Here's SCO's Memorandum in Support of Plaintiff's Motion to Compel, docket number 621, filed in redacted form, as text, thanks to the wonderful Steve Martin, who did the transcript, the HTML, the proofing, the works. Oops. I hope SCO didn't apply for a trademark on The Works. They might sue me for trademark violation. Joke, joke. (See Exhibit 1, if you wonder what I'm kidding about.) We'll number each SCO motion to compel from now on, to try to keep them straight, and to avoid having to call them something like SCO's re-re-re-re-re-re-re-filed motion to compel. It's accurate, one might argue, but hard on the eyes. Note that this isn't the motion to compel that was denied without prejudice on Friday. That was SCO's motion to compel number 592 on the Pacer docket. No, they haven't filed 592 motions to compel. It just *feels* like they have. That's the docket number, meaning it's the 592nd document or notation on the docket in this case. UPDATE: I take that back. I checked Pacer again, after comments said I was wrong, and I was. This is the redacted version of 592, so this *is* the one that was heard on Friday. If anyone has time to do any of the exhibits, that would be great. There's surely enough exhibits to go around. Happily some are sealed. I say happily because there are 34 exhibits. We have 18 and 19 OCR'd and HTML'd, but not yet proofed, so please choose one of the others, and leave a comment so we don't duplicate. You can find all the exhibits here. Thank you.
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Brent O. Hatch (5715)
Mark F. James (5295)
HATCH, JAMES & DODGE
[address]
[phone]
[fax]
Stuart H. Singer (admitted pro hac vice)
BOIES, SCHILLER & FLEXNER LLP
[address]
[phone]
[fax]
Robert Silver (admitted pro hac vice)
Edward Normand (admitted pro hac vice)
BOIES, SCHILLER & FLEXNER LLP
[address]
[phone]
[fax]
Stephen N. Zack (admitted pro hac vice)
BOIES, SCHILLER & FLEXNER LLP
[address]
[phone]
[fax]
Attorneys for The SCO Group, Inc.
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF UTAH
THE SCO GROUP, INC.,
Plaintiff/Counterclaim-Defendant,
v.
INTERNATIONAL BUSINESS
MACHINES CORPORATION,
Defendant/Counterclaim-Plaintiff.
|
MEMORANDUM IN SUPPORT OF
PLAINTIFF'S MOTION TO COMPEL
FILED IN REDACTED FORM
Case No. 2:03CV0294DAK
Honorable Dale A. Kimball
Magistrate Judge Brooke C. Wells
|
1
Table of Contents
| Preliminary Statement | 1 |
| Argument | 3 |
| I. IBM's FAILURE TO PRODUCE HIGHLY RELEVANT DAMAGES-RELATED DOCUMENTS | 3 |
| A. IBM's Actual and Projected Linux-Related Revenues | 5 |
| B. IBM's Actual and Projected AIX- and Dynix-Related Revenues | 7 |
| C. IBM's Profits and Expenses Associated with Its Linux-Related Revenues | 9 |
| D. IBM's Profits and Expenses Associated with Its AIX- and Dynix-Related Revenues | 10 |
| E. Market Size/Market Shares for the Linux, UNIX, and Windows OS's | 11 |
| F. IBM Customers Who Migrated to Linux from UNIX | 13 |
| G. General Categories Related to Linux, AIX and Dynix | 14 |
| II. IBM'S FAILURE TO PRODUCE OTHER CATEGORIES OF HIGHLY RELEVANT DOCUMENTS | 15 |
| A. Documents Directly Relating to Project Monterey | 15 |
| B. Documents Directly Relating to IBM's Ongoing Linux-Related Activities | 17 |
| C. Any and All Versions of AIX from 1985 to 1990 | 18 |
| III. IBM's FAILURE TO PRODUCE RULE 30(b)(6) WITNESSES TO ADDRESS SEVERAL HIGHLY RELEVANT TOPICS | 20 |
| A. Testimony Regarding IBM's Retention of Potentially Responsive Documents | 20 |
2
| B. Testimony Regarding Crucial Aspects of IBM's Linux-Related Activities | 21 |
| C. Testimony Regarding the Scope of the Restrictions of IBM's Own Licenses | 22 |
| D. Testimony Regarding IBM's Communications with the "Chicago 7" | 23 |
| Conclusion | 25 |
| CERTIFICATION OF COMPLIANCE WITH MEET AND CONFER OBLIGATIONS | 26 |
3
Plaintiff, The SCO Group, Inc. ("SCO"), respectfully submits this memorandum in
support of SCO's motion to compel Defendant, International Business Machines Corporation
("IBM"), to produce certain discovery.
Preliminary Statement
SCO asks the Court to order IBM to produce several categories of documents that are
highly relevant to SCO's claims (as well as certain of IBM's own counterclaims) and that IBM
would not face any undue burden in producing. SCO also asks the Court to order IBM to
produce a Rule 30(b)(6) witness to address several topics directly relevant to SCO's claims.
IBM could produce the foregoing documents and witnesses within the current deadline (March
17, 2006) for the end of all fact discovery.
While IBM now tells SCO that the material and testimony at issue is either not relevant at
all or not sufficiently relevant that IBM should have to produce it, SCO expects that IBM will
say the exact opposite when it renews its motions for summary judgment and seeks to rely on the
absence of the very evidence it how holds back. In response to numerous unambiguous
document requests, moreover, IBM has unilaterally declared that it has produced documents that
are "sufficient" to respond to only a portion of the request — as if those were appropriate
discovery responses under the Federal Rules of Civil Procedure.
SCO primarily seeks documents of the same type that SCO has produced to IBM in
response to IBM's damages-related document requests. These documents directly relate to
SCO's theory of damages with respect to its contract, copyright, and tort claims. IBM cannot
reasonably dispute the relevance of such materials, and any burden IBM faces in producing the
relevant materials is merely a function of the size of IBM and its correspondingly broad Linux-
4
related business. Neither of those facts is a proper basis for an "undue burden" objection, and
both facts underscore the very grounds of SCO's theory of damages.
In addition, although IBM has failed to produce relevant documents and witness on
several other issues,1 SCO addresses in this Motion only the following:
-
Documents directly relating to that aspect of SCO's claim of unfair competition in
which SCO argues that in the Project Monterey joint venture between the parties
IBM never gained the right to use SCO's proprietary source code in IBM's own
AIX product.
-
Documents directly relating to IBM's ongoing Linux-related activities — which
bear directly on both SCO's own claims and IBM's request for a clean bill of
health with respect to all of those activities.
-
IBM's failure in response to a Court Order to produce any version of AIX from 1985
to 1990, where SCO would rely on such UNIX derivative works and
modifications in support of its contract claims, and
REDACTED
-
IBM's refusal to produce a Rule 30(b)(6) witness to address IBM's retention of
potentially responsive documents in this litigation —
REDACTED
-
IBM's refusal to produce a Rule 30(b)(6) witness to address crucial aspects of
IBM's Linux-related activities and IBM's communications with a group of
industry cohorts to discuss how to deal with SCO's lawsuit against IBM.
-
IBM's refusal to produce a Rule 30(b)(6) witness to address the scope of the
restrictions that IBM's own licenses impose on its licensees' use or distribution of
AIX and Dynix technologies — an issue that obviously bears on IBM's
interpretation of the restrictions of the Software Agreements at issue in SCO's
contract claims.
5
SCO has repeatedly and unsuccessfully asked IBM to produce or discuss the production of the
foregoing documents and witnesses, in many cases exchanging correspondence with IBM on
these topics over the course of months. Given those efforts and the impending end of SCO's fact
discovery on its claims, this Motion is ripe for resolution.
Argument
The Supreme Court has broadly interpreted Rule 26(b)(1) of the Federal Rules of Civil
Procedure regarding the actual and potential relevance of requested discovery. See Oppenheimer
Fund, Inc. v. Sanders, 437 U.S. 340, 451 (1978); accord Gomez v. Martin Marietta Corp., 50
F.3d 1511, 1520 (10th Cir. 1995). In this Court, "at the discovery stage, the concept of relevance
should be construed very broadly." Gohler v. Wood, 162 F.R.D. 691, 695 (D. Utah 1995). The
discovery requests below do specifically relate to issues raised by the parties' pleadings, but even
if they did not, they would still appropriately relate to SCO's efforts to "define and clarify the
issues." Gomez, 50 F.3d at 1520.
SCO addresses below IBM's failure to produce highly relevant damages-related
documents (Part I), certain categories of other highly relevant documents (Part II), and Rule
30(b)(6) witnesses to address certain plainly relevant topics (Part III).
I. IBM'S FAILURE TO PRODUCE HIGHLY RELEVANT DAMAGES-RELATED DOCUMENTS
IBM has simply refused to produce entire categories of documents, going to the heart of
SCO's theories of damages, that SCO asked IBM to produce in its Fifth Request for the
Production of Documents (Dec. 20, 2004) (Ex. 1).
-
In response to twenty-eight (28) of the requests in SCO's Fifth Request, IBM refused to
produce any documents, stating that each request "seeks information that is irrelevant and
6
not reasonably calculated to lead to the discovery of admissible evidence." IBM's
Responses and Objections to SCO's Fifth Request for the Production of Documents (Feb.
3, 2005) (Ex. 2), Nos. 142, 146, 147, 152-59, 163, 165-69, 171-73, 176, 177, 179-81,
194, 195, 197.
-
In response to many other categories of documents, IBM claims to have produced and/or
promises to produce documents, but in fact has produced very few responsive documents.
Id., Nos. 143-45, 148-51, 160-62, 164, 170, 174, 175, 178, 182-93, 196, 198.
In addition, although in responses to IBM's request SCO identified the bates-range and subject
matter of the numerous damages-related documents it produced in the summer of 2005 (Ex. 3 at
2-3), IBM has refused to do the same.
A fundamental threshold problem with IBM's objections to these requests is IBM's
across-the-board pronouncement that it will not produce any documents "prior to 2001". IBM's
Responses and Objections to SCO's Fifth Request for the Production of Documents, at 2. IBM
offers no basis for this self-imposed limitation, because there is none. IBM's proclamation goes
well beyond any interpretation of the scope of the requests. A party may not, as IBM has done
here, "arbitrarily draw the lines of what is or is not discoverable; to unilaterally decide what may
be fair or foul." Johnson v. Mach. Co. v. Kaiser Aluminum & Chem. Corp., No. 85-3200, 1985
WL 4007, at *2 (E.D. Pa. Nov. 26, 1985) (Ex. A).
An obvious aspect of SCO's theory of damages is evidence of how IBM's Linux-related
revenues and profits have increased from the late 1990s to the present, during the period in
which IBM has undertaken to improve Linux by misappropriating SCO's protected technologies
and to benefit from such improvements. A critical component of SCO's damages model will be
the evolution of IBM's contributions over time and the fruits of those contributions, which were
borne in its revenues in sales of Linux-related hardware, middleware, software, and consulting
7
services. Given the clear relevance of this information, IBM's refusal to produce responsive
documents from "prior to 2001" is baseless.
SCO identifies below the basic categories of documents sought in the requests at issue
and explains why the requested documents are plainly relevant to SCO's claims. Although each
party's precise theories of damages is ultimately a subject of expert testimony, SCO addresses
below the general issue of how the document requests relate to the damages theories that SCO
has been pursuing and is continuing to pursue in this case.
A. IBM's Actual and Projected Linux-Related Revenues
These requests include Nos. 142, 143, 146, 147, 148, 149, 152, 153, 154, and 155. The
documents concerning the amounts of IBM's actual and projected Linux-related revenues are
relevant because, for example, they will permit SCO to demonstrate how much revenue IBM has
obtained and would expect to obtain as a result, in significant part, of IBM's misappropriation of
SCO's proprietary technologies in IBM's contributions to Linux. These revenue figures are
necessary to demonstrate the amount of such revenue SCO would have realized if IBM had not
used its improper contributions to Linux to make it an enterprise-ready operating system that
took market share from SCO's UNIX products. They are also necessary to demonstrate the
amount of money that IBM should disgorge to SCO as a result of IBM's wrongdoing. As a
matter of expert analysis, the actual and expected future growth of such revenues is relevant to
establish the value of SCO's technology to IBM in the context of a hypothetical reasonable-royalty
negotiation.
IBM's objections to the foregoing requests include its refusal to produce transaction-level
data or even a summary of such data with respect to sales of any Linux-related product other
8
than the Linux OS. The transactional-level data is necessary, for example, for SCO's experts to
distinguish applications where Linux would have been unsuitable without IBM's contributions of
SCO technologies — for example, applications requiring high levels of scalability or reliability.
Without being able to rely on such data, SCO fully expects IBM's damages experts to argue that
SCO's damages models include revenue that should be excluded from the analysis. IBM cannot
have it both ways; it cannot refuse to produce relevant materials that would enable SCO to
establish its damages, and then object to SCO's damages models because they include revenue
that SCO could exclude only if it had the transactional-level data that it has requested.
IBM's own documents confirm, moreover, that IBM's revenues from Linux-related
offerings (as opposed to sales of the OS itself) are plainly relevant.
REDACTED
Given
those facts, it is clear that requested documents are relevant to SCO's efforts to fashion its
damages claims, and that without such documents SCO will be significantly prejudiced.
9
In addition, although unnecessary to demonstrate at this point in discovery, there is a
direct linkage between IBM's contributions of enterprise technology to Linux and IBM's
increased sales of Linux-related middleware and services.
REDACTED
B. IBM's Actual and Projected AIX- and Dynix-Related Revenues
These requests include Nos. 142, 144, 148, 150, 154, and 155. The documents
concerning the amounts of IBM's actual and projected AIX-related revenues are relevant
because they will permit SCO to demonstrate, among other things, how much revenue IBM has
obtained and would expect to obtain as a result of IBM's unlicensed use of AIX after SCO
terminated IBM's Software Agreements in June 2003. SCO intends to use these revenue figures
to demonstrate, under the Copyright Act, the amounts that IBM should be obligated to disgorge
to SCO. The same rationale applies to SCO's request for IBM's sales and licensing of the Dynix
operating system, as at Request Nos. 145 and 151.
IBM has refused to produce any information showing IBM's sales of related AIX
hardware, either on a transactional basis (Request No. 142) or even in summary form (Request
No. 148). Likewise, IBM has refused to produce information on AIX-related sales of servers
(such as IBM's RS/6000 series), either on a transactional basis (Request No. 154) or in the form
of contracts (Request No. 155). SCO therefore lacks significant evidence of IBM's sales of
10
servers with AIX preinstalled (that is, RS/6000 servers a/k/a pSeries servers).
REDACTED
11
Because SCO seeks to demonstrate the many forms of revenues that IBM received in
connection with AIX sales that occurred after June 2003, it will require sufficient data to
determine whether particular transactions were associated with AIX sales that occurred before or
after that date. Accordingly, unless IBM collates the information internally on that basis, SCO
seeks the transactional-level information to prepare its analysis. IBM should also produce
information regarding its AIX sales prior to June 2003. That information will show the
importance of IBM's pre-existing AIX franchise and, therefore, the value of the technology to
IBM in the context of a hypothetical reasonable royalty negotiation.
C. IBM's Profits and Expenses Associated with Its Linux-Related Revenues
These requests include Nos. 163-168. IBM has failed to produce any significant volume
of documents evidencing the costs associated with (and thus the profits from) its Linux-related
hardware sales.2
REDACTED
Yet IBM has refused to produce information on either the costs or the profits associated with
Linux-related hardware (Request Nos. 163 and 166), software (Request Nos. 164 and 167),
12
or services (Request Nos. 165 and 168). And while IBM agreed to produce information on its
costs relating to sales of the OS itself (Request Nos. 164 and 167), it refused to produce
information on the corresponding profits.
REDACTED
D. IBM's Profits and Expenses Associated with Its AIX- and Dynix-Related Revenues
These requests include Nos. 163-171. The documents concerning the profits and expenses
associated with IBM's AIX-related revenues are relevant because, for example, they will permit
SCO to demonstrate the amount of gross profit IBM has realized and would expect to realize as a
result of IBM's improper continued use of AIX after SCO terminated IBM's Software
Agreements in 2003. The documents concerning the amounts of such profits and expenses from
before 2003 are relevant because they will permit SCO to confirm the accuracy of IBM's
post-termination gross profit. Under the Copyright Act, SCO intends to use the gross-profit figures to
demonstrate the amounts that IBM should be obligated to disgorge to SCO. In addition, as a
matter of expert analysis, the profits and expenses are relevant to establish the value of SCO's
technology to IBM in the context of a hypothetical reasonable-royalty negotiation.
In short, the requested documents bear directly on the extent to which IBM has profited
from its unlicensed sales of AIX. IBM has refused to produce information on either the costs or
the profits associated with its AIX-related sales of hardware (Request Nos. 163 and 169),
software (Request No. 164), or services (Request Nos. 165 and 171).
REDACTED
13
REDACTED
E. Market Size/Market Shares for the Linux, UNIX, and Windows OS's
These requests include Nos. 172-177. The requested documents concerning the market
size and market shares for the Linux, UNIX, and Windows operating systems are relevant
because, for example, they will permit SCO to demonstrate how much of the market IBM has
acquired and can expect to acquire as a result, in significant part, of IBM's misappropriation of
SCO's proprietary technologies in IBM's contributions to Linux. These documents would
enable SCO to use the very documents in IBM's custody and control — thereby limiting IBM's
ability to object to the accuracy of the documents and to any related expert conclusions relying
on such information.
SCO will likewise use these market-share figures to demonstrate the amount of market
share SCO would have realized if IBM had not used its improper contributions to Linux to make
it an enterprise-ready operating system that took market share from SCO's UNIX products. This
information would also demonstrate the amount of money IBM should disgorge to SCO as a
result of IBM's wrongdoing. The documents are further relevant because, for example, they will
permit SCO to demonstrate that IBM made Linux SCO's primary competitor in the market for
enterprise-ready operating systems, such that the rise of Linux was inversely proportional to the
fall in SCO's UNIX business.
The data and information sought in Request Nos. 172-77 are directly relevant to seminal
issues in this case, including SCO's allegation that as a result of IBM's contribution of SCO's
confidential materials into Linux, Linux gained substantial market significance at the expense of
14
UNIX. The documents sought in these requests are critical to establishing the growth of the
Linux-based enterprise-computing market segment in relation to the total enterprise-computing
market. This information will also enable SCO to demonstrate IBM's competitive position
within the enterprise-computing market and the Linux-based enterprise-computing market
segment, both before and after its improper contributions to Linux.3
In addition, because server hardware forms the basis for IBM's enterprise-computing
solutions, IBM's position in the server market provides one of the best measures of its overall
competitiveness in the enterprise-computing market. IBM strengthened its competitive position
through its wrongful conduct and, therefore, the documents sought are clearly relevant and likely
to lead to the discovery of admissible evidence. Likewise, because IBM's Linux strategy had
ramifications across each of its server platforms, it also follows that information about all of its
server platforms is relevant despite IBM's reluctance to provide the data.
Although IBM agreed to produce information for the Linux and UNIX OS's (Request
Nos. 174 and 175), its production does not appear to be nearly complete even in those areas.
IBM's documents contain references to a number of relevant International Data Corporation
("IDC") studies, for example, but the studies themselves have not been produced. Nor is there
any production of recent projections of future Linux and UNIX market sizes/shares, or of
documents containing systematic records of OS market shares.
15
In connection with SCO's other requests (regarding information on market sizes and
market shares for servers, middleware, and services), IBM simply refused to produce the
information altogether. SCO seeks information relating to Linux, UNIX, and Windows server
hardware, middleware, and services, including third-party studies and all available current and
historical information.
REDACTED
F. IBM Customers Who Migrated to Linux from UNIX
These requests include Nos. 156-59. The documents concerning IBM customers who
migrated to Linux from UNIX are relevant because, for example, they will permit SCO
concretely to demonstrate that by having made Linux enterprise-ready, through its
misappropriation of SCO's proprietary technologies in its contributions to Linux, IBM thereafter
convinced UNIX users to switch to Linux. SCO intends to use the documents to demonstrate the
number of IBM customers who migrated to Linux from UNIX and when they did so, in order
further to show how much revenue that IBM gained and that SCO lost as a result of IBM's
having made Linux enterprise ready. IBM has refused to produce any documents in response to
these requests.
The data sought in these requests will establish that Linux became suitable for workloads
that previously required UNIX through IBM's contribution of SCO's valuable proprietary
information.
REDACTED
16
REDACTED
Such improper tactics are among the bases for SCO's claims against IBM.
G. General Categories Related to Linux, AIX and Dynix
These requests include Nos. 160-62 and 178-84. IBM has produced only a few AIX-related
documents created after 2003 and has produced virtually no documents concerning
Dynix. In Request No. 162, for example, SCO seeks to obtain documents relating to IBM's
decision to undertake its strategic shift toward Linux. In Request No. 178, SCO seeks analyses
and various other documents relating to IBM's projections of the actual, projected, or likely
customers for operating systems, hardware, software, and services based on Linux, AIX, or
Dynix. In Request Nos. 182-84, SCO seeks documents concerning IBM's plans and public-relations
efforts to market, promote, or advertise AIX and Dynix. These requests, and the others,
are all reasonably calculated to lead to admissible evidence regarding (among many other subject
matters) the relevant markets, IBM's competitiveness within those markets and with respect to
specific products over the course of its contributions to Linux, and IBM's reasons for deciding to
shift toward Linux in the first place. These issues all directly relate to SCO's claims and theories
of damages.
17
II. IBM'S FAILURE TO PRODUCE OTHER CATEGORIES OF HIGHLY RELEVANT DOCUMENTS
A. Documents Directly Relating to Project Monterey
REDACTED
Accordingly, in its Seventh Request for the Production of Documents (Aug. 12, 2005)
(Ex. 18), Request Nos. 293-98, SCO asked IBM to produce documents relating to IBM's use and
definition of the internal IBM terms "GA" and "PRPQ" and documents relating to IBM's
internal criteria for using one label or the other in describing a product. In response to most of
the requests, IBM objected on the following grounds:
In addition to the foregoing general objections, IBM objects specifically to this
Request on the grounds that it is vague, ambiguous, overbroad, and unduly
burdensome, and seeks information that is irrelevant and not reasonably
18
calculated to lead to the discovery of admissible evidence. IBM further objects to
this Request on the grounds that it fails to identify with reasonably particularity
the documents the plaintiff seeks. Subject to, as limited by, and without waiving
the foregoing general and specific objections, IBM, after a search of reasonable
scope, has already produced or will produce non-privileged documents sufficient
to describe the terms "GA" and "PRPQ" for AIX.
IBM's Responses and Objections to SCO's Seventh Request for the Production of Documents
(Sept. 19, 2005) (Ex. 19), at 16-19.
SCO submits that IBM's objections to the foregoing requests are improper. As to
specificity, the requests are detailed and clear. In Topic No. 295, for example, SCO seeks "All
documents, including manuals, concerning IBM's current or former requirements, guidelines,
instructions, or procedures for making a GA release of a product such as an operating system,
including but not limited to documents concerning the internal review, testing, support,
approvals, and level of product development required or recommended for a GA release." The
topic thus clearly asks IBM to produce those documents relating to the means by which IBM has
satisfied or does satisfy itself that it will designate a product a "GA" release. As to burden, there
must be (or have been) one or more persons at IBM who are familiar with the means by which
IBM determines whether to label a product "GA" or "PRPQ." IBM could easily begin to
identify the responsive, relevant documents by speaking with such employees. As to the scope
of IBM's search, it is not for IBM to unilaterally decide either (a) that in the document requests
at issue, SCO sought only to obtain those documents that "describe the terms 'GA' and 'PRPQ'
for AIX," or (b) that in its own view IBM has produced documents "sufficiently to describe" even
that subset of SCO's own document requests.
Further, as to relevance, IBM's objections are not well founded. It has never been
disputed between the parties that Project Monterey is a subject of SCO's claim of unfair
19
competition. In addition to producing at least a few documents relating to "GA" and "PRPQ,"
IBM has produced many internal documents regarding Project Monterey, and has permitted SCO
to ask numerous detailed questions of numerous IBM fact witnesses regarding Project Monterey.
In sum, the documents SCO seeks in Request Nos. 293-98 relate directly to a core aspect of one
of the core set of facts underlying SCO's claim of unfair competition, and the Court should order
IBM to produce the documents responsive to the Requests.
B. Documents Directly Relating to IBM's Ongoing Linux-Related Activities
SCO's claims plainly implicate IBM's ongoing efforts to make contributions to (that is,
to improve) Linux. Indeed, in its Tenth Counterclaim, IBM broadly states: "IBM is entitled to a
declaratory judgment pursuant to 28 U.S.C. § 2201 that IBM does not infringe, induce the
infringement of, or contribute to the infringement of any SCO copyright through its Linux
activities, including its use, reproduction and improvement of Linux, and that some or all of
SCO's purported copyrights in UNIX are invalid and unenforceable." IBM's Second Amended
Counterclaims ¶ 173 (Mar. 29, 2004).
Accordingly, SCO has asked IBM to produce the following material clearly relating to
IBM's aggressive promotion and marketing of Linux:
All documents concerning IBM's plans, efforts or attempts to market, promote, or
advertise (a) hardware products or software product usable with Linux-based
operating systems, AIX operating systems or Dynix operating systems; (b)
middleware software usable in a Linux environment; or (c) services (including
installation, development, maintenance, consulting, or migration services)
associated with Linux-based systems or software products, AIX systems or
software products, or Dynix systems or software products.
SCO's Seventh Request for the Production of Documents (Ex. 18), Request No. 372. Again, on
its face, this request seeks relevant material — namely, documents that SCO can use further to
20
demonstrate (among other things) IBM's intense commitment to Linux across products and
IBM's view of the significance of that commitment to making Linux an enterprise-ready
operating system in competition with SCO's UNIX products. The documents thus obviously
relate to (among other things) SCO's theories of damages.
In response to Request No. 372, however, IBM makes its rote objections on the grounds
of purported ambiguity and burden, and again unilaterally redefines the scope of the request:
"IBM, after a search of reasonable scope, has already produced documents sufficient to describe
IBM's efforts to promote Linux." IBM's Responses and Objections to SCO's Seventh Request
for the Production of Documents (Ex. 19), at 65-66. SCO again submits that it is not for IBM
unilaterally to decide either (a) that in the document requests at issue, SCO sought only to obtain
those documents that "describe IBM's efforts to promote Linux," or (b) that in its own view IBM
has produced documents "sufficient to describe" even that subset of SCO's document requests.
IBM's objection suffers from the further, fundamental flaw that IBM has unilaterally imposed
the restriction on the request that it would not produce any documents from before 2001. IBM
imposed the same restriction in response to SCO's Fifth Request for the Production of
Documents. See Part I, above. Such pre-2001 marketing materials are obviously relevant to
help SCO show how IBM's commitment to Linux across products, since before 2001, has
increased commensurate with the significant contributions that IBM has made to Linux.
C. Any and All Versions of AIX from 1985 to 1990
In its Order dated January 18, 2005, having identified the relevance of such source code
to SCO's claims, this Court ordered IBM "to provide in a readily accessible format all versions
and changes to AIX and Dynix." Order dated January 18, 2005, at 9-10. The Court issued that
21
Order notwithstanding IBM's representations at that time that it did not have ready access to pre-1991
AIX source code. See IBM's Mem. in Opp. to SCO's Mem. re: Disc. (June 13, 2004) at 10;
Decl. of Joan Thomas (June 23, 2004) ¶ 5. The Court specified: "This production is also to
include the approximately 'two billion lines of code' as represented by IBM in addition to any
other code that is found in the CMVC and RCS systems relating to AIX and Dynix." January 18
Order at 10.4
IBM has represented in the course of substantial correspondence with SCO on this issue
(in which IBM repeatedly asked SCO where SCO thought IBM should look for the material in
order to comply with the Court Order) that IBM has been unable to locate any pre-1991 version
of AIX. If IBM has taken every reasonable step it can to locate such code, then SCO will
address at an appropriate time (such as upon IBM's expected motions for summary judgment)
the significance of IBM's failure to produce such code.
REDACTED
SCO therefore raises IBM's failure to produce this
material in abundance of caution, in order to preclude any argument that SCO has not
diligently pursued the production of the material.
22
III. IBM'S FAILURE TO PRODUCE RULE 30(b)(6) WITNESSES TO ADDRESS SEVERAL HIGHLY RELEVANT TOPICS
The broad scope of Rule 26(b)(1) also applies to Rule 30(b)(6) depositions, in that the
courts should "not read Rule 30(b)(6) as carving out a special limitation on the scope of
discovery defined in Rule 26(b)(1)." Cabot Corp. v. Yamulla Enters., Inc., 194 F.R.D. 499, 500
(M.D. Pa. 2000). Accordingly, SCO asks the Court to order IBM to produce a Rule 30(b)(6)
witness or witnesses in the following areas.
A. Testimony Regarding IBM's Retention of Potentially Responsive Documents
In its Notice of Rule 30(b)(6) Deposition dated August 15, 2005 (Ex. 22), in Topic No. 8,
SCO asks IBM to produce a witness to address: "The measures, policies, and/or procedures that
IBM has adopted or used to preserve or to destroy potentially relevant documents in this
litigation, including without limitation documents relating to Linux (such as Linux contributions
by anyone since IBM first learned of SCO's legal claims)." As SCO has pointed out to IBM (Ex.
23 at 1), the topic is appropriate under Rule 30(b)(6). See, e.g., Doe v. District of Columbia, No.
Civ. A. 03-1789, 2005 WL 1871019, at *8 (D.D.C. Aug. 9, 2005) (Ex. B); Bank of N.Y. v.
Meridien Biao Bank Tanzania Ltd., 171 F.R.D. 35, 150-51 (S.D.N.Y. 1997); see also Nutramax
Labs, Inc. v. Twin Labs, Inc., 183 F.R.D. 458, 470 (D. Md. 1998). IBM agreed to produce a
witness to address this Topic (Ex. 24 at 4), but thereafter claimed otherwise (Ex. 25 at 3).
REDACTED
23
REDACTED
B. Testimony Regarding Crucial Aspects of IBM's Linux-Related Activities
In its Notice of Rule 30(b)(6) Deposition dated November 11, 2005 (Ex. 30), in Topic
No. 7, SCO asks IBM to produce a witness to address: "IBM's view as to why current or
prospective customers have or have not accepted IBM's representations regarding the
performance and reliability of Linux." In Topic No. 8, SCO asks IBM to produce a witness to
address: "The steps or measures IBM has taken to help IBM customers transition from using
other operating systems to using Linux, including making available to customers technology on
which IBM has relied in testing the performance or reliability of Linux."
On their face, Topic Nos. 7 and 8 are reasonably calculated to lead to IBM testimony that
will support SCO's argument that the significant role IBM has played in developing Linux and
helping its customers transition to the use of Linux is an important factor in SCO's theories of
24
damages. See also Part I.F, above. SCO asserts (among other things) that IBM's role was
crucial to enabling Linux to become an enterprise-ready operating system in competition with
SCO's UNIX products. In Topic No. 7, SCO seeks IBM's own views (that is, admissions) that
IBM's customers accepted IBM's representations regarding the performance and reliability of
Linux because they trusted IBM, in a way that they would not have trusted another company
seeking to convince them to use Linux. In Topic No. 8, SCO seeks further and directly to probe
the full significance of IBM's role in convincing its customers to use Linux. Each topic thus
seeks directly relevant testimony, and each is sufficiently specific for IBM to identify and
produce a witness or witnesses to address them.
C. Testimony Regarding the Scope of the Restrictions of IBM's Own Licenses
In its Notice of Rule 30(b)(6) Deposition dated November 11, 2005 (Ex. 30), in Topic
No. 9, SCO asks IBM to produce a witness to address: "The restrictions that IBM's AIX
Licenses have imposed on the licensee's use or distribution of AIX source code, methods, or
concepts, or of products that the licensee develops after entering into the AIX License." SCO
defined "AIX License" for purposes of the Notice as "any contract, agreement or license by
which IBM has authorized a third party to have access to and use AIX source code." In Topic
No. 10, SCO requested a witness on the same bases with respect to Dynix.
On their face, Topic Nos. 9 and 10 are reasonably calculated to lead to IBM testimony
that is relevant to IBM's Software Agreements with AT&T, such as IBM's interpretation of
language in its AIX Licenses that parallels language in IBM's Software Agreements with AT&T.
SCO reasonably expects, for example, that the evidence of IBM's interpretation of the
limitations on its licensees' use of AIX source code and AIX-derived works will contradict
25
IBM's very permissive interpretation of the uses that IBM argues it is permitted to make of
UNIX-derived works under its Software Agreements with AT&T.
In response to Topic Nos. 9 and 10, however, IBM objects on the grounds that "it is
vague, ambiguous, overbroad, unduly burdensome, and seeks information that is irrelevant and
not reasonably calculated to lead to admissible evidence. IBM has produced copies of AIX [and
Dynix] source code licenses, and SCO can see for itself the terms contained in those licenses."
IBM's Responses and Objections to SCO's Notice of Rule 30(b)(6) Deposition dated November
11, 2005 (Dec. 16, 2005) (Ex. 31), at 4-5. But where the AIX and Dynix licenses themselves are
indisputably relevant (IBM admits that it has produced them), it is plainly inconsistent for IBM
now to say that its interpretation of those Licenses is not relevant. More fundamentally, it would
be relevant for a fact-finder to know that whereas IBM believes it can make virtually unfettered
public distribution of UNIX-derivative works under its Software Agreement with AT&T, it
believes at the same time that its own licensees cannot make such use of IBM's AIX-derivative
works and Dynix-derivative works. Where many of the relevant terms of the Software
Agreements and the AIX/Dynix Licenses are the same or very similar, IBM's varying
interpretations of the use of UNIX-derived and AIX- and Dynix-derived products would create a
great inconsistency for the factfinder to consider in assessing IBM's interpretation of its
Software Agreements with AT&T.
D. Testimony Regarding IBM's Communications with the "Chicago 7"
In its Notice of Rule 30(b)(6) Deposition dated November 11, 2005 (Ex. 30), in Topic
No. 17, SCO asks IBM to produce a witness to address: "The communications regarding SCO,
Linux, AIX or Dynix among the 'Chicago 7' (comprising Computer Associates International,
26
Inc., Oracle Corporation, Dell, Inc., Intel Corporation, Novell, Inc., IBM, and Hewlett-Packard
Company)."
REDACTED
In addition, in a November 22 letter copied to counsel for IBM, Dell has acknowledged the
existence of a "confidentiality agreement among the entities" in the Chicago 7. Ex. 34.
Notwithstanding the existence of the Chicago 7 and the obvious relevance of IBM's
conduct within that group regarding (at least) SCO's tort claims, IBM has said the following in
response to Topic No. 17: "IBM objects to this topic on the grounds that it is vague, ambiguous,
overbroad, unduly burdensome, and seeks information that is irrelevant and not reasonably calculated
to lead to admissible evidence. IBM also objects to this topic on the grounds that it
does not describe with reasonable particularity the matters on which examination is requested."
IBM's Responses and Objections to SCO's Notice of Rule 30(b)(6) Deposition dated November
11, 2005 (Ex. 31). SCO submits that IBM is familiar with the Chicago 7 and could easily have
identified someone at IBM (or, for example, Dell) with knowledge of the group, and that the
27
testimony SCO seeks is reasonably calculated to support that portion of SCO's tort claims in
which SCO alleges that IBM's has worked within the industry to harm SCO.
Conclusion
SCO respectfully requests, for the foregoing reasons, that the Court order IBM to produce
the foregoing categories of documents and Rule 30(b)(6) witnesses.
DATED this 29th day of December, 2005.
Respectfully submitted,
HATCH, JAMES & DODGE, P.C.
Brent O. Hatch
Mark F. James
BOIES, SCHILLER & FLEXNER LLP
Robert Silver
Stuart H. Singer
Stephen N. Zack
Edward Normand
By (signature of Mark James)
Counsel for The SCO Group, Inc.
1
As of today, for example, SCO continues to await the designation of witnesses and deposition dates for
several IBM fact witnesses, and the designation of witnesses and deposition dates with respect to SCO's
Notices of Rule 30(b)(6) Deposition dated August 15, 2005, and November 11, 2005. With respect to the
Rule 30(b)(6) witnesses in particular, IBM promised many weeks ago to identify witnesses and provide
dates on several of the topics, but has failed to do so.
2
IBM has produced, for example, information on its development expenses and its selling, general and
administrative ("SG&A") expenses, but not its cost of goods sold ("COGS"), in connection with its Linux
related hardware sales. As SCO notes above, although in response to IBM's request SCO has identified
the bates range and subject matter of the numerous damages-related documents that SCO produced in the
summer of 2005 (Ex. 3 at 2-3), IBM has refused SCO's request to identify the damages-related
documents that IBM claims to have produced.
3
An important goal of IBM's Linux strategy, and an important reason IBM worked to enterprise-harden
Linux, was to ward off significant competitive threats from Sun and Microsoft. Without information on
the overall market context (including information about Sun and Microsoft), information on IBM's server
sales will provide little insight into the extent to which IBM was successful in staving off those
competitive threats. The data are also important because the overall server market experienced a palpable
downturn during the period at issue. Without information about the overall market context, IBM's server
sales from the relevant period could provide a misleading measure of their competitive performance.
4
It is important to note that a proper production of pre-1991 AIX source code would include not only the
source code itself, but also comments and admissions from IBM's own developers confirming that IBM
regarded AIX as a whole, and important technologies within AIX, to have been derived from UNIX
System V source code and technologies therein.
28
CERTIFICATION OF COMPLIANCE WITH MEET AND CONFER OBLIGATIONS
SCO counsel has made a good-faith effort to raise for discussion and to reach an
agreement with IBM counsel on the matters set forth in this Motion through numerous
conversations and the exchange of numerous letters, in many cases going back a number of
months. IBM counsel has disagreed with SCO counsel on the merits of SCO's arguments or has
declined to accept or follow up on SCO's invitation to discuss the issues, and in some instances
counsel have agreed to disagree on the basis of the parties' written responses and objections.
DATED this 29th day of December, 2005.
Respectfully submitted,
HATCH, JAMES & DODGE, P.C.
Brent O. Hatch
Mark F. James
BOIES, SCHILLER & FLEXNER LLP
Robert Silver
Stuart H. Singer
Stephen N. Zack
Edward Normand
By (signature of Mark James)
Counsel for The SCO Group, Inc.
29
CERTIFICATE OF SERVICE
Plaintiff, The SCO Group, Inc., hereby certifies that a true and correct copy of the
foregoing Plaintiff's Motion to Compel (filed in redacted form) was served by mail on Defendant
International Business Machines Corporation on the 10th day of February, 2006, by U.S. Mail to:
David Marriott, Esq.
Cravath, Swaine & Moore LLP
[address]
Donald J. Rosenberg, Esq.
[address]
Todd Shaughnessy, Esq.
Snell & Wilmer LLP
[address]
(signature)
30
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