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

Filing 1356

Unredacted Opening Memroandum Regarding 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. Nos. 1090, 1091) (Attachments: # 1 Exhibit 4 to the Cashman Declaration, # 2 Exhibit 14 to the Cashman Declaration, # 3 Exhibit 15 to the Cashman Declaration, # 4 Exhibit 17 to the Cashman Declaration, # 5 Exhibit 18 to the Cashman Declaration, # 6 Exhibit 20 to the Cashman Declaration, # 7 Exhibit 63 to the Cashman Declaration, # 8 Exhibit 64 to the Cashman Declaration, # 9 Exhibit 65 to the Cashman Declaration, # 10 Exhibit 66 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)
 [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. 11-cv-01846-LHK



SAMSUNG’S OPENING MEMORANDUM
REGARDING 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:

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

HIGHLIGHTED VERSION

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
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Case No. 11-cv-01846-LHK
SAMSUNG‟S OPENING CLAIM CONSTRUCTION BRIEF

1

TABLE OF CONTENTS

2

Page

3
ARGUMENT .................................................................................................................................... 1
4
I.

THE D‟889 PATENT ............................................................................................................ 2

5
A.

The D‟889 Design Is Limited.................................................................................... 2

6
1.

The D‟889 May Not Claim Concepts Or Ideas ............................................. 2

2.

Prior Art References Limit D‟889 ................................................................. 3

3.

D‟889 Does Not Protect Functional Aspects ................................................ 5

7
8
9
B.

D‟889 Does Not Depict An Uninterrupted Flat Front Face ...................................... 5

C.

Apple Has Admitted That Its D‟889 Patent Should be Narrowly Construed ........... 6

D.

The Scope of The D‟889 ........................................................................................... 8

10
11
12
II.

THE D‟087 AND D‟677 PATENTS .................................................................................... 8

13
A.

D‟087 and D‟677 Are Limited .................................................................................. 8

14
1.

The D‟087 and D‟677 May Not Claim General Concepts ............................ 8

2.

Prior Art References Limit D‟087 and D‟677 ............................................... 9

3.

Apple‟s Other Admissions Limit D‟087 and D‟677 ................................... 10

4.

The D‟087 and D‟677 Do Not Protect Functional Aspects ........................ 11

5.

The Scope of The D‟087 and D‟677 ........................................................... 12

15
16
17
18
19
III.

THE D‟305 AND D‟334 PATENTS .................................................................................. 13

20
A.

The D‟305 and D‟334 Designs Must be Narrowly Construed ................................ 13

21
1.

The D‟305 and D‟334 Do Not Cover General Concepts or Ideas .............. 13

2.

The D‟305 and D‟334 Patents Must Be Construed in Light of Prior
Art................................................................................................................ 13

24

3.

The D‟305 and D‟334 Do Not Protect Functional Components ................. 14

25

4.

The Scope of the D‟305 and D‟334 ............................................................ 15

22
23

26
27
28
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1

TABLE OF AUTHORITIES

2

Page

3
Cases
4
5

Amazon.com, Inc. v. Barnesandnoble.com, Inc.,
239 F.3d 1343 (Fed. Cir. 2001) ....................................................................................................3

6 Amini Innovation Corp. v. Anthony California, Inc.,
439 F.3d 1365 (Fed. Cir. 2006) ....................................................................................................5
7
Apple Computer, Inc. v. Microsoft Corp.,
8
35 F.3d 1435 (9th Cir. 1994) ......................................................................................................13
9 Apple, Inc. v. Samsung Electronics Co., Ltd.,
No. 2012-1105, 2012 WL. 1662048 (Fed. Cir. May 14, 2012) .......................................2, 3, 5, 9
10
Bilski v. Kappos,
11
130 S. Ct. 3218 (2010) .................................................................................................................1
12 Durling v. Spectrum Furniture Co., Inc.,
101 F.3d 100 (Fed. Cir. 1996) ..................................................................................................1, 2
13
Egyptian Goddess, Inc. v. Swisa, Inc.,
14
543 F.3d 665 (Fed. Cir. 2008) ..................................................................................................1, 2
15 International Seaway Trading Corp. v. Walgreens Corp.,
589 F.3d 1233 (Fed. Cir. 2009) ....................................................................................................3
16
L.A. Gear, Inc. v. Thom McAn Shoe Co.,
17
988 F.2d 1117 (Fed. Cir. 1993) ....................................................................................................2
18 In re Mann,
861 F.2d 1581 (Fed. Cir. 1988) ............................................................................................1, 3, 8
19
Miller v. Eagle Mfg. Co.,
20
151 U.S. 186 (1894) .....................................................................................................................7
21 OddzOn Prods., Inc. v. Just Toys, Inc.,
122 F.3d 1396 (Fed. Cir. 1997) ..............................................................................................1, 13
22
Richardson v. Stanley Works, Inc.,
23
597 F.3d 1288 (Fed. Cir. 2010) ....................................................................................................2
24
Statutes
25
35 U.S.C. § 171 ....................................................................................................................1, 2, 7, 10
26
37 C.F.R. 1.63(a)(4) .....................................................................................................................7, 10
27
28
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1
2

ARGUMENT
Apple argues that it has exclusive rights to basic design ideas and would have the jury

3 compare the figures of its design patents to Samsung‟s accused products without the guidance of a
4 judicial claim construction. Any protection afforded to Apple‟s design patents, however, is more
5 limited than Apple asserts and than an unguided view of the figures might suggest. That is
6 especially true because the relevant field has long been crowded with rectangular shaped
7 electronic devices with rounded corners, and even Apple now concedes that key features are
8 essential to the use of smartphones and therefore must be excluded as functional from the
9 construction.
10

Claim construction by the Court will be essential to avoid jury confusion and error.

First, contrary to Apple‟s constructions, design patents do not protect “general design

11 concepts” depicted in their figures, but only their “overall ornamental visual impression.” OddzOn
12 Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997) (“We agree with the district
13 court‟s claim construction, which properly limits the scope of the patent to its overall ornamental
14 visual impression, rather than to the broader general design concept of a rocket-like tossing ball.”);
15 see also Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100, 104 (Fed. Cir. 1996); In re Mann,
16 861 F.2d 1581 (Fed. Cir. 1988) (“Design patents have almost no scope”).

Apple‟s designs are,

17 by its own account, “minimalist” and devoid of ornamentation. See Am. Compl. ¶ 1.

Overbroad

18 protection of any design philosophy and concepts inherent in Apple‟s claimed designs is not only
19 legally impermissible under design patent law, but it would improperly grant monopoly protection
20 to an unpatentable abstract idea.
21

Bilski v. Kappos, 130 S. Ct. 3218, 3231 (2010).

Second, because design patent law protects only “new” and “original” ornamental designs,

22 35 U.S.C. § 171, the scope of a design claim must be viewed “in the context of the prior art.”
23 Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 676 (Fed. Cir. 2008) (en banc).

“[W]hen

24 the claimed design is close to the prior art designs, small differences between the accused design
25 and the claimed design are likely to be important to the eye of the hypothetical ordinary observer.”
26 Id. (italics added). Further, differences “that might not be noticeable in the abstract can become
27 significant to the hypothetical ordinary observer who is conversant with the prior art.” Id. at 678.
28 Thus, when “a field is crowded with many references” relating to the design of the same type of
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1 article, a design patent‟s “scope of protection” is limited to a more “narrow range”. Id. at 676
2 (quoting Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984)).
3

Third, because design patent law protects only “ornamental” designs, 35 U.S.C. § 171, any

4 functional aspects must be “factored out” when a design patent is construed and infringement
5 analysis is conducted.

Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1293 (Fed. Cir. 2010);

6 Dkt. 449 at 14-15 (Court following Richardson). Apple has now conceded that key features are
7 essential to the use of the devices depicted in the patents, and these features must be excluded
8 from any protection afforded the patents when they are compared to Samsung‟s accused devices.
9 I.

THE D’889 PATENT

10

A.

11

The D‟889 patent claims the design of an entire electronic device.

The D’889 Design Is Limited

12 Cashman (“Cashman Decl.”), Ex. 1.
13 construction.

Declaration of Adam

All views of the device as shown must be included in its

L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1125 (Fed. Cir. 1993)

14 (“the patented design is viewed in its entirety, as it is claimed”).

Further, because “[s]urface

15 shading is also necessary to distinguish between any open and solid areas of the article,” MPEP
16 1503.02, ¶15.48, the circular and rectangular shapes on Figures 6 and 8 respectively (even if
17 claimed) are not openings or holes in the surface, but instead are two-dimensional features.
18
19

1.

The D’889 May Not Claim Concepts Or Ideas

Based on Apple‟s requested construction, this Court previously described the D‟889 as “a

20 broad, simple design that gives the overall visual impression of a rectangular shape with four
21 evenly rounded corners, a flat glass-like surface without any ornamentation and a rim surrounding
22 the front surface.

The back is a flat panel that rounds up near the edges.

23 creates a thin form factor.
24 Dkt. No. 452 at 40.

The overall design

The screen takes up most of the space on the front of the design.”

The Federal Circuit ruled this was error in the invalidity context because it

25 “viewed the various designs from too high a level of abstraction” and “construed [the] claimed
26 design too broadly”.

Apple, Inc. v. Samsung Electronics Co., Ltd., No. 2012-1105, 2012 WL

27 1662048, at *13 (Fed. Cir. May 14, 2012) (quoting Durling, 101 F.3d at 104).

Because the test

28 for infringement mirrors the test for invalidity, the Federal Circuit‟s construction equally applies
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1 to the infringement analysis. See International Seaway Trading Corp. v. Walgreens Corp., 589
2 F.3d 1233, 1239 (Fed. Cir. 2009) (“That which infringes, if later, would anticipate, if earlier.”)
3 (quoting Peters v. Active Mfg. Co., 129 U.S. 530, 537 (1889)); Amazon.com, Inc. v.
4 Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001) (“A patent may not, like a „nose
5 of wax,‟ be twisted one way to avoid anticipation and another to find infringement.”) (internal
6 citation omitted).

The D‟889 accordingly should not be construed in the manner Apple has

7 advocated and the Federal Circuit has considered overbroad, but instead should make clear that the
8 patent does not and cannot protect general concepts like “a rectangular tablet with four evenly
9 rounded corners and a flat back” or “thin form factor.” Apple v. Samsung, 2012 WL 1662048, at
10 *13 (“Rather than looking to the „general concept‟ of a tablet, the district court should have
11 focused on the distinctive „visual appearances‟ of the reference and the claimed design.”).
12
13

2.

Prior Art References Limit D’889

The D‟889 must be construed in light of the prior art.

For example, U.S. D500,037

14 (“D‟037”), filed September 3, 2002 and issued to Bloomberg LP on December 21, 2004, is a pre15 D‟889 design for a flat panel display. Cashman Decl., Ex. 2. The D‟037 has nearly the same
16 rectangular shape as the D‟889, nearly the same rounded corners as the D‟889, a flat, transparent
17 or reflective front surface running from edge to edge on the front of the device without
18 ornamentation, a rim surrounding the front surface that is formed by the back of the device
19 curving upward to create a single-piece housing, a symmetrical and smooth form, a flat back, and
20 a similar profile.
21

The D‟037 design is a proper reference for D‟889, which claims a design for an

22 “Electronic Device,” without limitation.

The D‟889 file history confirms that the design was not

23 just for a tablet device, but also a display or screen that could be coupled to a computing device.
24 See Cashman Decl. Ex. 3 at APLPROS0000010190.

Indeed, the D‟889 itself originated from a

25 laptop computer display. Id. Ex. 4 at 61:3-8; 208:9-24; 209:14-210:2.

The D‟037 is entitled

26 “Bezel-less Flat Panel Display” and shows a display screen that has a transparent front surface.
27 The related utility patent, US 6,919,678, filed on the same day by the same inventors, shows that
28 the front face of the display is a sheet of clear glass or plastic that has a transparent portion over
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1 the active display area and a mask behind the glass that borders the display area.
2 column 5, line 53 to column 6, line 31.

See id. Ex. 5, at

Further, Figure 3 of D‟037 and Figure 9 of the „678 show

3 parallel exploded views depicting the transparent or reflective top surface and uniform mask
4 border around the edges of the display area.

See id.

The following comparisons illustrate the

5 point:
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27

Many other prior art designs share the visual traits of the D‟889 as claimed by Apple.

28 Cashman Decl. Exs. 6-13.
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See

Indeed, Apple has sought to distinguish those references based on
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1 differences that include the addition of “other visual elements” on the back surface or disclose
2 different aspect ratios.
3 *12.

Id. Ex. 14, at ¶¶ 104, 110, 117; see also Apple, Inc., 2012 WL 1662048, at

Because those differences must equally apply to any infringement analysis, the D‟889

4 construction must focus the jury on these differences from the prior art when it makes its
5 infringement comparisons as well.

Apple also has distinguished the D‟889 design as disclosing

6 minimal ornamentation, with no protrusions such as buttons or holes. See Dkt. 86, at 14; Dkt. 90,
7 ¶ 46; Cashman Decl. Ex. 14, at ¶¶ 111-112, 117, 247; see also Apple, Inc., 2012 WL 1662048, at
8 *12.

In addition, the figures show that the D‟889 design is comprised of a one-piece housing that

9 make up the back and relatively thick sides of the device and that receives the separate flat front
10 face that is shown as transparent or reflective.
11

3.

Cashman Decl. Ex. 1.

D’889 Does Not Protect Functional Aspects

After first denying it, Apple‟s expert Peter Bressler now concedes that having a display is

12

13 essential to the purpose and use of a smartphone and that it is “critically important” to have a
14 transparent cover directly over the display for such devices.
15 785:8, 782:16-783:4.

Cashman Decl. Ex. 15, at 784:17-

Obviously, the same is true of tablet computers.

This Court has noted

16 that “several aspects of the D‟889 patent” are functional, including that (i) the tablet‟s size must
17 allow portability, and (ii) it must have a “relatively large screen” that encompasses a “large portion
18 of the front face of the product.” Dkt. 449 at 39-40.1

The D‟889 construction must direct the jury

19 to factor out those characteristics in deciding infringement.
20

B.

21

Apple argues that the front face of the D‟889 design extends from edge-to-edge without

D’889 Does Not Depict An Uninterrupted Flat Front Face

22 interruption. Discovery has now shown this to be wrong. After Samsung moved to compel it,
23 Apple produced a prototype or mockup, known as the “035.” Cashman Decl. Ex. 16.
24

As Apple

1

As the Court is aware, Samsung has argued that functionality for design patents is not
limited to features that are “essential” to the use or purpose of an article, but also extends to
25
features that “affect” the article‟s “cost or quality.” Amini Innovation Corp. v. Anthony California,
26 Inc., 439 F.3d 1365, 1371 (Fed. Cir. 2006). To avoid burdening the Court, and without waiving its
position on that score, however, Samsung limits its functionality discussion for current claim
27 construction purposes in this brief only to those features that are “essential” in light of the Court‟s
previous ruling regarding design patent functionality. See Docket No. 449, at 13-15.
28
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1 has now admitted, the figures in the D‟889 were drawn to depict the 035 mockup; the 035
2 embodies the D‟889; and Apple submitted photographs of the 035 to the PTO with its D‟889
3 application claiming that it depicted the D‟889 design.

Cashman Decl. Ex. 3 at

4 APLPROS0000010190; Ex. 17, at 185:10-188:14; Ex. 18, at 95:5-21, 98:7-104:3; Ex. 19; Ex. 20,
5 at 102:5-10, 103:15-104:4, 117:25-119:9, 121:21-122:16.
6

The 035 shows a prominent, intentional gap between the outer edge of the glass surface on

7 the front and the frame – a “gap” that Apple inventors admit the D‟889‟s Figures “reflect” by the
8 use of bold ink as shown:
9
10
11
12
13
14
15
16
17
2
18 See id, Ex. 17, at 192:23-193:6.

Apple Has Admitted That Its D’889 Patent Should be Narrowly Construed

19

C.

20

Other Apple admissions demonstrate that the D‟889 does not include a continuous flat

21 front surface.

In 2008 and 2009, years after the D‟889 issued, Apple submitted applications for

22 the D‟677 and D‟678.

The PTO initially rejected both as obvious in light of prior art.

To

23 overcome this objection, Apple asserted that its D‟677 and D‟678 designs were distinctive over
24 the prior art because they did not disclose “a substantially continuous transparent surface on an
25 electronic device and the substantially smooth or flush transition between the display screen and
26
2
Apple‟s insistence that photographs of the 035 were cancelled by the PTO (Dkt. 1033-2, at
27 8) misses the point. The 035‟s visual appearance matters because it embodies the D‟889, which
was drawn based on it, not because the 035 was or was not separately patentable from D‟889.
28
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1 the rest of the front face of the device[.]” Cashman Decl. Ex. 21 at APLPROS0000011937; Ex. 22
2 at APL-ITC7960000003884.

Because the D‟889 was cited as prior art to the D‟677 and D‟678

3 designs, the D‟889 necessarily must exclude the features Apple represented to the PTO had not
4 previously been disclosed, namely, the “substantially continuous transparent surface” and a
5 “substantially smooth or flush transition between the display screen and the rest of the front face
6 of the device.”
7

Moreover, years after the D‟889 issued, Apple filed several design patent applications that

8 claim designs for electronic devices with an overall rectangular shape, evenly rounded corners, a
9 flat front face covered by a clear or transparent material stretching from edge to edge of the face of
10 the device and a thin form factor – features that Apple now claims were disclosed by the D‟889:
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25

See Cashman Decl., Exs. 23-25.

26

claimed designs were “new” and “original” over the prior art, including the D‟889.

27

U.S.C. § 171; 37 CFR 1.63(a)(4).

28

the D‟889 does not extend to such designs. See 35 U.S.C. § 171; Miller v. Eagle Mfg. Co., 151

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Apple swore under oath in each of these applications that the
Id.; see 35

Thus, by its own statements to the PTO, Apple recognized that

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1 U.S. 186, 198 (1894) (“no patent can issue for an invention actually covered by a former patent,
2 especially to the same patentee.”); Cashman Decl. Ex. 20 at 237:11-16 (Apple employee
3 responsible for Apple‟s design patent portfolio acknowledging awareness that Apple “can‟t get
4 more than one design patent for what is substantially or essentially the same design.”).
5

In short, contrary to Apple‟s contentions, the front face of the D‟889 does not show an

6 uninterrupted, continuous glass surface running from edge to edge, but instead depicts a gap
7 between the glass surface and surrounding frame.

Nor do Apple‟s iPad devices embody the

8 D‟889. Those devices instead are the subject of separate design patents and applications which
9 Apple swore to the PTO were new and original designs over the D‟889.
10

D.

11

The Court accordingly should construe the D‟889 as follows:

12

The D‟889 is for an ornamental electronic device design that (i) has the shape that
is shown in all views of the figures, with the corner radii, proportions and relative
thick sides that are shown in those figures, (ii) has a uniform gap around the entire
front face between the front face surface and the frame, (iii) has no ornamentation,
protrusions or holes on any surface and (iv) has a single frame that forms the back
and sides of the device in the manner and proportions shown in the figures. In
addition, the D‟889 does not give Apple rights to a large display screen that
encompasses a large portion of the front face of the product, to the use of a
transparent cover over the display or to the size and proportions that allow for the
portability of tablet computer devices.

13
14
15
16

The Scope of The D’889

17
II.

THE D’087 AND D’677 PATENTS

18
A.

D’087 and D’677 Are Limited

19
1.
20

The D’087 and D’677 May Not Claim General Concepts

Based on Apple‟s arguments, this Court had construed these design patents as disclosing:

21
22
23
24
25

a flat front surface with four evenly rounded corners with an inset rectangular
display screen centered on the front surface that leaves very narrow borders on
either side of the display screen and substantial borders above and below the
display screen. The D‟087 patent has a horizontal speaker slot centered on the front
surface. The front surface is also substantially free of additional ornamentation
outside of an optional button centrally located below the display . . . The D‟677
patent is substantially the same as the D‟087 patent, and discloses an additional
element of a black transparent and glass-like front surface.

26 Dkt. 449 at 20-21. The Federal Circuit employed a more particularized approach in evaluating
27 anticipation of the D‟087, however, finding that the D‟087‟s “perfectly flat” front face sufficed to
28 distinguish it from the prior art‟s “arched, convex” face at the top and bottom (as seen in side
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1 view). Apple, Inc., 2012 WL 1662048, at *9. That construction must apply equally to the
2 infringement analysis, and Apple‟s claim of rights to minimalist electronic device designs using
3 rectangles with rounded corners and similarly broad design concepts is untenable.
4

The D‟087 shows no oblique line shading. It thus claims an opaque, rather than a

5 transparent or reflective, front surface.

MPEP 1503.02 (“Oblique line shading must be used to

6 show transparent, translucent and highly polished or reflective surfaces, such as a mirror.”)
7 (emphasis added); Dkt. 997-02, at 10 (Apple citing and relying on this MPEP provision for this
8 same point); Cashman Decl. Ex. 15 at 751:15-22; Ex. 14, at ¶ 124 (Apple‟s expert opining that
9 lack of oblique lines in border disclosed by prior art signifies lack of transparent material).

The

10 D‟087 also depicts a completely flush, flat front surface, such that the front surface and the top
11 bezel surface are level and co-planar. Cashman Decl. Ex. 14, at ¶ 198. According to Apple,
12 such a completely flat front face is a “major design choice” that distinguishes its designs from the
13 prior art. Id. Ex. 29 at 2038:2-2039:1; see also id. Ex. 14, at ¶ 117.

Further, as noted, “[s]urface

14 shading is also necessary to distinguish between any open and solid areas of the article,” MPEP
15 1503.02, ¶15.48, and thus the lozenge-shaped feature near the top and the circular feature near the
16 bottom of the front face are not openings or holes in the surface, but instead represent two17 dimensional features on the front surface.
18

The D‟677 claims only the front face.

Dkt. 449 at 16-17.

It shows a transparent,

19 reflective front surface that is black and uniform in color across the entire front surface.
20 no surface shading on the lozenge shape, which therefore does not depict an open hole.
21 1503.02, ¶15.48.
22
23

2.

There is
MPEP

The circular feature is depicted with broken lines and not claimed.
Prior Art References Limit D’087 and D’677

Under the law, the D‟087 and D‟677 are limited by the numerous prior art references in the

24 crowded field of electronic device design. These references show that designs with generally
25 rectangular shapes, rounded corners, mask areas and other elements depicted in Apple‟s design
26 patents were common:
27
28
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1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21

See Cashman Decl., Exs. 26, 30-34.

prior art based on what it says are “key differences” that the ordinary observer would discern
between its designs and the prior art, including (i) the shape and radii of the corners, see id. Ex. 14
at ¶¶ 147, 156, 161; (ii) the size of the lateral borders on either side of the display (id. ¶¶ 70, 87,
163, 170, 178, 180, 182, 204), (iii) the height to width ratio of the front face (id. ¶¶ 67, 75, 135,
163, 164, 170, 206), (iv) the curvature on the top and bottom edges (id. ¶¶ 147, 180), (v) the size
and placement of the speaker slot (id. ¶¶ 67, 83, 184, 198), (vi) the relative size of the display
screen (id. ¶¶ 170, 178, 180), (vii) the shape and uniformity of the bezel (id. ¶¶ 83, 193, 198, 206,
207), (viii) whether the front face rests sub-flush to the bezel instead of flush (id. ¶ 198), and (ix)
the presence of buttons and other ornamentation, including soft keys, on the lower face of the
device (id. ¶¶ 178, 180, 184, 198, 204, 232).

them for infringement purposes as well.
3.

26

Apple’s Other Admissions Limit D’087 and D’677

Apple has obtained dozens of design patents designs that purportedly embody its various

23

25

As shown by the authorities cited previously, such

differences must therefore be applied equally to the scope of Apple‟s design patents in construing

22

24

In the invalidity context, Apple has sought to distinguish the

iPhone products.

In doing so, Apple swore that these designs were “new” and “original” over the

prior art, including D‟087 and D‟677.

See 35 U.S.C. § 171; 37 CFR 1.63(a)(4).

These included

each of the following:3

27
3

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1
2
3
4
5
6
7
8
9
10
11
12

Moreover, the D‟677 cites as prior art Apple‟s separate application that led to the D‟678.

13
Cashman Dec. Ex. 21.

That patent is identical to D‟677, apart from D‟677‟s black front surface:

14
15
16
17
18
19
20
21
22

The only thing that could make the D‟677 distinct from the D‟678 to justify a separate patent is its

23
black surface, showing that such a surface is an integral part of the claimed design.
24
4.
25

The D’087 and D’677 Do Not Protect Functional Aspects

The Court previously found, with respect to the D‟087 and D‟677 designs, that “[i] a size

26
that can be handheld, [ii] a screen that encompasses a large portion of the front face of the
27

smartphone, and [iii] a speaker on the upper portion of the front face of the product” are each

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1 “dictated by” the devices‟ function. Dkt. 449, at 15. Apple‟s expert now admits that having a
2 display, having a transparent cover directly above the display and having the receiver hole located
3 in the upper portion of the front face are essential to the use of a smartphone.

Cashman Decl. Ex.

4 15, at 782:16-783:4, 784:17-785:8, 785:18-786:1.
5

5.

The Scope of The D’087 and D’677

6

Thus, the Court should construe the D‟087 as follows:

7

The D‟087 is for an ornamental electronic device design that has (i) the shape that
is shown in all views of the figures, with the four equally rounded corner radii and
proportions that are shown in those figures, (ii) an opaque, non-reflective front
surface that is without any hole or opening, (iii) a prominent, uniform bezel that has
equally rounded corner radii and is completely flush with the remainder of the front
surface, and (vi) no ornamentation except for one or two of the following:
(a) interior borders that are narrow on the side and otherwise are in the proportions
shown in the figures, (b) a circular shaped, two-dimensional surface decoration
centered near the bottom of the front face or (c) a two-dimensional lozenge shaped
surface decoration that is of the shape and proportions shown in the figures and is
in the center location on the front face as shown in the figures.4 In addition, the
D‟087 does not give Apple rights to a size that can be handheld, a large screen on
the front face of a smartphone, a transparent cover over the display or a speaker on
the upper portion of the front face.

8
9
10
11
12
13
14

The Court should instruct on the D‟677 as follows:

15

The D‟677 is for an ornamental electronic device design that has (i) the shape that
is shown in all views of the figures, with the four equally rounded corner radii and
proportions that are shown in those figures, (ii) a reflective front surface that is
entirely flat, is without any hole or opening and is the same uniform black color
across the entire front surface and (iv) no ornamentation except for (a) interior
borders that are narrow on the side and otherwise are in the proportions shown in
the figures, and (b) a two-dimensional lozenge shaped surface decoration that is of
the shape and proportions shown in the figures and is in the center location on the
front face as shown in the figures. In addition, the D‟677 does not give Apple rights
to a size that can be handheld, a large screen on the front face of a smartphone, a
transparent cover over the display or a speaker on the upper portion of the front
face.5

16
17
18
19
20
21
22
23
24

4

The sources for each element of this construction, in addition to the discussion above,
include: (i) Figures 1, 3; (ii) Figures 5,6; (iii) Figures 7,8; (iv) Figures 9, 11; (v) Figures 13, 14;
25
(vi) Figures 15, 16; (vii) Figures 17, 19; (viii) Figures 21, 22; (ix) Figures 23, 24; (x) Figures 25,
26 27; (xi) Figures 29, 30; (xii) Figures 31, 33; (xiii) Figures 35, 36; (xiv) Figures 37, 38; (xv)
Figures 39, 40; (xvi) Figures 41, 43; (xvii) Figures 45, 46; (xviii) Figures 47, 48.
5
27
The sources for each element of this construction, in addition to the discussion above,
include: (i) Figures 1, 3; (ii) Figures 5, 6; (iii) Figures 7, 8.
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1 III.
2

THE D’305 AND D’334 PATENTS
A.

3
4

The D’305 and D’334 Designs Must be Narrowly Construed
1.

The D’305 and D’334 Do Not Cover General Concepts or Ideas

These Apple design patents cannot cover the general concept of a GUI – a monopoly

5 Apple sought years ago under copyright law and that the courts rejected. Apple Computer, Inc. v.
6 Microsoft Corp., 35 F.3d 1435, 1443 (9th Cir. 1994).

Just as no one can claim a monopoly over

7 the abstract idea of “iconic representation of familiar objects from the office environment,” id. at
8 1443-34, the use of colorful square icons arranged in a grid to enable user interaction is not
9 protectable.
10
11

OddzOn, 122 F.3d at 1405 (no protection for “the broader general design concept”).
2.

The D’305 and D’334 Patents Must Be Construed in Light of Prior Art

D‟305 and D‟334 must be limited in light of the many GUI prior art references, including:

12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27

Cashman Decl. Ex. 63.
That Apple obtained separate design patents for its D‟305 and D‟334 designs also shows
the importance of even minor differences.

These separate design patents differ in that the D‟334

shows a partial fifth row of icons and two small dots above the bottom row, while the D‟305 does
not. Apple‟s claim that such variations entitle it to separate patents without double patenting
highlights the importance of even minor variations.

Indeed, in response to the PTO‟s rejection of

its D627,790 patent as obvious in light of the prior art because icons have long been laid out in a

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1 grid pattern, Apple claimed that the matrix of sixteen rounded squares giving the appearance of a
2 “missing row” of icons between the third and fourth rows of its design distinguished it from the
3 prior art. See Cashman Decl. Ex. 62, at APLPROS0000012230.

The D‟305 patent also discloses

4 sixteen rounded squares giving the appearance of a missing row, so the D‟305 patent must be
5 construed narrowly to avoid reading on the D‟790 patent or the prior art.
6
7

3.

The D’305 and D’334 Do Not Protect Functional Components

The visual impression created by the D‟305 and D‟334 patents must exclude functional

8 elements essential for a smartphone GUI.

Any smartphone GUI must necessarily be designed for

9 devices that are small enough to be handheld.

Dkt. 449, at 15.

The use of icons as metaphors to

10 represent applications and commands is therefore necessary given the spatial restrictions for a
11 hand-held phone GUI.

As Apple‟s designers admit, icons are “the most simple visual” metaphor

12 to communicate an application to the user. Cashman Decl. Ex. 65, at 65:18-67:21.

It is essential

13 that these icons be arranged within the confines of the active display area in an fashion
14 comprehensible to the user.

Imran Chaudhri, the named inventor on Apple‟s D‟305, D‟334, and

15 D‟790 patents, conceded that he was aware of no other arrangement of icons that was as effective
16 as rows and columns, and acknowledged, as did the PTO, that the prior art disclosed a matrix of
17 square icons arranged in a grid.

Id. Ex. 64, at 133:14-153:4, 137:2-138:20, 152:4-16; 156:3-

18 159:6; see also id. Ex. 65, at 136:11-13.
19

In addition, a GUI designed for a smartphone also must take into account the fact that users

20 often operate the device with only one hand.

The most popular and important features of the

21 phone must therefore be accessible during one-handed use.

As Apple‟s named inventor, Mr.

22 Chaudhri, explained, a static row of icons at the bottom of the screen – the “dock” – gave the user
23 “quicker access” to those key icons.

Id. Ex. 64, at 133:14-135:4. Finally, as a device that is

24 battery powered and designed for the purpose of connecting to cellular or other wireless networks,
25 the user must be able to obtain updated information regarding battery life, signal strength and
26 network information. The status bar located at the top of the screen is not only known in the prior
27 art, but also delivers this essential information. Ex. 63, at 20.
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1

Thus, Apple‟s GUI patents should not be construed to include the elements that were

2 known in the prior art and functional: (i) the use of icons as metaphors for applications, features,
3 and commands; (ii) the layout of those icons in a grid pattern (i.e., columns and rows); (iii) a
4 “dock” of icons at the bottom of the screen; and (iv) a status bar.
5

4.

The Scope of the D’305 and D’334

6

Accordingly, the Court should construe the GUI design patents as follows:

7

The D‟305 is for an ornamental graphical user interface design that (i) has the
uniform icon shape and order shown in all views of the figures, with the corner
radii and proportions shown in those figures, (ii) in which at least some icons that
are lighter in color near the top than near the bottom as shown in the figures, (iii)
has a black background except for a divided black/gray background for the dock
row, and (iv) has four rows of four icons each, with an empty row between the third
row and the dock row as shown in the figures. In addition, the D‟305 patent does
not give Apple rights to the use of icons, pictures or text associated with icons, a
grid pattern for the arrangement of icons, use of equidistant rows and columns, a
dock row on the bottom or a status bar.

8
9
10
11
12
13
14
15
16
17
18

The D‟334 is for an ornamental graphical user interface design that (i) has the
uniform icon shape and order shown in all views of the figures, with the corner
radii and proportions shown in those figures, (ii) in which at least some icons that
are lighter in shading near the top than near the bottom as shown in the figures, (iii)
has a black background except for a divided black/gray background for the dock
row, (iv) has four rows of four icons each, with a row of two or three icons between
the third row and the dock row as shown in the figures and (v) has two plain dots
between the fourth row and the dock row in the location shown in the figures. In
addition, the D‟305 patent does not give Apple rights to the use of icons, pictures or
text associated with icons, a grid pattern for the arrangement of icons, use of
equidistant rows and columns, a dock row on the bottom, dots for page indicators
or a status bar at the top.

19 See Cashman Decl. Ex. 66, at ¶¶34-35.
20 DATED: June 12, 2012

QUINN EMANUEL URQUHART &
SULLIVAN, LLP

21
22
23
24

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

25
26
27

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

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