Date post: | 04-Jun-2018 |
Category: |
Documents |
Upload: | michael-courtenay |
View: | 222 times |
Download: | 0 times |
of 129
8/13/2019 Apple vs Samsung 5 December 2013
1/129
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
APPLES ADMIN.MOT.TO FILE UNDER SEAL MOT.FOR ATTORNEYSFEESCASENO. 11-cv-01846-LHK (PSG)
sf-3361324
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN JOSE DIVISION
APPLE INC., a California corporation,
Plaintiff,
v.
SAMSUNG ELECTRONICS CO., LTD., aKorean corporation; SAMSUNGELECTRONICS AMERICA, INC., a NewYork corporation; and SAMSUNGTELECOMMUNICATIONS AMERICA,LLC, a Delaware limited liability company,
Defendants.
Case No. 11-cv-01846-LHK (PSG)
APPLES ADMINISTRATIVE MOTION TO
FILE UNDER SEAL APPLES MOTION
FOR ATTORNEYS FEES
HAROLD J. MCELHINNY (CA SBN 66781)[email protected] A. JACOBS (CA SBN 111664)[email protected] KREVANS (CA SBN 116421)[email protected]
ERIK J. OLSON (CA SBN 175815)[email protected] & FOERSTER LLP425 Market StreetSan Francisco, California 94105-2482Telephone: (415) 268-7000Facsimile: (415) 268-7522
Attorneys for Plaintiff andCounterclaim-Defendant APPLE INC.
WILLIAM F. [email protected] CUTLER PICKERINGHALE AND DORR LLP60 State StreetBoston, MA 02109
Telephone: (617) 526-6000Facsimile: (617) 526-5000
MARK D. SELWYN (SBN 244180)[email protected] CUTLER PICKERINGHALE AND DORR LLP950 Page Mill RoadPalo Alto, California 94304Telephone: (650) 858-6000Facsimile: (650) 858-6100
Case5:11-cv-01846-LHK Document2851 Filed12/05/13 Page1 of 3
8/13/2019 Apple vs Samsung 5 December 2013
2/129
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
APPLES ADMIN.MOT.TO FILE UNDER SEAL MOT.FOR ATTORNEYSFEESCASENO.11-CV-01846-LHK 1
sf-3361324
In accordance with Civil Local Rules 7-11 and 79-5, Apple Inc. (Apple) submits this
motion for an order to seal its Motion for Attorneys Fees and Exhibit A to the Declaration of
Michael A. Jacobs in Support of Apples Motion for Attorneys Fees (Jacobs Declaration).
Exhibit A to the Jacobs Declaration contains information that is confidential and
competitively sensitive as set out in the Declaration of Ruth Borenstein in Support of Apples
Administrative Motion to File Under Seal (Borenstein Declaration), filed herewith. As detailed
in the Borenstein Declaration, Exhibit A contains extensive competitively sensitive and
confidential information regarding the negotiated billing rates of Apples counsel in this action,
Morrison & Foerster LLP. (Borenstein Decl. 2.) The billing rates of Morrison & Foerster
timekeepers are confidential, and are not generally revealed to the public. (Id.) Exhibit A
contains the rates for 91 timekeepers. The breadth of the information revealed in Exhibit A could
provide insight into Morrison & Foersters firm-wide billing structure and reflects Morrison &
Foersters confidential financial relationship (including negotiated discounts) with Apple.
Apples Motion for Attorneys Fees refers to one specific timekeeper rate that is not publicly
known. This information is competitively sensitive and confidential and could be used by
Morrison & Foersters competitors to its disadvantage, as disclosure of the information would
reveal the firms billing structure and confidential pricing strategy, as well as its negotiated
financial relationship with Apple. (Id.)
Numerous courts in the Ninth Circuit have held that, In trademark/dress matters, attorney
billing rates which are not publicly known and are competitively sensitive, warrant sealing.
E&J Gallo Winery v. Proximo Spirits, Inc., No. CV-00411, 2012 U.S. Dist. LEXIS 94581, at *2
(E.D. Cal. July 9, 2012) (citing China Intl Travel Servs. (USA) v. China & Asia Travel Serv.,
No. 08-cv-01293, 2008 U.S. Dist. LEXIS 106622, at *29 (N.D. Cal. Dec. 18, 2008) (noting that
counterclaim plaintiff would request its attorneys fees by way of a declaration, submitted for
filing under seal, . . . because the attorneys hourly rates are competitively sensitive and not
publicly known.);Mine OMine, Inc. v. Calmese, No. 10-CV-00043, 2012 U.S. Dist. LEXIS
53077, at *10 (D. Nev. Apr. 16, 2012) (sealing negotiated billing rates)); Genl Elec. Co. v.
Wilkins, No. 10-CV-00674, 2012 U.S. Dist. LEXIS 97647, at *6 (E.D. Cal. July 13, 2012)
Case5:11-cv-01846-LHK Document2851 Filed12/05/13 Page2 of 3
8/13/2019 Apple vs Samsung 5 December 2013
3/129
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
APPLES ADMIN.MOT.TO FILE UNDER SEAL MOT.FOR ATTORNEYSFEESCASENO.11-CV-01846-LHK 2
sf-3361324
(same);Herb Reed Enters., Inc. v. Monroe Powells Platters, LLC, No. 11-cv-02010, 2013 U.S.
Dist. LEXIS 96948, at *2 (D. Nev. July 11, 2013) (same). TheE&J Gallo court also found that a
law firms confidential billing rate, if [it] became known, would likely impact the law firms
competitiveness. E & J Gallo Winery v. Proximo Spirits, Inc., No. 10-cv-00411, 2012 U.S. Dist.
LEXIS 64525, at *5-6 (E.D. Cal. May 8, 2012).1 The relief requested in this motion is necessary
and is narrowly tailored to protect only the billing rates of counsel.
Pursuant to Civil Local Rule 79-5(d), Apple files herewith Exhibit A to the Jacobs
Declaration entirely under seal; a public redacted version of its Motion for Attorneys Fees; and,
under seal, an unredacted version of its Motion for Attorneys Fees indicating with highlighting
the specific number Apple requests to seal.
Dated: December 5, 2013 MORRISON & FOERSTER LLP
By: /s/ Rachel KrevansRachel Krevans
Attorney for PlaintiffAPPLE INC.
1This Court recently denied a request to seal attorney billing records that included hourly rates.See Ferrington v. McAfee, Inc., No. 10-CV-01455, 2013 U.S. Dist. LEXIS 103038, at *4-6 (N.D.Cal. July 22, 2013). That case is distinguishable, however, as the moving party argued only thatthe records were covered by attorney-client privilege. Id. at *4-6. There was no argument thatthe rates were confidential and competitively sensitive. To the contrary, the Court noted that thehourly rates were reflected in the very declarations that attached the billing records at issue, andthat the moving party was not seeking to seal those declarations. Id. at *5.
Case5:11-cv-01846-LHK Document2851 Filed12/05/13 Page3 of 3
8/13/2019 Apple vs Samsung 5 December 2013
4/129
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
DECLARATION OF RUTH BORENSTEIN ISOMOTION TO FILE UNDER SEALCASENO. 11-cv-01846-LHK (PSG)
sf-3361361
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN JOSE DIVISION
APPLE INC., a California corporation,
Plaintiff,
v.
SAMSUNG ELECTRONICS CO., LTD., aKorean corporation; SAMSUNGELECTRONICS AMERICA, INC., a NewYork corporation; and SAMSUNGTELECOMMUNICATIONS AMERICA,LLC, a Delaware limited liability company,
Defendants.
Case No. 11-cv-01846-LHK (PSG)
DECLARATION OF RUTH N.
BORENSTEIN IN SUPPORT OF APPLES
ADMINISTRATIVE MOTION TO FILE
UNDER SEAL
HAROLD J. MCELHINNY (CA SBN 66781)[email protected] A. JACOBS (CA SBN 111664)[email protected] KREVANS (CA SBN 116421)[email protected]
ERIK J. OLSON (CA SBN 175815)[email protected] & FOERSTER LLP425 Market StreetSan Francisco, California 94105-2482Telephone: (415) 268-7000Facsimile: (415) 268-7522
Attorneys for Plaintiff andCounterclaim-Defendant APPLE INC.
WILLIAM F. [email protected] CUTLER PICKERINGHALE AND DORR LLP60 State StreetBoston, MA 02109
Telephone: (617) 526-6000Facsimile: (617) 526-5000
MARK D. SELWYN (SBN 244180)[email protected] CUTLER PICKERINGHALE AND DORR LLP950 Page Mill RoadPalo Alto, California 94304Telephone: (650) 858-6000Facsimile: (650) 858-6100
Case5:11-cv-01846-LHK Document2851-1 Filed12/05/13 Page1 of 3
8/13/2019 Apple vs Samsung 5 December 2013
5/129
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
DECLARATION OF RUTH BORENSTEIN ISOMOTION TO FILE UNDER SEALCASENO.11-CV-01846-LHK 1
sf-3361361
I, RUTH N. BORENSTEIN, do hereby declare as follows:
1. I am a partner at Morrison & Foerster LLP, counsel of record for Apple Inc. in theabove-captioned action. I submit this declaration in support of Apples Administrative Motion to
File Under Seal Apples Motion for Attorneys Fees. I have personal knowledge of the matters
set forth below. If called as a witness I could and would competently testify as follows.
2. Apples Motion for Attorneys Fees and Exhibit A to the Declaration ofMichael A. Jacobs in Support of Apples Motion for Attorneys Fees (Jacobs Declaration)
contain confidential and competitively sensitive information regarding Morrison & Foersters
negotiated billing rates. Specifically, Exhibit A contains the rates for 91 timekeepers. The billing
rates of Morrison & Foerster timekeepers are confidential, and are not generally revealed to the
public. The breadth of the information revealed in Exhibit A could provide insight into
Morrison & Foersters firm-wide billing structure and reflects Morrison & Foersters confidential
financial relationship (including negotiated discounts) with Apple. Apples Motion for
Attorneys Fees refers to one timekeepers rate that is not publicly known. This information is
competitively sensitive and confidential and could be used by Morrison & Foersters competitors
to its disadvantage. Publishing this data would reveal the firms confidential pricing strategy and
its negotiated financial relationship with Apple and would cause harm to Morrison & Foerster and
its relationship with Apple.
3. Exhibit A to the Jacobs Declaration should remain under seal in full, for thereasons articulated above. Apples Motion for Attorneys Fees should remain under seal in part,
as shown in Apples proposed redactions.
I declare under penalty of perjury that the foregoing is true and correct. Executed this 5th
day of December 2013 at San Francisco, California.
________/s/ Ruth N. Borenstein_______Ruth N. Borenstein
Case5:11-cv-01846-LHK Document2851-1 Filed12/05/13 Page2 of 3
8/13/2019 Apple vs Samsung 5 December 2013
6/129
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
DECLARATION OF RUTH BORENSTEIN ISOMOTION TO FILE UNDER SEALCASENO.11-CV-01846-LHK 2
sf-3361361
ATTESTATION
I, Rachel Krevans, am the ECF User whose ID and password are being used to file this
Declaration. In compliance with Civil L.R. 5-1(i)(3), I hereby attest that Ruth Borenstein has
concurred in this filing.
Dated: December 5, 2013 /s/ Rachel KrevansRachel Krevans
Case5:11-cv-01846-LHK Document2851-1 Filed12/05/13 Page3 of 3
8/13/2019 Apple vs Samsung 5 December 2013
7/129
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
[PROPOSED]ORDER GRANTING MOTION TO FILE UNDER SEALCASENO. 11-cv-01846-LHK (PSG)
sf-3361369
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN JOSE DIVISION
APPLE INC., a California corporation,
Plaintiff,
v.
SAMSUNG ELECTRONICS CO., LTD., aKorean corporation; SAMSUNGELECTRONICS AMERICA, INC., a NewYork corporation; and SAMSUNGTELECOMMUNICATIONS AMERICA,LLC, a Delaware limited liability company,
Defendants.
Case No. 11-cv-01846-LHK (PSG)
[PROPOSED] ORDER GRANTINGAPPLES ADMINISTRATIVE MOTION TOFILE UNDER SEAL
Case5:11-cv-01846-LHK Document2851-2 Filed12/05/13 Page1 of 2
8/13/2019 Apple vs Samsung 5 December 2013
8/129
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
[PROPOSED]ORDER GRANTING MOTION TO FILE UNDER SEALCASENO.11-CV-01846-LHK
sf-3361369
Apple filed a motion to seal its Motion for Attorneys Fees and Exhibit A to the
Declaration of Michael Jacobs in Support of Apples Motion for Attorneys Fees (Jacobs
Declaration)
The Court finds that Apples sealing request is narrowly tailored and justified and that
there is good cause to seal the requested documents. Therefore, the above documents may be
filed under seal:
Document Sealable Portion
Apples Motion for Attorneys Fees Reference to specific timekeeper rate at page 8.
Exhibit A to Jacobs Declaration Sealed in full.
IT IS SO ORDERED.
Dated: _______________________ ______________________________________
HONORABLE LUCY H. KOHUnited States District Judge
Case5:11-cv-01846-LHK Document2851-2 Filed12/05/13 Page2 of 2
8/13/2019 Apple vs Samsung 5 December 2013
9/129
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
APPLES MOTION FOR ATTORNEYSFEESCase No. 11-cv-01846-LHK (PSG)
sf-3360108
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN JOSE DIVISION
APPLE INC., a California corporation,
Plaintiff,
v.
SAMSUNG ELECTRONICS CO., LTD., aKorean corporation; SAMSUNG ELECTRONICSAMERICA, INC., a New York corporation; andSAMSUNG TELECOMMUNICATIONSAMERICA, LLC, a Delaware limited liabilitycompany,
Defendants.
Case No. 11-cv-01846-LHK (PSG)
APPLES MOTION FORATTORNEYS FEES
Date: January 30, 2014Time: 1:30 p.m.Place: Courtroom 8, 4th FloorJudge: Hon. Lucy H. Koh
REDACTED VERSION OF DOCUMENT SOUGHT TO BE SEALED
HAROLD J. MCELHINNY (CA SBN 66781)[email protected] A. JACOBS (CA SBN 111664)[email protected] KREVANS (CA SBN 116421)[email protected]
ERIK J. OLSON (CA SBN 175815)[email protected] & FOERSTER LLP425 Market StreetSan Francisco, California 94105-2482Telephone: (415) 268-7000Facsimile: (415) 268-7522
Attorneys for Plaintiff andCounterclaim-Defendant APPLE INC.
WILLIAM F. [email protected] CUTLER PICKERINGHALE AND DORR LLP60 State StreetBoston, MA 02109
Telephone: (617) 526-6000Facsimile: (617) 526-5000
MARK D. SELWYN (SBN 244180)[email protected] CUTLER PICKERINGHALE AND DORR LLP950 Page Mill RoadPalo Alto, California 94304Telephone: (650) 858-6000Facsimile: (650) 858-6100
Case5:11-cv-01846-LHK Document2851-3 Filed12/05/13 Page1 of 19
8/13/2019 Apple vs Samsung 5 December 2013
10/129
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
APPLES MOTION FOR ATTORNEYSFEESCase No. 11-cv-01846-LHK (PSG)
sf-3360108
NOTICE OF MOTION AND MOTION
TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD:
PLEASE TAKE NOTICE that on January 30, 2014, at 1:30 p.m., or as soon thereafter as
counsel may be heard before the Honorable Lucy Koh in Courtroom 8 of the above-entitled
Court, located at 280 South 1st Street, San Jose, California, Plaintiff Apple will move, and hereby
does move, for an award of $15,736,992 in attorneys fees against Samsung Electronics Co., Ltd.,
Samsung Electronics America, Inc., and Samsung Telecommunications America, Inc.
This motion is based on this notice of motion and supporting memorandum of points and
authorities; supporting declarations filed herewith and exhibits attached thereto; and such other
written or oral argument as may be presented at or before the time this motion is taken under
submission by the Court. The parties counsel met and conferred regarding Apples request, as
set out in the accompanying Declaration of Nathan Sabri, but Samsung has not stipulated to
Apples request.
Dated: December 5, 2013 MORRISON & FOERSTER LLP
By: /s/Rachel Krevans
RACHEL KREVANS
Attorneys for PlaintiffAPPLE INC.
Case5:11-cv-01846-LHK Document2851-3 Filed12/05/13 Page2 of 19
8/13/2019 Apple vs Samsung 5 December 2013
11/129
8/13/2019 Apple vs Samsung 5 December 2013
12/129
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
APPLES MOTION FOR ATTORNEYSFEESCase No. 11-cv-01846-LHK (PSG) ii
sf-3360108
TABLE OF AUTHORITIES
Page(s)
CASES
Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs.,No. CV 03-0597-PHX-MHM,2009 U.S. Dist. LEXIS 131813 (D. Ariz. Mar. 31, 2009) .................................................... 13
Earthquake Sound Corp. v. Bumper Indus.,352 F.3d 1210 (9th Cir. 2003) ............................................................................................... 6
Fifty-Six HopeRoad Music, Ltd. v. A.V.E.L.A., Inc.,915 F. Supp. 2d 1179 (D. Nev. 2013) ............................................................................ 11, 12
Gates v. Deukmejian,987 F.2d 1392 (9th Cir. 1992) ............................................................................................. 10
Gracie v. Gracie,217 F.3d 1060 (9th Cir. 2000) ......................................................................................passim
Gucci Am., Inc. v. Pieta,No. CV 04-9626,2006 U.S. Dist. LEXIS 96694 (C.D. Cal. July 17, 2006) ....................................................... 8
Hensley v. Eckerhart,461 U.S. 424 (1983) .............................................................................................................. 8
Horphag Research Ltd. v. Garcia,475 F.3d 1029 (9th Cir. 2007) ........................................................................................... 2, 7
Lahoti v. Vericheck, Inc.,636 F.3d 501 (9th Cir. 2011) ............................................................................................. 3, 4
Mattel, Inc. v. MGA Entmt, Inc.,No. CV 04-9049,2011 U.S. Dist. LEXIS 85998 (C.D. Cal. Aug. 4, 2011) ...................................................... 13
Monolithic Power Sys. v. O2 Micro Intl Ltd.,726 F.3d 1359 (Fed. Cir. 2013) ........................................................................................... 13
Natl Prods. v. Gamber-Johnson LLC,449 Fed. Appx. 638 (9th Cir. 2011) ....................................................................................... 3
Playboy Enters., Inc. v. Baccarat Clothing Co.,692 F.2d 1272 (9th Cir. 1982) ............................................................................................... 7
San Diego Police Officers Assn v. San Diego City Emps. Ret. Sys. ,568 F.3d 725 (9th Cir.2009) .................................................................................................. 2
Case5:11-cv-01846-LHK Document2851-3 Filed12/05/13 Page4 of 19
8/13/2019 Apple vs Samsung 5 December 2013
13/129
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
APPLES MOTION FOR ATTORNEYSFEESCase No. 11-cv-01846-LHK (PSG) iv
sf-3360108
Societe Civile Succession Richard Guino v. Beseder Inc. ,No. CV 03-13-10,2007 U.S. Dist. LEXIS 83782 (D. Ariz. Oct. 30, 2007) ....................................................... 12
Spalding Labs., Inc. v. Ariz. Biological Control, Inc.,No. CV 06-1157,
2008 U.S. Dist. LEXIS 56100 (C.D. Cal. May 29, 2008)..................................................... 12
Takeda Chem. Indus. v. Mylan Labs.,549 F.3d 1381 (Fed. Cir. 2008) ........................................................................................... 13
TrafficSchool.com, Inc. v. Edriver Inc.,653 F.3d 820 (9th Cir. 2011) ................................................................................................. 2
STATUTES
15 U.S.C. 1125(c) .............................................................................................................................. 2 1117(a) .....................................................................................................................passim
35 U.S.C. 285 ........................................................................................................................ 13
OTHER AUTHORITIES
Fed. R. Civ. Proc.Rule 50 ................................................................................................................................. 1Rule 52 ................................................................................................................................. 1Rule 54 ................................................................................................................................. 1Rule 59 ................................................................................................................................. 1
Rule 60 ................................................................................................................................. 1
Case5:11-cv-01846-LHK Document2851-3 Filed12/05/13 Page5 of 19
8/13/2019 Apple vs Samsung 5 December 2013
14/129
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
APPLES MOTION FOR ATTORNEYSFEESCase No. 11-cv-01846-LHK (PSG) 1
sf-3360108
MEMORANDUM OF POINTS AND AUTHORITIES
Apple brings this motion and the accompanying bill of costs now, because the parties
were unable to reach agreement on an extension of time for Apples Rule 54 filings, and thus
Apple must comply with Rule 54s deadlines. Recognizing that the Court will be presented with
the parties Rule 50, 52, 59, and 60 motions in this same time period, Apple will count this
motion as part of the 40-page limit the Court set for those motions.
I. INTRODUCTIONUnder any measure, this was an exceptional case. The evidence that Samsung deliberately
copied every aspect of Apples revolutionary iPhone product was overwhelming. Apple
prevailed on one or more claims of trade dress dilution or patent infringement against 26 of 28
accused products. A jury found that Samsung willfully diluted Apples protected trade dresses
and willfully infringed five of the seven asserted patents. The original trial and partial damages
retrial juries awarded Apple $930 million for Samsungs violation of Apples IP rights. Apple
also scored a complete victory in its defense of Samsungs claims. Given the high stakes in this
head-to-head battle of what are now the two leading competitors in the U.S. smartphone market,
the case garnered international press attention.
Samsungs willful, deliberate, and calculated copying of Apples iPhone makes this an
exceptional case under Section 1117(a) of the Lanham Act. The record conclusively
establishes that, once the iPhone became a spectacular success and Samsungs smartphones
became far less desirable, Samsung made a calculated decision to capture market share by
copying the look and features of the iPhone. After a thorough study of the iPhone, Samsung gave
126 Directions for Improvement to make Samsungs inferior phone in development look and
operate like the iPhone. (PX44.) Samsung carried out those directions without making any effort
to identify and avoid violating Apples IP rights. Samsungs efforts to compete against Apple by
misappropriating Apples own IP had their intended effectSamsungs sales of its infringing and
diluting phones has increased its market share dramatically. Given Samsungs blatant disregard
of Apples IP rights, Apple should not be forced to bear the full expense of prosecuting its claims.
This motion addresses Apples request for attorneys fees under the Lanham Act. Apple
Case5:11-cv-01846-LHK Document2851-3 Filed12/05/13 Page6 of 19
8/13/2019 Apple vs Samsung 5 December 2013
15/129
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
APPLES MOTION FOR ATTORNEYSFEESCase No. 11-cv-01846-LHK (PSG) 2
sf-3360108
seeks $15,736,992, which is less than one-third of the fees billed through March 1, 2013the
date of the last order on motions arising from the first trial. Apportioning only one-third of the
fees incurred to Apples intertwined trade dress and design patent claims is conservative, as these
claims were the focus of most of the parties attention throughout the case. In fact, both parties
spent twice as much time on design/trade dress witnesses as utility patent witnesses at trial.
II. THE COURT SHOULD AWARD APPLE THE FEES ATTRIBUTABLE TOSAMSUNGS WILLFUL TRADE DRESS DILUTION
Section 1117(a) of the Lanham Act addresses remedies for willful trade dress dilution in
violation of 15 U.S.C. 1125(c), as well as for other Lanham Act violations, including
infringement of registered and unregistered trademarks or trade dress, and false advertising.
15 U.S.C. 1117(a). The statute permits an award of reasonable attorneys fees to the prevailing
party in exceptional cases. Id. As shown below, Apple is the prevailing party, this case is
exceptional, and Apple should be awarded the reasonable attorneys fees it requests.
A. Apple Is The Prevailing PartyThe jurys verdict and damage award clearly make Apple the prevailing party in this case
as a whole and in its Lanham Act claims in particular. (Dkt. No. 1931 at 11-12 (verdict of willful
dilution of Apples registered iPhone trade dress and unregistered iPhone 3G trade dress).) A
party need not prevail on all of its claims to be the prevailing party. See,e.g., San Diego Police
Officers Assn v. San Diego City Emps. Ret. Sys., 568 F.3d 725, 741 (9th Cir. 2009).
B. This Case Is Exceptional Under The Lanham ActAlthough 1117(a) does not define exceptional, the Ninth Circuit has repeatedly held
that exceptional cases include those involving fraudulent, deliberate or willful conduct.
Horphag Research Ltd. v. Garcia, 475 F.3d 1029, 1039 (9th Cir. 2007) (affirming fee award
under 1117(a) in trade dress dilution case); Gracie v. Gracie, 217 F.3d 1060, 1068 (9th Cir.
2000) (generally a trademark case is exceptional for purposes of an award of attorneys fees
when the infringement can be characterized as malicious, fraudulent, deliberate, or willful)
(internal quotation marks omitted); see also TrafficSchool.com, Inc. v. Edriver Inc., 653 F.3d 820,
832 (9th Cir. 2011) (court erred by denying exceptional case status based solely on relief awarded
Case5:11-cv-01846-LHK Document2851-3 Filed12/05/13 Page7 of 19
8/13/2019 Apple vs Samsung 5 December 2013
16/129
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
APPLES MOTION FOR ATTORNEYSFEESCase No. 11-cv-01846-LHK (PSG) 3
sf-3360108
to prevailing plaintiff; court instead must weigh the unlawfulness of defendants conduct).
Applying that standard, the Ninth Circuit has affirmed exceptional case findings under
1117(a) based on jury verdicts of willfulness. See,e.g., Gracie, 217 F.3d at 1068 (affirming
exceptional case determination based on willful infringement verdict);Natl Prods. v. Gamber-
Johnson LLC, 449 Fed. Appx. 638, 639 (9th Cir. 2011) (non-precedential) (affirming
exceptional case[s] finding based on jurys finding of deliberate infringement).
The Ninth Circuit also has looked more broadly to address a defendants wrongful
conduct, including deliberate and calculated attempts to take advantage of a plaintiffs IP rights
Horphag, 475 F.3d at 1039 (affirming exceptional case finding in trademark dilution case where
defendant made deliberate and calculated attempts to confuse its product with plaintiffs); see
Lahoti v. Vericheck, Inc., 636 F.3d 501, 510-11 (9th Cir. 2011) (affirming exceptionality under
1117(a) in light of pattern and practice of disregard for . . . trademark rights, bad faith and
abusive litigation practices).
Here exceptionality is established both by the jurys finding of willful dilution and
Samsungs deliberate and calculated strategy of copying Apples iPhone.
1. The jury verdict establishes willfulnessThe jury found that Samsungs dilution of Apples registered iPhone trade dress and
unregistered iPhone 3G trade dress was willful. (Dkt. No. 1931 at 14.) This Court has ruled that
the jurys finding was supported by substantial evidence in the record, citing evidence that
Samsung viewed the iPhone as revolutionary (PX36.20), and that Samsung attempted to create
similar products (PX44). (Dkt. No. 2220 at 14.)
2. The record establishes that Samsung engaged in a willful, deliberate,and calculated effort to gain market share by copying the iPhone,including the iPhone trade dress
When Apple introduced the iPhone in 2007, Samsung initially continued to make phones
as it always had. (PX3A.1-2.) But Samsung later changed its tune, after it became convinced tha
the iPhone was phenomenally successful while Samsungs sales lagged behind. As detailed
below, Samsung fought back with a deliberate strategy of copying every aspect of the iPhone
including the whole look of the iPhone, which is the trade dresswithout making any effort to
Case5:11-cv-01846-LHK Document2851-3 Filed12/05/13 Page8 of 19
8/13/2019 Apple vs Samsung 5 December 2013
17/129
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
APPLES MOTION FOR ATTORNEYSFEESCase No. 11-cv-01846-LHK (PSG) 4
sf-3360108
avoid Apples protected IP.
Soon after Apple released the iPhone, Samsungs LSI divisionwhich manufactured
components for Appleanalyzed the iPhone. Their report ranked the iPhone first in a list of
four key factors that we expect will shape handsets in the coming five years. (PX34.13.) It
also concluded that the iPhones [b]eautiful design and [e]asy and intuitive UI were among
the key iPhone [s]uccess [f]actors and that copying them would be easy. (PX34.38.) In
2008, Samsung hired consultants to assess the iPhones impact. The consultants reported that
pundits and iPhone users alike considered the iPhone a revolution. (PX36.)
Samsungs phone sales fell dramatically as iPhone sales soared. (Dkt. No. 1839 at
2044:17-18 (Musika testimony that Samsung was losing market share during the period prior to
2010).) By February 2010, carriers were pressuring Samsung to make something like the
iPhone. (PX40.2.) Samsung executives concluded that Samsung was suffering a crisis of
design and that the difference between the iPhone and the products Samsung had in development
was the difference between heaven and earth. (PX40.5.)
Samsung responded by preparing a 138-page Relative Evaluation Report, which
contained 126 Direction[s] for Improvement to make Samsungs phone like the iPhone.
(PX44.) The Relative Evaluation Report compared virtually every aspect of the iPhone with the
Samsung phone then in development, each time finding Samsungs phone wanting and each time
directing that Samsungs phone be changed to resemble the iPhone. Samsung acted in complete
disregard of Apples IPthere is not a shred of evidence in the record to suggest that Samsung
made any effort to determine whether the various iPhone features were protected, much less to
avoid violating Apples IP rights. Instead, Samsung forged ahead and followed the Reports
directives to make Samsungs phone like the iPhone in 126 ways. All of those copying directives
should be considerednot only those directly related to the IP in suitas exceptional case
findings and fee awards under 1117(a) look to the totality of a defendants conduct. See,e.g.,
Lahoti, 636 F.3d at 510-11 (addressing pattern and practice of disregard for . . . trademark
rights, bad faith and abusive litigation practices).
Samsungs intensive effort produced the Galaxy S i9000, which the press called very
Case5:11-cv-01846-LHK Document2851-3 Filed12/05/13 Page9 of 19
8/13/2019 Apple vs Samsung 5 December 2013
18/129
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
APPLES MOTION FOR ATTORNEYSFEESCase No. 11-cv-01846-LHK (PSG) 5
sf-3360108
iPhone 3GS-like. (PX6.) Consistent with the Relative Evaluation Reports copying directives,
the Galaxy S i9000 copied the iPhone industrial design (PX3 (comparing Samsung smartphones
before iPhone to Samsung smartphones after iPhone)) and copied the iPhone home screen, down
to the shading on the icons (PX44.131 (comparing iPhone icons with [L]ight used . . . gives a
luxurious feel to GT-i9000 icons in development and concluding [I]nsert effects of light for a
softer, more luxurious icon implementation); PX35 (iPhones icons to are colorful and vibrant,
however they are in contained square which appear more organized and consistent.). The
Galaxy S i9000 also copied numerous iPhone features, including interface features claimed in the
patents-in-suit (PX36 (Lists bounce, icons flitter the iPhone has a sense of whimsy); PX38
(Adopt Double-Tap as a supplementary zooming method . . . . The UX of iphone can be used as
a design benchmark.); PX44.58 (comparing iPhone Double Tap to S1 in development,
Double Tap zoom in/out function needs to be supplemented); PX46.66 (comparing iPhone
bounce to Behold3 in development, Provide a fun visual effect when dragging a web page);
PX57.19 (lack of Fun, Wow Effect is Critical and concluding [B]ounce effect is scheduled
to be reviewed); PX186.1 (there is no latex effect of having the screen follow along and then
returning when you are moving past the edge. (Refer to the iPad)); PX195.1 (With regards to
bounce, we used the Mass Spring Damper model which was modeled after the actual physical
effect and obtained the bounce effect that is similar to the iPad[.]).)
In August 2010, immediately after Samsung introduced its Galaxy S i9000 and Vibrant
smartphones, Apple met with Samsung and explicitly told Samsung to stop copying Apples
iPhone patents and designs. (PX52 (Apple August 2010 presentation); PX201 at 31:15-16;
31:18-20; 33:21-24; 37:21-38:05 (testimony of Jun Won Lee that Apple raised Samsungs
infringement of Apple phones patents and design).) Apple pointed out the similarities between
the iPhone design (protected by the trade dress and the D677, D087, and D305 patents) and the
Galaxy S i9000s design. (PX52.17-19; Dkt. No. 1695 at 19581962 (testimony of Boris Teksler
regarding Apples presentation to Samsung in August 2010 which included discussion of
similarities of iPhone and Galaxy S i9000).) Yet Samsung continued to introduce phones that
copied the iPhone, including the Galaxy S Vibrant, the Galaxy S Fascinate, the Galaxy S
Case5:11-cv-01846-LHK Document2851-3 Filed12/05/13 Page10 of 19
8/13/2019 Apple vs Samsung 5 December 2013
19/129
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
APPLES MOTION FOR ATTORNEYSFEESCase No. 11-cv-01846-LHK (PSG) 6
sf-3360108
Mesmerize, the Galaxy S Showcase, and the Galaxy S 4G. This last product was introduced in
February 2011, six months after the August 2010 meeting, and was sold until at least June 2012.
The jury found it diluted Apples registered iPhone trade dress and unregistered iPhone 3G trade
dress and infringed every one of Apples patents-in-suit. This phone alone sold over 1.45 million
units and generated over $473 million in revenues for Samsung in the U.S. (JX1500).
With these and other diluting and infringing products, Samsung flooded the market with
over 21 million copied smartphones during the two years prior to June 30, 2012. Samsungs
strategy of copying the iPhone to boost its smartphone sales succeeded: Between June 2010,
when the first Galaxy S phone was introduced, and June 30, 2012, Samsungs U.S. market share
jumped six-fold from 5% to above 30%. (Dkt. No. 1982-2 30.) As Julie Davis testified, 90% of
the dramatic increase in Samsungs U.S. smartphone market share in the third quarter of 2010
was due to sales of infringing phones. (Dkt. No. 2840 at 719:9-721:3 (discussing PDX100.8).)
Samsungs market share gain eroded Apples position as the market leader. Samsungs
successful strategy has been to blunt and undercut Apple using the Galaxy products to take
the leading position in the U.S. smartphone market. (PX62.11-15.) In February 2012, Samsung
concluded that as a result of its own rapid growth in market share, the U.S. smartphone market
was becoming a two horse race between Apple & Samsung. (PX60.8.)
C. The Court Should Award Apples Requested Fees Of $15,736,9921. A fees award is warranted
A district court has discretion as to whether to award fees in an exceptional case.
Earthquake Sound Corp. v. Bumper Indus., 352 F.3d 1210, 1216 (9th Cir. 2003) (reviewing
decision to award fees under 1117(a) for abuse of discretion). The same factors that render a
case exceptional also support an award of fees. See, e.g., id. at 1219 (no abuse of discretion in
awarding fees when court considered willful, deliberate infringement of a mark similar to that
of its competitor). Indeed, where a jury has returned a willfulness finding, arguments against an
award of fees are difficult to advance successfully. Gracie, 217 F.3d at 1068. That is because
the award of fees to the prevailing party flows quite naturally from the jurys finding of willful
infringement and the legal standard for exceptional cases under 1117. Id.
Case5:11-cv-01846-LHK Document2851-3 Filed12/05/13 Page11 of 19
8/13/2019 Apple vs Samsung 5 December 2013
20/129
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
APPLES MOTION FOR ATTORNEYSFEESCase No. 11-cv-01846-LHK (PSG) 7
sf-3360108
The Court should award Apple fees in this exceptional case. Awarding fees to Apple
flows quite naturally from the jurys willfulness verdict as well as Samsungs extensive record
of willful, deliberate, and calculated decisions to copy the iPhone, in blatant disregard for Apples
IP, discussed above. Courts routinely award fees, and the Ninth Circuit affirms fee awards under
1117(a), based on evidence that a defendants conduct was willful, deliberate, or calculated.
See,e.g., Gracie, 217 F.3d at 1068 (affirming district courts decision to award fees based on
willful infringement);Horphag, 475 F.3d at 1039 (affirming award of fees for trademark dilution
where defendant made deliberate and calculated attempts to confuse its product with
plaintiffs);Natl Prods., 449 Fed. Appx. at 639 (affirming fees award when sufficient evidence
supported jurys finding of deliberate infringement); see also Playboy Enters., Inc. v. Baccarat
Clothing Co., 692 F.2d 1272, 1276 (9th Cir. 1982) (reversing denial of fees where defendants
were not innocent infringers, but premeditatedly sought out infringing behavior, and noting
that exceptional case fees [were] specifically directed towards eliminating such blatant
activity).
2. Apples requested fees are reasonablea. Apple incurred over $60 million in fees for prosecuting its
claims through the two trials, after discounts and reductions
Apple and its counsel from Morrison & Foerster LLP (M&F), who prosecuted its claims
against Samsung, have taken numerous steps to ensure that the fees addressed in this motion are
reasonable, as detailed in the accompanying declarations of Michael Jacobs and Rachel Krevans.1
Among other things, M&F attorneys carefully review each invoice before sending it to Apple to
confirm that it reflects time appropriately charged to Apple and complies with the combination of
M&Fs and Apples rigorous billing requirements for this case. (Jacobs Decl. 259.) Apples in-
house attorneys managed this case to a very disciplined budget. (Id. 258.) For purposes of this
motion, Apple included only the fees it incurred for timekeepers who billed more than $100,000
1This motion discusses only fees that Apple incurred in prosecuting its claims; no feesfrom Apples successful defense against Samsungs claims are included.
Case5:11-cv-01846-LHK Document2851-3 Filed12/05/13 Page12 of 19
8/13/2019 Apple vs Samsung 5 December 2013
21/129
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
APPLES MOTION FOR ATTORNEYSFEESCase No. 11-cv-01846-LHK (PSG) 8
sf-3360108
in this case, thereby eliminating fees from timekeepers who provided meaningful work but did
not play a substantial ongoing role in the case. (Id. 60.) Apple made further reductions in the
amounts of fees in connection with this motion to be conservative. (Id. 250.) As a result of all
of these efforts and reductions, the hours underlying the fees at issue are reasonable.
The billing rates for the fees at issue also are reasonable, and reflect substantial discounts.
No M&F attorney billing to this matter charged over per hour, and the rest were well below
that number. (Id. Ex. A.) The rates are within the ranges of the American Intellectual Property
Law Association Economic Survey and are generally less than the rates that Samsung has paid for
lawyers at Quinn Emanuel with comparable experience. (Id. 251-55 & Ex. A.)
Applying these parameters, Apple has paid or expects to pay M&F approximately $60
million for its work on this case through the damages retrial. (Krevans Decl. 6.) Apple also has
paid or expects to pay approximately $2 million to Wilmer Hale for its fees in the damages retrial
again counting only timekeepers who billed more than $100,000 to the case. (Selwyn Decl. 2,
4.) In total, using these parameters, Apple has incurred over $60 million in fees for prosecuting
its claims against Samsung.
b. Apple seeks only one-third of the fees billed through March 1,2013, for timekeepers who billed more than $100,000 for work
on Apples claims against Samsung
Section 1117(a) permits recovery of fees for successful Lanham Act claims or those
inextricably intertwined with such claims. Gracie, 217 F.3d at 1069. Claims that are based on
similar factual bases and legal theories are related for the purposes of determining a fee award.
Gucci Am., Inc. v. Pieta, No. CV 04-9626, 2006 U.S. Dist. LEXIS 96694, at *7 (C.D. Cal. July
17, 2006). Work that involve[s] a common core of facts cannot be viewed as a series of
discrete claims. Hensley v. Eckerhart, 461 U.S. 424, 435 (1983).
Apples trade dress and design patent claims are inextricably intertwined and involve a
common core of facts. Apples unregistered iPhone 3G trade dress has the following elements:
a rectangular product with four evenly rounded corners; a flat clear surface covering the front of the product; the appearance of a metallic bezel around the flat clear surface;
Case5:11-cv-01846-LHK Document2851-3 Filed12/05/13 Page13 of 19
8/13/2019 Apple vs Samsung 5 December 2013
22/129
Case5:11-cv-01846-LHK Document2851-3 Filed12/05/13 Page14 of 19
8/13/2019 Apple vs Samsung 5 December 2013
23/129
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
APPLES MOTION FOR ATTORNEYSFEESCase No. 11-cv-01846-LHK (PSG) 10
sf-3360108
D087 and D677 patents, testified about Apples design process and investment in design, which
is highly relevant to Apples trade dress claims. Thus, the work Apples counsel performed
relating to designs was relevant to Apples trade dress claims, although it also related to other
design IP. Apple may, therefore, recover for all its fees related to iPhone trade dress and design.
In a case of this magnitude, with various claims with differing degrees of overlap, courts
may apportion fees based on a high-level consideration of the percentage of the case involving the
Lanham Act claims or those inextricably bound to them. SeeMcCarthy on Trademarks 30:103
(When there is an overlap in the attorneys work expended between the exceptional Lanham
Act claims and nonattorneys fee recoverable claims, it is appropriate for the court to reduce a
total attorneys fee amount by a percentage which represents work on the non-Lanham Act
claims.). This is especially true when courts consider voluminous fee application[s]. Gates v.
Deukmejian, 987 F.2d 1392, 1399 (9th Cir. 1992). In those cases, the court need not perform an
hour-by-hour analysis of the fee request. Id. Instead, across-the-board percentage cuts may
be used to reduce unrecoverable fees. See id. Determining an exactpercentage of the fees
attributable to Lanham Act claims is unnecessary so long as there is some attempt, even if
imprecise[], to account for the unrecoverable fees. Gracie, 217 F.3d at 1069 (emphasis added).
Apple has conservatively allocated as recoverable under the Lanham Act only one-third of
fees billed through March 1, 2013, for timekeepers who billed more than $100,000 for work on
Apples claims against Samsung. Broadly, Apples offensive case was split across three
substantive areas: phone design (which included patents on the iPhone design as well as iPhone
trade dress rights), tablet design, and utility patents. (Krevans Decl. 8.) But throughout the
case, the parties litigation of Apples claims against Samsung focused a disproportionate amount
of time on the design issues. (Id. 9-11.) Apples Amended Complaint devoted a substantial
amount of attention to Samsungs copying of Apples designs, including numerous side-by-side
design comparisons and discussion of Samsungs copying. (Dkt. No. 75.) Samsungs 22-page
trial brief devoted over nine pages to Apples designs; by contrast, it spent just two-and-a-half
pages on utility patents. (Dkt. No. 1322 at 3-15.) Both parties served many more expert reports
relating to design/trade dress issues than to utility patentsnine design/trade dress experts
Case5:11-cv-01846-LHK Document2851-3 Filed12/05/13 Page15 of 19
8/13/2019 Apple vs Samsung 5 December 2013
24/129
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
APPLES MOTION FOR ATTORNEYSFEESCase No. 11-cv-01846-LHK (PSG) 11
sf-3360108
compared to six utility patent experts for Apple; and eight design/trade dress and five utility
patent experts for Samsung. (Krevans Decl. 10.) Apples trial brief devoted the vast majority
of its fourteen-page discussion of Samsungs violation of Apples intellectual property rights to
Apples designs/trade dress, with only two pages on utility patents. (Dkt. No. 1323 at 3-15.)
Consistent with this focus, at trial, Apple presented seven witnesses who were entirely or
predominantly relevant to design issues (including trade dress), and three specific to its utility
patents. (Krevans Decl. 11.) In addition to Mr. Bressler, Ms. Kare, and Mr. Stringer, who as
noted above, discussed both trade dress and design patent issues, some of these witnesses
addressed issues related solely or primarily to trade dress. Dr. Russell Winer testified on the
distinctiveness and fame of the Apple trade dress elements, and . . . the infringement and dilution
[of] the Apple brands. (Dkt. No. 1612 at 1497:17-22.) Hal Poret testified about consumer
surveys he designed and conducted to determine whether or not the iPhone and the iPad trade
dress have acquired secondary meaning. (Id. at 1577:17-20.) Kent van Liere also testified about
two trade dress-related surveys, one that measured the extent to which consumers associate the
look and the design of Samsung Galaxy phones with iPhone and one that measured consumer
confusion regarding tablets. (Dkt. No. 1695 at 1691:13-22.) And a significant portion of the
testimony of Phil Schiller, Apples Senior Vice President of Worldwide Marketing, was devoted
to the marketing, advertising, and fame of Apples brand and designs, as well as the harm to
Apple from Samsungs dilution of the Apple brand. (Dkt. No. 1610 at 597-611, 618-665.)
Perhaps the best evidence of the importance of the design and trade dress issues, in a trial
where time was the parties most precious commodity, was how much time each side chose to
spend on these issues. Totaling the trial time that each side spent on the design/trade dress
witnesses and utility patent witnesses, each partyspent twice as much time on design/trade dress
as it did on utility patents. (Krevans Decl. 11-12.)
Based on all of these facts, allocating one-third of fees to Apples successful Lanham Act
claims is eminently reasonable. In Fifty-Six HopeRoad Music, Ltd. v. A.V.E.L.A., Inc., 915 F.
Supp. 2d 1179 (D. Nev. 2013), the district court awarded fees under 1117(a) using a similar
methodology to that advanced here by Apple. Although that plaintiffs successful Lanham Act
Case5:11-cv-01846-LHK Document2851-3 Filed12/05/13 Page16 of 19
8/13/2019 Apple vs Samsung 5 December 2013
25/129
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
APPLES MOTION FOR ATTORNEYSFEESCase No. 11-cv-01846-LHK (PSG) 12
sf-3360108
claim was only one of five asserted claims, the court rejected defendants proposal to simply
award one-fifth of the fees as not a fair apportionment. Id.at 1189. The court reasoned that
[m]ost of the fees related to discovery and much of the other work would have been incurred
whether there was a single, or many, claims. Id. Taking into consideration the relative time and
resources devoted to the various claims, the court apportioned sixty percentof plaintiffs hours
to the Lanham Act claim through summary judgment. Id. After summary judgment, when only
the Lanham Act and a state unfair competition claim remained, the court allocated seventy
percentof the hours to the Lanham Act claim, noting that a fifty-fifty split would be unfair. Id.
at 1189-90.
Like Fifty-Six HopeRoad, other courts in this circuit have apportioned a similar, or even
significantly higher, percentage of fees for Lanham Act claims when other claims were asserted
than the one-third that Apple seeks here. See, e.g., Spalding Labs., Inc. v. Ariz. Biological
Control, Inc., No. CV 06-1157, 2008 U.S. Dist. LEXIS 56100, at *16-17 (C.D. Cal. May 29,
2008) (reducing fees by 10% when Lanham Act claim was one of nine claims); Societe Civile
Succession Richard Guino v. Beseder Inc., No. CV 03-13-10, 2007 U.S. Dist. LEXIS 83782, at
*43-44 (D. Ariz. Oct. 30, 2007) (awarding one-third of fees when Lanham Act claim was one of
three claims).
By seeking only one-third of its fees from timekeepers who billed more than $100,000,
Apple ensures that it is not recovering fees for its unsuccessful claims concerning the unregistered
combination iPhone trade dress or for tablet design. First, the only differences between the
unregistered iPhone 3G trade dress on which Apple did prevail and the combination iPhone trade
dress is that the latter lacks two of the iPhone 3G trade dress elements (a metallic bezel around
the flat clear surface and a row of small dots on the display screen) and also covers neutral
(black or white) borders rather than the black borders covered by the 3G trade dress. (Compare
Dkt. No. 75 59 (iPhone 3G trade dress), with id. 63 (combination trade dress).) Thus, the
same work would have been required to address the iPhone 3G trade dress even if the
combination trade dress had not been at issue. The only possible additional work required by
having the combination trade dress in the case was whatever might have been required to address
Case5:11-cv-01846-LHK Document2851-3 Filed12/05/13 Page17 of 19
8/13/2019 Apple vs Samsung 5 December 2013
26/129
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
APPLES MOTION FOR ATTORNEYSFEESCase No. 11-cv-01846-LHK (PSG) 13
sf-3360108
neutral (black or white) borders in addition to black borders. Apples request for only one-
third of fees from timekeepers who billed more than $100,000 ensures that any such minimal fees
are not included in its request.
Second, phone design by the nature of the complaint was far more the focus of the trial
than was tablet design: 19 of the 28 accused products in the first trial were phones accused of
infringing Apples phone design rights, while only three of accused products were tablets accused
of infringing Apples tablet design rights. Moreover, almost all of Apples damages request at the
first trial was for infringement by accused phones rather than tablets. Of the $2.75 billion Apple
requested at the first trial, only $80.97 millionjust 2.9%was for Samsungs tablets. (See
PX25A1.4.) Asking for only one-third of fees from timekeepers who billed more than $100,000
ensures that fees related to tablet design are not included in the fees request.
Applying the parameters discussed in the prior section, M&F billed Apple $47,210,976
for timekeepers who billed more than $100,000 in this case for their time through March 1, 2013,
when the Court issued its last order on motions from the first trial. (Krevans Decl. 3.) One-
third of that total is $15,736,992, which Apple requests as its fee award under the Lanham Act.2
III. CONCLUSIONFor the reasons stated above, Apple respectfully requests that the Court find this case
exceptional and award Apple $15,736,992 in attorneys fees pursuant to 15 U.S.C. 1117(a).
2Courts have awarded fees comparable to and far higher than Apples request. For
example, a $105.7 million award in a copyright case was upheld on appeal. Mattel, Inc. v. MGAEntmt, Inc., No. CV 04-9049, 2011 U.S. Dist. LEXIS 85998 (C.D. Cal. Aug. 4, 2011), affd, 705F.3d 1108 (9th Cir. 2013). The Federal Circuit upheld an award of $16.8 million for attorney feesin a patent case. Takeda Chem. Indus. v. Mylan Labs., 549 F.3d 1381, 1391 (Fed. Cir. 2008); seealsoBard Peripheral Vascular, Inc. v. W.L. Gore & Assocs., No. CV 03-0597, 2009 U.S. Dist.LEXIS 131813, at *41 (D. Ariz. Mar. 31, 2009) (awarding $19 million in fees in patent case).
The Patent Act also permits attorneys fees in exceptional cases. 35 U.S.C. 285.Exceptionality may be based on litigation misconduct; vexatious, unjustified, and otherwise badfaith litigation; a frivolous suit; or willful infringement. Monolithic Power Sys. v. O2 Micro IntlLtd., 726 F.3d 1359, 1366 (Fed. Cir. 2013). Considered together, Samsungs misconduct duringlitigation, the jurys finding of willful infringement on five of Apples seven asserted patentclaims, and other aspects of Samsungs litigation tactics render this case exceptional within themeaning of 285. Apple separately addresses Samsungs litigation misconduct as a ground foran exceptional case finding under 285 in proceedings currently before Judge Grewal. (SeeDkt.No. 2838-2.) Apple also preserves its right to seek fees on other grounds under 285, includingin the event that the Courts finding of no objective willfulness is reversed.
Case5:11-cv-01846-LHK Document2851-3 Filed12/05/13 Page18 of 19
8/13/2019 Apple vs Samsung 5 December 2013
27/129
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
APPLES MOTION FOR ATTORNEYSFEESCase No. 11-cv-01846-LHK (PSG) 14
sf-3360108
Dated: December 5, 2013 MORRISON & FOERSTER LLP
By: /s/ Rachel KrevansRACHEL KREVANS
Attorneys for PlaintiffAPPLE INC.
Case5:11-cv-01846-LHK Document2851-3 Filed12/05/13 Page19 of 19
8/13/2019 Apple vs Samsung 5 December 2013
28/129
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
DECL.OF MICHAEL JACOBS ISOAPPLES MOT.FOR ATTORNEYSFEESCASENO.11-CV-01846LHK(PSG)
sf-3189895
HAROLD J. MCELHINNY (CA SBN 66781)[email protected] A. JACOBS (CA SBN 111664)[email protected] KREVANS (CA SBN 116421)[email protected] J. OLSON (CA SBN 175815)[email protected] & FOERSTER LLP425 Market StreetSan Francisco, California 94105-2482Telephone: (415) 268-7000Facsimile: (415) 268-7522
Attorneys for Plaintiff andCounterclaim-Defendant APPLE INC.
WILLIAM F. [email protected] CUTLER PICKERINGHALE AND DORR LLP60 State StreetBoston, MA 02109Telephone: (617) 526-6000Facsimile: (617) 526-5000
MARK D. SELWYN (SBN 244180)[email protected] CUTLER PICKERINGHALE AND DORR LLP950 Page Mill RoadPalo Alto, California 94304Telephone: (650) 858-6000Facsimile: (650) 858-6100
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN JOSE DIVISION
APPLE INC., a California corporation,
Plaintiff,
v.
SAMSUNG ELECTRONICS CO., LTD., aKorean corporation; SAMSUNGELECTRONICS AMERICA, INC., a New Yorkcorporation; and SAMSUNGTELECOMMUNICATIONS AMERICA, LLC, aDelaware limited liability company,
Defendants.
Case No. 11-cv-01846-LHK (PSG)
DECLARATION OF MICHAEL A.JACOBS IN SUPPORT OF
APPLES MOTION FORATTORNEYS FEES
Date: January 30, 2014Time: 1:30 p.m.Place: Courtroom 8, 4th FloorJudge: Hon. Lucy H. Koh
Case5:11-cv-01846-LHK Document2851-4 Filed12/05/13 Page1 of 87
8/13/2019 Apple vs Samsung 5 December 2013
29/129
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
DECL.OF MICHAEL JACOBS ISOAPPLES MOT.FOR ATTORNEYSFEESCASENO.11-CV-01846LHK(PSG)
sf-3189895
TABLE OF CONTENTS
Page
I. INTRODUCTION .......................................................................................................... 1II. OVERVIEW OF SUIT AND THE APPLE LITIGATION TEAM .................................. 1
A. Apples Claims .................................................................................................... 3i. Asserted Design Patents ........................................................................... 3ii. Asserted Utility Patents ............................................................................ 4iii. Trademarks .............................................................................................. 4iv. Trade Dress .............................................................................................. 5
B. Written Discovery ............................................................................................... 6C. Depositions .......................................................................................................... 7D. Discovery Disputes .............................................................................................. 8
i.
Samsung was sanctioned for failure to comply withdiscovery orders regarding copying documents ........................................ 9ii. Samsung was sanctioned for withholding source code ............................ 10iii. Samsung was sanctioned for withholding financial
information ............................................................................................ 10iv. Samsung was sanctioned for untimely disclosure of its
theories .................................................................................................. 11v. Samsung was compelled to produce witnesses ....................................... 11
E. Experts .............................................................................................................. 12F. Motions ............................................................................................................. 13G. Sealing .............................................................................................................. 14H. Substantive and Procedural Sub-Teams ............................................................. 15I. The Jury Trial and the Jurys Verdict ................................................................. 18J. Post-Trial Briefing ............................................................................................. 20
III. BIOGRAPHIES AND ROLES OF THE MORRISON & FOERSTERTEAM ........................................................................................................................... 21A. Lead Trial Counsel ............................................................................................ 21B. Partners ............................................................................................................. 24C. Of Counsel and Associates ................................................................................ 41D. Paralegals and Other Employees ........................................................................ 78
IV. MORRISON & FOERSTERS RATES ARE COMPARABLE TOPREVAILING RATES IN THE COMMUNITY FOR LIKE-SKILLEDPROFESSIONALS. ...................................................................................................... 82
V. DISCOUNTS, WRITE DOWNS, AND WRITE OFFS. ................................................ 83
Case5:11-cv-01846-LHK Document2851-4 Filed12/05/13 Page2 of 87
8/13/2019 Apple vs Samsung 5 December 2013
30/129
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
DECL.OF MICHAEL JACOBS ISOAPPLES MOT.FOR ATTORNEYSFEESCASENO.11-CV-01846LHK(PSG) 1
sf-3189895
I, MICHAEL A. JACOBS, declare as follows:
1. I am a partner with the law firm of Morrison & Foerster LLP, counsel forApple Inc. (Apple). I am licensed to practice law in the State of California. I have personal
knowledge of the matters stated herein or understand them to be true from members of my
litigation team or other professionals within Morrison & Foerster. I make this declaration in
support of Apples Motion for Attorneys Fees.
I. INTRODUCTION2. Apple submits this declaration, the declaration of Rachel Krevans, and the
declaration of Mark Selwyn in support of its motion for attorneys fees. As set forth in Apples
motion, Apple is entitled to its reasonable attorneys fees but at this time requests only a portion
of the fees it has incurred in prosecuting this case. My declaration will focus on the development
of the case and the work of the Apple team from inception of the case through April 2013.
Rachel Krevans will address in a separate declaration the portion of its fees that Apple requests.
II. OVERVIEW OF SUIT AND THE APPLE LITIGATION TEAM3. Apple filed the Complaint instituting this action on April 15, 2011. Apple initially
asserted 7 utility patents, 3 design patents, iPhone and iPod trade dress rights, iPad trade dress
rights, and trademark rights. Apple filed its Amended Complaint on June 16, 2011, asserting 8
utility patents and 7 design patents, as well as trade dress and trademark rights. Apple accused
Samsungs Galaxy mobile phones and tablet computers of infringing on Apples intellectual
property rights, and named 28 specific examples of infringing phones and tablets. On June 30,
2011, Samsung filed counterclaims alleging infringement of 12 utility patents, seeking
cancellation of Apples trade dress and trademark registrations, and seeking declarations of
noninfringement and invalidity of Apples intellectual property rights.
4. The case was hotly contested and heavily briefed. Before the beginning of the firsttrial on July 30, 2012, there were 1,456 docket entries (and by the final post-trial ruling on
March 1, 2013, the number had increased to 2,270). The litigation required many lawyersas
listed on the Courts docket, 62 attorneys have appeared to represent Apple and 52 have appeared
to represent Samsung.
Case5:11-cv-01846-LHK Document2851-4 Filed12/05/13 Page3 of 87
8/13/2019 Apple vs Samsung 5 December 2013
31/129
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
DECL.OF MICHAEL JACOBS ISOAPPLES MOT.FOR ATTORNEYSFEESCASENO.11-CV-01846LHK(PSG) 2
sf-3189895
5. The case culminated in a three-and-a-half week jury trial. Due to several rounds ofpretrial case narrowing at the Courts direction, trial proceeded, on Apples claims, as to three
utility patents, three phone design patents, one tablet design patent, iPhone trade dress rights, iPad
trade dress rights, and 28 accused Samsung products. After several days of deliberation, the jury
found that 26 of the 28 accused Samsung products infringed and/or diluted at least one of Apples
asserted intellectual property rights (the two exceptions were the Intercept, which was accused
only of infringing the 163 and 915, and the Galaxy Tab 10.1 (4G LTE), which was accused only
of infringing the D889). The jury found that Samsung infringed the 381, 163, 915, D677, ad
D305 patents willfully, and that Samsung diluted Apples trade dress willfully. The jury also
found that none of Apples patents was invalid and that Apples registered iPhone trade dress and
unregistered iPhone 3G trade dress were protectable. The jury found that Apple did not infringe
any of Samsungs asserted intellectual property rights. The jury awarded Apple damages in the
amount of $1,049,343,540.
6. The breadth of work continued with the parties post-trial motions. Apple filed abrief regarding non-jury claims; a motion for permanent injunction and damages enhancements;
and a motion for judgment as a matter of law, new trial, and amended judgment. Samsung filed a
motion regarding non-jury claims; a motion for judgment as a matter of law, new trial, and/or
remittitur; as well as three motions to compel relating to the parties post-trial motions. The post-
trial motions were so substantial that they led to seven separate orders from December 2012
through March 2013, not counting orders on motions to compel or other ancillary filings:
(1) order regarding waiver, equitable estoppel, unclean hands, and unfair competition, (2) order
regarding Apples request for a permanent injunction, (3) order regarding Samsungs allegations
of juror misconduct, (4) order regarding Apples JMOL/new trial motion, (5) order regarding
Samsungs JMOL/new trial motion, (6) order regarding damages enhancements, and (7) the order
regarding damages that led to a November 2013 damages retrial.
7. Two law firms represented Apple in this case throughout the time period discussedabove. Broadly speaking, Morrison & Foerster prosecuted the claims brought by Apple, and
WilmerHale defended against the counterclaims brought by Samsung. A brief summary of the
Case5:11-cv-01846-LHK Document2851-4 Filed12/05/13 Page4 of 87
8/13/2019 Apple vs Samsung 5 December 2013
32/129
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
DECL.OF MICHAEL JACOBS ISOAPPLES MOT.FOR ATTORNEYSFEESCASENO.11-CV-01846LHK(PSG) 3
sf-3189895
claims brought by Apple in this matter and the Morrison & Foerster team that litigated those
claims follows.
A. Apples Claims8. Apple asserted a range of intellectual property rights directed to aspects of
smartphones and tablet computers, including design patents, utility patents, trademarks, and trade
dress. Apple described in detail that Samsung exhibited a pattern of copying to make Samsungs
products look and work like Apples products. Apple noted that Samsung had even copied
Apples distinctive product packaging. Apple included illustrations throughout the Complaint to
demonstrate Samsungs copying efforts, including side-by-side comparisons showing Samsungs
products compared to Apples asserted design patents; Samsungs products compared to Apples
trade dress; and Samsungs icons compared to Apples icons.
i. Asserted Design Patents9. Apples amended complaint asserted patent infringement claims based on the
following design patents:
U.S. Patent No. D504,889: The D889 patent is directed to the design of a tabletcomputer.
U.S. Patent No. D593,087: The D087 patent is directed to the design of theiPhones front face and bezel.
U.S. Patent No. D604,305: The D305 patent is directed to the design of iPhonesgraphical user interface.
U.S. Patent No. D617,334: The D334 patent is directed to the design of iPhonesgraphical user interface.
U.S. Patent No. D618,677: The D677 patent is directed to the design of iPhonesblack front face.
U.S. Patent No. D622,270: The D270 patent is directed to the design of the iPodtouch.
U.S. Patent No. D627,790: The D790 patent is directed to the design of iPhonesgraphical user interface.
Case5:11-cv-01846-LHK Document2851-4 Filed12/05/13 Page5 of 87
8/13/2019 Apple vs Samsung 5 December 2013
33/129
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
DECL.OF MICHAEL JACOBS ISOAPPLES MOT.FOR ATTORNEYSFEESCASENO.11-CV-01846LHK(PSG) 4
sf-3189895
ii. Asserted Utility Patents10. Apples amended complaint asserted patent infringement claims based on the
following ut ility patents:
U.S. Patent No. 7,469,381: The 381 patent is directed to a feature that informsthe user that an edge of an electronic document has been reached.
U.S. Patent No. 7,864,163: The 163 patent is directed to a feature that allows auser to zoom into and navigate a structured electronic document.
U.S. Patent No. 7,844,915: The 915 patent is directed to a feature thatdistinguishes between single-finger scroll and multi-finger gestures.
U.S. Patent No. 7,663,607: The 607 patent is directed to touchscreen hardware. U.S. Patent No. 7,920,129: The 129 patent is directed to touchscreen hardware. U.S. Patent No. 7,812,828: The 828 patent is directed to a feature that interprets a
users contacts on a touchscreen.
U.S. Patent No. 6,493,002: The 002 patent is directed to features in a status barfor computing devices.
U.S. Patent No. 7,853,891: The 891 patent is directed to timed notificationwindows for computing devices.
iii. Trademarks11. Apple asserted claims for federal trademark infringement (under 15 U.S.C.
1114), common law trademark infringement, and unfair business practices (under California
Business & Professions Code 17200) based on the following registered trademarks:
U.S. Registration No. 3,886,196 for an icon that is green in color with a whitesilhouette of a phone handset arranged at a 45 degree angle and centered on the
icon that represents the application for making telephone calls.
U.S. Registration No. 3,886,200 for an icon featuring a yellow and greensunflower against a light-blue background that represents the application for
photographs.
Case5:11-cv-01846-LHK Document2851-4 Filed12/05/13 Page6 of 87
8/13/2019 Apple vs Samsung 5 December 2013
34/129
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
DECL.OF MICHAEL JACOBS ISOAPPLES MOT.FOR ATTORNEYSFEESCASENO.11-CV-01846LHK(PSG) 5
sf-3189895
U.S. Registration No. 3,889,642 for an icon that is green in color with a whitesilhouette of a speech bubble centered on the icon that represents the application
for messaging.
U.S. Registration No. 3,889,685 for an icon that features gears against a graybackground that represents the application for settings.
U.S. Registration No. 3,886,169 for an icon that features a yellow notepad thatrepresents the application for notes.
U.S. Registration No. 3,886,197 for an icon that features a silhouette of a man on aspiral-bound address book that represents the application for contacts.
U.S. Registration No. 2,935,038 (the iTunes Eighth Note and CD DesignTrademark) for an icon that features a two eighth note and CD logo for iTunes
on-line music services.
12. Apple asserted common law trademark infringement and unfair business practicesclaims (under California Business & Professions Code 17200) based on the following
unregistered trademark:
Purple iTunes Store Trademark (unregistered trademark as shown in U.S.Application Serial No. 85/041,463) for an icon with a purple background color
with a white circle and a silhouette of two white eighth notes within the white
circle.
iv. Trade Dress13. Apple asserted claims for federal trade dress infringement (15 U.S.C. 1114),
federal trade dress dilution (15 U.S.C. 1125(c)), and unfair business practices (under California
Business & Professions Code 17200) based on the following registered trade dresses:
U.S. Registration No. 3,470,983 for the configuration of a handheld mobile digitalelectronic device.
U.S. Registration No. 3,457,218 for the configuration of a handheld mobile digitalelectronic device.
Case5:11-cv-01846-LHK Document2851-4 Filed12/05/13 Page7 of 87
8/13/2019 Apple vs Samsung 5 December 2013
35/129
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
DECL.OF MICHAEL JACOBS ISOAPPLES MOT.FOR ATTORNEYSFEESCASENO.11-CV-01846LHK(PSG) 6
sf-3189895
U.S. Registration No. 3,475,327 for the configuration of a handheld mobile digitalelectronic device.
14. Apple asserted claims for federal false designation of origin and unfair competition(under 15 U.S.C. 1125(a)), federal trade dress dilution (15 U.S.C. 1125(c)), and unfair
business practices (under California Business & Professions Code 17200) based on the
following unregistered trade dresses:
iPhone Trade Dress iPhone 3G Trade Dress iPhone 4 Trade Dress iPhone/iPhone 3G/iPhone 4 Trade Dress (aka Combination Trade Dress) iPad Trade Dress iPad 2 Trade Dress
15. At the direction of the Court, Apple narrowed its case several times during thecourse of the litigation, dropping certain claims, patents, and trade dresses. Ultimately, trial
proceeded on the 381, 163, and 915 utility patents; the D677, D087, D305, and D889 design
patents; the 983 trade dress, unregistered iPhone 3G trade dress, and unregistered iPhone
combination trade dress; and unregistered iPad/iPad 2 trade dress.
16. In addition to this action, Morrison Foerster represented Apple in other actions inthe United States involving utility and/or design patents that Apple has brought against Samsung.
See, e.g.,In re Elec. Digital Media Devices & Components, Inv. No. 337-TA-796 (2012) and
Apple v. Samsung, Case No. 12-cv-0630-LHK (PSG) (N.D. Cal.). Work done for each of those
cases was recorded using a separate matter number, and although certain depositions and
discovery from one or more of those actions were designated for use in this matter, Apple is only
seeking fees billed for this matter.
B. Written Discovery17. The parties served and responded to extensive written discovery in this action.
Including both the offensive and defensive sides of the case, Samsung served 583 requests for
production, 89 interrogatories, and 2,518 requests for admission. Also across both sides of the
Case5:11-cv-01846-LHK Document2851-4 Filed12/05/13 Page8 of 87
8/13/2019 Apple vs Samsung 5 December 2013
36/129
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
DECL.OF MICHAEL JACOBS ISOAPPLES MOT.FOR ATTORNEYSFEESCASENO.11-CV-01846LHK(PSG) 7
sf-3189895
case, Apple served 694 requests for production, 86 interrogatories, and 1,529 requests for
admission. Given the complexity of the case, individual requests for documents often
encompassed a large number of documents, and many interrogatories contained numerous
subparts.
18. Samsung produced many documents in Korean but did not provide translations forthese documents during discovery. This required Apple to retain Korean language translators and
attorneys with Korean language skills to review them.
C. Depositions19. The parties conducted many depositions in this matter. Across both sides of the
case, the parties conducted over 200 depositions, resulting in well over 2,500 deposition exhibits.1
These included depositions of Apple, Samsung, and third-party witnesses. Because Samsung
generally made its employees available for deposition in the location where they worked, many
depositions occurred in or around Seoul, South Korea. The depositions of most Apple employees
were taken in Northern California. The parties also conducted a substantial number of third-party
depositions in locations across the United States. In all, the parties conducted depositions in
South Korea and England, as well as in California, New York, Utah, Texas, Illinois,
North Carolina, Oregon, Washington, Virginia, Missouri, Colorado, Massachusetts,
Pennsylvania, Georgia, Hawaii, Rhode Island, New Jersey, Florida, and Washington, D.C.
Throughout the fact discovery period, there were often numerous depositions across the
United States and in South Korea in a single week, and often multiple depositions on a single day,
requiring a very large team to accomplish all the necessary discovery.
20. There were a substantial number of documents produced that had to be reviewedand analyzed for depositions. Selection of documents for depositions required numerous
attorneys and a multi-step process. On average, about one-tenth of the documents produced by
1Because of the scope and complexity of the case, the Court authorized the parties toconduct discovery beyond some of the usual limitations. For example, the Federal Rules of CivilProcedure limit depositions to ten per side (Fed. R. Civ. P. 30(a)(2)(A)(i)) and those depositionscannot exceed seven hours (Fed. R. Civ. P. 30(d)(1)).
Case5:11-cv-01846-LHK Document2851-4 Filed12/05/13 Page9 of 87
8/13/2019 Apple vs Samsung 5 December 2013
37/129
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
DECL.OF MICHAEL JACOBS ISOAPPLES MOT.FOR ATTORNEYSFEESCASENO.11-CV-01846LHK(PSG) 8
sf-3189895
Samsung were sourced to a given custodian and flagged by Apples Korean-language attorneys as
potentially useful for the custodians upcoming deposition. Before Apples outside counsel could
review the flagged documents and consider them for use in deposition, however, each document
had to be translated into English. On average, each document produced by Samsung contained
about 12 pages of text. Apples experience was that an informal translation of 12 pages of text
suitable for internal use could be prepared in about 45 minutes, but formal translation took much
more time. Translation of documents needed for depositions typically took multiple full-time
Korean-language translators several days to complete. After documents were translated, Apples
outside counsel analyzed and selected the translated Samsung documents for deposition purposes.
21. For Samsung designers, developers, and marketing custodians, Apple had to piecetogether from the custodians files what role (among the multitude of possible roles) he or she
played in the design, development, and/or commercialization of products that took several months
and sometimes years to plan, design, develop, and launch. Understanding the development of the
infringing features also involved reviewing e-mails and documents containing source code and
other technical information. The review of Samsungs financial information was equally
complicated, as data had to be stitched together from several documents before the relevance of
financial materials could be determined. Further, Samsung produced multiple, conflicting
versions of certain key financial documents and produced documents in a manner that failed to
consolidate the financial information from its Korean and United States operations. These
failures were particularly important in connection with the trade dress case, in which Samsungs
profits were an available remedy.
D. Discovery Disputes22. Apples discovery costs were further multiplied by Samsungs conduct during
discovery. Samsung forced Apple to file multiple motions to compel, including motions seeking
production of copying documents, source code, and financial information. In several instances,
Apple needed multiple orders before Samsung finally complied.
23. Samsung also pursued extensive discovery on hopeless defenses that it laterabandoned, including many arguments regarding the alleged functionality of the design patents
Case5:11-cv-01846-LHK Document2851-4 Filed12/05/13 Page10 of 87
8/13/2019 Apple vs Samsung 5 December 2013
38/129
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
DECL.OF MICHAEL JACOBS ISOAPPLES MOT.FOR ATTORNEYSFEESCASENO.11-CV-01846LHK(PSG) 9
sf-3189895
and asserted trade dresses. For example, Samsung demanded depositions of individuals that
worked in Apples model shop or as paint mixers, including Amy Chuang, Chris Harris,
Chris Hood, Zack Kamen, Mark Lee, Fred Simon, and Aaron Von Minden. These depositions
required Apple to review tens of thousands of documents. Samsung insisted that Apple run
special searches regarding white iPhone issues, which resulted in Apple reviewing additional
thousands of documents totaling many tens of thousands of pages. White iPhone issues were not
raised at trial. Similarly, Samsung insisted on deposing multiple individuals regarding drop
tests for the iPhone, including Richard Dinh, Phil Hobson, Chris Prest, Fletcher Roth