United States District Court, N.D. California, San Jose Division
ORDER RE DAUBERT MOTIONS RE: DKT. NOS. 3593, 3594,
H. KOH UNITED STATES DISTRICT JUDGE
moves to exclude the testimony of Apple experts Alan Ball,
Susan Kare, and Julie Davis. ECF Nos. 3593, 3595. Apple, in
turn, moves to exclude portions of Samsung damages expert
Michael Wagner's opinions. ECF No. 3594.
patent case has entered its seventh year. Apple filed this
case on April 15, 2011. ECF No. 1. After a thirteen day jury
trial from July 30, 2012 to August 24, 2012 (the “2012
trial”) and approximately three full days of
deliberation, the first jury reached a verdict. See
ECF No. 1931. The jury found that Samsung had infringed the
D'677, D'087, and D'305 patents, Apple's
utility patents, and Apple's trade dress. Id.
The jury awarded approximately $1.049 billion to Apple on its
infringement and trade dress claims. Id. After
determining that the jury's damages calculations relied
on improper notice dates, the Court struck approximately $410
million from the 2012 jury award and ordered a limited new
trial on utility and design patent damages relating only to
the sales of those products (the “2013 trial”).
See ECF No. 2271 at 26; 2316 at 2 (case management
order reinstating portion of original jury award).
Court specified at the 2013 trial that “[t]he
Court's prior rulings on the parties'
Daubert motions, motions in limine, discovery
disputes, and evidentiary objections [from the original trial
would] remain in effect as law of the case. The parties
[could] not relitigate these issues.” ECF No. 2316 at
2. Thus, the Court limited the evidence and witnesses at the
2013 trial to the evidence that was admissible at the 2012
trial. See ECF No. 2369. On November 21, 2013, after
six days of trial and two days of deliberation, a jury
awarded Apple approximately $290 million in damages for
design and utility patent infringement. See ECF No.
appeal, the Federal Circuit on May 18, 2015 upheld the jury
verdict as to Apple's design patent claims and utility
patent claims but vacated the jury verdict as to Apple's
trade dress claims. Apple Inc. v. Samsung Elecs.
Co., 786 F.3d 983, 994-96 (Fed. Cir. 2015)
(“Federal Circuit Opinion”). The Federal
Circuit held that Apple's claimed trade dress was not
protectable under Ninth Circuit law and vacated the jury
verdict as to Apple's trade dress claims. Id.
The Federal Circuit “remand[ed] for immediate entry of
final judgment on all damages awards not predicated on
Apple's trade dress claims and for any further
proceedings necessitated by our decision to vacate the
jury's verdicts on the unregistered and registered trade
dress claims.” Id. at 1005.
September 18, 2015, on remand, this Court entered partial
final judgment in the amount of $548, 176, 477 as to the
damages for products that were found to infringe only
Apple's design and utility patents (and not Apple's
trade dress). ECF No. 3290. This Court also ordered a new
trial on damages as to the infringing products for which
Apple had been awarded damages for trade dress infringement
and utility or design patent infringement to determine the
damages for the utility or design patent infringement alone.
ECF No. 3289. The trial would begin on March 28, 2016.
March 21, 2016, the U.S. Supreme Court granted certiorari in
this case. Samsung Elecs. Co. v. Apple Inc., 136
S.Ct. 1453 (2016) (granting certiorari). The question for
which certiorari was granted was: “Where a design
patent is applied to only a component of a product, should an
award of infringer's profits be limited to those profits
attributable to the component?” Id. As a
result, on March 22, 2016, this Court vacated the March 28,
2016 trial and stayed the case. ECF No. 3472.
December 6, 2016, the U.S. Supreme Court held that
determining profits under § 289 involves two steps:
“First, identify the ‘article of manufacture'
to which the infringed design has been applied. Second,
calculate the infringer's total profit made on that
article of manufacture.” Samsung Elecs. Co. v.
Apple Inc., 137 S.Ct. 429, 434 (2016)
(“Supreme Court Decision”). On the first
step, the U.S. Supreme Court held that the “article of
manufacture” for which total profits are awarded under
§ 289 was not necessarily limited to the product that is
sold to consumers, but may be either “a product sold to
a consumer [or] a component of that product.”
Id. However, the U.S. Supreme Court
“decline[d] to lay out a test for the first step of the
§ 289 damages inquiry in the absence of adequate
briefing by the parties.” Id. at 436.
remand, the Federal Circuit remanded the case to this Court
and held that “the trial court should consider the
parties' arguments in light of the trial record and
determine what additional proceedings, if any, are needed. If
the court determines that a new damages trial is necessary,
it will have the opportunity to set forth a test for
identifying the relevant article of manufacture for purpose
of § 289, and to apply that test to this case.”
Apple Inc. v. Samsung Elecs. Co., 678 Fed.Appx.
1012, 1014 (Fed. Cir. 2017) (per curiam) (unpublished).
hearing, this Court on October 22, 2017 ordered a new damages
trial and set forth a four-factor test for determining the
relevant article of manufacture for the purpose of §
289. Apple Inc. v. Samsung Elecs. Co., No.
11-CV-1846-LHK, 2017 WL 4776443 (N.D. Cal. Oct. 22, 2017)
(“October 22, 2017 Order”). At a case management
conference on November 30, 2017, the Court discussed with the
parties whether to reopen limited discovery as a result of
the new article of manufacture test. See ECF No.
3546. That same day, the Court issued a case management order
in which the Court ruled that the parties' damages
experts were to remain the same as in the previous trial but
that “the parties may each call two expert witnesses to
identify the relevant article of manufacture.” ECF No.
February 1, 2018, Apple filed a motion to strike the report
of Samsung's marketing expert, Dr. Reibstein, as
violating the Court's November 30, 2017 case management
order. See ECF No. 3573. After expedited briefing,
the Court granted Apple's motion to strike Dr.
Reibstein's report on February 8, 2018. ECF No. 3585.
parties then filed the instant Daubert motions. The
Court held a two-hour hearing on the Daubert motions
on March 29, 2018. See ECF No. 3631.
Admission of Expert Testimony Under Federal Rule of Evidence
702 and Daubert
Rule of Evidence 702 allows admission of “scientific,
technical, or other specialized knowledge” by a
qualified expert if it will “help the trier of fact to
understand the evidence or to determine a fact in
issue.” Fed.R.Evid. 702. Expert testimony is admissible
pursuant to Rule 702 if it is both relevant and reliable.
Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579,
589 (1993). A district court's decision to admit expert
testimony under Daubert in a patent case follows the
law of the regional circuit. Micro Chem., Inc. v.
Lextron, Inc., 317 F.3d 1387, 1390-91 (Fed. Cir. 2003).
An expert witness may provide opinion testimony if: (1) the
testimony is based upon sufficient facts or data; (2) the
testimony is the product of reliable principles and methods;
and (3) the expert has reliably applied the principles and
methods to the facts of the case. Fed.R.Evid. 702;
Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d
1356, 1360 (Fed. Cir. 2008).
considering expert testimony offered pursuant to Rule 702,
the trial court acts as a “gatekeeper” by
“making a preliminary determination that the
expert's testimony is reliable.” Elsayed
Mukhtar v. Cal. State Univ., Hayward, 299 F.3d 1053,
1063 (9th Cir. 2002); see Kumho Tire Co. v.
Carmichael, 526 U.S. 137, 147-48 (1999); Gen. Elec.
Co. v. Joiner, 522 U.S. 136, 142 (1997);
Daubert, 509 U.S. at 589-90. In Daubert,
the United States Supreme Court identified “four
factors that may bear on the analysis”: (1) whether a
theory or technique can be and has been tested; (2) whether
the theory or technique has been subjected to peer review and
publication; (3) the known or potential rate of error; and
(4) whether the theory is generally accepted in the
scientific community. Murray v. S. Route Maritime
SA, 870 F.3d 915, 922 (9th Cir. 2017) (citing
Daubert, 509 U.S. at 593-94). However, the Ninth
Circuit has explained that “the reliability analysis
remains a malleable one tied to the facts of each case”
and that the “Daubert factors are exemplary,
not constraining.” Id. The Ninth Circuit has
also stated that “[i]t is important to remember that
the factors are not ‘equally applicable (or applicable
at all) in every case, '” and that
“[a]pplicability ‘depend[s] on the nature of the
issue, the expert's particular expertise, and the subject
of his testimony.'” Id. (first quoting
Daubert v. Merrell Dow Pharm., Inc., 43 F.3d 1311,
1317 (9th Cir. 1995), then quoting Kumho Tire, 526
U.S. at 150) (third alteration in original).
of the fluid and contextual nature of the inquiry, district
courts are vested with ‘broad latitude' to
‘decid[e] how to test an expert's
reliability' and ‘whether or not [an]
expert's relevant testimony is reliable.'”
Id. (quoting Kumho Tire, 526 U.S. at
152-53) (alterations and emphasis in original). Thus, the
Court “may permissibly choose not to examine factors
that are not ‘reasonable measures of reliability in a
particular case.'” Id. (quoting Kumho
Tire, 526 U.S. at 153); see also Id. at 924
(“District courts have broad range to structure the
reliability inquiry and may choose not to comment on factors
that would not inform the analysis.”).
the inquiry into admissibility of expert opinion is a
“flexible one, ” where “[s]haky but
admissible evidence is to be attacked by cross examination,
contrary evidence, and attention to the burden of proof, not
exclusion.” Primiano v. Cook, 598 F.3d 558,
564 (9th Cir. 2010) (citing Daubert, 509 U.S. at
594, 596). “Under Daubert, the district judge
is ‘a gatekeeper, not a fact finder.' When an
expert meets the threshold established by Rule 702 as
explained in Daubert, the expert may testify and the
jury decides how much weight to give that testimony.”
Id. (quoting United States v.
Sandoval-Mendoza, 472 F.3d 645, 654 (9th Cir. 2006)).
seeks to exclude part or all of the opinions of each of
Apple's expert witnesses:
designer Alan Ball, icon and user interface graphic designer
Dr. Susan Kare, ECF No. 3595-2, and damages expert Julie
Davis, ECF No. 3593-2.
Court previously granted Apple's motion to strike the
expert report of Samsung marketing expert Dr. David
Reibstein. ECF No. 3585. Apple now seeks to exclude portions
of the opinion of Samsung's damages expert, Michael
Wagner. ECF Nos. 3594-3, 3594-4.
Court first addresses Samsung's Daubert motions.
Then the Court explains its reasons for striking Dr.
Reibstein's report and addresses Apple's
Samsung's Motion to Exclude Expert Opinions of Alan Ball
and Susan Kare
does not challenge the credentials or relative expertise of
Mr. Ball or Dr. Kare. Mr. Ball is an industrial designer with
more than 30 years of experience designing industrial,
medical, and consumer products. ECF No. 3595-4 ¶ 11.
Specifically, Mr. Ball has experience designing personal
electronic devices, including CB radios, mobile phones, and
tablet computers. Id. ¶¶ 15-23. Mr. Ball
founded and is the president of his own product design
consulting firm, and he is a named inventor on 57 U.S. design
patents. Id. ¶ 11. Mr. Ball holds a Bachelor of
Industrial Design degree from Syracuse University.
Id. ¶ 12.
Kare is an icon and user interface graphic designer with more
than 35 years of experience in the field of icon design and
user interface graphic design. ECF No. 3595-7 at ¶¶
3, 7. Throughout her career, Dr. Kare has designed thousands
of icons for user interfaces and has created graphical user
interfaces for a range of software programs and products.
Id. ¶¶ 9, 11. Dr. Kare founded and runs
her own design studio, and she also serves as a creative
director at Pinterest. Id. ¶ 3. In 2001, Dr.
Kare received the Chrysler Design Award, which recognizes
“the achievements of individuals who have consistently
championed seminal works of architecture and design, and
significantly influenced modern American culture.”
Id. ¶ 12. In April 2018, Dr. Kare will receive
the AIGA Medal in recognition of “exceptional
achievements, services or other contributions to the field of
design and visual communication.” Id. ¶
15. Dr. Kare holds a Bachelor of Arts degree from Mount
Holyoke College, a Master of Arts degree from New York
University, and a Doctor of Philosophy degree in fine arts
from New York University. Id. ¶¶ 4-5.
of challenging Mr. Ball's or Dr. Kare's expertise in
their relative fields, Samsung argues that Mr. Ball's and
Dr. Kare's opinions are unreliable because they misstate
and misapply the applicable law and consider information that
is legally irrelevant to the article of manufacture inquiry.
ECF No. 3595-2 at 2-3. Specifically, Samsung contends that
Mr. Ball and Dr. Kare (1) distort each of the four factors of
the article of manufacture inquiry; (2) offer opinions on
Apple's copying allegations, which Samsung argues is not
relevant to the article of manufacture inquiry; (3) apply the
“designer of ordinary skill in the art” and
“ordinary observer” standards from the validity
and infringement context, which Samsung contends do not apply
to the article of manufacture inquiry; (4) include testimony
about Apple's design process, marketing philosophy,
application of designs to the iPhone, and the iPhone's
“look and feel, ” which Samsung argues is
irrelevant; and (5) opine on consumer behavior and consumer
perceptions, which are not within Mr. Ball's or Dr.
Kare's fields of expertise. Id. In addition,
Samsung asserts that the Court should exclude testimony about
willful infringement, the Court's prior jury
instructions, and the wording of prior jury forms because
such information is irrelevant and unduly prejudicial.
Id. at 3. The Court addresses these arguments in
doing so, however, the Court notes that the Ninth Circuit
recently advised that “the best practice may be for
district courts to at least reference the four
Daubert factors, ” even where those factors
are not relevant for assessing the reliability of the expert
opinions at issue in the case. Murray, 870 F.3d at
924. Accordingly, the Court finds that the factors mentioned
in Daubert are not relevant for evaluating Mr.
Ball's and Dr. Kare's opinions, which are not
scientific or technical in nature and which are based on
their experience in their respective fields of industrial
design and icon and user interface graphic design. Rather,
the Court finds that the issues that Samsung raises, such as
whether the experts misstate or misapply the law, are
relevant in the circumstances of this case to determining the
reliability of the experts' opinions. See Kumho
Tire, 526 U.S. at 153 (“[W]hether
Daubert's specific factors are, or are not,
reasonable measures of reliability in a particular case is a
matter that the law grants the trial judge broad latitude to
Application of the Four-Factor Article of Manufacture
October 22, 2017 Order, the Court identified a four-factor
test for identifying the relevant article of manufacture for
the purpose of § 289. 2017 WL 4776443 at *19. The four
factors are (1) “[t]he scope of the design claimed in
the plaintiff's patent, including the drawing and written
description”; (2) “[t]he relative prominence of
the design within the product as a whole; (3)
“[w]hether the design is conceptually distinct from the
product as a whole”; and (4) “[t]he physical
relationship between the patented design and the rest of the
product, including whether the design pertains to a component
that a user or seller can physically separate from the
product as a whole, and whether the design is embodied in a
component that is manufactured separately from the rest of
the product, or if the component can be sold
separately.” Id. Samsung attacks Mr.
Ball's and Dr. Kare's interpretation or application
of each of the factors, which the Court addresses in turn.
Scope of the Claimed Design
argues that the first factor, the scope of the claimed
design, is a question of law for the Court. ECF No. 3595-2 at
1. Apple responds that Apple's experts do not offer
opinions on the scope of the claimed design. ECF No. 3605-3
at 1. Instead, Apple asserts that its experts
“considered the Court's claim constructions . . .
and expressly acknowledged and considered that the broken
lines in the figures represent
Id. Indeed, Mr. Ball quotes the language of the
patents and the Court's claim constructions-he does not
offer alternative constructions. See ECF No. 3595-4
¶¶ 79, 93, 102, 110. Moreover, in describing the
patents' figures, Mr. Ball accurately states what is
claimed and unclaimed subject matter. For example, with
respect to Figures 1-8 of the D'087 patent, Mr. Ball
states that “the top surface, with surrounding bezel,
is shown in black lines to indicate that it is being claimed.
The back and portions of the sides are shown in broken lines
to indicate that it is unclaimed. The rectangular screen and
the capsule-shaped speaker aperture on the front surface is
[sic] unclaimed.” Id. ¶ 81.
Similarly, Dr. Kare quotes the D'305 patent and the
Court's claim construction and does not offer an
alternative construction. See ECF No. 3595-7
¶¶ 63-64. As such, the Court finds that Mr. Ball
and Dr. Kare have accurately stated the scope of the patents.
The Court therefore DENIES Samsung's motion to exclude
the opinions of Mr. Ball and Dr. Kare to the extent
Samsung's motion is based on the assertion that Mr. Ball
and Dr. Kare have invaded the province of the Court in their
application of the first factor.
also objects to how Mr. Ball and Dr. Kare apply the first
factor. ECF No. 3595-2 at 1. Specifically, Samsung argues
that “Apple's experts improperly disregard the
scope of the claimed designs . . . and instead base
their opinions on disclaimed subject matter shown in
broken lines and other matter that has no bearing on the
designs' scope. Id. Apple replies that
“Samsung simply disagrees with the conclusions
Apple's experts draw from this evidence-that the patents
show and describe the claimed
designs being applied
to electronic devices.” ECF No. 3605-3 at
1. Apple points out that the Court stated in its October 22,
2017 Order that the relevant article of manufacture may
extend beyond the scope of the claimed design. Id.
Samsung replies that the question Apple's experts are
answering-whether the patents show the claimed designs being
applied to electronic devices-is distinct from the first
factor, which focuses on the scope of the claimed designs.
ECF No. 3618.
October 22, 2017 Order, the Court “conclude[d] that the
factfinder must consider the scope of the claimed design to
determine to which article of manufacture the design was
applied, ” but the Court noted that “the scope of
the claimed design is not alone dispositive.” 2017 WL
4776443 at *12. The Court then quoted the United States'
brief before the U.S. Supreme Court, which explained that
“the scope of the design claimed in the plaintiff's
patent . . . provides insight into which portions of the
underlying product the design is intended to cover, and how
the design relates to the product as a whole.”
Id. (quoting Brief for United States as Amicus
Curiae Supporting Neither Party (“U.S. Br.”) at
27, Samsung Elecs. Co., Ltd. v. Apple Inc., 137
S.Ct. 429 (2016) (No. 15-777), 2016 WL 3194218, at *27). The
“product as a whole” necessarily comprises the
claimed and unclaimed subject matter. Thus, by stating that
the scope of the claimed design provides insight into
“how the design relates to the product as a whole,
” the Court's October 22, 2017 Order contemplated
that evaluation of the first factor could include discussion
of the relationship between the claimed design and the
unclaimed subject matter described in the patent and depicted
in the patent's figures. Moreover, interpreting the first
factor-the only factor focused on the patent itself, as
opposed to the defendant's infringing product-to preclude
discussion of the relationship between the claimed design and
unclaimed subject matter would be inconsistent with the other
three factors, all of which consider the relationship between
the design and the rest of the defendant's infringing
product. Accordingly, the Court finds that Mr. Ball and Dr.
Kare have not misapplied the law insofar as they consider
unclaimed subject matter in their analysis of the first
factor. The Court finds that Mr. Ball's and Dr.
Kare's opinions as to the first factor are relevant,
reliable, and will be helpful to the jury. To the extent
Samsung believes that Mr. Ball and Dr. Kare draw the wrong
inferences from the first factor, Samsung may
“discredit [Mr. Ball's and Dr. Kare's opinions]
. . . through competing evidence and incisive
cross-examination.” Murray, 870 F.3d at 925
(citing Primiano, 598 F.3d at 564). Samsung's
motion to exclude the testimony of Mr. Ball and Dr. Kare as
to the first factor is DENIED.
Relative Prominence of the Design
next asserts that Mr. Ball's and Dr. Kare's opinions
are unreliable because they erroneously interpret the second
factor, “[t]he relative prominence of the design within
the product as a whole.” ECF No. 3595-2 at 1.
Specifically, Samsung relies on the United States' brief
before the U.S. Supreme Court for the proposition that
“a design's relative prominence requires
consideration of other product features not affected
by the design.” Id. Samsung argues that
Apple's experts read the word “relative” out
of the factor by failing to compare the prominence of the
design to other features not affected by the design.
Id. at 1-2. Apple responds that Mr. Ball and Dr.
Kare correctly recite the wording of the factor. ECF No.
3605-3 at 1. Apple also argues that the United States'
brief “is not the law, ” even though this Court
adopted the United States' proposed test. Id.
Samsung replies that “Apple's experts concededly do
not address the sole issue under Factor 2: i.e.,
whether the patented design is relatively prominent in the
accused product when considered together with ‘other
components unaffected by the design.'” ECF No. 3618
at 1 (quoting U.S. Br., 2016 WL 3194218 at *28).
is correct that the United States' brief is not the law.
The Court's October 22, 2017 Order setting forth the
article of manufacture test did not require that the second
factor's relative prominence inquiry necessarily include
a comparison to “other components unaffected by the
design.” Indeed, in some scenarios, a design may so
dominate the product that comparison to other features of the
product would add little value to the inquiry. Moreover, to
the extent that the United States' brief is a helpful
reference, Samsung focuses on one half of the United
States' explanation of the second factor while ignoring
the second half. Specifically, Samsung focuses on the United
States' statement that “[i]f the design is a minor
component of the product, like a latch on a refrigerator, or
if the product has many other components unaffected by the
design, that fact suggests that the ‘article'
should be the component embodying the design.”
See U.S. Br., 2016 WL 3194218 at *28. The very next
sentence, which Samsung fails to mention, says:
“Conversely, if the design is a significant attribute
of the entire product, affecting the appearance of the
product as a whole, that fact might suggest that the
‘article' should be the product.”
United States' brief thus identifies two alternative
approaches for assessing the relative prominence of the
design within the product as a whole. In the reasonable
royalty context, the Federal Circuit has recognized that
there may be more than one reliable method to estimate a
reasonable royalty in any given case. Summit 6, LLC v.
Samsung Elecs. Co., 802 F.3d 1283, 1296 (Fed. Cir.
2015). “Because each case presents unique circumstances
and facts, it is common for parties to choose different,
reliable approaches in a single case and, when they do, the
relative strengths and weaknesses of each approach may be
exposed at trial or attacked during cross-examination.”
Id. “That one approach may better account for
one aspect of a royalty estimation does not make other
approaches inadmissible.” Id. So too here.
Apple's experts' opinions as to the second factor are
not inadmissible simply because they take a different
approach to analyzing the factor than Samsung's expert
Ball's opinion applies the second approach described by
the United States, in that Mr. Ball bases his opinion on the
design's relative prominence on the extent to which the
design affects the appearance of the Samsung phones as a
whole. Specifically, with respect to the
D'677 patent, for example, Mr. Ball states:
The D'677 design-including the overall shape of the front
face of the phone, including the relative proportions,
straight edges and rounded corners, the glass front face
extending from edge-to-edge of the device, and the black
front face-is very prominent in these twelve infringing
Samsung phones, and contributes greatly to their overall
appearance. These are primary design features that are
noticed quickly when looking at the products and contribute
significantly to the look of the infringing phones as a
whole. The claimed design influences the shape and size of
other portions of the infringing phones, for example by
defining the general shape of the device. The claimed design
also serves to differentiate the infringing phones from other
Having examined the twelve Samsung phones that the jury found
to infringe the D'677 patent, it is my opinion that the
D'677 design is extremely prominent within the infringing
products as a whole, and this factor supports the conclusion
that the article of manufacture is the entire infringing
ECF No. 3595-4 ¶¶ 192-93 (citation omitted);
see also Id. ¶¶ 186-87 (stating similar
conclusion for D'087 patent).
the United States' brief, Samsung cites no other
authority and provides no other reasoning to support its
assertion that the failure to explicitly compare the
design's prominence to the prominence of other components
unaffected by the design constitutes legal error or renders
an expert's opinion so unreliable as to merit exclusion
under Rule 702 and Daubert. To the contrary, the
Court finds that Mr. Ball has accurately stated the second
factor and that his application of the factor is adequately
grounded in fact and his experience as an industrial
designer. The Court further finds that Mr. Ball's
analysis of the second factor is relevant and would be
helpful to the jury. To the extent that Samsung disagrees
with the conclusion that Mr. Ball draws from the second
factor, Samsung can challenge Mr. Ball's conclusion
through contrary evidence and cross-examination. See
Primiano, 598 F.3d at 568 (“Given that the judge
is a gatekeeper, not a fact finder, the gate could not be
closed to this relevant opinion offered with sufficient
foundation by one qualified to give it.”) (internal
quotation marks omitted). Samsung's motion to exclude Mr.
Ball's testimony as to the second factor is DENIED.
respect to Dr. Kare's opinion, Samsung is incorrect to
suggest that Dr. Kare does not compare the prominence of the
D'305 design with any other features. In paragraph 92 of
her report, Dr. Kare states:
While the exterior design of the infringing Samsung phones is
also a prominent feature of the infringing products, the
design of the graphical user interface in the infringing
Samsung phones is a comparably prominent feature. At the time
when the iPhone was still a relatively new product, and when
Samsung began to introduce its infringing phones in 2010 and
2011, the unique design for a graphical user interface
claimed by the D'305 patent, and appropriated by the
infringing Samsung phones, was a striking feature of those
products. The patented GUI design, together with the exterior
design also patented by Apple and infringed by Samsung, was a
prominent aspect of the overall design of the infringing
Samsung phones. The overall effect of the hardware and
graphical user interface makes a distinctive whole-both as
patented by Apple and infringed by Samsung.
ECF No 3595-7 ¶ 92. The Court finds that Dr. Kare's
opinion as to the second factor is relevant, reliable, and
would be helpful to the jury. To the extent that Samsung
believes Dr. Kare's analysis of the second factor was not
comprehensive enough, Samsung may demonstrate that point
through cross-examination and competing evidence.
Samsung's motion to exclude Dr. Kare's testimony as
to the second factor is DENIED.
Whether the Design is Conceptually Distinct
respect to the third factor, “[w]hether the design is
conceptually distinct from the product as a whole, ”
Samsung again relies on the United States' brief before
the U.S. Supreme Court, this time for the proposition that
“[i]f the product contains other components that embody
conceptually distinct innovations, it may be appropriate to
conclude that a component is the relevant article.” ECF
No. 3595-2 at 2; U.S. Br., 2016 WL 3194218 at *29. Samsung
faults Apple's experts for failing to consider whether
Samsung's phones contain other components embodying
conceptually distinct innovations. Id. Apple
responds that its experts did not ignore parts of the phones,
but rather “opined that the patented designs (which are
visual in nature) are conceptually integral to the phones as
a whole.” ECF No. 3605-3 at 1-2. Samsung replies that
Apple's experts in fact considered whether the designs
are separable from the phones as a whole, when in fact the
third factor asks whether the designs are conceptually
distinct from the phones as a whole. ECF No. 3618 at 1.
again, Samsung asserts legal error based not on any
court's opinions or rulings, but on the United
States' brief. The United States' brief is not the
law. To the extent that the United States' brief is a
helpful reference, the Court notes that the United States
observed that if the product “contains other
components that embody conceptually distinct innovations,
it may be appropriate to conclude that a component
is the relevant article.” U.S. Br., 2016 WL 3194218 at
*29 (emphasis added). This statement explains one inference
that could be drawn from the presence of other components
that embody conceptually distinct innovations. It does not
purport to be the only way in which conceptual distinctness
can be assessed.
the United States offered one example of this factor's
application when it identified a book binding and a literary
work as conceptually distinct components of a product.
Id. at *28-29. Mr. Ball offers several examples of
other products that, in his view and based on his experience
as an industrial designer, contain designs that are
conceptually distinct from the product as a whole.
See ECF No. 3595-4 ¶¶ 217-19. Mr. Ball
then compared the relationship between the D'087 and
D'677 designs and the Samsung phones with those products
that he identified as containing conceptual distinctions and
concluded that the D'087 and D'677 designs are not
conceptually distinct from the phones as a whole.
Id. ¶ 220. Mr. Ball also considered evidence of
how Samsung's designers conceived of their designs. The
Court cannot say that Mr. Ball's approach is flawed as a
matter of law. As with the previous two factors, the more
appropriate route is for Samsung to attempt to discredit Mr.
Ball's opinion through cross-examination and contrary
evidence. Samsung's motion to exclude Mr. Ball's
testimony as to the third factor is DENIED.
part, Dr. Kare opines that the D'305 design is not
conceptually distinct from the phone as a whole based on the
graphical user interface's central importance to the
phone's operation. For example, Dr. Kare states that
“[t]he D'305 design corresponds to portions of the
product a user must manipulate to use the phone as a whole,
” and that “[t]he user's primary interaction
when operating the device is through the graphical user
interface.” ECF No. 3595-7 ¶ 107. Dr. Kare also
reasons that the “graphical user interface has no value
apart from the infringing phones as a whole, ” and
that, similarly, “without the graphical user interface
one could not operate the product or access any of its other
features.” Id. ¶ 108. The Court finds
that Dr. Kare has accurately stated the third factor and that
her application of the factor is adequately grounded in fact
and her experience as an icon and graphical user interface
designer. The Court further finds that Dr. Kare's
analysis of the third factor is relevant and would be helpful
to the jury. To the extent that Samsung disagrees with the
conclusion that Dr. Kare draws from the third factor or her
reasoning, Samsung can challenge Dr. Kare's conclusion
through contrary evidence and cross-examination. See
Primiano, 598 F.3d at 568 (“Given that the judge
is a gatekeeper, not a fact finder, the gate could not be
closed to this relevant opinion offered with sufficient
foundation by one qualified to give it.”) (internal
quotation marks omitted). Samsung's motion to exclude Dr.
Kare's testimony as to the third factor is DENIED.
Physical Relationship Between Design and Rest of
argues that Apple's experts misapply the fourth factor,
the physical relationship between the design and the rest of
the product, because Apple's experts focus too much on
how Samsung's phones are sold and are used by consumers
and not enough on how they are manufactured or can
be sold. ECF No. 3595-2 at 2-3. Samsung asserts that by
focusing on how the products are sold to consumers,
Apple's experts applied the very rule that the U.S.
Supreme Court rejected in this case. Id. at 3. Apple
responds that Mr. Ball discussed how the phones are
manufactured and how the glass front face is sold separately
for repairs, while Dr. Kare “considered whether the GUI
design or the components Samsung identified are physically
separable from the phones.” ECF No. 3605-3 at 2. Apple
also points out that the U.S. Supreme Court did not reject
consideration of how the phones are sold, and this Court has
ruled that how the product is sold can be considered by the
factfinder in determining the relevant article of
manufacture. Id. Samsung replies that Apple's
experts explicitly refused to “address the issues
identified by the Court, ” including whether “the
design pertains to a component that a user or seller can
physically separate from the product as a whole, ” and
whether “the design is embodied in a component that is
manufactured separately from the rest of the product, or if
the component can be sold separately.” ECF No. 3618 at
2; October 22, 2017 Order, 2017 WL 4776443 at *19.
to Samsung's characterization, Mr. Ball did not apply the
very rule that the U.S. Supreme Court rejected in this case.
As the Court explained in its October 22, 2017 Order, the
U.S. Supreme Court rejected a per se rule that the relevant
article of manufacture must always be the end product sold to
the consumer. 2017 WL 4776443 at *11. Neither the U.S.
Supreme Court nor this Court has held that how the product is
sold is irrelevant to the article of manufacture inquiry.
See Id. Moreover, again contrary to Samsung's
characterization, Mr. Ball at least mentions each of the
component-based considerations that this Court identified as
part of the fourth factor. See Carnegie Mellon Univ. v.
Marvell Tech. Grp., Ltd., 807 F.3d 1283, 1303 (Fed. Cir.
2015) (holding that district court did not err in admitting
expert's testimony in part because the expert “in
fact took reasoned account of the evidence that [the
appellant] says she ‘disregarded'”). For
example, Mr. Ball observes that “the D'677 design
does not pertain to a component that a user can physically
separate from the product as a whole during normal use of the
product.” ECF No. 3595-4 ¶ 241. Mr. Ball cites
evidence for this opinion, including the facts that Samsung
did not design the phone with the expectation that users
would remove the front face and that Samsung's own
employee needed assistance from a third-party company with
“specialty equipment” to successfully remove the
phones' front faces for the purposes of this litigation.
Id. ¶¶ 242-45. Mr. Ball acknowledges that
“Samsung took components and sub-assemblies” that
“themselves may have been manufactured elsewhere or by
other companies” to manufacture the phones as a whole.
Id. ¶ 251. Mr. Ball also acknowledges that
Samsung has sold glass front faces and bezels separately from
the phones “for the purpose of repair.”
Id. ¶¶ 260, 261(a). Samsung's
disagreement with the relative weight that Mr. Ball afforded
these facts is not a ground for excluding Mr. Ball's
opinion. Thus, Samsung's motion to exclude Mr. Ball's
opinion as to the fourth factor is DENIED.
Court also finds that Dr. Kare's opinion as to the fourth
factor is admissible. Dr. Kare's central point as to the
fourth factor appears to be that the D'305 design is a
design for a graphical user interface, and the graphical user
interface cannot exist in only components of a phone, as
opposed to an entire phone. See ECF No. 3595-7
¶¶ 112-13. Dr. Kare opines that the graphical user
interface “does not exist apart from, and cannot be
separated from, the infringing Samsung phones” as
complete products. Id. ¶ 112. Dr. Kare reasons
that the display screen, which Samsung contends is the
relevant article, cannot embody the D'305 design when the
screen is separated from the rest of the phone. ECF No.
3595-8 ¶ 50. The Court finds that the wording of the
fourth factor does not preclude Dr. Kare from opining that
the patented design is embodied in the graphical user
interface, which cannot exist apart from the phones as a
whole. Dr. Kare has sufficiently tied her opinion to the
facts of the case. Accordingly, Samsung's motion to
preclude Dr. Kare from offering her opinion as to the fourth
factor is DENIED.
Testimony Related to Apple's Copying Allegations
argues that the Court should exclude Apple's experts'
references to Apple's copying allegations. ECF No. 3595-2
at 3. Specifically, Samsung asserts that “[c]opying is
not mentioned in, or relevant to, any of the four
factors.” Id. Samsung points out that the
Court ruled in its October 22, 2017 Order that “the
infringer's intent in copying the patented design”
is not relevant to § 289. Id. Samsung also
states that the Court previously ruled that “an expert
cannot opine about Samsung's purported intent, ”
which Samsung argues “applies fully to Mr. Ball and Dr.
Kare.” Id. Apple responds that the Court did
not rule that copying is irrelevant, but only that
Samsung's reasons for copying should not be
considered. ECF No. 3605-3 at 2. Apple adds that the Court
“observed that copying evidence may be relevant to
factor 2 and other [article of manufacture] factors.”
Id. (citing ECF ...