Apple Inc. v. Samsung Electronics Co. Ltd. et al

Filing 1054

REPLY (re #939 Administrative Motion to File Under Seal Apple's Administrative Motion to File Documents Under Seal ) filed byApple Inc.. (Jacobs, Michael) (Filed on 6/7/2012)

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HAROLD J. MCELHINNY (CA SBN 66781)
[e-mail]
MICHAEL A. JACOBS (CA SBN 111664)
[e-mail]
JENNIFER LEE TAYLOR (CA SBN 161368)
[e-mail]
ALISON M. TUCHER (CA SBN 171363)
[e-mail]
RICHARD S.J. HUNG (CA SBN 197425)
[e-mail]
JASON R. BARTLETT (CA SBN 214530)
[e-mail]
MORRISON & FOERSTER LLP
425 Market Street
San Francisco, California 94105-2482
Telephone: [phone]
Facsimile: [phone]

WILLIAM F. LEE
[e-mail]
WILMER CUTLER PICKERING
HALE AND DORR LLP
60 State Street
Boston, MA 02109
Telephone: [phone]
Facsimile: [phone]
MARK D. SELWYN (SBN 244180)
[e-mail]
WILMER CUTLER PICKERING
HALE AND DORR LLP
950 Page Mill Road
Palo Alto, California 94304
Telephone: [phone]
Facsimile: [phone]

Attorneys for Plaintiff and
Counterclaim-Defendant APPLE INC.

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

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APPLE INC., a California corporation,

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Plaintiff,
v.
SAMSUNG ELECTRONICS CO., LTD., a
Korean business entity; SAMSUNG
ELECTRONICS AMERICA, INC., a New York
corporation; SAMSUNG
TELECOMMUNICATIONS AMERICA, LLC, a
Delaware limited liability company,

Case No. 11-cv-01846-LHK
REPLY IN SUPPORT OF APPLE’S
MOTION TO STRIKE PORTIONS OF
SAMSUNG’S EXPERT REPORTS
Date:
Time:
Place:
Judge:

June 21, 2012
10:00 a.m.
Courtroom 5, 4th Floor
Hon. Paul S. Grewal

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Defendants.
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REPLY IN SUPPORT OF APPLE’S MOTION TO STRIKE PORTIONS OF SAMSUNG’S EXPERT REPORTS
CASE NO. 11-CV-01846-LHK
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TABLE OF CONTENTS
Page

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I.

SAMSUNG’S UTILITY PATENT EXPERT REPORTS ASSERT
THEORIES THAT WERE NOT DISCLOSED DURING FACT DISCOVERY .............. 1

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A.

Samsung’s Invalidity Experts Opine On Undisclosed Prior Art............................ 1

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1.

Mr. Gray’s New Prior Art References (’915 Patent) ..................................... 1

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2.

Dr. Van Dam’s New Prior Art References (’381 Patent)............................... 3

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3.

Dr. Von Herzen’s New Reference and Defense (’607 Patent)....................... 4

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B.

Samsung’s Non-Infringement Experts Opine on Undisclosed Arguments............ 4

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1.

Dr. Johnson’s New Non-Infringement Theory (’381 Patent) ........................ 4

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2.

Dr. Von Herzen’s New Non-Infringement Theories (’607 Patent)................ 5

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3.

Mr. Gray’s Improper Non-Infringement Contention (’915 Patent) ............... 6

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C.

Samsung’s Infringement Experts Assert Undisclosed Theories ............................ 7

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1.

Dr. Yang’s Undisclosed Theories (’460 Patent) ............................................ 7

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2.

Dr. Williams’ Undisclosed Theory (’516 Patent) .......................................... 8

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II.

THE COURT SHOULD STRIKE SAMSUNG’S LATE DISCLOSED
DEFENSES ON DESIGN AND TRADE DRESS ISSUES ................................................ 9

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A.

Apple Did Not Abandon its Rights To Challenge Untimely Disclosures .............. 9

B.

Samsung Improperly Withheld Information During Fact Discovery .................... 9

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Samsung’s Theories Were Not “Otherwise Made Known” to Apple .................. 11

D.

Samsung Fails to Show That Its Violation of Rule 26(e) Was Harmless ............ 13

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III.
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THE COURT SHOULD STRIKE SAMSUNG’S LATE SUPPLEMENTAL
DAMAGES REPORT AND ALTERNATIVE CALCULATIONS
PRODUCED ON APRIL 16, 2012 .................................................................................... 14

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A.

Mr. Wagner’s Supplemental Report Was Untimely and Prejudicial ................... 14

B.
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The Court Should Not Allow Mr. Wagner to Rely on “Tab 6” of the April 16
Report ................................................................................................................... 14

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CONCLUSION .............................................................................................................................. 15

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REPLY IN SUPPORT OF APPLE’S MOTION TO STRIKE PORTIONS OF SAMSUNG’S EXPERT REPORTS
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TABLE OF AUTHORITIES

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Page(s)

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CASES

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Abbott Labs. v. Lupin Ltd.,
2011 WL 1897322 (D. Del. May 19, 2011) ............................................................................ 10

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Abbott Labs. v. Syntron Bio-Research, Inc.,
2001 U.S. Dist. LEXIS 26339 (S.D. Cal. Aug. 24, 2001) ...................................................... 12
Accenture Global Servs. GmbH v. Guidewire Software Inc.,
691 F. Supp. 2d 577 (D. Del. 2010) ........................................................................................ 10
Anascape, Ltd. v. Microsoft Corp.,
2008 WL 7180756 (E.D. Tex. May 1, 2008) ............................................................................ 7
Bowling v. Hasbro, Inc.,
2007 WL 3274328 (D. R.I. Nov. 5, 2007) .............................................................................. 10
Bridgestone Sports Co. Ltd. v. Acushnet Co.,
2007 WL 521894 (Feb. 15, 2007) ........................................................................................... 12
CBS Interactive, Inc. v. Etilize, Inc.,
257 F.R.D. 195 (N.D. Cal. 2009) .............................................................................................. 7

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Contech Stormwater Solutions, Inc. v. Baysaver Techs., Inc.,
534 F. Supp. 2d 616 (D. Md. 2008) ........................................................................................ 13
Cummins-Allison Corp. v. SBM Co., Ltd.,
2009 U.S. Dist. LEXIS 22100 (E.D. Tex. Mar. 19, 2009) ........................................................ 5
Cummins-Allison Corp. v. SBM Co., Ltd.,
2009 WL 763926 (E.D. Tex. March 19, 2009) ......................................................................... 3

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DataQuill Ltd. v. Handspring, Inc.,
2003 WL 25696445 (N.D. Ill. Dec. 19, 2003) ........................................................................ 10
Dominguez v. Excel Mfg. Co., Inc.,
2010 U.S. Dist. LEXIS 137582 (N.D. Cal. Dec. 20, 2010) .................................................... 15
Fast Food Gourmet, Inc. v. Little Lady Foods, Inc.,
2007 WL 2156665 (N.D. Ill. Jul. 26, 2007) ............................................................................ 11

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Fleming v. Escort, Inc.,
2011 U.S. Dist. LEXIS 58917 (D. Idaho June 2, 2011)........................................................ 2, 3
Heidelberg Harris, Inc. v. Mitsubishi Heavy Indus., Ltd.,
1996 U.S. Dist. LEXIS 17362 (N.D. Ill. Nov. 21, 1996) ........................................................ 10
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In re Convergent Techs. Sec. Litig.,
108 F.R.D. 328 (N.D. Cal. 1985) .............................................................................................. 9
Insight Tech., Inc. v. Surefire, LLC,
2009 WL 3242557 (D.N.H. Oct. 8, 2009) .............................................................................. 10
Marine Polymer Techs., Inc. v. HemCon, Inc.,
2010 U.S. Dist. LEXIS 47504 (D. N.H. Apr. 8, 2010) ........................................................... 12
Microstrategy Inc. v. Business Objects, S.A.,
429 F.3d 1344 (Fed. Cir. 2005) ............................................................................................... 10
Monsanto Co. v. E.I. Du Pont De Nemours & Co.,
2012 WL 27936 (E.D. Mo. Jan. 5, 2012)................................................................................ 11
O’Connor v. Boeing N. Am., Inc.,
2005 U.S. Dist. LEXIS 46233 (C.D. Cal. Sept. 12, 2005) .................................................. 6, 14
Oracle Am., Inc. v. Google Inc.,
2011 WL 4479305 (N.D. Cal. Sept. 26, 2011) ......................................................................... 8

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Pfizer Inc. v. Teva Pharms. USA, Inc.,
2006 U.S. Dist. LEXIS 74611 (D.N.J. Oct. 13, 2006) ...................................................... 11, 12
Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc.,
763 F. Supp. 2d 671 (D. Del. 2010) ........................................................................................ 10
Primos, Inc. v. Hunter’s Specialties, Inc.,
451 F.3d 841 (Fed. Cir. 2006) ................................................................................................. 13

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San Francisco Bay Area Rapid Transit Dist. v. Spencer,
2007 WL 421336 (N.D. Cal. Feb. 5, 2007) ............................................................................ 11
SanDisk Corp. v. Memorex Prods., Inc.,
415 F.3d 1278 (Fed. Cir. 2005) ................................................................................................. 9
Takeda Chem. Indus., Ltd. v. Mylan Labs., Inc.,
2005 WL 2092920 (S.D.N.Y. Aug. 31, 2005) ........................................................................ 10

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Transclean Corp. v. Bridgewood Servs., Inc.,
77 F. Supp. 2d 1045 (D. Minn. 1999) ..................................................................................... 12
Tritek Techs., Inc. v. United States,
63 Fed. Cl. 740 (Fed. Cl. 2005) .............................................................................................. 10
Warner-Lambert Co. v. Teva Pharma. USA, Inc.,
2006 WL 267328 (D.N.J. Jan. 31, 2006) ............................................................................ 5, 10

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Zoltek Corp. v. United States,
71 Fed. Cl. 160 (Fed. Cl. 2006) .............................................................................................. 11
REPLY IN SUPPORT OF APPLE’S MOTION TO STRIKE PORTIONS OF SAMSUNG’S EXPERT REPORTS
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STATUTES AND OTHER AUTHORITIES

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Fed.R.Civ.P.
26 ............................................................................................................................................... 6
26(a)(2)(B)(i)............................................................................................................................. 6
26(e) ................................................................................................................................. passim
33(d) ........................................................................................................................................ 11
37(c)(1)................................................................................................................................ 5, 11

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Patent Local Rule
3-1 ............................................................................................................................................. 7
3-3(a) ......................................................................................................................................... 2
3-3(c) ......................................................................................................................................... 2

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Samsung’s opposition to Apple’s motion to strike utility patent expert reports rests on a

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straw-man argument. Apple does not contend that Samsung’s Invalidity and Infringement

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Contentions––or its interrogatory responses––needed to “contain the [same] level of evidentiary

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detail” that courts require in expert reports. (Opp. at 1.) Apple moves to strike portions of the

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Samsung utility expert reports only where Samsung’s Contentions or interrogatory responses

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completely failed to set out a theory now asserted by a Samsung expert. As Samsung’s

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opposition confirms, this occurred as to several theories.

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Samsung’s arguments concerning the opinions of its design experts that it divulged only

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after the close of fact discovery fare no better. Samsung admits that its interrogatory responses

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did not disclose the expert opinions at issue, and its claim that it made Apple aware of these

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defenses through other means benefits Apple’s motion: all Samsung does is underscore the

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length of time in which its defenses had crystallized, but were withheld. The Federal Rules do

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not allow a party accused of infringement to conceal its invalidity and non-infringement defenses

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throughout discovery, and then launch them in expert reports when the patentee can no longer

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take steps it needs to attack the defenses.

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I.

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SAMSUNG’S UTILITY PATENT EXPERT REPORTS ASSERT THEORIES
THAT WERE NOT DISCLOSED DURING FACT DISCOVERY.
A.

Samsung’s Invalidity Experts Opine On Undisclosed Prior Art.
1.

Mr. Gray’s New Prior Art References (’915 Patent).

Samsung concedes that Mr. Gray relies on ten references that its Invalidity Contentions

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did not disclose, but addresses only three––the Mandelbrot, DTLens, and DTMouse applications.

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(Opp. at 2-4.) The Court should grant Apple’s uncontested motion as to the other seven. The

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Court should grant the motion as to the Mandelbrot, DTLens, and DTMouse because Samsung

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admits that it knew of these applications and their source code when it served its Contentions, but

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unjustifiably concealed these defenses until it served Mr. Gray’s report six months later.

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Samsung cites introductory text in its Invalidity Contentions stating that Samsung was not

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just relying on “prior art systems” like Diamond Touch, but also “documents and source code

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describing the same.” (Dkt. No. 1014-1 at 26.) But Mandelbrot, DTLens, and DTMouse are not
REPLY IN SUPPORT OF APPLE’S MOTION TO STRIKE PORTIONS OF SAMSUNG’S EXPERT REPORTS
CASE NO. 11-CV-01846-LHK
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documents or source code that describe Diamond Touch. They are applications that––if loaded

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onto the system––can run on Diamond Touch. (Pernick Decl. Ex. 1 at 2.)

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Samsung offers no authority for the proposition that disclosing the Diamond Touch

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system would also implicitly identify applications that might––or might not––be installed on the

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system. Mandelbrot and DTLens are optional applications that are not necessarily present on the

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Diamond System at all. Because Samsung’s Invalidity Contentions did not identify Mandelbrot,

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DTLens, or DTMouse as required by Patent Local Rule 3-3(a), the Court should strike Mr. Gray’s

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analysis that relies on them. (See Mot. at 5 (citing cases).)

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Samsung’s reference to “documents and source code describing” the prior art systems that

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it did identify would not have been enough to disclose properly Mandelbrot, DTLens, or

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DTMouse in any event. In addition to identifying prior art in its Invalidity Contentions, an

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accused infringer must also provide “[a] chart identifying where specifically in each alleged item

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of prior art each limitation of each asserted claim is found….” Patent Local Rule 3-3(c).

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Samsung’s claim chart (Attachment J1) never once cites to Mandelbrot, DTLens, or DTMouse

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(Pernick Reply Decl. Ex.2), let alone maps these applications to the claim limitations. See

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Fleming v. Escort, Inc., 2011 U.S. Dist. LEXIS 58917, at *3-9 (D. Idaho June 2, 2011) (striking

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from expert report Invalidity Contentions based on 17 prior art computer files; even if files were

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implicitly “embedded” in programs listed in Contentions, “[t]he chart Escort prepared for its

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Invalidity Contentions did not contain any mention of the 17 files”).

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Samsung also points to a video in its Invalidity Contentions claim chart that it cited for the

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one ’915 claim that remains at issue. (Pernick Reply Decl. Ex. 2 at 12, 14 (citing 0:17-0:29 of

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Tse video).) Apple did not object to Mr. Gray’s use of that video, or his citation to an application

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that is depicted in the video and charted in Samsung’s Contentions. (See Dkt. No. 939-4 Ex. 2

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¶ 168.) But the 12 seconds of video that Samsung cited do not depict the Mandelbrot, DTLens, or

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DTMouse applications, so Samsung’s Invalidity Contentions never gave notice that it was relying

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on them.

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Nor did Samsung’s production for inspection of a computer loaded with Mandelbrot,
DTLens, and DTMouse put Apple on notice of Samsung’s intent to rely on these applications.
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That computer contained over 158 gigabytes of data. (Pernick Reply Decl. ¶ 4) It would have

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been virtually impossible for Apple to go through this magnitude of data and––without knowing

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that Samsung considered Mandelbrot, DTLens, or DTMouse so critical––speculate about how

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Samsung or its expert might later try to piece together an invalidity argument based on

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undisclosed software and source code on the computer. Production of source code and a

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computer for inspection do not obviate the need to disclose prior art in Invalidity Contentions.

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See Fleming, 2011 U.S. Dist. LEXIS 58917, at *8-9.

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Mere notice is not the question. (Opp. at 3-4.) Samsung had to disclose its Mandelbrot,

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DTLens, and DTMouse contentions in compliance with the Patent Local Rules or ask the Court

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for leave to add them. See Cummins-Allison Corp. v. SBM Co., Ltd., 2009 WL 763926, *4 (E.D.

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Tex. March 19, 2009) (disclosure of prior art in reexamination proceedings does not satisfy

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obligation to disclose art in Invalidity Contentions). Indeed, Samsung knew its disclosure was

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inadequate. (See Pernick Reply Decl. Ex. 1at 2 (stating that Samsung would “clarify [its]

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invalidity contentions for the DiamondTouch system to identify numerous prior art applications”

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such as Mandelbrot, DTLens, and DTMouse).) But instead of moving to amend its Invalidity

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Contentions, as it unsuccessfully did with other undisclosed prior art, Samsung opted to hide

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these invalidity theories.

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Finally, the Court should not be misled by Samsung’s reference to the depositions of

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Adam Bogue and Clifton Forlines. These were depositions in a different case against a different

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adversary (HTC), in which Apple is represented by a different law firm. (See Dkt. No. 1014-0

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Ex. D at 2:3-9.) In that case, the accused infringer’s law firm (Quinn Emanuel) served Invalidity

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Contentions with specific claim charts for each of the Mandelbrot, DTLens, and DTMouse

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applications. (See Zolotorev Decl. ¶¶ 3-4.) Samsung never did that here.

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2.

Dr. Van Dam’s New Prior Art References (’381 Patent).

The parties agree that Dr. Van Dam relies on six prior art references that were not in

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Samsung’s Invalidity Contentions. As Apple predicted, Samsung contends that Van Dam was

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only using these references “to provide background on the technology relating to the ’381

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Patent.” (Opp. at 5.) That is the sum total of Samsung’s analysis on this issue. And it is wrong.
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Dr. Van Dam uses these references in a section of his report where he tries to show that

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the “’381 includes dependent claims that include limitations … [that] were [ ] well-known and

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described in the art prior to 2006.” (Dkt. No. 939-4 Ex. 11 ¶ 46.) He uses these references as

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examples of “prior art teaching the use of animation techniques in graphic user interface

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software.” (Id. ¶ 47.) Van Dam uses the references for invalidity purposes, not as “background.”

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3.

Dr. Von Herzen’s New Reference and Defense (’607 Patent)

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Blonder ’041 Patent: Samsung concedes that its Invalidity Contentions did not disclose

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the Blonder ’041 patent upon which Dr. Von Herzen relies. (Dkt. No. 939-4 Ex. 12 ¶¶ 116, 195,

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269, 345, 411.) Samsung’s proffered excuse is that Dr. Von Herzen only identified Blonder after

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“Apple served [Dr. Maharbiz’s] expert infringement report on March 22, 2012.” (Opp. at 6.)

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Samsung complains that only then could “Dr. Von Herzen identif[y] the exact same circuit in [ ]

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Blonder” that he thinks satisfies the claim in suit. (Id.) In fact, Samsung served the Von Herzen

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report nine minutes before Apple served the Maharbiz report. (Pernick Reply Decl. Exs. 3,4.)

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Samsung thus did not generate its Blonder analysis in response to Apple’s March 22 expert

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report––the analysis was already done, but not disclosed.

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Derivation Defense: Samsung could have raised its derivation defense based on the

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Smartskin paper long before the close of fact discovery because: (a) the inventors disclosed

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Smartskin to the PTO during prosecution; (b) on August 3, 2011, Samsung deposed ’607 inventor

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Joshua Strickon and asked him questions about the inventors’ knowledge of Smartskin (Dkt.

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No. 939-4 Ex. 18 ¶¶ 452, 456-57; Pernick Reply Decl. Ex 5); and (c) the supposedly critical email

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on this issue was produced in this case in October 2011 (Dkt. No. 1014-10 Ex. I). Samsung even

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admits that it possessed the information it needed to “fully substantiate” and disclose this defense

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by December 2011 or January 2012. (Opp. at 7.) And still Samsung did not seek leave to amend

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its Invalidity Contentions.

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B.

Samsung’s Non-Infringement Experts Opine on Undisclosed Arguments.
1.

Dr. Johnson’s New Non-Infringement Theory (’381 Patent).

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The only claim at issue in the ’381 Patent is Claim 19, which requires “instructions for

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translating the electronic document in a second direction until the area beyond the edge of the
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electronic document is no longer displayed.” (Pernick Reply Decl. Ex.7 at Claim 19.)

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Dr. Johnson opines that several accused products lack this limitation because they exhibit a “hold

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still” behavior (Dkt. No. 939-4 Ex. 17 ¶ 65), but Samsung did not disclose that defense.

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Samsung maintains that it disclosed its “hold still” defense in response to Apple’s

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Interrogatory No. 2. (Opp. at 9.) But that response said that Samsung products do not “translat[e]

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the document in the second direction i[n] a damped motion,” (Dkt. No. 1014-9 at 9 (emphasis

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added)), not that they do not translate documents in a second direction at all, as needed to avoid

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the subject limitation in Claim 19. The “damped motion” limitation is from dependent Claim 15,

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which is no longer at issue. It narrows the broader claim limitation on which Johnson now

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opines. Samsung never disclosed a non-infringement argument based on the broader limitation.

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Like Samsung, the accused infringer in Warner-Lambert Co. v. Teva Pharma. USA, Inc.,

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2006 WL 267328, at *7-8 (D.N.J. Jan. 31, 2006), served an interrogatory response that rested its

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non-infringement defense on particular claim limitations, but served an expert report after

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discovery closed that raised a new non-infringement defense based on another claim limitation.

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The court held that, “[i]n these circumstances, the appropriate course is to strike the

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[new] . . . infringement defense, cf., Fed.R.Civ.P. 37(c)(1).” Id. at *6.

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Samsung’s other arguments fail. Cummins-Allison Corp. v. SBM Co., Ltd., 2009 U.S.

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Dist. LEXIS 22100 (E.D. Tex. Mar. 19, 2009), is inapposite because the patentee in that case had

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“engaged in a game of ‘hide the ball’” about what claims were really at issue. Id. at *4-5. Apple

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has not done that here. And Samsung’s production of code and devices that exhibit “hold still”

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behavior is irrelevant, because this production did not convey Samsung’s non-infringement

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contention. The law does not require Apple to read Samsung’s mind.

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2.

Dr. Von Herzen’s New Non-Infringement Theories (’607 Patent).

Samsung concedes that Dr. Von Herzen asserts new theories that raise for the first time

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constructions of the terms “transverse,” “lines,” and “or near touches.” (Opp. at 10.) If Samsung

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thought these terms needed construction or thought Apple’s applications of these terms in its

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Infringement Contentions were unclear, Samsung should have asked the Court to construe them

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during claim construction. Unless Samsung thought that its products met these claim limitations,
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it should have disclosed its non-infringement defenses based upon these constructions in its

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discovery responses. (Dkt. No. 394; Pernick Reply Decl. Ex.8.)

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3.

Mr. Gray’s Improper Non-Infringement Contention (’915 Patent).

Samsung acknowledges that Mr. Gray did not apply a sound technique or “a detailed

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elaborate scientific approach” in concluding that “certain” or “some” Samsung accused products

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(Dkt. No. 939-4 Ex. 20 at 124:13-22) do not infringe because they supposedly allow for multi-

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touch point scrolling (Opp. at 10). Samsung fails to rebut the other deficiencies in his report.

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Samsung never explains why Mr. Gray’s non-infringement report did not identify which
of Samsung’s own products purportedly do not infringe on this basis. (Id. Ex. 19 ¶¶ 33-34, 52,

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75, 187.) His report fails Rule 26(a)(2)(B)(i)’s requirement that an expert report contain “a

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complete statement of all opinions the witness will express and the basis and reasons for them.”

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This failure is critical and was compounded by his failure to identify the products at his

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deposition. Apple was not testing Mr. Gray’s memory at that deposition, but seeking for the first

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time the identity of the products Gray thinks do not infringe on this basis. His failure to identify

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them left Apple with no meaningful way to test his contentions or attack them at trial.

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In addition to striking paragraphs 33-34, 52, 75, and 187 of Mr. Gray’s April 16 report,

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the Court should reject Samsung’s attempt to back-fill the report and deposition with the late

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report it served on May 31. (Dkt. No. 1014-12.) Samsung offers no justification for serving this

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supplemental report six weeks after Mr. Gray’s rebuttal report was due. Samsung and Mr. Gray

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have always been in possession of the information necessary for Gray to identify Samsung’s own

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products. A supplemental expert report is only allowed “in response to new information that was

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unavailable at the time of [an] expert[’s] initial Rule 26 disclosures” when there is a showing that

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the other side “withheld any information that could form the basis of the new opinions.”

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O’Connor v. Boeing N. Am., Inc., 2005 U.S. Dist. LEXIS 46233, at *41-42 (C.D. Cal.

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Sept. 12, 2005). That is not the case here.

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1

C.

2
3

Samsung’s Infringement Experts Assert Undisclosed Theories
1.

Dr. Yang’s Undisclosed Theories (’460 Patent).

First, Dr. Yang’s theory of the sequence of claimed method steps is decidedly inconsistent

4

with Samsung’s Infringement Contentions, which Samsung barely disputes. (Opp. at 11-13.) In

5

its Contentions, Samsung disclosed one (and only one) specific sequence of steps corresponding

6

to claim 1. (Mot. at 12.) This “exemplary sequence” is its only disclosed infringement theory––

7

as is underscored by Samsung’s inability to identify anything in its Contentions supporting

8

Dr. Yang’s broader, inconsistent assertions.1 Under the Patent Local Rules, Dr. Yang is bound by

9

Samsung’s choice. CBS Interactive, Inc. v. Etilize, Inc., 257 F.R.D. 195, 201 (N.D. Cal. 2009).

10

Second, because it did not mention “swiping” in its Contentions, Samsung can only argue

11

that its disclosure of “navigat[ing] between image files” with arrow buttons was sufficient notice

12

that Dr. Yang would equate “swiping” to the claimed “scroll keys.” (Opp. at 13.) Samsung cites

13

no law suggesting that such a broad conceptual disclosure—which opens the door for it to assert

14

that any method of navigating between image files infringes a claim that explicitly requires

15

“scroll keys”––provides adequate notice of a specific infringement theory under the doctrine of

16

equivalents. Cf. Anascape, Ltd. v. Microsoft Corp., 2008 WL 7180756, at *4 (E.D. Tex.

17

May 1, 2008) (“The local patent rules do not allow a defendant to throw a generic term into its

18

invalidity contentions and use it to encompass several prior art references.”).2

19

Third, Samsung’s new “portable phone mode” theory fails because, as Samsung concedes,

20

it merely provided a screenshot of the SpringBoard/Home screen in its Contentions (Opp. at 14).

21

That screenshot, which is overlaid by a large red arrow pointing to the Mail app, corresponds to

22

the first step in Samsung’s disclosed sequence: “A user opens the ‘Mail’ application and starts to

23

write an email.” (See Dkt. 939-4 Ex. 21 at 3-4.) That screenshot does not disclose the “portable

24
25
26

1

Samsung claims that “[p]ortions” of its Contentions “not cited by Apple are sufficient to
meet Samsung’s obligation under Local Patent Rule 3-1” (Opp. at 12), but it fails to identify any
such “[p]ortions.” Nor did the use of “e.g.” provide Apple notice of Samsung’s new theory.
2

27
28

Apple was not put on notice of this new theory by Dr. Yang’s deposition, which
occurred after service of his report and Samsung’s Contentions. (Opp. at 13-14) Nor could
Apple’s expert, source code, or user guides disclose or define Samsung’s theory of infringement.
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phone mode,” let alone Dr. Yang’s new theory that the accused devices are in the claimed

2

“portable phone mode” when they “can continue to receive a call or FaceTime request.” (Mot.

3

at 13.) See Oracle Am., Inc. v. Google Inc., 2011 WL 4479305, at *3-5 (N.D. Cal. Sept. 26,

4

2011) (striking portions of expert report asserting a theory not disclosed in infringement

5

contentions).

6

2.

Dr. Williams’ Undisclosed Theory (’516 Patent).

7

That Samsung’s Infringement Contentions alleged that the Accused Apple Products

8

transmit both a first channel not supporting HARQ and a second channel supporting HARQ (Opp.

9

at 15) is not the issue. The issue is that Dr. Williams’ report changed the identity of the “first

10

channel not supporting HARQ” from the DPDCH channel (as identified in the Contentions) to all

11

of the channels that do not support HARQ. In other words, Williams added the DPCCH,

12

HS-DPCCH and E-DPCCH channels to the class of channels comprising the “first channel.”

13

In response, Samsung points to a figure in its Infringement Contentions from the 3GPP

14

standard showing five uplink channels. (Opp. at 15.) But the Contentions only identified one of

15

these five uplink channels as the “first channel” (namely, the DPDCH). Indeed, Samsung’s use

16

of this figure further supports Apple’s motion: Samsung showed a figure with four non-HARQ

17

channels but specifically identified only one as the “first channel,” which clearly implies that the

18

other three channels were not included in the “first channel.”3

19

Last, Samsung offers a tortured interpretation of this sentence in its Contentions: “The

20

E-DPDCH channels support HARQ (See 3GPP[3] § 6.1; 7.3.6; 8) while the DPDCH channels do

21

not.” Samsung claims this sentence was intended merely as “an example of one illustrative

22

channel that supported HARQ and another illustrative channel that did not support HARQ.”

23

(Opp. at 15.) Nothing in that sentence leads a reasonable reader to believe that it was merely

24

“illustrative” or an “example.” Instead, it plainly states that the DPDCH channel, and that

25
3

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27
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Samsung evidently realized after service of its Contentions that the “total transmit
power” called for in the 3GPP standard requires a sum of the transmit power factors for all uplink
channels and, as such, Samsung’s definition of the first channel in its Contentions was not
consistent with the 3GPP standard. This requires Samsung to deviate from the infringement
theory set forth in its Contentions, but Samsung did not supplement those Contentions.
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channel alone, is the “first channel not supporting HARQ.” The Court should reject Samsung’s

2

attempt to amend that theory through Dr. Williams’ expert report. See SanDisk Corp. v. Memorex

3

Prods., Inc., 415 F.3d 1278, 1292 (Fed. Cir. 2005) (no abuse of discretion in excluding evidence

4

pertaining to infringement theories not disclosed in compliance with local patent rules).

5

II.

6
7

THE COURT SHOULD STRIKE SAMSUNG’S LATE DISCLOSED DEFENSES
ON DESIGN AND TRADE DRESS ISSUES.
A.

Apple Did Not Abandon its Rights To Challenge Untimely Disclosures.

Samsung is mistaken that Apple represented it would not file a motion to strike if
8
Samsung supplemented its interrogatory responses shortly after the close of fact discovery. (Opp.
9
at 15-16.) Apple said that it would not move to compel further responses to its interrogatories
10
until Samsung had a few more days to supplement, but also expressly reserved its right to file a
11
motion to preclude regardless of what Samsung put into any such late interrogatory responses.
12
(Pernick Reply Decl. ¶¶ _-_.) When Apple saw the extent to which Samsung’s expert reports
13
exceeded Samsung’s discovery period disclosures, it had no choice but to file this motion.
14
15

B.

Samsung Improperly Withheld Information During Fact Discovery.

Samsung argues that it did not need to respond substantively to Apple’s contention
16
interrogatories “until discovery [was] complete or nearly complete.” (Opp. at 16.) This is wrong
17
because Apple served its interrogatories early in the case. Samsung cites one case allowing a
18
party to defer responses to contention interrogatories, but such deferral is warranted only where
19
the party needs discovery to provide a meaningful response or would be unfairly burdened by the
20
effort required to provide an early response. See In re Convergent Techs. Sec. Litig., 108 F.R.D.
21
328, 337-38 (N.D. Cal. 1985). Those factors do not apply here. Samsung crystallized many of its
22
theories months before the close of discovery, as evidenced by its own assertion that it revealed
23
those theories in submissions in this action, the ITC investigation, and its document productions.
24
(See Opp. at 18-19, 21-22.) Samsung made a strategic decision to disclose none of those theories
25
in its interrogatory responses until after fact discovery closed.
26
The Federal Rules condemn such “hide the ball” tactics. Rule 26(e) required Samsung to
27
supplement its responses to Apple’s contention interrogatories “as soon as possible after [it]
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learn[ed] that its [original] response[s] w[ere] inaccurate or incomplete.” Insight Tech., Inc. v.

2

Surefire, LLC, 2009 WL 3242557, at *2 (D.N.H. Oct. 8, 2009); see also Tritek Techs., Inc. v.

3

United States, 63 Fed. Cl. 740, 746 (Fed. Cl. 2005). As the Federal Circuit held in Microstrategy

4

Inc. v. Business Objects, S.A., 429 F.3d 1344 (Fed. Cir. 2005), a party may not develop

5

responsive information, then conceal it until it is too late for the other side to pursue relevant

6

discovery. In that case, the court affirmed exclusion of material that MicroStrategy possessed but

7

did not disclose in response to interrogatories, reasoning that “MicroStrategy alone is to blame for

8

creating this situation.” Id. at 1357. “[I]f a party is allowed to withhold the supplementation of

9

its discovery responses until after fact discovery is closed, the purpose of [Rule 26(e)] is

10

effectively frustrated.” Heidelberg Harris, Inc. v. Mitsubishi Heavy Indus., Ltd., 1996 U.S. Dist.

11

LEXIS 17362, at *25 (N.D. Ill. Nov. 21, 1996).

12

Courts routinely apply these rules in patent cases to exclude non-infringement and

13

invalidity theories that were not disclosed in time to allow meaningful discovery. See Takeda

14

Chem. Indus., Ltd. v. Mylan Labs., Inc., 2005 WL 2092920, at *1, *6 (S.D.N.Y. Aug. 31, 2005);

15

Bowling v. Hasbro, Inc., 2007 WL 3274328, at *1-2 (D. R.I. Nov. 5, 2007); Warner-Lambert,

16

2006 WL 267328, at *8; Heidelberg, 1996 U.S. Dist. LEXIS 17362, at *25-30. Consistent with

17

these authorities, Judge Koh’s March 17, 2012 Order denied Samsung’s motion to add new

18

theories based on utility patent prior art. Judge Koh reasoned that “fact discovery is over,”

19

leaving “little opportunity for Apple to explore and respond to Samsung’s new contentions.”

20

(Dkt. No. 836 at 10.) The same reasoning applies here.

21

The cases Samsung cites (Opp. at 16-17) do not support its position. In two of them, the

22

courts held that the disputed material was not timely disclosed, but did not exclude it because the

23

material was otherwise known to the movant or the untimely disclosure was harmless. See Power

24

Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 763 F. Supp. 2d 671, 692 (D. Del. 2010);

25

Abbott Labs. v. Lupin Ltd., 2011 WL 1897322, at *5 (D. Del. May 19, 2011). As discussed

26

below, neither exception applies here. Two other cases rested on those same inapplicable

27

exceptions. See Accenture Global Servs. GmbH v. Guidewire Software Inc., 691 F. Supp. 2d 577,

28

588 (D. Del. 2010); DataQuill Ltd. v. Handspring, Inc., 2003 WL 25696445, at *1 (N.D. Ill.
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Dec. 19, 2003). In Monsanto Co. v. E.I. Du Pont De Nemours & Co., 2012 WL 27936 (E.D. Mo.

2

Jan. 5, 2012), the disputed disclosures were made almost two months before the close of fact

3

discovery. Compare id. at *1-2 (disclosures made on September 27, 2011) with Pernick Reply

4

Decl. Ex. 9 (setting November 15, 2011 deadline for fact discovery).) Accordingly, the court was

5

contemplating conduct very different from Samsung’s when it observed that contention

6

interrogatories need not be answered “until discovery is near completion.”

7

C.

8

“For information to be considered ‘otherwise made known’” under Rule 26(e), “the

Samsung’s Theories Were Not “Otherwise Made Known” to Apple.

9

alleged disclosure must be clear and unambiguous. Pfizer Inc. v. Teva Pharms. USA, Inc., 2006

10

U.S. Dist. LEXIS 74611, at *8 (D.N.J. Oct. 13, 2006) (rev’d in part on other grounds); see also

11

Zoltek Corp. v. United States, 71 Fed. Cl. 160, 167 (Fed. Cl. 2006). The invalidity and non-

12

infringement theories in Samsung’s preliminary injunction submissions met that standard, so

13

Apple did not move to exclude them. (Mot. at 15 n.6.) The other alleged disclosures identified

14

by Samsung do not meet this standard.

15

Anticipation and Obviousness Theories: Samsung’s December 2011 response to

16

Apple’s Interrogatory No. 12 was insufficient. That response listed by Bates number some of the

17

prior art relied on by Samsung’s experts: nine of the 78 disputed references in Mr. Lucente’s

18

opening report, and 11 of the 36 disputed references in Mr. Sherman’s opening report. Even as to

19

this art, just listing Bates numbers did not “make known” Samsung’s anticipation and

20

obviousness theories, as the interrogatory requested. A proper answer required a narrative (see

21

Mot. at 18 (citing cases)), but Samsung improperly relied on Rule 33(d). In these circumstances,

22

when a party later offers material that was called for in the response, courts exclude it under

23

Rule 37(c)(1). See San Francisco Bay Area Rapid Transit Dist. v. Spencer, 2007 WL 421336,

24

at *4 n.3 (N.D. Cal. Feb. 5, 2007); Fast Food Gourmet, Inc. v. Little Lady Foods, Inc., 2007 WL

25

2156665, at * 9 (N.D. Ill. Jul. 26, 2007).

26

Nor did Samsung’s submissions in the parties’ pending ITC matter “clearly or

27

unambiguously” disclose the theories asserted by Samsung here. The design patents in the two

28

proceedings are not the same. There was no reason for Apple to presume that Samsung would
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assert parallel invalidity arguments against the patents at issue here. See Abbott Labs. v. Syntron

2

Bio-Research, Inc., 2001 U.S. Dist. LEXIS 26339, at *5 (S.D. Cal. Aug. 24, 2001) (rejecting

3

argument that party knew of prior art defenses based on previous litigation).

4

Samsung’s argument that some of its theories were known to Apple by virtue of the fact

5

that they are based on Apple documents also fails. (Opp. at 19.) The existence of a prior art

6

reference does not put a party on notice that its adversary will rely on the reference as the basis

7

for an invalidity defense. See Marine Polymer Techs., Inc. v. HemCon, Inc., 2010 U.S. Dist.

8

LEXIS 47504, at *3-*7 (D. N.H. Apr. 8, 2010) (rev’d on other grounds); Bridgestone Sports Co.

9

Ltd. v. Acushnet Co. , 2007 WL 521894, at *5 (Feb. 15, 2007).

10

Lastly, Samsung argues that it made known its Nokia Fingerprint theory by including the

11

reference and a declaration from its inventor in its document production, and by listing the

12

inventor’s name in its amended initial disclosures. (Opp. at 19.) There is nothing “clear and

13

unambiguous” about a reference buried in thousands of pages of documents, or an identification

14

of a potential witness whose relevance is described cryptically as “prior art.” Samsung cannot put

15

the burden on Apple to “ferret through” Samsung’s production to piece together Samsung’s

16

theories. Transclean Corp. v. Bridgewood Servs., Inc., 77 F. Supp. 2d 1045, 1062 (D. Minn.

17

1999). Indeed, even where a theory “would have been easy to infer” from other sources, “courts

18

have found disclosures that require such inferences to be insufficiently clear for Rule 26(e)

19

purposes.” Pfizer Inc., 2006 U.S. Dist. LEXIS 74611, at *8-9.

20

Distinctiveness and Indefiniteness Theories: Samsung contends that, because Apple

21

“has long been aware of numerous phones that embody Apple’s conception of the iPhone and

22

iPad trade dress,” Apple was aware of its theories that the asserted trade dress lacks

23

distinctiveness. (Opp. at 20.) The existence of other phones and tablets in the market does not

24

disclose that Samsung’s experts would rely on any of them for a lack of distinctiveness argument.

25

Nor did Samsung’s recitation of products in two of its third-party subpoenas amount to a “clear

26

and unambiguous” disclosure of Samsung’s theories.

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28

Samsung argues that Apple was aware of Samsung’s indefiniteness theories because
Samsung asked deposition questions aimed at establishing the “basis” for such a theory. The
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Federal Circuit rejected that argument in Primos, Inc. v. Hunter’s Specialties, Inc., 451 F.3d 841

2

(Fed. Cir. 2006), and affirmed exclusion of an invalidity theory that had never been asserted

3

during discovery, even though the underlying art had been the subject of deposition questioning.

4

Id. at 850-51. Here too, Apple was “not required to plan a [strategy] based on all possible

5

documents or information presented during depositions.” Contech Stormwater Solutions, Inc. v.

6

Baysaver Techs., Inc., 534 F. Supp. 2d 616, 625 (D. Md. 2008).

7

Non-Infringement Theories: Samsung asserts that any differences between the non-

8

infringement theories presented in its expert reports and those in its preliminary injunction papers

9

are “insubstantial.” (Opp. at 21.) That is demonstrably incorrect. First, Samsung’s preliminary

10

injunction papers only advanced non-infringement arguments for the asserted body style design

11

patents. (Dkt. No. 172 ¶¶ 24-33, 83-105, 171-72.) None of those arguments bears any similarity

12

to the non-infringement arguments presented by Mr. Lucente regarding the asserted GUI design

13

patents. Second, the non-infringement theories presented by Samsung’s experts go far beyond

14

those presented in the preliminary injunction proceedings. (Compare, e.g., Dkt. No. 172 ¶ 182,

15

with Dkt. No. 939-4 Ex. 30 Pt. B, Table B V.)

16

Theories Regarding the Scope of the Asserted Patents: Samsung argues that its

17

January 31, 2012 motion to compel disclosed Mr. Godici’s argument that the scope of the design

18

patents must be narrow. (Opp. at 21.) Samsung’s motion claimed that evidence showing the

19

similarity of the asserted Apple patents to other Apple patents was relevant to whether the patents

20

are “substantially the same.” (Dkt. No. 700 at 5.) Samsung also argued that the requested

21

evidence was relevant to “Apple’s claims regarding commercial embodiments of its products.”

22

(Id. at 6.) Neither of those arguments provided “clear and unambiguous” disclosure of the scope

23

theories advanced in Mr. Godici’s report.

24

D.

25

Samsung argues that its late interrogatory responses were harmless because it disclosed its

Samsung Fails to Show That Its Violation of Rule 26(e) Was Harmless.

26

experts’ theories on March 19, 2012, just nine days after Apple served responses to Samsung’s

27

interrogatories. (Opp. at 22.) But Apple propounded the contention interrogatories that are the

28

basis of this motion to strike in November 2011. Samsung was obligated to disclose its invalidity
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and non-infringement contentions in December 2011, not this March. Samsung refused to

2

disclose in its original responses any of the theories its experts now rely on—even though, as

3

shown, Samsung had by then developed many of them. Apple was harmed by Samsung’s delay

4

of three months, for the duration of fact discovery.

5

III.

6

THE COURT SHOULD STRIKE SAMSUNG’S LATE SUPPLEMENTAL
DAMAGES REPORT AND ALTERNATIVE CALCULATIONS PRODUCED ON
APRIL 16, 2012.

7

A.

8

Samsung––not Apple––violated a Court order regarding damages discovery. The

9

Mr. Wagner’s Supplemental Report Was Untimely and Prejudicial.

April 23 Order allowed Mr. Musika to supplement his report as a remedy for Samsung’s

10

violations. It did not authorize Samsung to file a corresponding supplement. (See Dkt. No. 880

11

at 16.) In fact, on April 22, Samsung repeated the suggestion that “both side’s experts should

12

submit supplemental reports.” (Dkt. No. 878 at 1:22.) The Court did not adopt that suggestion.

13

Further, Samsung always had access to the information from its financial records that

14

Mr. Wagner used in his unauthorized May 11 report. If Samsung wanted to rely on that

15

information, Samsung should have produced it during discovery and included it with

16

Mr. Wagner’s April 16 report. Samsung did neither. Under these circumstances, Rule 26(e)

17

cannot justify Wagner’s May 11 report. See O’Connor, 2005 U.S. Dist. LEXIS 46233, at *41

18

(Rule 26(e) supplement must be based on “new information that was unavailable at the time of

19

the initial disclosure because it was withheld by the [other side]” (emphasis added)). Moreover,

20

the May 11 report is not an update based on new data; it reflects new and different analysis about

21

subject matters not addressed in Samsung’s original damages report. (Dkt. No. 939-34.)

22

Finally, Samsung’s delays were not harmless. Samsung served the report at 7:00 p.m. the

23

night before Mr. Wagner’s May 12 deposition. Apple did not question Wagner about it at his

24

deposition. (Dkt. No. 1014, Ward Decl. Ex. DD at 261:18-265:24, 458:10-14.)

25
26

B.

The Court Should Not Allow Mr. Wagner to Rely on “Tab 6” of the April 16
Report.

All the data used in “Tab 6” of Mr. Wagner’s April 16 report was withheld until the same
27
day his report was served. Samsung offers no justification for its delay. Samsung possessed the
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“Tab 6” data in January 2012. If relevant, it should have been produced by February 3, 2012.

2

(Dkt. No. 673 at 2:5-7, 15:14-23.) Samsung withheld it until well after fact discovery closed and

3

after Musika served his opening report. Samsung should not be allowed to dole out only the

4

information that it wants to give, on a schedule of its own choosing, to Apple’s prejudice.4

5

Despite this, Samsung argues that the April 23 Order authorized Samsung’s conduct. That

6

position is inconsistent with the Order. Samsung’s belated production of Tab 6 data occurred a

7

week before the Order issued––the Order did not apply to this data. The Order sought “to

8

mitigate [the] harm to Apple” caused by Samsung’s untimely and inconsistent productions, which

9

had impaired “Apple’s ability to validate its damages analysis with reliable, underlying data....”

10

(Dkt. No. 880 at 15:18-20.) Use of the Tab 6 data would perpetuate this harm because Apple

11

would not be able to use any deposition testimony, or even Mr. Wagner’s report (which does not

12

include a single calculation drawn from Tab 6), to cross-examine him at trial about his

13

calculations.

14

Finally, the Court should exclude “Tab 6” to avoid juror confusion. Mr. Wagner provided

15

a complete damages analysis in “Tab 2” of his report based on data that was produced before the

16

end of discovery. Samsung intends that, due to its belated production, Apple’s expert and

17

Samsung’s expert will now present damages analyses using competing and inconsistent datasets,

18

only one of which (Tab 2) was produced during discovery. (Pernick Reply Decl. ¶ 28.) The

19

competing presentations would confuse the jury, waste time, and force an unnecessary detour into

20

evidence regarding the differences in scope, timing, and production of Samsung’s two datasets.

21
22

CONCLUSION
For the reasons discussed above and in Apple’s moving papers, the Court should grant

23

Apple’s motion and strike the portions of Samsung’s expert reports (and exhibits thereto) that are

24

identified in Apple’s proposed order. (Dkt. No. 939-12.)

25
4

26
27
28

Dominguez v. Excel Mfg. Co., Inc., 2010 U.S. Dist. LEXIS 137582 (N.D. Cal.
Dec. 20, 2010), is inapposite. The “expert” there was a party employee who gave five hours of
relevant fact deposition testimony. Id. at *4, 6-7. Wagner is not a Samsung employee; he cannot
provide fact testimony about where the April 16 financial data came from, how it was prepared,
whether or how it was validated, and whether it is accurate.
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Dated: June 7, 2012

MORRISON & FOERSTER LLP

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By:

/s/ Michael A. Jacobs
Michael A. Jacobs
Attorneys for Plaintiff
APPLE INC.

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