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

Filing 1427

ORDER ON PRETRIAL FILINGS. Signed by Judge Lucy Koh on 3/10/14. (lhklc5, COURT STAFF) (Filed on 3/10/2014)

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UNITED STATES DISTRICT COURT

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United States District Court
For the Northern District of California

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NORTHERN DISTRICT OF CALIFORNIA
SAN JOSE DIVISION

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APPLE, INC., a California corporation,

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Plaintiff and Counterdefendant,
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v.
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SAMSUNG ELECTRONICS CO., LTD., a
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Korean corporation; SAMSUNG
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ELECTRONICS AMERICA, INC., a New York )
corporation; and SAMSUNG
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TELECOMMUNICATIONS AMERICA, LLC, )
a Delaware limited liability company,
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Defendants and Counterclaimants. )
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Case No.: 12-CV-00630-LHK
ORDER ON PRETRIAL FILINGS

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The Court notes that the parties’ submissions following the March 5, 2014 pretrial

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conference have substantially narrowed the issues and claims for trial (see ECF Nos. 1414, 1418,

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1419). In particular, in the parties’ stipulation regarding dismissal of claims and counterclaims

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(ECF No. 1419), Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung

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Telecommunications America, LLC (collectively, “Samsung”) agreed not to assert at trial claim 10

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of the ’087 patent, claim 13 of the ’596 patent, or claim 1 of the ’239 patent, thereby withdrawing

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all previously asserted claims of the ’087 and ’596 patents. Apple, Inc. (“Apple”) in turn agreed

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not to assert at trial multiple defenses and claims, including:
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Case No.: 12-CV-00630-LHK
ORDER ON PRETRIAL FILINGS

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United States District Court
For the Northern District of California

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a. Causes of action arising from its First Counterclaim for Declaratory Judgment of NonInfringement of the ’087 Patent
b. Causes of action arising from its Second Counterclaim for Declaratory Judgment of
Invalidity of the ’087 Patent
c. Causes of action arising from its Third Counterclaim for Declaratory Judgment of NonInfringement of the ’596 Patent
d. Causes of action arising from its Fourth Counterclaim for Declaratory Judgment of
Invalidity of the ’596 Patent
e. Causes of action arising from its Fifteenth Counterclaim for Declaratory Judgment of
Non-Infringement as they relate to Claim 1 of the ’239 Patent.
f. Causes of action arising from its Sixteenth Counterclaim for Declaratory Judgment of
Invalidity as they relate to Claim 1 of the ’239 Patent.
g. Causes of action arising from its Seventeenth Counterclaim for Breach of Contract –
FRAND and Other Standard-Related Misconduct
h. Causes of action arising from its Eighteenth Counterclaim for Declaratory Judgment
that Apple is Entitled to a License to Samsung’s Declared-Essential Patents
i. Causes of action arising from its Twenty First Counterclaim for Inequitable Conduct

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Before the United States Patent and Trademark Office During Prosecution of the ’596

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Patent

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j. All affirmative claims for relief or defenses that Samsung’s rights in the ’087 and ’596

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patents are exhausted or unenforceable under the doctrines of waiver, equitable

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estoppel, and/or unclean hands (Fourth Affirmative Defense)

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k. All affirmative claims for relief or defenses that Apple has an irrevocable right to be
licensed on FRAND terms under the ’087 and ’596 patents (Fifth Affirmative Defense)

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l. All affirmative claims for relief or defenses that Samsung is prevented from seeking

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injunctive relief for infringement of the ’087 and ’596 patents (Sixth Affirmative

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Defense)

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Case No.: 12-CV-00630-LHK
ORDER ON PRETRIAL FILINGS

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m. All affirmative claims for relief or defenses that the jury’s verdict in Case No. 11-1846

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creates an issue preclusion regarding two elements of Apple’s affirmative defense of

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patent exhaustion with respect to accused products containing Intel baseband chips

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(Seventh Affirmative Defense)

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n. All affirmative claims for relief or defenses that the ‘596 patent is invalid and

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unenforceable under the doctrine of inequitable conduct (Eighth Affirmative Defense)
(ECF No. 1419 at 1-3.)
Accordingly, in light of this narrowing of claims for trial, the Court hereby ORDERS that
the parties will be allowed to present 25 hours of evidence per side at trial. The Court further

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United States District Court
For the Northern District of California

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ORDERS that the parties shall file by 6:00 p.m., Thursday, March 13, 2014, revised versions

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(clean and redlined) of their relevant pretrial filings indicating any issues, evidence, and witnesses

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that are no longer necessary for presentation at trial, including:

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Joint pretrial statement;

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Trial exhibit lists;

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Witness lists;

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Notices pursuant to 35 U.S.C. § 282

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The parties shall not add any new issues, exhibits, or witnesses to these documents.

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IT IS SO ORDERED.

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Dated: March 10, 2014

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LUCY H. KOH
United States District Judge

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Case No.: 12-CV-00630-LHK
ORDER ON PRETRIAL FILINGS