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

Filing 1139

Administrative Motion to File Under Seal Samsung's Opposition to Apple's Claim Construction Brief filed by Samsung Electronics Co. Ltd.. (Attachments: #1 Trac Declaration in Support of Motion to Seal, #2 Proposed Order, #3 Samsung's Opposition to Apple's Claim Construction Brief, #4 Cashman Declaration in Support of Samsung's Opposition, #5 Exhibit 1, #6 Exhibit 2, #7 Exhibit 3, #8 Exhibit 4, #9 Exhibit 5)(Maroulis, Victoria) (Filed on 6/26/2012) Modified on 6/27/2012 pursuant to General order No. 62, attachment #1 sealed (dhm, COURT STAFF).

EXHIBIT 1

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

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APPLE, INC.,
PLAINTIFF,
VS.

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SAMSUNG ELECTRONICS CO.,
LTD, ET AL,

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DEFENDANT.

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CV-11-1846-LHK
SAN JOSE, CALIFORNIA
MAY 2, 2012
PAGES 1-28

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TRANSCRIPT OF PROCEEDINGS
BEFORE THE HONORABLE LUCY H. KOH
UNITED STATES DISTRICT JUDGE

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A P P E A R A N C E S:

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FOR THE PLAINTIFF:

MORRISON & FOERSTER
BY: HAROLD MCELHINNY
ALISON TUCHER
RICHARD HUNG
425 MARKET STREET
SAN FRANCISCO, CA 94105

FOR THE DEFENDANT:

QUINN EMANUEL
BY: CHARLES VERHOEVEN
50 CALIFORNIA STREET, 22ND FL
SAN FRANCISCO, CA 94111

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(APPEARANCES CONTINUED ON THE NEXT PAGE)

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OFFICIAL COURT REPORTER: SUMMER FISHER, CSR, CRR
CERTIFICATE NUMBER 13185
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FOR THE DEFENDANT:

QUINN EMANUEL
BY: VICTORIA MAROULIS
KEVIN JOHNSON
555 TWIN DOLPHIN DRIVE, 5TH FL
REDWOOD SHORES, CA 94065

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SAN JOSE, CALIFORNIA

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MAY 2, 2012

P R O C E E D I N G S
(WHEREUPON, COURT CONVENED AND THE
FOLLOWING PROCEEDINGS WERE HELD:)
THE CLERK:

CALLING CASE NUMBER

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C-11-1846-LHK.

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ELECTRONICS COMPANY LIMITED, ET AL.

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APPLE, INC., VERSUS SAMSUNG

MR. MCELHINNY:

GOOD AFTERNOON,

YOUR HONOR.
HAROLD MCELHINNY, RICH HUNG AND
ALISON TUCHER ON BEHALF OF APPLE PLAINTIFFS.
MR. VERHOEVEN:

GOOD AFTERNOON,

YOUR HONOR.
CHARLES VERHOEVEN.

WITH ME IS MY PARTNER

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KEVIN JOHNSON AND VICTORIA MAROULIS ON BEHALF OF

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DEFENDANTS.

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MR. JOHNSON:

GOOD AFTERNOON, YOUR HONOR.

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THE COURT:

OKAY.

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ALL RIGHT.

WELL, THE NARROWING WAS NOT

GOOD AFTERNOON.

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GOOD ENOUGH SO I'M THINKING ABOUT CONTINUING THIS

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TRIAL TO FALL.

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WE COULD DO IT 2013.

BUT IT'S SIMPLY NOT GOING TO BE POSSIBLE

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FOR ONE JURY TO DO 7 -- 16 UTILITY PATENTS, SIX

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DESIGN PATENTS, FIVE TRADE DRESSES, SIX TRADEMARKS,

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AN ANTI-TRUST CASE AND ABOUT 37 ACCUSED DEVICES.
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I THINK THAT'S CRUEL AND UNUSUAL

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PUNISHMENT TO A JURY AND SO I'M NOT WILLING TO DO

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IT.

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SO I CAN EITHER JUST VACATE THE TRIAL

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DATE AND WE CAN JUST HAVE A CONFERENCE, I CAN SET A

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STATUS CONFERENCE FOR LATER AT THE END OF THE

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SUMMER.

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DEADLINES AS WELL.

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I CAN VACATE THE SUMMARY JUDGEMENT
WHAT WOULD YOU LIKE TO DO?

MR. VERHOEVEN:

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THE COURT:

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NOT WHAT I GOT.

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CONTINUE THIS.

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YOU WOULD LIKE --

I MEANT NARROW AND THIS IS

JULY.

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SO WE DON'T HAVE TO HAVE A TRIAL IN

MR. MCELHINNY:

I CAN EXPLAIN TO YOU WHY

WE THOUGHT WE HAD MET WHAT YOUR HONOR WANTED.

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SO I AM NOT IN THE MOOD TO

THE COURT:

WELL, THAT'S FINE, BUT IT

DIDN'T, SO I'M VACATING THIS TRIAL DATE.

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MR. MCELHINNY:

BUT THEN WHAT I WOULD

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APPRECIATE INSTEAD IS SOME GUIDANCE ABOUT WHAT

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YOUR HONOR HAS IN MIND ABOUT WHAT WOULD LET US GO

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TO TRIAL AND THEN ON FRIDAY WE WILL MEET THAT.

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I TOLD YOU CLEARLY THE LAST TIME I WAS

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HERE KEEPING THE TRIAL DATE IS OUR MOST IMPORTANT

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THING.

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TRYING -- OR I WILL -- WHY WE THOUGHT THIS DID IT.

I'M NOT GOING TO WASTE YOUR TIME NOW

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BUT IF IT DOESN'T, WE WILL MEET WHATEVER
YOUR HONOR HAS IN MIND.

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THE COURT:

WE HAVE TO DO THAT.

I'VE HEARD REPEATEDLY HOW

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MANY DECADES OF EXPERIENCE EVERYONE HAS.

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ME YOU THINK A JURY WILL TAKE AND UNDERSTAND A CASE

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WITH 37 ACCUSED PRODUCTS WITH 16 UTILITY PATENTS,

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SIX DESIGN PATENTS, FIVE TRADE DRESS, SIX

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TRADEMARK, AN ANTI-TRUST CASE?

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YOU TELL ME.

YOU TELL

DO YOU THINK A JURY IS

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GOING TO BE ABLE TO UNDERSTAND THAT, BE ABLE TO

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COMPREHEND THAT, GIVE FAIR AND JUST RULINGS ON ALL

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OF THOSE?

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MR. MCELHINNY:

THE ANSWER TO THAT

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QUESTION IS I THINK IT CAN BE DONE.

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WOULD BE BETTER TO BREAK IT INTO PARTS, BUT I HAVE

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NOT BEEN ABLE TO CONVINCE YOUR HONOR TO DO THAT.

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BUT AT LEAST IN OUR CASE --

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THE COURT:

I THINK IT

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FOUR

TRIALS?

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PARTS MEANING WHAT?

MR. MCELHINNY:
TWO TRIALS.

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WHAT WE HAD IN MIND WAS

BUT YOU COULD DO IT IN THREE.

THE COURT:

WELL, YOU ARE GOING TO HAVE

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TO FIND ANOTHER JUDGE THEN BECAUSE I'M NOT GOING TO

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DO THAT.

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IT'S NOT HAPPENING IN THIS COURTROOM.
SO YOU ARE FREE TO SUE IN ANOTHER VENUE
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AND GET FIVE OR SIX TRIALS AND GET ALL ACCUSED

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DEVICES AND PATENTS YOU WANT BUT IT'S NOT HAPPENING

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HERE.

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MR. MCELHINNY:

I UNDERSTAND THAT,

YOUR HONOR.

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BUT THE ANSWER TO YOUR QUESTION AT LEAST

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ON OUR CASE, WE'VE GOT OUR CASE AND WE HAVE THE

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CROSS COMPLAINT.

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OF WHAT WE ARE TALKING ABOUT HAS TO DO WITH

AND IN OUR CASE THE VAST MAJORITY

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DESIGNS.

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ARE A LARGE NUMBER OF ACCUSED DEVICES IS BECAUSE

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THE PHONES KEEP COMING OUT.

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THE VAST MAJORITY AND THE FACT THAT THERE

IF I COULD START -- LET ME TELL YOU AT

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LEAST WHAT WE ARE TRYING TO ACCOMPLISH.

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WE ARE DRIVEN IN THIS CASE BY REMEDIES.

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WHICH IS

IN OTHER WORDS, WE BROUGHT THIS CASE TO

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GET INJUNCTIVE RELIEF TO TAKE ALL THE ACCUSED

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DEVICES OFF THE MARKET.

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SUFFERED DAMAGES IN THE MULTIPLE OF BILLIONS OF

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DOLLARS.

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THE COURT:

IN THE MEANTIME WE HAVE

YOU HAVE SEVEN UTILITY

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PATENTS THAT YOU ARE ASSERTING.

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ASSERTING NINE.

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WITH THAT MUCH?

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SAMSUNG IS

HOW WOULD ANY JURY BE ABLE TO DEAL

MR. MCELHINNY:

AT LEAST -- AGAIN,
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SPEAKING FROM OUR CASE, THE ANSWER TO THAT IS I

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THINK THE REAL QUESTION IS HOW MANY CLAIMS THEY'RE

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BEING ASKED TO APPLY.

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AND ON THE UTILITY PATENTS, WITH NOW ONE

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EXCEPTION, THEY ARE ALL GRAPHIC INTERFACE PATENTS.

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THEY ARE PATENTS THAT GO TO THE RUBBER BANDING

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EFFECT.

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THEY ARE PATENTS THAT GO TO THE SWEEP.
TO ME AT LEAST, THE CONCEPTUAL VISION I

HAVE OF THIS CASE IS ONE OF LOOK AND FEEL.

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HOW ALL OF THE ACCUSED DEVICES LOOK AND FEEL

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IT IS

EXACTLY LIKE THE IPHONE AND THE IPAD.

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AND WHEN YOU ASKED YOURSELF WHY THEY DO

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THAT, IT BREAKS DOWN INTO QUITE UNDERSTANDABLE

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ELEMENTS WHICH IS THE DESIGN OF THE DEVICE AND HOW

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IT OPERATES AS THE USER LOOKS AT IT

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THE COURT:

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WELL, I'M NOT HEARING THE ANSWER TO MY

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ALL RIGHT.

QUESTION.

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DO YOU WANT ME TO JUST VACATE IT AND WE

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CAN SET THE FIRST TRIAL FOR 2013, SECOND TRIAL FOR

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2014, THIRD TRIAL FOR 2015?

I CAN DO IT THAT WAY.

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BUT IF YOU ARE GOING TO TRIAL IN JULY

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THIS IS NOT GOING TO BE ACCEPTABLE AND SAME FOR

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SAMSUNG.

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SO EITHER I NEED FURTHER NARROWING OF
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THIS CASE, AND I WANT SPECIFICALLY WHICH CLAIMS YOU

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ARE GOING TO BE ASSERTING, OR I'M GOING TO VACATE

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THE TRIAL.

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I DON'T THINK THIS CASE IS READY FOR TRIAL IN JULY

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IF YOU WANT TO GO FORWARD WITH THIS MUCH.

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THINK IT'S POSSIBLE

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WE DON'T HAVE TO GO TO TRIAL IN JULY.

MR. MCELHINNY:

I DON'T

THE ANSWER IS I WOULD

LIKE TO TAKE THE SECOND OPTION.
THE COURT:
TO DO THAT?

OKAY.

SO WHEN ARE YOU GOING

I WANTED THIS TO BE THE DATE.

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MR. MCELHINNY:

I UNDERSTAND.

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I'M NOT GOING TO ASK FOR BEYOND FRIDAY TO

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GET IT TO YOU.

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GIVE ME MANY MORE CHANCES BEYOND FRIDAY, SO I WOULD

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LIKE SOME GUIDANCE.

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BUT I DON'T THINK YOU ARE GOING TO

TO BE CLEAR, WHEN YOUR HONOR IS LOOKING

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AT THE ENTIRE CASE WHICH IS APPROPRIATE, SO YOU ARE

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LOOKING AT NINE SAMSUNG PATENTS AND A 136 CLAIMS

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THERE, SAMSUNG HAS NO INTEREST IN REDUCING THE

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COMPLEXITY.

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YOU ASKED US TO REDUCE MOTIONS, THEY

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INCREASED THEM.

THEY HAVE NO INTEREST IN HOLDING

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THE TRIAL DATE.

SO THE LEVERAGE OF THE TRIAL DATE

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WORKS ONLY AGAINST MY CLIENT.

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YOU, WE WILL DO WHATEVER WE NEED TO DO TO HOLD THE

AND AS I'VE TOLD

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TRIAL DATE.

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AND TO THE EXTENT IF YOU HAVE A BALLPARK

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IN MIND ABOUT WHAT WE NEED TO COME BACK WITH I

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WOULD APPRECIATE THAT GUIDANCE BECAUSE I DON'T WANT

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TO MISS IT AGAIN.

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THE COURT:

WELL, AS FAR AS ANY -- IT

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DEPENDS ON WHAT COMBINATION YOU ARE GOING TO DO.

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BUT I WOULD THINK ON A UTILITY PATENT, AT MOST --

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WELL, I WOULD LIMIT IT, I GUESS, TO EVEN CLAIM

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TERMS.

I THINK THREE OR FOUR IS PROBABLY THE MOST

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THAT CAN BE DONE, AT THE MOST.

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37 ACCUSED PRODUCTS?

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MR. MCELHINNY:

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THE COURT:

THAT'S TOO MANY.

MAY I JUST BE HEARD --

AT THIS POINT I'M NOT GOING

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TO GIVE YOU EXACT LIMITS.

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THEN ON APPEAL YOU'RE BOTH GOING TO ARGUE THAT I

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VIOLATED YOUR DUE PROCESS RIGHTS IN NOT LETTING YOU

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BRING YOUR CASE.

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I SUSPECT IF I DO THAT

BUT IT NEEDS TO BE VERY MANAGEABLE FOR A

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JURY TO UNDERSTAND.

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SIDES HAVE PRESENTED IS NOT THERE.

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AND I THINK WHAT YOU BOTH

SO IF IT REMAINS LIKE THIS SCOPE THEN I'M

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JUST GOING TO VACATE IT.

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MR. MCELHINNY:

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I AM HEARING YOU LOUDLY

AND CLEARLY.
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THE COURT:

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SO THEN TELL ME WHEN BOTH SIDES -- AND I

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DON'T WANT JUST YOUR LISTING OF WE'LL DISMISS, YOU

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KNOW, I WANT IT TO BE MORE IN THE AFFIRMATIVE.

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ARE PLANNING GO TO TRIAL ON CLAIM 2 OF PATENT

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WHATEVER.

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THIS IS WHAT WE ARE WILLING TO DISMISS.

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YEAH.

WE

I WANT IT TO BE VERY SPECIFIC, VERSUS,

I WANT TO KNOW WHAT EXACTLY YOU WANT TO

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PRESENT TO THE JURY AND HAVE THE JURY DECIDE.

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SO ARE YOU GOING TO MEET AND CONFER

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TOMORROW?

I MEAN, AT FIRST I THOUGHT WELL MAYBE

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YOU WANT TO DO SOME NARROWING AFTER SUMMARY

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JUDGEMENT, BUT APPLE IS NOT EVEN FILING ANY SUMMARY

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JUDGEMENT MOTIONS.

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GUIDANCE YOU ARE WAITING ON FROM THE COURT TO

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NARROW YOUR CASE.

SO THERE'S NOT REALLY ANY MORE

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SAMSUNG IS GOING TO GO ON SOME INVALIDITY

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SUMMARY JUDGEMENT, MAYBE THAT MIGHT NARROW THE CASE

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AND FUNCTIONALITY OF THE TRADE DRESS TRADEMARK, BUT

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I DON'T SEE ANY MORE NARROWING FROM APPLE'S

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PERSPECTIVE.

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MR. MCELHINNY:

WELL, I THINK IT FULLY

WORKS THE OPPOSITE WAY, YOUR HONOR.
WE WOULD NARROW THE RESPONSE IF THEY -IF YOUR HONOR ALLOWED THEM TO FILE SUMMARY
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JUDGEMENT MOTIONS, THEN OBVIOUSLY WE WOULD NARROW

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IN RESPONSE TO WHATEVER HAPPENED ON THEIR SUMMARY

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JUDGEMENT MOTIONS.

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THE FACT THAT WE ARE NOT FILING ANY

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DOESN'T -- WE ARE NOT FILING AFFIRMATIVE ONES, BUT

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IN ORDER TO REDUCE THE PAPERWORK WE ARE NOT

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CHALLENGING THE SAMSUNG PATENTS, WE WILL BE

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PREPARED TO DO THAT AT TRIAL.

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THE COURT:

WELL, I'M -- I WOULD LIKE TO

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SET ANOTHER DATE THEN FOR YOU ALL TO MEET AND

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CONFER.

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9:00 AND THEY DIDN'T RESPOND TO 8:30, THIS BACK AND

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FORTH.

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TO NARROW THIS CASE FURTHER IF YOU WANT A TRIAL

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THIS SUMMER.

AND I DON'T WANT THESE, WE CALL THEM AT

I WOULD JUST LIKE THE DISCUSSION TO BE HEAD

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AND IF YOU DON'T WANT A TRIAL THIS SUMMER

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THEN THAT'S FINE.

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THIS CASE KEEP CHURNING FOR A COUPLE OF YEARS YOU

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CAN GET MORE DISCOVERY YOU CAN DESIGNATE MORE

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EXPERTS YOU CAN PRODUCE MORE EXPERT REPORTS.

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I'M PERFECTLY FINE WITH HAVING

BUT IF YOU WANT TO GO TO TRIAL I NEED TO

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SEE FURTHER NARROWING.

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BY FRIDAY?

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MR. MCELHINNY:

SO ARE YOU GOING TO DO THAT

ACTUALLY, NOW I WOULD

LIKE TO MOVE IT TO MONDAY, YOUR HONOR, IF YOU ARE
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GOING TO WANT THE SPECIFIC CLAIMS.

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THE COURT:

THAT'S FINE.

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MR. MCELHINNY:

MAY I ASK JUST A

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CLARIFICATION?

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YOU TALKING ABOUT SPECIFIC CLAIMS?

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WHEN YOU SAY THREE CLAIM TERMS, ARE

THE COURT:

WELL, I GUESS THAT'S WHY I'M

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NOT INCLINED TO SAY IN THE ABSTRACT EXACTLY HOW

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MANY CLAIMS BECAUSE IF YOU'RE ASKING FOR THE JURY

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TO CONSTRUE SEVEN TERMS OUT OF ONE CLAIM, THEN

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THAT'S DIFFERENT.
LET ME SEE, INSTEAD OF PUTTING THE ONUS

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ON ME TO DEFINE YOUR CASE, MAKE YOUR PROPOSAL OF A

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MUCH MORE NARROWED CASE THAT A JURY CAN ABSORB AND

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UNDERSTAND AND FAIRLY ADJUDICATE AND THEN WE CAN

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TALK FURTHER.

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MR. MCELHINNY:

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THE COURT:

THANK YOU, YOUR HONOR.

I NEED TO KNOW WHAT CLAIMS

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YOU ARE ASSERTING AND WHAT TERMS WITHIN THAT CLAIM

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THE JURY WILL NEED -- WILL BE THE MOST IN DISPUTE.

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MR. MCELHINNY:

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THE COURT:

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MR. MCELHINNY:

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THANK YOU, YOUR HONOR.

OKAY.
IF I COULD JUST REPEAT

ONCE MORE, I KNOW YOUR HONOR KNOWS THIS.
WE ARE THE ONLY PARTY THAT WANTS TO GO TO
TRIAL THIS SUMMER.

SAMSUNG HAS NO INTEREST IN
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GOING TO TRIAL THIS SUMMER.

THEY HAVE BEEN TELLING

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YOU THAT SINCE THE FIRST TIME WE HAD A CASE

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MANAGEMENT CONFERENCE.

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SO THIS LEVERAGE WORKS ON US AND WE WILL

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DO EVERYTHING WE CAN TO KEEP THE TRIAL DATE BUT IT

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DOESN'T WORK ON BOTH PARTIES.

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THE COURT:

WELL, IF SAMSUNG IS

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UNREASONABLE IN LIMITING ITS CASE THEN I MIGHT JUST

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MAKE MY OWN DECISION ABOUT WHICH OF ITS TERMS ARE

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GOING TO TRIAL AND WHICH OF ITS CLAIMS ARE GOING TO

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TRIAL, SO I HOPE IT DOESN'T GET TO THAT.

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MR. VERHOEVEN:

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WE ARE HOPING FOR A MUCH NARROWER CASE

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AND WE HAVE INDICATED TO YOUR HONOR THAT WE WILL

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REDUCE THE NUMBER OF PATENTS WE HAVE ASSERTED.

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YES, YOUR HONOR.

AND IF WE CAN GET TOGETHER WITH THEM FOR

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REDUCTION IN PARODY, I WILL REPRESENT TO YOU THAT

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WE WILL BE WILLING TO REDUCE OUR CASE.

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THE PROBLEM IS WE WOULD BE SUBSTANTIALLY

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PREJUDICED IF THEY ARE GOING ON 30 PLUS IPA SETS

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AND WE REDUCE DOWN TO TWO, AS YOUR HONOR I'M SURE

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CAN APPRECIATE, SO IT'S SORT OF A NEGOTIATION.

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AND YOUR HONOR, AS I RECALL IN THE LAST

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HEARING VERY CLEARLY SET -- INDICATED THAT THE

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TRIAL DATE WAS DEPENDENT UPON REDUCTION AND WE ARE
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PERFECTLY WILLING TO DO THAT BUT IT HAS TO BE

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BILATERAL.

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THE COURT:

WELL, I THINK IT HAS TO BE

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BILATERAL JUST BECAUSE I DON'T THINK A JURY WILL BE

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ABLE TO REALLY COMPREHEND AND GIVE YOU A FAIR

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DECISION AND ABSORB ALL THE INFORMATION YOU ARE

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PROVIDING.

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MR. VERHOEVEN:

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THE COURT:

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YES, YOUR HONOR.

SO I WANT THAT FILED BY

MAY 7TH.

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NOW ASSUMING THIS IS GOING FORWARD WHICH

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I HAVEN'T MADE A DECISION AT THIS POINT, NOW APPLE

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HAS FILED A MOTION FOR ADVERSE INFERENCE JURY

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INSTRUCTIONS DUE TO SAMSUNG'S SPOLIATION OF

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EVIDENCE, IS THEIR MOTION.

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I THINK THAT THAT IS MORE APPROPRIATELY

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DECIDED BY JUDGE GREWAL.

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THIS AND HE IS MORE FAMILIAR WITH WHAT E-MAILS MAY

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OR MAY NOT HAVE BEEN RETAINED AND WHETHER IT WAS OR

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WAS NOT IN COMPLIANCE WITH HIS ORDERS

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MR. MCELHINNY:

MAY I BE HEARD BRIEFLY ON

THAT?

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THE COURT:

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MR. MCELHINNY:

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I'VE QUICKLY REVIEWED

YES.
THE REASON WE FILED IT

WITH YOU, TWO REASONS.
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ONE BECAUSE WE WERE ASKING FOR A JURY
INSTRUCTION.

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BUT TWO, ALSO IN THE PREVIOUS SANCTIONS

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MOTION THAT JUDGE GREWAL ISSUED HE ACTUALLY

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MENTIONED IN THERE THAT HE WAS VERY UNCOMFORTABLE

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WITH GETTING INTO YOUR JURISDICTION IN TERMS OF

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ADVERSE INFERENCES AND THINGS THAT WOULD AFFECT THE

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TRIAL.

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SO WE WILL GO WHEREVER YOU WANT US TO GO,

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BUT IF YOU ARE GOING TO MAKE A REFERENCE WE WOULD

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ASK YOU TO MAKE IT CLEAR TO JUDGE GREWAL THAT HE

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HAS THE AUTHORITY, YOU'VE GIVEN HIM THE AUTHORITY

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TO DO THIS.

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THE COURT:

I'VE SPOKEN WITH HIM AND HE

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SAID HE INCLUDED THAT, NOT TO STEP ON MY TOES, BUT

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FOR CERTAIN ISSUES IF HE HAS THE INSTITUTIONAL

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KNOWLEDGE OF HAVING BEEN WITH YOU ALL THROUGH ALL

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OF THESE DISCOVERY MOTIONS, THEN I THINK IT MAKES

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THE MOST SENSE FOR THAT TO GO TO HIM.

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NOW I'M PLANNING AND WILL GO THROUGH THIS

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ASSUMING THE TRIAL STAYS ON TRACK, ON KEEPING ALL

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THE DAUBERT MOTIONS ALL THE MOTIONS IN LIMINE,

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SUMMARY JUDGEMENT, AND WE CAN TALK ABOUT ANY

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FURTHER CLAIM CONSTRUCTION FOR THE DESIGN PATENTS.

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BUT FROM MY REVIEW OF THIS MOTION, AND I
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HAVE SPOKEN WITH HIM AND AS LONG AS I GIVE A CLEAR

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REFERRAL, HE IS FINE --

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MR. MCELHINNY:

GREAT.

THEN WE ARE TOO,

YOUR HONOR.

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THE COURT:

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OKAY.

-- WITH TAKING THIS.

SO THE MOTION FOR ADVERSE

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INFERENCE JURY INSTRUCTION WILL GO TO JUDGE GREWAL,

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AND I'VE ALREADY SPOKEN WITH HIM.

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IN ADDITION, I UNDERSTAND BOTH SIDES WANT

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TO FILE A MOTION TO STRIKE FOR LATE DISCLOSED

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DISCOVERY/THEORIES.

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IF IT'S CONCERNING WHETHER DISCOVERY IS

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TIMELY PRODUCED OR NOT, IT SHOULD GO TO

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JUDGE GREWAL SINCE HE'S HEARD ALL THE DISCOVERY

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MOTIONS IN THIS CASE.

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AND I HAVE SPOKEN WITH HIM AND HE'S MORE

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THAN HAPPY TO TAKE THOSE.

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TO BE JUST ONE PER SIDE, I'M ONLY GOING TO ALLOW

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ONE PER SIDE.

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MR. MCELHINNY:

I ASSUME THERE'S GOING

THAT'S ALL WE WANT,

YOUR HONOR.
THE COURT:

SO THOSE WILL GO BEFORE

JUDGE GREWAL AS WELL.
ONE EACH.

HE SAID FOLLOW THE LOCAL RULES

IN TERMS OF LENGTH OF BRIEFING.
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ON THE DAUBERT MOTIONS EACH SIDE WILL

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HAVE 25 PAGES FOR BOTH OPENING AND OPPOSITION AND

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15 PAGE REPLY.

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FOR MOTIONS IN LIMINE THE MAXIMUM WILL BE

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TEN MOTIONS PER SIDE AND YOU WILL HAVE 30 PAGES FOR

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MOTIONS AND OPPOSITIONS.

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NO REPLIES.

WITH REGARD TO THE DESIGN PATENT CLAIM

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CONSTRUCTION ISSUE, I'M NOT CLEAR ON WHAT IT IS

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THAT NEEDS TO BE CONSTRUED.

I CAN EITHER SET AN

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ABBREVIATED SHORTENED BRIEFING SCHEDULE FOR THIS

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AND HAVE THIS HEARD ON THE PRETRIAL CONFERENCE,

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THAT'S MY INCLINATION, 15 PAGES OPENING, 15 PAGES

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OPPOSITION, 5 PAGE REPLY, BUT I JUST WASN'T CLEAR

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ON WHAT IT IS YOU ARE SAYING NEEDS CONSTRUCTION.

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DO YOU HAVE ANY MORE ON THAT ISSUE?

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MR. VERHOEVEN:

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I WILL GIVE YOU THE MORE.

YES, YOUR HONOR.
BUT ON THE

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SCHEDULING, I WAS ACTUALLY THINKING PERHAPS WE

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COULD SCHEDULE IT FOR THE SAME TIME AS THE SUMMARY

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JUDGEMENT HEARING THAT'S ALREADY GOING TO BE ON

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YOUR CALENDAR I THINK, YOUR HONOR, JUNE 21ST.

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DON'T KNOW IF THAT WORKS FOR YOUR HONOR OR NOT.

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AND TO ANSWER THE QUESTION, UNDER THE

I

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CASE LAW -- THERE'S NOT A LOT OF CASE LAW ON DESIGN

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PATENTS AS YOUR HONOR KNOWS, BUT UNDER EGYPTIAN
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GODDESS IT'S CLEAR CONSTRUCTION ISSUES FOR DESIGN

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PATENTS AS WELL AS UTILITY PATENTS ARE A MATTER OF

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LAW FOR THE JUDGE AND NOT FOR THE JURY.

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THE COURT:

WHAT ARE THE SPECIFIC DESIGN

FEATURES THAT YOU WANT TO CONSTRUE?
MR. VERHOEVEN:

WELL, THE MOST IMPORTANT

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ASPECT IS DISTINGUISHING BETWEEN FEATURES OF THE

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CLAIMED DESIGN THAT ARE ORNAMENTAL AS OPPOSED TO

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THOSE THAT ARE FUNCTIONAL WHICH IS REFERRED TO IN

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EGYPTIAN GODDESS AND IN THE RICHARDSON CASE,

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YOUR HONOR.

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THE COURT:

YEAH, NO.

13

I'M NOT ASKING ABOUT THE LAW, I'M ASKING

14

WHAT ARE THE SPECIFIC FEATURES THAT YOU'RE

15

REQUESTING BE CONSTRUED?

16

MR. VERHOEVEN:

WHAT WE WOULD DO IS WE

17

WOULD ASK FOR YOUR HONOR'S RULES AS A MATTER OF LAW

18

AS TO WHICH FEATURES ARE FUNCTIONAL, AND I'M NOT

19

PREPARED TO GIVE YOU A LIST OF THOSE RIGHT NOW,

20

YOUR HONOR.

21

BUT BEFORE IT GOES TO THE JURY FOR THE

22

JURY TO ASSESS INFRINGEMENT OR VALIDITY WE BELIEVE

23

IT WOULD BE APPROPRIATE FOR THE COURT TO ADDRESS

24

THOSE ISSUES SO THAT THE JURY HAS GUIDANCE ON THAT.

25

OTHERWISE, WE ARE GOING TO BE -- THEY ARE
18

1

GOING TO HAVE NO GUIDANCE AND WE ARE GOING TO HAVE

2

A SITUATION WHERE PEOPLE ARE GOING TO BE -- FOR

3

EXAMPLE, IN THE EXPERT REPORTS AND EXPERT DISCOVERY

4

THAT WAS RECENTLY TAKEN, IT IS OUR BELIEF THAT THE

5

MULTIPLE EXPERTS THAT APPLE HAS DISCLOSED HAVE

6

BASICALLY PUNTED ON THIS ISSUE OF JUST SAYING, HEY

7

IT LOOKS THE SAME, AND THEY HAVEN'T ADDRESSED WHICH

8

ASPECTS ARE FUNCTIONAL OR NOT.

9

JUST AS IN UTILITY PATENTS WHERE YOU NEED

10

TO HAVE CONSTRUCTION OF THE CLAIMS IN ORDER TO

11

PROVIDE GUIDANCE TO THE JURY AS TO THE METES AND

12

BOUNDS OF THE PROPERTY RIGHT.

13

DESIGN PATENTS, ALTHOUGH GRANTED THEY ARE DIFFERENT

14

THAN UTILITY PATENTS, THE JURY STILL NEEDS GUIDANCE

15

FROM THE COURT AS TO WHAT ARE THE PURELY FUNCTIONAL

16

ASPECTS, SUCH AS YOUR HONOR, A ROUNDED RECTANGLE

17

GEOMETRIC SHAPE, IS IT FUNCTIONAL OR IS IT NOT?

18
19

THE COURT:

SIMILARLY, IN THE

I'M SORRY, LET ME INTERRUPT

YOU.

20

MR. VERHOEVEN:

21

THE COURT:

YES, YOUR HONOR.

WILL THE FEDERAL CIRCUIT

22

PRELIMINARY INJUNCTION RULING GIVE US ANY GUIDANCE

23

ON THIS?

24

MR. VERHOEVEN:

25

THE COURT:

IT MAY VERY WELL.

OKAY.

DO WE HAVE A SENSE OF
19

1

WHEN THAT'S -- THEY INDICATE WHEN THEY MIGHT ISSUE

2

A RULING?

3

MR. MCELHINNY:

NOT AT ALL, YOUR HONOR.

4

MR. VERHOEVEN:

I THINK IT COULD BE ANY

5

DAY, YOUR HONOR.

6

THE COURT:

OKAY.

ALL RIGHT.

7

WELL, THIS IS WHAT I'M GOING TO PROPOSE.

8

A 15 PAGE OPENING BRIEF DUE JUNE 12TH.

9

RESPONSE DUE JUNE 26TH.

A 15 PAGE

A 5 PAGE REPLY DUE

10

JULY 30TH, AND I WILL HEAR THIS ON JULY 18TH AT THE

11

PRETRIAL CONFERENCE.

12

MR. VERHOEVEN:

IS THERE ANY CHANCE,

13

YOUR HONOR, GIVEN THERE ARE SEVEN DIFFERENT DESIGN

14

PATENTS THAT WE COULD HAVE 20 PAGES IN OUR OPENING

15

BRIEF?

16

THE COURT:

I'M JUST CONCERNED THAT I'M

17

NOT SURE I WILL HAVE THE BANDWIDTH AT YOUR PRETRIAL

18

CONFERENCE TO RULE ON THE HUNDREDS OF PAGES OF

19

MOTIONS IN LIMINE, THAT'S MY CONCERN.

20

NOW THE DAUBERT WILL BE DECIDED, THE

21

DAUBERT MOTIONS WILL BE DECIDED WITH THE SUMMARY

22

JUDGEMENTS ON JUNE 21ST.

23

MR. VERHOEVEN:

24
25

ONE SUGGESTION I HAVE IF

I MAY BE HEARD, YOUR HONOR.
THE COURT:

YES, SIR, PLEASE.
20

1

MR. VERHOEVEN:

PERHAPS IT WOULD MAKE

2

SENSE TO FILE THE PAPERS ON CLAIM CONSTRUCTION WITH

3

THE HOPE THAT THERE'S A RULING TO GIVE THE COURT

4

GUIDANCE OR TO THE EXTENT THERE IS GUIDANCE BEFORE

5

JUNE 21ST.

6

BUT IF THERE'S NOT THEN WE COULD

7

RESCHEDULE THAT.

8

ABOUT, I'M NOT SURE IF I HEARD YOU SAY YOU WERE

9

THINKING ABOUT SCHEDULING IT FOR THE PRETRIAL

10

I'M JUST A LITTLE CONCERNED

CONFERENCE.

11

I'M CONCERNED THAT'S SO CLOSE TO TRIAL IT

12

WOULD BE MORE HELPFUL FOR US AT LEAST IF FOR TRIAL

13

PREPARATION PURPOSES A RULING SOONER THAN THAT.

14
15

THE COURT:

WELL, I'M NOT EVEN SURE

CONSTRUCTION IS NECESSARY.

16

MR. MCELHINNY:

TO BE CLEAR, I HAVE BEEN

17

QUIET.

18

COURT, BUT THAT EGYPTIAN GODDESS MADE IT CLEAR THAT

19

CLAIM CONSTRUCTION OF DESIGN PATENTS IS NO LONGER

20

FAVORED.

21

OUR POSITION IS THIS MAY WORK FOR THE

IT'S ONE OF THE CHANGES THE CASE MADE.

22

IT MAY NOT BE REVERSIBLE TO DO IT, BUT THE GUIDANCE

23

TO THE DISTRICT COURTS WAS THAT'S NOT THE WAY TO GO

24

WITH DESIGN PATENTS.

25

THE COURT:

RIGHT.
21

1

BUT IT DOES SAY THAT IF THERE'S SOME

2

GUIDANCE WHETHER IT'S A JURY INSTRUCTION OR

3

SOMETHING, THE COURT SHOULD DO THAT.

4

YOU THAT GENERALLY DESIGN PATENTS SPEAK FOR

5

THEMSELVES AND THE CIRCUIT IS NOT ENCOURAGING US TO

6

CONSTRUE THEM.

7

MR. VERHOEVEN:

I AGREE WITH

YOUR HONOR, I'M QUOTING

8

FROM EGYPTIAN GODDESS IT SAYS -- THIS IS 543 F.3D

9

665 AT PAGE 680.

10

AND IT TALKS ABOUT THE TRIAL COURT CAN

11

USEFULLY GUIDE THE FINDER OF FACTS BY ADDRESSING A

12

NUMBER OF OTHER ISSUES THAT BEAR ON THE SCOPE OF

13

THE CLAIM.

14

THEN IT CALLS OUT SPECIFICALLY --

15

THE COURT:

16

THOSE INCLUDE SUCH MATTERS AS DESCRIBING

I'VE GOT IT.

17

THE ROLE OF PARTICULAR CONVENTIONS AND DESIGN

18

PATENT DRAFTING SUCH AS THE ROLE OF BROKEN LINES,

19

ET CETERA.

20

MR. VERHOEVEN:

THAT LAST BIT.

21

THE COURT:

22

BUT WITHOUT YOU TELLING ME WHAT IT IS

I HEAR YOU.

I HEAR YOU.

23

THAT YOU BELIEVE NEEDS CONSTRUCTION, IT'S DIFFICULT

24

FOR ME IN THE ABSTRACT TO SAY YES I'M GOING TO

25

CONSTRUE IT OR NOT.
22

1

MR. VERHOEVEN:

WE'RE GENERALLY --

2

FOCUSSING ON THE LAST CLAUSE OF THAT SENTENCE WHICH

3

IS THE DISTINCTION BETWEEN THE ORNAMENTAL AND THE

4

PURELY FUNCTIONAL.

5
6

AND I BELIEVE THAT WOULD BE HELPFUL FOR
THE JURY ESPECIALLY IN THIS CASE.

7

BUT IF WE BRIEFED THIS IN ACCORDANCE WITH

8

APPEARING ON JUNE 21ST AND THEN IF WE COULD MOVE IT

9

IF THE FEDERAL CIRCUIT HADN'T RULED OR IF THEY DID

10

WE COULD FILE A SUPPLEMENTAL TWO-PAGE STATEMENT OF

11

HOW WE THINK THAT ADDRESSES THINGS, I DON'T KNOW IF

12

THAT WOULD ADDRESS YOUR CONCERNS IN TERMS OF

13

TIMING, YOUR HONOR.

14

THE COURT:

WELL, MY CONCERN IS I HAVE A

15

WHOLE OTHER PRELIMINARY INJUNCTION MOTION IN THE

16

SECOND CASE.

17

THE FIRST TIME AROUND.

18

AND I KNOW HOW MUCH WORK THAT TOOK

AND I HAVE OTHER MATTERS AS WELL THAT ARE

19

SCHEDULED THROUGHOUT JUNE.

SO I JUST THINK

20

CAPACITY WISE, PROBABLY JULY WOULD BE BETTER ON

21

THAT ISSUE.

22

MR. VERHOEVEN:

23

THE COURT:

24

GOING TO BE QUITE A BIG TASK.

25

I UNDERSTAND, YOUR HONOR.

I'M EXPECTING THIS PI IS

MR. VERHOEVEN:

I UNDERSTAND, YOUR HONOR.
23

1

THE COURT:

2

SO THAT WOULD BE MY PREFERENCE.

3

COULD EXPEDITE IT FOR YOU BUT I'M THINKING IT JUST

4

MIGHT NOT BE POSSIBLE TO DO THAT.

5

LIKE THE LAST TIME AROUND.
I WISH I

SO I WOULD LIKE 15 PAGE OPENING

6

JUNE 12TH, 15 PAGE RESPONSE, JUNE 26TH AND 5 PAGE

7

REPLY JULY 3RD.

8
9

AND WHAT I WOULD LIKE TO DO IS AT THIS
POINT I THINK MORE CMC'S ARE BETTER JUST TO KEEP A

10

TIGHT CONTROL OF THINGS.

11

CMC WHEN YOU ALL COME IN, I GUESS IT'S DIFFERENT

12

COUNSEL BUT THE SAME PARTIES, ON JUNE 7TH.

13

MR. VERHOEVEN:

14

THE COURT:

15
16

SO I WOULD LIKE TO HAVE A

YES, YOUR HONOR.

WHEN YOU ARE HERE FOR THE PI

THEN WE CAN REFINE SOME OF THESE ISSUES.
MR. VERHOEVEN:

JUST SO IT'S A LITTLE BIT

17

OF BACKGROUND, YOUR HONOR, THERE ARE TWO ITC CASES

18

INVOLVING THE SAME PARTIES, APPLE AND SAMSUNG, THAT

19

ARE CURRENTLY SCHEDULED FOR TRIAL.

20

FACT, THEY WILL BOTH BE IN TRIAL JUNE 7TH IN

21

ADDITION TO THE PI HEARING, AND THAT'S WHY WE HAVE

22

A WHOLE DIFFERENT TEAM HANDLING THE PI AND THE CMC

23

FOR THE LATER FILED CASE TODAY.

24

THE COURT:

25

MR. VERHOEVEN:

IN

OKAY.
BECAUSE YOU SHOULD BE
24

1

DEALING WITH THE PEOPLE THAT YOU WILL BE DEALING

2

WITH AT THE PI, I ASSUME.

3
4

SO WE WON'T BE ABLE PHYSICALLY TO BE HERE
ON THE 7TH.

5

THE COURT:

OKAY.

THAT'S FINE.

6

WE WILL KEEP THEN THE NEXT CMC JUNE 21ST

7

WHICH IS WHEN WE ARE HAVING THE SUMMARY JUDGEMENT

8

HEARING.

9

THAT'S FINE.
MR. VERHOEVEN:

AND YOUR HONOR, I'M

10

ASSUMING THAT YOU WILL INDICATE QUICKLY TO US

11

WHETHER THE SUPPOSED NARROWING THAT'S GOING TO

12

OCCUR IS ACCEPTABLE AND THE DATES ARE STILL ON NEXT

13

WEEK OR WITHIN -- IS THERE SOME TIME FRAME WE

14

SHOULD LOOK FOR?

15

THE COURT:

WELL, AT THIS POINT WE SHOULD

16

KEEP JULY 30TH ON YOUR CALENDARS.

17

MR. VERHOEVEN:

18

SHOULD HAVE A CMC NEXT WEEK OR SOMETHING.

19
20
21
22

I'M JUST WONDERING IF WE

THE COURT:

WHEN DO YOUR ITC TRIALS

START?
MR. VERHOEVEN:

THE 30TH OF MAY.

WE WILL

HAVE TO LEAVE FOR WASHINGTON THE WEEK BEFORE THAT.

23

THE COURT:

OKAY.

24

MR. VERHOEVEN:

25

THE COURT:

THE WEEK OF THE 21ST?

CORRECT, YOUR HONOR.

I KNOW MAY 9TH IS REALLY FULL
25

1

BUT THAT LOOKS LIKE THAT'S PROBABLY THE ONLY DAY,

2

RIGHT, THAT THEY COULD COME BACK IN.

3

YOU KNOW, AS MUCH AS I ENJOY SEEING YOU

4

ALL, I'M NOT GOING TO SCHEDULE A CMC FOR NEXT WEEK.

5

I WILL LOOK AT WHAT YOU HAVE TO FILE.

6

I WILL SEE YOU THE 21ST OF JUNE.

IS

7

THERE ANYTHING ELSE THAT WE NEED TO DISCUSS?

8

THINK THAT WAS IT BASED ON THE CASE MANAGEMENT

9

STATEMENTS.

10
11

MR. VERHOEVEN:

I

I HAVE NOTHING ELSE,

YOUR HONOR.

12

MR. MCELHINNY:

ON THE SPOLIATION MOTION

13

YOUR HONOR, YOU WILL REFER THAT TO THE MAGISTRATE

14

JUDGE AND WE WILL SET A HEARING DATE; IS THAT

15

RIGHT?

16

THE COURT:

YES, I'M REFERRING YOUR RULE

17

37(C)(1) MOTIONS TO STRIKE FOR UNTIMELY DISCOVERY

18

AND YOUR MOTION FOR ADVERSE INFERENCE JURY

19

INSTRUCTION TO JUDGE GREWAL.

20

MR. VERHOEVEN:

AND SO YOU KNOW,

21

YOUR HONOR, WE INTEND TO REQUEST A DIFFERENT DATE

22

THAN THE 7TH FOR THE SAME REASON THAT THE 7TH

23

WOULDN'T WORK FOR US FOR A CMC.

24
25

THE COURT:

NOW THAT THESE ARE OFF MY

CALENDAR FOR THE 7TH, YOU WILL HAVE TO SCHEDULE
26

1

THOSE WITH JUDGE GREWAL WITH MR. RIVERA.

2

IF THE TRIAL DOES GO FORWARD I'M NOT

3

GOING TO GO TO THE NINTH CIRCUIT JUDICIAL

4

CONFERENCE.

5

APRIL 13TH; IS THAT RIGHT?

6

SO THE WEEK OF, WHAT IS THAT,

AUGUST 13TH WE WILL BE IN TRIAL THAT FULL

7

WEEK.

AUGUST 13TH THROUGH THE 17TH I'M NOT GOING

8

TO THE CIRCUIT CONFERENCE.

9

FIVE-DAY TRIAL WEEK.

10

OKAY.

11

MR. VERHOEVEN:

SO THAT WILL BE A

WHAT ELSE?
I THINK PREVIOUSLY YOU

12

TOLD US WE WERE LIMITED TO 25 HOURS.

13

YOU JUST SAID, YOUR HONOR?

14

THE COURT:

IS THAT WHAT

NO, IT WILL MEAN THAT YOU ALL

15

WILL END SOONER SO I CAN START MY CRIMINAL TRIALS

16

SOONER.

17

AFTER YOU ALL.

I HAVE ANOTHER CRIMINAL TRIAL STARTING

18

MR. VERHOEVEN:

I HAVE NOTHING FURTHER.

19

MR. MCELHINNY:

NOTHING FURTHER IN THIS

20

CASE, YOUR HONOR.

21

THE COURT:

22

THANK YOU.

23

(WHEREUPON, THE PROCEEDINGS IN THIS

24

ANYTHING ELSE?

ALL RIGHT.

MATTER WERE CONCLUDED.)

25
27

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2
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4

CERTIFICATE OF REPORTER

5
6
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9

I, THE UNDERSIGNED OFFICIAL COURT
REPORTER OF THE UNITED STATES DISTRICT COURT FOR

10

THE NORTHERN DISTRICT OF CALIFORNIA, 280 SOUTH

11

FIRST STREET, SAN JOSE, CALIFORNIA, DO HEREBY

12

CERTIFY:

13

THAT THE FOREGOING TRANSCRIPT,

14

CERTIFICATE INCLUSIVE, CONSTITUTES A TRUE, FULL AND

15

CORRECT TRANSCRIPT OF MY SHORTHAND NOTES TAKEN AS

16

SUCH OFFICIAL COURT REPORTER OF THE PROCEEDINGS

17

HEREINBEFORE ENTITLED AND REDUCED BY COMPUTER-AIDED

18

TRANSCRIPTION TO THE BEST OF MY ABILITY.

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20
21
22
23
24
25

/S/_________________________
SUMMER A. FISHER, CSR, CRR
CERTIFICATE NUMBER 13185
DATED:

MAY 11, 2012
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