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because they already have the code ready for production. TiVo requests oral argument on this motion. Respectfully submitted,
DILWORTH PAXSON LLP By: /s/ Christopher H. Casey_____________ Christopher H. Casey, Esq. 1500 Market Street, Suite 3500E Philadelphia, PA 19102-2101 (215) 575-7131

Dated: July 22, 2011

Attorneys for Plaintiff TiVo Inc.

Of Counsel: ROBINS, KAPLAN, MILLER & CIRESI L.L.P. Ronald J. Schutz rjschutz@rkmc.com David P. Swenson dpswenson@rkmc.com Michael A. Collyard macollyard@rkmc.com Andrea L. Gothing algothing@rkmc.com 2800 LaSalle Plaza 800 LaSalle Avenue Minneapolis, MN 55402-2015 Telephone: (612) 349-8500 Facsimile: (612) 339-4181

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UNITED STATES DISTRICT COURT EASTERN DISTRICT OF PENNSYLVANIA TiVo Inc., a Delaware corporation, Plaintiff, vs. Verizon Communications Inc., et al. Pending in the United States District Court for the Eastern District of Texas as Civil Action No. 2:09-cv-257-DF TiVos Memorandum in Support of its Motion to Compel the Production of Motorola Source Code Miscellaneous Case No. ______________

Defendants.

Introduction This motion stems from a subpoena TiVo served on Motorola to produce source code that is directly at issue in TiVos patent infringement case against Verizon in the Eastern District of Texas. In that case, TiVo accuses Verizon of infringing TiVos patents covering DVR functionality. Motorola manufactured and created part of the Verizon DVR products and source code that TiVo accuses of infringement. None of that source code is in Verizons possession, custody, or control so it all needs to be produced from Motorola. TiVos motion should be granted for two basic reasons: The source code is highly relevant to Verizons infringement: Motorola doesnt dispute this and previously agreed to produce all 29 versions of the source code that TiVo is requesting by July 1st. Motorola wont suffer any burden in producing the code: In its own words, Motorola is prepared to produce all 29 versions for TiVos inspection but is simply refusing to let TiVo review them.

TiVo was forced to bring this motion becauseout of nowhereMotorola now refuses to produce this code. After many months of talking about producing this code,

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Motorola now claims that its production would be premature because TiVo and Verizon should agree to treat a small handful of the software versions at issue as representative of all the software versions that could be relevant to TiVos infringement claims. But as TiVo explained to Motorola, TiVo tried to reach an agreement with Verizon but as Motorola recognized, those efforts have so far proved fruitless. Verizon doesnt have access to Motorolas code or any real knowledge about it so Verizon cant make representations that any versions of Motorolas code are representative of the other versions of the code. Motorola, on the other hand, does have the ability to make those kinds of representations. And although TiVo has asked Motorolaon multiple occasionsto do so, Motorola blatantly refuses to talk with TiVo or respond to any of TiVos emails or phone calls on this issue. The TiVo v. Verizon case is scheduled for trial in October so TiVo had no choice but to bring this motion. TiVo therefore respectfully requests that its motion be granted and Motorola be required to immediately produce the requested source code. Argument I. Motorolas source code is highly relevant to TiVos patent infringement claims against Verizon. TiVo sued Verizon on patents related to DVR (digital video recording) functionality.1 Specifically, TiVo accuses Verizons FiOS DVR products of patent

Declaration of Peter M. Routhier (Routhier Decl.) at 2.

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infringement.2 These DVR boxes bring television signals from Verizons FiOS service to its subscribers TVs. They also provide the ability, among other things, to record and pause live televisionthe types of functions covered by TiVos patents. Motorola manufactured and created some of the Verizon DVR products that TiVo accuses of infringement.3 Some of the accused functionality is executed, in part, through Motorola software. This Motorola software is responsible for carrying out certain functions that are the subject of TiVos infringement contentions in the Verizon litigation (such as storing and retrieving multimedia data onto the boxes hard drives). The Motorola source code is not in Verizons possession, custody, or control, so TiVo can only get this code from Motorola and not Verizon.4 TiVo served Motorola with a subpoena to produce documents sufficient to show the functionality of Verizons Motorola DVR boxes.5 Motorola ultimately agreed to produce source code that would be sufficient to show this functionality.6 Motorola then produced the two currently deployed versions of its source code for the Verizon DVR boxes that Motorola manufactured and created.7 After Motorola produced the versions

Id. Id. at 2. Id. at 3. Id. at 2, Ex. B. Id. at 5, Ex. D. Id.

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of its source code to TiVo, it explained that this code was sufficient to show the DVRs functionality, but later confirmed that the produced versions may not be representative of all deployed versions of Motorolas code.8 Motorola apparently has 29 other versions of source code that were deployed in the marketplace. TiVo is requesting that Motorola be compelled to produce all of those versions. A. Motorola agrees that its source code is relevant.

Motorola doesnt dispute that its source code is relevant to TiVos patent infringement claims against Verizon. Quite the opposite, Motorola told TiVo in early June that it was already collecting the code, and a few weeks later, Motorola confirmed that it would produce all of its source code by July 1st.9 This alone is sufficient to compel Motorola to produce its code. B. Motorolas declaratory judgment action against TiVo was stayed because Motorolas source code is relevant.

Even if Motorola hadnt agreed that the source code was relevant, its actions against TiVo confirm that it is relevant. On February 28, 2011, nearly a year and a half after TiVos lawsuit against Verizon started, Motorola filed a declaratory judgment action against TiVo. In that case Motorola seeks, among other things, judgment that it does not infringe the TiVo patents that TiVo asserted against Verizon.10 The fact that Motorola seeks declaratory judgment of non-infringement based on the same Verizon
8

Id. Id. at 7, Ex. E. See Motorola Mobility, Inc. v. TiVo Inc., Civ. No. 5:11-cv-53 (E.D. Tex. filed Feb. 28, 2011). -4-

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DVRs that use the source code at dispute in this motion, confirms that Motorolas code is relevant to TiVos infringement claims against Verizon. The Eastern District of Texas recently issued an order that further demonstrates that Motorolas source code is a relevant component of the underlying dispute between TiVo and Verizon. There, the Eastern District stayed Motorolas declaratory judgment action because [d]ecisions made in [TiVos lawsuit against Verizon] will likely streamline or simplify certain issues involved in [Motorolas declaratory judgment action].11 As the court explained: Clearly, there is overlap of the legal issues before this Court in Motorolas and Verizons claims for declaratory judgment relief . . . . There is also substantial overlap of some factual issues . . . . Contrary to Motorolas argument, TiVo asserts questions of infringement in the [lawsuit against Verizon] are not limited to the software Verizon might add to [Motorolas boxes]. Rather TiVos infringement contentions turn largely on the operation of Motorola-supplied hardware and software components.12 That court recognized the relevance of Motorolas contribution to the Verizon DVRs. And, by staying the case for efficiency purposes, the court assumed Motorola would provide full discovery of its contribution to those DVRs in TiVos suit against Verizon. C. Case law also holds that Motorolas source code is relevant.

Motorola can't deny that the 29 deployed versions of its source code are relevant to TiVos patent infringement claims. Source code is routinely held to be relevant in

11

See id. at Order, Dkt. No. 34 at 9 (E.D. Tex. July 6, 2011). Id. at 8.

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patent infringement cases like this one.13 And many courts have held that multiple versions of source code, including past versions of codelike those at issue hereare all relevant to patent disputes and must be produced.14 For example, federal district courts in Delaware and New York have ordered the production of past versions of source code even though some other versions had already been produced.15 The fact that Motorola is a third-party makes no differenceMotorolas source code is still relevant and must be produced. Third-party discovery is governed by the same Rule 26(b)(1) relevancy standard as party discovery.16 As a result, federal courts have explicitly found that third-party source code is relevant and needs to be produced pursuant to a third-party subpoena.17 As the Northern District of California explained, [i]nasmuch as [third party] code bears upon the operation of [third party] chips that

13

See, e.g., Sensormatic Electronics Corp. v. WG Security Prods., Inc., No. 2:04-cv1672006 U.S. Dist. LEXIS 97108 (E.D. Tex. Feb. 9, 2006) (granting motion to compel source code in a patent infringement case). E.g. Bigband Networks, Inc. v. Imagine Communications, Inc., 2010 U.S. Dist. LEXIS 72740 at *3-6 (D. Del. July 20, 2010); New York University v. E.piphany, Inc., No. 05cv-1929, 2006 U.S. Dist. LEXIS 9157 at *16 (S.D.N.Y. Mar. 6, 2006). Id. Essex Insurance Co. v. RMJC, Inc., No. 01-4049, 2008 U.S. Dist. LEXIS 54036 at *3 (E.D. Pa. July 16, 2008) (The scope of discovery under Rule 45, which governs the issuance of subpoenas. . . is subject to the contours of Rule 26(b)(1).). Rule 26(b)(1)s relevancy standard permits discovery that appears reasonably calculated to lead to the discovery of admissible evidence. Fed. R. Civ. P. 26(b)(1). Negotiated Data Solutions LLC v. Dell, Inc., No. 09-80012, 2009 U.S. Dist. LEXIS 25026 at *7-8 (N.D. Cal. Mar. 17, 2009).

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allegedly provide some of the accused functions in [the defendants products], this court finds that it is relevant within the broad standard for discovery under Fed. R. Civ. P. 26.18 The same rationale applies here. Because Motorolas code provides some of the accused functionality in Verizons DVRs, the requested code is relevant and must be produced. II. Motorola will not suffer any undue burden by producing the requested source code. A. Motorola has already collected the 29 versions of source code and is simply refusing to let TiVo review them.

On July 1st, Motorolas counsel told TiVo: Motorola is prepared to produce all 29 versions for TiVos inspection on the source code review computer in our Boston office.19 Motorola cannot claim now that it will suffer any burden by making the source code available for TiVos review. This representation should be dispositive of this issue.20

18 19

Id. Routhier Decl. at 8, Ex. F. To the extent that Motorola challenges TiVos subpoena on burden grounds, Motorola has the heavy burden of establishing that compliance with the subpoena would be unreasonable and oppressive. Composition Roofers Union v. Graveley Roofing Enterprises, Inc., 160 F.R.D. 70, 72 (E.D. Pa. 1995) (quoting Heat & Control, Inc. v. Hester Industries, Inc., 785 F.2d 1017, 1023 (Fed. Cir. 1986)). Motorola cannot meet this burden. Setting aside Motorolas admission that it has the requested source code ready to go, TiVo and Motorola have already identified a location for the production of source code and ensured that all necessary security and technical features are in place. All Motorola has to do is hit the load button to copy those files onto the secure computer for TiVos review, and allow TiVo to review them. This certainly isnt unreasonable or oppressive to Motorolaa gigantic multinational corporation with extensive resources. See In re Automotive Refinishing Paint Antitrust Litigation, 229 F.R.D. 482, -7-

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But Motorola still refuses to produce the source code to TiVo. Motorolas only explanation for this is that the production would be premature because TiVo and Verizon were trying to reach an agreement to treat a small handful of software versions of Verizons DVRs as representative of all deployed versions.21 But as TiVo explained to Motorola, the parties have been unable to reach an agreement like that and as Motorola itself recognized, those efforts have so far proved fruitless.22 The reason for this is two-fold. First, Verizon wont agree to a stipulation. Second, Verizon doesnt have enough knowledge about Motorolas source code to be able to do it. Verizon recently represented to TiVo that because it doesnt have access to Motorolas source code in the normal course of its business, Verizon doesnt have indepth knowledge about Motorolas source code and cant tell TiVo what, if any, versions of Motorola source code would be representative of the deployed versions.23 But Motorola and TiVo dont need Verizons participation to reach this type of an agreement on Motorolas source code. In an effort to make it even easier on Motorola, TiVo has told Motorola many times that it would be willing to enter into an agreement with Motorola to limit the versions of source code that Motorola would have to produce if Motorola can identify the versions of code that are representative of Motorolas 496 (E.D. Pa. 2005) (taking the size and resources of the subpoenaed party into consideration when determining whether it was unduly burdened).
21

Routhier Decl. at 8, Ex. F. Id. at 13, Ex. J. See id. at 3.

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deployed versions. But Motorola has refused to do this. TiVo has reached out to Motorola many times in the last month to talk about this type of an agreement but Motorola wont respond to TiVos letters, emails or phone calls.24 There is nothing more TiVo can do other than bring this motion to compel the versions of code that Motorola promised to produce and is ready to produce. B. TiVo has taken reasonable steps to avoid imposing any undue burden on Motorola.

Motorola cant say with a straight face that TiVo hasnt done this. TiVo has worked very hard to reduce any purported burden or expense on Motorola to respond to TiVos subpoena. When TiVo first subpoenaed Motorola it requested a production by September 10, 2010, but it gave Motorola a number of extensions that ultimately resulted in Motorola producing the currently deployed version of its source code in March 2011.25 And after TiVo requested the other versions of source code in April, TiVo again accommodated Motorola for several months to either make its production or to reach an alternative agreement. TiVo's efforts here more than satisfy its obligation to take reasonable steps to avoid undue burden or expense. In fact, TiVos efforts actually went beyond the reasonable steps standard because TiVo continued to try to work with Motorola to reach an agreement to limit the number of source code versions that needed to be produced or reviewed even after

24

Id. at 9. Id. at 4.

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Motorola agreed to produce all versions.26 But Motorola flat-out ignored TiVos proposals and invitations to meet. For example, as soon as TiVo requested that the other deployed versions of Motorola code be produced, it invited Motorola to talk about reaching an agreement on representative versions. TiVo told Motorola that it would be willing to talk about reaching this type of an agreement to reduce the number of source code versions that needed to be produced. But Motorola ignored TiVos requests on multiple occasions. TiVo sent numerous emails and left multiple voicemails that went unanswered in May, June, and July of 2011.27 Motorola went so far as to not even show up to a scheduled meet and confer on this subject.28 It is Motorola's own refusal to work with TiVo in these efforts that necessitated this motion to compel. Conclusion Motorola has no basis to continue to refuse to produce the remaining 29 versions of its deployed source code. There is no dispute that this source code is relevant to TiVo's infringement claims against Verizon. More importantly, Motorola has agreed to produce all 29 versions of its code and has it ready to be produced. TiVo therefore respectfully requests that its motion be granted and Motorola be compelled to produce

26

Id. at 9. Id. at 9-14. Id. at 10.

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Certification of Counsel Pursuant to Local Rule 26.1(f) I, Michael A. Collyard, certify that the parties attempted to resolve this dispute in good faith, but were unable to do so after a reasonable effort.

Dated: July 22, 2011

/s/ Michael A. Collyard Michael A. Collyard

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Certificate of Service I, Christopher H. Casey, hereby certify that I caused a true and correct copy of TiVos Motion to Compel the Production of Motorola Source Code, and all supporting documents, to be served this date upon all counsel of record in the above captioned cases via electronic mail, and via U.S. mail to counsel for Motorola Mobility, Inc. as follows: Brian K. Erickson DLA Piper LLP 401 Congress Avenue, Suite 2500 Austin, TX 78701-3799

Dated: July 22, 2011

s/Christopher H. Casey Christopher H. Casey

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UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF PENNSYLVANIA TiVo Inc., a Delaware corporation, Plaintiff, vs. Verizon Communications Inc., et al. Pending in the United States District Court for the Eastern District of Texas as Civil Action No. 2:09-cv-257-DF Miscellaneous Case No. ______________

Defendants.

ORDER AND NOW, this ___ day of ______________________, 2011, upon consideration of the Motion of TiVo to Compel Motorola to Produce Source Code, it is hereby ORDERED AND DECREED that: 1. 2. The Motion is GRANTED. Motorola is ordered to produce each and every deployed version of its source code, as requested by TiVos Motion, within seven days.

________________________________ J.