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 5

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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,

Case No.

11-cv-01846-LHK

EXPERT REPORT OF PETER W.
BRESSLER, FIDSA

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,
Defendants.

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**CONFIDENTIAL – CONTAINS MATERIAL DESIGNATED AS HIGHLY
CONFIDENTIAL – ATTORNEYS’ EYES ONLY PURSUANT TO A PROTECTIVE
ORDER**

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EXPERT REPORT OF PETER W. BRESSLER
Case No. 11 cv-01846-LHK

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L.A. Gear v. Thom McAn Shoe Co., 988 F.2d 1117, 1123 (Fed. Cir. 1993). I understand that “[a]

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design is not dictated solely by its function when alternative designs for the article of manufacture

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are available.” See Best Lock Corp. v. Ilco Unican Corp., 94 F.3d 1563, 1566 (Fed. Cir. 1996)

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(citation omitted). “When there are several ways to achieve the function of an article of

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manufacture, the design of the article is more likely to serve a primarily ornamental purpose.”

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L.A. Gear, 988 F.2d at 1123. And “if other designs could produce the same or similar functional

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capabilities, the design of the article in question is likely ornamental, not functional.” Rosco, Inc.

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v. Mirror Lite Co., 304 F.3d 1373, 1378 (Fed. Cir. 2002).

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29.

I also understand that that the use of labeling or logos cannot be used to escape

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design patent infringement. L.A. Gear, 988 F.2d at 1126.

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V.

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MY UNDERSTANDING OF THE ORDINARY OBSERVER
30.

I have been informed by counsel that the “ordinary observer” is a person

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possessing “ordinary acuteness, bringing to the examination of the article upon which the design

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has been placed that degree of observation which men of ordinary intelligence give.” Gorham

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Co. v. White, 81 U.S. 511, 528 (1871). Accordingly, it is my opinion that the ordinary observer

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for the designs in question is a member of the general consuming public that buys and uses

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smartphones or tablets. In the context of smartphones and tablets, the ordinary observer may be

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observing and purchasing the devices in a retail environment, such as a carrier store or electronics

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store, or in an online environment, such as a carrier website or an electronics store website. In

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order to add to my understanding of how the ordinary observer would see and evaluate

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smartphones and tablets, I have visited carrier stores and on-line retailers for purposes of this

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Report.

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VI.

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MY UNDERSTANDING OF THE LAW ON TRADE DRESS FUNCTIONALITY
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I have not been asked to offer an opinion on the law; however, as an expert

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opining on trade dress functionality, I understand that I am obliged to follow existing law. I have

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been informed by counsel that product design trade dress is entitled to protection only if it is

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nonfunctional. A trade dress is functional “if it is essential to the product’s use or if it [favorably]

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EXPERT REPORT OF PETER W. BRESSLER, FIDSA
Case No. 11 cv-01846-LHK

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