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Joint Case Management Statement Filed in Apple v. Samsung ~pj
Tuesday, April 23 2013 @ 01:30 PM EDT

The judge in the first Apple v. Samsung patent case in California, the Hon. Lucy Koh, asked the parties to file a joint case management statement, just in case she decides to go forward with an immediate second jury on the issue of damages on the 14 products where the first jury got the math wrong. And they have now done so [PDF]. There will be a hearing on all this on April 29. Of course, they disagree. Because they don't agree on how to go forward, they each set out their positions, once again. The short version is that Apple wants to hurry up and have the trial immediately and Samsung wants to hear from the appeals court before the new damages trial goes forward, so as to ensure the same mistakes aren't repeated.

Apple wants an immediate trial, a 3-day trial in a few months, saying it can be quickly done with mostly prior testimony, except to substitute a damages expert to replace Terry Musika, who has died, and conforming evidence to match the judge's order, thus obviating any need for extensive disputes, discovery, or extensive motions, acknowledging that there will be some limited motions on the smaller issues required to match the judge's requirements. But mostly, it's done. It's a simple math adjustment. Why string it out? Samsung's proposals would mean no retrial for at least 41 weeks, Apple alleges, with extensive discovery and motion practice, and they did that enough already in the first trial.

Samsung, though, says that would it be unfair to rush forward the way Apple proposes, and in any case there will be disputes and motions, pointing out Apple says it's going to introduce a new damages expert testimony but won't reveal who the expert or experts will be. Apple is proposing that Samsung has to stick with its prior testimony, while Apple gets to "change the methods and conclusions that its experts offered before," with Apple arguing it gets new discovery but Samsung doesn't. "Moreover, the last jury never decided whether these post-June 2012 sales were infringing," Samsung points out, "so the new jury will have to decide not only damages but, at least as to these sales—some of which were subject to design-arounds—infringement." And Apple says it wants supplemental damages on products, including the Tracfone Galaxy SII, which was not before the first jury at all or accused earlier of infringement. At the very least, there has to be discovery and motion practice on that, since the jury will be asked to determine liability first. So any retrial already has to be about some liabililty. Samsung instead asks for partial final judgment on the issues not requiring retrial and a stay on the rest until they hear from the appeals court on issues that will greatly influence how the second trial should proceed.

It can't justly be only about damages, Samsung argues. Liability has to be included, too, because infringement and liability overlap. The jury goofed on damages, and in some cases no one can figure out their numbers, but Samsung believes they failed in other ways as well. And although Samsung doesn't repeat it here in so many words, it believes the judge made errors of law in handling the first trial, and without adjustments from the appeals court, going forward immediately with the same jury instructions -- which is what Apple asks for -- will result in the same errors in the second retrial.

That will string the whole appeals process out, and it raises the real possibility of a third retrial. Furthermore, aside from any judge's errors, there are juicy reexaminations of two of Apple's patent claims at issue ongoing at the USPTO favoring Samsung so far. If the result of those reexams ends up invalidating Apple's patent claims, no retrial is even needed, so it could all be for nothing. Why not wait and see? They both argue efficiency, in their way, Apple short term and Samsung long term.

Apple says Samsung's arguments about the new expert are a red herring. If the judge at the hearing decides to accept Apple's schedule, it will reveal the expert on May 13:

Samsung’s professed need for earlier disclosure to ensure approval of the new expert to view materials under the Protective Order is a red herring. Unlike Mr. Lucente and Mr. Sherman, the new damages expert will not be shown protected technology, and Apple has informed Samsung that it will likely use an expert from Mr. Musika’s firm or the firm of one of its experts in the 630 case.
It will serve Samsung with a supplemental damages report with the expert's background and qualifications, revise the prior damages calculations and identify any changes to Mr. Musika's methods and calculations, once it gets Samsung's updated financial information.

That's all well and good, but it doesn't address all of Samsung's concerns. It is saying Apple is stacking the deck and asking the judge not to notice, with the result that Apple gets to change its positions and Samsung can't. And in footnote 10, Samsung accuses Apple of trying to worm its way around an earlier court ruling, and it proposes the following:

Trial. The issues to be tried are also broader than Apple suggests. Apple states that it seeks post-June 30, 2012 damages (Dkt. 2271 at 3:3-5) as to four accused products. That puts Samsung’s design-arounds at issue. For example, Samsung implemented a design-around on the Droid Charge (one of the four products) to avoid the D’305 patent. Dkt. 2055 at 6:6-14; see Dkt. 2075 at 2:11-22 9. The first jury never passed on whether these products infringe, so the new jury will have to do so before it could even consider damages. The scope of trial will expand further should the Court agree that liability and damages issues are intertwined.

Samsung’s Proposed Schedule. Apple argues that new trials do not open up all prior proceedings and rulings as a matter of course, but even Apple recognizes that such proceedings and rulings do have to be revisited in appropriate circumstances and will have to be revisited in this case. Contrary to Apple’s claim that the Court should decide now on a blanket basis that it will adhere to all prior rulings and instructions, the Court should address whether deviations from prior proceedings are proper as issues arise, for it would be an abuse of discretion to adhere to prior rulings and orders in some circumstances.8 The cases Apple cites are not to the contrary.9

Samsung's proposed pretrial schedule would move the case forward efficiently while providing flexibility to account for events, foreseen and unforeseen, that would wreak havoc on the schedule that Apple proposes. Samsung's deadline of six weeks for additional damages discovery is aggressive, while Apple's proposal of fifteen days is simply unachievable. Four weeks is not too long for rebuttal expert reports, but the sixteen days proposed by Apple is plainly not enough and would be unfair given the months that Apple has had to select new expert(s) and prepare report(s). Samsung's proposed schedule also makes discovery bilateral, which it plainly must be.

Given the current state of affairs, Samsung respectfully submits that the Court should not set the date for a new trial until the parties provide additional damages discovery, submit their new expert reports, and meet and confer about any additional discovery necessitated by the reports. In terms of trial length, Samsung believes a new trial on damages (not liability) will require 6-7 days as the parties will be calling multiple expert and percipient witnesses and both sides will present evidence relating to key issues going to the remedies that Apple seeks, including causation, whether there are acceptable non-infringing substitutes, design-around cost and time, Apple’s manufacturing and marketing capability to exploit demand, Apple’s profits, and other issues.10 ______
10 Apple asks the Court to make arrangements to award supplemental damages and prejudgment interest. But the Court has already correctly denied Apple’s request to calculate such amounts until appeals are resolved. Dkt. 2271 at 6. If the Court enters a partial judgment, Samsung has already stated that the Court can award prejudgment interest. Dkt. 2290 at 11 n.4.

That 6-7 days prediction is only if the trial is on damages alone.

Apple reveals its purpose in this section:

Accordingly, insofar as is relevant to the new trial, the Court should: (1) limit the parties to the same witnesses, exhibits, and deposition excerpts disclosed in the July 201 pretrial submissions; (2) before trial, admit exhibits already admitted in connection with the first trial; (3) apply the same Daubert rulings previously entered before the first trial and limit any new pretrial motions; (4) use the same jury instructions; (5) apply the same stipulations between the parties; (6) forgo any other new motions practice; and (7) otherwise apply prior orders.4

_____
4 Having obtained the new trial on damages it requested, Samsung must now defend all of Apple’s damages claims. Its footnote suggesting that the first jury’s damages award somehow restricts the damages Apple may now recover in the new trial is unsupported and specious.

Here's one issue I see. What if the USPTO reexaminations decide not to altogether invalidate everything, but mostly everything? Would a retrial using the prior Daubert rulings and using the same jury instructions be even minimally fair? That's pretty much the point Samsung is making, that Apple wants to pretend nothing new has happened, that this is simply about figuring out the new math based on all the old information and conclusions. But there is now plenty of reasons to wonder if the jury got *anything* right, and indeed whether the judge's rulings were also in error. If the patents are invalid, it was all farce.

Apple's feelings are, in contrast, that Apple is the one being unfairly treated, that Samsung is just dragging its feet:

Samsung’s proposal would severely prejudice Apple, which has no injunction and cannot enforce even the existing damages award, by unjustifiably prolonging Samsung’s three-year “free ride” on Apple’s legally-protected technology.
Ah, but is it legally protected? That is the question before the USPTO.

The parties put forth their best arguments, and it's the lawyers' jobs to present their arguments with zeal. But now, it's up to the judge to untie the knot in the shoe that this case resulted in. Fairness and balance is her job, and so we'll see how she parses it all out. If anyone is free to attend the hearing, I think we should try to be there. Email me, please, if that is possible for you, and I'll try to provide some guidance.

Here's the docket:

22-Apr-2013 - 2315 - JOINT CASE MANAGEMENT STATEMENT filed by Apple Inc. (Attachments: #1 Exhibit A, #2 Exhibit B) (Jacobs, Michael) (Filed on 22-Apr-2013)
Exhibit A is the parties proposed trial schedules, and Exhibit B is a summary of Apple's affirmed damage award on the rest of the products, the ones not needing a new trial on damages, with supplemental damages calculated.

Here is the joint case management statement, as text:

*************

[COUNSEL LISTED ON SIGNATURE PAGE]

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN JOSE DIVISION

APPLE INC., a California corporation,

Plaintiff, 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,

Defendants.

_________

Case No. 11-cv-01846-LHK (PSG)

JOINT STATEMENT REGARDING
FURTHER POST-TRIAL
PROCEEDINGS

Date: April 29, 2013

Time: 2:00 PM

Place: Courtroom 8, 4th Floor
Judge: Hon. Lucy H. Koh

I. APPLE’S INTRODUCTION

Apple requests that the Court hold the new trial on damages identified in the Court’s March 1 Order beginning on September 3, 2013, or at its earliest convenience thereafter, and resolve supplemental damages and prejudgment interest at the same time. Because of its limited scope, the trial will require only three court days, including jury selection, openings, and closings.

Apart from any conflicts with the Court’s schedule, nothing prevents the expeditious resolution of the limited damages issues that remain. Under Rule 16, a court’s pretrial order “controls the course of the action,” unless modified “to prevent manifest injustice.” Fed. R. Civ. Proc. 16(d)-(e). The parties’ July disclosures and the Court’s three pretrial orders should define the parameters of the new trial, except for the few limited adjustments needed to prevent injustice and comply with the March 1 Order: (1) a limited update to incorporate new financial information from Samsung, to adjust damages calculations to conform to the Order, and to substitute a new damages expert for Terry Musika, who died after the trial; (2) substitution of exhibits to conform to the Order and the updated financial data; and (3) if needed, limited motion practice to address any changes to damages opinions submitted by the newly-substituted expert.

Apple’s approach builds on the extensive effort and resources the Court and parties devoted to the pretrial proceedings and trial, minimizes the added effort for the Court, and reflects the lack of dramatic changes warranting a wholesale reopening of discovery. The new trial involves products introduced before April 2011, only four of which have been sold since Samsung’s last financial update, and those sales account for less than 1% of the total sales at issue. Apple’s proposal would allow a prompt resolution of the remaining damages issues, and a final judgment resolving all issues. Apple could then enforce the monetary awards, and the parties could obtain full appellate review. This is the just, necessary, and expedient course.

In contrast, even apart from its request to retry liability as well as damages, Samsung proposes expansive pretrial proceedings, including two rounds of fact discovery—one occurring after expert discovery, contrary to every scheduling order the Court has entered in this case and the 630 case—and three rounds of motions seeking changes in the Court’s original pretrial rulings. Samsung’s proposal would take a minimum of 41 weeks just to get to disclosures of exhibit lists.

1

 leading to a trial at the earliest in March 2014, even if the Court instantaneously provided every  ruling that Samsung requested at four pretrial hearings. The Court should reject Samsung’s  approach. See, e.g., Cleveland v. Piper Aircraft, 985 F.2d 1438, 1449-50 (10th Cir. 1993)  (although “hindsight” may show “a better way to try a case the second time around,” remand for  new trial was “not an invitation to reopen discovery for newly retained expert witnesses and to  enlarge trial time unnecessarily through the addition of totally new exhibits and testimony”).  Samsung’s proposal is inefficient, would inconvenience the Court, and would cause unnecessary  delay, as Samsung plainly intends it to do. Samsung has dragged its feet at every turn, including  by refusing promptly to permit the use of three spreadsheets with updated financial information  already produced to Apple in the 630 case, which further delays the preparation of new damages  reports, and refusing to permit already produced information to be used to calculate supplemental  damages. Samsung’s proposal would severely prejudice Apple, which has no injunction and  cannot enforce even the existing damages award, by unjustifiably prolonging Samsung’s three-year “free ride” on Apple’s legally-protected technology.

II. SAMSUNG’S INTRODUCTION

Samsung has asked the Court to enter partial final judgment pursuant to Rule 54(b) and to  stay the new trial pending appeal from that judgment. As Samsung explained, the outcome of this  appeal is not only likely to affect the contours of the new trial, but should help ensure that there  will not need to be a subsequent third trial. Dkt. 2281, 2290. A postponement of trial will also  avoid the risk that the verdicts at new trial will need to be vacated once the PTO’s invalidations of  Apple’s patents become final—invalidations that will moot the need to hold much of the new trial  at all. Dkt. 2304. Apple ignores all of this in insisting on an immediate new trial.

 Apple is also simply wrong in arguing that a new trial can be held and decided in short  order, without disputes or motion practice, because the parties can be limited to the evidence they  offered before and prior rulings will apply. Apple’s own arguments show this is not so: both the  proof at the new trial and even the issues to be tried will be different from before. For example:

  • Apple intends to offer new damages expert opinions but refuses to identify who its expert will be, whether it will proffer one new expert or more than one, or even what their area(s)

2

    of expertise will be. Apple argues that pretrial proceedings will move quickly because Samsung can be limited to its prior expert and his prior opinions (except for rebuttal to new Apple expert opinions), but Apple offers no legitimate basis why only it, and not Samsung, may change the methods and conclusions that its experts offered before.


  • Apple states that Samsung should get no new discovery but that Apple is entitled to new discovery relating to sales of four accused products after June 30, 2012—the end date for damages Apple sought at the last trial—because Apple intends to seek damages for such sales from the jury. But that Apple intends to offer new damages opinions relating to additional sales itself shows that Samsung is entitled to new discovery as well. Apple’s damages claims put at issue a myriad of factors that include the nature of the market at the time of the sales in question. New discovery into those issues for the new damages period will be required. Moreover, the last jury never decided whether these post-June 2012 sales were infringing, so the new jury will have to decide not only damages but, at least as to these sales—some of which were subject to design-arounds—infringement.

  • Apple intends to seek supplemental damages at the same time as or in the new trial, including for the Tracfone Galaxy SII (Dkt. 2306 at 4 n.4). But that product was not before the first jury or previously accused of infringement. Resolving such claims, if permitted, will at a minimum require discovery and motion practice as well as a liability trial. As this also shows, even Apple disagrees with its own position that the prior pretrial statement, which did not list this product (Dkt. 1189 at 3-4), fully governs now.

The new trial will involve, even according to Apple, new experts and new opinions, new  damages periods and even a new product—and this will necessitate additional discovery and  motion practice. Should the Court agree that infringement and damages issues overlap, the scope  of the new trial will expand further. A three-day trial to be held a few months from now is not  realistic. Apple cannot benefit from its “strategic decision to submit an expert report using an  aggressive notice date,” Dkt. 227 at 24:10-12, by insisting on an unreasonably compressed  schedule that fails to account for necessary proceedings. Should the Court proceed with the  ordered new trial, it should adopt the tentative pre-trial schedule that Samsung has proposed.

3

III. APPLE’S STATEMENT

Supplemental Expert Discovery: Apple’s damages expert from the first trial, Terry Musika, passed away in December 2012. Apple proposes to substitute a new expert who will address the same issues as Mr. Musika, with adjustments to conform to the March 1 Order and updated financial information on infringing sales (based on a new version of Mr. Musika’s model reflecting new notice dates that Apple previously provided to Samsung). See, e.g., Cleveland, 985 F.2d at 1450 (if “expert witness is deceased” court “should give every consideration to allowing additional witnesses to testify”). Samsung does not object to the substitution. Apple has narrowed potential candidates and will disclose a new expert by May 13, 2013, assuming that the Court orders a new trial at the April 29 conference. Samsung’s professed need for earlier disclosure to ensure approval of the new expert to view materials under the Protective Order is a red herring. Unlike Mr. Lucente and Mr. Sherman, the new damages expert will not be shown protected technology, and Apple has informed Samsung that it will likely use an expert from Mr. Musika’s firm or the firm of one of its experts in the 630 case.

Apple will serve Samsung with a supplemental damages report that will: (1) set forth the new expert’s background and qualifications; (2) revise the prior damages calculations to address the 1 products at issue and the revised notice periods identified in the March Order; and (3) identify any changes to Mr. Musika’s methods and calculations. Apple can provide this supplemental report promptly after receiving Samsung’s updated financial information described below and has proposed June 26, 2013. By July 12, 2013, Samsung should provide a rebuttal report only from Mr. Wagner and limited to the revisions identified in the supplemental report.1 Both experts can promptly be deposed on or before July 26, 2013. This schedule limits expert discovery to what is needed in light of a death and to conform to the Court’s March 1 Order

4

 without reopening or rehashing legal and factual issues previously resolved. It also accounts for  the massive effort the parties and the Court already made in preparation for the first trial.

 Supplemental Fact Discovery: Apple seeks a limited update to Samsung’s financial  information for four infringing products at issue in the new trial (Galaxy S II AT&T, Droid  Charge, Galaxy Prevail, and Galaxy Tab) solely because Samsung continued to sell those products  after June 30, 2012, the date of Samsung’s last financial update before the first trial. (See Dkt.  2060 at 9, 11.) Getting this information before trial is more efficient for the Court and the parties  because it eliminates the need for any post-trial supplemental damages calculations.

 Samsung already produced nearly all of this information in the concurrent 630 action, but  has not agreed to allow Apple simply to use that information in this action. Samsung should  provide a complete update for use in this action by May 13, 2013. Samsung has had notice of  Apple’s specific requests since March 25, and the update can be prepared with minimal effort.

 Proposed Modifications to the Court’s Pretrial Order: A district court retains  “discretion in managing a second new trial” in a case, including to allow “additional witnesses and  relevant proof” if necessary to prevent “manifest injustice,” such as where an “expert witness is  deceased,” Cleveland, 985 F.2d at 1459-50 (citing Rule 16(e)), or the court “changed the rules of  the game” for a new trial on obviousness by “construing the claims after trial,” Johns Hopkins  Univ. v. CellPro, Inc., 15 F.3d 1342, 1357 (Fed. Cir. 1998). To prevent manifest injustice, Apple  seeks limited modifications required by its damages expert’s death and to conform to the  directives regarding dates and products set forth in the March 1 Order.2

 In addition to the substitution of an expert and limited financial update described above,  the pretrial order should be modified to permit Apple and Samsung to exchange and submit  substitute damages exhibits for trial (such as those corresponding to PX25, DX781, and JX1500),  to reflect damages and financial calculations specific to the 14 products at issue in the new trial,  the notice dates stated in the March 1 Order, and the supplemental expert opinions. The   


5

 modification should allow admission only of equivalent, substitute exhibits that the parties revise  to reflect the March 1 Order. The Court should also consider in limine motions that address any  issues arising from changes to the expert reports.

 Consistent with Rule 16(e), apart from those modifications, the Court should enforce its  prior orders and limit the parties to the witnesses and evidence available for the first trial. See  Cleveland, 985 F.2d at 1450 (district court had discretion to exclude from second trial new  evidence designed to “‘plug the holes’” in party’s case, which “would require extensive additional  discovery”); Martin’s Herend Imports, Inc. v. Diamond & Gem Trading USA Co., 195 F.3d 765,  775-76 (5th Cir. 1999) (district court “did not abuse its discretion in limiting [defendant] to the  witnesses and evidence it offered at the first trial”); Hoffman v. Tonnemacher, No. CIV. F 04-  5714, 2006 WL 3457201, at *3, *5 (E.D. Cal. Nov. 30, 2006) (“mere fact that a retrial will occur  is generally insufficient grounds for a court to alter a previous ruling”; court modified pretrial  order from original trial only where “it would be ‘manifestly unjust’” not to do so). Samsung  makes no attempt to show that the extensive modifications it seeks are needed to respond to the  March 1 Order or otherwise prevent manifest injustice. No such justification is possible. For  example, even in the normal course, fact discovery is not split to come both before and after expert  reports and depositions. Samsung cannot show how it is unjust to use the same discovery that was  used to prepare expert reports before the first trial last August, which involved twice as many  products and more intellectual property.3

 Accordingly, insofar as is relevant to the new trial, the Court should: (1) limit the parties  to the same witnesses, exhibits, and deposition excerpts disclosed in the July 201 pretrial  

6

 submissions; (2) before trial, admit exhibits already admitted in connection with the first trial; (3)  apply the same Daubert rulings previously entered before the first trial and limit any new pretrial  motions; (4) use the same jury instructions; (5) apply the same stipulations between the parties; (6)  forgo any other new motions practice; and (7) otherwise apply prior orders.4

 Supplemental Damages and Prejudgment Interest. At or before the new trial, the Court  should calculate supplemental damages and prejudgment interest for the products for which the  Court confirmed the jury’s award of $598,908,892. Given the detail in the March Order, the  calculation is arithmetic, requires only Samsung’s production of updated unit sales information,  and can be calculated as shown in Exhibit B.

IV. SAMSUNG’S STATEMENT

Apple’s suggestion that trial can be completed in only three days, without motion practice  or other changes, is implausible. Apple itself demands changes in witnesses, evidence and  products, which will lead to motion practice. Moreover, the scope of trial has not been decided,  and Apple seeks to expand the issues. Samsung cannot identify now everything that will have to  change at the new trial because Apple refuses to disclose its experts, but the changes that are  known already demonstrate that Apple’s schedule is not viable.

 Experts. Apple intends to offer reports and testimony from a new damages expert or  experts who, Apple states, may make changes to Apple’s prior expert’s “methods and  calculations.” Apple argues the new trial nevertheless can proceed expeditiously because while  Apple can change its expert’s methods and conclusions as it sees fit, Samsung can only have a  single previously-disclosed expert respond to Apple’s new opinions. There is no precedent for  this, and clearly Apple has no right to open for alteration only those opinions that it does not like.

 Samsung cannot identify what changes will need to be made to its experts’ presentations,  however, because Apple refuses to give Samsung any information about its new expert(s). As  recently as three days ago, the most Apple would say is that it is likely to designate one or more  unnamed persons from two consulting firms. Samsung does not know even what Apple’s new

7

 experts’ fields of expertise will be. If Apple comes forward with an expert in economics,  Samsung would have every right to designate one or more experts in economics as well.5

 In any case, substantial work will be required even if Apple were correct in its one-sided  proposal that it can freely make changes to its expert presentation but Samsung can at most  respond. The Court must ensure that expert opinions, new or old, are “relevant to the task at  hand” before they are admitted. Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 592, 597  (1993). After expert discovery occurs, Daubert motions will undoubtedly be brought as to  Apple’s new opinions and Samsung’s responsive ones.

 Fact Discovery. Apple asks the Court to order that Apple, but not Samsung, can take  additional fact discovery. There is no support for such a lack of evenhandedness, and Apple’s  own requests make clear why it would be improper. Apple intends to seek damages from the jury  for an expanded time period for products sold after June 30, 2012—the Galaxy S II (AT&T),  Droid Charge, Galaxy Prevail and Galaxy Tab. Such requests for damages, if permitted, put at  issue additional information, including, for the (expanded) period when the accused products were  sold, the nature of the market, Apple’s incremental profit margin, Apple’s market share and a host of other factors that may explain any lost sales or loss of market share. Grain Processing Corp. v.  Am. Maize-Prods. Co., 185 F.3d 1341, 1350 (Fed. Cir. 1999); Panduit Corp. v. Stahlin Bros. Fibre  Works, Inc., 575 F.2d 1152, 1156 (6th Cir. 1978). Because the discovery period ended on March  8, 201 (Dkt. 187 at 2), Apple has not yet produced relevant discovery (for the period through  June 30, 201 or the expanded damages period), and Samsung is entitled to such discovery.6

8

 Motion Practice. Samsung cannot predict all disputes, but several are apparent already.  Apple claims that it will seek as part of the new trial supposed "supplemental damages" for the  Tracfone Galaxy SII, but that is a misnomer because that product was not accused at or before trial  and has never been found to be infringing by a jury. Dkt. 2306 at n.4; Dkt. 231 at 6 n.2. As  noted, Daubert motions against both sides’ experts will certainly be brought, and other in limine  motions may be needed. The Court may well also be asked to decide dispositive motions relating  to whether Samsung’s design-arounds infringe (see infra), and the Court will also have to decide  what forms of damages are available.7

 Trial. The issues to be tried are also broader than Apple suggests. Apple states that it  seeks post-June 30, 2012 damages (Dkt. 2271 at 3:3-5) as to four accused products. That puts  Samsung’s design-arounds at issue. For example, Samsung implemented a design-around on the  Droid Charge (one of the four products) to avoid the D’305 patent. Dkt. 2055 at 6:6-14; see Dkt.  2075 at 2:11-22 9. The first jury never passed on whether these products infringe, so the new jury  will have to do so before it could even consider damages. The scope of trial will expand further  should the Court agree that liability and damages issues are intertwined.

 Samsung’s Proposed Schedule. Apple argues that new trials do not open up all prior  proceedings and rulings as a matter of course, but even Apple recognizes that such proceedings  and rulings do have to be revisited in appropriate circumstances and will have to be revisited in  this case. Contrary to Apple’s claim that the Court should decide now on a blanket basis that it  will adhere to all prior rulings and instructions, the Court should address whether deviations from  prior proceedings are proper as issues arise, for it would be an abuse of discretion to adhere to  prior rulings and orders in some circumstances.8 The cases Apple cites are not to the contrary.9

9

 Samsung's proposed pretrial schedule would move the case forward efficiently while providing  flexibility to account for events, foreseen and unforeseen, that would wreak havoc on the schedule  that Apple proposes. Samsung's deadline of six weeks for additional damages discovery is  aggressive, while Apple's proposal of fifteen days is simply unachievable. Four weeks is not too  long for rebuttal expert reports, but the sixteen days proposed by Apple is plainly not enough and  would be unfair given the months that Apple has had to select new expert(s) and prepare report(s).  Samsung's proposed schedule also makes discovery bilateral, which it plainly must be.

 Given the current state of affairs, Samsung respectfully submits that the Court should not  set the date for a new trial until the parties provide additional damages discovery, submit their new  expert reports, and meet and confer about any additional discovery necessitated by the reports. In  terms of trial length, Samsung believes a new trial on damages (not liability) will require 6-7 days  as the parties will be calling multiple expert and percipient witnesses and both sides will present  evidence relating to key issues going to the remedies that Apple seeks, including causation,  whether there are acceptable non-infringing substitutes, design-around cost and time, Apple’s  manufacturing and marketing capability to exploit demand, Apple’s profits, and other issues.10

V. PROPOSED SCHEDULES

Attached as Exhibit A is a table reflecting the events and dates of further proceedings  based on Apple’s and Samsung’s separate proposals for the new trial.  

10

Dated: April 22, 2013

 MORRISON & FOERSTER LLP

HAROLD J. McELHINNY (CA SBN 66781)
 [email]
MICHAEL A. JACOBS (CA SBN 111664)
[email]

RACHEL KREVANS (CA SBN 116421)
 [email]
ERIK OLSON (CA SBN 175815)
[email]

MORRISON & FOERSTER LLP
[address, phone, fax]

WILLIAM F. LEE
[email]

WILMER CUTLER PICKERING
 HALE AND DORR LLP
[address, phone, fax]

 MARK D. SELWYN (SBN 244180)
[email]
 WILMER CUTLER PICKERING
HALE AND DORR LLP
[address, phone, fax]

By: /s/ Michael A. Jacobs
Michael A. Jacobs

Attorneys for Plaintiff and Counterclaim-
Defendant APPLE INC.

QUINN EMANUEL URQUHART & SULLIVAN,
LLP

Charles K. Verhoeven (Cal. Bar No. 170151)
[email]
[address, phone, fax]

Kevin P.B. Johnson (Cal. Bar No. 177129)
[email]
Victoria F. Maroulis (Cal. Bar No. 202603)
[email]
[address, phone, fax]

Michael T. Zeller (Cal. Bar No. 196417)
[email]
[address, phone, fax]

By: /s/ Victoria Maroulis

Attorneys for Defendants and
Counterclaim-Plaintiffs

SAMSUNG ELECTRONICS CO.,
LTD., SAMSUNG ELECTRONICS
AMERICA, INC. and SAMSUNG
TELECOMMUNICATIONS
AMERICA, LLC

________
1 Samsung refers to rebuttal expert “report(s)” but Samsung should be limited solely to Mr. Wagner and he should be held to his previously-stated disclosures and opinions. The fact that Apple has no choice but to introduce a new expert to provide the testimony previously provided by Mr. Musika does not warrant allowing Samsung to add experts or restart expert disclosures and reopen previously disclosed opinions. Doing so would unnecessarily multiply the Court’s effort and prejudice Apple. In contrast, Samsung does not attempt to and could not show manifest injustice from using only Mr. Wagner and his previous disclosures and opinions.

2 Courts in the Ninth Circuit consider four factors in deciding whether a party has shown 
“manifest injustice” warranting modification of a pretrial order: “(1) the degree of prejudice or surprise to the [non-moving party] if the order is modified; (2) the ability of the [non-moving party] to cure the prejudice; (3) any impact of modification on the orderly and efficient conduct of the trial; and (4) any willfulness or bad faith by the party seeking modification.” Galdamez v. Potter, 415 F.3d 1015, 1020 (9th Cir. 2005).

3 Samsung’s cited cases do not require the Court to abandon its prior rulings and restart discovery. 
See Johns Hopkins, 15 F.3d at 1357 (allowing new prior art reference that responded to game-changing new claim construction); Hoffman v. Tonnemacher, No. CIV. F 04-5714, 2007 WL 2318099, at * (E.D. Cal. Aug. 10, 2007) (allowing substitution of expert to prevent manifest injustice where prior consultant could not list of prior cases in which he testified); Morrison Knudsen Corp. v. Ground Improvement Techniques, Inc., No. Civ.A 95-K-2510, 2006 WL 753207, at *1, *8 (D. Colo. Mar. 20, 2006) (court enforced original pretrial order and held parties waived Daubert motions by filing them after stipulated deadline in pretrial order); Petit v. City of Chicago, 239 F. Supp. 2d 761, 77 (N.D. Ill. 2001) (allowing amendment of pretrial order that would “not interrupt an orderly and efficient retrial of the case”); Dowling v. Am. Haw. Cruises, Inc., 869 F. Supp. 806, 807-08 (D. Haw. 1994) (allowing party to present brief live testimony in addition to offering trial transcripts); Basquiat v. Kemper Snowboards, No. 96 Civ. 0185, 1998 WL 190258, at *6 (S.D.N.Y. April 21, 1998) (devoting single sentence to procedures for new trial).

4 Having obtained the new trial on damages it requested, Samsung must now defend all of Apple’s damages claims. Its footnote suggesting that the first jury’s damages award somehow restricts the damages Apple may now recover in the new trial is unsupported and specious.

5 Issues of expert access to information under the Protective Order may also arise and require resolution. On prior occasions, this has been time consuming—for example, motion practice was necessary before two Samsung experts were approved to view materials under the Protective Order. Dkts. 691, 761 (Lucente); Dkts. 482, 535, 606, 673 (Sherman).


6 The types of materials which Samsung is entitled to obtain include new license agreements that cover the patents-in-suit or related patents; consumer surveys and market research concerning smartphones and tablet computers; updated financial information; manufacturing and marketing capacity information; documents analyzing any loss of market share by Apple, any change in consumer perception of Apple, the impact of this litigation on the perception of Apple and the value of the asserted patents; Apple's marketing and business plans and sales and profit forecasts; and documents analyzing the impact of Samsung's products on Apple's sales, goodwill and brand value. In light of the discovery that clearly will be required in this case, Apple’s request that Samsung cross-produce limited data produced in another case would not expedite the proceedings.

7 As the Court noted in its March 1, 2013 Order (Dkt. 2271 at 9:5-10:22), the jury rejected Apple's lost profits claim for each of the 14 products subject to new trial. Samsung reserves its right to seek relief from the Court if Apple discloses opinions or pursues remedies that are inconsistent with the jury’s rejection of Apple’s lost profits claims.


8 See Johns Hopkins Univ. v. CellPro, Inc., 15 F.3d 1342, 1357 (Fed. Cir. 1998) (“Nothing in 27 Rule 16(e) indicates that a pretrial order from a first trial controls the range of evidence to be considered in a second trial.”); Morrison Knudsen Corp. v. Ground Improvement Techniques, Inc., 2006 WL 753207 at * (D. Colo. Mar. 20, 2006) (considering new motions before damages retrial); Basquiat v. Kemper Snowboards, 1998 WL 190258, *6 (S.D.N.Y. Apr. 21, 1998) (new 
discovery before damages retrial); Dowling v. American Haw. Cruises, Inc., 869 F.Supp. 806, 808 
(D. Haw. 1994) (new evidence at new trial).

9 See Hoffman v. Tonnemacher, 2007 WL 2318099, * (E.D. Cal. Aug. 10, 2007) (allowing new rebuttal expert and discovery regarding expert—and, in earlier decision, see id., 2006 WL 3457201, *3, *9 (E.D. Cal. Nov. 30, 2006), allowing summary judgment motion and recognizing discretion to allow new evidence and discovery). Cleveland v. Piper Aircraft Corp., 985 F.2d 1438, 1450 (10th Cir. 1993), recognized that district courts “retain broad latitude and may with proper notice allow additional witnesses and relevant proof,” and while Martin’s Herend Imports, Inc. v. Diamond & Gem Trading U.S.A. Co., 195 F.3d 765 (5th Cir. 1999), affirmed the exclusion of new witnesses, the defendant never moved to reopen discovery and failed to explain why it did not offer their testimony before. Id. at 775. These authorities show, if anything, that these types of issues can only be addressed on a case-by-case basis, and not in a vacuum in advance.

10 Apple asks the Court to make arrangements to award supplemental damages and prejudgment interest. But the Court has already correctly denied Apple’s request to calculate such amounts until appeals are resolved. Dkt. 227 at 6. If the Court enters a partial judgment, Samsung has already stated that the Court can award prejudgment interest. Dkt. 2290 at 1 n.4.

11

ATTESTATION OF E-FILED SIGNATURE

I, Michael A. Jacobs, am the ECF User whose ID and password are being used to file this Joint Statement. In compliance with Local Rule 5-1(i)(3), I hereby attest that Victoria Maroulis has concurred in this filing.

Dated: April 22, 2013

/s/ Michael A. Jacobs
Michael A. Jacobs

12


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