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Nos. 2014-1335, 2015-1029
UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
APPLE I NC., a California corporation,
Plaintiff-Appellee,
v.
SAMSUNG ELECTRONICS CO., LTD., a Korean corporation,
SAMSUNG ELECTRONICS AMERICA, I NC., a New York corporation, SAMSUNG TELECOMMUNICATIONS AMERICA LLC,
a Delaware limited liability company,
Defendants-Appellants.
Appeals from the United States District Court for the Northern District of California in case no. 11-CV-1846, Judge Lucy H. Koh.
PLAINTIFF-APPELLEE APPLE INC.’S RESPONSE TO DEFENDANTS-
APPELLANTS’ PETITION FOR REHEARING EN BANC
R ACHEL K REVANS
R UTH N. BORENSTEIN NATHAN B. SABRI
CHRISTOPHER L. R OBINSON MORRISON & FOERSTER LLP
425 Market Street
San Francisco, CA 94105
(415) 268-7000
MARK D. SELWYN WILMER CUTLER PICKERING
HALE AND DORR LLP
950 Page Mill RoadPalo Alto, CA 94304
(650) 858-6000
July 20, 2015
WILLIAM F. LEE
MARK C. FLEMING LAUREN B. FLETCHER
WILMER CUTLER PICKERING HALE AND DORR LLP
60 State Street
Boston, MA 02109
(617) 526-6000
JAMES L. QUARLES IIIWILMER CUTLER PICKERING
HALE AND DORR LLP
1875 Pennsylvania Avenue, N.W.Washington, DC 20006
(202) 663-6000
Counsel for Plaintiff-Appellee Apple Inc.
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CERTIFICATE OF INTEREST
Counsel for Plaintiff-Cross Appellant Apple Inc. certifies the following:
1. The full name of every party or amicus represented by us is:
Apple Inc.
2. The name of the real party in interest represented by us is:
Not applicable.
3. All parent corporations and any publicly held companies that own 10 percent or more of the stock of the party or amicus curiae represented by me are:
None.
4. The names of all law firms and the partners or associates that
appeared for the party or amicus now represented by me in the trial court or agencyor are expected to appear in this court are:
MORRISON & FOERSTER LLP: Ruchika Agrawal (former), Deok Keun
Matthew Ahn (former), Charles S. Barquist, Jason R. Bartlett, Ruth N.Borenstein, Brittany N. DePuy (former), Francis Chung-Hoi Ho (former),
Richard S.J. Hung, Michael A. Jacobs, Esther Kim, Grant L. Kim, AlexeiKlestoff (former), Rachel Krevans, Kenneth Alexander Kuwayti, Jack
Williford Londen, Harold J. McElhinny, Andrew Ellis Monach, Erik J.Olson, Marc J. Pernick (former), Taryn Spelliscy Rawson, Christopher
Leonard Robinson, Nathaniel Bryan Sabri, Jennifer Lee Taylor, AlisonMargaret Tucher (former), Christopher James Wiener, Patrick J. Zhang(former)
WILMER CUTLER PICKERING HALE AND DORR LLP: David B. Bassett, JamesC. Burling, Robert Donald Cultice, Andrew J. Danford, Michael A. Diener,
Christine E. Duh, Mark D. Flanagan, Mark C. Fleming, Eric Fletcher,Lauren B. Fletcher, Sarah R. Frazier, Richard Goldenberg, Robert J.Gunther, Jr., Liv Leila Herriot, Michael R. Heyison, Peter James Kolovos,
Derek Lam, Gregory H. Lantier, Brian Larivee, William F. Lee, Andrew L.
Liao, Joseph J. Mueller, Kevin Scott Prussia, James L. Quarles, III, Michael
Saji (former), Brian Seeve, Mark Daniel Selwyn, Ali H. Shah (former),
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Victor F. Souto, Thomas G. Sprankling, Timothy Davis Syrett, Nina S.Tallon, Samuel Calvin Walden, Emily R. Whelan, Jeremy S. Winer
COOLEY LLP: Benjamin George Damstedt, Jesse L. Dyer (former), Timothy
S. Teter
TAYLOR & COMPANY LAW OFFICES, LLP: Joshua Ryan Benson, StephenMcGeorge Bundy, Stephen E. Taylor
MAVRAKAKIS LAW GROUP LLP: Kenneth H. Bridges (former), Michael T.
Pieja
Dated: July 20, 2015 /s/ William F. LeeWILLIAM F. LEE WILMER CUTLER PICKERING
HALE AND DORR LLP 60 State Street
Boston, MA 02109(617) 526-6000
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TABLE OF CONTENTS
Page
TABLE OF AUTHORITIES ....................................................................................iv
INTRODUCTION ..................................................................................................... 1
ARGUMENT ............................................................................................................. 5
I. THE PANEL’S DECISION IS CONSISTENT WITH THE STATUTE A NDTHIS COURT’S PRECEDENT ............................................................................... 5
A. The Panel’s Ruling On Design Patent Scope Is Correct ....................... 5
B. The Panel’s Ruling On Design Patent Damages Is FullyConsistent With § 289’s Text, Legislative History, AndJudicial Interpretation ............................................................................ 9
II. SAMSUNG’S POLICY-BASED ARGUMENTS SHOULD BE R EJECTED .................. 14
CONCLUSION ........................................................................................................ 15
CERTIFICATE OF SERVICE
CERTIFICATE OF COMPLIANCE
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TABLE OF AUTHORITIES
CASES
Page(s)
Advanced Magnetic Closures, Inc. v. Rome Fastener Corp.,607 F.3d 817 (Fed. Cir. 2010) .............................................................................. 5
Bilski v. Kappos,561 U.S. 593 (2010) ............................................................................................ 12
Bush & Lane Piano Co. v. Becker Brothers,
234 F. 79 (2d Cir. 1916) ............................................................................... 12-13
Catalina Lighting, Inc. v. Lamps Plus, Inc.,295 F.3d 1277 (Fed. Cir. 2002) .......................................................................... 11
Dobson v. Bigelow Carpet Co.,
114 U.S. 439 (1885) ............................................................................................ 10
Dobson v. Dornan,118 U.S. 10 (1886) .......................................................................................... 6, 10
Dobson v. Hartford Carpet Co.,114 U.S. 439 (1886) ............................................................................................ 10
Egyptian Goddess, Inc. v. Swisa, Inc.,
543 F.3d 665 (Fed. Cir. 2008) (en banc) .................................................. 5, 6, 7, 8
Inwood Laboratories, Inc. v. Ives Laboratories, Inc.,456 U.S. 844 (1982) .............................................................................................. 7
L.A. Gear, Inc. v. Thom McAn Shoe Co.,
988 F.2d 1117 (Fed. Cir. 1993) ............................................................................ 7
Lee v. Dayton-Hudson Corp.,838 F.2d 1186 (Fed. Cir. 1988) ............................................................................ 8
Markman v. Westview Instruments, Inc.,517 U.S. 370 (1996) .............................................................................................. 6
Microsoft Corp. v. AT&T Corp.,
550 U.S. 437 (2007) ............................................................................................ 15
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Nautilus, Inc. v. Biosig Instruments, Inc.,134 S. Ct. 2120 (2014) .......................................................................................... 6
Nike, Inc. v. Wal-Mart Stores, Inc.,
138 F.3d 1437 (Fed. Cir. 1998) ................................................................ 5, 10, 11
OddzOn Products, Inc. v. Just Toys, Inc.,122 F.3d 1396 (Fed. Cir. 1997) ............................................................................ 7
Read Corp. v. Portec, Inc.,
970 F.2d 816 (Fed. Cir. 1992) .............................................................................. 8
Richardson v. Stanley Works, Inc.,597 F.3d 1288 (Fed. Cir. 2010) .................................................................... 4, 7, 8
Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc.,135 S. Ct. 831 (2015) ............................................................................................ 6
Untermeyer v. Freund ,
58 F. 205 (2d Cir. 1893) ..................................................................................... 13
Young v. Grand Rapids Refrigerator Co.,268 F. 966 (6th Cir. 1920) .................................................................................. 13
STATUTES
35 U.S.C.§ 171 .................................................................................................................... 13
§ 289 .............................................................................................................passim
Design Patent Act of 1887, Act of Feb. 4, 1887, § 1, ch. 105,24 Stat. 387 ......................................................................................................... 10
LEGISLATIVE HISTORY
18 Cong. Rec. 834-836 (Jan. 20, 1887) ................................................................... 10
OTHER AUTHORITIES
Lemley, Mark A., A Rational System of Design Patent Remedies, 17Stan. Tech. L. Rev. 219 (2013) ........................................................................... 12
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INTRODUCTION
Samsung’s petition for rehearing attempts to make a straightforward
decision by a unanimous panel seem unduly complex, and accuses the panel of
contradicting no fewer than three Supreme Court decisions and five decisions of
this Court. Pet. 1. Samsung’s protest lacks merit. The panel correctly applied
well-established case law on two narrow questions related to design patent
infringement to the particular facts of this case. En banc review is unwarranted.
Samsung’s petition deals with three design patents that, taken together,
protect the unique look and feel of Apple’s iconic iPhone. U.S. Design Patent No.
618,677 (“D’677 patent”) protects the iPhone’s distinctive front face, U.S. Design
Patent No. 593,097 (“D’087 patent”) protects the iPhone’s distinctive overall
appearance (such as its particular shape, the flat contour of the front face, and the
raised edge separating the glass display from the rest of the device), and U.S.
Design Patent No. 604,305 (“D’305 patent”) protects the iPhone’s colorful
graphical user interface. See Apple Br. 7-9 (displaying protected designs).
The iPhone’s distinctive appearance is hardly an “undisputed[ly]” “minor
component” of the device. Cf. Pet. 2. To the contrary, it was the result of years of
research and development within Apple, and received immediate critical acclaim
upon release. Apple Br. 5; e.g., A27141-27144 ( New York Times describing
iPhone as “gorgeous” with a “shiny black [front face], rimmed by mirror-finish
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stainless steel” and a “spectacular” user interface). The iPhone’s unique design
and user interface quickly brought Apple enormous success. Apple Br. 5.
Samsung coveted that success. As the head of Samsung’s mobile division
told its highest executives, Samsung faced a “crisis of design”—“when our [user
interface] is compared to the unexpected competitor Apple’s iPhone, the difference
is truly that of Heaven and Earth.” Apple Br. 12. Rather than create its own
innovative look, Samsung appropriated Apple’s. Almost overnight, Samsung’s
smartphone products transformed from bulky, walkie-talkie-like boxes into sleek,
streamlined, narrow rectangles that mimicked the iPhone’s appearance, as shown
in the following trial demonstratives:
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Id. 12-15. Samsung’s own internal documentation revealed specific “directions for
improvement” to make Samsung’s graphical user interface and icons more like
Apple’s. Id. 14. See, for example, the following trial demonstrative:
A90143.
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Samsung’s strategy worked. Its share of the smartphone market swung
“abrupt[ly] upward” following its copying—jumping from 5% to 20% in just two
years—while Apple’s market share fell. Apple Br. 17-19. Samsung reaped
billions of dollars in revenue and profits from its infringing products during those
years alone. Id. 18.
After a 13-day trial, the jury found, inter alia, that numerous Samsung
smartphones infringed Apple’s design patents and awarded damages. The district
court ultimately entered judgment in Apple’s favor. Samsung appealed numerous
design patent issues; the panel unanimously rejected every one. See Op. 18-28.
As relevant here, the panel correctly concluded that the design patent
infringement analysis requires the fact finder to review the overall ornamental
appearance of a design, even if some design features also serve some utilitarian
purpose. Op. 20-22. This holding is fully in line with this Court’s precedent and
common sense. See, e.g., Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1295
(Fed. Cir. 2010) (“discounting of functional elements must not convert the overall
infringement test to an element-by-element comparison”).
The panel also concluded that Samsung’s “quest” to read an apportionment
requirement into 35 U.S.C. § 289, a statute that “explicitly authorizes the award of
total profit,” was contrary to the provision’s plain meaning, legislative history, and
purpose. Op. 26-28. As the panel explained, Samsung’s contention that § 289
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only permitted the jury to award “the profit attributable to the infringement”
“advocate[s]” for an approach that “Congress rejected.” Op. 25-26; accord Nike,
Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1441 (Fed. Cir. 1998).
Samsung’s petition relies on rhetoric and arguments already rejected by this
Court. Its citation to supposedly “conflicting” cases is unavailing; Samsung’s
cases are largely off-point, nonbinding, or both. Samsung’s petition should be
denied.
ARGUMENT
I. THE PANEL’S DECISION IS CONSISTENT WITH THE STATUTE AND THISCOURT’S PRECEDENT
A. The Panel’s Ruling On Design Patent Scope Is Correct
1. Samsung’s assertion (at 7) that this Court “has never before [up]held”
design patent claim constructions like those at issue in this case is refuted by the
very case law on which Samsung relies.1 In fact, this Court has upheld a claim
construction as simple as “a tray of a certain design as is shown in figures 1-3.”
Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679-680 (Fed. Cir. 2008) (en
banc) (internal quotation marks omitted). The claim constructions in this case
were actually more detailed: the district court instructed the jury to consider “the
ornamental design” of the patents at issue. A1390-1391 (emphasis added); Op. 21.
1 Additionally, Samsung waived this issue by raising it for the first time in a
short paragraph in its reply brief. See Advanced Magnetic Closures, Inc. v. Rome
Fastener Corp., 607 F.3d 817, 833 (Fed. Cir. 2010); see also Samsung Reply 3-4.
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Indeed, this Court has explained that “[a]s a general matter,” “the [district]
courts should not treat the process of [design patent] claim construction as
requiring a detailed verbal description of the claimed design, as would typically be
true in the case of utility patents.” Egyptian Goddess, 543 F.3d at 680 (emphasis
added). Design patents are different because they “typically are claimed as shown
in drawings” and “a design is better represented by an illustration ‘than it could be
by any description.’” Id. at 679 (quoting Dobson v. Dornan, 118 U.S. 10, 14
(1886)). While there is no per se rule prohibiting a “detailed verbal description of
the claimed design,” “the preferable course ordinarily will be for a district court
not to attempt” to do so. Id.
Many of the cases that Samsung relies upon (at 7) are accordingly easily
distinguishable, because they involved utility patents. See Markman v. Westview
Instruments, Inc., 517 U.S. 370 (1996); Nautilus, Inc. v. Biosig Instruments, Inc.,
134 S. Ct. 2120 (2014); Teva Pharms. USA, Inc. v. Sandoz Inc., 135 S. Ct. 831
(2015). And while Samsung is right that there is a “duty to conduct claim
construction” ( Egyptian Goddess, 543 F.3d at 679 (quoted at Pet. 6)), it does not
confront the fact that this Court “has not prescribed any particular form that the
claim construction must take,” and, as discussed above, discourages using detailed
verbal descriptions (id. (emphasis added)). Relatedly, Egyptian Goddess makes
clear that the district court has discretion to decide whether to deliver a jury
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instruction of the kind described in OddzOn Products, Inc. v. Just Toys, Inc., 122
F.3d 1396 (Fed. Cir. 1997). See Egyptian Goddess, 543 F.3d at 680. Richardson
did not purport to overrule Egyptian Goddess (nor could it have); indeed,
Richardson emphasized that the infringement analysis does not require or permit
“an element-by-element comparison” of the ornamental features of the patented
design and the infringing design. See 597 F.3d at 1295.2
2. Samsung also mischaracterizes the panel’s opinion by arguing (at 7-9)
that the Court endorsed an instruction ordering the jury to consider “any perceived
similarities” between Apple’s patented designs and Samsung’s products rather than
simply the “ornamental” similarities. In fact, the panel held that Samsung failed to
show that there was prejudicial error. Op. 21-22. This is because the instructions
as a whole made clear that the jury was only to consider whether the ornamental
features of Apple’s patented designs and Samsung’s products were substantially
the same. Id. (“the design patents were each construed as claiming ‘the ornamental
design’ as shown in the patent figures”); see also, e.g., A1403 (design patent
2 While the panel vacated the award on Apple’s trade dress claim, that in no
way undermines its design patent ruling. The bar for trade dress functionality is
different from the bar for design patent functionality. Compare Inwood Labs., Inc.v. Ives Labs., Inc., 456 U.S. 844, 850 n.10 (1982) (trade dress is functional “if it is
essential to the use or purpose of the article or it affects the cost or quality of thearticle”), with L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123 (Fed.
Cir. 1993) (patented design can have some “utilitarian purpose”; it is only deemed
functional “when the appearance of the claimed design is ‘dictated by’ the use or purpose of the article”).
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“cover[s]” “ornamental aspects”); A1401 (a design is not “ornamental” if “the
overall appearance of [the] design is dictated by how the article claimed in the
patent works”). Accordingly, there is no conflict between this case and OddzOn,
Read Corp. v. Portec, Inc., 970 F.2d 816 (Fed. Cir. 1992), or Lee v. Dayton-
Hudson Corp., 838 F.2d 1186 (Fed. Cir. 1988).
Relatedly, Samsung’s attempt (at 8 n.4) to nit-pick the panel’s reading of
Richardson fails. Richardson rejected the kind of “element-by-element
comparison,” 597 F.3d at 1295, that Samsung asks the en banc Court to adopt.
The case certainly does not require the district court to provide a detailed verbal
description of a design patent claim or (as Samsung would have it) “specify the
ornamental aspects of particular components.” Pet. 8 n.4. Such a rule would have
conflicted with this Court’s en banc holding in Egyptian Goddess, which predated
Richardson by two years. See 543 F.3d at 679; supra pp. 5-6. Ultimately,
Samsung misses the panel’s point, which is that Richardson requires the fact finder
to review the overall ornamental appearance of a design, even if some design
features also serve some utilitarian purpose. See Op. 20-22.3
3 Samsung’s assertion that it has “never argued that entire components must
be eliminated from the claim scope” (Pet. 9 n.4) is revisionist history. SeeSamsung Opening Br. 29 (arguing that the “rectangular form, rounded corners, and
… large rectangular display” of Apple’s designs should be “ignored”). Samsungmakes precisely this argument just one page later in its petition. Pet. 10 n.5
(criticizing “Apple’s experts [for] not filter[ing] out any functional elements in
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3. Finally, Samsung asserts (at 9-10) that the en banc Court should
rehear the panel’s determination that there was sufficient evidence to support the
jury’s verdict. The fact-heavy and highly deferential analysis involved in
reviewing a denial of JMOL does not resolve any broad-based legal question and
thus does not warrant en banc consideration.4
B. The Panel’s Ruling On Design Patent Damages Is Fully
Consistent With § 289’s Text, Legislative History, And Judicial
Interpretation
1. The panel correctly recognized that 35 U.S.C. § 289’s plain text
“explicitly authorizes the award of total profit from the [infringing] article of
manufacture bearing the patented design.” Op. 26-28. The statute, after all,
expressly states that the infringer “shall be liable … to the extent of his total
profit.” 35 U.S.C. § 289. This straightforward reading of § 289—that “total profit”
means “all profits” and not “some profits”—is well supported by the statute’s
history and purpose. Before 1887, design-patent holders “could recover only the
forming their opinions,” such as a “rectangular display area under a transparentsurface” (emphasis added)).4 Samsung’s summary description of the evidence presented at trial (Pet. 10
n.5) and its suggestion that its account of the facts is “undisputed” (Pet. 2) are
highly misleading. Apple’s witnesses merely recognized that some components ofthe patented designs have some utilitarian value, not that they were “functional” in
the design patent context. See generally Apple Br. 29-30 (explaining design patenttest for functionality). For example, Apple’s D’677 expert testified that the
patented display screen design is not functional under the “design patent definition
of functionality” because the “shape, location [and] size” of the display “are notrequired by [its] functions.” A41201-41203.
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proportionate amounts [of profits] that were proven to be attributable to the
patented feature.” Nike, 138 F.3d at 1441. As Samsung concedes (at 11), this
remedy’s inadequacy became apparent in the Dobson cases, where the Supreme
Court held several carpet design patents infringed, but awarded only six cents in
damages because the patentees “could not show what portion of their losses or the
infringers’ profits was due to the patented design and what portion was due to the
unpatented carpet.” Nike, 138 F.3d at 1441 (discussing Dobson v. Dornan, 118
U.S. 10 (1866); Dobson v. Hartford Carpet Co., 114 U.S. 439 (1886); Dobson v.
Bigelow Carpet Co., 114 U.S. 439 (1885)).
Congress responded with the Design Patent Act of 1887, which the House
Committee on Patents explained created a special “rule of recovery for design
patents.” 18 Cong. Rec. 834 (Jan. 20, 1887). The new law entitled the design-
patent holder to an infringer’s “total profit.” Act of Feb. 4, 1887, ch. 105, § 1, 24
Stat. 387, 387; see also 18 Cong. Rec. 834 (“It is expedient that the infringer’s
entire profit … should be recoverable, as otherwise none of his profit can be
recovered, for it is not apportionable.” (emphases added)).5
5 Against the report of the House Committee on Patents, Samsung invokes asingle floor statement from one congressman. Pet. 12. But Representative Martin
corrected his statement after questioning, acknowledging that § 289’s predecessor
gave the patentee the ability to recover “the total earnings of the business from
th[e] source” of the infringement. 18 Cong. Rec. 836. He also conceded that hedid “not pretend to be as familiar with the language employed about patents, as
perhaps, I ought to be.” Id. at 835.
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This Court has interpreted § 289 accordingly. Op. 26; Nike, 138 F.3d at
1441 (observing that “[§ 289’s predecessor], specific to design patents, removed
the apportionment requirement”). While Samsung (at 14) tries to distinguish the
statements in Nike as dicta, the Nike Court’s interpretation was crucial to its
determination that Wal-Mart was required to pay Nike its pre-tax (rather than post -
tax) profits from infringement. See Nike, 138 F.3d at 1448 (“The statute requires
the disgorgement of the infringers’ profits to the patent holder, such that the
infringers retain no profit from their wrong.” (emphasis added)); see also Op. 27
(collecting other cases that have adopted this interpretation).
2. Samsung identifies no case law from this Court or the Supreme Court
that conflicts with the panel’s interpretation. Indeed, Samsung identifies no court
that has approved inserting Samsung’s desired amendment into § 289’s “clear
statutory language.” Op. 27. Samsung’s chief support for its rewriting of the
statute—which would counterintuitively impose “the same ‘apportionment’
requirement that Congress rejected,” Op. 26—is the fact that the patent holder
“shall not twice recover the profit made from the infringement,” see Pet. 10-12.
But this Court has already interpreted that language as merely insuring “that a
patentee [cannot] recover both the profit of an infringer and some additional
damage remedy from the same infringer, such as a reasonable royalty.” Catalina
Lighting, Inc. v. Lamps Plus, Inc., 295 F.3d 1277, 1291 (Fed. Cir. 2002) (internal
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quotation marks omitted). That phrase does not negate § 289’s express grant of an
infringer’s total profit as an available remedy. Congress would not have
contradicted its own clear language in such a backhanded manner; it “does not, one
might say, hide elephants in mouseholes.” Bilski v. Kappos, 561 U.S. 593, 645
(2010) (Stevens, J., concurring) (internal quotation marks omitted). In fact, several
of Samsung’s own amici have acknowledged that failing to award Apple
“Samsung’s entire profits” would have been “wrong as a matter of law.” E.g.,
Lemley, A Rational System of Design Patent Remedies, 17 Stan. Tech. L. Rev.
219, 220-221 & n.3 (2013); see also Apple Br. 46 n.11 (similar statements from
Professors Cotter and Risch).
Samsung also asserts that § 289’s phrase “article of manufacture” means the
specific “portion of the product as sold to which the patented design is applied.”
Pet. 10, 12-14. But it relies only on century-old cases that are neither binding nor
apposite. As the panel explained, the Second Circuit’s Piano Cases involved a
factual situation very different from that present here. Op. 27. There, “a purchaser
desiring a piano of a particular manufacturer [could] have the piano placed in any
one of several cases dealt in by the maker”; here, Apple’s design patents cover a
smartphone’s external appearance (its look and feel), which is not severable from
its inner workings. Op. 27-28. Moreover, the Second Circuit openly
acknowledged that it was engaging in “apportion[ment],” Bush & Lane Piano Co.
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v. Becker Bros., 234 F. 79, 83 (2d Cir. 1916), which is contrary to the statute’s text
and purpose.
Samsung’s remaining authorities are similarly inapposite. Young v. Grand
Rapids Refrigerator Co., 268 F. 966 (6th Cir. 1920), involved the design of a de
minimis portion of a refrigerator, where the patentee did not “seriously contend[]
that all the profits from the refrigerator belonged to” him. Id. at 974. Untermeyer
v. Freund , 58 F. 205 (2d Cir. 1893), actually supports the panel’s ruling: it held
that § 289’s predecessor required an award of “the total profit from the
manufacture or sale of the article to which the [patented] design was applied .” Id.
at 212 (emphasis added). And Samsung’s argument (at 13 n.6) that 35 U.S.C.
§ 171 somehow sub silentio adopted an apportionment requirement is both
unsupported (no court has ever adopted it) and waived (because it was raised only
in a footnote on reply, see Samsung Reply 17 n.9).
Finally, Samsung sets up a strawman by contending that the panel held that
§ 289 “compels an award of all profits.” Pet. 3-4, 10-11 (emphasis added). In fact,
the statute gives the option to award total profit; the district court instructed the
jury accordingly. See A1403 (“If you find infringement by any Samsung
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defendant and do not find Apple’s design patents are invalid, you may award
Apple that Samsung defendant’s total profit….” (emphasis added)).6
II. SAMSUNG’S POLICY-BASED ARGUMENTS SHOULD BE REJECTED
Samsung spends only a page (Pet. 14-15) asserting why it believes this case
qualifies as “exceptional” and thus worthy of en banc review, but the panel’s well-
reasoned ruling demonstrates otherwise.
As shown above, the panel applied established precedent and a
straightforward reading of a clearly written statute. Congress and this Court have
both recognized that design patents are subject to different rules from utility
patents. Accordingly, Samsung is reduced to relying on speculative policy
arguments, such as its warning that the panel’s ruling would permit “an award of
total profits for a car based on an infringing cupholder.” Pet. 15. But Apple’s
design patents do not cover a “small” or “minor” component of the smartphone
(Pet. 2, 11); they cover the overall appearance of the device’s distinctive front face,
bezel, and graphical user interface—in other words, the iconic look and feel of
Apple’s iPhone. Apple Br. 6-9. As the panel correctly recognized, this distinctive
design was not severable from the inner workings of Samsung’s smartphones, see
6 Samsung’s selective quotation of the relevant jury instruction (Pet. 3) is
highly misleading. See A1403. The instruction has four paragraphs. The first,quoted in text above, makes clear that the jury may, but need not , award total
profits. The third paragraph, quoted by Samsung for the proposition that “Apple isentitled to all profit,” merely lays out how to calculate a party’s total profit andexplains that the term does not include certain expenses incurred by Samsung. Id.
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Op. 27-28, in the way that a cupholder is analytically distinct from the overall
look-and-feel of a car. Samsung’s wide-ranging copying of Apple’s innovatively
designed devices accordingly provides no basis for rewriting the patent law.
Finally, as the panel explained, such “policy arguments … should be
directed to Congress. We are bound by what [§ 289] says, irrespective of policy
arguments that may be made against it.” Op. 27 n.1. The Supreme Court has
expressly endorsed this reasoning, recognizing that “[i]f the patent law is to be
adjusted …, the alteration should be made after focused legislative consideration,
and not by the Judiciary forecasting Congress’ likely disposition.” Microsoft Corp.
v. AT&T Corp., 550 U.S. 437, 458-459 (2007).
CONCLUSION
The petition should be denied.
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Respectfully submitted,
/s/ William F. Lee
R ACHEL K REVANS
R UTH N. BORENSTEIN NATHAN B. SABRICHRISTOPHER L. R OBINSON
MORRISON & FOERSTER LLP425 Market Street
San Francisco, CA 94105(415) 268-7000
MARK D. SELWYN
WILMER CUTLER PICKERING HALE A ND DORR LLP
950 Page Mill RoadPalo Alto, CA 94304
July 20, 2015
WILLIAM F. LEE
MARK C. FLEMING LAUREN B. FLETCHER WILMER CUTLER PICKERING
HALE AND DORR LLP 60 State Street
Boston, MA 02109(617) 526-6000
JAMES L. QUARLES III
WILMER CUTLER PICKERINGHALE A ND DORR LLP
1875 Pennsylvania Avenue, NWWashington, DC 20006
Counsel for Plaintiff-Appellee Apple Inc.
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CERTIFICATE OF SERVICE
I hereby certify that, on this 20th day of July, 2015 I filed the foregoing
Plaintiff-Appellee Apple Inc.’s Response to Defendants-Appellants’ Petition for
Rehearing En Banc with the Clerk of the United States Court of Appeals for the
Federal Circuit via the CM/ECF system, which will send notice of such filing to all
registered CM/ECF users.
/s/ William F. LeeWILLIAM F. LEE WILMER CUTLER PICKERING
HALE AND DORR LLP 60 State StreetBoston, MA 02109
(617) 526-6000
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CERTIFICATE OF COMPLIANCE
Counsel for Plaintiffs-Appellee Apple, Inc. certifies that:
1. The brief complies with the type-volume limitations of Federal Rule
of Appellate Procedure 40(b) because exclusive of the exempted portions it does
not exceed 15 double-spaced pages.
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 Word
2010 in a proportionally spaced typeface: Times New Roman, font size 14 point.
/s/ William F. Lee
WILLIAM F. LEE
WILMER CUTLER PICKERING
HALE AND DORR LLP 60 State StreetBoston, MA 02109
(617) 526-6000
July 20, 2015
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