Apple Inc. v. Samsung Electronics Co. Ltd. et al
Filing
1749
ORDER Regarding Objections. Signed by Judge Lucy H. Koh on 8/14/2012. (lhklc2, COURT STAFF) (Filed on 8/14/2012)
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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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)
Case No.: 11-CV-01846-LHK
ORDER RE: OBJECTIONS TO
EXHIBITS AND TESTIMONY OF
RICHARD HOWARTH, ANDRIES VAN
DAM, STEPHEN GRAY, VINCENT
O’BRIEN, DAVID TEECE, SHIN
NISHIBORI, AND BRIAN AGNETTA
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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. Andries Van Dam
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1. Samsung’s Objections
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EXHIBIT
NUMBER
US ITC Inv.
No. 337-TA796, Vol. 4
Hearing
Transcript
COURT’S RULING ON OBJECTION
Sustained. This exhibit contains excerpts from Dr. Van Dam’s ITC hearing
testimony regarding patents not asserted in this litigation. Such information is
not relevant to any issue in this case, and is therefore barred under FRE 402 and
403. Furthermore, the Court granted Samsung’s motion in limine to exclude the
findings of parallel proceedings as confusing to the jury. See ECF No. 1269 ¶
14. Accordingly, the Court sustains Samsung’s objection because the risk of
confusing the jury and wasting time by introducing excluded evidence
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ORDER ON OBJECTIONS TO EXHIBITS
outweighs the probative value of this testimony under FRE 403. Accord ECF
No. 1690 at 3; ECF No. 1657 at 2; ECF No. 1596 at 6.
Overruled. Although Dr. Van Dam’s expert report addressed invalidity of the
’381 patent, his analysis required him to analyze and apply the claim terms of
that patent, including the language of claim 19, to prior art devices.
Accordingly, Apple is entitled to ask Dr. Van Dam about the application of his
interpretations to other devices, including Samsung devices, in order to test their
consistency.
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PDX 27.22
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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
EXHIBIT
NUMBER
DX720;
SDX3964.003a37a;
SDX3964.071b;
SDX3964.0203;
SDX3964.013038;
SDX3964.071072
DX694
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B. Stephen Gray
1. Samsung’s Objections
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EXHIBIT
NUMBER
PX49
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Overruled. Apple argues that Dr. Van Dam only opined on the 2006 version of
Tablecloth in his expert report, but is now being asked to testify at trial about the
2005 version. Apple apparently bases this argument on the fact that “[n]one of
the ten photos of Tablecloth in his report depicts coordinate locations”—an
identifying feature distinguishing the 2005 version from the 2006 version.
These images alone are insufficient to conclude that Dr. Van Dam only
considered the 2006 version of Tablecloth in his report. Indeed, in its
supplemental statement, Samsung clarified that the 2005 Tablecloth source code
was timely produced to Apple for inspection, that both versions behave the same
way, and that Mr. Van Dam’s expert report was not limited to the 2006 version.
Accordingly, Apple’s objections are overruled.
Overruled. DX694 is an internal Apple email and thus is an admission of a party
opponent. Apple’s knowledge of LaunchTile is relevant and is admissible under
FRE 403.
PDX41.1
COURT’S RULING ON OBJECTION
Sustained-in-part and overruled-in-part. PX49 is a Samsung document and thus
an admission. Although Mr. Gray has never reviewed this document, Apple
may use the exhibit to impeach Mr. Gray if he testifies that Samsung’s double
tap development documents are unrelated to Apple or the ’163 Patent.
Sustained-in-part and overruled-in-part. Samsung objects that this video shows
bounceback functionality that is irrelevant to the ‘915 and ‘163 patents—the
only patents about which Mr. Gray is testifying. However, the LaunchTile is
relevant to both the ’381 Patent and the ’163 Patent. PDX41.1 shows the World
View and depicts a user tapping on a group of tiles to enter the Zone View. To
the extent the demonstrative shows a user tapping on a group of tiles, the
demonstrative shows elements of LaunchTile’s operation that are relevant to Mr.
Gray’s opinion that ‘163 is invalid. If Mr. Gray opines that the ’163 Patent is
invalid in light of LaunchTile, then Samsung has opened the door, and Apple
may use this demonstrative to cross-examine Mr. Gray.
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2. Apple’s Objections
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EXHIBIT
NUMBER
SDX3593.028,
.030
COURT’S RULING ON OBJECTION
Overruled. Mr. Gray disclosed a theory of invalidity, contending that Nomura
inherently disclosed claim elements [1b] and [1d] of the ‘915 patent. Apple
argues that this exhibit, however, attempts to show that Nomura meets elements
[1b] and [1d], which it claims is a different theory than inherency. The Court is
not persuaded, inherency is effectively an argument that a particular piece of
prior art necessarily anticipates a patent. Thus, Apple had notice that Mr. Gray
intended to argue that Nomura anticipated claims [1b] and [1d] of the ‘915
patent.
Overruled. Apple argues that the ‘187 application was not disclosed, and that the
filing date of the ‘187 application cannot serve as the priority date for the ‘632
Patent. In fact, the ‘187 application is disclosed on the face of the ‘632 Patent,
which was repeatedly cited in Samsung’s invalidity contentions. See Maroulis
Decl., Ex. X. Furthermore, the ‘187 application contains a written description
that is substantially similar to the ‘632 Patent. Accordingly, the ‘187 application
is properly introduced as evidence. Apple’s concerns that the animations on
slides SDX3953.066-.067 are not disclosed by ‘187 may be addressed on crossexamination of Mr. Gray.
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DX561;
SDX3952.046,
0.62, 0.066,
0.067
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For the Northern District of California
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C. Vincent O’Brien
1. Samsung’s Objections
COURT’S RULING ON OBJECTION
WITNESS
AND
EXHIBIT NO.
PX2010;
Samsung’s
Opening Slide
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Overruled. Samsung objects to Apple’s use of Samsung’s own opening
statement and slide on grounds that (1) they are inadmissible hearsay, and (2)
they are not evidence and will confuse the jury. Samsung’s own opening
statement and slide have already been presented to the jury and are party
admissions under FRE 801(d)(2) and thus not hearsay. Apple’s use of these
statements to cross-examine Samsung’s own witnesses will not be unduly
prejudicial or confusing to the jury under FRE 403.
2. Apple’s Objections
COURT’S RULING ON OBJECTION
WITNESS
AND
EXHIBIT NO.
SDX3956.022 Overruled-in-part, sustained-in-part. Apple argues that Dr. O’Brien’s damages
opinion should be altogether excluded because (1) his calculations rely, in part,
on survey data collected by Samsung’s survey and marketing expert, Dr.
Sukumar, who is not listed by Samsung as a trial witness and will not testify
because Samsung failed to include him on Samsung’s narrowed witness list, and
(2) he is not competent to sponsor Dr. Sukumar’s survey opinions. Apple points
to the Court’s prior ruling requiring Mr. Poret and Mr. Van Liere to testify live
regarding their surveys, rather than simply allowing Dr. Winer to sponsor Mr.
Poret’s and Mr. Van Liere’s results. The Court finds that exclusion of Dr.
Sukumar’s survey would be unduly prejudicial to Samsung. Accordingly, the
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SDX3956.019
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Court finds good cause for Samsung to replace one of its current identified
witnesses with Dr. Sukumar so that he may present his survey and be subject to
cross-examination.
Overruled. Apple argues that the parties should not re-litigate discovery disputes
before the jury and objects to this demonstrative, which depicts a timeline of
Apple’s production of royalty reports, under FRE 403. In support of its
argument, Apple cites Judge Grewal’s ruling denying Samsung’s motion to strike
portions of an expert damages report prepared by Apple’s damages expert, Terry
Musika. See ECF No. 1144 at 8. However, Samsung’s demonstrative does not
contravene Judge Grewal’s or any other Court order. Furthermore, Apple and its
damages expert Mr. Musika have made an issue out of the alleged
incompleteness of Dr. O’Brien’s damages report, and Samsung may therefore
attempt to bolster Dr. O’Brien’s opinion by pointing to the unavailability of
certain Apple licensing information at the time of Dr. O’Brien’s expert report.
Under these circumstances, the probative value of the demonstrative outweighs
any prejudicial effect, and it will not be a waste of time under FRE 403.
United States District Court
For the Northern District of California
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D. David Teece
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1. Samsung’s Objections
EXHIBIT
NUMBER
Teece: PX85
and PX87
COURT’S RULING ON OBJECTION
Sustained. PX85 and PX87 risk creating litigation within litigation regarding a
matter that is of limited relevance to this case and is therefore inadmissible under
FRE 403.
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PX85 is Samsung’s “Re-Amended Defense and Counterclaim” in a British case.
PX87 is an expert report prepared for Samsung in the British case by experts not
testifying in the current case. Apple seeks to admit PX85 and PX87 as
Samsung’s party admissions about FRAND licensing that contradict Samsung’s
assertions in this case. Samsung argues that PX85 and PX87 are inadmissible
under FRE 403 balancing and are hearsay.
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PX85 and PX87 relate to a British case that involved different parties, different
patents, and the setting of different industry-wide standards than the current case.
Accordingly, PX85 and PX87 are of limited relevance and are likely to waste
time and confuse the jury.
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2. Apple’s Objections
COURT’S RULING ON OBJECTION
WITNESS
AND
EXHIBIT NO.
SDX3963.010 Sustained. Samsung’s demonstrative depicts UMTS rates and LTE rates. Dr.
Teece admitted during his deposition that LTE and UMTS are different
standards. However, Apple alleges that Dr. Teece was unable to explain the
relationship between LTE and UMTS technology and standards and could not
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explain why a license offer for a portfolio of LTE patents is comparable to the
reasonable royalty rate for two UMTS standard essential patents. Samsung does
not provide an explanation as to why the LTE licenses are comparable to the
hypothetical license at issue. Moreover, Dr. Teece could not identify whether
any of Samsung’s UMTS-declared essential patents have been declared essential
to LTE. See Walden Decl. Ex. 4 [Teece Dep. 141-42]. Thus, because the
comparability of the licenses has not been shown, any probative value of the LTE
licenses is outweighed by the risk of prejudice, wasting time, and confusing the
jury, and the LTE licenses are therefore excluded under FRE 403. See Lucent
Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1325 (Fed. Cir. 2009) (“[L]icenses
relied on by the patentee in proving damages [must be] sufficiently comparable
to the hypothetical license at issue in suit.”); accord Uniloc USA, Inc. v.
Microsoft Corp., 632 F.3d 1292, 1316-17 (Fed. Cir. 2011).
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DX630
As for Qualcomm’s UMTS rate, Apple argues that the rates cited pre-date
finalization of the UMTS standard and principally involve standards other than
UMTS. Samsung does not dispute this point. Accordingly, Samsung has not
shown that the Qualcomm “UMTS rate” is a comparable license to the
hypothetical license at issue, and thus its probative value is outweighed by the
risk of prejudice, wasting time, and confusing the jury under FRE 403.
Overruled. Apple objects that Samsung did not identify DX630 on its trial
exhibit list as a FRE 1006 exhibit. Apple itself has introduced numerous
summary exhibits pursuant to FRE 1006. Rule 1006 provides: “The contents of
voluminous writings, recordings, or photographs which cannot conveniently be
examined in court may be presented in the form of a chart, summary, or
calculation.” “A proponent of summary evidence must establish that the
underlying materials upon which the summary is based (1) are admissible in
evidence and (2) were made available to the opposing party for inspection.”
United States v. Rizk, 660 F.3d 1125, 1130 (9th Cir. 2011) (citing Amarel v.
Connell, 102 F.3d 1494, 1516 (9th Cir. 1996)). “These materials must be
admissible, but need not themselves be admitted into evidence.” Id. (citing
United States v. Meyers, 847 F.2d 1408, 1412 (9th Cir. 1988)). “The availability
requirement ensures that the opposing party has ‘an opportunity to verify the
reliability and accuracy of the summary prior to trial.’” Id. (quoting Paddack v.
Dave Christensen, Inc., 745 F.2d 1254, 1261 (9th Cir. 1984)). Apple challenges
only the form in which this summary chart of information is presented, but Apple
does not contest the admissibility of the underlying license agreements, nor does
Apple claim that the underlying documents are unavailable for Apple’s
inspection. Indeed, each underlying license agreement is identified by Bates
number in DX630. Accordingly, the Court finds that this exhibit is admissible
under FRE 1006.
E. Brian Agnetta
1. Samsung’s Objections
COURT’S RULING ON OBJECTION
WITNESS
AND
EXHIBIT NO.
Agnetta: Depo Overruled. As the inventor of the ’632 Patent, Agnetta can testify to what he
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54:08-09,
54:18-19.
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2. Apple’s Objections
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WITNESS
AND
EXHIBIT NO.
Agnetta: Depo Sustained. Agnetta testified that the ’632 Patent was conceived “at least prior to
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early May of 2005.” The filing of the provisional patent application No.
60/718,187 (the ’187 application) on September 16, 2005 is not corroboration of
an early May 2005 conception date.
Agnetta:
Overruled. Agnetta testified as to the ’187 application (DX561) filed on
15:21-16:19
September 16, 2005. Apple argues that (1) the ’187 application was not
and DX561
disclosed in Samsung’s patent invalidity contentions, and (2) the filing date of
the ’187 application cannot serve as the priority date for the ’632 Patent.
United States District Court
For the Northern District of California
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The ’187 application is the provisional application which became the ’632
Patent. The ’187 application and the ’632 Patent have substantially similar
written descriptions. Moreover, the ’187 application was disclosed on the face of
the ’632 Patent, which was repeatedly cited in Samsung’s invalidity contentions.
See Maroulis Decl., Ex. X. Accordingly, Agnetta Depo 15:21-16:19 and DX561
are relevant evidence as to the priority date of the ’632 Patent.
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F. Richard Howarth
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EXHIBIT
NUMBER
DX579
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invented. Samsung objects that Mr. Agnetta cannot testify as an expert regarding
all possible embodiments of the patent. However, Mr. Agnetta’s testimony is
limited to the embodiments actually contained in his own patent.
DX2627
1. Apple’s Objections
COURT’S RULING ON OBJECTION
Sustained. This document was not disclosed in Samsung’s interrogatory
responses served on February 22, 2012, and February 29, 2012, which requested
Samsung to disclose Samsung’s documents in support of its claims of
functionality. DX579, an e-mail, was not disclosed in the interrogatory
responses and is excluded.
Overruled. This slide show presentation contains pictures of the F700 and the
LG Prada. Apple contends that this slide show should be precluded because (1)
it contains an incorrect date and therefore could be misleading to the jury, and (2)
the F700 has been excluded.
Samsung explains that this document is relevant to show that Apple compares its
own products with others in the industry. Evidence used for this purpose is
admissible. To the extent that the date is erroneous on the document, the Court
will explain to the jury that the correct date is 2007 and not 2006. Additionally,
the Court will issue a limiting instruction with respect to the images of the F700:
“You may not consider the F700 as evidence of invalidity or non-infringement;
you may only consider the F700 for alternative design and functionality.”
G. Shin Nishibori
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United States District Court
For the Northern District of California
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EXHIBIT
NUMBER
Nishibori
Deposition
1. Apple’s Objections
COURT’S RULING ON OBJECTION
Sustained-in-part and overruled-in-part. The Court has reviewed Samsung’s
deposition designations for Nishibori. The Court has previously excluded Mr.
Nishibori’s testimony to rebut Apple’s creation theory of the iPhone, to rebut
allegations of copying and willfulness and to establish that the industry was
moving towards the iPhone design concept. ECF No. 1553. The only purpose
for which Mr. Nishibori’s testimony is admissible is related to functionality of
the design. The deposition designations at 6:24-7:1 and 10:6-10:15 contain
background information and therefore this testimony is admissible. However,
the remainder of the testimony that Samsung seeks to elicit from Mr. Nishibori is
to be used for one of the improper purposes described above. The jury is
unlikely to consider this evidence for functionality purposes. Therefore, pursuant
to FRE 403, Apple’s objection is sustained. The Court notes that Mr. Nishibori
testified regarding the functionality of Apple designs, but Samsung has not
designated this testimony.
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IT IS SO ORDERED.
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Dated: August 14, 2012
_________________________________
LUCY H. KOH
United States District Judge
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