Apple Inc. v. Samsung Electronics Co., Ltd.
768 F. Supp. 2d 1040
N.D. Cal.2011Background
- Apple filed suit alleging Samsung's Galaxy devices and tablets infringe Apple trade dress, trademarks, and patents.
- Apple moved for expedited discovery regarding five upcoming Samsung products (Galaxy S2, Galaxy Tab 8.9, Galaxy Tab 10.1, Infuse 4G, Droid Charge).
- Court granted limited expedited discovery of product samples, packaging, and inserts under a strict protective order.
- Samsung sought reciprocal expedited discovery of Apple's future products; Apple refused to provide such materials.
- Samsung moved to compel Apple to produce Apple's next-generation products for use in opposing a potential preliminary injunction, but the court denied.
- Court applied good-cause standard for pre-Rule 26(f) expedited discovery and emphasized focus on existing products in Apple's potential injunction.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Samsung shows good cause for expedited discovery. | Samsung argues parity in discovery is warranted for opposition. | Samsung contends future products are relevant to likelihood of confusion. | No good cause; motion denied. |
| Are Apple's future products relevant to preliminary injunction likelihood of confusion. | Apple's future products not within current claims; not needed for injunction. | Future products could affect Sleekcraft factors—similarity, proximity, strength. | Future products not required for opposition; limited relevance acknowledged. |
| Should Samsung receive parity in discovery for Apple's potential injunction. | Samsung seeks discovery parity on issues related to potential injunction. | Parity is appropriate for relevant issues in opposition. | Court would grant parity if discovery aligned with issues discussed; not granted here due to scope. |
| Does the protective order suffice to permit disclosure of future product information. | Apple argues stronger protection would be needed due to trade secrets. | Strict protective order is adequate for both parties. | Protective order deemed adequate; prejudice not the controlling issue. |
| What is the controlling basis for the court's decision on expedited discovery. | Focus on possible infringement of existing Apple products. | Consider broader product line implications for trade dress. | Good-cause not shown for Apple generational products; motion denied. |
Key Cases Cited
- AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) (eight-factor likelihood-of-confusion test)
- Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999) (core element is likelihood of confusion; flexible factors)
- Network Automation, Inc. v. Advanced Systems Concepts, Inc., 638 F.3d 1137 (9th Cir. 2011) (flexible Sleekcraft analysis; consider modes of consumer encounter)
- Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7 (U.S. 2008) (preliminary injunction standard: likelihood of irreparable harm, etc.)
- Semitool, Inc. v. Tokyo Electron America, Inc., 208 F.R.D. 273 (N.D. Cal. 2002) (good cause for expedited discovery; balancing need and prejudice)