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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?

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.

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