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

Filing 940

Administrative Motion to File Under Seal Apple Inc.s Administrative Motion To File Documents Under Seal Re Apples Motion To Exclude Testimony Of Samsungs Experts filed by Apple Inc.. (Attachments: #1 Apple Inc.s Notice Of Motion And Motion To Exclude Testimony Of Samsungs Experts, #2 Declaration Of Jason Bartlett In Support Of Motion To Exclude Testimony Of Samsungs Experts, #3 Exhibit 1, #4 Exhibit 2, #5 Exhibit 5, #6 Exhibit 6, #7 Exhibit 7, #8 Exhibit 9, #9 Exhibit 12, #10 Exhibit 14, #11 [Proposed] Order Granting Apples Motion To Exclude Testimony Of Samsungs Experts, #12 Proposed Order Granting Apple's Admin Motion to File Under Seal)(McElhinny, Harold) (Filed on 5/18/2012)

Exhibit 14

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA, SAN JOSE DIVISION

APPLE INC., a California corporation,
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.

EXPERT REPORT OF NICHOLAS P. GODICI

02198.51855/4662209.2

I.

INTRODUCTION
1.

I, Nicholas P. Godici, have been retained in connection with the above-

referenced matter on behalf of Samsung Electronics Co., Ltd., Samsung Electronics
America, Inc., and Samsung Telecommunications America, LLC (collectively
“Samsung”). I have been asked to provide expert testimony on rules, practices, and
procedures before the United States Patent and Trademark Office (“USPTO”), 1 including
those related to the examination and prosecution of utility and design patent applications.
I have also been asked to opine on the application of those rules, practices, and
procedures to the facts in this case and particularly with respect to the scope of U.S.
Design Patent Nos. D504,889 (“D’889”), D593,087 (“D’087”), D618,677 (“D’677”),
D622,270 (“D’270”), D604,305 (“D’305”), D617,334 (“D’334”), and
D627,790 (“D’790”) (collectively, the “Asserted Design Patents”), and inequitable
conduct with respect to the prosecution of U.S. Patent No. 7,853,891 (“’891 patent”),
which are patents asserted against Samsung by Apple Inc. (“Apple”).
2.

If asked at hearings or trial, I am prepared to testify regarding the matters I

discuss in this report. I also reserve the right to give opinions on facts and other matters
arising subsequent to this report, including in rebuttal to any matter raised by the parties
or their experts, either prior to or during any hearing or trial in this action.
A.
3.

Background And Qualifications
I am currently the Executive Advisor for the intellectual property law firm

of Birch, Stewart, Kolasch and Birch, LLP, located in Falls Church, Virginia.
4.

I have over 39 years of experience in the patent field. I spent my entire

career, until my retirement in March 2005, at the USPTO. Most recently, I served as the
1

I may refer to the USPTO as simply the PTO.

2

Commissioner for Patents at the USPTO from March 2000 to March 2005. I also served
as the Acting Under Secretary of Commerce for Intellectual Property and Director of the
USPTO from January to December 2001. Additionally, in 2009, at the request of the
Secretary of Commerce, I accepted a temporary assignment at the USPTO to act as an
expert advisor to the Secretary and Acting Under Secretary, prior to Senate confirmation
of the new Under Secretary nominated by the President.
5.

I began my career at the USPTO in 1972 as a patent examiner, and held

the positions of Supervisory Patent Examiner (“SPE”), Group Director, Deputy Assistant
Commissioner for Patents, and Acting Assistant Commissioner for Patents before being
named Commissioner for Patents by the Secretary of Commerce on March 29, 2000. As
Commissioner for Patents, I was responsible for all aspects of patent-related operations at
the USPTO, including a budget of over $750 million and a staff of over 5,000 employees
that included the entire patent examining corps. I have testified before Congress, both the
House and Senate, on various intellectual property matters. During my time at the
USPTO, I examined approximately 7,000 patent applications.
6.

As Acting Under Secretary of Commerce for Intellectual Property and

Director of the USPTO, I reported to and advised the Secretary of Commerce on all
intellectual property matters and was responsible for all managerial aspects of the
USPTO. I retired from the USPTO in March 2005.
7.

I hold a Bachelor of Science degree in Engineering Mechanics from

Pennsylvania State University, awarded in 1972, and a Certificate of Advanced Public
Management from The Maxwell School of Citizenship and Public Affairs, Syracuse
University, in 1999. My curriculum vitae is attached as Exhibit A to this report. I may

3

testify with respect to my responsibilities and experiences relating to the information
listed in Exhibit A.
8.

Exhibit B attached to this report lists those cases in which I have testified

as an expert witness in deposition or trial in the past four years.
9.

In rendering my opinions, I have reviewed and considered the materials

listed in Exhibit C attached to this report, in whole or in part, in addition to the materials
expressly referenced herein. This report may be supplemented should additional
materials be produced in this matter.
10.

Birch, Stewart, Kolasch & Birch, LLP is being compensated at the rate of

$750 per hour for my time in this case. The compensation received from this case is not
contingent upon my opinions or performance, the outcome of the case, or any issues
involved in or related to the case.
B.
11.

Scope Of My Opinions
At the present time, I expect to testify on USPTO policies and procedures,

on the rules and procedural requirements governing the filing and prosecution of patent
applications in the USPTO and the grant of U.S. patents by the USPTO, including the
rules and procedures governing the examination of utility and design patent applications,
the understanding of PTO examiners when they are examining utility and design patent
applications, and on my opinions regarding the same, in view of the evidence
surrounding the examination of the D’889, D’087, D’677, D’270, D’305, D’334, D’790,
and ’891 patents.
12.

The opinions stated in this report are based on information currently

available to me. I reserve the right to continue my investigation and study, which may
include a review of documents, expert reports, or other information that may yet be
4

II.

THE PATENT EXAMINATION PROCESS
13.

In general terms, a “utility” patent protects the way an article is used and

works (35 U.S.C. § 101) 2 while a “design” patent protects the way an article looks
(35 U.S.C. § 171) 3 . In design patent protection the ornamental appearance of an article
includes its shape, configuration or surface ornamentation applied to the article or both.
Both design and utility patents may be obtained on an article if invention resides both in
its utility and ornamental appearance. 4 The vast majority of rules and procedures for
examining utility and design patent applications within the USPTO are identical.
However USPTO regulations 37 C.F.R. 1.152-1.155 are specific to design patent
applications. Chapter 1500 of the Manual of Patent Examining Procedure (“MPEP”) sets
forth the procedures and guidance specific to the examination of design patent

2

35 U.S.C. 101 Inventions patentable.
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions
and requirements of this title.

3

35 U.S.C. 171 Patents for designs.
Whoever invents any new, original, and ornamental design for an article of manufacture may obtain a
patent therefor, subject to the conditions and requirements of this title.
The provisions of this title relating to patents for inventions shall apply to patents for designs, except as
otherwise provided.

4

See MPEP 1502.01.

5

applications. Practices and procedures set forth in the other Chapters of the MPEP apply
to both utility and design applications except as particularly pointed out in Chapter 1500. 5
14.

An applicant for either a utility or design patent in the United States

initiates the application process by filing an application with the USPTO detailing the
subject matter for which patent protection is sought. A utility patent application is
required to include a specification, a claim or claims, drawings when necessary, an
inventor’s oath or declaration, and the required fees. 6 A design patent application is
required to include a specification, a single claim, drawings or photographs, an inventor’s
oath or declaration, and the required fees. 7 Drawings or photographs are an essential part
of a design patent application since they constitute the entire visual disclosure of the
claimed invention. 8 The single claim of a design patent application is to the “ornamental
design for the article (specifying name) as shown or as shown and described” in the
specification and drawings. 9 The oath or declaration made by the inventor in both utility
and design applications certifies that the inventor believes that he or she is the original
first inventor of the subject matter claimed and for which a patent is sought. The inventor
also makes various other certifications required by law and various USPTO rules. 10
15.

Under certain circumstances, a U.S. utility patent application may be

entitled to claim the benefit of the filing date of an earlier filed application. For example,
it is possible to claim the benefit of an earlier-filed U.S. nonprovisional application under
35 U.S.C. § 120 or of an earlier-filed provisional application under 35 U.S.C. § 119(e).

5
6
7
8
9
10

See MPEP 1501.
See MPEP 601(a).
See MPEP 1503
See MPEP 1503.02.
See 37 CFR 1.153.
See MPEP 602.

6

This is sometimes called domestic priority. 11 Design patent applications may claim the
benefit of an earlier-filed application under 35 U.S.C. § 120 but may not claim the benefit
of an earlier-filed provisional application under 35 U.S.C. § 119(e).
16.

After a patent application is received, administrative staff for the USPTO

performs a preliminary review to ensure that the application meets the formal
requirements established by Congress and the USPTO. The application is then assigned
to an examiner in a particular technological area, who is responsible for examining the
application and preparing an Office Action stating his/her conclusions with respect to
patentability. The examiner is required initially to determine whether the claim(s) of the
application satisfy the requirements for patentability set forth in the patent statutes and
regulations.
17.

The examination of claim(s) in both utility and design patent applications

requires an examiner to conduct a search for “prior art” related to the claimed
invention. 12 Prior art may include, for example, patents (both U.S. patents and foreign
patents) and non-patent publications (e.g., magazines and trade journals), sometimes
called non-patent literature, that pre-date the applicant’s invention. 13 In addition, prior
art may include prior public uses, sales, and offers for sale of the invention. 14
18.

While applicants are not required to conduct a prior art search, they are

required to disclose material information of which they are aware to the USPTO under
their duty of candor and duty of disclosure. Material information includes prior art
patents and printed publications as well as information on enablement, prior public uses,

11
12
13
14

See MPEP 201.11.
See MPEP 704.01.
See MPEP 706.02(a).
See 35 U.S.C. § 102.

7

sales or offers for sale, invention by another and/or any other information that would
impact the PTO’s decision to issue the patent. Many applicants disclose information of
which they are aware to the PTO via an Information Disclosure Statement (“IDS”). If an
IDS is filed in compliance with PTO regulations, the examiner will consider the prior art
references or other information in the IDS during the examination of the application.
19.

After analyzing the prior art and any other issues, the examiner issues an

Office Action rejecting claim(s), objecting to claim(s), or allowing the claim(s) of the
application. 15 Claim(s) may be rejected, for example, because they are not novel in light
of the prior art or differ only in obvious ways from the existing prior art. The references
and information relied on by the examiner and the reasons for the rejection are set forth in
the Office Action sent to the applicant.
20.

An applicant may reply to rejections and objections set forth in an Office

Action by filing a written response that distinctly and specifically points out what the
applicant believes are errors in the examiner’s action. The reply by the applicant or
patent owner must be reduced to a writing which distinctly and specifically points out the
supposed errors in the examiner’s Action and must reply to every ground of objection and
rejection in the prior Office Action. 16
21.

The examiner then reviews any amendments and/or arguments submitted

by the applicant to determine if the conditions for patentability are met. The examiner
can either allow the application or issue a new Office Action if rejections and/or
objections remain. If the patent application is found to be in allowable condition, a

15

See MPEP 707.

16

See MPEP 714.02.

8

Notice of Allowance will be sent to the applicant. A fee for issuing the patent is due
within three months from the date of the Notice. Once the issue fee is paid, the
application will issue as a patent.
By law, all U.S. patents are presumed valid. 17 This is sometimes called

22.

the “presumption of validity.” However, this presumption of validity may be overcome
in litigation by presenting clear and convincing evidence of invalidity. 18
A.
23.

Functionality vs. Ornamentation
Articles of manufacture may include both functional and ornamental

characteristics. 19 It is therefore possible to obtain both utility and design patents on an
article of manufacture that has both functional and ornamental features.
24.

MPEP 1504.01 sets forth guidance to USPTO examiners as well as the

public on the distinction between functionality and ornamentation in relation to utility
and design patent applications. An ornamental feature or design has been defined as “one
which was created for the purpose of ornamenting and cannot be the result or merely a
by-product of functional or mechanical considerations.” 20 Ornamentation of an article
must be the result of a conscious act by the inventor, as 35 U.S.C. §171 requires that a
patent for a design be given only to “whoever invents any new, original, and ornamental
design for an article of manufacture.” Therefore, for a design to be ornamental within the

17

35 U.S.C. § 282.

18

Microsoft Corp. v. i4i L.P. and Infrastructures for Information Inc., United States Supreme Court, No.
10-290, decided June 9, 2011.
19

20

See MPEP 1502.01.
MPEP 1504.01(c) (internal quotation marks and citations omitted)

9

requirements of 35 U.S.C. § 171, it must be “created for the purpose of ornamenting.” In
re Carletti, 328 F.2d 1020, 1022, 140 USPQ 653, 654 (CCPA 1964). 21
25.

While ornamentality must be based on the entire design, “[i]n determining

whether a design is primarily functional, the purposes of the particular elements of the
design necessarily must be considered.” Power Controls Corp. v. Hybrinetics, Inc., 806
F.2d 234, 240, 231 USPQ 774, 778 (Fed. Cir. 1986). The court in Smith v. M & B Sales
& Manufacturing, 13 USPQ2d 2002, 2004 (N. D. Cal. 1990), states that if “significant
decisions about how to put it [the item] together and present it in the marketplace were
informed by primarily ornamental considerations,” this information may establish the
ornamentality of a design.
B.
Design Patents Are Understood By PTO Examiners To Have A Narrow
Scope
26.

It is my opinion that design patent examiners consider design patents to

have a very narrow scope limited to the exact drawings in the patent. I base this opinion
on the following:
27.

Patent examiners are informed that, unlike utility patents, design patents

can only include a single claim. 22 Design patent examiners therefore must reject design
applications that seek to include more than one claim. 23 Patent examiners are further
informed that this single claim cannot protect multiple embodiments unless those
embodiments share a “single inventive concept” and are therefore not “patentably
distinct” from each other. 24

21

MPEP 1504.01(c).
MPEP § 1504.05.
23
Id.
24
Id. (“Embodiments that are patentably distinct from one another do not constitute a single inventive
concept and thus may not be included in the same design application.”).
22

10

28.

Design patent examiners are also instructed that two embodiments of a

claim share a single inventive concept only where they “have overall appearances with
basically the same design characteristics.” 25

They are further instructed that any

“differences between the multiple designs are insufficient to patentably distinguish one
design from the other” only where the differences “are de minimis or obvious to a
designer of ordinary skill in the art.” 26
29.

Design patent examiners are instructed on yet another restriction: even

where the differences between two “designs may prove to be obvious in view of the prior
art . . . if the overall appearances are not basically the same, the designs remain
patentably distinct.” 27 Indeed, in such cases the examiners are informed that “it doesn’t
matter for restriction purposes[] if the differences between the appearances of the
embodiments are shown to be obvious in view of analogous prior art.” 28 Thus, if the
designs do not have “overall appearances that are basically the same, restriction must be
required since their appearances are patentably distinct.” 29
30.

In sum, patent examiners are informed that different designs must be

segregated into separate design patents unless they meet the following three strict criteria:
the designs are basically the same design, any differences are only de minimis, and the
differences are not obvious to a designer of ordinary skill in the art.
31.

Design patent examiners therefore understand as a natural corollary to

these restrictions that design patents necessarily encompass only the exact design claimed
in the drawing(s) and cannot extend to similar designs that have more than a de minimis
25
26
27
28
29

Id.
Id.
Id.
Id.
Id.

11

III.

MY ANALYSIS AND OPINIONS
32.

I understand that Apple has taken the position that the Asserted Design

Patents are broad enough in scope that they are infringed by the Samsung products
accused of design patent infringement in Apple’s Amended Complaint. I disagree. 30
33.

I also understand that Apple did not disclose Mac OS 10.0, an Apple

product that is prior art to the ‘891 patent and discloses all limitations of the claims,
during the prosecution of the ‘891 patent application.
A.
The Scope Of The Asserted Design Patents Is Plainly Narrow Because
Apple Has Obtained Subsequent Design Patents On Very Similar Designs
34.

A design patent may only be granted for a “new, original, and ornamental

design.” 31 As design patent examiners are informed, “[t]he standard for determining
novelty under 35 U.S.C. 102 was set forth by the court in In re Bartlett, 300 F.2d 942,
133 USPQ 204 (CCPA 1962). ‘The degree of difference [from the prior art] required to
establish novelty occurs when the average observer takes the new design for a different,
and not a modified, already-existing design.’” 32

30

Although I am not directly offering an opinion on noninfringement, I have reviewed the Amended
Complaint to understand the scope that Apple is attempting to attribute to its Asserted Design Patents. In
my opinion, for Apple to claim that the accused Samsung products infringe its Asserted Design Patents,
Apple is necessarily claiming that the scope of each Asserted Design Patent is larger than the exact
drawings claimed therein.
31
35 U.S.C. § 171.
32
MPEP § 1504.02 (citation omitted).

12

35.

Thus, when design patent examiners allows a design patent to issue, they

do so with the understanding that the design claimed by the patent is a different design,
and not simply a modification of an already-existing design.
36.

I have reviewed numerous Apple design patents, many of which were

applied for since the applications that led to the Asserted Design Patents (the “Apple
Subsequently-Issued Design Patents”). 33 Because the Apple Subsequently-Issued Design
Patents design patents issued after the Asserted Design Patents, they must represent new
designs, and not simply modifications of the Asserted Design Patents.
37.

Further, because many of the Apple Subsequently-Issued Design Patents

claim designs that appear quite similar to those claimed by the Asserted Design Patents,
the scope of the Asserted Design Patents is necessarily very narrow, such that the Apple
Subsequently-Issued Design Patents would be understood by the average observer to be
different designs.
38.

Furthermore, in signing the oath or declaration that accompanied each

application that led to the Apple Subsequently-Issued Design Patents, each inventor of
those patents was declaring an oath “that he believes himself to be the original and first
inventor” of the design in question, and that he had “invented a new, original, and
ornamental design.” 34 Thus, in my opinion, each Apple designer who is listed as an
inventor on any Apple Subsequently-Issued Design Patent swore that the design in that

33

The additional Apple design patents that I reviewed included the following: D558,756, D558,758,
D580,387, D581,922, D586,800, D613,735, D622,719, D602,015, D622,718, D624,536, D604,297,
D601,558, D602,016, D600,241, D602,014, D602,017, D634,319, D613,736, D615,083, D620,004,
D622,720, D624,072, D627,343, D627,778, D633,091, D629,799, D630,630, D633,090, D633,092,
D633,493, D633,908, D634,742, D636,390, D636,392, D638,835, D642,218, D602,486, D627,777,
D637,596, D621,825, D597,101, and D644,239. I am informed that the majority of these patents have been
produced by Samsung at SAMNDCA00373535-SAMNDCA00374040, and that the remaining patents will
be produced concurrently with this report.
34
See MPEP §§ 1503 and 602 (quoting 35 U.S.C. § 115).

13

Apple Subsequently-Issued Design Patent was not encompassed in the scope of any
previously-filed design patent applications, including those for the Asserted Design
Patents.
1.
D’889 Must Have A Narrow Scope In Light Of
Subsequently-Issued Design Patents
39.

The D’889 patent was issued to Apple on May 10, 2005. On November

23, 2010, United States Design Patent No. D627,777 (“D’777) was issued to Apple. The
D’777 patent reveals that the D’889 patent was cited by the examiner during the
prosecution of the application that led to the D’777 patent.
40.

The following are some figures from the D’889 and D’777 patents:
D’889

D’777

14

41.

The only differences between the designs shown in D’889 and D’777

appear to be the edge profiles, the thickness of the depicted devices, the presence of a
single button on the front of the D’777, and the slightly rounded back panel of the D’777.
42.

Because the D’777 patent issued subsequent to the D’889 patent, the

D’777 patent must claim a design that is new and different as compared to that of the
D’889. In other words, the design of the D’777 patent is not included within the scope of
the D’889 patent. In my opinion, this means that the scope of the D’889 patent must be
construed narrowly so that it does not encompass the D’777 design.
2.
D’087 Must Have A Narrow Scope In Light Of
Subsequently-Issued Design Patents
43.

The D’087 patent was issued to Apple on May 26, 2009. On February 22,

2011, United States Design Patent No. D633,092 (“D’092) was issued to Apple. The
D’092 patent reveals that the D’087 patent was cited by the examiner during the
prosecution of the application that led to the D’092 patent.
44.

The following are some figures from the D’087 and D’092 patents:

15

D’087

D’092

45.

The differences between the D’087 and the D’092 designs appear to be the

following: while the D’087 shows a speaker or earpiece, the D’092 only includes a small
detail within that speaker or earpiece since the outline of the earpiece is in broken lines
and is assumed to be disclaimed. In addition, the D’092 claims the back of the device,

16

while the back of the device in the D’087 is depicted in broken lines. Further, the slope
along the edge of the bezel may be slightly less in the D’092 than it is in the D’087.
46.

Because the D’092 patent issued subsequent to the D’087 patent, the

D’092 patent must claim a design that is new and different as compared to that of the
D’087. In other words, the design of the D’092 patent is not included within the scope of
the D’087 patent. In my opinion, this means that the scope of the D’087 patent must be
construed narrowly so that it does not encompass the D’092 design.
47.

My opinion is further informed by a comparison between D’087 and

United States patent D634,319 (“D’319”). The application that led to the D’319 patent
was filed on June 21, 2010, almost three years after the D’087 patent application was
filed. As can be seen on the face of the D’319 patent, one of the References Cited during
prosecution of the D’319 patent was the application for the D’087 patent, U.S. Appl. No.
29/282,833.
48.

The following are some figures from the D’087 and D’319 patents:

17

D’087

D’319

49.

The only difference between the D’087 and the D’319 designs appears to

be the addition of oblique lines on the front face of the D’319 design.
50.

Because the D’319 patent issued subsequent to the D’087 patent, the

D’319 patent must claim a design that is new and different as compared to that of the

18

D’087. In other words, the design of the D’319 patent is not included within the scope of
the D’319 patent. In my opinion, this means that the scope of the D’087 patent must be
construed narrowly so that it does not encompass the D’319 design.
3.
D’677 Must Have A Narrow Scope In Light Of
Subsequently-Issued Design Patents
51.

The D’677 patent was issued to Apple on June 29, 2010. On September

21, 2010, United States Design Patent No. D624,072 (“D’072) was issued to Apple.
52.

The following are some figures from the D’677 and D’072 patents:

19

D’677

D’072

53.

The only differences between the designs shown in the D’677 and the

D’072 appear to be the following: while the D’677 claims a speaker (or earpiece) and a
rectangular feature on the front (screen), the D’072 does not appear to have lines
claiming those features; however, there are possibly dashed lines or breaks in the
20

background indicating where such features would be. In addition, the D’072 claims the
bezel and back of the device, while these features in the D’677 patent are depicted in
broken lines.
54.

Because the D’072 patent issued subsequent to the D’677 patent, the

D’072 patent must claim a design that is new and different as compared to that of the
D’677. In other words, the design of the D’072 patent is not included within the scope of
the D’677 patent. In my opinion, this means that the scope of the D’677 patent must be
construed narrowly so that it does not encompass the D’072 design.
4.
D’270 Must Have A Narrow Scope In Light Of
Subsequently-Issued Design Patents
55.

The D’270 patent was issued to Apple on August 24, 2010. On

February 2, 2011, United States Design Patent No. D633,091 (“D’091) was issued to
Apple. The D’091 patent reveals that its application was a continuation of application
No. 29/344,620, which was the application that led to the D’270 patent.
56.

The following are some figures from the D’270 and D’091 patents:

21

D’270

D’091

57.

The only apparent differences between the D’270 and the D’091 designs

appear to be that the D’091 patent claims a round feature at the bottom of the front face
that is depicted in broken lines in the D’270, and that the D’270 claims a rectangular
feature on the front that is depicted in broken lines in the D’091.
22

58.

Because the D’091 patent issued subsequent to the D’270 patent, the

D’091 patent must claim a design that is new and different as compared to that of the
D’270. In other words, the design of the D’091 patent is not included within the scope of
the D’270 patent. In my opinion, this means that the scope of the D’270 patent must be
construed narrowly so that it does not encompass the D’091 design.
5.
D’305 And D’334 Each Must Have A Narrow Scope In
Light Of Each Other And In Light Of Subsequently-Issued
Design Patents
59.

The D’305 patent was issued to Apple on November 17, 2009. The D’334

patent was issued to Apple on June 8, 2010. As can be seen on the face of the D’334
patent, one of the References Cited during prosecution of the D’334 application was the
application for the D’305 patent, U.S. Appl. No. 29/281,460.
60.

The following are figures from the D’305 and D’334 patents:

23

D’305

61.

D’334

The only apparent differences between the D’305 and the D’334 designs

appear to be as follows: the D’334 shows an “E” in the upper left-hand corner where the
D’305 seems to have the same “E” in a highlighted box; the D’305 shows the time “4:00
PM” in the upper center while the D’334 shows “2:39 PM”; the D’305 shows a
“Calendar” icon with the number “6” and the day “Wednesday” while the D’334 shows a
“Calendar” icon with the number “14” and the day “Monday”; the D’305 shows a
“Calculator” icon with circles depicted inside, while the D’334 claims a “Calculator”
icon with rounded squares inside and a thin, light colored border around the perimeter;
the D’334 claims two additional icons – labeled with the text “iTunes” and “App Store” –
that are not present in the D’305 figure; and, the D’334 shows two dots above the
24

lowermost row of icons, one small white dot and one small gray dot, while the D’305
does not show these details. In addition to the figure shown above for D’305, that patent
also includes a color version of the same figure.
62.

Because the D’334 patent issued subsequent to the D’305 patent, the

D’334 patent must claim a design that is new and different as compared to that of the
D’305. In other words, the design of the D’334 patent is not included within the scope of
the D’305 patent. In my opinion, this means that the scope of the D’305 patent must be
construed narrowly so that it does not encompass the D’334 design.
63.

Furthermore, because the design claimed by D’334 must be a new and

different design as compared to that claimed by D’305, the design of D’305 must not be
within the scope of D’334’s claim. In my opinion, this means that the scope of the D’334
patent must be construed narrowly so that it does not encompass the D’305 design.
6.
D’790 Must Have A Narrow Scope In Light Of
Subsequently-Issued Design Patents
64.

The D’790 patent was issued to Apple on November 23, 2010. On

August 30, 2011, United States Design Patent No. D644,239 (“D’239) was issued to
Apple. The D’790 patent reveals that its application was a continuation of application
No. 29/281,507. The D’239 patent reveals that its application was a division of that same
application, No. 29/281,507.
65.

The following are the figures from the D’790 and D’239 patents:

25

D’790

66.

D’239

The only differences between the D’790 and the D’239 designs appear to

be that the squares in the D’239 patent having drawings inside them and words written
below them, and that there is a horizontal line both immediately above and below the
bottom row of squares in the D’239 patent.
67.

Because the D’239 patent issued subsequent to the D’790 patent, the

D’239 patent must claim a design that is new and different as compared to that of the
D’790. In other words, the design of the D’239 patent cannot be included within the
26

scope of the D’790 patent. In my opinion, this means that the scope of the D’790 patent
must be construed narrowly so that it does not encompass the D’239 design.
B.
The Scope Of Certain Of The Asserted Design Patents Is Plainly Narrow
Because Samsung Has Obtained Design Patents On Its Own Smartphone
Designs
68.

I understand that Samsung was issued a number of design patents for

mobile phones 35 after the Asserted Design Patents (and a number of the Apple
Subsequently-Issued Design Patents) were issued. It is my opinion that these Samsung
design patents were issued by the design patent examiners because they were found to
claim new and original designs.
69.

As one example of such a Samsung design, United States patent D638,815

(“D’815”) was filed on Aug. 31, 2010 and was issued on May 31, 2011. The D’815
patent indicates that the examiner cited at least two of Apple’s design patents in issuing
the patent: D558,757 and D615,083. Below are images of the three designs.

35

I have reviewed the following Samsung design patents: D548,713, D607,428, D635,540, D635,952,
D638,815, D645,017, D645,435, D645,835, D646,249, D646,252, D648,693, D652,008, D652,812,
D652,813, D653,230, D653,642, D653,645, D654,041, D654,049, D654,460, D654,461, D654,463,
D654,889, D654,890, D654,891, D654,894, D654,898, D654,899, and D654,900. I am informed that
these patents have been produced by Samsung at SAMNDCA00365613-SAMNDCA00365840.

27

Samsung Design Patent D638,815:

Apple Design Patent D615,083:

28

Apple Design Patent 558,757:

70.

Where a patent indicates that the examiner cited a specific prior art

reference, it means that the examiner considered the prior art design in deciding whether
the applicant’s design was patentably different. This would have included a comparison
of the entire cited reference with the entire design in the patent application.
71.

It is my opinion that the examiner properly granted the D’815 patent over

the cited Apple prior art patents because D’815 patent is a distinct and different design
from those two cited Apple references. By way of example only, the D’815 patent
includes more ornamentation than the other two designs, including the following: the
four symbols at the bottom of the front surface, two small details next to the earpiece, a
button detail on the side perspective, and the camera and other rounded details on the
back of the device. D’815 design also has a differently shaped earpiece than the D’083
patent and the earpiece is positioned higher on the device. The corners of the D’815
patent are rounded using different radii than the other patents, and the side profile view

29

shows that the D’815 patent has a boxier, more rectangular shape. The D’815 patent also
includes a rectangular display screen that is not present in the other two patents.
72.

As mentioned above, patent examiners must conduct a prior art search

before issuing a design patent. The D’815 patent indicates on its face that the field of
classification search run for that application included all of the classifications listed on
the D’087 and D’677 patents, both of which were issued prior to the D’815 application
being filed. Because the PTO database was used to run the search for these field
classifications, the examiner understood the D’815 design to be new and different from
the D’087 and D’677 patents.
73.

In addition to the D’815 patent discussed above, Samsung has also

obtained numerous other U.S. Design Patents. 36 By granting these design patents, the
PTO necessarily considered all of these Samsung designs to be new and distinctly
patentable designs.
C.
For Certain Of The Asserted Design Patents, Apple Is Trying To
Recapture A Claim Scope That It Expressly Disavowed During Prosecution To
Overcome A Prior Art Rejection
74.

I understand that under the doctrine of “prosecution history estoppel” (or

“file-wrapper estoppel”) patent applicants who have made narrowing amendments to an
application to avoid rejection cannot later seek to broaden the scope of their patents to
cover the same subject matter they previously ceded. Festo Corp. v. Shoketsu Kinzoku
Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 733-734 (2002).
75.

I have reviewed the entire prosecution history of the D’790 patent. While

prosecuting the D’790 patent, the applicants originally submitted three figures on August

36

See supra n.35.

30

20, 2007 depicting squares in columns and rows, with what appears to be a missing row
above the bottom row. Original Figure 1 was the following:

APLPROS0000012063
76.

On April 15, 2009, the applicants submitted a Second Preliminary

Amendment that included ten figures, labeled Figure 2 through Figure 11. These figures
also included squares oriented in columns and rows, but with slight variations among the
drawings. For example, Figure 2 included twenty squares, arranged in four columns of
five squares. Figure 3 was identical except that one square was missing from the fourth
column: 37

37

The other figures included additional variations on this grid pattern, including additional missing squares
and rows, a 3x4 grid pattern, a 5x4 grid pattern, and squares and rectangles with square corners.

31

APLPROS0000012140-141
77.

On March 30, 2010, the US PTO issued an office communication to the

applicants rejecting the claim under 35 U.S.C. § 103(a) as being unpatentable in light of a
prior art reference called Wada. 38 See APLPROS0000012212. Here is the figure from
the Wada reference cited by the examiner:

38

United States Patent Application 2006/0107207, filed Jan. 4, 2005; published May 18, 2006; and
ultimately issued as United States Patent 7,587,680 on Sept. 8, 2009.

32

78.

According to the examiner, “[i]t would have been obvious to a designer of

ordinary skill in the art at the time the invention was made to have arrived at the claimed
design, which is a series of squares lined up in rows and columns.”
APLPROS0000012213.
79.

On May 14, 2010, the applicant submitted an amendment and reply,

asking the PTO among other things to cancel Figures 2 through 11 and to replace Figure
1 with the following image:

33

APLPROS0000012232.
The applicant sought to overcome the rejection by distinguishing the Wada reference,
noting that Wada disclosed a matrix of 17 squares in 4 columns. The first column having
5 squares, and the remaining columns having 4. The applicant stated that his design was
a matrix of 16 squares, each with rounded corners, provided in 4 columns.
Each column has 4 rounded squares. The first three rows of rounded
squares in each column are spaced equally apart. The third and fourth

34

rows of rounded squares in each column is [sic] separated by a space equal
to about one rounded square, giving the impression of a “missing row” of
rounded squares. Thus, the appearance of the claimed design in [sic] quite
different from the cited reference. As such, the rejection is improper and
should be withdrawn.
APLPROS0000012230.
80.

On July 21, 2010, the PTO issued a Notice of Allowability for a Design

Application in response to the applicant’s May 14, 2010 amendment.
APLPROS0000012238-39. The examiner allowed the amended claim and accepted the
drawing filed on May 14, 2010. Id.
81.

On November 23, 2010, the PTO granted the application and sent an issue

notification.
82.

Based on the foregoing history from the D’790 file wrapper, it is my

opinion that the applicant overcame the 35 U.S.C. § 103 rejection by amending the patent
claim to no longer include a solid matrix of evenly spaced rows and columns of squares.
Instead, it is my opinion that the May 14, 2010 amendment limited the claim of the patent
application to a matrix of 16 squares where the third and fourth rows are spaced farther
apart than the other rows, giving the impression that there is a row of squares missing
from between them.
83.

It is also my opinion that the patent examiner issued the patent with the

understanding that the claim covered only the amended Figure 1, as described in the
applicant’s May 14, 2010 amendment, and that the claim did not cover any other design
alternative or embodiment, including any of the designs reflected in the figures that the

35

applicant previously submitted and sought to cancel. Thus, it is my opinion that the
scope of the D’790 patent is limited to what is shown in the single patent drawing, and
does not include any design that does not give the impression of a missing row of squares
between the third and fourth rows.
D.
The Drawings Of Certain Of The Asserted Design Patents Are
Ambiguous Or Unclear
84.

Design patent drawings must comply with 37 CFR 1.152, and the MPEP

sets out detailed instructions for complying with this regulation. 39 Among these
guidelines are instructions on the use of broken lines.
85.

In particular, the MPEP's guidelines cover only two uses of broken lines:

(1) "to disclose the environment related to the claimed design," and (2) "to define the
bounds of the claim." 40 Both of these usages refer to broken lines that appear outside the
claimed design. There are no instructions on using broken lines within a design. Indeed,
the guidelines generally prohibit broken lines from intruding upon the claimed design. 41
("In general, when broken lines are used, they should not intrude upon or cross the
showing of the claimed design.") This is because "[s]uch dotted lines may obscure the
claimed design and render the disclosure indefinite." 42
86.

The MPEP also requires that where broken lines showing the environment

of a design "must necessarily cross or intrude upon the representation of the claimed
design and obscures a clear understanding of the design, such an illustration should be
included as a separate figure in addition to the other figures which fully disclose the

39
40
41
42

See MPEP 1503.02.
Id.
Id.
Id.

36

subject matter of the design." 43 When broken lines are used, it is important that the
description in the patent explicitly identifies their purpose.44 Also, because "it is possible
that broken lines with different purposes may be included in a single application, the
description must make a visual distinction between the two purposes." 45
87.

The MPEP also prohibits broken lines from being used "to indicate the

relative importance of parts of a design." 46 Indeed, "[d]otted lines for the purpose of
indicating unimportant or immaterial features of the design are not permitted." 47
88.

There is no instruction in the MPEP on the proper or permissible use of

broken lines within the bounds of a design. As such, it is my opinion that using dotted or
broken lines for a purpose other than showing the environment of the design or showing
the boundary of the design is uncommon and unconventional and that even if not
expressly prohibited by the MPEP, it could likely cause confusion and render the design
indefinite.
89.

The MPEP also prohibits broken lines from being used to show hidden

planes and surfaces which cannot be seen through opaque materials. 48 The USPTO’s
Guide to Filing a Design Patent further instructs “that elements visible behind transparent
surfaces should be shown in light, full lines, not broken lines.” 49
90.

I have reviewed all of the design patents asserted by Apple in this case and

confirmed that all of them utilize broken lines. In addition, all of the patents, except the

43

Id.
Id.
45
Id.
46
Id.
47
Id.
48
Id.
49
USPTO, A Guide to Filing a Design Patent, Drawing Examples, http://www.uspto.gov/web/offices/
pac/design/drawing.html.
44

37

D’305 and D’334 patents, include broken lines within the outer boundary limits of the
design.
91.

In the case of the D’677 patent, broken lines are present in every figure.

In figures 1 and 3, there are broken lines both outside and inside the boundaries of the
design drawing. There is no inclusion in the Description section of D’677 describing the
purpose or purposes of these broken lines.
92.

It is therefore my opinion that the use of the broken lines in the D’677

patent are not in conformity with the guidelines and requirements of the MPEP and could
cause confusion to someone trying to interpret the figures of the patent. For example, it
is unclear whether the circle made of broken lines in Figures 1 and 3 is intruding on the
underlying design or otherwise covering the claimed design. If that is the case, the
MPEP requires that a separate figure be included that shows the portion of the design that
is intruded upon. 50
93.

In the D’087 patent, the Description indicates that “The broken lines,

within the claimed design, in embodiments 1, 3, and 5 that depict a large rectangular
shape, indicate a non claimed shape below the continuous front surface and are for
illustrative purposes only.” There is no shading in the D’087 patent drawings that would
indicate that any surface is transparent. 51 (“Oblique line shading must be used to show
transparent, translucent and highly polished or reflective surfaces, such as a mirror.”). In
figures 11, 27, and 43, there appears to be a rectangular shape shown in regular, full lines
that is the same size, shape, and location as the rectangular shape in broken lines in
figures 3, 19, and 35. In none of the patent’s figures is there a rectangular shape drawn in

50
51

See MPEP 1503.02
Id.

38

thin, full lines that would indicate that it was behind a transparent surface. And as
indicated above, broken lines cannot be used to show elements that cannot be seen
through opaque materials. 52
94.

It is therefore my opinion that there are inconsistencies in the various

drawings of the D’087 patent. Using the MPEP’s guidelines as a reference, I understand
that the large rectangular shape in figures 3, 19, and 35 is not below a transparent surface.
I also understand that the figures 11, 27, and 43 also do not claim a rectangular shape
below a transparent surface, yet the description of the patent indicates that there is a noclaimed rectangular shape below the purportedly continuous front surface. Figures 11,
27, and 43 do not include a rectangular on or above this purported front surface, however,
as do figures 3, 19, and 35.
95.

It is therefore my opinion that the use of broken lines in the D’087 patent

is contrary to the prescribed usage described in the MPEP and that this usage creates
ambiguity and inconsistency among the drawings.
E.
MAC OS 10.0 Was Not Disclosed to the Patent Office During
Prosecution of the ’891 Patent
96.

The ’891 patent was filed as application No. 12/012,384 on February 1,

2008, as a continuation of application No. 11/635,847 (filed on December 8, 2006), itself
a continuation of application No. 10/193,573 (filed on July 10, 2002).
97.

On February 1, 2008, the Applicant submitted an Information Disclosure

Statement including references that were “previously sent to the Patent and Trademark
Office during prosecution of” the parent applications. Of the cited references, ten were
issued patents and six were continuations.

52

Id.

39

98.

As part of the filed application, the Applicant disclosed several

“traditional windows.” Figure 2 was a screenshot of a “typical window 210 that has title
bar 203 and buttons 205, 207 and 209 for minimizing, maximizing, and closing the
window.” ’891 file history application at 2-3, Par. 5. Although the program is not
identified in the specification, it is labeled as Microsoft Word 2000. Figures 3-6 also
appear to be Microsoft Windows, though they are not identified in the draft application as
such. Figures 7-11 and 16-21 are labeled as windows displayed “according to one
embodiment of the present invention.”
99.

On December 4, 2009, the Examiner issued an office action rejecting a

number of claims under 35 U.S.C. §102(e) as being anticipated by a reference called
“Aoki.”
100.

On March 4, 2010, the Applicant amended the claims in response to the

office action. Specifically, the Applicant amended independent claims 1, 19, 26, 44, 51,
and 69 to add some variation of the limitation “wherein the first window has been
displayed independently from a position of a cursor on the screen.” The Applicant
also submitted an argument that Aoki fails to disclose this limitation. Mar. 4, 2010
Amendment at 22.
101.

Also on March 4, 2010, Applicant submitted an Information Disclosure

Statement disclosing 13 patents.
102.

On April 8, 2010, a telephonic interview was held with the Examiner. The

Interview Summary notes indicate that the “applicant’s representative and examiner
discussed the claimed invention in view of Aoki et al but no agreement was reached.”
April 8, 2010 Interview Summary.

40

103.

On June 7, 2010, the Examiner issued a second office action. The

Examiner once again issued a rejection in light of Aoki. However, some amended claims
were allowed. The Examiner allowed amended independent claims 1, 19, 26, 44, 51, and
69. The Examiner stated:
The amended independent claims 1, 19, 26, 44, 51, and 69
include “displaying the first window independently from a
position of a cursor on the screen.” Aoki fails to disclose
such limitation. As a result Aoki fails to disclose closing
the first window in response to a determination that the
timer expired; wherein the first window does not close in
response to any input from a user input device of the digital
processing system, wherein the first window has been
displayed independently from a position of a cursor on the
screen, as recited in the above claims.
June 7, 2010 amendment at 5-6. The Examiner expressly indicated that Aoki failed to
disclose “displaying the first window independently from a position of a cursor on the
screen.” This limitation is also the only limitation that was added after the previous
office action. Therefore, it is my opinion that the Examiner allowed the independent
claims because the limitation “displaying the first window independently from a position
of a cursor on the screen” was not in the prior art before the Examiner.
104.

On August 9, 2010, the Applicant responded to the office action by

cancelling the remaining rejected claims.
105.

The patent issued on December 14, 2010.

106.

I understand that Mac OS 10.0 was released on March 24, 2001, which

means it is prior art to the ’891 patent. I understand that it is a product that was
developed, sold, and marketed by Apple, itself.

41

107.

I did not see any evidence in the ’891 prosecution history of the disclosure

of Mac OS 10.0. I also did not see anything in the file history that indicated the
Examiner knew about Mac OS 10.0.
108.

As I mention above, Applicants and their representatives are required to

disclose material information that they are aware of to the PTO under their duty of
disclosure.
109.

The Federal Circuit recently issued an en banc opinion in Therasense Inc.

v. Becton Dickinson and Co,, 649 F.3d 1276 (Fed. Cir. 2011). In Therasense, the Federal
Circuit considered issues related to inequitable conduct including materiality and intent.
According to Therasense, to prevail on an inequitable conduct claim, “the accused
infringer must prove by clear and convincing evidence that the applicant knew of the
reference, knew that it was material, and made a deliberate decision to withhold it.” Id. at
1290. The Court maintained that materiality and intent are separate elements, but
eliminated the “sliding scale” approach that balanced materiality with intent. Id.
However, intent may be inferred from indirect and circumstantial evidence. To meet the
clear and convincing standard, the specific intent to deceive must be “the single most
reasonable inference able to be drawn from the evidence,” and the evidence “must be
sufficient to require a finding of deceitful intent in light of all the circumstances.” Id.
(citing Star Scientific Inc. v. R.J. Reynolds Tobacco Company, 537 F.3d 1357, 1366 (Fed.
Cir. 2008); Kingsdown Med. Consultants, LTD. v. Hollister Inc., 863 F.2d 867, 873 (Fed.
Cir. 1988)). That is “when there are multiple reasonable inferences that may be drawn,
intent to deceive cannot be found.” Id. at 1290-91 (citing Scanner Techs. Corp. v. ICOS
Vision Sys. Corp., 528 F.3d 1365, 1376 (Fed. Cir. 2008)). Further, the court held that

42

materiality is now to be determined using the “but-for” standard, which means the
withheld prior art is material only if the PTO would not have allowed a claim if it had
been aware of the undisclosed prior art. Id. at 1291. The court also stated that an
exception to the “but-for” standard of materiality exists, the so-called “affirmative
egregious misconduct” exception. Id. at 1292. That determination is made using a
preponderance of the evidence standard while giving claims their broadest reasonable
construction. I understand the materiality standard set forth in Therasense is now the
standard to be applied in evaluating the issue of inequitable conduct.
110.

I have considered whether the PTO would have allowed the asserted

independent claims “but for” the fact that it was not aware of Mac OS 10.0.
111.

I understand that Samsung’s expert, Trevor Darrell, has opined that Mac

OS 10.0 renders the claims of the ’891 patent invalid as anticipated.
112.

I understand that Dr. Darrell has opined that Mac OS 10.0 includes all of

the limitations of the asserted claims, including the limitation “displaying the first
window independently from a position of a cursor on the screen.”
113.

Because the Examiner allowed the claims because of that limitation, it is

my opinion that, had the PTO been aware of Mac OS 10.0, it would not have issued the
asserted claims.
114.

I am not rendering an opinion on intent. However, if the Judge or Jury

finds intent to deceive on the part of the ’891 inventors or their representatives, it is my
opinion that they committed inequitable conduct by failing to disclose Mac OS 10.0 to
the patent office.

43

IV.

CONCLUSIONS
115.

For the reasons stated herein, it is my opinion that all of the Apple

Asserted Design Patents are limited to a narrow scope, and do not encompass any designs
that are not exactly the same as the designs depicted in the drawings of the Asserted
Design Patents.
116.

It is also my opinion that the D’790 patent is limited to what is shown in

the single patent drawing, and does not include any design that does not give the
impression of a missing row of squares between the third and fourth rows.
117.

It is also my opinion that the drawings of the D’677 and D’087 patents are

unclear or ambiguous as they do not use broken lines in accordance with the instructions
laid out in the Manual of Patent Examining Procedure.
118.

It is also my opinion that the inventors of the ‘891 patent and their

representatives failed to disclose material and non-cumulative prior art to the patent
office during prosecution of the ‘891 application. If the Judge or Jury finds intent to
deceive, it is my opinion that this failure to disclose rises to the level of inequitable
conduct.

Respectfully submitted on March 22, 2012.

________________________
Nicholas P. Godici

44