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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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]
MORRISON & FOERSTER LLP
425 Market Street
San Francisco, California 94105-2482
Telephone: [phone]
Facsimile: 415.268.7522

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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.

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,

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Defendants.
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STATEMENT RE POTENTIAL IMPACT OF MOTIONS ON SCOPE OF TRIAL
CASE NO. 11-CV-01846-LHK (PSG)
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To narrow the case for jury trial, Apple has not only stipulated to dismissing without

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prejudice many of its own claims, it also has moved to narrow Samsung’s case. Apple has filed a

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motion for summary judgment, a Daubert motion, and a motion to strike. If granted, they will

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collectively eliminate from the case (a) three of Samsung’s patents, (b) nine expert witnesses, and

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(c) portions of the testimony of four other expert witnesses.

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I.

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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.

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(Dkt. No. 907 at 9.) Apple moved for summary judgment invalidating two of the seven: the ’893
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and ’460 patents. Summary judgment on these two patents would eliminate three utility patent
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claims. It would also eliminate two testifying experts and reduce by two-thirds the patents to be
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covered by a third expert.
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Apple has also moved for summary judgment that it does not infringe Samsung’s ’867
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patent, which, if granted, would eliminate two more patent claims and two more experts. In
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addition, Apple moved to strike infringement theories for Samsung’s ’516 and ’460 patents that
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appeared for the first time in Samsung’s expert reports, which, if granted, would narrow the scope
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of Samsung’s infringement case on these two patents.
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In sum, Apple’s motions relating to Samsung’s counterclaims, if granted, would eliminate
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five of fifteen asserted utility patent claims and eliminate four expert witnesses.
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II.

APPLE’S MOTIONS WILL SIMPLIFY SAMSUNG’S DEFENSES
Apple’s motions will streamline Samsung’s defenses, especially with regard to Apple’s

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design patent and trade dress case. The motions would cut back on Samsung’s excessive number
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of experts (e.g., reducing from four to one the number of experts Samsung calls to opine on
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Apple’s body-style design patents) and would exclude a mountain of untimely evidence.
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Apple has moved to exclude the opinions of Itay Sherman relating to design and trade
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dress infringement, validity, and functionality. Sherman is an electrical engineer who readily
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admits he is not an expert in industrial design. Sherman is not a person of skill in the art of the
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design patents and trade dress. For this and other reasons, Apple has moved to exclude his
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STATEMENT RE POTENTIAL IMPACT OF MOTIONS ON SCOPE OF TRIAL
CASE NO. 11-CV-01846-LHK (PSG)
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testimony entirely.
Apple has also moved to exclude Samsung’s “ergonomics” expert Mark Lehto, who

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opines that all of Apple’s design patents and trade dress are “functional.” The entirety of Lehto’s

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opinion and a portion of Sherman’s opinion reprise and expand upon Samsung’s theory of

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“functionality,” which this Court properly rejected during the Preliminary Injunction phase. (Dkt.

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No. 452 at 13.) Apple therefore moves to exclude Lehto’s testimony, as well as Sherman’s.

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Nicholas Godici is a third expert whose testimony Apple has moved to exclude in its

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entirety. A former PTO administrator who has previously been held unqualified to testify not

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once but twice, Godici has never prosecuted a single design patent. All his experience is with

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utility patents and PTO administration. Accordingly, he is unqualified to opine, as he does, that

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design patent examiners consider all design patent claims to be “narrow.” Apple has also moved

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to exclude Godici’s testimony on the grounds that having a Samsung witness instruct the jury on

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the law is improper. Excluding Godici’s testimony is necessary to avoid this error, and will

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streamline the case for the jury.

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As for the Graphical User Interface (GUI) design patents, Samsung failed timely to

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disclose any prior art to these patents. Yet Samsung’s expert on GUI design patent validity, Sam

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Lucente, seeks to testify about a host of references but in so doing he fails to apply the correct

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legal test for design patent obviousness. Apple Inc. v. Samsung Elecs. Co., No. 2012-1105, 2012

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U.S. App. LEXIS 9720, at *32 (Fed. Cir. May 14, 2012.) Apple’s motions to strike GUI prior art

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that was not timely disclosed and to exclude Lucente’s opinions that are contrary to law will

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simplify trial on Apple’s GUI design patents.

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Apple’s motion to strike will also eliminate from the case prior art and other defenses that

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were not disclosed in Samsung’s Patent Local Rule Invalidity Contentions or in response to

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Apple’s interrogatories. This will streamline Samsung’s defenses to utility patent and design

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patent infringement, and to Apple’s trade dress claims.

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The flawed consumer surveys conducted by three Samsung experts—Michael Mazis,

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George Mantis, and Michael Kamins—should be eliminated as well. Mazis’s testimony is

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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)
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have “secondary meaning” under trademark law. Apple is dismissing its icon trademark claims,

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so there is no need for Mazis to testify about them at trial.

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Finally, Apple has moved to exclude as unreliable certain expert opinion testimony of

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Michael Wagner. Wagner attempts to reduce—by 99 percent—Apple’s claim for disgorgement

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of profits. The law is clear that design patent infringers must disgorge all their profits to the

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patentee, not just a portion of profits allegedly “attributable” to the patented design.

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III.

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OTHER PENDING MOTIONS
Several other motions are pending but are not likely to narrow the case. As the Court

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knows, Apple has filed a motion based on Samsung’s spoliation of evidence. That motion seeks

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an adverse jury instruction and may result—in combination with the sanctions orders that Judge

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Grewal has already entered and the evidence of Samsung’s copying—in a post-trial finding that

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this is an exceptional case. Samsung, too, has filed a motion for summary judgment, a Daubert

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motion, and a motion to strike. Samsung’s motions are not well founded, and therefore will not

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narrow the case.

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Apple has already narrowed its case for trial—to just four utility patent claims,

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complemented by four design patents and the iPhone and iPad trade dress. Samsung has not

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matched Apple. Samsung retains fifteen utility patent claims for trial, although Samsung told the

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Court it “would have been willing to reduce its claims even further.” (Dkt. No. 907 at 11.) Thus,

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to the extent further narrowing is necessary Apple respectfully requests that the Court now

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require Samsung to limit its case to four patent claims.

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Dated: May 21, 2012

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HAROLD J. MCELHINNY
MICHAEL A. JACOBS
JENNIFER LEE TAYLOR
ALISON M. TUCHER
MORRISON & FOERSTER LLP

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By:

/s/ Harold J. McElhinny
HAROLD J. MCELHINNY
Attorneys for Apple Inc.

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STATEMENT RE POTENTIAL IMPACT OF MOTIONS ON SCOPE OF TRIAL
CASE NO. 11-CV-01846-LHK (PSG)
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