J.T. Colby & Company, Inc. et al v. Apple, Inc.

Filing 85

DECLARATION of Jennifer L. Barry in Support re: 83 MOTION in Limine to Exclude any Testimony, Argument or Evidence Regarding the Expert Reports and Opinions of Robert T. Scherer.. Document filed by Apple Inc.. (Attachments: # 1 Exhibit 1 (REDACTED), # 2 Exhibit 2 (REDACTED), # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8, # 9 Exhibit 9, # 10 Exhibit 10, # 11 Exhibit 11, # 12 Exhibit 12)(Cendali, Dale)

Dale Cendali
Claudia Ray
Bonnie L. Jarrett
KIRKLAND & ELLIS LLP
601 Lexington Avenue
New York, New York 10022

Perry J. Viscounty
LATHAM & WATKINS LLP
140 Scott Drive
Menlo Park, CA 94025
Jennifer L. Barry
LATHAM & WATKINS LLP
600 West Broadway, Suite 1800
San Diego, CA 92101-3375

Attorneys for Defendant
APPLE INC.
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
J.T. COLBY & COMPANY, INC. d/b/a BRICK
TOWER PRESS, J. BOYLSTON & COMPANY,
PUBLISHERS LLC and IPICTUREBOOKS LLC,
Plaintiffs,
- against -

Case No. 11-CIV-4060 (DLC)
ECF Case

APPLE INC.,
Defendant.

DECLARATION OF JENNIFER L. BARRY IN SUPPORT OF DEFENDANT’S
MOTION TO EXCLUDE ANY TESTIMONY, ARGUMENT OR EVIDENCE
REGARDING THE EXPERT REPORTS AND OPINIONS OF ROBERT T. SCHERER

I, Jennifer L. Barry, declare as follows:
1.

I am a partner at the law firm of Latham & Watkins LLP. I am counsel for

Defendant Apple, Inc. (“Apple”) in this action. I am admitted Pro Hac Vice in the Southern
District of New York. I submit this declaration in support of Defendant’s Motion to Exclude
Any Testimony, Argument or Evidence Regarding the Expert Reports and Opinions of Robert T.
Scherer.
2.

The facts set forth in this declaration are based on my personal knowledge.

3.

Attached hereto as Exhibit 1 is the Expert Report of Robert T. Scherer, dated

September 17, 2012 (the “Scherer Report”).
4.

Attached hereto as Exhibit 2 is the Expert Rebuttal Report of Robert T. Scherer,

dated October 26, 2012 (the “Rebuttal Report”).
5.

Attached hereto as Exhibit 3 are excerpts from the transcript of the November 16,

2012 Deposition of Robert Scherer, with the relevant lines bracketed.
6.

Attached hereto as Exhibit 4 is an excerpt from the transcript of the November 6,

2012 Deposition of Siegrun Kane, with the relevant lines bracketed.
7.

Apple acquired all rights Family Systems had in the IBOOK mark. Family

Systems’ IBOOK registration in the European Union had expired before Apple entered into the
Assignment Agreement with Family Systems. Attached hereto as Exhibit 5 is a Westlaw record
of the Community Trademark Registration No. 001018555 which shows the registration expired.
8.

The specimen filed in connection with Apple’s Combined Declaration of Use and

Renewal shows that Apple’s IBOOKS software allows a user to create an electronic book that
can be read on an Apple device, and that the software also allows a user to modify and interact
with the book. Attached hereto as Exhibit 6 is the specimen filed in connection with such
submission.
9.

Apple’s Senior Product Line Manager, Mr. Steve Gedikian, and in-house counsel,

Ms. Lisa Widup, testified that the IBOOKS software allows a user to create, modify and interact
with an electronic book. Attached hereto as Exhibit 7 are excerpts from the transcript of the

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September 21, 2012 Deposition of Lisa Widup, with the relevant lines bracketed. Attached
hereto as Exhibit 8 are excerpts from the transcript of the September 27, 2012 Deposition of
Steve Gedikian, with the relevant lines bracketed.
10.

During the February 27, 2012 Status Conference for this case, Judge Forrest

stated that “the trademark expert . . . wouldn’t be able to go through and do whether or not there
has been fraud on the Trademark Office or anything like that.” Attached hereto as Exhibit 9 is
an excerpt from the transcript of the February 27, 2012 Status Conference.
11.

Plaintiffs previously sought discovery into trademarks unrelated to this case.

Attached hereto as Exhibit 10 is the Endorsed Letter including Plaintiffs’ arguments for such
discovery, dated August 1, 2012. These arguments were rejected by Judge Batts, Judge Forrest
and Judge Cote. Attached hereto as Exhibit 11 is Judge Forrest’s Motion Denial, dated January
9, 2012. In fact, the Court granted the parties’ request to adjourn time for Apple to rebut
Plaintiffs’ damages expert opinion because the expert relied on information about Apple’s other
trademarks. Attached hereto as Exhibit 12 is the Endorsed Letter, dated October 1, 2012.

I declare under the penalty of perjury of the laws of the United States that the foregoing is
true and correct. This declaration was executed on December 21, 2012.

Jennifer L. Barry
LATHAM & WATKINS LLP
600 West Broadway, Suite 1800
San Diego, CA 92101
619.236.1234 / 619.696.7419 Fax
[e-mail]
Attorneys for Defendant
APPLE, INC.

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