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

Filing 1035

Administrative Motion to File Under Seal CORRECTION OF DOCKET #1033 filed by Apple Inc.. (Attachments: #1 Proposed Order, #2 Public Opposition to Motion for Leave to Seek Reconsideration, #3 Proposed Order, #4 Grant L. Kim Declaration in Support of Opposition, #5 Exhibit A (Public), #6 Exhibit B, #7 Exhibit C, #8 Exhibit D)(Jacobs, Michael) (Filed on 6/5/2012)

2012-1105

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.
Appeal from the United States District Court for the Northern District of California
in case no. ll-CV-0 1846-LHK, Judge Lucy H. Koh
CONFIDENTIAL BRIEF OF DEFENDANTS-APPELLEES

Charles K. Verhoeven
Kathleen M. Sullivan
Kevin P.B. Johnson
Victoria F. Maroulis
Michael T. Zeller
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
50 California St., 22nd Floor
San Francisco, CA 94111
Telephone: [phone]
Facsimile: [phone]
Attorneys for Defendants-Appellees

provides an independently sufficient alternative ground for affirmance for the same
reasons as with respect to the D'087 and D'677 patents. 13
The district court's denial of a Apple's motion as to the D'889 patent also
may be affirmed on the alternative ground that Apple failed to demonstrate likely
success in proving that the Galaxy Tab 10.1 infringes the D'889 patent.

The

district court acknowledged that there were "several differences" between them,
including "the profile view of the D'889 patent is thicker and with less
curved/sloping profile view than the Galaxy Tab 10.1; the Galaxy Tab 10.1 has a
different aspect ratio than the D'889 design; and the Galaxy Tab 10.1 has an upper
tab cut out of the back portion with an embedded camera and a logo and other
writing that is not claimed in D'889." (A46-47).

The few features of the D'889 design not present in the D'087 and D'677
designs are also functional:
13

Thin form factor
Rim surrounding the front surface
Smooth back panel
(A4063-64.)

Reduces size and weight
Secures the front surface
Allows the device to lie flat
61

Samsung Galaxy Tab 10.1

Apple's D'889 Patent

(AI86-87; A4067-69.) The district court nevertheless concluded, without analysis,
that the similarities overcome the differences. (A47).
In so ruling, the district court failed to follow the analysis set forth in
Gorham and its progeny, instead resting on the ipse dixit that differences between
the Galaxy Tab 10.1 and the D'889 patent (and/or Apple's iPad and iPad2i 4 are
"minor."

This assessment cannot be reconciled with the undisputed record

The district court also erred in comparing the Galaxy Tab 10.1 to either
the iPad or iPad2. Although it is permissible to compare an accused article to the
patentee's article "when the patented design and the design of the article sold by
the patentee are substantially the same," L.A. Gear, 988 F.2d at 1125, neither
device is "substantially the same" as the D'889 design.
14

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reflecting that the Galaxy Tab 10.1: (1) is approximately half as thick as the D'889
design; (2) has a display screen with a 16:1 aspect ratio that is significantly
different from the D'889 screen's 4:3 aspect ratio; (3) has an outer casing made of
three parts (not two); (4) has noticeably more softly rounded comers; (5) has
differently-shaped edges and bezel; (6) has a metallic lip and substantial
ornamentation on the back; and (7) has no gap between the flat front surface and
the device's edge. (A4066-67; A4765-69; A8626-42.) Apple has emphasized the
significance of a tablet's thickness, as its marketing campaign highlights that the
iPad2, at 8.8 mm, is "thinner" than the first iPad. (A4821.)
With these substantial differences in appearance, a sophisticated consumer,
familiar with the prior art, would not be deceived into thinking that the Galaxy Tab
10.1 design was an iPad or an iPad2, thereby "inducing him to purchase one
supposing it to be the other." Egyptian Goddess, 543 F.3d at 678. Indeed, Apple
has not identified a single example of customer confusion.

Under the proper

standard, Samsung has presented substantial questions of non-infringement.

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are entered. The plain meaning of the phrase "in response to" simply indicates a
causal relationship, not one of necessity.
The specification of the '381 patent itself demonstrates this construction is
incorrect, as it includes several examples that an event "may be" "in response to" a
cause, even if the event does not occur every time the causal factor is present.
(A239 at 20:41-43; A240 at 21 :23-25; A240 at 21 :58-60; A244 at 29:21-25.) The
district court's construction is therefore contrary to the intrinsic evidence, and the
prior art raises substantial questions of invalidity. 16

IV.

AT WORST, THIS COURT SHOULD REMAND FOR FURTHER
CONSIDERATION
Should this Court disagree with the district court's ruling, its order should

not be reversed but instead should be vacated and remanded for further
consideration.

Substantial new evidence that is not in the record has been

discovered since the hearing that strongly supports the invalidity and noninfringement of Apple's design patents, including:
1.

More clear photographs of the mock-up that Apple submitted to the

PTO and the mock-up itself (all of which Apple improperly withheld before the
hearing) unequivocally belie that the D'889 patent had an "edge-to-edge reflective

The decision could also be affmned on the grounds of non-infringement
or inequitable conduct (A2022-24), but space constraints preclude Samsung from
presenting these arguments.
16

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front surface."

The district court should have the opportunity to review this evidence if it further
considers infringement or Apple's flawed attempts to distinguish prior art.

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Respectfully submitted,

Dated: January 9, 2012

By:

-"'--!L------'~{/)--=----------.._

Charles K. Verhoeven
Kathleen M. Sullivan
Kevin P.B . Johnson
Victoria F. MarouEs
Michael T. Zeller
Kevin A. Smith
QUINN EMANUEL URQUHART
& SULLIVAN, LLP
50 California St. 22nd Floor
San Francisco CA 94111
Telephone: [phone]
Facsimile: [phone]

Attorneys for Defendants-Appellees

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