14-09-05 Samsung Reply Brief in Appeal of Ruling in First Apple Case

8/11/2019 14-09-05 Samsung Reply Brief in Appeal of Ruling in First Apple Case

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No. 2014-1335

United States Court of Appeals for the

Federal Circuit

APPLE INC., a California corporation,

Plaintiff-Appellee,

v.

SAMSUNG ELECTRONICS CO., LTD., a Korean corporation,SAMSUNG ELECTRONICS AMERICA, INC., a New York corporation,

SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,a Delaware limited liability company,

Defendants-Appellants.

ON APPEAL FROM THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA IN CASE NO. 11-CV-01846-LHK,

HONORABLE LUCY H. KOH

SUSAN R. ESTRICH M ICHAEL T. ZELLER R OBERT J. BECHER B. DYLAN PROCTOR QUINN EMANUEL URQUHART

& SULLIVAN , LLP865 South Figueroa Street, 10 th FloorLos Angeles, California 90017(213) 443-3000

K ATHLEEN M. SULLIVAN W ILLIAM B. ADAMS QUINN EMANUEL URQUHART

& SULLIVAN , LLP51 Madison Avenue, 22 nd Floor

New York, New York 10010(212) 849-7000

Attorneys for Defendants-Appellants Samsung Electronics Co., Ltd., Samsung Electronics America, Inc. and Samsung Telecommunications America, LLC

(For Continuation of Appearances See Inside Cover)

Case: 14-1335 Document: 129 Page: 1 Filed: 09/05/2014

CORRECTED REPLY BRIEF FOR DEFENDANTS-APPELLANTS


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VICTORIA F. MAROULIS QUINN EMANUEL URQUHART

& SULLIVAN , LLP555 Twin Dolphin Drive, 5 th FloorRedwood Shores, California 94065(650) 801-5000

K EVIN A. SMITH QUINN EMANUEL URQUHART

& SULLIVAN , LLP50 California Street, 22 nd FloorSan Francisco, California 94111(415) 875-6600

Attorneys for Defendants-Appellants Samsung Electronics Co., Ltd., Samsung Electronics America, Inc. and Samsung Telecommunications America, LLC



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TABLE OF CONTENTS

Page

TABLE OF AUTHORITIES .................................................................................... iv INTRODUCTION ..................................................................................................... 1

ARGUMENT ............................................................................................................. 2

I. APPLE IS UNABLE TO DEFEND THE $399 MILLIONJUDGMENT FOR DESIGN-PATENT INFRINGEMENT ........................... 2

A. No Properly-Instructed Jury Could Find Design-PatentInfringement .......................................................................................... 2

1. Apple Fails To Rehabilitate The District CourtsInstructions On Scope And Infringement ................................... 2

(a) Scope And Functionality .................................................. 3

(b) Deceptive Similarity ......................................................... 5

(c) Prior Art ............................................................................ 6

2. Apple Fails To Identify Substantial Evidence OfDeceptive Similarity To Ornamental Features ........................... 6

(a) D677 And D087 Patents ................................................ 7

(b) D305 Patent ................................................................... 14

B. No Properly- Instructed Jury Could Award Samsungs EntireProfits For Design-Patent Infringement .............................................. 14

1. Apple Fails To Overcome The District Courts Erro r In

Omitting A Causation Requirement ......................................... 14

2. Apple Fails To Overcome The District Courts Error InOmitting A Nexus To The Article Of Manufacture .............. 16

II. APPLE IS UNABLE TO DEFEND THE $382 MILLIONJUDGMENT FOR TRADE-DRESS DILUTION ........................................ 18



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A. Apple Fails To Show That A Reasonable Jury Could FindTrade-Dress Dilution Liability ............................................................ 19

1. Apple Fails To Identify Substantial Evidence That ItsTrade Dresses, As Claimed, Were Famous .............................. 19

(a) Apples Promotional Materials Do Not EvenDepict The Claimed Trade Dresses ................................ 19

(b) There Is No Evidence Of Fame-Creating Sales OfProducts Practicing The Trade Dresses .......................... 21

(c) There Is No Evidence Of Substantial ActualRecognition Of The Trade Dresses ................................ 21

2. Apple Fails To Refute That Its Trade Dresses AreFunctional .................................................................................. 22

3. Apple Does Not Identify Substantial Evidence Of LikelyDilution ..................................................................................... 24

4. The TDRA Should Not Be Interpreted To Create APerpetual Patent Monopoly ....................................................... 26

B. No Properly-Instructed Jury Could Award $382 Million InTrade-Dress Dilution Damages ........................................................... 27

1. Samsung Preserved Its Objection To The WillfulnessInstruction ................................................................................. 27

2. Apple Fails To Identify Substantial Evidence That AnyDilution Was Willful ................................................................. 29

3. Apple Does Not Identify Substantial Evidence ToSupport The Infringers Profits And Lost Profits Awards ........ 31

(a) The $291 Million Infringers Profits AwardCannot Stand ................................................................... 31

(b) The $91 Million Lost Profits Award Cannot Stand ....... 32

III. APPLE IS UNABLE TO DEFEND THE $149 MILLIONJUDGMENT FOR UTILITY-PATENT INFRINGEMENT ........................ 33



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A. No Reasonable Jury Could Find Liability As To Th e 915 And163 Patents ......................................................................................... 33

1. Apple Fails To Refute That Claim 8 Of The 915 PatentIs Anticipated ............................................................................ 33

2. Apple Fails To Refute That Claim 50 Of The 163 PatentIs Indefinite ............................................................................... 34

B. No Reasonable Jury Could Award $149 Million In DamagesFor Utility-Patent Infringement ........................................................... 37

1. Apple Does Not Identify Substantial Evidence ToSupport The $114 Million Lost Profits Award ForInfringement Of The 91 5 Patent .............................................. 37

2. Apple Does Not Identify Substantial Evidence ToSupport The $35 Million Reasonable Royalty Award ForInfringement Of The Three Utility Patents ............................... 39

IV. APPLE IS UNABLE TO EXPLAIN WHY AT THE VERY LEASTA NEW TRIAL IS NOT WARRANTED ..................................................... 40

A. The Instructional Errors At Minimum Require Vacatur AndRemand ................................................................................................ 40

B. Apple Fails To Justify The Erroneous Exclusion Of SamsungsEvidence Of Independent Development ............................................. 40

CONCLUSION ........................................................................................................ 45

PROOF OF SERVICE ............................................................................................. 47

CERTIFICATE OF COMPLIANCE ....................................................................... 48



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Bush & Lane Piano Co. v. Becker Bros. ,222 F. 902 (2d Cir. 1915) ................................................................................... 17

Bush & Lane Piano Co. v. Becker Bros. ,234 F. 79 (2d Cir. 1916) ..................................................................................... 17

Carey v. Piphus ,435 U.S. 247 (1978) ............................................................................................ 15

Citrus El Dorado, LLC v. Stearns Bank ,552 F. Appx 625 (9th Cir. 2014) ....................................................................... 29

Coach Servs., Inc. v. Triumph Learning LLC ,668 F.3d 1356 (Fed. Cir. 2012) .......................................................................... 24

Commil USA, LLC v. Cisco Sys., Inc. ,720 F.3d 1361 (Fed. Cir. 2013) ...................................................................... 6, 40

Crocs, Inc. v. ITC ,598 F.3d 1294 (Fed. Cir. 2010) ............................................................................ 3

Datamize LLC v. Plumtree Software, Inc. ,417 F.3d 1342 (Fed. Cir. 2005) .......................................................................... 36

DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc. ,567 F.3d 1314 (Fed. Cir. 2009) .......................................................................... 38

Disc Golf Assn v. Champion Discs, Inc. ,158 F.3d 1002 (9th Cir. 1998) ............................................................................ 23

DSU Med. Corp. v. JMS Co .,471 F.3d 1293 (Fed. Cir. 2006) ...................................................................... 6, 37

Egyptian Goddess, Inc. v. Swisa, Inc. ,543 F.3d 665 (Fed. Cir. 2008) ................................................................ 3, 4, 6, 10

Elwood v. Christie ,144 E.R. 537 (1865) ............................................................................................ 16

Environ Prods., Inc. v. Furon Co. ,215 F.3d 1261 (Fed. Cir. 2000) ............................................................................ 7



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First Brands Corp. v. Fred Meyer, Inc. ,809 F.2d 1378 (9th Cir. 1987) ...................................................................... 19, 21

Gantt v. City of Los Angeles ,717 F.3d 702 (9th Cir. 2013) .............................................................................. 29

Georgia-Pacific Corp. v. U.S. Plywood Corp. ,318 F. Supp. 1116 (S.D.N.Y. 1970) ............................................................. 39, 40

In re Gleave ,560 F.3d 1331 (Fed. Cir. 2009) .......................................................................... 34

Glover v. BIC Corp. ,6 F.3d 1318 (9th Cir. 1993) ................................................................................ 28

Grain Processing Corp. v. Am. Maize-Prods. Co. ,185 F.3d 1341 (Fed. Cir. 1999) .......................................................................... 38

Grosvenor Properties Ltd. v. Southmark Corp. ,896 F.2d 1149 (9th Cir. 1990) ............................................................................ 28

Gulliford v. Pierce Cnty. ,136 F.3d 1345 (9th Cir. 1998) ............................................................................ 28

Hunter v. County of Sacramento ,652 F.3d 1225 (9th Cir. 2011) ...................................................................... 28, 29

Intel Corp. v. Terabyte Int l, Inc. ,6 F.3d 614 (9th Cir. 1993) .................................................................................. 32

Kaufman Co. v. Lantech, Inc. ,926 F.2d 1136 (Fed. Cir. 1991) .................................................................... 33, 37

Krippelz v. Ford Motor Co. ,667 F.3d 1261 (Fed. Cir. 2012) .......................................................................... 34

L.A. Gear, Inc. v. Thom McAn Shoe Co. ,988 F.2d 1117 (Fed. Cir. 1993) ............................................................................ 4

Lee v. Dayton-Hudson Corp. ,838 F.2d 1186 (Fed. Cir. 1988) ............................................................................ 5



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Lindy Pen Co. v. Bic Pen Corp. ,982 F.2d 1400 (9th Cir. 1993) ............................................................................ 31

Mackie v. Rieser ,296 F.3d 909 (9th Cir. 2002) .............................................................................. 15

Meyer v. Holley ,537 U.S. 280 (2003) ............................................................................................ 15

Nautilus Inc. v. Biosig Instruments, Inc. ,134 S. Ct. 2120 (2014) .............................................................................. 4, 34, 36

Norwood v. Vance ,591 F.3d 1062 (9th Cir. 2010) ............................................................................ 27

OddzOn Prods., Inc. v. Just Toys, Inc. ,122 F.3d 1396 (Fed. Cir. 1997) .............................................................. 3, 4, 5, 14

PHG Techs., LLC v. St. John Cos. ,469 F.3d 1361 (Fed. Cir. 2006) ............................................................................ 4

Presidio Components, Inc. v. American Technical Ceramics Corp. ,702 F.3d 1351 (Fed. Cir. 2012) .......................................................................... 32

Read Corp. v. Portec, Inc. ,970 F.2d 816 (Fed. Cir. 1992) .............................................................................. 3

Revision Military, Inc. v. Balboa Mfg. Co. ,2011 WL 3875624 (D. Vt. Aug. 31, 2011) ......................................................... 10

Richardson v. Stanley Works, Inc. ,597 F.3d 1288 (Fed. Cir. 2010) ........................................................................ 3, 4

Rite-Hite Corp. v. Kelley Co. ,56 F.3d 1538 (Fed. Cir. 1995) ............................................................................ 27

Schnadig Corp. v. Gaines Manufacturing Co. ,1977 WL 23183 (W.D. Tenn. July 20, 1977) ..................................................... 17

SmithKline Beecham Corp. v. Apotex Corp. ,439 F.3d 1312 (Fed. Cir. 2006) ............................................................................ 3



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Versa Prods. Co. v. Bifold Co. ,50 F.3d 189 (3d Cir. 1995) ................................................................................. 31

Weinar v. Rollform, Inc. ,744 F.2d 797 (Fed. Cir. 1984) .......................................................................... 6, 7

Whitserve, LLC v. Computer Packages, Inc. ,694 F.3d 10 (Fed. Cir. 2012) .............................................................................. 39

Young v. Grand Rapids Refrigerator Co. ,268 F. 966 (6th Cir. 1920) ............................................................................ 17, 18

Statutes, Regulations & Rules

15 U.S.C. 1125(c)(1) ............................................................................................. 21

15 U.S.C. 1125(c)(2)(A) ....................................................................................... 24

15 U.S.C. 1125(c)(5)(B)(i) .............................................................................. 29, 30

35 U.S.C. 284 ........................................................................................................ 27

35 U.S.C. 287 ........................................................................................................ 27

35 U.S.C. 289 ............................................................................................ 15, 16, 18

37 C.F.R. 1.153(a) ................................................................................................. 17

Fed. R. Civ. P. 14(a)(1) ............................................................................................ 18

Fed. R. Civ. P. 51(d)(2) ............................................................................................ 28

Fed. R. Civ. P. 59 ..................................................................................................... 27

Fed. R. Evid. 403. .................................................................................................... 44

An Act for Amending the Law for Granting Patents for Inventions,1852, 15 & 16 Vict., c. 83, 42 .......................................................................... 16

Designs Act, 1842, 5 & 6 Vict., c.100, 8-9 ......................................................... 16

Patents, Designs, & Trade Marks Act, 1883, 46 & 47 Vict., c. 57, 58-59 ......... 16



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Miscellaneous Authorities

18 Cong. Rec. 835 (1887) ........................................................................................ 15

4 McCarthy on Trademarks 24 (4th ed. 2014) ............................................... 22, 26

Michael Risch, Functionality and Graphical User Interface Design Patents ,17 Stan. Tech. L. Rev. 53 (2013) ........................................................................ 14

S. Rep. No. 49-206 (1886) ....................................................................................... 16

Wright & Miller, 11 Fed. Prac. & Proc. Civ. 2886 (3d ed. 2014) .......................... 6



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INTRODUCTION

Apples answering brief tracks its trial strategy: Apple touts the iPhone and

the iPad as iconic and beautiful and endlessly repeats (Br. 3 -4, 12, 15, 19, 22-

24, 33, 65, 70- 71, 87, 91) that Samsung supposedly copied those des igns. But

the issue before this Court is whether Samsung infringed the ornamental

appearance of specific Apple designs, or diluted particular Apple trade dresses, so

as to cause Samsungs profits or Apples lost sales. Whether the iPhone was the

Invention of the Year (Br. 5), the tech press praised the iPhones overall look ( id.

at 5-6, 14- 15, 56), or consumers value such generalized features as beauty,

design and style (id . at 50 n.14), is irrelevant. And because copying is not an

element of patent infringement (as the district court erroneously failed to instruct,

see Samsung Br. 8-9), a jury barraged with irrelevant copying evidence should at

least have been permitted to hear evidence that Samsung had itself developed

iPhone-like smartphone designs well before the iPhone was ever released.

Moreover, Apples insistence that it may receive all of Samsungs profits for

supposed infringement of narrow design features that constitute only a minor part

of a complex smartphone features that Apples own c o-founder called only very

small things I dont really call that innovative (A9145) runs counter to this

Courts extensive jurisprudence requiring a causal nexus between infringement and

harm. Cf. Apple Inc. v. Samsung Elecs. Co., Ltd ., 735 F.3d 1352, 1365-68 (Fed.



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Cir. 2013) ( Apple III ); Apple Inc. v. Samsung Elecs. Co., Ltd ., 695 F.3d 1370,

1375- 77 (Fed. Cir. 2012) ( Apple II ); Apple Inc. v. Samsung Elecs. Co. Ltd ., 678

F.3d 1314, 1324- 25 (Fed. Cir. 2012) ( Apple I ). Nothing in the Patent Act

immu nizes design patents from this Courts well -developed requirements of

causation and proportionality in patent damages, as the amici supporting Samsung

confirm.

The judgment below should be reversed or at a minimum vacated and

remanded for new trial.

ARGUMENT

I. APPLE IS UNABLE TO DEFEND THE $399 MILLION JUDGMENTFOR DESIGN-PATENT INFRINGEMENT

A. No Properly-Instructed Jury Could Find Design-PatentInfringement

1. Apple Fails To Rehabilitate The District CourtsInstructions On Scope And Infringement

Apple fails in defending (Br. 27- 32) the district courts design -patent jury

instructions despite their failure to require the jury (a) to factor out functional or

structural elements, (b) to consider lack of actual deception, and (c) to take the

prior art into account.



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(a) Scope And Functionality 1

First , this Courts decisions do not permit infringement findings based on

the overall appearance of a design as a whole or in its entirety, but rather only

on a designs overall ornamental visual impression, OddzOn Prods., Inc. v. Just

Toys, Inc. , 122 F.3d 1396, 1405 (Fed. Cir. 1997) (emphasis added) that is, overall

appearance with functional features factored out , see Richardson v. Stanley

Works, Inc. , 597 F.3d 1288, 1293-94 (Fed. Cir. 2010); Read Corp. v. Portec, Inc. ,

970 F.2d 816, 825 & n.5 (Fed. Cir. 1992). Egyptian Goddess, Inc . v. Swisa, Inc. ,

543 F.3d 665, 677 (Fed. Cir. 2008) (en banc), and Crocs, Inc. v. ITC , 598 F.3d

1294, 1303 (Fed. Cir. 2010), are not to the contrary, for neither involved

functionality limitations let alone held that such elements may be included in

infringement analysis.

Second , factoring out functional elements is not merely discretionary .

Egyptian Goddess confirmed that trial courts have a duty to conduct claim

construction in design patent cases, 543 F.3d at 679 (emphasis added), and that

the scope of the claim must be construed in order to identify the non-functional

1

Samsung did not waive claim-construction arguments in its opening brief,which identified unprotected features of Apple s design patents (Samsung Br. 26-28) and argued that the district court erred in failing to construe[] the design

patents so as to properly limit their scope and to require the jury to excludefunctional aspects ( id. at 22-24 (citing proposed claim-construction andinfringement instructions)). SmithKline Beecham Corp. v. Apotex Corp. , 439 F.3d1312, 1320 (Fed. Cir. 2006), requires no more.



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aspects of the design as shown in the patent, id. at 680 (quoting OddzOn , 122

F.3d at 1405) (emphasis added); see Richardson , 597 F.3d at 1293-94. And

because design-patent drawings setting forth a claim do not, in and of themselves,

disclose limitations based on the inclusion of functional elements, those limitations

must be explained to the jury in order to afford clear notice of what is claimed.

Nautilus Inc. v. Biosig Instruments, Inc. , 134 S. Ct. 2120, 2129 (2014).

Third , Apple incorrectly argues (Br. 29- 30 & n.6) that a design patents

scope need not be limited unless the entire design is dictated by function.

A pples authorities all deal with challenges to validity , but even where functional

characteristics do not invalidate the design patent, they still limit the scope of the

protected subject matter, OddzOn , 122 F.3d at 1406 (emphasis added); see

Richardson , 597 F.3d at 1294 (same), and thus must be factored out of the

infringement analysis.

Fourth , Apple incorrectly states (Br. 30 & n.7) that functionality is negated

by the mere existence of alternative designs. To the contrary, such designs defeat

functi onality only if functionally equivalent such that they do not adversely

affect the utility of the article. PHG Techs., LLC v. St. John Cos. , 469 F.3d 1361,

1367 (Fed. Cir. 2006) (emphasis added). 2 Moreover, the basic configuration or

2 Apple misplaces reliance (Br. 29-30) on L.A. Gear, Inc. v. Thom McAnShoe Co. , 988 F.2d 1117, 1123 (Fed. Cir. 1993), where it was undisputed thatalternative designs could perform the functions of the elements of the [patented]



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structure of a design is unprotected even if alternative designs could be created

using the same concept or elements. 3

Finally , Apples assertion (Br. 31) that no design element here was

dictated by function is belied by the testimony of Apples own witnesses that the

elements of a display screen, clear cover over the display, and speaker at the top

(for the D677 and D087 patents) and finger -sized icons used as visual

shorthand and arranged in a grid (for the D305 patent) were either absolutely

functional, necessary, or not features Apple owns. A41202:25 -A41203:1-9;

A41200:13-17; A40681; A41459:9-25; A41471-72; A41479:25-A41480:7;

A41442- 44; A41456. Apples evidence of alternative designs for entire

smartphones or icon screens (Br. 37, 44) is irrelevant to the functionality of such

elements.

(b) Deceptive Similarity

Apple argues (Br. 32) that the court correctly instructed that proof of actual

deception was not required , but does not deny that its own experts admitted that

design, and Best Lock Corp. v. Ilco Unican Corp. , 94 F.3d 1563, 1566 (Fed. Cir.1996), where all alternative designs were rejected because they could not provideequivalent functionality.

3 See OddzOn , 122 F.3d at 1405-06 (holding unprotectable generalconfiguration of rocket -like tossing ball having football shape combined withfins on a tail); Lee v. Dayton-Hudson Corp. , 838 F.2d 1186, 1188-89 (Fed. Cir.1988) (holding unprotectable basic configuration of massager having anelongated handle [and] two opposing balls at one end).



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there has been no marketplace deception despite extensive sales of the relevant

products. Apple offers no justification, in light of that evidence, for the courts

refusal to instruct that it might be relevant to whether ordinary-observer deception

is likely.

(c) Prior Art

Apple fails to explain how Egyptian Goddess , 543 F.3d at 677-78, permits

use of discretionary guidelines in which small differences merely may be

important to the ordinary observer (A01394 (emphasis added)), even when the

claimed design is similar to prior-art designs and the accused similarities also

existed in prior art. It does not.

2. Apple Fails To Identify Substantial Evidence Of DeceptiveSimilarity To Ornamental Features

These instructional errors at a minimum require a new trial because they

could have changed the result. Commil USA, LLC v. Cisco Sys., Inc. , 720 F.3d

1361, 1367 (Fed. Cir. 2013) .4 Here, however, the absence of evidence that would

4 Apple disagrees that an error that could have changed the resultsupports a new trial (Br. 26 n.2), but this has long been the canonical instructional-error test. E.g. , Weinar v. Rollform, Inc. , 744 F.2d 797, 808 (Fed. Cir. 1984);Wright & Miller, 11 Fed. Prac. & Proc. Civ. 2886 & n.3 (3d ed. 2014) (endorsingtest and collecting cases). The language in SynQor, Inc. v. Artesyn Techs., Inc .,709 F.3d 1365 (Fed. Cir. 2013), that Apple claims is contradictory that errorsas a whole clearly mislead the jury ( id. at 1379 (quoting DSU Med. Corp. v.

JMS Co ., 471 F.3d 1293, 1304 (Fed. Cir. 2006) (en banc))) merely requires thaterrors be reviewed in context because a statement in one instruction might clarify



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support a liability finding by a properly-instructed jury warrants judgment for

Samsung.

(a) D677 And D087 Patents

Apple relies (Br. 33- 35) on its experts opinions that Samsungs products

bore an overall similarity to Apples designs, but such reliance is misplaced

because only evidence of deceptive similarity to their protected ornamental

appearance can support infri ngement, and Apples experts concededly factored

nothing out in their comparisons. See supra , at 3-5.

Scope and Functionality. Apples witnesses admitted that elements of a

display screen with a clear cover and speaker-at-the-top are necessary and

functional. A41202:25 -A41203:1-9; A41200:13-17; A40681. Apple cites (Br.

37) alternative designs that supposedly show non -functionality, but each of those

alternatives shows the same elements a pattern that confirms their functionality.

Apple nowhere contests that it may not monopolize the basic form of a rectangle

with rounded corners or the use of large screens, and does not argue that there are

functionally equivalent alternatives for such attributes, nor could it, as the evidence

showed that such elements provide superior functionality. A40676-77;

A40873:18-19; A40869:13-40870:3; A40682:13-15; A42612:3-42618:12;

A28590-95.

another. Environ Prods., Inc. v. Furon Co ., 215 F.3d 1261, 1266-67 (Fed. Cir.2000) (stating both parts of test); Weinar , 744 F.2d at 808.



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Deceptive Similarity. Apple cannot refute its own experts admissions that

the ordinary consumer would not be deceived in purchasing. A41104:11-

A41105:8; A41106:13- A41107:13. Apples experts statement that an ordinary

observer might mistake a single Samsung phone for the D677 patent (A41058,

cited at Br. 35) falls far short of showing the required likelihood of deception. And

Apples reliance on news articles (Br. 35 -36) is unavailing, for these hearsay

statements were excluded as to the truth and do not show deception. A08427

(listing PX6); A08431 (listing PX174); A41078-79; A41528:22-A41529:1.

Apple simply ignores that once similarities in unprotected functional and

structural attributes are disregarded, the differences between the parties products

become prominent:

D677 GSII (T-Mobile) GSII (Epic 4G Touch)A01314 A24719 A24721



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These devices are all rectangular and have rounded corners and large display

screens with clear covers and speakers at the top, but such similarities in functional

or structural features are not actionable. As to protected ornamental attributes,

Samsungs devices are very differe nt from Apples minimalist designs, employing

different proportions and filling the limited space outside the operative display

screens with multiple icons across the bottom, bold metallic writing, and other

ornamentation, such as speaker covers, sensors and camera holes at the top:

D677 GSII (T-Mobile)A01314 A24719

Apple is unpersuasive (Br. 33) in dismissing these differences as minor.5

5 Apple is wrong (Br. 33 n.8) that the presence of bright metallic writing onSamsungs phones is irrelevant, for this writing creates an aesthetic differenceregardless of the words that are used. As the district court instructed, [t]he

placement and ornam entation of a logo may alter the overall design. A44024; see



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Prior Art. While Apple argues (Br. 38-41) that no single piece of prior art

reveals every element of its designs, the ordinary observer considers prior art in

the aggregate when assessing infringement. Egyptian Goddess , 543 F.3d at 678-

83. Apple never disputes that, in the aggregate, the prior art reveals every

similarity on which Apple relied for its proof of infringement. Those similarities

are even more apparent once functional and structural elements are disregarded.

Moreover, Apples positions are unpersuasive even taking the prior art one -

by-one. As to the LG Prada, for example, Apple argues only that it has a

noticeably smaller screen that is supposedly not centered, a purportedly

longer and narrower body, and a large key running across the bottom (Br.

40-41 (quoting A43611:15-25)):

Revision Military, Inc. v. Balboa Mfg. Co. , 2011 WL 3875624, *16 (D. Vt. Aug.31, 2011), vacated in part on other grounds , 700 F.3d 524 (Fed. Cir. 2012).



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D677 LG PradaA01314 A24675

If those variat ions yield a different all over impression defeating substantial

similarity (Br. 40 (quoting A43611:15-22)), then so too must comparable

variations between Apples and Samsungs designs. For example, the Fascinate

has a screen that is not centered, is longer and narrower than the D677, has

different corner roundness, has visually-significant icons and writing across the

bottom akin to the Pradas large key, and includes additional ornamentation

absent from Apples design:



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D677 LG Prada FascinateA01314 A24675 A24703

Those same variations and more exist as to the D087 patent, for the uneven

bezels in Samsungs devices further enhance the dissimilarity:



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D087 Galaxy S4GA01298 A24712

Apple dismisses (Br. 34) bezel variatio ns as minor, but Apple itself argues ( id. at

39) that comparable differences as to the prior art, noticeable only in the side view,

create an extraordinarily different visual impression:

D087 JP638



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Apple I , 678 F.3d at 1326.

(b) D305 Patent

Apple errs (Br. 41-43) in suggesting that there was substantial evidence that

Samsungs phones convey the same overall visual impression as its patented

graphical user interface design based on the use of a grid of colorful icons in

rounded rectangular form, for such elements are unprotected as functional and

structural. See Michael Risch, Functionality and Graphical User Interface Design

Patents , 17 Stan. Tech. L. Rev. 53, 100-01 (2013).6

An Apple witnesss view that

the overall design is beautiful (Br. 43 (quoting A40630:21-22)) fails to

establish deceptive similarity based on ornamental elements alone of the narrow

patent-in-suit, see OddzOn , 122 F.3d at 1405-07, and Apple does not dispute the

prominent difference between the parties designs when focu sing on such attributes.

B. No Properly- Instructed Jury Could Award Samsungs EntireProfits For Design-Patent Infringement

1. Apple Fails To Overcome The District Courts Error InOmitting A Causation Requirement

As Apple fails to acknowledge in defending the design-patent damages

instructions (Br. 45-51), causation is a separate requirement that precedes any

6 Apple does not dispute that its expert Dr. Kare did not even considerfrom a functional standpoint, what is or is not necessary for the user (A43487; A41474) rendering her conclusory testimony of overall confusing similarityimmaterial.



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apportionment inquiry. Cf. Mackie v. Rieser , 296 F.3d 909, 915 (9th Cir. 2002);

Andreas v. Volkswagen of Am., Inc. , 336 F.3d 789, 796 (8th Cir. 2003).

Congress recognized this distinction in enacting what is now Section 289.

By 1887, causation was a well-established prerequisite to damages in American

common law and patent law. 7 The provisions primary sponsor, Representative

Martin, insisted that there was no intent to abrogate that rule; when asked whether

the plaintiff may recover the entire profit upon the article of product, without any

proof that this ar ises f rom the use of the design , he responded, I can not put any

such construction on this law , and when asked whether all the profits made on

the article embodying the infringement could be awarded whether those profits

arise from the use of the design alone or fr om various other circumstances which

may enter into the manufacture , he responded that the bill had no such

purpose . 18 Cong. Rec. 835 (1887) (emphases added).

7 See, e.g. , Carey v. Piphus , 435 U.S. 247, 255- 56 (1978) (principle thatdamages are designed to compensate persons for injuries caused by the deprivationof rights hardly could have been foreign to the many lawyers in Congress in

1871) (emphasis added); Tilghman v. Proctor , 125 U.S. 136, 146 (188 8) (The profits which he must account for, are not those which he might reasonablyhave made, but those which he did make, by the use of the plaintiffs invention .)(emphasis added); cf. Meyer v. Holley , 537 U.S. 280, 285 (2003) ([W]henCongress creates a tort action, it legislates against a legal background of ordinarytort- related rules and consequently intends its legislation to incorporate thoserules.).



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Indeed, as Apples amici acknowledge, the Patent Act of 1887 was modeled

on British patent-infringement statutes, which impose a similar requirement. 8 See

Br. of Amici Curiae Jason J. Du Mont & Mark D. Janis at 24; see also S. Rep. No.

49-206, at 2 (1886). Under the British scheme, where a patentee sought an

accounting of infringers profits, it was clearly not entitled to anything beyond the

profits which the defendants have actually made by the infringement of the patent.

Elwood v. Christie , 144 E.R. 537, 538 (1865) (emphasis added); accord id. at 539

n.2.

In a footnote (Br. 50 n.14), Apple purports to identify evidence of a causal

relationship between design and sale s, but that generic evidence about consumer

interest in design or style is insufficient to show causation as to the specific

patented features here. See Apple III , 735 F.3d at 1366. A nd Apples so -called

copying evidence cannot alone show causatio n. See id. at 1367; Apple I , 678

F.3d at 1327-28.

2. Apple Fails To Overcome The District Courts Error InOmitting A Nexus To The Article Of Manufacture

Nor does Apple succeed in defending (Br. 51- 53) the district courts failure

to instruct that an article of manufacture under Section 289 may comprise less8 Designs Act, 1842, 5 & 6 Vict., c.100, 8-9 (establishing remedies for

design-patent infringement); Patents, Designs, & Trade Marks Act, 1883, 46 & 47Vict., c. 57, 58-59 (reenacting same); An Act for Amending the Law forGranting Patents for Inventions, 1852, 15 & 16 Vict., c. 83, 42 (jurisdictionalstatute for infringement claims).



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than the entire product. A portion of a phones outer casing and a graphical user

interface which are all that Apples design patents purport to cover are just as

distinct from a smartphone as a piano and a piano case (Br. 51). See Br. of

Amicus Curiae Computer & Communications Industry Association at 5-6. 9 A

consumer need not be able to purchase an article of manufacture separately;

whether a products components are separately marketable make s no difference in

the rule of law, once the article to which the design was applied has been

ascertained. Bush & Lane Piano Co. v. Becker Bros. , 234 F. 79, 83 (2d Cir.

1916). 10 Apple identifies no decision from this Court or its predecessors holding

9 Indeed, the title of Apples patent application for the D305 limits thearticle of manufacture to the Graphical User Interface for a Display Screen orPortion Thereof (A01289); see 37 C.F.R. 1.153(a) (The title of the design mustdesignate the particular article . The claim shall be in formal terms to the

ornamental design for the article (specifying name) as shown, or as shown anddescribed .) (emphasis added). And while Apples applications for the D677 andD087 have improperly broader titles (Electronic Device (A01294; A01310)),the claims are limited to the top case portion of the device ( Apple I , 678 F.3d at1317).

10 Nor do the Piano Cases conflict with Untermeyer v. Freund , 58 F. 205(2d Cir. 1893), as there, the article of manufacture for which profits could berecovered was only the watch case, not the watch itself. See Untermeyer v.

Freund , 50 F. 77, 77-78 (C.C.S.D.N.Y. 1892); Bush & Lane Piano Co. v. Becker

Bros. , 222 F. 902, 905 (2d Cir. 1915) (noting same).Apples efforts to distinguish Schnadig Corp. v. Gaines Manufacturing Co. ,

1977 WL 23183 (W.D. Tenn. July 20, 1977), and Young v. Grand Rapids Refrigerator Co. , 268 F. 966 (6th Cir. 1920), likewise fail as those cases bothinvolve consideration of profits for only the component of a product as to whichthe patented design was applied (sectional sofa and latch, respectively) not theentire product as sold. Indeed, Apples interpretation of Section 289 would permit



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that a patentee is entitled to profits for an entire product where (as here) the

patented design covers less than all or nearly all of the product.

Apple likewise fails to dispel the risk of double recovery. Section 289s

double-recovery provision prohibits only a single patentee from obtaining multiple

recoveries, see 35 U.S.C. 289, leaving multiple patentees free to seek entire

profits multiple times over. Apples suggestion that an alleged infringer could

implead the initial plaintiff in subsequent suits disregards that an impleaded

patentee would have to be potentially liable to [the alleged infringer] for all or

part of the claim against it. Fed. R. Civ. P. 14(a)(1).

II. APPLE IS UNABLE TO DEFEND THE $382 MILLION JUDGMENTFOR TRADE-DRESS DILUTION

Apple fails to explain why it should be able to obtain through trade-dress

law what it could never obtain through patent law an unprecedented perpetual

monopoly on such broad and generic concepts as a rectangular shape with round

corners. While Apples brief repeatedly refers to the iPhone in general, its trade

dresses are far narrower. Apple omitted from its trade dresses the word Apple,

the iPhones home button, and the Apple logo. Instead, they consist only of

specific features like a specific arr ay of icons, a row of small dots, and a bottom

a holder of a patent for a refrigerator latch to recover all the profits from the sale ofa refrigerator containing that latch an interpretation so extreme that it was noteven seriously contended in Young , 268 F. at 974.



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dock of icons that does not change as other pages of the user interface are

viewed. A01330 -31; A07357.

A. Apple Fails To Show That A Reasonable Jury Could Find Trade-Dress Dilution Liability

1. Apple Fails To Identify Substantial Evidence That Its TradeDresses, As Claimed, Were Famous

Apple incorrectly asserts (Br. 55 n.16) that trade-dress fame turns on

overall visual impression. The fame of the iPhone home button and Apple

logo are irrelevant, as they are not elements of the claimed trade dresses. See First

Brands Corp. v. Fred Meyer, Inc ., 809 F.2d 1378, 1383 (9th Cir. 1987). Apple

must point to evidence that ties fame among general consumers to its specific trade

dresses, and minor differences are significant, as illustrated by the fact that the jury

found some of Apples trade dresses unprotectable ( e.g ., the combination iPhone

trade dress that omitted the row of small dots, see A7552; A7358).

(a) Apples Promotional Materials Do Not Even DepictThe Claimed Trade Dresses

Apple misplaces reliance (Br. 55) on clips from popular news and TV

shows, for this evidence does not depict the claimed trade dresses, and a bare list

of television program titles (A24900) cannot fill this gap. The representative

television ad does not feature all sixteen icons claimed by the registered trade

dress or the row of small dots claimed in the unregistered trade dress. Nor did



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the commercial (or any print ad) show that the bottom dock of icons did not

change as othe r pages of the user interface are viewed.

A31073. Apple also cites (Br. 56) a Time article that depicts two entirely different

trade dresses, one fictionalized, and one that contains neither a row of dots nor

shows that the bottom dock of icons does not change:



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A27150-52. Not only do mere depictions of trade dress in advertisements in

themselves fail to prove fame, but materials that do not even depict the features of

the trade dresses are not evidence that the trade dresses, as claimed, are famous and

designate Apple as a products source. See First Brands , 809 F.2d at 1383.

(b) There Is No Evidence Of Fame-Creating Sales OfProducts Practicing The Trade Dresses

Apple cites (Br. 56) testimony that the iPhone sells extremely well and

sales spike when it releases a new model. But conclusory statements that a

product sells well are not substantial evidence of fame. Nor is Apples slide

depicting cumulative unit sales of all iPhone models (A24901), for it lumps

together sales of the original iPhone (embodying the alleged registered trade

dress), the iPhone 3G and iPhone 3GS (embodying the alleged unregistered trade

dress), and the iPhone 4 (not embodying any trade dress). 11

(c) There Is No Evidence Of Substantial ActualRecognition Of The Trade Dresses

Apples evidence of actual recognition of the trade dresses fails. First ,

Apple cites (Br. 56-57) evidence that consumers recognize the w ord iPhone,

unclaimed features of different iPhone models, or the iPhone brand generally.

11 Apple bore the burden of proving fame by the time Samsung allegedly began diluting in July 2010. 15 U.S.C. 1125(c)(1). All sales after that date andall sales of iPhone models that do not practice the trade dresses are thereforeirrelevant, including the iPhone 4. Apple erroneously claims that the charttracked only sales before the iP hone 4s release in June 2010 (Br. 56), but thechart plainly extends far beyond June 2010 (A24901).



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But the claimed trade dresses specifically omitted the word iPhone and features

like the iPhones home button, and not all iPhone models use either trade dress .

Apples only citation for the proposition (Br. 57, citing A24904) that [n]umerous

press articles prominently displayed the iPhones front face and graphical user

interface is Apples own summary of news articles that allegedly displayed some

of the d esign features.

Second , Apple relies (Br. 56-57) on the Van Liere survey, but that survey

defeats fame because it showed recognition by only 38 percent and 37 percent

among a limited consumer universe (A41701), a far cry from the 75% of the

general con suming public, 4 McCarthy on Trademarks 24:104, 24:106 (4th ed.

2014) (McCarthy), that might make the claimed trade dress part of the

collective national consciousness, Thane Intl, Inc. v. Trek Bicycle Corp ., 305

F.3d 894, 911-12 (9th Cir. 2002).

2. Apple Fails To Refute That Its Trade Dresses AreFunctional

While conceding (Br. 58) that a trade dress that affects the cost or quality of

the article is functional, Apple argues nonetheless that its trade dresses must be

analyzed as a whole, even if each of their component parts is functional. The

Ninth Circuit has rejected this argument as semantic trickery. Tie Tech, Inc. v.

Kinedyne Corp. , 296 F.3d 778, 786 (9th Cir. 2002) (internal quotation marks

omitted).



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Contrary to Apples argument (Br. 6 0-62), the four utilitarian functionality

factors set forth in Disc Golf Assn v. Champion Discs, Inc ., 158 F.3d 1002, 1006

(9th Cir. 1998), do not show non-functionality here. First , advertisements may

emphasize the product as hero and showcase the products precisely because of

the products functional appeal.

Second , the iPhones use of hardened or high grade steel is irrelevant;

although the original iPhone may have used it, neither of the claimed trade dresses

included hardened, high grade steel.

Third , Apples testimony that the original iPhone was beautiful merely

shows that its appeal is aesthetic, not based on its identification of source. Au-

Tomotive Gold, Inc. v. Volkswagen of Am., Inc ., 457 F.3d 1062, 1073 (9th Cir.

2006). Further, this testimony relates to the original iPhone, which Apple does not

contend practiced the unregistered trade dress, and is not tied to the elements of the

registered trade dress.

Fourth , the existence of alternative designs cannot negate a trademar ks

functionality. Talking Rain Beverage Co. v. S. Beach Beverage Co. , 349 F.3d

601, 603 (9th Cir. 2003). If it affects quality, the inquiry is over the feature is

functional and not protected. Au-Tomotive Gold , 457 F.3d at 1072.



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3. Apple Does Not Identify Substantial Evidence Of LikelyDilution

Similarity. Apple cites (Br. 63) the conclusory testimony of its expert that

the parties products look similar and claims that the differences are tiny only by

ignoring the language of its registered trade dress, with which the accused products

share only one of sixteen icons in common. A01330-31. In light of the specificity

of the registration, these differences are significant.

Distinctiveness. Apple argues (Br. 64) that its trade dresses acquired

distinctiveness through advertising, but fails to show that any advertisement

depicts its trade dresses, including the user interface features. Apple relies on the

Poret survey, but that survey was limited to respondents who already recognized

the iPhone (A41587-88) rendering it irrelevant to the statutes requirement that

the trade dress be widely recognized by the general consuming public . 15

U.S.C. 1125(c)(2)(A) (emphasis added); see Coach Servs., Inc. v. Triumph

Learning LLC , 668 F.3d 1356, 1372 (Fed. Cir. 2012).

Exclusive Use. Apple contends (Br. 64) that it has not licensed its trade

dresses, but the exclusive use factor is not limited to licensed use. See Va.

Polytechnic Inst. & State Univ. v. Hokie Real Estate, Inc. , 2011 WL 926862, *15

(W.D. Va. Mar. 15, 2011). Apple also ignores that many other manufacturers used

similar trade dresses, some of which are depicted below:



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A29511 A29516 A29521

A29522 A29487 A29512

Degree of Recognition. Apple relies (Br. 64-65) on the same deficient

Poret survey, which excluded all respondents who did not associate the trade

dresses with any manufacturer (A41587-88), rendering it irrelevant to recognition

by the general consuming public.



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Intent to Create Association. Apple cites (Br. 65) only evidence of alleged

copying of either functional or unclaimed features, which is irrelevant to an intent

to create an association with the trade dresses as claimed . Further, Apple cites no

evidence that any alleged copying was motivated by any intent to create an

association with Apple or its trade dress. See Bobrick Washroom Equip., Inc. v.

Am. Specialties, Inc ., 2012 WL 3217858, *14-15 (C.D. Cal. Aug. 8, 2012).

Actual Association. Apple relies (Br. 65) on media reports opining that two

accused products, the Galaxy S and Vibrant, resemble an iPhone 3G or 3GS

(A24687-88), but Apple does not contend that the iPhone 3G or 3GS practices the

registered trade dress. Apple also cites (Br. 66) the Van Liere survey, but it

concerned only supposed association of a single Samsung product with Apple or

the iPhone not each of the accused products with the claimed trade dresses, see

4 McCarthy 24:119.

4. The TDRA Should Not Be Interpreted To Create APerpetual Patent Monopoly

Contrary to Apples argument (Br. 66), Sa msung does not contend that all

dilution claims are precluded by the Patent Clause, but only that constitutional

avoidance counsels construing the TDRA to deny Apple a monopoly of unlimited

duration on the record here. Bonito Boats, Inc. v. Thunder Craft Boats, Inc ., 489

U.S. 141, 146 (1989).



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B. No Properly-Instructed Jury Could Award $382 Million InTrade-Dress Dilution Damages

Apple cannot defend (Br. 67) the $382 million trade-dress dilution award on

the alternative grounds of patent infringement, for the trade-dress award exceeds

any patent-infringement judgment allowable under the statutory-notice

requirements for patent infringement, see 35 U.S.C. 287, while utility-patent law

could not support the $291 million award of Samsungs profits, see id.

284. 12 The award is also unsustainable as a matter of trade-dress law.

1. Samsung Preserved Its Objection To The WillfulnessInstruction

Samsung did not waive objection to the district courts failure to instruct the

jury on the definition of trade-dress wil lfulness. If anything, Apple waive[d]

waiver implicitly by failing to assert it, Norwood v. Vance , 591 F.3d 1062, 1068

(9th Cir. 2010) (internal quotation marks omitted), in response to Samsungs

argument in its Rule 59 motion that the instruction was grounds for a new trial

(A07583-84). See Atkins v. New York City , 143 F.3d 100, 103 (2d Cir. 1998).

12 Because the earliest design-patent notice date is April 15, 2011 ( see A00106), any recovery of Samsungs profits before that date must necessarily rel y

on trade-dress liability. For all five of the trade-dress phones sold in the UnitedStates, Apple claimed and was awarded Samsungs profits for several months

before that earliest notice date. See A24676. Apples reliance (Br. 75 -76) on Rite- Hite Corp. v. Kelley Co. , 56 F.3d 1538, 1548 (Fed. Cir. 1995), is unavailing, forthat decision does not support the contention that patents may be used to justify alost-profits award on trade-dress dilution even before those patents are eligible fordamages.



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Even if Apples waiver argument (Br. 68) were properly presented, it fails.

An objection to a jury instruction need not be formal, and a party may prope rly

object by submitting a proposed instruction that is supported by relevant authority,

so long as the proffered language [is] sufficiently specific to bring into focus the

precise nature of the alleged error. Hunter v. County of Sacramento , 652 F.3d

1225, 1230 (9th Cir. 2011) (internal quotation marks omitted). Indeed, a proffered

instruction is sufficient to preserve error where, as here, the district court noted

for the record [appellants] objection to any requested instructions the court did not

give. Glover v. BIC Corp. , 6 F.3d 1318, 1327 (9th Cir. 1993); see A43914

([W]hatever you have already argued or has already been in the hundreds of pages

that have already been filed, I say thats been preserved. So for now Id like you to

focus on thin gs that havent been raised.). 13

In any event, the district courts failure to instruct on the definition of trade -

dress willfulness amounted to plain error reviewable under Fed. R. Civ. P.

51(d)(2). The district court erred because Samsung was entit led to an instruction

13 In neither Bollinger v. Oregon , 305 F. Appx 344 (9th Cir. 2008), nor

Snake River Valley Elec. Assn v. Pacificorp , 357 F.3d 1042 (9th Cir. 2004) (citedat Br. 68), did the district court advise the parties that their written submissionswere sufficient to preserve their objections. And, in contrast to Grosvenor

Properties Ltd. v. Southmark Corp. , 896 F.2d 1149, 1153 (9th Cir. 1990),Samsungs proffered instruction specifically focused the district court on the issue

presented on appeal. See Gulliford v. Pierce Cnty. , 136 F.3d 1345, 1349 n.6 (9thCir. 1998) (distinguishing Grosvenor ).



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about [its] theory of the case, which was supported by law and has foundation in

the evidence. Gantt v. City of Los Angeles , 717 F.3d 702, 706-07 (9th Cir. 2013).

And the error was plain because the standard for trade-dress willfulness is codified

as the inten[t] to trade on the recognition of the famous mark. 15 U.S.C.

1125(c)(5)(B)(i). Taken together with its instruction that mere recklessness

suffices for patentinfringement willfulness, the courts omission was

misleading. Hunter , 652 F.3d at 1232 (jury instructions must not be

misleading); see United States v. Mason , 902 F.2d 1434, 1441 (9th Cir. 1990).

That plain error thus affected Samsungs substantial rights because the incorrect

... instruction likely cause d the jury to assign liability to Samsung. Citrus El

Dorado, LLC v. Stearns Bank , 552 F. Appx 625, 627 (9th Cir. 2014); see United

States v. Marcus , 560 U.S. 258, 262 (2010) (substantial rights affected where

reasonable probability that the error affected the outcome of the trial); Samsung

Br. 58-61; infra , at 29-31. And allowing the judgment to stand would seriously

affect the fairness and integrity of the proceedings by denying Samsung its jury-

trial right on an essential element of a claim underlying a judgment worth hundreds

of millions of dollars.

2. Apple Fails To Identify Substantial Evidence That AnyDilution Was Willful

Trademark infringement is not willful where the defendant might have

reasonably thought that its proposed usage was not barr ed by the statute,



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Blockbuster Videos, Inc. v. City of Tempe , 141 F.3d 1295, 1301 (9th Cir. 1998)

(internal quotation marks omitted), and no different definition can apply to

dilution. The district courts order of August 20, 2014, denying Apples motio n

for attorneys fees (A9204 -23) confirms the reasonableness of Samsungs beliefs

here, ruling that Samsung raised several reasonable defenses to Apples trade

dress dilution claims , establishing that Samsung mi ght have reasonably thought

that its proposed usage was not barred by the statute . A9222 (quoting

Blockbuster , 141 F.3d at 1300) (emphasis added). The district court further ruled

that it was a close question whether Apple had presented sufficient evidence for

a reasonable jury to find that Apples trade dresses had achieved the requisite fame

for trade dress protection. Id. ; see A9218-21.

Nor does Apples cited evidence (Br. 70 -71) show that Samsung intended

to trade on the recognition of the famous mark. 15 U.S.C. 1125(c)(5)(B)(i).

The parties pre -suit licensing negotiations did not mention trade dress, and

Samsungs knowledge of the iPhone product cannot show knowledge of an

intention to trade on recognition of the claimed trade dresses . Nor can copying

allegations fill that gap: Trade dress protection must subsist with the recognition

that in many instances there is no prohibition against copying goods and products,

TrafFix Devices, Inc. v. Marketing Displays, Inc. , 532 U.S. 23, 29 (2001), and the

mere copying of product configurations does not suggest that the copier was



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necessarily trying to capitalize on the good will of the source of the original

product, Versa Prods. Co. v. Bifold Co ., 50 F.3d 189, 201 (3d Cir. 1995).

3. Apple Does Not Identify Substantial Evidence To SupportThe Infringers Profits And Lost Profits Awards

(a) The $291 Million Infringers Profits Award CannotStand

Apple improperly tries to shift to Samsung (Br. 73-74) i ts burden to show

that dilution caused Samsungs profits, see, e.g. , Lindy Pen Co. v. Bic Pen Corp. ,

982 F.2d 1400, 1409 (9th Cir. 1993) (plaintiffs burden to show unjust enrichment

arising from the infringement); Bandag, Inc. v. Al Bolsers Tire Stores, Inc. , 750

F.2d 903, 919 (Fed. Cir. 1984), again confusing apportionment with the antecedent

question of causation. Nor does Apple cite substantial evidence supporting the

conclusion that all of Samsungs profits on its six products found to dilute derived

from Apples asserted trade dresses. The products at issue are complex, with

hundreds of features. A40701; A42133. The uncontroverted evidence shows that,

at most, trade dress accounted for a small percentage of Samsungs profit,

compared to the many other features consumers want. A28599; A26444; A28645;

A31007. Apples own customers rated attractive appearance and design

relatively lower than factors that have nothing to do with Apples claimed trade

dresses, such as web capabilities, ease of use, availability of apps, improved

battery life, camera quality, and retina display. A27170- 74. Apples suggestion



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(Br. 74 n.21) that certain of that evidence is directed to phone design generally

rather than Apples specific claimed trade dresses only reinforces that the value of

the narrower set of features is small.

Apple also incorrectly suggests (Br. 74) that the jury awarded less than

Samsungs total profit. As the district court itself recognized, the jury awarded

40% of Samsungs gross profit, which is what Apple sought to recover . See

A00097; A42066-69. Samsung presented substantial evidence of costs and

showed that its total profit was even less than 40% of the gross profit. A29302-

416; A43035; A43038-39; A29690.

(b) The $91 Million Lost Profits Award Cannot Stand

Apple likewise fails (Br. 75) to show substantial evidence that any dilution

caused Apples lost profits. Its experts consideration of market share, and

market alternatives assumes rather than proves that Samsungs consumers would

have bought phones from Apple in the absence of dilution. To the contrary,

Apples own do cuments show that a large percentage of Android phone purchasers

did not even consider an iPhone. A28599.

Apples appellate authorities (Br. 75) are irrelevant: Intel Corp. v. Terabyte

Intl, Inc. , 6 F.3d 614, 619-20 (9th Cir. 1993), was a counterfeiting case in which

the plaintiff showed threatened harm to Intels reputation and good will; and

Presidio Components, Inc. v. American Technical Ceramics Corp. , 702 F.3d 1351,



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1360-62 (Fed. Cir. 2012), and Kaufman Co. v. Lantech, Inc. , 926 F.2d 1136, 1142

(Fed. Cir. 1991), are patent cases relying on evidence that non-infringing

alternatives were functionally inferior to the patented technology, but functional

differences cannot support a theory of lost profits for trade-dress dilution.

III. APPLE IS UNABLE TO DEFEND THE $149 MILLION JUDGMENTFOR UTILITY-PATENT INFRINGEMENT

A. No Reasonable Jury Could Find Liability As To The 915 And163 Patents

1. Apple Fails To Refute That Claim 8 Of The 915 Patent IsAnticipated

Apple does not dispute that Nomura discloses the single-figure scroll and

two- finger zoom gestures claimed in the 915 patent:

A28324; A28323. Apples only argument (Br. 76 -77) is that it cannot be

determined whether Nomura discloses an event object because Nomura does not

contain source code. But the 915 patent does not require or disclose any source

code.



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The 915 patent merely describes the event object as information stored in

memory regarding a users finger movements. For example, the specification

states that the 915 patent creat [es] an event object in response to the user input

. A01127 (6:36 -37). Although Nomura does not use the exact term event

object, it discloses (A28307 -37) creating a movement history that is identical to

the event object of the 915 patent: the information storage medium includes:

information on the movement history of the finger . A28312 ( 0042). That

movement history is then used to cause the scrolling and zooming behavior shown

in the figures above. A28312 ( 0053). That is enough for anticipation. See In re

Gleave , 560 F.3d 1331, 1334 (Fed. Cir. 2009) (the [anticipatory] reference need

not satisfy an ipissimis verbis test). Apple tries (Br. 76) to transform its

unsupported construction into a factual dispute based solely on thirty -four

conclusory lines of expert testimony (A43636-37). Such conclusory testimony

cannot overcome Nomuras clear disclosure of a movement history. See Krippelz

v. Ford Motor Co ., 667 F.3d 1261, 1268-69 (Fed. Cir. 2012) (generic expert

statements too conclusory to sustain verdict).

2. Apple Fails To Refute That Claim 50 Of The 163 Patent IsIndefinite

The 163 patent is indefinite because it offers no guidance regarding the

scope of the term substantially centered. See Nautilus , 134 S. Ct. at 2124.

Apple argues (Br. 79) that its annotated version of Figure 5C (below) discloses



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substantial centering because the amount of padding at the top and bottom of the

display differs:

However, the specification (A01244 (17:26- 30)) refers only to predefined

padding along the sides of the display and centering in the horizontal direction.

There is no description of predefined padding or centering in the vertical

direction as Apples annotations misleadingly suggest. Moreover, nothing in the

specification explai ns the amount of predefined padding that would fall within or

outside the scope of the claims. In any event, Block 5 is exactly vertically centered

in the web page display i.e. , the display portion that does not include the



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current time, welcome, URL and user interface icons which is the portion of the

display where centering takes place (A01244, 17:20-23).

A01215 (annotations added). Finally, the district court itself fou nd no standard

for measuring the precise boundaries of substantially centered in the

specification. A00006. This finding alone renders the 163 patent indefinite,

under both Nautilus and this Courts prior precedent. See Datamize LLC v. Plumtree Software, Inc. , 417 F.3d 1342, 1351 (Fed. Cir. 2005) ([A] court must

determine whether the patents specification supplies some standard for measuring

the scope of the phrase.) (emphasis added).



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B. No Reasonable Jury Could Award $149 Million In Damages ForUtility-Patent Infringement

1. Apple Does Not Identify Substantial Evidence To SupportThe $114 Million Lost Profits Award For Infringement OfThe 915 Patent

First , Apple does not seriously dispute (Br. 81-82) that, by the start of the

lost-profits period, Sam sungs Intercept and Galaxy Ace were non -infringing

alternatives offering substantially the same functionality as claimed in the 915

patent, but instead wrongly contends that neither device is an acceptable, available

non-infringing alternative. As to th e Intercept, Apples argument that a non -

infringing alternative must be acceptable to all purchasers relies exclusively on

American Seating Co. v. USSC Group, Inc. , 514 F.3d 1262, 1270 (Fed. Cir. 2008),

which has never been applied outside of the unique b ait-and- switch context. 14

As to the Galaxy Ace, Apple ignores (Br. 83) that, because of the pre-retrial

ruling that Samsung would have completed its design- around efforts for the 381

and 163 patents before the lost-profits period began, Apple was unable to present

any argument or evidence that the first jurys infringement findings rendered the

Galaxy Ace unavailable. A9185-96; A9197- 203. And Apples objection (Br. 83)

14

Apples other cases are equally distinguishable. In DSU Medical , 471F.3d at 1309, this Court considered whether third parties could meet demand withother non-infringing substitutes, where the defendant could not bring its non-infringing substitute to market before the lost-profits period began. And in

Kaufman , 926 F.2d at 1142, this Court noted that the substitutes were moreexpensive to purchase and operate tha n the patented product. Neither situationapplies here. A43058-60; A24625.



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that the Galaxy Ace was not sold in the United States misunderstands the

hypothetical nature of the lost-profits inquiry. See, e.g. , Grain Processing Corp. v.

Am. Maize-Prods. Co. , 185 F.3d 1341, 1350-51 (Fed. Cir. 1999).

Second , with respect to consumer demand for the 915 patented feature, 15

Apple continues to rely (Br. 84) on evidence purporting to show that two fingered

pinch and flick was fun and cool, but ignores that it does not own a patent on

two fingered pinch and flick generally. 16 Apple likewise ignores this Courts

holding that neither Apples purported evidence of the importance of ease of use

nor Samsungs documents referring to specific features in Apple phones is

sufficient to show that Apples patented features drive demand. Apple III , 735

F.3d at 1367.

Apples survey expert, Dr. Hauser, never adequately considere d non-

infringing alternatives; as Apple concedes (Br. 86), Hausers survey never

presented the non- infringing two fingered pinch and flick functionality in either

15 Apple asserts that a patentee need not prove demand for the patentedfeature to obtain lost profits, but its own authority (Br. 83) says otherwise. See

DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc. , 567 F.3d 1314, 1330-31(Fed. Cir. 2009) (stating that the elimination or substitution of particular featurescorresponding to one or more claim limitations goes to the availability ofacceptable noninfringing substitutes).

16 Nor is Apple correct (Br. 84) that Samsungs damages expert found suchevidence relevant. Mr. Wagner testified that he had not seen evidence that thesingle patent at issue for lost profits drove demand for any of Samsungs products. A50997.



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the Intercept or the Galaxy Ace. Nor does Apple address the district courts

careful expla nation why Hausers survey does not adequately account for other

non-infringing features. A08281-82.

2. Apple Does Not Identify Substantial Evidence To SupportThe $35 Million Reasonable Royalty Award ForInfringement Of The Three Utility Patents

With respect to the reasonable-royalty award, Apple contends (Br. 86) that it

was sufficient that its expert, Ms. Davis, mentioned in her lost-profits testimony

(A50652) that her demand analysis was relevant to a reasonable royalty. But

demand is not a Georgia-Pacific factor. Georgia-Pacific Corp. v. U.S. Plywood

Corp. , 318 F. Supp. 1116, 1119-20 (S.D.N.Y. 1970). And Davis never explained

why demand was relevant to any of the Georgia-Pacific factors she purportedly

considered. Similarly, Apples other demand evidence (Br. 87 -88) cannot

support the reasonable-royalty award because Davis failed to explain her

calculation to the jury. The only factor she discussed was the parties commercial

relationship (A50708-09), but that limited testimony did not allow the ju ry to

evaluate the probative value of [her] numbers, Whitserve, LLC v. Computer

Packages, Inc. , 694 F.3d 10, 32 (Fed. Cir. 2012).

Mr. Musikas analysis of the Galaxy Tab royalty was no better. In the

testimony that Apple cites (Br. 88), he identified only three factors, and provided



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no meaningful analysis of any of them (A42093-100). And the cited exhibit

(A24960) does not discuss the Georgia-Pacific factors at all.

IV. APPLE IS UNABLE TO EXPLAIN WHY AT THE VERY LEAST ANEW TRIAL IS NOT WARRANTED

A. The Instructional Errors At Minimum Require Vacatur AndRemand

Contrary to Apples passing suggestion of waiver (Br. 88 n.29), Samsung

clearly presented its substantial alternative arguments for new trial in light of errors

in the design-patent liability, design-patent damages and trade-dress willfulness

instructions, and the result could have been different absent those errors,

Commil , 720 F.3d at 1367. A new trial is also warranted because the judgment is

excessive and against the great weight of the evidence, and Apples boilerplate

response (Br. 89) does not show otherwise.

B. Apple Fails To Justify The Erroneous Exclusion Of SamsungsEvidence Of Independent Development

Nor does Apple show why new trial is not warranted at which Samsung may

introduce evidence that it did not copy. At trial, Apple was permitted to tell its

version of events:



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A24679; A40307; A40317; A44091.



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A24681. But Samsung was not permitted to show that it independently designed

the same basic visual elements before the iPhone was even announced:



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A9128; see also A9120-27.

Apple offers no plausible argument that this exclusion did not affect the

outcome of the case. Although it concedes (Br. 91) that the jury rejected Apples

tablet-based design claims after Samsung introduced a pre-iPad sketch of one of

Samsungs early tablet designs, it dismisses any causal relationship since the jury

found the tablets infringed utility patents, ignoring that the utility patents had

nothing to do with exterior appearance the sole subject of the tablet trade-dress

and design- patent claims. Further, Apples contention (Br. 90) that no evidence

tied these independent designs to the accused products ignores that the accused



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products designer testified in deposition that his work consciously drew on the

F700. A06821-24. The fact that the designer himself was not precluded from

testifying (Br. 90 n.30) is irrelevant; Samsung could not call him to testify about

excluded evidence.

Apple offers no reasonable justification for excluding this critical evidence

under Fed. R. Evid. 403, and fails (Br. 89-90) in seeking to re-characterize the

exclusion as a discovery sanction. The discovery sanction Apple refers to

precluded use of certain evidence as prior art because Samsung purportedly had

not disclosed it i n response to a discovery request for the basis of Samsungs

design patent invalidity defense. A90024; A90042-44; A04489; A06832. That

interrogatory did not seek the basis for Samsungs rebuttal to Apples willfulness

or copying allegations (A05541-42), and before the final exclusion order, the

district court repeatedly ruled that the evidence was admissible, including to rebut

an allegation of copying. A06685; A9074.

Given that Samsung had confirmed that it would not argue that the excluded

evidence was prior art, and that the evidence was relevant and admissible for other

purposes (A9071; A9074-81; A06793-94), exclusion was an abuse of discretion.

Rule 403 demands cautious and sparing use, only excluding evidence of scant

or cumulative probative force, dragged in by the heels for the sake of its prejudicial

effect. United States v. Hankey , 203 F.3d 1160, 1172 (9th Cir. 2000) (internal



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quotation marks omitted); see United States v. Philip Morris USA, Inc ., 219 F.R.D.

198, 201 (D.D.C. 2004) (draconian and unsupportable to keep partially limited

evidence out for all purposes). And the courts instructions that the F700 was

not prior art (A41186-88; A42849) eliminated any supposed prejudice, leaving

none that could have substantially outweighed the significant relevance. 17

Samsung thus was improperly denied the opportunity to show that it did not copy

Apples designs.

CONCLUSION

The judgment should be reversed or, alternatively, vacated and the case

remanded for new trial.

17 The district court even went so far as to exclude Samsungs evidence ofindependent development from the damages retrial, where validity was not atissue . During retrial, Apple was given free rein to argue copying. A50362;A50853-54; A51040-41; A51296; A51300; A51305; A51307; A51331. Yet thedistrict court excluded Samsungs independent development evidence. A90350 -54.

Dated: September 4, 2014 Respectfully submitted,

By: /s/ Kathleen M. SullivanSusan R. EstrichMichael T. ZellerRobert J. BecherB. Dylan ProctorQUINN EMANUEL URQUHART

& SULLIVAN, LLP865 S. Figueroa St., 10th FloorLos Angeles, CA 90017Telephone: (213) 443-3000

Facsimile: (213) 443-3100

Kathleen M. SullivanWilliam B. AdamsQUINN EMANUEL URQUHART

& SULLIVAN, LLP51 Madison Avenue, 22nd Floor

New York, NY 10010Telephone: (212) 849-7000Facsimile: (212) [email protected]



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Attorneys for Defendants-Appellants

Victoria F. MaroulisQUINN EMANUEL URQUHART

& SULLIVAN, LLP555 Twin Dolphin Drive, 5th FloorRedwood Shores, CA 94065Telephone: (650) 801-5000Facsimile: (650) 801-5100

Kevin A. SmithQUINN EMANUEL URQUHART

& SULLIVAN, LLP50 California St., 22nd FloorSan Francisco, CA 94111Telephone: (415) 875-6600Facsimile: (415) 875-6700



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PROOF OF SERVICE

The undersigned hereby certifies that on September 5, 2014, I electronically

filed the foregoing CORRECTED REPLY BRIEF FOR DEFENDANTS-

APPELLANTS with the Clerk of the Court for the United States Court of Appeals

for the Federal Circuit by using the appellate CM/ECF system. I certify that all

participants in the case are registered CM/ECF users and that service will be

accomplished by the CM/ECF system.

/s/ Kathleen M. SullivanKathleen M. Sullivan



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CERTIFICATE OF COMPLIANCE

Counsel for Defendants-Appellants hereby certifies that:

1. The brief complies with the type- volume limitation of this Courts

August 20, 2014 Order permitting a reply brief of up to 8,500 words because

exclusive of the exempted portions it contains 8,498 words as counted by the word

processing program used to prepare the brief; and

2. The brief complies with the typeface requirements of Federal Rule of

Appellate Procedure 32(a)(5) and the type-style requirements of Federal Rule of

Appellate Procedure 32(a)(6) because it has been prepared using Microsoft Office

Word 2007 in a proportionately spaced typeface: Times New Roman, font size 14.

Dated: September 4, 2014 /s/ Kathleen M. SullivanKathleen M. Sullivan


14-09-05 Samsung Reply Brief in Appeal of Ruling in First Apple Case

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