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Case 3:17-cv-01375-DMS-MDD Document 677 Filed 03/12/19 PageID.

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1 Juanita R. Brooks, SBN 75934


Seth M. Sproul, SBN 217711
2
Frank J. Albert, SBN 247741
3 Joanna M. Fuller, SBN 266406
FISH & RICHARDSON P.C.
4
12390 El Camino Real
5 San Diego, CA 92130
Phone: 858-678-5070 / Fax: 858-678-5099
6
[Additional counsel listed in signature block on last page.]
7
Attorneys for Defendant/Counterclaim-Plaintiff Apple Inc.
8

10 UNITED STATES DISTRICT COURT


11 SOUTHERN DISTRICT OF CALIFORNIA

12 QUALCOMM INCORPORATED, Case No. 3:17-cv-1375-DMS-MDD

13 Plaintiff, APPLE INC.’S RESPONSE TO


QUALCOMM’S BENCH
14 v. MEMORANDUM REGARDING AN
15
INSTRUCTION RELATING TO MR.
APPLE INC., SIVA’S TESTIMONY
16
Defendant. Trial Date: March 4, 2019
17

18
Judge: Hon. Dana M. Sabraw
AND RELATED COUNTERCLAIMS.
19

20

21

22

23

24

25

26

27

28
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1 I. INTRODUCTION
2 Arjuna Siva1 appeared at trial yesterday and truthfully and fully explained
3 how he developed and communicated to Qualcomm the idea that Qualcomm claims
4 is the “solution” covered by the ’949 patent—on which Mr. Siva is not named as an
5 inventor. That is exactly the testimony that Apple expected Mr. Siva to provide
6 because he had previously testified to those facts under oath at his deposition. Now
7 that Mr. Siva has testified, the issue of a curative instruction about his
8 unavailability is moot.
9 Suggestions by Qualcomm and Matt Warren2 that Apple’s concerns were
10 baseless ignores the undisputed chronology and facts. More importantly, it ignores
11 what Mr. Warren said to Apple in the less than 24 hours he served as Mr. Siva’s
12 counsel. In a real sense, Qualcomm is suggesting that the Court punish the victim
13 or that the victim apologize. As set forth below, the record unequivocally
14 demonstrates that Apple had good reason for its concerns and acted responsibly in
15 raising those concerns with the Court.
16 Indeed, for many months, Mr. Siva was planning to voluntarily testify at
17 trial:
18  February 15, 2018: Mr. Siva is deposed in the International Trade
Commission (ITC) litigation and represented by WilmerHale. Mr.
19
Siva testified based on Qualcomm’s own description of the “solution”
20 provided by the ’949 patent that he believed the idea was his.
21  April 25, 2018: After Mr. Siva testified in his ITC deposition,
Qualcomm withdrew the ’949 patent from that case.
22
 October 30, 2018: WilmerHale counsel speaks with Mr. Siva about
23
this trial.
24
 November 29, 2018: WilmerHale counsel meets with Mr. Siva for
25 trial preparation.
26  February 21, 2019: WilmerHale counsel meets with Mr. Siva for trial
27 1
Mr. Sivasithambaresan shortens his last name to Siva.
28 2
Letter to the Court from David H. Kramer on behalf of Matt Warren, Dkt. 669.
APPLE’S RESPONSE TO QUALCOMM’S MOTION ON CURATIVE INSTRUCTION
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1 preparation.
2  March 1, 2019: WilmerHale counsel meets with Mr. Siva for trial
preparation.
3
 March 4, 2019: In its opening statement, Apple represents that Mr.
4
Siva will voluntarily appear to testify, just as he had indicated he
5 would.
6  March 6, 2019: Mr. Siva is scheduled to fly to San Diego but requests
to change his flight to early on March 7.
7

8 Then, on the morning of March 7, things changed. Mr. Siva emailed counsel
9 from WilmerHale at 6:48 a.m. to inform them that he had retained new counsel in
10 this matter, Mr. Warren. Shortly thereafter, Mr. Warren spoke with Richard
11 O’Neill of WilmerHale. Mr. Warren indicated that he was now representing Mr.
12 Siva, who was now not intending to voluntarily attend trial unless subpoenaed. Mr.
13 Warren also stated that he would “strongly advise” Mr. Siva not to answer
14 questions in a manner that would indicate Mr. Siva contributed anything to the ’949
15 patent, and instead would advise him to limit his testimony strictly to reciting facts
16 about what he had done and communicated to Qualcomm. After representing Mr.
17 Siva for one day, Mr. Warren withdrew from the representation, and Mr. Siva’s
18 current counsel represented him for the purposes of his trial testimony yesterday.
19 These facts and this chronology—culminating with Mr. Warren’s emergence
20 as Mr. Siva’s counsel on March 7, and informing Apple of his intent to “strongly
21 advise” Mr. Siva to provide trial testimony that Apple believed might not be
22 consistent with Mr. Siva’s earlier deposition testimony—caused Apple substantial
23 and real concern. Indeed, based on these same available facts, the Court itself
24 acknowledged that “I do understand why Apple is very upset.” (Tr. at 613:25-
25 614:1.)
26 From the start, Apple was clear when addressing this serious issue with the
27 Court about the limitations of Apple’s knowledge regarding the origins of these
28
APPLE’S RESPONSE TO QUALCOMM’S MOTION ON CURATIVE INSTRUCTION
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1 efforts. And Apple still does not know all the facts surrounding how Mr. Warren
2 became Mr. Siva’s counsel. But late in the evening on March 10, Apple met with
3 Mr. Siva and his new counsel for the first time since Mr. Warren appeared. At that
4 time, Mr. Siva assured Apple that he did not believe that his testimony had been
5 improperly influenced, and Apple notified the Court of that fact immediately the
6 next morning. Based on these developments, Apple withdraws its request for an
7 evidentiary hearing, and, as noted above, Apple’s prior request for a curative
8 instruction is moot.
9 Apple’s only interest throughout this episode has been to ensure that the jury
10 hear Mr. Siva’s truthful testimony. That has now happened. Apple therefore
11 respectfully submits that this case should proceed on the merits to final resolution.
12 II. BACKGROUND
13 A. Mr. Siva’s Deposition
14 On February 15, 2018, Qualcomm took the deposition in the parallel ITC
15 proceeding of Mr. Siva, a former Apple engineer. Mr. Siva was represented by
16 counsel from WilmerHale at his deposition. (Siva Dep. at 4:17-20, attached as Ex.
17 A to Declaration of Richard W. O’Neill (“O’Neill Decl.”).)
18 Qualcomm’s questioning about whether Mr. Siva believed he should have
19 been named as an inventor on the ’949 patent established that he had not read the
20 patent. (Id. at 96:18-97:2.) Qualcomm nonetheless proceeded to question Mr. Siva
21 about the ’949 patent:
22 Q. Do you have any opinion as to whether the ’949
patent is invalid or unenforceable?
23

24 MR. O’NEILL: Objection.


25
THE WITNESS: I’m not a lawyer, so I’m not sure what
26 that pertains to.
27
(Id. at 157:12-16.)
28
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1 Later in the deposition, when shown Qualcomm’s description of the


2 “solution” described in the ’949 patent (set forth in Qualcomm’s ITC claim
3 construction brief), Mr. Siva testified that Qualcomm’s supposed “solution” was his
4 idea:
5 Q. That paragraph says, “Qualcomm’s solution was to
6
transfer the image header first separately from the rest of
the image. The image header specifies the final
7 destination of each data segment. The secondary
8
processor then uses the image header to request each data
segment, transferring each data segment directly from a
9 hardware buffer into its final destination and memory.
10 This approach avoids intermediate copies, improving boot
performance.” Do you see that?
11

12 A. I see that paragraph.

13 Q. Do you agree that was Qualcomm’s solution?


14
THE WITNESS: I do not agree.
15

16 Q. Whose solution was that?

17 THE WITNESS: It was mine.


18
Q. What was your reaction when you learned that
19 Qualcomm had filed a patent in which it claims that this
20 was its solution?

21 A. I was both surprised and upset.


22
Q. Why were you upset?
23

24 A. I viewed it as an idea that I had created.


25 Q. Is there any doubt in your mind that the solution
26 Qualcomm described on Page 56 of its claim construction
brief originated with you at Apple?
27

28
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1 THE WITNESS: I have no doubt that it originated with


2
me.

3 (Id. at 220:9-221:15 (objections omitted).)


4 Mr. Siva further confirmed his intent to voluntarily attend the ITC hearing in
5 June to tell his story:
6 Q. As you sit here today, are you planning to voluntarily
7
attend the hearing in this case in June if asked?

8 A. Yes.
9
Q. Why?
10

11 A. I feel like this is the right thing to do. Something I


created and the right thing to do.
12

13 (Id. at 222:7-13.) Mr. Siva did not ultimately testify at the ITC hearing because

14 Qualcomm withdrew the ’949 patent on April 25, 2018, before the hearing took

15 place. (See O’Neill Decl. ¶ 4.)

16 B. Mr. Siva’s Trial Preparation


17 In the months leading up to trial here, Apple’s counsel spoke and met with
18 Mr. Siva to prepare him to give his testimony. These included a telephone call on
19 October 30, 2018, and meetings on November 29, 2018, February 21, 2019, and
20 March 1, 2019. (O’Neill Decl. ¶ 5.) Throughout this period, Mr. Siva remained
21 committed to voluntarily attending the trial. (Id.)
22 C. Apple’s Opening Statement
23 As Qualcomm recounts in its brief, Apple’s March 5 opening statement
24 described Mr. Siva’s disappointment with Qualcomm’s conduct in taking his idea:
25 This is Arjuna Siva. As you can see here, I said he’s a
26 former Apple engineer, and he is. He’s not with Apple
anymore. He’s with Google, one of our competitors.
27 And Mr. Siva is so upset about what happened here, he’s
28 willing to take time off from his work at Google, and he’s
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1 going to come here to court and he’s going to take an oath


2
and he’s going to look you in the eye and tell you whose
idea this really was, and the answer is it was his.
3

4 (Tr. at 64:21-65:3.) These statements were entirely consistent with the deposition
5 testimony detailed above.
6
D. The Events Of March 6 and 7
7 Mr. Siva was scheduled to fly to San Diego (from San Francisco) for this
8 trial the evening of March 6, 2019, but, at his request, Apple’s counsel arranged to
9 reschedule his flight for early on March 7. (O’Neill Decl. ¶ 6.)
10 Then, on March 7 at 6:48 a.m., Mr. Siva informed counsel from WilmerHale
11 that he had retained new counsel in this matter, Matt Warren, and requested that all
12 contact be made through Mr. Warren. (O’Neill Decl. ¶ 7.) Mr. Warren was
13 formerly a partner at Quinn Emanuel.3 On his firm’s website, Mr. Warren
14 advertises that he purportedly played a significant role in cases adverse to Apple,
15 although his name is not familiar to Apple.4 And while Qualcomm notes Mr.
16 Warren’s involvement in other cases between Apple and Qualcomm, there is no
17 suggestion that he has been involved in this case.
18 Shortly thereafter, at about 8:00 a.m., Mr. Warren spoke with Richard
19 O’Neill of WilmerHale for the first of two conversations that morning. (Id. ¶ 8.)
20 Mr. Warren indicated that he was now representing Mr. Siva, who was now not
21 intending to voluntarily attend trial. (Id.) But he advised that Mr. Siva would
22 come to trial if subpoenaed and that Mr. Warren would accept service of a
23 subpoena for him. (Id.) Mr. Warren also said that he would be willing to allow a
24

25 3
Mr. Nelson represented to the Court last Thursday that Mr. Warren was asked to leave the firm.
26 (Tr. at 607:11-12 (“Matt Warren was asked to leave our firm a long time ago.”).) This, of course,
was not information available to Apple as the events of March 6 and 7 unfolded.
4
27 For example, Mr. Warren claims: “Mr. Warren was responsible for four of the eight patents
Apple asserted against Samsung; on those four patents, Apple recovered nothing.” Available at
28 https://warrenlex.com/team/matt/.
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1 meeting with Mr. Siva to prepare him to testify, but that he would insist on being
2 present. (Id.)
3 Most significantly, Mr. Warren stated that he would “strongly advise” Mr.
4 Siva not to answer questions in a manner that would indicate Mr. Siva contributed
5 anything to the ’949 patent, and instead would advise him to limit his testimony
6 strictly to reciting facts about what he had done and communicated to Qualcomm.
7 (Id.) This was notwithstanding that, at his deposition, Mr. Siva had already
8 testified, based on Qualcomm’s description of the solution provided by the ’949
9 patent, that he believed that “solution” came from him. Mr. Warren also stated on
10 the call that, to the extent Apple’s counsel asked Mr. Siva those questions about the
11 patent in the past, they did “a great disservice to him” because he had not read the
12 patent and those are issues for the experts. (Id.) The tone of the call was hostile
13 and confrontational. (Id.) Notably, the March 11 letter to the Court on Mr.
14 Warren’s behalf makes no mention of the substantive comments he made on the
15 initial call on March 7—the letter focuses exclusively on the trial subpoena issue,
16 omitting entirely his substantive comments that had caused the greatest concern to
17 Apple, and which compelled Apple to raise the issue with the Court. (Dkt. 669.)
18 Mr. Warren and Mr. O’Neill spoke again at about 10 a.m. (Mr. O’Neill
19 placed the call to inform Mr. Warren that Mr. Siva did not need to attend trial
20 because it then appeared, based on the parties’ morning discussion with the Court,
21 that Mr. Siva’s deposition would be played rather than calling him as a live
22 witness).5 (Id. at ¶ 9.) During this call, Mr. Warren represented for the first time
23 that he had not had any contact with Quinn Emanuel regarding Mr. Siva. (Id.)
24 After the trial day on March 7, Apple issued subpoenas to Mr. Siva and Mr.
25 Warren seeking to have both appear on March 8 and, in the case of Mr. Warren,
26 that he produce documents relating to any communications regarding this case. Mr.
27
5
Tr. at 611:22-25 (“I’d like the parties to meet and confer and propose an instruction to the jury
28 prior to this witness’ testimony being delivered by way of deposition or video.”).
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1 Warren advised by email at 8:38 p.m. that night that he had retained his own
2 counsel. (Dkt. 661-2.)
3 As of 9:30 p.m. on March 7, Apple learned that Mr. Siva had retained new
4 counsel to replace Mr. Warren. (Tr. at 807:21-808:5.) Apple was further informed
5 that Mr. Siva was willing to attend trial and would be able to make it to San Diego
6 on Monday. (Id.)
7 E. Apple’s Statements About Qualcomm And Quinn Emanuel
8 Given these troubling developments—particularly after learning that Mr.
9 Siva would be “strongly advised” to offer testimony that might not be consistent
10 with his deposition testimony—Apple’s counsel informed the Court of what was
11 known as of 8:45 a.m. on March 7. (Tr. at 603:2-604:24.) After hearing from the
12 parties, the Court concluded that “the record is a good one at the present time, and
13 we’d simply reserve on it and see where we are with additional information.” (Id.
14 at 614:3-5.)
15 At the end of the day on March 7, Qualcomm raised the issue again,
16 suggesting that if Mr. Siva did not appear to testify, Qualcomm should be able to
17 seize on that development for its benefit, and that Apple should not be “shielded
18 from the consequences of [its] strategic decisions” about what to present in its
19 opening by an instruction to the jury that Mr. Siva was not available through no
20 fault of Apple. (Id. at 787:15-788:21.)6
21 Apple again raised the issue of Mr. Siva’s testimony with the Court on the
22 morning of March 8, to report the “very good news” that Mr. Siva was now
23 represented by new counsel and planning to attend trial on Monday. (Id. at 807:15-
24 808:18.)
25 The apparent abrupt about-face by a willing witness on the eve of his
26 testimony—as communicated by Mr. Warren—gave Apple every right to be
27

28 6
The transcript indicates that “Mr. Mueller” is speaking, but it was Mr. Nelson.
APPLE’S RESPONSE TO QUALCOMM’S MOTION ON CURATIVE INSTRUCTION
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1 concerned. But, in raising this issue with the Court, Apple’s counsel repeatedly
2 made clear what facts Apple had and what Apple did not know:
3  “I am not personally attacking Mr. Nelson. I do not know how Mr.
4 Siva, out of 170,000 lawyers in the state of California, decided to hire
Mr. Warren or why he decided to hire him. He was supposed to be on
5 a plane last night. I don’t know what happened, other than I’m simply
6 stating the operative facts.” (Id. at 609:20-25.)

7  “I am not blaming anyone.” (Id. at 799:5.)


8  “I want to make very clear, I don’t know who tampered with Mr. Siva.
9 I have not named names. I don’t know.” (Id. at 802:11-12.)
10  “I don’t know who tampered with him.” (Id. at 802:18-19.)
11
 “What we don’t know -- and I am going to choose my words very
12 carefully here. Someone contacted Mr. Warren to insert himself into
the case. Mr. Warren represented he had not talked to Quinn, nor had
13
he talked to anyone from Qualcomm. But what he didn’t represent
14 was who it was that got him inserted into the case.” (Id. at 814:2-8.)
15  “I am not saying it was Quinn. I am not saying -- I don’t know.” (Id.
16 at 815:8-9.)
17 III. ARGUMENT
18 A. Apple Had Good Reason To Express Concern About Improper
19
Influence On Mr. Siva.

20 As the events described above demonstrate, Apple had good reason to be


21 concerned that steps were being taken to influence Mr. Siva’s testimony. Mr. Siva
22 testified clearly at his deposition that he had “no doubt” that what Qualcomm
23 described as the “solution” of the ’949 patent in its ITC claim construction brief
24 “originated with me.” (O’Neill Decl., Ex. A at 220:9-221:14.) He also described
25 what led him to his flashless boot idea and detailed how he communicated that idea
26 to Qualcomm through a series of phone calls and written communications. (Id. at
27 106:3-107:1.) Mr. Siva also expressed his interest in voluntarily attending trial
28 (then at the ITC) because it was the “right thing to do” to tell his story. (Id. at
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1 222:7-13.) In the period leading up to this trial, Mr. Siva had consistently
2 maintained he would voluntarily appear and testify at trial. (O’Neill Decl. ¶ 5.)
3 But only hours after being retained to represent Mr. Siva, Mr. Warren
4 informed Apple that Mr. Siva would no longer voluntarily come to trial, and that if
5 he were subpoenaed, Mr. Warren would “strongly advise” Mr. Siva to provide
6 testimony with certain constraints—which Apple believed might lead to testimony
7 inconsistent with what Mr. Siva had already testified at his deposition. Indeed, Mr.
8 Siva testified at trial to some of the very issues that Apple understood might fall
9 within the scope of Mr. Warren’s instruction:
10 Q. And so is it still your testimony today, Mr. Siva, that
11
when Qualcomm claims quote: their solution was to
transfer the image header first, separately from the rest of
12 the image, the image header specifies the final destination
13
of each data segment, the secondary processor then uses
the image header to request each data segment,
14 transferring each data segment directly from a hardware
15 buffer into its final destination and memory, thereby,
avoiding intermediate copies and improving boot
16 performance, is Qualcomm accurately describing what
17 their invention was when they say that?

18 A. So in this context of just that paragraph, that looks a


lot like my idea. I can’t say what that -- like in the
19
context with the greater patent.
20
Q. But in the context -- if we can go back up to lines 9
21 through 18. In the context of Qualcomm’s
22 representations in a legal brief that this was their solution,
in this context, do you agree that this was their solution,
23 or whose solution was it?
24
A. I disagree, in that I think it was my solution.
25

26
Q. And then you were asked: is there any doubt in your
27
mind that the solution Qualcomm described on page 56 of
28 its claim construction brief originated with you at Apple?
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1 And what did you answer?


2

3
A. I said I have no doubt that it originated with me.
4
Q. And do you still feel that way?
5

6 A. Yes, I do.

7 (Tr. at 1142:16-1144:3.) By raising its serious concerns about Mr. Warren’s


8 statements, Apple took steps to ensure that Mr. Siva was able to testify fully.
9 As the Court recognized—based on the same facts—Apple’s concerns were
10 legitimate: “I do understand why Apple is very upset.” (Tr. at 613:25-614:1.)
11 Thus, it was entirely appropriate for Apple to raise the matter with the Court. It
12 was only on the evening of March 10, when Apple met with Mr. Siva for the first
13 time after Mr. Warren appeared, that Mr. Siva and his new counsel assured Apple
14 that this unusual chronology had not resulted in his feeling pressured. And it was
15 only when Mr. Siva testified the following morning at trial consistently with his
16 prior deposition testimony that Apple’s concerns were fully put to rest.
17 B. No Remedy Against Apple Is Appropriate.
18 Although it has not moved for sanctions, Qualcomm’s suggestion that a
19 range of sanctions against Apple might be appropriate is baseless. Each of the
20 possibilities it identifies, from monetary sanctions to a directed verdict of
21 infringement and validity, is unwarranted. Apple’s counsel explicitly and
22 repeatedly made clear that she did not know who was responsible for Mr. Warren
23 being inserted into the case or the content of his statements, and specifically that
24 she was not saying it was Quinn Emanuel or Qualcomm. Indeed, it would have
25 been irresponsible for Apple not to have raised the issue promptly with the Court
26 and to keep the Court advised of further developments. That is just what Apple did.
27

28
APPLE’S RESPONSE TO QUALCOMM’S MOTION ON CURATIVE INSTRUCTION
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1 IV. CONCLUSION
2 For the foregoing reasons, Apple respectfully submits that no further action is
3 required from the Court regarding Mr. Siva’s testimony—even if all the facts
4 surrounding Mr. Warren participation are not known—and that this case should
5 proceed to verdict by the jury.
6
Dated: March 12, 2019 Respectfully submitted,
7

8
By: /s/ Juanita R. Brooks
Juanita R. Brooks, SBN 75934,
9 brooks@fr.com
10
Seth M. Sproul, SBN 217711,
sproul@fr.com
11 Joanna M. Fuller, SBN 266406,
12 jfuller@fr.com
FISH & RICHARDSON P.C.
13 12390 El Camino Real
14 San Diego, CA 92130
Phone: 858-678-5070 / Fax: 858-678-5099
15

16 Ruffin B. Cordell, DC Bar No. 445801


pro hac vice, cordell@fr.com
17 Lauren A. Degnan, DC Bar No. 452421
18 pro hac vice, degnan@fr.com
FISH & RICHARDSON P.C.
19 1000 Maine Avenue, S.W. Suite 1000
20 Washington, D.C. 20024
Phone: 202-783-5070 / Fax: 202-783-2331
21

22 Katherine D. Prescott, SBN 215496


prescott@fr.com
23 Betty H. Chen, SBN 24056720
24 betty.chen@fr.com
FISH & RICHARDSON P.C.
25 500 Arguello Street, Suite 500
26 Redwood City, CA 94063
Phone: 650-839-5070 / Fax: 650-839-5071
27

28 Benjamin C. Elacqua, TX SBN 24055443


APPLE’S RESPONSE TO QUALCOMM’S MOTION ON CURATIVE INSTRUCTION
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1 pro hac vice, elacqua@fr.com


2
John P. Brinkmann, TX SBN 24068091
pro hac vice, brinkmann@fr.com
3 FISH & RICHARDSON P.C.
4
One Houston Center, 28th Floor
1221 McKinney
5 Houston, TX 77010
6 Phone: 713-654-5300 / Fax: 713-652-0109

7 Nina S. Tallon, DC Bar No. 479481


8 pro hac vice, nina.tallon@wilmerhale.com
WILMER CUTLER PICKERING HALE AND
9 DORR LLP
10 1875 Pennsylvania Avenue NW
Washington, DC 20006
11 Phone: 202-663-6000 / Fax: 202-663-6363
12
Mark D. Selwyn, SBN 244180,
13 mark.selwyn@wilmerhale.com
14 WILMER CUTLER PICKERING HALE AND
DORR LLP
15 950 Page Mill Road
16 Palo Alto, CA 94304
Phone: 650-858-6000 / Fax: 650-858-6100
17

18 William F. Lee, MA Bar No. 291960


pro hac vice, william.lee@wilmerhale.com
19 Joseph J. Mueller, MA Bar No. 647567
20 pro hac vice,
joseph.mueller@wilmerhale.com
21 Timothy Syrett, MA Bar No. 663676
22 pro hac vice,
timothy.syrett@wilmerhale.com
23 WILMER CUTLER PICKERING HALE AND
24 DORR LLP
60 State Street
25 Boston, MA 02109
26 Phone: 617-526-6000 / Fax: 617-526-5000
27 William A. Isaacson, DC Bar No. 414788
28 pro hac vice, wisaacson@bsfllp.com
APPLE’S RESPONSE TO QUALCOMM’S MOTION ON CURATIVE INSTRUCTION
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1 Karen L. Dunn, DC Bar No. 1002520


2
pro hac vice, kdunn@bsfllp.com
BOIES, SCHILLER & FLEXNER LLP
3 1401 New York Avenue, N.W.
4
Washington, DC 20005
Phone: 202-237-2727 / Fax: 202-237-6131
5

6 Brian P. Boyd, GA SBN 553190


pro hac vice, bboyd@fr.com
7 FISH & RICHARDSON P.C.
8 1180 Peachtree St., NE, 21ST Floor
Atlanta, GA 30309
9 Phone: 404-892-5005 / Fax: 404-892-5002
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Attorneys for Apple Inc.
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APPLE’S RESPONSE TO QUALCOMM’S MOTION ON CURATIVE INSTRUCTION
CASE NO. 3:17-cv-01375-DMS-MDD 14
Case 3:17-cv-01375-DMS-MDD Document 677 Filed 03/12/19 PageID.38505 Page 16 of 16

2 CERTIFICATE OF SERVICE
3 The undersigned hereby certifies that a true and correct copy of the above
4 and foregoing document has been served on March 12, 2019 to all counsel of record
5 who are deemed to have consented to electronic service via the Court’s CM/ECF
6 system per Civil Local Rule 5.4. Any other counsel of record will be served by
7 electronic mail, facsimile and/or overnight delivery.
8 Executed on March 12, 2019 at San Diego, CA.
9

10 /s/ Juanita R. Brooks


11
Juanita R. Brooks

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APPLE’S RESPONSE TO QUALCOMM’S MOTION ON CURATIVE INSTRUCTION
CASE NO. 3:17-cv-01375-DMS-MDD 15
Case 3:17-cv-01375-DMS-MDD Document 677-1 Filed 03/12/19 PageID.38506 Page 1 of 3

1 Nina S. Tallon, DC Bar No. 479481, appearing pro hac vice


WILMER CUTLER PICKERING HALE AND DORR LLP
2
1875 Pennsylvania Avenue NW
3 Washington, DC 20006
Phone: 202-663-6000 / Fax: 202-663-6363
4
5 Joseph J. Mueller, MA Bar No. 647567, appearing pro hac vice
WILMER CUTLER PICKERING HALE AND DORR LLP
6
60 State Street
7 Boston, MA 02109
Phone: 617-526-6000 / Fax: 617-526-5000
8
9 Juanita R. Brooks, SBN 75934
10 Seth M. Sproul, SBN 217711
FISH & RICHARDSON P.C.
11 12390 El Camino Real
12 San Diego, CA 92130
Phone: 858-678-5070 / Fax: 858-678-5099
13
14 [Additional counsel listed in signature block on last page.]
Attorneys for Defendant/Counterclaim-Plaintiff Apple Inc.
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UNITED STATES DISTRICT COURT
16
SOUTHERN DISTRICT OF CALIFORNIA
17
QUALCOMM INCORPORATED, Case No. 3:17-CV-1375-DMS-MDD
18
19 Plaintiff, DECLARATION OF RICHARD W.
v. O’NEILL IN SUPPORT OF APPLE
20 INC.’S RESPONSE TO QUALCOMM’S
21 APPLE INCORPORATED, BENCH MEMORANDUM
REGARDING AN INSTRUCTION
22 Defendant. RELATING TO MR. SIVA
23
AND RELATED COUNTERCLAIMS.
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Case No. 3:17-CV-1375-DMS-MDD
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1 I, Richard W. O’Neill, hereby declare as follows:


2 1. I am an attorney admitted to practice in the Commonwealth of
3 Massachusetts and am admitted pro hac vice to practice before the U.S. District Court
4 for the Southern District of California. I am a partner at the law firm Wilmer Cutler
5 Pickering Hale and Dorr LLP, counsel for Apple Inc. in the above-captioned matter.
6 2. I submit this declaration in support of Apple Inc.’s Response to
7 Qualcomm’s Bench Memorandum Regarding an Instruction Relating to Mr. Siva’s
8 Testimony.
9 3. Attached hereto as Exhibit A are true and accurate copies of excerpts of
10 the transcript of the February 15, 2018 deposition of Arjuna Siva1 in a proceeding
11 before the International Trade Commission, Certain Mobile Electronic Devices and
12 Radio Frequency and Processing Components Thereof, Inv. No. 337-TA-1065.
13 4. On April 25, 2018, Qualcomm filed a motion to terminate its assertion
14 of U.S. Patent No. 8,838,949 in the 337-TA-1065 Investigation.
15 5. In preparation for trial in this case, counsel from WilmerHale spoke with
16 Mr. Siva on October 30, 2018, and met briefly with him on November 29, 2018,
17 February 21, 2019, and March 1, 2019 to prepare for trial. Based on these meetings,
18 I understood that Mr. Siva remained committed to voluntarily attending this trial. I
19 also was aware that Mr. Siva had arranged his personal schedule and had travel plans
20 to attend the trial.
21 6. Mr. Siva was scheduled to fly to San Diego (from San Francisco) the
22 evening of March 6, 2019, but at his request, counsel from WilmerHale arranged to
23 reschedule his flight for early on March 7, 2019.
24 7. On March 7, 2019, at 6:48 a.m., Mr. Siva informed me and other counsel
25 from WilmerHale that he had retained new counsel in this matter, Matthew Warren,
26 and requested that all future contact be made with Mr. Warren.
27
1
Mr. Siva’s full last name is Sivasithambaresan.
28
2 Case No. 3:17-CV-1375-DMS-MDD
Case 3:17-cv-01375-DMS-MDD Document 677-1 Filed 03/12/19 PageID.38508 Page 3 of 3

1 8. At around 8:00 a.m. on March 7, 2019, I spoke with Mr. Warren on the
2 phone. Mr. Warren indicated that he was representing Mr. Siva, who was now not
3 intending to voluntarily attend trial. Mr. Warren further advised, however, that Mr.
4 Siva would come to trial if subpoenaed and that Mr. Warren would accept service of
5 a subpoena for him. Mr. Warren said that he would be willing to allow a meeting
6 with Mr. Siva to prepare him to testify, but that he would insist on being present. Mr.
7 Warren also told me that he would “strongly advise” Mr. Siva not to answer questions
8 in a manner that would indicate Mr. Siva contributed anything to the ’949 patent, and
9 instead would advise him to limit his testimony strictly to reciting facts about what he
10 had done and communicated to Qualcomm. Mr. Warren further stated that, to the
11 extent counsel from WilmerHale permitted Mr. Siva to answer questions about the
12 ’949 patent at his earlier deposition deposition, they did “a great disservice to him”
13 because he had not read the patent and those are issues for the experts. Mr. Warren’s
14 tone was hostile and confrontational.
15 9. I spoke to Mr. Warren again at about 10 a.m. to inform him that, based
16 on developments before the Court earlier that morning (see 3/7/19 Trial Tr. at 611:5-
17 24), it appeared that Mr. Siva’s deposition would be played, rather than calling him
18 as a live witness. During this call, Mr. Warren represented for the first time to me
19 that he had not had any contact with Quinn Emanuel regarding Mr. Siva. Mr.
20 Warren’s tone was hostile and confrontational during this call as well.
21 I declare under penalty of perjury that the foregoing is true and correct to the
22 best of my knowledge and belief.
23
24 Executed this 12th day of March 2019.
25
/s/ Richard W. O’Neill
26
Richard W. O’Neill
27
28
3 Case No. 3:17-CV-1375-DMS-MDD
Case 3:17-cv-01375-DMS-MDD Document 677-2 Filed 03/12/19 PageID.38509 Page 1 of 11

Exhibit A
Case 3:17-cv-01375-DMS-MDD Document 677-2 Filed 03/12/19 PageID.38510 Page 2 of 11
CONFIDENTIAL UNDER PROTECTIVE ORDER

Page 1
1 UNITED STATES INTERNATIONAL TRADE COMMISSION
2 Washington, DC
3 In the matter of
4 CERTAIN MOBILE ELECTRONIC INVESTIGATION NO:
DEVICES AND RADIO FREQUENCY 337-TA-1065
5 AND PROCESSING COMPONENTS
THEREOF
6

_________________________________/
7

10

11

12 ** TRANSCRIPT MARKED CONFIDENTIAL **


13 ** UNDER PROTECTIVE ORDER **
14 VIDEOTAPED DEPOSITION OF ARJUNA SIVASITHAMBARESAN
15 Palo Alto, California
16 Thursday, February 15, 2018
17

18

19

20

21

22

23 Reported By:
24 LINDA VACCAREZZA, RPR, CLR, CRP, CSR. NO. 10201
25 JOB NO. 138016

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Page 4
1 THE VIDEOGRAPHER: This is the start of
2 Tape labeled Number 1 of the videotaped deposition
3 of Arjuna Sivasithambaresan in the Matter of
4 Certain Mobile Electronic Devices and Frequency
5 Radio And Processing Units Thereof, in the United
6 States International Trade Commission, Number
7 337-TA-1065. This deposition is being held at 950
8 Page Mill Road in Palo Alto, California, on
9 February 15th, 2018, at approximately 10:11 a.m.
10 My name is Jason Saylor, and I'm the legal video
11 specialist, and the court reporter is Linda
12 Vaccarezza, both in association with TSG Reporting.
13 Will counsel and all present please introduce
14 yourselves for the record.
15 MR. HAMSTRA: Nathan Hamstra, Quinn
16 Emanuel, for complainant Qualcomm.
17 MR. O'NEILL: Richard O'Neill from Wilmer
18 Hale on behalf of the witness and Apple. And also
19 with me are Toby Mock from Wilmer Hale and Jessica
20 Hannah with Apple.
21 THE VIDEOGRAPHER: Will the court reporter
22 please swear in the witness.
23

24

25

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Page 96
1 BY MR. HAMSTRA:
2 Q. The court reporter has handed you Exhibit
3 5, a page 1 e-mail dated February 2, 2010, bearing
4 Bates number APL-QC1065_02955770.
5 A. Okay. I see the document.
6 Q. One step ahead of me there. Do you see
7 someone named Igor Malmont on the CC line?
8 A. Yes.
9 Q. Do you have an understanding of whether
10 he's a named inventor on the '949 patent?
11 A. I believe he was a named inventor.
12 Q. The next name is Steve Haehnichen. Do you
13 see that?
14 A. Yes.
15 Q. Do you have an understanding whether he's
16 a named inventor on the '949 patent?
17 A. I believe so.
18 Q. Have you reviewed the '949 patent before?
19 A. I don't think I've actually reviewed the
20 patent itself. The first time I had heard about it
21 was when my attorneys here reached out to me.
22 Q. But since your attorneys reached out to
23 you, have you looked at the '949 patent?
24 A. No.
25 Q. So to the best of your knowledge, you've

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Page 97
1 never seen the '949 patent before?
2 A. If I've seen the actual patent itself?
3 Q. Okay.
4 A. I might have -- I might have seen
5 something related to the litigation.
6 Q. Sure. Do you recall what that thing
7 related to the litigation was?
8 A. I believe it was in the context of
9 flashless boot.
10 Q. Do you recall the contents of that
11 document?
12 A. I recall a claim that Qualcomm was the
13 inventor of the design that I had referred to
14 earlier. And that I suppose Apple had infringed or
15 something like that.
16 Q. Do you recall any other contents of that
17 document?
18 A. No.
19 Q. And in Exhibit 5, Mr. Mujtaba is
20 requesting a call with Qualcomm, correct?
21 A. Yes.
22 Q. And the call was to cover the following
23 agenda items. Do you see that?
24 A. You're referring to the section after the
25 signature from on?

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Page 106
1 design in late January?
2 A. Yes.
3 Q. How do you know that you came up with that
4 design in late January of 2010?
5 A. That's around the time when my management
6 tipped me off of, hey, we got a -- we got to make
7 this fast. And specifically, I remember Ms. Isabel
8 Mahe referring to the desire to have the -- when
9 the phone boots up, when the UI shows, up for their
10 the modem to be fully booted up and to be showing
11 bars, and not showing searching. So I started
12 thinking about that in January.
13 Q. Is that an e-mail you recall from Isabel
14 Mahe, or is it an e-mail you reviewed yesterday?
15 A. So it was a hallway conversation. I sat
16 down the hallway from her.
17 Q. And you remember that that conversation
18 from eight years ago occurred in late January?
19 A. It happened in like late January, both
20 from Arun and Isabel indicating to me.
21 Q. Did you say both Arun and Isabel?
22 A. So let me clarify. Arun was the one that
23 kind of gave me the details. The Apple logo
24 showing up -- sorry, the UI showing up and the bars
25 showing up thing. I distinctly remember Isabel

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Page 107
1 mentioning that.
2 Q. And between mentioning that and coming up
3 with the design, how much time do you recall
4 elapsing?
5 A. I think less than a couple of days. As
6 soon as I started reading about ELF, right, I was
7 like, "Let's just do what the desktop does."
8 Q. Do you recall when you first informed
9 someone else about that design?
10 A. It would have to be some time in late
11 January. It would have been Mr. Josh De Cesare I
12 would have seeked his advice. Does this make
13 sense?
14 Q. Did you inform other than Mr. Josh De
15 Cesare about your design before February 9th, 2010?
16 A. So Arun and my manager, Ben Juang at the
17 time, would have been aware. I was pretty good
18 about telling him what I was doing and what I was
19 thinking about.
20 Q. And would that have been a verbal
21 communication to Mr. Zhang and --
22 A. Arun?
23 Q. And Arun?
24 A. It would have been like in the hallway.
25 And likely during a one-on-one with the both of

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Page 157
1 A. I do recall a protocol named Sahara.
2 Q. And one of the nice things about the
3 Sahara protocol was that the payload was mostly
4 transferred using direct memory access, correct?
5 A. I don't recall that implementation detail.
6 That was a modem side thing, so I'm not aware of
7 it.
8 Q. Are you intending to appear at trial in
9 this case, Mr. Siva?
10 A. If I'm asked to appear, I'm happy to
11 appear.
12 Q. Do you have any opinion as to whether the
13 '949 patent is invalid or unenforceable?
14 MR. O'NEILL: Objection.
15 THE WITNESS: I'm not a lawyer, so I'm not
16 sure what that pertains to.
17 BY MR. HAMSTRA:
18 Q. Do you recall filing a patent application
19 at Apple relating to flashless boot?
20 A. I recall filing a patent at Apple related
21 to flashless boot.
22 Q. Did you include in that patent your design
23 for flashless booting that we have been discussing
24 today?
25 A. So if I remember correctly, that patent

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Page 220
1 Q. If you could turn a few pages ahead to
2 Page 56. Tell me when you're there.
3 A. I'm good. Okay.
4 Q. Do you see in the middle of the page,
5 there's a paragraph that says, starts with
6 "Qualcomm solution."
7 Do you see that?
8 A. I do see that paragraph.
9 Q. That paragraph says, "Qualcomm's solution
10 was to transfer the image header first separately
11 from the rest of the image. The image header
12 specifies the final destination of each data
13 segment. The secondary processor then uses the
14 image header to request each data segment,
15 transferring each data segment directly from a
16 hardware buffer into its final destination and
17 memory. This approach avoids intermediate copies,
18 improving boot performance."
19 Do you see that?
20 A. I see that paragraph.
21 Q. Do you agree that was Qualcomm's solution?
22 MR. HAMSTRA: Objection. Leading.
23 THE WITNESS: I do not agree.
24 BY MR. O'NEILL:
25 Q. Whose solution was that?

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Page 221
1 MR. HAMSTRA: Objection. Leading.
2 THE WITNESS: It was mine.
3 BY MR. O'NEILL:
4 Q. What was your reaction when you learned
5 that Qualcomm had filed a patent in which it claims
6 that this was its solution?
7 A. I was both surprised and upset.
8 Q. Why were you upset?
9 A. I viewed it as an idea that I had created.
10 Q. Is there any doubt in your mind that the
11 solution Qualcomm described on Page 56 of its claim
12 construction brief originated with you at Apple?
13 MR. HAMSTRA: Objection. Leading.
14 THE WITNESS: I have no doubt that it
15 originated with me.
16 BY MR. O'NEILL:
17 Q. Is Apple paying you for your time here
18 today?
19 MR. HAMSTRA: Objection. Leading.
20 THE WITNESS: No.
21 BY MR. O'NEILL:
22 Q. Has Apple hired you as a consultant in
23 this case?
24 MR. HAMSTRA: Objection. Leading.
25 THE WITNESS: No.

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Page 222
1 BY MR. O'NEILL:
2 Q. Do you have any financial stake in the
3 outcome of this case?
4 MR. HAMSTRA: Objection. Leading.
5 THE WITNESS: No.
6 BY MR. O'NEILL:
7 Q. As you sit here today, are you planning to
8 voluntarily attend the hearing in this case in June
9 if asked?
10 A. Yes.
11 Q. Why?
12 A. I feel like this is the right thing to do.
13 Something I created and the right thing to do.
14 MR. O'NEILL: Nothing further.
15 FURTHER EXAMINATION
16 BY MR. HAMSTRA:
17 Q. Mr. Siva, you haven't analyzed the claims
18 of the '949 patent, correct?
19 A. Can you clarify by "analyze"?
20 Q. Have you mapped the claims of the '949
21 patent to your idea?
22 MR. O'NEILL: Objection. Asked and
23 answered.
24 THE WITNESS: I'm going based on only this
25 paragraph here, that Qualcomm claims that there was

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