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

Filing 621

OPPOSITION to ( #532 Apple's Motion to Strike Evidence Not Disclosed as Required by Patent Local Rule 4-3(b) ) filed by Samsung Electronics Co. Ltd.. (Attachments: #1 Declaration of Todd M. Briggs, #2 Exhibit A, #3 Exhibit B, #4 Exhibit C, #5 Exhibit D, #6 Exhibit E, #7 Exhibit F, #8 Exhibit G)(Briggs, Todd) (Filed on 1/12/2012) Modified text on 1/13/2012 (dhm, COURT STAFF).

1 QUINN EMANUEL URQUHART & SULLIVAN, LLP
Charles K. Verhoeven (Bar No. 170151)
[e-mail]
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50 California Street, 22nd Floor
3 San Francisco, California 94111
Telephone: [phone]
4 Facsimile: [phone]
5

Kevin P.B. Johnson (Bar No. 177129
[e-mail]
Victoria F. Maroulis (Bar No. 202603)
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[e-mail]
555 Twin Dolphin Drive, 5th Floor
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Redwood Shores, California 94065-2139
[phone]
8 Telephone:
Facsimile:
[phone]
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Michael T. Zeller (Bar No. 196417)
[e-mail]
865 S. Figueroa St., 10th Floor
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Los Angeles, California 90017
12 Telephone: [phone]
Facsimile: [phone]
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14 Attorneys for SAMSUNG ELECTRONICS CO.,
LTD., SAMSUNG ELECTRONICS AMERICA,
15 INC. and SAMSUNG
TELECOMMUNICATIONS AMERICA, LLC
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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA, SAN JOSE DIVISION

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20 APPLE INC., a California corporation,

CASE NO. 11-cv-01846-LHK

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SAMSUNG’S OPPOSITION TO APPLE
INC.’S MOTION TO STRIKE
EVIDENCE NOT DISCLOSED AS
REQUIRED BY PATENT LOCAL RULE
4-3(b)

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Plaintiff,
vs.

23 SAMSUNG ELECTRONICS CO., LTD., a
Korean business entity; SAMSUNG
24 ELECTRONICS AMERICA, INC., a New
York corporation; SAMSUNG
25 TELECOMMUNICATIONS AMERICA,
LLC, a Delaware limited liability company,
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Defendant.
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Date: January 20, 2012
Time: 10:00 a.m.
Place: Courtroom 8, 4th Floor
Judge: Hon. Lucy H. Koh

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Case No. 11-cv-01846-LHK
SAMSUNG'S OPPOSITION TO APPLE INC.'S MOTION TO STRIKE

1 I.

INTRODUCTION

2

Samsung brings this opposition to Apple’s Motion to Strike Evidence Not Disclosed as

3 Required by Patent Local Rule 4-3(b). In its motion, Apple seeks to strike relevant and admissible
4 evidence from Samsung’s expert that rebuts extrinsic evidence from Apple’s expert that was
5 disclosed less than two hours before the filing of the parties’ Joint Claim Construction Statement.
6 Samsung’s rebuttal evidence is proper and helpful to the Court in determining the proper
7 construction of the term “applet” from the ‘711 patent. Incredibly, Apple also seeks to strike
8 deposition testimony from its own expert and the inventor of the ‘711 patent because they were
9 not disclosed in the parties’ Joint Claim Construction Statement, even though these depositions
10 took place after the filing of the Joint Claim Construction Statement. Apple agreed to the process
11 and sequence, but after having seen the rebuttal evidence, now desperately seeks to keep it from
12 the Court. As explained below, all of this evidence is proper and none should be stricken.
13 II.

FACTUAL BACKGROUND

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Apple’s “factual background” conveniently omits key facts relating to its motion. The

15 complete factual background is set forth below.
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The parties exchanged their Patent Local Rule 4-2 disclosures (“Preliminary Claim

17 Constructions and Identifications of Intrinsic and Extrinsic Evidence”) on October 31, 2011. Prior
18 to that date, the parties agreed they would not exchange expert declarations with those disclosures.
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19 Ex. A, B, and C. This agreement is reflected in Apple’s Patent L.R. 4-2 cover pleading which

20 states: “In accordance with the parties’ agreement, the exchange of extrinsic evidence from expert
21 witnesses has been deferred until the submission of the Patent Local Rule 4-3 Joint Claim
22 Construction Statement.” Ex. A. Samsung also stated in its Patent L.R. 4-2 disclosure that
23 “Samsung expressly reserves the right to identify and use experts in rebuttal should Apple identify
24 experts for claim construction. Any such expert witnesses may also offer testimony, if necessary,
25 to respond to Apple’s constructions or expert(s), or for the Court’s benefit.” Ex. B.
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Citations to "Ex. __" refer to exhibits attached to the Declaration of Todd M. Briggs filed
concurrently herewith.

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Case No. 11-cv-01846-LHK
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1

Following the Patent L.R. 4-2 exchange, the parties met and conferred again and agreed

2 upon a schedule for the submission of expert declarations in support of the parties’ claim
3 constructions. The parties agreed that Apple would serve declarations from its claim construction
4 experts on November 14, 2011, the same day the Joint Claim Construction Statement was due.
5 The parties further agreed that Samsung would serve rebuttal claim construction declarations from
6 its experts after November 14, 2011.

This agreement is memorialized in the Joint Claim

7 Construction Statement:
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Apple will submit declarations from, and may call as witnesses at the Claim
Construction Hearing, Richard Gitlin, Ph.D. and Tony Givargis, Ph.D. Dr.
Gitlin will provide his expert opinion that a person of ordinary skill in the
art at the time of the patent application would have interpreted the term
“symbol” in U.S. Patent No. 7,200,792 according to Apple’s proposed
construction, as will be set forth in more detail in an expert declaration
being served on Samsung’s counsel today. Dr. Givargis will provide his
expert opinion that a person of ordinary skill in the art at the time of the
patent application would have interpreted the term “applet” in U.S. Patent
No. 7,698,711 according to Apple’s proposed construction, as will be set
forth in more detail in another expert declaration also being served on
Samsung’s counsel today.

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Samsung will submit declarations from, and may call as witnesses at the
Claim Construction Hearing, Tipton Cole and Richard Dale Wesel, Ph.D.
Mr. Cole will provide an expert declaration in response to Dr. Givargis’s
opinion on “applet” in U.S. Patent No. 7,698,711, and Dr. Wesel will
provide an expert declaration in response to Dr. Gitlin’s opinion on
“symbol” in U.S. Patent No. 7,200,792.

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Ex. C. As shown above, the parties did not place any limitations on the extrinsic evidence that
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their experts could rely in support of their affirmative or rebuttal declarations.
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Apple served Dr. Givargis’s declaration on November 14, 2011 at 10:17 pm. Ex. D. In his
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declaration, Dr. Givargis provided new extrinsic evidence in the form of his testimony of what one
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of ordinary skill in the art would have understood the term “applet” to mean and his interpretation
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of numerous extrinsic references. In particular, Dr. Givargis opined that extrinsic references cited
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by Apple indicating that one type applet may be operating system independent, indicates that all
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types of applets must be operating system independent. Ex. F. This testimony is important
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because the parties central dispute is whether an “applet” must be construed to be operating
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system independent or whether it may be either operating system independent or dependent. See,
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Case No. 11-cv-01846-LHK
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1 e.g., Dkt. 466 and 557. Less than two hours later, at 11:54 pm, the parties filed their Joint Claim
2 Construction Statement. Dkt. 394 and Ex. E.
3

Pursuant to the parties’ agreement, Samsung served its rebuttal claim construction

4 declaration from Mr. Cole on November 28, 2011. In his rebuttal declaration, Mr. Cole addressed
5 the new extrinsic evidence presented in Dr. Givargis’s declaration and provided evidence rebutting
6 Dr. Givargis’s new extrinsic evidence.
7

Dr. Givargis was deposed on December 6, 2011. During the deposition, Dr. Givargis was

8 examined by Samsung’s counsel and Apple’s counsel regarding Mr. Cole’s declaration and
9 exhibits. Ex. G.
10 III.

ARGUMENT

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A.

Apple Should Not Be Allowed to Renege on its Agreement

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The Court should not strike any portions of Mr. Cole’s declaration, any exhibits to that
declaration, or any portions of Samsung’s Opening Claim Construction Brief. The parties agreed
that Samsung could serve a rebuttal expert declaration after the filing of the parties’ Joint Claim
Construction Statement. The parties’ agreement did not place any limitations on the intrinsic or
extrinsic evidence that their experts could rely on in their affirmative or rebuttal declarations. Nor
did their agreement place any limitations on the testimony that either expert could provide in their
declarations, so long as it was related to the meaning of the term “applet” in the ‘711 patent.
Apple cannot now ignore this agreement and attempt to preclude Mr. Cole’s rebuttal evidence
because it damages Apple’s claim construction position on the term “applet.”
B.

The Evidence Apple Seeks to Strike Was Not and Could Not Have Been
Available at the Time of the Joint Claim Construction Statement and was
Timely Disclosed per the Parties’ Agreement

Apple itself submitted new extrinsic evidence, in the form of Dr. Givargis’s testimony, less

25 than two hours before the parties filed their Joint Claim Construction Statement. See, e.g.,
26 Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995), aff’d, 517 U.S. 370
27 (1996) (extrinsic evidence includes “all evidence external to the patent and prosecution history,
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Case No. 11-cv-01846-LHK
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1 including expert and inventor testimony, dictionaries, and learned treatises.”). As explained
2 above, Apple served Dr. Givargis’s declaration at 10:17 pm on November 14. Less than two
3 hours later, at 11:54 pm, the parties filed the Joint Claim Construction Statement. Under Apple’s
4 view, Samsung and Mr. Cole were required to examine the new evidence contained in Dr.
5 Givargis’s declaration, identify any rebuttal evidence, and incorporate it into the parties’ Joint
6 Claim Construction Statement between 10:17 pm and midnight on November 14. Even absent the
7 prior agreement between the parties, Apple’s view is plainly unreasonable and underscores the
8 absurdity of Apple’s motion.
9

In addition to Mr. Cole’s declaration and exhibits, Apple seeks to strike paragraphs 4-6 in

10 Section V.B.1 of Samsung’s Opening Claim Construction Brief because they include testimony
11 that was not disclosed in the parties’ Joint Claim Construction Statement. These paragraphs
12 include testimony from Dr. Givargis (page 15, lines 9-12) and testimony from Dr. Moon-Sang
13 Jeong, the inventor of the ‘711 patent (page 15, line 13 through page 16, line 2) regarding the
14 meaning of “applet.” But Dr. Jeong’s and Dr. Givargis’s depositions took place on, November 17
15 and December 6, respectively, after the November 14 filing of the Joint Claim Construction
16 Statement. Thus it would have been impossible for Samsung to include this testimony in the Joint
17 Claim Construction Statement. This further underscores the absurdity of Apple’s motion.
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Apple makes much of Mr. Cole’s testimony that he did not search for references before the

19 Joint Claim Construction Statement was filed. Apple’s Motion at 3, 18-19. But before Mr. Cole
20 received Dr. Givargis’s declaration, which was after the Joint Claim Construction Statement was
21 filed, Mr. Cole had no way of knowing what Dr. Givargis’s testimony would be, the intrinsic
22 evidence Dr. Givargis would rely on to support his testimony, or the extrinsic evidence Dr.
23 Givargis would rely on. Nor would Mr. Cole know how Dr. Givargis would interpret any of this
24 unknown intrinsic or extrinsic evidence. By the parties’ agreement, the same agreement that
25 allowed Mr. Cole to rely on rebuttal extrinsic evidence, Apple itself did not provide a description
26 of the Dr. Givargis’s declaration as normally required by Patent L.R. 4-2(b). Mr. Cole cannot be
27 faulted for identifying rebuttal evidence after Dr. Givargis’s declaration was served.
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C.

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Apple claims it has been prejudiced because its expert could not “address [Mr. Cole’s]
evidence . . . in his declaration.” Apple’s Motion at p. 4. This is not so. Not only did Dr.
Givargis have an opportunity to address Mr. Cole’s declaration, he did so during his deposition on
December 6. In fact, Dr. Givargis testified about Mr. Cole’s declaration and exhibits in response
to examinations by Samsung’s and Apple’s counsel. Ex. G. Apple then presented this testimony
in its Responsive Claim Construction Brief, which was filed on December 22. Apple’s Response
at 11-12. Thus, Apple’s claims of prejudice are unfounded.2

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The cases cited by Apple do not support its motion. In Nordic Naturals, Inc. v. J.R.
Carlson Laboratories, Inc., a party disclosed an expert for the first time and filed a declaration
from that expert concurrently with its response claim construction brief. 2008 WL 2357312, at
*11 (N.D. Cal. June 6, 2008). Here, Apple agreed that Mr. Cole could file his declaration two
weeks after the Joint Claim Construction Statement was filed and deposed Mr. Cole on December
16, six days before its responsive claim construction brief was filed.

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Apple has Suffered No Prejudice

Likewise, in Genentech this Court denied a motion to exclude late-disclosed evidence.
Genentech, Inc. v. The Trustees of the Univ. of Penn., No. 5:10-cv-02037-LHK (N.D. Cal. Mar.
10, 2011) (Dkt. 146) (J. Koh) (citing See Martinez v. Stanford, 323 F.3d 1178, 1182 (9th Cir.
2003) (denying motion to strike under Patent L.R. 4-3(b) and noting that “justice is best served
when issues are decided on the merits”). In doing so, the Court allowed the moving party
additional time to file its responsive brief to address any prejudice. Unlike Genentech, the moving
party here, Apple, agreed to allow Mr. Cole to provide a rebuttal declaration after the filing of the
Joint Claim Construction Statement. Furthermore, Apple and its expert had the opportunity to

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Even if there were some prejudice to Apple, which there is not, this Court has found that a
party seeking to exclude extrinsic evidence based on Local Patent Rule 4-3(b) must show that the
26 evidence complained of is not rebuttal evidence and that the prejudice cannot be cured. See
Genentech, No. 5:10-cv-02037-LHK (prejudice created by disclosing extrinsic evidence in
27 response claim construction brief was cured by 11 additional days to file reply claim construction
brief). Apple has not even attempted to make such a showing because it cannot.
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Case No. 11-cv-01846-LHK
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1 address Mr. Cole’s rebuttal declaration and exhibits, and did so in its response brief.
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D.

Mr. Cole’s Declaration and Supporting Evidence were Properly Submitted

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In sum, Mr. Cole had no way of knowing that Dr. Givargis would opine that extrinsic

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evidence indicating that one type applet “may” be operating system independent, indicates that all
types of applets “must” be operating system independent. Ex. F.

Mr. Cole’s rebuttal evidence

was timely disclosed pursuant to the parties’ agreement and is necessary to rebut Dr. Givargis’s
unsupportable position. Exhibits 6, 7, 8, 9, 10, 11, and 12 to Mr. Cole’s declaration demonstrate a
person of ordinary skill in the art would not equate “may” with “must” and therefore properly
rebut the testimony in Dr. Givargis’s declaration. Dkt. 468. These exhibits show that operating
system dependent applets were well-known by the person of ordinary skill in the art. Id.
IV.

CONCLUSION
For the foregoing reasons, Apple’s motion to strike should be denied in its entirety.

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DATED: January 12, 2012

Respectfully submitted,
QUINN EMANUEL URQUHART &
SULLIVAN, LLP

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By/s/ Todd M. Briggs
Charles K. Verhoeven
Kevin P.B. Johnson
Victoria F. Maroulis
Michael T. Zeller
Todd M. Briggs
Attorneys for SAMSUNG ELECTRONICS CO.,
LTD., SAMSUNG ELECTRONICS AMERICA,
INC. and SAMSUNG
TELECOMMUNICATIONS AMERICA, LLC

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Case No. 11-cv-01846-LHK
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