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

Filing 958

Statement Statement Regarding Potential Impact Of Motions On Scope Of Trial by Apple Inc.. (McElhinny, Harold) (Filed on 5/21/2012)

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1 2 3 4 5 6 7 8 HAROLD J. MCELHINNY (CA SBN 66781) MICHAEL A. JACOBS (CA SBN 111664) JENNIFER LEE TAYLOR (CA SBN 161368) ALISON M. TUCHER (CA SBN 171363) RICHARD S.J. HUNG (CA SBN 197425) MORRISON & FOERSTER LLP 425 Market Street San Francisco, California 94105-2482 Telephone: 415.268.7000 Facsimile: 415.268.7522 9 WILLIAM F. LEE WILMER CUTLER PICKERING HALE AND DORR LLP 60 State Street Boston, MA 02109 Telephone: (617) 526-6000 Facsimile: (617) 526-5000 MARK D. SELWYN (SBN 244180) WILMER CUTLER PICKERING HALE AND DORR LLP 950 Page Mill Road Palo Alto, California 94304 Telephone: (650) 858-6000 Facsimile: (650) 858-6100 10 11 Attorneys for Plaintiff and Counterclaim-Defendant APPLE INC. 12 13 14 UNITED STATES DISTRICT COURT 15 NORTHERN DISTRICT OF CALIFORNIA 16 SAN JOSE DIVISION 17 18 APPLE INC., a California corporation, Plaintiff, 19 20 21 22 23 v. Case No. 11-cv-01846-LHK (PSG) STATEMENT REGARDING POTENTIAL IMPACT OF MOTIONS ON SCOPE OF TRIAL 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, 24 Defendants. 25 26 27 28 STATEMENT RE POTENTIAL IMPACT OF MOTIONS ON SCOPE OF TRIAL CASE NO. 11-CV-01846-LHK (PSG) sf- 3148855 1 To narrow the case for jury trial, Apple has not only stipulated to dismissing without 2 prejudice many of its own claims, it also has moved to narrow Samsung’s case. Apple has filed a 3 motion for summary judgment, a Daubert motion, and a motion to strike. If granted, they will 4 collectively eliminate from the case (a) three of Samsung’s patents, (b) nine expert witnesses, and 5 (c) portions of the testimony of four other expert witnesses. 6 I. 7 APPLE’S MOTIONS FOR SUMMARY JUDGMENT AND TO STRIKE WILL SIMPLIFY SAMSUNG’S COUNTERCLAIMS Samsung plans to assert fifteen utility patent claims from seven different patents. 8 (Dkt. No. 907 at 9.) Apple moved for summary judgment invalidating two of the seven: the ’893 9 and ’460 patents. Summary judgment on these two patents would eliminate three utility patent 10 claims. It would also eliminate two testifying experts and reduce by two-thirds the patents to be 11 covered by a third expert. 12 Apple has also moved for summary judgment that it does not infringe Samsung’s ’867 13 patent, which, if granted, would eliminate two more patent claims and two more experts. In 14 addition, Apple moved to strike infringement theories for Samsung’s ’516 and ’460 patents that 15 appeared for the first time in Samsung’s expert reports, which, if granted, would narrow the scope 16 of Samsung’s infringement case on these two patents. 17 In sum, Apple’s motions relating to Samsung’s counterclaims, if granted, would eliminate 18 five of fifteen asserted utility patent claims and eliminate four expert witnesses. 19 20 II. APPLE’S MOTIONS WILL SIMPLIFY SAMSUNG’S DEFENSES Apple’s motions will streamline Samsung’s defenses, especially with regard to Apple’s 21 design patent and trade dress case. The motions would cut back on Samsung’s excessive number 22 of experts (e.g., reducing from four to one the number of experts Samsung calls to opine on 23 Apple’s body-style design patents) and would exclude a mountain of untimely evidence. 24 Apple has moved to exclude the opinions of Itay Sherman relating to design and trade 25 dress infringement, validity, and functionality. Sherman is an electrical engineer who readily 26 admits he is not an expert in industrial design. Sherman is not a person of skill in the art of the 27 design patents and trade dress. For this and other reasons, Apple has moved to exclude his 28 STATEMENT RE POTENTIAL IMPACT OF MOTIONS ON SCOPE OF TRIAL CASE NO. 11-CV-01846-LHK (PSG) sf- 3148855 1 1 2 testimony entirely. Apple has also moved to exclude Samsung’s “ergonomics” expert Mark Lehto, who 3 opines that all of Apple’s design patents and trade dress are “functional.” The entirety of Lehto’s 4 opinion and a portion of Sherman’s opinion reprise and expand upon Samsung’s theory of 5 “functionality,” which this Court properly rejected during the Preliminary Injunction phase. (Dkt. 6 No. 452 at 13.) Apple therefore moves to exclude Lehto’s testimony, as well as Sherman’s. 7 Nicholas Godici is a third expert whose testimony Apple has moved to exclude in its 8 entirety. A former PTO administrator who has previously been held unqualified to testify not 9 once but twice, Godici has never prosecuted a single design patent. All his experience is with 10 utility patents and PTO administration. Accordingly, he is unqualified to opine, as he does, that 11 design patent examiners consider all design patent claims to be “narrow.” Apple has also moved 12 to exclude Godici’s testimony on the grounds that having a Samsung witness instruct the jury on 13 the law is improper. Excluding Godici’s testimony is necessary to avoid this error, and will 14 streamline the case for the jury. 15 As for the Graphical User Interface (GUI) design patents, Samsung failed timely to 16 disclose any prior art to these patents. Yet Samsung’s expert on GUI design patent validity, Sam 17 Lucente, seeks to testify about a host of references but in so doing he fails to apply the correct 18 legal test for design patent obviousness. Apple Inc. v. Samsung Elecs. Co., No. 2012-1105, 2012 19 U.S. App. LEXIS 9720, at *32 (Fed. Cir. May 14, 2012.) Apple’s motions to strike GUI prior art 20 that was not timely disclosed and to exclude Lucente’s opinions that are contrary to law will 21 simplify trial on Apple’s GUI design patents. 22 Apple’s motion to strike will also eliminate from the case prior art and other defenses that 23 were not disclosed in Samsung’s Patent Local Rule Invalidity Contentions or in response to 24 Apple’s interrogatories. This will streamline Samsung’s defenses to utility patent and design 25 patent infringement, and to Apple’s trade dress claims. 26 The flawed consumer surveys conducted by three Samsung experts—Michael Mazis, 27 George Mantis, and Michael Kamins—should be eliminated as well. Mazis’s testimony is 28 entirely irrelevant because his survey purports to test whether Apple’s individual icon trademarks STATEMENT RE POTENTIAL IMPACT OF MOTIONS ON SCOPE OF TRIAL CASE NO. 11-CV-01846-LHK (PSG) sf- 3148855 2 1 have “secondary meaning” under trademark law. Apple is dismissing its icon trademark claims, 2 so there is no need for Mazis to testify about them at trial. 3 Finally, Apple has moved to exclude as unreliable certain expert opinion testimony of 4 Michael Wagner. Wagner attempts to reduce—by 99 percent—Apple’s claim for disgorgement 5 of profits. The law is clear that design patent infringers must disgorge all their profits to the 6 patentee, not just a portion of profits allegedly “attributable” to the patented design. 7 III. 8 OTHER PENDING MOTIONS Several other motions are pending but are not likely to narrow the case. As the Court 9 knows, Apple has filed a motion based on Samsung’s spoliation of evidence. That motion seeks 10 an adverse jury instruction and may result—in combination with the sanctions orders that Judge 11 Grewal has already entered and the evidence of Samsung’s copying—in a post-trial finding that 12 this is an exceptional case. Samsung, too, has filed a motion for summary judgment, a Daubert 13 motion, and a motion to strike. Samsung’s motions are not well founded, and therefore will not 14 narrow the case. 15 Apple has already narrowed its case for trial—to just four utility patent claims, 16 complemented by four design patents and the iPhone and iPad trade dress. Samsung has not 17 matched Apple. Samsung retains fifteen utility patent claims for trial, although Samsung told the 18 Court it “would have been willing to reduce its claims even further.” (Dkt. No. 907 at 11.) Thus, 19 to the extent further narrowing is necessary Apple respectfully requests that the Court now 20 require Samsung to limit its case to four patent claims. 21 Dated: May 21, 2012 22 23 HAROLD J. MCELHINNY MICHAEL A. JACOBS JENNIFER LEE TAYLOR ALISON M. TUCHER MORRISON & FOERSTER LLP 24 25 26 27 By: /s/ Harold J. McElhinny HAROLD J. MCELHINNY Attorneys for Apple Inc. 28 STATEMENT RE POTENTIAL IMPACT OF MOTIONS ON SCOPE OF TRIAL CASE NO. 11-CV-01846-LHK (PSG) sf- 3148855 3

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