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

Filing 1068

Declaration of Bill Trac in Support of #1063 Administrative Motion to File Under Seal Samsung's Reply in Support of Samsung's Motion for Summary Judgment filed bySamsung Electronics Co. Ltd.. (Attachments: #1 Exhibit 1, #2 Exhibit 2, #3 Exhibit 3, #4 Exhibit 4, #5 Exhibit 5, #6 Exhibit 6, #7 Exhibit 7, #8 Exhibit 8, #9 Exhibit 9, #10 Exhibit 10, #11 Exhibit 11, #12 Exhibit 12, #13 Exhibit 13, #14 Exhibit 14, #15 Exhibit 15, #16 Exhibit 16, #17 Exhibit 17, #18 Exhibit 18, #19 Exhibit 19, #20 Exhibit 20, #21 Exhibit 21, #22 Exhibit 22, #23 Exhibit 23, #24 Exhibit 24, #25 Exhibit 25, #26 Exhibit 26, #27 Exhibit 27, #28 Exhibit 28)(Related document(s) #1063 ) (Maroulis, Victoria) (Filed on 6/8/2012)

EXHIBIT 12

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. 11-CV-01846-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

moving target construction is impermissible, see, e.g., Conoco, 460 F.3d at 135859, and has no basis in the patent, which contains no indication of a reflective
surface. Additionally, the existence of a raised frame in the 1994 Fidler tablet (as
opposed to a potentially flat one in the D'889 design) does not distract from the
substantial similarity in the overall visual appearance of the two designs, which are
essentially unadorned, basic rectangular shapes designed to put emphasize a large
flat front for viewing content. Thus, contrary to Apple's assertions (Br. 63), the
1994 Fidler tablet would not need "major modifications" to become the design
claimed in the D'889 patent, and therefore it is an appropriate primary reference.
But even if the district court chose an improper primary reference, the record
is replete with other prior art references disclosing a thin rectangular tablet shape
with rounded comers dominated by a display screen with little, if any,
ornamentation, including:

JP 1142127 A4059; A4157-76.

U.S. D337,569 (A4057; A4064;
4126-28.)

54

JP 0887388 A4058-59; A4147-55.

U.S. D461,802 (A4057-58; A413037.)

,,.

JP 0921403 (A4058; A4139-45.)

(See also A4562; A4564.) The district court acknowledged some of this prior art
(A43 n.26), and was not required to designate any of them as primary references
for them to be considered as such, see Titan Tire, 566 F.3d at 1381. The district
court, however, did not acknowledge any of Samsung's prior art that the court
permitted to be filed after the preliminary injunction hearing (and thus is part of the
record on appeal). In particular, the references shown below all disclose a flat, thin
monitor with a clear, glass-like front face and avoid any of the purported
shortcomings in the prior art that Apple has identified.

55

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Fiddler 1997 Blank Tablet
A8508-09; see also A8469-80.

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Fiddler 1997 Newspaper Tablet
A8511-15; see also A8469-83.

In light of the extensive prior art that could have served as a primary reference, the
district court's obviousness ruling cannot be set aside on this ground.
2.

The HP Compaq TClOOO Is A Proper Secondary Reference

The district court chose the TC 1000 as the secondary reference because it
"contains a flat glass screen that covers the top surface of the tablet and a thin rim
56