore,

7 consistently sought for its in-house counsel access to the contract language at issue in this 8 litigation. Motorola has repeatedly refused, hindering Apples ability to litigate the case 9 and to evaluate the strength of its claims 10

Motorolas interest in keeping those terms secret appears driven more by Even now, Motorola
3

11 an interest in extracting double recovery from Apple than it does by any genuine concern 12 over the protection of confidential business information. 13

14 refuses to allow the one Apple in-house counsel in charge of the litigation to view 15 16

Not only does Motorola refuse Apple permission to discuss the terms of the a secret that cannot be

17 Agreement at issue here with the in-house counsel managing the case, but Motorola also 18 claims to consider

19 disclosed. Last month, Motorola filed a summary judgment motion contending that 20 21 22

Apples in-house counsel in charge of this litigation has not been

23 permitted to review the substance of that motion, and Motorola has gone so far as to 24 request that Apples outside counsel refrain from even suggesting 25 26 198 F.R.D. at 529. Of course, Motorolas motion belies the notion that the Documents

will be considered only in the context of litigation.

13

27 28

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Indeed, Motorolas outside counsel has requested that Apple limit Hsin Decl., Ex. 11 (Chassman Oct. 25 Email to Hsin) at Thus, Motorola has moved the Court for an opportunity to fully assess the facts,

2 discussion of Motorolas motion to a statement that 3 4 [052]. 5

6 determine its options, and take them if necessary, while insisting that Apples in-house 7 counsel continue to litigate this case in the dark. Motorola Memo. at 1.14 8 9

IV.

CONCLUSION

For the aforementioned reasons, this Court should deny Motorolas motion for

10 exception from the parties Protective Order. However, if the Court is inclined to grant 11 Motorolas motion in whole or in part, then to the extent that the Court permits disclosure 12 of Documents 1 and 2, Apple respectfully requests leave to submit proposed redactions 13 designed to protect Apples confidential business information. 14 15 16 17 18 19 20 21 22 23 24
14

Dated: November 13, 2013

Respectfully submitted, GIBSON, DUNN & CRUTCHER LLP By: /s Y. Ernest Hsin

MERYL L. YOUNG (CA SBN 110156) myoung@gibsondunn.com 3161 Michelson Drive Irvine, CA 92612-4412 Telephone: (949) 451-3800 Facsimile: (949) 451-4220 JOSH A. KREVITT (CA SBN 208552)

Finally, Motorola is being disingenuous when it states that [t]ime is short for Motorola to act on information that Qualcomm should have provided five months ago. 26 Id. Apple produced versions of Documents 1 and 2 in June of 2013, and Motorola conducted extensive discovery on them through the beginning of October. Motorola 27 elected to offer the Court versions of the Documents later produced by Qualcomm in an apparent attempt to suggest that it is acting swiftly and to encourage the Court to do the 28 same. The Court should reject this meritless motion.
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APPLES OPPOSITION TO MOTOROLAS MOTION FOR EXCEPTION FROM PROTECTIVE ORDER

CASE NO. 12-CV-00355-GPC-BLM

Case 3:12-cv-00355-GPC-BLM Document 154-2 Filed 11/13/13 Page 17 of 17

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jkrevitt@gibsondunn.com (admitted pro hac vice) 200 Park Avenue New York, NY 10166-0193 Telephone: (212) 351-2490 Facsimile: (212) 351-6390 Y. ERNEST HSIN (CA SBN 201668) ehsin@gibsondunn.com GIBSON, DUNN & CRUTCHER LLP 1881 Page Mill Road Palo Alto, CA 94304-1211 Telephone: (650) 849-5322 Fax: (650) 849-5333 Attorneys for Apple Inc. and Apple Sales International

CERTIFICATE OF SERVICE I hereby certify that on November 13, 2013, I caused this motion document and the declaration and exhibits in support to be electronically filed with the Clerk of the Court using the ECF System of the U.S. District Court for the Southern District of California, which will send notification of such filings to all known counsel of record. I declare under penalty of perjury under the laws of the United States of America and the State of California that the above is true and correct. Executed on November 13, 2013, at Palo Alto, California.

By:

s/ Y. Ernest Hsin Y. Ernest Hsin

14
APPLES OPPOSITION TO MOTOROLAS MOTION FOR EXCEPTION FROM PROTECTIVE ORDER

CASE NO. 12-CV-00355-GPC-BLM