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

Filing 1456

ORDER On Apple's Objections to Samsung's Opening Slides. Signed by Judge Lucy H. Koh on 7/29/2012. (lhklc2, COURT STAFF) (Filed on 7/29/2012)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

United States District Court
For the Northern District of California

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APPLE, INC., a California corporation,

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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; SAMSUNG
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TELECOMMUNICATIONS AMERICA, LLC, )
a Delaware limited liability company,
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Defendants.
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I.

Case No.: 11-CV-01846-LHK
ORDER ON APPLE’S OBJECTIONS TO
SAMSUNG’S OPENING SLIDES

APPLE’S OBJECTIONS TO SAMSUNG’S OPENING SLIDES

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Apple has filed objections to Samsung’s Opening Slides. After reviewing the parties’
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briefing, considering the record in the case, and balancing the considerations set forth in Federal
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Rule of Evidence 403, the Court rules on Apple’s objections as follows:
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SAMSUNG
SLIDE
NUMBER
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COURT’S RULING ON OBJECTION

Overruled. Samsung has identified witnesses who will introduce this evidence.
However, if Samsung has never produced in discovery the evidence to support
the assertions in this slide, the Court will sustain Apple’s objection.
Overruled. Samsung has identified witnesses who will introduce this evidence.
However, if Samsung has never produced in discovery the evidence to support
the assertions in this slide, the Court will sustain Apple’s objection.
Overruled. Apple objects that the front view is misleading because the Federal
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Case No.: 11-CV-01846-LHK
ORDER ON APPLE’S OBJECTIONS TO SAMSUNG’S OPENING SLIDES

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9

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10

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United States District Court
For the Northern District of California

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11-19

20-22

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25-26

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29
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30-31

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38-40

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41-42

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48-49
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Circuit included and analyzed the side profile view in determining infringement
of the D’087 Patent. However, the slide does not contain the D’087 patent, and
therefore, Apple’s reference to the Federal Circuit’s discussion related to the
D’087 Patent does not establish that the views are necessarily misleading and
prejudicial.
Sustained. Apple objects that the patent application No. 2004/0041504 should be
excluded as it is being offered as an endrun around Judge Grewal’s order striking
expert reports based on untimely disclosed theories. Judge Grewal struck the
expert reports relating to the ’678 patent, which issued from the ’504 application.
Moreover, based on the context of the slide, the use of the evidence for another
purpose, other than invalidity, would likely confuse the jury, and should be
excluded based on FRE 403 grounds.
Overruled. Consistent with this Court’s ruling on the motions in limine (ECF
No. 1267), the unreleased Samsung phones can be admissible to rebut allegations
of copying, even if they do not meet the requirements of § 102. Moreover, the
use of the term “mock-up” in the slides lessens potential juror confusion that all
of the Samsung phones were released. However, if Samsung did not timely
produce in discovery the images of the Flipper, Vessel, Card3, Warp, and Framer
devices, the Court will sustain Apple’s objection.
Sustained. Pursuant to Judge Grewal’s Order, theories of invalidity based on the
evidence and references in slides 11-19 were not timely disclosed in Samsung’s
invalidity/non-infringement contentions and therefore are excluded.
Sustained. The images of, and testimony regarding, the Sony style designs in the
slides are excluded because of their untimely disclosure pursuant to Judge
Grewal’s Order.
Sustained. The title of Samsung’s slide is argumentative and somewhat
misleading.
Overruled. The title is not argumentative given the evidence presented in the
body of the slide.
Sustained. The title of the slide is argumentative. Moreover, Samsung does not
even attempt to rebut Apple’s objection that this slide’s theory of noninfringement was never disclosed in Samsung’s contention interrogatory
responses or in Samsung’s expert reports. Therefore, this evidence and theory
are excluded.
Overruled. Both parties will be permitted to use deposition testimony in the
opening statements. Specific challenges to the witness’s testimony (relating to
hearsay or otherwise) may be presented using the procedures established by the
Court.
Sustained. Apple only asserts trade dress dilution, not trade dress infringement,
as to the phones. Because phone confusion survey evidence is not legally
relevant to Apple’s dilution claim, the evidence is inadmissible pursuant to FRE
403. ECF No. 1157.
Overruled. Although the relevant time period for establishing fame is the time at
which the junior user initially uses the mark, the evidence cited could be
admissible for other purposes, including lack of distinctiveness for allegedly
ongoing dilution.
Sustained. This is more appropriate for the closing argument.
Sustained. Apple objects that the front view is misleading because the Federal
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Case No.: 11-CV-01846-LHK
ORDER ON APPLE’S OBJECTIONS TO SAMSUNG’S OPENING SLIDES

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51

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58

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United States District Court
For the Northern District of California

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86

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92

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107-109

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125, 134

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136

Circuit included and analyzed the side profile view in determining infringement
of the D’087 Patent. This slide contains a figure from the D’087 Patent, and
therefore, the Federal Circuit’s discussion of the D’087 Patent suggests that the
slide will be potentially misleading and confusing to the jury. This slide must be
changed to address the objections raised by Apple, or excluded from the slide
deck.
Sustained. It does not appear that this theory of non-infringement was previously
disclosed in Samsung’s non-infringement contentions or in any expert report.
Therefore, it is untimely and inadmissible.
Overruled. Both parties will be permitted to use deposition testimony in the
opening statement. Specific challenges to the witness’s testimony (relating to
hearsay or otherwise) may be presented using the procedures established by the
Court.
Sustained. The slide should be clarified to indicate that Figure 1 is only a color
image.
Overruled. Both parties will be permitted to use deposition testimony in the
opening statement. Specific challenges to the witness’s testimony (relating to
hearsay or otherwise) may be presented using the procedures established by the
Court.
Sustained. The theory of non-infringement based on portrait v. landscape
orientation of the tablet was never disclosed in discovery and cannot be raised for
the first time in opening statements.
Overruled. Both parties will be permitted to use deposition testimony in the
opening statement. Specific challenges to the witness’s testimony (relating to
hearsay or otherwise) may be presented using the procedures established by the
Court.
Tentative Sustained in Part and Overruled in Part. To the extent that the video
intended to be used at trial was never disclosed in discovery, it cannot be relied
on by Samsung at trial (and is excluded from opening statements). However, it is
ambiguous from the briefing whether the theory of invalidity based on
FractalZoom was disclosed in discovery. If, as Samsung claims, FractalZoom is
another term for Mandelbrot Application, this prior art reference was disclosed in
discovery and was not subject to Judge Grewal’s Order striking expert testimony.
See, e.g., ECF No. 1144 at 3-4.
Overruled. The Court cannot access the video, but Samsung has indicated that
the video is not being offered to prove the truth of the statements asserted in the
video, but rather is being offered to show the Han prior art device.
Overruled. The date on the slide is the provisional application date.
Overruled. The dates of the Tablecloth appear to be at issue. Samsung may
claim the date that it believes is the correct date, as long as it has a factual basis
for its contention. As to the hearsay objection, Samsung has explained that it
intends to introduce testimony from Dr. Forlines as to the statements on slide
108.
Overruled. Apple agreed to the deposition of third party witnesses, was involved
in the deposition of third party Intel witnesses, conducted half the deposition, and
did not object to the deposition even though it was several days after the close of
fact discovery.
Sustained. The title of the slide “Apple’s FRAND and Exhaustion Defenses are
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Case No.: 11-CV-01846-LHK
ORDER ON APPLE’S OBJECTIONS TO SAMSUNG’S OPENING SLIDES

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144-145, 153

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United States District Court
For the Northern District of California

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Meritless” is argumentative. Samsung has agreed to provide a new title.
Sustained. Samsung admits that the Apple patents are not asserted in this
litigation. This evidence is likely to cause undue confusion for the jury and to
waste time. Accordingly, this evidence is inadmissible under FRE 403.
Overruled. The slides do not depict the manufacturer of the phone – Samsung or
otherwise. Thus, it does not appear from the slides that Samsung is attempting to
allege that it practices the relevant patents-in-suit. Rather, the slides demonstrate
the functionality of the patents.
Sustained. The third bullet is misleading and argumentative.
Overruled. Apple’s objection is unclear.
Sustained. This slide is argumentative and is improper for opening statement.
Additionally, the phrase “very small features among the hundreds of important
factors” is vague and ambiguous.
Sustained. This slide is argumentative and is improper for opening statement.
Moreover, the use of the term “essential” and “non-essential” is ambiguous and
potentially misleading. Additionally, the title of the slide is argumentative and
potentially misleading as it is unclear to what “Total Profits” refers.
Sustained. This slide is argumentative and is improper for opening statement.
Moreover, the use of the term “essential” and “non-essential” is ambiguous and
potentially misleading. Additionally, the title of the slide is argumentative and
potentially misleading.
Overruled. Both parties will be permitted to use deposition testimony in the
opening statement. Specific challenges to the witness’s testimony (relating to
hearsay or otherwise) may be presented using the procedures established by the
Court.
Sustained. The D’678 Patent is not asserted in this trial. Thus, evidence
regarding this unasserted patent is likely to cause undue confusion for the jury
and to waste time. Accordingly, this evidence is inadmissible under FRE 403.

Additionally, the Court will instruct the jurors on the law. It is improper for the parties to
do so and to argue the law in opening statements. Accordingly, any slide containing a statement of
the law, not otherwise addressed in this Order, must also be excluded from Samsung’s opening
statement presentation.
IT IS SO ORDERED.
Dated: July 29, 2012

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LUCY H. KOH
United States District Judge

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Case No.: 11-CV-01846-LHK
ORDER ON APPLE’S OBJECTIONS TO SAMSUNG’S OPENING SLIDES