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

Filing 1352

Reply in Support of Opening Memorandum re Claim Construction by Samsung Electronics America, Inc.(a New York corporation), Samsung Electronics Co. Ltd., Samsung Telecommunications America, LLC(a Delaware limited liability company) re 1256 Order on Administrative Motion to File Under Seal, re (Dkt. No. 1179) (Attachments: # 1 Exhibit 1 to the Barach Declaration, # 2 Exhibit 2 to the Barach Declaration, # 3 Exhibit 3 to the Barach Declaration)(Maroulis, Victoria) (Filed on 7/26/2012) Modified on 7/27/2012 (dhm, COURT STAFF).

1 QUINN EMANUEL URQUHART & SULLIVAN, LLP
Charles K. Verhoeven (Cal. Bar No. 170151)
 [e-mail]
50 California Street, 22nd Floor
 San Francisco, California 94111
Telephone: [phone]
 Facsimile: [phone]
 Kevin P.B. Johnson (Cal. Bar No. 177129)
[e-mail]
 Victoria F. Maroulis (Cal. Bar No. 202603)
[e-mail]
 555 Twin Dolphin Drive 5th Floor
Redwood Shores, California 94065
 Telephone: [phone]
Facsimile: [phone]

Michael T. Zeller (Cal. Bar No. 196417)
 [e-mail]
865 S. Figueroa St., 10th Floor
 Los Angeles, California 90017
Telephone: [phone]
 Facsimile: [phone]
 Attorneys for SAMSUNG ELECTRONICS
CO., LTD., SAMSUNG ELECTRONICS
 AMERICA, INC. and SAMSUNG
TELECOMMUNICATIONS AMERICA, LLC



UNITED STATES DISTRICT COURT



NORTHERN DISTRICT OF CALIFORNIA, SAN JOSE DIVISION

 APPLE INC., a California corporation,

CASE NO.



SAMSUNG’S REPLY IN SUPPORT OF
OPENING MEMORANDUM RE CLAIM
CONSTRUCTION



Plaintiff,
vs.

 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,

Defendants.


Date:
Time:
Place:
Judge:

11-cv-01846-LHK

July 18, 2012
2:00 pm
Courtroom 8, 4th Floor
Hon. Lucy H. Koh

SUBMITTED UNDER SEAL




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Case No. 11-cv-01846-LHK
SAMSUNG’S REPLY IN SUPPORT OF OPENING MEMORANDUM RE CLAIM CONSTRUCTION

1 I.

APPLE’S DESIGN PATENTS MUST BE CONSTRUED TO ASSIST THE JURY

2

Apple principally opposes Samsung’s proposed claim construction by arguing that it is an

3 impermissibly “detailed verbal construction.” Dkt. 1136 at 1.
4 proposals and disregards authority.

That mischaracterizes Samsung’s

Apple cites the Court of Appeal’s decision in this case, but

5 fails to heed the Federal Circuit’s warning against construing designs “too broadly” and at “too high
6 a level of abstraction.”
7 Cir. May 14, 2012).

Apple, Inc. v. Samsung Elecs. Co., Inc., 2012 WL 1662048 at *13 (Fed.

Consistent with that ruling, claim construction is necessary to instruct the

8 jury that design patents protect the overall impression of the specific ornamental designs disclosed,
9 but do not extend to generalized design concepts such as an unadorned rectangular shape with
10 rounded corners and slim form factor.

Accord Elmer v. ICC Fabricating, 67 F.3d 1571, 1577

11 (Fed. Cir. 1995); OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997).
12

Samsung asks the Court to so inform the jury on the scope of the patents and on the meaning

13 of relevant drawing conventions, which is appropriate in design patent cases.
14 Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 680 (Fed. Cir. 2008).

See Egyptian

Contrary to Apple’s suggestion,

15 merely using words together with the drawings to understand the designs is not “excessive reliance
16 on a detailed verbal description” or substituting verbal constructions for the drawings, which the
17 Federal Circuit found erroneous in Crocs, Inc. v. ITC, 598 F.3d 1294, 1302-03 (Fed. Cir. 2010).
18

Apple also attempts to remove prior art from design patent construction by relegating it to a

19 “frame of reference for the comparison step” of infringement analysis.

Dkt. 1136 at 2. But as

20 the Federal Circuit held in rejecting that argument, design patent construction cannot be determined
21 by the infringement analysis.

OddzOn, 122 F.3d at 1404.

Because the “field” of prior art

22 electronic devices with rectangular shapes and rounded corners, a relatively large display screen,
23 flat front surfaces, and minimal ornamentation is indisputably “crowded,” see Dkt. 1090-01 at 10,
24 13, the Court “must construe the range of equivalents very narrowly.” Egyptian Goddess, 543
25 F.3d at 679; id. at 676 (“And when the claimed design is close to the prior art designs, small
26 differences between the accused design and the claimed design are likely to be important to the eye
27 of the hypothetical ordinary observer. It was for that reason that the Supreme Court in Whitman
28 Saddle focused on the one feature of the patented saddle design that departed from the prior art –
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SAMSUNG’S REPLY IN SUPPORT OF OPENING MEMORANDUM RE CLAIM CONSTRUCTION

1 the sharp drop at the rear of the pommel.”).

Apple’s conflation of claim construction with

2 infringement analysis and its efforts to escape the significance of prior art is contrary to law.
3

After all, the scope of the design patent right is limited, as Apple’s own cited case held:

4 “Design patents have almost no scope.” Tone Bros., Inc. v. Sysco Corp., 1992 WL 200128, *5
5 (S.D. Iowa, Mar. 17, 1992) (citing In re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988)); see also
6 Elmer, 67 F.3d at 1577.

Apple ignores this basic tenet, which would inappropriately invite jurors

7 who have likely never seen a design patent before to assume they protect general concepts and
8 otherwise grant Apple rights it does not possess.

The Court should provide guidance and proper

9 constructions to assist the jury from the commencement of trial.
10 II.
11

THE CONSTRUCTION AND SCOPE OF THE D‘087 AND D‘677 PATENTS ARE
DICTATED BY WHAT THE FIGURES CLAIM
Accuracy in design patent drawings is crucial, and the patentee is entitled to claim only what

12 is properly disclosed.

Elmer, 67 F.3d at 1577.

As the Court has recognized, see Dkt. 1170 at 8,

13 the MPEP mandates that “oblique line shading must be used to show transparent, translucent and
14 highly polished or reflective surfaces, such as a mirror.” MPEP § 1530.02.

Apple itself has

15 asserted that prior art designs do not claim a transparent surface where they lack oblique lines.
16 See Dkt. 1091, Ex. 14, at ¶ 124.

Nevertheless, when it comes to its own patents, Apple contradicts

17 itself by urging the Court to ignore the lack of any surface shading in D’087 and argues that its
18 absence should expand the patent’s scope to “a design formed of particular geometric shapes” with
19 any kind of surface.

Dkt. 1136 at 7.

This argument fails.

Not only is it contrary to this Court’s

20 rulings and Apple’s own prior positions, but there is no MPEP convention for claiming an opaque
21 surface; it is the default unless the patent distinguishes it as a transparent or reflective surface by
22 using the required oblique shading.

Second, design patents must claim their surface

23 ornamentation in addition to their shape.

See Lee v. Dayton-Hudson, 838 F. 2d 1186, 1188-89

24 (Fed. Cir. 1988) (rejecting argument that design patents can broadly cover a “basic configuration,
25 not the surface details”).

Accordingly, the surfaces of D’087 must be construed as “opaque” or at

26 least as “not transparent, highly polished or reflective.”
27

Apple dismisses as “quibbles” the fact that D’087 and D’677 lack the surface shading

28 required to indicate openings on the surface such as for the earpieces or concave buttons. Dkt.
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1 1136 at 6-7.

But patent drawings are scarcely “quibbles.” “The necessity for good drawings in a

2 design patent application cannot be overemphasized.

As the drawing constitutes the whole

3 disclosure of the design, it is of utmost importance that it be so well executed both as to clarity of
4 showing and completeness, that nothing regarding the design sought to be patented is left to
5 conjecture.”

MPEP § 1530.02 ¶15.48.

The MPEP specifically dictates that “[s]urface shading is

6 also necessary to distinguish between any open and solid areas of the article” and to “delineate
7 plane, concave, convex, raised, and/or depressed surfaces of the subject matter.” MPEP §
8 1503.02, ¶15.48-49.

Apple’s lofty appeals to the designs’ “overall visual impression” do not alter

9 the fact that the patents must be construed in accordance with the governing rules.

Apple claims

10 these features are “minor,” Dkt. 1136 at 7, but there is no such exception for the proper construction
11 of design patents that would allow them to be ignored.

Indeed, Apple’s position is implausible

12 because, with so few design elements, each is significant.
13 opening looking the same as a surface decoration.

And Apple offers no support for an

Neither of these patents claim openings or

14 concave areas on their front surfaces because none are shown in the patent figures.
15

Finally, Apple disregards both its prior admissions and a prior Court order by claiming that

16 no element of its designs is functional.

Dkt. 1136 at 9-13.

The Court has found that certain

17 D’087 and D’677 design elements are “dictated by” function: “a size that can be handheld, a screen
18 that encompasses a large portion of the front face of the smartphone, and a speaker on the upper
19 portion of the front face of the product.”

Dkt. 449 at 15.1

Apple argues the existence of

20 alternative designs disproves any functionality, Dkt. 1136 at 10-12, but that is wrong.

First,

21 despite such alleged alternatives, Apple’s expert admits that a display, a transparent cover directly
22 above the display, and a receiver hole located in the upper portion of the front face are essential to
23 the use of a smartphone.
24

See Dkt 1090-1 at 12.

Second, the Federal Circuit has held even if

1

Apple tries to evade this Court’s and its expert’s functionality determinations by saying the
designs are generically for “electronic devices” not only smartphones or tablets. Dkt. No. 1136 at
25
9-10. Apple is trying to apply its patents to smartphones and tablets that must have those features
26 to function. Apple cannot use a design patent to gain a monopoly on functional features — that is
reserved only for utility patents. See, e.g., Lee, 838 F.2d at 1188-89 (“[A] a design patent is not a
27 substitute for a utility patent.”). D’677 claims an ornamental designs for “cellular phones,”
among other devices, and in that context the features identified by the Court are indeed functional.
28
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1 individual elements might have alternative designs, the relative placement of those elements on the
2 article can be functional and unprotectable. See Richardson v. Stanley Works, 597 F.3d 1288,
3 1294-96 (Fed. Cir. 2010).

Third, the existence of alternative designs alone does not render all

4 elements of a design patent ornamental.

Rather, the existence of alternatives is merely one factor

5 to be considered in determining whether design elements are functional.

See PHG Tech., Inc. v.

6 St. John Co., Inc., 469 F.3d 1361, 1366 (Fed Cir. 2006); Berry Sterling Corp. v. Pescor Plastics,
7 Inc., 122 F.3d 1452, 1456 (Fed Cir. 1997).

Finally, Apple’s alternatives argument has since been

8 restricted significantly by Judge Grewal’s order granting Samsung’ motion to strike numerous
9 alternative design references.

Dkt. 1144 at 7.

10 these indisputably functional elements.
11 III.

14
15
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18
19
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21
22
23

Dkt. 1090, at 14-15.2

THE D’889 PATENT MUST BE CONSTRUED CONSISTENTLY WITH ITS
FIGURES AND THE EMBODIMENT CLAIMED BEFORE THE PTO

12
13

The Court should instruct the jury to factor out

The specification, prosecution history and inventor testimony are all useful sources of
evidence for construing claims.
2005) (en banc).

See Phillips v. AWH Corp., 415 F.3d 1303, 1315-17 (Fed. Cir.

Patents also should not be construed to exclude a claimed embodiment.

Oatey

Corp. v. IPS Corp., 514 F.3d 1271, 1276-77 (Fed. Cir. 2008) (vacating construction that
“improperly excluded” embodiment from scope of claim and holding that “where claims can
reasonably be interpreted to include a specific embodiment, it is incorrect to construe the claims to
exclude that embodiment, absent probative evidence on the contrary.”).
to the PTO that the 035 model embodies the D’889.

Here, Apple represented

Dkt. 1091, Ex. 3 at APLPROS0000010190.

Its patent agent who prepared the D’889 application testified that he drew the D’889 figures based
on the 035 model and photos of the 035 model.

See Declaration of Katharine Barach (“Barach

Dec.”) Ex. 1; see also Dkt. 1091 Ex. 17, at 185:10-194:7 (named inventor Daniele De Iuliis
2

Apple argues its other patents cannot be used to narrow the scope of these patents, Dkt.
24 1136 at 3, but that is not Samsung’s position. It is the fact that, in each instance, Apple swore
under oath to the PTO that the design it sought to patent was “new” and “original” over the prior
25
art, including Apple’s previous patents. 35 U.S.C. § 171. MPEP § 1504.06(II) does allow
26 multiple patents on matter that is not patentably distinct if the patentee agrees to a terminal
disclaimer, but only 3 of the 23 iPhone patents cited by Samsung are subject to terminal disclaimers
27 and a number of those were filed before D’677 and D’087, which makes them prior art, not
“subsequent patents.” Thus, Apple’s representations to the PTO are highly probative.
28
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1 confirming that the D’889 figures were drawn based on 035).
2 testified that the 035 embodies the D’889.
3

Apple’s named inventors have also

See Barach Dec. Exs. 2, 3.

Apple argues that the 035 embodiment and photographs of it should be disregarded because

4 the patent examiner “cancelled” Apple’s photo appendix as superfluous under 37 CFR 1.153, which
5 states that the description is ordinarily limited to references to the drawings.
6 APLPROS0000010267.

Dkt. 1091, Ex. 3 at

But the PTO’s cancellation of the proposed appendix said nothing about

7 Apple’s statement that the 035 model was D’889’s embodiment.

Nor could the PTO’s action

8 negate Apple’s representations then or years later, including in its Opposition (Dkt. 1136 at 5), that
9 the 035 is in fact an embodiment of the D’889 design.

Apple’s representations are relevant to

10 construe D’889, to assess Apple’s claims that the iPad / iPad 2 are embodiments, and to make
11 infringement comparisons: “When no significant distinction in design has been shown between the
12 patent drawing and its physical embodiment, it is not error for the court to view them both, and to
13 compare the embodiment of the patented design with the accused devices.”

Lee, 838 F. 2d at

14 1189. The jury should be allowed to see the 035 embodiment and photographs because they
15 reflect how Apple and named inventors understood the patent at the time it was issued.
16 Phillips, 415 F.3d at 1317.

See

Even if the Court is reluctant to affirmatively construe the D’889 using

17 the 035 model, the Court should instruct the jury that Apple represented to the PTO that the model
18 embodies the patent.

Egyptian Goddess, 543 F.2d at 680 (“Apart from attempting to provide a

19 verbal description of the design, a trial court can usefully guide the finder of fact by addressing a
20 number of other issues that bear on the scope of the claim.

Those include such matters as . . .

21 assessing and describing the effect of any representations that may have been made in the course of
22 the prosecution history . . . .”).
23 DATED: June 26, 2012
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QUINN EMANUEL URQUHART &
SULLIVAN, LLP
By /s/ Victoria Maroulis

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Charles K. Verhoeven
Kevin P.B. Johnson
Victoria F. Maroulis
Michael T. Zeller
Attorneys for SAMSUNG ELECTRONICS CO.,
LTD., SAMSUNG ELECTRONICS AMERICA,
INC., and SAMSUNG
TELECOMMUNICATIONS AMERICA, LLC

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