Apple Inc. v. Samsung Electronics Co. Ltd. et al - Document 159

Court Description:

JOINT CASE MANAGEMENT STATEMENT CORRECTED filed by Apple Inc., Samsung Electronics America, Inc., Samsung Electronics Co. Ltd., Samsung Telecommunications America, LLC. (Maroulis, Victoria) (Filed on 8/19/2011) (Entered: 08/19/2011)

1 [COUNSEL LISTED ON SIGNATURE PAGES] 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 NORTHERN DISTRICT OF CALIFORNIA 10 SAN JOSE DIVISION 11 12 13 APPLE INC., a California corporation, Plaintiff, 14 15 16 17 18 19 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, Case No. 11-cv-01846-LHK INITIAL JOINT CASE MANAGEMENT CONFERENCE STATEMENT – CORRECTED VERSION Date: Time: Place: Judge: August 24, 2011 2:00 pm Courtroom 4, 5th Floor Hon. Lucy H. Koh Defendants. 20 21 22 23 24 25 26 27 28 Initial Joint Case Management Statement Case No. 11-cv-01846-LHK 1 Pursuant to this Court’s Civil Local Rule 16-9, the parties jointly submit this Corrected 2 Case Management Statement and Proposed Order.1 Apple counsel and counsel for Samsung 3 Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications 4 America, LLC (“Samsung”) met and conferred beginning on August 3, 2011. 5 1. 6 Apple’s Statement: 7 For Apple’s Case2 8 Apple contends that this Court has subject matter jurisdiction over Apple’s claims against 9 Samsung under 15 U.S.C. § 1121 (action arising under the Lanham Act); 28 U.S.C. § 1331 10 (federal question); 28 U.S.C. § 1338(a) (any Act of Congress relating to patents or trademarks); 11 28 U.S.C. § 1338(b) (action asserting claim of unfair competition joined with a substantial and 12 related claim under the trademark laws); and 28 U.S.C. § 1367 (supplemental jurisdiction). 13 Apple further contends that this Court has personal jurisdiction over the Defendants because each 14 has committed and continues to commit acts of infringement in violation of 35 U.S.C. § 271 and 15 15 U.S.C. §§ 1114, 1125, and places infringing products into the stream of commerce, with the 16 knowledge or understanding that such products are sold in the State of California, including in 17 this District. 18 19 Jurisdiction and Service Samsung does not contest jurisdiction or venue with regard to Apple’s claims. All named parties have been served, and there are no unresolved issues relating to service of process. 20 For Samsung’s Case 21 Samsung contends that this Court has jurisdiction over its counterclaims for patent 22 infringement and declaratory relief pursuant to 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331, 1338(a) 23 1 24 25 The parties submit this Corrected Joint Case Management Conference Statement to clarify and correct certain errors in the charts found in Section 17 comparing the parties' respective scheduling proposals. 2 26 27 Because Apple believes that its case against Samsung (“Apple’s Case”) should be set for trial on a separate track from Samsung’s case against Apple (“Samsung’s Case,” including Apple’s related counterclaims in reply), Apple has made separate case management proposals where appropriate. 28 1 sf-3034699 Initial Joint Case Management Statement Case No. 11-cv-01846-LHK 1 & (b), 1367, 2201(a) and 2202. Apple agrees that, for purposes of Samsung’s counterclaims 2 only, this Court has personal jurisdiction over Apple and that venue is proper in this District. 3 Apple notes, however, that Samsung originally filed its patent infringement counterclaims as a 4 separate action, but dismissed that action and refiled its counterclaims in this action when Apple 5 notified Samsung that it was moving for an expedited trial. 6 Apple contends that this Court has subject matter jurisdiction over Apple’s counterclaims 7 in reply pursuant to 28 U.S.C. §§ 1338(a), 2201, and 2202, and 15 U.S.C. § 4, and 28 U.S.C. §§ 8 1331, 1337. Apple further contends that this Court has personal jurisdiction over Samsung for 9 purposes of Apple’s counterclaims in reply because Samsung has counterclaimed against Apple 10 in this District, and, in any event, Samsung places wireless communication devices in to the 11 stream of commerce knowing that such products will be sold in California. 12 13 All named parties have been served, and there are no unresolved issues relating to service of process with respect to Samsung’s case. 14 Samsung’s Statement: 15 Samsung objects to Apple’s attempt to put the two halves of this case on separate tracks 16 and therefore provides all of its proposals for the case as a whole. Apple purports that the Court 17 has subject matter jurisdiction over its claims and counterclaims under 15 U.S.C. § 1121, 28 18 U.S.C. §§ 1331, 1137, 1338(a), 1338(b), 1367, 2201, 2202, the Federal Patent Act, and Section 4 19 of the Sherman Act. The Court has jurisdiction over Samsung's counterclaims pursuant to 15 20 U.S.C. § 1121 and 28 U.S.C. §§ 1331, 1338(a) & (b), 1367, 2201(a) and 2202. Neither party is 21 challenging personal jurisdiction for purposes of this action, and all parties have been served. 22 2. 23 Apple’s Statement: 24 For Apple’s Case 25 The facts of this case are straightforward. Apple is a leading designer and manufacturer 26 of handheld mobile devices, personal computers, and portable media players. Apple’s significant 27 investment in research and development has led to the creation of innovative technologies that 28 have made Apple’s products, such as the iPhone, iPod touch, and iPad, instantly successful. At Facts 2 sf-3034699 Initial Joint Case Management Statement Case No. 11-cv-01846-LHK 1 the same time, Apple’s design prowess has made these products immediately recognizable. 2 Apple protects its innovations through a broad range of intellectual property rights. 3 Rather than develop its own technology and designs, Samsung chose to copy Apple’s. 4 Samsung designed its phones and tablet computers to mimic the look and behavior of Apple’s 5 revolutionary products. On April 15, 2011, Apple filed this action seeking to stop Samsung’s 6 widespread patent, trademark, and trade dress infringement. On April 19, Apple filed a motion 7 for expedited discovery, and on July 1, motions to expedite trial and for a preliminary injunction. 8 Apple has moved expeditiously to assert its rights in the intellectual property it is asserting. 9 For Samsung’s Case 10 Seeking to obfuscate and delay Apple’s claims, Samsung filed an Answer to the 11 Complaint on June 30 and brought counterclaims based on twelve disparate patents that are 12 unrelated to the subject matter of Apple’s patents. 13 purportedly pertain to public wireless communications standards, raise numerous legal, factual, 14 and technical issues that are completely unrelated to Apple’s claims and should be severed and set 15 for trial on a separate track. Samsung itself does not believe that its claims require quick 16 resolution, because it — unlike Apple — has not moved for expedited relief. These twelve patents, seven of which 17 Further, in response to Samsung’s assertion of these twelve patents against Apple, Apple 18 brought counterclaims in reply seeking declaratory judgment of non-infringement and invalidity, 19 and for various breach of contract, antitrust, and unfair business practice-related claims, aiming to 20 halt Samsung’s abusive assertion of its patents. 21 Samsung’s Statement: 22 Samsung is one of the world’s leading electronics companies, specializing in digital 23 products and media, semiconductors, memory, and system integration. Samsung has a long 24 history of groundbreaking innovation across a wide range of technologies. Samsung entered the 25 phone industry long before Apple, and is the largest provider by volume of mobile devices in the 26 United States and the second largest in the world. During the last half of 2010, Samsung sold 27 more Android-based devices worldwide than any other company, and this month shipped its 300 28 millionth phone. In 2001, Samsung broke the 1 cm technological barrier and sparked the ultra3 sf-3034699 Initial Joint Case Management Statement Case No. 11-cv-01846-LHK 1 portable mobile phone revolution spurring dozens of competitors to slim down their design form 2 factors. Samsung’s innovative contributions to the mobile device industry have been recognized 3 through numerous awards and Samsung’s mobile device designs have won close to 60 awards 4 between 2007 and the beginning of 2011. 5 Despite a long history of innovation when it comes to the design and configuration of 6 mobile devices, Apple has accused Samsung of "copying" the "look and feel" of its iPhone, iPod 7 touch, and iPad products. 8 functional, obvious and otherwise unprotectable elements of design patents, trademarks and trade 9 dress, rather than seeking to innovate in the face of legitimate competition from Samsung. Apple 10 is not entitled to legal protection for such functional and commonly-used device features as 11 rectangular shapes with rounded edges, rectangular screens with black borders, rounded-square 12 shaped icons for applications, nor for common and descriptive metaphors, such as a handset for a 13 phone application, a yellow legal pad for a notes application, and gears for settings. Indeed, 14 Apple’s claimed design elements, taken alone and together, were commonplace long before 15 Apple’s alleged inventions, and the Ninth Circuit has rejected Apple’s previous efforts to 16 monopolize the use of routine metaphors for icons. Apple further alleges that Samsung has 17 infringed several utility patents relating to graphic user interface and multi-touch functionality, 18 which Samsung will show are invalid, unenforceable and not infringed by the accused Samsung 19 products. Apple is attempting to prevent Samsung from using common, 20 Samsung further seeks cancellation of Apple's allegedly registered trademarks and trade 21 dress, in addition to declarations of invalidity for all asserted IP, including the utility and design 22 patents. To streamline the litigation and conserve resources of both parties and the Court, 23 Samsung also asserts twelve of its own utility patents against Apple as counterclaims, which 24 cover a cover a broad scope of smart phone and other mobile device technology, including 25 technology related to data encoding and decoding, regulating transmission power of data 26 channels, increasing efficiency of data transmission, combining data streams to enable 27 simultaneous voice and high-speed data, and scrambling codes. The Samsung patents also cover 28 multitasking on mobile devices, displaying local time on a phone for various cities around the 4 sf-3034699 Initial Joint Case Management Statement Case No. 11-cv-01846-LHK 1 world, and storing, viewing and transmitting images in digital cameras and camera phones. 2 Samsung seeks damages for patent infringement, treble damages for willful infringement, 3 injunctive relief, prejudgment interest, and attorneys’ fees and costs for the entire dispute. 4 3. 5 Apple’s Statement: The legal issues in dispute are those raised in Apple’s Amended 6 Complaint, Samsung’s counterclaims, Apple’s counterclaims in reply, and the parties’ various 7 motions, including the following: Legal Issues 8 • Whether Apple’s asserted utility and design patents are valid; 9 • Whether Samsung’s phones and tablet computers infringe Apple’s asserted utility and design patents; • Whether Apple has protectable iPhone and iPad trade dress and trademarks; • Whether Samsung’s phones and tablet computers misappropriate Apple’s iPhone and iPad trade dress and constitute unfair competition and false designation of origin; • Whether Samsung’s phones and tablet computers infringe Apple’s registered trade dress and trademarks; • Whether Samsung’s phones and tablet computers dilute the value Apple’s trade dress and trademarks; • Whether Samsung’s asserted utility patents are valid; • Whether Apple infringes Samsung’s asserted utility patents; • Whether Samsung has breached contractual obligations relating to the licensing of its asserted patents, including its obligation to license declared-essential patents on Fair, Reasonable, and Non-Discriminatory (“FRAND”) terms; • Whether Samsung has committed antitrust violations and acts of unfair competition in connection with standard setting activities and its assertion of claims over certain technology standards; • Whether Apple’s Case and Samsung’s Case should be severed and set for trial on separate tracks; 24 • Whether Apple’s Case should proceed on an expedited schedule to an early trial; 25 • Whether Apple’s should be granted a preliminary injunction against certain of Samsung’s products; and • Whether Apple’s counsel Bridges & Mavrakakis LLP should be disqualified from representing Apple. 10 11 12 13 14 15 16 17 18 19 20 21 22 23 26 27 28 5 sf-3034699 Initial Joint Case Management Statement Case No. 11-cv-01846-LHK 1 2 Samsung’s Statement: • The proper construction to be given to the claims of the patents in suit as required by Markman, et al. v. Westview Instruments, Inc., 517 U.S. 370 (1996). 3 • Whether the Apple patents are invalid for failing to satisfy one or more of the conditions for patentability specified in Title 35 of the United States Code, including without limitation, Sections 101, 102, 103 and 112. • Whether Apple’s patents are unenforceable for any reason raised by Samsung’s affirmative defenses or otherwise. • Whether the Samsung patents are not invalid for failing to satisfy one or more of the conditions for patentability specified in Title 35 of the United States Code, including without limitation, Sections 101, 102, 103 and 112. • Whether Samsung is not infringing and has not infringed any valid claim of the Apple patents. • Whether Apple is infringing and has infringed any valid claim of the Samsung patents. • Whether the product design and product user interface of the Samsung Accused Products cause confusion, cause mistake, or deceive consumers as to the affiliation, connection, or association of Samsung with Apple, or as to the origin, sponsorship, or approval by Apple of Samsung’s goods, services, or commercial activities. • Whether the product design and product user interface of the Samsung accused products enables Samsung to benefit unfairly from Apple’s reputation and success. • Whether the product design and product user interface of the Samsung accused products is likely to cause dilution by blurring of any valid Apple trade dress. • Whether the Apple trade dress and trademarks are invalid and/or unenforceable including, but not limited to, because they lack secondary meaning, are not inherently distinctive, are functional, are generic, or have been abandoned. • Whether any acts and practices by any Party are likely to mislead or deceive the general public and therefore constitute fraudulent business practices in violation of California Business & Professions Code § 17200, et seq. • Whether the claims at issue in this case are exceptional or willfully violated, entitling the parties profits, treble actual damages, an award of costs, and reasonable attorneys’ fees pursuant to 15 U.S.C. § 1117(a). • Whether any party is likely to be irreparable harmed and is thus entitled to injunctive relief on their claims. • Whether Samsung is entitled to its costs and attorneys fees because this case is exceptional. 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 4. Motions Apple has filed the following motions: 28 6 sf-3034699 Initial Joint Case Management Statement Case No. 11-cv-01846-LHK 1 • A motion for expedited discovery on April 19, 2011 (D.N. 10), which the Court granted in part on May 18, 2011 (D.N. 52); • A motion to shorten time for briefing and hearing on its motion for expedited discovery on April 19, 2011 (D.N. 12), which the Court granted in part on April 26, 2011 (D.N. 26); • A motion for an expedited trial on Apple’s claims on July 1, 2011 (D.N. 83), which is scheduled to be heard on August 24, 2011, and which includes the issue of whether Apple’s claims should be set for expedited trial on a separate track from Samsung’s counterclaims; • A motion to shorten time for briefing and hearing on its motion for an expedited trial and for an early CMC on July 1, 2011 (D.N. 84), which the Court denied on July 12, 2011 (D.N. 110); • A motion for preliminary injunction, on July 1, 2011 (D.N. 86), which is scheduled to be heard on October 13, 2011; and • Various administrative motions. 2 3 4 5 6 7 8 9 10 11 12 13 Apple is considering filing motions for summary judgment on one or more claims, defenses, or issues. Samsung has filed the following motions: 14 • A motion to compel discovery on May 27, 2011 (D.N. 56), which the Court denied on June 21, 2011 (D.N. 79); • A motion to disqualify Bridges & Mavrakakis, one of Apple’s counsel, on July 11, 2011 (D.N. 101), which is scheduled to be heard on August 24, 2011; • A motion to dismiss and strike Apple’s counterclaims, on August 15, 2011 (D.N. 153), which is scheduled to be heard on September 22, 2011; and • 16 A motion to relate cases on May 11, 2011 (D.N. 41), based on which the Court issued a related case order on May 23, 2011 (D.N. 55);3 • 15 Various administrative motions. 17 18 19 20 21 22 Other motions may be filed as the case progresses, and the parties reserve their right to address the same. 23 24 25 26 3 27 Samsung has since dismissed the related case and refiled some of those claims as counterclaims in this action. 28 7 sf-3034699 Initial Joint Case Management Statement Case No. 11-cv-01846-LHK 1 5. 2 Apple’s Statement: 3 Apple may amend its claims as pending patent applications and other intellectual property 4 Amendment of Pleadings mature into enforceable rights, and as Samsung releases new infringing products. 5 Samsung’s Statement: 6 Samsung may amend its pleadings to reflect information obtained through discovery and 7 to raise equitable defenses, but does not expect to dismiss any of its counterclaims. Samsung may 8 further amend its complaint as Apple releases new infringing products. Samsung has proposed a 9 deadline of December 23, 2011 for all amendments to pleadings. 10 6. Evidence Preservation 11 The parties recognize that the burden of suspending normal policies regarding electronic 12 backup systems for disaster recovery outweighs the potential relevance of documents that might 13 be captured by some interim backup on an unknown date. Therefore, the parties agree that each 14 party can continue the standard disaster recovery systems protocol used by that party. 15 7. 16 The parties have not served initial disclosures. Under FRCP 26(a)(1)(C), the parties are 17 required to serve initial disclosures within 14 days of the Rule 26(f) conference, unless changed 18 by stipulation. The parties have agreed, subject to the Court’s approval, to serve their initial 19 disclosures on September 7, 2011. 20 8. Disclosures Discovery a. 21 Discovery Taken to Date 22 Apple’s Statement: 23 Samsung provided expedited discovery of certain product samples on June 17, 2011. 24 Samsung has completed discovery of Apple for Samsung’s opposition to Apple’s Motion for 25 Preliminary Injunction. Apple produced a significant number of documents spanning email, 26 source code, CAD files, invention and patent prosecution files, licenses, marketing and 27 advertising information, third party market research, expert reports, and deposition and trial 28 transcripts. Apple has also responded to a large number of interrogatories and made multiple fact 8 sf-3034699 Initial Joint Case Management Statement Case No. 11-cv-01846-LHK 1 and expert witnesses available for deposition. 2 Samsung, and its preliminary injunction discovery period is scheduled to begin shortly after 3 Samsung files its opposition brief. Apple has propounded written discovery on 4 On August 3, 2011, both Apple and Samsung served general discovery concerning this 5 action in the form of interrogatories and requests for production of documents and things, with 6 objections and responses due on September 2. 7 Just days before its opposition to Apple's preliminary injunction motion is due, Samsung 8 continues to raise false complaints about the scope of Apple's related production, which Apple 9 expedited. Samsung ignores that Apple made four fact witnesses and its two experts available for 10 deposition. Samsung also ignores that Apple searched for, reviewed, and produced thousands of 11 responsive documents and e-mails and hundreds of drawings in the limited timeframe for 12 Samsung's preliminary injunction discovery. 13 production, Samsung confuses sketches and notebooks, continues to demand deponents on 14 30(b)(6) topics that Apple has long explained were unreasonable and overly broad, and insists 15 that Apple respond to discovery that Samsung served after the Court's deadline. Rather than address the breadth of Apple's 16 Samsung’s Statement: 17 Samsung provided expedited discovery of certain product samples on June 17, 2011. 18 Samsung has undertaken discovery of Apple for Samsung's opposition to Apple's Motion for 19 Preliminary Injunction. Apple has yet to address numerous outstanding issues with the discovery 20 related to the Preliminary Injunction motion. 21 design patent inventor notebooks did not exist – a representation that was revealed as false only at 22 the recent deposition of an Apple designer and named inventor on the design patents asserted on 23 Apple’s Preliminary Injunction motion – and its continued refusal to produce those notebooks. 24 Apple also failed to produce a witness on a number of 30(b)(6) topics, despite representations on 25 the record to the contrary, and failed to properly answer interrogatories relating to the facts at 26 issue on the Preliminary Injunction motion. These include Apple’s misrepresentation that 27 28 9 sf-3034699 Initial Joint Case Management Statement Case No. 11-cv-01846-LHK 1 Both sides also have served general discovery in the form of interrogatories and requests 2 for production of documents and things on August 3, with objections and responses due 3 September 2. 4 b. Limitations on Discovery 5 The parties agree that at depositions that require an interpreter, there shall be an official 6 interpreter hired by the side taking the deposition. The parties further reserve the right to hire 7 their own interpreter to verify the translation by the official interpreter. 8 Apple’s Statement: 9 Because Apple’s Case and Samsung’s Case are distinct and should be separated, Apple 10 11 12 proposes separate limits on discovery for each case. Apple proposes that none of the discovery related to its motion for a preliminary injunction should count against the following limits. 13 Depositions 14 Standard: 10 depositions (FRCP 30(a)(2), 31(a)(2)) 15 Proposal for Apple’s Case: 150 hours of total deposition time for each side (i.e., 150 16 hours for Apple and 150 hours for the Samsung entities collectively); 7 hour-limit for individual 17 depositions; individual and 30(b)(6) depositions count against total time, but third-party and 18 expert depositions do not; depositions requiring an interpreter count as half time. 19 Proposal for Samsung’s Case: 20 325 hours of total deposition time for each side (i.e., 325 hours for Apple and 325 hours 21 for the Samsung entities collectively); 7 hour-limit for individual depositions; individual and 22 30(b)(6) depositions count against total time, but third-party and expert depositions do not; 23 depositions requiring an interpreter count as half time; 75 hours maximum total 30(b)(6) 24 deposition time for each side. 25 Interrogatories 26 Standard: 25 interrogatories (FRCP 33(a)(1)) 27 Proposal for Apple’s Case: 35 interrogatories 28 Proposal for Samsung’s Case: 60 interrogatories 10 sf-3034699 Initial Joint Case Management Statement Case No. 11-cv-01846-LHK 1 Requests for Production 2 No limit in FRCP. 3 Proposal for Apple’s Case: no limit. 4 Proposal for Samsung’s Case: no limit. 5 Requests for Admission 6 No limit in FRCP. 7 Proposal for Apple’s Case: 100 requests for admission; requests for admission of the 8 authenticity of a document do not count against the limit. 9 Proposal for Samsung’s Case: as above. 10 Samsung’s Statement: 11 Apple’s proposal that the parties be treated differently for discovery purposes – and not 12 coincidentally in ways that uniformly would favor Apple – is untenable as well as unfair. 13 Samsung believes that the Court should set one limit for the entire case and let each side decide 14 how to allocate their time between claims and counterclaims. Therefore, Samsung is proposing 15 overall case limits. 16 Depositions 17 Samsung proposes 450 hours of fact depositions for the entire case. Rule 30(b)(6) 18 deposition hours should be counted towards the 450 hour limit for each side; third party and 19 expert depositions do not count toward the total. At depositions that require an interpreter, the 20 parties agree that there shall be an official interpreter hired by the side taking the deposition. 21 Samsung further reserves the right its own interpreter to verify the translation by the official 22 interpreter. Samsung proposes that every 10 hours of deposition time requiring interpreters count 23 as 7 hours towards the 450 hour total. 24 Interrogatories 25 Samsung proposes 80 interrogatories per side. 26 Requests for Admission 27 No limit on requests for admission is necessary. 28 11 sf-3034699 Initial Joint Case Management Statement Case No. 11-cv-01846-LHK 1 c. Discovery of ESI 2 Apple has proposed that the parties enter an ESI stipulation addressing preservation, 3 collection, and production of ESI. Samsung agrees that the parties should work out a stipulation 4 and initially proposes that ESI be produced via reasonable word searches with the search terms 5 agreed upon by both sides. d. 6 Protective Order 7 The parties are still negotiating the scope of a protective order to govern this action. In 8 the interim, the parties are operating under the Interim Protective Order provided by the Local 9 Patent Rules, as modified by stipulation for Samsung’s expedited discovery. The parties are 10 discussing and considering cross-use provisions to account for additional foreign and domestic 11 litigations between the parties. 12 e. Privilege and Privilege Logs 13 The parties have agreed to the following procedures with respect to privilege logs: 14 The parties are not required to log Privileged Materials dated after April 15, 2011 (the 15 “cut-off date”). Information concerning documents or things otherwise protected by the attorney- 16 client privilege, work product immunity, or other privilege or protection (“Privileged Materials”) 17 that were created after the cut-off date do not need to be included on any privilege log. In 18 addition, Privileged Materials created by or on behalf of litigation counsel or exchanged with 19 litigation counsel, regardless of their date, do not need to be included on any privilege log. This 20 does not include materials prepared by or on behalf of the law firms representing the parties in 21 their capacity as prosecution counsel. The parties reserve the right to request logs of Privileged 22 Materials created after April 15, 2011 where good cause exists. 23 The parties shall exchange privilege logs on September 7, 2011, for all documents 24 produced prior to August 25, 2011. For each additional set of documents produced on or after 25 August 25, 2011, the producing party shall provide a privilege log within thirty (30) days after 26 each production, logging any documents withheld from production under a claim of privilege. 27 28 12 sf-3034699 Initial Joint Case Management Statement Case No. 11-cv-01846-LHK 1 2 f. Discovery from Experts The parties will meet and confer regarding entry of a stipulation limiting the discovery of 3 expert materials. The parties have also agreed to meet and confer following the exchange of 4 expert reports to set reasonable limits on expert deposition time. 5 9. Class Actions 6 This case is not a class action. 7 10. 8 Apple’s Statement: 9 Pursuant to this Court’s May 23, 2011, order (D.N. 55), Apple’s case was related to Related Cases 10 Samsung Electronics Co., Ltd. et al. v. Apple Inc., cv-11-02079-LHK. 11 Samsung dismissed that case and reasserted its claims as counterclaims in this action (D.N. 80). 12 13 On June 30, 2011, Counterparts to many of the patents-in-suit are being litigated between the parties in cases outside the U.S., listed in the order in which they were filed: • 4/15/2011: Apple Inc. v. Samsung Electronics Co., Ltd. (Case No. 5:11-cv-1846) (N.D. Cal.) • 4/21/2011: Samsung Electronics Co., Ltd. v. Apple Japan, Inc. (Tokyo District Court, Japan – JP Pat. No. 4642898 - 2011 (Yo) No. 22027) • 4/21/2011: Samsung Electronics Co., Ltd. v. Apple Japan, Inc. (Tokyo District Court, Japan – JP Pat. No. 4299270 - 2011 (Yo) No. 22028) • 4/21/2011: Samsung Electronics Co., Ltd. v. Apple Korea Ltd (Seoul Central District Court, Korea - 2011 Kahap 39552) • 4/21/2011: Samsung Electronics GmbH v. Apple, Inc. and Apple GmbH (Mannheim Regional Court, Germany) (7 O 247/11) • 6/17/2011: Apple Inc. v. Samsung Japan Corp. (Tokyo District Court, Japan – JP Pat. No. 4204977 - 2011 (Yo) No. 22048) • 6/17/2011: Apple Inc. v. Samsung Japan Corp. (Tokyo District Court, Japan – JP Pat. No. 4743919 - 2011 (Yo) No. 22049) • 6/17/2011: Apple Inc. v. Samsung Electronics GmbH (Mannheim Regional Court, Germany) (7 O 166/11) • 6/22/2011: Apple Inc. v. Samsung Electronics Co., Ltd. (Seoul Central District Court, Korea - No. 2011 Gahap 63647) • 14 6/27/2011: Apple Inc. v. Samsung Electronics Co., Ltd. (Court of Justice, the Hague, Netherlands) (KG 11-730) 15 16 17 18 19 20 21 22 23 24 25 26 27 28 13 sf-3034699 Initial Joint Case Management Statement Case No. 11-cv-01846-LHK 1 • 6/27/2011: Apple Inc. v. Samsung Electronics Co., Ltd. (Court of Justice, the Hague, Netherlands) (KG 11-731) • 6/28/2011 In the Matter of Certain Mobile Electronic Devices (ITC Case Samsung v. Apple 337-TA-794) 4 • 6/29/2011: Samsung Elec. Co. Ltd. et al. v. Apple Inc. (D. Del. 11-cv-573-LPS) 5 • 6/29/2011: Samsung Electronics Italia s.p.a. v. la Apple Inc. (Tribunale Di Milano, Italy) • 6/29/2011: Samsung Elec. Co. Ltd. v. Apple Retail UK et al. (UK High Court of Justice Chancery Div. Patents Court HC 11 CO 2180) • 7/5/2011: In the Matter of Certain Electronic Digital Media Devices and Components Thereof (ITC Case Apple v. Samsung 337-TA-796) • 7/8/2011: Samsung Electronics Co. Ltd and Samsung Electronics France v. Apple France et al. (Tribunal De Grande Instance De Paris 11/10464) • 7/28/2011: Apple Inc. v. Samsung Electronics Ltd. Co. (Federal Court of Australia, New South Wales District Registry, General Division) (NSD1243/2011) • 8/4/2011: Apple Inc. v. Samsung Electronics GmbH (Düsseldorf Regional Court) 2 3 6 7 8 9 10 11 12 13 14 Apple has obtained provisional relief in two of these foreign actions. On August 1, 2011, 15 in response to Apple’s application for a preliminary injunction, the Federal Court of Australia for 16 New South Wales entered an order confirming the undertaking of Samsung Electronics Co., Ltd. 17 and its Australian affiliate that Samsung will not import, offer for sale or sell in Australia the 18 Galaxy Tab 10.1 without Apple’s permission pending resolution of Apple’s application, and that 19 Samsung will provide samples of the Galaxy Tab 10.1 to Apple at least seven days before the 20 intended date of distribution. 21 On August 9, 2011, the German Regional Court in Düsseldorf issued an interim injunction 22 prohibiting Samsung Electronics Co., Ltd. and its German affiliate from making, offering for sale, 23 selling, importing, exporting, or stocking the Galaxy Tab 10.1 within the European Union (with 24 the exception of Netherlands as to Samsung Electronics Co., Ltd). 25 German court suspended enforcement of the interim injunction with regard to Samsung 26 Electronics Co., Ltd. for the territory outside Germany. This modification does not limit the 27 scope of the interim injunction as to Samsung’s German affiliate. On August 16, the 28 14 sf-3034699 Initial Joint Case Management Statement Case No. 11-cv-01846-LHK 1 Apple denies Samsung's incorrect arguments about the overseas provisional relief Apple 2 has obtained, which Samsung inserted shortly before this statement was due. The injunction in 3 Germany was based on the court’s inspection of a physical sample of Samsung’s infringing 4 product, for example. Apple reserves the right to address Samsung's arguments them further at 5 the Case Management Conference. 6 Samsung’s Statement: 7 Samsung agrees that the list of foreign actions listed by Apple is accurate. However, even 8 assuming that Apple’s gratuitous claims about the preliminary proceedings in those actions could 9 have any relevance to case management here, Apple misstates them. In Australia, Apple 10 erroneously moved to enjoin the sale of a version of the Galaxy Tablet Samsung never planned to 11 release in Australia. To avoid wasting the resources of the Court or the parties on a device that 12 Samsung would not even be selling in Australia, Apple and Samsung entered into an agreement 13 in which Samsung would not release the U.S. version of the tablet in that country—which it had 14 never intended to do. In Germany, Apple secretly filed for an injunction, without any notice to 15 Samsung, and with reportedly doctored evidence. After initially entering the injunction, the 16 German court reversed itself and has since allowed sales of the Galaxy Tab to resume throughout 17 Europe, with the exception of Germany itself. Samsung is challenging the remaining limited 18 portion of the injunction and expect it to likewise be overturned. Samsung has also filed an 19 application seeking to cancel the design registration asserted by Apple in Germany (equivalent to 20 the D504,889 patent alleged in this action) with the Office of Harmonization for the Internal 21 Market. 22 11. 23 Apple’s Statement: 24 The Apple Case 25 The relief Apple seeks in its case against Samsung is detailed in its Amended Complaint 26 and other pleadings, including its Motion for a Preliminary Injunction. In summary, Apple seeks: 27 Relief • 28 A judgment that Samsung has infringed one or more claims of Apple’s asserted patents; 15 sf-3034699 Initial Joint Case Management Statement Case No. 11-cv-01846-LHK 1 • An order preliminarily and permanently enjoining Samsung from further infringement of Apple’s asserted patents; • A judgment awarding damages to compensate for Samsung’s infringement, including treble damages for willful infringement, and prejudgment interest; • A judgment awarding Apple all of Samsung’s profits together with prejudgment interest; • An order preliminarily and permanently enjoining Samsung from further infringement or dilution of Apple’s asserted trademarks and trade dress; • Actual damages suffered by Apple as a result of Samsung’s unlawful conduct, in an amount to be proven at trial; and • Various other relief, including reasonable funds for future corrective advertising, an accounting of Samsung’s profits, treble damages, punitive damages pursuant to the California Civil Code, restitutionary relief, costs of suit and reasonable attorneys fees, and any other relief to which Apple may be entitled. 2 3 4 5 6 7 8 9 10 11 The Samsung Case 12 Apple seeks the following relief in Samsung’s case against Apple: 13 • An order dismissing Samsung’s Counterclaims in their entirety, with prejudice; 14 • A judgment in favor of Apple and against Samsung; 15 • A judgment finding that Samsung is liable for breach of contract, promissory estoppel, violation of Sections 1 and 2 of the Sherman Act, 15 U.S.C. §§ 1 and 2, the California Cartwright Act, California Business and Professions Code, §§ 16720, et seq, and/or violation of Cal. Bus. & Prof. Code § 17200; • A judgment against Samsung for the amount of damages Apple proves at trial and, as a legal or equitable remedy, judgment declaring that Samsung’s purported essential patents are unenforceable by virtue of standards-related misconduct including (i) Samsung’s breach of its FRAND commitments and/or (ii) Samsung’s breach of its disclosure obligations at ETSI; • Pursuant to Section 4 of the Clayton Act, 15 U.S.C. § 15, and/or California Business and Professions Code, §§ 16720, et seq., a judgment against Samsung for treble the amount of Apple’s damages, an injunction barring Samsung from demanding from Apple non-FRAND terms for Samsung’s purportedly essential patents, and an award to Apple of all reasonable attorneys’ fees and costs; • A judgment that Samsung has violated the California Unfair Competition Law; • A judgment declaring that, to the extent any of the alleged inventions described in and allegedly covered by the purportedly essential patents are used, manufactured, or sold by or for Apple, its suppliers, and/or its customers, Apple is licensed by virtue of Samsung’s FRAND commitments or, in the alternative, Apple has the irrevocable right to be licensed on FRAND terms under those patents; • A judgment declaring that Samsung is not entitled under any circumstances to seek injunctive relief preventing Apple from practicing the UMTS standard, and that 16 17 18 19 20 21 22 23 24 25 26 27 28 16 sf-3034699 Initial Joint Case Management Statement Case No. 11-cv-01846-LHK 1 Samsung is not otherwise entitled to use its purported essential patents to pursue injunctive relief; 2 • A judgment declaring that Samsung’s purported essential patents are unenforceable by virtue of Samsung’s waiver of its right to enforce its purported essential patents; • A declaration that Apple has not infringed, and is not infringing, each of the Samsung asserted patents; and • 3 A declaration that one or more of the claims of each of the Samsung asserted patents are invalid, void and/or unenforceable against Apple. 4 5 6 7 8 Samsung’s Statement: Samsung seeks: 9 • Dismissal of Apple's claims with prejudice and entry of judgment in its favor; • A judgment that Apple has infringed one or more claims of Samsung’s asserted patents; • An order preliminarily and permanently enjoining Apple from further infringement of Samsung’s asserted patents; • Damages in an amount to be proven at trial, including treble damages for willful infringement and prejudgment interest; 15 • Apple’s profits together including prejudgment interest; 16 • A declaratory judgment that Samsung has not infringed any of the claims of any design or utility patent asserted by Apple; • A declaratory judgment that all of the design and utility patents asserted by Apple are invalid; • A declaratory judgment of no Federal false designation of origin under 15 U.S.C. § 1125(a); • A declaratory judgment of no infringement of any asserted Apple trademarks or trade dress; 22 • A declaratory judgment of no dilution of any asserted Apple trade dress; 23 • A declaratory judgment that all of the trademarks and trade dress, including application, asserted by Apple are invalid; • Cancellation of all trademarks and trade dress, including application, asserted by Apple are invalid; • A declaratory judgment of no violation of the California Business and Professional Code § 17200 et seq.; • A declaratory judgment of no violation of the law of unjust enrichment; and 10 11 12 13 14 17 18 19 20 21 24 25 26 27 28 17 sf-3034699 Initial Joint Case Management Statement Case No. 11-cv-01846-LHK 1 • A declaration that this case be declared "exceptional" under 35 U.S.C. § 285 and an award of Samsung's attorneys' fees, expenses, and costs. 2 12. 3 4 Settlement and ADR The parties agree to private mediation before a neutral and at a time and date that is mutually acceptable to both parties. 5 13. 6 7 Consent to Magistrate Judge for All Purposes The parties do not consent to having a magistrate judge conduct all further proceedings including trial and entry of judgment. 8 14. 9 10 Other References The Parties do not believe that this case is suitable for reference to binding arbitration, a special master, or the Judicial Panel on Multidistrict Litigation. 11 15. 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 Narrowing of Issues and Severance of Claims Apple’s Statement: Apple requests that the Court sever Samsung’s counterclaims and schedule them for trial on a separate track for the reasons in Apple’s Reply In Support of Motion for Expedited Trial (D.N. 131 at 8-12) and in its Opposition to Samsung’s Motion to Disqualify (D.N. 133 at 25-26). Apple has shown an urgent need for expedited relief. Samsung’s infringing products threaten to erode the distinctiveness of core Apple products. New infringing Samsung products are rapidly entering the U.S. market. Samsung has stated that it will make a “major new product announcement” at the end of this month. All indications are that Samsung will announce the U.S. release of its next generation Galaxy S2 smartphone. Apple understands that a new infringing Samsung tablet, called the Tab 8.9, is also coming. Apple needs early adjudication of its claims so it can put a stop to Samsung’s copying of Apple’s designs and technology now. Samsung, in contrast, has never sought expedited relief on its counterclaims, most of which involve patents that Samsung contends are essential to implement telecommunication standards. Samsung is bound to license these patents on Fair, Reasonable and Non- Discriminatory (“FRAND”) terms. Injunctive relief is not and never will be an issue as to those patents. 28 18 sf-3034699 Initial Joint Case Management Statement Case No. 11-cv-01846-LHK 1 Apple’s claims are already on a faster track, having been the subject of multiple motions 2 and substantial expedited discovery taken in connection with Apple’s preliminary injunction 3 motion. In contrast, no discovery has been taken on Samsung’s counterclaims. Samsung’s 4 counterclaims will require extensive discovery and briefing of completely distinct issues — 5 including unrelated technology and Samsung’s violation of its obligation to license patents that it 6 contends are essential to implement telecommunications standards. 7 Samsung’s counterclaims should not be allowed to delay the trial of Apple’s claims, especially 8 since Samsung added them to this case in a transparent attempt to slow down Apple’s case. (Id. 9 at 11-12.) (D.N. 131 at 9-11.) 10 By any measure, combining Apple’s claims and Samsung’s claims would make the case 11 too large and too complex for any single jury. The technologies are varied. The legal issues, 12 including Apple’s antitrust counterclaims, are many. Even Samsung believes that four weeks 13 would be needed to try the combined claims. 14 Samsung seems to agree, having expressly stated that it “reserves the right to seek additional 15 time”. Urgency and logic dictate that the cases be split as Apple has proposed. Apple views that as unrealistic, and indeed 16 Samsung has asserted that the issue of setting Apple’s claims for a separate, expedited 17 trial is not properly before the Court. Apple moved, however, for an order setting “an expedited 18 schedule leading to a trial on Apple’s claims….” (Apple’s Motion for Expedited Trial on its 19 Claims, D.N. 83 at 2 (emphasis added); see D.N. 83-1 (proposed order setting an expedited 20 schedule “as to Apple’s claims in this case”).) 21 Scheduling Apple’s claims for separate trial is clearly a proper issue for the Case 22 Management Conference. Rule 16(c)(2)(M) of the Federal Rules of Civil Procedure authorizes 23 the Court to “consider and take appropriate action” at the Case Management Conference on 24 “ordering a separate trial under Rule 42(b) of a claim, counterclaim, crossclaim, third-party claim, 25 or particular issue.” This District’s Standing Order for All Judges on the Contents of the Joint 26 Case Management Conference Statement requires the parties to address the subject of 27 “Narrowing of Issues,” including “any request to bifurcate issues, claims, or defenses.” 28 19 sf-3034699 Initial Joint Case Management Statement Case No. 11-cv-01846-LHK 1 Federal Rule of Civil Procedure 21 authorizes the Court to “sever any claim against a 2 party” either “[o]n motion or on its own.” Fed. R. Civ. P. 21 (emphasis added). The Northern 3 District of California has exercised this authority to “sever claims sua sponte.” Khanna v. State 4 Bar of Cal., No. C-07-2587 EMC, 2007 WL 2288116, at *2 (N.D. Cal. Aug. 7, 2007) (order 5 severing claims under Rule 21) (“Although neither party has moved for severance in the instant 6 case, the Court may sever claims sua sponte.”) Courts have also ordered separate trial of claims 7 under Rule 42(b), even without a motion. “Regardless of whether this action is construed as 8 severance of particular plaintiffs and their claims under Rule 21, or construed as an order for 9 separate trials under Rule 42(b), this Court has the power sua sponte to order such action and has 10 decided to exercise it.” In re All Asbestos Cases Pending in the U.S. Dist. Court for the Dist. of 11 Maryland, No. BML-1, 1983 WL 808161, at *4 (D.Md. Dec. 16, 1983); see Richmond v. Weiner, 12 353 F.2d 41, 44 (9th Cir. 1965) (trial court may order separate trial of issues “in its discretion” 13 and “upon its own motion”); 9A Charles Alan Wright, et al., Fed. Prac. & Proc. § 2388 (3d ed.) 14 (“A formal motion is not required … because district court may order separate trials on its own 15 motion”) (footnote omitted). 16 Samsung’s Statement: 17 Rather than filing a noticed motion, as the Rules require and which would enable the 18 parties to fully brief and the Court adequately evaluate the issue, Apple continues to interject its 19 desire to sever Samsung's counterclaims into random filings in this case. 20 delaying the parties' exchange of proposed case management statements, and after 4 pm on the 21 day before the parties are required to file this Joint statement, Apple ambushed Samsung with a 22 statement including what should be styled as a motion to sever. Apple's continued refusal to 23 properly put this issue before the Court demonstrates that it either is not serious about the issue or 24 is afraid that allowing full briefing would only serve to further expose the lack of merit in Apple's 25 position. Apple's argument is improper for a case management statement, and on that basis alone 26 should be disregarded by the Court. After repeatedly 27 But even if it were considered in this context, Apple’s request is meritless. First and 28 foremost, Apple ignores the Court’s prior decision (over Apple’s opposition) to relate the two 20 sf-3034699 Initial Joint Case Management Statement Case No. 11-cv-01846-LHK 1 cases that the parties filed against each other. To state the obvious, where two separately filed 2 cases have been deemed related, it would be improper and inefficient to sever the same claims 3 which are now styled as counterclaims. Although the Court’s order to relate should be dispositive 4 of Apple’s belated attempt to rehash this issue, Samsung briefly addresses Apple’s arguments and 5 further requests that, if the Court is inclined to consider Apple’s improper request, Samsung be 6 allowed to submit an opposition brief. 7 Apple makes three arguments to justify its improper request to sever. First, Apple asserts 8 that its claims are "straightforward." However, Apple fails to explain how its twenty-two claims 9 for relief, involving eight utility patents spanning differing types of complex technology, seven 10 design patents, and over a dozen trademark and trade dress registrations and applications are 11 "more suitable for expedited disposition." Second, Apple argues that the potential release of new 12 Samsung products supports its request for expedited relief. The fact Apple only moved for a 13 preliminary injunction against three Samsung smart phones—and not on the basis of the 14 trademark and trade dress claims used to bolster its motion for expedited discovery—belies any 15 claim that Apple is facing harm that justifies expedited relief, much less expedited disposition of 16 only its claims. Indeed, this Court previously informed Apple of this very point: “The Court has 17 already granted Apple expedited discovery, thereby providing Apple an opportunity to obtain 18 preliminary relief in this action….The Court agrees with Samsung that the length of time Apple 19 has been aware of its claims and the long history of infringement alleged in the complaint 20 undermined Apple’s claims of urgency….” (Dkt. No. 110 at 2.) Finally, Apple has provided no 21 rationale as to why Samsung's claims will "delay the trial of Apple's claims." 22 proposed schedule adheres to the local patent rules for both sides, regardless of when the patents 23 were added to the case. Samsung's 24 Apple's singular, one-sided focus on expediting its claims while avoiding requirements of 25 actually filing for a preliminary injunction, ignores the waste of resources and prejudice that 26 severance would have. Apple's proposed schedule delays trial of Samsung's claims until June 27 2013 at the earliest, which certainly does not further the interests of judicial economy. See, e.g., 28 Vitronic Corp. v. Conceptronic, Inc., 1993 WL300882 *2 (D.N.H. 1993) ("The court is not 21 sf-3034699 Initial Joint Case Management Statement Case No. 11-cv-01846-LHK 1 persuaded that a second phase of discovery and trial on a claim which will nonetheless require 2 resolution independent from that required for infringement liability will result in the most 3 efficient just final disposition of the litigation."). The delay will also prejudice Samsung and 4 impose additional burdens on the Court and the parties. Since many Samsung employees relevant 5 to both parties' claims reside in Korea, it would be more cost effective for the witnesses to be 6 deposed once, on all issues and claims. See Sumitomo Mitsubishi Silicon Corp. v. MEMC Elec. 7 Materials, Inc., No. C 05-2133, at *3, n.2 (N.D. Cal. Dec. 6, 2005). Furthermore, if Apple’s 8 unfair proposal were adopted, evidence is likely to be lost in the interim before trial of its claims. 9 One of Apple's declarants in support of its preliminary injunction motion has already left the 10 company, and it is likely that in the next two years additional important witnesses (and evidence) 11 will become unavailable. Id. (denying motion to sever antitrust claims in part because of risk of 12 lost evidence, including departure of employees from defendant company). Rather than invite 13 disputes regarding the scope of discovery and repeated deposition of experts and fact witnesses, 14 discovery of the claims should proceed together, and the claims should be tried together. Id. 15 Samsung anticipates that it will file motions for summary judgment to narrow the issues in the 16 case and reduce the scope of any potential trial. 17 16. 18 Apple believes that its claims against Samsung are suitable for handling on an expedited 19 schedule, as detailed in Apple’s pending Motion for an Expedited Trial. Samsung opposes this 20 motion, as well as any attempt to sever Samsung’s counterclaims. The motion is fully briefed and 21 will be heard by the Court on August 24, 2011. Samsung does not believe it is appropriate to 22 expedite this case. 23 17. 24 Apple’s Statement: 25 In its Motion for an Expedited Trial, Apple proposed a schedule for all aspects of the case 26 that would lead to trial beginning on February 1, 2012. Due to the Court’s Order Denying 27 Apple’s Motion to Shorten Time on its Expedited Trial Motion, the hearing on Apple’s Expedited 28 Trial Motion will be held concurrently with the Case Management Conference on August 24, Expedited Schedule Scheduling 22 sf-3034699 Initial Joint Case Management Statement Case No. 11-cv-01846-LHK 1 which is one month later than Apple had proposed. Accordingly, Apple has revised its expedited 2 schedule to lead to trial on Apple’s claims beginning March 7, 2012, as set forth in the table 3 below. 4 Samsung has not sought expedited relief on its claims against Apple. Rather, it has 5 asserted its claims as counterclaims in this action in order to delay resolution of Apple’s claims. 6 There is no reason that these cases should proceed on the same schedule. 7 case will require additional discovery concerning Samsung’s violation of its FRAND licensing 8 obligation and its misconduct in the standards setting process, and Apple’s related breach of 9 contract, unfair competition, and antirust counterclaims. Indeed, Samsung’s Accordingly, Apple proposes that 10 Samsung’s claims be set for trial on a separate, non-expedited track, as set forth in the table 11 below. 12 Comparison of Proposed Schedules for Apple’s Case: 13 Event Apple’s Proposal 14 15 Samsung’s Proposal Apple serves infringement contentions on Apple’s patents (Patent L.R. 3-1) Aug. 24, 2011 Sept. 7, 2011 Apple produces documents related to infringement contentions on Apple’s patents (Patent L.R. 3-2) Aug. 24, 2011 Sept. 7, 2011 Case Management Conference Aug. 24, 2011 Aug. 24, 2011 Apple proposes claim terms for construction on Apple’s patents (Patent L.R. 4-1) Aug. 24, 2011 Nov. 7, 2011 Initial Disclosures Due Sept. 7, 2011 Sept. 7, 2011 Samsung serves invalidity contentions on Apple’s patents and produces required documents (Patent L.R. 3-3, 3-4) Sept. 19, 2011 Oct. 24, 2011 Samsung proposes claim terms for construction Sept. 19, 2011 on Apple’s patents (Patent L.R. 4-1) Nov. 7, 2011 Parties exchange preliminary claim constructions on Apple’s patents and identify supporting evidence and experts (Patent L.R. 4-2) Dec. 5, 2011 16 17 18 19 20 21 22 23 24 25 26 27 28 23 sf-3034699 Sept. 26, 2011 Initial Joint Case Management Statement Case No. 11-cv-01846-LHK 1 Event Apple’s Proposal 2 Samsung’s Proposal 4 Parties file Joint Claim Construction and Prehearing Statement on Apple’s patents, limited to ten total terms in dispute (Patent L.R. 4-3) Oct. 3, 2011 Dec. 23, 2011 Deadline to Amend Pleadings 3 Oct. 3, 2011 Dec. 23, 2011 Close of claim construction discovery Oct. 26, 2011 Jan. 23, 2011 Apple’s Opening Claim Construction Brief on Apple’s patents Oct. 31, 2011 Feb. 6, 2012 Samsung’s Claim Construction Opposition on Apple’s patents Nov. 14, 2011 Feb. 21, 2012 Apple’s Claim Construction Reply on Apple’s patents Nov. 21, 2011 Feb. 28, 2012 Markman Tutorial on Apple’s patents [To be supplied by Court] Claim Construction Hearing on Apple’s patents [To be supplied by March 13, 2012 Court] Local Patent Rule 3-7 Disclosures on Apple’s patents Dec. 19, 2011 5 6 7 8 9 10 11 12 13 14 15 16 17 Fact discovery cut-off 90 days after Court issues claim construction order 18 19 50 days after Court issues claim construction order Dec. 19, 2011 Initial expert disclosures/reports 150 days after Court issues claim construction order 20 21 22 Rebuttal expert reports Jan. 3, 2012 210 days after Court issues claim construction order Close of expert discovery Jan. 16, 2012 220 days after Court issues claim construction order Deadline for dispositive motions Jan. 19, 2012 250 days after Court issues claim construction order 23 24 25 26 27 28 24 sf-3034699 Initial Joint Case Management Statement Case No. 11-cv-01846-LHK 1 Event Apple’s Proposal Samsung’s Proposal 2 3 Hearing on dispositive motions Feb. 23, 2012 (if motions filed Jan. 19) - Final pretrial conference February 29, 2012 330 days after Court issues claim construction order Jury trial begins on Apple’s claims March 7, 2012 337 days after Court issues claim construction order 4 5 6 7 8 9 Comparison of Proposed Schedules for Samsung’s Case: 10 Event Apple’s Proposal 11 Samsung’s Proposal 12 Initial Disclosures Due Sept. 7, 2011 Sept. 7, 2011 13 Samsung serves infringement contentions on Samsung’s patents and produces required documents (Patent L.R. 3-1, 3-2) Sept. 7, 2011 Sept. 7, 2011 Apple serves invalidity contentions on Samsung’s patents and produces required documents (Patent L.R. 3-3, 3-4) Nov. 9, 2011 Oct. 24, 2011 Exchange of proposed claim terms for construction on Samsung’s patents (Patent L.R. 4.1(a)) Dec. 2, 2011 Nov. 7, 2011 Parties exchange preliminary claim constructions on Samsung’s patents and identify supporting evidence and experts (Patent L.R. 4-2) Dec. 30, 2011 Dec. 5, 2011 Parties file Joint Claim Construction and Prehearing Statement on Samsung’s patents (Patent L.R. 4-3) Jan. 20, 2012 Dec. 23, 2011 Deadline to Amend Pleadings Jan. 20, 2012 Dec. 23, 2011 Close of claim construction discovery on Samsung’s patents March 2, 2012 Jan. 23, 2012 Samsung’s Opening Claim Construction Brief on Samsung’s patents March 16, 2012 Feb. 6, 2012 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 25 sf-3034699 Initial Joint Case Management Statement Case No. 11-cv-01846-LHK 1 Event Apple’s Proposal 2 Samsung’s Proposal Apple’s Claim Construction Opposition on Samsung’s patents March 30, 2012 Feb. 21, 2012 Samsung’s Claim Construction Reply on Samsung’s patents April 13, 2012 Feb. 28, 2012 5 6 Markman Tutorial on Samsung’s patents [To be supplied by Court] 7 Claim Construction Hearing on Samsung’s patents [To be supplied by March 13, 2012 Court] Local Patent Rule 3-7 Disclosures on Samsung’s patents Jan. 25, 2013 50 days after Court issues claim construction order Fact discovery cut-off Jan. 25, 2013 90 days after Court issues claim construction order Initial expert disclosures/reports Jan. 25, 2013 150 days after Court issues claim construction order Rebuttal expert reports March 8, 2013 210 days after Court issues claim construction order Close of expert discovery April 12, 2013 220 days after Court issues claim construction order Deadline for dispositive motions May 10, 2013 250 days after Court issues claim construction order Final pretrial conference June 14, 2013 330 days after Court issues claim construction order Jury trial begins on Samsung’s claims June 21, 2013 337 days after Court issues claim construction order 3 4 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 Samsung’s Statement: 27 The deadlines established by the Local Patent Rules are appropriate to govern all pre- 28 Markman proceedings in this case. Samsung's proposed schedule then provides adequate time for 26 sf-3034699 Initial Joint Case Management Statement Case No. 11-cv-01846-LHK 1 additional fact discovery, expert discovery, and summary judgment motions before proceeding to 2 trial, timed from the Court's Markman Order. Given the number of patents and complexity of 3 issues in this case, an expedited schedule would not provide time for either party to pursue 4 adequate discovery, or for the Court to consider the parties' anticipated motions for summary 5 judgment and narrow the issues for trial. 6 Samsung addresses Apple's unfounded request to sever its claims in section 15 above. 7 Apple chose to file its claims in a forum with controlling local patent rules, rather than an 8 accelerated forum like the International Trade Commission. Apple has failed to properly place its 9 request before the Court, much less identify any compelling reason to depart from the local patent 10 rules, or why Samsung's claims are not equally entitled to accelerated resolution. Samsung 11 dismissed its separate action and filed its counterclaims to reduce unnecessary waste of resources 12 by the Parties and the Court by trying the claims as merely related cases, as the Court recognized 13 was proper at the June 17, 2011 hearing. Samsung's proposed schedule adheres to the Local 14 Patent Rules and provides the parties adequate time to develop and try their respective claims. Samsung's Proposed Schedule for Apple's and Samsung's Claims 15 Event 16 Samsung’s Proposal 17 Initial Disclosures Due September 7, 2011 18 Party asserting infringement serves infringement contentions and produces required documents (Patent L.R. 3-1, 3-2) September 7, 2011 Party asserting invalidity serves invalidity contentions and produces required documents (Patent L.R. 33, 3-4) October 24, 2011 Parties propose claim terms for construction (Patent L.R. 4-1) November 7, 2011 Parties exchange preliminary claim constructions and identify supporting evidence and experts (Patent L.R. 4-2) December 5, 2011 19 20 21 22 23 24 25 26 27 28 27 sf-3034699 Initial Joint Case Management Statement Case No. 11-cv-01846-LHK 1 2 Event Samsung’s Proposal December 23, 2011 4 Parties file Joint Claim Construction and Prehearing Statement, limited to ten total terms in dispute (Patent L.R. 4-3) 5 Deadline to Amend Pleadings December 23, 2011 6 Close of claim construction discovery January 23, 2012 Opening Claim Construction Brief on Asserted Patents February 6, 2012 Claim Construction Oppositions February 21, 2012 Claim Construction Reply February 28, 2012 Markman Tutorial [To be supplied by Court] 13 Claim Construction Hearing March 13, 2012 14 Local Patent Rule 3-7 Disclosures 50 days after Court issues claim construction order Fact discovery cut-off 90 days after Court issues claim construction order Initial expert disclosures/reports 150 days after Court issues claim construction order Rebuttal expert reports 210 days after Court issues claim construction order Close of expert discovery 220 days after Court issues claim construction order Deadline for dispositive motions4 250 days after Court issues claim 3 7 8 9 10 11 12 15 16 17 18 19 20 21 22 23 24 25 26 27 4 Required by Northern District Standing Order on Case Management Statements. 28 28 sf-3034699 Initial Joint Case Management Statement Case No. 11-cv-01846-LHK 1 Event Samsung’s Proposal 2 3 construction order Final pretrial conference 330 days after Court issues claim construction order Jury trial begins 337 days after Court issues claim construction order 4 5 6 7 8 18. Trial Apple’s Statement: Apple has demanded a jury trial for its claims against Samsung in 9 Apple’s case, and for Apple’s counterclaims in reply in Samsung’s case. 10 For Apple’s Case: Apple believes a 10 day trial is sufficient for its case against Samsung. 11 For Samsung’s Case: Apple believes a 15 day trial is necessary for Samsung’s case 12 against Apple. 13 Samsung’s Statement: 14 Four weeks for a jury trial will provide adequate time for both Apple's and Samsung's 15 claims. Samsung currently believes that parties should equitably split trial time, but reserves the 16 right to seek additional time if it becomes necessary based on the status of the Parties' respective 17 claims at the time of trial. 18 19 19. Disclosure of Non-Party Interested Entities or Persons The parties have filed Certifications of Interested Persons or Entities pursuant to Civil 20 Local Rule 3-16. 21 22 20. Other Matters Patent Local Rule 2-1(a) requires the parties to meet and confer on the following 23 additional topics: 24 a. (1) Proposed modification of the obligations or deadlines set forth in the Patent Local Rules to ensure that they are suitable for the circumstances of the particular case. 25 26 b. (2) The scope and timing of any claim construction discovery including disclosure of and discovery from expert witnesses. 27 28 29 sf-3034699 Initial Joint Case Management Statement Case No. 11-cv-01846-LHK 1 2 The Parties’ proposed schedules address the local patent rules and the timing of claim construction discovery. 3 c. (3) The format of the Claim Construction Hearing, including whether the Court will hear live testimony, the order of presentation, and the estimated length of the hearing. 4 5 Apple’s Statement: 6 For Apple’s Case: Apple proposes one day for the Claim Construction Hearing in its case 7 against Samsung, with one half day per side. Apple does not propose that the parties present live 8 witness testimony during the hearing. 9 For Samsung’s Case: As above. 10 Samsung’s Statement: 11 Pursuant to Local P.R. 2-1(a) Samsung reserve the right to present live testimony at the 12 Claim Construction Hearing. Samsung estimates that the length of the Claim Construction 13 Hearing will be two days. Samsung proposes that the Hearing begin with Apple's presentation on 14 the Apple Patents, Samsung's presentation on the Apple Patents, Samsung's presentation on the 15 Samsung patents, and Apple's presentation on the Samsung patents. 16 d. (4) How the parties intend to educate the Court on the technology at issue. 17 Apple’s Statement: 18 Apple proposes one half day for a technology tutorial in connection with each of the two 19 Markman hearings that Apple has proposed. Time would be split evenly per side. Apple does 20 not propose that the parties present live witness testimony during the tutorial. 21 Samsung’s Statement: 22 Samsung respectfully suggests that the parties and the Court would benefit from a 23 technology tutorial to assist the Court on the technology at issue. Samsung proposes a tutorial of 24 approximately one day, held before the Claim Construction Hearing, in which each side will have 25 three hours of time to make a presentation on the technology. The tutorial presentation may be by 26 counsel or by an expert retained by each side or in whatever format the Court prescribes. 27 Samsung proposes that unless the Court prescribes a format for the presentations at the Claim 28 30 sf-3034699 Initial Joint Case Management Statement Case No. 11-cv-01846-LHK 1 Construction technology tutorial, the Parties shall meet and confer no later than 30 days prior to 2 the Claim Construction Hearing to discuss and finalize how they will make their presentations. 3 Samsung reserves the right to present live witness testimony during the tutorial. 4 e. Service of Documents 5 The parties agree to service by email, with overnight delivery (such as Federal Express) 6 for lengthy exhibits. Service executed in that manner after August 17, 2011 will be considered 7 “actual delivery” under Civil Local Rule 5-5(a)(1) on the day that the documents are emailed and 8 delivered to the courier for overnight delivery. 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 31 sf-3034699 Initial Joint Case Management Statement Case No. 11-cv-01846-LHK 1 Dated: August 19, 2011 2 3 4 5 6 7 8 HAROLD J. MCELHINNY (CA SBN 66781) hmcelhinny@mofo.com MICHAEL A. JACOBS (CA SBN 111664) mjacobs@mofo.com RICHARD S.J. HUNG (CA SBN 197425) rhung@mofo.com MORRISON & FOERSTER LLP 425 Market Street San Francisco, California 94105-2482 Telephone: (415) 268-7000 Facsimile: (415) 268-7522 KENNETH H. BRIDGES (CA SBN 243541) kbridges@bridgesmav.com MICHAEL T. PIEJA (CA SBN 250351) mpieja@bridgesmav.com BRIDGES & MAVRAKAKIS LLP 3000 El Camino Real One Palo Alto Square, 2nd Floor Palo Alto, CA 94306 Telephone: (650) 804-7800 Facsimile: (650) 852-9224 9 10 11 12 13 MARK D. SELWYN (SBN 244180) mark.selwyn@wilmerhale.com WILMER CUTLER PICKERING HALE AND DORR LLP 950 Page Mill Road Palo Alto, California 94304 Telephone: (650) 858-6000 Facsimile: (650) 858-6100 14 15 16 17 18 WILLIAM F. LEE (pro hac vice) william.lee@wilmerhale.com WILMER CUTLER PICKERING HALE AND DORR LLP 60 State Street Boston, MA 02109 Telephone: (617) 526-6000 Facsimile: (617) 526-5000 19 20 21 22 By: 23 24 /s/ Michael A. Jacobs Michael A. Jacobs MORRISON & FOERSTER LLP Attorneys for Plaintiff APPLE INC. 25 26 27 28 32 sf-3034699 Initial Joint Case Management Statement Case No. 11-cv-01846-LHK 1 2 Dated: August 19, 2011 3 4 5 6 QUINN EMANUEL URQUHART & SULLIVAN, LLP Charles K. Verhoeven (Cal. Bar No. 170151) charlesverhoeven@quinnemanuel.com 50 California Street, 22nd Floor San Francisco, California 94111 Telephone: (415) 875-6600 Facsimile: (415) 875-6700 Kevin P.B. Johnson (Cal. Bar No. 177129) kevinjohnson@quinnemanuel.com Victoria F. Maroulis (Cal. Bar No. 202603) victoriamaroulis@quinnemanuel.com 555 Twin Dolphin Drive 5th Floor Redwood Shores, California 94065 Telephone: (650) 801-5000 Facsimile: (650) 801-5100 7 8 9 10 11 Michael T. Zeller (Cal. Bar No. 196417) michaelzeller@quinnemanuel.com 865 S. Figueroa St., 10th Floor Los Angeles, California 90017 Telephone: (213) 443-3000 Facsimile: (213) 443-3100 12 13 14 By: 15 16 17 /s/ Victoria F. Maroulis Charles K. Verhoeven Kevin P.B. Johnson Victoria F. Maroulis Michael T. Zeller Attorneys for SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., and SAMSUNG TELECOMMUNICATIONS AMERICA, LLC 18 19 20 21 22 23 24 25 26 27 28 33 sf-3034699 Initial Joint Case Management Statement Case No. 11-cv-01846-LHK 1 2 3 4 ATTESTATION OF E-FILED SIGNATURES I, Victoria F. Maroulis, am the ECF User whose Id and password are being used to file this Joint Case Management Conference Statement. In compliance with General Order 45, X.B., I hereby attest that Michael A. Jacobs has concurred in this filing. 5 6 Dated: August 19, 2011 7 8 By: /s/Victoria F. Maroulis 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 34 sf-3034699 Initial Joint Case Management Statement Case No. 11-cv-01846-LHK