Wednesday, March 28, 2012

Samsung won't get to attack the iPhone 4S at trial in California this summer

Yesterday evening, Judge Lucy Koh, the federal judge presiding over Apple's two lawsuits against Samsung in the Northern District of California, entered an order denying two Samsung motions:

  1. Samsung won't get to amend its prior art contentions at this stage because it has known about all of those for several months and, in the court's opinion, didn't act diligently.

    The order quotes from the local patent rules in the Northern District of California, which "requir[e] both the plaintiff and the defendant in patent cases to provide early notice of their infringement and invalidity contentions, and to proceed with diligence in amending those contentions when new information comes to light in the course of discovery". the purpose of those requirements is to "seek to balance the right to develop new information in discovery with the need for certainty as to the legal theories".

    Samsung tried to work out an agreement with Apple concerning amended invalidity contentions but those efforts failed. However, the order says that trying to work out an agreement is not sufficient to establish diligence, and it also appears that the information Samsung provided to Apple was rather general instead of specifying any invalidity theories.

  2. Samsung also sought to amend its infringement contentions by including the iPhone 4S, which went on sale in October, in the list of accused products. But the court is concerned about a disruption of the current case schedule and "has reservations about adding a new product at this late date, particularly given the difficulties the parties have had in reaching a negotiated agreement to add the additional device since the iPhone 4S was released five months ago".

    Apple's first lawsuit against Samsung, filed in April 2011, is scheduled to go to trial at the end of July 2012. Apple brought its second lawsuit against Samsung in the same district (after dozens of lawsuits the parties instigated against each other in other jurisdictions in between those two) in February. Judge Koh believes that the newer case, which she is also presiding over, is the appropriate context for Samsung to bring its infringement allegations agains the iPhone 4S. A schedule for that case has not yet been set (except for the fast-track procedure relating to Apple's motion for a preliminary injunction). This means considerable delay for Samsung's purposes.

    The iPhone 4S is particularly important here not only because it's the current generation of the iPhone but also because it comes with a Qualcomm chip, and some of the patents Samsung is asserting cover functionality that Apple claims to be entitled to implement as a third-party beneficiary of a Samsung-Qualcomm patent license agreement. Samsung would preferably have this question adjudicated in the United States, the world's largest market, sooner rather than later.

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