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

Filing 1106

ORDER by Judge Paul S. Grewal GRANTING #922 Samsung's Motion for Clarification of the court's May 4, 2012 Order (psglc2, COURT STAFF) (Filed on 6/19/2012)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

United States District Court
For the Northern District of California

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SAN JOSE DIVISION

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APPLE INC.,

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Plaintiff,
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v.
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SAMSUNG ELECTRONICS CO., LTD, a
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Korean corporation; SAMSUNG
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ELECTRONICS AMERICA, INC., a New York )
corporation; and SAMSUNG
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TELECOMMUNICATIONS AMERICA, LLC, )
a Delaware limited liability company,
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Defendants.
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Case No.: C 11-1846 LHK (PSG)
ORDER CLARIFYING MAY 4, 2012
ORDER
(Re: Docket No. 922)

In this patent infringement suit, Defendants Samsung Electronics Co., LTD., Samsung

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Electronics America, Inc., and Samsung Telecommunications America, LLC (collectively

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“Samsung”) seek clarification of the court’s May 4, 2012 order (“May 4 Order”) sanctioning

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Samsung for its non-compliance with the court’s December 22, 2012 order (“December 22

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Order”). The court will not rehash here all of the details of these earlier orders. Suffice it to say that

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the court found that Samsung did not meet its obligation to produce all design-around code by this

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court’s deadline. For this non-compliance, the court barred Samsung from offering any evidence of

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its design-around efforts for each of the ‘381, ‘891 and ‘163 patents. The court further ordered that

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Samsung shall not argue that the design-arounds are in any way distinct from those versions of

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Case No.: 11-1846 LHK (PSG)
ORDER CLARIFYING MAY 4, 2012 ORDER

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code produced in accordance with the court’s December 22 Order. Samsung was instead to rely

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solely on the versions of code that were produced on or before December 31, 2011.

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In its papers and at the hearing held on Samsung’s motion earlier today, Samsung discloses

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that after the court issued its May 4 Order, it discovered that, contrary to its previous suggestions to

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the court, Samsung had in fact produced at least some design-around code by December 31 for the

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following accused products: Galaxy S II, Exhibit 4G, Tab 10.1, and Epic 4G. And so Samsung

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contends that the dichotomy set forth by the court in the May 4 Order, between code produced by

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December 31 and design-around code produced after December 31, is not correct. Samsung asks

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that the court resolve the resulting ambiguity by confirming that Samsung may in fact offer the

United States District Court
For the Northern District of California

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design-around code produced before the December 31 deadline. Samsung further requests

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clarification that the May 4 Order permits Samsung to offer evidence of its design-arounds other

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than source code, and further permits Samsung to offer evidence, both source code and non-source

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code, of its design-arounds for purposes other than liability for infringement, such as damages and

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injunctive relief.

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Apple Inc. (“Apple”) responds that Samsung’s request is really a request for

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reconsideration that falls short of the requirements set forth by Civ. L.R. 7-9. Apple emphasizes

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Samsung’s failure to establish why it could not produce evidence of its design-around production

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earlier in response to Apple’s sanctions motion and specific questions posed by the court. However

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Samsung’s request is properly characterized, Apple also argues that Samsung’s production of

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design-around code for the Galaxy S II is for a T-Mobile version of the product not accused or

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otherwise at issue in this case. With respect to the Exhibit 4G and Tab 10.1 design-around code

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production, Apple notes that Samsung presented no evidence with its moving papers that these

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products ever implemented the design-around. With respect to the Epic 4G, Apple notes that

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Samsung’s claim that it produced a version that includes the design-around is impossible to square

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with Samsung’s previous representations that it either (1) produced the initial release of each

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accused product, or (2) the current release of each such product at the time this suit was filed in

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April 2011. As for Samsung’s suggestion that it is permitted under the May 4 Order to offer non-

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source code evidence of its design-arounds at trial, and any evidence of its design-arounds for
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Case No.: 11-1846 LHK (PSG)
ORDER CLARIFYING MAY 4, 2012 ORDER

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purposes other than non-liability, Apple notes that the language of the May 4 Order needs no

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clarification and on its face bars such efforts.

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Without criticizing Samsung’s legitimate interest in knowing what it can and cannot do in

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the trial to come, the court initially must note that any need for clarification by Samsung is

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ultimately of Samsung’s own making. The court drew a line between code produced by December

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31 and design-around code produced after that date based on Samsung’s representations to this

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court. As Samsung itself acknowledges in its papers, “[t]he Court specifically relied on Samsung’s

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mistaken statement that it did not produce any blue glow [design-around] source code until January

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23, 2012.” 1

United States District Court
For the Northern District of California

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But even if the court were willing to relieve Samsung of the burden of its mistake, the court

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must conclude that any evidence of Samsung’s design-arounds should remain off limits to

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Samsung. The fact remains that Samsung failed miserably in meeting its obligation to produce all

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design-around code for all of the accused products by the December 22 Order’s deadline. Nothing

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in Samsung’s present request changes the fact that it did not produce source code for its ‘891 and

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‘163 design-arounds until months after the December 31 deadline and even after the March 8, 2012

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close of fact discovery. Even as to the ‘381 patent, design-around code was not produced for

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products at suit, such as versions of the Galaxy S II for carriers other than T-Mobile, and Samsung

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offers no real explanation of how to reconcile its claim that it produced source code for a version of

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the Epic 4G that included design-around code with an earlier statement declaring otherwise. And

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regarding the Exhibit 4G and Tab 10.1, the court is loath to credit evidence of production produced

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for the first time in reply papers. Against this backdrop of non-compliance, it would hardly be fair

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to allow Samsung to offer what little design-around code it may have produced for a handful of the

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accused products, or to allow Samsung to produce all kinds of non-source code evidence, after it

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withheld substantial source code that would have permitted Apple to challenge such evidence.

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And so in response to Samsung’s request for clarification, here it is. As a sanction for

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Samsung’s extended non-compliance with the December 22 Order, for each of the ‘381, ‘891 and

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‘163 patents, Samsung may not offer any evidence of its design-arounds. This means no source

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Docket No. 898 (Mot. for Extension of Time) at 5.
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Case No.: 11-1846 LHK (PSG)
ORDER CLARIFYING MAY 4, 2012 ORDER

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code evidence, no non-source code evidence, no evidence of any kind, whether for liability

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purposes or any other purpose. Period. Because Apple only requested this sanction as to the

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upcoming jury trial, this restriction does not extend beyond trial to any post-trial proceeding such

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as those relating to the permanent injunction sought by Apple or contempt proceedings. The issue

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of Samsung’s right to offer design-around evidence in any post-trial proceeding remains for

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another day.

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IT IS SO ORDERED.

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Dated: 6/19/2012

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_________________________________
PAUL S. GREWAL
United States Magistrate Judge

United States District Court
For the Northern District of California

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Case No.: 11-1846 LHK (PSG)
ORDER CLARIFYING MAY 4, 2012 ORDER