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

Filing 1553

ORDER by Judge Lucy H. Koh Regarding 1420 Motion to Enforce; granting 1450 Motion for Leave to File Surreply (lhklc2S, COURT STAFF) (Filed on 8/2/2012)

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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.
)
)
)

Case No.: 11-CV-01846-LHK
ORDER REGARDING APPLE’S
MOTION TO ENFORCE COURT
ORDER

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Apple has filed a motion to enforce court orders regarding Sony Designs. ECF No. 1420.
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Samsung filed a response on July 28, 2012. ECF No. 1431. Apple filed a reply on July 29, 2012.
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ECF No. 1437. Samsung has also filed an administrative motion to file a surreply. Samsung’s
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motion is GRANTED, and the Court has considered the surreply for this ruling. There are two
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issues presented by Apple’s motion: (1) whether documents related to the influence of “Sony style”
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on Apple’s design and development of the iPhone should be admissible at trial, and (2) whether the
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deposition testimony of Shin Nishibori should be admissible at trial. The five additional times the
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parties have briefed these issues are described in the Background Section of this Order.
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1. Evidence of Sony Designs
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a. Background
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Case No.: 11-CV-01846-LHK
ORDER REGARDING APPLE’S MOTION TO ENFORCE COURT ORDER

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On May 17, 2012, the parties filed cross motions to strike expert reports for undisclosed

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facts and theories noticed before Magistrate Judge Grewal. See ECF Nos. 934 and 939.

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Specifically, Apple sought to exclude portions of the Sherman Declaration that disclosed theories

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of invalidity of the D’677 Patent that were not timely disclosed during discovery. Samsung filed a

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response to Apple’s motion on May 31, 2012. ECF No. 1000. Apple filed a reply in support of its

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motion on June 7, 2012. ECF No. 1054. Judge Grewal held a hearing on June 21, 2012.

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After considering the briefing, case record, and arguments of the parties, Judge Grewal

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struck portions of Samsung’s expert report from Itay Sherman (“the Sherman Report”) that

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disclosed theories of invalidity of the D’677 Patent that were not timely disclosed during

United States District Court
For the Northern District of California

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discovery. ECF No. 1144 at 4-5. Specifically, Judge Grewal determined that Samsung had not

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timely amended its answers to contention interrogatories. Therefore, Judge Grewal struck portions

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of the Sherman Report that argued that Apple’s designs were anticipated or obvious in light of

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prior Sony designs. Specifically, Judge Grewal struck the following: evidence that Apple produced

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in-house drawings and mock-ups based on the Sony design style. The Sherman Report referenced

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“Sony style CAD drawings,” “Apple’s Sony Style Design Mock-ups,” “Sony Ericsson W950,” and

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the “Sony Ericsson K800i” in support of Samsung’s contention that the D’677 Patent is invalid and

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that Apple’s design engineers were inspired by Sony. See Sherman Report at 48-50.

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Samsung sought relief from this Court from Judge Grewal’s Order Striking Portions of the

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Sherman Report. See, e.g., ECF No. 1216. Apple filed an opposition to Samsung’s motion. ECF

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No. 1242. The Court denied Samsung’s motion for relief from Judge Grewal’s Order Striking

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Portions of the Sherman Report. See ECF No. 1545.

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In addition, Apple objected to Samsung’s opening presentation slides that showed the Sony

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Style evidence and theories that had been stricken by Judge Grewal’s Order. ECF No. 1441.

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Samsung filed a response to Apple’s objections. ECF No. 1442. The Court issued an order

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sustaining several of Apple’s objections to Samsung’s opening presentation, including slides 20-

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22. ECF No. 1456. Samsung filed a motion for reconsideration of this Court’s ruling; argued its

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motion on July 30, 2012; and was permitted to file supplemental briefing to support its position on

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July 30, 2012. See ECF No. 1463. On July 30, 2012, Samsung then filed a supplemental statement
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Case No.: 11-CV-01846-LHK
ORDER REGARDING APPLE’S MOTION TO ENFORCE COURT ORDER

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in support of its position, and the Court reconsidered its ruling in part, and allowed Samsung to

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present the evidence at slide 22. ECF Nos. 1473 and 1510. On July 31, 2012, Samsung showed

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slide 22 during Samsung’s opening presentation.

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b. Analysis
Samsung argues that Judge Grewal’s Order only applies to the invalidity theory in the

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Sherman Report. Samsung argues that Judge Grewal’s Order does not bar all underlying evidence

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of Sony style designs. Specifically, Samsung argues that the Sony style designs referenced above

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are relevant and admissible to: (1) rebut Apple’s creation theory that the iPhone was

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“revolutionary”; (2) to rebut allegations of copying; (3) to establish that the industry at large was

United States District Court
For the Northern District of California

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moving toward the basic design concepts; (4) to prove design functionality; and (5) to rebut

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allegations of willfulness.

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Samsung’s argument that the Sony style designs rebut Apple’s creation theory, and

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Samsung’s argument that the Sony style designs establish that the industry at large was moving

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toward Apple’s claimed design concepts seem to be alternative ways of articulating a theory of

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invalidity based on obviousness or anticipation. These theories were struck by Judge Grewal.

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Indeed, the portions of the Sherman Report struck by Judge Grewal present the argument that

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Apple’s design was influenced by Sony designs. Thus, Samsung cannot use the Sony style designs

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for the same purpose that was excluded by Judge Grewal. It would render Judge Grewal’s Order

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meaningless to allow Samsung’s invalidity theory to proceed under a different name.

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The Court is also unpersuaded by Samsung’s other arguments as to why the evidence of the

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Sony Style designs are relevant and admissible. First, evidence of the “Sony style CAD drawings,”

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and “Apple’s Sony Style Design Mock-ups,” were designs created by Apple’s in-house designers

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and are not Sony products. Thus, the evidence of the Sony style designs made in house at Apple

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are not strong evidence to support Samsung’s argument that the iPhone was derived from Sony.

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Moreover, evidence that Apple was inspired by “Sony style design” does not strongly rebut

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Apple’s claims that Samsung copied its designs, or strongly rebut Apple’s claims of willfulness. In

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contrast, the potential for jury confusion with this evidence is high. The jury will be told that these

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designs show that Apple was inspired by Sony to create the iPhone design, but that they may not
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Case No.: 11-CV-01846-LHK
ORDER REGARDING APPLE’S MOTION TO ENFORCE COURT ORDER

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consider this evidence to find Apple’s design patents invalid. Or, the jury may be tempted to use

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the evidence of the Sony designs for the purpose of finding Apple’s design patents invalid, even

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though such evidence has been found to be inadmissible for that purpose. In light of these factors,

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pursuant to Federal Rule of Evidence 403, the Court finds that the probative value of the “Sony-

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style design” evidence is substantially outweighed by a danger of unfair prejudice, confusing the

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issues, or misleading the jury. Accordingly, the evidence Samsung seeks to admit related to Sony-

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style design is excluded to: (1) rebut Apple’s creation theory that the iPhone was “revolutionary”;

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(2) to rebut allegations of copying; (3) to establish that the industry at large was moving toward the

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basic design concepts; and (4) to rebut allegations of willfulness.

United States District Court
For the Northern District of California

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Apple has conceded that the Horwath e-mail regarding the functionality of the iPhone

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design was not covered by Judge Grewal’s Order, and therefore, Apple’s motion to enforce did not

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seek to exclude the Horwath e-mail. ECF No. 1437 at 2-3. Indeed, Apple did not move to strike

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portions of the Sherman Report in which Sherman argued that the iPhone design is functional

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based on some of the Sony-style evidence. See Sherman Report at 97-99. Therefore, Samsung

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may introduce the evidence of the Horwath e-mail, and the relevant portions of the Sherman

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Report, to support its allegations that the iPhone design is functional.

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2. Deposition Testimony of Nishibori

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Although Apple initially argued that the deposition of Shin Nishibori, an Apple designer

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involved in Apple’s Sony-style design project, should be excluded based on timeliness grounds,

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Apple has since withdrawn the argument. Indeed, the record shows that Mr. Nishibori’s deposition

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was delayed by Apple’s own position during discovery.

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Consistent with the discussion above, Mr. Nishibori’s testimony is admissible to establish

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functionality of the iPhone design. However, also consistent with the discussion above, Mr.

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Nishibori’s testimony on the theories that were stricken by Judge Grewal is excluded. Specifically,

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Mr. Nishibori’s testimony is excluded to: (1) rebut Apple’s creation theory that the iPhone was

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“revolutionary”; (2) rebut allegations of copying; (3) establish that the industry at large was

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moving toward the basic design concepts; and (4) rebut allegations of willfulness.

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Case No.: 11-CV-01846-LHK
ORDER REGARDING APPLE’S MOTION TO ENFORCE COURT ORDER

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IT IS SO ORDERED.

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Dated: August 2, 2012

_________________________________
LUCY H. KOH
United States District Judge

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United States District Court
For the Northern District of California

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Case No.: 11-CV-01846-LHK
ORDER REGARDING APPLE’S MOTION TO ENFORCE COURT ORDER