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

Filing 1360

Unredacted Declaration of Bill Trac in Support of Samsung's Reply in Support of Motion for Summary Judgment by Samsung Electronics America, Inc.(a New York corporation), Samsung Electronics Co. Ltd., Samsung Telecommunications America, LLC(a Delaware limited liability company) re 1256 Order on Administrative Motion to File Under Seal, re (Dkt. Nos. 1068, 1069) (Attachments: # 1 Exhibit 1 to the Trac Declaration, # 2 Exhibit 2 to the Trac Declaration, # 3 Exhibit 8 to the Trac Declaration, # 4 Exhibit 9 to the Trac Declaration, # 5 Exhibit 10 to the Trac Declaration, # 6 Exhibit 14 to the Trac Declaration, # 7 Exhibit 15 to the Trac Declaration, # 8 Exhibit 16 to the Trac Declaration, # 9 Exhibit 17 to the Trac Declaration, # 10 Exhibit 18 to the Trac Declaration, # 11 Exhibit 19 to the Trac Declaration, # 12 Exhibit 20 to the Trac Declaration, # 13 Exhibit 21 to the Trac Declaration, # 14 Exhibit 22 to the Trac Declaration, # 15 Exhibit 23 to the Trac Declaration, # 16 Exhibit 24 to the Trac Declaration, # 17 Exhibit 25 to the Trac Declaration, # 18 Exhibit 26 to the Trac Declaration, # 19 Exhibit 27 to the Trac Declaration, # 20 Exhibit 28 to the Trac Declaration)(Maroulis, Victoria) (Filed on 7/26/2012) Modified text on 7/27/2012 (dhm, COURT STAFF).

EXHIBIT 22
FILED UNDER SEAL

1 QUINN EMANUEL URQUHART & SULLIVAN, LLP
Charles K. Verhoeven (Bar No. 170151)
 [e-mail]
50 California Street, 22nd Floor
 San Francisco, California 94111
Telephone: [phone]
 Facsimile: [phone]
 Kevin P.B. Johnson (Bar No. 177129)
[e-mail]
 Victoria F. Maroulis (Bar No. 202603)
[e-mail]
th
 555 Twin Dolphin Drive, 5 Floor
Redwood Shores, California 94065-2139
 Telephone: [phone]
Facsimile: [phone]

Michael T. Zeller (Bar No. 196417)
 [e-mail]
865 S. Figueroa St., 10th Floor
 Los Angeles, California 90017
Telephone: [phone]
 Facsimile: [phone]
 Attorneys for SAMSUNG ELECTRONICS CO.,
LTD., SAMSUNG ELECTRONICS AMERICA,
 INC. and SAMSUNG
TELECOMMUNICATIONS AMERICA, LLC



UNITED STATES DISTRICT COURT



NORTHERN DISTRICT OF CALIFORNIA, SAN JOSE DIVISION


 APPLE INC., a California corporation,

CASE NO. 11-cv-01846-LHK



SAMSUNG’S SECOND SUPPLEMENTAL
OBJECTIONS AND RESPONSES TO
APPLE INC.’S FIFTH SET OF
INTERROGATORIES (No. 12)



Plaintiff,
vs.

 SAMSUNG ELECTRONICS CO., LTD., a
Korean business entity; SAMSUNG
 ELECTRONICS AMERICA, INC., a New
York corporation; SAMSUNG
 TELECOMMUNICATIONS AMERICA,
LLC, a Delaware limited liability company,

Defendant.


HIGHLY CONFIDENTIAL –
ATTORNEYS’ EYES ONLY
UNDER THE PROTECTIVE ORDER



Case No. 11-cv-01846-LHK
SAMSUNG’S SECOND SUPPLEMENTAL OBJECTIONS AND RESPONSES TO APPLE’S FIFTH SET OF
INTERROGATORIES (No. 12)

SUBJECT TO PROTECTIVE ORDER
CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY INFORMATION
1 F.3d 1361, 1366 (Fed. Cir. 2006) (noting that courts should consider "whether there are any
2 concomitant utility patents" when ruling on invalidity due to functionality); see also Power
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Controls Corp. v. Hybrinetics, Inc., 806 F.2d 234, 238-240 (Fed. Cir. 1986).
Samsung also incorporates by reference its Response to Apple’s Interrogatory No. 38,

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regarding functionality of Apple’s asserted design patents.
III. Invalidity Due to Indefiniteness

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The asserted claims of the D'790, D'305, and D'334 patents are also invalid under

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paragraph 2 of Section 112 of Title 35 of the United States Code because the claims are indefinite

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in that the drawings and pictures depicting the design do not enable a person skilled in the art to

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make the design.
For example, the patents are not limited to scale. A designer skilled in the art would not

14 know from the designs how to scale the elements in the design. For example, if the designer were
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to enlarge the screen, it is unclear whether the icons would also need to be enlarged
proportionately, or if the icons should remain the same size so that new rows or columns of icons

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could be added. If new squares or icons were to be added, the patent does not indicate what those
squares or icons should depict, if anything.
Further, the use of broken or dashed lines within the figures of the D'790, D'305, and
D'334 patents is confusing and contrary to convention and creates uncertainty as to the scope of
the design and whether certain elements are or are not a part of the design, or are intended to be

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less important aspects of the design, which is prohibited. See MPEP 1503.02. The description of
the broken lines in the Description section is also unhelpful in overcoming the uncertainty and

26 indefiniteness inherent in the designs of the D'790, D'305, and D'334 patents.
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IV. Invalidity Due to Double Patenting

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02198.51855/4670555.3

Case No. 11-cv-01846-LHK
-287SAMSUNG’S SECOND SUPPLEMENTAL OBJECTIONS AND RESPONSES TO APPLE’S FIFTH SET OF
INTERROGATORIES (No. 12)

SUBJECT TO PROTECTIVE ORDER
CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY INFORMATION
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The asserted claims of the D'305 and D'334 patent are also invalid under the doctrine of

2 double patenting because they are substantially the same design. D'790, D'305, and D'334 also
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appear to be very similar designs to several of Apple's non-asserted design patents: D597,101 and
D644,239.

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6 IV. Invalidity of D'334 Under 35 USC 102(b)
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The D'334 patent is invalid under 35 U.S.C. 102(b) because the design was in public use
or on sale in the United States more than a year before the date the D'334 patent application was

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filed. The original iPhone practiced the D'334 patent and was either in public use, on sale, or both
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more than one year prior to July 15, 2008, the date the D'334 patent application was filed.

12 IV. Incorporation by Reference of Other Materials
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In support of all of its bases for invalidity of Apple’s asserted graphical user interface
design patents, Samsung also incorporates by reference the deposition testimony of all Apple

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witnesses providing testimony related to these design patents, including but not limited to Imran
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Chaudhri, Freddy Anzures, Scott Forstall, Steve Lemay, and Evans Hankey, as well as all

18 deposition testimony provided by third parties, and all exhibits used in those depositions.
19 Samsung also incorporates by reference all testimony provided by Samsung witnesses. Moreover,
20 because Apple delayed in providing Samsung with identities of all individuals involved in the
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designs and alleged embodiments at issue, Samsung currently does not have all relevant testimony
on these issues.

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Samsung further incorporates by reference the file histories of the D'790, D'305, and D'334

25 patents, including any documents cited in those file histories, and any continuing applications
26 from the D'790, D'305, and D'334 patents including reexaminations and reissue applications and
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all documents cited during those proceedings; all documents cited on the face of or in the D'790,

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02198.51855/4670555.3

Case No. 11-cv-01846-LHK
-288SAMSUNG’S SECOND SUPPLEMENTAL OBJECTIONS AND RESPONSES TO APPLE’S FIFTH SET OF
INTERROGATORIES (No. 12)

SUBJECT TO PROTECTIVE ORDER
CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY INFORMATION
1 D'305, and D'334 patents; all related patents and file histories; and all of the documents produced
2 or to be produced by Apple or third parties constituting prior art.
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Samsung also incorporates by reference the Declaration of Itay Sherman in Support of
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Samsung’s Opposition to Apple’s Motion for a Preliminary Injunction (Dkt. No. 172), and any

6 and all expert reports that have been or may be submitted in this action that support the invalidity
7 of Apple’s asserted design patents.
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Samsung’s investigation is ongoing and Samsung will supplement this interrogatory after a

11 reasonable investigation and further discovery from Apple on the basis for its infringement and
12 validity positions.
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DATED: March 29, 2012

Respectfully submitted,

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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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02198.51855/4670555.3

Case No. 11-cv-01846-LHK
-289SAMSUNG’S SECOND SUPPLEMENTAL OBJECTIONS AND RESPONSES TO APPLE’S FIFTH SET OF
INTERROGATORIES (No. 12)

SUBJECT TO PROTECTIVE ORDER
CONTAINS HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY INFORMATION
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2

CERTIFICATE OF SERVICE
I hereby certify that on March 29, 2012, I caused SAMSUNG’S SECOND

3 SUPPLEMENTAL OBJECTIONS AND RESPONSES TO APPLE INC.’S FIFTH SET OF
4 INTERROGATORIES (No. 12) to be electronically served on the following via email:
5 ATTORNEYS FOR APPLE INC.
6 [e-mail]
[e-mail]
7
HAROLD J. MCELHINNY
8 [e-mail]
MICHAEL A. JACOBS
9 [e-mail]
JENNIFER LEE TAYLOR
10 [e-mail]
ALISON M. TUCHER
11 [e-mail]
RICHARD S.J. HUNG
12 [e-mail]
JASON R. BARTLETT
13 [e-mail]
MORRISON & FOERSTER LLP
14 425 Market Street
San Francisco, California 94105-2482
15 Telephone: [phone]
Facsimile: [phone]
16

WILLIAM F. LEE
[e-mail]
WILMER CUTLER PICKERING HALE
AND DORR LLP
60 State Street
Boston, Massachusetts 02109
Telephone: [phone]
Facsimile: [phone]
MARK D. SELWYN
[e-mail]
WILMER CUTLER PICKERING HALE
AND DORR LLP
950 Page Mill Road
Palo Alto, California 94304
Telephone: [phone]
Facsimile: [phone]

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I declare under penalty of perjury that the foregoing is true and correct. Executed in

19 Redwood Shores, California on March 29, 2012.
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_/s/ Brett Arnold________

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02198.51855/4670555.3

Case No. 11-cv-01846-LHK
-290SAMSUNG’S SECOND SUPPLEMENTAL OBJECTIONS AND RESPONSES TO APPLE’S FIFTH SET OF
INTERROGATORIES (No. 12)