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

Filing 1057

Declaration of Cyndi Wheeler in Support of #999 Administrative Motion to File Under Seal , #1007 Administrative Motion to File Under Seal Samsung's Opposition to Apple's Motion for Summary Judgment and Documents in Support Thereto , Samsung's Oppotiion to Apple's Motion to Strike, and Samsung's Opposition to Motion to Exclude filed byApple Inc.. (Attachments: #1 Proposed Order, #2 Exhibit A, #3 Exhibit B, #4 Exhibit C, #5 Exhibit D, #6 Exhibit E, #7 Exhibit F, #8 Exhibit G, #9 Exhibit H, #10 Exhibit I, #11 Exhibit J, #12 Exhibit K)(Related document(s) #999 , #1007 ) (Jacobs, Michael) (Filed on 6/7/2012)

Exhibit A

EXHIBIT 3
FILED UNDER SEAL

CONTAINS CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER

UNITED STATES INTERNATIONAL TRADE COMMISSION
WASHINGTON, DC
Before The Honorable Thomas B. Pender
Chief Administrative Law Judge

In the Matter of:
Investigation No. 337-TA-796
Certain Electronic Digital Media Devices and
Components Thereof

RESPONDENT SAMSUNG ELECTRONICS CO., LTD.'S EIGHTH SET OF
SUPPLEMENTAL RESPONSES TO COMPLAINANT’S FIRST SET OF
INTERROGATORIES (NOS. 33-38)
Preliminary Statement
Samsung Electronics Co., Ltd. (“SEC” or “Respondent”) has made a reasonable
investigation for information responsive to Apple Inc.'s (“Complainant”) Interrogatories based
upon its current employees’ knowledge, information, and belief and based on the limited time
since Complainant served those interrogatories. Respondent’s investigation of the facts and law
pertaining to this action is ongoing. Respondent expects that it will supplement or modify its
responses and nothing herein should be interpreted to the contrary or to otherwise prejudice
Respondent's ability to do so. Respondent reserves all available rights to use or introduce at any
hearing, or at trial, information and/or documents responsive to Complainant’s Interrogatories
that is discovered after the date of this response. Respondent reserves all objections or other
questions as to the competency, relevance, materiality, privilege, or admissibility in any
proceeding or trial of this or any other action for any purpose whatsoever of Respondent’s
responses herein and any document or thing identified or provided in response to Complainant’s

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Interrogatories. Respondent provides these written responses to Complainant’s Interrogatories
subject to the general and specific objections stated below.
General Objections
The following general objections apply to each and every interrogatory propounded by
Complainant and are incorporated into each of the following responses by reference as if set
forth fully therein.
1.

Respondent objects to the Interrogatories, and the instructions and definitions that

accompany them, to the extent that they are premature.
2.

Respondent objects to the Interrogatories, and the instructions and definitions that

accompany them, to the extent that they seek to impose obligations and demands on SEC that are
greater than or more extensive than those required by 19 U.S.C. § 1337, Code of Federal
Regulations Title 19 Rules 201.16 and Part 210, the August 5, 2011 Ground Rules entered in this
matter, or any other applicable rule or regulation.
3.

Respondent objects to the Interrogatories, and the instructions and definitions that

accompany them, to the extent that they seek information subject to attorney-client privilege,
attorney work product immunity, or other privilege or immunity against disclosure. Such
information will not be provided in response to the Interrogatories, and any inadvertent
disclosure thereof shall not be deemed a waiver of any privilege with respect to such information
or of any work product doctrine protections that may attach thereto.
4.

Respondent objects to the Interrogatories, and the instructions and definitions that

accompany them, to the extent they purport to require the production of proprietary and

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confidential information of any third parties to whom Respondent may be under obligations of
confidentiality without adequately protecting that information.
5.

Respondent objects to the Interrogatories, and the instructions and definitions that

accompany them, to the extent they are vague, ambiguous, unintelligible, overly broad, unduly
burdensome, oppressive, harassing, or seek information that is not relevant to the subject matter
of this action nor reasonably calculated to lead to the discovery of admissible evidence.
6.

Respondent objects to the Interrogatories, and the instructions and definitions that

accompany them, to the extent they seek information that is available through public sources or
are known to Respondent.
7.

Respondent objects to the Interrogatories, and the instructions and definitions that

accompany them, to the extent they call for legal conclusions.
8.

Respondent objects to the Interrogatories to the extent they contain discrete

subparts improperly grouped as a single interrogatory. Respondent reserves its right to assert
that Complainant's Interrogatories exceed the 175 interrogatory limit that applies in this action.
9.

Respondent objects to the definitions of “You,” “Your,” "SEC," and

“Respondent” in the “Definitions” section of the Interrogatories, on the basis that they are
overbroad, unduly burdensome, and purport to place discovery obligations upon SEC that exceed
those required by 19 U.S.C. § 1337, Code of Federal Regulations Title 19 Rules 201.16 and Part
210, the August 5, 2011 Ground Rules entered in this matter, or any other applicable rule or
regulation. Respondent submits these responses on its own behalf and does not speak for other
entities.

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10.

Respondent objects to the definition of “Related Patent(s)” as overbroad, vague

and ambiguous, burdensome, and as seeking information that is not relevant to the subject matter
of this action nor reasonably calculated to lead to the discovery of admissible evidence.
Respondent will respond to any request containing the term “Related Patent(s)” and specifically
reserves the right to object to any allegation or conclusion made by Complainant relating to any
discovery responses made in response to any requests containing this term.
11.

Respondent objects to the definition of “Hardware Design” as overbroad, vague

and ambiguous, burdensome, and as seeking information that is not relevant to the subject matter
of this action nor reasonably calculated to lead to the discovery of admissible evidence, and as
drawing a legal conclusion.
12.

Respondent objects to the definition of “Graphical User Interface Design” as

overbroad, vague and ambiguous, burdensome, and as seeking information that is not relevant to
the subject matter of this action nor reasonably calculated to lead to the discovery of admissible
evidence, and as drawing a legal conclusion.
13.

Respondent objects to the definition of “Samsung Device” as overbroad, vague

and ambiguous, burdensome, and as seeking information that is not relevant to the subject matter
of this action nor reasonably calculated to lead to the discovery of admissible evidence, and as
drawing a legal conclusion.
14.

Apple provided a definition of “Touchscreen Device” in its First Set of

Interrogatories to which Samsung objected as overbroad, vague and ambiguous, burdensome,
and as seeking information that is not relevant to the subject matter of this action nor reasonably
calculated to lead to the discovery of admissible evidence, and as drawing a legal conclusion.
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Respondent and Apple met and conferred regarding these objections, and Apple provided a
different definition. Respondent objects to Apple's new definition of "Touchscreen Device" as
overbroad, vague and ambiguous, burdensome, and as seeking information that is not relevant to
the subject matter of this action nor reasonably calculated to lead to the discovery of admissible
evidence, and as drawing a legal conclusion.
15.

Apple provided a definition of “Translucent Display Device” in its First Set of

Interrogatories to which Samsung objected as overbroad, vague and ambiguous, burdensome,
and as seeking information that is not relevant to the subject matter of this action nor reasonably
calculated to lead to the discovery of admissible evidence, and as drawing a legal conclusion.
Respondent and Apple met and conferred regarding these objections, and Apple provided a
different definition. Respondent objects to Apple's new definition of "Translucent Display
Device" as overbroad, vague and ambiguous, burdensome, and as seeking information that is not
relevant to the subject matter of this action nor reasonably calculated to lead to the discovery of
admissible evidence, and as drawing a legal conclusion.
16.

Apple provided a definition of “Cantilevered Push Button Device” in its First Set

of Interrogatories to which Samsung objected as overbroad, vague and ambiguous, burdensome,
and as seeking information that is not relevant to the subject matter of this action nor reasonably
calculated to lead to the discovery of admissible evidence, and as drawing a legal conclusion.
Respondent and Apple met and conferred regarding these objections, and Apple provided a
different definition. Respondent objects to Apple's new definition of "Cantilevered Push Button
Device" as overbroad, vague and ambiguous, burdensome, and as seeking information that is not
relevant to the subject matter of this action nor reasonably calculated to lead to the discovery of
admissible evidence, and as drawing a legal conclusion.
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17.

Apple provided a definition of “Headphone Device” in its First Set of

Interrogatories to which Samsung objected as overbroad, vague and ambiguous, burdensome,
and as seeking information that is not relevant to the subject matter of this action nor reasonably
calculated to lead to the discovery of admissible evidence, and as drawing a legal conclusion.
Respondent and Apple met and conferred regarding these objections, and Apple provided a
different definition. Respondent objects to Apple's new definition of "Headphone Device" as
overbroad, vague and ambiguous, burdensome, and as seeking information that is not relevant to
the subject matter of this action nor reasonably calculated to lead to the discovery of admissible
evidence, and as drawing a legal conclusion.
18.

Apple provided a definition of “Design Device” in its First Set of Interrogatories

to which Samsung objected as overbroad, vague and ambiguous, burdensome, and as seeking
information that is not relevant to the subject matter of this action nor reasonably calculated to
lead to the discovery of admissible evidence, and as drawing a legal conclusion. Respondent and
Apple met and conferred regarding these objections, and Apple provided a different definition in
its August 29 letter. Respondent objects to Apple's new definition of "Design Device" as
overbroad, vague and ambiguous, burdensome, and as seeking information that is not relevant to
the subject matter of this action nor reasonably calculated to lead to the discovery of admissible
evidence, and as drawing a legal conclusion.
19.

Apple provided a definition of “Electronic Media Device” in its First Set of

Interrogatories to which Samsung objected as overbroad, vague and ambiguous, burdensome,
and as seeking information that is not relevant to the subject matter of this action nor reasonably
calculated to lead to the discovery of admissible evidence, and as drawing a legal conclusion.
Respondent and Apple met and conferred regarding these objections, and Apple provided a
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different definition. Respondent objects to Apple's new definition of "Electronic Media Device"
as overbroad, vague and ambiguous, burdensome, and as seeking information that is not relevant
to the subject matter of this action nor reasonably calculated to lead to the discovery of
admissible evidence, and as drawing a legal conclusion.
20.

Respondent objects to the definition of “identify” when used with respect to a

person or entity as overbroad, burdensome, and as seeking information that is not relevant to the
subject matter of this action nor reasonably calculated to lead to the discovery of admissible
evidence.
21.

Respondent objects to the definition of “identify” when used with respect to a

document, subject to the option to produce records under 19 C.F.R. § 210.29(c).
22.

Respondent objects to the Interrogatories to the extent that they seek information

not within the possession, custody or control of Respondent. An objection on this ground does
not constitute a representation or admission that such information does, in fact, exist.
23.

Except for explicit facts admitted in these responses, no incidental or implied

admissions are intended and these responses shall not be construed to be a waiver by SEC of all
or any part of any objection to the Interrogatories.
24.

Respondent objects to the Interrogatories as premature to the extent they call for

responses that are the subject of expert testimony and the parties have not yet engaged in expert
discovery or exchanged expert witness reports.
25.

Respondent has made a reasonable investigation for information responsive to the

Interrogatories. Respondent is still investigating and analyzing the facts and law pertaining to
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this action and has not yet completed its investigation. Respondent’s responses are made without
prejudice to Respondent’s right to later supplement, modify or otherwise change or amend these
responses. The information contained in these responses is also subject to correction for
omissions or errors.
26.

Respondent objects to the manner of responding that the Interrogatories purport to

specify and the instructions and definitions that accompany them. Respondent will respond to the
Interrogatories in a manner that conforms to 19 U.S.C. § 1337, Code of Federal Regulations Title
19 Rules 201.16 and Part 210, the August 5, 2011 Ground Rules entered in this matter, or any
other applicable rule or regulation.
27.

Respondent objects to each interrogatory as compound to the extent it contains

multiple sub-parts.
28.

Any objection by Respondent does not constitute a representation or admission

that such information does in fact exist or is known to Respondent.

RESPONSES TO INTERROGATORIES
INTERROGATORY NO. 1:
Identify each Electronic Media Device and state whether it is a Touchscreen Device,
Translucent Display Device, Cantilevered Push Button Device, Headphone Device, and/or
Design Device.
RESPONSE TO INTERROGATORY NO. 1:
SEC incorporates each of its general objections by reference. SEC objects to this request
as vague and ambiguous, in particular with respect to the terms “Touchscreen Device,”

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or a related field and at least one year work experience designing electrical circuits for audio
processing.
SEC is continuing to investigate the subject matter of this interrogatory and reserves the
right to supplement its response to the extent it locates any non-privileged, relevant documents or
information responsive to this interrogatory.
INTERROGATORY NO. 36:
If you contend that any Asserted Claim is invalid, describe with particularity the legal
and factual basis for that contention by, without limitation, identifying the statutory bases for
your contention and for any claim allegedly invalid under 35 U.S.C. § 102 or § 103, identifying
the Prior Art, combinations of prior art, and other documents that you content render the
Asserted Claim invalid, providing claim charts for each Prior Art or combination of Prior Art
specifically setting forth where each limitation of the claim is disclosed, stating the alleged
motivation to combine any Prior Art, and identifying all documents concerning, and the three
SEC employees most knowledgeable about, your contention.
RESPONSE TO INTERROGATORY NO. 36:
SEC incorporates each of its general objections by reference. SEC objects to this request
as vague and ambiguous. SEC further objects to this request as overbroad and unduly
burdensome. SEC further objects to this request to the extent it calls for information protected
from discovery by the attorney-client privilege and/or the work product doctrine. SEC objects to
this interrogatory to the extent it seeks information as accessible to Complainant as to SEC. SEC
further objects to this interrogatory to the extent that information relevant to this interrogatory is
in the possession of Complainant and not yet produced to SEC. Respondent objects to this
request as being premature to the extent it calls for information prior to the schedule set by the
Court for the disclosure of such information, including to the extent that it seeks information that
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is more properly the subject of expert testimony prior the time set for expert discovery by the
Court. SEC further objects to this request as calling for legal conclusions. SEC objects to this
request to the extent it seeks information more appropriately sought through other forms of
discovery, such as by request for production of documents.
Without waiving the foregoing general and specific objections and subject to those
objections, SEC responds as follows:
After all parties to this Investigation have met and conferred for purposes of deciding on
a mutually-agreed joint schedule for the mutual exchange of information sought by
interrogatories served by any Party, including this interrogatory, that seek information as
described in 19 C.F.R. § 210.29(b)(3), SEC will supplement its response to this interrogatory in
accordance with such joint schedule.
SEC is continuing to investigate the subject matter of this interrogatory and reserves the
right to supplement its response to the extent it locates additional non-privileged, relevant
documents or information responsive to this interrogatory and to the extent Complainant
produces to SEC materials or information relevant to this request.
FIRST SUPPLEMENTAL RESPONSE TO INTERROGATORY NO. 36 (9/9/2011):
Respondent incorporates by references its prior response and objections. Subject to the
foregoing general and specific objections, Respondent supplements its response to this
interrogatory as follows:
Each of the asserted claims of the ‘949 patent are invalid under Sections 102 and/or 103
of Title 35 of the United States Code as anticipated by or obvious in light of the prior art. In
particular, the asserted claims of this asserted patent are anticipated or obvious taken alone or in

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combination with at least the references listed in Exhibit B to Samsung's Response to the
Complaint filed in this Investigation, which Respondent incorporates by reference.
Each of the asserted claims of the ‘922 patent are invalid under Sections 102 and/or 103
of Title 35 of the United States Code as anticipated by or obvious in light of the prior art. In
particular, the asserted claims of this asserted patent are anticipated or obvious taken alone or in
combination with at least the references listed in Exhibit C to Samsung's Response to the
Complaint filed in this Investigation, which Respondent incorporates by reference.
Each of the asserted claims of the ‘533 patent are invalid under Sections 102 and/or 103
of Title 35 of the United States Code as anticipated by or obvious in light of the prior art. In
particular, the asserted claims of this asserted patent are anticipated or obvious taken alone or in
combination with at least the references listed in Exhibit D to Samsung's Response to the
Complaint filed in this Investigation, which Respondent incorporates by reference.
Each of the asserted claims of the ‘697 patent are invalid under Sections 102 and/or 103
of Title 35 of the United States Code as anticipated by or obvious in light of the prior art. In
particular, the asserted claims of this asserted patent are anticipated or obvious taken alone or in
combination with at least the references listed in Exhibit E to Samsung's Response to the
Complaint filed in this Investigation, which Respondent incorporates by reference.
Each of the asserted claims of the ‘501 patent are invalid under Sections 102 and/or 103
of Title 35 of the United States Code as anticipated by or obvious in light of the prior art. In
particular, the asserted claims of this asserted patent are anticipated or obvious taken alone or in
combination with at least the references listed in Exhibit F to Samsung's Response to the
Complaint filed in this Investigation, which Respondent incorporates by reference.

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The asserted claim of the D’757 patent is invalid under Sections 102 and/or 103 of Title
35 of the United States Code as anticipated by or obvious in light of the prior art. In particular,
the asserted claim of this asserted patent is anticipated or obvious taken alone or in combination
with at least the references listed in Exhibit G to Samsung's Response to the Complaint filed in
this Investigation, which Respondent incorporates by reference.
The asserted claim of the D’678 patent is invalid under Sections 102 and/or 103 of Title
35 of the United States Code as anticipated by or obvious in light of the prior art. In particular,
the asserted claim of this asserted patent is anticipated or obvious taken alone or in combination
with at least the references listed in Exhibit H to Samsung's Response to the Complaint filed in
this Investigation, which Respondent incorporates by reference.
Each of the asserted claims of the ‘949, ‘922, ‘533, ‘697, ‘501, D’757, and D’678 patents
are also invalid under Section 102(f) of Title 35 of the United States Code.
Each of the asserted claims of the ‘949, ‘922, ‘533, ‘697, ‘501, D’757, and D’678 patents
are also invalid under paragraph 1 of Section 112 of Title 35 of the United States Code because
those claims lack the necessary written description and/or do not enable the alleged inventions of
the Asserted Patents and/or fail to set forth the best mode contemplated by the inventors of
carrying out the alleged inventions.
Each of the asserted claims of ‘949, ‘922, ‘533, ‘697, ‘501, D’757, and D’678 patents are
also invalid under paragraph 2 of Section 112 of Title 35 of the United States Code because
those claims are indefinite in that they contain ambiguous language and/or functional limitations
that prevent a person skilled in the art from determining their full scope or meaning.
Respondent is continuing to investigate its response to this interrogatory and reserves the
right to supplement its response to the extent it locates additional non-privileged, relevant

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documents or information responsive to this interrogatory and to the extent Complainant
produces to Respondent materials or information relevant to this request.
SECOND SUPPLEMENTAL RESPONSE TO INTERROGATORY NO. 36 (10/21/2011):
SEC incorporates by references its prior responses and objections. Subject to the
foregoing general and specific objections, SEC supplements its response to this interrogatory as
follows:
Pursuant to 19 C.F.R. § 210.29(c), Complainant may derive or ascertain information
responsive to this interrogatory from at least the following documents produced in this matter: SITC-000034200 - S-ITC-000042670.
Discovery is ongoing and SEC will supplement this response as necessary in accordance
with Commission Rule 210.27.
THIRD SUPPLEMENTAL RESPONSE TO INTERROGATORY NO. 36 (2/15/2012):
SEC incorporates by references its prior responses and objections. Discovery is ongoing
and SEC will supplement this response as necessary in accordance with Commission Rule
210.27. Subject to the foregoing general and specific objections, SEC supplements its response
to this interrogatory as follows:
I.

U.S. Patent 7,479,949 (“the ‘949 patent”)
A. Invalidity Under 35 U.S.C. § 102 or 103
SEC identifies the following prior art that anticipates and/or renders obvious each of the

patent’s claims either expressly or inherently as understood by a person having ordinary skill in
the art at the time of the alleged invention, either alone or in combination with other references
as identified below. These references are prior art under at least 35 U.S.C. §§ 102(a), (b), (e), (g)
and/or 103. Charts identifying where specifically in each alleged item of prior art each limitation
of each asserted claim is found are attached in Appendix A.
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B. Invalidity Under 35 U.S.C. § 112
All claims of the ‘501 patent are invalid under 35 U.S.C. § 112 ¶ 1 for not disclosing the
best mode in the specification.
SEC incorporates by reference the Response and all exhibits thereto, Exhibit E to
Respondents' Notice of Prior Art served October 28, 2011 and all corrections, supplements and
amendments thereto; the deposition testimony of Timothy Johnson, Andrew Van Court, Richard
Allison, James Scheller, Farzad Amini, Angelo Gaz and all exhibits used therein; the file history
of the ‘501 patent and any continuing application from the ‘501 patent including reexaminations
and reissue applications and all documents cited during those proceedings; all documents cited
on the face of or in the ‘501 patent; and all of the documents produced or to be produced by
Apple or third parties constituting prior art. SEC also identifies as knowledgeable regarding the
facts and circumstances that may form the basis of invalidity allegations against the '501 patent
the following persons: Motorola Mobility, Inc., Texas Instruments, Nokia, Achim Pantfoerder.
VI.

U.S. Patent D558,757 (“the D’757 patent”)
A. Prior Art
SEC incorporates by reference the prior art identified in its Notice of Prior Art.
B. Invalidity Under 35 U.S.C. § 102 or 103
SEC identifies the following prior art that anticipates and/or renders obvious the D'757

patent either expressly or inherently as understood by a person having ordinary skill in the art at
the time of the alleged invention, either alone or in combination with other references identified
below. These references are prior art under at least 35 U.S.C. §§ 102(a), (b), (e), (g) and/or 103.
1. Claim Chart
Prior Art Design
Elements
Without waiving any

Disclosure Rendering the Claim Unpatentable
1. Bluebird Pidion BM-200 — (released November 2005;
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Prior Art Design
Disclosure Rendering the Claim Unpatentable
Elements
right to address
SAMNDCA00326344 - SAMNDCA00326346)
additional design
characteristics of this
prior art that anticipate
and/or render obvious
the design claimed in
D'757, and without
waiving any right to
show that the design
claimed in D'757 is
indefinite, this prior art
shares at least the
following design
characteristics with
those that may be
claimed in D'757:
• Rounded Corners
• Bezel Surrounding
Front Face
• Lack of Significant
Ornamentation
• Rectangular shape
• Thin Profile
• Flat Front Surface
• Flat Back Surface
• Sides that curve up
to meet front face

Without waiving any
right to address
additional design
characteristics of this
prior art that anticipate
and/or render obvious
the design claimed in
D'757, and without
waiving any right to
show that the design
claimed in D'757 is
indefinite, this prior art
shares at least the

2. Korean Patent 0398307 — (Issued Nov. 15, 2005;
SAMNDCA00282113 - SAMNDCA00282120)

127

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Prior Art Design
Elements
following design
characteristics with
those that may be
claimed in D'757:
• Rounded Corners
• Bezel Surrounding
Front Face
• Lack of Significant
Ornamentation
• Rectangular shape
• Thin Profile
• Flat Front Surface
• Flat Back Surface
Sides that curve up to
meet front face

Disclosure Rendering the Claim Unpatentable

128

CONTAINS CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER

Prior Art Design
Elements

Without waiving any
right to address
additional design

Disclosure Rendering the Claim Unpatentable

3. United States Patent D504,889 — (filed March 17, 2004;
SAMNDCA00200769—SAMNDCA00200773)
129

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Prior Art Design
Disclosure Rendering the Claim Unpatentable
Elements
characteristics of this
prior art that anticipate
and/or render obvious
the design claimed in
D'757, and without
waiving any right to
show that the design
claimed in D'757 is
indefinite, this prior art
shares at least the
following design
characteristics with
those that may be
claimed in D'757:
• Rounded Corners
• Bezel Surrounding
Front Face
• Lack of Significant
Ornamentation
• Rectangular shape
• Thin Profile
• Flat Front Surface
• Flat Back Surface

Without waiving any
right to address
additional design
characteristics of this
prior art that anticipate
and/or render obvious
the design claimed in
D'757, and without
waiving any right to
show that the design
claimed in D'757 is
indefinite, this prior art
shares at least the
following design
characteristics with
those that may be
claimed in D'757:
• Rounded Corners

4. United States Patent 548,747 — (filed August 24, 2005;
SAMNDCA00200936—SAMNDCA00200940)

130

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Prior Art Design
Elements
• Lack of Significant
Ornamentation
• Rectangular shape
• Thin Profile
• Flat Front Surface
• Flat Back Surface

Disclosure Rendering the Claim Unpatentable

131

CONTAINS CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER

Prior Art Design
Elements

Disclosure Rendering the Claim Unpatentable

132

CONTAINS CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER

Prior Art Design
Disclosure Rendering the Claim Unpatentable
Elements
Without waiving any
5. LG Prada — (Images available to public by December 2006;
right to address
SAMNDCA00326458 - SAMNDCA00326461
additional design
characteristics of this
prior art that anticipate
and/or render obvious
the design claimed in
D'757, and without
waiving any right to
show that the design
claimed in D'757 is
indefinite, this prior art
shares at least the
following design
characteristics with
those that may be
claimed in D'757:
• Rounded Corners
• Bezel Surrounding
Front Face
• Lack of Significant
Ornamentation
• Rectangular shape
• Thin Profile
• Flat Front Surface
• Flat Back Surface
• Sides that curve up
to meet front face

Without waiving any
right to address
additional design
characteristics of this
prior art that anticipate
and/or render obvious
the design claimed in
D'757, and without
waiving any right to

6. Sharp Japanese Registration – JP 124638 — (Issued June 6,
2005; SAMNDCA00255247—SAMNDCA00255260)

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CONTAINS CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER

Prior Art Design
Disclosure Rendering the Claim Unpatentable
Elements
show that the design
claimed in D'757 is
indefinite, this prior art
shares at least the
following design
characteristics with
those that may be
claimed in D'757:
• Rounded Corners
• Bezel Surrounding
Front Face
• Lack of Significant
Ornamentation
• Rectangular shape

Without waiving any
right to address
additional design
characteristics of this
prior art that anticipate
and/or render obvious
the design claimed in
D'757, and without
waiving any right to
show that the design
claimed in D'757 is
indefinite, this prior art
shares at least the
following design
characteristics with
those that may be
claimed in D'757:
• Rounded Corners
• Bezel Surrounding
Front Face

7. LG Chocolate (LG KG800) — (Released March 2006;
SAMNDCA00326329 - SAMNDCA00326331;
SAMNDCA00326462)

134

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Prior Art Design
Elements
• Lack of Significant
Ornamentation
• Rectangular shape
• Thin Profile
• Flat Front Surface
• Flat Back Surface
• Sides that curve up
to meet front face

Without waiving any
right to address
additional design
characteristics of this
prior art that anticipate
and/or render obvious
the design claimed in
D'757, and without

Disclosure Rendering the Claim Unpatentable

8. United States Patent, D536,691 — (Filed Mar. 13, 2006;
Issued Feb. 13, 2007; SAMNDCA00200883—
SAMNDCA00200888)

135

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Prior Art Design
Disclosure Rendering the Claim Unpatentable
Elements
waiving any right to
show that the design
claimed in D'757 is
indefinite, this prior art
shares at least the
following design
characteristics with
those that may be
claimed in D'757:
• Rounded Corners
• Bezel Surrounding
Front Face
• Lack of Significant
Ornamentation
• Rectangular shape
• Thin Profile
• Flat Front Surface
• Flat Back Surface
• Sides that curve up
to meet front face

Without waiving any
right to address
additional design
characteristics of this
prior art that anticipate
and/or render obvious
the design claimed in
D'757, and without
waiving any right to
show that the design
claimed in D'757 is
indefinite, this prior art
shares at least the
following design
characteristics with
those that may be
claimed in D'757:

9. Japanese Patent JP 1241383 — (Issued June 2005;
SAMNDCA00255283—SAMNDCA00255295)

136

CONTAINS CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER

Prior Art Design
Elements
• Rounded Corners
• Bezel Surrounding
Front Face
• Lack of Significant
Ornamentation
• Rectangular shape
• Thin Profile
• Flat Front Surface
• Flat Back Surface
• Sides that curve up
to meet front face

Without waiving any
right to address
additional design
characteristics of this
prior art that anticipate
and/or render obvious
the design claimed in
D'757, and without
waiving any right to
show that the design
claimed in D'757 is
indefinite, this prior art
shares at least the
following design
characteristics with
those that may be

Disclosure Rendering the Claim Unpatentable

10. Japanese Design Patent JP 1009317 — (Issued Feb. 20,
1998; SAMNDCA00255278—SAMNDCA00255282)

137

CONTAINS CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER

Prior Art Design
Elements
claimed in D'757:
• Rounded Corners
• Lack of Significant
Ornamentation
• Rectangular shape
• Thin Profile
• Flat Front Surface

Without waiving any
right to address
additional design
characteristics of this
prior art that anticipate
and/or render obvious
the design claimed in
D'757, and without
waiving any right to
show that the design
claimed in D'757 is
indefinite, this prior art
shares at least the
following design
characteristics with
those that may be
claimed in D'757:
• Rounded Corners
• Bezel Surrounding
Front Face
• Lack of Significant
Ornamentation

Disclosure Rendering the Claim Unpatentable

11. Samsung Korean Patent 30-0452984; Application KR 302006-0050769 — (Applied for December 2006; patent issued
Aug. 2007; SAMNDCA00255357—SAMNDCA00255365)

138

CONTAINS CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER

Prior Art Design
Elements
• Rectangular shape
• Thin Profile
• Flat Front Surface
• Flat Back Surface
• Sides that curve up
to meet front face

Without waiving any
right to address
additional design
characteristics of this
prior art that anticipate
and/or render obvious
the design claimed in
D'757, and without
waiving any right to
show that the design
claimed in D'757 is
indefinite, this prior art
shares at least the
following design
characteristics with
those that may be
claimed in D'757:
• Rounded Corners

Disclosure Rendering the Claim Unpatentable

12. Japanese Design Patent JP-S-887388 — (Issued Dec. 21,
1993; SAMNDCA00255215—SAMNDCA00255221)

139

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Prior Art Design
Elements
• Bezel Surrounding
Front Face
• Lack of Significant
Ornamentation
• Rectangular shape
• Thin Profile
• Flat Front Surface
• Flat Back Surface
• Sides that curve up
to meet front face

Without waiving any
right to address
additional design
characteristics of this
prior art that anticipate
and/or render obvious
the design claimed in
D'757, and without
waiving any right to
show that the design
claimed in D'757 is
indefinite, this prior art
shares at least the
following design
characteristics with
those that may be
claimed in D'757:
• Rounded Corners
• Bezel Surrounding
Front Face
• Lack of Significant
Ornamentation
• Rectangular shape
• Thin Profile
• Flat Front Surface

Disclosure Rendering the Claim Unpatentable

13. Japanese Design Patent JP-S-1142127 — (Issued May 27,
2002; SAMNDCA00255229—SAMNDCA00255246)

140

CONTAINS CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER

Prior Art Design
Elements
• Flat Back Surface
• Sides that curve up
to meet front face

Without waiving any
right to address
additional design
characteristics of this
prior art that anticipate
and/or render obvious
the design claimed in
D'757, and without
waiving any right to
show that the design
claimed in D'757 is
indefinite, this prior art
shares at least the
following design
characteristics with
those that may be
claimed in D'757:
• Rounded Corners
• Lack of Significant
Ornamentation
• Rectangular shape
• Thin Profile
• Flat Front Surface
• Flat Back Surface

Disclosure Rendering the Claim Unpatentable

14. United States Design Patent D497,364 — (Filed Nov. 27,
2002, Issued Oct. 19, 2004; SAMNDCA00326308 SAMNDCA00326314)

141

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Prior Art Design
Elements

Without waiving any
right to address
additional design
characteristics of this
prior art that anticipate
and/or render obvious
the design claimed in
D'757, and without
waiving any right to
show that the design
claimed in D'757 is
indefinite, this prior art
shares at least the
following design
characteristics with
those that may be
claimed in D'757:
• Rounded Corners
• Lack of
Ornamentation
• Rectangular shape

Disclosure Rendering the Claim Unpatentable

15. iRiver U10 — (Released October 2005; SAMNDCA00326325
- SAMNDCA00326328)

142

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Prior Art Design
Elements
• Thin Profile
• Flat Front Surface
• Flat Back Surface
• Sides that curve up
to meet front face

Without waiving any
right to address
additional design
characteristics of this
prior art that anticipate
and/or render obvious
the design claimed in
D'757, and without
waiving any right to
show that the design
claimed in D'757 is
indefinite, this prior art
shares at least the
following design
characteristics with
those that may be
claimed in D'757:
• Rounded Corners
• Bezel Surrounding
Front Face
• Lack of Significant
Ornamentation

Disclosure Rendering the Claim Unpatentable

16. Nokia N92 — (Released 2005; SAMNDCA00326338 SAMNDCA00326339)

143

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Prior Art Design
Elements
• Rectangular shape
• Thin Profile
• Flat Front Surface
• Flat Back Surface

Without waiving any
right to address
additional design
characteristics of this
prior art that anticipate
and/or render obvious
the design claimed in
D'757, and without
waiving any right to
show that the design
claimed in D'757 is
indefinite, this prior art
shares at least the
following design
characteristics with
those that may be
claimed in D'757:
• Rounded Corners

Disclosure Rendering the Claim Unpatentable

17. Olympus m:robe MR-100 — (Released 2005;
SAMNDCA00326463 - SAMNDCA00326466)

144

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Prior Art Design
Elements
• Bezel Surrounding
Front Face
• Lack of Significant
Ornamentation
• Rectangular shape
• Thin Profile
• Flat Front Surface
• Flat Back Surface
• Sides that curve up
to meet front face

Without waiving any
right to address
additional design

Disclosure Rendering the Claim Unpatentable

18. Japanese Design Patent 1204221 — (Issued May 10, 2004;
SAMNDCA00256066—SAMNDCA00256079)

145

CONTAINS CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER

Prior Art Design
Disclosure Rendering the Claim Unpatentable
Elements
characteristics of this
prior art that anticipate
and/or render obvious
the design claimed in
D'757, and without
waiving any right to
show that the design
claimed in D'757 is
indefinite, this prior art
shares at least the
following design
characteristics with
those that may be
claimed in D'757:
• Rounded Corners
• Lack of
Ornamentation
• Rectangular shape
• Flat Front Surface

Without waiving any
right to address
additional design
characteristics of this
prior art that anticipate
and/or render obvious
the design claimed in
D'757, and without
waiving any right to
show that the design
claimed in D'757 is
indefinite, this prior art
shares at least the
following design
characteristics with
those that may be
claimed in D'757:
• Rounded Corners
• Lack of Significant
Ornamentation

19. Nokia Design Contest Phone by Ricardo Villas-Boas —
(Publicly displayed online in 2004; SAMNDCA00326336 SAMNDCA00326337; SAMNDCA00326380 SAMNDCA00326385)

146

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Prior Art Design
Elements
• Substantially
Rectangular shape
• Thin Profile
• Flat Front Surface
• Flat Back Surface
• Sides that curve up
to meet front face

Without waiving any
right to address
additional design
characteristics of this
prior art that anticipate
and/or render obvious
the design claimed in

Disclosure Rendering the Claim Unpatentable

20. Korean Design Patent KR 30-0418547 — (Issued July 2006;
SAMNDCA00255321—SAMNDCA00255329)

147

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Prior Art Design
Disclosure Rendering the Claim Unpatentable
Elements
D'757, and without
waiving any right to
show that the design
claimed in D'757 is
indefinite, this prior art
shares at least the
following design
characteristics with
those that may be
claimed in D'757:
• Rounded Corners
• Appearance of
Bezel Around Front
Perimeter
• Lack of Significant
Ornamentation
• Rectangular shape
• Thin Profile
• Flat Front Surface
• Flat Back Surface
• Sides that curve up
to meet front face

Respondent also incorporates by reference all prior art that was previously produced
and/or disclosed by Respondent, including in Exhibit F to Respondent’s Corrected Notice of
Prior Art, filed on November 3, 2011. These incorporated pieces of prior art further show that
the design claimed by the D’757 patent is obvious and anticipated. Respondent also incorporates
by reference all testimony of Apple's inventors and of other relevant prior art witnesses.
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Moreover, because Apple delayed in providing Samsung with identities of named inventors and
others who were involved in the designs and alleged embodiments at issue, Samsung currently
does not have all relevant testimony on this issue.
Respondent further discloses the following prior art that renders the claim in D'757
obvious and/or anticipated:
2. Chart for U.S. and Foreign Patents
Country/Region

Patent Number/Publication
Title

Inventor

Issue/ Publication
Date

United States

5,345,543

Capps, Stephen

Sept. 6, 1994

United States

5,398,310

Tchao, Michael C.

Mar. 14, 1995

United States

D492,684

Ozolins, Helmars

Jul. 6, 2004

United States

D497,364

Ozolins, Helmars

Oct. 19, 2004

United States

D500,037

Ozolins, Helmars

Dec. 21, 2004

United States

D534,516

Lheem, Ji Youn

Jan. 2, 2007

United States

D534,517

Cho, Yoo Seok

Jan. 2, 2007

United States

D543,183

Cho, Yoo Seok

May 22, 2007

WIPO

2000-074240

Robinson, Alex B.

July 12, 2000

WIPO

2004-023272 A2

Ozolins, Helmars

Mar. 18, 2004

European

RCD 000048061-0001

Ozolins, Helmars

Aug. 19, 2003

European

RCD 000257621-0004

Nov. 23, 2004

European

RCD 375191-0001

July 19, 2005

European

RCD 493721-0002

Mar. 13, 2006

European

RCD 614565-0001

Oct. 31, 2006

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Country/Region

Patent Number/Publication
Title

Inventor

Issue/ Publication
Date

Hedström Mats

July 18, 1980

Finland

19790641

France

985598 - 001

Oct. 12, 2001

France

990052 - 001

May 28, 1999

Japan

D1104685

Japan

D1124750

Japan

D1188041

Japan

D 1247215

Japan

D 1263649

Korea

30-0424148

Sweden

Aug. 30, 2006

55044

United Kingdom

2030050

United Kingdom

Oct. 27, 1993

1042780

United Kingdom

Giorgio Solero

3010002

July 28, 1993

3. Chart for Prior Art Devices
Prior Art Devices
Apple Graphics Tablet (1979), and all documents and things depicting the device, including user
manuals, technical specifications, advertisements, reviews, development documents, and
technical references.
Bluebird Pidion BM-200 (2005), and all documents and things depicting the device, including
user manuals, technical specifications, advertisements, reviews, development documents, and
technical references.
Digitalway MPIO FL100 MP3 player (2003), and all documents and things depicting the device,
including user manuals, technical specifications, advertisements, reviews, development
documents, and technical references.

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CONTAINS CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER

Prior Art Devices
iHolic HTV-200 (Jan. 2007), and all documents and things depicting the device, including user
manuals, technical specifications, advertisements, reviews, development documents, and
technical references.
iRiver U10 (2005), and all documents and things depicting the device, including user manuals,
technical specifications, advertisements, reviews, development documents, and technical
references.
LG L1530TM Tablet (2004), and all documents and things depicting the device, including user
manuals, technical specifications, advertisements, reviews, development documents, and
technical references.
Microsoft Mira (2002), and all documents and things depicting the device, including user
manuals, technical specifications, advertisements, reviews, development documents, and
technical references.
Nokia N92 (2005), and all documents and things depicting the device, including user manuals,
technical specifications, advertisements, reviews, development documents, and technical
references.
Olympus m:robe MR-100 (2005), and all documents and things depicting the device, including
user manuals, technical specifications, advertisements, reviews, development documents, and
technical references.
Samsung K3 (2006), and all documents and things depicting the device, including user manuals,
technical specifications, advertisements, reviews, development documents, and technical
references.
Sony Clie PEG-TH55 (2004), and all documents and things depicting the device, including user
manuals, technical specifications, advertisements, reviews, development documents, and
technical references.
Tatung Tablet PC, and all documents and things depicting the device, including user manuals,
technical specifications, advertisements, reviews, development documents, and technical
references.
Toshiba T100-X Dynapad (1993), and all documents and things depicting the device, including
user manuals, technical specifications, advertisements, reviews, development documents, and
technical references.
Via Tablet PC (2002), and all documents and things depicting the device, including user
manuals, technical specifications, advertisements, reviews, development documents, and
technical references.

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Prior Art Devices
WACOM PL-500 15" LCD Tablet Mint (2001), and all documents and things depicting the
device, including user manuals, technical specifications, advertisements, reviews, development
documents, and technical references.

4. Chart of Additional Non-Patent Publications
Non-Patent Publications
Tablet: The Personal Computer of the Year 2000 (1987), and all documents and things
describing or depicting the device, including user manuals, technical specifications,
advertisements, reviews, development documents, and technical references.
The InfoLink (1987), and all documents and things describing or depicting the device, including
user manuals, technical specifications, advertisements, reviews, development documents, and
technical references.
The Oracle (1987), and all documents and things describing or depicting the device, including
user manuals, technical specifications, advertisements, reviews, development documents, and
technical references.
Declaration of Cooper C. Woodring In Support of Apple's Motion For A Preliminary Injunction
(July 1, 2011), Apple Inc. v. Samsung Electronics Co., Ltd., Case No. 11-cv-01846-LHK.
Deposition of Cooper C. Woodring (August 5, 2011), Apple Inc. v. Samsung Electronics Co.,
Ltd., Case No. 11-cv-01846-LHK.

5. Bates Ranges of Prior Art Produced by Respondent
SAMNDCA00019932-20034; SAMNDCA00020120-20303; SAMNDCA0002039420498; SAMNDCA00020782-20878; SAMNDCA00020900-20906; SAMNDCA0002097820989; SAMNDCA00021255-21313; SAMNDCA00021315-21336; SAMNDCA0002134121471; SAMNDCA00021479-21499; SAMNDCA00021505-21588; SAMNDCA0002159321604; SAMNDCA00021608-21632; SAMNDCA00021634-21805; SAMNDCA0002181221857; SAMNDCA00022451-22522; SAMNDCA00022732-22763; SAMNDCA0002280222812; SAMNDCA00022901-22971; SAMNDCA00022984-23064; SAMNDCA00023137152

CONTAINS CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER

23182; SAMNDCA00023234-23524; SAMNDCA00023542—23584; SAMNDCA0002359124061; SAMNDCA00024582-24662; SAMNDCA00024749-24752; SAMNDCA0002767027722; SAMNDCA00198059-198067; SAMNDCA00198070-198096; SAMNDCA00198101198274; SAMNDCA00198289-198307; SAMNDCA00198313-198456; SAMNDCA00198754198846; SAMNDCA00198884-199046; SAMNDCA00199164-199222; SAMNDCA00199298199306; SAMNDCA00199402-199524; SAMNDCA00200425-200472; SAMNDCA00200617200639; SAMNDCA00200650-200658; SAMNDCA00200661-200665; SAMNDCA00200670200676; SAMNDCA00200686-200714; SAMNDCA00200724-200733; SAMNDCA00200737200748; SAMNDCA00200751-200788; SAMNDCA00200793-200806; SAMNDCA00200809200838; SAMNDCA00200843-200873; SAMNDCA00201264-201278; SAMNDCA00255026
– SAMNDCA00256183; SAMNDCA00282113 - SAMNDCA00282120; SAMNDCA00326302
– SAMNDCA00326557.
SEC believes that the identified prior art, standing alone, or in combination, would appear
to an ordinary observer — giving such attention as a purchaser usually gives — to be
substantially the same as the design shown in D'757, rendering that patent invalid as anticipated
and/or obvious.
C. Invalidity Due to Functionality
The asserted claim of the D'757 patent is also invalid because it is functional and not
ornamental. See Lee v. Dayton-Hudson Corp., 838 F.2d 1186, 1188 (Fed. Cir. 1988). Indeed,
the D'757 patent contains no ornamentation whatsoever, and therefore has nothing to protect.
Apple's principal designer, Jonathan Ive, has even said about the iPhone that "[e]verything defers
to the display. A lot of what we seem to be doing in a product like that is actually getting design
out of the way." Laura Sydell, "Undesigned," NPR, Dec. 30, 2010 (http://www.npr.org/blogs/
alltechconsidered/2010/12/30/132477388/undesigned-the-symbiotic-relationship-of-steve-jobs153

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and-jonathan-ive). In addition to the overall design of D'757 being functional, individual aspects
of the design are also functional and render its scope either invalid or indefinite. For example:
•

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D. Invalidity Due to Indefiniteness
The asserted claim of the D'757 patent is also invalid also invalid under paragraph 2 of
Section 112 of Title 35 of the United States Code because the claim is indefinite in that the
drawings depicting the design do not enable a person skilled in the art to make the design. For
example, Doug Satzger, one of the named inventors of the patent stated that there were
inconsistencies in the figures for D'757. (See Feb. 9, 2012 Deposition of Douglas Satzger at
86:3-88:5.)
E. Invalidity Due to Double Patenting
The asserted claim of the D'757 patent is also invalid under the doctrine of double
patenting because it is substantially the same design that Apple sought to patent, and did patent,
in a number of other applications. For example, D'757, D613,736, D627,343, and D602,016 all
appear to be substantially the same design.
SEC incorporates by reference the Response and all exhibits thereto, exhibits to
Respondents' Notice of Prior Art served October 28, 2011 and all corrections, supplements and
amendments thereto; the deposition testimony of Alyssa Sandrowitz, Daniele de Iuliis, Rico
Zorkendorfer, Matthew Rohrbach, Bartley Andre, Duncan Kerr, Daniel Coster, Eugene Whang,
Richard Howarth, Christopher Stringer, Douglas Satzger, Jonathan Ive, Cooper Woodring, Itay
Sherman, Erin Wong, Tracy Durkin, Quinn Hoellwarth, Michael Ferrazano, Justin White, and
Richard Lutton and all exhibits used therein; the file history of the ‘D'757 patent and any
continuing application from the ‘D'757 patent including reexaminations and reissue applications
and all documents cited during those proceedings; all documents cited on the face of or in the
‘D'757 patent; and all of the documents produced or to be produced by Apple or third parties
constituting prior art.

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VII.

U.S. Patent D618,678 (“the D’678 patent”)
A. Prior Art
SEC incorporates by reference the prior art identified in its Notice of Prior Art.
B. Invalidity Under 35 U.S.C. § 102 or 103
SEC identifies the following additional prior art that anticipates and/or renders obvious

the D'678 patent either expressly or inherently as understood by a person having ordinary skill in
the art at the time of the alleged invention, either alone or in combination with other references
identified below. These references are prior art under at least 35 U.S.C. §§ 102(a), (b), (e), (g)
and/or 103.
1. Claim Chart
Prior Art Design
Disclosure Rendering the Claim Unpatentable
Elements
Without waiving any
1. Bluebird Pidion BM-200 — (released November 2005;
right to address
SAMNDCA00326344 - SAMNDCA00326346)
additional design
characteristics of this
prior art that anticipate
and/or render obvious
the design claimed in
D'678, and without
waiving any right to
show that the design
claimed in D'678 is
indefinite, this prior art
shares at least the
following design
characteristics with
those that may be
claimed in D'678:
• Rounded Corners
• Lack of Significant
Ornamentation
• Rectangular Shape
• Flat Continuous
Surface
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Prior Art Design
Disclosure Rendering the Claim Unpatentable
Elements
• Reflective or
Transparent Surface
• Horizontal Speaker
Slot
• Speaker Slot
Located Near Top
of Device
• Display Screen
Covering
Substantial Portion
of Front Face
• Display Screen in
Center of Device
• Narrow Borders on
Sides of Screen
• Broader Borders
Above and Below
Screen

Without waiving any
right to address
additional design
characteristics of this
prior art that anticipate
and/or render obvious
the design claimed in
D'678, and without
waiving any right to
show that the design
claimed in D'678 is
indefinite, this prior art
shares at least the
following design
characteristics with
those that may be
claimed in D'678:
• Rounded Corners
• Lack of Significant
Ornamentation
• Rectangular Shape
• Flat Continuous

2. Korean Patent 0398307 — (Issued Nov. 15, 2005;
SAMNDCA00282113 - SAMNDCA00282120)

157

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Prior Art Design
Elements
Surface
• Horizontal Speaker
Slot
• Speaker Slot
Located Near Top
of Device
• Display Screen
Covering
Substantial Portion
of Front Face
• Display Screen in
Center of Device
• Narrow Borders on
Sides of Screen
• Broader Borders
Above and Below
Screen

Disclosure Rendering the Claim Unpatentable

158

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Prior Art Design
Elements

Without waiving any
right to address
additional design

Disclosure Rendering the Claim Unpatentable

3. United States Patent D504,889 — (filed March 17, 2004;
SAMNDCA00200769—SAMNDCA00200773)
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Prior Art Design
Disclosure Rendering the Claim Unpatentable
Elements
characteristics of this
prior art that anticipate
and/or render obvious
the design claimed in
D'678, and without
waiving any right to
show that the design
claimed in D'678 is
indefinite, this prior art
shares at least the
following design
characteristics with
those that may be
claimed in D'678:
• Rounded Corners
• Lack of Significant
Ornamentation
• Rectangular Shape
• Flat Continuous
Surface
• Reflective or
Transparent Surface
• Display Screen
Covering
Substantial Portion
of Front Face
• Display Screen in
Center of Device
Without waiving any
right to address
additional design
characteristics of this
prior art that anticipate
and/or render obvious
the design claimed in
D'678, and without
waiving any right to
show that the design
claimed in D'678 is
indefinite, this prior art
shares at least the
following design
characteristics with

4. LG Prada — (Images available to public by December 2006;
SAMNDCA00326458 - SAMNDCA00326461)

160

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Prior Art Design
Disclosure Rendering the Claim Unpatentable
Elements
those that may be
claimed in D'678:
• Rounded Corners
• Lack of Significant
Ornamentation
• Rectangular Shape
• Flat Continuous
Surface
• Reflective or
Transparent Surface
• Horizontal Speaker
Slot
• Speaker Slot
Located Near Top
of Device
• Display Screen
Covering
Substantial Portion
of Front Face
• Display Screen in
Center of Device
• Narrow Borders on
Sides of Screen
• Broader Borders
Above and Below
Screen

Without waiving any
right to address
additional design
characteristics of this
prior art that anticipate
and/or render obvious
the design claimed in
D'678, and without
waiving any right to
show that the design
claimed in D'678 is
indefinite, this prior art

5. Sharp Japanese Registration – JP 1241638 — (Issued June
6, 2005; SAMNDCA00255247—SAMNDCA00255260)

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Prior Art Design
Elements
shares at least the
following design
characteristics with
those that may be
claimed in D'678:
• Rounded Corners
• Lack of Significant
Ornamentation
• Rectangular Shape
• Horizontal Speaker
Slot
• Speaker Slot
Located Near Top
of Device
• Display Screen
Covering
Substantial Portion
of Front Face
• Display Screen in
Center of Device
• Narrow Borders on
Sides of Screen
• Broader Borders
Above and Below
Screen

Without waiving any
right to address
additional design
characteristics of this
prior art that anticipate
and/or render obvious
the design claimed in
D'678, and without
waiving any right to
show that the design
claimed in D'678 is
indefinite, this prior art
shares at least the
following design
characteristics with
those that may be
claimed in D'678:

Disclosure Rendering the Claim Unpatentable

6. LG Chocolate (LG KG800) — (Released March 2006;
SAMNDCA00326329 - SAMNDCA00326331;
SAMNDCA00326462)

162

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Prior Art Design
Disclosure Rendering the Claim Unpatentable
Elements
• Rounded Corners
• Lack of Significant
Ornamentation
• Rectangular Shape
• Flat Continuous
Surface
• Reflective or
Transparent Surface
• Horizontal Speaker
Slot
• Speaker Slot
Located Near Top
of Device
• Display Screen
Covering
Substantial Portion
of Front Face
• Display Screen in
Center of Device
• Narrow Borders on
Sides of Screen
• Broader Borders
Above and Below
Screen

Without waiving any
right to address
additional design
characteristics of this
prior art that anticipate
and/or render obvious
the design claimed in
D'678, and without

7. United States Patent, D536,691 — (Filed Mar. 13, 2006;
Issued Feb. 13, 2007; SAMNDCA00200883—
SAMNDCA00200888)

163

CONTAINS CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER

Prior Art Design
Disclosure Rendering the Claim Unpatentable
Elements
waiving any right to
show that the design
claimed in D'678 is
indefinite, this prior art
shares at least the
following design
characteristics with
those that may be
claimed in D'678:
• Rounded Corners
• Lack of Significant
Ornamentation
• Rectangular Shape
• Flat Continuous
Surface
• Reflective or
Transparent Surface
• Horizontal Speaker
Slot
• Speaker Slot
Located Near Top
of Device
• Display Screen
Covering
Substantial Portion
of Front Face
• Display Screen in
Center of Device
• Narrow Borders on
Sides of Screen
• Broader Borders
Above and Below
Screen
Without waiving any
right to address
additional design
characteristics of this
prior art that anticipate
and/or render obvious
the design claimed in
D'678, and without
waiving any right to
show that the design

8. Japanese Patent JP 1241383 — (Issued June 2005;
SAMNDCA00255283—SAMNDCA00255295)

164

CONTAINS CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER

Prior Art Design
Disclosure Rendering the Claim Unpatentable
Elements
claimed in D'678 is
indefinite, this prior art
shares at least the
following design
characteristics with
those that may be
claimed in D'678:
• Rounded Corners
• Lack of Significant
Ornamentation
• Rectangular Shape
• Flat Continuous
Surface
• Display Screen
Covering
Substantial Portion
of Front Face
• Display Screen in
Center of Device
• Narrow Borders on
Sides of Screen
• Broader Borders
Above and Below
Screen

Without waiving any
right to address
additional design
characteristics of this
prior art that anticipate
and/or render obvious
the design claimed in
D'678, and without
waiving any right to
show that the design
claimed in D'678 is
indefinite, this prior art
shares at least the
following design
characteristics with
those that may be

9. Japanese Design Patent JP 1009317 — (Issued Feb. 20,
1998; SAMNDCA00255278—SAMNDCA00255282)

165

CONTAINS CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER

Prior Art Design
Elements
claimed in D'678:
• Rounded Corners
• Lack of Significant
Ornamentation
• Rectangular Shape
• Flat Continuous
Surface
• Horizontal Speaker
Slot
• Speaker Slot
Located Near Top
of Device
• Display Screen
Covering
Substantial Portion
of Front Face
• Display Screen in
Center of Device
• Narrow Borders on
Sides of Screen
• Broader Borders
Above and Below
Screen
Without waiving any
right to address
additional design
characteristics of this
prior art that anticipate
and/or render obvious
the design claimed in
D'678, and without
waiving any right to
show that the design
claimed in D'678 is
indefinite, this prior art
shares at least the
following design
characteristics with
those that may be
claimed in D'678:
• Rounded Corners
• Lack of Significant
Ornamentation

Disclosure Rendering the Claim Unpatentable

10. Samsung Korean Patent 30-0452984; Application KR 302006-0050769 — (Applied for December 2006; patent issued
Aug. 2007; SAMNDCA00255357—SAMNDCA00255365)

166

CONTAINS CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER

Prior Art Design
Elements
• Rectangular Shape
• Flat Continuous
Surface
• Horizontal Speaker
Slot
• Speaker Slot
Located Near Top
of Device
• Display Screen
Covering
Substantial Portion
of Front Face
• Display Screen in
Center of Device
• Narrow Borders on
Sides of Screen
• Broader Borders
Above and Below
Screen

Without waiving any
right to address
additional design
characteristics of this
prior art that anticipate
and/or render obvious
the design claimed in
D'678, and without
waiving any right to
show that the design
claimed in D'678 is
indefinite, this prior art
shares at least the
following design
characteristics with
those that may be
claimed in D'678:
• Rounded Corners

Disclosure Rendering the Claim Unpatentable

11. Japanese Design Patent JP-S-887388 — (Issued Dec. 21,
1993; SAMNDCA00255215—SAMNDCA00255221)

167

CONTAINS CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER

Prior Art Design
Elements
• Lack of Significant
Ornamentation
• Rectangular Shape
• Display Screen
Covering
Substantial Portion
of Front Face
• Display Screen in
Center of Device

Without waiving any
right to address
additional design
characteristics of this
prior art that anticipate
and/or render obvious
the design claimed in
D'678, and without
waiving any right to
show that the design
claimed in D'678 is
indefinite, this prior art
shares at least the
following design
characteristics with
those that may be
claimed in D'678:
• Rounded Corners
• Lack of Significant
Ornamentation
• Rectangular Shape
• Display Screen
Covering
Substantial Portion
of Front Face

Disclosure Rendering the Claim Unpatentable

12. Japanese Design Patent JP-S-1142127 — (Issued May 27,
2002; SAMNDCA00255229—SAMNDCA00255246)

168

CONTAINS CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER

Prior Art Design
Elements
• Display Screen in
Center of Device

Without waiving any
right to address
additional design
characteristics of this
prior art that anticipate
and/or render obvious
the design claimed in
D'678, and without
waiving any right to
show that the design
claimed in D'678 is
indefinite, this prior art
shares at least the
following design
characteristics with
those that may be
claimed in D'678:
• Rounded Corners
• Lack of Significant
Ornamentation
• Rectangular Shape
• Flat Continuous
Surface
• Reflective or
Transparent Surface
• Display Screen
Covering
Substantial Portion
of Front Face
• Display Screen in
Center of Device

Disclosure Rendering the Claim Unpatentable

13. United States Design Patent D497,364 — (Filed Nov. 27,
2002, Issued Oct. 19, 2004; SAMNDCA00326308 SAMNDCA00326314)

169

CONTAINS CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER

Prior Art Design
Elements

Without waiving any
right to address
additional design
characteristics of this
prior art that anticipate
and/or render obvious
the design claimed in
D'678, and without
waiving any right to
show that the design
claimed in D'678 is
indefinite, this prior art
shares at least the
following design
characteristics with
those that may be
claimed in D'678:
• Rounded Corners
• Lack of Significant
Ornamentation
• Rectangular Shape

Disclosure Rendering the Claim Unpatentable

14. United States Patent D548,747 — (filed August 24, 2005;
SAMNDCA00200936—SAMNDCA00200940)

170

CONTAINS CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER

Prior Art Design
Disclosure Rendering the Claim Unpatentable
Elements
• Flat Continuous
Surface
• Reflective or
Transparent Surface

171

CONTAINS CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER

Prior Art Design
Elements

Disclosure Rendering the Claim Unpatentable

172

CONTAINS CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER

Prior Art Design
Disclosure Rendering the Claim Unpatentable
Elements
Without waiving any
15. iRiver U10 — (Released October 2005;SAMNDCA00326325
right to address
- SAMNDCA00326328)
additional design
characteristics of this
prior art that anticipate
and/or render obvious
the design claimed in
D'678, and without
waiving any right to
show that the design
claimed in D'678 is
indefinite, this prior art
shares at least the
following design
characteristics with
those that may be
claimed in D'678:
• Rounded Corners
• Lack of Significant
Ornamentation
• Rectangular Shape
• Flat Continuous
Surface
• Reflective or
Transparent Surface
• Display Screen
Covering
Substantial Portion
of Front Face
• Display Screen in
Center of Device
• Narrow Borders on
Two Opposing
Sides of Screen
• Broader Borders on
the Remaining Two
Sides of the Screen

Without waiving any
right to address
additional design

16. Nokia N92 — (Released 2005; SAMNDCA00326338 SAMNDCA00326339)

173

CONTAINS CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER

Prior Art Design
Disclosure Rendering the Claim Unpatentable
Elements
characteristics of this
prior art that anticipate
and/or render obvious
the design claimed in
D'678, and without
waiving any right to
show that the design
claimed in D'678 is
indefinite, this prior art
shares at least the
following design
characteristics with
those that may be
claimed in D'678:
• Rounded Corners
• Lack of Significant
Ornamentation
• Rectangular Shape
• Flat Continuous
Surface
• Reflective or
Transparent Surface
• Horizontal Speaker
Slot
• Speaker Slot
Located Near Top
of Device
• Display Screen
Covering
Substantial Portion
of Front Face
• Display Screen in
Center of Device
• Narrow Borders on
Sides of Screen
• Broader Borders
Above and Below
Screen

Without waiving any

17. Olympus m:robe MR-100 — (Released 2005;
174

CONTAINS CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER

Prior Art Design
Disclosure Rendering the Claim Unpatentable
Elements
right to address
SAMNDCA00326463 - SAMNDCA00326466)
additional design
characteristics of this
prior art that anticipate
and/or render obvious
the design claimed in
D'678, and without
waiving any right to
show that the design
claimed in D'678 is
indefinite, this prior art
shares at least the
following design
characteristics with
those that may be
claimed in D'678:
• Rounded Corners
• Lack of Significant
Ornamentation
• Rectangular Shape
• Flat Continuous
Surface
• Reflective or
Transparent Surface
• Display Screen

175

CONTAINS CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER

Prior Art Design
Disclosure Rendering the Claim Unpatentable
Elements
Without waiving any
18. Japanese Design Patent 1204221 — (Issued May 10, 2004; right to address
SAMNDCA00256066—SAMNDCA00256079)
additional design
characteristics of this
prior art that anticipate
and/or render obvious
the design claimed in
D'678, and without
waiving any right to
show that the design
claimed in D'678 is
indefinite, this prior art
shares at least the
following design
characteristics with
those that may be
claimed in D'678:
• Rounded Corners
• Lack of
Ornamentation
• Rectangular Shape
• Flat Continuous
Surface
• Horizontal Ear
Speaker Slot
• Ear Speaker Slot
Located Near Top
of Device
• Display Screen
Covering
Substantial Portion
of Front Face
• Display Screen in
Center of Device
• Narrow Borders on
Sides of Screen
• Broader Borders
Above and Below
Screen

Without waiving any

19. Nokia Design Contest Phone by Ricardo Villas-Boas —
176

CONTAINS CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER

Prior Art Design
Disclosure Rendering the Claim Unpatentable
Elements
(Publicly displayed online in 2004; SAMNDCA00326336 right to address
additional design
SAMNDCA00326337; SAMNDCA00326380 SAMNDCA00326385)
characteristics of this
prior art that anticipate
and/or render obvious
the design claimed in
D'678, and without
waiving any right to
show that the design
claimed in D'678 is
indefinite, this prior art
shares at least the
following design
characteristics with
those that may be
claimed in D'678:
• Rounded Corners
• Lack of
Ornamentation
• Flat Continuous
Surface
• Ear Speaker
Opening Near Top
of Device
• Display Screen
Covering
Substantial Portion
of Front Face
• Display Screen in
Center of Device
• Narrow Borders on
Sides of Screen
• Broader Borders
Above and Below
Screen

Without waiving any
right to address

20. Korean Design Patent KR 30-0418547 — (Issued July 2006;
SAMNDCA00255321—SAMNDCA00255329)
177

CONTAINS CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER

Prior Art Design
Disclosure Rendering the Claim Unpatentable
Elements
additional design
characteristics of this
prior art that anticipate
and/or render obvious
the design claimed in
D'678, and without
waiving any right to
show that the design
claimed in D'678 is
indefinite, this prior art
shares at least the
following design
characteristics with
those that may be
claimed in D'678:
• Rounded Corners
• Lack of
Ornamentation
• Rectangular Shape
• Flat Continuous
Surface
• Reflective or
Transparent Surface
• Horizontal Speaker
Slot
• Speaker Slot
Located Near Top
of Device
• Display Screen
Covering
Substantial Portion
of Front Face
• Display Screen in
Center of Device
• Narrow Borders on
Sides of Screen
• Broader Borders
Above and Below
Screen

178

CONTAINS CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER

Respondent also incorporates by reference all prior art that was previously produced
and/or disclosed by Respondent, including in Exhibit F to Respondent’s Corrected Notice of
Prior Art, filed on November 3, 2011. These incorporated pieces of prior art further show that
the design claimed by the D'678 patent is obvious and anticipated. Respondent also incorporates
by reference all testimony of Apple's inventors and of other relevant prior art witnesses.
Moreover, because Apple delayed in providing Samsung with identities of named inventors and
others who were involved in the designs and alleged embodiments at issue, Samsung currently
does not have all relevant testimony on this issue. Respondent further discloses the following
prior art that renders the claim in D'678 obvious and/or anticipated:
2. Chart of Additional U.S. and Foreign Patent Prior Art
Country/Region

Patent Number/Publication
Title

Inventor

Issue/ Publication
Date

United States

5,345,543

Capps, Stephen

Sept. 6, 1994

United States

5,398,310

Tchao, Michael C.

Mar. 14, 1995

United States

D492,684

Ozolins, Helmars

Jul. 6, 2004

United States

D497,364

Ozolins, Helmars

Oct. 19, 2004

United States

D500,037

Ozolins, Helmars

Dec. 21, 2004

United States

D534,516

Lheem, Ji Youn

Jan. 2, 2007

United States

D534,517

Cho, Yoo Seok

Jan. 2, 2007

United States

D543,183

Cho, Yoo Seok

May 22, 2007

WIPO

2000-074240

Robinson, Alex B.

July 12, 2000

WIPO

2004-023272 A2

Ozolins, Helmars

Mar. 18, 2004

European

RCD 000048061-0001

Ozolins, Helmars

Aug. 19, 2003

European

RCD 000257621-0004

Nov. 23, 2004
179

CONTAINS CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER

Country/Region

Patent Number/Publication
Title

Inventor

Issue/ Publication
Date

European

RCD 375191-0001

July 19, 2005

European

RCD 493721-0002

Mar. 13, 2006

European

RCD 614565-0001

Oct. 31, 2006

Finland

19790641

France

985598 - 001

Oct. 12, 2001

France

990052 - 001

May 28, 1999

Japan

D1104685

Japan

D1124750

Japan

D1188041

Japan

D 1247215

Japan

D 1263649

Korea

30-0424148

Sweden

Hedström Mats

Aug. 30, 2006

55044

United Kingdom

2030050

United Kingdom

Giorgio Solero

Oct. 27, 1993

1042780

United Kingdom

July 18, 1980

3010002

July 28, 1993

3. Chart of Additional Prior Art Devices
Prior Art Devices
Apple Graphics Tablet (1979), and all documents and things depicting the device, including user
manuals, technical specifications, advertisements, reviews, development documents, and
technical references.

180

CONTAINS CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER

Prior Art Devices
Bluebird Pidion BM-200 (2005), and all documents and things depicting the device, including
user manuals, technical specifications, advertisements, reviews, development documents, and
technical references.
Digitalway MPIO FL100 MP3 player (2003), and all documents and things depicting the device,
including user manuals, technical specifications, advertisements, reviews, development
documents, and technical references.
iHolic HTV-200 (Jan. 2007), and all documents and things depicting the device, including user
manuals, technical specifications, advertisements, reviews, development documents, and
technical references.
iRiver U10 (2005), and all documents and things depicting the device, including user manuals,
technical specifications, advertisements, reviews, development documents, and technical
references.
LG L1530TM Tablet (2004), and all documents and things depicting the device, including user
manuals, technical specifications, advertisements, reviews, development documents, and
technical references.
Microsoft Mira (2002), and all documents and things depicting the device, including user
manuals, technical specifications, advertisements, reviews, development documents, and
technical references.
Nokia N92 (2005), and all documents and things depicting the device, including user manuals,
technical specifications, advertisements, reviews, development documents, and technical
references.
Olympus m:robe MR-100 (2005), and all documents and things depicting the device, including
user manuals, technical specifications, advertisements, reviews, development documents, and
technical references.
Samsung K3 (2006), and all documents and things depicting the device, including user manuals,
technical specifications, advertisements, reviews, development documents, and technical
references.
Sony Clie PEG-TH55 (2004), and all documents and things depicting the device, including user
manuals, technical specifications, advertisements, reviews, development documents, and
technical references.
Tatung Tablet PC, and all documents and things depicting the device, including user manuals,
technical specifications, advertisements, reviews, development documents, and technical
references.

181

CONTAINS CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER

Prior Art Devices
Toshiba T100-X Dynapad (1993), and all documents and things depicting the device, including
user manuals, technical specifications, advertisements, reviews, development documents, and
technical references.
Via Tablet PC (2002), and all documents and things depicting the device, including user
manuals, technical specifications, advertisements, reviews, development documents, and
technical references.
WACOM PL-500 15" LCD Tablet Mint (2001), and all documents and things depicting the
device, including user manuals, technical specifications, advertisements, reviews, development
documents, and technical references.

4. Chart of Additional Non-Patent Publications
Non-Patent Publications
Tablet: The Personal Computer of the Year 2000 (1987), and all documents and things
describing or depicting the device, including user manuals, technical specifications,
advertisements, reviews, development documents, and technical references.
The InfoLink (1987), and all documents and things describing or depicting the device, including
user manuals, technical specifications, advertisements, reviews, development documents, and
technical references.
The Oracle (1987), and all documents and things describing or depicting the device, including
user manuals, technical specifications, advertisements, reviews, development documents, and
technical references.
Declaration of Cooper C. Woodring In Support of Apple's Motion For A Preliminary Injunction
(July 1, 2011), Apple Inc. v. Samsung Electronics Co., Ltd., Case No. 11-cv-01846-LHK.
Deposition of Cooper C. Woodring (August 5, 2011), Apple Inc. v. Samsung Electronics Co.,
Ltd., Case No. 11-cv-01846-LHK.

5. Bates Ranges of Prior Art Produced by Respondent
SAMNDCA00019932-20034; SAMNDCA00020120-20303; SAMNDCA0002039420498; SAMNDCA00020782-20878; SAMNDCA00020900-20906; SAMNDCA0002097820989; SAMNDCA00021255-21313; SAMNDCA00021315-21336; SAMNDCA00021341182

CONTAINS CONFIDENTIAL BUSINESS INFORMATION, SUBJECT TO PROTECTIVE ORDER

21471; SAMNDCA00021479-21499; SAMNDCA00021505-21588; SAMNDCA0002159321604; SAMNDCA00021608-21632; SAMNDCA00021634-21805; SAMNDCA0002181221857; SAMNDCA00022451-22522; SAMNDCA00022732-22763; SAMNDCA0002280222812; SAMNDCA00022901-22971; SAMNDCA00022984-23064; SAMNDCA0002313723182; SAMNDCA00023234-23524; SAMNDCA00023542—23584; SAMNDCA0002359124061; SAMNDCA00024582-24662; SAMNDCA00024749-24752; SAMNDCA0002767027722; SAMNDCA00198059-198067; SAMNDCA00198070-198096; SAMNDCA00198101198274; SAMNDCA00198289-198307; SAMNDCA00198313-198456; SAMNDCA00198754198846; SAMNDCA00198884-199046; SAMNDCA00199164-199222; SAMNDCA00199298199306; SAMNDCA00199402-199524; SAMNDCA00200425-200472; SAMNDCA00200617200639; SAMNDCA00200650-200658; SAMNDCA00200661-200665; SAMNDCA00200670200676; SAMNDCA00200686-200714; SAMNDCA00200724-200733; SAMNDCA00200737200748; SAMNDCA00200751-200788; SAMNDCA00200793-200806; SAMNDCA00200809200838; SAMNDCA00200843-200873; SAMNDCA00201264-201278; SAMNDCA00255026
– SAMNDCA00256183; SAMNDCA00282113 - SAMNDCA00282120; SAMNDCA00326302
– SAMNDCA00326557.
SEC believes that the identified prior art, standing alone, or in combination, would appear
to an ordinary observer — giving such attention as a purchaser usually gives — to be
substantially the same as the design shown in D'678, rendering that patent invalid as anticipated
and/or obvious.
C. Invalidity Due to Functionality
The asserted claim of the D'678 patent is also invalid because it is functional and not
ornamental. See Lee v. Dayton-Hudson Corp., 838 F.2d 1186, 1188 (Fed. Cir. 1988). Indeed,
the D'678 patent contains no ornamentation whatsoever, and therefore has nothing to protect.
183