Judge Koh issued a case management order on Wednesday evening by local time in the second Apple v. Samsung case before her in the Northern District of California. The order came down after a case management conference held the same day. Six days ahead of the hearing the parties had submitted their proposals, which I reported on. The structure of their proposals clearly showed that Samsung, even though it's asserting the same number of patents as Apple, is on the defensive.
This is the most important paragraph (from the perspective of external observers of the case, the only important one) in Judge Koh's latest case management order because it states the scope the case will have when the trial begins on March 31, 2014:
"By February 6, 2014, the parties will be required to limit their asserted claims to 5 per side and limit their accused products to 10 per side. In addition, the parties will be required to reduce their invalidity references/systems/combinations to 15 per side."
Let's look at it item by item:
"By February 6, 2014"
Even if two parties get to take the same number of claims to trial, it's an advantage to select those claims from a greater number of different patents. In this case, the court will allow five claims at trial time, and ideally the parties would choose those five claims from five different patents -- if they still have that many different patents in play at the relevant time.
Apple wanted to ensure that summary judgment could result in further narrowing with respect to the number of different patents-in-suit, presumably because it expects to be more successful with its summary judgment (SJ) motions than Samsung (which was the case last year). Apple wanted to ensure that the parties would already have to reduce the number of different asserted patents (and not just the number of asserted claims) prior to the SJ decisions. Samsung, however, wanted to have less narrowing pressure with respect to the SJ-surviving patents if it loses any patents at the SJ stage. The SJ hearing will be held on December 12, 2013. By February 6 the parties will know the SJ decisions. The last claim-narrowing step scheduled by Judge Koh to occur before the SJ hearing and decision is a reduction of the parties' assertions to ten claims, from five different patents, per side. This is consistent with what Apple wanted, and it's what Samsung wanted to avoid. The party that prevails at the SJ stage will get to take more different patents to trial than the losing party.
"asserted claims [...] 5 per side"
This was Samsung's proposal. Apple wanted to be able to assert 12 claims from five different patents. For the jury it really isn't much more work to evaluate additional claims from a given patent. The difference between one claim and another is often just one limitation, or you have a method and an apparatus claim covering the same invention but having different liability implications. For Apple it would be potentially beneficial to assert more than one claim per patent because if a broader claim is invalidated, a narrower one may still survive and a related infringement finding may still be useful.
On Monday the parties had to narrow their list of asserted patent claims to 25 (but could select them from all of their patents-in-suit, eight per side). With respect to two patents, the '721 and '172 patents, Apple is already focusing on just one claim, while Samsung is at this stage keeping at least two claims per patent in the game.
"accused products [...] 10 per side"
Samsung proposed a limit of five accused products per side. Apple didn't make any specific proposal. It expressed concern over how Samsung defined its accused products and pointed out that it's accusing products running only four different Android versions (Jellybean, Ice Cream Sandwich, Honeycomb, Gingerbread) of infringement, even if those run on numerous Samsung products. That's why Apple tossed out the idea, as an alternative to an outright limit on the number of products, of adopting a "representative products" approach: if multiple products have the same alleged infringement pattern, it would be enough for the jury to look at one of them because "proof of infringement of an exemplary product would constitute proof as to a set of other similarly situated products". Judge Koh's order encourages that the parties reach a stipulation on representative products, but it's unclear whether the court will adopt this approach even if they can't agree -- and Samsung isn't interested in an agreement that truly enables Apple to catch multiple birds with one stone.
While the ten-product limit ordered by Judge Koh is twice as much as Samsung proposed, it's still a lot less than Apple would have liked. By accusing 10 products Samsung can cover a much larger part of Apple's revenues than vice versa. That's why it remains to be seen what happens to the "representative products" proposal.
"invalidity references/systems/combinations [...] 15 per side"
Samsung proposed "ten overall references/systems/combinations (any combination of anticipatory references/systems and/or obviousness combinations) per asserted claim", while Apple wanted each side to "limit its invalidity theories to no more than five per asserted patent". Assuming that a party asserts five different patents at trial, Judge Koh's limit of 15 invalidity theories per side means only three per patent. That's rather strict.
Judge Koh's clearly focused on keeping the schedule and narrowing the case substantially for trial. If the "representative products" approach worked out (which we'll see), I would consider this a strict but fair and balanced order.
The trial, which as I wrote above is scheduled to start on March&31, 2014, is expected to last 12 days (plus jury deliberation time).
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