The ongoing patent battles between Apple and Samsung continue to pick up speed and show no signs of slowing down anytime soon. During the summer, Apple filed a motion for a preliminary injunction on certain of its patents and the district court ordered limited initial discovery for the topics raised by the preliminary injunction motion. The hearing on the motion is set for October 13, 2011.
As part of the discovery, Apple sought documents pertaining to the comparison of any Apple product or feature, the redesign of the Galaxy Tab following the release of the iPad 2, consumer surveys regarding the products at issue, marketing and consumer confusion. Apple also sought a deposition of Samsung pursuant to Fed.R.Civ.P. 30(b)(6) on the same topics as the documents requested. Samsung resisted discovery on certain of these issues and Apple moved to compel.
The court granted Apple’s motion in part. The court ordered Samsung to produce the custodial files for each of the Samsung designers of Samsung’s Galaxy S 4G and Infuse 4G, Droid Charge phones and Galaxy Tab 10.1, stating: “All means all: email, memoranda, whatever. Samsung put these documents at issue when . . . it boldly declared that ‘[a]lthough willful infringement, including deliberate copying, may be relevant to a preliminary injunction, Apple has offered no evidence of such copying or willful infringement.”
The court also ordered the production of survey documents from the custodial files of any individual with specific responsibility for surveying customers of Samsung’s Galaxy S 4G and Infuse 4G, Droid Charge phones and Galaxy Tab 10.1 table computer that reference the Apple products that embody one or more of the ornamental or utility features claimed in the patents. “What the market understands and feels about these products and the particular feature at issue might well factor in the presiding judge’s decision about the proposed injunction; documents aimed at this issue are clearly discoverable under the standards for discoverability set forth in Rule 26.”
The court also ordered that each party shall identify each individual whose files were produced and, if the documents were produced from a central source, then that source should be identified. The court ordered the parties to identify each individual who received a litigation hold notice, the date of the notice and provide a copy of the notice. The parties were also required to identify the search terms that were used as part of the collection and production of documents.
In a warning to both parties, the court ordered that these requirements would apply to future discovery in the case and that cooperation was needed in a case such as this, with complex discovery requirements. “These requirements also apply for any productions, hold notices, or search terms in the future. The court imposes these further requirements in light of the parties’ challenges to date in achieving the discovery ‘transparency’ discussed at this morning’s hearing. Whatever legitimate claims parties once had to protect this information as work product, complex cases with complex discovery requirements today require cooperation, not obfuscation.”
The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.