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

Filing 999

Administrative Motion to File Under Seal filed by Samsung Electronics America, Inc.(a New York corporation), Samsung Electronics Co. Ltd., Samsung Telecommunications America, LLC(a Delaware limited liability company). (Attachments: #1 Proposed Order Granting Motion to Seal, #2 Samsung's Opposition to Apple's Motion to Exclude Testimony of Samsung's Experts, #3 Declaration of Joby Martin in Support of Samsung's Opposition, #4 Exhibit A to the Martin Declaration, #5 Exhibit B to the Martin Declaration, #6 Exhibit C to the Martin Declaration, #7 Exhibit D to the Martin Declaration, #8 Exhibit E to the Martin Declaration, #9 Exhibit F to the Martin Declaration, #10 Exhibit G to the Martin Declaration, #11 Exhibit H to the Martin Declaration, #12 Exhibit I to the Martin Declaration, #13 Exhibit J to the Martin Declaration, #14 Exhibit K to the Martin Declaration, #15 Exhibit L to the Martin Declaration, #16 Exhibit M to the Martin Declaration, #17 Exhibit N to the Martin Declaration, #18 Exhibit O to the Martin Declaration, #19 Exhibit P to the Martin Declaration, #20 Exhibit Q to the Martin Declaration, #21 Exhibit R to the Martin Declaration, #22 Exhibit S to the Martin Declaration, #23 Proposed Order Denying Apple's Motion to Exclude Testimony of Samsung's Experts)(Maroulis, Victoria) (Filed on 5/31/2012)

EXHIBIT F
Redacted Public
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UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN JOSE DIVISION
____________________________________
APPLE, INC., a California corporation
Plaintiff,
v.
SAMSUNG ELECTRONICS CO., LTD., a
Korean corporation; SAMSUNG
ELECTRONICS AMERICA, INC., a New
York corporation; and SAMSUNG
TELECOMMUNICATIONS AMERICA,
LLC, a Delaware limited liability company,
Defendants.
___________________________________

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Case No. 11-cv-01846-LHK

CORRECTED REBUTTAL EXPERT REPORT OF SAM LUCENTE

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I.

INTRODUCTION

I, Samuel Lucente, have been retained by Quinn Emanuel Urquhart & Sullivan, LLP,
attorneys for Defendants Samsung Electronics Co., Ltd., Samsung Electronics America, Inc. and
Samsung Telecommunications America, LLC (hereinafter “Samsung”) to provide opinions and
testimony pursuant to Federal Rule of Civil Procedure 26(a)(2) about certain patents, trade dress
and trademarks asserted by Apple, Inc. (“Apple”) in the above-captioned action.
II.

BACKGROUND/QUALIFICATIONS

I received my Bachelors of Science in Design (with high distinction) from the College of
Design, Architecture, Art and Planning of the University of Cincinnati in 1981. I have worked
for over thirty years as an industrial designer in the technology industry. I am currently employed
as the Designer and Principal of Lucente Design, LLC. Lucente Design offers consulting and
advice to clients on complex design problems. I have previously worked as a designer for IBM
Corporation, Netscape Corporation, and Hewlett-Packard Corporation. In addition, I have served
as a consultant for numerous other companies in the information technology and consumer
electronics industries. A copy of my current Curriculum Vitae is attached as Exhibit 1, which
contains a complete listing of my education and experience.
I am the author of several articles in the area of industrial design and I frequently lecture
about design at industry conferences and universities. A partial list of my design-related
publications and speaking engagements can be found on my Curriculum Vitae attached as
Exhibit 1.
I am currently a member of the Industrial Designers Society of America (IDSA), and
previously served as the At-Large Director from 2009 to 2011.
I am also the named inventor on thirty-five technology-related patents in the United
States.
My consulting fee for this case is $650 per hour.
III.

MATERIALS CONSULTED

Beyond my credentials and experience, I have considered the materials listed in attached
Exhibit 2 in forming the opinions expressed in this report. However, I am informed that
depositions and document productions have not yet concluded, and that Apple has continued to
produce pertinent documents after the depositions of the inventors, industrial designers,
interaction designers, and other witnesses relevant to my analysis. I reserve the right to modify or
supplement this report and my opinions based on additional documents, discovery responses,
deposition testimony and any other evidence as this matter progresses. If necessary, I will
supplement Exhibit 2 to incorporate such additional materials.

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IV.

SUMMARY OF OPINIONS
For the reasons set forth in this report, I have formed the following opinions:
(1) An ordinary observer would not find the graphical user interfaces of the Accused
Products1 to be substantially the same as the D627,790, D604,305 and D617,334 patents
(together, the “Design Patents”).
(2) Consumers would not associate the Accused Products, the icons of the Accused
Products, or the graphical user interfaces of the Accused Products with any particular
source, sponsorship, affiliation, or connection other than Samsung.

This report serves as a summary of my expert opinions and testimony. I reserve the right
to modify or supplement this report and my opinions based on additional documents, discovery
responses, deposition testimony, and any other evidence that is introduced as this matter
progresses. I further reserve the right to render opinions in response to any rebuttal opinions
offered on behalf of Apple.
V.

RELEVANT LEGAL PRINCIPLES

I am not an expert in the law of design patents, trademarks, or trade dress. However, for
the purpose of rendering the opinions set forth in this report, counsel has advised me of certain
legal principles relevant to my analysis.
Design Patent Infringement
I am informed that design patent infringement analysis is a two-step process.
First, the court must construe the claims of the design patent to determine their meaning
and scope.2 I understand that design patents typically are claimed as shown in drawings, but that
courts have an obligation to provide a verbal claim construction as well. I also understand that
“[w]here a design contains both functional and nonfunctional elements, the scope of the claim
must be construed in order to identify the non-functional aspects of the design as shown in the
patent.”3 I understand that this is because design patents do not protect functional aspects of a
design, only the ornamental aspects of the design. 4

1

I am informed by counsel that Apple has claimed that the following Samsung products
infringe on the D627,790, D604,305 and D617,334 patents (the “Design Patents”): Captivate,
Continuum, Droid Charge, Epic 4G, Fascinate, Gem, Galaxy i9000, Galaxy S 4G, Indulge,
Infuse 4G, Mesmerize, Showcase, Galaxy S Showcase i500, and Vibrant. I will refer to these
products collectively throughout my report as the “Accused Products” or the “Samsung
Products.”
2
OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1404-05 (Fed. Cir. 1997).
3
Lee v. Dayton-Hudson Corp., 838 F.2d 1186, 1188 (Fed. Cir. 1988)
4
Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1293-94 (Fed. Cir. 2010).
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Counsel has informed me that courts have articulated tests for functionality of design
patents in different ways. One is that a design element is functional “if it is essential to the use or
purpose of the article or if it affects the cost or quality of the article.”5 Another is that the design
is “deemed to be functional when the appearance of the claimed design is ‘dictated by’ the use or
purpose of the article.”6
Second, after the functional aspects of the design are removed from the analysis, “the
patented and accused designs are compared for overall visual similarity.”7 This is done pursuant
to an “ordinary observer” test:
[I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives,
two designs are substantially the same, if the resemblance is such as to deceive such an
observer, inducing him to purchase one supposing it to be the other, the first one patented
is infringed by the other.8
I understand that to prove infringement, Apple “must establish that an ordinary person
would be deceived by reason of the common features in the claimed and accused designs which
are ornamental.”9 I understand that “the deception that arises is a result of similarities in the
overall design, not of similarities in ornamental features considered in isolation.”10
I have been informed that for purposes of an infringement analysis an ordinary observer
is “a person who is either a purchaser of, or sufficiently interested in, the item that displays the
patented designs and who has the capability of making a reasonably discerning decision when
observing the accused item’s design whether the accused item is substantially the same as the
item claimed in the design patent.”11
I have also been informed that “the ordinary observer is deemed to view the differences
between the patented design and the accused product in the context of the prior art. When the
differences between the claimed and accused design are viewed in light of the prior art, the
attention of the hypothetical ordinary observer will be drawn to those aspects of the claimed
design that differ from the prior art. And when the claimed design is close to the prior art
designs, small differences between the accused design and the claimed design are likely to be
important to the eye of the hypothetical ordinary observer.”12

5

Amini Innovation Corp. v. Anthony Cal. Inc., 439, F.3d 1365, 1372 (Fed. Cir. 2006).
L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123 (Fed. Cir. 1993)
(citation omitted).
7
Elmer v. ICC Fabricating, 67 F.3d 1571, 1577 (Fed. Cir. 1995).
8
Gorham Mfg Co. v. White, 81 U.S. (14 Wall.) 511, 528 (1871).
9
Read Corp. v. Portec, Inc., 970 F.2d 816, 825 (Fed. Cir. 1992).
10
Amini, 439 F.3d at 1371.
11
See Arminak & Assocs., Inc. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314, 1323 (Fed.
Cir. 2007).
12
Egyptian Goddess Inc. v. Swisa Inc., 543 F.3d 665, 676 (Fed. Cir. 2008).
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I have also been informed that when conducting an infringement analysis, it is erroneous
to compare an asserted design patent with only a portion of the design of the product accused of
infringement.13 I have also been informed that the portions of the accused product that are
relevant to the ordinary observer analysis include “all ornamental features visible during normal
use of the product.”14
Trade Dress and Trademark Infringement
I have been informed by counsel that to establish trademark or trade dress infringement,
Apple must prove that the accused Samsung products cause a likelihood of confusion among
consumers as to the source, sponsorship, affiliation or connection of Samsung’s products.15
I have also been informed that the Court evaluates eight factors in assessing likelihood of
confusion,16 only several of which are relevant to my analysis. Specifically, I will focus on the
strength of the asserted trademarks and trade dress; the similarity in appearance of the parties’
trade dress and trademarks and Samsung’s intention in selecting the accused trademarks and
trade dress. I will evaluate each of the factors listed above as it relates to the GUI elements of the
products at issue from the perspective of an expert in graphical user interface design.
I understand that the strength of Apple’s asserted trade dress and trademarks is evaluated
in the context of the market for smart phones and tablets. In other words, where similar
trademarks and trade dress permeate the marketplace, the strength of the asserted trade dress
mark decreases.17
I understand that the parties’ trade dress and trademarks are evaluated as a whole when
assessing similarity. I also understand that the display of the parties’ respective logos can be
effective in helping consumers differentiate between the products, especially when consumers
are familiar with the parties’ brand names.18

13

Contessa Food Products, Inc. v. Conagra, Inc., 282 F.3d 1370, 1379-80 (Fed. Cir.

2002).
14

Id. at 1780.
Disc Golf Ass'n v. Champion Discs, 158 F.3d 1002, 1005 (9th Cir.1998).
16
These factors are (1) the strength of the mark; (2) the proximity or relatedness of the
goods; (3) similarity in appearance, sound, and meaning; (4) evidence of actual confusion; (5)
the degree to which the parties’ marketing channels converge; (6) the type of goods and the
degree of care customers likely exercise in purchasing them; (7) defendant’s intention in
selecting and using the allegedly infringing trade dress; and (8) the likelihood that the parties will
expand their product lines. AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 349 (9th Cir. 1979).
17
One Industries, LLC v. Jim O’Neal Distributing, Inc., 578 F.3d 1154, 1164 (9th Cir.
2003).
18
Conopco, Inc. v. May Department Stores Co., 46 F.3d 1556, 1567-1571 (Fed. Cir.
1994) .
15

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I understand that in assessing Samsung’s intent, the relevant inquiry is whether Samsung
intended to confuse consumers by adopting the accused trade dress and trademarks. 19
I have been informed that trade dress protection may not be claimed for product features
that are functional. 20 Accordingly, my analysis takes into account the functionality of the
features of Apple’s asserted trademarks and trade dress.
VI.

SAMSUNG’S APPROACH TO DESIGN

As part of my analysis of Samsung’s accused designs, it is important to study Samsung’s
approach to design. A company’s design principles and processes, or lack thereof, ultimately
determine the actual designs that it manufactures and markets.
I studied Samsung’s design approach based on several documents listed in Exhibit 2,
have considerable experience in assessing design systems as a design manager and have
specifically benchmarked various consumer electronics and information technology company’s
design approaches in the past, including Samsung’s.
Based on my research and my experience in the field of consumer electronics and
information technology, it is clear that Samsung pursues world-class design grounded in defined
principles that are reflected in the visual impression of its offerings in the marketplace and its
numerous design awards. Samsung’s focus on developing a unique look and feel dates back over
15 years. The company now has over 1000 designers world-wide who have adopted common
design principles used to create well-designed products.
One key way to drive the adoption of the Samsung unique design approach was through
education. The company initiated programs including, (1) a Design Membership Program to
support talented college level students through sponsored projects to increase the design skills of
design hires; (2) the Innovative Design Lab of Samsung (IDS) as a full-time, one year long inhouse designer training program to increase the skills of designers internally; and (3) the Design
Power Program, which exposed high potential internal designers to different cultures and
industries in order to encourage creative thinking with a global perspective. 21 These efforts show
a commitment to developing strong design and creative skills internally.

19

One Industries, 578 F.3d at 1164.
TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 28-29 (2001).
21
IDSA National Conference Presentation, Korea Samsung Design, Sangyeon Lee,
September 19, 2006
20

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One design publication praised Samsung’s effort, and noted the impact of these key
features:
Determined to counter the lackluster reputation of its electronic products, in the
mid-’90s Samsung launched the equivalent of a design “race to the moon” by
establishing an in-house “university” and putting its designers through an
intensive course in global design processes. Today Samsung is acclaimed for its
innovation and style.”22
Previously, Samsung had struggled with its internal visual design style, using several
external design firms that produced an array of varying, incoherent design directions. In 2001,
Samsung began to address organizational issues by forming a Design Committee to coordinate
design activities directly with top management and across various design centers world-wide. 23
Internal designers became more respected and took on major design projects typically done by
outside consultants. This allowed a Samsung specific design process and visual look and feel to
emerge.
The Samsung design philosophy is called the Balance of Reason and Feeling,24 which is
important to note because it defines not only the Samsung visual identity system, but also how
the company perceives its identity relative to other competitors such as SONY or Apple. In one
article, one of the Samsung’s designers explains the evolution of the design ethos, as follows:
Samsung’s in-house school gave its designers the tools and confidence to risk
thinking differently. But there remained an equally vexing challenge: The
company lacked a universal design ethos--a measurable, clearly defined set of
principles that its designers could replicate and its customers could intuitively
understand. Samsung’s instinct was to develop a design language that grew out of
Korean culture. But that proved equally hard to define. China’s Han, Ming, and
Tung dynasties, as well as the Mongols, Russians, Japanese, and even American
missionaries had all left elements of their cultures on the peninsula. Unearthing a
true Korean character proved difficult, but Samsung discovered it in the Tae Kuk-the yin-yang symbol found on the South Korean flag that represents the
simultaneous unity and duality of all things. From the Tae Kuk, Samsung
developed its touchstone: “Balance of Reason and Feeling.
Reason and feeling are opposites, but they are essential to each other,” says
Sangyeon Lee, who heads Samsung’s San Francisco design studio. “In design
terms, ‘reason’ is rational, sharp-edged, and very geometric. ‘Feeling’ is soft and
organic--it makes an emotional connection with the user. Taken together, reason
and feeling give us a way to frame our design identity, which is always evolving.”
22

http://www.cdf.org/issue_journal/samsungs_lessons_in_design.html
Samsung: Design Strategy at Samsung Electronics: Becoming a Top-Tier
Company, 2008 Design Management Institute and IDSA National Conference Presentation,
Korea Samsung Design, Sangyeon Lee, September 19, 2006
24
http://www.fastcompany.com/magazine/101/samsung.html?page=0%2C3
23

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A task force spent a year developing and perfecting a scale, with reason at one
end and feeling on the other, which is now used to ensure that every single
product design hews to Samsung’s brand positioning. That generally falls near the
scale’s center--thereby striking a balance. Samsung did the same with two other
key words: “simplicity” and “complexity.”
Here, Samsung generally hews closer to simplicity--it wants its designs to be
intuitive and humanistic. Samsung even maps its competitors on the two scales:
In one recent analysis, Apple occupied the “simplicity/feeling” zone, with Sony in
the “complexity/reason” field. Samsung seeks out the areas where there are no
competitors--that’s where opportunity lies.25
To make the overall design ethos more useful in day-to-day design activities, designers
typically create a master checklist of design principles. These principles can apply to product
designs, user interface designs or icon design. The design principles that defined this unique
Samsung visual identity were communicated publically in a Samsung presentation at the IDSA
National Conference:26
Reason is comprised of the principles of: Lifestyling (Comprehend Lifestyle
Needs: Problems, Trends, Behavior, Values, Unmet needs); Innovative (Stay One
Step Ahead: Differentiation, Fresh, Inspiring, Clever, Unique ideas); Coherent
(Balance Consistency and Variety: Identifiable, Unified, Market-sensitive,
Integral).
Feeling is comprised of Harmonious (Harmonize with Environment: Systems,
Safety, Green, Appropriateness, Accord); Intuitive (Convey Agreeable Use and
Meaning: Instinctive, Direct, Friendly, Simple); Interactive (Design for the
Experience: Exciting, Fun, Sensible, Cool, Satisfying.)
The following images, taken from the IDSA presentation, give one a visual sense of the
overall Samsung visual design language illustrating the two design principles of Harmonious and
Intuitive applied to the areas of digital media. They show the use of functional and simple forms
reduced to essential design elements. There is a focus on order and precision with little
ornamentation and complexity.

25

http://www.fastcompany.com/magazine/101/samsung.html?page=0%2C3
IDSA National Conference Presentation, Korea Samsung Design, Sangyeon Lee
September 19, 2006

26

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Samsung Design Principles27
27

IDSA National Conference Presentation, Korea Samsung Design, Sangyeon Lee
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As a world leader in consumer electronics, Samsung’s design principles, as defined,
result in world-class designs that are recognized by the design profession as good design.
By 2005, Samsung surpassed Apple, Nike and HP by garnering more International
Design Excellence Awards (IDEA) than any other corporation. 28 IDEA is the leading product
design competition in America and one of the largest internationally. Many of these awards were
in the concept design category, showing an increased focus on creativity and innovation. This is
a clear indication of Samsung’s effort to innovate and differentiate the company through a
unique, world-class look and feel.
Samsung is clearly committed to creating a differentiated visual identity in the
marketplace. In my opinion, it follows that these same design principles were reflected in the
accused product designs, showing that the designs originated from a unique Samsung look and
feel based on their own design approach. Based on my experience in design management, the
claim that Samsung “slavishly copied” Apple’s designs is inconsistent with Samsung’s effort to
develop its own unique design ethos and identity over the last 15 years.
Furthermore, given the evolution of Samsung’s visual identity, it is clear that the
alternative designs suggested by Kare (see Kare Report ¶¶ 45-52, Exhs. 6-13) do not align to the
visual identity of Samsung. It is important to analyze the Samsung designs in the context of
Samsung’s design language and visual identity. Kare clearly states that one of the fundamentals
of icon design is to align to “marketing or design considerations” (Id. ¶ 29.) The design solutions
of Samsung’s accused products align to the Samsung design principles outlined above; obviously
a critical “design consideration” of the Samsung designers.
Other factors related to design problem solving also drove Samsung’s overall design
solution, especially the icon layout, icon container and icon metaphors. For example in referring
to other fundamentals of icon design, Kare states that understanding the “target audience” and
“competitive landscape” is important. (Id. ¶ 29.) Yet, later she references various Samsung
documents dated 2008 or later on competitive analysis and icon explorations suggesting that
Samsung used these as a guide to create Samsung’s solutions. (Id. ¶¶ 87-90.) Using competitive
information and understanding customers is a typical part of a good design process and a key
step in understanding your target customer and the overall competitive landscape. But to simply
use these as a guide for Samsung designs would completely negate all of the work Samsung did
to create its own unique look and feel.

September 19, 2006
http://www.businessweek.com/magazine/content/05_27/b3941406.htm

28

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2006 Samsung Touchscreen Presentation29
In my opinion, it is design factors such as Samsung’s 2006 user interface designs, the
established Samsung design principles, and pre-existing functional design elements like the icon
dock and other prior art designs from as early as 1992 or even 1981, (discussed at length in my
March 22, 2012 invalidity report), that drove the overall design of the accused Samsung products.
(see generally March 22, 2012 Lucente Opening Report (“Lucente Op. Rep.”) The accused
products embody a highly functional and world-class design solution likely derived from a
thorough design problem-solving process, which assessed many typical user interface design
factors including the “fundamental of icon design ” noted by Kare ( Kare ¶¶ 25-32). Indeed, Kare
states that “aesthetics are a prime consideration, but issues mandated by a mobile phone
environment might include limited real-estate, touch screen ‘hit’ area space requirements, and
the relationship to the industrial design to the user interface.” At that time, from an industrial
design viewpoint, Samsung had the most advanced display technology for small mobile screens
and this particular icon grid layout exploits “the number and density of icons within a space,”
again, a consideration noted by Kare relevant to “optimizing for a user’s perception of ease of
use” (Id. ¶ 31.) I would assume that the Samsung user interface designers had access to this
advanced display technology and integrated the technology into their design solution. As
discussed in my earlier invalidity report, the use of an icon grid of rectangles with tightly
rounded corners provides an optimal and functional user interface design. In my opinion, it is the
most functional design for the “touch screen ‘hit’ area” noted by Kare above.

29

SAMNDCA00321552, SAMNDCA00321584, SAMNDCA00321593
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The icon grid layout conveys simplicity, predictability and order, all characteristics that
make a design more “Intuitive” – one of the Samsung design principles and most likely why
Samsung created the icon grid layout shown above. The alternative designs proposed by Kare
convey less simplicity and more complexity. And these alternative designs do not integrate many
of the proven icon layout designs noted in my invalidity report, that have been used successfully
on desktop screens and some mobile devices for many years. In reference to Apple’s “overall,
distinctive, graphical consistency,” Kare notes that “the uniform shape and precise placement in
a grid provides a sense of organization and unity” (Id. ¶ 13.) The simple fact is that both Apple
and Samsung applied a common, widely used icon grid layout to their designs due to the icon
grid’s effectiveness as a fundamental, functional element for human-computer interaction.
Although her opinion itself is equivocal, I cannot agree with Kare’s conclusion that
certain scattered Samsung documents regarding competitive analysis and perceived similarities
between Apple and Samsung phones “support the possibility that Samsung used Apple’s icon
design and layout as a guide in creating the icon designs and layout of the applications screens”
of the accused Samsung phones (Id. ¶ 51.) Based on my understanding of the Samsung design
approach, Samsung’s prior design concepts, the access to Samsung’s advanced display
technology, use of proven, functional elements, and the design considerations and problemsolving required to arrive at a final design, as well as the significant differences between the
Apple and Samsung products, it is my opinion that the facts do not support this accusation.
Rather, my opinion is that each company was pursuing world-class design solutions with
a common, widely known set of fundamental, functional elements for human-computer
interaction such as the icon grid and the icon dock, a shared “target audience,” a common display
technology, and expert design capabilities. Although the ultimate solutions of each company
share many of the same functional elements, both are clearly differentiated in the marketplace
and do not confuse customers. 30 Furthermore, other design alternatives proposed by Kare do not
align to Samsung’s design approach and, in my opinion, are less desirable and less functional
design choices. In the end, customers benefit from various easy-to-use solutions in the
marketplace.
I will now outline specific differences of the Accused Products as they relate to Apple’s
design patent, trade dress and trademark allegations.
VII.

THE ACCUSED PRODUCTS DO NOT INFRINGE THE ASSERTED DESIGN
PATENTS
A.

Design Patent D627,790

The D’790 is entitled “Graphical User Interface for a Display Screen or Portion Thereof.”
The patent states that the original application was filed June 23, 2007, and it was issued on
November 23, 2010.

30

See Expert Report of Michael Mazis, PhD, March 22, 2012, pages 4-5; Expert Report
of George Mantis, March 22, 2012, page 13.
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Figure of Design Patent D 627,790
Given that this design is for a graphical user interface screen, I will assume for the
purposes of this report that the rectangular outline centered within the larger rounded rectangular
shapes defines a display area. The rectangular shape of this element is driven by display screen
technology. Again, I will assume for this analysis that the upper 12 squares with rounded corners
and the lower 4 squares with rounded corners are selectable icons on a screen. The upper 12
icons are arranged in a grid layout. The lower four squares with rounded corners, which also are
assumed to be selectable icons, are placed at the lower edge of the graphical user interface
screen. Again for purposes of this analysis, I will assume that the lower row of rounded squares
represents a dock of frequently-used icons, which are visible on all or most of the menu screens
of an interface.
As detailed in my invalidity report (see, e.g., Lucente Op. Rep. at pp. 7-30) it is my
opinion that the claimed elements of the D’790 design are all functional, and not decorative,
whether taken as individual elements or the design as a whole.

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B.

Design Patent D604,305

According to the D’305 patent, the patent application was filed on June 23, 2007, and the
patent issued on November 17, 2009. The D’305, entitled “Graphical User Interface for a
Display Screen or Portion Thereof,” shows two variations of the same “design,” with one in
color and one in black and white. The overall rectangular outline of the D’305 figures matches
the rectangular outline that is centered within the larger rounded rectangular shapes in the D’790
Patent.

Figs. 1 and 2 of D604,305
Given that this patent has the same title as D’790, I once again assume for the sake of this
report that the upper 12 squares with rounded corners and the lower 4 squares with rounded
corners depict selectable icons on a display screen as defined in the D’790 description above. I
will assume for the sake of this report that the symbols and nomenclature at the top of the large
rectangular area are status indicators on a display screen.
As detailed in my invalidity report (Lucente Op. Rep. at pp. 19-24) it is my opinion that
the graphical user interface design shown in D’305 patent is functional, not decorative, whether
taken as individual elements or the design as a whole.
C.

Design Patent D617,334

The D’334 patent states that the application was filed on July 15, 2008, and that the
patent issued on June 8, 2010. The D’334, is entitled “Graphical User Interface for a Display
Screen or Portion Thereof” like the other two design patents at issue here. The D’334 patent
depicts eight variations of the same design in shades of black and white. The overall rectangular
shape of the D’334 matches exactly the outline in the D’790 and D’305 Patents. In comparison

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to the D’790 Patent and the D’305 Patent, there are changes to the symbols and nomenclature in
the status indicators, two or three additional rounded square icons appear in the fourth row of the
design for a total of 18-19 icons, and there are minor changes to the Calculator icon. Two dots
are also present in the lower portion of the black area and above the shaded gray area.

Figs. 1 and 2 of D617,334
Given that this is a claim for a graphical user interface screen, I will assume for the sake
of this report that the symbols and nomenclature at the top of the large rectangular area are status
indicators on a screen, the upper 14 or 15 squares with rounded corners and the lower 4 squares
with rounded corners are selectable icons on a screen as defined in the D’305 description above,
and that the two dots, one lighter and one darker, are page indicators.
D.

Functional Elements of the Design Patents, Trademarks, and Trade Dress

In my opening report, I gave numerous reasons for my opinion that Apple’s Design
Patents, Trademarks, and Trade Dress are functional as a whole and that the individual elements
of those designs are functional. (Lucente Op. Rep. at pp. 7-30.) For the sake of avoiding
repetition, I incorporate those analyses and conclusions into this report by reference. Still, it is
important to restate the fundamental, functional elements that comprise the design patents,
trademarks and trade dress in this short summary:
The rectangular display for a graphical user interface is a fundamental, functional
element for human-computer interaction. Alternative designs would be more expensive
and more difficult to develop, and would not have the organizational benefits of the
rectangular shape. Thus, the large rectangular element that forms the basic shape of the
design is merely functional and not decorative.

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An icon grid on a graphical user interface is a fundamental, functional element for
human-computer interaction. Thus, the rounded square elements arranged in a grid are
merely functional and not decorative.
The dock of frequently-used icons on a graphical user interface is another functional
element for human-computer interaction.
The relative size of an icon is functional because the relative size allows a person to see
the icon and a human finger better to select the icon when used in a touch-screen device.
Both the size and the shape of the icon is functional because the consistent size and
shape conveys the form of a selectable button and communicates that the icons share
similar attributes so that they are perceived as a group. The number of the icons is
functional because the number is determined by the overall area of the rectangular
outline, the size of the icon, shape of the icon, the spacing of the icon in the grid and the
number of icons desired by the user and/or the manufacturer. The spacing, proportions,
shape and number of the icons on a graphical user interface are fundamental components
of human-computer interaction.
The status indicators on a graphical user interface are a fundamental, functional element
for human-computer interaction and have no decorative element.
Icons themselves are functional because they are metaphors for the function the user
wishes to access. In other words, icons are descriptive of the applications and/or features
that they activate, and thus they are functional. The icons on a graphical user interface are
a fundamental, functional element for human-computer interaction. The rounded square
elements with graphics in them are merely functional, and not decorative.
Labels underneath icons in a graphical user interface are fundamental, functional
elements for human-computer interaction. Thus, the word, or label, elements are merely
functional and not decorative.
Page indicators, represented as two dots, are purely functional because they visually
show which of two pages is displayed. Such page indicators in a graphical user interface
are a fundamental, functional element for human-computer interaction. Thus, the dot
elements are merely functional and not decorative.
In accordance with my understanding of the relevant legal principles noted above, it is
critical that I exclude functional aspects of the design patents in performing an ordinary observer
analysis. I also understand that the existence of these same functional elements are relevant to
my assessment of the Apple trademarks and trade dress.

Possibility of Using Apple Designs as a Guide. I disagree with Kare’s conclusion that
any perceived similarities between the Samsung Phones and the iPhone devices supports the
possibility that Samsung used the Apple icons or devices as a guide. (Kare ¶¶ 72-77.) I believe
Kare reaches this incorrect conclusion for a number of reasons, including the following: (1) Kare

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focused on identifying and magnifying perceived similarities between the Apple and Samsung
designs while downplaying or ignoring the many differences as insignificant; (2) Kare neglected
to consider or discuss any prior art that would have informed her opinion regarding the field of
choice and the general trends within iconography; (3) Kare did not convey, or apparently
consider beyond the referenced Samsung documents, any general understanding of Samsung’s
overall approach to design or its visual identity; and (4) more importantly, Kare also failed to
acknowledge key, non-ornamental or non-decorative functional considerations that, in my
opinion, dictated the designs because both companies were pursuing essential, fundamental
elements of human-computer interaction in their respective designs.
It is my opinion that any perceived similarities between the Apple and Samsung icons
discussed in Kare’s report are not a result of Samsung’s possibly having used the Apple icons as
a reference in creating its own icons, as Kare implies, but rather a result of the icons’ shared
heritage in the world of visual references, and the dictates of function.
It is also my opinion that any perceived similarities between the Apple home screens and
the Samsung application screen layouts discussed in Kare’s report are not a result of Samsung’s
possibly having used the Apple home screen layouts as a reference in creating its own layouts, as
Kare implies, but rather a result of well-documented prior art, the 2006 user interface design
work by Samsung designers and widely used functional aspects of the common designs. As will
be discussed below, it is also significant that Kare deemphasizes Samsung’s use of a completely
different home screen from the Apple home screen noted in the design patents and trade dress.
Icons and Home Screens. What follows is an analysis of various icons and screens in
which I note similarities and differences between the Apple and Samsung user interfaces and
icons. I examined all of the icons and screens, including various alternative designs via screen
captures in Photoshop. (See Exhibits 4-38.)
Phone Icon — Kare states that there are similarities between the Phone icons for the
Samsung products and the Apple products. (Kare ¶ 62.). Based on these purported similarities,
Kare concludes that users might see them as coming from the same company or source, or
representing the same brand. I believe Kare’s opinions in this regard are wrong due to her failure
to consider any prior art in her report or the functional aspects of the phone metaphor. My
opening report on invalidity included numerous examples of icons prior to the iPhone that
employed a conventional telephone receiver angled upward at approximately 45 degrees and
utilizing the color green. (Lucente Op. Rep. at pp. 27-28, 63-64.) A traditional analog phone
receiver displayed at a 45 degree angle with the left side higher than the right is even a
commonly used design library symbol used to represent phone calling.31 This icon is dictated
largely by customary practice and practical need. It is also important to note that the actual style
of the phone depicted in the widely used design library, updated in 2002, also resembles the
original Bell telephone noted as distinctive to Apple by Kare. Images of similar green telephone
receivers have been used in cellular telephones and virtually all forms of consumer electronics
with phone calling features for well over a decade to mark the button that will initiate a
telephone call.
31

Official Signs and Icons, Ultimate Symbol, Inc. 2002
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The supposedly comparable alternatives listed by Kare deviate in detrimental ways from
the icons that Apple and Samsung have created.
(Deposition of F. Anzures at 205.) Thus, pointing the phone
downward is not a comparable alternative design because it does not communicate as effectively
that the icon represents the functional metaphor of initiating rather than terminating a call. The
green color is similarly functional for the reasons mentioned in my prior report. (Lucente Op.
Rep. at pp. 22-23.) The placement at the bottom left of the user interface is functional because
that is the most common location for placing the call button on a cell or touchtone phone. Prior
to the advent of touchscreen, cell phones predominantly put the button to initiate a call on the left
side of the phone just below the display screen, and the end call button (usually associated with
the color red) on the opposite side of the phone, just below the display screen. Also, orienting the
receiver in the straight up-and-down position is also not an equivalent alternative as Kare
suggests (Kare ¶ 54.) She states that this is how the symbol is used on telephone booths (Id 54,)
but even if so, it ignores the functional aspects of actively making a call as if the phone is in your
hand and there is a much greater space constraint when creating an icon for a touchscreen display;
orienting the receiver at an angle allows the image to be larger and more easily visible than a
different configuration, and reduces wasted space around the image.
Because of these considerations, I believe that users seeing the Phone icon on the
Samsung devices would associate the icon with the call function of the phone, not with a
particular brand, company, or source.
I also believe that Kare neglected to note important differences between the Apple and
Samsung phone icons that distinguish them, even despite their design being dictated by many of
the same functional constraints. Samsung’s icon clearly differentiates itself from Apple while
effectively applying the fundamental, functional phone metaphor. The Samsung design avoids
the inferior alternative designs proposed by Kare and aligns to the Samsung design principles
and overall visual identity. For example, although both phones are presented at an angle, the
Apple icon appears to be positioned exactly at 45 degrees along an invisible line running from
the top left corner to the bottom right. The Samsung icon, however, is at a steeper angle. The
Samsung handset is significantly larger relative to the rectangle with rounded corners. The
corners or radii of the Samsung container are significantly smaller. 32 The Apple icon features the
iOS specific visual effect distinct and specific to the Apple Human Interface Guidelines 33 The
Samsung icon has a faceted, angular visual effect not seen in any of the Apple icon designs. The
overall green color appears much darker than the brighter green used by Apple. The Apple icon
has a stripped pattern of alternating light and dark greens, while the Samsung icon lacks such a
feature. The receiver in the Apple icon appears flat because it lacks shading, whereas the
Samsung phone has contour shading, which is particularly visible on the upper portion of the
phone because it gives the ear receiver the appearance of a 3-dimensional rounded edge. The

32

This is true for all the Samsung icons with a rounded rectangular container.
Apple iOS Human Interface Guidelines,
https://developer.apple.com/library/IOs/#documentation/UserExperience/Conceptual/MobileHIG
/IconsImages/IconsImages.html#//apple_ref/doc/uid/TP40006556-CH14-SW1
33

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overall outline of the Samsung receiver adheres more closely to the standard design library icon
noted above whereas the Apple receiver angles in dramatically at both ends of the receiver.

Samsung

Apple

Contacts Icon — I have the same objections regarding Kare’s analysis of the Samsung
Contacts icons as I do with the Phone icons. The alternative designs put forward by Kare ( Kare
¶ 54) are not true or equivalent alternatives because they diminish the functional utility of the
icon. The underlying Contacts program or application in the Samsung devices stores information
about numerous people and/or businesses, including names, phone numbers, email addresses,
physical addresses, etc. A contact icon displaying a bound book with an “@” symbol on the
cover would signify that the underlying program simply stores email information since that
symbol is associated with email addresses. Kare appears to admit as much by noting that the “@”
sign is “shorthand for contacting someone via email.” (Kare ¶ 54.) I note that Apple previously
used such a symbol for its address book in the Dashboard feature of Mac OS X Tiger, but did not
carry that icon over to iOS, despite doing so for other icons, and instead chose the functional and
proven head and shoulders silhouette that was prevalent in the prior art dating back to the 1980’s
(Lucente Op. Rep. at pp.68-69).

Address Book — Mac OS X Tiger Dashboard
Moving on to the other presented alternatives, a silhouette with a question mark over the
face seems to communicate that there is uncertainty about a person’s identity. That is the
opposite message that should be conveyed regarding a program that contains information about
people. Similarly, an image of a phone on the front of a book could incorrectly communicate that
only phone numbers are stored in the Contacts application. The shoulders and head silhouette is
the conventional image for contact information. (Lucente Op. Report ¶ 29.)

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Because of these considerations, and because of the large number of icons that were
already using this same metaphor (Lucente Op. Rep. at pp. 68-69), I believe that users seeing the
Contacts icon on the Samsung devices would associate the icon with a program or application on
the phone that stores personal contact information for multiple people and entities. I do not
believe users or observers of the Samsung devices would associate the Samsung Contacts icon
with any particular brand, company, or source of goods.
I also believe that Kare failed to account for the numerous differences between the
Samsung and Apple Contacts icons, despite the many functional considerations that drove them
toward using the common and ideal metaphor of a head and shoulders silhouette on an address
book. The Samsung icon has uneven silver grey borders that follow the outline of a book joined
with two rings and no tabs. The colors are predominantly orange, white, and grey, with the semigloss orange transitioning from light to dark along a faceted gradient from top right to bottom
left. The much larger, white head and shoulders silhouette dominates over half of the icon and
has the appearance of being set on top of the book cover as a three-dimensional carved relief.
The Apple icon, by way of contrast, appears as a cropped view of a larger address book. The
book appears to be spiral bound and has several tabs on the right-hand side. The dominant colors
are different shades of matte brown and tan with a consistent, smooth light to dark visual effect
with a light source centered above the image consistent with other Apple icon rendering
treatments. The brown, head and shoulders silhouette, appears to be only approximately onethird the height of the icon and has the appearance of being cut-out and recessed into the cover of
the book, despite a crowded field of prior art icons, these differences give the Samsung icon a
distinct appearance from the Apple icon:

Samsung

Apple

Photo Icon — I believe Kare wrongly concluded that the perceived similarities between
the Samsung and Apple Photos icons would contribute similarly to the overall visual impression
of the screens in which they appear or that users would see them as coming from the same
company or source, or representing the same brand. (Kare ¶ 62.) The sunflower is a common
image associated with photography contrary to Kare stating that it “is an apparently arbitrary
choice.” (Kare ¶ 53.) In fact, Adobe Photoshop Elements, the number one consumer photo
editing software,34 has often displayed an image of a sunflower on its packaging and materials.

34

Source: The NPD Group/Retail Tracking Service (April 2002 to March 2011) based on
units sold (U.S. only) at http://www.adobe.com/products/photoshop-elements.html
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Furthermore, the most prevalent use of the sunflower icon by Adobe in
advertising, numerous tutorials on the web, splash screens and as examples within the software
itself, was during the time that the noted Apple designers were creating the iPhone icons.

35

Oct. 14, 2011 Deposition of Imran Chaudhri at 180; Oct. 18, 2011 Deposition of
Freddy Anzures at 7, 122.)
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Adobe Photoshop Materials36

36

I understand that Photoshop Elements 2.0 was released in 2002; Version 4.0 was
released in 2005; and Version 6.0 was released in October 2007; and Version 9.0 was released in
2010.
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Apple’s Photos Icon
In addition to the sunflower images used by Adobe Photoshop, flower icons are often
used on cameras to mark the settings for taking close-up photographs. In the context of a
smartphone user interface, I believe that using an image of a flower or parts of a flower as an
icon is the most useful representative metaphor for photography in the minds of ordinary
observers. In light of the above considerations, I do not believe that an ordinary observer would
associate the Samsung Gallery icon with any single brand, company, or source. Instead, I believe
that an ordinary user would likely associate the icon with photographs and image editing.
I believe the alternative icons that Kare presents all share the same flaw that makes them
less suitable — and therefore functionally inferior — to the icons used by Samsung and Apple:
using a representation of an actual photograph requires a small, detailed rendering on an already
small icon. To quickly and effectively communicate the purpose of an icon, it is better to avoid
small, detailed images that cannot be interpreted or processed at a glance such as iconic vacation
scenes suggested by Kare (Kare ¶ 23.) As I explained in my opening report, Apple’s own iOS
Human Interface Guidelines teach these same principles: “Embrace simplicity. In particular,
avoid cramming lots of different images into your icon. Try to use a single object that expresses
the essence of your app. Start with a basic shape and add details cautiously. If an icon’s content
or shape is overly complex, the details become confusing and may appear muddy at smaller
sizes.” (Lucente Op. Rep. at p. 13 (quoting the Apple iOS Human Interface Guidelines).)
I also believe that Kare failed to take note of the many distinguishing characteristics
between the Samsung and Apple icons that give them readily distinct appearances. For example,
the Samsung icon is a smart integration of both a symbol (flower) and a real-world
representation of a photograph (printed photos with white borders). In her proposed alternatives,
Kare suggests the use of a “sample photographic image,” (Kare ¶ 26) which Samsung does,
unlike Apple. Samsung’s icon features the close up view, typically associated with photography,
of what appears to be a mum or sunflower, building on the strong functional metaphor noted
above. It is important to note that the flower depiction by the Samsung designers does not appear
to be a specific type of flower, but rather an artistic illustration, again, building on a close-up
view of the functional metaphor of a flower for photography.

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A combination of mums (left) and two types of
sunflowers (middle and right) with different florets.
This illustrates the apparent differences in the petals depicted in the actual florets of the
Apple and Adobe, which are clearly the middle sunflower, while the Samsung design is likely an
interpretation of flowers similar to these, but obviously not a direct cropped view of a sunflower
as Kare suggest (Kare ¶ 62.)
The orange-to-yellow, elongated oval-shaped flower petals with greenery behind them do
not show a blue sky background prominent in the Apple icon and many of the Adobe packaging
designs. The top right lighting effect is less faceted and more curvilinear due to the flower as an
organic object. The image contains two stacked rectangles with white borders that appear to be
photographs of the underlying flower image beneath them. In the middle of the icon, a semitransparent circle is presented with a green equilateral triangle in the center. The positioning and
orientation of the green triangle gives the center element the appearance of a “play” button
commonly found on electronic devices and computer programs that play movies or videos. Use
of green connotes action. The icon therefore, contains several metaphors that communicate the
key functionalities of the underlying application while avoiding the pitfalls of the alternative
icons presented by Kare. The Apple icon, by way of contrast, is dominated by a full view of a
flower’s head as well as the upper stem and leaves on a blue sky background. The dominant
colors are yellow, blue, brown and green. The pronounced Apple specific visual effect renders a
noticeable arc in the upper half of the image. In my opinion, these characteristics give the icons
clearly distinct visual appearances that would be noticed by an ordinary observer.

Samsung

Apple

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Camera Icon — I believe that Kare also mistakenly concluded that the icon labeled
Camera on the Samsung devices was possibly derived from the Apple icon labeled Camera.
Aside from the numerous functional considerations that impelled the Samsung icon design in this
direction, the Samsung icon looks very similar to actual Samsung and third party cameras that
were released in 2010. In addition, the head-on perspective shot of the Samsung icon matches the
way these cameras were photographed for their advertisements.

Samsung Icon

Samsung PL200 37

Samsung SL60538 Canon EOS Rebel XS39

Moreover, the dominant color for cameras is black and silver conveying a metallic finish.
I believe the alternative designs presented by Kare highlight that very few metaphors
effectively communicate the purpose of the camera application on the phone. (Kare ¶ 54.)
Indeed, all of the icons she calls out as alternative designs are images of cameras (like the
Samsung icon) or portions of cameras (like the Apple icon). This is consistent with the camera
icons I included in my opening report that pre-date the Apple designs. (Lucente Op. Rep. at pp.
77-78). All of these icons use a generic-looking body for a camera. In light of this, I do not
believe users would associate these camera images with any particular company.
The Samsung icon has a number of important differences from the Apple camera icon
that make them clearly visually distinct. The Samsung icon depicts an entire camera from the
front perspective. The camera includes a large, circular front lens that is offset to the right, a
flash above and to the left of the lens, and a button for activating the shutter, all like the Samsung
cameras depicted above. The camera image also has the appearance of a grip or extended portion
on the left as is common on cameras. The camera image appears to be floating on a blue
background with eight lines emanating from a source behind the camera. Blue is a natural choice
since it emphasizes the camera and recedes into the background. The typical, faceted visual
effect shows lines and color shading giving the impression of eight wedge panels fanning out
from the center of the icon, resembling the shutter window of a camera. The Apple icon, by way
37

(http://www.samsung.com/us/photography/digital-cameras/EC-PL200ZBPSUS)
(released Sept. 2, 2010)
38
(http://www.samsung.com/us/photography/digital-cameras/EC-SL605ZBPSUS)
(released March 2010)
39
http://www.tecca.com/product/canon-eos-digital-rebel-xs-10-1-megapixel-digital-slrcamera-silver/
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of contrast, depicts only the lens of a camera, which appears to be inset within a plain grey
surface. The lens is centered on the icon and its diameter is roughly half the height and width of
the icon.

Samsung

Apple

For the reasons stated above, I believe that when users and observers see the Samsung
camera icon, they associate the icon with the camera function of the device, and not with any
company, brand, or product source.
Music Icon — I believe that Kare similarly erred in her analysis of the Samsung Music
Player icons as she did for the previous icons. The alternative music player icons put forward by
Kare each fail to communicate as effectively as the Samsung icons and are therefore functionally
inadequate as alternatives. (Kare ¶ 54.) Eighth notes are perhaps the most widely understood
symbol for music. Treble clef symbols are not nearly as well-known or understood by the
average user as a set of eighth notes. Unless the user had some kind of training in reading sheet
music, the treble clef symbol would likely not be intuitive. Headphones are also less intuitive
across a broader spectrum of users than eighth notes. Also, the alternative icons that depict only
notes could lead users to think the application started a radio player. While this may be the best
option for smaller icons on smaller display screens, using a set of eighth notes along with a CD
clearly and effectively communicates that the application is capable of playing stored music. The
prior art is also filled with music player icons coupling a CD and eighth notes dating back to
1995 use on desktop computers. And both the music and compact disc symbols each are
documented as standard icons, and with pervasive prior art the combination of the two symbols
became a generic, but well-understood way to show the ability to play and manage music on a
computer and now smartphones and tablets. ( Lucente Op. Rep. at pp. 69-71.)

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BeOS Operating
System – (1995)

GNOME 2.0
(2002 – “CD
Player”)

Window NT 3.1
(1993 – “CD
Player”)

Samsung SCHX650 (Aug.
2002)

Samsung F300
(Dec. 2006)

Prior Art for Music Icons40
Several of the key prior art references shown in my opening report are depicted again
here to show the pre-existing and common use of the combined eight notes and CD symbol as a
powerful functional metaphor. It is important to note that Samsung had created their original
music icon for a mobile phone in 2002. Also, the purple color of the Samsung icon and the CD
with double eighth notes relate back to earlier Samsung devices (Id. at pp. 69-71.) For example,
the Samsung F300 device used this same color as a motif, as well as two musical eighth notes to
symbolize the music player function on the device (Id. at p. 71.) The use of purple is typical in
entertainment metaphors since the purple is a vibrant color and not confused with other colors
such as red, yellow or green which have established meanings such as problem or error, caution
or warning, and active or good, respectively. Unlike blue, which recedes, purple conveys
excitement and energy.
The Samsung icons also have a number of important differences from the iTunes icon
such that they create a distinct and unique visual impression on the display screens. The
Samsung icons depict a photorealistic CD in the center of the icon. Large red or teal eighth notes
appear to float in front of the disc and are offset to the lower right side. The notes are roughly
half the height of the icon. The magenta container or background appears as a solid surface with
a slight gradation of color that meets at the line in the upper right quadrant of the icon. The color
of the icon is brighter and deeper than the soft purple of the iTunes icon, giving the Samsung
icon a feeling of energy. The Apple iTunes icon, in contrast, has a white circle centered in the
icon, small white eighth notes centered in the circle, and distinct lines radiating out from the
circle in all directions. A noticeable visual effect covers the top half of the icon in an arc shape,
lightening the color of the background.

40

(See, e.g., Lucente Op. Rep. at pp. 69-71.)

.
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Samsung Music Player Icons41

Apple Music Icons
Even despite the connection to the color scheme Samsung previously used in its F300
device, I believe that a user who sees the Samsung music player icons will not associate them
with a particular brand, company, or source, but solely with the music playing function of the
Samsung Products.
Settings — I am also of the opinion that the Settings icons for the Samsung and Apple
devices do not create the same visual impression on their respective display screens. Both icons
utilize a form of the common gear metaphor, now an established convention for utilities,
preferences and settings, but do it in very distinct ways. The Samsung icon shows a single wheel
gear with short, blunt teeth and a relatively wide pitch. The gear wheel is polished silver with a
reflective blue band. The entire gear wheel is visible and it appears to rest on a solid blue
background that has a slight spiral gradient transitioning from darker to slightly lighter as it
moves clockwise from the upper right hand quadrant. The Apple icon in contrast is a partial view
of three gear wheels with sharply pointed teeth and relatively small pitch. The larger wheel
appears to be set behind two smaller wheels and has five spokes that radiate from the center.
41

The following Samsung devices us the Music Player icon on the left: Captivate, Droid
Charge, Exhibit 4G, Galaxy S (i9000), Galaxy S 4G, Indulge, Infuse 4G, and Vibrant. The
following Samsung devices us the Music Player icon on the right: Continuum, Epic 4G,
Fascinate, Galaxy S Showcase (i500), Gem, and Mesmerize.
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That wheel is set in the lower two-thirds of the icon. The background of the icon has a matte,
brushed aluminum appearance with regularly spaced pinholes. The icon is framed with a matte,
silver border. The entire icon is done using varying shades of gray with an arc light treatment
across the upper half.

Samsung

Apple

I believe that users who see the Samsung Settings icon do not associate it with any
particular brand, company, or source, except perhaps with Samsung. As I already showed in my
opening report, there were numerous operating systems and devices, including those made by
Samsung, that utilized this same gear metaphor prior to the designs and devices at issue here
(Lucente Op. Rep. pp. 64-66.) As a result, if users associate the Samsung gear icon with
anything it is with the settings application on the device.
I hold these same opinion when comparing the Samsung Settings icon to Apple’s
trademarked settings icon (Reg. No. 3,889,685) shown here:

Messaging — I also believe the Messages icons for the Samsung and Apple devices do
not create the same visual impression on their respective display screens. Both icons utilize a
form of the common text or chat bubble metaphor, but do it in distinct ways. The Samsung
Messaging icon depicts a rectangular cartoon chat bubble with a triangular tail. The bubble is a
solid olive green, distinctly different from the Apple color, and displays a simple smiley face.
There is no container surrounding the icon. The trademarked Apple icon, in contrast, displays a
white, oval-shaped chat bubble with no content. The background of the icon is an alternating
stripe pattern of light and dark green shades that run from bottom left to upper right. The
common Apple light treatment gives the appearance of an arc across the upper half. In the
version of the Apple icon from the D305 patent and early iOS versions, the chat bubble contains

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the letters SMS. The background is also a solid green color, though still affected by the same arc
light treatment.

Samsung42

Apple43

As I showed in my earlier report, Samsung used a very similar icon in early 2005.
(Lucente Op. Rep. at p. 71.) Similar icons were also used in other devices and operating
systems. For all these reasons, I believe users will associate the Samsung icon with the text
messaging function of the device, not with any particular brand, company, or source.
Notes/Memo — I also believe the icons for the Samsung and Apple devices do not create
the same visual impression on their respective display screens. Both icons utilize an obvious
form of the common note pad metaphor to symbolize a word processing application that can
store the user’s text files. The various icons approach the metaphor in recognizably distinct ways.
The Samsung icon depicts an entire brown message board with a single post-it type note on it.
The lower right-hand corner of the note is curling upward to the center of the page. Very faint
horizontal lines run across the front of the page. The icon’s container is patterned as a piece of
yellow lined paper. The Apple icon shows a cropped or cut-out view of a pad of paper. The
colors are flatter than the Samsung icon, showing brown across the top of the pad and a pale
yellow colored paper. Two parallel lines run down the left side of the page. Just under the brown
band across the top there is the appearance of the remainder of several sheets of paper that have
been torn from the pad.

42

The lower Samsung Messaging icon was cut from a Droid Charge screen capture.
The upper Apple icon is Trademark Reg. No. 3,889,642. The lower icon was cut from
the D305 patent.
43

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Apple44

Samsung

In light of the common use of a notepad metaphor on devices and operating systems that
predate the designs and devices at issue here (Lucente Op. Rep. at pp. 66-68), I believe that users
who see the Samsung Memo icon will not associate it with any particular brand, company or
source, but rather solely with the application on the device that allows users to create and store
text files.
Samsung Home Screens — I believe Kare further erred in her report by failing to
account for the default home screens on the Samsung devices. All of the user interfaces of the
Samsung Phones initially appear, as a default, on a series of screens that are very different in
appearance to the Design Patents or the Apple devices. For each phone, there are typically twice
as many home screens as there are applications screens. And as Kare admits in her report, the
applications screen can only be accessed if the user actively presses one specific icon on the
home screen. (Kare ¶ 58.) Thus, for a purchaser or other person sufficiently interested in the item
to access the applications screens of the Samsung Phones, they would have to first encounter at
least the first default home screen of the Samsung user interface, and possibly more of the home
screens if they swipe from screen to screen. The images below show an exemplary screen
capture of the default startup screen from the Samsung Captivate. The home screen contains only
two rows of icons at the bottom of the display screen, with a large amount of empty space in the
middle of the display. The background is a blue gradient with several large semi-translucent
circular elements, resembling bubbles, which are rendered at varying levels of focus. There is a
long horizontal element near the top of the display bearing the word “Google” and featuring a
blue icon with a “g” and a silver icon featuring a microphone. An ordinary observer encountering
this home screen would readily recognize the substantial differences between it and the asserted
Design Patents.

44

The upper Apple icon is Trademark Reg. No. 3,886,169.
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Captivate Home Screen

D305

I have inspected the default home screens on all the devices listed in Kare’s report and all
of them share the same design motif as shown in the figure above. The differences in the home
screens involve elements that are not shown in the Apple design patents or products and include:
different background images, different number of icons, different arrangement of icons, and
different content panels for things such as videos, weather, and social network programs.
Screenshots of the home screens for all of the Accused Products are included as exhibits to this
report (see Exhs. 4-16.) An example of the entire array of home screen pages for the Samsung
Captivate is shown below:

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Captivate Home Screens
Missing Row — I believe that Kare further erred in her report by giving no weight
whatsoever to the Samsung Phones’ not containing a missing row of icons above the bottom row
on the Applications screens. I reviewed all of the Samsung devices listed in Kare’s report, and I
have determined that none of the phones displayed an applications screen with a 3x4 matrix at
the top of the display and a 1x4 matrix at the bottom with a missing row (or large blank space)
between them. In addition, every accused Samsung phone I examined had at least two
applications screens that were filled with icons in a 5x4 grid pattern, with a final applications
screen that had a variable number of empty icon slots, but none of the Samsung phones displayed

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a 5x4 grid with a missing fourth row except one.45 Kare further provides no reason why this
missing row, or appearance of a missing row, is wholly unimportant to her analysis. In my
opinion, the blank space in the D790 and D305 patents provides the important function of
visually separating the two sections of the display screen. When that space is filled with icons,
the grid becomes a solid 5x4 pattern with no discernible break in the arrangement. The solid set
pattern also mimics much of the prior art, including, for example, Finnish design registration
application 20030256, published on April 29, 2004, which has the same grid arrangement. (See
Lucente Op. Rep. at p. 39.) I believe that an ordinary observer familiar with the prior art would
notice the blank space feature of the D790 and D305 designs as a noticeable difference from
many of the solid set grid patterns found in the prior art and would therefore attach more weight
to it than to other features of the designs. In fact, I believe this would be one of the most apparent
differences that would come to the attention of the ordinary observer who is most familiar with
seeing user interfaces that are a solid set of icons.
Overall Visual Treatment of Icons. In addition to the discussion of individual icons,
home screens and missing row, I believe that Kare also failed to take notice of important and
readily apparent differences between the overall visual treatment of icons in the Samsung
devices versus that in the asserted design patents and iPhone devices. I further believe that this
error led Kare to the erroneous conclusion that the icons in the Samsung devices — when taken
as a whole — create an “overall visual appearance [that] is substantially the same as the overall
visual appearance of the designs depicted in the [asserted patents.]” (Kare, ¶¶ 66; see also id. ¶¶
67, 70-71.) Although I have noted many of these specific design details relative to individual
icons in earlier sections, the following aspects of the icons’ overall visual appearances are
summarized in the table below. You can see that the two company’s respective visual directions
differ significantly:

Samsung

Apple

x

Symbols are mostly asymmetrical

x

Symbols are all symmetrical

x

Icons typically show the “full view” of
the symbol on a colored background in
the shape of a rectangle with tightly
rounded corners or without a container
at all

x

Icons typically show “cropped views”
of the symbol creating the impression
of a cut-out forming the shape of a
rectangle with softly rounded corners,
always within a container

x

Some images have embossed or raised
details showing a three-dimensional
effect

x

Some images are debossed (die-cutlike) with flat stencil-like effects

45

The third applications screen of the Droid Charge that I inspected had this pattern. I
reviewed all of the images and screenshots attached to the Kare report and noted that none of the
phones had any applications pages with a 3x4 grid at the top and a 1x4 row at the bottom. (Kare
Exhs 15-33.)
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x

Rendering or visual effects are mostly
faceted and linear with varying top left
or top right light sources

x

Rendering or visual effects are always
centered, emphasizing the overall
symmetry with a precise, consistent arc
shape pattern

x

Colors are typically brighter with
fragmented tonal gradations and glossy
effects

x

Colors, though saturated, have smooth
tonal gradations and matte finishes

For example, as Kare states in her report, the Apple patents and devices utilize icons that
include “illustrations, photographs, and iconic symbols.” (Kare ¶ 55.) Additionally, she says,
the Apple icons include those with a “cropped view.” (Id. ¶ 55.) This gives the impression of a
square image cut out of a larger image (also known as a “cut out”). Kare also notes that the
Apple user interfaces include icons that appear to be embossed on or in front of a colored shape,
also called a “container”. (Kare ¶ 55.) Kare fails to note that the majority of the icons on the
Apple patents and devices follow the cut-out or “cropped view” approach. In contrast, the vast
majority of the Samsung icons follow the container approach. Very few Samsung icons are
“cropped view” icons or cut outs. This gives the Samsung device user interfaces an additional
unifying motif that is absent in the asserted patents and Apple devices. For example, in the figure
below, the Samsung calendar icon is shown as a full, ring-bound calendar page showing three
weeks of dates. The entire image is visible in the Samsung icon and is set against a square or
container of a single color. By way of contrast, the Apple icon appears as a cut-out of a larger
calendar page that includes just a single day and the actual image forms the shape of the
container.

Samsung

Apple

The use of the “full view” of the image, such as the calendar shown here is a critical
difference from the Apple icon designs. This major difference is driven by the overall Samsung
interface design which primarily uses a home screen rather than an application screen. These
home screens include icons without containers. When the same icon appears in the applications
screen, it appears within a container to present an orderly and predictable functional, icon grid
layout for the user. For example, the home screen of the Fascinate displays Blockbuster, Bing,
Email, and Browser icons, none of which have a rounded square background or container behind
them. On the first applications screen, these icons reappear with a colorful square container.
Users first encounter the icons in their non-container form, which highlights the container pattern
in the applications screen when they reappear. This feature is absent from the Apple Design
patents and phones.

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Fascinate Home Screen

Fascinate Applications Screen

Selective Analysis of Icons. I also believe Kare selectively analyzed individual icons in
the user interfaces of the devices and patents without taking the whole spectrum of icons into
account (and therefore failed to take the overall design into account). I believe this was an error
because purchasers and users encountering the products would not see isolated icons, but icons
in association with one another. Comparing the D305 patent to the first applications screen of the
Fascinate device, for example, shows how varied the icon selections are between the designs. Of
the 16 images shown in the D305 patent and the 20 images shown on the first applications
screens of the Fascinate and Droid Charge devices, only 8 on each device relate to an analogous
application: Text/Messaging, Calendar, Photos/Gallery, Camera, Clock, Calculator, Phone, and
Mail/Email. The unique icons on the D305 patent are these: YouTube, Stocks, Maps, Weather,
Notes, Settings, Safari, iPod. The unique icons on the first Fascinate applications screen are these:
3G Mobile Hotspot, AllShare, Bing, Blockbuster, Browser, Car Cradle, City ID, Daily Briefing,
Desk Cradle, Gmail, Contacts, and Home:

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Fascinate46

D305

46

The screen capture has been scaled so the width is equal to the width of the D305
design, allowing the different aspect ratios to be accurately reflected.
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The unique icons on the first applications screen of the Droid Charge are these: AllShare,
Amazon Kindle, Apps, Backup Assistant, Bitbop, Blockbuster, Browser, City ID, Daily Briefing,
Desk Cradle, Contacts, and Home:

Droid Charge
These differences are indicative of all the Samsung Products I inspected. As a result, I
believe a user who was a purchaser of the iPhone Designs, or sufficiently interested in them, and
who has the capability of making a reasonably discerning decision when observing the Samsung
devices would not be deceived into buying the Samsung phone thinking it to be the Apple design.
The comparison between the D305 design and the Fascinate screen above also highlights
the aspect ratio differences between the Apple designs and devices and the Samsung devices.
Kare acknowledges this only by stating the numbers and then dismissing the differences as
insignificant (Kare ¶ 60.), but she never puts the displays next to one another to visualize and
evaluate the relative and noticeable size difference. Kare is also misleading when she says that
“the aspect ratios of the Samsung screens are either the same (1:1.5) or similar (1:1.67) to that of
the iPhone devices (1:1.5).” (Kare ¶ 60.) Her statement does not make clear that of all the
accused Samsung devices, only the Indulge has the same aspect ratio as the Apple devices. Nor
does Kare take into account the strikingly different aspect ratio of the Continuum phone’s
display, which has an active area incorporating the four standard soft keys and a secondary
display beneath them:

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D’305

Continuum

Kare’s Purported Acceptable Alternative Displays. I also disagree with Kare’s
assessment that the alternative designs she points to are true and equivalent designs. (Kare ¶¶ 4552.)47 In each case, the purported alternative design is deficient in one or more ways compared
to both the Apple and the Samsung designs. I believe this diminished functionality reduces the
quality of the user interface as a result. By way of example, the Nokia N9 user interface design
contains no dock, which, as I described in my opening report, has been a functionally useful
element of touchscreen phones since the IBM Simon in 1992. (Lucente Op. Rep. at pp. 17-18,
33-52.)

47

I have reviewed the alternative phones discussed in Kare’s report and have included
screen captures for the designs as Exhibits 17-22.
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Nokia N948
Additionally, the size of the icons on the Nokia N9 reduces their functionality because they
create a smaller hit target for the user. By shaving off more of the icon’s container in order to
create the heavily rounded shape, the size of the icon, and therefore the size of the target for the
human finger, is reduced by roughly 20-30%. The figure below is an accurate, proportional
comparison of the Calendar icons for the Nokia N9 and the Samsung Captivate. As Kare admits,
icon design is influenced, and even “mandated,” by “touch screen ‘hit’ area space requirements.”
(Kare ¶ 31.)

Nokia N9

Captivate

The BlackBerry Storm 2 is another user interface put forward by Kare as an equivalent
alternative. The Storm 2 suffers from the opposite functional deficiency as the Nokia N9; the
lack of spacing between the icons creates a more complicated visual presentation. In my opinion,
users cannot process and segregate the information presented in this format as quickly and
48

See Exhibit 17
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simply as with the Samsung design. The predominant use of black and white may provide an
overarching motif, but it fails to provide as much distinction between icons or enhance the
functionality of the metaphor of the various icons as do the Samsung designs. In my opinion, the
lack of distinction or definition among icons forces the user to take longer to search for and
identify the target icon. This diminishes the quality and utility of the user interface.

BlackBerry Storm 249
Kare also presents the Sony Ericsson Xperia arc S and neo V phone interfaces as equivalent
alternatives to the Samsung designs. While these designs may be an improvement over the two
designs previously discussed, they lack the utilitarian functions provided by the rounded square
features of the Samsung Products. I described these functions in my initial report. (Lucente Op.
Rep. at pp. 18-19.) This same critique applies to the BlackBerry Torch 9850, also mentioned in
Kare’s report. (Kare ¶ 48.) As seen in the image below, when an image background is used for
the BlackBerry Torch 9850 interface, the irregularly shaped icons blend into the background and
become more difficult to discern than if they were bounded by a uniform shape.

49

See Exhibit 18
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Sony Ericsson Xperia arc S50

BlackBerry Torch 985051

I also believe that the purported alternative interface designs shown in Exhibit 10 and
Figures 9 and 10 of Kare’s report are even more inadequate than the other examples. The
uncommon, irregular and/or seemingly haphazard arrangements for these icons are not equal
alternatives to the uniform, simple, and functional design of the Samsung Products. For most of
the alternative interfaces, the user would have to overcome a fairly steep learning curve in
identifying where certain icons are located, if the icons even remain static on the screen at all.
(See Kare, Exhibit 10 at ¶ 4.) I am also informed that Apple has identified several other
purported alternative designs in a written discovery response to Samsung. 52 I have considered
these alternative designs as well, and believe that they are also not valid alternatives for many of
the same functional reasons listed above.
Furthermore, no consideration of the Samsung design principles were mentioned when
prosing these alternative designs. In my opinion, after assessing Samsung’s approach to design
and reviewing the various alternative designs, it is clear that none of the alternative designs align
to the Samsung design principles.
50

See Exhibit 19
See Exhibit 20
52
I am informed that these designs include the following, some of which overlap with
Ms. Kare’s report: Sony Ericsson Xperia X10, Nokia N8 (see screen capture at Ex. 21), Palm
Centro, Palm Pixi Plus (Ex. 22), Nokia Lumia 800, Palm Treo 700p, Pantech Hotshot
CDM8992VW, Blackberry Torch 9850 (Ex. 20), Blackberry Storm 2 (Ex. 18), and Samsung
F700.
51

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Other Samsung Device Designs. Ms. Kare’s report appears to conclude that the accused
Samsung devices have substantially the same overall appearance as Apple’s GUI design patents
and trade dress because they share rectangles with rounded corners in an icon grid pattern. I
conclude this because Ms. Kare first opines that the Apple patents and devices as well as the
Samsung devices use varying graphic styles for the icons and then states that the “consistent use
of rounded, square-shaped icons in a grid layout unifies the icons in producing an overall visual
appearance as a group.” (Kare ¶ 66.) I am informed that Apple has not accused the Galaxy SII
devices of infringing Apple’s GUI design patents, even though Apple has accused them of
infringing Apple’s iPhone trade dress. The Galaxy SII design, 53 such as the one found in the
Galaxy SII (T-Mobile), is very similar to the accused Samsung phones, including the Fascinate,
as shown below. The icons in the SII design still maintain a flat and predominantly square shape,
but without the containers behind them.54 In my opinion, for all the reasons stated above, the SII
design would also not appear to be substantially the same design as the D790, D305, or D334
designs when considered by an ordinary observer.55

53

Screen captures from Galaxy SII phones, and other Samsung devices I understand to
be accused of trade dress infringement, are attached as Exhibits 23-33 to this report. As with the
accused Samsung phones, I have included the default home screens as well, as those would
affect the overall visual appearance of the graphical user interface to the ordinary observer.
54
I offer no opinion as to whether the user interface layouts of the Galaxy SII phones
and other Samsung devices are functionally equivalent to the layout of the Samsung phones
accused of infringing Apple’s design patents. I reserve the right to supplement my report to
make such an assessment in response to Apple, Ms. Kare, or another expert in the event that they
undertake such an evaluation.
55
I hold this same opinion for all the designs that I understand to be accused of trade
dress infringement.
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Galaxy SII (AT&T)

Fascinate

Summary. For the foregoing reasons, I believe Kare fails to show that the user interface
designs in the Samsung devices would appear substantially the same to an ordinary observer as
the designs in the Apple designs patents. I believe Kare comes to her conclusion by disregarding
the numerous differences in the designs, and instead basing her opinion on a few of the shared
characteristics of the designs. In my opinion, an ordinary observer who is both conversant with
the prior art and a purchaser of the Apple designs, or at least sufficiently interested in them,
would not be deceived into buying the Samsung designs thinking them to be the Apple designs. I
also believe that Kare fails to offer an equally functional alternative user interface to the one used
in the Samsung Products. Each alternative design offered by Kare would diminish the utility of
the Samsung user interfaces.
VII.
A.

ANALYSIS OF APPLE’S ASSERTED TRADE DRESS
Scope of the Asserted Trade Dress

The Asserted Trade Dress comprises three elements relating to the GUI of the devices.
This report will address these aspects of the Asserted Trade Dress, but will not discuss the
hardware-related elements.
According to Apple, the GUI-related elements of its Asserted Trade Dress are:
-when the device is on, a matrix of colorful square icons with evenly rounded corners
within the display screen;

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-when the device is on, a bottom dock of colorful square icons with evenly rounded
corners set off from the other icons on the display, which does not change as other pages
of the interface are viewed;
-and when the device is on, a row of small dots on the display screen.56
B.

Scope of the Asserted Trademarks

The Asserted Trademarks as set forth in Apple’s Amended Complaint comprise the
following U.S. Registrations:

3,886,196
Icon for
Telephone Calls

3,886,169
Icon for Notes

3,889,642
Icon for Messaging

3,886,197
Icon for Contacts

3,886,200
Icon for Photos

Application No. 85/041,463
(Purple iTunes Store Trademark)

56

See Amended Complaint ¶¶ 33, 35, 56, 59.
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2,935,038
(iTunes Eighth Note and CD
Design Trademark)

3,889,685
Icon for Settings

C.

Discussion of Relevant Sleekcraft Factors

To shed light on the question of consumer confusion, which I understand is the relevant
standard for trademark and trade dress infringement, my analysis will focus on certain of the
Sleekcraft factors most relevant to my expertise, namely, (1) the strength of the asserted trade
dress/icons; (2) the similarity in appearance of the parties’ trade dress/ icons; and (3) Samsung’s
intention in designing the accused trade dress/ icons. I will evaluate these factors as they relate to
the GUI elements of the products at issue from the perspective of an expert in graphical user
interface design. Unless otherwise specified, the analysis below applies to the GUI elements of
all the Samsung devices accused of trade dress and trademark infringement.57
1.

Strength of the Asserted Trademarks and Trade Dress

I understand that the strength of Apple’s trademarks and trade dress is evaluated in the
context of the marketplace for smart phones and tablets. When many products employ the same
or similar trademarks, those marks are considered “weak,” in that they do not direct consumers
to a particular source.
It is my opinion as an experienced designer of user interfaces for consumer electronics
products that all of Apple’s asserted icons are “weak” trademarks because third-parties regularly
employ similar icons in the GUI of similar products on the market today. Given this crowded
field, it is my opinion that consumers would not likely mistake Samsung’s icons for Apple icons.
In the expert report of Mazis (Expert Report of Michael Mazis, PhD, March 22, 2012,
pages 4-5), findings support my opinion that Apple’s asserted icons are “weak” and not
distinctive concluding that “the median rate of all respondents identifying Apple as the source of
the icons was again about 13%.” This “survey was designed to determine whether the phone,
messaging, photos, settings, notes, contacts, iTunes, and iTunes on-line music service icons used
57

The Samsung products accused of trade dress infringement are: Galaxy S 4G;
Captivate; Continuum; Droid Charge; Epic 4G; Vibrant; Fascinate; Showcase Galaxy S;
Mesmerize; Galaxy Prevail; Infuse 4G; Galaxy Tab 10.1; Galaxy Tab 7.0; Galaxy Ace; Galaxy S
i9000; Galaxy SII; Galaxy SII Skyrocket; Galaxy SII i9100; and Galaxy SII Epic 4G Touch. The
Samsung products accused of trademark infringement include all of the above and the following:
Gem; Gravity Smart; Indulge; Acclaim; Intercept; Nexus S; Nexus S 4G; Replenish; Transform;
and Sidekick.
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in Apple’s iPhone and iPad products have acquired distinctiveness. Thus, the survey sought to
determine whether smart phone and tablet computer owners associate these eight icons with one
company and whether that company is Apple.”
Other elements of the trade dress claimed by Apple are equally prevalent in today’s
marketplace for mobile phones. For example, a matrix of colorful icons is practically universal in
the mobile phone and tablet categories, while a bottom dock for icons is increasingly common.
Because these features are highly functional (Lucente Op. Rep. at p. 7-30) they have been widely
adopted by smart phone manufacturers. Attached as Exhibits 17-22 are images of some of the
many phones and tablets employing a colorful matrix of icons and/or an icon docking station.
(See also Lucente Op. Rep., Exhs. C & D (showing additional electronic devices with these
features).)
Considering how commonplace the GUI-related aspects of Apple’s trade dress are in the
marketplace, it is my opinion that Apple’s GUI-related trade dress is not distinctive from a
design perspective.
2.

Similarity of the Asserted Trademarks and Trade Dress

I understand the Court considers the similarity between the asserted and the accused
trademarks/trade dress when evaluating whether there is a likelihood of consumer confusion. My
analysis and conclusions concerning the similarity of the accused devices to Apple’s design
patents set forth above applies with equal force to the question of the similarity between the
trademark and trade dress elements of the accused devices, and for the sake of avoiding
repetition, I incorporate it here.
Because the consumer marketplace is flooded with descriptive icons that, due to the
functions they perform, share some degree of similarity, it is my view that consumers have come
to expect a certain degree of similarity among icons across various products and brands.
The findings of the expert report of Mantis (Expert Report of George Mantis,
March 22, 2012, page 13) supports my opinion, finding that respondents shown a Samsung
phone were not likely to mistakenly identify the phone as made by Apple. This LIKELIHOOD
OF CONFUSION STUDY determined whether, and if so, to what extent, relevant consumers are
likely to mistakenly believe that Samsung’s GALAXY S 4G, INFUSE 4G, GALAXY S
SHOWCASE, and GALAXY PREVAIL phones and Samsung’s GALAXY TAB 10.1 and
GALAXY TAB 7.0 Plus tablet computers are made by or with the approval or authorization of
Apple, Inc., (“Apple”) or that the maker of these products is connected to or affiliated with
Apple.
In fact, to a great extent, the functionality of an icon largely dictates the visual cues
consumers have already adopted from past experience as noted in my opening report. As Kare
acknowledges in her report, an icon “creates a shortcut for a user in a device interface” (Kare ¶
26.) Thus, in order for an icon to perform its function, it must build upon the expectations of
consumers. From an icon designer’s point of view, it would be entirely counterproductive to
deviate significantly from the norms already established for a particular type of icon.

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To illustrate this point, consider Apple’s icon’s for the notepad function:

3,886,169
Icon for Notes
Compare Apple’s icon to the notepad icons used by Samsung and other companies:

Samsung

DSM Notepad

Microsoft

NOKIA

As this comparison demonstrates, although icon designers have some leeway to alter the
details of icon design, they generally stay within the reasonable bounds of consumer expectation
so that the icon will perform its “shortcut” function efficiently. Here, Samsung and the other
brands shown have done just that. They have taken the well-known and widely employed yellow
notepad concept and modified it slightly. The same is true for each of the other trademarked
icons asserted by Apple.
Similarly, an icon gird layout or matrix and dock are common to smart phones across
many different makes and models, and as such, consumers have come to expect and associate
these features as part of the functionality of the phone, and not with any particular manufacturer.
Like icons, these features are there to serve a function, and the parameters of their “look and
feel” are dictated by utilitarian considerations.
3.

Samsung’s Intent

I understand that in trademark law, the likelihood of consumer confusion increases if it is
established that a party has intentionally tried to confuse consumers into thinking that its
products are those of another company.
In her report, Kare implies that whatever similarity exists between Apple and Samsung’s
icons is due to an intention by Samsung to copy Apple’s designs. I disagree with Kare’s
conclusions, for the reasons stated above. As previously noted, to the extent there is similarity
between the parties icons, in my opinion it is likely due to the fact that Apple’s icons themselves
build upon well-established themes and metaphors for icons that are widely employed in

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consumer electronics. Likewise, a matrix of icons and an icon dock are largely functional
features of the GUI that have been incorporated into most smartphones and tablets on the market
today. The fact that the accused products employ these same features in no way suggests that
Samsung had an intent to confuse consumers. Rather, Samsung, like many other participants in
the marketplace, seeks to offer consumers the functionality they desire and have come to expect.

Signature executed on April 17, 2012

______________________________
Samuel Lucente

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