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,
Plaintiff,

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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,

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Defendants.
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Case No.

11-cv-01846-LHK (PSG)

DECLARATION OF MARC J.
PERNICK IN SUPPORT OF
PLAINTIFF AND
COUNTERCLAIM-DEFENDANT
APPLE INC.’S MOTION TO
STRIKE PORTIONS OF
SAMSUNG’S EXPERT REPORTS
Date:
Time:
Courtroom:
Judge:

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

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DECLARATION OF MARC J. PERNICK ISO APPLE’S MOT. TO STRIKE PORTIONS OF EXPERT REPORTS
CASE NO. 11-CV-01846-LHK (PSG)
pa-1528768

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I, Marc J. Pernick, declare as follows:

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1.

I am an attorney with the law firm of Morrison & Foerster LLP, counsel for

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Apple Inc. (“Apple”). I am licensed to practice law in the State of California. Unless otherwise

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indicated, I have personal knowledge of the matters stated herein and, if called as a witness, could

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and would testify competently thereto. I make this declaration in support of Apple’s Motion to

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Strike Samsung’s Portions of Expert Reports.

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Expert Reports on Invalidity Relating to Apple’s Utility Patents
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On August 26, 2011, Apple served its Infringement Contentions pursuant to Patent

Local Rule 3-1 and this Court’s August 25, 2011 Case Management Order.
3.

On October 7, 2011, Samsung served its Patent Local Rule 3-3 Invalidity

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Contentions. Attached as Exhibit 1 to this Declaration is a true and correct copy of Samsung’s

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Invalidity Contentions. (The exhibits to Samsung’s Invalidity Contentions are not attached to this

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Declaration.) Although there are different ways to conduct a count and arrive at these figures, my

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colleagues and I have determined that Samsung’s Invalidity Contentions contain reference to

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more than 600 alleged prior art references and cite to more than 70 invalidity claim charts. (See

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Exhibit 1 at 5, 11-12, 18, 24-26, 33, 40, 46-48, 54-55.)

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4.

Pursuant to the Court’s August 25, 2011 Order, the period for fact discovery in this

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matter closed on March 8, 2012, but the parties agreed to a 48-hour extension to respond to

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written discovery. Also pursuant to the Court’s August 25, 2011 Order, the parties exchanged

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opening expert reports on March 22, 2012.

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5.

On March 22, 2012, Samsung served five reports from four experts giving

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opinions about the alleged invalidity of Apple’s eight previously-asserted utility patents. The

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four experts are Trevor Darrell, Stephen Gray, Andries Van Dam, and Brian Von Herzen.

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Because of the anticipated stipulation to dismiss four of the eight utility patents without prejudice,

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some of the reports are now moot. Of the remaining reports, only portions of the Gray, Van Dam

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and Von Herzen reports are at issue in Apple’s Motion to Strike.

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6.

Mr. Gray offered opinions about the alleged invalidity of U.S. Patent

Nos. 7,844,915 and 7,864,163. It should be noted, however, that only the ’915 Patent is now at
DECLARATION OF MARC J. PERNICK ISO APPLE’S MOT. TO STRIKE PORTIONS OF EXPERT REPORTS
CASE NO. 11-CV-01846-LHK (PSG)
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issue. Attached as Exhibit 2 to this Declaration is a true and correct copy of Mr. Gray’s report.

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True and correct copies of exhibits O, R, T, and Appendices 3, 3.1, 3.2, 3.3, and 3.5 to Mr. Gray’s

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report are attached to this Declaration as Exhibits 3-10, respectively.

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7.

Dr. Van Dam offered opinions about the alleged invalidity of U.S. Patent

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No. 7,469,381. Attached as Exhibit 11 to this Declaration is a true and correct copy of

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Dr. Van Dam’s report.

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8.

Samsung provided two separate reports from Mr. Von Herzen. One of these

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reports is now moot in light of the recent narrowing of this case. The other Von Herzen report

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offered opinions about U.S. Patent Nos. 7,663,607 and 7,920,129. Samsung served what purports

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to be a supplemental and corrected version of this report on April 5, 2012. Attached as Exhibit 12

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to this Declaration is a true and correct copy of Mr. Von Herzen’s report regarding the ’607 and

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’129 Patents. It should be noted, however, that only the ’607 Patent is now at issue.

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9.

On April 12, 2012, Apple wrote to Samsung regarding the undisclosed prior art

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contained in Samsung’s invalidity expert reports relating to Apple’s utility patents. The letter

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also raised issues with Samsung’s infringement reports for its utility patents and Samsung’s

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invalidity reports for Apple’s design patents. Samsung responded on April 29, 2012. Attached as

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Exhibit 13 to this Declaration is a true and correct copy of that letter (“Samsung’s 4/29/12

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letter”).

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Expert Reports on Non-Infringement Relating to Apple’s Utility Patents
10.

Apple propounded Interrogatory No. 2 on August 3, 2011. Attached to this

Declaration as Exhibit 14 is a true and correct copy of Samsung’s September 8th Response.
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Apple proposed an exchange of non-infringement contentions by the close of

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discovery on March 8th. Apple served its non-infringement contentions on March 8th. That day,

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Samsung supplemented it response to Interrogatory No. 2 but still provided only objections.

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Attached as Exhibit 15 to this Declaration is a true and correct copy of Samsung’s March 8th

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Response. A few days later, on March 12th, Samsung served another supplemental response to

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Interrogatory No. 2. Attached as Exhibit 16 to this Declaration is a true and correct copy of

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Samsung’s March 12th Response to Interrogatory No. 2.
DECLARATION OF MARC J. PERNICK ISO APPLE’S MOT. TO STRIKE PORTIONS OF EXPERT REPORTS
CASE NO. 11-CV-01846-LHK (PSG)
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12.

On or shortly after April 16, 2012, Samsung served five reports from four experts

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that contain opinions about the alleged non-infringement by Samsung of Apple’s eight asserted

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utility patents. The four experts are Trevor Darrell, Stephen Gray, Jeffrey Johnson, and Brian

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Von Herzen. Of these, only the Johnson, Von Herzen, and Gray non-infringement reports are at

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issue for this Motion.

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13.

Mr. Johnson offered opinions about the alleged non-infringement of U.S. Patent

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No. 7,469,381 by Samsung. Attached as Exhibit 17 to this Declaration is a true and correct copy

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of Mr. Johnson’s report.

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14.

Mr. Von Herzen offered opinions about the alleged non-infringement of U.S.

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Patent Nos. 7,663,607 and 7,920,129. Attached as Exhibit 18 to this Declaration is a true and

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correct copy of Mr. Von Herzen’s non-infringement report regarding the ’607 and ’129 Patents.

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It should be noted, however, that only the ’607 Patent is now at issue.

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15.

Mr. Gray offered opinions about the alleged non-infringement of U.S. Patent

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Nos. 7,844,915 and 7,864,163. It should be noted, however, that only the ’915 Patent is now at

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issue. Attached as Exhibit 19 to this Declaration is a true and correct copy of Mr. Gray’s non-

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infringement report.

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Apple moves to strike one of Mr. Gray’s non-infringement theories on the basis

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that he cannot describe which of the products do not infringe. Attached as Exhibit 20 to this

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Declaration is a true and correct copy of of Mr. Gray’s deposition transcript wherein he discusses

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this specific theory.

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Expert Reports on Alleged Infringement Relating to Samsung’s Utility Patents

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17.

On September 7, 2011, Samsung served its Patent Local Rule 3-1, 3-2

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Infringement Contentions. Attached as Exhibits 21 and 22 to this Declaration are true and correct

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copies of exhibits J and H respectively, which were attached to Samsung’s Disclosure of Asserted

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Claims and Infringement Contentions.

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18.

On January 25, 2012, Samsung moved to supplement its Infringement

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Contentions to add the iPhone 4S as an accused product. The Court denied that Motion on

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March 27, 2012.
DECLARATION OF MARC J. PERNICK ISO APPLE’S MOT. TO STRIKE PORTIONS OF EXPERT REPORTS
CASE NO. 11-CV-01846-LHK (PSG)
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On March 22, 2012, Samsung served eleven reports from six experts that contain

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opinions about the alleged infringement of Samsung’s twelve utility patents. The six experts

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were Gregory Abowd, Paul Min, Ray Nettleton, Richard Wesel, Tim Williams, and Woodward

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Yang. Of these, only portions of the Yang and Williams reports are at issue in this Motion.

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Mr. Yang offered opinions about the alleged infringement of U.S. Patent

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Nos. 7,577,460, 7,456,893, 7,698,711, and 7,079,871. It should be noted, however, that only

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the ’460 Patent is now at issue. Attached as Exhibit 23 to this Declaration is a true and correct

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copy of excerpts of Mr. Yang’s infringement report.

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Dr. Williams offered opinions about the alleged infringement of U.S. Patent

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No. 7,447,516. Attached as Exhibit 24 to this Declaration is a true and correct copy of excerpts

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of Mr. Williams’s infringement report.

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Expert Reports Relating to Apple’s Design Patents and Trade Dress
22.

On November 14, 2011, Apple propounded to Samsung a Fifth Set of

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Interrogatories, which included Interrogatory Nos. 11 and 12. Interrogatory No. 11 requested that

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Samsung explain the legal and factual bases of its non-infringement defenses to Apple’s design

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patent claims. Interrogatory No. 12 requested that Samsung explain the legal and factual bases of

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its invalidity defenses to Apple’s design patent claims.

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Samsung responded to Interrogatory Nos. 11 and 12 on December 19th, 2012. A

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true and correct copy of those Interrogatory responses is attached to this Declaration as Exhibit

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25. In responding to Interrogatory No. 12, Samsung identified a series of document by bates

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ranges. For U.S. Patent D604,305 and U.S. Patent D617,334, Samsung cited over 2,200 pages of

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documents containing 174 publications. For U.S. Patent D593,087 and U.S. Patent D618,677,

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Samsung cited over 2,200 pages of documents containing 174 publications. Samsung did not

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supplement its responses to Interrogatory Nos. 11 and 12 until March 19, 2012 (which was 9 days

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after the close of written discovery). A true and correct copy of the March 19th Samsung

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supplemental responses is attached hereto as Exhibit 38.

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DECLARATION OF MARC J. PERNICK ISO APPLE’S MOT. TO STRIKE PORTIONS OF EXPERT REPORTS
CASE NO. 11-CV-01846-LHK (PSG)
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24.

On August 3, 2011, Apple propounded Interrogatory No. 5, which asked Samsung

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to state in detail the basis of its contention that the asserted trade dress and trademarks lack

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distinctiveness. Samsung responded to Interrogatory No. 5 on September 8, 2011. A true and

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correct copy of that response is attached to this Declaration as Exhibit 14. Samsung never

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supplemented this response.

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25.

On March 22, 2012, Samsung served the opening expert reports of Sam Lucente,

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Itay Sherman, and Nicholas P. Godici. True and correct copies of those reports are attached to

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this Declaration as Exhibits 26-28, respectively.

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26.

On April 16, 2012, Samsung served the rebuttal report of Mr. Lucente and the

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expert report of Robert John Anders. True and correct copies of those reports are attached to this

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Declaration as Exhibits 29 and 30, respectively.

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Mr. Sherman’s report opines that a Nokia Fingerprint design is prior art that

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purportedly anticipates or renders obvious two of the asserted design patents. I am informed and

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on that basis believe that Samsung obtained a declaration from Ricardo Vilas-Boas, who claims to

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have invented that design, on or about January 6, 2012. A true and correct copy of that

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declaration is attached to this Declaration as Exhibit 36. Samsung did not disclose that reference

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in its December 19, 2012 response to Apple’s Interrogatory No. 12. Instead, Samsung included

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the declaration in over 29,000 pages of documents produced to Apple over a six-day period from

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February 11-16, 2012. Samsung also produced the Nokia Fingerprint design itself during that

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period. A month after that production, on March 13, 2012, Samsung provided Apple three days’

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notice that it would be taking Mr. Vilas-Boas’s deposition in London in connection with the ITC

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investigation. When it noticed this deposition, Samsung did not disclose that he was the inventor

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of purportedly relevant prior art. Given the short notice provided by Samsung, Apple was only

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able to attend the deposition through a London-based attorney who was not familiar with this case

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or with design patent law. Samsung did not identify the Nokia Fingerprint as prior art, or identify

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Mr. Vilas-Boas as its inventor, until its March 19, 2012 supplemental response to Interrogatory

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No. 12. The ITC has already excluded the Fingerprint in the proceedings there based on

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DECLARATION OF MARC J. PERNICK ISO APPLE’S MOT. TO STRIKE PORTIONS OF EXPERT REPORTS
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Samsung’s discovery misconduct. A true and correct copy of that ITC ruling is attached to this

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Declaration as Exhibit 37.

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Paragraphs 459-60 of Mr. Von Herzen’s expert report opine on issues that appear

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to relate to a possible inequitable conduct defense by Samsung. Prior to submitting that report,

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Samsung gave no formal indication that it would assert an inequitable conduct defense.

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Expert Reports Relating to Damages

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29.

The Court’s schedule required all rebuttal expert reports to be served on

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April 16, 2012. Attached as Exhibit 31 to this Declaration is a true and correct copy of a report

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entitled “Corrected Expert Report of Michael J. Wagner,” dated April 20, 2012. Mr. Wagner’s

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original expert report was served on April 16, 2012.

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30.

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

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Samsung to produce additional documents. The Court also granted Apple the right to file a

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supplemental report, which Apple did. The Court did not grant Samsung any right to supplement

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its damages report. Samsung did not seek clarification or leave to file a supplemental expert

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report.

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31.

Samsung forecast its intent to file a supplemental report in an email to Apple on

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April 24. Attached as Exhibit 32 to this Declaration is a true and correct copy of an e-mail sent

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April 24, 2012 from Victoria Maroulis to Mia Mazza.

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32.

Attached as Exhibit 33 to this Declaration is a true and correct copy of a letter

dated April 24, 2012 from Mia Mazza to Victoria Maroulis.
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On May 11, 2012, Samsung delivered a supplemental damages report from

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Mr. Wagner that contained new opinions, new evidence, and new schedules. Attached as

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Exhibit 34 is a true and correct copy of an e-mail sent at 7:04 p.m. on May 11, 2012 from Carl

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Anderson to Marc Pernick and others, attaching a document entitled “Supplemental Expert

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Report of Michael J. Wagner.”

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34.

Attached as Exhibit 35 to this Declaration is a true and correct copy of excerpts of

the transcript from May 12, 2012 deposition of Michael J. Wagner.
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DECLARATION OF MARC J. PERNICK ISO APPLE’S MOT. TO STRIKE PORTIONS OF EXPERT REPORTS
CASE NO. 11-CV-01846-LHK (PSG)
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35.

The Exhibits attached to this Declaration that are Samsung’s expert reports (or that

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are exhibits to such reports) are highlighted in yellow to show the material that Apple believes

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should be stuck based on Samsung’s failure to properly disclose prior art references or theories in

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its Invalidity Contentions and contention interrogatory responses.

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I declare under penalty of perjury under the laws of the United States and the State of
California that the foregoing is true and correct.

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Executed on May 17, 2012 in Palo Alto, California.

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By: /s/ Marc J. Pernick_____________
Marc J. Pernick

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DECLARATION OF MARC J. PERNICK ISO APPLE’S MOT. TO STRIKE PORTIONS OF EXPERT REPORTS
CASE NO. 11-CV-01846-LHK (PSG)
pa-1528768

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