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

Filing 1720

ORDER re 1703 Samsung's Objections and 1707 Apple's Objections re Kim, Wang, Lucente, Sherman, Kamins, and Fidler. Signed by Judge Lucy H. Koh on 8/13/12. (lhklc3S, COURT STAFF) (Filed on 8/13/2012)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

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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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Case No.: 11-CV-01846-LHK
ORDER RE: OBJECTIONS TO
EXHIBITS AND TESTIMONY OF KIM,
WANG, LUCENTE, SHERMAN,
KAMINS, AND FIDLER

After reviewing the parties’ briefing, considering the record in the case, and balancing the

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considerations set forth in Federal Rule of Evidence 403, the Court rules on the parties’ objections

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as follows:

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A. Jinsoo Kim

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EXHIBIT
NUMBER
PX47

1. Samsung’s Objections
COURT’S RULING ON OBJECTION
Overruled. Samsung objects that Apple cannot lay foundation to introduce
PX47. In particular, Samsung argues that PX47 is an email that was not sent to
Mr. Kim, that Mr. Kim was not asked about this document in his depositions, and
that he is not listed as a sponsoring witness on the exhibit. However, although
the entire e-mail is completely legible in Korean and in the English translation,
the “to” and “cc” lines are not in Korean or English and are merely non-sensical
symbols. In addition, Apple has articulated a reasonable basis for concluding
that Mr. Kim may in fact have been a recipient of the e-mail or may have seen
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Case No.: 11-CV-01846-LHK
ORDER ON OBJECTIONS TO EXHIBITS

the e-mail.

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Deposition of
Jung Min Yeo

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United States District Court
For the Northern District of California

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EXHIBIT
NUMBER
DX2602

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JX1012

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Samsung also argues that Apple failed to timely disclose PX47 with regard to
copying or willfulness. Apple argues that it only seeks to use PX47 to establish
non-obviousness. Accordingly, if PX47 is introduced at trial, the Court will issue
a limiting instruction that prohibits the jury from considering PX47 for
willfulness or trade dress confusion.
Sustained. In order to introduce deposition testimony of Ms. Yeo, Apple must
explain how such testimony is consistent with Fed. R. Civ. P. 32(a)(2)-(8).
Apple argues that it intends to use Ms. Yeo’s deposition testimony for purposes
of impeachment, presumably pursuant to Rule 32(a)(2). However, Rule 32(a)(2)
only allows a party to “use a deposition to contradict or impeach the testimony
given by the deponent as a witness, or for any other purpose allowed by the
Federal Rules of Evidence.” Neither the Federal Rules of Evidence nor the
Federal Rules of Civil Procedure contemplate impeachment by another
deponent’s prior inconsistent statement. Thus, Apple has not established that this
testimony is admissible as impeachment evidence under Fed. R. Civ. P. 32.
2. Apple’s Objections
COURT’S RULING ON OBJECTION
Sustained. Apple objects that Samsung failed to timely disclose DX2602 on its
list of 200 trial exhibits. Samsung responds that DX2602, a physical mockup of
a tablet, is not an exhibit, but rather is a “physical demonstrative” that did not
need to be disclosed. The Court does not agree. A tablet model is different from
a slide. This model should have been timely disclosed and was not.
Overruled. Apple objects as to Mr. Kim’s testimony regarding the Galaxy S Epic
4G (JX1012) on the grounds of lack of foundation, lack of relevance, and
improper expert opinion testimony by lay witness. Samsung represents that Mr.
Kim was personally involved in the design of the Epic 4G. Accordingly, if
Samsung lays a proper foundation, then the Court will overrule Apple’s lack of
foundation and relevance objections. The Court agrees that Mr. Kim is not
permitted to testify about invalidity or non-infringement of the design patents
based on Judge Grewal’s Order. If Samsung elicits such testimony, the Court
will sustain Apple’s objections.

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B. Jeeyeun Wang

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1. Samsung’s Objections
EXHIBIT
NUMBER
PX2253

COURT’S RULING ON OBJECTION
Overruled. PX2253 is a screenshot of metadata identifying Jeeyeun Wang as
the custodian for PX185. Samsung objects to its admissibility arguing that it is
not relevant to any disputed fact and is therefore inadmissible under Rules 401
and 403. Ms. Wang has denied that she has personal knowledge of a document
to which she is a custodian, thus Apple may use this document to impeach her
testimony.
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ORDER ON OBJECTIONS TO EXHIBITS

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United States District Court
For the Northern District of California

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PX2255

Sustained. Apple has withdrawn this exhibit.
2. Apple’s Objections
COURT’S RULING ON OBJECTION

EXHIBIT
NUMBER
SDX3972.0023 Sustained. This exhibit is a modified image of a drawing from the D’305 patent
with the colorful rounded square containers removed from certain icons. As a
lay witness, Ms. Wang is only permitted to testify regarding matters that are
“rationally based on [her] perception.” See Fed. R. Evid. 701. Samsung has
introduced no evidence that Ms. Wang created or perceived this image outside of
this litigation, therefore any testimony she offers regarding it would be
speculative. Furthermore, because this image is a modified version of a drawing
from the D’305 patent, there is a substantial risk of misleading and confusing the
jury. Accordingly, this evidence is excluded under Rule 403.
SDX3927.0027 Sustained. This exhibit is a modified image of a screenshot from the iPhone 3GS
homescreen with the colorful rounded square containers removed from certain
icons. As a lay witness, Ms. Wang is only permitted to testify regarding matters
that are “rationally based on [her] perception.” See Fed. R. Evid. 701. Samsung
has introduced no evidence that Ms. Wang created or perceived this image
outside of this litigation, therefore any testimony she offers regarding it would be
speculative. Furthermore, because this image is a modified version of a drawing
from the D’305 patent, there is a substantial risk of misleading and confusing the
jury. Accordingly, this evidence is excluded under Rule 403.

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C. Samuel Lucente
1. Samsung’s Objections
COURT’S RULING ON OBJECTION

WITNESS
AND
EXHIBIT NO.
PX55
Overruled. The Court previously ruled that, because Apple failed to disclose this
document in response to Samsung’s Interrogatory No. 7 regarding willfulness,
PX55 may not be used to demonstrate willfulness. See ECF No. 1563 at 4. The
Court did not, however, prohibit Apple from introducing PX55 for other
purposes, such as impeachment or evidence of copying. Copying is a relevant
secondary consideration for non-obviousness, and Samsung’s Interrogatory No. 7
did not elicit disclosure of evidence of secondary considerations of nonobviousness. Accordingly, the Court concludes that PX55 is probative of the
secondary consideration of copying, which outweighs its risk of prejudice under
FRE 403. Furthermore, Apple may use PX55 to impeach Mr. Lucente. The
Court will issue a limiting instruction that PX55 may not be considered as to
willfulness but may be considered as to other purposes, including nonobviousness.
PX160
Overruled. Apple asserts that it intends to use this exhibit solely for
impeachment purposes, which is permissible and not unduly prejudicial under
FRE 403.
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United States District Court
For the Northern District of California

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2. Apple’s Objections
COURT’S RULING ON OBJECTION

WITNESS
AND
EXHIBIT NO.
SDX3970.08
Overruled. Apple’s objection to this demonstrative is based on Mr. Lucente’s
anticipated reliance on the survey opinions of two other experts, Michael Mazis
and Michael Mantis. Samsung asserts that Mr. Lucente’s testimony will “not
depend on or relate to the opinions proffered by Messrs. Mantis and Mazis.”
Accordingly, there appears to be no basis for Apple’s objection. However, the
Court advises Samsung that any attempt by Mr. Lucente to testify regarding
surveys conducted by Messrs. Mantis and Mazis, of which Mr. Lucente has no
personal knowledge, would be improper, for the reasons stated in the Court’s
order sustaining Samsung’s objection to Winer PDX28.25. See ECF No. 1596 at
2 (citing In re Imperial Credit Indus., Inc. Sec. Litig., 252 F. Supp. 2d 1005, 1012
(C.D. Cal. 2003)).
SDX3970.02Overruled. Apple objects on the ground that the title of these slides – “functional
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elements” – risks misleading the jury on the proper test for functionality. Under
Federal Circuit case law, however, Samsung may argue to the jury that Apple’s
design patent “is limited to [ornamental] aspects alone and does not extend to any
functional elements of the claimed article.” Richardson v. Stanley Works, Inc.,
597 F.3d 1288, 1294 (Fed. Cir. 2010). Samsung’s analysis of allegedly
functional elements is therefore permissible. Moreover, the slides do not purport
to recite a legal standard, and the jury will ultimately be properly instructed on
design patent functionality, so Apple will suffer no prejudice.

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D. Itay Sherman
1. Samsung’s Objections

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EXHIBIT
NUMBER
PX151

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Anders
Deposition
Testimony

COURT’S RULING ON OBJECTION
Sustained. Apple failed to timely disclose PX151, the LG Optimus T, as an
“alternative design” as evidence of the non-functionality of the iPhone design
patents and trade dress. Accordingly, Apple will not be permitted to use this
exhibit at trial. Although Apple initially purports to be using this exhibit “only
to impeach Mr. Sherman’s testimony,” Apple goes on to clarify that it wishes to
introduce this evidence to “contradict any attempted testimony by Mr. Sherman
that elements of the Apple design patents and trade dress are dictated by
function.” Therefore, even if PX151 is nominally offered for impeachment
purposes, it appears that Apple’s true purpose in introducing it will be to prove
non-functionality. Because PX151 and Apple’s non-functionality contention
were not timely disclosed, PX151 is inadmissible.
Sustained. Apple seeks to offer the Anders deposition transcript to establish
that Mr. Sherman is not a person of ordinary skill in the art of industrial design.
Thus, Apple offers the Anders testimony for the truth of the matter asserted, and
the statement is hearsay. Apple has not established that the testimony is
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Case No.: 11-CV-01846-LHK
ORDER ON OBJECTIONS TO EXHIBITS

admissible under a hearsay exception. Additionally, Apple has not established
that use of Mr. Anders’s deposition complies with FRCP 32.

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EXHIBIT
NUMBER
DX562

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JX1093

United States District Court
For the Northern District of California

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2. Apple’s Objections
COURT’S RULING ON OBJECTION
Overruled. The Court has already ruled that DX562 will be admissible for
purposes of functionality. Judge Grewal did not strike the portion of the expert
report containing this theory, and Apple has essentially conceded that the e-mail
is admissible. ECF No. 1437 at 2-3. The Court has already ruled on this issue
numerous times and sees no need to revisit its decision. See, e.g., ECF No. 1519
at 2; ECF No. 1545 at 11. The Court will issue the following limiting instruction
to the jury: “You may not consider DX562 as evidence of invalidity or noninfringement. Rather, you may only consider DX562 as to functionality.”
Overruled. The parties dispute whether the LG Prada constitutes prior art based
on the priority dates of the LG Prada and the D’677 and D’087. These disputes
should be resolved by the jury. Accordingly, this Court has already ruled that
JX1093, the LG Prada, is admissible. See ECF No. 1267 at 3. Although the
Court issued a limiting instruction when admitting JX1093 during the crossexamination of one of Apple’s witnesses, that limiting instruction was applicable
only to that cross-examination, when JX1093 was being used only for
impeachment purposes and not as prior art. The admission of JX1093 with Mr.
Sherman is governed only by the Court’s ruling on Apple’s Motion in Limine
No. 3, which affirmed the admissibility of JX1093.

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E. Michael Kamins

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1. Samsung’s Objections
COURT’S RULING ON OBJECTION

WITNESS
AND
EXHIBIT NO.
PDX51.1
Overruled. Samsung appears to have provided the Court with the wrong
demonstrative, as Samsung’s description of the disputed title does not match the
title of PDX51.1. Similarly, Apple appears to cite the wrong opening statement
slide, as Hung Decl. Ex. 19 at 80 is Apple’s opening slide about damages, not
trade dress. Regardless, having considered the substance of Samsung’s
objection, the Court does not agree that Apple must add the language “claimed
by Apple” in order to avoid jury confusion under FRE 403. The title “iPhone
Trade Dress” is a proper description of the category of subject matter at issue in
the demonstrative.

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2. Apple’s Objections

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None.

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Case No.: 11-CV-01846-LHK
ORDER ON OBJECTIONS TO EXHIBITS

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F. Roger Fidler

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United States District Court
For the Northern District of California

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1. Samsung’s Objections to Counter-Designations
EXHIBIT
NUMBER
Fidler Depo. at
17:13-17:21;
18:8-18:15;
32:24-33:9;
47:15-22;
48:16-17;
159:22-159:25;
160:7-160:15;
167:23-168:9;
169:1-169:13;
211:3-211:10;
212:9-212:14

COURT’S RULING ON OBJECTION
Overruled. Samsung objects to Apple’s counter-designations arguing that these
counter-designations were not timely disclosed to the Court on July 23, 2012.
However, the parties apparently have agreed to an alternative disclosure
schedule that allows that parties to disclose counter-designations at the same
time the parties disclose their cross examination materials for the other
witnesses. Consistent with the parties’ agreement, Samsung appears to have
been operating under this agreement to its advantage during trial by disclosing
counter-designations that Samsung did not disclose on July 23, 2012. Samsung
cannot now foreclose Apple from counter-designating deposition testimony
consistent with the agreement reached by the parties.

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EXHIBIT
NUMBER
DX689

2. Apple’s Objections
COURT’S RULING ON OBJECTION

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First, Mr. Fidler’s declaration is hearsay, as it is a prior statement being offered
for the truth of the matter asserted. Samsung has not identified an exception to
the rule against hearsay that would allow the declaration to be admissible. Thus,
the Fidler declaration is not admissible.

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Sustained-in-part, overruled-in-part. DX689 is Mr. Fidler’s declaration, as well
as supporting exhibits.

Fidler Depo. at
208:15-23

Second, Apple has not objected to the exhibits in support of the Fidler
declaration based on hearsay. Rather Apple objects to the exhibits to the Fidler
declaration because it claims that the documents were never formally produced in
discovery because they do not bear any bates stamps. However, it is undisputed
that Apple was served with these documents in the preliminary injunction phase
of this case, and these documents were used in the Fidler deposition.
Accordingly, the exhibits are admissible. As long as Mr. Fidler laid proper
foundation in his deposition, these exhibits are admissible.
Overruled. The testimony is relevant to rebut Apple’s narrative regarding how
its tablet design was invented. Moreover, the short excerpt is not unduly
prejudicial. Mr. Fidler does not state that Apple stole or copied his design.

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IT IS SO ORDERED.

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Dated: August 13, 2012

_________________________________
LUCY H. KOH
United States District Judge

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Case No.: 11-CV-01846-LHK
ORDER ON OBJECTIONS TO EXHIBITS