Apple Must Hand Design Files to Samsung

     SAN JOSE, Calif. (CN) – Samsung Electronics can look at “sketchbooks” Apple has been trying to keep secret, and Apple must also share certain computerized design files, but only if they are viewed in a secure, third-party location, a federal judge ruled.



     “Apple shall produce all ‘sketchbooks,’ or relevant sections thereof, relating to the four patents at issue in Apple’s preliminary injunction motion,” the order says.
     U.S. Magistrate Judge Paul Grewal ruled that Samsung needs the files to prove it should not be stopped from importing or selling its Galaxy cellphones and computer tablets.
     Apple’s April trademark and trade-dress complaint argued that Samsung’s new products are copies of iPhone and iPad products.
     Grewal issued the decision Monday after clearing his courtroom for oral arguments at Apple’s request. Both parties have regularly moved in this case to file documents under seal.
     In a July motion for preliminary injunction, Apple asked the court to stop Samsung from “making, using, offering to sell, or selling within the United States, or importing into the United States, the following recently released products: the Galaxy S 4G, Infuse 4G, and Droid Charge smartphones, and the Galaxy Tab 10.1 tablet computer.”
     A hearing on the motion is on the calendar for Oct. 13.
     Grewal’s latest order specifically responds to Samsung’s request for production and several interrogatories. “Apple does not seriously dispute that the sketchbooks address designs at issue in this case, and its burden arguments are not persuasive,” the four-page decision states. Apple “offers nothing beyond attorney argument that the volume of materials to be reviewed is particularly onerous,” Grewal added.
     Aside from the “sketchbooks,” the judge also chided the parties for not balancing each other’s concerns over access to design files from an Apple computer database.
     He noted that Samsung balked at Apple’s requirement that its outside counsel closely monitor any review of the Computer Aided Design (CAD) files at their offices, though Apple was reasonably nervous about sharing “native copies of these highly proprietary files” with “no security assurances other than counsel and the expert’s commitment not to violate the provisions of the interim protective order,” according to the court.
     Grewal said he will “fix that balance for them by requiring that the inspection take place at a mutually agreeable third-party vendor capable of hosting the files in escrow in accordance with the terms of the interim protective order.” Apple has until the end of this month to set up the escrow inspection.
     Samsung overreached, however, in trying to find out when Apple became aware of the alleged trademark infringement.
     “In particular, Samsung’s insistence that Apple commit to a specific date rather [than] ‘no later than’ date revealed by its reasonable investigation would effectively require Apple to conduct an unreasonable investigation,” Grewal wrote.
     “Samsung’s insistence that Apple identify the date when it first became aware of alleged infringement with respect to any products other than Samsung’s flies in the face of the plain language of the interrogatories, none of which make this request,” he added.
     Last month, courts in Germany and the Netherlands barred Samsung from selling the Galaxy tablet and phones in the European Union. The German court granted a second injunction last week.
     Two Samsung subsidiaries, Samsung Electronics America and Samsung Telecommunications America, are also named as defendants.
     Michael Jacobs, Harold McElhinny, Jason Bartlett and Grant Kim with Morrison & Foerster represent Apple.
     Charles Verhoeven, Victoria Maroulis and Kevin P.B. Johnson with Quinn Emanuel Urquhart & Sullivan represent Samsung.

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