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

Filing 827

OPPOSITION to ( #781 Administrative Motion to File Under Seal ) Apple's Opposition to Samsung's Motion to Compel Production of Documents Relating to Apple's Efforts to Obtain Design Patents Related to the Patents-in-Suit filed byApple Inc.. (Attachments: #1 Jason Bartlett Declaration, #2 Exhibit 1, #3 Exhibit 2, #4 Proposed Order)(Jacobs, Michael) (Filed on 3/21/2012) Modified text on 3/22/2012 (dhm, COURT STAFF).

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]

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]

10
11

Attorneys for Plaintiff and
Counterclaim-Defendant APPLE INC.

12
13

UNITED STATES DISTRICT COURT

14

NORTHERN DISTRICT OF CALIFORNIA

15

SAN JOSE DIVISION

16
17
APPLE INC., a California corporation,

Case No.

11-cv-01846-LHK (PSG)

18
Plaintiff,
19
v.
20
21
22
23
24

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,
Defendants.

APPLE’S OPPOSITION TO
SAMSUNG’S 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

25
26
27
28
APPLE’S OPP. TO SAMSUNG’S MTC PRODUCTION OF DOCUMENTS RELATING TO DESIGN PATENTS
CASE NO. 11-cv-01846-LHK (PSG)
sf-3121697

1

Samsung’s motion to compel formally requests “all documents relating to any efforts by

2

Apple to obtain design patents relating to the inventions of the patents-in-suit, including any

3

related to products Apple claims embody the patents-in-suit, including the iPad2.” (Mot. at 9.)

4

The body of the motion itself reveals what Samsung is really after, however: unpublished design

5

patent applications relating to the patents-in-suit (e.g., applications in family trees of the asserted

6

patents), the iPad 2, and other products embodying the patents-in-suit.

7

Samsung’s motion should be denied. First, Samsung’s requests for production do not

8

cover patent applications relating to products embodying the patents-in-suit. Second, Samsung’s

9

sole justification for its request is the vague and unsupported hope that Apple’s pending

10

applications have admissions Samsung can use against Apple. This hope is insufficient to meet

11

the “heightened relevancy” standard that applies when a competitor seeks production of

12

unpublished patent applications. Samsung’s motion should be denied.

13

I.

14
15

SAMSUNG DID NOT REQUEST APPLE’S PATENT APPLICATIONS
RELATING TO PRODUCTS OTHER THAN IPAD 2.

Apple has already produced thousands of patents and published applications for patents in

16

the family trees of the patents-in-suit, foreign counterpart patents, and cited prior art, despite the

17

significant burden of production and the fact that this material was publicly available.

18

(Declaration of Jason R. Bartlett in Support of Apple’s Opposition (“Bartlett Decl.”) ¶ 2.)

19

Samsung did not timely request production of patent applications relating to Apple products other

20

than iPad 2. The discovery requests at issue are Samsung RFPs 81, 82, 97, 98, and 362. These

21

request:

22

Patents and applications related to Apple patents-in-suit (RFPs 81 and 82);

23

Documents concerning patentability and enforceability (RFP 97);

24

Documents that may disclose prior art to Apple patents-in-suit (RFP 98); and

25

Documents relating to attempts to obtain a design patent registration for the iPad 2

26

(RFP 362).

27

Samsung served Requests 81-98 in August 2011. Request 362 was served at the end of

28

December. Requests 81, 82, 97 and 98 do not add up to a broad request for all Apple patents and
APPLE’S OPP. TO SAMSUNG’S MTC PRODUCTION OF DOCUMENTS RELATING TO DESIGN PATENTS
CASE NO. 11-cv-01846-LHK (PSG)
sf-3121697

1

1

patent applications, published or unpublished, relating to iPhone, iPad and iPod touch. Nor could

2

Samsung have reasonably made such a request. As construed by Samsung, its requests would

3

require Apple to analyze every patent in its portfolio to determine which are embodied by iPhone,

4

iPad and iPod touch and which are not. Even if Apple could timely complete such a burdensome

5

analysis, the result would be an absurdly overbroad production covering patents having nothing to

6

do with the issues in dispute.

7

None of the cases Samsung cites supports its broad interpretation of its requests, and none

8

supports the broad production that Samsung demands. Caliper Technologies Corp. v. Molecular

9

Devices Corp., 213 F.R.D. 555, 561 (N.D. Cal. 2003) deals with a very specific request for

10

production: patents and applications relating to “inventions involving any fluorescence

11

polarization assay method, system or apparatus.” Tristrata Technology, Inc. v. Neoteric

12

Cosmetics, Inc., 35 F. Supp. 2d 370, 371 (D. Del. 1998) also deals with a highly specific request

13

for production: “all abandoned or pending domestic and foreign applications claiming the

14

priority to United States Patent Application Serial No. 06/946,680 filed December 23, 1986.”

15

Zest IP Holdings, LLC v. Implant Direct MFG., LLC, No. 10-0541-LAB (WVG), 2011 U.S. Dist.

16

LEXIS 130941 (S.D. Cal. Nov. 14, 2011) does not involve a request for production at all (it arose

17

out of a discussion at a discovery conference) and addresses only the potential production of two

18

specific patent applications. Here Samsung in essence demands production of “all patent

19

applications that relate to products that relate to the patents-in-suit.” Such a request is

20

unprecedented.

21
22
23

II.

SAMSUNG HAS NOT MADE THE “HEIGHTENED RELEVANCY”
SHOWING REQUIRED TO VITIATE STATORY PROTECTIONS
AGAINST DISCLOSURE OF UNPUBLISHED PATENT APPLICATIONS.

Samsung’s Requests 81 and 82 call for “applications to the [APPLE IP or APPLE

24

PATENTS-IN-SUIT] or patents related to the APPLE PATENTS-IN-SUIT” and Samsung’s

25

Request 362 calls for documents relating to “attempts to obtain a design patent registration” for

26

the iPad 2. Through these requests, Samsung seeks to penetrate the veil of secrecy that the Patent

27

Act affords pending patent applications. Samsung contends that “there is no valid distinction for

28

relevance purposes between published and unpublished applications.” (Mot. at 5.) On the
APPLE’S OPP. TO SAMSUNG’S MTC PRODUCTION OF DOCUMENTS RELATING TO DESIGN PATENTS
CASE NO. 11-cv-01846-LHK (PSG)
sf-3121697

2

1

contrary, it is “well established that materials relating to a pending patent application are

2

confidential, and therefore enjoy a degree of protection against disclosure.” ICU Medical, Inc. v.

3

B. Braun Med., Inc., 224 F.R.D. 461, 462 (N.D. Cal. 2002). This is based in part on a

4

Congressional directive that the PTO must keep patent applications confidential unless disclosure

5

is permitted by the applicant. 35 U.S.C. § 122.

6

“[C]ourts have uniformly recognized that a heightened relevancy standard must be

7

applied” to discovery of pending patent applications and related materials. ICU Medical, 224

8

F.R.D. at 462 (emphasis added). The concern is particularly acute in the case of design patent

9

applications which, unlike utility patents, never publish before issuance. 35 U.S.C. § 122

10

(b)(2)(A)(iv) (excepting design patent applications from publication). To meet this standard,

11

Samsung must demonstrate that its need to examine the unpublished applications outweighs

12

Apple’s interest in preserving secrecy. Microsoft Corp. v. Multi-Tech Systems, Inc., No. 00-1412

13

(ADM/RLE), 2001 U.S. Dist. LEXIS 23155 (D. Minn. Dec. 14, 2001) (denying motion to compel

14

production of pending patent applications); Vibrosaun USA, Inc. v. Saunamassage Int’l, Inc., No.

15

87-0656-CV-W-6, 1988 U.S. Dist. LEXIS 10574, at *8-9 (W.D. Mo. Sept. 19, 1988) (denying

16

motion because “the party seeking disclosure must make a convincing showing of necessity

17

before being permitted access to the requested patent application files”); Ideal Toy Corp. v. Tyco

18

Indus., 478 F. Supp. 1191, 1194-95 (D. Del. 1979) (denying motion to compel because “Tyco has

19

not made a convincing showing of the necessity that it obtain the requested patent application

20

files”).

21

Citing the wrong legal standard, Samsung does not even attempt to show “heightened

22

relevancy” or any real need for the unpublished applications at issue. Instead, Samsung argues

23

without factual or legal support that (1) unpublished patent applications may show that Apple’s

24

certifications that the designs are “new” and “original” may be false;1 and (2) the documents may

25
1

26
27

Moreover, design patent applicants do not even make any such certification. The only
paper that is provided is a declaration signed by the inventor or inventors, which merely states, “I
believe I am the original and first inventor of the subject matter which is claimed.” (Bartlett Decl.
Ex. 1.) No one “certifies” the application.

28
APPLE’S OPP. TO SAMSUNG’S MTC PRODUCTION OF DOCUMENTS RELATING TO DESIGN PATENTS
CASE NO. 11-cv-01846-LHK (PSG)
sf-3121697

3

1

“contain admissions by Apple regarding what distinguishes the patent from prior art.” (Mot. at 6.)

2

Samsung’s arguments are insufficient to justify disclosure.

3

Samsung’s bald proclamation of relevance and its vague and generalized statements

4

regarding possible “admissions” cannot tip the scales in favor of disclosure. Courts that have

5

considered arguments identical to Samsung’s have denied motions to compel. See, e.g.,

6

Microsoft Corp., 2001 U.S. Dist. LEXIS 23155, at *21. The Microsoft court held that the mere

7

presence of possible admissions was a “meager showing” of relevance, and that if this were

8

sufficient, “the balancing test would be unavailing, as pending and abandoned applications for

9

related patents would always be relevant for, as a theoretical proposition, they could always

10

contain admissions.” Id. at *21 (emphasis added). As an example of a “specific showing of

11

relevance,” the court stated that a party could cite instances in which “previous [published] patent

12

applications have contained significant admissions.” Id. Samsung has made no such showing

13

here.

14

An even higher showing of relevancy is required when the parties are competitors: “The

15

fact that the parties are competitors is a matter that weighs strongly against disclosure.” ICU

16

Medical, 224 F.R.D. at 462; see also Microsoft Corp., 2001 U.S. Dist. LEXIS 23155, at *19

17

(denying motion to compel pending patent applications, noting “direct competition in the relevant

18

marketplace by the parties weighs on secrecy’s side”). There is no dispute here that Apple and

19

Samsung are direct competitors. Apple and Samsung are competing in at least the smartphone

20

and tablet computer markets.

21

There is a significant risk of competitive harm to Apple if Samsung’s counsel is given

22

access to Apple’s unpublished iPad 2 design patent applications. Apple has explained its concern

23

that litigation counsel is advising Samsung in connection with efforts to design-around Apple’s

24

patents-in-suit. In response, Samsung’s motion recites the protective order while at the same time

25

suggesting that using protected information to assist with design-around efforts is proper, and

26

perhaps should be encouraged. What Samsung does not do in its motion is actually deny that its

27

litigation counsel has, just as Apple feared, assisted Samsung in its design-around efforts.

28
APPLE’S OPP. TO SAMSUNG’S MTC PRODUCTION OF DOCUMENTS RELATING TO DESIGN PATENTS
CASE NO. 11-cv-01846-LHK (PSG)
sf-3121697

4

1

Giving Samsung an advanced look at Apple’s unpublished patent applications would give

2

Samsung a substantial competitive edge. Samsung has no information about what aspects of

3

Apple’s designs, if any, Apple is currently attempting to patent. If Samsung gained access to that

4

information, it could fine-tune its product development efforts to avoid Apple’s future patents.

5

Apple would be at a disadvantage because it does not have reciprocal information about

6

Samsung’s unpublished applications. In a business where time-to-market is critical—Samsung’s

7

counsel once quipped that the products have the shelf-life of “cabbage” (Bartlett Decl. Ex. 2 at

8

32:13.)—the importance of that lead time cannot be understated. The cases cited above establish

9

that Samsung’s mere hope that Apple might have said something contradictory in its unpublished

10

patent applications is not enough to justify such a risk of competitive harm to Apple.

11

III.

12

For the foregoing reasons, Apple respectfully requests the Court to deny Samsung’s

CONCLUSION

13

Motion to Compel in its entirety.

14

Dated: March 21, 2012

MORRISON & FOERSTER LLP

15
16
17
18

By:

/s/ Michael A. Jacobs
Michael A. Jacobs
Attorneys for Plaintiff
APPLE INC.

19
20
21
22
23
24
25
26
27
28
APPLE’S OPP. TO SAMSUNG’S MTC PRODUCTION OF DOCUMENTS RELATING TO DESIGN PATENTS
CASE NO. 11-cv-01846-LHK (PSG)
sf-3121697

5