Professional Documents
Culture Documents
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Federal Circuit
APPLE INC., a California corporation,
Plaintiff-Appellee,
v.
SAMSUNG ELECTRONICS CO., LTD., a Korean corporation,
SAMSUNG ELECTRONICS AMERICA, INC., a New York corporation,
SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
a Delaware limited liability company,
Defendants-Appellants.
KATHLEEN M. SULLIVAN
WILLIAM B. ADAMS
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
51 Madison Avenue, 22nd Floor
New York, New York 10010
(212) 849-7000
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VICTORIA F. MAROULIS
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
555 Twin Dolphin Drive, 5th Floor
Redwood Shores, California 94065
(650) 801-5000
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KEVIN A. SMITH
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
50 California Street, 22nd Floor
San Francisco, California 94111
(415) 875-6600
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CERTIFICATE OF INTEREST
Counsel for Defendants-Appellants certifies the following:
1.
Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. Effective
January 1, 2015, Samsung Telecommunications America, LLC (STA) merged
with and into Samsung Electronics America, Inc., and therefore STA no longer
exists as a separate corporate entity.
2.
The name of the real party in interest (if the party named in the caption
All parent corporations and any publicly held companies that own 10
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4.
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The names of all law firms and the partners or associates that appeared
for the party or amicus now represented by me in the trial court or are
expected to appear in this court are:
Quinn Emanuel Urquhart & Sullivan, LLP: Anne E. Abramowitz; William B.
Adams; Anthony P. Alden; Carl G. Anderson; Brett J. Arnold; Katharine F.
Barach; Robert J. Becher; Albert P. Bedecarre; Heather E. Belville; Kara M.
Borden; Todd M. Briggs; Margret M. Caruso; Jon C. Cederberg; Melissa N. Chan;
Prashanth Chennakesavan, Kenneth R. Chiate; Edward J. DeFranco; Susan R.
Estrich; Michael L. Fazio; Ryan S. Goldstein; John S. Gordon; Diane Hutnyan;
Kevin P.B. Johnson; Rachel H. Kassabian; Scott B. Kidman; Brian E. Mack;
Victoria F. Maroulis; Joseph B. Martin; Joseph Milowic; Melissa Chan OSullivan;
Thomas D. Pease; John M. Pierce; William C. Price; B. Dylan Proctor; John B.
Quinn; Carey R. Ramos; Kevin A. Smith; Christopher E. Stretch; Robert W. Stone;
Kathleen M. Sullivan; Bill Trac; Mark Tung; Charles K. Verhoeven; Curran M.
Walker; Scott L. Watson; Thomas R. Watson; Alan L. Whitehurst; Robert Wilson;
Michael T. Zeller
Colt / Singer / Bea LLP: Benjamin L. Singer
Crone Hawxhurst LLP: Daryl M. Crone
DLA Piper US LLP: Thomas G. Pasternak
ii
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Hopenfeld Singer Rice & Saito: James E. Hopenfeld; Edward H. Rice; Marina N.
Saito
Sheppard Mullin Richter & Hampton LLP : Gary L. Halling; Mona Solouki
Steptoe & Johnson LLP:
Respectfully submitted,
By: /s/ Kathleen M. Sullivan
Kathleen M. Sullivan
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
51 Madison Avenue, 22nd Floor
New York, NY 10010
(212) 849-7000
Attorney for Defendants-Appellants
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TABLE OF CONTENTS
Page
TABLE OF AUTHORITIES ....................................................................................vi
STATEMENT OF COUNSEL PURSUANT TO FED. CIR. R. 35(B)(2) ............... 1
PRELIMINARY STATEMENT ............................................................................... 1
FACTUAL STATEMENT ........................................................................................ 3
ARGUMENT ............................................................................................................. 5
I.
B.
2.
3.
2.
3.
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4.
II.
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CONCLUSION ........................................................................................................ 15
ADDENDUM
PROOF OF SERVICE
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TABLE OF AUTHORITIES
Page(s)
Cases
Apple Comp., Inc. v. Microsoft Corp.,
35 F.3d 1435 (9th Cir. 1994) .............................................................................. 15
Apple Inc. v. Samsung Elecs. Co. Ltd.,
678 F.3d 1314 (Fed. Cir. 2012) .......................................................................... 13
Apple Inc. v. Samsung Elecs. Co.,
695 F.3d 1370 (Fed. Cir. 2012) ..........................................................2, 3, 4, 5, 15
Applied Arts Corp. v. Grand Rapids Metalcraft Corp.,
67 F.2d 428 (6th Cir. 1933) ................................................................................ 15
Bilski v. Kappos,
561 U.S. 593 (2010) ............................................................................................ 15
Bush & Lane Piano Co. v. Becker Bros.,
222 F. 902 (2d Cir. 1915) .............................................................................12, 13
Bush & Lane Piano Co. v. Becker Bros.,
234 F. 79 (2d Cir. 1916) .........................................................................12, 13, 14
Dobson v. Dornan,
118 U.S. 10 (1886) .............................................................................................. 11
eBay Inc. v. MercExchange, L.L.C.,
547 U.S. 388 (2006) ......................................................................................11, 15
Egyptian Goddess, Inc. v. Swisa, Inc.,
543 F.3d 665 (Fed. Cir. 2008) ..................................................................1, 6, 7, 8
Elmer v. ICC Fabricating, Inc.,
67 F.3d 1571 (Fed. Cir. 1995) .............................................................................. 6
Ill. Watch Case Co. v. Hingeco Mfg. Co.,
81 F.2d 41 (1st Cir. 1936) ................................................................................... 15
Lee v. Dayton-Hudson Corp.,
838 F.2d 1186 (Fed. Cir. 1988) ................................................................1, 7, 8, 9
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37 C.F.R. 1.153(a)................................................................................................. 13
Miscellaneous Authorities
18 Cong. Rec. 835 (1887) ........................................................................................ 12
H.R. Rep. No. 1966 (1886) ...................................................................................... 12
Ryan Davis, Fed. Circs Apple Ruling Shows Power of Design Patents,
Law360 (May 18, 2015) .................................................................................... 14
Jason Rantanen, Apple v. Samsung: Design Patents Win, available at
http://patentlyo.com/patent/2015/05/samsung-design-patents.html ................... 14
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infringement and trade-dress dilution. The panel (Prost, C.J., joined by OMalley
& Chen, JJ.) reversed the award of $382 million in trade-dress dilution damages
but affirmed the remaining $548 million in damages. Of that amount, $399 million
represents an award of Samsungs entire profits from products found to infringe
Apples design patents; this petition seeks en banc review of that award.
The panel decision is the first from this Court involving design-patent
infringement by a complex electronic device. Unlike rugs, spoons, and simple
mechanical objects, smartphones incorporate hundreds or thousands of different
patented technologies, and it is undisputed here that Apples design patents claim
only partial, minor features of such devices and that some attributes of those
designs are functional. And yet the panel upheld the infringement finding without
requiring the district court to properly construe the patents or instruct the jury to
filter out functional attributes. And the panel deemed itself bound by Section 289
to uphold an award of all of Samsungs profits from the infringing products even
though the patented designs are only minor features of those products. Both
holdings warrant en banc review, for they conflict with precedent, create
confusion, and raise the prospect that a design patent, alone among all species of
intellectual property, will allow its holder to leverage its patent for competitive
gain beyond that which the inventive contribution and value of the patent warrant.
Apple Inc. v. Samsung Elecs. Co., 695 F.3d 1370, 1375 (Fed. Cir. 2012).
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FACTUAL STATEMENT
1. The Apple design patents at issue claim only a portion of a smartphones
front face (D087, D677) and one graphical-user-interface screen (D305). At
trial, the district court declined to construe the patents except to say that each
patent claims the ornamental design of an electronic device [or graphical user
interface] as shown in the patent figures (A1390-91; A44019-21).
And the
courts instructions told the jury to find infringement if the overall appearance of
an accused Samsung design is substantially the same as the overall appearance of
the claimed Apple design patent, without limiting those similarities to ornamental
features.
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figures. Id. at 21 (quoting A1390-91). The panel held that the courts failure to
direct the jury to consider only ornamental rather than functional similarities
was harmless. Id. at 21-22. And the panel rejected Samsungs insufficiency
argument, holding simply that Apples witnesses provided sufficient testimonies
to allow the jury to account for any functional aspects in the patents. Id. at 24.
4. The panel held that 35 U.S.C. 289 authorizes the award of an infringers
entire profits from a product containing a patented design on only a partial, minor
feature. Slip Op. 25-28. Holding that the statute allows the award of total profit
from the article of manufacture bearing the patented design (id. at 26-27), the
panel interpreted article of manufacture as something that is sold separately
to ordinary purchasers and held that the term could not be limited to a product
component that embodies the claimed subject matter of the patent (id. at 27-28).
ARGUMENT
I.
The Supreme Court has made clear that district courts must construe the
scope and meaning of a patent claim and may not abdicate such claim construction
to a jury, Markman, 517 U.S. at 390, even when it involves factual disputes, Teva,
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135 S. Ct. at 835. Such construction must inform, with reasonable certainty,
those skilled in the art about the scope of the invention. Nautilus, 134 S. Ct. at
2124. And trial courts have a duty to conduct claim construction in design patent
cases, as in utility patent cases. Egyptian Goddess, 543 F.3d at 679 (citing Elmer
v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995)).
The panel decision conflicts with these precedents, for it upholds a designpatent infringement finding in the absence of any judicial claim construction
distinguishing ornamental from functional elements in Apples design patents. The
panel decision found adequate the courts construction of the patents as claiming
the ornamental design as shown in the patent figures. Slip Op. 21 (quoting
A1390-91). But the judicial obligation to construe the scope of a design patent
cannot be satisfied merely by reciting the term ornamental, which already
appears on the face of the patents themselves (A20046-47; A20062; A20123). Nor
can it be satisfied by telling the jury to look at the patent figures unaided by
guidance as to what is (or is not) ornamental about them, for the term ornamental
is not self-executing, and there can be no doubt that the figures of Apples design
patents contain functional elements, as the panels trade-dress holding confirms.3
The D087 and D677 claim elements similar to the unregistered trade dress
the panel found functional, and the D305 claims a GUI with icons similar to the
registered trade dress the panel found functional.
3
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Until now, this Courts precedents have made clear that, where a design
contains both functional and non-functional elements, the scope of the claim must
be construed to distinguish those elements. OddzOn, 122 F.3d at 1405, quoted in
Egyptian Goddess, 543 F.3d at 680; see Richardson, 597 F.3d at 1294. This Court
has never before held that requirement satisfied by merely reciting a patents claim
to the ornamental design as shown in the figures, and the panel decision thus
conflicts with precedent by leaving district courts free to forego a construction that
limits the scope of the patent to ornamental attributes. OddzOn, 122 F.3d at
1405. The decision also conflicts with Markman, Nautilus, Teva, and Egyptian
Goddess by leaving it up to the jury to account for any functional aspects in the
asserted design patents (Slip Op. 24 (emphasis added)), when that role is for the
court. These conflicts warrant en banc review.
2.
The panel decision further conflicts with this Courts uniform line of
decisions requiring that design-patent infringement be based on similarities in the
overall appearance of only those features in the claimed and accused designs
which are ornamental. Read, 970 F.2d at 825 (emphasis added). On a record in
which Apples designs clearly contain significant functional elements, the panel
decision cannot be reconciled with these prior decisions.
For example, in Lee, 838 F.2d 1186, this Court affirmed a bench-trial
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The panels effort to reconcile its decision with Richardson (Slip Op. 20) is
unavailing. The panel notes that the claim construction approved in Richardson
did not exclude functional components in their entirety but instead included
the ornamental aspects of those components (e.g., a hammer head of a standard
shape or a crow-bar with a diamond-shaped flare). But here the district courts
construction did not mention any features of Apples designs, much less specify
the ornamental aspects of particular components (e.g., rounded corners with a
shallow radius, or an outer casing with a narrow bezel). Contrary to the panels
4
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In each of these precedents, there was overall similarity between the designs,
but this Court held infringement precluded for lack of proof of overall ornamental
similarity. The panel decision breaks with this line of authority by upholding an
instruction that the jury should consider any similarities rather than only
ornamental, not functional, similarities and that never explained the standard for
determining functionality for infringement purposes. See supra, at 3 & n.1. The
panels holding conflicts with Lee, Read, OddzOn, and Richardson, and warrants
en banc review by this Court.
3.
The panel devoted but a single paragraph (Slip Op. 24) to rejecting
Samsungs arguments that the record failed to support infringement under the
proper standards, holding that Apples witnesses provided sufficient testimonies
to allow the jury to account for any functional aspects in the asserted design
patents and that those witnesses testified on the similar overall visual
impressions of the accused products to the asserted design patents. But these
unexplained statements only compound the conflicts described above, for Apples
suggestion (id.), Samsung has never argued that entire components must be
eliminate[d] from the claim scope when they serve a function, but rather that
only their ornamental attributes may be considered and their functional attributes
must be identified and discounted.
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Section 289 allows damages to the extent of [the infringers] total profit
for applying a patented design to an article of manufacture, and prohibits a
patentee from twice recover[ing] the profit made from the infringement. 35
U.S.C. 289 (emphases added). The panel deemed itself bound by this text to
uphold the award of all of Samsungs profits on phones found to infringe Apples
design patentsno matter how minor a portion of a smartphone the patented
designs comprise, whether or not the patented designs drove a single sale, and even
if such an award makes no sense in the modern world. Slip Op. 26-27 & n.1.
For example, Apples D305 expert opined that Samsungs products
conveyed a similar overall impression because they included a regular grid and a
colorful mix of icons (A41379), even though Apple admitted that it cannot own
a colorful matrix of icons or icons arranged in rows and columns in a grid
(A41479-80). Likewise, Apples D677 expert testified that features including a
rectangular display area under a transparent surface and a receiver slot in the
upper border area contributed to the overall impression of the design (A4101519), even though Apple admitted those features were essential for function and
absolutely functional (A41202-03; A40681). Apples experts did not filter out
any functional elements in forming their opinions. A41093; A41474; A43486.
5
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Nothing in the text of Section 289, however, compels an award of all profits
from the sale of a product containing an infringing design even where, as here, the
patented invention is but a small component of the product as sold, eBay Inc. v.
MercExchange, L.L.C., 547 U.S. 388, 396 (2006) (Kennedy, J., concurring). To
the contrary, the phrase to the extent of his total profits is best read as a term of
limitation that makes total infringers profits a ceiling not a floor; the phrase profit
made from the infringement shows that Section 289 permits only profits caused
by the infringement; and the term article of manufacture is most naturally
interpreted to mean the portion of a product as sold to which the patented design is
applied, as otherwise a defendant could be held liable for all its profits multiple
times over if its product infringed design patents held by multiple patentees.
2.
Congress enacted what is now Section 289 in the Patent Act of 1887 in
response to Dobson v. Dornan, 118 U.S. 10 (1886), which had limited a plaintiff to
only nominal damages for infringement of a patented carpet design absent proof
of the portion of the defendants profits attributable to the value of the design as
distinct from the value of the carpet itself. Trans-World Mfg. Corp. v. Al Nyman
& Sons Inc., 750 F.2d 1552, 1567 (Fed. Cir. 1984). Congress viewed the decision
as precluding effectual money recovery for infringement of design patents,
which then principally covered unitary articles like beautiful carpets and wall11
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The panels damages holding also conflicts with key design-patent decisions
closer in time to the Patent Act of 1887: In Untermeyer v. Freund, 58 F. 205 (2d
Cir. 1893), the Second Circuit affirmed an award of infringers profits from sale of
a watch case to which the design was applied and not from sales of the watch itself,
see Untermeyer v. Freund, 50 F. 77, 77-78 (C.C.S.D.N.Y. 1892). In the Piano
Cases, the Second Circuit allowed an award of infringers profits from the patented
design of a piano case but not from the sale of the entire piano, holding that
recovery should be confined to the subject of the patent and [w]hen the patent
owner is awarded the profits due to his design he receives all he is entitled to.
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Bush & Lane Piano Co. v. Becker Bros., 222 F. 902, 904-05 (2d Cir. 1915); see
Bush & Lane Piano Co. v. Becker Bros., 234 F. 79, 81-83 (2d Cir. 1916) (Piano
II). And in Young v. Grand Rapids Refrigerator Co., 268 F. 966, 974 (6th Cir.
1920), the Sixth Circuit affirmed the denial of all profits from the sale of
refrigerators where the infringed patent related only to the design of the
refrigerators door latch. The panel decision cannot be reconciled with these cases.
4.
Section 289 must be read in conjunction with Section 171, which provides
that a design patent is for an article of manufacture. 35 U.S.C. 171. And by
regulation, [t]he title of the design [in an application] must designate the
particular article. 37 C.F.R. 1.153(a). Design patents thus are regularly applied
to articles that are mere components of products as sold. Here, for example,
Apples D305 application limits the article of manufacture to the Graphical
User Interface for a Display Screen or Portion Thereof. A1289. While Apples
D677 and D087 applications have improperly broader titles (Electronic Device
(A1294; A1310)), the claims are limited to the top portion of the devices case.
See Apple Inc. v. Samsung Elecs. Co. Ltd., 678 F.3d 1314, 1317 (Fed. Cir. 2012).
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when in fact the Second Circuit clarified in Piano II that that proposition was
unsupported by the evidence and that the existence of a separate market
makes no difference in the rule of law . 234 F. at 83 (emphasis added).7
II.
Nor does Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437 (Fed. Cir. 1998),
dispel any conflict. Nike involved interpretation of the term damages in the
marking statute and did not hold that Section 289 requires an award of all profits
for products containing an infringing design on a minor feature.
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10
E.g., Ill. Watch Case Co. v. Hingeco Mfg. Co., 81 F.2d 41, 45 (1st Cir. 1936)
(infringement cannot be based on devices essential characteristics, on which no
one could have a monopoly); Applied Arts Corp. v. Grand Rapids Metalcraft
Corp., 67 F.2d 428, 430-31 (6th Cir. 1933) (similar).
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Respectfully submitted,
Susan R. Estrich
Michael T. Zeller
Robert J. Becher
B. Dylan Proctor
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
865 S. Figueroa St., 10th Floor
Los Angeles, CA 90017
(213) 443-3000
Victoria F. Maroulis
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
555 Twin Dolphin Drive, 5th Floor
Redwood Shores, CA 94065
(650) 801-5000
Kevin A. Smith
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
50 California St., 22nd Floor
San Francisco, CA 94111
(415) 875-6600
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contrary to that of the jury. Id. (citing Theme Promotions, Inc. v. News Am. Mktg. FSI, 546 F.3d 991, 999 (9th
Cir. 2008)).
The Ninth Circuit reviews a denial of a motion for a
new trial for an abuse of discretion. Revolution Eyewear,
563 F.3d at 1372. In evaluating jury instructions, prejudicial error results when, looking to the instructions as a
whole, the substance of the applicable law was [not] fairly
and correctly covered. Gantt v. City of Los Angeles, 717
F.3d 702, 707 (9th Cir. 2013) (quoting Swinton v. Potomac
Corp., 270 F.3d 794, 802 (9th Cir. 2001)) (alteration in
original). The Ninth Circuit orders a new trial based on
jury instruction error only if the error was prejudicial. Id.
A motion for a new trial based on insufficiency of evidence
may be granted only if the verdict is against the great
weight of the evidence, or it is quite clear that the jury
has reached a seriously erroneous result. Incalza v.
Fendi N. Am., Inc., 479 F.3d 1005, 1013 (9th Cir. 2007)
(internal quotation marks omitted).
Samsung appeals numerous legal and evidentiary bases for the liability findings and damages awards in the
three categories of intellectual property asserted by
Apple: trade dresses, design patents, and utility patents.
We address each category in turn.
I. Trade Dresses
The jury found Samsung liable for the likely dilution
of Apples iPhone trade dresses under the Lanham Act.
When reviewing Lanham Act claims, we look to the law of
the regional circuit where the district court sits. ERBE
Elektromedizin GmbH v. Canady Tech. LLC, 629 F.3d
1278, 1287 (Fed. Cir. 2010). We therefore apply Ninth
Circuit law.
The Ninth Circuit has explained that [t]rade dress is
the totality of elements in which a product or service is
packaged or presented. Stephen W. Boney, Inc. v. Boney
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Servs., Inc., 127 F.3d 821, 828 (9th Cir. 1997). The essential purpose of a trade dress is the same as that of a
trademarked word: to identify the source of the product. 1
McCarthy on Trademarks and Unfair Competition 8:1
(4th ed.) ([L]ike a word asserted to be a trademark, the
elements making up the alleged trade dress must have
been used in such a manner as to denote product
source.). In this respect, protection for trade dress
exists to promote competition. TrafFix Devices, Inc. v.
Mktg. Displays, Inc., 532 U.S. 23, 28 (2001).
The protection for source identification, however,
must be balanced against a fundamental right to compete
through imitation of a competitors product . . . . Leatherman Tool Grp., Inc. v. Cooper Indus., Inc., 199 F.3d
1009, 1011-12 (9th Cir. 1999). This right can only be
temporarily denied by the patent or copyright laws. Id.
In contrast, trademark law allows for a perpetual monopoly and its use in the protection of physical details and
design of a product must be limited to those that are
nonfunctional. Id. at 1011-12; see also Qualitex Co. v.
Jacobson Prods. Co., 514 U.S. 159, 164-65 (1995) (If a
products functional features could be used as trademarks,
however, a monopoly over such features could be obtained
without regard to whether they qualify as patents and
could be extended forever (because trademarks may be
renewed in perpetuity).). Thus, it is necessary for us to
determine first whether Apples asserted trade dresses,
claiming elements from its iPhone product, are nonfunctional and therefore protectable.
In general terms, a product feature is functional if it
is essential to the use or purpose of the article or if it
affects the cost or quality of the article. Inwood Labs.,
Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n.10 (1982). A
product feature need only have some utilitarian advantage to be considered functional. Disc Golf Assn v.
Champion Discs, Inc., 158 F.3d 1002, 1007 (9th Cir.
1998). A trade dress, taken as a whole, is functional if it
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2. Alternative Designs
The next factor requires that purported alternative
designs offer exactly the same features as the asserted
trade dress in order to show non-functionality. Tie Tech,
296 F.3d at 786 (quoting Leatherman, 199 F.3d at 101314). A manufacturer does not have rights under trade
dress law to compel its competitors to resort to alternative
designs which have a different set of advantages and
disadvantages. Id.
Apple, while asserting that there were numerous alternative designs, fails to show that any of these alternatives offered exactly the same features as the asserted
trade dress. Appellees Br. 62. Apple simply catalogs the
mere existence of other design possibilities embodied in
rejected iPhone prototypes and other manufacturers
smartphones. The mere existence of other designs,
however, does not prove that the unregistered trade dress
is non-functional. See Talking Rain, 349 F.3d at 604.
3. Advertising of Utilitarian Advantages
If a seller advertises the utilitarian advantages of a
particular feature, this constitutes strong evidence of
functionality. Disc Golf, 158 F.3d at 1009. An inference of a product features utility in the plaintiffs advertisement is enough to weigh in favor of functionality of a
trade dress encompassing that feature. Id.
Apple argues that its advertising was [f]ar from touting any utilitarian advantage of the iPhone design . . . .
Appellees Br. 60. Apple relies on its executives testimony that an iPhone advertisement, portraying the distinctive design very clearly, was based on Apples product as
hero approach. Id. (quoting J.A. 40641-42; 40644:22).
The product as hero approach refers to Apples stylistic
choice of making the product the biggest, clearest, most
obvious thing in [its] advertisements, often at the expense
of anything else around it, to remove all the other ele-
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tration loses its legal significance on the issue of functionality. Id. (In the face of sufficient and undisputed facts
demonstrating functionality, . . . the registration loses its
evidentiary significance.).
The 983 trade dress claims the design details in each
of the sixteen icons on the iPhones home screen framed
by the iPhones rounded-rectangular shape with silver
edges and a black background:
The first icon depicts the letters SMS in green
inside a white speech bubble on a green background;
...
the seventh icon depicts a map with yellow and
orange roads, a pin with a red head, and a redand-blue road sign with the numeral 280 in
white;
...
the sixteenth icon depicts the distinctive configuration of applicants media player device in white
over an orange background.
983 trade dress (omitting thirteen other icon design
details for brevity).
It is clear that individual elements claimed by the
983 trade dress are functional. For example, there is no
dispute that the claimed details such as the seventh icon
depicts a map with yellow and orange roads, a pin with a
red head, and a red-and-blue road sign with the numeral
280 in white are functional. See id. Apples user interface expert testified on how icon designs promote usability. This expert agreed that the whole point of an icon on
a smartphone is to communicate to the consumer using
that product, that if they hit that icon, certain functionality will occur on the phone. J.A. 41458-59. The expert
further explained that icons are [v]isual shorthand for
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Apple thus presented evidence to show that skilled artisans would interpret substantially centered in the 163
patent to mean essentially centered except for a marginal
spacing to accommodate ancillary graphical user interface
elements. We are not persuaded by Samsungs attempt to
discredit this expert testimony. We therefore agree with
the district court that Samsung failed to carry its burden
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infringe Apples utility patents-in-suit, the jury determined that an award of lost profits was not supported,
and thus awarded Apple a reasonable royalty for Samsungs infringement.
1. Lost Profits for Infringement of the 915 Patent
To recover lost profits, the patent owner must show
causation in fact, establishing that but for the infringement, he would have made additional profits. Grain
Processing Corp. v. Am. Maize-Prods., 185 F.3d 1341,
1349 (Fed. Cir. 1999). The patentee must take[] into
account any alternatives available to the infringer. Id. at
1351. [M]arket sales of an acceptable noninfringing
substitute often suffice alone to defeat a case for lost
profits. Id. at 1352.
Samsung argues that lost profits should not have
been awarded because the evidence showed the existence
of non-infringing substitutes.
Specifically, Samsung
contends that two Samsung phones, found to have not
infringed the 915 patent, should have been considered by
the jury as non-infringing substitutes. Samsung further
asserts that Apple failed to prove consumer preference of
the 915 patents technology over a purportedly comparable feature available in the two non-infringing Samsung
phones.
However, the [m]ere existence of a competing device
does not make that device an acceptable substitute.
Presidio Components, Inc. v. Am. Tech. Ceramics Corp.,
702 F.3d 1351, 1361 (Fed. Cir. 2012) (quoting TWM Mfg.
Co. v. Dura Corp., 789 F.2d 895, 901 (Fed. Cir. 1986))
(alteration in original). The mere existence of noninfringing phones is all Samsung is relying on to attack
the jurys verdict. For example, Samsung points to no
evidence to support its assertion that the two noninfringing phones included a feature comparable to the
one claimed in the 915 patent.
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AFFIRMED-IN-PART, REVERSED-IN-PART,
VACATED-IN-PART and REMANDED
COSTS
Each party shall bear its own costs.
Case: 14-1335
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Page: 62
Filed: 06/17/2015
PROOF OF SERVICE
The undersigned hereby certifies that on June 17, 2015, I electronically filed
the foregoing PETITION FOR REHEARING EN BANC with the Clerk of the
Court for the United States Court of Appeals for the Federal Circuit by using the
appellate CM/ECF system. I certify that all participants in the case are registered
CM/ECF users and that service will be accomplished by the CM/ECF system.
/s/ Kathleen M. Sullivan
Kathleen M. Sullivan
02198-51855/6889453.1