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

Filing 1161

RESPONSE (re #1147 Administrative Motion to File Under Seal Samsung's Motion to Stay June 26, 2012 Preliminary Injunction Pending Appeal ) Apple Inc.s Opposition To Samsungs Motion To Stay And Suspend The June 26, 2012 Preliminary Injunction Pending Appeal Or, Alternatively, Pending Decision By Federal Circuit On Stay Pending Appeal filed byApple Inc.. (Attachments: #1 Declaration Of Jason R. Bartlett In Support Of Apple Inc.s Opposition To Samsungs Motion To Stay And Suspend The June 26, 2012 Preliminary Injunction Pending Appeal Or, Alternatively, Pending Decision By Federal Circuit On Stay Pending Appeal, #2 Exhibit B, #3 Exhibit C, #4 Exhibit D, #5 Exhibit E, #6 Exhibit F, #7 Exhibit G, #8 Proposed Order)(McElhinny, Harold) (Filed on 6/30/2012)

Exhibit E

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
Case No. 5:11-CV-1846, Judge Lucy H. Koh.
DEFENDANTS-APPELLEES’ PETITION FOR
PANEL REHEARING AND REHEARING EN BANC
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
May 29, 2012

The panel held in the alternative that, even if Samsung had identified a
primary reference, the district court erred in relying upon the TC1000 tablet
computer as a secondary reference. (Slip op. 30.) The district court found that the
TC1000 has “a flat glass screen that covers the top surface of the tablet and a thin
rim that surrounds the front face of the device” (A43), but the panel held that it was
improper to combine the TC1000 tablet with Fidler because the ornamental
features in one design did not “suggest the application of those features to the
other” (Slip op. 30 (quoting In re Borden, 90 F.3d 1570, 1575 (Fed. Cir. 1996)).)
The panel did not discuss Samsung’s argument that the D’889 patent was
likely invalid as functional or likely not infringed once its functional features were
properly filtered out, and thus affirmed sub silentio as to these issues. (Slip op.
16.) The district court had ruled that, even if the patent’s features were primarily
functional, they did not render the patent unprotectable unless “purely functional”
or “dictated by the functionality of the item.” (A13; A39-40 (emphasis added).)
The court also had ruled that, even after the functional elements were filtered out,
Samsung’s Galaxy Tab 10.1 would likely infringe the D’889 patent. (A45-48.)
ARGUMENT
I.

THE PANEL SHOULD GRANT REHEARING TO CORRECT ITS
MISAPPREHENSION OF PRIOR ART OTHER THAN FIDLER
The panel should grant rehearing and affirm the district court on the ground

that the “Bloomberg” prior art is a proper primary reference even if Fidler is not.
6

The panel misapprehended Samsung’s prior art references as all “suffer[ing] from
the same problems as the Fidler reference, because all of them show either a thick
surrounding frame in which a display is embedded or contain extensive
ornamentation on the front of the tablet.” (Slip op. 31.) This is incorrect, for a
design owned by Bloomberg and described in a utility patent application, Ozolins,
10/309,648 (A8520-36), discloses a display design without either feature:

(A8520; A8530.) Like the D’889 patent, which the panel described as having a
“polished reflective surface extending to the edge of the front side of the device”
(Slip op. 4), Ozolins has a transparent and/or reflective cover made “of any suitable
structure capable of transmitting light, such as, for example, a glass or plastic
sheet” (A8533 ¶36) running from edge to edge on the front without “a thick
surrounding frame” or “extensive ornamentation.”

Images from Bloomberg’s

German and European design registrations show that the device described in the
Ozolins application was known as a finished design:

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(A8517; A8540.) Because the Bloomberg references have design characteristics
that are basically the same as the D’889 patent, they are proper primary references.
Nor do the Bloomberg references suffer from the purported deficiencies
identified by the panel with respect to the TC1000 reference. (See Slip op. 30.)
The panel observed that the TC1000 reference had a screen that was “surrounded
by a gray area that frames the screen,” a “wide rounded-over metallic rim,” and
“indicator lights.” Id. But none of the Bloomberg references discloses any of
those features. Ozolins, for example, states that the components of the cover
provide “a uniform appearance such that they present a flush uniform front of the
electronic display” (A8533 ¶35; see also id. ¶36), making clear that there is no
“gray area that frames the screen.” Because this art likely invalidates the D’889
patent even if the Fidler tablet does not, the panel should grant rehearing.2
2

To the extent the Bloomberg displays do not, by themselves, render the
D’889 patent invalid, they do so in combination with, for example, Tu, D’461,802
which has similar rounded corners and profile shape:

(A4057, A4130-37.)
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