Apple Inc. v. Samsung Electronics Co. Ltd. et al
Filing
2126
Declaration of Susan Estrich in Support of 2013 MOTION for Judgment as a Matter of Law, New Trial and/or Remittitur Pursuant to Federal Rules of Civil Procedure 50 and 59, 2054 Brief, 2053 Opposition/Response to Motion, filed bySamsung Electronics America, Inc.(a New York corporation), Samsung Electronics Co. Ltd., Samsung Telecommunications America, LLC. (Attachments: # 1 Exhibit 1 to the Estrich Declaration, # 2 Exhibit 2 to the Estrich Declaration, # 3 Exhibit 3 to the Estrich Declaration, # 4 Exhibit 4 to the Estrich Declaration, # 5 Exhibit 5 to the Estrich Declaration, # 6 Exhibit 6 to the Estrich Declaration, # 7 Exhibit 7 to the Estrich Declaration, # 8 Exhibit 8 to the Estrich Declaration, # 9 Exhibit 9 to the Estrich Declaration, # 10 Exhibit 10 to the Estrich Declaration, # 11 Exhibit 11 to the Estrich Declaration, # 12 Exhibit 12 to the Estrich Declaration, # 13 Exhibit 13 to the Estrich Declaration, # 14 Exhibit 14 to the Estrich Declaration, # 15 Exhibit 15 to the Estrich Declaration, # 16 Exhibit 16 to the Estrich Declaration, # 17 Exhibit 17 to the Estrich Declaration, # 18 Exhibit 18 to the Estrich Declaration, # 19 Exhibit 19 to the Estrich Declaration, # 20 Exhibit 20 to the Estrich Declaration, # 21 Exhibit 21 to the Estrich Declaration, # 22 Exhibit 22 to the Estrich Declaration, # 23 Exhibit 23 to the Estrich Declaration, # 24 Exhibit 24 to the Estrich Declaration, # 25 Exhibit 25 to the Estrich Declaration, # 26 Exhibit 26 to the Estrich Declaration, # 27 Exhibit 27 to the Estrich Declaration, # 28 Exhibit 28 to the Estrich Declaration, # 29 Exhibit 29 to the Estrich Declaration, # 30 Exhibit 30 to the Estrich Declaration, # 31 Exhibit 31 to the Estrich Declaration)(Related document(s) 2013 , 2054 , 2053 ) (Maroulis, Victoria) (Filed on 11/9/2012)
Estrich Declaration
Exhibit 11
3712
1
UNITED STATES DISTRICT COURT
2
NORTHERN DISTRICT OF CALIFORNIA
3
SAN JOSE DIVISION
4
5
6
APPLE INC., A CALIFORNIA
CORPORATION,
7
8
9
10
11
12
13
PLAINTIFF,
VS.
SAMSUNG ELECTRONICS CO.,
LTD., A KOREAN BUSINESS
ENTITY; SAMSUNG
ELECTRONICS AMERICA,
INC., A NEW YORK
CORPORATION; SAMSUNG
TELECOMMUNICATIONS
AMERICA, LLC, A DELAWARE
LIMITED LIABILITY
COMPANY,
14
DEFENDANTS.
)
)
)
)
)
)
)
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)
C-11-01846 LHK
SAN JOSE, CALIFORNIA
AUGUST 20, 2012
VOLUME 12
PAGES 3712-3940
15
16
17
TRANSCRIPT OF PROCEEDINGS
BEFORE THE HONORABLE LUCY H. KOH
UNITED STATES DISTRICT JUDGE
18
19
20
APPEARANCES ON NEXT PAGE
21
22
23
24
25
OFFICIAL COURT REPORTER: LEE-ANNE SHORTRIDGE, CSR, CRR
CERTIFICATE NUMBER 9595
IRENE RODRIGUEZ, CSR, CRR
CERTIFICATE NUMBER 8074
3713
1
A P P E A R A N C E S:
2
FOR PLAINTIFF
APPLE:
3
4
MORRISON & FOERSTER
BY: HAROLD J. MCELHINNY
MICHAEL A. JACOBS
RACHEL KREVANS
425 MARKET STREET
SAN FRANCISCO, CALIFORNIA
94105
5
6
7
8
FOR COUNTERCLAIMANT WILMER, CUTLER, PICKERING,
APPLE:
HALE AND DORR
BY: WILLIAM F. LEE
60 STATE STREET
BOSTON, MASSACHUSETTS 02109
9
BY: MARK D. SELWYN
950 PAGE MILL ROAD
PALO ALTO, CALIFORNIA
10
11
13
QUINN, EMANUEL, URQUHART,
OLIVER & HEDGES
BY: CHARLES K. VERHOEVEN
50 CALIFORNIA STREET, 22ND FLOOR
SAN FRANCISCO, CALIFORNIA 94111
14
BY:
12
FOR THE DEFENDANT:
94304
16
VICTORIA F. MAROULIS
KEVIN P.B. JOHNSON
555 TWIN DOLPHIN DRIVE
SUITE 560
REDWOOD SHORES, CALIFORNIA
17
BY:
15
18
19
20
21
22
23
24
25
94065
MICHAEL T. ZELLER
WILLIAM C. PRICE
SUSAN ESTRICH
865 SOUTH FIGUEROA STREET
10TH FLOOR
LOS ANGELES, CALIFORNIA 90017
3766
1
ADDITION," THAT SEEMS OKAY.
2
WITH REGARD TO TRADE DRESS DILUTION,
3
WHICH WAS NUMBER 55, I'M GOING TO DENY SAMSUNG'S
4
FIRST ARGUMENT.
5
CLAIM IS MISSING IS ACTUALLY MISSING.
6
PRECEDING SENTENCE, AND I DON'T THINK THERE'S
7
ANYTHING MISLEADING ABOUT THE JURY INSTRUCTION
8
ITSELF.
9
I DON'T BELIEVE THE LANGUAGE THE
IT'S IN THE
NOW, YOU DO ASK THAT AT THE END OF THE
10
INSTRUCTION, THE COURT JUST ADD A SENTENCE SAYING
11
"THESE FACTORS SHOULD BE WEIGHED BY YOU GIVEN THE
12
FACTS AND CIRCUMSTANCES OF THE CASE," I THINK
13
THAT'S REASONABLE.
14
THAT WOULD BE OKAY WITH ME.
WITH REGARD TO TRADE DRESS NOTICE AND
15
DAMAGES, I WOULD GRANT THAT.
16
COMPLETE INSTRUCTION WITH PART OF THE NINTH CIRCUIT
17
MODEL INSTRUCTION CLARIFYING WHAT STATUTORY NOTICE
18
IS, I'M WONDERING IF APPLE MIGHT BE WILLING TO
19
STIPULATE TO THAT SINCE IT'S MODEL JURY INSTRUCTION
20
LANGUAGE AND IT DOESN'T SEEM PARTICULARLY
21
CONTROVERSIAL.
22
YOU WANT THE CLEAN --
SO HEARING THAT, HOW MUCH TIME DO YOU
23
WANT TO SPEND ON THE HIGH PRIORITY OBJECTIONS AND
24
HOW MUCH TIME DO YOU WANT TO JUST MAKE YOUR RECORD?
25
MR. ZELLER:
JUST ONE MOMENT, YOUR HONOR?
3767
1
THE COURT:
2
(DISCUSSION OFF THE RECORD BETWEEN
3
DEFENSE COUNSEL.)
4
5
MR. JOHNSON:
8
9
YOUR HONOR, I THINK WE'RE
GOING TO TALK ABOUT THREE OR FOUR POTENTIALLY.
6
7
OKAY.
THE COURT:
OKAY.
ALL RIGHT.
CAN YOU
TELL ME -MS. MAROULIS:
YOUR HONOR, WITH RESPECT
TO EXHAUSTION, WITHOUT GIVING UP OUR OBJECTIONS,
10
CAN WE PLEASE INCLUDE, IN THE COURT'S CURRENT
11
INSTRUCTION, THE STATEMENT "WHERE THE SPECIAL
12
ACTIVITIES INCLUDE, FOR EXAMPLE, WHERE A PRODUCT IS
13
DELIVERED."
14
IN OTHER WORDS, WE'RE OBJECTING TO THE
15
INSTRUCTION, BUT IF THE COURT IS INTENDING TO KEEP
16
WHAT IT HAS, IF WE CAN INCLUDE DELIVERY AS ONE OF
17
THE ESSENTIAL ACTIVITIES.
18
19
20
THE COURT:
OKAY.
LET ME HEAR FROM -- IS
THERE ANY OBJECTION FROM APPLE ON THAT ONE?
MR. SELWYN:
YOUR HONOR, THERE IS AN
21
OBJECTION TO THAT.
22
THAT SPECIFIC EXAMPLE OF AN ACTIVITY IN THIS LIST.
23
THERE'S NO REASON TO SINGLE OUT
IF YOU WERE TO GO DOWN THAT PATH, THERE
24
ARE OTHER THINGS THAT WE WOULD WANT TO IDENTIFY AS
25
EXAMPLES THAT THE JURY CAN CONSIDER.
3768
1
THE COURT:
WELL, THERE ALREADY -- THIS
2
WAS LARGELY FROM YOUR -- FROM APPLE'S INSTRUCTION
3
OF NEGOTIATING A CONTRACT AND PERFORMING
4
OBLIGATIONS UNDER THE CONTRACT, AND I THINK
5
PERFORMING UNDER THE OBLIGATIONS OF THE CONTRACT
6
WOULD INCLUDE DELIVERY.
7
MR. SELWYN:
8
MS. MAROULIS:
9
THE COURT:
10
11
12
13
WE AGREE.
THAT'S FINE, YOUR HONOR.
SO PERFORMING OBLIGATIONS
UNDER THE CONTRACT?
MS. MAROULIS:
INCLUDING WHERE DELIVERY
TAKES PLACE.
MR. SELWYN:
THAT'S WHERE WE HAVE THE
14
DISAGREEMENT.
15
EXAMPLE AMONG MANY THAT CAN BE INCLUDED UNDER THE
16
RUBRIC OF PERFORMING UNDER THE CONTRACT.
17
THERE'S NO POINT IN SINGLING OUT ONE
THE COURT:
ALL RIGHT.
AND I BELIEVE
18
THAT THERE IS SOME CASE LAW IN SUPPORT OF THIS
19
EXACT LANGUAGE, RIGHT?
20
MR. SELWYN:
THERE IS.
21
MS. MAROULIS:
22
THE COURT:
23
NEXT, GO AHEAD, PLEASE.
24
YOU CAN CERTAINLY ARGUE THAT.
25
DOES FALL WITHIN PERFORMING THE OBLIGATIONS UNDER
YES, YOUR HONOR.
ALL RIGHT.
SO THAT'S DENIED.
I MEAN, IT
3769
1
THE CONTRACT.
2
OKAY.
3
MR. ZELLER:
4
WHAT ELSE?
HONOR.
5
THE COURT:
6
MR. ZELLER:
7
JUST A FEW POINTS, YOUR
OKAY.
FIRST WITH RESPECT TO THE
INSTRUCTION ON FUNCTIONALITY FOR A DESIGN PATENT.
8
THE COURT:
39?
9
MR. ZELLER:
YES.
10
THE COURT:
OKAY.
11
MR. ZELLER:
BUT IT'S ACTUALLY A
12
VARIATION ON SOMETHING THAT WE HAD RAISED.
13
THE COURT WILL RECALL THAT UNDER
14
RICHARDSON, AS WELL AS SOME OTHER FEDERAL CIRCUIT
15
AUTHORITY, THE INFRINGEMENT COMPARISON THAT HAS TO
16
BE DONE BY THE JURY NEEDS TO FACTOR OUT ELEMENTS
17
THAT THEY FIND TO BE FUNCTIONAL, AND SO PROCEEDING
18
FROM THE PREMISE THAT THEY'RE NOT GOING TO BE
19
INSTRUCTED AS TO WHAT IS FUNCTIONAL AND WHAT ISN'T,
20
BUT OF COURSE THAT WILL BE LEFT UP TO THEM TO
21
DETERMINE, WE BELIEVE THEY NEED TO BE INSTRUCTED
22
THAT ANYTHING THAT THEY FIND TO BE FUNCTIONAL UNDER
23
THE COURT'S DEFINITION SHOULD NOT BE CONSIDERED FOR
24
PURPOSES OF THE INFRINGEMENT COMPARISON.
25
AND WE DON'T THINK -- AND WE LOOKED FOR
3770
1
EQUIVALENT LANGUAGE ALONG THOSE LINES AND COULD NOT
2
FIND ANY IN THE INSTRUCTIONS, YOUR HONOR.
3
THE COURT:
SO WHAT -- I'M SORRY.
TELL
4
ME EXACTLY WHAT WOULD YOU LIKE ADDED TO INSTRUCTION
5
NUMBER 39?
6
MR. ZELLER:
THAT FOR ANY ELEMENTS OR
7
FEATURES THAT THE JURY DETERMINES ARE FUNCTIONAL,
8
THAT THE JURY SHOULD FACTOR OUT SIMILARITIES
9
BETWEEN THE ACCUSED PRODUCTS AND THE ASSERTED
10
DESIGN PATENTS FOR PURPOSES OF DETERMINING WHETHER
11
OR NOT THE SIMILARITIES ARE DECEPTIVE.
12
THE COURT:
13
MR. ZELLER:
14
OKAY.
IN OTHER WORDS, THE
APPLICATION OF THE INFRINGEMENT STANDARD.
THE COURT:
15
SORRY, BUT CAN YOU GIVE ME
16
THAT AGAIN?
FOR ANY ELEMENTS OR FEATURES THE JURY
17
DETERMINES ARE FUNCTIONAL, THE JURY SHOULD FACTOR
18
OUT ANY SIMILARITIES -- CAN YOU GO AHEAD?
MR. ZELLER:
19
BASED ON -- OR ANY
20
SIMILARITIES BETWEEN THE ACCUSED DEVICE AND THE
21
DESIGN PATENT BASED UPON THOSE ELEMENTS OR
22
FEATURES.
23
24
25
THE COURT:
PATENT BASED UPON THOSE
ELEMENTS OR FEATURES.
OKAY.
LET ME HEAR FROM APPLE.
WHAT'S
3771
1
YOUR VIEW ON THAT PARTICULAR LANGUAGE?
2
3
MR. JACOBS:
WE'RE IN THE WRONG INSTRUCTION, YOUR HONOR.
4
5
WELL, I THINK, FIRST OF ALL,
I BELIEVE THAT 39 IS ON INVALIDITY, LACK
OF ORNAMENTALITY.
6
THE COURT:
WELL, THE LACK OF
7
ORNAMENTALITY, IT DOES INCLUDE A LOT OF
8
FUNCTIONAL -- UNFORTUNATELY, THAT IS WHERE WE PUT A
9
LOT OF FUNCTIONAL DISCUSSION.
10
MR. JACOBS:
SO I THINK THAT THE OTHER --
11
THE FUNDAMENTAL PROBLEM WITH IT IS THAT THE
12
PRINCIPLE THAT SAMSUNG WOULD LIKE TO RELY ON COMES
13
OUT OF A LINE OF CASES THAT JUST DOES NOT APPLY TO
14
OUR SITUATION HERE.
IT'S VERY CLEAR UNDER EGYPTIAN GODDESS
15
16
THAT YOU LOOK AT THE DESIGN AS A WHOLE AND YOU HAVE
17
AN ORDINARY OBSERVER TEST LOOKING AT THE DESIGN AS
18
A WHOLE AND YOU DON'T TRY TO ELIMINATE --
19
THE COURT:
20
YOU'RE GOING.
21
UNDER SUBMISSION.
ALL RIGHT.
MR. JACOBS:
23
THE COURT:
25
I UNDERSTAND WHERE
LET ME JUST TAKE THAT
OKAY?
22
24
OKAY.
THANK YOU, YOUR HONOR.
ALL RIGHT.
GO AHEAD.
WHAT
ELSE?
MR. ZELLER:
A SECOND ISSUE, YOUR HONOR,
3772
1
IS WE WOULD ASK FOR CLARIFICATION OF THE
2
OBVIOUSNESS INSTRUCTION.
3
4
THE COURT:
ALL RIGHT.
ONE MORE QUESTION ON 39.
5
MR. ZELLER:
6
THE COURT:
7
TECHNOLOGIES FACTORS IN THERE?
8
MR. ZELLER:
9
THE COURT:
10
MR. ZELLER:
12
THE COURT:
13
MR. ZELLER:
DID YOU STILL WANT THE PGH
OR NOT?
YES.
OBVIOUSLY YOU'D RATHER HAVE
YES, YOUR HONOR.
BUT LET ME HEAR -THE ANSWER TO THE QUESTIONS
ARE YES TO BOTH.
15
THE COURT:
16
MR. ZELLER:
17
SURE.
YOUR SUGGESTED LANGUAGE.
11
14
LET ME ASK YOU
OKAY.
WITH RESPECT TO INSTRUCTION
NUMBER 38 ON OBVIOUSNESS --
18
THE COURT:
19
MR. ZELLER:
OKAY.
-- WE WOULD ASK THAT IT BE
20
CLARIFIED THAT OBVIOUSNESS CAN BE DETERMINED OR
21
FOUND BASED NOT JUST SIMPLY ON A COMBINATION OF
22
REFERENCES, BUT ON A SINGLE REFERENCE.
23
24
25
AND A COUPLE OF POINTS I WOULD ELABORATE
ON, YOUR HONOR.
THE COURT:
HOW IS THAT DIFFERENT THAN
3849
1
APPLICATION, WOULD REALLY MAKE IT DIFFICULT FOR THE
2
JURY.
3
4
THE COURT:
RIGHT.
I'M NOT GOING TO DO
THAT.
5
OKAY.
WHAT ELSE?
6
MS. MAROULIS:
STILL ON '381, THERE IS A
7
PRODUCT CALLED GEM.
IN THEIR INFRINGEMENT
8
CONTENTIONS, APPLE DID NOT ACCUSE GEM, AND I'M
9
GOING TO HAND TO THE COURT AND COUNSEL APPLE'S
10
INFRINGEMENT CONTENTIONS, EXHIBIT 20, WHERE YOU CAN
11
SEE --
12
MAY I APPROACH, YOUR HONOR?
13
THE COURT:
14
MS. MAROULIS:
15
MR. JACOBS:
-- GEM WAS LISTED AS N/A
WITH RESPECT TO '381.
16
YES, PLEASE.
YOUR HONOR RULED ON PHONES
17
SOME MONTHS AGO NOW AND SAMSUNG DID NOT MOVE ON THE
18
GEM.
19
EXPLAINING WHY THE GEM DID NOT INFRINGE.
20
SAMSUNG'S EXPERT WROTE A REPORT ON THE GEM
SAMSUNG THEN HAD A FURTHER DISCUSSION
21
WITH THE COURT ABOUT THE PHONES ISSUE AND DID NOT
22
RAISE THE GEM.
23
SO NOW WE ARE AT THE END OF TRIAL, THERE
24
WAS NO MOTION ON THE GEM, WE PUT ON OUR PROOF ON
25
THE GEM, IT'S TOO LATE NOW TO SAY IT WASN'T IN THE
3850
1
2
INFRINGEMENT CONTENTIONS.
I WOULD NOTE THAT ONE OF THE PHONES WAS
3
RULED OUT BECAUSE WE FLIPPED THE ORDER OF THE TERMS
4
AND WE DIDN'T COME BACK TO THE COURT ON THAT AND
5
ASK FOR RECONSIDERATION.
6
THE COURT:
7
MR. JACOBS:
IT WAS --
WHICH PHONE WAS THAT?
SHOWCASE.
I THINK WE SAID
8
THE SHOWCASE, THE GALAXY S SHOWCASE, AND IT'S THE
9
SHOWCASE GALAXY S.
10
11
THE COURT SAID WE HADN'T PUT IN
OUR INFRINGEMENT CONTENTIONS.
WE MOVED ON.
NOW FOR SAMSUNG TO COME IN AT THE LAST
12
MINUTE AND SAY, "WE FORGOT TO MOVE ON THIS, BUT
13
IT'S OUT OF THE CASE," THAT'S QUITE UNFAIR.
14
MS. MAROULIS:
WE ACTUALLY MOVED FOR JMOL
15
AND I THINK WE PREVIOUSLY OBJECTED TO THAT, SO THIS
16
IS DEFINITELY NOT THE FIRST TIME THAT COUNSEL IS
17
HEARING ABOUT IT.
18
THE COURT:
WELL, I GUESS WHAT'S
19
CONFUSING TO ME IS IF THESE ARE THE INFRINGEMENT
20
CONTENTIONS, GEM IS ON HERE.
21
22
23
24
25
MS. MAROULIS:
YOUR HONOR.
NOT WITH RESPECT TO '381,
IT SAYS N/A.
THE COURT:
OH, I SEE WHAT YOU'RE SAYING.
I THINK IT'S UNTIMELY FOR THIS REQUEST.
OKAY.
GO AHEAD.
WHAT'S NEXT?
3851
1
MS. MAROULIS:
YOUR HONOR, CAN WE SKIP A
2
LITTLE BIT, THERE'S A PRETTY SIMPLE ISSUE, BEFORE
3
WE GET TO DAMAGES, WHICH IS WAIVER, WHICH IS THE
4
VERY LAST PORTION OF THE VERDICT FORM.
5
WAIVER IS AN EQUITABLE ISSUE, AND YOUR
6
HONOR DID NOT ISSUE JURY INSTRUCTIONS ON WAIVER
7
BECAUSE IT IS AN EQUITABLE ISSUE AND SHOULD NOT GO
8
BEFORE THE JURY.
9
IT BE REMOVED FROM THE VERDICT FORM.
10
SO WE RESPECTFULLY REQUEST THAT
THE COURT:
LET ME ASK, AND I APOLOGIZE
11
IF THIS WAS A MISTAKE, BUT THE PRELIMINARY
12
INSTRUCTIONS, WE TALKED ABOUT THE SUMMARY OF
13
CONTENTIONS AND ACTUALLY INCLUDED ANTITRUST, PATENT
14
EXHAUSTION, WAIVER, AND BREACH OF CONTRACT.
15
SO IT WAS IN THAT PRELIMINARY --
16
MS. MAROULIS:
WE'VE ALWAYS MAINTAINED,
17
SAMSUNG HAS ALWAYS MAINTAINED THAT ESTOPPEL AND
18
WAIVER SHOULD NOT BE BEFORE THE JURY, BUT BECAUSE
19
WE WERE NEGOTIATING JURY INSTRUCTIONS.
20
COMPETING LANGUAGE SO THAT IF THE COURT DECIDED IT
21
DOES GO, THERE'S SOMETHING FOR THE JURY TO LOOK AT.
22
WE PROPOSED
BUT THE COURT IS NOT SENDING THIS ISSUE
23
TO THE JURY, SO IT WOULD NOT BE USEFUL TO HAVE THIS
24
IN THE JURY VERDICT FORM.
25
MR. SELWYN:
YOUR HONOR, IT WAS IN THE
3852
1
PRELIMINARY JURY INSTRUCTIONS, YOU'RE QUITE RIGHT.
2
IN THE BROADCOM CASE, WHICH IS BASED ON
3
SIMILAR STANDARD SETTING AS THIS ONE, THE COURT
4
ALSO SOUGHT AN ADVISORY VERDICT ON THE WAIVER
5
ISSUE.
6
WE BELIEVE, CONSISTENT WITH THE
7
PRELIMINARY INSTRUCTIONS, IT SHOULD GO TO THE JURY.
8
9
10
THE COURT:
YOU KNOW, I ACTUALLY DON'T
WANT ANY ADVISORY VERDICTS.
AND I RECOGNIZE I DID INCLUDE IT IN THE
11
PRELIMINARY.
I DON'T HAVE A WAIVER INSTRUCTION IN
12
THIS FINAL SET.
13
I THINK I'M GOING TO TAKE IT OUT.
14
MS. MAROULIS:
15
THE COURT:
16
MS. MAROULIS:
OKAY?
THANK YOU, YOUR HONOR.
ALL RIGHT.
WHAT ELSE?
RETURNING BACK TO THE
17
BEGINNING OF THE FORM, AGAIN, BECAUSE WE'RE LODGING
18
OUR OBJECTIONS, WE PROPOSE TO INCLUDE VERSION,
19
ANDROID VERSION ON DIFFERENT PHONES THAT ACTUALLY
20
ARE IN THE CASE.
21
WE RESPECTFULLY REQUEST THAT IT BE INCLUDED.
WE SEE THAT IT'S NOT IN THERE AND
22
THE COURT:
23
WHAT'S NEXT?
24
MS. MAROULIS:
25
OKAY.
THAT'S DENIED.
WE'RE MOVING ON TO THE
DAMAGES SECTION, AND WITH RESPECT TO DAMAGES, AS
3853
1
YOUR HONOR NOTED, IT'S A COMPLICATED ISSUE, AND ONE
2
THING THAT WE NEED TO ADD TO THE EXISTING DAMAGES
3
CHART -- AND I WAS TRYING TO SCRATCH IT OUT BUT
4
DIDN'T HAVE A CHANCE TO FULLY FIGURE OUT HOW TO DO
5
IT -- BUT THERE ARE THREE DIFFERENT THEORIES ON
6
WHICH APPLE IS SEEKING DAMAGES, AND SAMSUNG
7
INDICATED IN ITS PRETRIAL SUBMISSIONS AND ITS JMOLS
8
THAT THERE ARE INFIRMITIES WITH EACH OF THEM.
9
FOR IT TO BE PROPERLY REVIEWED, TO THE
10
EXTENT THERE'S A REVIEW OF THESE, WE NEED TO
11
IDENTIFY WHICH DAMAGES THEORIES APPLE IS SEEKING
12
DAMAGES ON AND WHAT THE JURORS WOULD AWARD, IF
13
ANYTHING.
14
SO ONE WAY TO DO IT WOULD BE TO ADD
15
COLUMNS TO THE EXISTING CHART, WHICH IS REASONABLE
16
ROYALTY PROFITS AND LOST PROFITS; OR POTENTIAL
17
ALTERNATIVE, WHAT WE SUGGEST IN OUR VERDICT FORM IS
18
TO ASK AN INTERROGATORY, WHICH IS "OF THE NUMBER
19
THAT YOU GAVE, WHAT IS THE BREAKDOWN BETWEEN THE
20
THREE DIFFERENT THEORIES?" TO HAVE THAT IN THE
21
RECORD AND TO UNDERSTAND WHAT THE JURY DID.
22
THE SECOND ISSUE WITH THIS IS THAT IT
23
DOESN'T TIE PRODUCTS TO THE PATENT.
THERE ARE SOME
24
PRODUCTS ON WHICH APPLE IS SEEKING MULTIPLE
25
THEORIES AND MULTIPLE PATENTS AND ACCUSING THEM OF
3854
1
2
DIFFERENT I.P.
SO IDEALLY WE'D LIKE TO HAVE A CHART OR
3
SOME FORM THAT ADDRESSES ALL OF THESE ISSUES SO THE
4
RECORD IS CLEAR.
5
AND WE IDENTIFIED ISSUES THAT WE HAVE
6
WITH IT, BUT HAVE NOT YET PROPOSED A SOLUTION.
7
THIS IS ONE PLACE WHERE POTENTIALLY IF WE CAN HAVE
8
A FEW HOURS TO BRAINSTORM AND SUGGEST SOMETHING TO
9
THE COURT, IT MIGHT BE USEFUL.
10
THE COURT:
I DON'T WANT A MATRIX THAT'S
11
SO COMPLICATED.
12
TRADE DRESSES BROKEN DOWN BY THIS MANY NUMBER OF
13
PRODUCTS I THINK WOULD BE OVERCOMPLICATED.
14
TO HAVE SEVEN PATENTS AND FOUR
MS. MAROULIS:
WE DO NEED TO INDICATE
15
BOTH WHICH ENTITY THE DAMAGES ARE BEING SOUGHT FROM
16
AND WHICH THEORY OF DAMAGES IS BEING RELIED ON,
17
BECAUSE THEY ALL HAVE DIFFERENT LEGAL FRAMEWORK,
18
AND TO THE EXTENT THAT THE JURY GETS IT WRONG OR
19
DOES NOT APPLY THE CORRECT THEORY OR WHERE WE
20
BELIEVE THE THEORY HAS NOT BEEN SUFFICIENTLY
21
PROVEN, WE NEED THAT RECORD.
22
THE COURT:
WELL, WOULDN'T THAT BE
23
REFLECTED IN THE EARLIER PAGES?
BECAUSE THE
24
EARLIER PAGES ARE REQUIRING REQUIREMENTS BY
25
PRODUCT, BY PATENT, BY DEFENDANT.
3855
1
SO I'M HOPING THAT THE FIRST 17 PAGES,
2
FROM THE FIRST 17 PAGES AND THE FINAL NUMBER, IF
3
THE JURY PICKS A NUMBER, THAT YOU CAN SORT OF WORK
4
BACKWARDS AND FIGURE OUT WHICH I.P. WAS ACTUALLY
5
FOUND VALID AND INFRINGED, WHICH PRODUCT, WHICH
6
ENTITY.
7
MR. JACOBS:
THIS IS A MATTER OF FINDING
8
A HAPPY MEDIUM, YOUR HONOR, AND OVER DETAIL GIVES
9
RISE TO CLAIMS OF ERROR, TOO, BECAUSE IF THE JURY
10
DOES THINGS AT A VERY GRANULAR LEVEL THAT PRESENT
11
INCONSISTENCIES, THEN IT JUMPS OUT.
12
AND WE THINK THIS IS TOO SPECIFIC.
WE
13
OBJECT TO THIS LEVEL OF SPECIFICITY IN QUESTION 25,
14
FOR EXAMPLE.
15
16
17
BUT TO GO ANY DEEPER WOULD REALLY PRESENT
VERY SERIOUS PROBLEMS.
MS. MAROULIS:
YOUR HONOR, TO ILLUSTRATE
18
AN ISSUE THAT WE MIGHT HAVE IF WE DON'T IDENTIFY
19
THE THEORIES, FOR EXAMPLE, PROFITS ARE NOT
20
APPROPRIATE FOR UTILITY PATENTS.
21
INCLUDE PROFITS IN THE UTILITY PATENT
22
DETERMINATION, THAT IS NOT PROPER.
23
THE COURT:
24
MR. JACOBS:
25
IF THE JURY IS TO
UM-HUM.
THE JURY WILL GIVE US
AMOUNTS, AND THAT'S ALL THAT WE SHOULD ASK THEM TO
3856
1
2
3
DO.
THE COURT:
AS YOU MIGHT IMAGINE, THIS
WAS THE PAGE THAT TOOK THE MOST TIME TO FIGURE OUT.
4
MS. MAROULIS:
YES.
5
THE COURT:
6
BUT OVERALL, I THINK THAT THIS MAY BE THE
AND IT IS COMPLICATED.
7
BEST WAY TO DO IT, ASSUMING THAT THE JURY IS GOING
8
TO FOLLOW THE JURY INSTRUCTIONS AND NOT DO ANYTHING
9
INAPPROPRIATE IN AWARDING IMPROPER DAMAGES FOR ANY
10
PARTICULAR CLAIM AND NOT GIVING DOUBLE RECOVERY.
11
MR. JACOBS:
12
MS. MAROULIS:
YOUR HONOR -WOULD YOUR HONOR CONSIDER
13
INCLUDING FORMER QUESTION 23 FROM THE SAMSUNG FORM,
14
WHICH IS -- SAY, "IF YOU FIND ANY DAMAGES, CAN YOU
15
SEPARATE IT BY ENTITY?"
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MR. JACOBS:
IT'S A YES OR NO QUESTION.
AND THE PROBLEM THERE IS
17
THAT MR. WAGNER, FROM THE ACCOUNTING PERSPECTIVE,
18
TESTIFIED THERE REALLY WAS NO BASIS TO DO THAT.
19
MS. MAROULIS:
YOUR HONOR, WE'RE NOT
20
GOING TO ARGUE ABOUT THE TESTIMONY HERE.
21
MR. WAGNER PROVIDED A ROADMAP FOR THE JURY.
22
BUT THE POINT IS THAT IF YOU CAN'T FIND
23
DAMAGES ATTRIBUTABLE JUST TO ONE SINGLE ENTITY, IF
24
YOU ASSUME THREE DIFFERENT DEFENDANTS, THAT
25
DEFENDANTS HAVE AN OPPORTUNITY TO KNOW WHAT DAMAGES
3857
1
ARE AWARDED AGAINST THEM.
2
MR. JACOBS:
NO PREJUDICE HERE, YOUR
3
HONOR.
4
BALANCE SHEETS, CONSOLIDATED FINANCIALS, CONTROLLED
5
BY SAMSUNG ELECTRONICS FOR BOTH ENTITIES, VERY
6
CLOSE CONTROL.
7
IT'S A CONSOLIDATED ENTITY, CONSOLIDATED
THAT WAS TESTIFIED TO.
THE COURT:
WELL, I'M ALSO HOPING THAT
8
PAGES 1 THROUGH 17 WILL ALSO HELP IN INFORMING AS
9
WELL, BECAUSE IT COULD BE THAT THE JURY FINDS ONE
10
OR MORE OF THESE ENTITIES NOT LIABLE AT ALL BASED
11
ON THE EVIDENCE, WHICH WAS REALLY GEARED MORE
12
TOWARDS SEC ANYWAY.
13
LET ME ASK YOU, WITH REGARD TO HOW I
14
SHOULD HANDLE THE TRADE DRESS CLAIMS AGAINST THE
15
TABLETS, I GUESS I SHOULD THEN JUST DIVIDE UP -MS. MAROULIS:
16
17
YES, YOUR HONOR, THAT WAS
ONE OF THE ISSUES THAT WE NOTED IN QUESTION 19.
18
THERE WAS A TAB TRADE DRESS THAT REALLY
19
PROBABLY SHOULDN'T BE THERE BECAUSE YOU'RE ALREADY
20
ASKING QUESTION 18 OF THE TAB TRADE DRESS.
21
22
23
MR. JACOBS:
AND THEN WHAT YOUR HONOR
THE COURT:
ALTHOUGH 18 IS DILUTION AND
COULD --
24
21 AND 22 ARE INFRINGEMENT.
25
OUT DIFFERENTLY.
THAT'S WHY IT'S BROKEN
3858
1
MS. MAROULIS:
2
MR. JACOBS:
3
THE COURT:
BUT I DO THINK IF WE DO AN
18 STYLE BREAKOUT --
4
19 IS FOR DILUTION.
NO, 19 IS INDUCEMENT.
SO THE
5
WAY IT'S WORKED OUT IS ON PAGE 10, 12 AND 13 ARE
6
GOING TO, IS THIS PROTECTABLE?
7
THIS FAMOUS?
AND THEN 14 SAYS IS
8
AND THEN 15 SAYS, "IF YOU FIND IT
9
PROTECTABLE AND FAMOUS, THEN HAS THERE BEEN
10
DILUTION OF THE REGISTERED PHONE DRESS?"
11
12
AND THEN THE NEXT QUESTION IS, "HAS THERE
BEEN DILUTION OF THE UNREGISTERED IPHONE 3 DRESS?"
13
AND THEN THE NEXT QUESTION IS, "HAS THERE
14
BEEN DILUTION OF THE UNREGISTERED COMBINATION PHONE
15
DRESS?"
16
AND THEN IT GOES TO THE PATENT.
AND THEN AFTER THAT, WE GO TO INDUCEMENT
17
AND WILLFULNESS AND THEN TRADE DRESS AND
18
INFRINGEMENT.
SO THAT'S HOW IT'S ORGANIZED.
19
MR. JACOBS:
20
THE COURT:
21
SPLIT UP THESE TABS.
22
MR. JACOBS:
UNDERSTOOD.
I'LL FIGURE OUT SOME WAY TO
I THINK IF YOU SPLIT OUT THE
23
TABS, YOU CAN MAKE THE REST OF THE CHART TWO
24
COLUMNS AND HAVE TWO COLUMNS FOR THE TABS, OR THREE
25
COLUMNS WITH A SHADED BOX FOR THE TABS.
3859
1
2
A COUPLE OF THINGS ON OUR END, YOUR
HONOR.
3
MS. MAROULIS:
I'M NOT DONE.
4
WITH RESPECT TO TRADE DRESS, THERE WERE A
5
COUPLE OF PREDICATE QUESTIONS WE INCLUDED IN THE
6
VERDICT FORM AS TO DAMAGES.
7
APPROPRIATE.
8
9
10
11
WE BELIEVE THEY'RE
FOR EXAMPLE, YOU HAVE TO SHOW ACTUAL HARM
FOR THE SPECIFIC TRADE DRESS DAMAGES, AND THAT WAS
FORMER QUESTION 17 ON OUR FORM.
AND SIMILARITY, YOU NEED TO SHOW ACTUAL
12
CONFUSION WITH INTENT TO DECEIVE.
13
PREDICATE FOR DILUTION DAMAGES.
14
AGAIN, THIS IS A
SO WE RESPECTFULLY REQUEST THAT THEY BE
15
PUT BACK IF POSSIBLE, RECOGNIZING THAT THE FORM
16
IS -- HAS TO HAVE SOME LIMITATIONS, BUT BECAUSE
17
THOSE ARE PREDICATE FOR DAMAGES, WE THINK IT'S
18
NECESSARY FOR TRADE DRESS.
19
THE COURT:
I'M GOING TO ASSUME A JURY IS
20
GOING TO FOLLOW JURY INSTRUCTIONS AND MAKE THE
21
REQUIRED FINDINGS BEFORE THEY MAKE ANY LIABILITY
22
DETERMINATION IN AWARDING DAMAGES.
23
MS. MAROULIS:
OKAY?
AND FINALLY, YOUR HONOR,
24
WITH RESPECT TO TRADE DRESS INDUCEMENT, SAMSUNG
25
BELIEVES THAT THERE'S NO SUCH THEORY UNDER NINTH
1
2
3
CERTIFICATE OF REPORTER
4
5
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7
8
9
I, THE UNDERSIGNED OFFICIAL COURT
REPORTER OF THE UNITED STATES DISTRICT COURT FOR
10
THE NORTHERN DISTRICT OF CALIFORNIA, 280 SOUTH
11
FIRST STREET, SAN JOSE, CALIFORNIA, DO HEREBY
12
CERTIFY:
13
THAT THE FOREGOING TRANSCRIPT,
14
CERTIFICATE INCLUSIVE, CONSTITUTES A TRUE, FULL AND
15
CORRECT TRANSCRIPT OF MY SHORTHAND NOTES TAKEN AS
16
SUCH OFFICIAL COURT REPORTER OF THE PROCEEDINGS
17
HEREINBEFORE ENTITLED AND REDUCED BY COMPUTER-AIDED
18
TRANSCRIPTION TO THE BEST OF MY ABILITY.
19
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21
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/S/
_____________________________
LEE-ANNE SHORTRIDGE, CSR, CRR
CERTIFICATE NUMBER 9595
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DATED:
AUGUST 20, 2012
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