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

Filing 939

Administrative Motion to File Under Seal Apple's Administrative Motion to File Documents Under Seal filed by Apple Inc.. (Attachments: #1 Apple's Motion to Strike Portions of Samsung's Expert Reports, #2 Decl. of C. Wheeler, #3 Decl. of E. Tierney, #4 Decl. of M. Pernick, #5 Ex. 1, #6 Ex. 14, #7 Ex. 15, #8 Ex. 32, #9 Ex. 33, #10 Ex. 36, #11 Ex. 37, #12 Proposed Oder Granting Apple's Motion to Strike, #13 Proposed Order Granting Apple's Admin Motion)(Tucher, Alison) (Filed on 5/17/2012) Modified on 5/21/2012 attachment #2 and #3 sealed pursuant to General Order No. 62 (dhm, COURT STAFF).

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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]

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Attorneys for Plaintiff and
Counterclaim-Defendant APPLE INC.

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

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APPLE INC., a California corporation,

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Plaintiff,

Case No. 11-cv-01846-LHK
APPLE’S MOTION TO STRIKE
PORTIONS OF SAMSUNG’S
EXPERT REPORTS

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,

Date:
Time:
Place:
Judge:

June 26, 2012
10:00 a.m.
Courtroom 5, 4th Floor
Hon. Paul S. Grewal

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Defendants.
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REDACTED PUBLIC VERSION

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APPLE INC.’S MOT. TO STRIKE PORTIONS OF SAMSUNG’S EXPERT REPORTS
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TABLE OF CONTENTS

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Page

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NOTICE OF MOTION AND MOTION ........................................................................................ 1

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MEMORANDUM OF POINTS AND AUTHORITIES ................................................................ 1

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I.

INTRODUCTION .............................................................................................................. 1

II.

BACKGROUND ................................................................................................................ 2

III.

LEGAL STANDARD......................................................................................................... 2

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A.

Parties Cannot Deviate From Their Invalidity or Infringement Contentions
Absent Leave of Court Based on a Showing of Good Cause ................................. 3

B.

The Federal Rules Prohibit Parties From Using Information at Trial That
They Did Not Timely Disclose in Their Interrogatory Responses ......................... 3

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IV.

ARGUMENT ...................................................................................................................... 4
A.

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The Court Should Strike the Portions of Samsung’s Utility Patent Expert
Reports That Assert Invalidity, Non-Infringement, and Infringement
Theories That Were Not Disclosed During Discovery ........................................... 4
1.
Samsung’s Invalidity Expert Reports Rely on Prior Art References
That Samsung Did Not Disclose in Its Invalidity Contentions ................... 5
a.
The Gray Invalidity Report (the ’915 Patent) ................................. 6

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b.

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2.

c.
The Von Herzen Invalidity Report (the ’607 Patent)...................... 7
Samsung’s Expert Reports Assert Non-Infringement Arguments
That Samsung Did Not Disclose in Its Interrogatory Response ................. 8

3.

Mr. Gray Cannot Testify About Non-Infringement Theories for
Products He Has Not Identified ................................................................ 10

4.

Samsung’s Expert Reports Assert Infringement Theories That
Samsung Did Not Disclose in Its Infringement Contentions .................... 11
a.
The Yang Infringement Report (the ’460 Patent) ......................... 11

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The Van Dam Invalidity Report (the ’381 Patent).......................... 6

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b.
The Williams Infringement Report (the ’516 Patent) ................... 13
The Court Should Strike the Portions of Samsung’s Design and Trade
Dress Expert Reports That Assert Theories Not Disclosed During
Discovery .............................................................................................................. 14
1.
Many of Samsung’s Anticipation and Obviousness Theories Were
Not Disclosed Until After Discovery Closed............................................ 15

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2.

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B.

Samsung’s Experts Make Arguments Regarding Lack of
Distinctiveness That Samsung Did Not Disclose in Discovery ................ 19
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TABLE OF CONTENTS
(Continued)

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Page

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3.

Samsung’s Design Experts Offer Non-Infringement Theories That
Samsung Did Not Disclose Before the Close of Discovery...................... 20

5.

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Samsung Did Not Disclose Its Indefiniteness Theories During
Discovery .................................................................................................. 19

4.

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Samsung Did Not Disclose During Discovery Mr. Godici’s
Argument That Apple’s Design Patents Should be Construed
Narrowly ................................................................................................... 21

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C.

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V.

The Court Should Strike Mr. Von Herzen’s Inequitable Conduct Opinion.......... 22

D.

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The Court Should Strike Samsung’s Late Supplemental Damages Report
and Samsung’s Alternative Calculations Produced on April 16, 2012................. 23

CONCLUSION ................................................................................................................. 25

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TABLE OF AUTHORITIES

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Page(s)

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CASES

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ATD Corp. v. Lydall, Inc.,
159 F.3d 534 (Fed. Cir. 1998)................................................................................................. 17

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Baltodano v. Wal-Mart Stores, Inc.,
2011 U.S. Dist. LEXIS 98306 (D. Nev. Aug. 31, 2006) ........................................................ 22
Brilliant Instruments, Inc. v. Guidetech, Inc.,
2011 WL 900369 (N.D. Cal. Mar. 15, 2011)........................................................................ 3, 5
CBS Interactive, Inc. v. Etilize, Inc.,
257 F.R.D. 195 (N.D. Cal. 2009) .......................................................................................... 3, 6
Cummins-Allison Corp. v. SBM Co., Ltd.,
2009 U.S. Dist. LEXIS 22114 (E.D. Tex. March 19, 2009) ..................................................... 7
Edizone, L.C. v. Cloud Nine,
2008 WL 584991 (D. Utah Feb. 29, 2008) ......................................................................... 6, 17
Fastek, LLC v. Steco,
No. 10CV0972-MMA, 2011 U.S. Dist. LEXIS 111198 (S.D. Cal. Sept. 27, 2011) ............ 5, 7

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Fleming v. Escort, Inc.,
2011 U.S. Dist. LEXIS 14254 (D. Idaho. Feb. 13, 2011) ....................................................... 18
Gambro Lundia AB v. Baxter Healthcare Corp.,
110 F.3d 1573 (Fed. Cir. 1997)................................................................................................. 8
Heidelberg Harris, Inc. v. Mitsubishi Heavy Indus., Ltd.,
1996 U.S. Dist. LEXIS 17362 (N.D. Ill. Nov. 21, 1996)........................................................ 17

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Hoffman v. Constr. Protective Servs.,
541 F.3d 1175 (9th Cir. 2008)................................................................................................. 21
Lab. Skin Care, Inc. v. Limited Brands, Inc.,
661 F. Supp. 2d 473 (D. Del. 2009) ........................................................................................ 16
Mancini v. Ins. Corp. of New York,
2009 WL 1765295 (S.D. Cal. June 18, 2009)......................................................................... 18

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Microstrategy Inc. v. Business Objects, S.A.,
429 F.3d 1344 (Fed. Cir. 2005)................................................................................................. 3
Morock v. Chautauqua Airlines, Inc.,
2007 U.S. Dist. LEXIS 88532 (M.D. Fla. Dec. 3. 2007) ........................................................ 18
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TABLE OF AUTHORITIES
(Continued)

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Page(s)
CASES
O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc.,
467 F.3d 1355 (Fed. Cir. 2006)................................................................................................. 3
Oracle USA, Inc. v. SAP AG,
264 F.R.D. 541 (N.D. Cal. 2009) .................................................................................. 4, 17, 22
Praxair, Inc. v. ATMI, Inc.,
231 F.R.D. 457 (D. Del. 2005)................................................................................................ 17
Primos, Inc. v. Hunter’s Specialties, Inc.,
451 F.3d 841 (Fed. Cir. 2006)........................................................................................... 17, 22
SEC v. Eldindepan, S.A.,
No. 1:00CV00742, 206 F.R.D. 574 (M.D. N. Car. 2002)....................................................... 19

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SPX Corp. v. Bartec USA, LLC,
2008 U.S. Dist. LEXIS 29235 (E.D. Mich. Apr. 10, 2008) ................................................ 4, 22
Transclean Corp. v. Bridgewood Servs., Inc.,
290 F.3d 1364 (Fed. Cir. 2002)........................................................................................... 9, 21
Transclean Corp. v. Bridgewood Servs., Inc.,
77 F. Supp. 2d 1045 (D. Minn. 1999), aff’d, 290 F.3d 1364 (Fed. Cir. 2002) ......................... 3

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Tyco Healthcare Group LP v. Applied Med. Resources Corp.,
No. 9:06-cv-151, 2009 U.S. Dist. LEXIS 125379 (E.D. Tex. Mar. 30, 2009) ..................... 5, 6
Warner-Lambert Co. v. Teva Pharma. USA, Inc.,
2006 WL 267328 (D. N.J. Jan. 31, 2006) ......................................................................... 10, 21
Wong v. Regents of the Univ. of California,
410 F.3d 1052 (9th Cir. 2005)................................................................................................. 22

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Yeti by Molly Ltd. v. Deckers Outdoor Corp.,
259 F.3d 1101 (9th Cir. 2001)............................................................................................. 4, 22

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STATUTES

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35 U.S.C. § 102(f) ........................................................................................................................... 8

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OTHER AUTHORITIES
Fed. R. Civ. P. 26 ............................................................................................................................ 4

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TABLE OF AUTHORITIES
(Continued)

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Page(s)
OTHER AUTHORITIES
Fed. R. Civ. P. 26(e).................................................................................................... 1, 2, 4, 19, 22
Fed. R. Civ. P. 26(e)(1) ................................................................................................................... 3

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Fed. R. Civ. P. 33(d) ....................................................................................................... 1, 2, 17, 18
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Fed. R. Civ. P. 37(c)(1) .......................................................................................................... passim
Patent Local Rule 3-1(c) ................................................................................................................. 3
Patent Local Rules 3-3(a)-(c) .......................................................................................................... 3

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NOTICE OF MOTION AND MOTION
TO:

ALL PARTIES AND THEIR ATTORNEYS OF RECORD:
PLEASE TAKE NOTICE that on June 26, 2012, at 10:00 a.m., or as soon as the matter

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may be heard by the Honorable Paul S. Grewal in Courtroom 5, United States District Court for

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the Northern District of California, Robert F. Peckham Federal Building, 280 South 1st Street,

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San Jose, CA 95113, Apple Inc. (“Apple”) shall and hereby does move the Court pursuant to

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Federal Rule of Civil Procedure 37(c)(1) and the Patent Local Rules to strike certain portions of

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the expert reports of Stephen Gray, Andries Van Dam, Brian Von Herzen, Woodward Yang, Tim

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A. Williams, Jeffrey Johnson, Sam Lucente, Itay Sherman, Nicholas P. Godici, Robert John

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Anders, and Michael Wagner, each of whom has been retained by Samsung Electronics Co., Ltd.,

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Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC

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(collectively, “Samsung”).

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This motion is based on this notice of motion and supporting memorandum of points and

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authorities; the Declaration of Marc J. Pernick in Support of Apple’s Motion to Strike Portions of

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Samsung’s Expert Reports (“Pernick Decl.”) and exhibits attached thereto; and such other written

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or oral argument as may be presented at or before the time this motion is taken under submission

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by the Court.

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RELIEF REQUESTED
Pursuant to Federal Rule of Civil Procedure 37(c)(1) and the Patent Local Rules, Apple

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seeks an order striking portions of certain reports submitted by Messrs. Gray, Van Dam, Von

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Herzen, Yang, Williams, Johnson, Lucente, Sherman, Godici, Anders, and Wagner, as identified

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in detail in the accompanying Memorandum of Points and Authorities and Proposed Order.

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Specifically, Apple requests that the Court strike the portions of those reports (and exhibits

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thereto) that present evidence, arguments, or theories that Samsung failed to timely disclose as

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required by the Patent Local Rules and Federal Rules of Civil Procedure 26(e) and 33.

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STATEMENT OF ISSUES TO BE DECIDED
1.

Whether the Court should strike certain portions of the opening expert reports of

Stephen Gray, Andries Van Dam, and Brian Von Herzen on the ground that those portions
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contain invalidity theories and prior art references that Samsung failed to disclose in its Invalidity

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Contentions?

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2.

Whether the Court should strike certain portions of the opening expert report of

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Brian Von Herzen regarding U.S. Patent No. 7,663,607 on the grounds that those portions contain

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inequitable conduct arguments and allegations that Samsung did not assert in its answer?

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3.

Whether the Court should strike certain portions of the rebuttal expert report of

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Jeffrey Johnson, the rebuttal expert report of Stephen Gray, and Brian Von Herzen’s rebuttal

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expert report regarding U.S. Patent No. 7,663,607 on the ground that those portions contain non-

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infringement arguments or theories that Samsung failed to timely disclose in interrogatory

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responses under Rule 33 and Rule 26(e)?
4.

Whether the Court should strike certain portions of the opening expert reports of

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Woodward Yang and Tim A. Williams on the ground that those portions contain infringement

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theories and arguments that Samsung failed to disclose in its Infringement Contentions?

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5.

Whether the Court should strike certain portions of the opening and rebuttal expert

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reports of Sam Lucente and the opening expert reports of Itay Sherman and Nicholas A. Godici

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on the ground that those portions contain invalidity arguments or theories that Samsung failed to

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timely disclose in interrogatory responses under Rule 33 and Rule 26(e)?

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6.

Whether the Court should strike certain portions of Nicholas A. Godici’s opening

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expert report on the ground that those portions contain theories concerning the scope of Apple’s

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patents that Samsung failed to timely disclose in interrogatory responses under Rule 33 and

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Rule 26(e)?

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7.

Whether the Court should strike certain portions of the rebuttal expert reports of

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Sam Lucente and Robert John Anders on the ground that those portions contain non-infringement

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arguments or theories that Samsung failed to timely disclose in interrogatory responses under

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Rule 33 and Rule 26(e)?

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8.

Whether the Court should strike the supplemental expert report of Michael Wagner

as untimely, and strike certain portions of Mr. Wagner’s rebuttal expert report on the ground that

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those portions rely on financial information that was never produced to Apple during fact

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discovery.

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Dated: May 17, 2012

MORRISON & FOERSTER LLP

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By: /s/ Alison M. Tucher
Alison M. Tucher
Attorneys for Plaintiff
APPLE INC.

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MEMORANDUM OF POINTS AND AUTHORITIES
I.

INTRODUCTION
This Court in March denied Samsung’s attempt to introduce new invalidity contentions

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regarding Apple’s patents––and new infringement contentions for its own patents––that Samsung

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had not disclosed in a timely fashion. The Court would not allow Samsung to rely on its untimely

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theories because “fact discovery is over, expert discovery is underway, and the trial is set to begin

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in approximately four months,” which “leave[s] little opportunity for Apple to explore and

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respond to Samsung’s new contentions.” (Dkt. No. 836 at 10 (“Order Denying Samsung’s

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Motion to Amend Invalidity and Infringement Contentions”).) Although the Court did not know

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it at the time, the late-disclosed defenses and claims at issue then were just the tip of the iceberg.

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Samsung now asserts an array of new contentions that reaches nearly every issue of this case.

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Samsung’s expert reports are rife with theories and arguments that Samsung did not

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disclose until after written fact discovery closed on March 10, 2012. The Patent Local Rules and

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Apple’s interrogatories required Samsung to divulge these contentions earlier, but Samsung held

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many of them back. This problem infects virtually every aspect of the case. As explained below,

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Samsung’s expert reports assert new arguments about why Apple’s utility and design patents are

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allegedly invalid, why Samsung supposedly does not infringe Apple’s utility and design patents,

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and why Apple’s trade dress lacks distinctiveness. Samsung also puts forth new theories about

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why it believes that Apple infringes Samsung’s patents. Samsung even plans to have its damages

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expert testify based on information that Samsung withheld during discovery.

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The Patent Local Rules and the Federal Rules of Civil Procedure forbid such “trial by

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ambush” tactics. The Court should hold Samsung to the positions it articulated in its Patent Local

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Rule Contentions and its pre-discovery cutoff interrogatory responses, and strike all portions of

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Samsung’s expert reports (and exhibits to the reports) that go beyond those disclosures. Apple

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had no opportunity to conduct discovery on these new positions that Samsung divulged for the

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first time after discovery closed. Allowing Samsung to proceed at trial with these expert opinions

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would be unfair.

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II.

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BACKGROUND
At the trial that will commence on July 30, 2012, Apple will prove that Samsung’s

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products infringe four of Apple’s utility patents and four of Apple’s design patents, and that

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Samsung has diluted (and in the case of the iPad, infringed) Apple’s trade dress. Samsung will

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allege that Apple has infringed seven of its utility patents.

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Samsung maintains that Apple’s asserted intellectual property assets are all invalid, and

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that Samsung’s products do not infringe any Apple intellectual property. The federal discovery

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rules and the Patent Local Rules require Samsung to explain the bases for these contentions.

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Pursuant to the Patent Local Rules, Samsung served Infringement Contentions for its utility

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patents on September 7, 2011, and Invalidity Contentions directed at Apple’s utility patents on

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October 7, 2011. For purposes of learning Samsung’s positions on issues not covered by the

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Patent Local Rules, Apple propounded a series of interrogatories early, asking Samsung to

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disclose the bases for its defenses. Apple propounded interrogatories concerning Samsung’s

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invalidity and non-infringement defenses to Apple’s charge of design patent infringement and to

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its trade dress claims, and an interrogatory asking Samsung to explain the bases for its contention

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that it does not infringe Apple’s utility patents. Samsung responded to Apple’s interrogatories

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before written discovery closed on March 10, 2012.1

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But the opening expert reports that Samsung served on or shortly after March 22, 2012,

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and the rebuttal reports it served on or shortly after April 16, 2012, proffer opinions that go well

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beyond the contentions that Samsung disclosed prior to the March 10th discovery cutoff.

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III.

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LEGAL STANDARD
This motion asks the Court to preclude Samsung’s experts from advancing arguments at

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trial that Samsung did not disclose during discovery. Many opinions that Samsung’s experts now

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offer should have been divulged to Apple earlier in accordance with two different mechanisms:

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(a) Samsung’s Patent Local Rule Invalidity and Infringement Contentions, and (b) Samsung’s

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The deadline for completing fact discovery was March 8, 2012. (Pernick Decl. ¶ 4.)
The parties agreed to a 48-hour extension of the time to respond to written discovery. (Id.)
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responses to Apple’s interrogatories. Courts do not allow parties to make arguments at trial that

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should have been disclosed pursuant to either of these procedures but were not.

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A.

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Parties Cannot Deviate From Their Invalidity or Infringement Contentions
Absent Leave of Court Based on a Showing of Good Cause.

“[O]ne of the purposes of the patent local rules [is] to provide the parties with certainty as

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to the opposing party’s legal theories.” (Dkt. No. 836 at 10 (citing O2 Micro Int’l Ltd. v.

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Monolithic Power Sys., Inc., 467 F.3d 1355, 1363 (Fed. Cir. 2006).) To that end, the Patent Local

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Rules require patentees and accused infringers to divulge their contentions with specificity.

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Rules 3-3(a)-(c) require Invalidity Contentions to “identi[f]y [ ] each item of prior art that

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allegedly anticipates each asserted claim or renders it obvious . . . ; [w]hether each item of prior

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art anticipates each [ ] claim or renders it obvious . . . ; [and] [a] chart identifying where

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specifically in each alleged item of prior art each limitation of each asserted claim is found[.]”

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Rule 3-1(c) requires Infringement Contentions to state “specifically where each limitation of each

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asserted claim is found within each accused instrumentality[.]”

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The Patent Local Rules also force “parties to crystallize their theories of the case early in

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the litigation and to adhere to those theories once they have been disclosed.” CBS Interactive,

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Inc. v. Etilize, Inc., 257 F.R.D. 195, 201 (N.D. Cal. 2009). Parties may not stray from their

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contentions absent leave and a showing of good cause. Id. If a party fails to secure leave to

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amend or to timely disclose its new theories, a court may exclude evidence or strike portions of

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expert reports related to those new theories. See O2 Micro, 467 F.3d at 1369; Brilliant

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Instruments, Inc. v. Guidetech, Inc., 2011 WL 900369, at *2 (N.D. Cal. Mar. 15, 2011) (granting

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motion to strike from invalidity expert’s report prior art references not in Invalidity Contentions).

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B.

The Federal Rules Prohibit Parties From Using Information at Trial That
They Did Not Timely Disclose in Their Interrogatory Responses.

Rule 26(e)(1) of the Federal Rules of Civil Procedure requires parties to seasonably

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supplement their interrogatory responses if the prior responses are incomplete or incorrect. This

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duty to supplement applies to contention interrogatories. See Microstrategy Inc. v. Business

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Objects, S.A., 429 F.3d 1344, 1356-57 (Fed. Cir. 2005); Transclean Corp. v. Bridgewood Servs.,
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Inc., 77 F. Supp. 2d 1045, 1061-62 (D. Minn. 1999), aff’d, 290 F.3d 1364 (Fed. Cir. 2002) (party

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violated Rule 26(e) by failing to “completely disclose its position” on patent invalidity in

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response to contention interrogatories). A party must exercise “due diligence” in supplementing

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its disclosures, SPX Corp. v. Bartec USA, LLC, 2008 U.S. Dist. LEXIS 29235, at *22 (E.D. Mich.

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Apr. 10, 2008), and supplementation should occur “during the discovery period.”

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Fed. R. Civ. P. 26 Advisory Committee’s Note to 1993 Amendments.

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Rule 37(c)(1) “mandates that a party’s failure to comply with . . . the supplemental

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disclosure obligations under [Rule] 26(e) results in that party being precluded from use” of the

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withheld information. Oracle USA, Inc. v. SAP AG, 264 F.R.D. 541, 544 (N.D. Cal. 2009); see

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also Yeti by Molly Ltd. v. Deckers Outdoor Corp., 259 F.3d 1101, 1106 (9th Cir. 2001)

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(preclusion of evidence under Rule 37(c)(1) is “automatic” and “self-executing” unless an

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exception applies). To avoid preclusion, a party who violates Rule 26(e) bears the burden of

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showing that the violation was substantially justified or harmless. Id. at 1101.

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IV.

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ARGUMENT
A.

The Court Should Strike the Portions of Samsung’s Utility Patent Expert
Reports That Assert Invalidity, Non-Infringement, and Infringement
Theories That Were Not Disclosed During Discovery.

Samsung’s opening expert reports introduced new invalidity theories regarding Apple’s

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utility patents that Samsung had not disclosed in its Invalidity Contentions, and new infringement

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theories regarding Samsung’s patents that were not in Samsung’s Infringement Contentions.

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Samsung’s rebuttal reports contained non-infringement arguments that Samsung did not divulge

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in its response to Apple’s contention interrogatory asking about the bases for Samsung’s non-

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infringement defenses. Samsung did not give Apple notice of these contentions until after

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discovery closed. Samsung should not be allowed to use its expert reports as an end-run around

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the Patent Local Rules and the Federal Rules of Civil Procedure. The Court should hold Samsung

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to the invalidity, non-infringement, and infringement theories that it put in its Patent Local Rule

26

disclosures and its response to Apple’s Interrogatory No. 2.

27
28
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1.

2
3

Samsung’s Invalidity Expert Reports Rely on Prior Art References
That Samsung Did Not Disclose in Its Invalidity Contentions.

Samsung served its Invalidity Contentions on October 7, 2011. (Pernick Decl. Ex. 1.)

4

Samsung cited over 600 alleged prior art references and included more than 70 invalidity claim

5

charts. (See id. at 5, 11-12, 18, 24-26, 33, 40, 46-48, 54-55.) Samsung moved to supplement its

6

Invalidity Contentions to add five more alleged items of prior art on January 27, 2012. (Dkt.

7

No. 670.) This Court denied Samsung’s motion, finding that Samsung had not acted diligently in

8

seeking leave to amend. (Dkt. No. 836.)

9

Written discovery closed on March 10, 2012. Samsung served its invalidity expert reports

10

on March 22. Samsung’s utility patent experts relied on at least 44 prior art references that

11

Samsung did not disclose––or insufficiently disclosed––in its Invalidity Contentions. Many of

12

these references are not at issue now, for they relate only to claims that Apple will dismiss

13

without prejudice.2 But 18 of the alleged prior art references still matter. Samsung did not

14

properly disclose these references in its Invalidity Contentions, and did not seek leave to amend

15

its Invalidity Contentions to add these references. The Court should strike all portions of the

16

Samsung expert reports––including exhibits to the reports––that present arguments based on this

17

prior art. See Brilliant, 2011 WL 900369, at *2 (granting motion to strike from expert’s report

18

prior art references not in Invalidity Contentions); Fastek, LLC v. Steco, No. 10CV0972-MMA,

19

2011 U.S. Dist. LEXIS 111198, at *3-5 (S.D. Cal. Sept. 27, 2011) (same outcome under parallel

20

Patent Local Rules); Tyco Healthcare Group LP v. Applied Med. Resources Corp., No. 9:06-cv-

21

151, 2009 U.S. Dist. LEXIS 125379, at *13-14 (E.D. Tex. Mar. 30, 2009) (striking prior art

22

combinations from invalidity expert’s report that were not disclosed in Invalidity Contentions).

23

Allowing Samsung’s experts to opine at trial on this art would unfairly prejudice Apple.

24

Apple conducted discovery based on the understanding that Samsung’s prior art defenses were

25

limited to what Samsung disclosed in its Invalidity Contentions. Apple had no chance to conduct

26

written discovery or fact depositions on the new prior art because fact discovery closed twelve

27
28

2

Although Apple does not seek to strike expert opinions relating only to claims that it will
dismiss without prejudice or to claims that Samsung has represented that it will dismiss without
prejudice, Apple reserves all rights to seek such relief at a later date.
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days before Samsung served its expert reports. The Patent Local Rules “disfavor” exactly this

2

type of untimely disclosure. CBS Interactive, 257 F.R.D. at 203; Tyco, 2009 U.S. Dist. LEXIS

3

125379, at *10 (striking previously undisclosed prior art because fact discovery had closed).

4
5

a.

The Gray Invalidity Report (the ’915 Patent)

Stephen Gray opines that the ’915 Patent is invalid. In doing so, Mr. Gray’s report

6

discusses ten alleged prior art references that were not disclosed in Samsung’s Invalidity

7

Contentions. (See Pernick Decl. Ex. 1 at 24-27.) The Court should strike all portions of the Gray

8

report that rely on or discuss this art, specifically Paragraphs 145, 153, 154, 156, 161-165, 172-

9

82, and 213, and related exhibits. (See Pernick Decl. Ex. 2; Ex.6 at 1, 5-18, 20; Exs. 3-5, 7-10.)

10

The Court should reject Samsung’s sole argument to the contrary. During the parties’

11

meet-and-confer discussions leading to this motion, Samsung maintained that Mr. Gray’s reliance

12

on these ten references is appropriate because “most of the[m] are part of the MERL Diamond

13

Touch system that Samsung disclosed in its invalidity contentions. . . .” (Pernick Decl. Ex. 13 at

14

2.) This is a red herring.

15

Diamond Touch is a hardware and software platform, which has independent application

16

programs that run on it. Disclosure of the Diamond Touch system is not tantamount to a

17

disclosure of each application program within the system. For example, disclosure of the

18

Windows operating system and the Word application would not disclose Excel as a prior art

19

reference. Nine of the references at issue here (including the Mandelbrot, Fractal Zoom, DTLens,

20

and DTMouse applications and related literature) concern discrete applications that run on the

21

Diamond Touch system. Samsung did not disclose or chart any of these applications in its

22

Invalidity Contentions, and so the Court should strike Mr. Gray’s analyses that rely on them. The

23

tenth reference, the de Bruijn article, refers to Diamond Touch but goes beyond the scope of

24

Samsung’s disclosures. None of these ten references was disclosed properly.

25
26
27

b.

The Van Dam Invalidity Report (the ’381 Patent)

Dr. Andries Van Dam opines that the claims of the ’381 Patent are invalid. But Dr. Van
Dam’s report cites and analyzes six prior art references that were not mentioned in Samsung’s

28
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Invalidity Contentions. (See Pernick Decl. Ex. 1 at 17-18.) The Court should strike all discussion

2

of and reference to these publications as well. (See Pernick Decl. Ex. 11 ¶¶ 47-50.) 3

3

Samsung’s counter-arguments all fail. Samsung’s meet-and-confer letter states that the

4

two Thomas articles, the Masui article, the ’577 Patent, and the ’965 Patent are “mere[ ]

5

background references” that Dr. Van Dam cites just for “context” and “understanding.” (Pernick

6

Decl. Ex. 13 at 4-5.) That is not true. Dr. Van Dam attempts to use these references in a

7

substantive manner––he asserts that each one is an example of “prior art teaching the use of

8

animation techniques in graphic user interface software.” (Pernick Decl. Ex. 11 ¶ 47.) Given

9

that, Samsung needed to disclose them in its Invalidity Contentions.

10

Samsung’s purported justification for relying on the ’566 Patent is even more far-fetched.

11

Samsung contends that, because this reference is “cited on the face of the ’381 Patent,” Dr. Van

12

Dam should be allowed to rely on it even though Samsung did not disclose or chart it in its

13

Invalidity Contentions. (Pernick Decl. Ex. 13 at 4.) That is clearly not the law. See Fastek, 2011

14

U.S. Dist. LEXIS 111198, at *3-5 (striking prior art references listed on patents-in-suit because

15

they were not disclosed in Invalidity Contentions); Cummins-Allison Corp. v. SBM Co., Ltd.,

16

2009 U.S. Dist. LEXIS 22114, at *14-15 (E.D. Tex. March 19, 2009) (same). The Court should

17

strike all of Dr. Van Dam’s analyses and opinions regarding these six references.
c.

18

The Von Herzen Invalidity Report (the ’607 Patent)

19

In support of Brian Von Herzen’s opinion that the ’607 Patent is invalid, Mr. Von Herzen

20

discusses two references––the ’041 Patent and the ’411 Patent––that Samsung did not disclose in

21

its Invalidity Contentions. (See Pernick Decl. Ex. 1 at 39-41). The Court should strike all

22

sections of Mr. Von Herzen’s report that opine on these references. (See Pernick Decl. Ex. 12

23

¶¶ 51, 116, 195, 345, 377, 381, 411, 439.)

24
25

Samsung suggests that Von Herzen’s reliance on the ’041 Patent (“Blonder”) is
appropriate because “Blonder is just one of many possible examples which clarify that a ‘virtual

26
3

27
28

The Van Dam Report has some formatting errors that cause certain paragraph numbers
to be repeated. As with all of the reports that Apple includes as exhibits, to avoid any confusion,
all of the paragraphs or portions thereof that Apple seeks to strike from the Van Dam Report are
highlighted.
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ground charge amplifier’ is explicitly or inherently disclosed in [ ] Perski . . . .” (Pernick Decl.

2

Ex. 13 at 5.) But Mr. Von Herzen is not using Blonder to “clarify” an inherency argument––he is

3

using it to argue obviousness. (See Pernick Decl. Ex. 12 ¶¶ 195, 345, 411.) Patent Local Rule 3-

4

3(b) states that “[i]f obviousness is alleged,” a party’s Invalidity Contentions must include “an

5

explanation of why the prior art renders the asserted claim obvious, including an identification of

6

any combinations of prior art showing obviousness.” Because Samsung did not disclose Blonder

7

as prior art to the ’607 Patent, let alone any combinations with Blonder, in its Invalidity

8

Contentions, the Court should strike all portions of the Von Herzen report that refer to Blonder.

9

(Id. ¶¶ 116, 195, 345, 411.)

10

The Court should also not allow Von Herzen to offer his opinion on “derivation” under

11

35 U.S.C. § 102(f). (Id. ¶¶ 29-30, 45, 52-53, 82, 444-60.) Derivation is a form of anticipation

12

that requires more than just prior invention by another. “To show derivation, the party asserting

13

invalidity must prove both prior conception of the invention by another and communication of

14

that conception to the patentee.” Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d 1573,

15

1576 (Fed. Cir. 1997) (emphasis added). In recognition of the additional showing needed for

16

derivation, Patent Local Rule 3-3(b) states that “[p]rior art under 35 U.S.C. § 102(f) shall be

17

identified by providing the name of the person(s) from whom and the circumstances under which

18

the invention or any part of it was derived.” Patent Local Rule 3-3(b) (emphasis added).

19

Samsung’s Invalidity Contentions did not contain this information. Although Samsung

20

provided a claim chart for the Sony Smartskin device that forms the basis of Von Herzen’s new

21

“derivation” opinion, Samsung did not name anyone from whom Apple supposedly derived its

22

’607 inventions or the circumstances under which they were derived. Indeed, Samsung did not

23

disclose that it intended to offer a derivation defense at all. Von Herzen belatedly attempts to do

24

so now, but the Court should strike Paragraphs 29-30, 45, 52-53, 82, and 444-60 from his report.

25

2.

Samsung’s Expert Reports Assert Non-Infringement Arguments That
Samsung Did Not Disclose in Its Interrogatory Response.

26
27
28

Samsung hid non-infringement theories as well. Apple’s Interrogatory No. 2 asked
Samsung to disclose the bases for its utility patent non-infringement defense. Samsung’s initial
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response was a set of wholesale objections, with no substantive information. (Pernick Decl. Ex.

2

14 at 5-6.) Apple proposed an exchange of substantive and detailed non-infringement contentions

3

by the original date for the close of discovery on March 8th, so that each side could prepare its

4

opening infringement reports with knowledge of the other’s non-infringement contentions. Apple

5

served its non-infringement contentions on March 8th. Samsung did not. Samsung

6

“supplemented” its response to Interrogatory No. 2 on March 8th, but still provided objections

7

only. (Pernick Decl. Ex. 15 at 5-6.) As of March 10th, Samsung had still not disclosed its non-

8

infringement contentions. Apple would thus be within its rights to seek exclusion of all of the

9

non-infringement opinions expressed in Samsung’s expert reports.

10

Samsung did, however, serve another supplemental response on March 12 th that finally

11

listed certain grounds on which it based its non-infringement defense. (Pernick Decl. Ex. 16 at 5-

12

15.) Apple has decided not to object on timeliness grounds to testimony by Samsung’s experts on

13

non-infringement theories that were disclosed in this tardy discovery response. But Samsung’s

14

rebuttal reports go further. They include non-infringement arguments that were not in Samsung’s

15

March 12th Response.

16

Specifically, Jeffrey Johnson opines that the

17

(See Pernick Decl. Ex. 17

18

¶ 65). And Mr. Von Herzen opines that Samsung’s products do not infringe the ’607 Patent

19

because

20

also opines that the Galaxy 7.0 tab does not infringe because

(Pernick Decl. Ex. 18 ¶¶ 74-80.) Mr. Von Herzen

21
22
23
24

(Id. ¶¶ 105-111.) Samsung’s interrogatory response omitted
these theories. (Pernick Decl. Ex. 16 at 5-15.)
The Court should strike the sections of the Johnson and Von Herzen reports relating to

25

these contentions. (Pernick Decl. Ex. 17 ¶ 65, Features 2 column of table associated with ¶ 63,

26

Gallery column 2 of table associated with ¶ 74, Gallery row 2 of table associated with ¶ 75, Ex. 4

27

of the Johnson Report; Ex. 18 ¶¶ 74-80, ¶¶ 105-111.) Samsung should have disclosed these

28

arguments before serving its rebuttal reports. See Transclean Corp. v. Bridgewood Servs., Inc.,
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290 F.3d 1364, 1373-74 (Fed. Cir. 2002) (excluding non-infringement defense that was disclosed

2

after discovery cutoff); Warner-Lambert Co. v. Teva Pharma. USA, Inc., 2006 WL 267328, at *7-

3

8 (D. N.J. Jan. 31, 2006).

4

3.

Mr. Gray Cannot Testify About Non-Infringement Theories for
Products He Has Not Identified.

5
6
7

Mr. Gray offers another non-infringement opinion that the Court should strike. In his
rebuttal report, Mr. Gray states that

8
9
10
11
12
13
14
15
16
17
18

But Mr. Gray will not say which Samsung products behave in this manner. Mr. Gray’s
report never identifies these products. (Id. ¶¶ 33-34, 52, 75, 187.) Mr. Gray studiously refers
only to “some” of the accused products. (Id. ¶¶ 33-34.) At his deposition, Mr. Gray also would
not say which products do not infringe because of this theory. Even Mr. Gray does not know.
(Pernick Decl. Ex. 20 at 118:3-18 (“I can’t identify the specific products.”), 118:23-119:6.)
Mr. Gray testified that––prior to serving his rebuttal report––he determined that
(Id. at 125:16-23.) He could not recall

19
20
21
22
23
24
25
26
27
28

which products that he tested prior to his rebuttal report fell into this category (id. at 128:20-25
(“whatever—the ones that I observed pre-report testing, I couldn’t identify––I can’t identify by
name”)), or whether these unidentified products
. (Id. at 123:4-124:3.) Mr. Gray did not take any notes of this vague and
“informal” pre-rebuttal report testing. (Id. at 125:16-23 (“a list was not compiled . . . .”).)
Mr. Gray’s testimony about the testing he performed after serving his report provides no
further certainty about this unsupported theory. After serving his rebuttal report, Mr. Gray did
informal testing on a “box” containing around 15-25 Samsung accused products. (Id. at 120:19121:4.) Out of these, Mr. Gray “identified” eight products that he says
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(Id. at 125:24-126:16.) Gray claims that Samsung’s counsel

2

made a list of these eight products, but neither he nor Samsung produced it. (Id. at 125:3-14.)

3

Mr. Gray does not know if these are the only Samsung accused products that

4
5
6

(id. at 127:22-128:4), and does not know which of these unnamed products––if any––were
among the “some” Samsung products he alluded to in his report. (Id. at 126:17-127:5.)
The Court should not allow Mr. Gray to opine that “some” Samsung products which he

7

has not identified do not infringe on this basis. Mr. Gray did not apply any sound or reproducible

8

techniques in arriving at his conclusion. (Id. at 124:13-22

9
10

He certainly did not do so prior to staking out

11

his opinion in his report. Mr. Gray’s opaque report and testimony have deprived Apple of any

12

meaningful opportunity to rebut or respond to his contention. The Court should strike the

13

highlighted portions of Paragraphs 33-34, 52, 75, 187 from Mr. Gray’s April 16, 2012 report.
4.

14

Samsung’s Expert Reports Assert Infringement Theories That
Samsung Did Not Disclose in Its Infringement Contentions.

15
16

Samsung served the Infringement Contentions for its counterclaims on September 7, 2011.

17

Samsung’s experts raise a number of new infringement theories that it did not assert in its

18

Infringement Contentions. Samsung never sought leave from the Court to add these theories to

19

its contentions, and it cannot do so now by putting them in post-discovery expert reports.

20
21

a.

The Yang Infringement Report (the ’460 Patent)

The Court should strike Paragraphs 43-46 and 54-56 and portions of Exhibits 1A-1 and

22

1A-2 to Dr. Woodward Yang’s report for improperly advancing infringement theories regarding

23

the ’460 Patent that Samsung did not include in its Infringement Contentions.4

24
25

4

26
27
28
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2
3

(See Pernick Decl. Ex. 23 ¶¶ 43,

4

45.) However, Samsung failed to disclose these theories in its Infringement Contentions, and

5

they are inconsistent with that pleading. Samsung’s Infringement Contentions recited the

6

following specific sequence of steps corresponding to the five limitations in Claim 1:

7

[a] “A user opens the “Mail” application and starts to write an email.”

8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
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2

Because Dr. Yang’s assertions regarding the sequencing of the steps of claim 1 of the ’460 Patent

3

were not previously advanced by Samsung, and in fact conflict with Samsung’s Infringement

4

Contentions, the Court should strike them from Dr. Yang’s report.

5
6
7

This argument was not advanced by Samsung in its

8

Infringement Contentions, which were silent on any definition of the claimed “portable phone

9

mode.” (Pernick Decl. Ex. 21 at 3–5.)

10
11
12
13
14
15
16
17
18

These “portable phone mode” and “swiping”

19

arguments are untimely new infringement theories. (See id.at 3–5, 10.) As such, the Court

20

should strike them from Dr. Yang’s report.

21

b.

The Williams Infringement Report (the ’516 Patent)

22

The Court also should strike Paragraphs 58, 65, 105, 110, 119, 173, and 198 of

23

Dr. Williams’ report for improperly advancing infringement theories regarding the ’516 Patent

24

that Samsung did not include in its Infringement Contentions.

25
26
27
28
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2

The claims of the ’516 Patent refer to a “first channel not supporting HARQ” and a
“second channel supporting HARQ.”5

3
4
5
6
7
8
9
10
11
12

Accordingly, Dr. Williams’ report identifies for the first time new structures as purportedly

13

satisfying the “first channel not supporting HARQ” limitation. This is improper under the Patent

14

Local Rules.

15
16
17

B.

The Court Should Strike the Portions of Samsung’s Design and Trade Dress
Expert Reports That Assert Theories Not Disclosed During Discovery.

Samsung tries the same ploy in responding to Apple’s charges of design patent and trade

18

dress infringement and dilution. On this side of the case, too, Samsung’s experts assert invalidity

19

and non-infringement defenses that go far beyond what Samsung disclosed during discovery.

20

The Court should not allow Samsung to sandbag Apple with a host of defenses that Samsung held

21

back until after the March 10th written discovery deadline had passed. Federal Rule 37(c)(1) does

22

not allow this.

23
24
25
26
5

27
28

HARQ is a protocol that includes providing a feedback signal that indicates if a packet
was not correctly received. The parties seem to agree on what channels support HARQ and what
channels do not.
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1.

2
3

Many of Samsung’s Anticipation and Obviousness Theories Were Not
Disclosed Until After Discovery Closed.

The bulk of the analysis in the opening reports by Sam Lucente and Itay Sherman is

4

devoted to Samsung’s claim that alleged prior art anticipates or renders obvious Apple’s asserted

5

design patents. (Pernick Decl. Ex. 26 at 32-78; Ex. 27 at 8-75.) Because Samsung did not

6

disclose these arguments until well after the discovery cutoff, the Court should strike all of

7

Mr. Lucente’s opinions and the majority of Mr. Sherman’s opinions on those subjects.

8

Apple’s Interrogatory No. 12 asked Samsung to explain the legal and factual bases for its

9

invalidity defenses relating to Apple’s design patents. (Pernick Decl. Ex. 25 at 8.) This included

10

an identification of any prior art Samsung considered anticipatory or combinations of art that

11

supported its obviousness theories, and an explanation as to how any prior art supposedly

12

rendered an Apple design patent obvious. (Id.) Samsung’s December 19, 2011 response—the

13

only response Samsung provided during fact discovery—provided none of this information.

14

Samsung conclusorily claimed that the patents were anticipated and obvious, listed Bates

15

ranges for thousands of documents, and promised to supplement its response later. (Id. at 8-15.)

16

Samsung did not identify the prior art it considered anticipatory or was relying on for

17

obviousness, and did not explain how it was applying the art or why any references established

18

anticipation or obviousness. Samsung did not amend its response to provide this information

19

until almost midnight on March 19, 2012––nine days after the close of fact discovery, while

20

Apple was putting the finishing touches on its expert reports. (Id. ¶ 23.) That was too late.

21

Due to Samsung’s tardiness, the only anticipation and obviousness theories that Apple

22

could investigate through discovery were those disclosed by Samsung in connection with the

23

preliminary injunction hearing last fall.6 The problem is that only a subset of the prior art theories

24

in Mr. Sherman’s opening expert report—and none of the prior art theories in Mr. Lucente’s

25
26
27
28

6

In connection with the preliminary injunction proceedings, Samsung submitted a
declaration by Mr. Sherman dated August 22, 2011, and a PowerPoint presentation, both of which
set forth various invalidity and non-infringement theories. Apple is not moving to strike the
contentions set forth in those materials.
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report—were so disclosed. Samsung withheld the rest until after Apple could no longer conduct

2

discovery.

3

In fact, Samsung buried critical evidence for months. Mr. Sherman’s opinion that the

4

D’677 Patent is obvious relies on a Nokia Fingerprint design. (Pernick Decl. Ex. 27 at 36-37,

5

55.) Samsung knew of the Fingerprint reference prior to January 6, 2012, when it obtained a

6

declaration from the designer, Ricardo Vilas-Boas, about his design. (Id.) But Samsung

7

produced the three-page declaration within a set of over 29,000 pages of documents that it

8

produced over a six-day period in early February 2012, and similarly hid the design itself within

9

the same mass of documents. (Pernick Decl. ¶ 27.) That was not an adequate disclosure. See

10

Lab. Skin Care, Inc. v. Limited Brands, Inc., 661 F. Supp. 2d 473, 478-79 (D. Del. 2009)

11

(precluding prior art that defendant had “buried within roughly 1,500 pages of documents”).

12

A month later, Samsung provided Apple with three days’ advance notice that it would be

13

taking Mr. Vilas-Boas’s deposition in London in connection with the ITC Investigation, but

14

provided no indication of who he was. (Pernick Decl. ¶ 27.) Due to the short notice, Apple was

15

able only to send a London-based attorney who is not familiar with this case or design patent law.

16

(Id.) Nine days after the close of fact discovery––and three days before expert reports were

17

due––Samsung finally amended its interrogatory response on March 19th to identify the Nokia

18

Fingerprint as prior art and Vilas-Boas as the designer, and to explain its invalidity contention

19

based on the design. The Court should not now allow Mr. Sherman to rely on this reference.7

20
21

Apple would have pursued discovery differently had it known earlier of the anticipation
and obviousness arguments that Messrs. Lucente and Sherman now advance. For instance:

22

•

For those prior art manufacturers not deposed by Samsung (such as LG, RIM,
and Sharp), Apple likely would have noticed depositions.

•

With respect to prior art manufacturers Samsung did depose (such as Palm,
Motorola, Sony, iRiver, Olympus, and Bluebird), Apple would have known
beforehand the purpose of the depositions and the products at issue in them,
and would have prepared its re-direct examinations accordingly.

23
24
25
26
27
28

7

The ITC has already excluded the Fingerprint in the proceedings there based on
Samsung’s discovery misconduct. (Pernick Decl. Ex. 36 at 3, 5.)
16
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•

1
2
3
4

For references authored by Samsung, Apple would have deposed the inventors
and elicited testimony about differences between the designs and the asserted
patents.

Samsung’s delay prevented Apple from doing any of these things.
Rule 37(c)(1) “mandates” that a party engaging in such misconduct be precluded from

5

using the withheld information. Oracle USA, 264 F.R.D. at 544. Consistent with that mandate,

6

courts routinely exclude untimely disclosures. See ATD Corp. v. Lydall, Inc., 159 F.3d 534, 550

7

(Fed. Cir. 1998) (precluding party “from relying on theories not made available or not disclosed

8

to the opposing side” during discovery); Primos, Inc. v. Hunter’s Specialties, Inc., 451 F.3d 841,

9

851 (Fed. Cir. 2006) (excluding prior art disclosed after close of discovery); Edizone, L.C. v.

10

Cloud Nine, 2008 WL 584991, at *4 (D. Utah Feb. 29, 2008) (“preclud[ing] Defendants from

11

introducing evidence concerning [ ] four additional [prior art] patents” disclosed after end of

12

discovery); Praxair, Inc. v. ATMI, Inc., 231 F.R.D. 457, 464 (D. Del. 2005), rev’d in part on

13

other grounds, Praxair v. ATMI, Inc., 2008 U.S. App. LEXIS 20437 (Fed. Cir. Sept. 29, 2008)

14

(excluding prior art disclosed after close of fact discovery); Heidelberg Harris, Inc. v. Mitsubishi

15

Heavy Indus., Ltd., 1996 U.S. Dist. LEXIS 17362, at *24-26 (N.D. Ill. Nov. 21, 1996).

16

Given Samsung’s untimely disclosures here, the Court should strike:

17

(1) all theories, opinions, and arguments regarding the invalidity of the D’305
and D’334 Patents from pages 32-78 of Mr. Lucente’s opening report; and

18

(2) all theories, opinions, and arguments regarding the invalidity of the D’889,
D’087, and D’677 Patents on pages 14-73 of Mr. Sherman’s opening report
except for those disclosed in connection with the preliminary injunction
proceedings.

19
20
21
22
23

The specific material in question is identified in Apple’s proposed order. 8
Samsung’s opposition will likely cite Rule 33(d) of the Federal Rules of Civil Procedure.
As noted above, for each of the Apple design patents on which Mr. Lucente and Mr. Sherman

24
25
26
27
28

8

In addition to the cited material in the Lucente and Sherman opening reports discussed
here, Mr. Lucente’s rebuttal report––while nominally devoted to non-infringement arguments––
contains a discussion of an internal Samsung presentation which he appears to treat as
invalidating prior art. (Pernick Decl. Ex. 29 at 10-11.) That presentation was not disclosed in
response to Interrogatory No. 12 (or otherwise disclosed during discovery as purportedly
invalidating prior art) and should thus be struck for the reasons discussed in this section.
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opine, Samsung’s December 19, 2011 interrogatory response invoked Rule 33(d) and cited Bates

2

ranges for thousands of pages of documents “related to prior art.” (Pernick Decl. Ex. 25 at 8-14.)

3

Many of the references on which Samsung’s experts now rely were not in the cited Bates ranges,

4

but even for those that were, Samsung cannot avoid preclusion of its experts’ anticipation and

5

obviousness theories by invoking Rule 33(d). These bare lists of Bates numbers––without an

6

explanation of how the referenced documents would establish invalidity––did not disclose

7

Samsung’s contentions.

8

Rule 33(d) only applies when a response requires a “compilation or analysis” of

9

documents, and the burden of extracting responsive information from the documents is the same

10

for both sides. That is not the case with regard to Samsung’s invalidity contentions. With respect

11

to the design patents addressed by Mr. Lucente, Samsung’s response cited over 2,200 pages

12

containing 174 publications. For the design patents on which Sherman opined, Samsung cited

13

over 3,400 pages containing 421 publications. Samsung knew the prior art references contained

14

in its laundry lists, and knew the anticipation and obviousness theories it would assert based on

15

those references. Apple had no way to divine from Samsung’s lists which prior art Samsung

16

intended to rely upon, and how Samsung would apply the art for its defenses. Only a narrative

17

response could disclose which references, if any, are primary references, and which references, if

18

any, are suitable secondary references. These are important aspects of the design patent

19

obviousness analysis that were called for by Apple’s Interrogatory No. 12. Because Samsung

20

was “more familiar with its contentions than [Apple] could be, the burden is not equal and the use

21

of Rule 33(d) is inappropriate.” Mancini v. Ins. Corp. of New York, 2009 WL 1765295, at *3

22

(S.D. Cal. June 18, 2009).

23

This is why “courts have consistently held that [Rule 33(d)] cannot be used with respect to

24

contention interrogatories.” Fleming v. Escort, Inc., 2011 U.S. Dist. LEXIS 14254, at *5-6 (D.

25

Idaho Feb. 13, 2011). A party that responds to a contention interrogatory by “relying on

26

documents rather than stating its position in a narrative . . . essentially ask[s] the [requesting

27

party] to read its mind.” Morock v. Chautauqua Airlines, Inc., 2007 U.S. Dist. LEXIS 88532, at

28

*2-6 (M.D. Fla. Dec. 3. 2007). That is improper; “only [a party] can identify its own
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contentions.” SEC v. Eldindepan, S.A., No. 1:00CV00742, 206 F.R.D. 574, 577 n.5 (M.D. N.

2

Car. 2002).

3

2.

4

Samsung’s Experts Make Arguments Regarding Lack of Distinctiveness
That Samsung Did Not Disclose in Discovery.

5

Messrs. Lucente and Sherman also opine that Apple’s asserted trade dress lacks

6

distinctiveness. (Pernick Decl. Ex. 26 at 81-89; Ex. 27 at 80-85.) The Court should strike these

7

opinions under Rule 37(c)(1) because they were not disclosed prior to the close of discovery.

8
9

In August 2011, Apple propounded Interrogatory No. 5, which asked Samsung to “state in
detail” the basis of Samsung’s contention that the asserted trade dress and trademarks lack

10

distinctiveness. (Pernick Decl. Ex. 14 at 8.) Samsung’s September 8, 2011 response provided no

11

substantive information. Samsung referred to its Answer—which pled a generic lack of

12

distinctiveness—and to unnamed smartphone and tablet computer products. (Id.) Those vague

13

references did not put Apple on notice of Mr. Lucente’s or Mr. Sherman’s theories, and Samsung

14

never supplemented its response to Interrogatory No. 5. (Pernick Decl. ¶ 24.)

15

Samsung’s failure to inform Apple at any time—let alone in a timely manner—of the

16

opinions on distinctiveness now advanced in the Lucente and Sherman Reports is a clear-cut

17

violation of Rule 26(e), requiring exclusion of those theories under Rule 37(c)(1).

18
19

3.

Samsung Did Not Disclose Its Indefiniteness Theories During Discovery.

Mr. Sherman, Mr. Godici, and Mr. Anders opine that several of the asserted design patents

20

are indefinite. (Pernick Decl. Ex. 27 at 85-87 (D’889 Patent); Ex. 28 ¶¶ 84-95, 117

21

(D’677/D’087 Patents); Ex. 30 at Pt. E §1, ¶¶ 3-5 and § 4 (D’889 Patent).) None of those

22

contentions was seasonably disclosed.

23

As noted, Apple’s Interrogatory No. 12 required Samsung to disclose the factual and legal

24

bases for its invalidity defenses. (Pernick Decl. Ex.25 at 7.) Samsung’s initial response stated

25

that the D’889, D’677, and D’087 Patents are indefinite, but provided no details. (Id. at 8.)

26

Samsung did not supplement this response or explain the indefiniteness opinions offered by

27

Messrs. Sherman, Godici, and Anders until March 19, 2012, nine days after the close of

28
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discovery. (Pernick Decl. ¶ 24.) The Court should strike these untimely theories under

2

Rule 37(c)(1).

3

4.

4

Samsung’s Design Experts Offer Non-Infringement Theories That
Samsung Did Not Disclose Before the Close of Discovery.

5

The rebuttal reports of Messrs. Lucente and Anders present numerous arguments that the

6

accused products do not infringe Apple’s design patents. (Pernick Decl. Ex. 29 at 17-38, 44, 48-

7

49; Ex. 30 Pt. B §§ II-XIV, Pt. C §§ II-XV, Pt. E §§ II-IV.) Messers. Lucente and Anders opine

8

on the purported similarities and differences between the prior art, the asserted patents, and/or the

9

accused products. But Samsung failed seasonably to disclose the majority of these contentions.
Apple’s Interrogatory No. 11 sought the factual and legal bases for Samsung’s non-

10
11

infringement defenses to Apple’s design patent claims. (Pernick Decl. Ex. 25 at 5.) Samsung

12

responded on December 19, 2011. (Id.) For each of the asserted patents, Samsung’s boilerplate

13

response stated that the accused products “are not substantially similar to an ordinary viewer,”

14

and incorporated Mr. Sherman’s preliminary injunction declaration. (Id. at 5-7.) Samsung said

15

that it would supplement its response “after a reasonable investigation and further discovery,” but

16

offered no other substance. (Id.) Samsung did not supplement its response until March 19, 2011.

17

(Id. ¶ 24.)
Thus, except for the non-infringement arguments disclosed by Samsung in connection

18
19

with last fall’s preliminary injunction hearing, Samsung seasonably disclosed none of the Lucente

20

or Anders non-infringement arguments. Apple had no chance to investigate those theories during

21

fact discovery, and its experts could not anticipate them for purposes of preparing their

22

infringement reports. This prejudiced Apple. For example, Mr. Anders’ rebuttal report argues

23

that the D’677 Patent requires that the transparent surface be visible above the bezel in the profile

24

views.

25

Samsung argues that its accused products do not infringe because the transparent surface of its

26

products is not visible above the bezel in the profile views. But Samsung’s pre-cutoff discovery

27

responses never disclosed this argument. Even Mr. Sherman’s preliminary injunction declaration

28

only argued that there were differences in corner rounding, screen location, aspect ratio, speakers,

Under this construction,

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buttons, and front face ornamentation as points of non-infringement. (Dkt. No. 172 at 31-38.)

2

Apple had no chance to investigate Mr. Anders’ new contention during fact discovery.

3

Apple’s infringement experts also needed to know all prior art that Samsung deemed

4

relevant to infringement because––as Mr. Lucente admits––infringement must be analyzed “in

5

the context of the prior art.” (Pernick Decl. Ex. 29 at 4.) Yet Samsung concealed dozens of

6

references on which its experts would rely until just three days before Apple’s infringement

7

expert reports were due on March 22, and did not disclose any of its detailed non-infringement

8

arguments based on those references until it served the Lucente and Anders rebuttal reports on

9

April 16. At that point, Apple’s experts could not respond.

10

Under these circumstances, Rule 37(c)(1) requires exclusion of Samsung’s untimely non-

11

infringement theories. See Transclean, 290 F.3d at 1373-74; Warner-Lambert, 2006 WL 267328,

12

at *7-8. Those theories are identified in detail in Apple’s accompanying proposed order.

13

5.

14

Samsung Did Not Disclose During Discovery Mr. Godici’s Argument
That Apple’s Design Patents Should be Construed Narrowly.

15

Mr. Godici opines that Apple’s design patents should be narrowly construed to avoid

16

encompassing subsequently-issued design patents. (Pernick Decl. Ex. 28 ¶¶ 34-54, 59-63, 68-73,

17

115-116.) Not only is this argument premised on a mistake of law (see Godici Daubert motion),

18

it should also be struck because Samsung first disclosed it in its supplemental response to Apple’s

19

Interrogatory No. 11––which asks for Samsung’s non-infringement contentions––on

20

March 19, 2012. That was well after discovery closed. Samsung’s original response on

21

December 19, 2011 did not mention any theory relating to a narrowing construction of the

22

patents. (See Pernick Decl. Ex. 25.) Samsung’s delay prevented Apple from investigating this

23

theory in discovery. Under Rule 37(c)(1), the Court should strike this opinion from the Godici

24

report.

25
26

*

*

*

Samsung can avoid exclusion of the untimely theories in its expert reports only by

27

showing that their untimeliness was substantially justified or harmless. Hoffman v. Constr.

28

Protective Servs., 541 F.3d 1175, 1179 (9th Cir. 2008). Samsung bears the burden of proving that
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either exception applies. Yeti by Molly, 259 F.3d at 1107; Oracle, 264 F.R.D. at 545. Samsung

2

cannot carry that burden.

3

Where a party’s untimely disclosure would require its adversary to pursue discovery after

4

the cutoff, the misconduct is not harmless. See Wong v. Regents of the Univ. of California, 410

5

F.3d 1052, 1062 (9th Cir. 2005) (“[d]isruption to the schedule of the court and other parties . . . is

6

not harmless”); Baltodano v. Wal-Mart Stores, Inc., 2011 U.S. Dist. LEXIS 98306, at *10

7

(D. Nev. Aug. 31, 2006) (untimely disclosure not harmless where it “was not made sufficiently

8

before the cut-off to allow Wal-Mart to conduct the needed discovery”). And, Samsung cannot

9

show substantial justification for its untimely disclosures. “Appellate courts have routinely found

10

no substantial justification when the non-disclosing party failed to act prudently to ensure timely

11

disclosure.” Harrison Brothers Dry Dock & Repair Yard, Inc., 2009 WL 3273926, at *4 (S.D.

12

Ala. Oct. 9, 2009); see also Primos, 451 F.3d at 851 (excluding evidence where party had not

13

exercised diligence in searching for it); SPX, 2008 U.S. Dist. LEXIS 29235, at *22.

14

Consistent with these principles, Judge Koh denied Samsung’s previous belated attempt to

15

raise new theories by amending its Invalidity and Infringement Contentions. (See Dkt. No. 836.)

16

The Court recognized that if Samsung were allowed to present new contentions after discovery

17

closed, there would be “little opportunity for Apple to explore and respond to Samsung’s new

18

contentions.” (Id. at 10.) The same is true with respect to each of the arguments and legal

19

theories that Apple seeks to exclude through this motion. Samsung showed no diligence

20

regarding its duty to supplement under Rule 26(e). The contentions at issue here are Samsung’s

21

own positions. The idea that Samsung could not disclose any of these theories––other than the

22

few it disclosed in connection with the preliminary injunction proceedings––is preposterous.

23

Samsung should have identified all of the invalidity and non-infringement theories presented by

24

its experts months ago, not after discovery closed.

25

C.

The Court Should Strike Mr. Von Herzen’s Inequitable Conduct Opinion.

26

Mr. Von Herzen opines that the inventors of the ’607 Patent withheld from the PTO

27

purportedly material information that they “copied and derived” their invention from the Sony

28

SmartSkin. (Pernick Decl. Ex. 12 ¶¶ 459-60.) The Court should strike this opinion. Despite
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raising 24 affirmative defenses, Samsung’s answer failed to plead or mention inequitable conduct.

2

(Dkt. No. 80.) Prior to submitting the Von Herzen Report, Samsung never formally suggested

3

that it would assert an inequitable conduct defense. (Pernick Decl. ¶ 28.) This defense is not a

4

part of this case.

5

D.

6
7

The Court Should Strike Samsung’s Late Supplemental Damages Report and
Samsung’s Alternative Calculations Produced on April 16, 2012.

Samsung’s refusal to live within the limits of the discovery schedule also affects its

8

response to Apple’s damages claims. In violation of the Court’s schedule and orders, Samsung

9

improperly produced a “Supplemental Expert Report” from a damages expert, Michael Wagner,

10

at 7:04 p.m. on May 11, twenty-five days after the Court’s deadline and approximately 12 hours

11

before Mr. Wagner’s deposition. Further, Wagner has stated that he intends to rely primarily on

12

financial documents that were produced to Apple for the first time on April 16, 2012, more than a

13

month after the discovery cut-off and more than two months after the Court’s deadline for

14

Samsung to produce financial information. The supplemental report and the alternative

15

calculations should be struck as late and inconsistent with the Court’s schedule.

16
17

1.

The Court Should Strike Samsung’s Supplemental Damages Report.

The Court’s schedule required all rebuttal expert reports to be served on April 16, 2012.

18

On April 23, 2012, the Court granted Apple’s motion for sanctions and directed Samsung to

19

produce additional financial documents. (Dkt. No. 880 at 16.) The Court also granted Apple the

20

right to file a supplemental damages report, which Apple did. (Id.). The Court did not grant

21

Samsung any right to supplement its damages report. (Id.) Samsung forecast its intent to file a

22

supplemental report in an e-mail to Apple on April 24th . (Pernick Decl. Ex. 32. Apple

23

immediately reminded Samsung that the Court had not authorized this action. (Pernick Decl.

24

Ex. 33.) Samsung never sought clarification or leave to file a supplemental report.

25

Nonetheless, at 7:04 p.m. on May 11, 2012––the night before Mr. Wagner’s deposition––

26

Samsung delivered a supplemental damages report from Mr. Wagner that contained new

27

opinions, new evidence, and new schedules. (Pernick Decl. Ex. 34.) Samsung’s supplemental

28
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report is untimely and prejudicial. Samsung should not be allowed to benefit from its own

2

misconduct that gave rise to Court’s April 23 sanctions order.

3
4

2.

Mr. Wagner Attempts to Rely on Financial Data That Samsung Never
Produced During Fact Discovery.

Tab 6 of Mr. Wagner’s April 16th rebuttal report (as corrected on April 20th) includes an

5
alternative damages model that is based on financial data that Samsung never produced during
6
fact discovery. Although Mr. Wagner did not discuss this alternative model in the text of his
7
report (Pernick Decl. Ex. 31 at 4 n.7), Mr. Wagner surprised Apple at his deposition by stating
8
that he planned to use Tab 6 at trial (Pernick Decl. Ex. 35 at 278:24-279:1). The Court should not
9
let him do so.
10
11
12
13

Samsung first produced the financial data underlying Tab 6 on April 16th—more than a
month after the March 8 th discovery cutoff (Dkt. No. 187 at 2), and more than two months after
the February 3 rd deadline for Samsung to produce financial information that was set by the
Court’s January 27th Order. (Dkt. No. 673 at 15.) By the time Apple received this data, Apple

14
had already taken five depositions relating to a different set of financial data that Samsung had
15
produced in February-March, and had incorporated this data into its opening damages report.
16

Apple had no chance to test with Samsung witnesses the late-produced April 16th financial data

17
underlying Tab 6, and no chance to understand where it came from, how it was prepared, or what
18
it represented. The Court should not allow Samsung to present new financial data months after
19
discovery closed and weeks after Apple’s expert prepared his calculations––especially when
20
presenting two different calculations based on different financial data using completely different
21
methodologies will confuse the jury.
22
Samsung’s failure to produce the data underlying Tab 6 during fact discovery was neither
23
substantially justified nor harmless. Samsung has always had access to its own financial data. It
24

offers no excuse for waiting until weeks after discovery to provide it.9 Samsung should be held to

25
9

26
27
28

Apple anticipates that Samsung will argue that this production is justified by the Court’s
later discovery and sanctions order. That is plainly wrong. The documents were produced on
April 16. The Court’s order came out on April 23, a week later. The production was not made to
satisfy the Court’s order but as a self-serving attempt to introduce new information previously
withheld in discovery when Samsung decided after the fact that it could benefit from it.
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the consequences of its choices in discovery, and be precluded from introducing Tab 6 or its

2

underlying financial data at trial.

3

V.

4

CONCLUSION
For the reasons discussed above, the Court should grant Apple’s Motion and strike the

5

portions of Samsung’s expert reports (and exhibits thereto) that are identified in this

6

memorandum and Apple’s proposed order.

7
8
9
10
11

Dated: May 17, 2012

MORRISON & FOERSTER LLP
By: /s/ Alison M. Tucher
Alison M. Tucher
Attorneys for Plaintiff
APPLE INC.

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