1 QUINN EMANUEL URQUHART & SULLIVAN, LLP Charles K. Verhoeven (Cal. Bar No. 170151) 2 charlesverhoeven@quinnemanuel.

com 50 California Street, 22nd Floor 3 San Francisco, California 94111 Telephone: (415) 875-6600 4 Facsimile: (415) 875-6700 5 Kevin P.B. Johnson (Cal. Bar No. 177129) [email protected] 6 Victoria F. Maroulis (Cal. Bar No. 202603) [email protected] 7 555 Twin Dolphin Drive 5th Floor Redwood Shores, California 94065 8 Telephone: (650) 801-5000 Facsimile: (650) 801-5100 9 Michael T. Zeller (Cal. Bar No. 196417) 10 [email protected] 865 S. Figueroa St., 10th Floor 11 Los Angeles, California 90017 Telephone: (213) 443-3000 12 Facsimile: (213) 443-3100 13 Attorneys for SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS 14 AMERICA, INC. and SAMSUNG TELECOMMUNICATIONS AMERICA, LLC 15 16 17 UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA, SAN JOSE DIVISION CASE NO. 11-cv-01846-LHK SAMSUNG'S NOTICE OF MOTION AND MOTION TO EXCLUDE OPINIONS OF CERTAIN OF APPLES EXPERTS Date: June 21, 2012 Time: 1:30 pm Place: Courtroom 8, 4th Floor Judge: Hon. Lucy H. Koh

18 APPLE INC., a California corporation, 19 20 vs. Plaintiff,

21 SAMSUNG ELECTRONICS CO., LTD., a Korean business entity; SAMSUNG 22 ELECTRONICS AMERICA, INC., a New York corporation; SAMSUNG 23 TELECOMMUNICATIONS AMERICA, LLC, a Delaware limited liability company, 24 Defendants. 25 26 27 28
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FILED UNDER SEAL

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1 TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD: 2 PLEASE TAKE NOTICE that on June 21, 2012 at 1:30 p.m., or as soon thereafter as

3 counsel may be heard before the Honorable Lucy Koh in Courtroom 8 of the above-entitled Court, 4 located at 280 South 1st Street, San Jose, California, Defendants Samsung Electronics Co., Ltd., 5 Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC 6 (collectively Samsung) will, and hereby does, move this Court for an order excluding the 7 testimony of the following expert witnesses designated by Apple: Terry L. Musika, Henry Urbach, 8 Susan Kare, Russell Winer, Dr. Sanjay Sood, Dr. John Hauser, Michael Walker and a portion of 9 the testimony of Richard L. Donaldson (the "experts"). 10 PLEASE TAKE FURTHER NOTICE that Samsung requests an evidentiary hearing

11 pursuant to Fed. R. Evid. 104 on the admissibility of the testimony of each of the experts prior to 12 any testimony by that expert at trial. 13 This Motion is made pursuant to the Federal Rules of Evidence 403 and 702 and Daubert

14 v. Merrell Dow Pharms., Inc., 509 U.S. 579 (1993), on the grounds that the testimony Apple seeks 15 to elicit from these experts is not relevant to any issue in this matter, and is otherwise unreliable, 16 incorrect, and unhelpful. 17 This Motion is based upon this Notice of Motion and Motion, Memorandum of Points and

18 Authorities in support thereof, the Declaration of Joby Martin dated May 17, 2012, all pleadings 19 and papers on file in this action, such other evidence or arguments as may be presented to the 20 Court, and such other matters of which this Court may take judicial notice. 21 22 23 24 25 26 27 28
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1 DATED: May 17, 2012 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

QUINN EMANUEL URQUHART & SULLIVAN, LLP

By /s/ Victoria F. Maroulis Charles K. Verhoeven Kevin P.B. Johnson Victoria F. Maroulis Michael T. Zeller Attorneys for SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., and SAMSUNG TELECOMMUNICATIONS AMERICA, LLC

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1 2 3

TABLE OF CONTENTS Page

4 MEMORANDUM OF POINTS AND AUTHORITIES .................................................................. 1 5 I. 6 II. 7 8 9 2. 10 11 12 13 14 15 C. 16 D. 17 18 19 III. 20 IV. 21 V. 22 VI. 23 VII. 24 VIII. 25 IX. 26 27 28
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INTRODUCTION ................................................................................................................. 1 THE COURT SHOULD EXCLUDE THE OPINIONS OF TERRY L. MUSIKA .............. 1 A. Mr. Musikas Lost Profits Analysis Should Be Excluded ........................................ 1 1. Mr. Musikas lost profits figures should be excluded because he ignores essential factors in the smartphone market ....................................... 1 Mr. Musikas lost profits analysis is not tied to the intellectual property rights at issue in this case................................................................ 2

B.

Mr. Musikas Reasonable Royalty Analysis Should Be Excluded ........................... 4 1. 2. 3. Mr. Musikas income approach is improper .............................................. 4 Mr. Musika's cost approach is improper .................................................... 5 Mr. Musikas royalty rate improperly relies on the assumption that ...................................................................... 6 ......... 7

Mr. Musikas Critique of

If Mr. Musika Is Allowed to Give an Opinion on Damages, ................................................................................ 8 The Court Should Again Reject Mr. Musikas Speculation Regarding Alleged Irreparable Harm For Failure to Show Any Nexus ..................................... 9

E.

THE COURT SHOULD EXCLUDE THE OPINIONS OF JOHN HAUSER ................... 10 THE COURT SHOULD EXCLUDE THE TESTIMONY OF HENRY URBACH .......... 13 THE COURT SHOULD EXCLUDE THE TESTIMONY OF SUSAN KARE ................. 17 THE COURT SHOULD EXCLUDE THE TESTIMONY OF RUSSELL WINER .......... 19 THE COURT SHOULD EXCLUDE THE OPINIONS OF DR. SANJAY SOOD ........... 21 THE COURT SHOULD EXCLUDE THE OPINIONS OF MICHAEL WALKER .......... 22 THE COURT SHOULD EXCLUDE THE LEGAL OPINION OF RICHARD L. DONALDSON .................................................................................................................... 25

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1 2 3

TABLE OF AUTHORITIES Page Cases

4 AMF v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) ................................................................................................19, 20 5 Am. Med. Sys., Inc. v. Med. Eng'g Corp., 6 6 F.3d 1523 (Fed. Cir. 1993) ........................................................................................................8 7 American Footwear Corp. v. General Footwear Co., 609 F.2d 655 (2d Cir. 1979) .......................................................................................................22 8 Apple v Samsung Elecs., 9 No. 12-1105, Op. Cit. at 16 (Fed. Cir. May 14, 2012) .................................................................9 10 Arminak & Assocs., Inc. v. Saint Gobain Calmar, Inc., 501 F.3d 1314 (Fed. Cir. 2007) ..................................................................................................18 11 BIC Leisure Prods., Inc. v. Windsurfing Int'l, Inc., 12 1 F.3d 1214 (Fed. Cir. 1993) ....................................................................................................1, 2 13 Baker v. Urban Outfitters, Inc., 254 F. Supp. 2d 346 (S.D.N.Y. 2003) ........................................................................................17 14 In re Bextra and Celebrex Mktg. Sales Practices and Prod. Liab. Litig., 15 524 F. Supp. 2d 1166 (N.D. Cal. 2007) .....................................................................................16 16 CLRB Hanson Indus., LLC v. Google Inc., 2008 WL 2079200 (N.D. Cal. May 14, 2008) ...........................................................................25 17 Coach Inc. v. Asia Pac. Trading Co., 18 676 F. Supp. 2d 914 (C.D. Cal. 2009) .......................................................................................8 19 Crystal Semiconductor Corp. v. Tritech Microelecs. Int'l, Inc., 246 F.3d 1336 (Fed. Cir. 2001) ....................................................................................................1 20 DSU Med. Corp. v. JMS Co., Ltd., 21 296 F. Supp. 2d 1140 (N.D. Cal. 2003) .....................................................................................16 22 Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579 (1993) ...........................................................................................1, 4, 7, 14, 16, 21 23 Dreamworks Production Group, Inc. v. SKG Studio, 24 142 F.3d 1127 (9th Cir. 1998) ....................................................................................................18 25 Dreyfus Fund Inc. v. Royal Bank of Canada, 525 F. Supp. 1108 (S.D.N.Y. 1981) .....................................................................................12, 22 26 Egyptian Goddess, Inc. v. Swisa, Inc., 27 543 F.3d 665 (Fed. Cir. 2008) ....................................................................................................18 28
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1 Gable v. Nat'l Broadcasting Co., 727 F. Supp. 2d 815 (C.D. Cal. 2010) ........................................................................................16 2 Garretson v. Clark, 3 111 U.S. 120 (1884) .....................................................................................................................4 4 General Elec. Co. v. Joiner, 522 U.S. 136, 118 S. Ct. 512, 139 L. Ed. 2d 508 (1997) ...........................................................16 5 Georgia-Pacific Corp. v. U.S. Plywood Corp., 6 318 F. Supp. 1116 (S.D.N.Y. 1970) .............................................................................................6 7 Grain Processing Corp. v. Am. Maize-Prods., 185 F.3d 1341 (1999) ...................................................................................................................1 8 Hendrix v. Evenflo Company, Inc., 9 255 F.R.D. 568 (N.D. Fla. 2009)................................................................................................20 10 Johnson Elec. N. Am., Inc. v. Mabuchi Motor Am., Corp., 103 F. Supp. 2d 268 (S.D.N.Y. 2000) ........................................................................................14 11 Jones v. U.S., 12 933 F. Supp. 894 (N.D. Cal. 1996) ............................................................................................14 13 Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572 (Fed. Cir. 1996) ......................................................................................................4 14 Major League Baseball Props., Inc. v. Calvino, Inc., 15 542 F.3d 290 (2d Cir. 2008) .......................................................................................................24 16 Mirror Worlds, LLC v. Apple, Inc., 784 F. Supp. 2d 703 (E.D. Tex. 2011) .....................................................................................4, 5 17 Monolithic Power Sys., Inc. v. O2 Micro Int'l Ltd., 18 476 F. Supp. 2d 1143 (N.D. Cal. 2007) .......................................................................................1 19 Nike, Inc. v. Walmart Stores, Inc., 138 F.3d 1437 (Fed. Cir. 1998) ....................................................................................................8 20 Nimely v. City of New York, 21 414 F.3d 381 (2d Cir. 2005) .......................................................................................................17 22 OPS2, LLC v. County of Clark, 2012 WL 424856 (D. Nev. 2012) ....................................................................................8, 19, 25 23 Oracle Am. Inc. v. Google, Inc., 24 798 F. Supp. 2d 1111 (N.D. Cal. 2012) ...................................................................................5, 6 25 Oracle Am. Inc. v. Google, Inc., 2012 WL 44485 (N.D. Cal. Jan. 9, 2012) ....................................................................................7 26 Oracle America, Inc. v. Google Inc., 27 2012 WL 850705 (N.D. Cal. March 13, 2012) ..........................................................................11 28
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1 Radio Steel & Mfg. Co. v. MTD Prods., Inc., 788 F.2d 1554 (Fed. Cir. 1986) ....................................................................................................6 2 Reeves v. Commonwealth Edison Co., 3 2008 WL 239030 (N.D. Ill. 2008) ..............................................................................................16 4 Rambus Inc. v. Infineon Techs. Ag, 318 F.3d 1081 (Fed. Cir. 2003) ..................................................................................................23 5 ResQNet.com, Inc. v. Lansa, Inc., 6 594 F.3d 860 (Fed. Cir. 2010) ......................................................................................................6 7 Richardson v. Stanley Works, Inc., 597 F.3d 1288 (Fed. Cir. 2010) ..................................................................................................18 8 Rogers v. Raymark Indus., Inc., 9 922 F.2d 1426 (9th Cir. 1991) ..........................................................................................8, 20, 21 10 Rust Environment & Infrastructure, Inc. v. Teunissen, 131 F.3d 1210 (7th Cir. 1997) ....................................................................................................22 11 Textron Inc. By & Through Homelite Div. v. Barber-Colman Co., 12 903 F. Supp. 1570 (W.D.N.C. 1995)..........................................................................................17 13 Toys R Us, Inc. v. Canarsie Kiddie Shop, Inc., 559 F. Supp. 1189 (E.D.N.Y. 1983) .....................................................................................11, 22 14 TrafFix Devices, Inc. v. Marketing Displays, Inc., 15 532 U.S. 23 (2001) .....................................................................................................................18 16 U.S. v. 87.98 Acres of Land More or Less in the Cty of Merced, 530 F.3d 899 (9th Cir. 2008) ......................................................................................................17 17 U.S. v. Benson, 18 941 F.2d 598 (7th Cir. 1991) ......................................................................................................17 19 U.S. v. Chang, 207 F.3d 1169 (9th Cir. 2000) ....................................................................................................17 20 U.S. v. Johnson, 21 54 F.3d 1150 (4th Cir. 1995) ......................................................................................................17 22 Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292 (Fed. Cir. 2011) ............................................................................................4, 6, 8 23 United States v. Alisal Water Corp., 24 431 F.3d 643 (9th Cir. 2005) ......................................................................................................21 25 United States v. Frazier, 387 F.3d 1244 (11th Cir. 2004) ..................................................................................................21 26 Universal City Studios, Inc. v. Nintendo Co., Ltd., 27 746 F.2d 112 (2d Cir. 1984) .................................................................................................12, 22 28
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1 Water Tech. Corp. v. Calco Ltd., 850 F.2d 660 (Fed. Cir. 1988) ......................................................................................................3 2 ZF Meritor LLC v. Eaton Corp., 3 646 F. Supp. 2d 663 (D. Del. 2009) ...........................................................................................14 4 Statutes 5 15 U.S.C. 1114 ................................................................................................................................9 6 15 U.S.C. 1125(a) ............................................................................................................................9 7 35 U.S.C. 287 ..................................................................................................................................8 8 Fed. R. Evid. 104 ................................................................................................................................1 9 Fed. R. Evid. 702 ....................................................................................................1, 8, 19, 21, 22, 24 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
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1 2 I. 3

MEMORANDUM OF POINTS AND AUTHORITIES INTRODUCTION Apples damages expert, Terry L. Musika, writes in his report that Apple has built a

4 considerable and at times a cult-like following to all things Apple. That cult-like following 5 apparently includes several experts who are appearing on Apples behalf in this case, and may 6 explain why they have cast aside established scientific methods and governing legal principles in 7 favor of slavish adoration of their client and platitudes about its alleged magical and revolutionary 8 products, issues that are of no relevance to the claims and defenses at issue. 9 II. 10 11 12 To show entitlement to lost profits, a patentee must reconstruct the market to show, 13 hypothetically, likely outcomes with infringement factored out of the economic picture. 14 Crystal Semiconductor Corp. v. Tritech Microelecs. Intl, Inc., 246 F.3d 1336, 1355 (Fed. Cir. 15 2001) (quoting Grain Processing Corp. v. Am. Maize-Prods., 185 F.3d 1341, 1350 (1999)). Such 16 market reconstruction, though hypothetical, requires sound economic proof of the nature of the 17 market. Id. The hypothetical market must account for how consumers would react to products 18 that have a dissimilar price or significantly different characteristics. Id. at 1356; see also BIC 19 Leisure Prods., Inc. v. Windsurfing Int'l, Inc., 1 F.3d 1214, 1219 (Fed. Cir. 1993). In Monolithic 20 Power Sys., Inc. v. O2 Micro Intl Ltd., 476 F. Supp. 2d 1143, 1155-56 (N.D. Cal. 2007), this 21 Court ruled that a patent-damages expert must account for supply and demand and make 22 allowances for the impact that a change in price would have on demand, or else be excluded. 23 24 It is not reasonable to assume that Samsungs customers would 25 26 The party offering challenged expert testimony has the burden of establishing 27 admissibility. U.S. v. 87.98 Acres of Land More or Less in the Cty of Merced, 530 F.3d 899, 904 (9th Cir. 2008). 28
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THE COURT SHOULD EXCLUDE THE OPINIONS OF TERRY L. MUSIKA1 A. Mr. Musikas Lost Profits Analysis Should Be Excluded 1. Mr. Musikas lost profits figures should be excluded because he ignores essential factors in the smartphone market

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1 2 3 4 BIC Leisure, 1 F.3d at 1218 (finding clear error in admitting expert testimony that did not account 5 for the price elasticity of demand where patentees products sold for 60-80% above the price of the 6 infringers). 7 8 9 10 Because many of Samsungs actual users

11 have chosen Android, any sound consideration of alleged lost profits would have to measure those 12 customers willingness to switch to Apples iOS rather than substitute a non-accused Android 13 device from Samsung or another manufacturer. 14 15 16 17 18 19 To recover lost profits, a patent owner must prove a causal relation between the 20 infringement and its loss of profits. BIC Leisure, 1 F.3d at 1218. The burden rests on the 21 patentee to show a reasonable probability that but for the infringing activity, the patentee would 22 have made the infringers sales. Water Tech. Corp. v. Calco Ltd., 850 F.2d 660, 671 (Fed. Cir. 23 1988). Mr. Musika fails to meet the but-for test for lost profits because he doesnt 24 25 26 27 28
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2.

Mr. Musikas lost profits analysis is not tied to the intellectual property rights at issue in this case.

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1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
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Mr. Musikas lost profits analysis is fatally flawed because

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1 2 3 4 B. It should be excluded under Daubert. Mr. Musikas Reasonable Royalty Analysis Should Be Excluded

A reasonable royalty is determined from the hypothetical results of hypothetical

5 negotiations between the patentee and infringer (both hypothetically willing) at the time 6 infringement began. Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1579 (Fed. Cir. 1996). 7 8 9 10 11 12 But, according to the Federal Circuit, the patentee ... must in every case give evidence tending to 13 separate or apportion the defendants profits and the patentees damages between the patented 14 feature and the unpatented features. Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1318 15 (Fed. Cir. 2011) (citing Garretson v. Clark, 111 U.S. 120, 121 (1884)). Apple knows well that 16 Mr. Musikas methodology is improper under Uniloc, having prevailed on this very issue before. 17 See Mirror Worlds, LLC v. Apple, Inc., 784 F. Supp. 2d 703, 726 27 (E.D. Tex. 2011) (granting 18 Apples JMOL to vacate a jurys damages award because of the patentees failure to apportion as 19 required by Uniloc). 20 21 22 23 24 25 26 27 28
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1.

Mr. Musikas income approach is improper

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1 2 3 4 5 6 7 8 This Court recently excluded That is absurd.

9 expert opinion for just such a refusal to accept the hypothetical restriction to a license limited to 10 only the actual claims in suit on the purported basis of an alleged real-world preference to 11 license[] on a portfolio basis. Oracle Am. Inc. v. Google, Inc., 798 F. Supp.2d 1111, 1115 12 (N.D. Cal. 2012). 13 14 Apple itself vacated a jury verdict in

15 the Mirror Worlds case for the same prejudicial mistake, and it should not be permitted to pursue 16 this approach here. 17 18 19 20 21 22 23 24 25 26 27 28
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2.

Mr. Musika's cost approach is improper

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1 2 3 A patentee may not base its reasonable royalty analysis on the alleged infringers profits.

4 Radio Steel & Mfg. Co. v. MTD Prods., Inc., 788 F.2d 1554, 1557 (Fed. Cir. 1986) (The 5 determination of a reasonably royalty, however, is based not on the infringers profit, but on the 6 royalty to which a willing licensor and a willing licensee would have agreed at the time the 7 infringement began.). Moreover, the Federal Circuit has made clear that a reasonable royalty 8 may only be based on the technology at issue, not the entire value of the accused products. 9 ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860, 869 (Fed. Cir. 2010) (To be admissible, expert 10 testimony opining on a reasonable royalty rate must carefully tie proof of damages to the claimed 11 invention's footprint in the market place.); Uniloc, 632 F.3d at 1317 (same); accord Oracle Am., 12 798 F. Supp.2d at 1115-16.4 13 14 attempt 15 16 17 18 19 20 21 22 23 24 Assumptions built into this thought experiment may not be discarded in favor of the 25 26 27 28
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Mr. Musikas cost approach to calculating a reasonable royalty is simply a disguised

It should be excluded. 3. properly relies on the assumption that

The lone exception is the Entire Market Value rule,

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1 parties subjective preferences and history. Oracle, 798 F. Supp. 2d at 1115-16 (excluding 2 expert opinion for fighting the hypothetical). 3 4 5 It should be excluded. Mr. Musika also improperly seeks to rely on a license that he admits is not a comparable

6 license to any of the Apple Intellectual Property In Suit to establish a floor for a reasonable 7 royalty. (Martin Decl. Ex. 3 at 60-61). Damages experts cannot use noncomparable licenses, 8 with little relationship to the claimed invention or parties-in-suit, as a basis for calculating 9 reasonable royalties. Oracle Am. Inc. v. Google, Inc., 2012 WL 44485 at *8, (N.D. Cal. Jan. 9, 10 2012). 11 None of Mr. Musikas approaches to calculating a reasonable royalty rate approximate the

12 results of a hypothetical negotiation between willing parties over just the technology at issue. 13 Under no conceivable light are these opinions helpful to the jury. They must all be excluded 14 under Daubert. 15 16 C. Mr. Musikas Critique of

In addressing the disgorgement of an alleged infringers profits, Samsung is entitled to

17 deduct its costs related to accused products. 18 19 20 21 22 23 All of these opinions should be excluded because

24 they are improper attorney argument and a rebuttal report, which was not provided for in the 25 Courts schedule nor the Courts April 23, 2012 order. 26 27 [amounting to Samsungs total revenue] due to Samsungs failure to carry its burden of

28 proof. (Id. at 10-11.) These opinions are simply closing argument masquerading as an expert
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1 opinion. They do not assist the trier of fact and fail to satisfy the requirements of Rule 702. 2 OPS2, LLC v. County of Clark, 2012 WL 424856, at *5 (D. Nev. 2012); Rogers v. Raymark 3 Indus., Inc., 922 F.2d 1426, 1431 (9th Cir. 1991). 4 5 6 7 8 9 10 11 That is improper and highly prejudicial. The Court in its See

12 role as gatekeeper should exclude Mr. Musika

13 Uniloc, 632 F.3d at 1320 (This case provides a good example of the danger of admitting 14 consideration of the entire market value The disclosure that a company has made $19 billion 15 dollars in revenue from an infringing product cannot help but skew the damages horizon for the 16 jury). 17 18 19 20 35 U.S.C. 287; Am. Med. Sys., Inc. v. Med. Engg Corp., 6 F.3d 1523, 1537 (Fed. Cir. 21 1993); Nike, Inc. v. Walmart Stores, Inc., 138 F.3d 1437, 1446 (Fed. Cir. 1998) (marking applies 22 to design patents); Coach Inc. v. Asia Pac. Trading Co., 676 F. Supp. 2d 914, 924 (C.D. Cal. 23 24
5

D.

ve an Opinion on Damages,

25 26 27 28
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1 2009) (where plaintiff sues under both 15 U.S.C. 1114 and 1125(a), the plain language of 2 1117(a) and 1111 indicates that a plaintiff must meet 1111s actual notice requirement to 3 recover profits or damages). 4 5 6 7 8 9 10 11 12 13 Under these circumstances, if the Court permits Mr. Musika to testify to

14 alleged damages, he should be required 15 16 17 18 19 (See 20 Dkt. No. 419). The Court already rejected those speculative opinions, emphasizing that Apple 21 failed to show the necessary nexus between alleged harm to Apple and Samsungs allegedly 22 infringing conduct. (Dkt. No. 449 at 33-34). The Federal Circuit affirmed the necessity of a 23 showing of nexus and Apples failure to do so, over Apples objections. Apple v Samsung Elecs., 24 No. 12-1105, Op. Cit. at 16 (Fed. Cir. May 14, 2012) 25 26 27 28
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E.

The Court Should Again Reject Mr. Musikas Speculation Regarding Alleged Irreparable Harm For Failure to Show Any Nexus

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1 III. 2 3 4 5

THE COURT SHOULD EXCLUDE THE OPINIONS OF JOHN HAUSER John Hauser is an expert hired by Apple

The purpose of the Hauser report is purportedly to support Mr. Musikas

6 damages analysis. Dr. Hausers opinion should be excluded because (1) he failed to retain and 7 produce raw data on which he relied; and (2) he used utterly unreliable methodology. 8 9 10 11 12 13 14 15 16 When Samsung requested all the notes, videos or other materials that were used in or

17 recorded these 20 interviews, it was told there were none not a single note, email, script, or 18 recording of even one of these 20 interviews, the foundation of Dr. Hausers surveys.6 19 Martin Decl. Exs. 13 14.) 20 21 22 23 24 25 26 27 28
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(See

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1 2 3 4 Toys R Us, Inc. v. Canarsie Kiddie Shop, Inc., 559 F. Supp. 1189, 1205 (E.D.N.Y. 1983) 5 (excluding evidence based on survey where expert conceded that he had no knowledge of what 6 the interviewers actually did in conducting the interviews and that he had no personal knowledge 7 of whether they, in fact, followed the instructions they were given at the briefing session). Dr. 8 Hausers opinions are wholly unreliable because the basis 9 10 What is more, in Oracle America, Inc. v. Google Inc., 2012 WL 850705 (N.D. Cal. March See

11 13, 2012), Judge Alsup recently struck survey results as unreliable because the expert did not test 12 features identified as important during pre-interviews. Id. at *11 (focus-group research 13 discovered 39 features that real-world consumers said they would have considered when 14 purchasing a smartphone [but] instead of testing 39 features in his conjoint analysis, [the] Dr. [ ] 15 selected seven features to be studied.) Here, not only does Dr. Hauser admit 16 17 18 Indeed, one cannot but think that Dr. Hauser

19 deliberately instructed the surveyors not to keep notes to avoid the same criticism in this case as in 20 Oracle: that he did not test the all the features the consumers identified as important. 21 22 23 24
7

Dr. Hauser employed the same strange methodology with respect to the pre-tests.

25 26 27 28
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inappropriately focused consumers on artificially-selected features. Oracle, 2012 WL 850705, at *10.

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Apple again insists that no notes or other records exist concerning respondents In other words, Dr.

2 answers, other than a one page summary. (Martin Decl. Ex. 11 at 44.)

3 Hauser once again asks the Court and Samsung to believe that not a single note, e-mail, or memo 4 was generated concerning the alleged 20 pre-tests. 5 6 This too is independent grounds to See Universal City Studios, Inc. v. (Id. at 43; Exs. 16-17.)

7 exclude Dr. Hausers surveys and his corresponding opinions.

8 Nintendo Co., Ltd., 746 F.2d 112, 118 (2d Cir. 1984) ([T]he survey utilized an improper universe 9 in that it was conducted among individuals who had already purchased or leased Donkey Kong 10 machines rather than those who were contemplating a purchase or lease.); Dreyfus Fund Inc. v. 11 Royal Bank of Canada, 525 F. Supp. 1108, 1116 (S.D.N.Y. 1981). 12 13 14 The table below illustrates this flaw with respect to the '607 patent:
Disparity No connection between the touchscreen reliably doing what you intend and the 607 patent. in the Hauser Survey Whether the smartphone accurately carries out what you intend to do when you touch the screen.9 Whether the tablet is capable of reliably performing a full range of multi-touch operations.10 For a combination without the patented feature, the animation presented to respondents displays Intended contact not recognized multiple times, and the Apples Technical Expert

15 Patent Description of the Patented Feature Description of the Patented Feature by 16 607 17 18 19 20 21 22 23 24

Samsung does not accept the descriptions provided by Apples experts, but has used them here to show that Dr. Hauser's survey descriptions do not even comport with Apples 25 descriptions of the patented features. A complete illustration of the disparities between Apples 26 technical experts and the descriptions in Dr. Hauser's surveys are included in Exhibit 18 to the Martin Declaration. 9 27
10

28
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1 Patent Description of the Patented Feature Description of the Patented Feature by 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

Disparity

in the Hauser Survey accompanying narration states This touchscreen is a single touch screen with very limited multitouch capability. It reliably tracks single-finger operations like scrolling. Some gestures involving two fingers, like pinch-to-zoom, will work, but with poor response. As a result, the touch screen will not always carry out the two-finger gestures you intend.11

Apples Technical Expert

In short, the tested features were not the patented features. Therefore the resulting survey data has no relevance to the features and issues involved in this case. Indeed, both Dr. Hauser and

another of Apples experts, Dr. Rossi, admit that if the patented features are not accurately described, the surveys based on those descriptions are irrelevant to the question of damages. (Martin Decl. Ex. 12 at 229:2-15; Ex. 19, Rossi Rebuttal Report at 3.) In short, Dr. Hauser (a) designed his surveys based on interviews and pre-tests, but either deliberately kept no records of them or is withholding them. Because of this, neither the Court

nor Samsung can replicate or assess the reliability of Dr. Hausers surveys; (b) surveyed the wrong population; and (c) tested features that bear virtually no relationship to even Apples experts descriptions of the patents at issue in this case. His opinions, which are based entirely on the reliability of his surveys, should be excluded. IV. THE COURT SHOULD EXCLUDE THE TESTIMONY OF HENRY URBACH Mr. Urbach unquestionably is a loyal devotee of Apple, its designers, its products,12 and its retail

11

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1 stores, 2 3 4 5 6 7 Whether or not this is true, it is not relevant to any issue in this case, which In flowery terms, he explains

8 requires Apple to prove the validity of its trademark and trade dress rights, and Samsungs 9 infringement. 10 11 12 13 14 15 Nor do Mr. Urbachs opinions satisfy the reliability requirement for admissibility. Rather

16 than base his opinions on any scientific methodology, 17 18 Before being retained by Apple in this matter, Mr. Urbach wrote an essay on the design of Apples retail stores, entitled Gardens of Earthly Delights, describing them as [q]uasi-religious in 20 almost every respect, . . . chapels for the Information Age. (Martin Decl. Ex. 22 at APLNDCY0000151235.) Mr. Urbach, who refers to former CEO Steve Jobs as St. Eve (Id. at APLNDC21 Y0000151235), believes that 22 19 23 24 25 26 27 28
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See Daubert v. Merrill Dow Pharms., Inc., 509 U.S. 579, 591-92 (1993); ZF Meritor LLC v. Eaton Corp., 646 F. Supp. 2d 663, 665-66, (D. Del. 2009) (holding that an experts opinion must fit the facts of the case); Johnson Elec. N. Am., Inc. v. Mabuchi Motor Am., Corp., 103 F. Supp. 2d 268, 280 (S.D.N.Y. 2000) ([T]he testimony must not only be reliable, but must be relevant in that it fits the facts of the case.). Expert testimony which does not relate to any issue in the case is not relevant, and ergo, non-helpful. Daubert, 509 U.S. at 591. The Court should "exclude scientific expert testimony under the second prong of the Daubert standard unless it is convinced that it speaks clearly and directly to an issue in dispute in the case. Jones v. U.S., 933 F. Supp. 894, 900 (N.D. Cal. 1996) (quoting Daubert, 43 F.3d at 1321 n. 17).

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1 2 3 4 5 6 Mr. Urbachs methodology not only is unscientific and novel, but is based solely on his say

7 so, rather than any objectively verifiable data. 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

[N]othing in either

15

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1 Daubert or the Federal Rules of Evidence requires a district court to admit opinion evidence that is 2 connected to existing data only by the ipse dixit of the expert." DSU Med. Corp. v. JMS Co., Ltd., 3 296 F. Supp. 2d 1140, 1147 (N.D. Cal. 2003) (quoting General Elec. Co. v. Joiner, 522 U.S. 136, 4 147, 118 S. Ct. 512, 139 L. Ed. 2d 508 (1997)).18 5 Mr. Urbach also failed to consider other reasons for the findings he offers. For example,

6 he offers an opinion on museum worthiness of Apple products in comparison to others, but admits 7 he did not even investigate the extent to which other products appear in museum collections. He 8 opines that 9 10 ).

11 When an expert ignores key facts or data contradicting his conclusions, the resulting opinion is 12 inadmissible because it is unreliable. See, e.g., In re Bextra and Celebrex Mktg. Sales Practices 13 and Prod. Liab. Litig., 524 F. Supp. 2d 1166, 1181, 1184 (N.D. Cal. 2007) (finding an expert 14 opinion unreliable and inadmissible because the expert ignored evidence contradicting her 15 conclusions); Reeves v. Commonwealth Edison Co., 2008 WL 239030, at *5-7 (N.D. Ill. 2008) 16 (precluding experts opinions because he ignored key facts). 17 Finally, Mr. Urbach lacks the qualifications to serve as an expert on Apples design

18 excellence or its public appreciation.19 19 20 21 22 23 24 This kind of uncorroborated evidence cannot substitute for rigorous survey or formal interviews, which Mr. Urbach acknowledged he did not conduct, 26 because they were not consistent with his approach. 19 A witness may be qualified as an expert by knowledge, skill, experience, training, or 27 education. Fed. R. Evid. 702. The party offering the experts opinions has the burden to prove such qualifications. Gable v. Nat'l Broadcasting Co., 727 F. Supp. 2d 815, 833 (C.D. Cal. 2010) 28 (footnote continued) 25
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1 2 3 4 5 His devotion to Apple and ability to wax eloquently about its products and retail

6 stores does not make up for his lack of relevant qualifications.20 7 V. 8 9 10 11 12 13 14 15 16 The THE COURT SHOULD EXCLUDE THE TESTIMONY OF SUSAN KARE Susan Kare describes herself as

17 problem with her opinions on substantial similarity, likelihood of confusion, and possible 18 19 (citing U.S. v. 87.98 Acres of Land More or Less in the County of Merced, 530 F.3d 899, 904-05 (9th Cir. 2008) and Baker v. Urban Outfitters, Inc., 254 F. Supp. 2d 346, 353 (S.D.N.Y. 2003)). 20 20 Moreover, even if Mr. Urbach could qualify as an expert in something, not every opinion offered by an expert is an expert opinion. Rule 702 does not afford the expert unlimited license 21 to testify ... without first relating that testimony to some specialized knowledge on the expert's 22 part..... Put another way, an experts opinion must be an expert opinion (that is, an opinion informed by the witness expertise) rather than simply an opinion broached by a purported 23 expert.'" Textron Inc. By & Through Homelite Div. v. Barber-Colman Co., 903 F. Supp. 1570, 1575 (W.D.N.C. 1995) (citing U.S. v. Johnson, 54 F.3d 1150, 1157 (4th Cir. 1995) and U.S. v. 24 Benson, 941 F.2d 598, 604 (7th Cir. 1991)). Mr. Urbach has admitted he has no experience in product design, or marketing, and therefore any opinions he could offer would be beyond his area 25 of expertise. See U.S. v. Chang, 207 F.3d 1169, 1172-1173 (9th Cir. 2000) (district court did not 26 abuse its discretion in precluding expert from testifying regarding matters beyond scope of expertise); Nimely v. City of New York, 414 F.3d 381, 399, n.13 (2d Cir. 2005) (holding that 27 "because a witness qualifies as an expert with respect to certain matters or areas of knowledge, it by no means follows that he or she is qualified to express expert opinions as to other fields"). 28
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1 copying, however, is that they are completely divorced from the law that governs these issues. 2 3 4 principles nor cite to any legal authorities. 5 With regard to substantial similarity, the law requires that any functional aspects of the but her report does not describe any legal

6 design are removed from the analysis, because design patents only protect ornamental aspects of 7 the design. Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1293-94 (Fed. Cir. 2010). A trade 8 dress can be aesthetically functional where the aesthetics of the trade dress itself drives 9 consumer demand for the product. TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 10 23, 33 (2001). 11 12 13 14 which also is required before evaluating substantial Nor did she consider

15 similarity. See Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678 (Fed. Cir. 2008) 16 (whether designs are substantially the same is determined from the perspective of a hypothetical 17 ordinary observer, who is assumed to have familiarity with all relevant prior art and who 18 considers the accused design giving such attention as a purchaser usually gives). 19 Ms. Kare did not consider (or have the expertise to evaluate) how the ordinary observer

20 would perceive the Apple products or the Samsung accused products.21 21 22 23 An ordinary observer is a person who is either a purchase of, or sufficiently interested in, 24 the item that displays the patented designs and who has the capability of making a reasonably discerning decision when observing the accused items design whether the accused item is 25 substantially the same as the item claimed in the design patent. Arminak & Assocs., Inc. v. Saint 26 Gobain Calmar, Inc., 501 F.3d 1314, 1323 (Fed. Cir. 2007); Dreamworks Production Group, Inc. v. SKG Studio, 142 F.3d 1127, 1129 (9th Cir. 1998) ("The test for likelihood of confusion is 27 whether a 'reasonably prudent consumer' in the marketplace is likely to be confused as to the origin of the good . . . ."). 28
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21

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1 2 In

3 short, Ms. Kare did not consider the factors required for a design patent infringement analysis. 4 Ms. Kares likelihood of confusion opinion is equally untethered to the governing legal

5 principles. While similarity in appearance is but one of eight factors that must be considered in 6 evaluating likelihood of confusion in the trademark and trade dress context, AMF v. Sleekcraft 7 Boats, 599 F.2d 341, 349 (9th Cir. 1979), 8 9 She acknowledged, for example, that she was not asked about

10 sophistication of the purchasers. (Id. at 183:15-18) 11 12 13 14 OPS2, 2012 WL 424856, at *5 (excluding expert Finally, Ms. Kares opinion that

15 testimony containing recitations of facts of the case). 16 17 18 VI. 19 THE COURT SHOULD EXCLUDE THE TESTIMONY OF RUSSELL WINER Russell Winer is a marketing expert whose opinions read like a closing argument Apple

20 would make to the jury on the issues of trade dress infringement and dilution. Rather than apply 21 any particular marketing expertise or the results of his own surveys or other work product, 22 Professor Winer simply acts as a summary witness, reciting argumentative conclusions based upon 23 surveys conducted by other experts designated by Apple, press stories, and various Apple internal 24 documents. Based on these materials, Professor Winer 25 26 27 This sort of closing argument masquerading as an expert opinion does not assist the

28 trier of fact and fails to satisfy the requirements of Rule 702. OPS2, supra 2012 WL 424856, at
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1 *5 (excluding opinion testimony that offers nothing more than what defense counsel could argue 2 during closing arguments). As the Ninth Circuit has held, a party is not entitled to have an 3 expert testify solely because that witness can eloquently summarize the evidence. That job 4 belongs to counsel. Rogers, supra, 922 F.2d at 1431. The jury is perfectly capable of 5 considering the facts presented at trial, and counsels arguments regarding how those facts relate 6 to the relevant legal factors for likelihood of confusion or dilution, and making up its own mind 7 about whether Apple has proven its claims. Professor Winers opinions are therefore not helpful 8 and should be excluded. Hendrix v. Evenflo Company, Inc., 255 F.R.D. 568,579 (N.D. Fla. 2009) 9 (expert should not be permitted to testify about lay matters which a jury is capable of 10 understanding and deciding without the experts help). Otherwise, there is a risk the trier of fact 11 will give the expert testimony undue weight on account of its special status. Id.22 12 Beyond his summary testimony on infringement and dilution, Professor Winer offers

13 completely irrelevant 14 15 16 Apart from being entirely

17 duplicative of the opinions of another expert designated by Apple, Sanjay Sood, these opinions are 18 not relevant to any issue in the case. The question on Apples trade dress claims is whether Apple 19 has valid trade dress rights based on the particular aspects it has claimed, and, if so, whether 20 Samsung has infringed or diluted that trade dress. Professor Winer acknowledges that 21 22 23 24 25 26 27 28
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22

Professor Winer lacks any specialized expertise to opine on

Case No. 11-cv-01846-LHK -20MOTION TO EXCLUDE OPINIONS OF CERTAIN OF APPLES EXPERTS

1 2 is simply not relevant to Apples trade dress claims, and will only confuse the jury. 3 Even if Professor Winers opinions otherwise satisfied the requirements of Rule 702 and

4 Daubert, and they do not, the Court should exclude his testimony under Federal Rule of Evidence 5 403, as any probative value it might have is substantially outweighed by the danger of unfair 6 prejudice, confusion of the issues, misleading the jury, or needless presentation of cumulative 7 evidence.23 Professor Winers opinions are cumulative of the opinions of other experts Apple has 8 designated, including 9 10 11 See United States v. Alisal Water Corp., 431 F.3d 643, 660 (9th Cir.

12 2005) (affirming exclusion of cumulative expert testimony). Moreover, because Professor Winer 13 simply summarizes other testimony, but with imprimatur of an expert, or otherwise offers opinions 14 on matters that are wholly irrelevant, his opinions are likely to confuse and mislead the jury, and 15 unfairly prejudice Samsung. They should be excluded under Rule 403.24 16 VII. 17 18 19 20 21 22 23 24 25 26 27 28
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THE COURT SHOULD EXCLUDE THE OPINIONS OF DR. SANJAY SOOD Dr. Sanjay Sood is an expert hired by Apple to opine that

It is particularly appropriate for the trial judge carefully to weigh the potential for confusion in the balance when expert testimony is proffered. Jurors may well assume that an expert, unlike an ordinary mortal, will offer an authoritative view on the issues addressed; if what an expert has to says is instead tangential to the real issues, the jury may follow the expert down the garden path and thus focus unduly on the experts issues to the detriment of the issues that are in fact controlling. Rogers, 922 F.2d at 1431. Simply put, expert testimony may be assigned talismanic significance in the eyes of lay jurors, and, therefore, the district courts must take care to weigh the value of such evidence against it potential to mislead or confuse. United States v. Frazier, 387 F.3d 1244, 1263 (11th Cir. 2004). 24 Samsung expressly seeks exclusion for each of the experts addressed in this motion under Rule 403, in addition to Rule 702, as in each case, even if relevant, any minimal relevance is substantially outweighed by the likelihood of jury confusion, and severe prejudice to Samsung.

23

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1 2 3 However, none of these opinions are

4 tied to the patents or trade dress at issue in this case or any of the accused products in this case. 5 As noted above in the discussion of the opinions of Mr. Urbach, expert opinions that are not tied 6 to the matters before the fact finder are not helpful to the jury and should be excluded. 7 Moreover, Dr. Sood bases opinions (1) and (3) on consumer surveys that he had

8 conducted. 9 10 11 12 13 That alone is sufficient reason to

14 exclude Dr. Soods opinions.25 Finally, Dr. Soods survey-based opinions must be excluded 15 16 17 VIII. THE COURT SHOULD EXCLUDE THE OPINIONS OF MICHAEL WALKER 18 Dr. Michael Walker is an expert hired by Apple to support its FRAND defense. Apple

19 relies on Dr. Walker, who has been involved at the ETSI standards body since 1988 and until 20 21 22 23 24 25 26 27 28
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Universal City Studios, Inc. v. Nintendo Co., Ltd., 746 F.2d 112, 118 (2d Cir. 1984) (affirming summary judgment despite contrary survey because the survey utilized an improper universe in that it was conducted among individuals who had already purchased or leased Donkey Kong machines rather than those who were contemplating a purchase or lease.) citing American Footwear Corp. v. General Footwear Co., 609 F.2d 655, 661 n. 4 (2d Cir. 1979); Dreyfus Fund Inc. v. Royal Bank of Canada, 525 F.Supp. 1108, 1116 (S.D.N.Y. 1981). 26 See, e.g., Rust Environment & Infrastructure, Inc. v. Teunissen, 131 F.3d 1210, 1218 (7th Cir. 1997) (affirming district court discounting evidence based on survey where survey did not require recording of verbatim responses); Toys R Us, Inc. v. Canarsie Kiddie Shop, Inc., 559 F. Supp. 1189, 1205 (E.D.N.Y. 1983) (excluding evidence based on survey where expert conceded that he had no knowledge of what the interviewers actually did in conducting the interviews and that he had no personal knowledge of whether they, in fact, followed the instructions they were given at the briefing session).

25

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1 recently served as the Chairman of its Board, to support its contention that Samsung failed to 2 timely disclose its allegedly essential patents in accordance with the requirements of the ETSI IPR 3 Policy. (Dkt. 381 at 183.) Although it is undisputed that Samsung did disclose applications 4 in the families of all the declared essential patents-in-suit to ETSI, Dr. Walker asserts 5 6 7 8 Because these opinions

9 are speculative and unsupported by any factual analysis, they should be excluded. 10 For Samsung to have been obligated to disclose the priority applications underlying the

11 declared essential patents-in-suit to ETSI before the alleged Freeze Date, Samsung must have b 12 13 An IPR within the meaning of the ETSI IPR Policy includes patents

14 and patent applications, but as Dr. Walker agreed, 15 16 17 18 19 20 21 22 23 24 Accordingly, for Dr. Walkers opinions to have any reliable basis at all, it was up to him to

25 show that each of the priority applications were not confidential and contained at least one claim 26 that should have led Samsung to conclude the IPR was essential or likely to become essential to an 27 ETSI standard, as well as Samsung's awareness of that fact. Cf. Rambus Inc. v. Infineon Techs. 28 Ag, 318 F.3d 1081, 1102-03 (Fed. Cir. 2003) (reversing the district courts denial JMOL where,
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1 under the SSOs Rules, a SSO member had an obligation to disclose IPR with claims that 2 objectively read on the standards under consideration). But Dr. Walker never even attempted to 3 do so, admitting during his deposition that he: 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
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Because Dr. Walkers opinions fail to meet the requirements of Rule 702(b), they should be excluded.28 See Major League Baseball Props., Inc. v. Calvino, Inc., 542 F. 3d 290, 311 (2d Cir. 2008); Fed. R. Ev. 702(b) (testimony of an expert must be based on sufficient facts or data).
27

Dr. Walkers testimony concerning his analysis of the 516 patent-in-suit is instructive:

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1 IX. 2

THE COURT SHOULD EXCLUDE THE LEGAL OPINION OF RICHARD L. DONALDSON Richard L. Donaldson is an attorney whose opinions are offered by Apple in support of its

3 FRAND defense. 4 5 6 7 8 CLRB Hanson Indus., LLC v. Google Inc., 2008 WL 2079200, at *3 (N.D. Cal. May 9 14, 2008) (Under California law, interpretation of the language of a contract is a question of law, 10 to be determined exclusively by the court). This is not a proper subject of expert testimony. 11 OPS2, 2012 WL 424856, at *4.29 12 DATED: May 17, 2012 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
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QUINN EMANUEL URQUHART & SULLIVAN, LLP By /s/ Victoria F. Maroulis Victoria F. Maroulis Attorneys for SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., and SAMSUNG TELECOMMUNICATIONS AMERICA, LLC

Dr. Walker also lacks the requisite expertise and experience for his opinions, admitting he: 1) has no knowledge of the timeliness of the IPR disclosures of any major ETSI member; 2) is unaware of any concerns ever having been expressed within ETSI concerning timeliness of IPR disclosures; 3) is unaware of ETSI ever having specified any consequences for failure to timely disclose an IPR; 4) is not aware of any data collected on this subject; 5) is not aware of anyone including Samsung ever having been accused of failing to timely disclose; and, 6) did not familiarize himself with any industry research studies analyzing the timeliness of patent disclosures as part of his preparation for this case. (Martin Decl. Ex. 30 at 271:24-272:2, 272:14275:9, 277:6-12, 313:13-314:18.) 29 Apple does not argue that the Agreement is ambiguous such that extrinsic evidence should be admitted to aid in interpreting the Agreement. However, even if Apple made such an argument, He could not offer any facts pertinent to interpreting the Agreement.

28

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