Here's Apple's Opposition to Samsung's Administrative Motion for Leave to File a Supplemental Declaration of Stephen Gray in Support of Samsung's Opposition to Permanent Injunction Motion, as text:
APPLE’S OPPOSITION TO High crimes indeed. The nerve of Samsung, to try to show the court that it has done work arounds and so should not be banned from the US market.
MOTION FOR LEAVE TO FILE A
OF STEPHEN GRAY IN SUPPORT
OF SAMSUNG’S OPPOSITION TO
I. FACTUAL BACKGROUND
Less than 17 hours before the scheduled hearing on Apple’s motion for a permanent injunction, Samsung seeks leave to file a supplemental expert declaration to respond to a reply declaration filed on November 9, 2012 – almost a month ago. The Court should deny Samsung’s motion for leave not only because the requested relief is untimely and irrelevant, but because it is nothing more than “a vehicle for circumventing the Court’s page limits” and an attempt to cure Samsung’s failure of proof in its prior declaration. (Dkt. No. 2181 at 1.)
I. FACTUAL BACKGROUND
On October 19, 2012, Samsung filed its opposition to Apple's motion for a permanent injunction.
In 35 pages of briefing, Samsung devoted a grand total of 1 sentence and 1 footnote to
the opinions of its expert, Stephen Gray, on an alleged design-around. (Dkt. No. 2054 at 14 n.11.) In violation of the Court’s page limits, that single sentence in Samsung’s brief referenced 45 substantive paragraphs from Mr. Gray’s declaration spanning 10 pages of text. (Dkt. No. 2054-2.) Moreover, rather than including or even describing specific lines of Samsung’s allegedly modified, non-infringing source code and how they differ from the code that was found to infringe at trial, Mr. Gray’s declaration and Samsung’s opposition brief simply made broad assertions that
“Samsung has implemented non-infringing design-arounds.” (Dkt. No. 2054 at 14.)
Judge Grewal agreed that Mr. Gray’s declaration covered a “new subject area” and
granted Apple’s motion to compel his deposition. (Dkt. No. 2105 at 2, 4.) At this deposition,
Apple was provided with the basic information about the alleged code modifications that should
have been in Mr. Gray’s declaration. Apple then was able to respond to these assertions in its
reply brief and through Karan Singh’s November 9, 2012 declaration (Dkt. No. 2127-3).
Despite having the full basis for Dr. Singh’s opinions in his reply declaration – including
specific citations to Samsung’s source code, Samsung then insisted on deposing Dr. Singh.
Samsung did so knowing full well that Dr. Singh was on sabbatical in India. When Judge Grewal
agreed that Dr. Singh’s deposition should proceed, Apple immediately offered early dates for a
video conference deposition from India. After Samsung rejected that offer, Apple then offered
early dates for an in person deposition in Singapore in light of Dr. Singh’s travel commitments.
Only at Samsung’s insistence was the deposition relocated to Hong Kong and deferred until
December 3. At no time prior to last night did Samsung ever request permission from the Court to have Mr. Gray opine on the source code identified by Dr. Singh on November 9, 2012.
SAMSUNG HAS FAILED TO JUSTIFY ANOTHER EXPERT DECLARATION
The Court has consistently emphasized that the briefing page limits for the parties’ post-trial motions would be “strictly enforced.” (Dkt. No. 1945 at 3.) Accordingly, the Court should deny Samsung’s motion for leave to file a supplemental declaration from Mr. Gray – particularly in light of the Court’s stated intention to strike materials “submitted in violation of the Court’s Order.” (Dkt. No. 2181 at 1.) Whatever its contents, one thing is certain: they are not discussed in Samsung’s brief.
FROM STEPHEN GRAY
Moreover, the alleged “design around” for the ’915 patent that is the subject of Mr. Gray’s original and supplemental declarations is irrelevant to whether an injunction should issue. Through Mr. Gray’s declarations, Samsung has improperly attempted to conflate a contempt proceeding with the underlying motion for an injunction, which the Federal Circuit has made clear must maintain precedence. See Int’l Rectifier Corp. v. IXYS Corp., 383 F.3d 1312, 1317-18 (Fed. Cir. 2004), (affirming district court’s denial of infringer’s request to “exclude from the scope of the injunction devices made according to [its] modified design,” since “[i]t would have been improper for the district court to address that issue until or unless it was properly before the court” in later contempt proceeding); see also TiVo Inc. v. EchoStar Corp., 646 F.3d 869, 881-883 (Fed. Cir. 2011) (en banc) (noting that the court’s duty in a contempt proceeding is to “make an inquiry into whether that modification is significant” when “one or more of those elements previously found to infringe has been modified . . .”); MercExchange, L.L.C. v. eBay, Inc., 500 F. Supp. 2d 556, 575 n.16 (E.D. Va. 2007) (noting after remand, “the court places no weight on eBay’s purported design-around because . . . the complexity of the issue requires analysis that cannot be faithfully completed based upon a few pages of written argument and appended declarations, and because the court agrees with MercExchange that it should not be required to prove infringement twice in order to obtain an injunction”).
Because infringement by modified or different Samsung products is properly the subject of
a contempt proceeding after issuance of an injunction, the Court need not decide now whether modified Samsung products are not more than colorably different from the products that the jury already concluded did infringe the ’915 patent. Therefore, no further declaration from Mr. Gray on this issue is necessary for the Court to decide Apple’s motion for a permanent injunction.
But even if Mr. Gray’s opinions were somehow relevant to the permanent injunction motion pending before the Court, Samsung should not be allowed to submit a belated “do over” declaration from Mr. Gray that provides a more detailed discussion of Samsung’s own source code, misleadingly and incompletely cites to Dr. Singh’s deposition testimony, and raises new issues withheld from Mr. Gray’s original declaration to deprive Apple of a fair opportunity to
respond. Samsung made a tactical decision not to cite to its own code even once in its opposition to Apple’s motion or in the ten pages of sweeping and unfounded assertions in Mr. Gray’s original declaration. Samsung should not be permitted to change course and to submit a more detailed argument on the evening before the hearing.
Mr. Gray’s purposely vague and misleading original declaration failed to cite a single line of Samsung’s modified code, instead relying on broad assertions that the modified code employs an unexplained “fundamentally different technique.” (Dkt. No. 2054-2 ¶ 37.) Even a cursory examination of Mr. Gray’s supplemental declaration reveals that the primary substantive
difference between his two declarations is that the more recent one actually cites to Samsung’s
source code. (See generally Dkt. No. 2183-2.)
In view of the lack of detail and absence of citations to modified source code in Mr. Gray’s
original declaration, Dr. Singh identified the specific code omitted from Mr. Gray’s original
declaration and explained its functionality. Dr. Singh further explained that this functionality was
fundamentally unchanged from the infringing source code analyzed at trial. Far from offering a
“brand new theory of infringement for . . . the ’915 patent” (Dkt. No. 2183-1 at 1), Dr. Singh made
clear in his declaration that Samsung’s “new” code still infringed, which was proper rebuttal
limited to exposing the fiction in Mr. Gray’s original declaration that dressing up infringing code
in different clothing somehow rendered it non-infringing.
Despite having had its own source code since its creation, and Dr. Singh’s analysis of that
code for almost a month, Samsung waited until the last minute to request permission to file Mr. Gray’s supplemental declaration regarding that same code. Samsung’s contention that it somehow required Dr. Singh’s deposition to understand his opinions on Samsung’s own source code lacks merit. Indeed, Samsung admits in its motion that Mr. Gray did not require Dr. Singh’s deposition testimony to formulate his opinion, and only “relie[d] on Dr. Singh’s admissions to confirm his opinion.” (Dkt. No. 2183-1 at 1 (emphasis added).)
Finally, the Court should deny Samsung’s motion because the Supplemental Gray Declaration violates the rule of completeness by selectively citing and mischaracterizing Dr. Singh’s testimony. As just one example, in paragraph 8 of his new declaration, Mr. Gray cites in
the same sentence two lines from Dr. Singh’s testimony on one page and another two lines from 19 pages later in the transcript (“401:16-18 and 419:8-9”). (Dkt. No. 2183-2 ¶ 8.) To understand the context of the excerpted testimony, one would need to, at a minimum, review pages 401:1-25, 13 404:24-406:25, 417:20-25, and 419:6-9. (See Declaration of Deok Keun Matthew Ahn in Support 14 of Apple’s Opposition to Samsung’s Administrative Motion, filed herewith, Ex. 1 at 401-419.)
Because Apple will be prejudiced by not being afforded a full and fair opportunity to respond to Mr. Gray’s belated opinions or to even have Dr. Singh’s deposition testimony understood in context, the Court should deny Samsung’s motion.
Because the source code identified in Dr. Singh’s declaration (and notably absent from Mr. Gray’s original declaration) does what it does regardless of Samsung’s attempts to characterize it during Dr. Singh’s deposition, Samsung never needed Dr. Singh’s deposition to explain its functionality. Having elected not to timely explain its own code in any meaningful fashion in Mr. Gray’s original declaration, Samsung should not be allowed to undo its “hide the ball” litigation strategy now.
Dated: December 6, 2012
MORRISON & FOERSTER LLP
By: /s/ Michael A. Jacobs
Michael A. Jacobs
Attorneys for Plaintiff
You can find the Gray declaration and various exhibits mentioned on Samsung's list of attachments (#2189) on page 12 of the filing. And you can find the original declaration itself listed on our Apple v. Samsung Timeline, page 2. It's attached to docket number 2054 [PDF], Samsung's opposition to Apple's motion for judgment as a matter of law. Unfortunately, that Gray declaration was filed manually, so we can't read it to compare it with the new one unless someone stops by the courthouse and picks it up. That doesn't seem critical, but if you are nearby and wish to do so, it's fine. Here's how Samsung's footnote reads that Apple highlights as being inadequate:
Patents on gestures, on tapping a screen twice.
Here's what Samsung has to say in its request to file the supplemental declaration:
SUPPLEMENTAL DECLARATION OF
STEPHEN GRAY IN SUPPORT OF
SAMSUNG’S OPPOSITION TO APPLE’S
MOTION FOR A PERMANENT
INJUNCTION AND DAMAGES
PUBLIC REDACTED VERSION
DECLARATION OF STEPHEN GRAY
I, Stephen Gray, declare:
1. to the same.
I have personal knowledge of the facts set forth herein, and am competent to testify to the same.
2. I submit this supplemental declaration in support of Samsung's Opposition to Apple’s Motion for a Permanent Injunction relating to U.S. Patent 7,844,915 (the ’915 patent). Specifically, I submit this supplemental declaration to respond to new infringement opinions submitted by Dr. Karan Singh in his December 3, 2012 deposition and his declaration supporting Apple’s reply in support of its motion for a permanent injunction dated November 9, 2012. If asked at hearings or trial, I am prepared to testify regarding the matters I discuss in this declaration. I incorporate by reference all opinions stated in my declaration dated October 18, 2012.
3. I reserve the right to supplement or amend this declaration based on any new information that is relevant to my opinions.
4. At trial, Dr. Singh testified that a "quintessential" and "very important" test occurs in the line of source code
"ev.getPointerCount() > 1"
found in Android's WebView code. (Tr. at 1824:10-19.) Dr. Singh testified that this code receives a motion event and distinguishes between a single input point and two or more input points. (Tr. at 1824:20-1825:3.) Dr. Singh further testified that if a single input point is detected, the
"ev.getPointerCount() > 1" test invokes a scroll operation, and if two or more input points are detected, the
"ev.getPointerCount() > 1" test invokes a scale operation. (Tr. at 1825:4-11.)
5. As outlined in my declaration dated October 18, 2012, I reviewed new source code for the Galaxy S II (T-Mobile) product and concluded that the new code does not infringe the ’915 patent. Among the reasons why it does not infringe is that it no longer contains the "quintessential" test identified by Dr. Singh as infringing. Indeed, the "quintessential"
ev.getPointerCount() > 1 test that Dr. Singh identified as infringing was removed from that code
and replaced by a fundamentally different technique for processing scrolling and scaling operations.
II. DR. SINGH’S NEW INFRINGEMENT THEORY
6. In Dr. Singh’s November 9, 2012 declaration, he advances a new theory of infringement for Samsung’s new algorithm for scrolling and scaling. Dr. Singh now claims that [redacted] infringes the '915 patent. I disagree with Dr.
7. As an initial matter, Dr. Singh concedes that his new theory of infringement is no longer based on the
"ev.getPointerCount" test, which he referred to at trial as the "quintessential" test for infringement of the ‘915 patent:
Q. You know what I'm talking about, Dr. Singh.
(Singh Dep. at 399:23-400:12 (objection omitted).)1
A. The particular lines, ev.getPointerCount, even ev.getPointerCount greater than 1, show up in a number of different places in both the old code as well as in the new Samsung modified source code. So I think, I think if your question is in its current form, I would say yes, there are multiple places where I see ev.getPointerCount greater than 1.
Q. And do you rely on any of those for your new opinion of infringement?
A. Those particular lines? No.
8. Dr. Singh’s new infringement theory is focused on [redacted] Dr. Singh explained during his deposition that [redacted]
(Singh Dep. at 403:20-21.) Dr. Singh claims that [redacted] infringes the ’915 patent because, [redacted]
(Id. at 424:16-17.) Dr. Singh also claims [redacted]
[redacted] (Id. at 401:16-18 and 419:8-9.) [redacted]
CODE DOES NOT INFRINGE THE ‘915 PATENT
9. It is my opinion that Samsung’s new code does not infringe the ‘915 patent literally or under the doctrine of equivalents.
10. First, the "quintessential test" identified by Dr. Singh
("ev.getPointerCount(_) > 1") was removed from the code. There are no lines of code similar to this one anywhere in the new code that relate to scrolling or scaling.
11. Every time there is a touch event (someone or something touches the screen), the code runs the modified "WebviewScaleGestureDetector" code to determine whether or not it should scale. However, nothing in WebviewScaleGestureDetector looks to the number of inputs on the touch screen to determine whether to perform a scale operation. Instead, [redacted]
13. The new code does not consider the number of input points to determine whether to perform a scale operation. Instead, it does two things, entirely separately from each other. [redacted]
14. The code for scrolling is called "handleTouchEventCommon", and is independent from the WebviewScaleGestureDetector code. handleTouchEventCommon is executed every time there is a touch event, and is not dependent on the number of touches involved in the touch event. As Dr. Singh admits, the handleTouchEventCommon code executes, possibly invoking a scroll operation, regardless of whether a scale gesture is detected in WebviewScaleGestureDetector. (Singh Dep. at 430:2-13.)
15. Below I explain in detail several reasons why Samsung's code does not infringe the
’915 patent. In the future, I may provide additional reasons why Samsung's new code does not infringe as I further analyze Dr. Singh's deposition testimony from December 3, 2012 and his new infringement theory.
A. The [redacted] Code Does Not Distinguish Between "One Input Point . . . And Two
16. The new code does not infringe because it does not "distinguish between one input point . . . and two or more input points" to determine whether to invoke a scroll or scale operation as the '915 Patent requires. Samsung's new code does not look to the number of input points to determine whether to scroll or scale. Samsung’s new code [redacted]
There is no decision whether to scroll or scale based on the number of input points.
Or More Input Points"
17. I understand that for a product to literally infringe, the device must practice each limitation of the claim exactly. It is my opinion that claim element 8[c] – the determining limitation – is not literally met, because the determination is based on the [redacted] and not the number of input points. Dr. Singh confirmed this during his deposition when he was not able to identify any source code that made a determination based on input points. (Singh Dep. at 421:13- 422:13.) Although Dr. Singh claims that the new code still makes the same decision as the old
code, that is not correct. In fact, if there are two input points close together, [redacted]
[redacted], which would not result in a scaling operation despite two input
points on the touchscreen. Dr. Singh conceded that two input points very close together could result in [redacted]. (Singh Dep. at 408:19-409:8.)
B. The [redacted] Test Does Not "Invoke A Scroll . . . Operation" Or "Issu[e] At
18. The '915 patent requires "determining whether the event object invokes a scroll" operation by "distinguishing between a single input point applied to the touch-sensitive display that is interpreted as the scroll operation." The [redacted] code does not do this. The '915 patent also requires "issuing at least one scroll . . . call based on invoking the scroll . . . operation." The [redacted] code does not do this either.
Least One Scroll . . . Call Based On Invoking The Scroll . . . Operation"
Dr. Singh claims that when [redacted], the scroll code is invoked. This is
[redacted]. (Singh Dep. at 427:22-430:9.) After that, the next code in line executes, which happens to be the scroll code (handleTouchEventCommon). (Id.) As Dr. Singh admitted during his deposition, the scrolling code executes regardless of the number of input points applied to the touch sensitive display. (Id. at 430:10-13.) The scroll code is completely independent of any other code, and will
execute upon any touch event. It is not invoked or caused by any "determining" step.
20. If Dr. Singh’s opinion is based simply on the fact that the handleTouchEventCommon code happens to be executed after the WebviewScaleGestureDectector code, I disagree. The order of the steps is irrelevant because the two sets of code are unrelated. As I explained during my deposition, before learning of Dr. Singh’s new infringement theory, "The [redacted] is not related to the execution or to the invocation of the method handle touch event
common." (Gray Dep. 78:11-20.)
21. For these reasons, the new code does not infringe because the [redacted] code does not
determine whether the event object invokes a scroll operation nor does it invoke or cause a scroll operation to occur.
C. Two Finger Input Can Result In A Pure Scroll Operation
22. When two fingers applied to the touchscreen are close together, [redacted] and a scale operation will not occur. Therefore, claim 8 of the '915 patent is not infringed because it requires two input points "applied to the touch-sensitive display" to invoke a scale operation.
23. Dr. Singh confirmed during his deposition that two fingers applied to the touchscreen can result in a scroll instead of a scale. During his deposition, he testified as follows:
Q. Son in other words, if two fingers are very close together, touching the touchscreen, then the device may interpret that as a single input point, which [redacted]; is that correct? (Singh Dep. at 408:19-409:8 (objections omitted).)
A. Same answer, really. In this hypothetical scenario, were somebody able to have their two fingers down and were the device to interpret it as a single input touch, if it were indeed interpreted as a single input touch, [redacted]
24. Based on this admission, it is clear to me that Dr. Singh's new infringement theory is based on an incorrect interpretation of the claims. Although he admitted that [redacted], he testified that [redacted]" However, this interpretation disregards the claim language which states: "determining whether the event object invokes a scroll or gesture operation by distinguishing between a single input point applied to the touch-sensitive display that is interpreted as the scroll operation and two or more input points applied to the touch-sensitive display that are interpreted as the gesture operation." Claim 8 therefore requires making a determination based on the number of touches actually "applied to the touch-sensitive display", as opposed to how the touches may be interpreted by electronics in the device. Indeed, the claims refer to input points applied to the touch-sensitive display," not input points "interpreted by electronics or software within the device." Therefore, Dr. Singh's interpretation is incorrect and contrary to the plain claim language.
D. The New Code Performs Pure Two Finger Scrolling, Which Dr. Singh Admits
25. During his deposition, Dr. Singh testified that a device that performs pure two finger scrolling does not infringe the ‘915 patent:
Does Not Infringe
Q. Dr. Singh, in your opinion, is the determining limitation of the ’915 patent satisfied by a device that performs pure two finger scrolling?
(Singh Dep. at 457:7-458:12.)
A. So the scenario that you’re presenting is a device where you have two input, distinct input touches and you’re performing pure scrolling, a pure translation? I would say barring things such as filtering for noise and inadvertency in touches and so on, if that was specifically what was being performed all the time rather than not just coincidentally where a scale value just happened to be 1 at a particular incident in time, that would not meet the claim in this hypothetical scenario of yours.
26. Samsung’s new algorithm performs pure multi-finger scrolling operations – that is, the use of two or more fingers to scroll without scaling at the same time. [redacted] Therefore, the device is not making a determination between one touch and two or more touches to scroll or scale respectively. The code performs pure multi-finger scrolling in precisely the way Dr. Singh says does not infringe. The code is not filtering for noise or inadvertent touches. The code is instead verifying the user wants to scale [redacted] . Despite Dr. Singh’s admission that confirms this code does not infringe, Dr. Singh did not address this portion of code in his declaration.
E. Samsung’s New Algorithm Does Not Infringe Under The Doctrine of
27. It is also my opinion that Samsung’s new algorithm does not infringe under the doctrine of equivalents. I have reviewed the prosecution history in this case, and it is my opinion that the Apple disclaimed all equivalents for the "determining" element in claim 8.
28. The "determining" element of claim 8 originally read as follows: "determining whether the event object invokes a scroll or gesture operation."
29. During prosecution, the Examiner rejected the ’915 claims over a combination of prior art references, Lii (US 7,576,732) and Hollemans (2007/025821).
30. On June 9, 2010, the Apple's representative had an interview with the Examiner. The only record of this Interview stated that Apple's representative argued that the "prior art of record . . . fail to teach or suggest creating an event object that determines whether a user input applied to a touchscreen invokes a scroll operation or a gesture operation by simply distinguishing between the scroll operation and the gesture operation without having to select an object or icon to define the operation." (Joint Trial Ex. No. 1048.462.)
31. I understand that Dr. Singh contends that this argument is the reason why the claim limitation was amended. (Singh Decl. ¶ 36.) I disagree. The Examiner rejected Apple’s arguments made at the June 9, 2010 interview, which is evidenced by the fact that a check box on the interview summary indicates that no agreement was reached. In addition, there is no indication in the prosecution history that any amendments to the claims had been proposed or discussed during the June 9, 2010 interview.
32. The following month, on July 20, 2010, the Examiner issued a notice of allowance. In this notice of allowance, the Examiner also made an Examiner’s amendment that added the following language to the determining step: "determining whether the event object invokes a scroll or gesture operation by distinguishing between a single input point applied to the touch- sensitive display that is interpreted as the scroll operation and two or more input points applied to the touch-sensitive display that are interpreted as the gesture operation." (Joint Trial Ex. No. 1048.521.) This is the first time this amendment appears in the record.
33. The Examiner also indicated that authorization for this amendment was given in a telephone interview with Mr. Jeremy Schweigert (Apple’s representative) on July 7, 2010. (Id.)
34. The July 7, 2010 interview was different from the June 9, 2010 interview cited by Dr. Singh in paragraph 36 of his report. There is no record of what was discussed at the July 7,
2010 interview. There is also no record regarding why the Examiner rejected the arguments made by the Applicant in the July 7, 2010 interview. Therefore, the record contains no evidence as to why the amendment was made.
35. I understand that when a narrowing amendment is made for a substantial reason related to patentability, there is a presumption that the patentee surrendered all equivalents.
36. I also understand that the patentee bears the burden to explain the reason for the amendment, and when the Court cannot determine the reason for an amendment, the Court should presume the patentee surrendered all subject matter between the broader and narrower language.
37. It is my opinion based on the prosecution history that the narrowing amendment was made to overcome prior art. This is further evidenced by the fact that in the Notice of Allowance, the Examiner indicated that the claims were patentable because the prior art fails to teach the combination of "creating an event object in response to a user input; determining whether the event object invokes a scroll operation or a gesture operation; distinguishing between a single input point and a two or more input points applied to a touch-sensitive display, wherein a single input point is interpreted as a scroll operation and two or more input points are interpreted as a gesture operation." (emphasis added.) It is also my opinion that the reason for the amendment cannot be determined and therefore Apple cannot apply the doctrine of equivalents.
38. I also understand Apple can rebut the presumption that it surrendered the equivalent in question by showing that the rationale underlying the amendment bore no more than a tangential relation to the equivalent in question. As explained above, Apple cannot show the rationale behind the amendment at all, let alone show that it bore no more than a tangential relation to the equivalent in question. All that is clear from the record is that the claims were rejected based on prior art, the Examiner was authorized to add the amendment for some unknown reason, and the claims were patentable over the prior art in part because of the amendment.
39. Even if Apple could apply the doctrine of equivalents, it is my opinion that there are substantial differences between the claim limitation in question and Samsung's new code.
Samsung's new code does not perform the same function in the same way to produce the same result as the claims. First, it does not perform the same function. For example, the claimed function is to distinguish between the number of input points to either scroll or scale. The Samsung code does not function this way. [redacted]
40. Next, Samsung's new algorithm does not perform the same way. For example, claim 8 requires a determination of whether to scroll or scale based on the number of input points. But, as explained above, Samsung's code does not do this. [redacted]s [redacted]
41. Finally, the results are different. For example, the claim requires a scroll for one touch, and a scale for two or more touches. [redacted], two touches close together can result in a scroll operation.
42. I declare under penalty of perjury under the laws of the United States that the foregoing is true and correct. Executed on December 5, 2012, in Solana Beach.
Excerpts from the December 3, 2012 Singh Deposition are attached as Exhibit A to this declaration.