Magistrate Judge Paul S. Grewal, who assists Judge Lucy Koh in a couple of Apple v. Samsung lawsuits pending in the Northern District of California, issued a ruling on Wednesday evening denying, for the time being, a request by Samsung to conduct certain discovery of Apple in California in order to use the produced material and obtained information against certain patent infringement claims brought by Apple in Japan. Samsung can bring this request again in the United States, but the California-based court doesn't want to interfere with the Japanese court. If the Japanese court issues a ruling indicating that it would consider this discovery effort useful, it appears that Samsung will be in pretty good shape to finally prevail on its motion. But as long as the Japanese court does not provide any indication that it's interested, Samsung's motion is doomed to fail.
Basically, Samsung hopes that it can prove an Apple patent invalid by showing that the patented invention was obvious over functionality implemented in an early version of the iPhone Apple released in 2007. At the time, U.S. patent law had a grace period (which was abolished by the 2011 America Invents Act), allowing the filing of patent applications up to a year after initial publication, but the rest of the world (at least the jurisdictions I know) followed the first-to-file (not first-to-invent) rule. That's why Samsung would not be able to make this same argument in a U.S. court. But it wants to benefit from the further-reaching discovery that can be conducted under U.S. rules in order to dig up evidence that may prove helpful in Japan. On particular, Samsung desires to obtain the following material:
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 2007 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.
Apart from the word "all" in the first item, this request appeared reasonably specific to the court. But the court exercised its discretion to deny this request (without prejudice, since the situation can change), with the outcome-determinative factor having been Samsung's failure to prove that the Japanese court is going to be receptive to the discovery requested. Apple did not prove that the Japanese court won't be receptive -- but it's Samsung who wants something here, and Judge Grewal thought it more appropriate to let the Japanese court rule on the corresponding discovery request. Judge Grewal's order "notes that Samsung’s failure to seek discovery earlier in the foreign tribunal suggests that Samsung may be trying to circumvent or shortcut the requirements of the Japanese court". The U.S. court doesn't want to "undermin[e] the Tokyo court's management of this case".
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