Professional Documents
Culture Documents
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WILLIAM F. LEE
MARK C. FLEMING
LAUREN B. FLETCHER
WILMER CUTLER PICKERING
HALE AND DORR LLP
60 State Street
Boston, MA 02109
(617) 526-6000
MARK D. SELWYN
WILMER CUTLER PICKERING
HALE AND DORR LLP
950 Page Mill Road
Palo Alto, CA 94304
(650) 858-6000
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CERTIFICATE OF INTEREST
Counsel for Plaintiff-Cross Appellant Apple Inc. certifies the following:
1.
Apple Inc.
2.
Not applicable.
3.
All parent corporations and any publicly held companies that own 10
percent or more of the stock of the party or amicus curiae represented by me are:
None.
4.
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 agency
or are expected to appear in this court are:
MORRISON & FOERSTER LLP: Ruchika Agrawal (former), Deok Keun
Matthew Ahn (former), Charles S. Barquist, Jason R. Bartlett, Ruth N.
Borenstein, Brittany N. DePuy (former), Francis Chung-Hoi Ho (former),
Richard S.J. Hung, Michael A. Jacobs, Esther Kim, Grant L. Kim, Alexei
Klestoff (former), Rachel Krevans, Kenneth Alexander Kuwayti, Jack
Williford Londen, Harold J. McElhinny, Andrew Ellis Monach, Erik J.
Olson, Marc J. Pernick (former), Taryn Spelliscy Rawson, Christopher
Leonard Robinson, Nathaniel Bryan Sabri, Jennifer Lee Taylor, Alison
Margaret Tucher (former), Christopher James Wiener, Patrick J. Zhang
(former)
WILMER CUTLER PICKERING HALE AND DORR LLP: David B. Bassett, James
C. Burling, Robert Donald Cultice, Andrew J. Danford, Michael A. Diener,
Christine E. Duh, Mark D. Flanagan, Mark C. Fleming, Eric Fletcher,
Lauren B. Fletcher, Sarah R. Frazier, Richard Goldenberg, Robert J.
Gunther, Jr., Liv Leila Herriot, Michael R. Heyison, Peter James Kolovos,
Derek Lam, Gregory H. Lantier, Brian Larivee, William F. Lee, Andrew L.
Liao, Joseph J. Mueller, Kevin Scott Prussia, James L. Quarles, III, Michael
Saji (former), Brian Seeve, Mark Daniel Selwyn, Ali H. Shah (former),
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TABLE OF CONTENTS
Page
TABLE OF AUTHORITIES ....................................................................................iv
INTRODUCTION .....................................................................................................1
ARGUMENT .............................................................................................................5
I.
II.
B.
CONCLUSION ........................................................................................................15
CERTIFICATE OF SERVICE
CERTIFICATE OF COMPLIANCE
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TABLE OF AUTHORITIES
CASES
Page(s)
Advanced Magnetic Closures, Inc. v. Rome Fastener Corp.,
607 F.3d 817 (Fed. Cir. 2010) ..............................................................................5
Bilski v. Kappos,
561 U.S. 593 (2010) ............................................................................................12
Bush & Lane Piano Co. v. Becker Brothers,
234 F. 79 (2d Cir. 1916) ............................................................................... 12-13
Catalina Lighting, Inc. v. Lamps Plus, Inc.,
295 F.3d 1277 (Fed. Cir. 2002) ..........................................................................11
Dobson v. Bigelow Carpet Co.,
114 U.S. 439 (1885) ............................................................................................10
Dobson v. Dornan,
118 U.S. 10 (1886) ..........................................................................................6, 10
Dobson v. Hartford Carpet Co.,
114 U.S. 439 (1886) ............................................................................................10
Egyptian Goddess, Inc. v. Swisa, Inc.,
543 F.3d 665 (Fed. Cir. 2008) (en banc) ..................................................5, 6, 7, 8
Inwood Laboratories, Inc. v. Ives Laboratories, Inc.,
456 U.S. 844 (1982) ..............................................................................................7
L.A. Gear, Inc. v. Thom McAn Shoe Co.,
988 F.2d 1117 (Fed. Cir. 1993) ............................................................................7
Lee v. Dayton-Hudson Corp.,
838 F.2d 1186 (Fed. Cir. 1988) ............................................................................8
Markman v. Westview Instruments, Inc.,
517 U.S. 370 (1996) ..............................................................................................6
Microsoft Corp. v. AT&T Corp.,
550 U.S. 437 (2007) ............................................................................................15
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INTRODUCTION
Samsungs petition for rehearing attempts to make a straightforward
decision by a unanimous panel seem unduly complex, and accuses the panel of
contradicting no fewer than three Supreme Court decisions and five decisions of
this Court. Pet. 1. Samsungs protest lacks merit. The panel correctly applied
well-established case law on two narrow questions related to design patent
infringement to the particular facts of this case. En banc review is unwarranted.
Samsungs petition deals with three design patents that, taken together,
protect the unique look and feel of Apples iconic iPhone. U.S. Design Patent No.
618,677 (D677 patent) protects the iPhones distinctive front face, U.S. Design
Patent No. 593,097 (D087 patent) protects the iPhones distinctive overall
appearance (such as its particular shape, the flat contour of the front face, and the
raised edge separating the glass display from the rest of the device), and U.S.
Design Patent No. 604,305 (D305 patent) protects the iPhones colorful
graphical user interface. See Apple Br. 7-9 (displaying protected designs).
The iPhones distinctive appearance is hardly an undisputed[ly] minor
component of the device. Cf. Pet. 2. To the contrary, it was the result of years of
research and development within Apple, and received immediate critical acclaim
upon release. Apple Br. 5; e.g., A27141-27144 (New York Times describing
iPhone as gorgeous with a shiny black [front face], rimmed by mirror-finish
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stainless steel and a spectacular user interface). The iPhones unique design
and user interface quickly brought Apple enormous success. Apple Br. 5.
Samsung coveted that success. As the head of Samsungs mobile division
told its highest executives, Samsung faced a crisis of designwhen our [user
interface] is compared to the unexpected competitor Apples iPhone, the difference
is truly that of Heaven and Earth. Apple Br. 12. Rather than create its own
innovative look, Samsung appropriated Apples. Almost overnight, Samsungs
smartphone products transformed from bulky, walkie-talkie-like boxes into sleek,
streamlined, narrow rectangles that mimicked the iPhones appearance, as shown
in the following trial demonstratives:
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Id. 12-15. Samsungs own internal documentation revealed specific directions for
improvement to make Samsungs graphical user interface and icons more like
Apples. Id. 14. See, for example, the following trial demonstrative:
A90143.
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only permitted the jury to award the profit attributable to the infringement
advocate[s] for an approach that Congress rejected. Op. 25-26; accord Nike,
Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1441 (Fed. Cir. 1998).
Samsungs petition relies on rhetoric and arguments already rejected by this
Court. Its citation to supposedly conflicting cases is unavailing; Samsungs
cases are largely off-point, nonbinding, or both. Samsungs petition should be
denied.
ARGUMENT
I.
1.
Samsungs assertion (at 7) that this Court has never before [up]held
design patent claim constructions like those at issue in this case is refuted by the
very case law on which Samsung relies.1 In fact, this Court has upheld a claim
construction as simple as a tray of a certain design as is shown in figures 1-3.
Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679-680 (Fed. Cir. 2008) (en
banc) (internal quotation marks omitted). The claim constructions in this case
were actually more detailed: the district court instructed the jury to consider the
ornamental design of the patents at issue. A1390-1391 (emphasis added); Op. 21.
1
Additionally, Samsung waived this issue by raising it for the first time in a
short paragraph in its reply brief. See Advanced Magnetic Closures, Inc. v. Rome
Fastener Corp., 607 F.3d 817, 833 (Fed. Cir. 2010); see also Samsung Reply 3-4.
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Indeed, this Court has explained that [a]s a general matter, the [district]
courts should not treat the process of [design patent] claim construction as
requiring a detailed verbal description of the claimed design, as would typically be
true in the case of utility patents. Egyptian Goddess, 543 F.3d at 680 (emphasis
added). Design patents are different because they typically are claimed as shown
in drawings and a design is better represented by an illustration than it could be
by any description. Id. at 679 (quoting Dobson v. Dornan, 118 U.S. 10, 14
(1886)). While there is no per se rule prohibiting a detailed verbal description of
the claimed design, the preferable course ordinarily will be for a district court
not to attempt to do so. Id.
Many of the cases that Samsung relies upon (at 7) are accordingly easily
distinguishable, because they involved utility patents. See Markman v. Westview
Instruments, Inc., 517 U.S. 370 (1996); Nautilus, Inc. v. Biosig Instruments, Inc.,
134 S. Ct. 2120 (2014); Teva Pharms. USA, Inc. v. Sandoz Inc., 135 S. Ct. 831
(2015). And while Samsung is right that there is a duty to conduct claim
construction (Egyptian Goddess, 543 F.3d at 679 (quoted at Pet. 6)), it does not
confront the fact that this Court has not prescribed any particular form that the
claim construction must take, and, as discussed above, discourages using detailed
verbal descriptions (id. (emphasis added)). Relatedly, Egyptian Goddess makes
clear that the district court has discretion to decide whether to deliver a jury
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instruction of the kind described in OddzOn Products, Inc. v. Just Toys, Inc., 122
F.3d 1396 (Fed. Cir. 1997). See Egyptian Goddess, 543 F.3d at 680. Richardson
did not purport to overrule Egyptian Goddess (nor could it have); indeed,
Richardson emphasized that the infringement analysis does not require or permit
an element-by-element comparison of the ornamental features of the patented
design and the infringing design. See 597 F.3d at 1295.2
2.
that the Court endorsed an instruction ordering the jury to consider any perceived
similarities between Apples patented designs and Samsungs products rather than
simply the ornamental similarities. In fact, the panel held that Samsung failed to
show that there was prejudicial error. Op. 21-22. This is because the instructions
as a whole made clear that the jury was only to consider whether the ornamental
features of Apples patented designs and Samsungs products were substantially
the same. Id. (the design patents were each construed as claiming the ornamental
design as shown in the patent figures); see also, e.g., A1403 (design patent
2
While the panel vacated the award on Apples trade dress claim, that in no
way undermines its design patent ruling. The bar for trade dress functionality is
different from the bar for design patent functionality. Compare Inwood Labs., Inc.
v. Ives Labs., Inc., 456 U.S. 844, 850 n.10 (1982) (trade dress is functional if it is
essential to the use or purpose of the article or it affects the cost or quality of the
article), with L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123 (Fed.
Cir. 1993) (patented design can have some utilitarian purpose; it is only deemed
functional when the appearance of the claimed design is dictated by the use or
purpose of the article).
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Samsungs assertion that it has never argued that entire components must
be eliminated from the claim scope (Pet. 9 n.4) is revisionist history. See
Samsung Opening Br. 29 (arguing that the rectangular form, rounded corners, and
large rectangular display of Apples designs should be ignored). Samsung
makes precisely this argument just one page later in its petition. Pet. 10 n.5
(criticizing Apples experts [for] not filter[ing] out any functional elements in
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3.
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Finally, Samsung asserts (at 9-10) that the en banc Court should
rehear the panels determination that there was sufficient evidence to support the
jurys verdict. The fact-heavy and highly deferential analysis involved in
reviewing a denial of JMOL does not resolve any broad-based legal question and
thus does not warrant en banc consideration. 4
B.
1.
explicitly authorizes the award of total profit from the [infringing] article of
manufacture bearing the patented design. Op. 26-28. The statute, after all,
expressly states that the infringer shall be liable to the extent of his total
profit. 35 U.S.C. 289. This straightforward reading of 289that total profit
means all profits and not some profitsis well supported by the statutes
history and purpose. Before 1887, design-patent holders could recover only the
forming their opinions, such as a rectangular display area under a transparent
surface (emphasis added)).
4
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This Court has interpreted 289 accordingly. Op. 26; Nike, 138 F.3d at
1441 (observing that [ 289s predecessor], specific to design patents, removed
the apportionment requirement). While Samsung (at 14) tries to distinguish the
statements in Nike as dicta, the Nike Courts interpretation was crucial to its
determination that Wal-Mart was required to pay Nike its pre-tax (rather than posttax) profits from infringement. See Nike, 138 F.3d at 1448 (The statute requires
the disgorgement of the infringers profits to the patent holder, such that the
infringers retain no profit from their wrong. (emphasis added)); see also Op. 27
(collecting other cases that have adopted this interpretation).
2.
Samsung identifies no case law from this Court or the Supreme Court
that conflicts with the panels interpretation. Indeed, Samsung identifies no court
that has approved inserting Samsungs desired amendment into 289s clear
statutory language. Op. 27. Samsungs chief support for its rewriting of the
statutewhich would counterintuitively impose the same apportionment
requirement that Congress rejected, Op. 26is the fact that the patent holder
shall not twice recover the profit made from the infringement, see Pet. 10-12.
But this Court has already interpreted that language as merely insuring that a
patentee [cannot] recover both the profit of an infringer and some additional
damage remedy from the same infringer, such as a reasonable royalty. Catalina
Lighting, Inc. v. Lamps Plus, Inc., 295 F.3d 1277, 1291 (Fed. Cir. 2002) (internal
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quotation marks omitted). That phrase does not negate 289s express grant of an
infringers total profit as an available remedy. Congress would not have
contradicted its own clear language in such a backhanded manner; it does not, one
might say, hide elephants in mouseholes. Bilski v. Kappos, 561 U.S. 593, 645
(2010) (Stevens, J., concurring) (internal quotation marks omitted). In fact, several
of Samsungs own amici have acknowledged that failing to award Apple
Samsungs entire profits would have been wrong as a matter of law. E.g.,
Lemley, A Rational System of Design Patent Remedies, 17 Stan. Tech. L. Rev.
219, 220-221 & n.3 (2013); see also Apple Br. 46 n.11 (similar statements from
Professors Cotter and Risch).
Samsung also asserts that 289s phrase article of manufacture means the
specific portion of the product as sold to which the patented design is applied.
Pet. 10, 12-14. But it relies only on century-old cases that are neither binding nor
apposite. As the panel explained, the Second Circuits Piano Cases involved a
factual situation very different from that present here. Op. 27. There, a purchaser
desiring a piano of a particular manufacturer [could] have the piano placed in any
one of several cases dealt in by the maker; here, Apples design patents cover a
smartphones external appearance (its look and feel), which is not severable from
its inner workings. Op. 27-28. Moreover, the Second Circuit openly
acknowledged that it was engaging in apportion[ment], Bush & Lane Piano Co.
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v. Becker Bros., 234 F. 79, 83 (2d Cir. 1916), which is contrary to the statutes text
and purpose.
Samsungs remaining authorities are similarly inapposite. Young v. Grand
Rapids Refrigerator Co., 268 F. 966 (6th Cir. 1920), involved the design of a de
minimis portion of a refrigerator, where the patentee did not seriously contend[]
that all the profits from the refrigerator belonged to him. Id. at 974. Untermeyer
v. Freund, 58 F. 205 (2d Cir. 1893), actually supports the panels ruling: it held
that 289s predecessor required an award of the total profit from the
manufacture or sale of the article to which the [patented] design was applied. Id.
at 212 (emphasis added). And Samsungs argument (at 13 n.6) that 35 U.S.C.
171 somehow sub silentio adopted an apportionment requirement is both
unsupported (no court has ever adopted it) and waived (because it was raised only
in a footnote on reply, see Samsung Reply 17 n.9).
Finally, Samsung sets up a strawman by contending that the panel held that
289 compels an award of all profits. Pet. 3-4, 10-11 (emphasis added). In fact,
the statute gives the option to award total profit; the district court instructed the
jury accordingly. See A1403 (If you find infringement by any Samsung
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defendant and do not find Apples design patents are invalid, you may award
Apple that Samsung defendants total profit. (emphasis added)).6
II.
qualifies as exceptional and thus worthy of en banc review, but the panels wellreasoned ruling demonstrates otherwise.
As shown above, the panel applied established precedent and a
straightforward reading of a clearly written statute. Congress and this Court have
both recognized that design patents are subject to different rules from utility
patents. Accordingly, Samsung is reduced to relying on speculative policy
arguments, such as its warning that the panels ruling would permit an award of
total profits for a car based on an infringing cupholder. Pet. 15. But Apples
design patents do not cover a small or minor component of the smartphone
(Pet. 2, 11); they cover the overall appearance of the devices distinctive front face,
bezel, and graphical user interfacein other words, the iconic look and feel of
Apples iPhone. Apple Br. 6-9. As the panel correctly recognized, this distinctive
design was not severable from the inner workings of Samsungs smartphones, see
6
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Op. 27-28, in the way that a cupholder is analytically distinct from the overall
look-and-feel of a car. Samsungs wide-ranging copying of Apples innovatively
designed devices accordingly provides no basis for rewriting the patent law.
Finally, as the panel explained, such policy arguments should be
directed to Congress. We are bound by what [ 289] says, irrespective of policy
arguments that may be made against it. Op. 27 n.1. The Supreme Court has
expressly endorsed this reasoning, recognizing that [i]f the patent law is to be
adjusted , the alteration should be made after focused legislative consideration,
and not by the Judiciary forecasting Congress likely disposition. Microsoft Corp.
v. AT&T Corp., 550 U.S. 437, 458-459 (2007).
CONCLUSION
The petition should be denied.
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Respectfully submitted,
RACHEL KREVANS
RUTH N. BORENSTEIN
NATHAN B. SABRI
CHRISTOPHER L. ROBINSON
MORRISON & FOERSTER LLP
425 Market Street
San Francisco, CA 94105
(415) 268-7000
MARK D. SELWYN
WILMER CUTLER PICKERING
HALE AND DORR LLP
950 Page Mill Road
Palo Alto, CA 94304
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CERTIFICATE OF SERVICE
I hereby certify that, on this 20th day of July, 2015 I filed the foregoing
Plaintiff-Appellee Apple Inc.s Response to Defendants-Appellants Petition for
Rehearing En Banc with the Clerk of the United States Court of Appeals for the
Federal Circuit via the CM/ECF system, which will send notice of such filing to all
registered CM/ECF users.
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CERTIFICATE OF COMPLIANCE
Counsel for Plaintiffs-Appellee Apple, Inc. certifies that:
1.