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

Filing 1258

MOTION Motion to Clarify Portions of the Court's June 30, 2012 Order Denying Samsung's Motion for Summary Judgment re #1158 Order filed by Samsung Electronics Co. Ltd.. Motion Hearing set for 7/24/2012 01:30 PM in Courtroom 1, 5th Floor, San Jose before Hon. Lucy H. Koh. Responses due by 7/20/2012. (Maroulis, Victoria) (Filed on 7/17/2012)

1 QUINN EMANUEL URQUHART & SULLIVAN, LLP
Charles K. Verhoeven (Cal. Bar No. 170151)
2 [e-mail]
50 California Street, 22nd Floor
3 San Francisco, California 94111
Telephone: [phone]
4 Facsimile: [phone]
5 Kevin P.B. Johnson (Cal. Bar No. 177129)
[e-mail]
6 Victoria F. Maroulis (Cal. Bar No. 202603)
[e-mail]
7 555 Twin Dolphin Drive 5th Floor
Redwood Shores, California 94065
8 Telephone: [phone]
Facsimile: [phone]
9
Michael T. Zeller (Cal. Bar No. 196417)
10 [e-mail]
865 S. Figueroa St., 10th Floor
11 Los Angeles, California 90017
Telephone: [phone]
12 Facsimile: [phone]
13 Attorneys for SAMSUNG ELECTRONICS
CO., LTD., SAMSUNG ELECTRONICS
14 AMERICA, INC. and SAMSUNG
TELECOMMUNICATIONS AMERICA, LLC
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16

UNITED STATES DISTRICT COURT

17

NORTHERN DISTRICT OF CALIFORNIA, SAN JOSE DIVISION

18 APPLE INC., a California corporation,

CASE NO. 11-cv-01846-LHK

19

SAMSUNG’S NOTICE OF MOTION AND
MOTION TO CLARIFY PORTIONS OF
THE COURT’S JUNE 30, 2012 ORDER
DENYING SAMSUNG’S MOTION FOR
SUMMARY JUDGMENT

20

Plaintiff,
vs.

21 SAMSUNG ELECTRONICS CO., LTD., a
Korean business entity; SAMSUNG
22 ELECTRONICS AMERICA, INC., a New
York corporation; SAMSUNG
23 TELECOMMUNICATIONS AMERICA,
LLC, a Delaware limited liability company,
24
Defendants.
25

Date:
July 24, 2012
Time: 1:30 pm
Place: Courtroom 8, 4th Floor
Judge: Hon. Lucy H. Koh

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Case No. 11-cv-01846-LHK
SAMSUNG’S MOTION TO CLARIFY PORTIONS OF THE COURT’S
JUNE 30, 2012 ORDER DENYING SAMSUNG’S MOTION FOR SUMMARY JUDGMENT

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TABLE OF CONTENTS

2

Page

3
4 I.

INTRODUCTION ................................................................................................................. 1

5 II.

PROCEDURAL BACKGROUND ....................................................................................... 3

6

A. 

7

Apple Moves to Strike Certain Samsung Expert Testimony Under Rule
37(c)(1) Based on Alleged Failure To Timely Supplement Interrogatory
Responses .................................................................................................................. 3

8

1. 

Apple’s Motion Only Sought Exclusion Of Portions of Samsung’s
Expert Reports ............................................................................................... 4

2.

The Asserted Basis For Exclusion Of Samsung’s Design Patent,
Trade Mark, and Trade Dress Expert Testimony .......................................... 6

3.

Apple’s Motion Was In Breach Of An Agreement Not To Seek To
Exclude Evidence If Samsung Supplemented Its Interrogatory
Responses By March 19 ................................................................................ 8

9
10
11
12
B. 

Samsung’s Opposition Demonstrated There Was No Basis To Exclude The
Expert Evidence, As The Theories Were Timely Disclosed And Made
Known To Apple During Discovery And Motion Practice....................................... 9

15

C.

Magistrate Judge Grewal’s Expert Exclusion Order ............................................... 10

16

D.

This Court’s June 30, 2012 Summary Judgment Order .......................................... 11

17 III. 

ARGUMENT ...................................................................................................................... 12

18

A. 

The Court Should Clarify That Magistrate Judge Grewal’s Expert Exclusion
Order Only Excludes The Expert Testimony That Was The Subject Of
Apple’s Motion ....................................................................................................... 12

B.

There Is No Basis To Grant Apple Relief Beyond The Expert Exclusion It
Requested ................................................................................................................ 14

13
14

19
20
21

1. 

The Expert Exclusion Order Cannot Apply To Issues Beyond Those
Presented In The Apple Interrogatories On Which The Motion Was
Based ........................................................................................................... 14

2.

Apple Cannot Show It Is Entitled To Exclusion Of Evidence
Beyond The Specific Expert Testimony That Is The Subject Of
Magistrate Judge Grewal’s Ruling .............................................................. 15

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C. 
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28 IV. 
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Barring Samsung From Introducing for Any Purpose The Prior Art Cited
By Samsung’s Design Experts Is An Extraordinary Sanction That Would
Seriously Prejudice Samsung’s Defense And Should Not Be Granted
Absent Bad Faith And Consideration Of Lesser Alternatives ................................ 19

CONCLUSION ................................................................................................................... 21
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1

TABLE OF AUTHORITIES

2
3

Page(s)
Cases

4 ATD Corp. v. Lydall, Inc.,
159 F.3d 534 (Fed. Cir. 1998) ....................................................................................................16
5
Abbott Labs. v. Lupin Ltd.,
6
2011 WL 1897322 (D. Del. May 19, 2011) ...............................................................................19
7 Abbott Labs. v. Sandoz, Inc.,
743 F. Supp. 2d 762 (N.D. Ill. 2010) .........................................................................................17
8
Accenture Global Services, v. Guidewire Software, Inc.
9
691 F. Supp. 2d 577 (D. Del. 2010) ...........................................................................................17
10 Edizone, L.C. v. Cloud Nine,
2008 WL 584991 (D. Utah Feb. 29, 2008) ................................................................................16
11
Five Star Development Resort Communities LLC v. iStar RC Paradise Valley LLC,
12
2012 WL 1003557 (S.D.N.Y. March 26, 2012) .........................................................................14
13 Heidelberg Harris, Inc. v. Mitsubishi Heavy Indus., Ltd.,
1996 WL 680243 (N.D. Ill., Nov. 21, 1996) ..............................................................................16
14
Klund v. High Technology Solutions, Inc.,
15
206 WL 549385 (S.D. Cal. Feb. 27, 2006) ................................................................................20
16 Mike's Train House, Inc. v. Broadway Ltd. Imports, LLC,
2012 WL 664498 (D. Md. Feb. 27, 2012)..................................................................................17
17
Network Appliance, Inc. v. Bluearc Corp.,
18
2005 WL 1513099 (N.D. Cal. June 27, 2005) ...........................................................................20
19 OddzOn Products, Inc. v. Just Toys, Inc.,
122 F.3d 1404 (Fed. Cir. 1997) ..................................................................................................20
20
Oracle USA, Inc. v. SAP AG,
21
264 F.R.D. 541 (N.D. Cal. 2009) ...............................................................................................16
22 Power Integrations, Inc. v. Fairchild Semiconductor Int'l, Inc.,
763 F. Supp. 2d 671 (D. Del. 2010) ...........................................................................................19
23
Primos, Inc. v. Hunter's Specialties, Inc.,
24
451 F.3d 841 (Fed. Cir. 2006) ....................................................................................................16
25 R&R Sails, Inc. v. Insurance Co. of Pennsylvania,
673 F.3d 1240 (9th Cir. 2012) ..............................................................................................19, 20
26
Transclean Corp. v. Bridgewood Services, Inc.,
27
77 F. Supp. 2d 1045 (D. Minn. 1999) ..................................................................................16, 17
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1 Yeti by Molly, Ltd. v. Deckers Outdoor Corp.,
259 F.3d 1101 (9th Cir. 2001) ....................................................................................................16
2
3

Statutes

4 35 U.S.C. § 112 ................................................................................................................................16
5 Federal Rule of Civil Procedure 26(e) ...........................................................................4, 5, 6, 14, 16
6 Federal Rule of Civil Procedure 26(e)(1) ....................................................................................3, 9
7 Federal Rule of Civil Procedure 26(e)(1)(A) .............................................................................10, 17
8 Federal Rule of Civil Procedure 33 ....................................................................................................4
9 Federal Rule of Civil Procedure 37 ..................................................................................................20
10 Federal Rule of Civil Procedure 37(c) .............................................................................................15
11 Federal Rule of Civil Procedure 37(c)(1) ................................................................................. passim
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1

NOTICE OF MOTION AND MOTION

2

TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD:

3

PLEASE TAKE NOTICE that on July 24, 2012, at 1:30 p.m., or as soon thereafter as the

4 matter may be heard by the Honorable Lucy H. Koh in Courtroom 8, United States District Court
5 for the Northern District of California, Robert F. Peckham Federal Building, 280 South 1st Street,
6 San Jose, CA 95113, Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and
7 Samsung Telecommunications America, LLC (collectively “Samsung”) shall and hereby do move
8 the Court to clarify portions of the Court’s June 30, 2012 Order Denying Motion For Summary
9 Judgment, Dkt 1158. In particular, Samsung will ask that the Court clarify its Summary
10 Judgment Order to make clear that it is not interpreting Magistrate Judge Grewal’s Expert
11 Exclusion Order to encompass evidence beyond the expert testimony that was the subject of
12 Apple’s motion, and that the prior art references identified in the excluded portions of the expert
13 reports are not, by virtue of the Expert Exclusion Order, deemed inadmissible at trial.
14

This motion is based on this notice of motion and supporting memorandum of points and

15 authorities; the previously-filed declaration of Joby Martin (Dkt. 1216-1); and such other written
16 or oral argument as may be presented at or before the time this motion is deemed submitted by the
17 Court.
18
19

RELIEF REQUESTED
Samsung seeks an Order clarifying the Court’s Summary Judgment Order to make clear

20 that it is not interpreting Magistrate Judge Grewal’s Expert Exclusion Order to encompass
21 evidence beyond the expert testimony that was the subject of Apple’s motion, and that the prior art
22 references identified in the excluded portions of the expert reports are not, by virtue of the Expert
23 Exclusion Order, deemed inadmissible at trial.
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1 DATED: July 17, 2012
2

QUINN EMANUEL URQUHART &
SULLIVAN, LLP

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By /s/ Victoria F. Maroulis
Charles K. Verhoeven
Kevin P.B. Johnson
Victoria F. Maroulis
Michael T. Zeller
Attorneys for SAMSUNG ELECTRONICS CO.,
LTD., SAMSUNG ELECTRONICS AMERICA,
INC., and SAMSUNG
TELECOMMUNICATIONS AMERICA, LLC

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1

MEMORANDUM OF POINTS AND AUTHORITIES

2 I.

INTRODUCTION

3

Samsung believes that the Court may have inadvertently broadened the scope of

4 Magistrate Judge Grewal’s June 27, 2012 Order Granting-In-Part And Denying-In-Part Motions to
5 Strike Expert Reports (Expert Exclusion Order), and therefore seeks to clarify the Court’s June 30,
6 2012 Summary Judgment Order. The Court found certain prior art references inadmissible and
7 unable to support Samsung’s motion for summary judgment because the Court believed the
8 references were stricken by Magistrate Judge Grewal’s Expert Exclusion Order. That ruling
9 seems to assume that the prior art references were stricken for all purposes, not just as referenced
10 in expert opinions, but that interpretation would far exceed the scope of the relief Apple sought
11 and Magistrate Judge Grewal granted. Striking the references for all purposes now would be
12 contrary to the law because it would impose an extreme sanction on Samsung that Samsung has
13 never had an opportunity to address. In fact, Magistrate Judge Grewal only entered an expert
14 opinion exclusion order, not an issue exclusion order, which was not before him nor could it have
15 been.
16

Samsung is currently seeking the Court’s reconsideration of portions of the Expert

17 Exclusion Order as clearly erroneous or contrary to law. Even if the Expert Exclusion Order
18 stands, however, the Court should clarify the Summary Judgment Order so that Samsung is not
19 precluded from introducing evidence other than the particular expert testimony that was the
20 subject of Apple’s motion. Without clarification, Samsung may be barred from introducing the
21 prior art references themselves at trial even though they are relevant to the testimony of other
22 witnesses and issues that were not the subject of the discovery responses on which Apple relied in
23 its motion to strike.
24

First, Apple’s motion to strike sought only exclusion of certain testimony from Samsung’s

25 experts as to certain issues and documents. The theory of the motion was that Samsung’s experts
26 should be precluded from offering opinions that were not, in Apple’s view, timely disclosed in
27 response to contention interrogatories seeking disclosure of Samsung’s contentions regarding
28 invalidity and non-infringement. Apple did not seek to exclude any prior art references
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1 themselves, or testimony by any other witnesses regarding those references. The Expert
2 Exclusion Order ruled only that Samsung could not present certain expert testimony. Nothing
3 more. It did not bar evidence that was relied on by the experts if presented as part of the
4 testimony of other witnesses, whether Apple’s experts or lay witnesses. Indeed, this is precisely
5 how Apple has interpreted the ruling, because Apple has served trial exhibits containing
6 alternative phone and tablet designs that were stricken from the reports of Apple’s experts Susan
7 Kare and Peter Bressler. If Apple believed them to be stricken for all purposes, it would not have
8 included them as trial exhibits with a different expert as the sponsoring witness.
9

Second, even if it could be interpreted to extend beyond the expert testimony that was the

10 sole subject of Apple’s motion (and there is no basis to do so), the Expert Exclusion Order cannot
11 be extended to exclude prior art on issues that were not the subject of the specific contention
12 interrogatories that formed the basis for Apple’s exclusion arguments. Apple’s basis for
13 exclusion of expert opinion evidence on invalidity and non-infringement was an alleged failure to
14 timely respond to two interrogatories limited to providing facts and legal bases supporting
15 Samsung’s contentions that Apple’s design patents were invalid or not infringed. Those
16 interrogatories did not ask for, and did not require Samsung to disclose, evidence or theories it
17 would present on any other issues, including claim construction, the scope of the patents, or
18 evidence Samsung would present to impeach Apple witnesses. Because Rule 37(c)(1) exclusion
19 can only be granted for a violation of Rule 26(e)’s requirement to timely supplement a discovery
20 response, there would be no legal basis to read Magistrate Judge Grewal’s ruling as barring
21 Samsung from presenting evidence on issues that were not the subject of the specific discovery
22 requests identified in Apple’s motion to strike.
23

Third, putting aside the fact that Apple did not seek to exclude the prior art references for

24 all purposes, there is no basis for doing so. These prior art references have been known to Apple
25 for months, through extensive discovery and motion practice in this case and in the parallel ITC
26 investigation Apple commenced concerning related patents. Many of the references were
27 disclosed at the preliminary injunction stage, and Apple conceded these would not be a proper
28 subject of an exclusion order. Others, such as the 035 prototype relating to the D’889 patent,
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1 were the subject of an earlier motion to compel. Others were the subject of extensive deposition
2 questioning and testimony. There is simply no basis to conclude that the references were not
3 “made known” to Apple within the meaning of Rule 26(e)(1).
4

Finally, if Apple could show that any particular reference had not been “made known,”

5 then the non-disclosure was harmless, and no exclusion would be warranted. In addition to being
6 the subject of extensive expert discovery, each of the prior art references relate to contentions
7 Samsung has asserted for months, both in these proceedings since the preliminary injunction stage,
8 and in the related ITC investigation. In any event, Samsung’s thorough supplemental responses
9 were made within nine days of the close of fact discovery, so Apple and its experts were able to
10 fully and fairly address all of this evidence in expert reports and dispositive motions. Under the
11 standard for prejudice that Apple itself has recently articulated in opposing one of Samsung’s
12 motions in limine, there is no prejudice where, as here, evidence is disclosed in time for the
13 experts to address it in their reports. Dkt. 1206-1, at 15.
14

If the Court were to decline to clarify its Summary Judgment Order, and applied the Expert

15 Exclusion Order to bar Samsung from introducing the prior art beyond the specific expert
16 testimony context that was the subject of Apple’s motion, it would substantially interfere with
17 Samsung’s ability to present its defenses to the jury. Apple has never requested such relief, nor
18 could it make the showing required for such an extraordinary sanction. The relief sought by
19 Samsung in this present motion is narrow, but critical. Samsung is not seeking to challenge the
20 Court’s denial of summary judgment. What Samsung is seeking, however, is the right to present
21 its defenses to the jury, which was not properly at issue in the motion before Judge Grewal, and
22 cannot be denied based on that ruling.
23 II.

PROCEDURAL BACKGROUND

24

A.

25

Apple Moves to Strike Certain Samsung Expert Testimony Under Rule
37(c)(1) Based on Alleged Failure To Timely Supplement Interrogatory
Responses

26
On May 17, 2012, Apple filed its Motion to Strike Portions of Samsung’s Expert Reports.
27
The discussion below highlights three aspects of Apple’s motion that bear on the argument made
28
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1 in this motion. First, it was limited to striking portions of expert reports, not any other evidence.
2 Second, with regard to the opinions of experts on design patent, trade mark, or trade dress issues,
3 the motion was premised on three contention interrogatories seeking facts supporting Samsung’s
4 affirmative defenses of invalidity and non-infringement, and Samsung’s denial that Apple’s trade
5 marks and trade dress has distinctiveness. Third, Apple’s motion contravened its agreement not
6 to seek exclusion if Samsung supplemented its interrogatory responses by the agreed-upon date of
7 March 19, which Samsung did.
8

1.

Apple’s Motion Only Sought Exclusion Of Portions of Samsung’s
Expert Reports

9
Consistent with the caption, the Notice of Motion made clear that Apple was only seeking
10
to strike portions of Samsung’s expert reports. There, Apple stated that Apple was moving
11
“pursuant to Federal Rule of Civil Procedure 37(c)(1) and the Patent Local Rules to strike certain
12
portions of the expert reports of [Samsung’s experts].” Dkt 939-1, at 1. In the “Relief
13
Requested” portion of the Notice, Apple stated: “Pursuant to Federal Rule of Civil Procedure
14
37(c)(1) and the Patent Local Rules, Apple seeks an order striking portions of certain reports
15
submitted by [Samsung’s experts], as identified in the accompanying Memorandum of Points and
16
Authorities and Proposed Order. Specifically, Apple requests that the Court strike the portions of
17
those reports (and exhibits thereto) that present evidence, arguments, or theories that Samsung
18
failed to timely disclosed as required by the Patent Local Rules and Federal Rules of Civil
19
Procedure 26(e) and 33.” Id.
20
In the “Statement of Issues to Be Decided,” Apple reiterated that the question before
21
Magistrate Judge Grewal was limited to whether “the Court should strike certain portions of” the
22
expert reports of certain Samsung experts. Id. at 1-3.
23
Apple’s Proposed Order on its Motion to Strike consistently makes clear that the sole relief
24
Apple was seeking was the striking of portions of expert reports. The Proposed Order states:
25
“For the reasons stated below, the Court strikes the portions of the expert reports of [certain
26
Samsung experts] that are highlighted in the copies of those reports [submitted by Apple] . . . and
27
also identified below.” Dkt. 939-12, at 1. The Proposed Order then identifies, for each expert,
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1 which opinions are stricken. So, for example, with regard to Sam Lucente, Apple’s Proposed
2 Order provides:
3
4
5

The Court finds that many of opinions set forth in the Lucente Report were not seasonably
disclosed in response to Apple’s Interrogatory Nos. 5 and 12 as required under Rules 26(e)
and 33 of the Federal Rules of Civil Procedure. Samsung failed to demonstrate that this
violation was harmless or substantially justified. Accordingly, as mandated by Rule
37(c)(1), I order that these portions of the Lucente Report are struck, and that Mr. Lucente
shall offer no testimony in this action on any of these matters:

6
a.

All theories and arguments that the D’305 Patent or D’334 Patent is invalid
on the ground that it is anticipated or rendered obvious. (Lucente Report p.
32-78)

b.

All theories and arguments that any element of the asserted trade dress lacks
distinctiveness. (Id. pp. 81-89)

7
8
9

10 Dkt. 939-12, at 5-6 (emphasis added).
11

Even those portions of Apple’s Proposed Order that identified specific prior art made clear

12 that the only evidence Apple was seeking to exclude was expert testimony asserting particular
13 theories based on the listed prior art – not to the use of the prior art in every other context. Apple
14 was not seeking exclusion of the prior art itself, or even exclusion of the theories other than in the
15 context of the particular expert testimony. So, for example, with regard to Samsung expert Itay
16 Sherman, Apple’s Proposed Order provided:
17
18
19

The Court finds that many of the opinions set forth in the Sherman Report were not
seasonably disclosed in response to Apple’s Interrogatory Nos. 5 and 12 as required under
Rules 26(e) and 33 of the Federal Rules of Civil Procedure. Samsung failed to
demonstrate that this violation was harmless or substantially justified. Accordingly, as
mandated by Rule 37(c)(1), I order that these portions of the Sherman Report are struck,
and that Mr. Sherman shall offer no testimony in this action on any of these matters:

20
a.
21

All theories and arguments that U.S. Patent No. D504,889 (the “D’889
Patent”) is invalid on the ground that it is anticipated or rendered obvious
by any of these prior art references:

22
[individual prior art references listed]
23
b.
24

All theories and arguments that U.S. Patent No. D618,677 (the “D’677
Patent”) is invalid on the ground that it is anticipated or rendered obvious
by any of these prior art references:

25
[individual prior art references listed]
26
c.
27

All theories and arguments that U.S. Patent No. D593,087 (the “D’087
Patent”) is invalid on the ground that it is anticipated or rendered obvious
by any of these prior art references:

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1

[individual prior art references listed]

2

d.

All theories and arguments that the asserted trade dress is not distinctive.
(Id. pp. 80-85)

e.

All theories and arguments that the D’889 patent is indefinite. (Id. pp. 8587).

3
4

5 Dkt. 939-12, at 6-9 (emphasis added).
6

Apple made clear that it was not seeking to exclude evidence or theories that Samsung

7 disclosed in connection with the preliminary injunction proceedings held in 2011. Dkt. 939-1, at
8 15-16 (“the only anticipation and obviousness theories that Apple could investigate through
9 discovery were those disclosed by Samsung in connection with the preliminary injunction hearing
10 last fall.”); id. at 20; Dkt 1054 (Apple Reply), at 11 (“The invalidity and non-infringement theories
11 in Samsung’s preliminary injunction submissions met [the “otherwise made known” standard in
12 Rule 26(e)], so Apple did not move to exclude them.”).
13

2.

The Asserted Basis For Exclusion Of Samsung’s Design Patent, Trade
Mark, and Trade Dress Expert Testimony

14
In its memorandum of points and authorities, with respect to design patent, trade mark, and
15
trade dress expert reports, Apple argued that the specific portions of Samsung’s expert reports
16
should be excluded under Federal Rule of Civil Procedure 37(c)(1) because they had not been
17
disclosed in response to three contention interrogatories Apple served at or near the outset of
18
discovery. Dkt. 939-1, at 14-21. First, Apple sought exclusion of certain expert testimony
19
regarding design patent invalidity, relying on Interrogatory No. 12, served on November 14, 2011.
20

Dkt 939-1 at 15-19.1 Interrogatory No. 12 provides:

21
Specifically for each of the Design Patents at Issue, explain the factual and legal
bases for Samsung’s Third Affirmative Defense: Patent Invalidity. The response
should include: (a) the identity of any item of prior art that Samsung alleges
anticipates each Design Patent at Issue; (b) the identity of any item of prior art that
Samsung alleges is a primary reference pursuant to In re Rosen, 673 F.2d 388
(CCPA 1982); (c) the identity of any combinations of prior art that Samsung
alleges render any of the Design Patents obvious, including an explanation of why
the prior art renders each Design Patent at Issue obvious; and (d) any other grounds

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1

This was also the basis for Apple’s request to exclude expert opinion on indefiniteness.
Dkt 939-1 at 19-20.
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1

of invalidity alleged by Samsung, including those based on 35 U.S.C. §§ 101, 102,
103, 112 and/or 171.

2
Dkt. 939-4, Ex. 25 at 7-8. Samsung’s December 19, 2011 response to this Interrogatory
3
identified by Bates number, for each of Apple’s design patents, several dozen prior art references
4
Samsung was aware of at that time, and the theories of invalidity it intended to assert. Id. at 8-15.
5
Second, Apple sought exclusion of expert testimony on non-infringement, relying on
6
Interrogatory No. 11, also served on November 14, 2011: “Specifically for each of the Design
7
Patents at Issue, explain the factual and legal bases for Samsung’s Second Affirmative Defense:
8
Patent Non-Infringement.” Dkt. 939-4, Ex. 25 at 5. In its December 19, 2011 response,
9
Samsung explained, for each patent, that the accused Samsung products “are not substantially
10
similar to an ordinary observer giving such attention as a purchaser usually gives, particularly
11
when viewed in light of the prior art and the functional elements are excluded as a basis for
12
similarity.” Id. at 5-7. That response provided a commensurate level of detail as Apple provided
13
in answering Samsung’s infringement interrogatory. See Dkt. 1011, Ex. 20, at 99 (“Each
14
accused Samsung product incorporates a front face and bezel that is substantially the same in
15
overall visual appearance as the design claimed in the D’087 Patent.”) Samsung also
16
incorporated the preliminary injunction declaration of its expert Itay Sherman for the D’087,
17
D’677, and D’889 patents. Id. As with its response to Interrogatory No. 12, Samsung
18
supplemented its response on March 19, 2012.
19
Apple also sought to exclude expert testimony on lack of distinctiveness, based on
20
Interrogatory No. 5, served on August 3, 2011, which provides: “State in detail the basis of
21
Samsung’s contention that Apple’s claims are barred ‘on the basis that the marks and alleged trade
22
dress at issue lack distinctiveness, including, without limitation secondary meaning,” as alleged in
23
¶ 281 of the Answer, including an identification of any documents on which Samsung intends to
24
rely or which tend to prove or disprove Samsung’s contention.” Dkt. 939-4, Ex. 14 at 8.
25
Samsung’s September 8, 2011 response referred Apple to its Answer, as well as “smartphone and
26
tablet computer product selections available on the market and in retailer stores.” Id. Apple
27
never moved to compel a further response to this interrogatory.
28
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1

That these three interrogatories are the sole basis for Apple’s exclusion motion is made

2 clear in the proposed order Apple submitted with its motion. There, in addressing the expert
3 reports of Samsung’s experts on design patent, trade mark, and trade dress, Apple expressly refers
4 to Interrogatories 5, 11, and 12, and nothing else, as the basis for the requested exclusion. Dkt.
5 939-12 at 5-13.
6
7
8

3.

Apple’s Motion Was In Breach Of An Agreement Not To Seek To
Exclude Evidence If Samsung Supplemented Its Interrogatory
Responses By March 19

On March 11, 2012, after fact discovery had closed, Apple informed Samsung that it did

9 not believe Samsung’s initial responses to Interrogatory Nos. 11 and 12 were sufficiently detailed,
10 and threatened to move to preclude expert testimony on validity and infringement arguments.
11 Dkt. 1012, ¶ 2. At a March 14, 2012 meeting to discuss Apple’s concerns, Apple agreed to
12 forego a threatened motion to preclude expert testimony if Samsung supplemented its
13 interrogatory responses by March 19, 2012. Dkt. 1012, ¶ 5. Apple reserved its right to bring
14 such a motion only to the extent that Samsung’s supplemental responses were inadequate, which
15 Apple did not allege here. In its reply memorandum before Magistrate Judge Grewal, Apple
16 admitted that it agreed not to bring a motion relating to Samsung’s interrogatory responses if
17 Samsung supplemented by March 19, but argued that its agreement was limited to foregoing a
18 motion to compel further responses, not a motion to exclude. Dkt. 1054, at 9. But Apple’s
19 revisionist argument makes no sense because the deadline to move to compel was March 15 and
20 the parties did not enter a stipulation to extend that deadline established in the Civil Local Rules.
21 Dkt. 1056-01, ¶13. After that date, Apple had no ability to move to compel further responses.
22 Id.; see L.R. 37-3. Apple’s agreement not to bring a motion if Samsung agreed to supplement its
23 responses by March 19 could not logically have related to a motion it was precluded from
24 bringing. Instead, the only logical interpretation of the parties’ agreement is that Apple agreed
25 not to move to strike Samsung’s experts if Samsung agreed to supplement its responses by March
26 19. Apple has never challenged the sufficiency of those supplemental responses that Samsung
27 served on March 19 pursuant to the parties’ agreement.
28
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1

Apple’s motion to strike was therefore a clear breach of its agreement with Samsung

2 regarding the March 19 supplemental responses.
3

B.

4

Samsung’s Opposition Demonstrated There Was No Basis To Exclude The
Expert Evidence, As The Theories Were Timely Disclosed And Made Known
To Apple During Discovery And Motion Practice

5
In its opposition, Samsung argued that the Rule 37(c)(1) requirements for exclusion were
6
not satisfied. First, Samsung explained that its March 19 interrogatory responses were timely, as
7
they were served two months before a dispositive motion deadline and more than four months
8
before trial. Dkt. 1000, at 16-17. Samsung also demonstrated that each of the theories and prior
9
art references had been “made known” to Apple during discovery or in writing, within the
10
meaning of Rule 26(e)(1). Certain of the prior art references were expressly identified in the
11
initial interrogatory response served on December 19, 2011. Others, such as the Nokia
12
Fingerprint design, the Apple “Brain Box” design, the 035 prototype, and the Mobile UX
13
presentation, were the subject of extensive discovery and, as to some, motion practice. Id. at 1814
19. Indeed, the Mobile UX was produced on February 3, 2012 from the files of a Samsung
15
designer, who was identified in Samsung’s initial disclosures served on September 7, 2011, and
16
who Apple deposed twice. Id. at 19 n.13.
17
Responding to Apple’s request to exclude non-infringement opinions, Samsung explained
18
that its initial interrogatory response was no less detailed than Apple’s response to Samsung’s own
19
infringement contention interrogatory, and in any event the majority of the non-infringement
20
theories had been disclosed in the preliminary injunction proceedings. Further disclosures
21
comparing Apple’s design patents to prior art were made during discovery, elaborating on the
22
theories that had previously been disclosed in the preliminary injunction opposition. Id. at 20-21
23
& n.14.
24
Finally, Samsung argued that any violation of Rule 26(e)(1) was harmless, because the
25
supplemental interrogatory responses were served before the deadline for service of opening
26
expert reports, and weeks before service of rebuttal reports and expert depositions. Indeed, all of
27
the opinions Apple sought to exclude were the subject of extensive questioning of Samsung’s
28
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1 experts during their deposition, and certainly Apple had a full and fair opportunity to explore those
2 opinions. Id. at 22-23. The lack of prejudice was particularly evident, given Apple’s assertion
3 that expert evidence is not even required to establish non-infringement, anticipation and
4 obviousness, claiming to this Court that “it does not take an ordinary observer . . . more than two
5 minutes to make the comparison and distinguish or fail to distinguish an accused device.” See
6 Dkt. 910-1 at 1.
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
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C.

Magistrate Judge Grewal’s Expert Exclusion Order

Magistrate Judge Grewal issued his Expert Exclusion Order on June 27, 2012. In order
for Magistrate Judge Grewal to grant Apple’s motion and exclude any expert testimony under
Federal Rule 37(c)(1), he necessarily had to conclude that Samsung failed to supplement its
interrogatory responses “in a timely manner” under Rule 26(e)(1)(A); that the information Apple
contends was not disclosed had “not otherwise been made known” to Apple during the discovery
process or in writing (see Rule 26(e)(1)(A)); and that the failure to supplement was not
substantially justified or harmless (Rule 37(c)(1)). Nevertheless, Magistrate Judge Grewal’s
Order does not contain any factual findings on these issues. Instead, the Order simply recites that
Apple’s motion as to a particular expert is granted or denied, and states generally that “the parties
may presume that in ruling on any particular expert, the court has adopted the proposed factual
findings and legal conclusions of the party urging the ruling and rejected those in opposition.”
Dkt. 1144, at 2.
One thing is clear, however: The relief granted in the Expert Exclusion Order is limited to
striking portions of the referenced expert reports. For each Samsung expert as to which Apple’s
motion was granted, Magistrate Judge Grewal states that Apple has moved to exclude a particular
portion or portions of the expert’s report, states the ground for the requested exclusion, and then
states that the motion is GRANTED. For example, with regard to Itay Sherman, the Expert
Exclusion Order states:
11.

Apple moves to strike portions of Itay Sherman’s expert report that opine that
Apple’s D’889, D’677, and D’087 Patents are invalid. Apple argues that
Sherman’s report includes theories never previously disclosed to Apple during
discovery, and also that Sherman’s report includes a prior art reference to a Nokia
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1

Fingerprint design that was never previously disclosed to Apple during discovery.
Apple’s motion is GRANTED.

2
12.

Apple moves to strike portions of Itay Sherman’s expert report that opine that
Apple’s asserted trade dress lacks distinctiveness. Apple argues that Sherman’s
report includes theories never previously disclosed to Apple during discovery.
Apple’s motion is GRANTED.

13.

Apple moves to strike portions of Itay Sherman’s expert report that opine that
Apple’s D’889, D’677, and D’087 Patents are indefinite. Apple argues that
Sherman’s report includes theories never previously disclosed to Apple during
discovery. Apple’s motion is GRANTED.

3
4
5
6
7

Dkt. 1144, at 4-5 (emphasis added). The format for the Court’s ruling on each expert was the
8
same. At the conclusion of the Order, Magistrate Judge Grewal stated: “In accordance with the
9
foregoing, the court ORDERS that portions of the parties’ expert reports be struck.” Id. at 8
10
(emphasis added). Nowhere is there any language stating that the Court was striking any
11
evidence other than a portion of an expert report. Nowhere is there any language stating that the
12
Court was ruling that any evidence beyond specified expert testimony would be inadmissible at
13
trial. Nowhere is there any language stating that the Court was excluding evidence on issues
14
beyond those addressed in the interrogatories that were the subject of Apple’s motion.
15
D.

This Court’s June 30, 2012 Summary Judgment Order

16
17

In its Summary Judgment Order, this Court rejected certain of Samsung’s obviousness

18 arguments based on prior art, stating that the prior art in question did not establish the absence of a
19 genuine issue of material fact entitling Samsung to summary judgment. But the Court also stated
20 that the prior art “will not be admissible at trial” based on Magistrate Judge Grewal’s Expert
21 Exclusion Order, which the Court described as excluding the prior art references themselves,
22 rather than simply the expert testimony that was the subject of Apple’s motion. If read literally,
23 “will not be admissible at trial” goes far beyond Judge Grewal’s Order, and far beyond any issue
24 Samsung has had an opportunity to brief, argue, or otherwise be heard on.
25

For example, Samsung presented an obviousness defense with respect to the D’087 patent

26 based on various prior art references, including the Bluebird Pidion, the JP’221, and the iRiver
27 U10. The Court stated: “As an initial matter, the Court notes that Judge Grewal recently ordered
28 that these references be excluded because Samsung failed to timely disclose the prior art or
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1 invalidity theory. See Dkt. 1144, at 4-5. On this basis alone, summary judgment in favor of
2 Samsung is not proper because the evidence in support of Samsung’s obviousness argument will
3 not be admissible.” Summary Judgment Order at 30. The Court made similar statements with
4 regard to Samsung’s obviousness arguments relating to (1) the D’677 patent, and the prior art
5 references, including the iRiver U10 and Nokia Fingerprint, on which that argument was based
6 (id. at 32-33); and (2) the D’889 patent, relying on the D’037 patent and the Apple Brain Box (id.
7 at 35).2
8

The Court made a similar statement in its July 2, 2012 Order Denying Samsung’s Motion

9 To Stay, finding that “Judge Grewal recently excluded the D’037 and the Brain Box from trial
10 because Samsung failed to timely disclose the prior art or invalidity theory.” Dkt 1170, at 9.
11 The Court stated that “[i]n light of this ruling, Samsung cannot rely on the D’037 and the Brain
12 Box to challenge the validity of the D’889 Patent at trial.” Id.
13 III.

ARGUMENT

14

A.

15

The Court Should Clarify That Magistrate Judge Grewal’s Expert Exclusion
Order Only Excludes The Expert Testimony That Was The Subject Of
Apple’s Motion

16
As explained in the Background discussion above, Apple’s motion to strike, and the
17
Magistrate Judge’s ruling on that motion, were limited solely to the exclusion of portions of the
18
reports of Samsung’s experts, based on the argument that the theories disclosed in those reports
19
had not timely been disclosed in response to Apple’s contention interrogatories. Apple’s notice
20
of motion and proposed order, which define the scope of relief it had requested, and which put
21
Samsung on notice of the issues being addressed, clearly and unambiguously limited the relief to
22
striking “portions of certain [expert] reports.” Notice of Motion at 1; “Relief Requested”;
23
Proposed Order, supra. Magistrate Judge Grewal’s Expert Exclusion Order, in similarly clear
24
25

2

The Court’s discussion of Samsung’s obviousness defense with regard to the ‘607 utility
26 patent similarly read Magistrate Judge Grewal’s Expert Exclusion Order to have “strick[en] the
Blonder reference because it was not timely disclosed.” Id. at 24-25. The Court stated that “the
27 Blonder reference will not be admissible at trial, and the Court will not consider it on this motion
for summary judgment.” Id.
28
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1 fashion, limited the relief granted to the striking of portions of Samsung’s expert reports. Indeed,
2 the Order itself notes in its caption that it is granting-in-part “motions to strike expert reports.”
3 Nowhere in that Order is there any ruling barring the use of prior art references generally,
4 including through lay witnesses, or for impeachment of Apple’s experts. That is because Apple
5 did not seek to exclude evidence beyond the expert report portions themselves.
6

This is precisely how Apple is interpreting Magistrate Judge Grewal’s ruling striking

7 portions of its own experts’ testimony. Samsung sought exclusion of portions of the reports of
8 Susan Kare and Peter Bressler that relied on claimed alternative phone and tablet designs that had
9 not been timely disclosed in response to Samsung’s discovery requests. Notwithstanding
10 Magistrate Judge Grewal’s Order granting this portion of Samsung’s motion, Apple has included
11 as one of its exhibits a disparate compilation of 178 pages of alternative designs, a number of
12 which are the very designs relied on by the experts in the now stricken portions of their reports.
13 Compare Apple Trial Exhibit 20, at 1, 4, 11, 124 (Sony Xperia Arc S); 2, 55-62 (Coby Kyros); 3,
14 13 (KDDI Infobar) 17, 34, 36 (Panasonic Toughbook); 35 (Panasonic Toughpad A1); 158-68
15 (Samsung Gravity Touch); 169-78 (Samsung Gem) with Samsung’s Motion to Strike Expert
16 Testimony (Dkt. 934-3, at 5-7) (moving to strike references to Sony Xperia Arc S, Coby Kryros,
17 KDDI Infobar, Panasonic Toughbook, Panasonic Toughpad, and “[a]ll Samsung devices other
18 than the Samsung M7600 Beat DJ and Samsung F700”) and Dkt. 1144, at 7 (granting Samsung’s
19 Motion to Strike). While Samsung objects to Apple’s improper compilation exhibits on
20 numerous grounds, Apple’s proposed Exhibit 20 demonstrates that Apple interprets Magistrate
21 Judge Grewal’s Order in the same way as Samsung does – as applying only to expert testimony,
22 not to fact testimony or the underlying references themselves.
23

Apple’s response to Samsung’s appeal of Magistrate Judge Grewal’s Order also makes

24 clear that Apple was only seeking to exclude expert testimony relying on certain references that
25 had not been disclosed as a basis for a specific theory (e.g., non-infringement or invalidity).
26 Apple is not seeking exclusion of the references themselves, or as a basis for testimony by
27 witnesses other than the particular expert. So, for example, Apple acknowledges that “Samsung’s
28 preliminary injunction papers disclosed the 035 Mockup” with respect to the infringement analysis
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1 of the D’889 Patent, but argues that it was appropriate to preclude Mr. Sherman from relying on
2 that reference on the issue of invalidity, based on Apple’s claim that Samsung had not disclosed
3 the reference as a basis for an invalidity argument. Dkt. 1242 at 3. While Samsung disagrees
4 with Apple’s analysis, for purposes of this motion what is important is that Apple does not argue
5 that 035 Mockup can be excluded for all purposes or as a basis for testimony by other witnesses.
6 See also id. at 2 (noting that Samsung’s preliminary injunction papers disclosed the 1994 Fidler
7 and Compaq TC1000 references, but defending expert exclusion ruling on the ground that
8 “Samsung did not argue non-infringement based on this art” (emphasis in original); id. at 2-3
9 (same as to Nokia Fingerprint, ITC references, and third party subpoenas).
10

Accordingly, the Court should clarify that it does not intend to construe Magistrate Judge

11 Grewal’s Order as extending beyond the expert witness testimony, and will not bar Samsung from
12 presenting any prior art references at trial based on Judge Grewal’s Expert Exclusion Order.
13
14
15
16
17

B.

There Is No Basis To Grant Apple Relief Beyond The Expert Exclusion It
Requested
1.

The Expert Exclusion Order Cannot Apply To Issues Beyond Those
Presented In The Apple Interrogatories On Which The Motion Was
Based

Apple’s rationale for seeking exclusion of portions of the expert reports of certain

18 Samsung design experts was that Samsung allegedly had failed to timely supplement its responses
19 to three contention interrogatories, Nos. 12 (invalidity) 11 (non-infringement ); and 5 (lack of
20 distinctiveness). Dkt. 939-1, at 14-22. Those interrogatories were narrow and specific.
21 Interrogatory 12 asked Samsung to explain, for each of Apple’s design patents, the basis for its
22 defense of invalidity. Interrogatory 11 asked Samsung to explain, for each of Apple’s design
23 patents, the basis for its non-infringement defense. And Interrogatory No. 5 asked Samsung to
24 explain the basis for its affirmative defense of lack of distinctiveness.
25

Because Rule 37(c)(1) exclusion is triggered by a failure to timely supplement a specific

26 discovery request in violation of Rule 26(e), there is no basis to apply Magistrate Judge Grewal’s
27 ruling to exclude evidence on issues that are not within the scope of the interrogatories that formed
28 the basis for the Order. Five Star Development Resort Communities LLC v. iStar RC Paradise
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1 Valley LLC, 2012 WL 1003557, *5 (S.D.N.Y. March 26, 2012) (Rule 37(c)(1) exclusion “not
2 warranted” where moving party cannot point to “any interrogatory, request for production or
3 request for admission” that party failed to supplement). For example, none of the Interrogatories
4 relied on by Apple in its exclusion motion asked Samsung to identify facts or theories regarding
5 claim construction. So there is nothing in the three interrogatories Apple identified that could
6 provide a basis to preclude Samsung from presenting any otherwise admissible evidence to
7 support its claim construction arguments. As another example, nowhere did Apple cite an
8 interrogatory that required Samsung to disclose evidence it intended to rely on to impeach the
9 testimony of Apple’s witnesses (lay or expert). Again, there is no legal basis in Rule 37(c) to
10 prohibit Samsung from introducing impeachment evidence.
11

2.

12
13

Apple Cannot Show It Is Entitled To Exclusion Of Evidence Beyond
The Specific Expert Testimony That Is The Subject Of Magistrate
Judge Grewal’s Ruling

Even if Apple had moved to exclude Samsung’s prior art for all purposes, which it did not,

14 Apple would not be able to make the showing required to be entitled to such extraordinary relief.
15 As an initial matter, any such request would be procedurally improper, as the Court limited each
16 side to “one motion to strike late disclosed discovery and theories.” Minute Order and Case
17 Management Order, Dkt 901, May 12, 2012. Apple chose what discovery it was seeking to
18 exclude, and chose to seek exclusion only of expert testimony. It should not at this late date be
19 entitled to secure relief beyond what it requested in its “one motion to strike” permitted by the
20 Court. This is especially true given Apple’s agreement, as explained above, that it would not
21 move to exclude so long as Samsung supplemented its interrogatory responses by March 19, 2012,
22 which it did.
23

Nor could Apple meet the requirements of Rule 37(c)(1) with respect to the prior art at

24 issue. First, Apple has not identified any discovery request requiring Samsung to disclose every
25 issue on which it intended to use every item of prior art, including claim construction or
26 impeachment. Given that Rule 37(c)(1) is triggered by specific discovery, there is no discovery
27 request that could result in an all-purpose bar on prior art.
28
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1

Even with respect to the issues Apple has identified – design patent invalidity and non-

2 infringement – Apple cannot show that the relevant interrogatory responses required
3 supplementation. According to Apple, “[t]he cases hold that a party does not need to respond to a
4 contention interrogatory by supplying ‘each and every detail that could possibly exist in the
5 universe of facts.’” Dkt 996-04, at 8 (citing cases). As noted above, on invalidity, Samsung’s
6 interrogatory responses identified by Bates number all of the prior art which it had identified as of
7 the time of its response, and identified every theory of invalidity it intended to pursue. With
8 regard to non-infringement, Samsung explained that its accused products were “not substantially
9 similar to an ordinary observer giving such attention s a purchaser usually gives, particularly when
10 viewed in light of the prior art and the functional elements of the design are excluded as a basis for
11 similarity.” Dkt. 939-4, Ex 25 at 5-6. This response was no less detailed than Apple’s, which
12 simply stated that “[e]ach accused Samsung product incorporates a front face and bezel that is
13 substantially the same as the overall visual appearance as the design claimed in the D’087 patent.”
14 Dkt. 1011, Ex. 20 at 99. The only difference is that Apple copied and pasted pictures of the Apple
15 patents and accused Samsung products. Id.
16

Apple also cannot show that Samsung’s supplemental response, served just nine days after

17 fact discovery closed, before the start of expert discovery, two months before the dispositive
18 motion deadline, and over four months before trial, was not served “in a timely manner” within the
19 meaning of Rule 26(e). Apple cited no authority in support of its contention that supplemental
20 responses served little more than a week after the close of discovery—and well before the close of
21 expert discovery—are per se untimely.3 As explained in Samsung’s Motion for Relief from
22
23
24
25
26
27
28
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3

None of the cases Apple cited before Magistrate Judge Grewal address similar
circumstances or procedural postures. In Yeti by Molly, Ltd. v. Deckers Outdoor Corp., 259 F.3d
1101, 1105-1107 (9th Cir. 2001), the court excluded an expert report disclosed more than two
years after discovery closed, and just 28 days before trial. In ATD Corp. v. Lydall, Inc., 159 F.3d
534, 550 (Fed. Cir. 1998), the court upheld the exclusion of a prior art reference that defendant
first disclosed more than three months after the close of discovery and less than a month before the
final pretrial conference. Similarly, in Primos, Inc. v. Hunter’s Specialties, Inc., 451 F.3d 841,
850-51 (Fed. Cir. 2006), the court upheld the exclusion of a prior art device that was identified as
invalidating prior art “shortly before trial commenced.” See also Edizone, L.C. v. Cloud Nine,
(footnote continued)
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1 Magistrate Judge Grewal’s Expert Exclusion Order (Dkt. 1216), courts have recognized that
2 contention interrogatories need not be answered until discovery is complete or nearly complete.
3 Indeed, Apple itself recently argued against exclusion of evidence in its own supplemental
4 response, served only 11 days earlier than Samsung’s supplemental response, claiming that
5 Samsung had cited “no authority for excluding contentions timely disclosed in a party’s pleadings
6 and discovery responses.” Dkt. 1206-1, at 16. The fact that Apple’s response was served two
7 days before the close of fact discovery makes no difference, as Apple agreed that Samsung could
8 supplement by March 19.
9

Rule 26(e)(1)(A), which forms the basis for Apple’s exclusion request, does not require a

10 party to supplement a response to discovery with information that has “otherwise been made
11 known to the other parties during the discovery process or in writing.”4

As demonstrated in the

12 Appendix attached as Exhibit 1 to the Martin Declaration filed in support of Samsung’s Motion
13 for Relief from the Expert Exclusion Order (Dkt. 1216-1), every item of prior art was made known
14
15
2008 WL 584991 at *3-4 (D. Utah Feb. 29, 2008) (excluding prior art references disclosed at a
16 time when “discovery has long since passed,” dispositive motions had already been decided, and
where allowing the references would require reopening expert discovery and likely continuance)
17 Transclean Corp. v. Bridgewood Services, Inc., 77 F. Supp. 2d 1045, 1060-64 (D. Minn. 1999)
18 (excluding supplemental report disclosed more than one month after expert depositions, and more
than three months after expert report deadline); Oracle USA, Inc. v. SAP AG, 264 F.R.D. 541, 54719 49 (N.D. Cal. 2009) (excluding lost profits theory that plaintiff had specifically disavowed in
discovery responses and representations to the court.); Heidelberg Harris, Inc. v. Mitsubishi
20 Heavy Indus., Ltd., 1996 WL 680243, at *7-9 (N.D. Ill., Nov. 21, 1996) (excluding best mode
defense where defendant’s pleadings and interrogatory responses never specified which Section
21
112 defense defendant was asserting).
4
Mike's Train House, Inc. v. Broadway Ltd. Imports, LLC, 2012 WL 664498, at *13-14 (D.
22
Md. Feb. 27, 2012) (supplemental expert report, served after close of fact discovery, made known
23 to plaintiff in writing non-infringement theory that defendant had not disclosed in contention
interrogatories or opening expert reports); Accenture Global Services v. Guidewire Software, Inc.,
24 691 F. Supp. 2d 577, 588 (D. Del. 2010) (denying motion to strike reliance on documents which
were made known to the opposing party through depositions and email correspondence, and were
25
the subject of discovery disputes.); Abbott Labs. v. Sandoz, Inc., 743 F. Supp. 2d 762, 770-71
26 (N.D. Ill. 2010) (refusing to strike defenses and prior art made known through expert reports and
depositions, but not interrogatory responses); Transclean, 77 F. Supp. 2d at 1062 (defendant’s
27 disclosure of a non-infringement theory and two Section 102 references in expert reports “met its
obligations under R. 26(e).”)
28
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1 to Apple either during the preliminary injunction proceedings (which Apple concedes would not
2 support exclusion), motion practice, document production, or depositions.
3

For example:

4

•

Samsung F700: There is no dispute that Samsung disclosed the F700 in opposing
Apple’s motion for a preliminary injunction (Dkt 179, Ex. H), or that it was
discussed throughout Samsung’s opposition brief (Dkt. 181a, at 4, 8, 35);

•

Nokia Fingerprint Design: Apple conceded that Samsung listed Mr. Vilas-Boas,
creator of the Nokia Fingerprint concept design, as a prior art witness in its January
29, 2012 amended initial disclosures, and produced a declaration from Mr. VilasBoas explaining the significance of his design in February, 2012. (Dkt. 1054, at
12). Apple also does not dispute that it deposed Mr. Vilas-Boas regarding his
Fingerprint Design concept prior to the close of fact discovery (Id.);

•

035 Mockup of D’889 Design: This Court recently noted the 035 Mockup was
disclosed during the preliminary injunction proceedings and Federal Circuit appeal.
Dkt 1170, at 6. This reference also was the subject of Samsung’s motion to
compel filed on October 28, 2011 (Dkt. 346a), and was the subject of extensive
deposition testimony once it was produced in response to a Court Order. (See
Dkt. 1216-1, Ex. 2 at 6.);

•

Apple’s “Brain Box” Display: Samsung moved to compel production of
additional documents relating to Apple’s “Brain Box” display on December 13,
2011 (Dkt. 487), and a number of witnesses were deposed regarding this reference
during the fact discovery period (Dkt. 1216, Ex. 2 at 1);

•

D’037: Apple conceded that Samsung disclosed the D’037 design in its
December 19, 2011 response to Apple’s interrogatory no. 12 , (Dkt 1054, at 11; see
Dkt. 1216-1 ¶ 11);

•

Bluebird Pidion and iRiver U10: Apple deposed third-party witnesses during
fact discovery regarding the Bluebird Pidion and iRiver U10 (Dkt. 1011 ¶ 25; Dkt.
1216-1, Ex. 2 at 3, 7);

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JP’221: JP’221 was disclosed in November, 2011 and then again in February,
2012 as prior art to the closely similar patents Apple asserted in the ITC
investigation it initiated (Id. at 2).

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Even if Apple could establish that a particular prior reference had not been “made known”

25 during discovery, and should have been disclosed in a supplemental discovery response, it would
26 not be entitled to exclusion because the non-disclosure was substantially justified or harmless.
27 Rule 37(c)(1). Apple admits that no prejudice can result where evidence is disclosed in time for
28 the other side’s experts to address it in their reports. Dkt 1206-1 at 15 (arguing that “Samsung
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1 was not in any way prejudiced by the timing of Apple’s disclosure” of evidence in March 4, 2012
2 interrogatory response because Samsung’s experts had the evidence before their reports were
3 issued). That is the case here. Apple cannot – and does not –dispute that every single prior art
4 reference was identified before expert discovery commenced, and most were disclosed weeks or
5 months earlier. For most of the references at issue, Apple had a full opportunity to question
6 Samsung and third party witnesses about them. For every reference, Apple had the opportunity to
7 address them at the depositions of Samsung’s experts, and in their own rebuttal expert reports.
8 Apple also was able to address the evidence at summary judgment. Courts have found a lack of
9 prejudice where evidence was disclosed much later. Abbott Labs. v. Lupin Ltd., 2011 WL
10 1897322, at *4-5 (D. Del. May 19, 2011) (finding lack of prejudice from defendant’s disclosure of
11 new invalidity contentions in expert reports where plaintiff still had the opportunity to address the
12 arguments in rebuttal reports); Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 763
13 F. Supp. 2d 671, 691-92 (D. Del. 2010) (defendant was not prejudiced by infringement theory
14 articulated for first time in expert’s rebuttal report because there was “sufficient time remaining to
15 permit [the expert] to be deposed on all of his opinions”).
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C.

Barring Samsung From Introducing for Any Purpose The Prior Art Cited By
Samsung’s Design Experts Is An Extraordinary Sanction That Would
Seriously Prejudice Samsung’s Defense And Should Not Be Granted Absent
Bad Faith And Consideration Of Lesser Alternatives

Because the only issue before Magistrate Judge Grewal was the potential exclusion of

20 portions of certain expert reports, Samsung has never had an opportunity to address the far more
21 expansive and severe remedy of an all-purpose exclusion of prior art, and in particular why the
22 Court could not, consistent with the relevant facts and legal standards, grant such a remedy in this
23 case. Given the impact of exclusion of the prior art references on Samsung’s ability to present
24 facts supporting its defenses to the jury, the Court would be required to consider whether
25 Samsung’s non-compliance involved willfulness, fault, or bad faith, and to consider the
26 availability of lesser sanctions. R&R Sails, Inc. v. Insurance Co. of Pennsylvania, 673 F.3d 1240,
27 1247 (9th Cir. 2012). In R&R, the Ninth Circuit held that this heightened standard of review was
28 required where exclusion of attorneys’ fee invoices that had not been produced in discovery would
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1 be “particularly harsh, because it dealt a fatal blow not only to R&R’s entire Brandt fees claim but
2 also its request for punitive damages. Thus in practical terms, the sanction amounted to dismissal
3 of a claim.” Id. The same heightened standard has been applied where a requested Rule 37
4 exclusion would “inevitably rob Defendants of their entire case.” Klund v. High Technology
5 Solutions, Inc., 206 WL 549385, at *6 (S.D. Cal. Feb. 27, 2006) (declining request to exclude all
6 evidence from which defendant could explain denial of medical benefits). See also Network
7 Appliance, Inc. v. Bluearc Corp., 2005 WL 1513099 at * 3 (N.D. Cal. June 27, 2005) (Patel, J.)
8 (applying heightened bad faith standard and denying request to exclude 15,000 pages of
9 defendants’ damages evidence produced on the last day of fact discovery).
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If the Court were to deem inadmissible all of the prior art identified in Samsung’s excluded

11 expert reports, such a ruling would significantly impair Samsung’s ability to defend at trial against
12 Apple’s design patent claims. Absent the ability to rely on prior art, Apple would be left to argue
13 that its designs alone disclose a device with rounded corners and a large display screen, or that it
14 has a monopoly over the generalized design concepts of a rectangular shape, thin form factor, and
15 relatively little ornamentation. Aside from being contrary to law, see OddzOn Products, Inc. v.
16 Just Toys, Inc., 122 F.3d 1404, 1405 (Fed. Cir. 1997), Samsung would be unable to rebut this
17 erroneous argument by introducing the numerous prior art references that disclose these same
18 design elements. Accordingly, Apple should be obligated to establish that Samsung acted in bad
19 faith with regard to the timing of the prior art at issue, and there is no basis from which it could do
20 so. Nor could Apple show that lesser sanctions would be insufficient to remedy any claimed
21 prejudice, including granting Apple additional deposition time, or monetary sanctions. Indeed,
22 Magistrate Judge Grewal’s Expert Exclusion Order granted each side additional deposition time
23 with regard to certain experts that were the subject of exclusion requests. Dkt. 1144, at 3-4
24 (Gray); 6 (Wagner), 6-7 (Balakrishnan). See also Dkt. 1213 (Judge Grewal rejected evidentiary
25 preclusion and awarding monetary sanctions against Apple for violation of court discovery order
26 in light of requirement to consider lesser sanctions).
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1 IV.

CONCLUSION

2

For each of the foregoing reasons, Samsung respectfully requests that the Court clarify its

3 Summary Judgment Order to make clear that it is not interpreting Magistrate Judge Grewal’s
4 Expert Exclusion Order to encompass evidence beyond the expert testimony that was the subject
5 of Apple’s motion, and that the prior art references identified in the excluded portions of the
6 expert reports are not, by virtue of the Expert Exclusion Order, deemed inadmissible at trial.
7
8 DATED: July 17, 2012
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QUINN EMANUEL URQUHART &
SULLIVAN, LLP
By /s/ Victoria F. Maroulis
Victoria F. Maroulis
Attorneys for SAMSUNG ELECTRONICS
CO., LTD., SAMSUNG ELECTRONICS
AMERICA, INC., and SAMSUNG
TELECOMMUNICATIONS AMERICA, LLC

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Case No. 11-cv-01846-LHK
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