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

Filing 1433

REQUEST re 1425 for Correction to Design Patent Claim Construction by Apple Inc. (Jacobs, Michael) (Filed on 7/28/2012) Modified text on 7/30/2012 (dhm, COURT STAFF).

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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]

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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,
Plaintiff,

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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 (PSG)

APPLE’S REQUEST FOR
CORRECTION TO DESIGN
PATENT CLAIM
CONSTRUCTION

Defendants.

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APPLE’S REQUEST FOR CORRECTION TO DESIGN PATENT CLAIM CONSTRUCTION
CASE NO. 11-CV-01846-LHK (PSG)
sf-3176285

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Apple has noted several small errors in the Court’s design patent claim constructions

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issued on July 27, 2012 and respectfully requests that they be corrected as follows.

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D’087 Patent

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With respect to the D’087 patent, the Court’s claim construction is:

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The D’087 Patent claims the ornamental design of an electronic
device as shown in Figures 1-46. The broken lines in the D’087
Patent constitute unclaimed subject matter. Thus, the D’087 Patent
claims the front face, a ‘bezel encircling the front face of the
patented design [that] extends from the front of the phone to its
sides,’ and a flat contour of the front face, but does not claim the
rest of the article of manufacture.

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(Dkt. No. 1425, Order at p. 8 lines 2-6 (emphasis added).)
The D’087 patent has 48 figures, not 46 figures. Apple requests that the claim
construction be corrected as follows:

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The D’087 Patent claims the ornamental design of an electronic
device as shown in Figures 1-48. The broken lines in the D’087
Patent constitute unclaimed subject matter. Thus, the D’087 Patent
claims the front face, a ‘bezel encircling the front face of the
patented design [that] extends from the front of the phone to its
sides,’ and a flat contour of the front face, but does not claim the
rest of the article of manufacture.

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D’677 Patent
With respect to the D’677 patent, the Court’s claim construction is:
The D’677 Patent claims the ornamental design of an electronic
device as shown in Figures 1-6. The broken lines in the D’677
Patent constitute unclaimed subject matter. The use of “solid black
surface shading” on the D’677 Patent represents the color black.
The use of oblique line shading on the D’677 Patent is used to show
a transparent, translucent and highly polished or reflective surface.
(Id. at p. 9, lines 15-19 (emphasis added).)
The D’677 patent has 8 figures, not 6 figures. Moreover, because a surface cannot
simultaneously have all of the following traits at once: transparent, translucent, highly polished,
and reflective, Apple believes that the “and” in the final clause of the Court’s claim construction
is intended to be an “or.” This is consistent with the Court’s statement in the preceding paragraph
that: “Thus, the use of oblique line shading and solid black surface shading in the D’677 Patent

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APPLE’S MOT. TO EXCLUDE DEFENSES BASED ON SONY DESIGNS
CASE NO. 11-CV-01846-LHK (PSG)
sf-3176285

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indicate that the patentee claimed a black surface that is also transparent, translucent, highly

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polished, or reflective.” (Id. at p. 9, lines 11-13 (emphasis added).)

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Apple requests that the claim construction be corrected as follows:

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The D’677 Patent claims the ornamental design of an electronic
device as shown in Figures 1-8. The broken lines in the D’677
Patent constitute unclaimed subject matter. The use of “solid black
surface shading” on the D’677 Patent represents the color black.
The use of oblique line shading on the D’677 Patent is used to show
a transparent, translucent or highly polished or reflective surface.

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D’889 Patent
With respect to the D’889 patent, the Court’s claim construction is:
The D’889 Patent claims the ornamental design of an electronic
device as shown in Figures 1-9. The broken lines depicting the
human figure in figure 9 do not form a part of the claimed design.
The other broken lines in the other figures are part of the claimed
design. The D’889 also includes oblique line shading on several of
the figures. The oblique line shading in Figures 1-3 and Figure 9
depicts a transparent, translucent and highly polished or reflective
surface from the top perspective view of the claimed design, the top
view of the claimed design, and the bottom perspective view of the
claimed design.
(Id. at p. 11, lines 2-8 (emphasis added).)

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As with the D’677 patent, the use of the word “and” suggests that the surface must have

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all of the following traits: transparent, translucent, highly polished and reflective. As explained

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above, this is not consistent with the Court’s explanation of the use of the oblique lines in

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connection with the D’677 patent, and it creates an impossible requirement because a surface

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cannot simultaneously have all four traits at the same time.

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APPLE’S REQUEST FOR CORRECTION TO DESIGN PATENT CLAIM CONSTRUCTION
CASE NO. 11-CV-01846-LHK (PSG)
sf-3176285

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Apple requests that the claim construction be corrected as follows:
The D’889 Patent claims the ornamental design of an electronic
device as shown in Figures 1-9. The broken lines depicting the
human figure in figure 9 do not form a part of the claimed design.
The other broken lines in the other figures are part of the claimed
design. The D’889 also includes oblique line shading on several of
the figures. The oblique line shading in Figures 1-3 and Figure 9
depicts a transparent, translucent or highly polished or reflective
surface from the top perspective view of the claimed design, the top
view of the claimed design, and the bottom perspective view of the
claimed design.

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Dated: July 28, 2012

MORRISON & FOERSTER LLP

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By:

/s/ Michael A. Jacobs
Michael A. Jacobs
Attorneys for Plaintiff
APPLE INC.

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APPLE’S REQUEST FOR CORRECTION TO DESIGN PATENT CLAIM CONSTRUCTION
CASE NO. 11-CV-01846-LHK (PSG)
sf-3176285

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