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

Filing 279

Reply Declaration of Peter W. Bressler in Support of #86 Apple's Motion for Preliminary Injunction filed by Apple Inc.. (Attachments: #1 Exhibit 1, #2 Exhibit 2, #3 Exhibit 3, #4 Exhibit 4, #5 Exhibit 5, #6 Exhibit 6, #7 Exhibit 7, #8 Exhibit 8, #9 Exhibit 9, #10 Exhibit 10, #11 Exhibit 11, #12 Exhibit 12, #13 Exhibit 13, #14 Exhibit 14, #15 Exhibit 15, #16 Exhibit 16, #17 Exhibit 17, #18 Exhibit 18, #19 Exhibit 19, #20 Exhibit 20, #21 Exhibit 21, #22 Exhibit 22, #23 Exhibit 23, #24 Exhibit 24, #25 Exhibit 25, #26 Exhibit 26, #27 Exhibit 27, #28 Exhibit 28, #29 Exhibit 29, #30 Exhibit 30, #31 Exhibit 31)(Jacobs, Michael) (Filed on 9/30/2011) Modified on 10/3/2011 linkine entry to document #86 (dhm, COURT STAFF).

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

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APPLE INC., a California corporation,

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

Case No.

11-cv-01846-LHK

REPLY DECLARATION OF
PETER W. BRESSLER IN
SUPPORT OF APPLE’S MOTION
FOR A PRELIMINARY
INJUNCTION

Defendants.

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REPLY DECLARATION OF PETER W. BRESSLER
CASE NO. 11-CV-01846-LHK

IN SUPPORT OF APPLE’S MOTION FOR A PRELIMINARY INJUNCTION

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I, PETER W. BRESSLER, declare as follows:
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I am an independent industrial designer and inventor. I have been asked by

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counsel for Apple Inc. to provide a declaration addressing issues that I understand have been

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raised by Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung

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Telecommunications America, LLC (collectively, “Samsung”) in connection with Apple’s

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Motion for a Preliminary Injunction, including the nature of minimalist design and the

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protectability of Apple’s designs. This declaration sets forth my professional opinion on these

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issues as an expert in industrial design.

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2.

I understand that discovery from Samsung to date is on-going. I reserve the right

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to supplement or amend this declaration based on any new information that is relevant to my

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opinions.

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3.

I have reviewed Apple’s Amended Complaint, Apple’s Motion for a Preliminary

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Injunction, Samsung’s Opposition to Apple’s Motion for a Preliminary Injunction, Mr. Cooper

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Woodring’s June 30 2011 Declaration in Support of Apple’s Motion for a Preliminary Injunction,

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Mr. Woodring’s August 5, 2011 deposition transcript, Mr. Itay Sherman’s August 22, 2011

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Declaration in Support of Samsung’s Opposition to Apple’s Motion for a Preliminary Injunction,

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the non-confidential portions of Mr. Sherman’s September 14, 2011 deposition transcript, Mr.

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Roger Fidler’s August 22, 2011 Declaration In Support of Samsung’s Opposition to Apple’s

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Motion for a Preliminary Injunction, and Mr. Fidler’s September 23, 2011 deposition transcript.

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4.

It is my opinion that Mr. Sherman does not understand the nature of minimalist

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design, such as the minimalist designs achieved in the iPhone and iPad. Mr. Sherman’s testimony

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that there is only one possible minimalist design for a smartphone and only one possible

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minimalist design for a tablet computer (Ex. 2 at 38:12-21; 43:6-44:6; 45:3-17.) reflects

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Mr. Sherman’s fundamental misunderstanding of what is possible in the field of industrial design,

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as does Samsung’s claim that Apple’s designs are a result of the “natural evolution” of

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smartphones and tablet computers. (Opp. at 2:2-5.) It is also my opinion that Mr. Sherman

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improperly analyzed functionality issues in assessing Apple’s designs, and that he improperly

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analyzed the prior art to conclude that the Apple design patents are invalid.
REPLY DECLARATION OF PETER W. BRESSLER IN SUPPORT OF APPLE’S MOTION FOR A PRELIMINARY INJUNCTION
CASE NO. 11-CV-01846-LHK

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5.

Accordingly, I disagree with Mr. Sherman’s opinions, including those ultimate

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conclusions set forth in paragraph 184 of his declaration that: (1) “the D’889, D’677, and D’087

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patents are invalid in light of the prior art described [in Mr. Sherman’s declaration]” and (2) “the

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designs claimed by the D’889, D’677, and D’087 patents are not protectable because they only

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encompass non-ornamental elements.”

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I.

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QUALIFICATIONS
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I am currently a product design consultant and an Adjunct Associate Professor in

the Integrated Product Design Program at the University of Pennsylvania.
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My curriculum vitae, which includes a listing of papers, patents, and other

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materials which I have authored within the last ten (10) years, is attached as Exhibit 1. My CV

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also includes a listing of the cases in which I have testified as an expert at trial or by deposition

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within the last four (4) years. It also includes a history of the positions that have been held at the

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national level of the Industrial Designers Society of America (IDSA). Also, it lists my education

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background, which includes a Bachelor of Fine Arts degree in Industrial Design from Rhode

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Island School of Design in 1968.

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8.

In 2010, I received my profession’s highest award, The IDSA Personal

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Recognition Award, which had been bestowed upon only 25 others in the history of the

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profession prior to my receipt of the award.

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9.

I am the founder and currently the Board Chair at Bresslergroup, Inc., a design

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research, strategic product planning, industrial design, product development and engineering

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consulting firm. As the founder of Bresslergroup, Inc., I have been involved with over 700

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clients and over 3,000 product design and development projects.

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I have been awarded over 70 United States patents for physical products. These

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patents are divided roughly equally between utility and design patents, a listing of which is

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provided in my CV.

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11.

As an industrial designer, I have significant experience in the design of consumer

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electronics products, which has included my attendance at the Consumer Electronics Show in

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approximately 20 of the last 30 years. Several related projects include industrial designs for
REPLY DECLARATION OF PETER W. BRESSLER IN SUPPORT OF APPLE’S MOTION FOR A PRELIMINARY INJUNCTION
CASE NO. 11-CV-01846-LHK

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telephone handsets for IMM, cell phones for Motorola, video phones for Worldgate, audio

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products for Polk Audio, tablet computers for Telepad, and digital tire gauges for MSI

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International.

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As an industrial designer, I am trained in, and have experience with, understanding

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how consumers see, recognize, understand objects and their use. I have been trained to

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understand the principals of how people see and react to visual stimulus. I have spent

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considerable time following the process of consumer testing and data analysis to determine both

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functional and visual understanding and subsequent design and business choices.

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13.

I have been asked to provide an expert declaration on behalf of Apple Inc. in the

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above-captioned case. I understand I submit this declaration in support of Apple’s Motion for a

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Preliminary Injunction. I may testify at a hearing regarding the matters expressed in this

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declaration and any supplemental declarations that I may prepare for this litigation.

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I bill my time at a rate during consultancy of $400.00 dollars per hour. My

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compensation is in no way contingent upon the outcome of the case.

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II.

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LEGAL PRINCIPLES
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I have not been asked to offer an opinion on the law; however, as an expert

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assisting the Court in determining validity and functionality, I understand that I am obliged to

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follow existing law. I have therefore been asked to apply the following principles to my analysis

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of validity and functionality.

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16.

I have been instructed by Apple’s counsel that an analysis of whether a design

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patent is obvious requires one of ordinary skill in the art to identify a primary prior art reference

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“the design characteristics of which are basically the same as the claimed design.” Durling v.

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Spectrum Furniture Co., Inc., 101 F.3d 100, 103 (Fed. Cir. 1996) (quoting In re Rosen, 673 F.2d

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388, 391 (C.C.P.A. 1982)). The designs of secondary references “may then properly be relied

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upon for modification of such basic design when the references are ‘so related that the appearance

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of certain ornamental features in one . . . would have suggested application of those features to

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another.” In re Harvey, 12 F.3d 1061, 1063 (Fed. Cir. 2003) (emphasis in original) (quotation

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omitted). “Once that piece of prior art has been constructed, obviousness, like anticipation,
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CASE NO. 11-CV-01846-LHK

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requires application of the ordinary observer test, not the view of one skilled in the art.” Int’l

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Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1240 (Fed. Cir. 2009). “[T]he

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ordinary observer test, whether applied for infringement or invalidity, and the obviousness test,

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applied for invalidity under Section 103, focus on the overall designs.” Id. at 1240-41 (emphasis

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in original). I understand that a piecemeal comparison of different design elements found in the

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prior art is not permitted under International Seaway.

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17.

I also understand that “in considering prior art references for purposes of

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determining patentability of ornamental designs, the focus must be on appearances and not uses.”

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In re Harvey, 12 F.3d at 1064. Thus, if the prior art merely suggests “components of [the

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patented] design, but not its overall appearance, an obviousness rejection is inappropriate.” Id. at

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1063.

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18.

I understand that the following test is used to determine if a design is functional:

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“In determining whether a design is primarily functional or primarily ornamental the claimed

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design is viewed in its entirety, for the ultimate question is not the functional or decorative aspect

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of each separate feature, but the overall appearance of the article, in determining whether the

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claimed design is dictated by the utilitarian purpose of the article.” L.A. Gear, Inc. v. Thom McAn

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Shoe Co., 988 Fed. 2d. 1117, 1123 (Fed. Cir. 1993).

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Moreover, I understand that when one is analyzing functionality, the issue is not

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whether the device performs a function; it is whether the design of the device is dictated by

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function. “[T]he design of a useful article is deemed to be functional when the appearance of the

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claimed design is ‘dictated by’ the use or purpose of the article.” Id. (citation omitted). “If the

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particular design is essential to the use of the article, it can not be the subject of a design patent.”

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Id. If there are alternative designs that can achieve the same function, then the design is not

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dictated by function. Best Lock Corp. v. Ilco Unican, 94 F.3d. 1563, 1566 (Fed. Cir. 1996)

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20.

I have been further instructed by Apple’s counsel that in instances where elements

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of a design patent are “purely functional,” such elements should not be considered a part of the

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patented design for purposes of comparison with an accused product. Egyptian Goddess, Inc. v.

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Swisa, Inc., 543 F.3d 665, 680 (Fed. Cir. 2008).
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21.

This was illustrated in the case of Richardson v. Stanley Works, Inc., where the

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Federal Circuit affirmed a claim construction for the design of a multi-purpose tool that

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discounted “elements that are driven purely by utility,” such as the flat end of a hammer-head.

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597 F.3d 1288, 1294 (Fed. Cir. 2010). The claim construction approved by the Federal Circuit in

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Richardson was arrived at by the district court in view of the fact that “every piece of prior art

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identified by the parties” showed these functional elements to be rendered “in the exact same

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way” and in light of “the absence of alternative designs.” Richardson v. Stanley Works, Inc., 610

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F. Supp. 2d 1046, 1050 (D. Ariz. 2009).

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22.

I have been instructed by Apple’s counsel that elements of a design can serve a

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function without being dictated by function where alternate designs for the element are available.

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L.A. Gear, Inc., 988 F.2d at 1123; Richardson, 610 F. Supp. 2d at 1050.

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III.

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INDUSTRIAL DESIGN AND MINIMALISM
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Mr. Sherman testified there can be only one minimalist design for a touch screen

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smart phone and only one minimalist design for a tablet computer. (Ex. 2 at 38:12-21; 43:6-44:6;

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45:3-17.) I disagree with Mr. Sherman’s testimony as it reflects a misunderstanding of what

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industrial design and minimalist design entail.

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The underlying premise of the industrial design process is that every function can

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have more than one visual embodiment or ornamental presentation that, to the consumer,

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differentiates that artifact from others that provide the same function. In practice, the industrial

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designer’s role is to create and design aesthetic embodiments of the functional choices made by a

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product design team.

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Minimalism, a term used in various forms of the arts including music, painting and

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sculpture, as well as architecture and product design, is an approach to the creative industrial

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design process, where the product embodiment is stripped down to its most fundamental

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components by using a bare minimum of elements.

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A noted proponent of minimalism was architect and designer Ludwig Mies van der

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Rohe, who adopted the motto “less is more.” This phrase described his aesthetic approach of

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organizing and arranging the numerous necessary components of a building to create a visual
REPLY DECLARATION OF PETER W. BRESSLER IN SUPPORT OF APPLE’S MOTION FOR A PRELIMINARY INJUNCTION
CASE NO. 11-CV-01846-LHK

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impression of extreme simplicity. Van der Rohe was head of the influential Bauhaus School in

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Germany for three years before it was disbanded in 1933. His buildings achieved the maximum

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effect using the minimum of means with their simplicity of form, attention to detail and

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painstaking craftsmanship.

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A similar sentiment was embodied in industrial designer Dieter Rams’ motto,

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“Less but better,” which was adapted from van der Rohe. Considered by many in the design

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community to be the greatest 20th century designer alive, Rams’ philosophical design approach

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uses relatively simple, elegant forms. The structure’s beauty derives from using basic geometric

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shapes as a visual foundation, and using only a single shape or a small number of like shapes for

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complementary features to create design unity. Perceived ornamentation is the result of using

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high quality materials, textures and finishes.

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As a designer who has endeavoured to ascribe to minimalist design principals for

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several decades, it is my opinion that the minimalist design approach strives to identify an

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overriding, strong and memorable minimal visual framework or system of forms that together

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communicate a unified statement to the potential user/consumer. Once this overall visual image

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is established, it is then a designer’s challenge to develop the detailed visual elements that

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communicate usability and quality while supporting, and not distracting from, the primary

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memorable aesthetic statement. Like any other approach to industrial design, various minimalist

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designs may exist for a given product, including electronic devices like touchscreen smartphones

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or tablet computers.

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29.

Thus, each design patent at issue reflects but one of many potential minimalist

designs.
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With respect to the iPhone and the iPad products, Apple has created a powerful

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and memorable visual aesthetic based on their minimalist designs. Particularly, these Apple

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products are based upon the simplest possible use of a visually uninterrupted and continuous

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surface of glass-like materials that creates a reflective surface covering the product face.

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31.

Accordingly, Mr. Sherman’s testimony that there can only be one minimalist

design for a touch screen smart phone or a tablet computer is incorrect.
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IV.

VALIDITY.
32.

Based on my understanding of the appropriate test of obviousness and my review

of Mr. Sherman’s declaration, Mr. Sherman obviousness analysis is not correct.
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First, Mr. Sherman does not purport to opine on whether an ordinary observer

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would find the prior art he constructs as substantially the same as the Apple designs. I have

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reviewed his declaration and the non-confidential portions of his deposition transcript, and I do

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not find any instance where he opines on what the ordinary observer would perceive with respects

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to the designs at issue.

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Second, even if Mr. Sherman had included an opinion as to what an ordinary

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observer would perceive regarding the designs at issue, he does not recite any qualifications that

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would enable him to testify as to how an ordinary observer would perceive these designs.

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(Sherman Decl. ¶¶ 5-13.) Rather, Mr. Sherman’s opinion is purportedly based on his experience

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“in the telecommunication industry” and “mobile handsets technology and products.” (Id. ¶ 6.)

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This is not sufficient to establish expertise in consumer perceptions.

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In contrast, industrial designers are trained to understand how consumers respond

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to visual cues and aesthetics. Thus, industrial designers regularly create and run consumer focus

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groups where we interview and observe potential users of the products, and identify their needs so

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that we can incorporate them into the design. As a result, industrial designers have a deep

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knowledge of how consumers perceive and respond to designs. My training in consumer research

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began in college – my thesis project involved learning to do user observational research. This

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included objective observation and interview processes with users in a hospital environment.

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Subsequently, I was trained in 1972 in Synectics, a consumer group creativity process. Since

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then, I have participated in well over one hundred and fifty consumer or user research projects

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employing focus groups, consumer preference studies, point of sale, observational, ethnographic,

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interview, mall intercept and product usability testing projects.

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36.

Mr. Sherman testified that he has never studied marketing, industrial design, or

minimalism. (Ex. 2 20:7-15 and 47:11-15.)

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37.

Third, it is my opinion that a designer of ordinary skill in the art is a designer who

is experienced in the industrial design of consumer electronic devices.
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Mr. Sherman is not a designer of ordinary skill in the art because he is not an

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industrial designer and has no experience as an industrial designer. He has taken no coursework

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in industrial design. (Ex. 2 at 20:7-9) Rather, it appears that he is an electrical engineer whose

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total exposure to industrial design was limited to his experience “consulting to the [Industrial

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Design team]” and “proposing ideas” when he was CTO of MODU. (Ex. 2 at 6:4-16).

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39.

Fourth, in his declaration and during his deposition, Mr. Sherman never identified

a primary reference whose design would be viewed, by a designer skilled in the art, as basically

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the same as each of Apple’s asserted design patents. Likewise, for each of Apple’s design

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patents, Mr. Sherman did not identify any secondary reference whose design could be used to

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modify the design of a primary reference to construct a piece of prior art that would be viewed, by

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an ordinary observer, as substantially similar to Apple’s designs. Similarly, Mr. Sherman did not

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identify any suggestion in the prior art for combining any of the references that he identified;

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instead, he relied on his opinion that it would be “natural” or “common.”

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A.

The D504,889 Patent.

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40.

I have reviewed Mr. Sherman’s analysis of the prior art to the D’889 Patent.

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41.

Mr. Sherman does not identify a single reference that discloses all the elements of

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the claimed design of the D’889 Patent from the perspective of an ordinary observer.
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Moreover, Mr. Sherman does not identify a primary reference that is basically the

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same as the D’889 Patent from the perspective of an ordinary observer. He also does not identify

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any secondary references whose design can be used to modify such primary reference.

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Mr. Sherman also does not identify any suggestion in the prior art for combining any primary

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reference with any secondary reference. Finally, he does not identify any combination of

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references based on a primary reference and any secondary references that discloses all the

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elements of the claimed design of the D’889 Patent from the perspective of an ordinary observer.

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43.

Rather, Mr. Sherman recites a laundry list of prior art references, reciting apparent

similarities and differences between the prior art reference and the claimed design of the D’889
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Patent. He then concludes that all the elements of the claimed design of the D’889 appear

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somewhere in the prior art. Mr. Sherman’s prior art analysis regarding the D’889 Patent is

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incorrect, and does not follow the methodology described above.

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44.

1981 Fidler Mock-up (Exs. 3 & 4) – I have reviewed the exhibits to the

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Declaration of Roger Fidler dated August 16, 2011, as well as photographs provided by Apple’s

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counsel, which include the 1981 mock-up of a tablet that Roger Fidler created. I note that the

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1981 tablet appears to have an opaque white frame surrounding an inset display, with the frame

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on the bottom extending more deeply into the inset display. Thus, the entire front surface is not

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clear, and there is an edge or line that appears adjacent to the inset display, contrary to Mr.

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Sherman’s claim that there is a “flat rectangular front surface.” (Sherman Decl. ¶ 24.) Moreover,

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the corners are not rounded, the edge profiles appear square, and there appear to be three layers to

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the tablet when viewed from the side. Mr. Fidler’s 1981 mock-up of a tablet is neither basically

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the same as nor substantially the same as the D’889 design.

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45.

1994 Fidler Mock-up (Exs. 5 & 6) – The 1994 mock-up of a tablet that Roger

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Fidler created has a raised plastic asymmetrical frame surrounding an inset display, an on/off

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button in the upper left-hand corner, and an apparently arbitrary design created of a series of dots

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in the upper right-hand corner. Thus, I disagree with Mr. Sherman’s description that the front

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surface is clear and completely flat. Also, the back surface has a raised door with several screws,

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which undermines Mr. Sherman’s description that there is a “smooth back surface with no

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ornamentation.” Moreover, the corners are substantially rounded with a large radius. There also

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appears to be notches and ports on the sides and top of the mock-up, and two memory cards

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sticking out of the top of the mock-up, thereby taking away from a simplistic design and contrary

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to Mr. Sherman’s claim that the 1994 mock-up had “minimal ornamentation.” (Sherman Decl.

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¶ 25.) Moreover, the edges of the design curve out from the front surface toward the back and

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then curve back in to the back surface. Mr. Fidler’s 1994 mock-up of a tablet is neither basically

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the same as nor substantially the same as the D’889 design.

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46.

1997 Fidler Mock-up (Exs. 7 & 8) – I have reviewed photographs of Plexiglas

sheets and Plexiglas mock-ups that Mr. Fidler brought to his deposition. The Plexiglas sheets are
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nothing more than a blank piece of white Plexiglas that has been cut into a rectangular shape with

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slightly round corners. Therefore, they are not substantially the same as the D’889 design. With

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respect to the Plexiglas mock-ups, they have a thick raised frame surrounding the inset display

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and the front and back edges appear to have sharp 90 degree angles. They do not have a rounded

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back edge profile as is seen in the D’889 patent. Mr. Fidler’s 1997 mock-up of a tablet is neither

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basically the same as nor substantially the same as the D’889 design.

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47.

D337,569 Patent (Exs. 9 & 10) – The D’569 patent has a thick opaque frame that

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is stepped up surrounding a recessed display and substantially wider on the ends than on the top

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and bottom of the device. Thus, the front surface is not clear or completely flat, so as to appear as

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an uninterrupted, continuous surface. The design in the D’569 patent is also not “rectangular

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shaped” as Mr. Sherman claims. (Sherman Decl. ¶ 26.) Rather, the two ends are substantially

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rounded and thus this design is lozenge-shaped. Nor does it have a “largely smooth and

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continuous back surface” (id.), as there appears to be a separate rectangular back panel, which is

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also stepped up from the frame. Moreover, the edges of the design appear to be formed from

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three straight-edged layers with the front and back layers being recessed from the middle layer.

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The D’569 design is neither basically the same as nor substantially the same as the D’889 design.

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48.

D461,802 Patent (Exs. 11 & 12) – The D’802 Patent has a thick asymmetrical

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raised frame with an ornamental texture surrounded by a second frame. The front surface is not

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completely flat, so as to appear as an uninterrupted continuous surface. The shape of the design is

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not rectangular as there is a protrusion at one of the edges, presumably for a stylus holder. The

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edge profile also curves gradually from the front surface and meets the back surface at a vertical

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angle to form a sharp edge around the back surface, which appears to be the complete opposite of

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the D’889 design, where the edge profile gradually curves from the back surface and meets the

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front surface at a vertical angle to form a sharp edge around the front surface.

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49.

I have reproduced Figure 2 of the D’802 design, where the front surface is shown

at the top of the figure and the back surface is shown at the bottom of the figure, below:

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50.

Mr. Sherman, however, flips the edge profile in his declaration (see below) to

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make the D’802’s profile appear to be exactly the opposite of what it is, thereby making it appear

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to be similar to the edge profile in the D’889 design.

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51.

The D’802 design is neither basically the same as nor substantially the same as the

D’889 design.
52.

JP 0921403 (Exs. 13 & 14) – The design disclosed in JP 0921403 does not have a

clear and completely flat front surface, so as to appear uninterrupted and continuous. The frame
is asymmetrical and has two buttons on the front. One of the edges is partially jagged; another
edge appears squared; and another edge is completely rounded. Moreover, two of the corners are
squared. There is also a dominant split line in the middle of the edges. The back surface is also
adorned with five circles, which appear to be fasteners. Indeed, Mr. Sherman admits the
substantial differences between the design disclosed in JP 0921403 and the D’889 design.
(Sherman Decl. ¶ 29.) The JP 0921403 is neither basically the same as nor substantially the same
as the D’889 design.
53.

JP 0887388 (Exs. 15 & 16) – The design disclosed in JP 0887388 does not have a

clear and completely flat front surface so as to appear uninterrupted and continuous. There
appears to be a prominent ornamental feature that is raised on the lower part of the frame. The
back surface has a prominent raised rectangular feature, contrary to Mr. Sherman’s claim that this

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1

design has “a largely smooth and continuous back surface.” (Sherman Decl. ¶ 29.) Moreover,

2

the edges of the design curve out from the front surface toward the back, and then curve back in

3

to the back surface. The JP 0887388 design is neither basically the same as nor substantially the

4

same as the D’889 design.

5

54.

JP 1142127 (Exs. 17 & 18) – The design disclosed in JP 1142127 does not have a

6

clear and completely flat front surface, contrary to Mr. Sherman’s claim that this design appears

7

to have a “flat smooth surface from end to end on both the front and back.” (Sherman Decl.

8

¶ 29.) For instance, the frame is covered with ornamental dots. Moreover, the frame appears to

9

be stepped up from the edge of the front surface, leaving the appearance of a rim around the edge

10

of the frame, as well as from the display inset. Moreover, there appears to be groove inset on the

11

back surface and one of the sides. The JP 11421727 design is neither basically the same as nor

12

substantially the same as the D’889 design.

13

55.

HP Compaq TC1000 (Exs. 19 & 20) – I have reviewed the actual HP Compaq

14

TC1000 device. The TC1000 has a frame around that edge that extends onto the front surface.

15

There also appears to be silver and black perimeters surrounding the display screen. The edges

16

and back surface also have a complicated arrangement of slots, ports, hatches, and buttons. The

17

TC1000 also has a very thick form factor. The TC1000 is neither basically the same as nor

18

substantially the same as the D’889 design.

19
20
21

56.

None of the prior art references that Mr. Sherman describes in his declaration is

basically the same as or substantially the same as the design in the D’889 patent.
57.

Moreover, it would not have been obvious to a designer skilled in the art prior to

22

the disclosure of the D’889 patent to create a flat, clear front surface that is uninterrupted and

23

continuous on an electronic device. A raised frame surrounding an inset display would have been

24

the most obvious front surface design for an electronic device. As demonstrated by the art relied

25

on by Mr. Sherman, such a front surface with a raised frame surrounding an inset display, in

26

contrast to an uninterrupted continuous glass surface, was common prior to the D’889 patent.

27

B.

The D618,677 Patent

28

58.

I have reviewed Mr. Sherman’s analysis of the prior art to the D’677 Patent.

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1
2

59.

Mr. Sherman does not identify a single reference that discloses all the elements of

the claimed design of the D’677 Patent from the perspective of an ordinary observer.

3

60.

Moreover, Mr. Sherman does not identify a primary reference that is basically the

4

same as the D’677 Patent from the perspective of an ordinary observer. He also does not identify

5

any secondary references whose design can be used to modify such primary reference.

6

Mr. Sherman also does not identify any suggestion in the prior art for combining any primary

7

reference with any secondary reference. Finally, he does not identify any combination of

8

references based on a primary reference and any secondary references that discloses all of the

9

elements of the claimed design of the D’677 Patent from the perspective of an ordinary observer.

10

61.

Rather, Mr. Sherman recites a laundry list of prior art references, reciting apparent

11

similarities and differences between the prior art references and the claimed design of the D’677

12

Patent. He then concludes that all of the elements of the claimed design of the D’677 appear

13

somewhere in the prior art. Mr. Sherman’s prior art analysis regarding the D’677 Patent is

14

incorrect, and does not follow the methodology described above.

15

62.

JP 1241638 (Exs. 21 & 22) – The design disclosed in the JP 1241638 reference

16

has a front surface that is not flat, but rather slopes toward the back of the device near the top and

17

bottom, which Mr. Sherman admits. (Sherman Decl. ¶ 89.) The bezel in the JP 1241638

18

reference is much thicker and does not have an inwardly sloping profile. This is all apparent from

19

alternative figures of the JP 1241638, which Mr. Sherman failed to insert in his declaration

20

adjacent to the figure of the front view on page 19. Moreover, the JP 1241638 does not have a

21

transparent front surface, with a black mask underneath to make an appearance of a black surface.

22

The JP 1241638 design is neither basically the same as nor substantially the same as the D’677

23

design.

24
25
26
27
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63.

I disagree with Mr. Sherman’s claim that “making the front cover transparent

2

black would have been an obvious choice in January of 2006 because the display screens

3

available at that time were only commercially available in shades of black. Unless a designer

4

wanted to make an unusual choice of creating a multiple colored unified face, using black for the

5

unified front surface was not only an obvious choice; it was the natural default.” (Sherman Decl.

6

¶ 86.) First, when display screens from 2006 were turned off, they actually display a shade of

7

gray and not completely black. Thus, if a designer would want to match the display screen to rest

8

of the surface, a designer would choose a shade of gray for the front surface. Second, black was

9

not a “default” color for smart phones in 2006 as designers also chose many other colors instead

10

of black. For instance, Samsung’s SCH i830, released in January 2006, was blue in color. (See

11

http://pdadb.net/index.php?m=specs&id=389&c=samsung_sch-i830__ip-830w)

12
13
14
15
16
17
18
19
20
21

64.

Many other smart phones in 2006, like ones from Nokia, Palm, and Motorola, as

shown respectively below, respectively, were silver or chrome. (See http://pdadb.net)

22
23
24
25
26
27
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1
2
3
4
5
6
7
8
9
Nokia 9300/b

10
11

65.

Palm Treo 700b

Motorola Q

LG Chocolate (Ex. 23) – The LG Chocolate does not have a centered display

12

screen with balanced borders above and below the screen. Rather the display screen is aligned

13

closer to the top of the design, rather than the center. The side borders to the right and left of the

14

screen are also wider. Moreover, the top and bottom edges are not straight. There is also

15

substantial ornamentation in the form of a large metal button with a metallic-appearing rim and

16

red marking, which is surrounded by a number of smaller red buttons on the front surface below

17

the display screen. The LG Chocolate is neither basically the same as nor substantially the same

18

as the D’677 design.

19

66.

LG Prada (Ex. 24) – The LG Prada has a wide frame surrounding all sides of the

20

display screen. It also has a complex arrangement of three metal buttons protruding from the

21

front surface, which extends almost the width of the bottom of the device. There does not appear

22

to be a bezel that surrounds the front surface. The front surface is also not a continuous and

23

uninterrupted due to the prominent silver buttons and a wide frame. There also appears to be a

24

black border surrounding the frame. The LG Prada is neither basically the same as nor

25

substantially the same as the D’677 design.

26
27

67.

JP 1280315 (Exs. 25 & 26) – The JP 1280315 design does not have a centered

display screen with balanced borders above and below the screen. It also does not have a speaker

28
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slot or a bezel surrounding the front surface. Moreover, this design does not have a transparent

2

front surface with a black mask underneath to form the appearance of a clear black surface. The

3

JP 1280315 design is neither basically the same as nor substantially the same as the D’677 design.

4

68.

JP 1009317 (Exs. 27 & 28) – The JP 1009317 design does not have a bezel. The

5

borders above and below the display screen do not appear to be balanced and thus the frame

6

appears to be asymmetric. The top and bottom edges also curve from the center toward the sides.

7

There is no bezel, and the design does not have a continuous clear front surface with a black mask

8

underneath to form the appearance of a transparent black surface. The JP 1009317 design is

9

neither basically the same as nor substantially the same as the D’677 design.

10

69.

JP 1241383 (Exs. 29 & 30) – The JP 1241383 design appears to have an inset

11

display screen surrounded by a large thick bezel. Large lozenge and circle shaped buttons extend

12

from the left side of the design and thus are visible from the front. There is no speaker slot. Also,

13

this design does not have a continuous clear front surface with a black mask underneath to form

14

the appearance of a transparent black surface. The JP 1241383 design is neither basically the

15

same as nor substantially the same as the D’677 design.

16

70.

KR 30-0418547 (Exs. 31 & 32) – The KR 30-0418547 design has wide borders

17

surrounding the display screen. There appears to be a rimmed frame surrounding the front

18

surface. Also, this design does not appear to have a continuous clear front surface with a black

19

mask underneath to form the appearance of a transparent black surface. The KR 30-0418547

20

design is neither basically the same as nor substantially the same as the D’677 design.

21
22
23

71.

None of the prior art references that Mr. Sherman describes in his declaration is

basically the same as or substantially the same as the design in the D’677 patent.
72.

Moreover, it would not have been obvious to a designer skilled in the art prior to

24

the disclosure of the D’677 patent to create a flat, clear front surface with a black mask

25

underneath to form the appearance of a transparent black surface on an electronic device. A

26

raised frame surrounding an inset display would have been the most obvious front surface design

27

for an electronic device. As demonstrated by the art relied on by Mr. Sherman, such a front

28
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surface was common prior to the D’889 patent. Moreover, such a raised frame or rim

2

surrounding an inset display on the front surface would provide protection to the display.

3

C.

4

The D593,087 Patent
73.

Mr. Sherman does not provide a separate analysis of the prior art to the D’087

5

Patent. Rather, he relies on his analysis of the prior art to the D’677 Patent. For the reasons

6

explained above with respect to the D’677 Patent, Mr. Sherman’s prior art analysis is incorrect.

7

IV.

8
9

FUNCTIONALITY
74.

Based on my understanding of the appropriate test of functionality and my review

of Mr. Sherman’s declaration, Mr. Sherman’s conclusion that the “designs claimed by the D’889,

10

D’677, and D’087 patents are not protectable because they only encompass non-ornamental

11

elements” is incorrect. (Sherman Decl. ¶ 184.) Mr. Sherman incorrectly forms this conclusion

12

based on his opinion that certain broadly defined elements of the design patents may perform

13

some function.

14

75.

I understand that this piecemeal functionality analysis is incorrect: “In

15

determining whether a design is primarily functional or primarily ornamental the claimed design

16

is viewed in its entirety, for the ultimate question is not the functional or decorative aspect of each

17

separate feature, but the overall appearance of the article, in determining whether the claimed

18

design is dictated by the utilitarian purpose of the article.” L.A. Gear, 988 F.2d at 1123.

19

76.

Moreover, I understand that when one is analyzing functionality, the issue is not

20

whether the device performs a function; it is whether the design of the device is dictated by

21

function. “[T]he design of a useful article is deemed to be functional when the appearance of the

22

claimed design is ‘dictated by’ the use or purpose of the article.” Id. “If the particular design is

23

essential to the use of the article, it can not be the subject of a design patent.” Id. If there are

24

alternative designs that can achieve the same function, then the design is not dictated by function.

25

Id.; Richardson, 610 F. Supp. 2d at 1050.

26

B.

The D’889 patent is not dictated by function

27

77.

I have reviewed Mr. Sherman’s “functionality” analysis of D’889 Patent.

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78.

Mr. Sherman divides the D’889 Patent into a list of broadly defined elements and

2

recites a possible function for each of those elements. (Sherman Decl. ¶¶ 36-51.) He then

3

concludes that the D’889 Patent is “not protectable” because it “only encompass(es) non-

4

ornamental elements.” (Id. ¶ 184.) This type of analysis is incorrect, as explained above at ¶¶ 74-

5

76.

6

79.

For the D’889 design, alternate tablet computer designs include forms that have:

7

x

squared or chamfer corners instead of rounded corners (e.g., Exs. 33-37);

8

x

a front surface that is not flat (e.g., Exs. 34; 38-39) or clear (e.g., Exs. 34-35; 38-

9

42);

10

x

a front surface with decorations (e.g., Exs. 32; 39; 42-43); or

11

x

thick frames around the front surface (e.g., Exs. 34; 36; 38; 43).

12

80.

An alternative design that performs many of the same functions that Mr. Sherman

13

recites in paragraphs 36-51 of his declaration can be derived from any combination of the above

14

characteristics. Accordingly, the functions that Mr. Sherman recites in paragraphs 36-51 of his

15

declaration do not dictate the design of the D’889 patent.

16

81.

For example, Mr. Sherman identifies the “rounded corners” of the D’889 patent as

17

“functional because they ensure comfortable, safe, and ease of use” and “also make the device

18

more durable.” (Sherman Decl. ¶¶ 39-40.) Mr. Sherman ignores the fact that other tablets can

19

implement alternative designs to ensure comfort, safety, ease of use & durability. For instance, a

20

tablet may have chamfered corners and even a “protective ring” surrounding the tablet for

21

durability and safety. (See Ex. 35.) Also, a tablet may have a “folded” design such that it is more

22

comfortable to use. (See Ex. 44.) These alternative designs help demonstrate that the rounded

23

corners of the D’889 patent are not dictated by functionality.

24

82.

As another example, Mr. Sherman also identifies the “flat surface” of the D’889

25

patent as performing the function of “help[ing] keep the tablet surface clean and minimizes

26

chance of dust or water encroachment.” (Sherman Decl. ¶ 43.) Mr. Sherman fails to explain how

27

a front surface that was not completely flat (i.e., a front surface that has a raised rim or frame or

28

ornamentation) would impede the cleanliness of a tablet. Indeed, many tablet designs – including
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the many prior art designs identified by Mr. Sherman – do not have completely flat front surfaces.

2

(See e.g., Sherman Decl. Exs. C, D, & L)

3

83.

As another example, Mr. Sherman also identifies “a clear surface without

4

ornamentation” of the D’889 patent as performing the function of “allow[ing] unimpeded viewing

5

of the display screen.” (Sherman Decl. ¶ 44.) Mr. Sherman ignores the fact that many tablet

6

designs do not have a “clear surface without ornamentation” but yet do not impede viewing of the

7

display screen. For instance, many alternative designs cover the border surrounding the display

8

with an opaque – rather than clear – surface. (See e.g., Exs. 34-35; 38-42.)

9

84.

The elements that Mr. Sherman identifies in his declaration are not dictated by

10

function because alternative designs are available that can perform the same functions described

11

by Mr. Sherman.

12

C.

The D’677 patent is not dictated by function

13

85.

I have reviewed Mr. Sherman’s “functionality” analysis of D’677 patent.

14

86.

As with the D’889 patent, Mr. Sherman improperly divides the D’677 patent into a

15

list of broadly defined elements and recites a possible function for each of the elements.

16

(Sherman Decl. ¶¶ 107-125.) He then concludes that the D’677 Patent is “not protectable”

17

because it “only encompass[es] non-ornamental elements.” (Id. ¶ 184.) This type of analysis is

18

incorrect, as explained above at ¶¶ 74-76.

19

87.

For the D’677 design, there are numerous alternate smartphone designs, including

20

forms that have:

21

x

22

(e.g., Exs. 45-47; 68)

23

x

squared corners instead of rounded corners (e.g., Exs. 47-49);

24

x

a front surface that is not flat (e.g., Exs. 50-52; 67), clear (e.g., Exs. 50-55), or

25

black (e.g., Exs. 50; 53; 56-57);

26

x

a front surface with decorations (e.g., Exs. 46; 48; 57);

27

x

an off-center display screen such that borders surrounding the screen are not

28

uniform (e.g., Exs. 58-60);

rounded or other shapes, rather than a rectangular shape with four straight sides

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x

wide frames around the front surface (e.g., Exs. 54; 61-62); or

2

x

alternative bezel designs, or no bezel at all (e.g., Ex. 52; 60-61).

3

88.

An alternative design that performs many of the same functions that Mr. Sherman

4

recites in paragraphs 107-125 of his declaration can be derived from any combination of the

5

above characteristics. Accordingly, the functions that Mr. Sherman recites in paragraphs 107-125

6

of his declaration do not dictate the design of the D’677 patent.

7

89.

Moreover, Mr. Sherman’s element-by-element analysis in paragraphs 107-125 of

8

his declaration merely lists a variety of alleged functions performed by extremely broadly

9

described elements of Apple’s design and conclusorily opines that each element is “functional.”

10

This analysis is incorrect.

11

90.

For example, Mr. Sherman identifies “surface flatness” as addressing

12

“functionality concerns of ease of cleaning and limiting inadvertent transmissions from physical

13

keys.” (Sherman Decl. ¶ 107.) Mr. Sherman, however, ignores the many smartphone designs

14

that do not have flat surfaces that would also be easy to clean and also limit inadvertent

15

transmissions from the physical keys. (See e.g., Exs. 50-52; 67.)

16

91.

As another example, Mr. Sherman explains that “surface transparency” is

17

functional because “otherwise, the purpose of the display screen would be impaired.” (Sherman

18

Decl. ¶ 108.) Mr. Sherman, however, fails to explain why the entire surface must be transparent

19

to perform the function of preventing impairment of the display screen. For instance, a

20

smartphone that has a surface that is transparent only in the regions covering the display but is

21

otherwise opaque in other regions would still perform the same functionality that Mr. Sherman

22

describes. Indeed, many smartphone designs include such opaque surfaces. (See e.g., Exs. 50-

23

55.)

24

92.

As another example, Mr. Sherman identifies “blackness of surface” and purports to

25

identify a laundry list of functions for this element so that he can conclude that it “is a particularly

26

useful color for the surface of a phone.” (Sherman Decl. ¶ 109.) Mr. Sherman ignores the fact

27

that many smartphones on the market before and after the introduction of the iPhone were not

28

black, and yet could still perform the same functions that Mr. Sherman describes. Indeed, at least
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one of Samsung’s own smartphones in 2006 was blue and many other smartphones in 2006 were

2

silver or chrome. (Supra ¶¶ 74-76.) Moreover, Mr. Sherman’s claim that “blackness of surface”

3

is functional is undermined by his acknowledgement of several aesthetic reasons why a

4

smartphone may be black – i.e., it “does not send an overt message of flashiness or frivolity.”

5

(Sherman Decl. ¶ 109.)

6

93.

As another example, Mr. Sherman identifies a “centered display screen” with

7

“narrow borders on the long sides of the screen” and “wider borders on the top and bottom of the

8

front surface” as serving several functions. (Sherman Decl. ¶¶ 114-118.) Mr. Sherman, however,

9

fails to explain how the myriad other designs that have 1) display screens that are off-center

10

2) thicker borders on the long sides of the screen, and/or 3) narrower borders on the top and

11

bottom cannot perform the same functions that Mr. Sherman describes. Indeed, display screen

12

location and border size vary greatly in smartphone designs. (See, e.g., Exs. 53-55.)

13

94.

As another example, Mr. Sherman identifies the “rounded horizontal speaker slot”

14

as performing various functions. (Sherman Decl. ¶ 119-123.) At his deposition, Mr. Sherman

15

testified that the “rounded horizontal” shape of the speaker slot is functional because it conforms

16

to the shape of speaker component, which is also round and horizontal. (Ex. 2 at 124:17-24.) His

17

opinion was based upon what he read in manufacturing specifications received from two

18

manufacturers of two speaker elements, each of which made elongated rectangular speaker

19

elements. (Ex. 2 at 148:13-25; 154:12-155:1.) Mr. Sherman ignores, however, that speaker

20

components can be circular, not just rectangular. Indeed, one of Samsung’s own smartphones

21

uses a circular component; it does not have a circular speaker slot that conforms to that circular

22

component, demonstrating that it is not necessary for a speaker slot to conform to the shape of the

23

underlying speaker component. (Ex. 63.) Moreover, many other smartphones designs have

24

speaker slots that do not have a “rounded horizontal” shape, yet they still perform the same

25

functions that Mr. Sherman describes. (See e.g., Exs. 64-66.)

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