As the Apple v. Samsung case approached trial, Apple filed a motion to enforce prior court orders regarding the exclusion of certain Sony Designs. The motion filed by Apple presented a key issue for the court: whether documents regarding the influence of the “Sony style” on Apple’s design and development of the iPhone would be admissible at trial
This issue arose after the Magistrate Judge excluded portions of Samsung’s expert reports directed toward invalidity of Apple’s design patents at issue in the case because Samsung had not timely disclosed these theories during discovery. As explained by the district court, “[s]pecifically, Judge Grewal determined that Samsung had not timely amended its answers to contention interrogatories. Therefore, Judge Grewal struck portions of the Sherman Report that argued that Apple’s designs were anticipated or obvious in light of prior Sony designs. Specifically, Judge Grewal struck the following: Evidence that Apple produced in-house drawings and mock-ups based on the Sony design style. The Sherman Report referenced “Sony style CAD drawings.” “Apple’s Sony Style Design Mock-Ups,” Sony Ericsson W950,” and the “Sony Ericsson K800i” in support of Samsung’s contention that the D’677 Patent is invalid and that Apple’s design engineers were inspired by Sony.” Samsung appealed the ruling of the Magistrate Judge to the district court, and the district court subsequently denied Samsung’s motion.
After Samsung disclosed its opening presentation slides that showed the Sony Style evidence that was previously stricken by the Magistrate Judge, Apple objected and the district court issued an order sustaining Apple’s objections. Samsung nonetheless continued to assert that it should be permitted to introduce the Sony Style evidence during the trial: “Samsung argues that Judge Grewal’s Order only applies to the invalidity theory in the Sherman Report. Samsung argues that Judge Grewal’s Order does not bar all underlying evidence of Sony style design. Specifically, Samsung argues that the Sony style designs referenced above are relevant and admissible to: (1) rebut Apple’s creation theory that the iPhone was “revolutionary”; (2) to rebut allegations of copying; (3) to establish that the industry at large was moving toward the basic design concepts; (4) to prove design functionality; and (5) to rebut allegations of willfulness.”
The district court disagreed, first finding that these theories were stricken by the Magistrate Judge: “Samsung’s argument that the Sony style designs rebut Apple’s creation theory, and Samsung’s argument that the Sony style designs establish that the industry at large was moving toward Apple’s claimed design concepts seem to be alternative ways of articulating a theory of invalidity based on obviousness or anticipation. These theories were struck by Judge Grewal. Indeed, the portions of the Sherman Report struck by Judge Grewal present the argument that Apple’s design was influenced by Sony Designs. Thus, Samsung cannot use the Sony style designs for the same purpose that was excluded by Judge Grewal. It would render Judge Grewal’s Order meaningless to allow Samsung’s invalidity theory to proceed under a different name.”
The district court also found that the Sony Style design evidence was not strong evidence to support Samsung’s argument: “The Court is also unpersuaded by Samsung’s other arguments as to why the evidence of the Sony Style designs are relevant and admissible. First, evidence of the “Sony style CAD drawings,” and “Apple’s Sony Style Design Mock-ups,” were designs created by Apple’s in-house designers and are not Sony products. Thus, the evidence of the Sony style designs made in house at Apple are not strong evidence to support Samsung’s argument that the iPhone was derived from Sony.”
In addition, the district court found that jury confusion would be high if the jury was permitted to consider this evidence to rebut claims of copying or willfulness while simultaneously being told not to consider the evidence for issues of obviousness or anticipation. “Evidence that Apple was inspired by “Sony style design” does not strongly rebut Apple’s claims that Samsung copied its designs, or strongly rebut Apple’s claims of willfulness. In contrast, the potential for jury confusion with this evidence is high. The jury will be told that these designs show that Apple was inspired by Sony to create the iPhone design, but that they may not consider this evidence to find Apple’s design patents invalid. Or, the jury may be tempted to use the evidence of the Sony designs for the purpose of finding Apple’s design patents invalid, even though such evidence has been found to be inadmissible for that purpose. In light of these factors, pursuant to Federal Rule of Evidence 403, the Court finds that the probative value of the “Sony style design” evidence is substantially outweighed by a danger of unfair prejudice, confusing the issues, or misleading the jury.”
Accordingly, the district court excluded the evidence from trial.
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.