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

Filing 1056

Administrative Motion to File Under Seal Reply Declaration of Marc J. Pernick in Support of Apple's Motion to Strike Portions of Samsung's Expert Reports filed by Apple Inc.. (Attachments: #1 Declaration of Marc J. Pernick in Support of Reply re Apple's Motion to Strike Portions of Samsung's Expert Reports, #2 Exhibit 1, #3 Exhibit 2, #4 Exhibit 3, #5 Exhibit 4, #6 Exhibit 5, #7 Exhibit 6, #8 Exhibit 7, #9 Exhibit 8, #10 Exhibit 9, #11 Exhibit 10, #12 Exhibit 11)(Jacobs, Michael) (Filed on 6/7/2012)

Exhibit 1

quinn emanuel

trial lawyers | silicon valley

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WRITER'S INTERNET ADDRESS
[e-mail]

January 5, 2012
VIA E-MAIL
Richard Hung
Morrison & Foerster
425 Market Street
San Francisco, CA 94105-2482
Re:

Apple v. Samsung Elecs. Co., et al., No. 5:11-cv-01846-LHK (N.D. Cal.)
Supplemental Invalidity Contentions

Dear Rich:
I write to follow up regarding Samsung’s request to serve supplemental invalidity contentions on
Apple to include Mac OS X, SuperClock and other prior art, pursuant to Patent Local Rule 3-6.
Samsung has twice sent letters asking whether Apple will stipulate to the service of these
invalidity contentions, on November 10 and 22, 2011. However, Apple has not responded to
Samsung’s proposed stipulation.
At the same time, Samsung has sought discovery from Apple to produce source code for the Mac
OS X and SuperClock programs in Apple’s possession, in order to confirm that they are prior art
against the ’891 and ’002 patents. However, Apple avoided producing the prior art source code
until after Samsung filed a motion to compel. Furthermore, Apple continued to avoid a complete
disclosure of relevant Mac OS X discovery by producing additional source code only after
complaints by Samsung, and by still refusing to produce a hardware version of the prior art that
can operate the invalidating brightness window. Despite Apple’s dilatory tactics, Samsung’s
review of the source code confirms that Mac OS X invalidates the ’891 patent.
quinn emanuel urquhart & sullivan, llp
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02198.51855/4530734.6

Thus, Samsung is asking one final time whether Apple will stipulate to supplemental invalidity
contentions. In addition to the prior art discussed in the November 10 correspondence, Samsung
has good cause to include additional recently discovered prior art. For example, Glimpse, a
software program disclosed at the 2005 CHI Conference, invalidates the ’381 patent as construed
by Judge Koh because it always bounces back. See Patent Local Rule 3-6(a) (good cause
includes a “claim construction by the Court different from that proposed by the party seeking
amendment”).
Samsung also seeks to clarify the invalidity contentions for the DiamondTouch system to
identify numerous prior art applications and SDKs which practice the ’915 patent. Samsung
further believes that the DiamondTouch system is prior art to the ’163 patent, and seeks to
supplement its invalidity charts accordingly. The table below summarizes the Samsung
references.

U.S. Patent No.
7,469,381

Prior Art Reference
Glimpse

7,920,129

Atmel Touchscreens in the KitechAid
KEBU107SSS and KEBU208SSS
Products
Cirque Capacitive Touchpads,
including but not limited to the
GlidePoint Touchpad
WO 2005/114369

7,864,163
7,853,891

US 6,075,520
Hal Philipp, Controls and Sensors:
Tough Touch Screens, 2006
Mandelbrot, Gesture Engine, MultiSurface Google Earth, Gesture/Speech
Interface, DTMouse and DTLens,
operating on the DiamondTouch
system
US 2005/0012723
Mac OS X, version 10.0

6,493,002

SuperClock!

7,844,915 and
7,864,163

02198.51855/4530734.6

2

Basis
Adverse preliminary injunction
decision interpreting ’381 patent
Third party discovery from Atmel
Corporation
Third party discovery from Cirque
Corporation
Chart already served – amendment
to cover pleading only
Recent discovery
Additional information on disclosed
Whirlpool Velos
Applications running on disclosed
DiamondTouch system

Recent discovery
Depositions of Bas Ording & Imran
Chaundri and recent production of
source code by Apple in response to
Samsung's motion to compel
Deposition of Steven Christensen
and recent production of source
code by Apple in response to
Samsung's motion to compel

7,812,828

DISCRETE RANDOM SIGNALS AND
STATISTICAL SIGNAL PROCESSING, by
Charles Therrien
LINEAR ALGEBRA AND ITS
APPLICATIONS, by Gilbert Strang

Deposition of Wayne Westerman

Deposition of Wayne Westerman

Please let us know by Monday, January 9, whether Apple will agree to these supplemental
contentions. Otherwise, Samsung will assume that Apple opposes any stipulation and proceed to
file a motion with the court.

Very truly yours,

Todd M. Briggs

02198.51855/4530734.6

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