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Apple Inc. v. Samsung Electronics Co. Ltd.

United States District Court, N.D. California, San Jose Division

April 2, 2018

APPLE INC., Plaintiff,
v.
SAMSUNG ELECTRONICS CO. LTD., et al., Defendants.

          ORDER RE DAUBERT MOTIONS RE: DKT. NOS. 3593, 3594, 3595

          LUCY H. KOH UNITED STATES DISTRICT JUDGE

         Samsung 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.

         I. BACKGROUND

         This 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).

         The 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. 2822.

         On 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.

         On 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.

         On 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.

         On 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.

         After 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).

         After a 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. 3542.

         On 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.

         The 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.

         II. LEGAL STANDARDS

         A. Admission of Expert Testimony Under Federal Rule of Evidence 702 and Daubert

         Federal 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).

         When 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).

         “Because 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.”).

         Moreover, 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)).

         III. DISCUSSION

         Samsung seeks to exclude part or all of the opinions of each of Apple's expert witnesses:

         industrial 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.

         The 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.

         The Court first addresses Samsung's Daubert motions. Then the Court explains its reasons for striking Dr. Reibstein's report and addresses Apple's Daubert motion.

         A. Samsung's Motion to Exclude Expert Opinions of Alan Ball and Susan Kare

         Samsung 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.

         Dr. 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.

         Instead 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 turn.

         Before 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 determine.”).

         1. Application of the Four-Factor Article of Manufacture Test

         In its 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.

         a. Scope of the Claimed Design

         Samsung 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 unclaimed portions.” 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.

         Samsung 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.

         In its 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.

         b. Relative Prominence of the Design

         Samsung 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).

         Apple 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.” Id.

         The 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 does.

         Mr. 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.[1] 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 phone designs.
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 phone.

ECF No. 3595-4 ¶¶ 192-93 (citation omitted); see also Id. ¶¶ 186-87 (stating similar conclusion for D'087 patent).

         Besides 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.

         With 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.

         c. Whether the Design is Conceptually Distinct

         With 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.

         Once 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.

         Moreover, 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.

         For her 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.

         d. Physical Relationship Between Design and Rest of Product

         Samsung 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.

         Contrary 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.

         The 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.

         2. Testimony Related to Apple's Copying Allegations

         Samsung 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 ...


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