Monday, August 13, 2012

Apple wins exclusion of president of Samsung Telecommunications America as witness

Late on Sunday evening by local time, Judge Lucy Koh entered an order on the parties' objections to each other's demonstratives (charts/slides) to be used by their expert witnesses this week, and in the same order also granted an Apple motion to exclude two Samsung witnesses.

Both parties had wins and losses regarding their objections to demonstrative exhibits, with Samsung having been slightly more successful in numerical terms (five objections sustained, five overruled, one sustained in part and overruled in part, as compared to Apple's result of three sustained objections, six overruled ones, and one mixed result). A mere count of outcomes does not reflect that the strategic importance of objections varies greatly, but having looked at the issues I didn't see an indication that Apple's sustained objections were, on average, more impactful than Samsung's.

However, Apple does on balance have a greater benefit from the latest order because it prevailed on a motion to exclude two Samsung witnesses. In a motion filed on Thursday, Apple complained that Samsung had listed "two witnesses the substance of whose testimony Samsung failed to disclose" on a timely basis:

  • Apple noted that Samsung had amended its initial disclosures list four times and listed "nearly 100 witnesses, but [the President of Samsung Telecommunications America, Dale Sohn] was not among them". Only last week, Samsung communicated that Mr. Sohn "may testify regarding Samsung's innovative technology and products".

    An even bigger issue is that Samsung allegedly "fought tooth-and-nail to prevent Apple from taking Mr. Sohn's deposition", and in doing so, Samsung argued that Apple failed to show that Mr. Sohn had any unique "first-hand material knowledge". Samsung had even denied that he had any "personal knowledge that is relevant to this case" and any "relationship to the accused products or the patents-in-suit other than [his] place atop Samsung's organizational hierarchy". The court finally granted an Apple motion to compel Mr. Sohn's testimony, but was granted only three hours, which Apple considered insufficient, and only so late in the game that Apple was deprived of the opportunity to "to conduct any follow-up discovery in connection with [Mr. Sohn's testimony]".

    Under these circumstances, it is indeed odd that Samsung later wanted to have the right to call this witness. Judge Koh held that "Samsung cannot now claim that Mr. Sohn has knowledge regarding Samsung's technology and products after refusing for months to produce him for deposition", and has therefore precluded him from testifying on behalf of Samsung.

  • The other witness Apple just got excluded is Hyong Shin Park, described in the order as "one of the inventors of the [Samsung] F700 [smartphone]". In this case, "inventor" means "designer". She may not be as high up in the organizational hierarchy as Mr. Sohn, but his exclusion may be even more useful to Apple. The F700 features some (though by far not all) of the visual characteristics of the iPhone and was launched shortly after Apple's initial iPhone presentation in early 2007, but a Korean design patent related to it was filed the year before.

    While Samsung is allowed to present the F700 only in connection with the question of whether certain iPhone design elements are functional (and therefore not protectable), Samsung's lawyers have been looking for all sorts of ways to inject the F700 into the trial, preferably in contexts in which the jury may be (mis)led to consider the F700 a permissible prior art reference.

    Judge Koh notes that "Ms. Park did not design any of the accused devices" and points to an inconsistency in Samsung's position: "On the one hand, Samsung explains that Ms. Park will testify that the F700 was functional, but also that she obtained a [Korean] design patent [...] for the same design". Judge Koh furthermore remains concerned that using the F700 as an argument to counter Apple's claims of willful infringement (by raising an independent creation defense) is too likely to lead to jury confusion, even if the court provided a limiting instruction.

After this order, Samsung has two options. It can simply accept it for the time being and appeal it after this court's final decision. Alternatively, it can interview those witnesses itself in a mock deposition setting and upload a video recording to YouTube or give such material to the press along with a statement that this is a must-see for the jury. But at some point that kind of conduct may lead to sanctions. That's why I believe Samsung will choose the first option.

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