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

Filing 781

Administrative Motion to File Under Seal filed by Samsung Electronics America, Inc., Samsung Electronics Co. Ltd., Samsung Telecommunications America, LLC. (Attachments: #1 Proposed Order Granting Samsung's Motion to File Documents Under Seal, #2 Exhibit 1 to Motion to Seal: Redacted Samsung Motion to Compel Production, #3 Exhibit 2 to Motion to Seal: Redacted Diane Hutnyan Declaration ISO Samsung's Motion to Compel, #4 Exhibit A to Hutnyan Declaration, #5 Exhibit B to Hutnyan Declaration, #6 Exhibit C to Hutnyan Declaration, #7 Exhibit D to Hutnyan Declaration, #8 Exhibit E to Hutnyan Declaration, #9 Exhibit F to Hutnyan Declaration, #10 Proposed Order Granting Samsung's Motion to Compel Efforts to Obtain Documents Related to Design Patents)(Maroulis, Victoria) (Filed on 3/7/2012)

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EXHIBIT 1 1 QUINN EMANUEL URQUHART & SULLIVAN, LLP Charles K. Verhoeven (Cal. Bar No. 170151)  charlesverhoeven@quinnemanuel.com 50 California Street, 22nd Floor  San Francisco, California 94111 Telephone: (415) 875-6600  Facsimile: (415) 875-6700  Kevin P.B. Johnson (Cal. Bar No. 177129) kevinjohnson@quinnemanuel.com  Victoria F. Maroulis (Cal. Bar No. 202603) victoriamaroulis@quinnemanuel.com th  555 Twin Dolphin Drive 5 Floor Redwood Shores, California 94065  Telephone: (650) 801-5000 Facsimile: (650) 801-5100  Michael T. Zeller (Cal. Bar No. 196417)  michaelzeller@quinnemanuel.com 865 S. Figueroa St., 10th Floor  Los Angeles, California 90017 Telephone: (213) 443-3000  Facsimile: (213) 443-3100  Attorneys for SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS  AMERICA, INC. and SAMSUNG TELECOMMUNICATIONS AMERICA, LLC   UNITED STATES DISTRICT COURT  NORTHERN DISTRICT OF CALIFORNIA, SAN JOSE DIVISION  APPLE INC., a California corporation,   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,  Defendants.   CASE NO. 11-cv-01846-LHK SAMSUNG’S NOTICE OF MOTION AND MOTION TO COMPEL PRODUCTION OF DOCUMENTS RELATING TO APPLE’S EFFORTS TO OBTAIN DESIGN PATENTS RELATED TO THE PATENTS-IN-SUIT Date: April 10, 2012 Time: 3:00 p.m. Courtroom: 5, 4th Floor Honorable Paul S. Grewal FILED UNDER SEAL   02198.51855/4637845.5 Case No. 11-cv-01846-LHK SAMSUNG’S MOTION TO COMPEL PRODUCTION OF DOCUMENTS RELATING TO THE PATENTS-IN-SUIT 1 NOTICE OF MOTION AND MOTION 2 TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD: 3 PLEASE TAKE NOTICE that on April 10, 2012, at 3:00 p.m., or as soon thereafter as the 4 matter may be heard by the Honorable Paul S. Grewal in Courtroom 5, United States District 5 Court for the Northern District of California, Robert F. Peckham Federal Building, 280 South 1st 6 Street, San Jose, CA 95113, Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., 7 and Samsung Telecommunications America, LLC (collectively “Samsung”) shall and hereby do 8 move the Court for an order compelling Apple Inc. (“Apple”) to produce for inspection documents 9 and things in response to Samsung’s Requests for Production Nos. 81, 82, 97, 98, and 362 10 including without limitation any documents relating to any Apple applications for design patents 11 related to the patents-in-suit, including those related to Apple’s claimed commercial embodiments 12 of the patents-in-suit. 13 This motion is based on this notice of motion and supporting memorandum of points and 14 authorities; the declaration of Diane C. Hutnyan (the “Hutnyan Decl.”); and such other written or 15 oral argument as may be presented at or before the time this motion is deemed submitted by the 16 Court. 17 18 RELIEF REQUESTED Pursuant to Federal Rule of Civil Procedure 37(a)(1), Samsung seeks an order compelling 19 Apple to produce to Samsung the documents and things set forth in Samsung’s Civil L.R. 37-2 20 Statement (below) by April 20, 2012. 21 22 SAMSUNG’S CIVIL L.R. 37-2 STATEMENT Pursuant to Civil L.R. 37-2, Samsung’s discovery requests to Apple are set forth in full 23 below along with Apple’s responses and objections: 24 SAMSUNG’S REQUEST FOR PRODUCTION NO. 81: 25 Prosecution histories of the APPLE IP, including all PRIOR ART cited therein, patents 26 related to the APPLE PATENTS-IN-SUIT, and any foreign counterpart patents, registrations, or 27 applications to the APPLE IP or patents related to the APPLE PATENTS-IN-SUIT, including, 28 without limitation, any reexamination and reissue applications. 02198.51855/4637845.5 Case No. 11-cv-01846-LHK -iSAMSUNG’S MOTION TO COMPEL PRODUCTION OF DOCUMENTS RELATING TO THE PATENTS-IN-SUIT 1 APPLE’S RESPONSE TO REQUEST FOR PRODUCTION NO. 81: 2 Apple objects to the phrases “patents related to the APPLE PATENTS-IN-SUIT” and 3 “foreign counterpart patents” as vague and ambiguous, and the request is vague and ambiguous to 4 the extent it seeks prior art to Apple’s asserted trademark and trade dress rights. Apple objects to 5 this request as overly broad, unduly burdensome, and not reasonably calculated to lead to the 6 discovery of admissible evidence, especially to the extent it seeks information regarding patents 7 and patent claims not asserted by Apple. Apple objects to this request to the extent it seeks 8 production of documents that: (i) are protected from discovery by the attorney-client privilege, the 9 work product doctrine, or any other applicable privilege or immunity; (ii) are not relevant to the 10 claims or defenses at issue in this case (iii) are outside of Apple’s possession, custody, or control; 11 (iv) would require Apple to draw a legal conclusion to respond; or (v) can be obtained as easily by 12 Samsung, are already in Samsung’s possession, or are publicly available. 13 Subject to and without waiving the foregoing General and Specific Objections, Apple has 14 produced or will produce responsive, non-privileged documents in its possession, custody, or 15 control, if any, located after a reasonable search, sufficient to show file histories and prosecution 16 documents for the asserted Apple patents. 17 SAMSUNG’S REQUEST FOR PRODUCTION NO. 82: 18 All DOCUMENTS and things relating to the preparation, filing and/or prosecution of the 19 APPLE IP, patents related to the APPLE PATENTS-IN-SUIT, and any foreign counterpart patents 20 or patent applications to the APPLE PATENTS-IN-SUIT or patents related to the APPLE 21 PATENTS-IN-SUIT, including, without limitation, any reexamination and reissue applications. 22 APPLE’S RESPONSE TO REQUEST FOR PRODUCTION NO. 82: 23 Apple objects that this request is duplicative of Request for Production No. 81. Apple 24 objects to the phrases “relating to the preparation, filing and/or prosecution,” “patents related to 25 the APPLE PATENTS-IN-SUIT,” and “foreign counterpart patents” as vague and ambiguous. 26 Apple objects to this request as overly broad, unduly burdensome, and not reasonably calculated 27 to lead to the discovery of admissible evidence, especially because it requests “all DOCUMENTS 28 and things.” Apple objects to this request to the extent it seeks production of documents that: (i) 02198.51855/4637845.5 Case No. 11-cv-01846-LHK -iiSAMSUNG’S MOTION TO COMPEL PRODUCTION OF DOCUMENTS RELATING TO THE PATENTS-IN-SUIT 1 are protected from discovery by the attorney-client privilege or the work product doctrine, or any 2 other applicable privilege or immunity, or any other applicable privilege or immunity; (ii) are 3 outside of Apple’s possession, custody, or control; (iii) would require Apple to draw a legal 4 conclusion to respond; or (iv) can be obtained as easily by Samsung, are already in Samsung’s 5 possession, or are publicly available. Apple further objects to Samsung’s request as overbroad to 6 the extent it purports to require Apple to conduct a search for documents that is more extensive 7 than is reasonable under the circumstances. 8 Subject to and without waiving the foregoing General and Specific Objections, Apple has 9 produced or will produce responsive, non-privileged documents in its possession, custody, or 10 control, if any, located after a reasonable search as discussed in more detail above. 11 SAMSUNG’S REQUEST FOR PRODUCTION NO. 98: 12 All DOCUMENTS and things relating to any information, including patents, publications, 13 prior knowledge, public uses, sales, or offers for sale, that may constitute, contain, disclose, refer 14 to, relate to, or embody any PRIOR ART to any alleged invention claimed by the APPLE IP. 15 APPLE’S RESPONSE TO REQUEST FOR PRODUCTION NO. 98: 16 Apple objects to the phrase “relating to any information” as vague and ambiguous, and the 17 request is vague and ambiguous to the extent it seeks information regarding “PRIOR ART” for 18 Apple trademarks and trade dress. Apple objects to this request as overly broad, unduly 19 burdensome, and not reasonably calculated to lead to the discovery of admissible evidence, 20 especially because it requests “all DOCUMENTS and things.” Apple objects to this request as 21 calling for information that is not relevant to the claims in this case to the extent it seeks 22 information regarding patents and patent claims not asserted by Apple. Apple objects to this 23 request to the extent it seeks production of documents that: (i) are protected from discovery by the 24 attorney-client privilege or the work product doctrine, or any other applicable privilege or 25 immunity; (ii) are outside of Apple’s possession, custody, or control; (iii) would require Apple to 26 draw a legal conclusion to respond; (iv) can be obtained as easily by Samsung, are already in 27 Samsung’s possession, or are publicly available; or (v) would be duplicative of the production 28 sought in Requests Nos. 81, 92, 96, or 97. 02198.51855/4637845.5 Case No. 11-cv-01846-LHK -iiiSAMSUNG’S MOTION TO COMPEL PRODUCTION OF DOCUMENTS RELATING TO THE PATENTS-IN-SUIT 1 Subject to these objections, Apple is willing to meet and confer to discuss the scope and 2 relevance of the documents sought by Samsung. 3 SAMSUNG’S REQUEST FOR PRODUCTION NO. 97: 4 All DOCUMENTS and COMMUNICATIONS concerning the patentability, novelty, 5 scope, infringement, validity, invalidity, enforceability or unenforceability of any claim in any of 6 the APPLE IP. 7 APPLE’S RESPONSE TO REQUEST FOR PRODUCTION NO. 97: 8 Apple objects to the term “concerning” to the extent that it fails to provide reasonable 9 particularity as to the scope of the documents sought. Apple objects to the phrase “concerning the 10 patentability, novelty, scope, infringement, validity, invalidity, enforceability or unenforceability” 11 as vague and ambiguous, and the request is vague and ambiguous to the extent it seeks 12 information regarding the patentability of Apple trademarks and trade dress. Apple objects to this 13 request as overly broad, unduly burdensome, and not reasonably calculated to lead to the 14 discovery of admissible evidence, especially because it requests “all DOCUMENTS and 15 COMMUNICATIONS”; and as it calls for information that is not relevant to the claims in this 16 case to the extent it seeks information regarding patents and patent claims not asserted by Apple. 17 Apple objects to this request to the extent it seeks production of documents that: (i) are protected 18 from discovery by the attorney-client privilege or the work product doctrine, or any other 19 applicable privilege or immunity; (ii) are outside of Apple’s possession, custody, or control; (iii) 20 would require Apple to draw a legal conclusion to respond; or (iv) would be duplicative of the 21 production sought in Requests for Production Nos. 81, 92, and 96. 22 Subject to these objections, Apple is willing to meet and confer to discuss the scope and 23 relevance of the documents sought by Samsung. 24 SAMSUNG’S REQUEST FOR PRODUCTION NO. 362: 25 All DOCUMENTS RELATING to any applications or other attempts by APPLE to obtain 26 any design patent registration for the iPad 2, whether in a foreign country or in the U.S. 27 APPLE’S RESPONSE TO REQUEST FOR PRODUCTION NO. 362: 28 02198.51855/4637845.5 Case No. 11-cv-01846-LHK -ivSAMSUNG’S MOTION TO COMPEL PRODUCTION OF DOCUMENTS RELATING TO THE PATENTS-IN-SUIT 1 Apple objects to this request because it is overly broad, unduly burdensome, and seeks 2 information that is neither relevant nor reasonably calculated to lead to the discovery of admissible 3 evidence, including without limitation because it seeks information regarding “All Documents” 4 and encompasses non-public patent applications and non-United States patent applications. Apple 5 objects to the term “RELATING” as vague and ambiguous and failing to identify with sufficient 6 particularity the documents sought. Apple objects to this request to the extent that it seeks 7 documents protected from disclosure by the attorney-client privilege, work product doctrine, joint 8 defense or common interest privilege, or other applicable privilege, doctrine, or immunity. 9 Subject to and without waiving the foregoing General and Specific Objections, Apple has 10 produced or will produce publicly available United States file histories relating to the iPad 2, if 11 any, located after a reasonable search. 12 13 14 15 SAMSUNG’S CERTIFICATION PURSUANT TO FED. R. CIV. P. 37(a)(1) Samsung hereby certifies that it has in good faith conferred with Apple in an effort to obtain the discovery described immediately above without Court action. Samsung’s efforts to resolve this discovery dispute without court intervention are described in paragraphs 9-10 of the declaration 16 of Diane C. Hutnyan, submitted herewith. QUINN EMANUEL URQUHART & 17 DATED: March 6, 2012 SULLIVAN, LLP 18 19 20 21 22 23 24 By /s/ Victoria F. Maroulis Charles K. Verhoeven Kevin P.B. Johnson Victoria F. Maroulis Michael T. Zeller Attorneys for SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., and SAMSUNG TELECOMMUNICATIONS AMERICA, LLC 25 26 27 28 02198.51855/4637845.5 Case No. 11-cv-01846-LHK -vSAMSUNG’S MOTION TO COMPEL PRODUCTION OF DOCUMENTS RELATING TO THE PATENTS-IN-SUIT 1 TABLE OF CONTENTS 2 Page 3 4 MEMORANDUM OF POINTS AND AUTHORITIES .................................................................. 1  5 I.  Introduction ........................................................................................................................... 1  6 II.  Facts ...................................................................................................................................... 2  7 A.  Apple’s Claims Based on the D’889 Design Patent .................................................. 2  8 B.  Samsung’s Effort To Obtain Documents Relating To Any Apple Design Patent Applications For The Designs Embodied In The iPad2 ................................. 3  9 III.  LEGAL STANDARDS ......................................................................................................... 4  IV.  Argument ............................................................................................................................... 5  10 11 A.  Apple’s Patent Applications Relating To The Patents-In-Suit Or Their Claimed Commercial Embodiments Are Relevant To Samsung’s Defenses ........... 5  B.  Any Confidentiality Or Competitive Concerns Are Satisfied By The Protective Order ........................................................................................................ 7  12 13 14 V.  Conclusion ............................................................................................................................. 9  15 16 17 18 19 20 21 22 23 24 25 26 27 28 02198.51855/4637845.5 Case No. 11-cv-01846-LHK -viSAMSUNG’S MOTION TO COMPEL PRODUCTION OF DOCUMENTS RELATING TO THE PATENTS-IN-SUIT 1 TABLE OF AUTHORITIES 2 3 Page Cases 4 Caliper Technologies Corp. v. Molecular Devices Corp., 213 F.R.D. 555 (N.D. Cal. 2003) .............................................................................................5, 7 5 Tristrata Technology, Inc. v. Neoteric Cosmetics, Inc., 6 35 F. Supp. 2d 370 (D. Del. 1998) ...........................................................................................7, 8 7 Zest IP Holdings, LLC v. Implant Direct MGG, LLC, 2011 WL 5525990 (S. D. Cal. 2011) .......................................................................................5, 7 8 9 Statutes 10 37 C.F.R. § 1.56 .................................................................................................................................6 11 Fed. R. Civ. P. 26(b)(1) ......................................................................................................................4 12 Fed. R. Civ. P. 26(b)(2) ......................................................................................................................4 13 Fed. R. Civ. P. 34(a) ...........................................................................................................................4 14 Local Rule 37-2 ..................................................................................................................................4 15 16 17 18 19 20 21 22 23 24 25 26 27 28 02198.51855/4637845.5 Case No. 11-cv-01846-LHK -viiSAMSUNG’S MOTION TO COMPEL PRODUCTION OF DOCUMENTS RELATING TO THE PATENTS-IN-SUIT 1 MEMORANDUM OF POINTS AND AUTHORITIES 2 I. INTRODUCTION 3 By this motion, Samsung seeks an order compelling Apple to produce any documents 4 relating to its efforts to secure design patent protection for designs related to the patents-in-suit, 5 including products Apple claims embody the patents-in-suit, such as the iPad2. 6 For example, Apple belatedly claimed during litigation of the preliminary injunction that 7 the iPad2 is a commercial embodiment of one of the design patents in suit, the D’889 patent. Its 8 motivation for doing so was to enhance its ability to contend that Samsung’s Galaxy Tab 10.1 9 tablet device infringed its patent; the problem for Apple was that Samsung’s product was nothing 10 like the design depicted in the D’889 patent. By claiming that the D’889 design was embodied in 11 the iPad 2, Apple argued, one could compare the iPad2 to Samsung’s tablet device to analyze 12 infringement. 13 The Court did just that in reaching its preliminary views on infringement. But this has now created a dilemma for Apple. In order to secure design patent protection 14 for the design embodied in the iPad2, Apple would necessarily have to certify that the design was 15 “new” and “original” as compared to other designs, including its own previously patented designs. 16 If, as Apple has asserted in interrogatory responses and pleadings to the Court on the motion for 17 preliminary injunction, the iPad2 is a commercial embodiment of the D’889 patent, which was 18 issued back in 2005, a newly claimed design on the iPad2 can hardly be “new” and “original.” 19 Thus, either the iPad2 is not, in fact, a commercial embodiment of the D’889 patent, which would 20 fundamentally undermine Apple’s claims in this action, or Apple gave a false certification to the 21 Patent Office in its iPad2 design applications, and any issued patents would be invalid. 22 Regardless of which is true, documents relating to any design patents or design patent applications 23 for the iPad2, including unpublished applications, would be very relevant to determining to the 24 scope of coverage of the D’889 patent. 25 And this is just one example. Apple has claimed that the iPhone, iPhone 3G, iPhone 26 3GS, iPhone 4, iPhone 4S and iPod Touch are commercial embodiments of the D’889, D’087, 27 D’677 and D’270 patents-in-suit. 28 02198.51855/4637845.5 Case No. 11-cv-01846-LHK -1SAMSUNG’S MOTION TO COMPEL PRODUCTION OF DOCUMENTS RELATING TO THE PATENTS-IN-SUIT 1 Numerous courts have recognized the relevance of such documents, and Apple no longer 2 disputes that prosecution history documents related to the patents-in-suit, or related to design 3 patents or applications related to the products it has claimed are commercial embodiments, are 4 relevant to Apple’s claims and Samsung’s defenses in this action. With respect to the file 5 wrappers of issued patents and published applications, Apple agreed over two weeks ago to 6 produce any such materials, in particular, those relating to a published foreign application 7 claiming the iPad2 as a commercial embodiment. 8 Yet it has not produced them. In addition, Apple is refusing to produce any prosecution documents relating to any of its 9 unpublished applications. Apple claims that to produce these unpublished applications would 10 allow Samsung to “design around” Apple’s patents, but this is absurd. The protective order in 11 this case would not allow Samsung employees or in-house lawyers to see such applications and 12 does not allow uses of produced documents other than for this litigation. And Apple’s claimed 13 concern that production of documents would allow Samsung to avoid infringing Apple’s design 14 patents – while not surprising given Apple’s clear preference for litigating over competing in the 15 marketplace – is hardly a reason to withhold critical discovery. 16 II. FACTS 17 A. 18 The relevance of these prosecution documents is best illustrated with an example: 19 Among the claims being asserted in this case are infringement claims based on the D’889 Apple’s Claims Based on the D’889 Design Patent 20 design patent, which depicts a design for a electronic device. During the preliminary injunction 21 proceedings, Apple belatedly supplemented an interrogatory response and asserted that the D’889 22 patent was embodied in the iPad2.1 23 In its Order denying Apple’s motion for a preliminary injunction, after considering the 24 prior art cited by Samsung, the Court concluded that “Samsung has raised a substantial question 25 regarding the validity of the D’889 patent on obviousness grounds.” Order at 44. The Court 26 1 See Hutnyan Decl., Exh. Objections and 27 Samsung’s Interrogatory No. 7 toD (Apple Inc’s Amended Inc's Motion forResponses to Apple Relating to Apple a Preliminary Injunction, at 5.) 28 02198.51855/4637845.5 Case No. 11-cv-01846-LHK -2SAMSUNG’S MOTION TO COMPEL PRODUCTION OF DOCUMENTS RELATING TO THE PATENTS-IN-SUIT 1 also relied on a comparison between the iPad2 and Samsung’s Galaxy Tab 10.1 tablet to support 2 its conclusion that “Apple will likely be able to establish infringement of the D’889 patent at 3 trial.” Order at 47-48. 4 Apple has claimed that the iPhone, iPhone 3G, and iPhone 3GS embody the design 5 claimed in the D’087 patent; that the iPhone, iPhone 3G, iPhone 3GS, iPhone 4, and iPhone 4S 6 embody the design claimed in the D’677 patent; and that the iPod Touch embodies the design 7 claimed in the D’270 patent.2 8 B. Samsung’s Effort To Obtain Documents Relating To Any Apple Design Patent Applications For The Designs Embodied In The iPad2 9 10 In its initial and subsequent discovery requests, Samsung has requested that Apple produce 11 documents relating to its efforts to secure design patent protection for inventions relating to the 12 patents-in-suit, including those related to products Apple claims embody the patents-in-suit such 13 as the iPad2. With respect to the iPad2 in particular, Samsung has requested in Request 362 14 “[a]ll DOCUMENTS RELATING to any applications or other attempts by APPLE to obtain any 15 design patent registration for the iPad 2, whether in a foreign country or in the U.S.” 16 17 issue.3 Correspondence between the parties demonstrates Apple’s continuing intransigence on this Samsung followed up on its Requests for Production Nos. 81 and 82 on January 16, and 18 then, after hearing no response from Apple, again on January 24.4 After asserting that it would, 19 at some unspecified time in the future, “update its production of applications and patents relating 20 to the patents-in-suit,”5 Samsung was unable to secure further promises from Apple.6 21 The parties met and conferred in person on February 6, when Apple agreed to inform 22 Samsung of what “specific information it is willing to provide with respect to unissued patent 23 2 See Hutnyan Decl., Exh. F (February 15, 2012 ITC Deposition of Christopher Stringer, 24 Exh. 7 at 1-2.) 3 See Hutnyan Decl. ¶ 10. 25 4 Hutnyan Decl., Exh. C (Letter, Scott C. Hall to Jason Bartlett, Jan. 16, 2012); id. (Letter, Scott C. Hall to Jason Bartlett, Jan. 24, 2012). 26 5 Id. (Letter, Jason Bartlett to Scott. C. Hall, Jan. 30, 2012). 6 See, e.g., id. (Letter, 27 Bartlett to Scott C. Hall, Feb.Scott C. Hall to Jason Bartlett, Feb. 3, 2012); id. (Letter, Jason 3, 2012) (simply reiterating that Apple would “update its production of patents and applications”). 28 02198.51855/4637845.5 Case No. 11-cv-01846-LHK -3SAMSUNG’S MOTION TO COMPEL PRODUCTION OF DOCUMENTS RELATING TO THE PATENTS-IN-SUIT 1 applications.”7 Apple did not dispute that it agreed to do so, but has completely failed to provide 2 the promised information.8 At the next lead counsel meet and confer meeting on February 14, 3 Apple said it agreed to produce the documents relating to any design patents or published design 4 patent applications, including with respect to the iPad2 by Friday, February 17, 2012 -- but it has 5 yet to do so.9 In short, at both meet and confer sessions, Apple has promised to provide specific 6 information to Samsung, and Apple has failed to follow through on both occasions. 7 In addition to the foregoing, Apple has declined to produce any documents relating to 8 unpublished applications, claiming that Samsung has failed to satisfy the “heightened relevancy 9 standard” that it claims governs such documents, and asserting in the most recent lead counsel 10 meet and confer that it did not want such documents to be produced because that might allow 11 Samsung to “design around” Apple’s patents.10 As explained below, neither of these arguments 12 provides a valid basis to withhold this critical evidence. 13 III. LEGAL STANDARDS 14 A party is entitled to seek through discovery “any nonprivileged matter that is relevant to 15 any party’s claim or defense.” Fed. R. Civ. P. 26(b)(1). “A party may serve on any other party 16 a request within the scope of Rule 26(b): (1) to produce . . . . (A) any designated documents . . . ; 17 or (B) any designated tangible things.” Fed. R. Civ. P. 34(a). “[T]he moving papers [on a 18 motion to compel] must detail the basis for the party’s contention that it is entitled to the requested 19 discovery and must show how the proportionality and other requirements of Fed. R. Civ. P. 20 26(b)(2) are satisfied.” Civil Local Rule 37-2. 21 22 23 7 24 25 26 27 28 02198.51855/4637845.5 Id. (Letter, Diane C. Hutnyan to Jason Bartlett, et. al, Feb. 7, 2012). See, e.g., id. (Letter, Marc J. Pernick to Diane C. Hutnyan, Feb. 9, 2012) (setting out disagreements with the Feb. 7, 2012 Diane Hutnyan letter but making no mention of a disagreement as to information on unissued patents); id. (Letter, Jason Bartlett to Scott C. Hall, Feb. 14, 2012) (providing disclosures but not as to unissued patents)). 9 See Hutnyan Dec. ¶ 11. 10 See Hutnyan Decl., Exh. C (Letter, Jason Bartlett to Scott C. Hall, Feb. 3, 2012 (heightened relevancy standard)); id. (Letter, Diane C. Hutnyan to Jason Bartlett, et al, Feb. 17, 2012 (“design around” argument)). 8 Case No. 11-cv-01846-LHK -4SAMSUNG’S MOTION TO COMPEL PRODUCTION OF DOCUMENTS RELATING TO THE PATENTS-IN-SUIT 1 IV. ARGUMENT 2 A. Apple’s Patent Applications Relating To The Patents-In-Suit Or Their Claimed Commercial Embodiments Are Relevant To Samsung’s Defenses 3 4 “Many courts have concluded that [pending and abandoned patent applications] are 5 relevant because they ‘may contain information or admissions that clarify, define or interpret the 6 claims of the patent in suit.’” Caliper Technologies Corp. v. Molecular Devices Corp., 213 7 F.R.D. 555, 561 (N.D. Cal. 2003). See also Zest IP Holdings, LLC v. Implant Direct MGG, LLC, 8 2011 WL 5525990 at *1 (S. D. Cal. 2011) (same). In Caliper, the Court ordered the plaintiff to 9 produce pending patent applications, including unpublished applications, finding that they 10 described similar technology to that at issue in the pending action and had the same inventor as the 11 patent-in-suit. 213 F.R.D. at 561. “This and any similar application will also shed light on the 12 technology claimed in the patent-in-suit as well as the language used to claim it.” 13 Id. Similarly, in Zest, the court concluded that “[t]he relevance of the patent applications is 14 obvious to the Court, as both applications make extensive reference to Plaintiffs’ patents, . . . 15 which are the subject of this action. The Court does not share Defendants’ restrictive view of 16 relevance that the only comparison that need be made is between Plaintiffs’ patent claims and 17 Defendants’ allegedly infringing products. . . . Relevant evidence regarding willful infringement, 18 prior art, and equivalency may be present within Defendants’ two patent applications.” 2011 WL 19 5525900 at *1. 20 Apple said it did not object to the production of documents relating to issued patents or 21 published patent applications – including with regard to the iPad2 design. But it has refused to 22 produce them, even weeks later, and should be required to produce them promptly as part of the 23 relief in this motion. Although it continues to object with regard to pending but unpublished 24 applications, there is no valid distinction for relevance purposes between published and 25 unpublished applications. 26 issues. As the cases above make clear, they are highly relevant to a number of Among other things, Samsung will defend against Apple’s D’889 patent infringement 27 claims by establishing that the iPad2 is not an embodiment of the D’889 patent, contrary to what 28 02198.51855/4637845.5 Case No. 11-cv-01846-LHK -5SAMSUNG’S MOTION TO COMPEL PRODUCTION OF DOCUMENTS RELATING TO THE PATENTS-IN-SUIT 1 Apple now claims, and that therefore Samsung’s products should not be compared to the iPad2 in 2 order to determine whether the D’889 patent has been infringed. 3 In support of this defense, Samsung is entitled to obtain all documents relating to any 4 effort by Apple to obtain design patent protection for the iPad2, including published and 5 unpublished applications. The reason these documents are highly relevant is that any such 6 application by Apple would have had to certify that the designs that are the subject of the 7 application are “new” and “original” as compared to other designs, including its own patented 8 designs. See Hutnyan Decl., Exh. E (Excerpts from the Certified File Wrapper for U.S. Design 9 Patent D504, 889, as produced to Samsung by Apple). 10 If Apple gave a truthful certification, then the iPad2 cannot possibly be an embodiment of 11 the D’889 design, which was issued years earlier in 2005. If the iPad2 is not an embodiment of 12 the D’889 design, then the iPad2 cannot be used by Apple to support its infringement claims with 13 regard to that patent. This, in turn, would significantly undermine Apple’s infringement claims, 14 given the absence of similarity between Samsung’s tablet devices and the D’889 design. 15 On the other hand, if Apple continues to maintain that the iPad2 is an embodiment of the 16 D’889 patent, then its certifications in connection with any new design applications would have 17 been false, and any subsequently issued patents would be invalid on that basis.11 Either way, the 18 documents relating to any applications, published or unpublished, are highly relevant to 19 Samsung’s defense to the D’889 claims. 20 Similar reasoning would justify production of documents relating to patent applications for 21 any design patents relating to any other products Apple claims are embodied in the patents-in-suit 22 – whether published or not. These documents will necessarily contain admissions by Apple 23 regarding what distinguishes the patent from prior art, including other Apple patents. These 24 admissions are relevant to establish whether the patents Apple is asserting in this action satisfy the 25 11 Indeed, this is likely the reason Apple has not claimed the first iPad as an additional 26 embodiment of D'889. Apple has two subsequently issued patents on the iPad: D627,777 and D637,596. Aside from being nearly identical, these patents preclude Apple from claiming that 27 the first iPad also embodies the D'889 patent. So far, Apple's ability to hide its pending U.S. patent applications from Samsung has allowed it to avoid this problem with the iPad2. 28 02198.51855/4637845.5 Case No. 11-cv-01846-LHK -6SAMSUNG’S MOTION TO COMPEL PRODUCTION OF DOCUMENTS RELATING TO THE PATENTS-IN-SUIT 1 novelty requirement, or are invalid under the bar against double patenting, or defenses of 2 obviousness or anticipation. These admissions will also bear directly on whether Samsung’s 3 accused products infringe, as they will constitute Apple’s own view of differences in features or 4 design that distinguish one patent from another. Samsung will establish that the products Apple 5 has claimed infringe are far more distinct from the patents-in-suit than the distinctions Apple has 6 articulated between its own patents and prior art. 7 B. Any Confidentiality Or Competitive Concerns Are Satisfied By The Protective Order 8 9 In the most recent meet and confer, Apple claimed it should not have to produce the 10 unpublished application documents because these documents would allow Samsung to “design 11 around” Apple’s patents. Even putting aside the reality that Apple has already disclosed these 12 patent applications to the U.S. Patent and Trademark Office, Apple’s “objection” is meritless. A 13 party’s concern that its opponent will use documents to avoid infringement cannot justify 14 withholding highly relevant documents where, as here, is an attorneys’ eyes only protective order 15 in place. In Zest, for example, the court recognized that the parties were “fierce competitors” but 16 concluded: 17 18 19 20 21 22 23 24 this intense rivalry does not trump Plaintiffs’ right and access to relevant information they need to prosecute this case. The Court has approved a two-tier protective Order . . . proposed by the parties in this action. The Protective Order, at paragraph 4, allows the party producing a document to designate the document as “Confidential” and “Confidential – For Counsel Only.” Moreover, the Protective Order, at paragraph 22, allows a party to object to the disclosure of information on any ground “other than the mere presence of Confidential Information.” Clearly, the parties, and especially Defendants, in a case involving highly sensitive information regarding products which are the life-blood of their respective businesses, contemplated the necessity of having to release such information to each other and took positive steps to propose such a Protective Order. Defendants’ unease with the protection provided by the Protective Order, which was jointly submitted to the Court, lacks justification. 25 26 2011 WL 5525990 at *1. The Court also rejected Defendants’ argument that opposing counsel 27 may not honor the protective order, because he is a member of the same firm that prosecutes 28 Plaintiffs’ patent applications. 02198.51855/4637845.5 Id. at *2. See also Caliper, 213 F.R.D. at 562 (ordering Case No. 11-cv-01846-LHK -7SAMSUNG’S MOTION TO COMPEL PRODUCTION OF DOCUMENTS RELATING TO THE PATENTS-IN-SUIT 1 production of pending patent applications subject to protective order); Tristrata Technology, Inc. 2 v. Neoteric Cosmetics, Inc., 35 F. Supp. 2d 370, 372 (D. Del. 1998) (competitor’s interest in 3 maintaining secrecy of information in pending applications “can be adequately preserved with a 4 particularized protective order”). 5 The Court has entered a two-tier protective order in this case that specifically prohibits the 6 parties from using any produced information for any purpose other than this case. And any 7 discovery materials marked “Highly Confidential – Attorneys Eyes Only” cannot be viewed by 8 any Samsung personnel, or even by outside counsel that is involved in competitive decision9 making. See Apple Inc. v. Samsung Electronics Co., Ltd., Agreed Upon Protective Order 10 Regarding Disclosure and Use of Discovery Materials, No. 11-CV-01846, Document 687 11 (“Protective Order”), at ¶ 9 (N.D. Cal. Jan. 30, 2012). Apple’s concern that Samsung will obtain 12 and misuse the information – much less in order to avoid inadvertently infringing Apple’s IP – is 13 premised on multiple, solely theoretical, violations of the Protective Order, not on any legitimate 14 confidentiality concern. 15 Finally, with respect to each application that has been filed on the designs embodied in 16 the iPad2, the iPhone, the iPhone 3G, or any other products Apple has identified as its commercial 17 embodiments, the designs being claimed are already public. Again, not only has Apple disclosed 18 them to a third party – the U.S. Patent Office – but the designs are visible on the products. 19 Apple’s objection should be overruled and production of these prosecution documents 20 should be ordered without further delay. 21 22 23 24 25 26 27 28 02198.51855/4637845.5 Case No. 11-cv-01846-LHK -8SAMSUNG’S MOTION TO COMPEL PRODUCTION OF DOCUMENTS RELATING TO THE PATENTS-IN-SUIT 1 V. CONCLUSION 2 For the foregoing reasons, Samsung respectfully requests that the Court grant this motion 3 and Order Apple to produce all documents relating to any efforts by Apple to obtain design 4 patents relating to the inventions of the patents-in-suit, including any related to products Apple 5 claims embody the patents-in-suit, including the iPad2. 6 7 DATED: March 6, 2012 8 9 10 11 12 13 QUINN EMANUEL URQUHART & SULLIVAN, LLP By /s/ Victoria F. Maroulis Charles K. Verhoeven Kevin P.B. Johnson Victoria F. Maroulis Michael T. Zeller Attorneys for SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., and SAMSUNG TELECOMMUNICATIONS AMERICA, LLC 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 02198.51855/4637845.5 Case No. 11-cv-01846-LHK -9SAMSUNG’S MOTION TO COMPEL PRODUCTION OF DOCUMENTS RELATING TO THE PATENTS-IN-SUIT

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