Apple Inc. v. Samsung Electronics Co. Ltd. et al

Filing 1033

*** FILED IN ERROR. REFER TO DOCUMENT #1035 . *** Administrative Motion to File Under Seal filed by Apple Inc.. (Attachments: #1 Proposed Order, #2 Public Opposition to Motion for Leave to Seek Reconsideration of May 21, 2012 Order, #3 Proposed Order, #4 Declaration of Grant L. Kim in Support of Opposition, #5 Exhibit A to Public Kim Declaration, #6 Exhibit B to Public Kim Declaration, #7 Exhibit C to Public Kim Declaration, #8 Exhibit D to Public Kim Declaration)(Jacobs, Michael) (Filed on 6/4/2012) Modified on 6/5/2012 (fff, COURT STAFF).

Exhibit C

No. 2012-1105

NONCONFIDENTIAL
VERSION

IN THE
UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
APPLE INC.,
Plaintiff-Appellant,
v.
SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS
AMERICA, INC., AND SAMSUNG TELECOMMUNICATIONS
AMERICA, LLC,
Defendants-Appellees.

On Appeal from the United States District Court for the Northern District of
California in Case No. 11-cv-01846-LHK, Judge Lucy H. Koh

NONCONFIDENTIAL REPLY BRIEF OF APPELLANT APPLE INC.

HAROLD J. MCELHINNY
MICHAEL A. JACOBS
GRANT L. KIM
ALISON M. TUCHER
RICHARD S.J. HUNG
MORRISON & FOERSTER LLP
425 Market Street
San Francisco, CA 94105-2482
Telephone: [phone]

BRIAN R. MATSUI
MORRISON & FOERSTER LLP
2000 Pennsylvania Avenue, N.W.
Washington, D.C. 20006-1888
Telephone: [phone]

Counsel for Plaintiff-Appellant Apple Inc.

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designs perform the same functions, including tablets that Samsung manufactured
before it started copying Apple’s design. (AOB2; A39, A7151-54, A5759-60,
A5905-31, A7097-7100, A7125-40.)
Nor has Samsung shown clear error in the district court’s finding of likely
infringement. Samsung’s infringement analysis repeats the error of its validity
analysis: it compares piecemeal elements rather than whole designs to determine if
they are substantially the same. Int’l Seaway Trading Corp. v. Walgreens Corp.,
589 F.3d 1233, 1240-41 (Fed. Cir. 2009) (“focus [is] on the overall designs”).
Taken as a whole, an ordinary observer would conclude that Samsung’s Tab 10.1
is substantially the same as the D’889 design. (AOB11-12, A1691-93, A17991807.)

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(A1691-92, A1799-1803.)
Samsung now relies on purported differences that it never raised below—
including “noticeably more softly rounded corners” in the Tab 10.1 and a “gap
between the flat front surface and the device’s edge” in the D’889 design. (RB63
(citing A8626-42).) These supposed differences are based on comparisons to
photographs submitted as an appendix to the PTO that were expressly excluded
from the scope of the D’889 patent. The PTO does not accept photographs unless
they “are the only practicable medium for illustrating the claimed invention.”
37 C.F.R. § 1.84(b)(1); see MPEP § 1503.02 (prohibiting submission of drawings
combined with photographs because it would “result in a high probability of
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inconsistencies between corresponding elements on the ink drawings as compared
with the photographs”). Accordingly, the Examining Attorney “cancelled” the
statement regarding an appendix to the D’889 application (A9243-44, A9280-82),
and the D’889 claims are represented by the drawings alone.
Finally, Samsung’s argument that “sophisticated consumer[s]” would not be
confused (RB63) seeks to apply the inapposite trademark infringement test of
“likelihood of confusion”; the correct question is whether an ordinary observer
would consider the designs to be substantially the same. Egyptian Goddess, Inc. v.
Swisa, Inc., 543 F.3d 665, 678 (Fed. Cir. 2008) (en banc). In any event,
Samsung’s argument is belied by the fact that its own counsel—who is presumably
“sophisticated” in her knowledge of Samsung’s design—could not distinguish
between a Tab 10.1 and an iPad 2 without consulting others. (A387-88, A399401.) Her confusion was not surprising. The products are not only substantially
the same, but “virtually indistinguishable.” (A47.)
III.

SAMSUNG’S SMARTPHONE AND TABLET SALES SHOULD BE
ENJOINED UNDER THE ’381 PATENT
A.

The District Court Erred By Not Finding Likely Irreparable
Harm
1.

Apple’s loss of market share and downstream sales
constitutes irreparable harm

The district court correctly found that the ’381 patent is likely valid and
infringed, but again applied an incorrect irreparable harm standard, requiring that
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