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

Filing 1797

Questions for the Parties Regarding Jury Instructions. Signed by Judge Lucy H. Koh on 8/16/2012. (lhklc2, COURT STAFF) (Filed on 8/16/2012)

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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 and Counterdefendant,
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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 and Counterclaimants. )
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Case No.: 11-CV-01846-LHK
QUESTIONS TO THE PARTIES
REGARDING JURY INSTRUCTIONS

As indicated at the pre-trial conference at 8:30 a.m. this morning, the Court will be

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submitting a rolling list of questions to the parties regarding the disputed jury instructions. The

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following questions shall be addressed by the parties in a written response by August 17, 2012 at

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8:00 p.m.

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Trade Dress Jury Instructions

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1. Proposed Instruction No. 59 – Trade Dress Damages – Plaintiff’s Actual Damages
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Samsung argues that Apple failed to disclose a theory of damages based on harm to

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good will or business reputation. Did Apple disclose a theory of harm to good will

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or business reputation in its pre-trial disclosures? What evidence did Apple

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introduce at trial of injury to its “reputation” or to “goodwill, including injury to

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Apple’s general business reputation”?

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

Samsung requests an instruction allowing reduction of damages if Samsung shows

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any loss in Apple’s profits was due to factors other than Samsung’s infringement.

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What evidence did Samsung introduce that loss in Apple’s profits was due to factors

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other than Samsung’s infringement?
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Case No.: 11-CV-01846-LHK
QUESTIONS TO THE PARTIES REGARDING JURY INSTRUCTIONS

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2. Proposed Instruction No. 61 – Trade Dress Damages – Reasonable Royalty
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Samsung argues Apple failed to disclose a theory of reasonable royalty as damages

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for trade dress infringement. Did Apple disclose a theory of reasonable royalty in

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its pre-trial disclosures? What evidence did Apple introduce at trial of a reasonable

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royalty?

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Utility Patent Instructions
1. Proposed Instruction No. 15 – Doctrine of Equivalents – Limitations
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Apple proposes an instruction limiting the jury from considering doctrine of

United States District Court
For the Northern District of California

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equivalents with respect to certain limitations of the ’460 Patent, claim 1, because

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“Samsung made certain claim changes or statements during the patent application

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process.” This instruction is addressed to the doctrine of prosecution history

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estoppel. What is the basis of Apple’s argument that prosecution history estoppel

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applies to the specific limitations of claim 1 of the ’460 Patent?

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2. Proposed Instruction No. 19 – Statutory Bar
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Apple has requested a jury instruction that enumerates the effective filing dates for

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the ’381, ’915, and ’163 Patents. Apple’s proposed effective filing dates for the

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’381 and the ’163 Patents precede the actual filing dates, based on earlier

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provisional applications. No Samsung filing dates are listed in either proposed

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instruction.

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For which Apple and Samsung patents have the parties introduced evidence of the
statutory bar at trial?

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What evidence has Apple introduced at trial to support its contention that it is

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entitled to an effective filing date earlier than the actual filing date for the ’381

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Patent or the ’163 Patent? Presuming that there are disputed issues of fact as to

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Apple’s entitlement to earlier effective filing dates for the ’381 and ’163 Patents,

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can the parties stipulate to an instruction as to how entitlement to an effective filing

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date may be proven? Or submit competing proposed instructions?
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Case No.: 11-CV-01846-LHK
QUESTIONS TO THE PARTIES REGARDING JURY INSTRUCTIONS

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

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IT IS SO ORDERED.

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Dated: August 16, 2012

Can the parties stipulate to effective filing dates for the Samsung utility patents?

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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
QUESTIONS TO THE PARTIES REGARDING JURY INSTRUCTIONS