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Hearing Today in CA on Samsung's Request for Discovery for Use in Japan ~pj Updated 2Xs
Tuesday, January 22 2013 @ 03:01 PM EST

There was a hearing scheduled for today in Judge Lucy Koh's courtroom in San Jose, California on Samsung's application for an order for permission to obtain discovery from Apple for use in Japan, where Samsung is appealing a preliminary injunction. The hearing was at 10 this morning, California time, and I'll let you know when the court decides whether to grant it.

I have a question for you. Do any of you have proof of having bought or received as a gift an iPhone prior to July of 2007? Because that's one of the things Samsung is looking for -- "all documents that evidence, reflect or refer to the sale, transfer, lease, or offer for sale of any iPhone" prior to June 29, 2007 -- and it is saying if that can be found, it could impact litigation in more than just the ones in Japan.

[ Update: If you go to Internet Archive, and search for Apple's home page, guess what you find? Ads for the iPhone. For example, if you go to April 29, 2007, there it is. If you mouse over the image, guess what the address is?

http://images.apple.com/home/2007/images/promoiphone20070130.jpg

That looks like January, so let's see: Yup. Introducing iPhone. However, if you click on it, you'll find this notice:

This device has not been authorized as required by the rules of the Federal Communications Commission. This device is not, and may not be, offered for sale or lease, or sold or leased, until authorization is obtained.
So the key would seem to be when did the FCC authorize its sale? I don't know, but the notice is gone on Wayback as of May 19, 2007. It was appearing in articles as early as January, with June of 2007 set as the day it would first be available in the US. - End Update.]

Samsung says it needs to ask for the items it seeks in California because the Japanese Code of Civil Procedure "does not have a clause to order a party outside of Japan to present a document or an object for inspection." Here's a copy of the relevant paragraph in Japan's civil code, translated, and attached to the CV of one of Samsung's attorneys in Japan.

Apple's position [PDF] is that Samsung's application should be denied:

Apple urges this Court, exercising its discretion as directed by the United States Supreme Court, to find that further discovery on these patent claims is no longer warranted, and that Samsung, if it disagrees, should avail itself of the discovery mechanisms available to it in the courts where the Japanese Actions are pending.
And it attaches a longer section of the code (beginning on page 8 of the PDF), which it argues shows that Samsung doesn't need to get the California court involved.

And even if Samsung were to obtain these materials from the court, Apple argues [PDF] that Samsung "should ... not be able to rely on, or discover information for use in, other 'Apple/Samsung Litigation' pending around the globe." When I read that, I realized this could be important. At least, Apple's position leads me to believe Apple thinks this could be important.

The parties have been fighting hard over the issue since November of 2012, when Samsung filed its application [PDF] and supporting declaration of Hideaki Kobayashi [PDF] and informed the court in California about the issue.

It has to do with the Japanese equivalent patent to Apple's '381 patent, the notorious rubber band patent, Japanese Patent No. 4,743,919, called JP 919, the counterpart to US Patent No. 7,469,381. And in a Declaration [PDF] signed on December 28, 2012, a Japanese attorney for Samsung, Seiji Ohno, writes to the court, explaining what it is looking for and why:

Samsung filed a Brief dated November 16, 2012 with the Tokyo District Court in which Claims 35, 36, 61, 74 and 75 of JP 919 ("Dependent Claims of JP 919") should be invalidated due to lack of novelty by public uses of the first generation iPhone. More specifically the Dependent Claims of JP 919 were not disclosed in the above (1), (2), (3) and (4) Provisional Patent Applications and disclosed for the first time in the above (5) Provisional Patent Application. Thus, the uses of the first generation iPhone before June 28, 2007 will destroy novelty of the Dependent Claims which were only entitled to allege June 28, 2007, filing date of the above (5) Provisional Patent Application, as their priority date.
That is what the hearing is about. Meanwhile, does anyone have any of the following items Samsung is asking to get from Apple, by any chance?
  • All documents that evidence, reflect or refer to the sale, transfer, lease, or offer for sale of any iPhone to any person or entity prior to June 29, 2007;
  • Physical exemplars of any iPhone that was made available for sale, transfer, lease, or offer for sale to any person or entity prior to June 29, 2007;
  • A physical exemplar of the iPhone that was used in the presentation by Steve Jobs at MacWorld on January 9, 2007; and
  • A physical exemplar of the iPhone that was used in the video "iPhone guided tour" posted to Apple's website on June 22, 2007.

Here's some live reporting from Macworld 2007 that January, to refresh your memory, and here's the video from Apple, thanks to Internet Archive. Samsung says it needs these items to aid it in defending itself from Apple's claims of patent infringement not only in Japan, but in similar patent infringement actions between these two companies in 6 countries, including the US. Of course, the parties can't agree on anything at all. Here's a sample [PDF] of the lawyers arguing in emails about what the rules really are in Japan, and then Apple's Opposition [PDF], then its Motion [PDF] for leave to file a sur-reply, and Samsung's Opposition [PDF] to Apple's motion. The parties don't agree even on what the rules are in Japan. To counter the Ohno Declaration, for example, Apple filed its own dueling declaration by Japanese attorney Yukio Nagasawa [PDF] stating that Samsung can get the materials it seeks from an order by the Japanese court, so who knows what the outcome here will be. I certainly know nothing about Japanese law.

I only know that they wouldn't be fighting this hard over something that didn't matter. Apple in particular wouldn't pay for this extensive motion practice, I don't believe, if there was nothing to fear from this discovery request. I mean, why not hand over a response saying that there is no such evidence of sales prior to June of 2007 if there weren't any?

The Apple '381 patent is one of the patents that has been tentatively rejected in a USPTO reexamination, due to prior art. However, the jury at trial found it [PDF] valid and infringed, and Judge Koh still has to rule on what to do about royalties and whether the jury got it right. Samsung would, no doubt, like to kill this patent off once and for all, with finality. At a minimum, it wanted the judge to know what is going on in Japan.

Update 2: I'm told it should be possible to find the registration/approval documents for the IPhone in the FCC database, if you start with having the FCC approval number for one of the earlier units and then see if the search function on some of their systems shows anything relevant. I don't own an iPhone, but perhaps one of you out there does.


  


Hearing Today in CA on Samsung's Request for Discovery for Use in Japan ~pj Updated 2Xs | 138 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
Corrections Here
Authored by: SilverWave on Tuesday, January 22 2013 @ 03:27 PM EST
:-)

---
RMS: The 4 Freedoms
0 run the program for any purpose
1 study the source code and change it
2 make copies and distribute them
3 publish modified versions

[ Reply to This | # ]

Off Topic Thread Here
Authored by: SilverWave on Tuesday, January 22 2013 @ 03:28 PM EST
;-)

---
RMS: The 4 Freedoms
0 run the program for any purpose
1 study the source code and change it
2 make copies and distribute them
3 publish modified versions

[ Reply to This | # ]

News Pick Thread Here.
Authored by: SilverWave on Tuesday, January 22 2013 @ 03:28 PM EST
:-D

---
RMS: The 4 Freedoms
0 run the program for any purpose
1 study the source code and change it
2 make copies and distribute them
3 publish modified versions

[ Reply to This | # ]

Comes Thread Here.
Authored by: SilverWave on Tuesday, January 22 2013 @ 03:29 PM EST
:-|

---
RMS: The 4 Freedoms
0 run the program for any purpose
1 study the source code and change it
2 make copies and distribute them
3 publish modified versions

[ Reply to This | # ]

Wayback Machine
Authored by: Anonymous on Tuesday, January 22 2013 @ 05:20 PM EST

I'm no expert, but pointing the wayback machine at Apple's website for june '07
sure looks like an offer for sale to me.

[ Reply to This | # ]

It appears that Apple anticipated these patent issues in 2007
Authored by: bugstomper on Tuesday, January 22 2013 @ 07:45 PM EST
Looking for articles about the iPhone sales in 2007 I found this for example:

There will be no iPhone presales

Website The Boy Genius Report claims to have obtained an internal AT&T document which states,

"Sales for the iPhone will be on a first come, first served basis. No wait list of names will be taken and NO pre-selling is allowed."

Apple officially opened sales of the iPhone on Friday, June 29, 2007. Samsung is looking for evidence that they sold the iPhone before they filed the Japanese patent application on June 28, 2007. It seems clear that Apple knew what they were doing when they filed the patent applications on the iPhone, leaving it for the last possible moment before the action that would invalidate filing of patents practiced by the iPhone.

So why would Apple vigorously oppose the discovery instead of simply saying "we didn't sell it before June 29"? Why wouldn't they? Even if they were aware in 2007 that they better not do anything that could legally disclose patented features before filing the applications, somebody might have slipped up. Samsung appears to be trying to prove that something about Steve Jobs' early demo of the iPhone could be considered early disclosure. I'm sure Apple's lawyers went over the presentation with an eye to making sure that nothing could be considered prior disclosure of potential patents. Samsung's lawyers may want to present a different opinion. Why should Apple make it any easier for Samsung to make that case if they can make it more difficult by not having to provide discovery?

Samsung may not have any reason to believe that any iPhone was sold before the official launch date. Certainly there is evidence that Apple tried to make the iPhone not available before then and timed their patent applications accordingly. Samsung may have noticed that Apple relied on the close timing, and Samsung may be taking the tack that it can't hurt to try to force Apple to admit it if they actually did slip up and sell an iPhone a day or more early.

[ Reply to This | # ]

Hearing Today in CA on Samsung's Request for Discovery for Use in Japan ~pj Updated
Authored by: Anonymous on Tuesday, January 22 2013 @ 08:15 PM EST
Official start of sales was June 29th - which was memorable because the iPhone sales for the second quarter 2007, the first quarter that is was sold, were just three days of sales and accordingly not that big a number.

What Samsung is asking for is any sales that happened before the official start of sales. I'd be very curious what the reason for this question is. Is it something with that date, or is it something about any sales before the official sales start?

[ Reply to This | # ]

Did they just give IPhones away free? At release
Authored by: Anonymous on Tuesday, January 22 2013 @ 08:32 PM EST
If you view <a
href="http://www.engadget.com/2007/06/26/first-apple-iphone-reviews-trickle
-out/">http://www.engadget.com/2007/06/26/first-apple-iphone-reviews-tri
ckle-out/<a> you will see six different people who got pre-release IPhones
in time to write a review for it by June 26 2007. Did they just give these
phones away free? Because otherwise they must have sold the phones which as we
can see would be an issue.

[ Reply to This | # ]

FCC database - IPhone
Authored by: YurtGuppy on Tuesday, January 22 2013 @ 08:41 PM EST

Approved 05/17/2007

https://apps.fcc.gov/oetcf/eas/reports/GenericSearch.cfm

BCG
A1203

---
a small fish in an even smaller pond

[ Reply to This | # ]

Hearing Today in CA on Samsung's Request for Discovery for Use in Japan ~pj Updated
Authored by: Anonymous on Tuesday, January 22 2013 @ 10:49 PM EST
That first image link seems to have gone to the big 404 in the sky.

Tufty

[ Reply to This | # ]

Macworld 2007 coverage
Authored by: Anonymous on Wednesday, January 23 2013 @ 12:29 AM EST
For some additional coverage, here's TWiT.tv's archive of Macworld 2007 where the iPhone was officially announced. And also the Macbreak Weekly shows starting around that time. Rumors of iPhone were present in 2006, so feel free to scan back to earlier shows as well. --DonW

[ Reply to This | # ]

Reading too much
Authored by: Anonymous on Wednesday, January 23 2013 @ 10:56 AM EST
Could this be important? Perhaps.

However, perhaps not. One thing to remember when reading
these types of motions and oppositions is that parties who
are relying on procedure are doing so because the procedure
is (often) on their side.

The United States has some of the most liberal discovery
rules in the world (I would say the most, but I'm not
familiar with every legal system). But courts don't often
grant discovery after the verdict.

In essence, Samsung is asking the court to allow discovery
for issues that Samsung could have raised during the
discovery in this trial,* but for a related matter in a
different court after the verdict. It doesn't make them
wrong to ask, but it's hard to do.

Discovery is time-consuming and expensive. Parties do not
like to do it. *Any* party (not just Apple) would oppose
this, regardless of the underlying facts. And especially
where they have a great procedural argument.

So maybe Samsung suspects something. Maybe Samsung's on a
fishing expedition. Maybe Apple's hiding something. Maybe
they're just trying to make sure that there's no more time-
consuming discovery.

Can't tell from the pleadings.

*Perhaps. I'm not sure on the facts on this one. It seems
like they should have known to ask for this, but maybe not.

[ Reply to This | # ]

  • thanks - Authored by: webster on Wednesday, January 23 2013 @ 11:08 AM EST
  • Or not - Authored by: Anonymous on Wednesday, January 23 2013 @ 12:13 PM EST
    • Or not - Authored by: Anonymous on Wednesday, January 23 2013 @ 12:39 PM EST
      • No - Authored by: Anonymous on Wednesday, January 23 2013 @ 02:23 PM EST
        • Nope - Authored by: Anonymous on Thursday, January 24 2013 @ 10:31 AM EST
Hearing Today in CA on Samsung's Request for Discovery for Use in Japan ~pj Updated 2Xs
Authored by: mupi on Wednesday, January 23 2013 @ 11:07 AM EST
I'm told it should be possible to find the registration/approval documents for the IPhone in the FCC database, if you start with having the FCC approval number for one of the earlier units and then see if the search function on some of their systems shows anything relevant. I don't own an iPhone, but perhaps one of you out there does.
It is probably possible to look at a current product, and determine the FCC ID or FRN of the registrant, then go back into the search function using the registrant's ID and see everything they have registered. Most of the FCC databases can be used this way, though I have no personal experience with the particular database.

Of course, it's always possible that a company that wishes to obfuscate may have multiple registrations. But Apple would never behave that way, right?</snark>

[ Reply to This | # ]

Steve Jobs used the iphone as did reporters before June 28th, 2007
Authored by: Anonymous on Thursday, January 24 2013 @ 11:58 AM EST
Videos showing Jobs using i-phone

http://www.youtube.com/watch?v=6uW-E496FXg
Shows Jobs using an i-phone at a June 20, 2007
conference to demonstrate it. (I din't know if this
qualifies as public use, but the use is clear).

http://articles.businessinsider.com/2012-01-
22/tech/30652107_1_foxconn-iphones-apple-executives
Business insider storing (January 22, 2012)
detailing that Jobs was using his prototype IPhone for at
least a few weeks.

http://www.tuaw.com/2012/01/09/january-9-2007-iphone-
announced-at-macworld-expo/
Discusses that January 9, 2007 the iPhone was shown
at the CES expo (I think this links back to the same video.
Public use is shown (for demo purposes).
http://www.engadget.com/2007/01/09/live-from-macworld-2007-
steve-jobs-keynote/


http://bits.blogs.nytimes.com/2007/01/09/some-hands-on-time-
with-the-iphone/
I phone shown at expo on January 9, 2007. Article
discusses how the writer of the article met with Steve Jobs
and was allowed to "play with the phone for about an hour"

http://www.businessinsider.com/how-steve-jobs-almost-leaked-
the-original-iphones-existence-2012-7
Discusses Jobs using the iphone before June 27the and having
to hide it from a FedEx delivery person.

http://www.tuaw.com/2007/03/07/jobs-using-iphone-already/
(NOTE: if Jobs was using an iphone, there will be phone
company records. He had to be connected to a network to use
it).

http://www.macrumors.com/2009/03/09/prototype-iphone-
spotted-on-ebay/

[ Reply to This | # ]

Hearing Today in CA on Samsung's Request for Discovery for Use in Japan ~pj Updated 2Xs
Authored by: Anonymous on Thursday, January 24 2013 @ 01:24 PM EST
Mostly I've been on Samsung's "side" but this bit here seems a crazy.
What if Apple sold a phone a few days early, or even weeks? How is it fair that
causes their patents to be invalid? Regardless of any other merits (or lack
thereof) their devices have, I don't think a few weeks before filing the patent
paperwork for a sophisticated consumer device should be sufficient grounds to
discount their patents. It's not like if someone bought a couple preorders,
then suddenly Apple has somehow created a less valuable device.

Their patents should be invalid because they're obvious, and some describe
stylistic nonsense that should be the realm of artists rather than engineers.
They shouldn't be invalid because someone broke their promise and presold some
iPhones.

Maybe I don't understand it well enough. I admit there's a lot going on here
over my head. It feels like they're really reaching on this one, to me, though.

[ Reply to This | # ]

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