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

Filing 729

RESPONSE (re #701 AMENDED NOTICE OF MOTION to Amend/Correct #691 MOTION to Permit Samsung's Expert Samuel Lucente to Review Materials Designated Under the Protective Order ) CORRECTION OF DOCKET #727 (correcting event from Reply to Response) filed byApple Inc.. (Attachments: #1 Proposed Order)(Hung, Richard) (Filed on 2/13/2012)

1
2
3
4
5
6
7
8
9

HAROLD J. MCELHINNY (CA SBN 66781)
[e-mail]
MICHAEL A. JACOBS (CA SBN 111664)
[e-mail]
JENNIFER LEE TAYLOR (CA SBN 161368)
[e-mail]
ALISON M. TUCHER (CA SBN 171363)
[e-mail]
RICHARD S.J. HUNG (CA SBN 197425)
[e-mail]
JASON R. BARTLETT (CA SBN 214530)
[e-mail]
MORRISON & FOERSTER LLP
425 Market Street
San Francisco, California 94105-2482
Telephone: [phone]
Facsimile: [phone]

10
11
12

WILLIAM F. LEE
[e-mail]
WILMER CUTLER PICKERING
HALE AND DORR LLP
60 State Street
Boston, MA 02109
Telephone: [phone]
Facsimile: [phone]
MARK D. SELWYN (SBN 244180)
[e-mail]
WILMER CUTLER PICKERING
HALE AND DORR LLP
950 Page Mill Road
Palo Alto, California 94304
Telephone: [phone]
Facsimile: [phone]

Attorneys for Plaintiff and
Counterclaim-Defendant APPLE INC.

13
14

UNITED STATES DISTRICT COURT

15

NORTHERN DISTRICT OF CALIFORNIA

16

SAN JOSE DIVISION

17
18

APPLE INC., a California corporation,

19
20
21
22
23
24
25

Plaintiff,
v.
SAMSUNG ELECTRONICS CO., LTD., a
Korean corporation; SAMSUNG
ELECTRONICS AMERICA, INC., a New
York corporation; and SAMSUNG
TELECOMMUNICATIONS AMERICA,
LLC, a Delaware limited liability company,

Case No. 11-cv-01846-LHK (PSG)
APPLE’S OPPOSITION TO
SAMSUNG’S MOTION TO PERMIT
SAMSUNG’S EXPERT SAMUEL
LUCENTE TO REVIEW
MATERIALS DESIGNATED UNDER
THE PROTECTIVE ORDER
Date:
Time:
Place:
Judge:

March 6, 2012
10:00 a.m.
Courtroom 5, 4th Floor
Hon. Paul S. Grewal

Defendants.

26
27
28
APPLE’S OPPOSITION TO SAMSUNG’S MOTION TO PERMIT SAMUEL LUCENTE TO REVIEW MATERIALS
CASE NO. 11-CV-01846-LHK (PSG)
sf-3106322

1

TABLE OF CONTENTS

2

Page

3

TABLE OF AUTHORITIES .......................................................................................................... ii
I.
INTRODUCTION .............................................................................................................. 1
II.
STATEMENT OF FACTS ................................................................................................. 2
III.
ARGUMENT ...................................................................................................................... 4
A.
Mr. Lucente’s Involvement in Competitive Decision-Making Disqualifies
Him from Having Access to Apple’s Highly Confidential Materials..................... 4
B.
Mr. Lucente Cannot Access Apple’s Highly Confidential Materials
Without Violating the Prosecution Bar. .................................................................. 7
C.
Apple Has Consistently Acted in Good Faith in Objecting to Mr. Lucente ........... 9
D.
Samsung’s Eleventh Hour Offer, Although Helpful, Does Not Go Far
Enough .................................................................................................................. 10
IV.
CONCLUSION ................................................................................................................. 11

4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

APPLE’S OPPOSITION TO SAMSUNG’S MOTION TO PERMIT SAMUEL LUCENTE TO REVIEW MATERIALS
CASE NO. 11-CV-01846-LHK (PSG)
sf-3106322

i

1

TABLE OF AUTHORITIES

2

Page(s)

3

CASES

4

Brown Bag Software v. Symantec Corp.,
960 F.3d 1465 (9th. Cir. 1991).................................................................................................. 5

5
6
7
8
9
10
11
12
13
14

In re Deutsche Bank Trust Co. Ams.,
605 F.3d 1373 (Fed. Cir. 2010)................................................................................................. 5
In re Papst Licensing, GmbH, Patent Litig.,
MDL Docket Number 1298, 2000 U.S. Dist. LEXIS 6374 (E.D. La. May 4, 2000)............ 6, 7
Intel Corp. v. VIA Techs., Inc.,
198 F.R.D. 525 (N.D. Cal. 2000) .............................................................................................. 5
IP Innovation L.L.C. v. Thomson, Inc.,
No. 1:03-cv-0216-JDT-TAB, 2004 U.S. Dist. LEXIS 6290 (S.D. Ind. Apr. 8, 2004) ......... 6, 7
Markey v. Verimatrix, Inc.,
No.09cv0066 L (AJB), 2009 U.S. Dist. LEXIS 57944 (S.D. Cal. July 8, 2009).............. 5, 6, 7
Mikohn Gaming Corp. v. Acres Gaming, Inc.,
No. CV-S-97-1383-HDM(LRL), 1998 U.S. Dist. LEXIS 22251 (D. Nev. Apr. 15)............ 6, 7

15
16

U.S. Steel v. United States,
730 F.2d 1465 (Fed. Cir. 1984)......................................................................................... 4, 5, 6

17
18
19
20
21
22
23
24
25
26
27
28
APPLE’S OPPOSITION TO SAMSUNG’S MOTION TO PERMIT SAMUEL LUCENTE TO REVIEW MATERIALS
CASE NO. 11-CV-01846-LHK (PSG)
sf-3106322

ii

1
2
3
4

I.

INTRODUCTION
The Protective Order (Dkt. No. 687) in this action has two key provisions pertaining to

experts. The first prohibits the disclosure of highly confidential information to experts who are
involved in “competitive decision-making” relating to the subject matter of asserted patents. The

5
second is a so-called “prosecution bar,” requiring that any expert who receives highly confidential
6
7
8
9

information refrain from any direct or indirect involvement in patent prosecution related to the
subject matter of the asserted patents.
Samsung seeks to allow its proposed expert, Samuel Lucente, access to Apple’s most

10

sensitive information––including highly confidential design information––under the Protective

11

Order. But Mr. Lucente cannot abide by either of these Protective Order provisions.

12

Mr. Lucente is the owner and an inventor of an active patent application relating to

13
14

graphical user interfaces for mobile phones and other devices with touch screens. This overlaps

15

with the subject matter of this lawsuit. This means that Mr. Lucente is involved in competitive

16

decision-making, and that he must be involved in the patent prosecution process, in contravention

17

of the prosecution bar. At a minimum, he must direct the attorney who is prosecuting his

18

application. Were Mr. Lucente to obtain access to Apple’s highly confidential information, there

19

is a risk that he might––perhaps inadvertently––misuse Apple’s information to modify the

20
pending claims to better cover Apple.
21
22

The Protective Order is specifically designed to eliminate these types of risks. It is

23

difficult to see how Mr. Lucente could possibly comply with the “competitive decision-making”

24

and “prosecution bar” provisions of the Protective Order, and Samsung has never explained this.

25

Indeed, the night before Apple’s opposition was due, Samsung conceded for the first time that

26

Mr. Lucente should not be permitted access to Apple confidential documents relating to

27

“graphical user interface . . . technologies,” such as source code. Although Samsung’s belated

28
APPLE’S OPPOSITION TO SAMSUNG’S MOTION TO PERMIT SAMUEL LUCENTE TO REVIEW MATERIALS
CASE NO. 11-CV-01846-LHK (PSG)
sf-3106322

1

1

proposal helps to bridge the parties’ differences, it does not go far enough to protect Apple’s

2

competitively sensitive design information. Accordingly, the Court should either deny

3

Mr. Lucente access to Apple’s “Highly Confidential – Attorneys’ Eyes Only” and “Highly

4
Confidential – Outside Attorneys’ Eyes Only – Source Code” information, or place additional
5
6
7
8
9

restrictions on his access to information in light of his pending application, as discussed below.
II.

STATEMENT OF FACTS
Mr. Lucente is the designer and principal of a firm called Lucente Design, which provides

consulting services to technology clients such as Honeywell and Hewlett-Packard. (Dkt.

10

No. 691-2; Declaration of Marc J. Pernick in Support of Apple’s Opposition (“Pernick Decl.”)

11

Exs. 1 & 2.) On December 13, 2011, Samsung disclosed Mr. Lucente as an expert in this

12

litigation. (Dkt No. 691-2.) Samsung’s notice attached Mr. Lucente’s current curriculum vitae

13
14
15

(“CV”), which lists 35 of his design and utility patents in the United States. (Id.)
Apple promptly initiated the meet-and-confer process with Samsung to confirm that there

16

were no issues with Mr. Lucente’s receipt of Apple’s competitively-sensitive technical, design,

17

and commercial information under the Protective Order.1 (Pernick Decl. Ex. 3.) After the parties

18

made significant progress in meeting and conferring, Samsung revealed for the first time on

19

January 20, 2012 that Mr. Lucente also is the inventor on and the owner of a pending European

20
Patent Application (“EP application”) based on international patent application number
21
22
23

PCT/US00/10073 (“PCT Application”). (Dkt. No. 691-9; Pernick Decl. Exs. 4 & 5.) The EP
application2 relates to a graphical user interface that can be used on a mobile phone and can be

24
1

25
26
27
28

The Protective Order addresses access to material designated by a party as either
“HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” or “HIGHLY CONFIDENTIAL –
OUTSIDE ATTORNEYS’ EYES ONLY – SOURCE CODE” (collectively, “Highly
Confidential”). (Dkt. No. 687 ¶¶ 9-10.)
2

Because the EP application is processed by incorporating the PCT Application
(see Pernick Decl. Ex. 4), the published PCT Application (Pernick Decl. Ex. 5) is cited herein.
APPLE’S OPPOSITION TO SAMSUNG’S MOTION TO PERMIT SAMUEL LUCENTE TO REVIEW MATERIALS
CASE NO. 11-CV-01846-LHK (PSG)
sf-3106322

2

1

“implemented on a touch screen.” (Pernick Decl. Ex. 5 at 20:10-21:20, 29:30-30:6.) Samsung

2

has confirmed that Mr. Lucente still “maintains his ownership interest [in this application], and he

3

has not assigned any part of his interest to any third party.” (Dkt. No. 691-9.)

4
This disclosure immediately raised new concerns for Apple about allowing Mr. Lucente
5
6

access to its most sensitive information. The subject matter of Mr. Lucente’s pending application

7

and this litigation plainly overlap. For example, five of Apple’s eight asserted utility patents

8

relate to user interfaces,3 and the other three relate to touch screens.4 Three of Apple’s seven

9

asserted design patents also relate to “graphical user interfaces.”5

10
11

Because the EP application’s claims are pending and may still be adjusted, allowing
Mr. Lucente to access Apple’s Highly Confidential information creates the risk that he could use

12
13

that information––even inadvertently––to craft claims covering Apple’s products. Apple thus

14

reaffirmed its objection to Mr. Lucente on January 24, 2012. Apple also offered to consider

15

“reasonable restrictions on the disclosure [of Highly Confidential materials] to Mr. Lucente”

16

(Dkt. No. 691-11), but Samsung’s response did not propose any restrictions. Samsung instead

17

conceded that Mr. Lucente’s patents are “in the relevant field.” (Pernick Decl. Ex. 6.)

18

Samsung proposed no restrictions at all until last Sunday evening, thirteen days after filing

19
its brief and just one day before Apple’s opposition was due. (Pernick Decl. Ex. 13.) Samsung
20
21
3

22
23
24
25
26
27
28

See U.S. Patent Nos. 6,493,002 (“Method & Apparatus for Displaying & Accessing
Control & Status Information in a Computer System”); 7,469,381 (“List Scrolling & Document
Translation, Scaling & Rotation on a Touch-Screen Display”); 7,844,915 (“Application
Programming Interfaces for Scrolling Operations”); 7,853,891 (“Method & Apparatus for
Displaying a Window for a User Interface”); 7,864,163 (“Portable Electronic Device, Method &
Graphical User Interface for Displaying Structured Electronic Documents”).
4

See U.S. Patent Nos. 7,663,607 (“Multipoint Touch Screen”); 7,812,828 (“Ellipse Fitting
for Multi-Touch Surfaces”); 7,920,129 (“Double-sided Touch-sensitive Panel with Shield &
Drive Combined Layer”).
5

See D604,305, D617,334, D627,790 (each entitled “Graphical User Interface for a
Display Screen or Portion Thereof”).
APPLE’S OPPOSITION TO SAMSUNG’S MOTION TO PERMIT SAMUEL LUCENTE TO REVIEW MATERIALS
CASE NO. 11-CV-01846-LHK (PSG)
sf-3106322

3

1

confirmed that Mr. Lucente’s EP application is still undergoing prosecution, but alleged that

2

Mr. Lucente intended to “put forward no additional arguments” in the prosecution. (Id.)

3

Samsung did not represent, however, that Mr. Lucente would withdraw his application. Samsung

4
also did not dispute that Mr. Lucente could later take actions to advance prosecution––actions that
5
6

would be in contravention of the Protective Order’s prosecution bar, such as adding or amending

7

the existing claims. As a compromise, Samsung instead offered to wall Mr. Lucente off from any

8

information “related to Apple’s graphical user interface utility patents or technologies, such as

9

source code.” (Id. at 2.)

10
11
12

III.

ARGUMENT
As the inventor on and owner of a pending EP application relating to graphical interfaces

that can be implemented on a touch screen, Mr. Lucente should not be allowed to access Apple’s

13
14

Highly Confidential information under the terms of the Protective Order based on two

15

independent grounds. First, Mr. Lucente is a “competitive decision-maker” who is barred from

16

receiving Highly Confidential information under Paragraphs 9(b)(iii) and 10(c)(iii) of the

17

Protective Order. Second, he is unable to comply with the “prosecution bar” contained in

18

Paragraph 6(b) of the Protective Order. Samsung’s motion to allow Mr. Lucente access to

19
20
21
22

Apple’s Highly Confidential materials should therefore be denied.
A.

Mr. Lucente’s Involvement in Competitive Decision-Making Disqualifies Him
from Having Access to Apple’s Highly Confidential Materials.

Under the Protective Order, a party’s expert may not access materials designated by the

23

opposing party as Highly Confidential unless the expert satisfies several criteria. As relevant

24

here, absent a court order to the contrary, a party can only disclose Highly Confidential materials

25

to experts who are

26
27

not involved in competitive decision-making, as defined by U.S. Steel v. United
States, 730 F.2d 1465, 1468 n.3 (Fed. Cir. 1984), on behalf of a Party or a
competitor of a Party with respect to the subject matter of the patents-in-suit….

28
APPLE’S OPPOSITION TO SAMSUNG’S MOTION TO PERMIT SAMUEL LUCENTE TO REVIEW MATERIALS
CASE NO. 11-CV-01846-LHK (PSG)
sf-3106322

4

1
2
3

(Dkt. No. 687 ¶¶ 9(b)(iii), 10(c)(iii).)
As courts uniformly recognize, the prohibition against disclosing sensitive information to
persons who are involved in “competitive decision-making” guards against the risk that those

4
who are in a position to exploit a producing party’s highly confidential information might––even
5
6

inadvertently––misuse the information in a way that harms the producing party. See, e.g.,

7

U.S. Steel, 730 F.2d at 1468 (explaining risk); Brown Bag Software v. Symantec Corp., 960 F.3d

8

1465, 1471 (9th Cir. 1991) (considering whether attorney “could lock-up trade secrets in his

9

mind, safe from inadvertent disclosure to his employer once he had read the documents”); Intel

10

Corp. v. VIA Techs., Inc., 198 F.R.D. 525, 531 (N.D. Cal. 2000). When the expert or attorney in

11

question is involved in “competitive decision-making,” the risk of misuse or inadvertent

12
13
14

disclosure is too high to permit access to a party’s competitively-sensitive information.
As the Federal Circuit has explained, an individual who has “the opportunity to control the

15

content of patent applications and the direction and scope of protection sought in those

16

applications” can tailor the patent to cover the producing party. In re Deutsche Bank Trust Co.

17

Ams., 605 F.3d 1373, 1380 (Fed. Cir. 2010). Accordingly, a proposed expert or lawyer who is

18

involved in strategic decisions concerning the prosecution of a pending patent application is a

19
“competitive decision-maker” who should be denied access to the adversary’s competitively
20
21
22

sensitive discovery.
Courts have applied this standard to preclude experts, attorneys, and parties involved in

23

pending patent applications from receiving an adversary’s confidential information. For example,

24

in Markey v. Verimatrix, Inc., No.09cv0066 L (AJB), 2009 U.S. Dist. LEXIS 57944, at *9 (S.D.

25

Cal. July 8, 2009), the court barred the plaintiff, who had pending patent applications, from

26

accessing the defendant’s confidential information. The court ruled that the “the prosecution of

27
[plaintiff’s] patent applications leaves open the door to permitting him to tailor the claims to
28
APPLE’S OPPOSITION TO SAMSUNG’S MOTION TO PERMIT SAMUEL LUCENTE TO REVIEW MATERIALS
CASE NO. 11-CV-01846-LHK (PSG)
sf-3106322

5

1

cover specific, known activities that are revealed to him through the course of discovery in this

2

litigation.” Id. at *8-9; see also IP Innovation L.L.C. v. Thomson, Inc., No. 1:03-cv-0216-JDT-

3

TAB, 2004 U.S. Dist. LEXIS 6290, at *11 (S.D. Ind. Apr. 8, 2004) (denying expert access to

4
confidential documents because he was named inventor on pending applications related to same
5
6

subject matter as patents-in-suit); In re Papst Licensing, GmbH, Patent Litig., MDL Docket

7

Number 1298, 2000 U.S. Dist. LEXIS 6374, at *12 (E.D. La. May 4, 2000) (adopting protective

8

order that barred individuals with access to confidential information from working on

9

prosecutions because “ability to file new claims in existing and pending patents based on the

10

confidential information discovered during the course of this litigation poses an unacceptable

11

opportunity for inadvertent disclosure and misuse”); Mikohn Gaming Corp. v. Acres Gaming,

12
13

Inc., No. CV-S-97-1383-HDM(LRL), 1998 U.S. Dist. LEXIS 22251, at *13-14 (D. Nev.

14

Apr. 15, 1998) (“[n]o matter how much good faith Mr. McCollom might exercise, it is unrealistic

15

to expect that his knowledge of Mikohn’s secret technology would not or could not influence the

16

nature of his advice to Acres”).

17
18

As in these cases, Mr. Lucente’s activities make him a competitive decision-maker under
U.S. Steel. Mr. Lucente is the applicant and named inventor on a pending patent application in

19
the European Patent Office, and he maintains an ownership interest in that application. (See Dkt.
20
21
22
23

No. 691-9.) Mr. Lucente is thus in a position to use Apple’s Highly Confidential information in
the course of his pending EP application.
Mr. Lucente’s EP application also qualifies him as a competitive decision-maker “with

24

respect to the subject matter of the patents-in-suit.” (Dkt. No. 687 ¶¶ 9(b)(iii), 10(c)(iii).)

25

Samsung concedes that his EP application is in “the relevant field.” (Pernick Decl. Ex. 6.)

26

The application relates to a graphical interface that can be implemented “on a touch screen” so

27
that users can interact with particular information “by touching it.” (Pernick Decl. Ex. 5 at 29:3028
APPLE’S OPPOSITION TO SAMSUNG’S MOTION TO PERMIT SAMUEL LUCENTE TO REVIEW MATERIALS
CASE NO. 11-CV-01846-LHK (PSG)
sf-3106322

6

1

30:4.) The graphical interface can also be utilized on a cell phone. (Id. at 20:10-21:20.) This is

2

also the general subject matter of several of Apple’s asserted patents.

3

Moreover, the Highly Confidential information that Samsung wants to share with

4
Mr. Lucente—involving Apple’s highly sensitive design information, including designs of user
5
6

interfaces—is squarely within the subject matter of Mr. Lucente’s pending EP application. The

7

Court should not allow the inventor on and owner of a pending application relating to user

8

interfaces to access Apple’s highly sensitive design information. The risk of inadvertent misuse

9

is too high. See Markey, 2009 U.S. Dist. LEXIS 57944, at *8; IP Innovation, 2004 U.S. Dist.

10
11

LEXIS 6290, at *11; Mikohn Gaming, 1998 U.S. Dist. LEXIS 22251, at *13-14; Papst Licensing,
GmbH, Patent Litig., 2000 U.S. Dist. LEXIS 6374, at *12.

12
Finally, Mr. Lucente’s prosecution activities are indeed undertaken “on behalf of a [ ]

13
14

competitor” of Apple’s. When it comes to the patent he is prosecuting, Mr. Lucente is an Apple

15

competitor. If Mr. Lucente were to shape, or even inadvertently adjust, his claims to better cover

16

any Apple devices, he or a future assignee could later use the patent to sue Apple. That is

17

competition. Accordingly, that Mr. Lucent himself does not make or sell smartphones or tablet

18

computers is immaterial. (See Dkt. No. 691 (“Samsung Mot.”) at 5.) As the Markey court stated

19
in denying the plaintiff access to the defendant’s confidential information, “that the Plaintiff [does
20
21

not] work[ ] in the same field as the Defendant does not diminish the fact that the Plaintiff is still

22

in the process of prosecuting his patent applications in the field.” 2009 U.S. Dist. LEXIS 57944,

23

at *7.

24

B.

Mr. Lucente Cannot Access Apple’s Highly Confidential Materials Without
Violating the Prosecution Bar.

25
26

The Court should not allow Mr. Lucente to receive Apple Highly Confidential discovery

27

for the independent reason that he cannot comply with the Protective Order’s prosecution bar,

28

which prohibits anyone who receives Highly Confidential information from participating in any
APPLE’S OPPOSITION TO SAMSUNG’S MOTION TO PERMIT SAMUEL LUCENTE TO REVIEW MATERIALS
CASE NO. 11-CV-01846-LHK (PSG)
sf-3106322

7

1

way in prosecuting patents relating to the subject matter of the patents-in-suit. Specifically,

2

Paragraph 6(b) provides:

3
4
5
6
7
8

Absent the written consent of the Producing Party, anyone who receives one or
more items designated “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES
ONLY” or “HIGHLY CONFIDENTIAL – OUTSIDE ATTORNEYS’ EYES
ONLY – SOURCE CODE” shall not be involved, directly or indirectly, in any
of the following activities: advising on, consulting on, preparing, prosecuting,
drafting, editing, and/or amending of patent applications (whether for design
or utility patents), specifications, claims, and/or responses to office actions, or
otherwise affecting the disclosure in patent applications or specifications or the
scope of claims in patents or patent applications relating to the subject matter
of the patents-in-suit before any foreign or domestic agency, including the
United States Patent and Trademark Office.

9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27

(Dkt. No. 687 ¶ 6b (emphasis added).)
As discussed above, Mr. Lucente is an inventor, owner, and applicant on the pending EP
application, which seeks a patent concerning a graphical interface that can be implemented on a
touch screen. Given Mr. Lucente’s roles with respect to the pending EP application, it is
inconceivable that he could not be involved––at least indirectly––in the prosecution of that
Application. For instance, even if Mr. Lucente intends for his patent attorney to take the laboring
oar on the prosecution, Mr. Lucente, as the attorney’s client, would still have to direct and
approve of counsel’s actions. And Mr. Lucente does not appear to have any colleagues who
could conduct prosecution activities without any participation from him. Mr. Lucente is not just
the principal of his company, Lucente Design, LLC, he is a “one-man show.” (Pernick Decl.
Exs. 7 & 8 (reports showing that Lucente Design has no employees other than Mr. Lucente).)
If there were a way that Mr. Lucente could somehow comply with the prosecution bar
while he is simultaneously in the process of obtaining a patent for his alleged invention, Samsung
has not disclosed it, even though Apple specifically asked whether “there [are] measures that
Mr. Lucente has taken to ensure that he will be able to comply with the prosecution bar.”
(Pernick Decl. Ex. 9.) There appears to be no way that Mr. Lucente can abide by the prosecution
bar in the Protective Order. As a result, Mr. Lucente is not allowed to have access to Apple’s
Highly Confidential materials.

28
APPLE’S OPPOSITION TO SAMSUNG’S MOTION TO PERMIT SAMUEL LUCENTE TO REVIEW MATERIALS
CASE NO. 11-CV-01846-LHK (PSG)
sf-3106322

8

1

C.

2

Unable to show that Mr. Lucente is entitled to access Apple Highly Confidential material

Apple Has Consistently Acted in Good Faith in Objecting to Mr. Lucente.

3

under the Protective Order, Samsung accuses Apple of asking “irrelevant questions” and

4

improperly delaying discovery by not cooperating with Samsung in resolving Apple’s objection

5

to Mr. Lucente. (See, e.g., Samsung Mot. at 5.) Samsung’s charge is baseless. Upon Samsung’s

6

disclosure of Mr. Lucente as a proposed expert, Apple promptly and appropriately asked

7

questions designed to assess whether allowing him access to Apple’s sensitive materials

8

presented a competitive risk, including questions about Mr. Lucente’s clients and whether he has

9

designed or consulted with respect to mobile phones. (Pernick Decl. Exs. 3 & 10.) Apple’s

10

questions clearly were not irrelevant; it was only in response to a question from Apple that

11

Samsung finally disclosed in late January that Mr. Lucente owns a pending patent application

12

involving a touch screen user interface. (Dkt. No. 619-9.)

13

Remarkably, Samsung blames Apple for not discovering Mr. Lucente’s EP application

14

until late January. Yet Samsung failed to disclose the Application, which was not included

15

among the 35 patents listed in Mr. Lucente’s CV that Samsung provided to Apple. Had Samsung

16

or Mr. Lucente referenced the EP application on the CV, the parties could have had the

17

discussions that led to this motion much sooner. This is a problem of Samsung’s making.

18

Samsung’s other arguments are equally baseless. The time it took Apple to discover any

19

of Mr. Lucente’s issued patents, including the ones not listed on his CV, is completely irrelevant.

20

Apple’s objection is not based on any issued patents, even the ones Samsung did not disclose.

21

Apple objects based on the pending application that is not on Mr. Lucente’s CV.

22

An Apple email from before Samsung disclosed the EP application also is irrelevant. That

23

email shows that Apple was trying to “close the loop”—i.e., to establish the parties’ respective

24

final positions—on Apple’s objection to Mr. Lucente and Samsung’s objection to an Apple expert

25

in order to resolve lingering issues. (Dkt. No. 691-7.) Apple was not offering to “horse trade” by

26

withdrawing its objection to Mr. Lucente if Samsung withdrew its objection to Mr. Bressler.

27

Samsung’s interpretation is wrong.

28
APPLE’S OPPOSITION TO SAMSUNG’S MOTION TO PERMIT SAMUEL LUCENTE TO REVIEW MATERIALS
CASE NO. 11-CV-01846-LHK (PSG)
sf-3106322

9

1

Finally, Samsung’s suggestions that Apple has engaged in obstruction are belied by

2

Apple’s multiple offers to consider alternatives to an outright block on Mr. Lucente’s ability to

3

see any Highly Confidential discovery materials. (Pernick Decl. Exs. 11 & 12; Dkt. No. 691-11.)

4

Until last night, Samsung had never taken Apple up on these offers, or responded to Apple’s

5

request that Samsung identify what measures, if any, were being taken to ensure that Mr. Lucente

6

could comply with the patent prosecution bar.

7

The record shows that Apple has at all times taken reasonable and proper steps to work

8

with Samsung to address Apple’s concerns about whether divulging sensitive information to

9

Mr. Lucente might cause Apple to suffer competitive harm. That is the approach Apple has taken

10

in considering all of Samsung’s proposed experts––which has resulted in Apple’s objecting to

11

only three out of approximately twenty disclosed witnesses in this case (Pernick Decl. ¶ 2)––and

12

it is the approach taken by Apple with regard to Mr. Lucente.

13

D.

14

Last night, Samsung wrote to Apple with additional information about Mr. Lucente’s

Samsung’s Eleventh Hour Offer, Although Helpful, Does Not Go Far Enough.

15

pending EP application. (Pernick Decl. Ex. 13.) Although vague, Samsung’s letter confirms that

16

Mr. Lucente’s application is still undergoing prosecution. (Id. at 1.) Samsung claims, however,

17

that Mr. Lucente has “indicated” to the EPO that he would “put forward no additional arguments”

18

in the prosecution. (Id.) But Samsung makes no representation that Mr. Lucente has withdrawn

19

the application. Samsung also makes no promise that Mr. Lucente will refrain from taking any

20

other actions prohibited by the prosecution bar, such as adding or amending his claims in the

21

future.

22

Instead, in its letter, Samsung for the first time offers to wall Mr. Lucente from any

23

information “related to Apple’s graphical user interface utility patents or technologies, such as

24

source code.” (Id. at 2 (emphasis added).) Via its proposal, Samsung concedes that some

25

restrictions on Mr. Lucente’s access are appropriate.

26

Samsung’s proposal is still insufficient to protect Apple. It would allow Mr. Lucente to

27

access Apple’s confidential information concerning user interface design––even if it falls within

28

the scope of his pending EP application. Because Samsung has proposed to use Mr. Lucente as
APPLE’S OPPOSITION TO SAMSUNG’S MOTION TO PERMIT SAMUEL LUCENTE TO REVIEW MATERIALS
CASE NO. 11-CV-01846-LHK (PSG)
sf-3106322

10

1

an expert on the design patent aspects of this case, this is far beyond what either he or Samsung

2

needs. By definition, design patents relate to static images, such as the static visual appearance of

3

icons and icon layouts.

4

Accordingly, in the spirit of compromise, Apple would consent to allowing Mr. Lucente

5

to see its Highly Confidential information relating to the static design (or the static visual

6

appearance) of its products and devices. By contrast, Mr. Lucente does not need to access (and

7

should be prohibited from accessing) Apple’s Highly Confidential materials relating to the active

8

implementation of Apple’s graphical user interfaces. This includes materials that discuss or

9

reflect the dynamic functionality of the GUIs. For example, Mr. Lucente should not be permitted

10

access to Apple’s Highly Confidential information concerning how devices respond to user inputs

11

or interpret user inputs, or any other features embodied in Apple’s utility patents concerning

12

dynamic functionality (e.g., U.S. Patent Nos. 6,493,002, 7,469,381, 7,844,915, 7,853,891, and

13

7,864,163). As Samsung has conceded, Mr. Lucente also should not be allowed to access

14

information “related to Apple’s graphical user interface utility patents” or its source code.

15

IV.

16

CONCLUSION
For all of the foregoing reasons, the Court should hold that Samsung cannot disclose

17

discovery materials designated by Apple as “Highly Confidential – Attorneys’ Eyes Only” or

18

“Highly Confidential – Attorneys’ Eyes Only – Source Code” to Mr. Lucente. Alternatively, if

19

the Court is inclined to allow Mr. Lucente access to Apple’s information, his access should be

20

restricted to that pertaining to the static design or static visual appearance of Apple’s products and

21

services. Mr. Lucente should not be allowed access to information relating to the active

22

implementation of Apple’s graphical user interfaces or, as Samsung has already conceded, to

23

“Apple’s graphical user interface utility patents or technologies, such as source code.”

24
25

Dated: February 13, 2012

MORRISON & FOERSTER LLP

26

By:

27

Attorneys for Plaintiff
APPLE INC.

28

/s/ Richard S.J. Hung
Richard S.J. Hung

APPLE’S OPPOSITION TO SAMSUNG’S MOTION TO PERMIT SAMUEL LUCENTE TO REVIEW MATERIALS
CASE NO. 11-CV-01846-LHK (PSG)
sf-3106322

11