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

Filing 1144

ORDER GRANTING-IN-PART AND DENYING-IN-PART MOTIONS TO STRIKE EXPERT REPORTS re #934 and #939 . Signed by Judge Paul S. Grewal on 6/27/2012. (ofr, COURT STAFF) (Filed on 6/27/2012)

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United States District Court
For the Northern District of California

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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.,

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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 GRANTING-IN-PART AND
DENYING-IN-PART MOTIONS TO
STRIKE EXPERT REPORTS
(Re: Docket Nos. 934, 939)

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”) and Plaintiff Apple Inc. (“Apple”) each move to strike portions of one another’s

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expert reports. On June 21, 2012, the court heard oral argument regarding the parties’ respective

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motions. Having considered the arguments and evidence presented, the court GRANTS-IN-PART

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and DENIES-IN-PART Apple’s motion to strike, and GRANTS-IN-PART and DENIES-IN-PART

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Samsung’s motion to strike.

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Case No.: 11-1846 LHK (PSG)
ORDER GRANTING-IN-PART AND DENYING-IN-PART MOTIONS TO STRIKE
EXPERT REPORTS

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I.

INTRODUCTION

Recognizing the time-sensitive nature of the issues presented, both for the parties and the

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presiding judge, the court will resist the urge to set forth a lengthy discussion of each party’s

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positions and its own analysis. Unfortunately, there is simply not time for all that, when the parties

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have challenged reports from no less than nineteen experts whose proposed testimony spans

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liability and damages issues concerning no less than eleven design and utility patents. Instead, the

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court will simply discuss the overarching legal framework that it has applied in reaching its

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decisions and then proceed to rule. For purposes of this order, the parties may presume that in

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ruling on any particular expert, the court has adopted the proposed factual findings and legal

United States District Court
For the Northern District of California

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conclusions of the party urging the ruling and rejected those in opposition.
II.

LEGAL STANDARDS

Patent cases in this district and many others follow a familiar sequence of steps to get at the

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theories and evidence that experts will present to the jury at trial. Complaints identify the patents-

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in-suit and perhaps the products. Answers identify the accused infringer’s general defenses. But

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only when the patent local rules requiring contentions kick in, or contention interrogatory

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responses are served, can parties begin to understand the particulars of their adversary’s case.

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Specific patent claims and disputed claim terms are designated. Infringement and invalidity charts

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are shared and amended as investigations and discovery reveal new evidence. Ultimately, expert

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reports are tendered and depositions provided, with perhaps a round of Daubert motions to clear

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the field of any last remaining brush barred under Fed. R. Civ. P. 702. Perfectly conceived and

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executed, expert trial testimony in a patent case should be no different than in other cases: the

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testimony is supported by a report which in turn reliably applies the theories disclosed in the

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contentions to evidence disclosed during fact discovery.

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Unfortunately, in either its conception or execution or both, expert trial testimony in patent

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cases is often far from perfect. This case is no exception. Most importantly for this order, many of

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the expert reports offer theories or rely on evidence never previously disclosed as required. Even if

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disclosed somewhere, the parties have forced each other to comb through the extraordinarily

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Case No.: 11-1846 LHK (PSG)
ORDER GRANTING-IN-PART AND DENYING-IN-PART MOTIONS TO STRIKE
EXPERT REPORTS

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voluminous record to find them, rather than simply amending their contentions or interrogatory

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responses as they should. This is unacceptable. Patent litigation is challenging and expensive

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enough without putting one party or the other to the task of sifting through mountains of data and

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transcripts to glean what is at issue. At the same time, the line between permissible application of a

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disclosed theory to disclosed evidence and impermissible reliance on either a new theory or new

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evidence can blur. Under these circumstances, when asked to strike some or all of an expert report,

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the court must revert to a simple question: will striking the report result in not just a trial, but an

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overall litigation, that is more fair, or less?

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United States District Court
For the Northern District of California

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With this framework and these standards in mind, the court turns to the two motions to
strike before it.

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III.

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DISCUSSION

A. Apple’s Motion to Strike Portions of Samsung’s Expert Reports

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Robert Anders

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1. Apple moves to strike portions of Robert Anders’ expert report that opine that Apple’s D’889,

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D’677, and D’087 Patents are indefinite. Apple argues that Anders’ report includes theories

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never previously disclosed to Apple during discovery. Apple’s motion is GRANTED.

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2. Apple moves to strike portions of Robert Anders’ expert report that opine that Samsung does

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not infringe certain Apple design patents. Apple argues that Anders’ report includes theories

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never previously disclosed to Apple during discovery. Apple’s motion is GRANTED.

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Stephen Gray

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3. Apple moves to strike portions of Stephen Gray’s expert report that opine that Apple’s ‘915

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Patent is invalid. Apple argues that Gray’s report includes ten references that were never

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previously disclosed in Samsung’s Invalidity Contentions. The court GRANTS Apple’s motion

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to exclude reference to seven of the ten, but DENIES Apple’s motion as to the remaining three.

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4. Apple moves to strike portions of Stephen Gray’s expert report that opine that Samsung does

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not infringe Apple’s ‘915 Patent. Apple argues that Gray’s report includes theories never

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Case No.: 11-1846 LHK (PSG)
ORDER GRANTING-IN-PART AND DENYING-IN-PART MOTIONS TO STRIKE
EXPERT REPORTS

1

previously disclosed to Apple during discovery. The court DENIES Apple’s motion, but further

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orders that Samsung produce Gray for two additional hours of deposition testimony.

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Nicholas Godici

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5. Apple moves to strike portions of Nicholas Godici’s expert report that opine that Apple’s

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D’889, D’677, and D’087 Patents are indefinite. Apple argues that Godici’s report includes

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theories never previously disclosed to Apple during discovery. Apple’s motion is GRANTED.

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6. Apple moves to strike portions of Nicholas Godici’s expert report that opine that Apple’s

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relevant design patents should be narrowly construed in light of subsequently issued design

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patents. Apple argues that Godici’s report includes theories never previously disclosed to Apple

United States District Court
For the Northern District of California

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during discovery. Apple’s motion is GRANTED.

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Jeffrey Johnson

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7. Apple moves to strike portions of Jeffrey Johnson’s expert report that opine that Samsung

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products do not infringe Apple’s ‘381 Patent. Apple argues that the report includes theories

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never previously disclosed to Apple during discovery. Apple’s motion is DENIED.

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Sam Lucente

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8. Apple moves to strike portions of Sam Lucente’s expert report that opine that Apple’s D’334

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and D’305 Patents are invalid. Apple argues that Lucente’s report includes prior art references

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never previously disclosed to Apple during discovery. Apple’s motion is GRANTED.

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9. Apple moves to strike portions of Sam Lucente’s expert report that opine that Apple’s asserted

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trade dress lacks distinctiveness. Apple argues that Lucente’s report includes theories never

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previously disclosed to Apple during discovery. Apple’s motion is GRANTED.

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10. Apple moves to strike portions of Sam Lucente’s expert report that opine that Samsung does

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not infringe certain Apple design patents. Apple argues that Lucente’s report includes theories

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never previously disclosed to Apple during discovery. Apple’s motion is GRANTED.

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Itay Sherman

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11. Apple moves to strike portions of Itay Sherman’s expert report that opine that Apple’s D’889,

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D’677, and D’087 Patents are invalid. Apple argues that Sherman’s report includes theories

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Case No.: 11-1846 LHK (PSG)
ORDER GRANTING-IN-PART AND DENYING-IN-PART MOTIONS TO STRIKE
EXPERT REPORTS

1

never previously disclosed to Apple during discovery, and also that Sherman’s report includes a

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prior art reference to a Nokia Fingerprint design that was never previously disclosed to Apple

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during discovery. Apple’s motion is GRANTED.

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12. Apple moves to strike portions of Itay Sherman’s expert report that opine that Apple’s asserted

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trade dress lacks distinctiveness. Apple argues that Sherman’s report includes theories never

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previously disclosed to Apple during discovery. Apple’s motion is GRANTED.

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13. Apple moves to strike portions of Itay Sherman’s expert report that opine that Apple’s D’889,

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D’677, and D’087 Patents are indefinite. Apple argues that Sherman’s report includes theories

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never previously disclosed to Apple during discovery. Apple’s motion is GRANTED.

United States District Court
For the Northern District of California

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Andries Van Dam

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14. Apple moves to strike portions of Andries Van Dam’s expert report. Apple argues that Van

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Dam’s report includes six alleged prior art references never previously disclosed in Samsung’s

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Invalidity Contentions. The court GRANTS Apple’s motion to the extent Van Dam references

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the prior art for any purpose other than to provide background for the technology claimed in the

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‘381 Patent.

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Brian Von Herzen

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15. Apple moves to strike portions of Brian Von Herzen’s expert report that opine that Apple’s

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‘607 Patent is invalid. Apple argues that the report includes a derivation theory never

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previously disclosed in Samsung’s Invalidity Contentions. Apple’s motion is GRANTED.

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16. Apple moves to strike portions of Brian Von Herzen’s expert report that opine that Samsung

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does not infringe Apple’s ‘607 Patent. Apple argues that the report sets forth non-infringement

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theories never previously disclosed to Apple in Samsung’s interrogatory responses. Apple’s

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motion is DENIED.

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17. Apple moves to strike portions of Brian Von Herzen’s expert report that opine that Apple’s

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‘607 Patent is invalid. Apple argues that the report references Blonder, but the reference was

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never previously disclosed to Apple in Samsung’s interrogatory responses. Apple’s motion is

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GRANTED.

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Case No.: 11-1846 LHK (PSG)
ORDER GRANTING-IN-PART AND DENYING-IN-PART MOTIONS TO STRIKE
EXPERT REPORTS

1

18. Apple moves to strike portions of Brian Von Herzen’s expert report that opine that Apple

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engaged in inequitable conduct while prosecuting its ‘607 Patent before the PTO. Apple argues

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that this theory was never previously disclosed to Apple either in Samsung’s Answer to

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Apple’s Complaint, or during discovery. The court GRANTS Apple’s motion.

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Michael Wagner

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19. Apple moves to strike Michael Wagner’s supplemental expert damages report. Apple argues

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that the report was untimely filed. The court DENIES Apple’s motion, but further orders that

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Samsung produce Wagner for two additional hours of deposition testimony.

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20. Apple moves to strike portions of Michael Wagner’s rebuttal expert damages report. Apple

United States District Court
For the Northern District of California

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argues that the report includes an alternative damages model based on financial data Samsung

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never produced during discovery. The court DENIES Apple’s motion, but further orders that

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Samsung produce Wagner for an additional hour of deposition testimony.1

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Tim Williams

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21. Apple moves to strike portions of Tim Williams’ expert report that opine that Apple infringes

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Samsung’s ‘516 Patent. Apple argues that Williams’ report advances infringement theories

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never previously disclosed in Samsung’s Infringement Contentions. Apple’s motion is

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GRANTED.

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Woodward Yang

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22. Apple moves to strike portions of Woodward Yang’s expert report that opine that Apple

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infringes Samsung’s ‘460 Patent. Apple argues that Yang’s report advances infringement

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theories never previously disclosed in Samsung’s Infringement Contentions. Apple’s motion is

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DENIED.

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B. Samsung’s Motion to Strike Portions of Apple’s Expert Reports

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Ravin Balakrishnan

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1. Samsung moves to strike portions of Ravin Balakrishnan’s expert report that opine that certain

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Samsung products infringe Apple’s ‘381 Patent. Samsung argues that Balakrishnan’s report

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Samsung must therefore produce Wagner for a total of three hours of additional deposition.
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Case No.: 11-1846 LHK (PSG)
ORDER GRANTING-IN-PART AND DENYING-IN-PART MOTIONS TO STRIKE
EXPERT REPORTS

1

references evidence never previously disclosed to Samsung during discovery. The court

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DENIES Samsung’s motion, but further orders that Apple produce Balakrishnan for an

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additional two hours of deposition testimony.

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Peter Bressler

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2. Samsung moves to strike portions of Peter Bressler’s report that opine on the state of the art

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surrounding Apple’s design patents. Samsung argues that Bressler’s expert report improperly

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references certain devices never previously disclosed to Samsung during discovery, and that

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Bressler’s expert report improperly references certain product reviews, comparisons, and

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design elements. Samsung’s motion as it pertains to devices is GRANTED, and Samsung’s

United States District Court
For the Northern District of California

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motion as it pertains to reviews, comparisons, and design elements is DENIED.

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Tony Givargis

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3. Samsung moves to strike portions of Tony Givargis’ expert report that opine that Samsung’s

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‘711 Patent is invalid. Samsung argues that Givargis’ report references evidence never

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previously disclosed to Samsung during discovery. Samsung’s motion is DENIED.

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4. Samsung moves to strike portions of Tony Givargis’ expert report that opine that Apple does

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not infringe Samsung’s ‘711 Patent. Samsung argues that Givargis’ report references theories

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never previously disclosed to Samsung during discovery. Samsung’s motion is DENIED.

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Susan Kare

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5. Samsung moves to strike portions of Susan Kare’s expert report that opine on alternatives to

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Apple’s design patents. Samsung argues that Kare’s report references evidence never

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previously disclosed to Samsung during discovery. Samsung’s motion is GRANTED.

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Michael Maharbiz

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6. Samsung moves to strike portions of Michael Maharbiz’s expert report that opine that Samsung

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infringes Apple’s ‘607 Patent. Samsung argues that Maharbiz’s report improperly references

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certain laboratory reports never previously disclosed to Samsung during discovery, and that

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Maharbiz’s report improperly references an infringement theory and evidence never previously

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disclosed to Samsung during discovery. Samsung’s motion as it pertains to laboratory results is

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Case No.: 11-1846 LHK (PSG)
ORDER GRANTING-IN-PART AND DENYING-IN-PART MOTIONS TO STRIKE
EXPERT REPORTS

1

DENIED, and Samsung’s motion as it pertains to an infringement theory and evidence is

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GRANTED.

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Terry Musika

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7. Samsung moves to strike portions of Terry Musika’s expert report on damages. Samsung

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argues that Musika’s report references licensing information never previously disclosed to

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Samsung during discovery, and also that data underlying summary tables in Musika’s report

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was never previously disclosed to Samsung during discovery. Samsung’s motion is DENIED.

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Sanjay Sood

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8. Samsung moves to strike portions of Sanjay Sood’s expert report that opine on the importance

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For the Northern District of California

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of design to consumers. Samsung argues that Sood’s report references evidence never

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previously disclosed to Samsung during discovery. Samsung’s motion is DENIED.

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Russel Winer

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9. Samsung moves to strike portions of Russel Winer’s expert report that opine on Apple’s trade

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dress claims. Samsung argues that Winer’s report references evidence never previously

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disclosed to Samsung during discovery. Samsung’s motion is DENIED.

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IV.

CONCLUSION

In accordance with the foregoing, the court ORDERS that portions of the parties’ expert

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reports be struck. All supplemental depositions must be completed no later than July 13, 2012.

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IT IS SO ORDERED.

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Dated: June 27, 2012

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_________________________________
PAUL S. GREWAL
United States Magistrate Judge

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Case No.: 11-1846 LHK (PSG)
ORDER GRANTING-IN-PART AND DENYING-IN-PART MOTIONS TO STRIKE
EXPERT REPORTS