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

Filing 1301

Order Granting in Part and Denying in Part #1202 Samsung's Motion to Strike Expert Testimony Based on Undisclosed Claim Construction. Signed by Judge Lucy H. Koh on 2/20/2014. (lhklc1, COURT STAFF) (Filed on 2/20/2014)

1
2
3
4
5
6
7
8
9

United States District Court
For the Northern District of California

10

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN JOSE DIVISION

11
12
13
14
15
16
17
18
19
20
21

)
)
)
Plaintiff and Counterdefendant,
)
)
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,
)
Defendants and Counterclaimants. )
)
APPLE, INC., a California corporation,

Case No.: 12-CV-00630-LHK
ORDER GRANTING IN PART AND
DENYING IN PART SAMSUNG’S
MOTION TO STRIKE EXPERT
TESTIMONY BASED ON
UNDISCLOSED CLAIM
CONSTRUCTIONS

Samsung moves to strike extensive portions of two of Apple’s experts’ invalidity and

22

noninfringement reports as a sanction for Apple’s alleged failure to respond to an interrogatory

23

that sought Apple’s claim construction positions. See Dkt. 1202-3 (“Mot.”). Apple opposes, see

24

Dkt. 1227 (“Opp.”), and Samsung replies, see Dkt. 1252 (“Reply”). Having considered the parties’

25

arguments, the relevant law, and the record in this case, the Court GRANTS in part and DENIES

26

in part Samsung’s motion to strike.

27
28
1
Case No.: 12-CV-00630-LHK
ORDER GRANTING IN PART AND DENYING IN PART SAMSUNG’S MOTION TO STRIKE

1
2

I.

BACKGROUND
On November 5, 2013, Samsung filed a motion to strike portions of Apple’s expert reports

3

with Judge Grewal. See Dkt. 878. In that motion, Samsung alleged that Apple failed to answer

4

Samsung’s Interrogatory No. 46. Interrogatory No. 46 reads as follows:

5
6
7
8
9

United States District Court
For the Northern District of California

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

Interrogatory No. 46
For each asserted claim for each Samsung Patent, and each Apple Patents-in-Suit
identify: (1) a list of all claim terms that YOU contend has a meaning other than
plain meaning and should be construed by the Court and identify any claim term
which YOU contend should be governed by 35 USC Section 112(6); (2) YOUR
construction of each term identified for claim construction, including for each
term YOU contend is governed by 35 USC 112 (6), the structure(s), act(s), or
material(s) corresponding to that term’s function; and (3) for each identified term,
all references from the specification or prosecution history that supports YOUR
construction, and a designation of any supporting extrinsic evidence including,
without limitation, dictionary definitions, citations to learned treatises and prior
art, and testimony of percipient and expert witnesses. Extrinsic evidence shall be
identified by production number or by producing a copy if not previously
produced. With respect to any supporting witness, percipient or expert, provide a
description of the substance of that witness’ testimony that includes a listing of
any opinions to be rendered to support YOUR construction.
Dkt. 1217-1. Samsung served this interrogatory on June 7, 2013, see Mot. at 2, nearly two months
after the Court issued its 64-page claim construction order in this case, see Dkt. 447 (“Claim
Construction Order”). Apple objected to Interrogatory No. 46 on various grounds and did not
provide a substantive response. See Dkt. 1217-1.
Before Judge Grewal, Samsung contended that portions of Apple’s expert reports should be
stricken because they “rely on a host of new claim constructions that were never disclosed during
fact discovery, despite being directly responsive to Samsung’s Interrogatory No. 46.” Dkt. 878-3
at 3. Judge Grewal denied Samsung’s motion. See Dkt. 1127 (Jan. 9, 2014). In particular, Judge
Grewal held as follows:
In order to rule on this motion’s merits, the undersigned would need to construe
more terms than the presiding judge elected to consider. This would be an
inappropriate exercise for the referral judge. The motion therefore is DENIED,
but Samsung is free to seek relief from Judge Koh if its concerns persist.
Id. at 9.
A week after Judge Grewal’s ruling, Samsung filed the present motion, identifying 21
claim construction positions allegedly taken by Apple’s experts with respect to U.S. Patent Nos.
2
Case No.: 12-CV-00630-LHK
ORDER GRANTING IN PART AND DENYING IN PART SAMSUNG’S MOTION TO STRIKE

1

7,551,596 (the “’596 Patent”); 6,226,449 (the “’449 Patent”); 7,756,087 (the “’087 Patent”); and

2

5,579,239 (the “’239 Patent”) that Samsung contends Apple should have disclosed in response to

3

Interrogatory No. 46. See Reply at 14.1 Samsung has made clear that it is not asking “the Court to

4

engage in formal claim construction” of these terms. Reply at 2 n.2; see Mot. at 1 n.1. Apple has

5

also not asked the Court to construe any of these terms. Rather, Samsung asks the Court to strike

6

the portions of Apple’s expert reports based on “undisclosed claim constructions.” Mot. at 6.

7

Although Samsung does not identify every specific portion of Apple’s expert reports that it

8

contends should be stricken, Apple estimates that Samsung seeks to strike more than 540

9

paragraphs from its expert’s report on the ’239 and ’449 Patents and more than 130 paragraphs

United States District Court
For the Northern District of California

10

from its expert’s report on the ’596 and ’087 Patents. See Opp. at 25.

11

II.

LEGAL STANDARD
Samsung bases its motion to strike on Fed. R. Civ. P. 37(c)(1). See Mot. at 6. Under that

12
13

rule, “[i]f a party fails to provide information or identify a witness as required by Rule 26(a) or (e),

14

the party is not allowed to use that information or witness to supply evidence . . . at a trial, unless

15

the failure was substantially justified or is harmless.” Samsung does not state whether it contends

16

the predicate violation occurred under Rule 26(a) or 26(e), but only Rule 26(e) appears applicable.2

17

Under Rule 26(e), a party must supplement an interrogatory response “in a timely manner if the

18

party learns that in some material respect the disclosure or response is incomplete or incorrect, and

19

if the additional or corrective information has not otherwise been made known to the other parties

20

during the discovery process or in writing.” This rule “prohibits parties who are aware of their

21

deficient response from holding back material items and disclosing them at the last moment.’”

22

Woods v. DeAngelo Marine Exhaust, Inc., 692 F.3d 1272, 1282 (Fed. Cir. 2012) (internal

23

quotation marks and alterations omitted).

24
25
26
27
28

1

In its motion, Samsung also targeted Apple’s expert’s opinions with respect to U.S. Patent No.
6,671,757 (the “’757 Patent”). See Mot. at 5-6. Following this Court’s ruling that invalidated the
asserted claims of the ’757 Patent, however, see Dkt. 1150 at 44, Samsung dropped the ’757 Patent
from its list of asserted patents for trial, see Dkt. 1236. The Court therefore DENIES as moot
Samsung’s arguments with respect to the ’757 Patent.
2
By its terms, Rule 26(a) applies to initial, expert, and pretrial disclosures, not responses to
contention interrogatories.
3
Case No.: 12-CV-00630-LHK
ORDER GRANTING IN PART AND DENYING IN PART SAMSUNG’S MOTION TO STRIKE

1

As the moving party, Samsung bears the burden of showing a discovery violation has

2

occurred. See, e.g., Dong Ah Tire & Rubber Co. v. Glasforms, Inc., No. 06-CV-3359, 2008 WL

3

4786671, *2 (N.D. Cal. Oct. 29, 2008). Once Samsung satisfies that burden, it becomes Apple’s

4

burden to show that Apple’s failure to comply with Rule 26 was either justified or harmless. See

5

Yeti by Molly Ltd. v. Deckers Outdoor Corp., 259 F.3d 1101, 1107 (9th Cir. 2001).

6

III.

7

DISCUSSION
For the most part, Samsung has failed to show that Apple’s response to Interrogatory

8

No. 46 violated a discovery obligation under Rule 26. Interrogatory No. 46 sought from Apple a

9

list of claim terms, other than those terms the Court already construed, that fall into one of two

United States District Court
For the Northern District of California

10

categories: (1) terms that Apple contends have “a meaning other than plain meaning and should be

11

construed by the Court” and (2) terms that Apple contends “should be governed by 35 USC

12

Section 112(6).” For any terms in that list, Interrogatory No. 46 further sought Apple’s

13

constructions and the evidentiary support (both intrinsic and extrinsic) for those constructions. As

14

discussed below, Samsung has largely failed to show that Apple withheld the information

15

Samsung requested for either category of terms.

16

A.

Terms that Are Susceptible to Plain Meaning

17

For the 15 terms Apple does not contend should be governed by 35 U.S.C. § 112 ¶ 6, the

18

parties’ primary dispute is framed as follows. Apple contends that its experts have applied the

19

plain and ordinary meaning for those 15 terms, rendering a response to Interrogatory No. 46

20

unnecessary. See Opp. 10-15. Apple’s experts’ reports and deposition testimony support Apple’s

21

position. See Dkt. 1220-8 (“Storer Dep.”) at 277:10-12 (“[T]he [’449] patent we talked about

22

yesterday . . . had no court claim constructions, everything was plain meaning . . . .”); Dkt. 965-13

23

¶ 113 (Dr. Fuja: “I am informed and understand that the Court did not construe any claim terms

24

from the ’596 patent. In my opinion, the language in the asserted claims should be given their plain

25

and ordinary meaning.”); id. ¶ 71 (“In my opinion, other than the term the Court has construed and

26

the term the parties agreed to the construction of, the language in the asserted claims [of the ’087

27

Patent] should be given their plain and ordinary meaning.”); Dkt. 1220-11 ¶ 22 (Dr. Storer relying

28

on “the plain and ordinary meaning of the claim terms” of the assertred claims of the ’449 Patent).
4
Case No.: 12-CV-00630-LHK
ORDER GRANTING IN PART AND DENYING IN PART SAMSUNG’S MOTION TO STRIKE

1

Samsung disagrees with Apple’s characterization of its experts’ opinions and argues that “[t]he

2

elaborate and detailed constructions in Apple’s expert reports go far beyond ‘plain and ordinary

3

meaning.’” Mot. at 7. Samsung provides three examples and brief argument as to why Apple’s

4

experts allegedly “change the meaning of the words in the claims such that they are

5

unrecognizable to the public.” Id. For the following reasons, the Court concludes that, as to the

6

three exemplary terms on which Samsung bases its motion, Apple’s experts’ opinions fit within a

7

permissible explanation of those terms’ plain and ordinary meanings.

8
9

Black letter law dictates that “the words of a claim are generally given their ordinary and
customary meaning.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)

United States District Court
For the Northern District of California

10

(internal quotation marks omitted). “[T]he ‘ordinary meaning’ of a claim term is its meaning to the

11

ordinary artisan after reading the entire patent.” Id. Where, as here, parties “did not seek

12

construction” of the terms at issue, courts give those terms their “‘ordinary and customary meaning

13

. . . to a person of ordinary skill in the art in question at the time of the invention.’” Belden Techs.

14

Inc. v. Superior Essex Comm’cns LP, 733 F. Supp. 2d 517, 545 (D. Del. 2010) (quoting Phillips,

15

415 F.3d at 1313) (alteration in original). At trial, parties may “introduc[e] evidence as to the plain

16

and ordinary meaning of terms not construed by the Court to one skilled in the art,” DNT, LLC v.

17

Sprint Spectrum, LP, No. 09-CV-21, 2010 WL 582164, *4 (Feb. 12, 2010 E.D. Va.), so long as the

18

evidence does not amount to “argu[ing] claim construction to the jury,” Cordis Corp. v. Boston

19

Scientific Corp., 561 F.3d 1319, 1337 (Fed. Cir. 2009). Arguing claim construction to the jury is

20

inappropriate because it risks confusion and the likelihood that a jury will render a verdict not

21

supported by substantial evidence. See CytoLogix Corp. v. Ventana Medical Sys., Inc., 424 F.3d

22

1168, 1173 (Fed. Cir. 2005). Although the appropriateness of evidence related to a term’s plain

23

and ordinary meaning is generally “judged in the context of the trial,” DNT, LLC, 2010 WL

24

582164 at *4, this Court has already deemed certain plain and ordinary meaning contentions in this

25

case unreasonable even at the pretrial stage, see Apple, Inc. v. Samsung Elecs. Co., No. 12-CV-

26

630, 2014 WL 252045, *4-5 (Jan. 21, 2014).

27
28
5
Case No.: 12-CV-00630-LHK
ORDER GRANTING IN PART AND DENYING IN PART SAMSUNG’S MOTION TO STRIKE

1

With thi framework in mind, th Court revi
is
k
he
iews Apple’s experts’ pu
urported und
derstandings
s

2

of th meaning of the three terms highli
he
ighted in Sam
msung’s mo
otion to ensur that Apple is properly
re
y

3

char
racterizing them as “plai and ordinary meaning
in
g.”

4

Control SDU. Sam
l
msung dispute Apple’s e
es
expert’s opin
nion regardin the “contr unit”
ng
rol

5

limi
itation of cla 13 of the ’596 Paten See ’596 P
aim
e
nt.
Patent claim 13 (“a contr unit for f
m
rol
forming a

6

con
ntrol service data unit (SD includin control in
DU)
ng
nformation fo an uplink packet data service.”).
for
k
a

7

Spe
ecifically, Sa
amsung conte
ends that Ap
pple’s expert Dr. Thoma Fuja impro
t
as
operly opine that “a
es

8

‘con
ntrol SDU’ must be gene
m
erated at a hi
igher layer t
than the laye that create MAC-e PD
er
es
DUs.” Mot.

9

at 7 (citing Dkt. 878-11 ¶ 44 Samsun argues tha Dr. Fuja’s opinion con
.
42).
ng
at
s
ntradicts the

United States District Court
For the Northern District of California

10

spec
cification’s statement that the “‘cont service d unit (SD include[ [sic] con
s
trol
data
DU)
ntrol
[es]

11

info
ormation of a MAC-e [si layer.’” Id. (quoting ’
ic]
Id
’596 Patent, Abstract) (f
first alteratio in
on

12

Sam
msung’s motion). Althou Samsung argument appears hig
ugh
g’s
t
ghly technical, it boils do to a
own

13

question as to th order in which the cla
he
w
aimed appara creates two data stru
atus
uctures, a “c
control

14

SDU and a “M
U”
MAC-e PDU.
.”

15

As Appl points out Samsung’s brief severe misquote the specif
le
t,
s
ely
es
fication. See ’596

16

Pate Abstract (“MAC-es protocol dat units (PDU . . . and a control se
ent,
t
ta
US)
ervice data u (SDU)
unit

17

incl
luding contro informatio of a MAC layer are m
ol
on
C
multiplexed a containe in a MAC protocol
and
ed
C-e

18

data unit (PDU) . . . .”) (emp
a
)
phases added). In other w
words, altho
ough filled w technica jargon, the
with
al
e

19

very Abstract on which Sam
y
n
msung relies in fact expla at a bas level that the “control SDU” is
ains
sic
l

20

incl
luded within the “MAC-e PDU.” This descriptio appears to be consiste with Dr. F
on
o
ent
Fuja’s

21

belo descriptio of the ter “service data unit (SD
ow
on
rm
d
DU)”:

22
23
24

It is well known in the art that th term ‘serv data uni (SDU)’ refers to a data
t
he
vice
it
a
unit that is passed do to a net
t
own
twork layer a
after it is gen
nerated at a h
higher layer
r.
This is shown, for ex
s
xample, in th OSI Refe
he
erence Mode document cited in
el
[Samsun expert’s report:
ng’s
s]

25
26
27
28
6
e
00630-LHK
Case No.: 12-CV-0
ORD
DER GRANTIN IN PART AND DENYIN IN PART SAMSUNG’S MOTION TO STRIKE
NG
NG
S
O

1

Dkt. 1218-1 (“Fuja Reb. Rep.”) ¶ 438 (quoting ITU-T Rec. X.200 (1994 E) at 16 Fig. 19). That the

2

abstract discloses a control SDU contained in the MAC-e PDU strongly suggests that the control

3

SDU is generated before—i.e., generated at a higher layer than—the MAC-e PDU. The

4

specification as written therefore supports Dr. Fuja’s understanding of the plain and ordinary

5

meaning of “control SDU.” Because Dr. Fuja’s opinion relies on the plain and ordinary meaning of

6

the term “control SDU,” Apple did not need to disclose a construction for that term in response to

7

Interrogatory No. 46.

8
9

Video capture module. Claim 15 of the ’239 Patent includes the following limitation: “a
computer including a video capture module to capture and compress video in real time.” Apple’s

United States District Court
For the Northern District of California

10

expert Dr. Storer contends in his noninfringement report that “[a] person of ordinary skill in the art

11

would understand the term ‘video capture module’ to be a module either attached to or integrated

12

into a video card for capturing signals from an analog video device.” Dkt. 1218-3 (“Storer Reb.

13

Rep. Part II”) ¶ 702 (emphasis added). Samsung argues that Dr. Storer’s reference to a “video

14

card” shows that he is “unquestionably applying a very specialized (and incorrect) meaning to the

15

term ‘video capture module.’” Mot. at 8. The Court disagrees that Dr. Storer’s understanding of

16

“video capture module” departs from the plain and ordinary meaning of that term in light of the

17

specification. This Court’s description of the specification when construing a similar limitation in

18

claim 1 of the ’239 Patent is instructive:

19
20
21
22
23
24
25
26
27

[T]he specification never discloses a ‘capture module’ that is capable of digitizing
and compressing. Instead, the specification discloses a ‘video capture card,’
which ‘takes the audio/visual signal, digitizes it into a computer data file, and
compresses that data file.’ ’239 Patent at col. 2:66-col. 3:1. Only after the data file
has been digitized and compressed by the video capture card is it captured in the
computer’s memory ‘by a capture module on the video capture card.’ Id. at col.
3:1-3.
Claim Construction Order at 52 (second emphasis added). Dr. Storer similarly notes (correctly)
that “the specification only uses the term ‘video capture module’ in conjunction with ‘video
card.’” Storer Reb. Rep. Part II ¶ 702 (citing ’239 Patent at 3:51-54, 4:23-24, 4:39-40, 12:37-40).
In light of the specification, a jury could (but would not have to) agree with Dr. Storer that a
module not attached to or integrated into a video card is not a “video capture module” under the

28
7
Case No.: 12-CV-00630-LHK
ORDER GRANTING IN PART AND DENYING IN PART SAMSUNG’S MOTION TO STRIKE

1

plai and ordina meaning of that term 3 Because D Storer’s opinion relies on the pla and
in
ary
g
m.
Dr.
ain

2

ordi
inary meanin of the term “video ca
ng
m
apture modul Apple di not need t disclose a
le,”
id
to

3

con
nstruction for that term in response to Interrogato No. 46.
r
n
o
ory

4

List. Cl
laim 25 of th ’449 Paten recites a d
he
nt
digital camer that “disp
ra
play[s] . . . a list of . . .

5

mov
ving image signal[s] and still image signal[s] as a search mo
s
d
ode.” In his r
rebuttal repo on
ort

6

non
ninfringemen Dr. Storer contends th the “Cam Roll” in the accused devices is n a “list”
nt,
r
hat
mera
n
d
not

7

because it displays thumbna images in a “grid” an does not in
ail
n
nd
nclude text a
about each p
particular

8

ima in a “‘top to the down sequence.” Dkt. 1218 (“Storer R Rep. Part I”) ¶ 300 (quoting
age
p
n’
8-2
Reb.
0

9

’449 Patent at 7:64-65). Dr. Storer inclu
9
7
.
udes the follo
owing graph
hical represe
entation of th contrast
he

United States District Court
For the Northern District of California

10

betw
ween the list disclosed in the ’449 Pa
t
n
atent and the “Camera R
e
Roll” in the a
accused devi
ices:

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

3

Dr Storer also relies on th prosecutio history of the ’239 Pa
r.
o
he
on
f
atent to “confirm[]” his
und
derstanding of the plain and ordinary meaning of “video capt
o
a
y
f
ture module.” Storer Reb Rep. Part
b.
II ¶ 703. Althou Dr. Store reliance on the pros ecution histo to confir his plain and ordinary
ugh
er’s
e
ory
rm
y
mea
aning opinio is appropr
on
riate, the Cou will not a
urt
allow him to testify abou that prosecution
o
ut
hist
tory because it would con
nfuse the jur and prejud Samsun and such evidence is not relevant
ry
dice
ng,
h
t
to how a person of ordinary skill in the art reading t specifica
h
n
y
the
ation would u
understand t term.
that
See Fed. R. Evid. 703.
8
e
00630-LHK
Case No.: 12-CV-0
ORD
DER GRANTIN IN PART AND DENYIN IN PART SAMSUNG’S MOTION TO STRIKE
NG
NG
S
O

1

Id. ¶ 303. Samsung disagrees with Dr. Storer’s understanding of the term “list” and contends that

2

instead “the plain meaning of the word ‘list’ does not exclude a list that carries over into two or

3

more columns, or a list of symbols rather than text.” Mot. at 8.
Once again, Dr. Storer’s understanding of the plain and ordinary meaning of the term at

5

issue is supported by the specification such that a jury could (but would not have to) agree with

6

Apple’s noninfringement position. See Thorner v. Sony Computer Entertainment Am., LLC, 669

7

F.3d 1362, 1369 (Fed. Cir. 2012) (holding that whether the accused product met the plain and

8

ordinary meaning of “flexible” was a fact issue). In a central passage, the specification describes a

9

“list” as providing information about each image in a “top to . . . down” sequence, 7:64-65, with

10
United States District Court
For the Northern District of California

4

information such as the date and time of the recording “represented in characters,” 8:13-14, and,

11

importantly, says that the data list shown in Figure 7 is a “feature of the present invention,” 7:56-

12

57. Dr. Storer’s opinion is therefore supported by the specification and will help the jury

13

understand Apple’s noninfringement position.4 Because Dr. Storer’s opinion relies on the plain and

14

ordinary meaning of the term “list,” Apple did not need to disclose a construction of that term in

15

response to Interrogatory No. 46.

16

Samsung disputes Apple’s experts’ plain and ordinary meaning opinions for 12 other terms

17

as well. See Mot. 4-5. But Samsung wholly fails to support its contention that Apple’s experts’

18

opinions for those remaining terms exceed the bounds of plain and ordinary meaning. Instead,

19

Samsung merely identifies the terms and opinions that Samsung contends Apple should have

20

disclosed, without any argument as to why those opinions are improper. For example, Samsung’s

21

entire contention with respect to the “recording circuit” limitation of claim 25 of the ’449 Patent is

22

as follows: “The newly disclosed constructions include . . . the ‘recording circuit’ must be an

23

interface circuit.” Mot. at 5 (citing Storer Reb. Rep. Part I ¶¶ 227-228). That bare identification

24

4

25
26
27
28

Indeed, prohibiting Dr. Storer from explaining why he believes the accused devices lack a “list”
as that term is ordinarily understood might create, rather than reduce, jury confusion. The jury will
have before it the figures in the patent and the depiction of the “Camera Roll” in the accused
devices, along with an instruction to apply the plain meaning of terms such as “list” that the Court
has not construed. Absent argument from the parties as to whether the accused devices contain the
claimed list, the jury will be left to wonder how to resolve the stark contrast between the patent’s
description of a “list” and the “Camera Roll.” Allowing Dr. Storer to testify about his
understanding of the plain and ordinary meaning of this term will help tee up the factual
infringement issue the jury will need to resolve.
9
Case No.: 12-CV-00630-LHK
ORDER GRANTING IN PART AND DENYING IN PART SAMSUNG’S MOTION TO STRIKE

1

fails to carry Samsung’s burden of establishing a Rule 26(e) discovery violation with respect to

2

Interrogatory No. 46. Accordingly, the Court concludes that Apple did not violate Rule 26 for

3

failing to disclose proposed constructions in response to Interrogatory No. 46 for the remaining 12

4

plain and ordinary meaning terms that Samsung lists in its motion.

5

At this point it bears repeating that neither party has asked the Court to construe any of the

6

terms at issue in Samsung’s motion to exclude. See Reply at 2 n.2; Mot. at 1 n.1. Most importantly

7

for Samsung’s motion, Apple has not asked the Court to construe any terms, even though

8

Samsung’s Interrogatory No. 46 asked Apple for a response only to the extent Apple “contend[s]

9

[a claim term] . . . should be construed by the Court.” Dkt. 1217-1. Moreover, the Court has

United States District Court
For the Northern District of California

10

repeatedly asked the parties whether they need to delay the March trial for a second round of claim

11

construction or, failing that, to engage in limited claim construction briefing (i.e., on one or two

12

terms) in advance of the March trial. See Dkt. 750 at 20:3-26:13 (July 31, 2013 case management

13

conference); Dkt. 1133 at 173:17-178:24 (Dec. 12, 2013 summary judgment hearing). The parties

14

have not provided a realistic proposal that would allow the Court to feasibly construe additional

15

terms in this case, nor have they explained why the Court’s existing, extensive claim construction

16

order is insufficient.

17

In sum, the Court concludes that Samsung has not established that Apple failed to disclose

18

“claim terms that [Apple] contend[s] has a meaning other than plain meaning and should be

19

construed by the Court,” as Samsung requested in its Interrogatory No. 46. Accordingly, the Court

20

DENIES Samsung’s motion as to the 15 terms for which Apple’s experts have applied a plain and

21

ordinary meaning.

22

B.

23

For the ’239 Patent, Samsung contends that six of Apple’s expert’s constructions are

Terms that Apple Contends Should be Governed by 35 U.S.C. § 112 ¶ 6

24

governed by 35 U.S. C. § 112 ¶ 6 (2006) and that Apple should have therefore provided those

25

constructions in response to Interrogatory No. 46.5 Apple does not dispute that § 112 ¶ 6 governs

26
27
28

5

Under 35 U.S.C. § 112(6) (2006), “[a]n element in a claim for a combination may be expressed as
a means or step for performing a specified function without the recital of structure, material, or acts
in support thereof, and such claim shall be construed to cover the corresponding structure, material,
or acts described in the specification and equivalents thereof.”
10
Case No.: 12-CV-00630-LHK
ORDER GRANTING IN PART AND DENYING IN PART SAMSUNG’S MOTION TO STRIKE

1

these six terms, but contends that it set forth its contention and support for “‘the structure(s), act(s),

2

or material(s) corresponding to [each] term’s function’” in response to a different interrogatory,

3

Samsung’s Interrogatory No. 12. Opp. at 16-17 (quoting Interrogatory No. 46). For the most part,

4

the Court agrees with Apple that its response to Interrogatory No. 12 satisfied its discovery

5

obligations.

6

Samsung’s Interrogatory No. 12 asked Apple to provide its noninfringement contentions.

7

See Dkt. 965-8. In a 206-page supplemental response to that Interrogatory, served the same day as

8

Apple’s objections to Interrogatory No. 46, Apple explicitly referenced the structure in the ’239

9

specification for each of the six means-plus-function limitations now disputed by Samsung, under

United States District Court
For the Northern District of California

10

headings that separately identified each disputed limitation. See id. at 102 (“means for storing”),

11

111 (“means for receiving at least one composite signal transmitted by the remote unit”), 113

12

(“means for exchanging data with said host unit”), 114 (“means for storing the composite signal

13

received by the host unit”), 115 (“means for decompressing said composite signal”), 117-18

14

(“means for transmission of said captured video over a cellular frequency”). With respect to the

15

means-plus-function terms, these disclosures provided the very information Samsung requested in

16

its Interrogatory No. 46.

17

Samsung contends that Apple’s response to Interrogatory No. 12 was deficient because

18

Apple improperly cited to “vague software sequences.” Mot. at 12. But Samsung does not explain

19

why Apple’s response to Interrogatory No. 12 was impermissibly “vague.” Apple cited specific,

20

limited portions of the specification or recited the relevant structure in its response (or did both),

21

and Apple’s expert for the ’239 Patent, Dr. Storer, then consistently relied on those same structures

22

in his expert report, with one exception discussed below. If Apple’s references were indeed vague,

23

that problem appears to lie with the specification itself, not Apple’s discovery responses. See

24

Mettler-Toledo, Inc. v. B-Tek Scales, LLC, 671 F.3d 1291, 1296 (Fed. Cir. 2012) (“[T]he

25

specification . . . determine[s] the structures that correspond to the claimed function.”).

26

Accordingly, because Apple “otherwise . . . made known” to Samsung, Fed. R. Civ. P. 26(e), its

27

means-plus-function contentions on which Dr. Storer relied, Samsung has not established that

28

Apple’s response to Interrogatory No. 46 was deficient, except as discussed below.
11
Case No.: 12-CV-00630-LHK
ORDER GRANTING IN PART AND DENYING IN PART SAMSUNG’S MOTION TO STRIKE

1

Samsung does identify one contention that Dr. Storer improperly disclosed for the first time

2

in his opening expert report on invalidity. In its Interrogatory No. 12 response, Apple identified the

3

structure for the term “means for storing the composite signal received by the host unit” as “a hard

4

disk drive and the software identified at 11:5-8, 12:19-22 and 12:48-51.” Dkt. 965-8 at 114

5

(emphasis added). In his expert report on invalidity, however, Dr. Storer for the first time

6

identified only “a hard disk drive,” not associated software, as the required structure for this term.

7

Dkt. No. 1170-2 (“Storer Rep.”) ¶ 669. This difference appears to simplify Dr. Storer’s opinions

8

that the “means for storing the composite signal received by the host unit” term of claim 1 of the

9

’239 patent is obvious. The prior art on which Dr. Storer relies lacks an explicit reference to either

United States District Court
For the Northern District of California

10

a hard disk drive or software, see id. ¶¶ 729-31, 823-24, yet under Dr. Storer’s newly proposed

11

structure he needs to show only that a hard disk drive for storing the composite signal received by

12

the host unit is an obvious extension of the prior art, not a hard disk drive with associated software.

13

Apple fails to address the discrepancy between the “hard disk drive and [associated]

14

software” contention in Apple’s response to Interrogatory No. 12 and the “hard disk drive” (only)

15

contention in Dr. Storer’s report. Because it is Apple’s burden to show that any discovery

16

shortcoming was substantially justified or harmless, see Yeti by Molly, Ltd., 259 F.3d at 1107, the

17

Court concludes that Apple’s failure to disclose this contention in response to Samsung’s

18

discovery requests warrants a Rule 37 penalty.

19

The Court now addresses the appropriate sanction. The Court notes that the discrepancy

20

between Apple’s Interrogatory No. 12 response and Dr. Storer’s analysis appears to be minor. The

21

software Apple identified at the cited portions of the ’239 Patent seems to call for nothing more

22

than a simple file system on a hard disk drive, such as that found on any modern computer. See,

23

e.g., ’239 Patent at 11:5-8 (“Drive letter F: is mapped as ‘save here.’ This is the subdirectory on

24

the hard disk drive of playback unit 4 to which host unit 3 stores data files received from remote

25

unit 2.”). Moreover, Dr. Storer’s analysis does appear to contemplate that the prior art renders

26

obvious both a hard disk drive and related software for storing a composite signal received by the

27

host unit. See Storer Rep. ¶ 791 (“It also would have been obvious to add a hard disk drive and the

28

required software to the SV9600.”) (emphasis added); ¶ 824 (“The playback unit transceiver [of
12
Case No.: 12-CV-00630-LHK
ORDER GRANTING IN PART AND DENYING IN PART SAMSUNG’S MOTION TO STRIKE

1

the Kodak SV9600 prior art] stores a received image in the same manner [as] a remote unit

2

transceiver stores an image, using the same components.”). Thus, the Court concludes that striking

3

all Dr. Storer’s opinions as to the obviousness of the “means for storing the composite signal

4

received by the host unit” term is inappropriate. The Court does strike Dr. Storer’s testimony,

5

however, to the extent he opines that any of the prior art references identified in his expert report

6

disclose or render obvious the “means for storing the composite signal received by the host unit”

7

limitation without reference to the same structure that Apple disclosed in response to Samsung’s

8

Interrogatory No. 12 for that term, namely, both a hard disk drive and the software identified at

9

11:5-8, 12:19-22 and 12:48-51 of the ’239 Patent.

United States District Court
For the Northern District of California

10
11

IV.

CONCLUSION
For the foregoing reasons, Samsung’s motion to strike is GRANTED as to the “means for

12

storing the composite signal received by the host unit” term of the ’239 Patent. Dr. Storer’s

13

opinions are stricken to the extent he contends that any prior art references disclose the “means for

14

storing the composite signal received by the host unit” limitation of claim 1 of the ’239 Patent by

15

disclosing or rendering obvious only a hard disk drive (and not a hard disk drive and the software

16

identified at 11:5-8, 12:19-22 and 12:48-51) for accomplishing the claimed function.

17

In all other respects, Samsung’s motion is DENIED.

18

IT IS SO ORDERED.

19

Dated: February 20, 2014

_________________________________
LUCY H. KOH
United States District Judge

20
21
22
23
24
25
26
27
28
13

Case No.: 12-CV-00630-LHK
ORDER GRANTING IN PART AND DENYING IN PART SAMSUNG’S MOTION TO STRIKE