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

Filing 1289

Statement Apple's Submission Regarding Proposed Design Patent Supplement to the Federal Judicial Center's Patent Video by Apple Inc.. (Attachments: #1 Exhibit 1, #2 Exhibit 2, #3 Exhibit 3, #4 Exhibit 4, #5 Exhibit 5, #6 Exhibit 6)(Hung, Richard) (Filed on 7/23/2012)

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HAROLD J. MCELHINNY (CA SBN 66781)
[e-mail]
MICHAEL A. JACOBS (CA SBN 111664)
[e-mail]
RACHEL KREVANS (CA SBN 116421)
[e-mail]
JENNIFER LEE TAYLOR (CA SBN 161368)
[e-mail]
ALISON M. TUCHER (CA SBN 171363)
[e-mail]
RICHARD S.J. HUNG (CA SBN 197425)
[e-mail]
JASON R. BARTLETT (CA SBN 214530)
[e-mail]
MORRISON & FOERSTER LLP
425 Market Street
San Francisco, California 94105-2482
Telephone: [phone]
Facsimile: [phone]

WILLIAM F. LEE
[e-mail]
WILMER CUTLER PICKERING
HALE AND DORR LLP
60 State Street
Boston, MA 02109
Telephone: [phone]
Facsimile: [phone]
MARK D. SELWYN (SBN 244180)
[e-mail]
WILMER CUTLER PICKERING
HALE AND DORR LLP
950 Page Mill Road
Palo Alto, California 94304
Telephone: [phone]
Facsimile: [phone]

Attorneys for Plaintiff and
Counterclaim-Defendant APPLE INC

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

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APPLE INC., a California corporation,

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Plaintiff,
v.
SAMSUNG ELECTRONICS CO., LTD., a
Korean business entity; SAMSUNG
ELECTRONICS AMERICA, INC., a New York
corporation; SAMSUNG
TELECOMMUNICATIONS AMERICA, LLC, a
Delaware limited liability company,

Case No. 11-cv-01846-LHK
APPLE INC.’S SUBMISSION
REGARDING PROPOSED DESIGN
PATENT SUPPLEMENT TO THE
FEDERAL JUDICIAL CENTER’S
PATENT VIDEO

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Defendants.
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APPLE INC.’S PROPOSED DESIGN PATENT SUPPLEMENT TO THE FJC’S PATENT VIDEO
CASE NO. 11-CV-01846-LHK
sf-3173718

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Pursuant to the Minute Order and Case Management Order of July 19, 2012 (Dkt. No.

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1267) (“Order”), Plaintiff Apple Inc. submits the following Proposed Design Patent Supplement

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to the Federal Judicial Center’s Patent Video. This submission is subject to and without waiver of

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Apple’s objection to playing the FJC Patent Video to the jury.

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Attached hereto as Exhibit 1 is Apple’s compromise Proposed Design Patent Supplement

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to the FJC’s Patent Video. In view of the Court’s ruling that the FJC Patent Video will be shown,

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Apple proposes that the Court read Exhibit 1 to the jury following the Video.

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Attached hereto as Exhibit 2 is a comparison of Apple’s compromise Proposed Design
Patent Supplement (Exh. 1) and Samsung’s Proposed Design Patent Supplement (Exh. 4),
indicating where there is disagreement.
Also attached hereto as Exhibit 3 is Apple’s original proposal, as sent to Samsung’s

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attorneys on July 21, 2012 at 1:26 p.m. Attached hereto as Exhibit 4 is Samsung’s Proposed

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Design Patent Supplement, which was sent to Apple’s attorneys on July 22, 2012 at 6:45 p.m.

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Attached hereto for the convenience of the Court as Exhibit 5 is an unofficial transcript of

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the FJC’s video. Attached hereto as Exhibit 6 is U.S. Patent No. D517,789, which is the sample

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design patent that Apple proposes for use with the design patent supplement.

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Apple objects to Samsung’s proposal (Exh. 4). Samsung objects both to Apple’s original
proposal (Exh. 1) and to Apple’s compromise proposal (Exh. 5).
Apple’s statement in support of its proposal: The parties have met and conferred pursuant

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to the Order. While the parties were able to agree on much of the text, there are two primary

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points where they have been unable to agree: One, on the inclusion of the third paragraph on the

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first page of Apple’s two proposals; and two, on language with respect to the presumption of

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validity for design patents and the application of the same higher standard of proof that is used

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with utility patents. As to the first issue, the paragraph is based on the Definition of a Design set

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forth in Section 1502 of the MPEP. As to the second issue, Apple submits that the reference to

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the presumption and burden of proof is consistent with the language used in the FJC Video (at pp.

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6-7 of the unofficial transcript (Ex. 2)), and complies with the Court’s Order that the supplement

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explain to the jury “that design patents are entitled to the same presumptions and protections as
APPLE INC.’S PROPOSED DESIGN PATENT SUPPLEMENT TO THE FJC’S PATENT VIDEO
CASE NO. 11-CV-01846-LHK
sf-3173718

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utility patents.” Order at 2.

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Dated: July 23, 2012

MORRISON & FOERSTER LLP

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By: /s/ Richard Hung________
Richard Hung
Attorneys for Plaintiff
APPLE INC.

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APPLE INC.’S PROPOSED DESIGN PATENT SUPPLEMENT TO THE FJC’S PATENT VIDEO
CASE NO. 11-CV-01846-LHK
sf-3173718

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