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

Filing 1353

Unredacted Opposition to Apple's Opening Claim Construction Brief 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. 1139) (Attachments: # 1 Exhibit 5 to the Cashman Declaration)(Maroulis, Victoria) (Filed on 7/26/2012) Modified text on 7/27/2012 (dhm, COURT STAFF).

1 QUINN EMANUEL URQUHART & SULLIVAN, LLP
Charles K. Verhoeven (Cal. Bar No. 170151)
2 [e-mail]
50 California Street, 22nd Floor
3 San Francisco, California 94111
Telephone: [phone]
4 Facsimile: [phone]
5 Kevin P.B. Johnson (Cal. Bar No. 177129)
[e-mail]
6 Victoria F. Maroulis (Cal. Bar No. 202603)
[e-mail]
7 555 Twin Dolphin Drive 5th Floor
Redwood Shores, California 94065
8 Telephone: [phone]
Facsimile: [phone]
9
Michael T. Zeller (Cal. Bar No. 196417)
10 [e-mail]
865 S. Figueroa St., 10th Floor
11 Los Angeles, California 90017
Telephone: [phone]
12 Facsimile: [phone]
13 Attorneys for SAMSUNG ELECTRONICS
CO., LTD., SAMSUNG ELECTRONICS
14 AMERICA, INC. and SAMSUNG
TELECOMMUNICATIONS AMERICA, LLC
15
16

UNITED STATES DISTRICT COURT

17

NORTHERN DISTRICT OF CALIFORNIA, SAN JOSE DIVISION

18 APPLE INC., a California corporation,
Plaintiff,

19
20

vs.

21 SAMSUNG ELECTRONICS CO., LTD., a
Korean business entity; SAMSUNG
22 ELECTRONICS AMERICA, INC., a New
York corporation; SAMSUNG
23 TELECOMMUNICATIONS AMERICA,
LLC, a Delaware limited liability company,
24
Defendants.
25

CASE NO. 11-cv-01846-LHK
SAMSUNG’S OPPOSITION TO APPLE’S
OPENING CLAIM CONSTRUCTION
BRIEF
Date:
Time:
Place:
Judge:

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

SUBMITTED UNDER SEAL

26
27
28
02198.51855/4823493.6

Case No. 11-cv-01846-LHK
SAMSUNG’S OPPOSITION TO APPLE’S OPENING CLAIM CONSTRUCTION BRIEF

1

TABLE OF CONTENTS

2

Page

3
4 I.

THE COURT SHOULD CONSTRUE THE DESIGN PATENTS BEFORE TRIAL ......... 1

5

A.

The Court Should Construe the Design Patents Prior to Trial .................................. 1

6

B.

Apple’s Design Patents Warrant And Require Construction .................................... 3

7

C.

The Functional Elements Of Apple's Patents Need To Be Factored Out.................. 5

8 II.

ANY INSTRUCTION REGARDING DESIGN PATENT DRAFTING
CONVENTIONS SHOULD APPLY CONSISTENTLY TO APPLE’S PATENTS ........... 8

9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
02198.51855/4823493.6

Case No. 11-cv-01846-LHK
-iSAMSUNG’S OPPOSITION TO APPLE’S OPENING CLAIM CONSTRUCTION BRIEF

1

TABLE OF AUTHORITIES

2
3

Page
Cases

4 180s Inc. v. Gordini Inc.,
699 F. Supp. 2d 714 (D. Md. 2010) .............................................................................................1
5
ADC Telecommunications, Inc. v. Panduit Corp.,
6
200 F. Supp. 2d 1022 (D. Minn. 2002) ....................................................................................6, 7
7 Amazon.com, Inc. v. Barnesandnoble.com, Inc.,
239 F.3d 1343 (Fed. Cir. 2001) ................................................................................................3, 4
8
Apple, Inc. v. Samsung Electronics Co., Ltd.,
9
No. 2012-1105, 2012 WL 1662048 (Fed. Cir. May 14, 2012) ....................................................3
10 Berry Sterling Corp. v. Pescor Plastics, Inc.,
122 F.3d 1452 (Fed Cir. 1997) .....................................................................................................8
11
Depaoli v. Daisy Mfg. Co., Inc.,
12
No. 07-cv-11778, 2009 WL 2145721 (D. Mass. July 14, 2009) ..................................................6
13 Dexas Int., Ltd. v. Tung Yung Int., Inc.,
2008 WL 4831348 (E.D. Tex. June 24, 2008) .............................................................................7
14
Durling v. Spectrum Furniture Co., Inc.
15
101 F.3d 100 (Fed. Cir. 1996) ......................................................................................................3
16 Egyptian Goddess Inc. v. Swisa, Inc.,
543 F.3d 665 (Fed. Cir. 2008) ......................................................................................1, 4, 5, 6, 7
17
Elmer v. ICC Fabricating, Inc.,
18
67 F.3d 1571 (Fed. Cir. 1995) ......................................................................................................4
19 International Seaway Trading Corp. v. Walgreens Corp.,
589 F.3d 1233 (Fed. Cir. 2009) ....................................................................................................3
20
Litton Systems, Inc. v. Whirlpool Corp.,
21
728 F.2d 1423 (Fed. Cir. 1984) ....................................................................................................4
22 Mag Instrument, Inc. v. JS Products, Inc.,
595 F. Supp. 2d 1102 (C.D. Cal. 2008) ........................................................................................6
23
In re Mann,
24
861 F.2d 1581 (Fed. Cir. 1988) ....................................................................................................4
25 Markman v. Westview Instruments, Inc.,
52 F.3d 967 (Fed. Cir. 1995) ........................................................................................................1
26
Moose Mountain Toymakers Inc. v. Majik, Ltd.,
27
2011 WL 3626067 (D.N.J. Aug 12, 2011) ...................................................................................1
28
02198.51855/4823493.6

Case No. 11-cv-01846-LHK
-iiSAMSUNG’S OPPOSITION TO APPLE’S OPENING CLAIM CONSTRUCTION BRIEF

1 OddzOn Prods., Inc. v. Just Toys, Inc.,
122 F.3d 1396 (Fed. Cir. 1997) ................................................................................................3, 6
2
PHG Tech., Inc. v. St. John Co., Inc.,
3
469 F.3d 1361 (Fed Cir. 2006) .....................................................................................................7
4 Richardson v. Stanley Works, Inc.,
597 F.3d 1288 (Fed. Cir. 2010) ....................................................................................................6
5
Sofpool, LLC v. Intex Recreation Corp.,
6
2007 WL 4522331 (E.D. Tex. Dec. 19, 2007) .............................................................................7
7 Sun-Mate Corp. v. Koolatron Corp.,
2011 WL 3322597 (C.D. Cal. Aug. 1, 2011) ...............................................................................1
8
9

Statutes

10 35 U.S.C. § 103(a) ..............................................................................................................................5
11 35 U.S.C. § 171 ..................................................................................................................................5
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
02198.51855/4823493.6

Case No. 11-cv-01846-LHK
-iiiSAMSUNG’S OPPOSITION TO APPLE’S OPENING CLAIM CONSTRUCTION BRIEF

1
2

INTRODUCTION
Apple argues that the Court should refrain from construing the patents until after trial,

3 except to the limited extent required to provide the jury with technical guidance regarding design
4 patent drawing conventions.

But patent construction is an issue of law, and these patents are far

5 more limited than Apple hopes to insinuate to a jury.

In addition, a clear construction of the

6 patents is required to streamline the evidence, avoid irrelevant and prejudicial arguments, and
7 prevent jury confusion.

Delaying claim construction until after trial serves no purpose other than

8 to invite legal and factual error.
9

Apple also seeks a ruling that no element of its designs is functional.

Apple’s argument

10 contradicts not only common sense and the law of claim construction (as reflected in the Court’s
11 previous rulings that elements of Apple’s designs are dictated by function).

It also contradicts

12 the admissions of Apple’s own expert witness, who has conceded that elements such as a display
13 screen located beneath a transparent front cover are “essential” to the use of a smartphone device.
14

ARGUMENT

15 I.

THE COURT SHOULD CONSTRUE THE DESIGN PATENTS BEFORE TRIAL

16

A.

17

As a legal matter, there is no reason to further delay construing the asserted design patents.

The Court Should Construe the Design Patents Prior to Trial

18 Claim construction is a matter of law for the Court.

Egyptian Goddess Inc. v. Swisa, Inc., 543

19 F.3d 665, 679 (Fed. Cir. 2008); see also Markman v. Westview Instruments, Inc., 52 F.3d 967, 979
20 (Fed. Cir. 1995) (en banc); Sun-Mate Corp. v. Koolatron Corp., 2011 WL 3322597 at *3 (C.D.
21 Cal. Aug. 1, 2011) (“claim construction is a question of law for the court”); 180s Inc. v. Gordini
22 Inc., 699 F. Supp. 2d 714, 717 n. 2 (D. Md. 2010) (same); Moose Mountain Toymakers Inc. v.
23 Majik, Ltd., 2011 WL 3626067, at *2 (D.N.J. Aug 12, 2011) (“First, the design patent must be
24 properly construed, as a matter of law.”).
25

This case in particular warrants construction prior to trial.

The Court has ordered the

26 parties to streamline their disputes and limited both the time each party has to put on its evidence
27 and the number of exhibits it may introduce.

Dedicating valuable trial time and exhibits to claim

28 construction creates a risk that the jury will be asked to decide the case based on a
02198.51855/4823493.6
Case No. 11-cv-01846-LHK
-1SAMSUNG’S OPPOSITION TO APPLE’S OPENING CLAIM CONSTRUCTION BRIEF

1 misunderstanding of the patents and an incomplete record and will cause undue prejudice to
2 Samsung.

That is because Samsung’s non-infringement positions must necessarily be tied to the

3 scope of the asserted design patents.

Deferring claim construction until after trial would

4 therefore force Samsung not only to use its scarce trial time and limited exhibits to support its
5 claim construction, but also to prove its invalidity and non-infringement defenses as to any
6 number of potential constructions that could ultimately be adopted.

Forcing Samsung to do so

7 would not only mean that the jury will be presented with evidence and argument that will likely be
8 irrelevant ultimately, but, given the constraints on the parties’ trial presentations, would also
9 deprive Samsung of its ability to present a full and fair defense to Apple’s claims.
10

Efficiency also strongly militates in favor of construing the patents prior to trial.

As the

11 Court has noted, the jury in this case will be asked to absorb a substantial amount of information
12 and make infringement determinations about a number of accused products in a relatively short
13 period of time.

See, e.g., June 26, 2012 Declaration of Adam Cashman (“June 26 Cashman

14 Decl.”), Ex. 1 (May 2, 2012 Tr. at 3:22-4:3, 5:3-12).

Absent further narrowing, Apple’s current

15 design-related case alone involves four different design patents, alleged dilution of an iPhone trade
16 dress and alleged dilution and infringement of an iPad trade dress against numerous products.
17 The parties have designated a combined ten expert witnesses to testify regarding such issues as
18 validity, infringement, indefiniteness and scope of the design patents at issue.

If Apple is sincere

19 in its representation that it “will do whatever [it] need[s]” to ensure that its case can properly be
20 tried within the parameters set by the Court, see id. Ex. 1 (May 2, 2012 Tr. at 8:25), then Apple
21 should be in favor of obtaining a definitive construction of the design patents prior to trial.
22

Rather than using the claim construction process as a means to comply with the Court’s

23 directive to further streamline the case, however, Apple paradoxically takes the opposite tack.

It

24 urges that claim construction should not be done until after the close of evidence, if at all.
25 Although Apple apparently plans to offer all manner of evidence to support its arguments
26 regarding the purportedly sweeping scope of its design rights, such evidence and argument would
27 be largely unnecessary once the Court establishes the proper scope of the design patents in suit.
28 See Dkt. 1090-1.
02198.51855/4823493.6

Case No. 11-cv-01846-LHK
-2SAMSUNG’S OPPOSITION TO APPLE’S OPENING CLAIM CONSTRUCTION BRIEF

1

Further, as discussed below, the design patents should be construed prior to trial so that the

2 parties may focus their presentations on the elements of Apple’s design rights that are actually
3 protected under design patent law and that may properly be the subject of an infringement claim.
4 Allowing Apple unbridled reign on the scope and construction of the asserted design patents will
5 only serve to confuse the jury and prejudice Samsung.
6

B.

7

After unsuccessfully opposing Samsung's request to file a claim construction brief, and

Apple’s Design Patents Warrant And Require Construction

8 having failed in its earlier attempts to suppress discussion of claim construction entirely, Apple
9 now has filed an opening claim construction brief that merely seeks the same result by advocating
10 a “construction” that is nothing more than the images of the patent figures and generic descriptions
11 of patent drawing conventions.

Dkt. 1089-3, at 1-2; see also Dkt. 893, at 2; June 26 Cashman

12 Decl. Ex. 1 (May 2, 2012 Tr. at 21:16-24).

That is no construction at all, and would leave the

13 jury with the erroneous impression that Apple’s patents protect such “generalized design
14 concepts” as rectangles with rounded corners or, as discussed further below, such concededly
15 functional aspects as a display screen covered by a transparent material.

See OddzOn Prods.,

16 Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997) (“We agree with the district court’s
17 claim construction, which properly limits the scope of the patent to its overall ornamental visual
18 impression, rather than to the broader general design concept of a rocket-like tossing ball.”); Dkt.
19 449, at 15.

The Federal Circuit already has rejected such a broad construction in the invalidity

20 context, finding that it was error to “view[] the various designs from too high a level of
21 abstraction.” Apple, Inc. v. Samsung Electronics Co., Ltd., No. 2012-1105, 2012 WL 1662048,
22 at *13 (Fed. Cir. May 14, 2012) (quoting Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100,
23 104 (Fed. Cir. 1996)).

Because the infringement analysis of design patents is the same as the

24 invalidity analysis, 1 Apple’s proposed approach invites the same error.

The jury therefore

25
26

1

See International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1239 (Fed.
27 Cir. 2009) (“That which infringes, if later, would anticipate, if earlier.”) (quoting Peters v. Active
Mfg. Co., 129 U.S. 530, 537 (1889)); Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d
28
(footnote continued)
02198.51855/4823493.6
Case No. 11-cv-01846-LHK
-3SAMSUNG’S OPPOSITION TO APPLE’S OPENING CLAIM CONSTRUCTION BRIEF

1 should be properly instructed regarding the claimed designs to avoid erroneously construing the
2 patents “from too high a level of abstraction.” Id.
3

Apple’s mistaken suggestion that the design patents protect all visual elements shown in

4 the claimed designs fails to account for the fact that when “a field is crowded with many
5 references” relating to the design of the same type of article, a design patent’s “scope of
6 protection” is limited to a more “narrow range.”

Egyptian Goddess Inc. v. Swisa, Inc., 543 F.3d

7 665, 676 (Fed. Cir. 2008) (quoting Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444
8 (Fed. Cir. 1984)).

As set forth in Samsung’s opening claim construction brief, and as depicted in

9 the graphic below, the “field” of prior art at issue for mobile electronic devices is extremely
10 “crowded,” which necessitates a claim construction that is sufficiently narrow to avoid reading on
11 the prior art.

See Dkt. 1090-01, at 10, 13; see also In re Mann, 861 F.2d 1581 (Fed. Cir. 1988)

12 (“Design patents have almost no scope”); Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577
13 (Fed. Cir. 1995) (quoting In re Mann).
14
15
16
17
18
19
20
21
22
23
24
25 See June 26 Cashman Decl. Exs. 2-4; Dkt. 1091, Exs. 1, 2, 7-9, 12.
26
27 1343, 1351 (Fed. Cir. 2001) (“A patent may not, like a “nose of wax,” be twisted one way to avoid
anticipation and another to find infringement.”) (internal citation omitted).
28
02198.51855/4823493.6

Case No. 11-cv-01846-LHK
-4SAMSUNG’S OPPOSITION TO APPLE’S OPENING CLAIM CONSTRUCTION BRIEF

1

Additionally, Apple’s erroneous suggestion that the design patents protect all visual

2 elements shown in the claimed designs is contrary to the numerous representations it has made to
3 the USPTO in the course of obtaining dozens of design patents for its iPhone and iPad products.
4 As the Federal Circuit has made clear, one of the “useful[]” purposes of design patent claim
5 construction is to “guide the finder of fact by addressing . . . issues that bear on the scope of the
6 claim[,] . . . includ[ing] . . . assessing and describing the effect of any representations that may
7 have been made in the course of the prosecution history.” Egyptian Goddess Inc., 543 F.3d at
8 680.

Apple has made several such representations that bear on the scope of its asserted design

9 patents.

For example, in seeking to avoid an obviousness rejection under 35 U.S.C. § 103(a),

10 Apple swore that the D’677 was patentably distinct from the prior art cited by the examiner
11 because it claimed “a substantially continuous transparent surface on an electronic device and the
12 substantially smooth or flush transition between the display screen and the rest of the front face of
13 the device[.]” Dkt. 1091, Ex. 21 at APLPROS0000011936.

Yet, Apple has elsewhere argued

14 that the D’889 design, which was also cited as prior art during prosecution of D’677, already
15 disclosed that very same characteristic of a continuous flat front surface that runs from edge to
16 edge.

See, e.g., Dkt. 997-02, at 10-11 (distinguishing the D’037 prior art reference because it

17 purportedly “does not disclose an edge-to-edge transparent front surface” or a “uniform mask”
18 underneath the front surface, and distinguishing the “Brain box” reference as purportedly lacking a
19 flat front surface.).

By its own admissions, Apple’s patents must be construed in a limited

20 fashion to be patentable as “new” and “original” ornamental designs, without reading on the prior
21 art.

See 35 U.S.C. § 171.

Here, that requires a construction of D’677 that does not include a

22 continuous, flat, transparent front surface.

Construction of the design patents is therefore

23 necessary to determine the effect of Apple’s prior representations on the scope of its designs.
24

C.

25

Apple’s argument that the Court should defer its determination of whether the patents

The Functional Elements Of Apple's Patents Need To Be Factored Out

26 contain any functional elements is unsupported.

Dkt. 1089-3, at 3-4.

Although courts retain

27 significant discretion in the way they conduct design patent claim construction, the Federal Circuit
28 has made clear that one of the “useful” purposes of claim construction is to “distinguish[] between
02198.51855/4823493.6

Case No. 11-cv-01846-LHK
-5SAMSUNG’S OPPOSITION TO APPLE’S OPENING CLAIM CONSTRUCTION BRIEF

1 those features of the claimed design that are ornamental and those that are purely functional.”
2 Egyptian Goddess, 543 F.3d at 680.

“Where a design contains both functional and non-

3 functional elements, the scope of the claim must be construed in order to identify the non4 functional aspects of the design shown in the patent.” OddzOn, 122 F.3d at 1405 (emphasis
5 added); see also Richardson v. Stanley Works, Inc., 597 F. 3d 1288, 1294 (Fed. Cir. 2010).

That

6 is particularly warranted where, as here, the Court has specifically granted Samsung’s request to
7 construe the design patents and trial is set to begin in approximately one month.

See OddzOn,

8 122 F.3d at 1405 (affirming, on de novo review, District Court’s construction of patent to factor
9 out functional elements).
10

The factual circumstances also weigh in favor of factoring out certain functional elements

11 of the design patents now as part of claim construction, as opposed to waiting until after trial.
12 Apple concedes that this functionality determination is a question for the Court, not the jury, yet
13 urges the Court to defer it until it has a “full factual record.” Dkt. 1089-3, at 4.
14 complete and the factual record is indisputably “full.”

But discovery is

And, as Apple is aware, the Court

15 previously identified elements of the D’889, D’087 and D’677 patents that it found were “dictated
16 by” function and that, accordingly, could not be considered part of the claimed ornamental design
17 for infringement comparison purposes.

See Dkt. 449, at 15, 39-40.

There is no reason to delay

18 the determination of which elements of the claimed designs are functional.
19

The authorities Apple relies on do not compel the result Apple seeks here.

To the

20 contrary, as the court noted in Depaoli v. Daisy Mfg. Co., Inc. (Dkt. 1089-03, at 4), courts have
21 “considerable discretion” in determining how to address and factor out functional elements in
22 connection with construing the scope of design patents.

No. 07-cv-11778, 2009 WL 2145721 at

23 *3 (D. Mass. July 14, 2009) (citing Egyptian Goddess, 543 F.3d at 680); see also Mag Instrument,
24 Inc. v. JS Products, Inc., 595 F. Supp. 2d 1102, 1108 (C.D. Cal. 2008) (deferring functionality
25 determination from motion to strike to claim construction hearing).

Further, in ADC

26 Telecommunications, Inc. v. Panduit Corp., 200 F. Supp. 2d 1022 (D. Minn. 2002), the Court
27 denied summary judgment as to the defendant’s invalidity defense based on overall functionality
28 of the designs, and did not consider whether any aspect of the claimed design must be “factored
02198.51855/4823493.6

Case No. 11-cv-01846-LHK
-6SAMSUNG’S OPPOSITION TO APPLE’S OPENING CLAIM CONSTRUCTION BRIEF

1 out” as part of claim construction.

200 F. Supp at 1035 (“[Defendant] has not met its burden of

2 proving that ADC’s design patents are invalid because they are primarily functional.”); see also
3 Egyptian Goddess, 543 F.3d at 680. 2

The Court should construe, as part of the claim

4 construction process, Apple’s design patents to factor out functional aspects of Apple’s designs
5 because doing so will promote efficiency, streamline the parties’ presentations at trial, and reduce
6 the probability of jury confusion.
7

As set forth in Samsung’s opening brief, the Court’s functionality determination should not

8 be a difficult one.

Dkt. 1090-1 at 5, 11-12, 14-15.

Apple’s expert witness has conceded, as he

9 must, that elements of the claimed designs are “critically important” to the use of the devices,
10 including (i) having a display screen that is (ii) covered by a transparent material; and for the
11 phone patents, (iii) locating a speaker opening on the upper portion of the device.

Id.

The

12 Court previously held that these elements and others were “dictated by” the use or purpose of the
13 article claimed.
14

Dkt. 449, at 15, 39-40.

The Court should do so again here.

Apple nevertheless argues, implausibly, that none of the features of its design patents are

15 functional, including the elements its expert admitted are “essential” to the use and purpose of the
16 devices.

Dkt. 1089-3, at 5.

Because there are examples of other devices that have “a variety of

17 screen sizes,” speaker locations, and front border size and proportions, Apple claims that these
18 elements of its designs reflect ornamental design choices that were determined by “aesthetic
19 considerations,” not practical ones.

Id. at 5.

20 render a design ornamental and non-functional.

But the mere existence of alternatives does not
See PHG Tech., Inc. v. St. John Co., Inc., 469

21 F.3d 1361, 1366 (Fed Cir. 2006) (listing several factors courts consider in determining whether a
22
23
24
25
26
27
28
02198.51855/4823493.6

2

The two additional authorities cited by Apple are inapposite. In Dexas Int., Ltd. v. Tung
Yung Int., Inc., the court deferred claim construction until trial because the defendant’s
representation that functionality was undisputed was not accurate, leaving the court without an
adequate record on which to determine which elements of the claimed designs were functional.
2008 WL 4831348 at *12 (E.D. Tex. June 24, 2008). In Sofpool, LLC v. Intex Recreation Corp.,
although the court noted in dicta that other courts have deferred the functionality analysis until
trial, Sofpool did not appear to involve any argument that any aspect of the claimed designs were
functional, and the court proceeded to construe the design patents in that case at the claim
construction stage. 2007 WL 4522331 at *4 (E.D. Tex. Dec. 19, 2007).
Case No. 11-cv-01846-LHK
-7SAMSUNG’S OPPOSITION TO APPLE’S OPENING CLAIM CONSTRUCTION BRIEF

1 design is functional, including whether (1) the protected design represents the best design; (2)
2 alternative designs would adversely affect the utility of the specified article; (3) there are any
3 concomitant utility patents; (4) advertising touts particular features of the design as having specific
4 utility; (5) there are any elements in the design or an overall appearance clearly not dictated by
5 function.); Berry Sterling Corp. v. Pescor Plastics, Inc., 122 F.3d 1452, 1456 (Fed Cir. 1997)
6 (“The presence of alternative designs may or may not assist in determining whether the challenged
7 design can overcome a functionality challenge.”).

The existence of alternative designs that do

8 not affect the utility of the article is therefore merely one of several factors that may be relevant to
9 determining the functionality of a design.
10

See id.

The Court therefore should hold that at least the elements previously found to be functional

11 and those that Apple’s expert has admitted were functional form no part of the claimed ornamental
12 designs for purposes of an infringement comparison.
13 II.

Dkt. 1090-01, at 5, 11-12, 14-15.

ANY INSTRUCTION REGARDING DESIGN PATENT DRAFTING
CONVENTIONS SHOULD APPLY CONSISTENTLY TO APPLE’S PATENTS

14
Apple argues that the Court should instruct the jury, consistent with the patents and the
15
MPEP, that the broken lines in the D’677, D’087, and D’305 patents form no part of the claimed
16
designs, even though D’677 makes no broken line disclaimer whatsoever.

Dkt. 1089-3, at 2;

17
MPEP § 1503.02.

Such definitive and out of context instructions would only serve to further

18
confuse the jury because the patents at issue and Apple’s proposed constructions of them are
19
inconsistent and self-contradictory.
20
With respect to the D’889 design, Apple argues that the Court should instruct the jury that
21
the broken lines of the human figure in figure 9 form no part of the claimed design, but that the
22
same broken lines forming a rectangular shape on the front of the device in Figures 1, 3 and 9 are
23
part of the claimed design.

Dkt. 1089-3, at 3.

To justify its inconsistent construction, Apple

24
asserts that the broken lines were never disclaimed, except with respect to the human figure visible
25
in Figure 9.

Id.

Apple’s argument ignores the plain language of the disclaimer:

“Fig. 9 is an

26
exemplary diagram of the use of the electronic device thereof the broken lines being shown for
27
illustrative purposes only and form no part of the claimed design.” See Dkt. 1091, Ex. 1 at 2.
28
02198.51855/4823493.6

Case No. 11-cv-01846-LHK
-8SAMSUNG’S OPPOSITION TO APPLE’S OPENING CLAIM CONSTRUCTION BRIEF

1 Thus, the D’889 patent is ambiguous on its face by claiming the interior rectangle in Figures 1 and
2 3 while expressly disclaiming it in Figure 9.
3

Moreover, Apple’s argument that the broken line rectangle on the front surface of the

4 device in Figures 1, 3 and 9 “marks an area visible beneath the transparent surface and is claimed
5 subject matter” (Dkt 1089-3, at 3) is in direct contravention of the PTO’s requirement that
6 “elements visible behind transparent surfaces should be shown in light, full lines, not broken
7 lines.”

United States Patent and Trademark Office, A Guide to Filing a Design Patent

8 Application, at 14 (available at http://www.uspto.gov/web/offices/com/iip/pdf/brochure_05.pdf).
9 This argument cannot clarify or explain away the use of broken lines in Figure 9.
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24 Dkt. 1091, Ex. 1 at 6.
25

For the same reason, the rectangular element shown on the face of D’677 cannot be

26 construed as claiming a feature behind a transparent front surface, because that element is not
27 rendered in “light, full lines” as required by the PTO.

In addition, although the D’677 design

28 uses broken line structure, the patent does not disclaim broken lines as forming no part of the
02198.51855/4823493.6

Case No. 11-cv-01846-LHK
-9SAMSUNG’S OPPOSITION TO APPLE’S OPENING CLAIM CONSTRUCTION BRIEF

1 claimed design or of a specified embodiment thereof, as required by the MPEP.

See MPEP §

2 1503.02 (III) (“Unclaimed subject matter may be shown in broken lines for the purpose of
3 illustrating the environment in which the article embodying the design is used.

Unclaimed

4 subject matter must be described as forming no part of the claimed design or of a specified
5 embodiment thereof.”) (emphasis added).

Apple’s claims regarding the scope of the D’677 are

6 therefore contradicted by the rules governing design patent drawing.
7

Apple also argues that the jury should be instructed that the “oblique lines appearing in the

8 D’677 patent indicate a transparent, translucent, or highly polished or reflective surface.”
9 1089-3, at 3.

Dkt.

In support, Apple relies on MPEP section 1530.02, which provides that “oblique

10 line shading must be used to show transparent, translucent and highly polished or reflective
11 surfaces, such as a mirror.” (Emphasis added).

Although Apple misleadingly alters the MPEP's

12 mandatory language “must be” by bracketing it and changing it to the permissive “is,” there can
13 be no dispute that the use of oblique line shading is required to indicate a transparent, translucent,
14 or reflective surface.

See Dkt. 1091, Ex. 15 at 751:15-22; id., Ex. 14, at ¶ 124 (Apple’s expert

15 opining that lack of oblique lines in border disclosed by prior art signifies lack of transparent
16 material); see also June 26 Cashman Decl. Ex. 5 at 798:11-24, 811:6-812:7.
17

This same rule must be applied to D’087, which does not include any oblique line shading

18 and therefore does not claim, and cannot claim, a transparent, reflective or highly polished front
19 surface.

Indeed, the lack of oblique shading means that the front surface of D’087 must be

20 construed as opaque and non-transparent.

See MPEP § 1530.02; Dkt. 1091, Ex. 15 at 751:15-22;

21 id., Ex. 14, at ¶ 124; June 26 Cashman Decl. Ex. 5 at 798:11-24, 811:6-812:7.

The jury should

22 be so instructed at the beginning of trial to clarify the applicable rules of design patents and to
23 avoid confusion.

And, to state the obvious, if the jury is instructed on patent drawing

24 conventions generally, the actual, correct language from the MPEP should be used, rather than
25 Apple’s altered version of it.
26

For these same reasons, the jury should be instructed that the back of D’889 depicts “a

27 transparent, translucent, or highly polished or reflective surface” when shown in an angled
28 perspective, but not when in a plan or direct view.
02198.51855/4823493.6

This instruction is needed because Figure 2 of

Case No. 11-cv-01846-LHK
-10SAMSUNG’S OPPOSITION TO APPLE’S OPENING CLAIM CONSTRUCTION BRIEF

1 the D’889 design patent shows oblique line shading on the back of the design in perspective view,
2 while Figure 4 of the back in plan view does not.
3

See Dkt. 1091, Ex. 1 at 3, 4.

The indefiniteness and the various drawing inconsistencies in the asserted patents, as well

4 as Apple’s inconsistent and incompatible positions regarding their construction, further illustrate
5 precisely why these patents must be construed prior to trial.

The parties need clear guidance

6 regarding the elements that are claimed and the scope of those designs in order to focus their
7 presentations, and the jury will require instruction to avoid significant and prejudicial confusion.
8 See also Dkt. 930-01, at 15 n. 5.
CONCLUSION

9
10

For the foregoing reasons, and for the reasons set forth in Samsung’s Opening

11 Memorandum Regarding Claim Construction, Apple’s proposed construction should be rejected.
12
13
14

DATED: June 26, 2012

QUINN EMANUEL URQUHART &
SULLIVAN, LLP

15
16
17
18

By /s/ Victoria Maroulis
Charles K. Verhoeven
Kevin P.B. Johnson
Victoria F. Maroulis
Michael T. Zeller

19
20
21

Attorneys for SAMSUNG ELECTRONICS CO.,
LTD., SAMSUNG ELECTRONICS AMERICA,
INC., and SAMSUNG
TELECOMMUNICATIONS AMERICA, LLC

22
23
24
25
26
27
28
02198.51855/4823493.6

Case No. 11-cv-01846-LHK
-11SAMSUNG’S OPPOSITION TO APPLE’S OPENING CLAIM CONSTRUCTION BRIEF