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).

Exhibit 37

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UNITED ST"A,TES I}TTERNATIONAL TRADE COMMISSION
Washington, D,C.

In the Mâtter of
CERTAIN ELECTRONIC DIGTTAL
MEDIA DEYICES AND COMPO}TENTS
TIIEREOF

ORDDR No.

1Br

Inv, No. 337-TA-796

(1) DE¡IYrNG sAMsuNc's MoTIoN ['oR LEAVE
To FILE A¡{
AMENDED NoTIcE oT, PRTOR ART; AND
(2) GRA¡TTING-IN-PART AND DE¡IYING.IN-PART
APPLE,S
MOTI_ON TO STRIKE PORTIONS Or. S,4,MSTING;S

iXPrNr

REPORTSTTIATREFERENCEPRIORANTXOTñiS'C_I,õSEDIN
THENOTICE O¡,PRIORART
(li.ay 9,2012)

On Ma¡oh l.6,2012, respoadents Samsung Electronics
Co., Ltd. (SEC), Samsuag

Eleotonics America, Inc. (SEA), and Samsurg
|elsçommrurications Arnerica, LLC (STA)
(colleotively, "samsung') submitted a
motion seeking leave to arnend their Cor¡ected Notice
of
Prior Art (prwiously ñled on November I 1, 201
l) to add prior art reforences allegedly
u¡ravailabre ro samsung at rhe time of th¿r
firing. (Motion Docket No. 796-016) on March 2g,
2012, oomplainaat Apple, Inc. ('Appte,) ûled
an opposition. On April 2,2¡t2,Samsung
filed a

motion, which is hereby DENIED, for leave to
file a reply in support of its motíon ro amend
its
Notice of Prio¡ Art. (Motion Docker No.796_024)
Posifion of the parties
sâmsurlg seeks to amend its notica ofprior
art with the forrowing classes of doc'ments:

a.

Sanfo¡d A¡ohive _ These are documents
Apple donated to Sanford University,
Samsung claims

it,tecently', leamed of these documents and
that Apple did not

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disclose these documents. Samsung alleges it could not aocess thæe documents until

Apple authorized ir to do so. sams'ng alleges these documents were known only to
Apple and contolled by Apple and thus good oause eústs for amending the prior art
notice with these doouments. Samsqng alleges a laok of prejudice to Apple ând
that

Apple knew of the dooumeÈts.
Apple denies it had any control ovcr the sanford Doouments or that only it had
knowledge of them, pointing out the a¡chive is publio and tlrat samsung knew

of

them by at lea$t JâBuary of 2012, but failed to take proactive steps to obtain these
door¡ments,

b. Bloor4þe¡s Tablet
.

a$d Bezel-Less Electronio Displav- These a¡e documents Samsung

alleges it reserved by a placeholder answer in its original Notice ofprìor
A¡t.
samsung alleges Apple will not be harmed by adding these referenoes because thesè
¡eferenoes were already disclosed.

Apple asserts samsung provided no justification for its originar failure to supplement
its Notioe ¡elated to the Broomberg Tablet and Bezel-Less Erectronic
dispray, beyond
arguing the references are related to previously disclosed items. However,
Apple
argues the placeholder argument is not prior

ar! but inste¿d au admissio4 þy Sams¡¡g

that it kr¡ew it shodd look for any prior art rerated to these references (which
were not
obscure) and henoe its delay or failure to do so is inexcusable.

c-

ojher Desis.n Þatent prior ,Art References r47)
sea¡ch for and

-

samsung claims it continued to

identiff additional prior art tbrough discovery

and the work of its

experts' As suc\ samsung argues ít should be pemritted to fire amended
notices
where such rcfe¡ences were identified tluough additional discovery.
Sams¡¡1g ¿s5"n.

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its argument is strengthened by the fact that these additional references were
eifhe¡

speoifically identified or referenced in production ranges disclosed in its responses
to

Apple's oontention inte'ogatories and that both Appre and the sraft know ofits
intent to rely upon them during the heariug. Thus, thero is no su¡prise or prejudice
in
the inolusion ofthis p¡ior a¡t.

Apple asserts even if Samsung had attempted to make a requisite showing
of good
cause

it would fail, for

a

the items in this category consist ofpublic info¡mation tha¡

samsung could and shoutd have discove¡ed before firing its
originat Notioe

-

and

well befo¡e flre date of its motion.

d.

Nokia Fineemrint Phone Design 2004 _ Samsung alleges this infomration
should be
permitted because it is not a new reference, but instead, additional
details on a
prèviously identified reference' samsung alreges it leaned
more details through

investigation. Moreover, because this a¡nendment of data ,,merely provides
additioual details regarding p¡eviously specified prior art previously
specified,,,
Samsung argues Apple is not prejudiced.

Apple alleges Samsung knew gfthese references no later than
Janu ary 6,2012 or
even e¿¡lie¡ in December of 201

l, but did nothing until now, a delay of two months.

Apple also alleges samsung made no attempt to establish good
cause for its delay in
seeking to amend its

Notice. Apple also argues there is a difference between the

Nokia ID and Nokia Fingerprin! with rhe ID being

a

20r 0 design and nor a 2004

desigrr, and hence the e¿rlie¡ ref.erence cited by Samsung
is not the same,

e'

samsuns Yeoo prior

A', - samsung clams its Amended Notice

arso identifies one

additional prior art devioe for the '697 paænr"'he Samsu*g yp-K5,
that samsung

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identified after extensive seaf,ching of its archives and questioning of its ongineers.
Sarnsung alleges rhe

K3.

yp-K5 is a very similar predecessor
ofthe already incruded yp-

samsung alleges this amendment should be permitted because
it rcrafes to the

same subjeot matter as previously notice material a¡d bccause
Apple is not prejudiced
beoause

it knew sams'ng wourd rery upon these referenoes wifh the sarre subjeot

mâtter.

Apple asserls Sarusung provided no explanation fo¡ its failure to discovsr
ths

tspp

YP-I(S earlier and notes this is Samsung's own product. Apple also a¡gues
Samsung
does not explain how Appre's amendment to the infringing
dovicc rist, which was by
agreement of lhe parties and at the same time as ameudmeflts
by Samsung to its own

intenogatory responses, ¡elates to good oause for Samsung,s failure
to discove¡ its
own product months ago.

f

Academic Paue¡ Produoed by oracle com.

-

samsung's amended Notice arso

identified one other priot art refe¡ence to the .g22 p^fetú,an
academic paper
conceming Sua Miotosystoms NeWS system \ryïitten by W.T.
Roberts (the Roberts
NeV/S paper), Samsung informed Apple of its intetrt
to use this docurrent in its

initial invatidity contentions on February

15,

2012. The Roberts NeWS paper wæ

produced by a thitd party subpoena and
finally delivered to Samsung on March 10,

2012.

Apple opposes and âsserts Samsung actually had this
paper, which was produced to it
by Oracle in December of 201 l. Hence, Samsung,s
choioe to amend its Notice after
a delay

oftwo months is too

late and does not constitute good cause.

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An¡lysls
Samsung's arguments are singularly unpersuasive. As Apple accurately reiterates

tlroughout its opposition, Samsung failed to establish good cause for amending its notice

of

prior art for any of fle prio¡ art documents it seeks to add through amendment.
Rather, samsrug
seeks to argue that since Äpple has aclded

infringing devices (creating

be able to add more prior art or that Apple has not been harmed

-

a

a

moving target), it should

point Apple immediately and

plausibly denies' I arso note that samsung argues, in some cases, That
Apple wæ aware of the
doouments in questions. None ofthese tlue€ arguments, however,
are sufEcient to establish
good cause. As stated in Ground Rule ]. 10.1, but is equally
relevant here, ..lack ofprejudioe
does not equate to good cause."

I ftnd Samsung failed to show how its various requests to amend its Notice
ofprior A¡t
are supported by good cause, specificany, Samsung hæ
failed to persuasively show that

it oould

not have discovered the prior art before the deadlíne. Instead, samsuug
discusses some ofthe
applicable law in the front end ofits motion, generally alleges
a lack ofprejudice under eaoh
category of documents, and moves on without establislung
a primafacie showing of good çause.

Moreover, in mmy insta'ces where samsung alreges that
it did not ream of the prior

art'ntil

afer the deadline (e'g.,the sanford, Nokia Fingerprint phone
Design a¡d the Robert News
prior art referenoes) samsung arso fails to show that
it dirigently acted upon that knowredge in
fìling its present motion to amend its notice of prior art.
Such unreasonable delay also precludes
a finding

of good oause.

Order
Samsung'5

![6¡ion is DENIED.

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Aople's Motiou to StriBe Po4ions of Sausuns's Exnert Reoorts

on

,4.pri1 13, 2012, Apple

filed

a

motion to strike portions of samsung's expert reporrs

tåat referenoe prior art not disolosed in the notice ofprior art. (Motion Docket No. 296-02g) on

April 25, 2012, Samsung filed an op,position.
I have herein denied Samsung's motion to amend its Notioe of prior Art. Therefore,
samsuug is precluded from relying on those references it sought to add via its motion to establish

irvalidity ofthe

asserted claims

ofthe asserted patents in this investigation. Thus, with regard to

invalidity, references to those prior art referenoes and mguments based on thoso ¡efe¡e¡ces are
hereby sfrioken from samsung's expert reports. samsung is free, however, to rery
on those prior
art referenc€s for purposes other than invalidity

(l'. e. ,

non-infringement) and need not strike in

their expert reports references drereto that pertain to issues other than validity.
To the extent that Apple âlso sought to strike prior art references beyond that which
was
at issue in sams'ng's motion to amend its Notíce of prior Art, Apple's papers
a¡e not clea¡ on

that point. Thus, I am hereby GRANTING Apple's motion to strike
as indicated above, but

DENYING any additional relief sougbt by Apple. IfAppte did in fact
seek to bave addirional
prior art referenoes struok from Samsuag's expert reÞorts, Apple
may raise those issues as a
motions in limine.

Order
Apple's motion ro srrike is hereby GR aNTED-IN-pART and DENIED-IN_pART
as
indioated above.

Within seven days of the date of this document,

each party shall submit to the

the Administr¿tive Law Judges a stâtemetrt as to whether
or not

-6-

it

Seeks to have any

Office of

portion of

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this document deleted from tho pubric version. The parties' submission may be made
by
facsimile a¡rd,/or hard oopy by the aforementioned date.

Ary party

seeking 1o have any portion of this door¡ment deleted f¡om the public version

thereof must submit to this office a oopy of this docr¡ment with red b¡ackets
indicating any

portion asserted to contain confidential business information. The parties'
submissions
concerning the public version of this document need not be filed with
the Commission Secretarv.

SOORDERED

/

¿Lr*&-K,U
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Administrative Law Jud ge

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IN THE MATTER OF'CERTAIN ELECTRONIC DIGITAL

DEVICES AND CO}IPONENTS THEREOT'

MEÐIA

P, !Ø/!Ø

337-TA-796

C-ERTTFICATE OF SERVTCE

I, Lisa R. Barlon, hereby certífy that the artached CONFIDENTIAL ORDER No. t8 has been
served upon, Reginald D. Luces, Esq., commission Investigative Attomoy, and the following
parties via frst class mail and air mail where necessa¡y on
.2012.

Lisa R. Barton, Acting Secretary
U.S. International Trade Commission
500 E Street, S.W., Room 112.A
Wæhington, DC 20436

FoR COMPLAINANT APPLE INC.I
Alexærder J. Hadjis, Esq.
MORRISON&FOERSTERLLP
2000 Pennsylvania Avenue, NW, Suite 6000
Washington, DC 20006

( )Via Hand Delivery
( )Via Ovemight Mail
( )Via First Class Mail

( )Other:

FOR RESPONDENTS' SAMSUNG ELDCTRONICS, CO, LTD¡ SAMSUNG
ELECTRONICS AIVIERICA, INC,; S.q,MSI]NG TELECOMMIIÑICATIONS
A]VIERICÄ,

LLC:

Alex Lasher, Esq.
QUINN EMANUEL URQUIIART
S.

SULLIVAN,LLP
1299 Pennsylvania Avenue N.IV.

Washington,

DC

20004

&

)Via lland Delivery
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)Via First Class Mail

)Other:-

TOIÊL P.

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